Ex Parte Pieper et al

Patent Trial and Appeal Board

Feb 15, 2018

13481353 (P.T.A.B. Feb. 15, 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.
13/481,353 05/25/2012 Joshua J. Pieper JRJ-00201 4287
25181 7590 02/20/2018
FOLEY HOAG, LLP (General)
PATENT GROUP, SEAPORT WEST
155 SEAPORT BLVD
BOSTON, MA 02210-2600
EXAMINER
CAMBY, RICHARD M
ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
02/20/2018 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):
Patent@foleyhoag.com
pair_foleyhoag @ firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA J. PIEPER, JEREMY H. BROWN, and
MATTHEW J. MARJANOVIC
Appeal 2017-005868
Application 13/481,353
Technology Center 3600
Before ANNETTE R. REIMERS, SUSAN L. C. MITCHELL, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision2 rejecting claims 1—9, 11—19, 21—29, and 31—45 as
being directed to patent ineligible subject matter under the judicial exception
to 35 U.S.C. § 101. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Jaybridge Robotics, Inc.
Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated March 10, 2015.
Appeal 2017-005868
Application 13/481,353
THE CLAIMED SUBJECT MATTER
Claims 1, 11, 21, 31, 34, 36, 39, 41, and 44 are the independent claims
on appeal. Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A computer-implemented method of generating a
pre-planned vehicle guidance path for a vehicle by transforming
an initial piecewise linear path into a path that obeys a minimum
vehicle turning radius constraint, the method comprising the
steps, each performed by a computer system, of:
(a) receiving an initial piecewise linear path, a
minimum vehicle turning radius constraint, and a maximum
allowable error constraint;
(b) sectioning the initial piecewise linear path into a
series of connected linear segments, each having points at
opposite ends;
(c) evaluating each of the points along the piecewise
linear path relative to its two immediately neighboring points to
determine if an estimated local turning radius based on the point
being evaluated and its neighboring points is smaller than the
minimum turning radius constraint, wherein the estimated local
turning radius comprises a circumradius defined by the points;
(d) if the estimated local turning radius is smaller than
the minimum turning radius constraint, moving the point being
evaluated to a given point between the neighboring points; and
(e) iteratively repeating steps (c) and (d) until there are
no points forming an estimated local turning radius that is smaller
than the minimum turning radius to define a path to be traveled
by the vehicle.
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ANALYSIS
Appellants argue claims 1—9, 11—19, 21—29, and 31—45 as a group.
Appeal Br. 7—11. We select claim 1 as representative, with claims 2—9, 11—
19, 21—29, and 31—45 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The Supreme Court has set forth a two-step framework for
determining whether claimed subject matter is judicially-excepted from
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLSBank
Int’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). Accordingly, we
must first “determine whether the claims at issue are directed to one of those
patent-ineligible concepts”—i.e., a law of nature, a natural phenomenon, or
an abstract idea. Id. If so, we secondly “consider the elements of each claim
both 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, 132 S. Ct. at 1298, 1297). The Supreme
Court has described the second part of the analysis as “a 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, 132 S. Ct. at 1294).
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, 132 S. Ct. at 1293. Therefore, we look to whether
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Application 13/481,353
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. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Further, generally a method that can be performed in the human mind
or by a human using a pen and paper is directed to an abstract idea. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson.”); see also Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1146-47 (Fed. Cir. 2016) (“While the Supreme Court has
altered the § 101 analysis since CyberSource in cases like Mayo and Alice,
we continue to ‘treat [ ] analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract idea category.”’ (quoting Elec. Power
Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)).
Regarding step one of the Alice/Mayo framework, the Examiner
determines that “[t]he claims are directed to the abstract idea of a
mathematical relationship and/or formula of generating a pre-planned
guidance path.” Final Act. 2.
Appellants argue that the claimed steps “do not comprise a
‘mathematical relationship or formula.’” Appeal Br. 8 (citing the Merriam-
Webster dictionary for defining “a formula in mathematics” as “‘a general
fact or rule expressed in letters and symbols.’”) (footnote omitted).
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Application 13/481,353
Appellants submit that the claimed method comprises steps “in a particular
practical process invented by Appellants] to transform an initial piecewise
linear path into a path that can feasibly be traveled by a vehicle,” and that
“[s]uch steps do not express ‘a scientific truth,’ and do not raise any public
policy considerations for preventing the use of basic tools in scientific or
technological work.” Id. Appellants conclude, therefore, that “the claims
are not abstract ideas.” Id.
We are not persuaded by Appellants’ argument. The method steps of
claim 1 recite a mathematical algorithm including, in relevant part,
sectioning a linear path into segments having points at opposite ends and
evaluating each of the points relative to neighboring points by a numerical
comparison of the local turning radius (i.e., a circumradius defined by the
point) to a minimum turning radius constraint, moving the point being
evaluated to a given point between the neighboring points if the local turning
radius is smaller than the minimum turning radius, and iteratively repeating
these steps until no such points are smaller than such minimum turning
radius. Although not expressed in letters and symbols, we agree with the
Examiner’s determination that these steps represent a mathematical
algorithm. Notably, the first step of receiving an initial piecewise linear
path, a minimum vehicle turning radius constraint, and a maximum
allowable error constraint, involves assigning geometric and numeric values
to the variables of the claimed mathematical algorithm.
Moreover, the claimed steps can be executed by a human using a pen
and paper, and as discussed supra, analyzing information by steps people
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Application 13/481,353
can perform in their minds, without more, is essentially a mental process
within the abstract idea category.
Thus, we are not apprised of error in the Examiner’s determination
that the subject matter of independent claim 1 is directed to a patent-
ineligible concept, namely, the abstract idea of analyzing information by
steps people can perform in their minds for generating a pre-planned vehicle
guidance path, and further, that the claimed steps are essentially a
mathematical algorithm.
Regarding step two of the Alice/Mayo framework, the Examiner
determines that the additional elements or combination of elements recited
in the claims do not transform the abstract idea into a patent-eligible
application of the abstract idea such that the claims amount to significantly
more than the abstract idea itself, but rather, “merely further limit the
mathematical relationship or formula.” Final Act. 2.
Appellants argue that independent claim 1 “includes unconventional
steps that confine the claim to a particular useful application.” Appeal Br. 9.
In support, Appellants submit that “[t]his is evidenced by the fact that none
of the references cited in the Office Action discloses or even remotely
suggests such steps” and that the claim limitations “are not necessary or
obvious tools for general methods of generating pre-planned vehicle
guidance paths for vehicles.” Id. at 10.
To the extent Appellants argue that the claims necessarily contain an
“inventive concept” based on their alleged novelty and non-obviousness
over the prior art, this argument is unpersuasive. Although the second step
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Application 13/481,353
in the Alice/Mayo framework is termed a search for an “inventive concept,”
the analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “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.”’ Alice, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304. Here, claim 1 is directed to an
abstract idea because the recited steps can be performed in the human mind
by a human using a pen and paper (and further, by applying a mathematical
algorithm), and therefore, we do not agree that the unconventionality of the
steps of claim 1 is sufficient to transform the abstract idea into a patent-
eligible application.
Finally, Appellants rely on Research Corp. Technologies, Inc. v.
Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), wherein “additional steps in
the claim tied the mathematical operation to the computers processor’s
ability to process digital images,” as explained by Appellants. However, as
discussed infra, in contrast to Research Corp. Technologies, the instant
claims describe “[p]urely conventional” computing functions. See Alice,
134 S. Ct. at 2359 (quoting Mayo, 132 S. Ct. at 1298).
Regarding claim 1, the use of a computer is recited in the preamble of
the claim. A preamble is generally not accorded any patentable weight
where it merely recites the purpose of a process or the intended use of a
structure, and where the body of the claim does not depend on the preamble
for completeness but, instead, the process steps or structural limitations are
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Application 13/481,353
able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA
1976). Here, the process steps stand alone to define a mathematical
algorithm for defining a path to be traveled by a vehicle, which as discussed
supra, may be executed with pen and paper. The recitation of “a computer-
implemented method” and “the method comprising the steps, each
performed by a computer system” in the preamble of claim 1 merely
expresses the purpose of the claimed steps, in that steps are intended to be
executed by a computer.3
Notwithstanding, we address the independent claims on appeal which
recite computing components in the body of the claims (i.e., claims 11,36,
and 39, requiring “at least one processor; memory . . . ; [and] a program . . .
.”). We conclude that the introduction of a computer into the claims does
not alter the analysis under step two of the Alice/Mayo framework. In other
words, “the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice Corp., 134 S.
Ct. at 2358; see also Spec. 118 (“The processes for constructing vehicle
guidance paths described above are computer-implemented and may be
implemented in software, hardware, firmware, or any combination thereof.
The processes are preferably implemented in one or more computer
programs executing on a programmable computer system including at least
one processor, a storage medium readably by the processor . . ., and input
and output devices.”). Appellants’ claimed generic computing components
3 We reach the same conclusion with respect to independent claims 21,31,
34, 41, and 44.
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Application 13/481,353
amount to a mere instruction to implement the abstract idea on a computer.
See id. at 2359 (“[T]he relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer.”).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 2—9, 11—19, 21—29, and 31—45 fall therewith.
DECISION
The Examiner’s rejection of claims 1—9, 11—19, 21—29, and 31—45
under 35 U.S.C. § 101 is affirmed.
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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