Ex Parte PU et al

Patent Trial and Appeal Board

Jun 25, 2018

12186524 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/186,524 08/06/2008
26797 7590 06/27/2018
LogicPatents, LLC
21701 Stevens Creek Boulevard, #284
CUPERTINO, CA 95015
FIRST NAMED INVENTOR
KentQing PU
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.
Kent-007 1339
EXAMINER
MORGAN, ROBERT W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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):
uspatents@sbcglobal.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENT QING PU, IV AN ANGELOV, and DAVID THIEME
Appeal2017-003775
Application 12/186,524
Technology Center 3600
Before ST. JOHN COURTENAY III, BETH Z. SHAW, and
SCOTT B. HOWARD, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-20, which are all the claims pending in this
application. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b ).
We reverse.
STATEMENT OF THE CASE
Introduction
Exemplary embodiments of Appellants' invention relate generally to
"the area of Global Positioning System (GPS)." Spec. i-f 2. In particular, the
invention on appeal "is related to navigation on non-linearly scaled maps
1 The real party in interest is Information Corporation. App. Br. 1.
Appeal2017-003775
Application 12/186,524
and how to display such non-linearly scaled maps with proper colors on a
display screen." Id.
Exemplary Claim
1. A method for navigating in a particular area, the method
compnsmg:
downloading from a network into a computing device an artistic
map, the artistic map being non-linearly scaled and including
various objects being exaggeratedly shown on the computing
device to facilitate a user using the computing device to view and
select one of the objects to navigate thereto in the artistic map,
wherein the computing device is portable, equipped with
navigation capability and provides a traveling guidance on a
geographical map, the artistic map is not used directly by the
computing device for navigation, each of the objects is
represented by a plurality of points on a display of the computing
device, and the geographical map is not being displayed on the
display;
receiving in the computing device a selection on the one of the
objects from the user as a selected object;
determining by the computing device a pair of coordinates for
one of the points on the selected object;
transforming in the computing device the pair of coordinates to
a physical point represented by a pair of latitude and longitude in
the geographical map not being shown on the display,
the points representing the selected object having different pairs
of coordinates, but all of the different pairs of coordinates for the
selected object corresponding substantially to the physical point
when said transforming is performed;
detecting a current location of the computing device in the
geographical map;
determining according to the geographical map a navigational
direction from the current location to the one of the objects being
selected; and
2
Appeal2017-003775
Application 12/186,524
showing the navigational direction on the artistic map being
displayed.
Emphasis added regarding the contested negative limitation.
Rejections2
A. Claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Non-Final Act. 3.
B. Claims 1--4 and 11-14 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being obvious over the combined teachings and suggestions of
Salmre (US 2007 /0176932 Al, published Aug. 2, 2007), in view of
Agrawala et al. (US 2005/0149303 Al, published July 7, 2005),
hereinafter referred to as Salmre and Agrawala, respectively. Non-
Final Act. 4.
C. Claims 5-9 and 15-19 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and
suggestions of Salmre and Agrawala, and further in view of Suomela
(US 6,697,734 Bl, issued Feb. 24, 2004). Non-Final Act. 7.
D. Claims 10 and 20 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over the combined teachings and suggestions of Salmre
and Agrawala, and further in view of Rasmussen (US 2006/0206264
Al, published Sept. 14, 2006). Non-Final Act. 10.
2 Regarding the rejections of claims 11-20, the Examiner indicates: "As per
Claims 11-20, Claims 11-20 are directed to a portable device. Claims 11-20
recite the same or similar limitations as those addressed above for Claims 1-
10. Claims 11-20 are therefore rejected for the same reasons set forth above
for Claims 1-10." Non-Final Act. 10. We have corrected the headings of
rejections B, C, and D, accordingly, as shown above.
3
Appeal2017-003775
Application 12/186,524
Issues on Appeal
Did the Examiner err in rejecting claims 1-20 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1-20 under pre-AIA
35 U.S.C. § 103(a) as being obvious over the cited combinations of
references?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Mayo/Alice Analysis under 35 USC§ 101
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 Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
4
Appeal2017-003775
Application 12/186,524
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. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which 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). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
5
Appeal2017-003775
Application 12/186,524
The Examiner's Rejection A under 35 USC§ 101
Regarding the first step of the Alice/ Mayo analysis, the Examiner
concludes claims 1-20 are directed to:
the abstract idea of comparing new and stored information and
using rules to identifj; options. While the claims may not
explicitly recite, "comparing new and stored information and
using rules to identify options", the concept of "comparing new
and stored information and using rules to identify options" is
described, for example, by the downloading, receiving,
determining, transforming, detecting, determining and showing
steps as recited in currently amended independent Claim 1.
Non-Final Act. 3 (emphasis added). 3
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception,
because the additional elements or combination of elements in
the claims in conjunction with the abstract idea per se amounts
to no more than mere instructions to implement the idea on a
computer, and/or the recitation of generic computer structure
that serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously
known to the pertinent industry.
Non-Final Act. 3, emphasis added. 4
3 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir.
2013).
4 The patent eligibility inquiry may contain underlying issues of fact. Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811F.3d1314, 1325 (Fed.
Cir. 2016). In particular, "[ t ]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881F.3d1360, 1368 (Fed. Cir. 2018).
6
Appeal2017-003775
Application 12/186,524
For these reasons, the Examiner concludes that all claims 1-20 on
appeal are not patent-eligible under 35 U.S.C. § 101.
Mayo/Alice Analysis -Step 1
Regarding Alice Step 1, Appellants contend, inter alia:
[T]he Examiner has mischaracterized the claims. Neither the
Specification nor the claims indicate any operation involving a
set of data being compared with a stored data. The Examiner
then continues with the self-contradictory statement While the
claims may not explicitly recite, "comparing new and stored
information and using rules to identify options", the concept of
"comparing new and stored information and using rules to
identify options" is described, for example, by the downloading,
receiving, determining, transforming, detecting, determining and
showing steps as recited in currently amended independent
Claim 1. As will be further described below, Claim 1 neither
recites nor indicates anything related to comparing new and
stored information and using rules to identify options as is being
alleged by the Office Action but rather to the (many-to-one)
transformation of coordinates in an artistic map to a pair of
latitude and longitude in the geographical map.
App. Br. 7, emphasis added and omitted.
At the outset, we agree with the Appellants' that the Examiner has
mischaracterized the claim language. App. Br. 7. We particularly note the
Examiner expressly acknowledges the "claims may not explicitly recite,
'comparing new and stored information and using rules to identify options,'"
which is the sole basis proffered by the Examiner to support the legal
conclusion that Appellants' claims are directed to an abstract idea. See Non-
Final Act. 3. Nor does the Examiner conclude that Appellants' claims are
directed to a fundamental economic practice, a method of doing business, or
7
Appeal2017-003775
Application 12/186,524
a method of organizing human activity. The Examiner's citation in the
Answer (11) to the non-precedential SmartGene Federal Circuit opinion (as
a persuasive but not mandatory authority) does little to support the
Examiner's position. 5 Nor has the Examiner identified any specific rules
recited in claim 1. Therefore, we agree with Appellants that the Examiner
has not established that the claims are directed to an abstract idea under
Alice, step 1. If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC, 867 F.3d at 1262.
Accordingly, for at least these reasons, we are constrained on this
record to reverse the Examiner's rejection under 35 U.S.C. § 101 of claims
1-20, as being purportedly directed to patent-ineligible subject matter in
light of Alice and its progeny.
Rejection B of Claims 1-4 and 11-14 under§ 103(a)
As an initial matter of claim construction, we focus on the contested
negative limitation that was added by amendment during prosecution: "the
artistic map is not used directly by the computing device for navigation."
Claim 1, emphasis added.
We have reviewed Appellants' cited support for the aforementioned
negative limitation, as found in the Specification (App. Br. 3 referring to
5 The Examiner is referring to SmartGene, Inc. v. Advanced Biological
Laboratories, SA, 555 F. App'x 950, 955 (Fed. Cir. 2014) ("Whatever the
boundaries of the 'abstract ideas' category, the claim at issue here involves a
mental process excluded from section 101: the mental steps of comparing
new and stored information and using rules to identify medical options.")
( nonprecedential).
8
Appeal2017-003775
Application 12/186,524
i-fi-129, 30, 41--43). Our reviewing court guides that "[n]egative claim
limitations are adequately supported when the specification describes a
reason to exclude the relevant limitation. Such written description support
need not rise to the level of disclaimer. In fact, it is possible for the patentee
to support both the inclusion and exclusion of the same material." Santarus,
Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). See also
MPEP § 2173 .05(i) ("Any negative limitation or exclusionary proviso must
have basis in the original disclosure .... The mere absence of a positive
recitation is not basis for an exclusion.").
Turning to the proffered support found in Appellants' Specification, at
paragraph 43, we find sufficient support that would lead an artisan to use a
geographic map and exclude using a "deformed" artistic map for navigation
purposes:
A user of a GPS device showing a local artistic map
needs to visualize the current position in the artistic map. While
the current position is presented by the GPS device per a pair of
geographic coordinates (longitude/latitude). According to
one embodiment, a transformation from the geographic
coordinates to image pixel coordinates is carried out to ensure
that the current position or a destination is correctly presented
in the artistic map. Since the artistic map can be very deformed
and different from the corresponding real geographic map,
different approaches may be applied for implementing such a
transformation.
Spec. ,-r 43.
Thus, we find the originally-filed Specification sufficiently identifies
a description of "a reason to exclude the relevant limitation" to satisfy the
requirements under pre-AIA 35 U.S.C. § 112, first paragraph. See Santarus,
694F.3dat 1351.
9
Appeal2017-003775
Application 12/186,524
Further regarding the contested negative limitation ("the artistic map
is not used directly by the computing device for navigation"), Appellants
contend:
Salmre is silent about whether the non-linear map can be or
cannot be used directly on the computing device for navigation.
Claim 1 of the instant application recites the "artistic" map is
not used directly by the computing device for navigation,
instead, the geographical map is referenced for the navigational
direction that is then shown onto the artistic map by "showing
the navigational direction on the artistic map being displayed."
Given the one-to-one transformation, Salmre does not care
whether the non-linear map can be or cannot be used directly
on the computing device for navigation.
App. Br. 13 (emphasis added and omitted).
We note the Examiner relies on Salmre as teaching or suggesting the
contested negative limitation. Non-Final Act. 4. However, we find the
Examiner provides no specific mapping which reads the contested negative
limitation on a particular feature found in Salmre (or in Agrawala). 6 We
reproduce the pertinent portion of the Examiner's rejection below:
As per Claim 1, Salmre discloses a method for navigating in a
particular area, the method comprising:
• downloading from a network into a computing
device an artistic map, the artistic map being non-linearly
scaled and including various objects being exaggeratedly
shown on the computing device to facilitate a user using
the computing device to view and select one of the
6 See 37 C.F.R. § 1.104(c)(2) ("When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence of
each reference, if not apparent, must be clearly explained and each rejected
claim specified." Emphasis added.
10
Appeal2017-003775
Application 12/186,524
objects to navigate thereto in the artistic map, wherein
the computing device is portable, equipped with
navigation capability and provides a traveling guidance
on a geographical map, the artistic map is not used
directly by the computing device for navigation, each
of the objects represented by a plurality of points on a
display of the computing device, and the geographical
map is not being displayed on the display [see at least,
Abstract; Figure 2; p. 1, fOOOl (mobile device from
application incorporated into current application); p. 1,
f0007; p. 1, f0008; p. 1, fOOl l; p. 2, f0034; p. 2,
f0035; p. 6, f0067; p. 6, f007 l (mobile devices); p. 6,
f[0072-f007 4, of Salmre ];
Non-Final Act. 4 (bold added for emphasis, italic in original).
In reviewing the record, we particularly note the Examiner does not
further respond in the Answer to Appellants' arguments regarding the
contested negative limitation. Because the Examiner has not fully developed
the record to establish how Salmre (or Agrawala) teaches or suggests the
disputed negative limitation, we find speculation would be required to affirm
the Examiner on this record. We decline to engage in speculation. "A
rejection ... must rest on a factual basis .... " In re Warner, 379 F.2d 1011,
1017 (CCPA 1967). "The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not ... resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis." Id.
Therefore, we are constrained by the record before us to find the
Examiner erred in concluding the combination of Salmre and Agrawala
renders obvious Appellants' independent claim 1.
Accordingly, we reverse the Examiner's§ 103(a) rejection B of
independent claim 1, and for the same reasons we also reverse rejection B of
11
Appeal2017-003775
Application 12/186,524
remaining independent claim 11, which recites the aforementioned contested
negative limitation using similar language of commensurate scope. Because
we have reversed rejection B of all independent claims, for the same reasons
we reverse the Examiner's § 103(a) rejection of all dependent claims also
rejected under rejection B.
Remaining§ 103 Rejections C and D all Remaining Dependent Claims
In light of our reversal of rejection B of independent claims 1 and 11,
supra, we also reverse rejections C and D of all remaining dependent claims
which variously and ultimately depend therefrom. On this record, we find
the Examiner has not shown how the additionally cited secondary references
overcome the aforementioned deficiency of the base combination of Salmre
and Agrawala, as discussed above regarding claim 1, and the contested
negative limitation.
Conclusions
The Examiner erred in rejecting claims 1-20, under 35 U.S.C. § 101,
as being directed to patent-ineligible subject matter.
The Examiner erred in rejecting claims 1-20 as being obvious over
the cited combinations of references under pre-AIA 35 U.S.C. § 103(a).
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
REVERSED
12