Petralia, Michael Thomas. et al.

Patent Trials and Appeals Board

Sep 1, 2020

12746445 - (D) (P.T.A.B. Sep. 1, 2020)

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.
12/746,445 06/04/2010 Michael Thomas Petralia 793-62 PCT US 8753
66547 7590 09/01/2020
THE FARRELL LAW FIRM, P.C.
Paul J Farrell
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
JOSEPH, TONYA S
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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):
pto@farrelliplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL THOMAS PETRALIA and JOHN P. WALSH
Appeal 2019-001367
Application 12/746,445
Technology Center 3600
Before LARRY J. HUME, MELISSA A. HAAPALA, and
MICHAEL T. CYGAN, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–3, 5–7, 9–14, 16, 18, and 20, which
are all claims pending in the application. Appellant has canceled claims 4,
8, 15, 17, and 19. See Appeal Br. 10–13 (Claims App.). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Clever Devices.
Appeal Br. 1.
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STATEMENT OF THE CASE2
The claims are directed to a holistic multimodal transport apparatus
and method. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention “relate[] generally to multi-modal
transportation systems, and more particularly, to a multi-modal
transportation system that provides an optimized transportation route
through a correlation of a user's holistic transportation route goals and transit
mode availability.” Spec. 1, ll. 12–15.
Exemplary Claims
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested prior-art limitations):
1. A method for providing a transportation route to a
user comprising the steps of:
collecting, by a transit information system, attribute
information of a plurality of public transit modes through links
to transit vehicles acting as traffic probes, the attribute
information of the plurality of public transit modes including a
level of disabled user accessibility for each transit mode, which
is calculated based on aggregated feedback from a plurality of
users;
providing, by an internet-enabled device, access for a
user to a hardware-implemented routing system through an
interface;

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
June 15, 2018); Reply Brief (“Reply Br.,” filed Dec. 5, 2018); Examiner’s
Answer (“Ans.,” mailed Oct. 5, 2018); Final Office Action (“Final Act.,”
mailed Dec. 22, 2017); and the original Specification (“Spec.,” filed
June 4, 2010) (ultimately claiming benefit of US 60/992,662, filed
Dec. 5, 2007).
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receiving, at the hardware-implemented routing system,
travel information from the user through the interface of the
internet-enabled device, a plurality of transportation route goals
ranked in a specified order by the user through the interface of
the internet-enabled device, attribute information of one or
more personal transit modes owned by the user from the user
through the interface of the internet-enabled device, the
attribute information of the plurality of public transit modes
from the transit information system, and attribute information
of parking capacity and current parking availability for a
personal transit mode at transit nodes;
storing, in the hardware-implemented routing system, the
attribute information of the plurality of transit modes as real-
time records of the attribute information;
determining, by the hardware-implemented routing
system, an optimized transportation route for the user through a
correlation of the plurality of ranked transportation route goals
and the received attribute information of the one or more
personal transit modes, the plurality of public transit modes,
and parking capacity and current parking availability at viable
transit nodes along potential routes, which correspond to the
received travel information, wherein the transportation route
comprises one or more transit modes from the one or more
personal transit modes and the plurality of public transit modes;
and
transmitting the optimized transportation route from the
hardware-implemented routing system to the internet-enabled
device of the user through the interface.
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REFERENCES
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Burgener US 5,736,940 Apr. 7, 1998
Lee US 2006/0178822 Al Aug. 10, 2006
Hileman US 2007/0073552 A1 Mar. 29, 2007
Speier et al. (“Speier”) US 2009/0048771 A1 Feb. 19, 2009
Mundinger et al. (“Mundinger”) US 2010/0228574 A1 Sept. 9, 2010
Reginald G. Golledge et al., “Public Transit Use by Non-Driving
Disabled Persons: The Case of the Blind and Vision Impaired,”
CALIFORNIA PATH PROGRAM INSTITUTE OF
TRANSPORTATION STUDIES UNIVERSITY OF CALIORNIA,
BERKELEY, Jan. 1996 (hereinafter “Golledge”).
REJECTIONS
R1. Claims 1–3, 5–7,3 9–14, 16, 18, and 20 stand rejected under 35
U.S.C. § 101 because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or abstract idea)
without significantly more. Final Act. 2–4.

3 We note a typographical error in the explicit statement of Rejection R1
(Final Act. 2) that omits mention of dependent claim 6. However, the
Examiner addresses Rejection R1 of claim 6 in the detailed rejection.
Compare Final Act. 2 with Final Act. 4. Thus, for purposes of this Appeal,
we include claim 6 in Rejection R1.
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R2. Claims 1, 2, 7,4 and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Lee, Mundinger, Burgener,
and Golledge. Final Act. 4–7.
R3. Claims 3, 5, 6, and 9–14 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Lee, Mundinger,
Burgener, Golledge, and Hileman. Final Act. 7–9.
R4. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Lee, Mundinger, Burgener, Golledge,
and Speier. Final Act. 9.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 3–9) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection R1 of claims 1–3, 5–7, 9–14, 16, 18, and 20 on the
basis of representative claim 1; and we decide the appeal of obviousness
Rejection R2 of claims 1, 2, 7, and 20 on the basis of representative claim 1.
Remaining claims 3, 5, 6, 9–14, and 16 in Rejections R3 and R4, not
argued separately, stand or fall with the respective independent claim from
which they depend.5

4 We note a typographical error in Rejection R2 of dependent claim 7,
which is included in the rejection heading, but which is not addressed in the
detailed rejection. Because claim 7 depends on claim 6, rejected under
Rejection R3, it appears that claim 7 may have been more appropriately
rejected under Rejection R3. However, Appellant did not separately argue
the rejection of dependent claim 7, so that we proceed by grouping claim 7
with Rejection R2 of claim 1.
5 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claims 1–3,
5–7, 9–14, 16, 18, and 20, and, unless otherwise noted, we incorporate by
reference herein and adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellant’s arguments. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
1. § 101 Rejection R1 of Claims 1–3, 5–7, 9–14, 16, 18, and 20
Issue 1
Appellant argues (Appeal Br. 3–5; Reply Br. 1–3) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:

shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.6
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4

6 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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in petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
Examples of claims that do not recite mental processes because they
cannot be practically performed in the human mind include: (a) a claim to a
method for calculating an absolute position of a GPS receiver and an
absolute time of reception of satellite signals, where the claimed GPS
receiver calculated pseudoranges that estimated the distance from the GPS
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receiver to a plurality of satellites, SiRF Technology, Inc. v. International
Trade Commission, 601 F.3d 1319, 1331–33 (Fed. Cir. 2010); (b) a claim to
detecting suspicious activity by using network monitors and analyzing
network packets, SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304
(Fed. Cir. 2019); (c) a claim to a specific data encryption method for
computer communication involving a several-step manipulation of data,
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed.
Cir. 2016) (distinguishing TQP Development, LLC v. Intuit Inc., 2014 WL
651935 (E.D. Tex. Feb. 19, 2014)) (the specific data encryption method
“could not conceivably be performed in the human mind or with pencil and
paper”). Whereas a claim limitation to a process that “can be performed in
the human mind, or by a human using a pen and paper” qualifies as a mental
process, a claim limitation that “could not, as a practical matter, be
performed entirely in a human’s mind” (even if aided with pen and paper)
would not qualify as a mental process.7
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘“inventive
concept”’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the

7 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375–
76 (Fed. Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft
Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)).
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[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO Revised Guidance
The PTO published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “Revised
Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf). “All USPTO personnel are, as a matter of internal
agency management, expected to follow the guidance.” Id. at 51; see also
October 2019 Update at 1 (October 2019 Update: Subject Matter Eligibility)
(hereinafter “October 2019 Update”).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes);8 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).9
See Revised Guidance 52–53.

8 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
9 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial
exception.10
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).

10 Items (3) and (4) continue to be collectively referred to as “Step 2B” of
the Supreme Court’s two-step framework, described in Mayo and Alice.
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Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.11
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements, along with the
limitations that recite a judicial exception, individually and in combination
to determine whether they integrate the exception into a practical
application.

11 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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The seven identified “practical application” sections of the MPEP,12
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional

12 See MPEP § 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while § 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.13 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).14 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).15
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified

13 See, e.g., Diehr, 450 U.S. at 187.
14 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
15 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 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., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.16
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .

16 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
Analysis
Step 1 – Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to, inter alia, “the
abstract idea of providing a transportation route to a user which falls into the
categor[y] of [ ] a method of organizing human activities.” Final Act. 2–3.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
We look to the Specification to provide context as to what the claimed
invention is directed to. In this case, the Specification discloses that the
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invention “relates generally to multi-modal transportation systems, and more
particularly, to a multi-modal transportation system that provides an
optimized transportation route through a correlation of a user's holistic
transportation route goals and transit mode availability.” Spec. 1, ll. 12–15.
Appellant’s Abstract describes the invention as follows:
A method and an apparatus for providing a transportation
route to a user are provided. Travel information from the user, a
plurality of transportation route goals ranked in a specified
order by the user, and attribute information of a plurality of
transit modes from a transit information system are received by
the central system. An optimized transportation route is
determined for the user through a correlation of the plurality of
ranked transportation route goals and attribute information that
corresponds to the received travel information. The
transportation route comprises one or more of the plurality of
transit modes. The optimized transportation route is transmitted
to the user.
Spec. (Abstract).
In TABLE I below, we identify in italics the specific claim limitations
in claim 1 that we conclude recite an abstract idea. We additionally identify
in bold the additional (non-abstract) claim limitations that represent generic
computer components and techniques, and underline limitations representing
extra or post-solution activity:

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TABLE I
Independent Claim 1 Revised Guidance
A method for providing a
transportation route to a user
comprising the steps of:
A process (method) is a statutory subject
matter class. See 35 U.S.C. § 101. See 35
U.S.C. § 101 (“Whoever invents or
discovers any new and useful process,
machine, manufacture, or composition of
matter, or any new and useful
improvement thereof, may obtain a
patent therefor, subject to the conditions
and requirements of this title.”).
[L1] collecting, by [L1a] a
transit information system,
attribute information of a
plurality of public transit
modes through links to transit
vehicles acting as traffic
probes, the attribute
information of the plurality of
public transit modes including
a level of disabled user
accessibility for each transit
mode, which is calculated
based on aggregated feedback
from a plurality of users;
As claimed, a transit information
system is a generic computer
arrangement. See Spec. 4, ll. 8–9 (“The
system includes a transit information
system that provides attribute
information of a plurality of transit
modes to a routing system.”).
Collecting attribute information, i.e.,
data gathering, is insignificant extra-
solution activity. Revised Guidance 55,
n.31; see also MPEP § 2106.05(g).
[L2] providing, by an
internet-enabled device,
access for a user to a
hardware-implemented
routing system through an
interface;
As claimed, providing user access to a
routing system through an internet-
enabled device interface represents
generic computer arrangements and
functionality. See Spec. 6, ll. 14–17 (“A
user, or specifically, a commuter 200
accesses a central system 208 through
an interface 210. FIG. 3 is a screen shot
of a GUI of the system, according to an
embodiment of the present invention. A
preferred embodiment provides an
interface via an application, which can
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Independent Claim 1 Revised Guidance
be accessed from an internet-enabled
source (e.g. a computer, PDA, etc.)”).
See Mortgage Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d
1314, 1324–25 (Fed. Cir. 2016)
(indicating components such as an
“interface” are generic computer
components that do not satisfy the
inventive concept requirement).
[L3] receiving, at the
hardware-implemented routing
system, travel information
from the user through the
interface of the internet-
enabled device, a plurality of
transportation route goals
ranked in a specified order by
the user through the interface
of the internet-enabled device,
attribute information of one or
more personal transit modes
owned by the user from the
user through the interface of
the internet-enabled device, the
attribute information of the
plurality of public transit
modes from the transit
information system, and
attribute information of parking
capacity and current parking
availability for a personal
transit mode at transit nodes;
“[R]eceiving . . . travel information . . .
attribute information of one or more
personal transit modes . . . [and]
attribute information of parking
capacity and current parking
availability”, i.e., data gathering, is
insignificant extra-solution activity.
Revised Guidance 55, n.31; see also
MPEP § 2106.05(g).
[L4] storing, in the hardware-
implemented routing system,
the attribute information of
the plurality of transit modes as
“[S]toring . . . information” represents
conventional computer functionality.
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Independent Claim 1 Revised Guidance
real-time records of the
attribute information;
[L5] determining, by the
hardware-implemented routing
system, an optimized
transportation route for the
user through a correlation of
the plurality of ranked
transportation route goals and
the received attribute
information of the one or more
personal transit modes,
the plurality of public transit
modes, and parking capacity
and current parking availability
at viable transit nodes along
potential routes, which
correspond to the received
travel information,
wherein the transportation
route comprises one or more
transit modes from the one or
more personal transit modes
and the plurality of public
transit modes; and
“[D]etermining . . . an optimized
transportation route . . . [using]
correlation of . . . goals and the received
. . . information” is an abstract idea, i.e.,
an observation, evaluation, judgment,
opinion” which could be performed as a
mental process. See Revised Guidance
52.
[L6] transmitting the
optimized transportation route
from the hardware-
implemented routing system
to the internet-enabled device
of the user through the
interface.
Transmitting information, e.g., for
display, is insignificant extra-solution
activity. Revised Guidance 55, n.31;
see also MPEP § 2106.05(g); and see
buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (computer
receives and sends information over a
network); and see In re Bilski, 545 F.3d
943, 962 (Fed. Cir. 2008) (en banc),
aff’d on other grounds, 561 U.S. 593
(2010) (“[T]he involvement of the
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Independent Claim 1 Revised Guidance
machine or transformation in the
claimed process must not merely be
insignificant extra-solution activity”);
Appeal Br. 10 (Claims App.).
Under the broadest reasonable interpretation standard,17 we conclude,
other than the computer-related aspects, limitations L1 through L6 recite
steps that can be practically performed in the human mind when providing a
transportation route to a user. See Final Act. 2–3. For example, limitation
L5 (“determining . . . an optimized transportation route for the user [by
considering a variety of the user goals and transportation factors recited]”) is
an operation that generally occurs when evaluating transportation route
options, whether initiated person-to-person, on paper, or using a computer.
We determine that claim 1, overall, recites a mental process that may
also be performed by pen and paper. This type of activity, i.e., providing an
optimized transportation route while considering a user's transportation route
goals and transit mode availability, as recited in limitations L1 through L6,
for example, and aside from any computer-related aspects, includes
longstanding conduct that existed well before the advent of computers and

17 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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the Internet, which could be carried out by a human with pen and paper. 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
Gottschalk v. Benson.”).18
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
method for providing a transportation route to a user recites a judicial
exception. In particular, we conclude claim 1, under our Revised Guidance,
recites a judicial exception of determining a transportation route, i.e., a
mental process, and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because we conclude the claims are directed to a judicial exception,
we proceed to the “practical application” Step 2A(ii) in which we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and

18 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
With respect to this phase of the analysis,
Appellants assert that the claims of the present invention
are relate to computer functionality improvements in how
computers carry out functions of determining an optimized
transportation route and transmitting the optimized
transportation route to a device. Such determining and
transmitting steps could not be categorized as processes focused
on abstract ideas that simply aid existing computers.
Appeal Br. 4.
In support of this contention, Appellant relies upon the Federal
Circuit’s holding in Enfish19 in which Appellant states the “claims are not
abstract if directed toward computer-functionality improvements in how
computers could carry out one of their basic functions of storage and
retrieval of data.” Id.
We disagree with Appellant’s contentions. We disagree because, in
Enfish, our reviewing court held claims directed to a self-referential logical
model for a computer database patent-eligible under step one of Alice.
Enfish, 822 F.3d at 1330. The disclosed technique enabled faster searching
and more effective storage of data than previous methods. Id. at 1333. The
court found the claims directed to “a specific improvement to the way
computers operate, embodied in the self-referential table” (id. at 1336), and
explained that the claims are “not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table

19 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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for a computer database” that functions differently than conventional
databases. Id. at 1337.
We do not find the claims on appeal, which recite a method for
providing a transportation route to a user based upon user preferences and
available transit modes, to be sufficiently analogous to those in Enfish, in
which the Federal Circuit held the claims to be an improvement in the
operation of the computer.
As to the specific limitations under our analysis, as identified in
TABLE I, above, we find limitation [L5] (“determining . . . an optimized
transportation route”) recites an abstract idea, and limitations [L1]
(“collecting . . . attribute information”) and [L3] (“receiving [various types
of] information”) recite insignificant data gathering. See MPEP §
2106.05(g). Data gathering, as performed by the steps or functions in
Appellant’s claims, is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc),
aff’d sub nom, Bilski v. Kappos, 561 U.S. 593 (2010).
We also find limitation [L6] (“transmitting the optimized
transportation route”) recites insignificant post solution activity. The
Supreme Court guides that the “prohibition against patenting abstract ideas
‘cannot be circumvented by’ . . . adding ‘insignificant postsolution
activity.’” Bilski, 561 U.S. at 610–11 (quoting Diehr, 450 U.S. at 191–92).
Moreover, on this record, we are of the view that Appellant’s claims
do not operate the recited generic computer components, i.e., limitations
[L1a] (“a transit information system”), [L2] (“providing, by an internet-
enabled device, access for a user to a hardware-implemented routing system
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through an interface”) and [L4] (“storing . . . the attribute information”), in
an unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a). See also Step 2B analysis, infra.
We find the limitations of claim 1 either recite abstract ideas, extra or
post-solution activity, or generic computer functionality, as identified in Step
2A(i), supra, and none of the limitations integrate the judicial exception of
providing a transportation route to a user into a practical application as
determined under one or more of the MPEP sections cited above. The claim
as a whole merely uses instructions to implement the abstract idea on a
computer or, alternatively, merely uses a computer as a tool to perform the
abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
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tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of MPEP
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e)(“Other
Meaningful Limitations”). Nor does Appellant advance any arguments in
the Brief(s) that are directed to the Bilski machine-or-transformation test,
which would only be applicable to the method (process) claims on appeal.
See MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular
Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs, 838 F.3d at 1258.
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
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abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea20; mere instructions to implement an
abstract idea on a computer21; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.22
Moreover, on this record, we are of the view that Appellant’s claims
do not operate the recited generic computer components, i.e., limitations
[L1a] (“a transit information system”), [L2] (“providing, by an internet-
enabled device, access for a user to a hardware-implemented routing system
through an interface”) and [L4] (“storing . . . the attribute information”), in
an unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a). See also Step 2B analysis, infra.
Appellant’s arguments notwithstanding, evaluating representative
claim 1 under step 2 of the Alice analysis, we conclude it lacks an inventive

20 Alice, 573 U.S. at 221–23.
21 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
22 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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concept that transforms the abstract idea of providing a transportation route
to a user into a patent-eligible application of that abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. 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, 881 F.3d at 1368.
As evidence of the conventional nature of the recited “transit
information system” in limitation [L1a], “providing, by an internet-enabled
device, access for a user to a hardware-implemented routing system through
an interface” in limitation [L2], and “storing . . . information” in limitation
[L4] in method claim 1; and similarly in system claim 20, the Specification
discloses, inter alia, “[t]he system includes a transit information system that
provides attribute information of a plurality of transit modes to a routing
system.” Spec. 4, ll. 8–9. Further, “[a] user, or specifically, a commuter 200
accesses a central system 208 through an interface 210. FIG. 3 is a screen
shot of a GUI of the system, according to an embodiment of the present
invention. A preferred embodiment provides an interface via an application,
which can be accessed from an internet-enabled source (e.g. a computer,
PDA, etc.).” Spec. 6, ll. 14–17. In addition, “[t]he central system 208 keeps
real-time records of the transit mode attributes 250 through links to sensors,
information feeds, or other systems that provide the necessary data.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude these claim
limitations may be broadly but reasonably construed as reciting conventional
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computer components and techniques, particularly in light of Appellants’
Specification, as quoted above.23
The MPEP, based upon our precedential guidance, provides additional
considerations with respect to analysis of the well-understood, routine, and
conventional nature of the recited computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier

23 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method for providing a transportation route to a user that
includes a “transit information system,” “user interface,” and “storing . . .
information” (claim 1) as argued by Appellants, and similarly for system
claim 20, is simply not enough to transform the patent-ineligible abstract
idea of providing a transportation route to a user into a patent-eligible
invention under Step 2B. See Alice, 573 U.S. at 221 (“[C]laims, which
merely require generic computer implementation, fail to transform [an]
abstract idea into a patent-eligible invention.”).
We conclude the claims fail the Step 2B analysis because claim 1, in
essence, merely recites various computer-based elements, performing well-
understood, routine, conventional functions, along with no more than mere
instructions to implement the identified abstract idea using the computer-
based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 1–3, 5–7, 9–14, 16, 18, and 20,
considered as a whole, is directed to a patent-ineligible abstract idea that is
not integrated into a practical application and does not include an inventive
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concept. Accordingly, we sustain the Examiner’s § 101 rejection of
independent claim 1, and grouped claims 2, 3, 5–7, 9–14, 16, 18, and 20
which fall therewith. See Claim Grouping, supra.
2. § 103(a) Rejection R2 of Claims 1, 2, 7, and 20
Issue 2
Appellant argues (Appeal Br. 5–7; Reply Br. 3–5) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Lee, Mundinger, Burgener, and Golledge is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] method for providing a transportation route to a user” that
includes, inter alia, the steps of “collecting . . . attribute information of a
plurality of public transit modes . . . the attribute information . . . including a
level of disabled user accessibility for each transit mode, which is calculated
based on aggregated feedback from a plurality of users,” as recited in
claim 1?
Principles of Law
One cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
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In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Finally, whether a reference in the prior art is “analogous” is a fact
question. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) (citing Panduit
Corp. v. Dennison Mfg., 810 F.2d 1561, 1568 n.9 (Fed. Cir.), cert. denied,
481 U.S. 1052 (1987)). Two criteria have evolved for determining whether
prior art is analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. Id.
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(citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599
F.2d 1032, 1036 (CCPA 1979)).
A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor’s endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor’s attention in
considering his problem. Thus, the purposes of both the
invention and the prior art are important in determining whether
the reference is reasonably pertinent to the problem the
invention attempts to solve. If a reference disclosure has the
same purpose as the claimed invention, the reference relates to
the same problem, and that fact supports use of that reference in
an obviousness rejection.
In re Clay, 966 F.2d at 659.
Analysis
The Examiner relies upon the combination of Lee, Mundinger,
Burgener, and Golledge to render claim 1 unpatentable under 35 U.S.C.
§ 103(a). Final Act. 4–7.
Appellant contends:
Golledge describes the results of a survey of blind and vision
impaired users of public transit facilities. Specifically, the cited
portions of Golledge include a section relating to the
characteristics and activity patterns of the sample, and a section
describing the opinions, perceptions, and attitudes of
participants with respect to the usefulness of certain types of
information in planning trips.
Golledge relates simply to the results of a survey and
fails to relate in any way to a transit information system, an
internet-enabled device, or a hardware-implemented routing
system. Golledge also fails to relate in any way to the
determination of an optimized transportation route.
Accordingly, Golledge is nonanalogous prior art. Specifically,
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Golledge is not in the same field of endeavor as the claimed
invention, and is also not reasonably pertinent to the problem to
be solved.
Further, while the information collected in Golledge may
be similar to aggregated feedback, Golledge fails to disclose
that collected information is used to calculate a level of disabled
user accessibility for each transit mode, as recited in Claim 1.
Accordingly, Golledge fails to remedy the deficiencies of Lee,
Mundinger, and Burgener noted by the Examiner, and Claim 1
is patentable over the combination of Lee, Mundinger,
Burgener, and Golledge.
Appeal Br. 6.
We are not persuaded by Appellant’s arguments. The Examiner relied
upon Burgener as teaching or suggesting the broader disputed limitation of
“collecting, by a transit information system, attribute information of a
plurality of public transit modes through links to transit vehicles acting as
traffic probes,” and offered Golledge for the narrower purpose of teaching or
suggesting aggregating, from multiple users, a metric regarding levels of
disabled user accessibility for a transit mode, i.e., “the attribute information
of the plurality of public transit modes including a level of disabled user
accessibility for each transit mode, which is calculated based on aggregated
feedback from a plurality of users[,]” as recited in claim 1. Ans. 5–6.
With respect to Appellant’s non-analogous art argument (Appeal
Br. 6), the Examiner responds by finding “[i]n this case, Golledge is
concerned with Public Transit Use by Non-Driving Disabled Persons: the
Case of the Blind and Vision Impaired . . . [and] maintains that this is in the
same field of Appellant’s endeavor.”
In response to the Examiner’s restatement of the relevant finding
concerning the teachings of Golledge in the Answer, Appellant argues “the
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Examiner appears to confuse mere ‘transit use’ by an individual with a
‘transit information system’ that collects information on transit modes”
(Reply Br. 4), and
Golledge relates to the results of a survey, which is not in
the same field as the optimization of a transportation route. The
results of such a survey are also not reasonably pertinent to
optimizing the transportation route using at least a level of
disabled user accessibility. Golledge fails to relate in any way
to a transit information system, an internet-enabled device, or a
hardware-implemented routing system. Accordingly,
Appellants maintain that Golledge is nonanalogous prior art.
Id.
We agree with the Examiner’s finding that the combination of Lee,
Mundinger, Burgener, and Golledge teach or suggest all the limitations of
claim 1, and particularly agree that the combination of Burgener and
Golledge teach or suggest the disputed limitation identified above. We
disagree with Appellant’s arguments concerning the Examiner’s reliance
upon the teachings of Golledge because they are not responsive to the
rejection as articulated by the Examiner that relies upon the combination of
Burgener and Golledge.
Moreover, even assuming, arguendo, that Golledge is not in the same
field of endeavor as Appellant’s transportation route optimization as argued
by Appellant, a proposition with which we do not agree, Appellant does not
address the second prong of the test for analogous art, i.e., whether the
reference is reasonably pertinent to the particular problem with which the
inventor is involved. See Clay, 966 F.2d at 658.
In further support of the Examiner’s findings and legal conclusions of
obviousness, we find the Golledge reference, on its face, is reasonably
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pertinent to Appellant’s problem of optimizing transportation routes by
aggregating, from multiple users, a metric regarding levels of disabled user
accessibility for a transit mode. See, e.g., Golledge at (ii).
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitations of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
claims 2, 7, and 20 which fall therewith. See Claim Grouping, supra.
3. § 103(a) Rejections R3 and R4 of Claims 3, 5, 6, 9–14, and 16
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R3 and R4 of claims 3, 5, 6, 9–14, and 16 under
§ 103(a) (see Appeal Br. 7–8), we sustain the Examiner’s rejection of these
claims. Arguments not made are waived.24
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 1–4) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s

24 Appellant merely argues, “because the above arguments place the
independent claim [1] in condition for allowance, these dependent claims [3,
5, 6, 9–14, and 16] are also believed to be in condition for allowance”
(Appeal Br. 7), and “Claim 16 is patentable for at least the reasons presented
above with regard to Claim 1.” Appeal Br. 8.
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Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1–3, 5–7, 9–14, 16, 18, and 20 are patent-ineligible under 35 U.S.C.
§ 101, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 through R4 of claims 1–3, 5–7, 9–14, 16, 18, and 20 under 35
U.S.C. § 103(a) over the cited prior art combinations of record, and we
sustain the rejections.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1–3, 5–7,
9–14, 16,
18, 20
101
Subject Matter
Eligibility
1–3, 5–7,
9–14, 16,
18, 20

1, 2, 7, 20 103(a)
Lee, Mundinger,
Burgener,
Golledge
1, 2, 7, 20
3, 5, 6, 9–
14
103(a)
Lee, Mundinger,
Burgener,
Golledge, Hileman
3, 5, 6, 9–
14
16 103(a)
Lee, Mundinger,
Burgener,
Golledge, Speier
16
Overall
Outcome
1–3, 5–7,
9–14, 16,
18, 20

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FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED