Ex Parte Zheng et al

Patent Trial and Appeal Board

Jan 18, 2018

12388901 (P.T.A.B. Jan. 18, 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.
12/388,901 02/19/2009 Yu Zheng 326004.01 2301
69316 7590 01/22/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
NAJARIAN, LENA
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
01/22/2018 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):
u sdocket @ micro soft .com
chriochs @microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YU ZHENG, LIZHU ZHANG, XING XIE,
and WEI-YING MA
Appeal 2016-006442
Application 12/388,901
Technology Center 3600
Before: ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
JASON M. REPKO, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2016-006442
Application 12/388,901
Appellants requested a rehearing of our Decision dated September
20th, 20171, wherein we affirmed the Examiner’s rejections of claims 1-15
under 35U.S.C§ 101 as being directed to an abstract idea and the
Examiner’s rejection of claim 1 under 35 U.S.C § 102(e) as well as of claims
2-6 and 9 under 35 U.S.C § 103(a).
We have reconsidered our Decision regarding the claims in light of
Appellants’ comments in the Request (Req. Reh’g 2-17). We grant the
Rehearing Request to the extent that we consider Appellants’ arguments
infra, but deny the request to modify our Decision. We incorporate our
earlier Decision herein by reference. See 37 C.F.R. § 41.52(a)(1).
Appellants argue that in light of the recent decisions of McRO and
Enfish2 we must reconsider our decision because claim 1 similarly
“improves a computer or other technology.” Req. Reh’g. 6. More
particularly, Appellants assert that the limitations of claim 1 reciting
receiving location histories of multiple individuals comprising a
log of periodically captured geospatial locations which were
visited by one or more of the individuals in the geospatial
region over a period of time, modeling the location histories of
the multiple individuals who travelled through the region, [and]
identifying interesting locations in the region using the modeled
location histories based on a number of individuals visiting a
location in the region weighted in terms of the travel experience
of the individuals visiting the location, said travel experience of
an individual being based on the number of locations that
1 We refer to Appellants’ Request for Rehearing (“Req. Reh’g.”) filed
November 20, 2017 and our Decision on Appeal (“Dec.”) mailed September
10, 2017.
2 Referring to McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299 (2016) and Enfish, LLCv. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016).
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Application 12/388,901
individual has visited in the region in the past, [and] generating
a list of the interesting locations identified in the region.
(hereinafter referred to as locations identification limitation) amount to an
improvement because Appellants’ Specification describes a modeled
location histories feature that advantageously exploits the hierarchical
structure of the tree-based hierarchical graph (TBHG) by allowing
interesting locations and experienced users to be pre-calculated off-line for a
variety of geospatial regions. Req. Reh’g. 6-12.
We are not persuaded by Appellants’ argument. We already
addressed this issue by addressing Alice (Dec. 4-7). In particular, we stated
that since claim 1 is “directed to” a patent-ineligible abstract idea, we
considered the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea as required
by step two of Alice. Alice, 134 S. Ct. at 2355, discussed in Dec. 5-7. This
is a search for an “inventive concept”—an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. at 6. “[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.” Alice Corp. Pty. Ltd., 134 S. Ct. at
2359. Id.
We stated, that taking the claim elements separately, the function
performed by the computer at each step of the process is conventional. Dec.
6. Using a computer to receive input and generate information from the
input to provide the resulting information (i.e., identifying interesting
locations in the region) constitute basic computer functions. Dec. 6. Each
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Appeal 2016-006442
Application 12/388,901
method step does no more than require a generic computer to perform
generic computer functions. Dec. 6. Conventional algorithm application,
whether done ahead of time or in real-time does not improve the computer
technology in any way. Inputting in the algorithmic formula the number of
times visitors visited the location of interest to provide a recommendation is
just such a conventional application. This is conventional computer routines
in the art as evidenced by Vengroff teaching
location points that are of interest (e.g., based on those locations
being common, repeated, or otherwise frequent destinations of
users in a geographic area). The routine may be invoked, for
example, with respect to block 1315 of FIG.13, or otherwise
directly by other visitization system components or external
systems. In the illustrated embodiment, the routine generates
location models for locations that are determined to be of
interest, which in some embodiments may be Location Spatial
Models (“LSMs”)
(para. 25).
In other words, the computer itself is not improved in any way. The current
invention simply executes a model or routine conventional in the art unlike
McRO in which further automation of computer rules were deemed to
improve the technology. In McRO the Court stated that the structure of the
limited rules reflects a specific implementation not demonstrated as that
which any animator engaged in the search for an automation process would
likely have utilized. McRO at 1351. Furthermore, the Court noted that by
incorporating the specific features of the rules as claim limitations, claim 1
was limited to a specific process for automatically animating characters
using particular information and techniques. Id. In contrast, in the instant
claim there is no claiming of rules and off-line calculations don’t affect the
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Application 12/388,901
computer function of any rules in any way. At best, the modeling in the
instant case amounts to an automation of a known manual procedure. See
LeapfrogEnt., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir.
2007). The computer in the instant invention is merely used as a tool to run
the modeling algorithm.
As we previously stated, when considering claims purportedly
directed to an improvement of computer functionality, the inquiry becomes
“whether the focus of the claims is on the 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 tool.” Enflsh,
LLCv. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Dec. 6.
In the instant claim 1, the computer implemented method is merely used as a
tool to execute a mathematical formula of weighing input data to provide a
solution (i.e., a recommendation). Id. Furthermore, collecting information
from individuals who previously visited the locations, does not make the
content any less abstract because collecting information limited to particular
content is within the realm of abstract ideas. See Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016). Id.
Appellants further argue that the Board either misapprehended or
overlooked the claimed location weighting feature of the rejected claims (as
defined in the Appeal Brief on Page 11) in its affirmation of the Examiner's
rejection of Claim 1 under 35 USC § 102(e) as being anticipated by
Vengroff. Req. Reh’g 15. Appellants asserted that just considering the
number of visits to a specific location is not enough to teach the claimed
location weighting feature. Req. Reh’g 16. The rejected claims require that
these visits be “weighted in terms of the travel experience of the individuals
visiting the location” and in addition, the rejected claims recite that the travel
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Application 12/388,901
experience of an individual is “based on the number of locations that
individual has visited in the region in the past” {id.).
We do not agree with Appellants’ argument. As we previously
explained, Vengroff discloses that “p(Lv) represents the prior probability
distribution of visits to Lv or its ‘popularity’ which we can approximate by
the to-date observed frequency of visits and refine as likely new visits are
detected, while p(VLi) is the prior distribution of visits by the specific user
to the location’'’ (para. 76). Dec. 7. Thus, there is consideration of the
number of visits at the specific location by the specific user. Id. Appellants’
claim defines “weighed” in terms of the “travel experience” and the “travel
experience” as “the number of locations that individual has visited in the
region in the past” {see claim 1). Thus, the “weighed” term is in essence the
number of times the user returned to the particular location. Accordingly,
Vengroff s prior distribution of visits by the specific user to the location
meets the “weighed” term as claimed.
DECISION
For the reasons stated above, Appellants have not persuaded us that
we misapprehended or overlooked any issue of fact or law in our Decision.
We have granted Appellants’ Request for Rehearing to the extent that
we have reconsidered our Decision dated September 20th, 2017, but we deny
Appellants’ request to make any changes therein.
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.
§ 41.50(f).
REHEARING DENIED
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