Ex Parte Healey et al

Patent Trial and Appeal Board

Mar 29, 2018

13977584 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/977,584 05/02/2014
47795 7590 04/02/2018
TROP, PRUNER & HU, P.C.
1616 S. VOSS RD., SUITE 750
HOUSTON, TX 77057-2631
FIRST NAMED INVENTOR
Jennifer Healey
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.
ITL.3487US (P41751US) 1229
EXAMINER
PECHE, JORGE 0
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
tphpto@tphm.com
Inteldocs _ docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNIFER HEALEY, ALEXANDRAZAFIROGLU, and
BARBARA ROSARIO
Appeal2017-007552
Application 13/977,584
Technology Center 3600
Before MURRIEL E. CRAWFORD, CYNTHIAL. MURPHY, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
MURPHY,Administrative Patent Judge.
DECISION ON APPEAL
TheAppellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 31--40. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 "The real party in interest is Intel Corporation." (Appeal Br. 3.)
Appeal 2017-007552
Application 13/977,584
STATEMENT OF THE CASE
According to the Appellants, this case relates "generally to vehicle
navigation systems, and more particularly, to navigation systems that
promote or enhance additional driver awareness." (Spec., page 1, lines 4--5.)
Illustrative Claim
31. A method comprising:
determining information associated with a location of a
vehicle;
collecting based at least in part upon the determined
location, awareness information associated with the vehicle's
location, the awareness information comprising a road use
restriction;
generating by the navigation system at least in part upon
the collected awareness information, output information for
presentation; and
outputting the generated output information.
Rejections
I. The Examiner rejects claims 31--40under35U.S.C.§101 as
failing to recite statutory subject matter. (Final Action 2-5.)
II. The Examiner rejects claims 31, 34, and 36 under 35 U.S.C.
§ 102(b) as anticipated by Eckstein. 2 (Final Action 6.)
III. The Examiner rejects claims 32, 33, and37-39under 35 U.S.C.
§ 103(a) as unpatentable over Eckstein in view of Abe. 3 (Final Action 9.)
IV. The Examiner rejects claim 35 under 35 U.S.C. § 103(a) as
unpatentable over Eckstein in view of Stehle. 4 (Final Action 8.)
2 Eckstein et al., US 2006/0114123 Al, published June 1, 2006.
3 Abe, US 2011/0137518 Al, published June 9, 2011.
4 Stehle et al., US 2007/0293958 Al, published December20, 2007.
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Application 13/977,584
V. The Examiner rejects claim 40 under 35 U.S.C. § 103(a) as
unpatentable over Eckstein in view of Abe and Stehle. (Final Action 11.)
VI. The Examiner rejects claims 31--40under35U.S.C.§112,
second paragraph, as indefmite. (Final Action 5---6.)
ANALYSIS 5
Claims 31 and 36 are the independent claims on appeal, with the rest
of the claims on appeal (i.e., claims 32-35 and 37--40) depending therefrom.
(See Appeal Br., Claims App.) Independent claims 31 and 36 recite steps or
instructions for determining "information associated with a location of a
vehicle," collecting "awareness information," generating "output
information for presentation," and outputting "the generated output
information." (Id.) With particular reference to the collected "awareness
information," independent claims 31 and 3 6 require it to "compris [ e] a road
use restriction." (Id.)
According to the Appellants, "[b ]ased on the record before us, there is
no basis to believe that anyone has ever in the history thought to warn
people of a road use limitation." (Reply Br. 2.)
Rejection!
As indicated above, independent claims 31 and 36 recite the
determination, the collection, the generation, and the output of information
5 An Appeal Brief was filed on July 6, 2016 with a non-compliant Claims
Appendix, and a Corrected Appeal Brief was filed on November 9, 2016. In
our analysis below, and our footnote above, a citation to the Appeal Brief
("Appeal Br.") refers to the Corrected Appeal Brief filed on November 9,
2016. We also cite to the Appellants' Reply Brief ("Reply Br.") filed on
April 20, 2017, the Final Action ("Final Action") mailed on May 12, 2016,
and the Examiner's Answer ("Answer") mailed on February 23, 2017.
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Application 13/977,584
relating to vehicle location and navigational-relevant road conditions.
(Appeal Br., Claims App.) The Appellants stress (see Reply Br. 1-3), and
so we repeat, that the claims require the collected awareness information to
"compris[ e] a road use restriction." (Appeal Br., Claims App.)
The Examiner determines that the claims on appeal are directed an
"abstract idea," and that the claims on appeal do not recite "significantly
more" than the abstract idea. (See, e.g., Answer 3--4.) More succinctly, the
Examiner concludes that the claims on appeal do not survive the two-part
Alice test. 6 We have carefully reviewed the Appellants' arguments
regarding the wrongness of this conclusion (see Appeal Br. 7-8; Reply
Br. 1-3), but are not swayed thereby. We are not swayed because, when we
apply the two-step Alice test to the claims on appeal, we reach the same
conclusion as the Examiner, namely that they do not pass muster under 3 5
U.S.C. § 101.
As for the first step of the Alice test, we agree with the Examiner that
the claims on appeal are directed to "data gathering, filtering the collected
data (possibly using conventional math) and outputting the data."
(Answer 3.) As such, and as noted by the Examiner (see id.), Electric Power
6 The Alice test entails two steps for distinguishing between an "abstract
idea[]" and a "patent-eligible application[]" of an abstract idea. Alice Corp.
Pty.Ltd. v. CLSBankint'l, 134S. Ct.2347,2355(2014). Thefrrststepofthe
Alice test is to determine whether the claims at issue are "directed to" a
patent-ineligible concept, e.g., an abstract idea. Id. (citation omitted). If so,
the inquiry proceeds to the second step of the Alice test where the elements of
the claims are considered "individually and 'as an ordered combination'" to
determine whether there are additional elements that "'transform the nature of
the claim' into a patent-eligible application." Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1298, 1297
(2012).
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Group, LLCv. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) provides apropos
precedent for us to follow. In Electric Power, the claims were likewise
directed to "gathering and analyzing information of a specified content, then
displaying the result," and the Federal Circuit decided that these similar
claims fell under the information-based umbrella of abstract ideas. (Id.
at 13 5 3.) We agree, therefore, with the Examiner's determination that the
claims on appeal are directed to an information-based abstract idea
(Answer 3); and we note that this determination aligns with controlling case
law. 7
As for the second step of the Alice test, we agree with the Examiner
that the additional elements recited in the claims consist of the navigation
system used to generate the output information for presentation. (See
Answer 4.) According to the Specification, " [ t ]he use of vehicle navigation
systems is now ubiquitous," "the information output by conventional
navigations system typically allows a user to determine a location of a
vehicle," and "navigation systems typically output visual and audio
directions." (Spec., page 1, lines 7-12.) Thus, the use of the navigation
system to generate output presentation data, individually, does not transform
the above-identified abstract idea into patent-eligible subject matter. As for
the "ordered combination" prong of the second step of the Alice test, the
Appellants do not point to, and we do not see, any claim language requiring
7 See Amdocs (Israel) Limited v. Openet Telecom, Inc., 841F.3d1288, 1294
(Fed. Cir. 2016) (When considering whether a claim is directed an abstract
idea, a decisional mechanism that can be applied "is to 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.")
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Application 13/977,584
a special arrangement or order of the navigation system relative to other
elements or any technical improvement to the navigational system itself
resulting from its use in combination with the recited functions.
The Appellants advance arguments premised upon the claims reciting
"a road use restriction." (See Reply Br. 1-3.) We are not persuaded by
these arguments because this recital only goes to the content of the
information being collected. And "merely selecting information, by content
or source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
exclusion from § 101 undergirds the information-based category of abstract
ideas." Electric Power, 830 F. 3d. at 1353-54. Assuming arguendo, that
nobody else "has ever in the history thought to warn people of a road use
limitation" (Reply Br. 2), this claimed feature still constitutes nothing but
intangible "information." See, e.g., Synop..,:vs, Inc. v. Aientor Grap hi cs
Cmp., 839F.3d1138~ 1151 (Fed, Cir. 2016) ('"[A] clan11 fr)r a ne1v abstract
idea is still an abstract idea,~}
The Appellants also advance arguments premised upon the claims
reciting a "navigation system." For example, the Appellants assert their
claims "require[] the analysis be done by a navigation system" and thus do
"not cover an abstract idea." (Appeal Br. 7.) However, this is just another
way of saying that a computer is being used as tool to implement the abstract
idea. The Appellants also contend that their claimed concept "uses
electronics, and navigational system capabilities to provide an improvement
to what the user could do on his or her own simply by looking at logs of
known road use restrictions." (Id. at 8.) Be this as it may, relying on
computer-related components to perform routine tasks more quickly or more
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accurately is insufficient to render a claim patent eligible. See GIP Techs.,
Inc. v. Amazon.com, Inc., 788F.3d1359, 1363 (Fed. Cir. 2015).
The Appellants further contend that that their claimed concept "does
not keep people from producing printed logs that indicate where all the road
use restrictions might be." (Appeal Br. 8.) Insofar as the Appellants are
pointing to preemption, or a lack thereof, to support their position, we are
unpersuaded. Where, as here, the claims are deemed only to recite patent
ineligible subject matter under the two-step Alice test, "preemption concerns
are fully addressed and made moot." Ari osa Di agnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Thus, we sustain the Examiner's rejection of independent claims 31
and 3 6, and claims 3 2-3 5 and 3 7--40 depending therefrom, 8 under 3 5 U.S. C.
§ 101.
Rejection!!
As indicated above, independent claims 31 and 36 require the
collected awareness information to "compris[ e] a road use restriction."
(Appeal Br., Claims App.) The Examiner determines that Eckstein discloses
the collection of awareness information which comprises a road use
restriction. (See Final Action 7.) Eckstein discloses collecting information
about an "accident" and a "traffic jam that forms before the location of the
accident." (Eckstein if 60.)
8 Although the Appellants do not argue the dependent claims separately (see
Appeal Br. 7-8); we nonetheless note that they recite only details regarding
the source or content of the information being collected (e.g., dependent
claims 32-34), the collected information being stored(e.g., dependent
claims 37-39) and/or the output information being generated (e.g.,
dependent claims 35 and 40).
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The Appellants argue that " [ s] ome accidents may be pulled off to the
side of the road," and apparently would therefore not restrict the use of the
road. (Reply Br. 1; see also Appeal Br. 8.) We are not persuaded by this
argument because, as indicated above, Eckstein also collects awareness
information regarding the traffic jam that forms before the location of the
accident, and such a traffic jam would restrict the use of the road. 9
The Appellants also argue that a "road use limitation" must "tell the
driver that additional piece of information that there is also a limitation on
the use of the road." (Reply Br. 2.) We are not persuaded by this argument
because it is not commensurate with the scope of the claims. Independent
claims 31 and 36 do not require the generated output information to specify
that there is a road use restriction; independent claims 31 and 36 only require
the generated output information to be based at least in part on the collected
awareness information. Thus, for example, a map-like output detouring a
driver around the traffic jam would be based upon the collected awareness
information, even if it did not mention the traffic jam. In any event, an
output informing the driver of a traffic jam would indeed tell the driver that
additional piece of information that there is a road restriction.
The Appellants further argue that that prior art "fail[ s] to appreciate
the value of warning, not for every accident or road construction, but more
particularly to warn about road use limitations." (Reply Br. 2.) We are not
persuaded by this argument because, again, it is not commensurate with the
scope of the claims. Independent claims 31 and 36 do not preclude the
9 A dictionary defmition for "restriction" is "a limitation on the use or
enjoyment of property or a facility." https ://www. merriam-
webster. com/ dictionary /restriction (last visited March 25, 2018).
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collection of other awareness information and/or do not preclude the
generation of other outputs (e.g., warnings) based thereupon.
Thus, we sustain the Examiner's rejection of independent claims 31
and 36, and claim 34 depending from independent claim 31, 10 under
35 U.S.C. § 102(b)as anticipated by Eckstein.
Rejections III-V
The Examiner's obviousness rejections of dependent claims 32, 33,
35, and 37--40 likewise rely on Eckstein to disclose the collection of
awareness information "comprising a road use restriction." (See Final
Action 8-12.) Insofar as the Appellants argue that the additional references
relied upon by the Examiner (i.e., Abe and/ or Stehle) do not show or suggest
awareness information comprising a road use restriction (see Appeal Br. 8-
9; see also Reply Br. 1-3), we are unpersuaded by these arguments. As
discussed above, we agree with the Examiner that the claimed collection of
awareness information, and the claimed generation of output information, is
taught by Eckstein.
Moreover, the Examiner "need not seek out precise teachings directed
to the specific subject matter of the challenged claim" as "the inferences and
creative steps that a person of ordinary skill in the art would employ" can be
taken into account. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
We agree with the Examiner's position (see e.g., Final Action 10-12), that,
based on the teachings of the prior art references of record, one of ordinary
skill in the art would have thought to warn people of a road use restriction,
10 The Appellants do not argue dependent claim 34 separately from
independent claim 31. (See Appeal Br. 7-8.)
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as well as implement the detecting, proposing, and storing steps recited in
the dependent claims on appeal. We disagree, therefore, with the
Appellants' contention that "[ o ]ne skilled in the art might not have
appreciated that it was not enough to let someone know that there was
construction or there was an accident but that it would be better to let people
know there was in particular, a limitation on the use of the road." (Reply
Br. 2.)
Thus, we sustain the Examiner's rejection of dependent claims 32, 33,
35 and 37--40under 35 U.S.C. § 103(a) as unpatentable over Eckstein in
view of Abe and/or Stehle.
Rejection VII
The Examiner rejects independent claims 31 and 36, and the claims
depending thereupon, as being indefmite (see Final Action 5---6), and the
record indicates that rejection has not been withdrawn (see Answer 8-9). As
the Appellants present no arguments regarding this rejection (see Appeal
Br. 7-8; see also Reply Br. 1-3), we summarily sustain the Examiner's
rejection of claims 31--40 under 35 U.S.C. § 112, second paragraph.
DECISION
We AFFIRM the Examiner's rejection of claims 31--40 under
35 U.S.C. § 101.
We AFFIRM the Examiner's rejection of claims 31, 34, and 36 under
35 U.S.C. § 102(b).
We AFFIRM the Examiner's rejections of claims 32, 33, 35, and
37--40under35 U.S.C. § 103(a).
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Application 13/977,584
We AFFIRM the Examiner's rejection of claims 31--40 under
35 U.S.C. § 112, second paragraph.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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