The Florida International University Board of Trustees

Patent Trials and Appeals Board

Jan 6, 2021

2020003457 (P.T.A.B. Jan. 6, 2021)

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.
14/589,809 01/05/2015 Thomas F. Gustafson FIU.192XCT 7488
23557 7590 01/06/2021
SALIWANCHIK, LLOYD & EISENSCHENK
A PROFESSIONAL ASSOCIATION
P.O. BOX 142950
GAINESVILLE, FL 32614
EXAMINER
WORDEN, THOMAS E
ART UNIT PAPER NUMBER
3663
NOTIFICATION DATE DELIVERY MODE
01/06/2021 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):
euspto@slepatents.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS F. GUSTAFSON, NAPHTALI RISHE,
RAMON TRIAS, and KENNETH STAPLETON

Appeal 2020-003457
Application 14/589,809
Technology Center 3600
____________

Before MICHAEL L. HOELTER, JEREMY M. PLENZLER, and
MICHAEL L. WOODS, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge HOELTER.

Opinion Concurring filed by Administrative Patent Judge PLENZLER.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 32–38, which constitute all the claims

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “The
Florida International University Board of Trustees.” Appeal Br. 1.
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pending in this application. See Appeal Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejections of these claims.
CLAIMED SUBJECT MATTER
The disclosed subject matter relates to resolving “[i]nefficiencies of
the present situation of sole dependence only on the private automobile and
congested highways.” Spec. ¶ 2.2 System claims 32 and 38 are
independent. Claim 32 is illustrative of the claims on appeal and is
reproduced below.
32. A system for routing a commuter’s travel to a defined
destination, the system comprising:
an in-vehicle monitoring device;
a processor in operable communication with the in-
vehicle monitoring device;
a memory in operable communication with the processor;
and
a digital storage medium in operable communication with
the processor, the digital storage medium comprising a
geospatial real-time database and program instructions stored
thereon that, when executed by the processor, perform the
following steps:
(a) providing an individual interface and user-input
functionality of a smartphone to a user thereof, the user being
the commuter;
(b) receiving, by the processor, a current global
positioning system (GPS) position of the smartphone;
(c) receiving, by the processor, a map request for
map data, a transit information request for transit information,
and a parking information request for parking information from
the smartphone;

2 For citations to Appellant’s Specification, we refer to Patent Application
Publication No. 2016/0334235 A1 published on November 17, 2016.
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(d) sending the map request for map data, the
transit information request for transit information, and the
parking information request for parking information to the
geospatial real-time database, and receiving the requested map
data, the requested transit information, and the requested
parking information from the geospatial real-time database, the
geospatial real-time database updating the map data, the transit
information, and the parking information in real time, and the
geospatial real-time database also basing the map data, the
transit information, and the parking information on historical
data comprising events, occurrences, trends affecting traffic,
and pre-planned community events;
(e) providing the requested map data, the requested
transit information, and the requested parking information to
the smartphone;
(f) providing a display with a large screen section
to display the requested map data, transit information, and
parking information on the smartphone and a small screen
section to display configurations, notification presets,
preferences, and a user view on the smartphone;
(g) adjusting a model population with each new
system iteration of a map request, transit information request,
and parking information request;
(h) performing an algorithm of crowdsourcing of a
plurality of users of the system based on respective GPS
coordinates of each user in order to improve the routing of the
commuter’s travel to the defined destination;
(i) calculating an optimized route for the
commuter, with an expected time of arrival at the commuter’s
defined destination, as well as suggested parking opportunities
proximate to the commuter’s defined destination, the
calculation of the optimized route being adjusted based on the
model population; and
(j) providing the optimized route to the smartphone
to be displayed.
EVIDENCE
Name Reference Date
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Asai et al. (“Asai”) US 6,421,606 B1 July 16, 2002
Rauch US 2008/0195257 A1 Aug. 14, 2008
Buck et al. (“Buck”) US 2009/0112452 A1 Apr. 30, 2009
Kane US 2009/0164260 A1 June 25, 2009
Song et al. (“Song”) US 2009/0192864 A1 July 30, 2009
Markham et al. (“Markham”) US 2011/0246067 A1 Oct. 6, 2011
Acker JR. et al. (“Acker JR.”) US 2014/0176348 A1 June 26, 2014
Gishen US 2014/0257697 A1 Sept. 11, 2014
REJECTIONS
Claims 32–38 are rejected under 35 U.S.C. § 112(a), as failing to
comply with the written description requirement.
Claims 32–38 are rejected under 35 U.S.C. § 112(a), as failing to
comply with the enablement requirement.
Claims 32–38 are rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention.
Claims 32 and 35 are rejected under pre-AIA 35 U.S.C. § 103 as
unpatentable over Acker JR., Asai, Markham, Song, and Gishen.
Claims 33 and 34 are rejected under pre-AIA 35 U.S.C. § 103 as
unpatentable over Acker JR., Asai, Markham, Song, Gishen, and Kane.
Claim 36 is rejected under pre-AIA 35 U.S.C. § 103 as unpatentable
over Acker JR., Asai, Markham, Song, Gishen, and Buck.
Claim 37 is rejected under pre-AIA 35 U.S.C. § 103 as unpatentable
over Acker JR., Asai, Markham, Song, Gishen, and Rauch.
Claim 38 is rejected under pre-AIA 35 U.S.C. § 103 as unpatentable
over Acker JR., Asai, Markham, Song, Gishen, Kane, and Buck.
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ANALYSIS
The rejection of claims 32–38
as failing to comply with the written description requirement
Appellant argues claims 32–38 together. See Appeal Br. 9–12. We
select claim 32 for review, with the remaining claims standing or falling
with claim 32. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner’s written description rejection of claim 32 focuses on
the usage of such terms as “in-vehicle monitoring device,” “processor” and
“smartphone.”3 Final Act. 6. We address “in-vehicle monitoring device”
separate from our analysis of “processor” and “smartphone.”
“In-vehicle monitoring device”
The Examiner finds that this term is “not used in the original
specification or claims, ha[s] no definite structure, and constitute[s] new
matter.” Final Act. 6. Hence, claim 32 contains “subject matter that is not
described in the specification in such a way as to” show that the inventor
“had possession of the claimed invention” at the time of filing. Final Act. 7.
Appellant references “the Rishe Declaration”4 in refuting the
Examiner’s findings and conclusions above. Appeal Br. 9. Paragraph 2 of
the Rishe Declaration identifies paragraphs 97 and 109 of Appellant’s
Specification as providing support for the claim term “in-vehicle monitoring
device.” See also Appeal Br. 10 (identifying like paragraphs). As such,
both the Declarant and Appellant contend that the written description

3 The Examiner withdrew the written description rejection of this claim
based on the use of “large screen section” and “small screen section.” Ans.
3.
4 The “Rishe Declaration” is that of Naphtali Rishe, Ph.D., a co-inventor,
dated November 15, 2018.
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requirement of this term has been met. See Rishe Declaration ¶¶ 1, 2;
Appeal Br. 11.
There is merit to these assertions. Paragraph 97 of Appellant’s
Specification reads, in part:
The vehicle interaction modules (see FIG. 8 described
below) consists of two-way communications hardware on board
the transit vehicles. They include GPS trackers, 120B tablet
computers installed next to the drivers’ seats, camera systems,
and passenger information displays 187.
Additionally, paragraph 109 of Appellant’s Specification discusses Figure 9
which provides detail as to user inputs and results but, unlike paragraph 97,
is silent as to its location being “in-vehicle.”
It is well-known that “claimed subject matter need not be described in
haec verba in the specification in order for the specification to satisfy the
description requirement.” In re Smith, 481 F.2d 910, 914 (CCPA 1973).
See also Appeal Br. 9 (referencing Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563-64, (Fed. Cir. 1991); MPEP §2163.02)). Accordingly, and in
view of the above, we conclude that Appellant’s disclosure conveys with
reasonable clarity that Appellant was in possession of, and properly
described, the recited “in-vehicle monitoring device.” See Vas-Cath, 935
F.2d at 1563. Hence, we disagree with the Examiner’s finding that this term
was “not used in the original specification or claims, ha[s] no definite
structure, and constitute[s] new matter.” Final Act. 6; see also Ans. 6. In
other words, we disagree with the Examiner’s finding that Appellant was not
in possession of this claim term. See Final Act. 7.
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“Processor” and “smartphone”
Claim limitation 32(c) recites “receiving, by the processor [certain
requests] from the smartphone.” The Examiner understands that the recited
“processor” is separate and distinct from the “smartphone.” See Final Act. 6
(“In fact, it appears that the ‘smartphone’ should in fact be a separate part of
the claimed system as it does not seem as though it would be operated by the
same ‘processor’ that is claimed.”). We concur.5
Appellant again relies on the Rishe Declaration as evidence that
Appellant’s Specification provides written description support for these
terms. See Appeal Br. 9. Paragraph 2 of the Rishe Declaration states that
support for the term “processor” can be found in paragraphs 2, 30, 50, 51,
and Figure 1 of Appellant’s Specification. This same paragraph of the Rishe
Declaration also identifies these same citations as support for “smartphone.”
These citations discuss “smartphone,” but they are silent as to any discussion
of the recited “processor,” or its interactions with the “smartphone.”
The Examiner also finds that, as regarding this “processor,”
Appellant’s Specification “does not sufficiently describe what hardware
and/or software (specifically, the steps or procedures) is/are used according
to the inventor to accomplish” this processing function. Final Act. 6; Ans.
5–6. For example, claim limitation 32(a) recites the “processor” as
“providing an individual interface and user-input functionality of a
smartphone to a user thereof.” The Examiner states that it is not clear from
Appellant’s Specification “how the claimed ‘processor’ is able to ‘provide
an individual interface and user-input functionality of a smartphone to a user

5 To contemplate that the smartphone’s processor is the recited “processor”
would mean that the smartphone’s processor receives requests from itself.
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thereof’” as recited. Final Act. 6; Ans. 6. This is because, as per the
Examiner, “there are no known in the art ‘processors’ that can provide a
‘smartphone’ nor are there any described in the Specification.” Ans. 6; see
also Final 6.
Appellant does not challenge these findings by the Examiner, or
otherwise show where such “processor” teachings can be found in
Appellant’s Specification. Further, there is merit to the Examiner’s findings
because Appellant does not explain how a digital device, such as a
processor, can itself “provid[e] an individual interface and user-input
functionality” (as claimed), which is of an analog nature. We thus agree
with the Examiner that the claim term “processor” lacks written description
support. See Final Act. 7; Ans. 6. We sustain the Examiner’s rejection of
claims 32–38 as lacking written description support.
The rejection of claims 32–38
as failing to comply with the enablement requirement
The Examiner finds that “[t]he claims contain subject matter specific
to a series of processing steps” for navigating to a destination based on such
modes of transportation as trains, buses, highways, people movers, taxis,
bicycles, shared-rides, and walking. Final Act. 7; see also Ans. 7–8. The
Examiner further addresses “the algorithm used within the processing steps”
and also “that the processing steps include the capabilities to coordinate”
countless functions and systems such as parking, passenger count, route
requests, ticket availability, cost, duration, safety, traffic density, etc. Final
Act. 7; Ans. 8. The Examiner paraphrases these requirements as “basically
claiming a series of monumental tasks that can allegedly all be done by a
processor.” Final Act. 7; Ans. 8. However, “the actual structures necessary
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beyond just the processor are generally absent from the claims and
specification.” Final Act. 7; Ans. 8.
From an enablement point of view, the Examiner states that “the
explanations as to how these monumental tasks are to be accomplished by
the processor are simply not present in the specification in the detail
necessary for one skilled in the art to make and/or use the invention as
claimed.” Final Act. 7; Ans. 8. For example, “[t]he claims nor the
specification include sufficient details of the algorithms/coding used, how
the multiple modes of travel are determined or travel schedules accessed for
each mode of travel,” etc. Final Act. 7–8; see also Ans. 8. Such explanation
is lacking, as per the Examiner, because “there are hundreds of different
transit authorities in the US which mostly operate independently and utilize
different data in different formats.” Final Act. 8; Ans. 8. Consequently,
because the claims require “the gathering and analysis of information from a
potentially massive number of sources,” “an enabling description must at
least discuss how [Appellant’s] system overcomes these
security/formatting/accessibility variations.” Final Act. 8; Ans. 9.
The Examiner concludes, referencing “the Wands factors,” that a
skilled person “would not be able to practice the limitations relating to these
tasks without undue experimentation.” Final Act. 8; see also Ans. 9. Hence,
“these claims are rejected under 35 U.S.C. [§] 112(a) for lack of
enablement.” Final Act. 8; see also Ans. 9.
Appellant again references the Rishe Declaration contending that the
submitted disclosure “combined with routine knowledge within the art”
would be sufficient for this purpose. Appeal Br. 11. Appellant references
its figures as showing “a diagram of information flow” and “how the system
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operates,” and further that “a person of ordinary skill in the art could make
use of [an existing database] to practice the claimed invention.” Appeal Br.
11–12. Appellant also references “Exhibit 1,” which is entitled “Informed
Traveler Program and Applications Independent Verification and Validation
Final Report” dated May 8, 2017 (hereinafter “Exhibit 1”). Appeal Br. 12.
Appellant states, “[t]he report concludes with a statement that further
demonstrates that the claimed system can be made and used successfully.”
Appeal Br. 12. As such, according to Appellant, a skilled person “could
make or use the invention . . . without undue experimentation.” Appeal Br.
12. However, Appellant also acknowledges that “portions of Exhibit 1 were
prepared after the priority date [but] this does not mean that any additional
disclosure was needed to make and use the claimed invention.” Appeal Br.
12.
The Examiner disagrees with Appellant’s characterization of Exhibit
1. The Examiner notes the date of Exhibit 1 (“more than two years after the
filing date of this application”) and states that Exhibit 1 “shows that the
software is still in a development and testing phase.” Ans. 6; see also Final
9. More importantly however, are the stated results which “show two
components of testing that had failed and needed to be updated and
retested.” Ans. 6; see also Final 9. Indeed, page 18 of Exhibit 1 states,
“[t]wo requirements did not pass during Phase 1A testing” and
“[a]dditionaly, there was a problem reading the park (Bluetooth disconnect)
for the iOS phone.” Exhibit 1 further acknowledges “that there was a
problem with the iOS unpark portion of their [not Appellant’s] product and
are working to fix it.” Exhibit 1, 18. The Examiner also notes that “can be
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made is future tense and does not signify enablement based on the disclosure
made at the time of filing alone.” Ans. 7. Appellant does not dispute this.
Based on the record presented, the Examiner has the better position.
Appellant does not point to any guidance or explanation within the
Specification that would convey to a skilled person that the far-reaching and
all-encompassing tasks recited only involve “routine knowledge within the
art.” Appeal Br. 11. In other words, Appellant’s contention that the
Specification’s disclosure, combined with such routine knowledge “would
be enough to enable a person of ordinary skill in the art to make and use the
claimed invention without undue experimentation” is not persuasive that this
would, indeed, be the case. Appeal Br. 11. Hence, we agree with the
Examiner that Exhibit 1 “merely explains that the software tested may
eventually be able to generally do what was planned to be done, but it too
does not provide any coding or algorithms necessary for one of ordinary
skill in the art to make or use the invention.” Final Act. 9.
Accordingly, we sustain the Examiner’s rejection of claims 32–38 as
failing to comply with the enablement requirement.
The rejection of claims 32–38
as being indefinite
The Examiner addresses the claim term “processor” (among other
terms) and concludes that this term is indefinite. See Final Act. 11. For
example, the Examiner states that “it is not clear as to how a processor can
‘provide an individual interface and user-input functionality of a smartphone
to a user thereof.’” Final Act. 10. This is “because a processor . . . is old
and well known in the art [and] does not comprise a user-interface or a
display.” Final Act. 10. Appellant does not explain this discrepancy and
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Appellant’s Specification is silent on this topic. The Examiner also provides
additional reasons (i.e., “multitudes of indefinite issues”) in support of the
rejection of claims 32–38 as being indefinite (which we do not further
expound on here). See Final Act. 10–13.
However, regarding the matter mentioned above, “Appellant submits
that a person of ordinary skill in the art would understand how a processor
could provide an individual interface and user-input functionality when
program instructions are executed by the processor.” Appeal Br. 13.
Regardless, Appellant does not explain how a processor (not some other
device), even when executing instructions, can provide “an individual
interface and user-input functionality of a smartphone to a user” (as recited)
when, as noted above, the claim term “processor” lacks written description
support in Appellant’s Specification.
Indefiniteness “requires a determination of whether those skilled in
the art would understand what is claimed when the claim is read in light of
the specification” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). However, in the present situation, there is a
lack of written description support for the claim term “processor.” See
above. Hence, it is not made clear how a determination or an understanding
of this term “in light of the specification” can be made. Consequently, one
can only speculate as to the scope and meaning of this claim term. We
sustain the Examiner’s rejection of claims 32–38 as being indefinite.
The prior art rejections of claims 32–38
The Examiner finds that claims 32–38 are obvious in view of different
combinations of cited art. See Final Act. 13–28. However, we are informed
that “[i]f no reasonably definite meaning can be ascribed to certain terms in
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the claim, the subject matter does not become obvious-the claim becomes
indefinite.” In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970). In other
words, we cannot address the rejections of these claims under 35 U.S.C.
§ 103(a) because to do so would require speculation as to the scope of the
claims. See In re Steele, 305 F.2d 859 (CCPA 1962) (holding that the Board
erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a)).
In view of such guidance from our reviewing court, we decline to
assess the Examiner’s prior art rejections of these claims because to do so
would require speculation on our part. Further, in rendering these rejections,
certain presumptions were preliminarily undertaken by the Examiner. See
Ans. 5 (“For purposes of compact prosecution, Examiner took the meaning
of this term [i.e., “in-vehicle monitoring device”] to be synonymous with the
term ‘smartphone’ used throughout the remainder of the claims.”). We do
not sustain the Examiner’s rejections based on such speculative findings.
CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
32–38 112(a) Written Description 32–38
32–38 112(a) Enablement 32–38
32–38 112(b) Indefiniteness 32–38
32, 35 103 Acker JR., Asai,
Markham, Song,
Gishen
32, 35
33, 34 103 Acker JR., Asai,
Markham, Song,
Gishen, Kane
33, 34
36 103 Acker JR., Asai,
Markham, Song,
36
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Gishen, Buck
37 103 Acker JR., Asai,
Markham, Song,
Gishen, Rauch
37
38 103 Acker JR., Asai,
Markham, Song,
Gishen, Kane, Buck
38
Overall
Outcome6
32–38
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

6 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim
on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim.”
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PLENZLER, Administrative Patent Judge, concurring.
I do not join the majority’s decision with respect to the Examiner’s
enablement and written description rejections, or with respect to the specific
reasons for affirming the Examiner’s indefiniteness rejection. Nevertheless,
I agree with the overall decision to affirm the Examiner’s decision to reject
claims 32–38 as being indefinite.
With respect to indefiniteness, I do not agree with the Examiner’s
determination that “it is not clear as to how a processor can ‘provide an
individual interface and user-input functionality of a smartphone to a user
thereof.’” Final Act. 10. The claim simply requires that the processor
execute instructions.
To me, much of the confusion with respect to claim 32 stems from the
recitation of “the smartphone.” Emphasis added. Claim 32 recites
“providing an individual interface and user-input functionality of a
smartphone to a user thereof.” Emphasis added. The claim then recites
“receiving, by the processor, a current global positioning system (GPS)
position of the smartphone,” “receiving, by the processor, a map request . . .,
a transit information request . . ., and a parking information request . . . from
the smartphone,” “providing the requested map data, . . . transit information,
and . . . parking information to the smartphone,” “providing a display . . . on
the smartphone,” and “providing the optimized route to the smartphone to be
displayed.” That is, the claim recites an interface that has the functionality
of a smartphone and then references an actual smartphone as “the
smartphone” without first introducing an actual smartphone.
It is unclear if the smartphone includes the “processor,” is the “in-
vehicle monitoring device,” is both of those elements, or is neither of those
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elements. The Specification does not aide in this understanding because it
never references the term “processor” or “in-vehicle monitoring device.”
The claim limitations only add to the confusion because it is the processor
that executes instructions to “provid[e] an individual interface and user-input
functionality of a smartphone,” but then, for example, also “provid[es] the
optimized route to the smartphone to be displayed.”
Moreover, it is not clear what is required by an “in-vehicle monitoring
device.” Appellant alleges that “the term ‘in-vehicle monitoring device’ is
not a generic placeholder but rather a term understood in the art as a sensor
of some sort (e.g., camera) for monitoring within a vehicle,” but fails to
provide sufficient support for such a proposition. Appeal Br. 9. In fact,
Appellant provides no evidence regarding how one skilled in the art would
understand that term.
The issues noted above, create an unacceptable level of ambiguity in
the claims, making it too difficult to address the Examiner’s obviousness
rejection without resorting to speculation. That ambiguity also makes it
difficult to determine whether written description support is present for the
“in-vehicle monitoring device,” processor,” and “smartphone.”
As for the enablement rejection, the Examiner relies, for example, on
a determination that “claim[ 32] require[s] the gathering and analysis of
information from a potentially massive number of sources with data on/in
them with varying degrees of public availability, encryption, and formatting,
an enabling description must at least discuss how their system overcomes
these security/formatting/accessibility variations.” Final Act. 8. I do not see
where such a requirement exists in claim 32.
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For the reasons set forth above, I concur in affirming the Examiner’s
overall decision to reject claims 32–38.