Ex Parte Collins et al

Patent Trial and Appeal Board

Nov 29, 2018

14221516 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/221,516 03/21/2014
12394 7590
Travelers Companies
c/o Fincham Downs LLC
90 Grove Street Suite 205
Ridgefield, CT 06877
12/03/2018
FIRST NAMED INVENTOR
Dean M. Collins
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TRO 1-007-05 4269
EXAMINER
LEMIEUX, JESSICA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
bripple@travelers.com
docketing@finchamdowns.com
docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEAN M. COLLINS and BRYAN SMITH
Appeal2017-009993 1
Application 14/221,5162
Technology Center 3600
Before CAROLYN D. THOMAS, JAMES B. ARPIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
I. DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) the Examiner's decision
rejecting claims 1-16 and 23-25. App. Br. 1. Claims 17-22 are cancelled.
Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 In this Decision, we refer to Appellant's Appeal Brief ("App. Br.," filed
February 8, 2017) and Reply Brief ("Reply Br.," filed July 18, 2017); the
Final Office Action ("Final Act.," mailed September 9, 2016); the
Examiner's Answer ("Ans.," mailed May 19, 2017); and the originally filed
Specification ("Spec.," filed March 21, 2014).
2 According to Appellants, The Travelers Indemnity Company is the real
party-in-interest. App. Br. 3.
Appeal2017-009993
Application 14/221,516
II. STATEMENT OF THE CASE
Referring to Appellants' Figure 1, the recited mobile navigational
devices may
comprise a device configured to make and/or facilitate
navigational decisions based on risk zones. Risk zone data for
certain roadways at certain times, for example, may be utilized
to plot routes that are likely to be least (or less) risky (e.g., to
avoid routes that have high number of car accidents, car jackings,
vehicle thefts, etc.). In some embodiments, navigational routing
may be altered (e.g., a "detour" function) and/or set based (at
least in part) on risk zone information. A navigation device 120c
that provides routing instructions from a first point to a second
point, for example, may take into account not only the available
routes, distances, and/or likely travel times during routing and/or
re-routing calculations, but may also take into account risk zone
information - e.g., by avoiding or suggesting the avoidance of
high-risk areas in association with possible routes (and/or detour
routes) between the first and second points.
Spec. ,r 15; see id. ,r 10 (defining "risk zone"). In particular, the data relied
upon for determining routing comprises at least one historic loss event type
(i.e., one or more of an accident, crime, or other type of loss or casualty)
comprising at least one of an historic average, an historic aggregate, and an
historic trend. Id. ,r,r 18, 62. As noted above, claims 1-16 and 23-25 are
pending. Claims 1 and 25 are independent. App. Br. 17-22 (Claims
App 'x ). Claims 2-16, 23, and 24 depend directly or indirectly from claim 1.
Id.
Claim 1, reproduced below, is illustrative.
1. A mobile navigational device, comprising:
a processor;
a display device in communication with the processor; and
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Id.
a memory in communication with the processor, the
memory storing instructions that when executed by the processor
result in:
providing, via output of the display device, a navigational
interface comprising a plurality of selectable interface options;
receiving, via the navigational interface, input defining a
selection of a subset of the plurality of selectable interface
options;
determining, based on the input received via the
navigational interface that defines the selection of the subset of
the plurality of selectable interface options, a definition of a
desired risk zone-based navigational routing method, the desired
risk zone-based navigational routing method being based on data
descriptive of at least one historic loss event type, comprising
one or more of an accident, crime, or other type of loss or
casualty, the data descriptive of the at least one historic loss event
type comprising at least one of an historic average, an historic
aggregate, and an historic trend;
determining, based on stored historical loss event data
received from a remote device, the data descriptive of the at least
one historic loss event type;
determining, based on the data descriptive of the at least
one historic loss event type, a recommended route; and
altering an output of the navigational interface, the altering
comprising a graphical change of the navigational interface, the
graphical change being causing a display of graphical elements
descriptive of the recommended route.
III. THE REJECTION
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 U.S. 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. v.
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CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Court
in Alice reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-
83 (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," such as an abstract idea. Id.
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 method or means 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. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
If the claims are not directed to an abstract idea, the inquiry ends. Id. at
1339. Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78).
Claims 1-16 and 23-25 stand rejected under 35 U.S.C. § 101 because
the claimed invention is drawn to the abstract idea of
recommending navigational routes. The claims are principally
drawn to receiving inputs, determining a desired route,
determining risk data, recommending a route and displaying a
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route and while[] they may narrow the idea and add a degree of
particularity, they do not make it less abstract. Further, the steps
of the claims are performed by the generically recited one or
more sets of processors. There is nothing stated within the claims
that is an improvement to a technical field, nor that illustrates
what is superior about the particular processors that are recited.
Additionally, there is nothing recited in the specification that
states that the processors are anything more than generic which
further illustrates that no special technology is required.
Final Act. 2-3 ( emphasis added). 3
In particular, the Examiner determines that the claims are directed to a
method of organizing human activities. In this regard, the Examiner
determines that "recommending navigational routes" is akin to the practices
of "comparing new and stored information and using rules to identify
options" (SmartGene Inc. v Advanced Biological Labs., SA, 555 F. App'x
950 (Fed. Cir. 2014)), "using categories to organize, store and transmit
information" (Cyberfone Sys. LLC v. CNN Interactive Grp. Inc., 558 F.
App'x 988 (Fed. Cir. 2014)), and "organizing information through
mathematical correlations" (Digitech Image Techs. LLC v Elecs.for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)). Final Act. 12. We agree.
Finally, the claims recite only a few hardware components, namely, a
processor, a display device, and a memory. The Specification acknowledges
that none of these components is anything more than a conventional or
known component. Spec. ,r,r 80 (known processors), 81 (known displays),
83 (known memories); see also App. Br. 14--15. Further, the Specification
3 The Examiner states that "Applicants['] arguments, with respect to the 35
USC§ 103 rejections have been fully considered and are persuasive in view
of the amended claim language. The 35 USC§ 103 rejections has been
withdrawn." Final. Act. 10. Thus, no prior art based rejections remain.
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describes that data may be packaged or manipulated according to known
methods. Spec. ,r,r 94, 95. The Examiner determines that these hardware
and/ or software components, whether alone or in combination, do not add
significantly more to the abstract idea of "recommending navigational
routes." Ans. 11-13. We agree.
Appellants contend that the Examiner erred for at least five reasons.
Reply Br. 2-7; see also App. Br. 12-15. For the reasons set forth below, we
are not persuaded that the Examiner erred in rejecting claims 1-16 and 23-
25 under 35 U.S.C. § 101.
First, Appellants contend because "the Examiner has not provided any
explanation defining what the alleged 'abstract idea' of 'recommending
navigational routes' encompasses, it is unclear how the claims being
appealed properly fall within the meaning of the phrase. At some level,
every concept is 'abstract'." Reply Br. 2-3. In particular, Appellants
contend that, in the context of a modem, hand-held navigational device, the
use of graphical user interface ("GUI") maps and stored navigational rules
distinguish their recited devices over the abstract idea of merely "giving
directions." Id. at 3. Appellants contend that, although implemented on
generic computer components, like McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299 (Fed. Cir. 2016), their devices which
"'improve[] an existing technological process' in 'conventional industry
practice' are not abstract." Reply Br. 3.
However, the patent eligibility analysis is grounded in the language of
the claims, and we agree with the Examiner that Appellants' claims do not
recite how the devices improve existing technological processes. Ans. 6.
Instead, "[ t ]heir collective functions merely provide conventional computer
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implementation." Id. Indeed, although performed on computer components
that Appellants concede are conventional, all of the stored instruction steps
could be performed with pen and paper, such as by a parent drawing
alternative routes on a map for a child's trip to school, directing the child so
as to avoid historically dangerous intersections or streets. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) ("It is
clear that unpatentable mental processes are the subject matter of claim 3.
All of claim 3 's method steps can be performed in the human mind, or by a
human using a pen and paper.").
Second, again relying on McRO, Appellants contend that
the claimed embodiments of the mobile navigational device
providing risk-based navigational routing via a navigational
interface (in a manner not previously contemplated) do not
merely recite an "abstract idea" being performed on a computer,
but indeed permit the computer to function in a manner that was
not previously contemplated and that is not possible without the
utilization of the claimed technological components - i.e., the
claimed embodiments provide an improvement to how the
claimed computerized devices function.
Reply Br. 4. In the Appeal Brief, Appellants explain that:
In this case, the claims being appealed relate to a new
mobile navigational device that implements novel programmatic
logic to adjust a graphical user interface to visually display to a
user, e.g., a ["]least risky["] route. In other words, the novel
concepts set forth in the claims being appealed improve the
functionality of mobile electronic devices by allowing them to
conduct risk-based routing- a capability that had previously not
been available.
App. Br. 13 (emphasis added). However, the claims do not recite such
programmatic logic, but instead merely recite factors considered, i.e.,
historic average, aggregate, or trend data with respect to at least one historic
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loss event type, in determining the recommended route. The claims merely
assert that determinations are made "based on" such factors without reciting
programmatic logic for how such determinations are made. Thus,
Appellants' contentions are not commensurate with the claim recitations.
Third, Appellants contend that the Examiner's application of the
Alice/Mayo two-step analysis is "a roadmap for rejecting claims." Reply
Br. 5. In particular, Appellants contend that the Examiner's analysis
"ignores the possibility that (1) the claims may NOT recite an 'abstract idea'
and (2) the pending claims may recite 'something more' than the 'abstract
idea'." Id. Initially, although Appellants contend that "[t]here is no case
known to Appellant[ s] that characterizes electronic navigational routing
hardware and/or software as being properly categorized as 'abstract"' (Reply
Br. 5), the two-step analysis does not require that the recited apparatus,
method, composition of matter, or article of manufacture was found
previously to embody a judicial exception to patentability. See Ans. 7. We
conclude that the Examiner's application of the test steps, including their
order of application, is consistent with the U.S. Supreme Court's guidance.
Ans. 7-9.
Fourth, Appellants contend that the Examiner failed to consider that
the claims recite using a new source or type of information in determining a
recommended navigational route. Reply Br. 5-6. Specifically, claim 1
recites that "the data descriptive of the at least one historic loss event type
comprising at least one of an historic average, an historic aggregate, and an
historic trend." App. Br. 17 (Claim App'x). Appellants contend that "[t]he
claims being appealed are not merely directed to 'recommending
navigational routes', but a very particular ( and novel) implementation of
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navigational routing logic that directs users along different navigational
paths based on historic loss events." App. Br. 13 (emphasis added).
Appellants note that, in Electric Power Group, LLC v. Alstom, 830
F.3d 1350, 1355 (Fed. Cir. 2016), although the court found the claims patent
ineligible, the claims at issue did "not even require a new source or type of
information, or new techniques for analyzing it." Reply Br. 6. In the
pending claims, however, the improvement is focused on the relative
efficiencies in determining a recommended route. Thus, the use of historic
loss event type data is not an improvement in the technology, but on the
abstract idea that uses the technology as tools. Further, in the pending
claims, the alleged improvement is focused largely on things that already
were done, i.e., determining a recommended route based on the historic
dangers on the possible routes. See Spec. ,r,r 2 ( describing known need), 10
( describing risks associated with areas). As the Federal Circuit explained,
because they do not require a new source or type of information or new
techniques for analyzing it, the claims at issue in Electric Power Group
do not require an arguably inventive set of components or
methods, such as measurement devices or techniques, that would
generate new data. They do not invoke any assertedly inventive
programming. Merely requiring the selection and manipulation
of information-to provide a "humanly comprehensible" amount
of information useful for users-by itself does not transform the
otherwise-abstract processes of information collection and
analysis.
Elec. Power Grp., 830 F.3d at 1355 (citations omitted). Therefore, we are
not persuaded that the recited devices' use of historic loss event type data
renders those devices patent eligible.
Fifth, Appellants contend that the Examiner improperly performed the
second step of the patent eligibility analysis and that "the premise that the
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'something more' must comprise a novel hardware component is flawed and
contrary to the currently-understood appropriate§ 101 analysis framework."
Reply Br. 6-7; see App. Br. 14--15. Thus, Appellants contend that the
Examiner has made an overly broad characterization of the claims, which
precludes a proper consideration of the second step of the Alice/ Mayo
analysis. Reply Br. 6-7. We disagree and conclude that Appellants
misunderstand the Examiner's analysis.
Appellants are correct that the Examiner performs the second step of
the Alice/Mayo analysis in light of the identified abstract idea. However, the
level of abstraction at which the Examiner describes the recited device does
not change the accuracy of the Examiner's determination. Apple Inc. v.
Ameranth Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) ("An abstract idea can
generally be described at different levels of abstraction.").
Here, the Examiner identifies the abstract idea as "recommending
navigational routes." Final Act. 2; see Ans. 5. As the Examiner explains,
"[t]he claims are principally drawn to receiving inputs, determining a desired
route, determining risk data, recommending a route and displaying a route
and while[] they may narrow the idea and add a degree of particularity, they
do not make it less abstract." Final Act. 2 ( emphasis added); see Ans. 5.
The Examiner finds that neither the known hardware and/ or software
components (Ans. 11-13) nor the known types of data (id. at 13-14) add
"significantly more" to the abstract idea.
Even if we were to narrow the description of the abstract idea as
Appellants suggest, for example, to "recommending navigational routes
based on historic risk data," it does not change the outcome of the second
step of the Alice/Mayo analysis. Final Act. 2, 7. If the use of historic loss
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event type data is part of the abstract idea, it cannot supply the "significantly
more" required by the second step. As the Federal Circuit has explained,
"[i]t has been clear since Alice that a claimed invention's use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention 'significantly more' than that ineligible concept."
BSG TechLLCv. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
Consequently, we are not persuaded that the Examiner erred in
rejecting claims 1-16 and 23-25, and we sustain the rejections thereof.
IV. DECISION
For the above reasons, we affirm the Examiner's decision rejecting
claims 1-16 and 23-25.
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
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