Ex Parte Boss et al

Patent Trial and Appeal Board

Feb 9, 2018

12578627 (P.T.A.B. Feb. 9, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/578,627 10/14/2009 Gregory Jensen Boss END920080423US1 6714
30449 7590 02/13/2018
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
02/13/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
30449@IPLAWUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY JENSEN BOSS, RICK ALLEN HAMILTON II,
JACQUELYN ANNETTE MARTINO, CLIFFORD ALAN PICKOVER,
and ANNE R. SAND
Appeal 2016-004868
Application 12/578,627
Technology Center 3600
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’
final decision rejecting claims 1—3, 5—10, 12—14, 16, 17, and 21—26, which
are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Oct. 13, 2015), Reply Brief (“Reply Br.,” filed Apr. 4,
2016), and Specification (“Spec.,” filed Oct. 14, 2009), and to the
Examiner’s Answer (“Ans.,” mailed Feb. 4, 2016) and Final Office Action
(“Final Act.,” mailed May 14, 2015).
2 According to the Appellants, the real party in interest is International
Business Machines Corporation. Appeal Br. 1.
Appeal 2016-004868
Application 12/578,627
STATEMENT OF THE CASE
The Appellants’ invention relates generally to “a data processing
method and system for providing a location preference in a routing
algorithm, and more particularly to technique for determining travel routes
that take into account fee-based preferential weighting of locations.” Spec.
11-
Claims 1,12, and 23 are the independent claims on appeal. Claim 1
(Appeal Br. 42-44) (Claims App.) is illustrative of the subject matter on
appeal, and is reproduced below (with added bracketing for reference):
1. A computer-implemented method of determining a
route that includes a location according to a first fee charged to
an entity associated with the location, said method comprising
the steps of:
[(a)] a computer system receiving locations of a plurality
of vendors;
[(b)] the computer system presenting to a vendor included
in said plurality of vendors a sliding scale of fees including a first
fee for assigning to a location of said vendor a first preferential
weight indicating a first likelihood of selecting said location of
said vendor from said locations of said plurality of vendors so
that said location is included along a requested route, and further
including a second fee for assigning to said location of said
vendor a second preferential weight indicating a second
likelihood of selecting said location of said vendor from said
locations of said plurality of vendors so that said location is
included along said requested route, said first fee being greater
than said second fee and said first likelihood being greater than
said second likelihood;
[(c)] the computer system receiving from said vendor said
first fee instead of said second fee, and in response to said
receiving said first fee and instead of assigning to said location
of said vendor said second preferential weight, the computer
system assigning to said location of said vendor said first
2
Appeal 2016-004868
Application 12/578,627
preferential weight indicating said first likelihood of selecting
said location of said vendor so that said location is included along
said requested route;
[(d)] the computer system receiving a request from a user
of a global positioning system (GPS) for a determination of a
route from a first point to a second point, said GPS coupled to
said computer system via a computer network;
[(e)] based on said first fee instead of said second fee being
received from said vendor, based on said first preferential weight
instead of said second preferential weight being assigned to said
location of said vendor, based on said first likelihood being
greater than said second likelihood, and based on said received
request for said determination of said route, the computer system
selecting said location of said vendor from said locations;
[(f)] in response to said step of selecting said location of
said vendor based on (1) said first fee instead of said second fee
being received from said vendor, (2) said first preferential weight
instead of said second preferential weight being assigned to said
location of said vendor, (3) said first likelihood being greater
than said second likelihood, and (4) said received request for said
determination of said route, the computer system determining
said route so that an address of said location of said vendor is on
said route, said location not being said first point or said second
point;
[(g)] subsequent to said step of determining said route so
that said address of said location of said vendor is on said route,
the computer system instructing said GPS to present said route
to said user; and
[(h)] in response to said step of instructing said GPS to
present said route to said user, the GPS presenting said
determined route to said user as a recommended route providing
a value to said vendor.
REJECTIONS
Claims 1—3, 5—10, 12—14, 16, 17, and 21—26 stand rejected under
35U.S.C. § 101 as being directed to non-statutory subject matter.
3
Appeal 2016-004868
Application 12/578,627
Claims 1, 2, 7—9, 12, 13, 21—24, and 26 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Huang et al. (US 2007/0061057 Al, pub.
Mar. 15, 2007) (“Huang”).
Claims 3, 14, and 25 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Huang and Feng (US 2010/0268449 Al, pub. Oct. 21,
2010).
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Huang and Rosenblatt et al. (US 2010/0082491 Al, pub.
Apr. 1, 2010) (“Rosenblatt”).
ANALYSIS
Patent-Ineligible Subject Matter - § 101
The Appellants argue claims 1—3, 5—10, 12—14, 16, 17, and 21—26 as a
group. See Appeal Br. 9; see also id. at 24 (relying on the arguments
presented for the independent claims). We select claim 1 as representative
of the group, with claims 2, 3, 5—10, 12—14, 16, 17, and 21—26 standing or
falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
4
Appeal 2016-004868
Application 12/578,627
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78—79 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. (citing
Mayo, 566 U.S. at 79) (emphasis added). If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether the additional elements “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting
Mayo, 566 U.S. at 79, 78).
In other words, the second step is to “search for an ‘inventive
concept’—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’” Id. (alteration in original) (quoting
Mayo, 566 U.S. at 12—IS). The Court acknowledged in Mayo, that “all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.” Mayo, 566 U.S. at 71. We,
therefore, look to whether the claims focus on a specific means or method
that improves the relevant technology, or are instead directed to a result or
effect that itself is the abstract idea, and merely invoke generic processes and
machinery, i.e., “whether the focus of the claims is on [a] specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
5
Appeal 2016-004868
Application 12/578,627
tool.” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335—36
(Fed. Cir. 2016).
Under the first step of the Alice framework, the Examiner determines
that the claims are directed to delivering a vendor location, i.e., an
advertisement, to a user in the form of a map, based on a fee. See Final
Act. 3; see also Ans. 2—3. Conversely, the Appellants contend that the
claims are directed to “determining a route by which a location of a vendor
is included in the route based on a preferential weighting of the location.”
Appeal Br. 12—13; see also Reply Br. 2—3.
Before determining whether the claims at issue are directed to an
abstract idea, we must first determine what the claims are directed to.
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S. Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”) Rather, the “directed to” inquiry
applies a stage-one filter to claims, considered in light of the
specification, based on whether “their character as a whole is
directed to excluded subject matter.” Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375, 2016
WL 1393573, at *5 (Fed. Cir. 2016) (inquiring into “the focus of
the claimed advance over the prior art”).
Enfish, 822 F.3d at 1335.
The step-one analysis requires us to consider the claims “in their
entirety to ascertain whether their character as a whole is directed to
excluded subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015). The question is whether the claims as
6
Appeal 2016-004868
Application 12/578,627
a whole “focus on a specific means or method that improves the relevant
technology” or are “directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (citing
Enfish, 822 F.3d at 1336).
In this case, the preamble of claim 1 provides for a “method of
determining a route that includes a location according to a first fee charged
to an entity associated with the location.” Appeal Br. 42 (Claims App.).
Claim 1 recites the limitations of receiving vendor location data, presenting
fee data to a vendor, receiving fee data from the vendor, assigning a weight
based on that data, receiving a request for a route from a user, selecting
vendor location data based on fee, weight, and request data, determining a
route based on the selected location data, and presenting the route data to the
user. See id. The Specification states that the invention relates to
“determining travel routes that take into account fee-based preferential
weighting of locations” (Spec. 11), and “[embodiments of the present
invention provide location preference in routing algorithms” {id. 118).
Figure 2, to which the Appellants refer to as a summary of the claimed
subject matter (Appeal Br. 2—3), depicts a flowchart for determining a travel
route that includes a location “according to a fee charged to an entity
associated with the location” (Spec. 113). In that context, the claim is
directed to determining and providing a route that includes a location
according to a fee paid by the vendor.3
3 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
7
Appeal 2016-004868
Application 12/578,627
Determining and providing a route that includes a location according
to a fee paid is similar to claims found to be abstract ideas by our reviewing
court. For example, in Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1353—54 (Fed. Cir. 2016), the court held that collecting and
analyzing information and displaying results of the analysis is an abstract
idea. The court similarly held that claims directed to collecting, analyzing,
manipulating, and processing data and displaying the results of the analysis,
manipulation, and processing are directed to an abstract idea. See
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017) (collecting, displaying, and manipulating data); Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed.
Cir. 2015) (customizing web page content based on particular
characteristics). Other courts, following Federal Circuit precedent, have
similarly found claims directed to collecting, organizing, and providing
navigation information to be abstract ideas. See Peschke Map Techs. LLC v.
Rouse Properties Inc., 168 F. Supp. 3d 881, 887 (E.D. Va. 2016) (an
electronic map navigation system that enables a user to locate a particular
store provided a link to information); Location Based Servs., LLC v. Niantic,
Inc., No. 17-CV-04413 NC, 2017 WL 6497636, at *8 (N.D. Cal. Dec. 19,
2017) (“representing information about specific locations on a map, and
displaying the information on the map in accordance with a user request”);
Move, Inc. v. Real Estate All. Ltd., 221 F. Supp. 3d 1149, 1162 (C.D. Cal.
2016) (“method for collecting and organizing information about available
real estate properties and displaying this information on a digital map that
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
8
Appeal 2016-004868
Application 12/578,627
can be manipulated by the user”). Here, claim 1 involves nothing more than
receiving, presenting, and determining data of a route using criteria
including fees, weighted data, and user input, without any implementation
details, technical description, or particular inventive technology — an
abstract idea. See Elec. Power Grp., 830 F.3d at 1354.
We find unpersuasive of Examiner error the Appellants’ argument
that the Examiner has not established a prima facie case because the
Examiner “provided no rationale for determining that the claims are directed
to an abstract idea.” Appeal Br. 13; see also id. at 12. In rejecting the
pending claims under § 101, the Examiner analyzes the claims using the
Mayo/Alice two-step framework, and clearly articulates the reasons why the
claimed invention is directed to a judicial exception, namely an abstract idea.
See Final Act. 3; Ans. 2—5. Further, we are aware of no controlling authority
that requires the Examiner to provide “supporting evidence” (Appeal Br. 13;
see also Reply Br. 4) to support a determination that a claim is directed to an
abstract idea. See Alice, 134 S. Ct. at 2355—57. Nor, contrary to the
Appellants’ assertion (Appeal Br. 12—13), did this Board hold, in Ex parte
Renald Poisson, Appeal 2012-011084 (PTAB Feb. 27, 2015), that there is
any such requirement when, as here, the claimed concept is comparable to
similar concepts previously found abstract by our controlling court.4 See
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016) (“Instead of a definition [for what an ‘abstract idea’
encompasses], then, the decisional mechanism courts now apply is to
4 In any event, we would not be bound by this non-precedential decision.
9
Appeal 2016-004868
Application 12/578,627
examine earlier cases in which a similar or parallel descriptive nature can be
seen—what prior cases were about, and which way they were decided.”)
The Federal Circuit has held that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection, “together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application.”
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original)
(quoting 35 U.S.C. § 132). Here we find that the Examiner has set forth the
statutory basis of the rejection in a sufficiently articulate and informative
manner as to meet the notice requirement of § 132 as to why the claims are
patent-ineligible. Id.\ see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed.
Cir. 1990) (Section 132 “is violated when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter the
grounds for rejection”).
Under the second step in the Alice framework, we adopt and find
supported the Examiner’s determination that the claim limitations, taken
individually or as an ordered combination, do not recite an inventive
concept. See Final Act. 3; Ans. 3—5. We are unpersuaded by the
Appellants’ arguments that the claims “recite significantly more than the
abstract idea.” Appeal Br. 15; see also id. at 16—24; Reply Br. 5—8.
We find unpersuasive the Appellants’ argument that the claim recites
limitations to effect an improvement to the “technology of global positioning
systems.” Appeal Br. 15; see also id. at 16—17; Reply Br. 6—7. Determining
a route and instructing a “GPS” to present it to the user is not a technological
improvement in global positioning systems. The steps of receiving location
10
Appeal 2016-004868
Application 12/578,627
data, presenting fee data, assigning weights to fee data, receiving fee
selection data, receiving user input data, determining a route based on the
data user input, fee selection, and likelihood data, and instructing the GPS to
display the route are basic, purely conventional functions of a GPS’s
processor. See Alice, 134 S. Ct. at 2359; Enfish, 822 F.3d. at 1336 (focusing
on whether the claim is “an improvement to [the] computer functionality
itself, not on economic or other tasks for which a computer is used in its
ordinary capacity”). The Specification supports this view. For example, the
Specification provides for a system comprising a generic central computer
system, vendor computers, network, calculation service, and GPS for
performing the functions. See Spec. 119, Fig. 1. The Specification further
provides that the central computer system comprises a generic central
processing unit (“CPU”), memory, input/output interface, and bus. Id.
52—57, Figs. 1, 6. The CPU can be a single or multiple processing units
in one or more locations and can be the GPS. Id. Receiving and presenting
data, evaluating the data in determining a route, and presenting the results of
that evaluation as a route do not require a nonconventional processor/GPS.
See Elec. Power Grp., 830 F.3d at 1355. The processor/GPS itself is not
technologically improved. The Appellants do not explain how the process
improves any technological aspect of the GPS, as opposed to the existing
functionality of determining and presenting a route. The steps of receiving
and presenting data, determining a route based on that data, and instructing a
GPS to display the route do not effect a technological improvement to the
GPS, but a business/commercial improvement in providing a “non-optimal
route” (Appeal Br. 16) so that vendors who paid a fee can be shown or
advertised.
11
Appeal 2016-004868
Application 12/578,627
We also find unpersuasive the Appellants’ argument that the feature
of the GPS to present the route “cannot be implemented with a generic
computer alone and requires a global positioning system which has a special
purpose of calculating geographic locations. Thus, the recited ‘GPS’ in
Appellants’ claims is a special purpose device that on its face is different
from a generic computer.” Appeal Br. 18. Rather, we agree with the
Examiner that a “general purpose GPS device” (i.e., a device having a global
positioning system for the “purpose of calculating geographic locations” is a
“conventional” computing device (Ans. 4), and the Specification likewise
conveys the conventionality of such a computing device (see, e.g., Spec.
12).We are not persuaded by the Appellants’ position that presenting a route
is not routine, well-understood, and conventional to a generic GPS, as
provided for in the Specification. See Spec. Tflf 19, 52, 58. Further, the
claim is not eligible under § 101 because it has “a special purpose device.”
A general GPS programmed to perform the conventional function of
displaying does not amount to an inventive concept such that the claim is
significantly more than the abstract idea. See EON Corp. IP Holdings LLC
v. AT & TMobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A
microprocessor or general purpose computer lends sufficient structure only
to basic functions of a microprocessor.”); Alice, 134 S. Ct. at 2357—60
(Applying an abstract idea, such as an algorithm, on a general purpose
computer is not enough to transform a patent-ineligible abstract idea into a
patent-eligible invention.).
We further find unpersuasive the Appellants’ arguments that the claim
is significantly more than the abstract idea because it “includes recitations at
a level of specificity,” and not at a “high level of generality” (Appeal
12
Appeal 2016-004868
Application 12/578,627
Br. 18—19; see also Reply Br. 7—8) and “narrow[s] the scope of the claims”
(Appeal Br. 23). The limitations, even if specific, merely elaborate on the
abstract idea using generic technology to perform routine, conventional, and
well-understood functions of receiving and presenting data, evaluating the
data in determining a route, and instructing and presenting by a device the
results of that evaluation as a route.
We are also not persuaded of Examiner error by the Appellants’
argument that the claim recites an inventive concept because it “do[es] not
pre-empt significant inventive activity in the field of determining a route.”
Appeal Br. 19 (emphases omitted); see also id. at 20-24. Although the
Supreme Court has described “the concern that drives this exclusionary
principle [i.e., the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption,” see Alice, 134 S. Ct. at 2354, characterizing
pre-emption as a driving concern for patent eligibility is not the same as
characterizing pre-emption as the sole test for patent eligibility. “The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 134 S. Ct. at 2354). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Id. The aforementioned concept is not
sufficiently limiting so as to fall clearly on the side of patent-eligibility.
Moreover, as noted above, the question is whether the claims as a whole
“focus on a specific means or method that improves the relevant technology”
or are “directed to a result or effect that itself is the abstract idea and merely
13
Appeal 2016-004868
Application 12/578,627
invoke generic processes and machinery.” McRO, 837 F.3d at 1314. Here,
the claims recite receiving and presenting data, evaluating the data in
determining a route, and presenting the results of that evaluation as a route,
without focus on a specific means or method that improves the relevant
technology.
Thus, we are not persuaded that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 101, and we sustain the Examiner’s rejection of
claim 1 and of claims 2, 3, 5—10, 12—14, 16, 17, and 21—26, which fall with
claim 1.
Anticipation - § 102
We agree with the Appellants’ contention that the Examiner’s
rejection of independent claims 1,12, and 23 is in error because Huang does
disclose determining a route with the selected location on the route and not
the first or second end points of the route, as recited in limitation (f) of
claim 1 and similarly recited in claims 12 and 23. See Appeal Br. 25, 30-33;
see also Reply Br. 13—16.
The Examiner cites to Huang’s paragraphs 30, 32, 33, and 38 as
disclosing the limitation. Final Act. 6—8; Ans. 9—10. Huang discloses a
method and system for delivering advertisements on a mobile device by
providing map data, interpreting data provided by sensors, receiving
advertising data, and determining presentation slot availability, and
presenting selected advertisements. See Huang, Abstract. The cited
paragraphs of Huang disclose that coupons, i.e., advertising data, may be
received from a plurality of service stations, i.e., vendors, and based on the
amount each vendor offers to pay, the vendor and driver locations, and
driver preference, i.e. likelihood, the ad management module may choose to
14
Appeal 2016-004868
Application 12/578,627
present that vendor’s advertisement. See id. 1130, 32. The ad management
module transmits and instructs the presentation device to present the selected
coupon/ad. Id. 130. A navigation support module provides a navigation
map and plan, i.e., a route, and may also provide vendor information. Id.
133. Although Huang discloses determining, selecting, and presenting the
advertisement/coupon based on the fee received, vendor and driver location,
and preferences, we do not see where or how Huang discloses determining
the route based on the selected coupon.
The Examiner appears to find that Huang is capable of and thus
inherently discloses determining the route using this criteria. See Final
Act. 6—7; Ans. 10 (citing Huang 132)). “Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted). Huang at
paragraph 32 discloses receiving vehicle location data, using detected
transaction events for billing purposes, and using context information for
targeted advertising. We do not see, and the Examiner does not adequately
explain, where Huang discloses that or how the navigation plan, i.e., route is
determined, much less by what criteria.
Based on the foregoing, we do not sustain the Examiner’s rejection of
independent claims 1, 12, and 23 and dependent claims 2, 7—9, 13, 21, 22,
24, and 26 under 35 U.S.C. § 102.
Obviousness - § 103
The rejections of claims 3, 10, 14, and 25 based on Huang in
combination with Feng or Rosenblatt rely on the same inadequately
supported findings and reasoning discussed above with regard to
15
Appeal 2016-004868
Application 12/578,627
independent claims 1,12, and 23. The Examiner relies on Huang, and does
not explain how Feng or Rosenblatt cures the deficiencies of Huang in
determining the route based on the claimed criteria. Thus, we do not sustain
the Examiner’s rejections under 35 U.S.C. § 103(a) of claims 3, 10, 14,
and 25.
DECISION
The Examiner’s rejection of claims 1—3, 5—10, 12—14, 16, 17, and 21—
26 under 35 U.S.C. § 101 is AFFIRMED.
The Examiner’s rejection of claims 1, 2, 7—9, 12, 13, 21—24, and 26
under 35 U.S.C. § 102(e) is REVERSED.
The Examiner’s rejections of claims 3, 10, 14, and 25 under 35 U.S.C.
§ 103(a) are REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
16