14743548 - (D) (P.T.A.B. Aug. 21, 2019)

Yiyang Joy. Ding et al.

Patent Trials and Appeals BoardAug 21, 2019

14743548 - (D) (P.T.A.B. Aug. 21, 2019)

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. 14/743,548 06/18/2015 Yiyang Joy Ding 31730/21302-00 2276 12716 7590 08/21/2019 Marshall, Gerstein & Borun LLP (Google) 233 South Wacker Drive 6300 Willis Tower Chicago, IL 60606-6357 EXAMINER THAI, TUAN V ART UNIT PAPER NUMBER 2135 NOTIFICATION DATE DELIVERY MODE 08/21/2019 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte YIYANG JOY DING and JENNIFER MAURER ____________________ Appeal 2018-007232 Application 14/743,5481 Technology Center 2100 ____________________ Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN, Administrative Patent Judges. Opinion for the Board by FRAHM, Administrative Patent Judge. Opinion concurring-in-part and dissenting-in-part by CYGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner’s decision finally rejecting claims 1, 3–10, 12–15, and 17–23. Claims 2, 11, and 16 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse (i) the patent-eligibility rejection of claims 1, 3– 10, 12–15, and 17–20, and (ii) the obviousness rejection of claims 5 and 19; 1 According to Appellants, Google Inc. is the real party in interest (App. Br. 4). Appeal 2018-007232 Application 14/743,548 2 and we affirm the obviousness rejections of claims 1, 3, 4, 6–10, 12–15, 17, 18, and 20–23. Therefore, we affirm-in-part. Disclosed Invention and Exemplary Claim The disclosed invention relates “interactive digital maps and, more particularly, to managing offline map data in client devices” (Spec. ¶ 2). Appellants disclose that client device 14 (see Figs. 1, 2) “can be any computing device that relies on a network connection to retrieve map data for generating an interactive digital map,” and “can be, for example, a laptop computer, a smart phone, or a tablet computer” (Spec. ¶ 25). Appellants disclose a methods (claims 1 and 7; Fig. 4), and a portable computing device (claim 14; Figs. 1, 2 showing client device 14), for managing off-line map data by caching map content to allow a user to access map data in an offline mode (see Spec. ¶ 4). Appellants achieve this by using a digital mapping application that “determines expiration time for offline map data stored in the cache of a portable client device” (Spec. ¶ 5). Claims 1, 7, and 14 are independent, and each recite similar limitations pertaining to a method and portable computing device for managing offline map data that removes map data from the memory of the computing device by performing at least limitations [A]–[D] recited in claim 1, and commensurate limitations in remaining independent claims 7 and 14. Claim 1, reproduced below (with key limitations emphasized and bracketed lettering added), is illustrative of the claimed subject matter: 1. A method for managing offline map data, the method comprising: fetching, by one or more processors, into a memory of a computing device, map data for generating a digital map of a geographic area; Appeal 2018-007232 Application 14/743,548 3 retrieving, by the one or more processors, the map data from the memory to generate the digital map in response to a first request from a user of the computing device, wherein the digital map is generated at the computing device; [A] determining, by the one or more processors, at least one of (i) a frequency of visitation of the geographic area by the user or (ii) whether the user is expected to make one or more visits to the geographic area; [B] determining, by the one or more processors, a likelihood of a second request to generate at least a portion the digital map again at the computing device within a certain period of time based on the determination of at least one of (i) the frequency of visitation or (ii) whether the user is expected to make one or more visits; [C] determining, by the one or more processors, a time when the map data should be removed from the memory based at least in part on the determination of the likelihood of the second request; and [D] removing, by the one or more processors, the map data from the memory at the determined time. Appeal 2018-007232 Application 14/743,548 4 The Examiner’s Rejections2 (1) Claims 1, 3–10, 12–15, and 17–20 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2–3; Ans. 3–4. (2) Claims 1, 3–5, 7, 12, 14, 17–19, 21, and 23 stand rejected as being unpatentable under 35 U.S.C. § 103(a) over the combination of Kalai et al. (US 2012/0143504 A1; published June 7, 2012) (hereinafter, “Kalai”) and IBM et al., Method for self expiring web browser history, bookmarks, and local caching (Mar. 11, 2002)(hereinafter, “IBM”). Final Act. 4–11; Ans. 5– 11. (3) Claims 6, 8–10, 13, 15, 20, and 22 stand is rejected as being unpatentable under 35 U.S.C. § 103(a) over the same base combination of Kalai and IBM taken with various other prior art references. See Final Act. 11–15; Ans. 12–16. 2 For the obviousness rejections of claims 1, 3, 6–10, 12–15, 17, and 20–23, Appellants present specific arguments on the merits only as to claim 1 (see App. Br. 20–22; Reply Br. 4–5), and relies on the arguments presented as to claims 1, 7, and 14 for the patentability of claims 6, 8–10, 13, 15, 20, and 22 (see App. Br. 23). Based on Appellants’ arguments and the common subject matter of claims 1, 3, 7, 12, 14, 17, 21, and 23, we select claim 1 as representative of the group of claims rejected over the combination of Kalai and IBM. The appeal of the obviousness rejections of 6, 8–10, 13, 15, 20, and 22 will therefore stand/fall with the outcome of the appeal of the obviousness rejection of claims 1, 3, 7, 12, 14, 17, 21, and 23, which in turn stands/falls with the obviousness rejection of representative claim 1 over the combination of Kalai and IBM. Therefore, our analysis will only address the merits of claim 1, and claims 4, 5, 18, and 19 separately argued (see App. Br. 22; Reply Br. 5). Appeal 2018-007232 Application 14/743,548 5 Principal Issues on Appeal Based on Appellants’ arguments in the Appeal Brief (App. Br. 15–23) and the Reply Brief (Reply Br. 2–5), the following two principal issues are presented on appeal: (1) Have Appellants shown the Examiner erred in rejecting claims 1, 3–10, 12–15, and 17–20 under 35 U.S.C. § 101 as being directed to patent- ineligible subject matter, without significantly more? (2) Have Appellants shown the Examiner erred in rejecting claims 1, 3, 6–10, 12–15, 17, and 20–23 under 35 U.S.C. § 103(a) over the base combination of Kalai and IBM, because the properly made base combination of Kalai and IBM fails to teach or suggest limitations [C] and [D], where the time from limitation [D] is determined using information as set forth in limitations [A] and [B], as recited in representative claim 1?3 (3) Have Appellants shown the Examiner erred in rejecting claims 4 and 18 under 35 U.S.C. § 103(a) over the combination of Kalai an IBM, because Kalai fails to teach or suggest “determining the frequency of visitation includes determining . . . whether the user’s home location is within the geographic area,” as recited in claims 4 and 18? 3 With regard to each of the obviousness rejections over the same base combination of Kalai and IBM, the Examiner has cited Sivasubramanian (US 8,533,293 B1; issued Sept. 10, 2013)(hereinafter, “Sivasubramanian”) as an “[e]videntiary reference” (Final Act. 4, 11, 13, 14; Ans. 5, 12, 14, 15) in support of the obviousness rejection. We have not considered this reference since it is are not part of the statement of the rejection and may not be properly relied upon. “Where a reference is relied on to support a rejection whether or not in a ‘minor capacity,’ there would appear to be no excuse for not positively including the reference in the statement of the rejection.” In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970). Appeal 2018-007232 Application 14/743,548 6 (4) Have Appellants shown the Examiner erred in rejecting claims 5 and 19 under 35 U.S.C. § 103(a) over the combination of Kalai an IBM, because Kalai fails to teach or suggest “determining . . . a time at which the request for the digital map is received, including determining at least one of (i) day of week, and (ii) time of day; wherein determining the time when the map data should be removed from the memory is further based on the determined time at which the request for the digital map is received,” as recited in claims 5 and 19? ANALYSIS Issue (1): Patent Eligibility under 35 U.S.C. § 101 Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the Patent Act, which recites: 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. There are, however, three judicially-created exceptions to the broad categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quotation marks and citation omitted); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). 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, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we first determine what concept the claim Appeal 2018-007232 Application 14/743,548 7 is “directed to.” See id. 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, 130 S Ct. 3218 (2010) (“Claims 1 and 4 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, 130 S. Ct. 3218 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by Appeal 2018-007232 Application 14/743,548 8 attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). 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 [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. The PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter, “Revised Guidance”). Under that guidance, after determining that a claim falls within one of the statutory categories under § 101 (hereinafter, “Step 1”), we determine whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, mental processes, or certain methods of organizing human activities such as a fundamental economic practice or managing personal behavior or relationships or interactions between people) (hereinafter, “Step 2A, Prong 1”); and Appeal 2018-007232 Application 14/743,548 9 (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, Jan. 2018)) (hereinafter, “Step 2A, Prong 2”). Revised Guidance, 84 Fed. Reg. at 51–52, 54–55. Only if a claim: (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an inventive concept. Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18. For example, we 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, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception (hereinafter, “Step 2B”). Revised Guidance, 84 Fed. Reg. at 56. Step 1 Under Step 1 of the patent-eligibility inquiry under § 101, we determine whether a claim is directed to one of the four statutory categories of invention, i.e., a process, machine, manufacture, or composition of matter. In the instant case on appeal, claim 1 and claims 3–6 depending therefrom recite “[a] method for managing offline map data” (claim 1); and claim 7 and claims 8–10, 12, and 13 depending therefrom recite “[a] method for managing offline map data in computing devices” (claim 7), including a series of steps. A process is a statutory category of invention under § 101. Therefore, claims 1, 3–10, 12, and 13, as method claims, recite at least one Appeal 2018-007232 Application 14/743,548 10 of the enumerated categories (e.g., a process) of eligible subject matter in 35 U.S.C. § 101. Claim 14 and claims 15 and 17–20 depending therefrom recite “[a] portable computing device comprising: one or more processor; a network interface configured to communicatively couple the portable computing device to a network server via a communication network” (claim 14). A machine or manufacture are statutory categories of invention under § 101. Therefore, claims 14, 15, and 17–20, as apparatus claims, recite at least one of the enumerated categories (e.g., machine and/or manufacture) of eligible subject matter in 35 U.S.C. § 101. As a result, as to claims 1, 3–10, 12–15, and 17–20, we continue our analysis under Step 2A(i) of the Revised Guidance to determine whether the claims (1) recite a judicial exception (a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas above); and (2) are patent-eligible. Step 2A, Prong 1 Under Step 2A, Prong 1, we determine whether claims 1, 7, and 14 recite a judicial exception, e.g., an abstract idea. The Examiner concludes claims 1, 7, and 14 “are directed to obtaining the data / fetching the data i.e. the map data, and including steps to classifying and tracking data / inventory ranking” using classifying criteria (see Final Act. 2; Ans. 3–4). The Examiner (see Final Act. 2) compares the subject matter of the claims on appeal to the concepts of data collection and management held to be abstract in Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass’n, 776 F.3d 1343 (Fed. Cir. 2014). The Examiner determines the additional limitations of a processor and memory to select and manipulate Appeal 2018-007232 Application 14/743,548 11 data are merely generic computer components used to perform generic computer functions (see Final Act. 2), and evidence such as Sivasubramanian demonstrates that the storage/cache operations using limited storage space and determining what data to keep or not kept are well- known, understood, routine computer functions (Final Act. 3 citing Sivasubramanian col. 6, ll. 30–46). The Examiner also determines the activities recited in the claims have long been performed by humans (see Final Act. 3). Appellants contend that claims 1, 7, and 14 are not directed to an abstract idea, but to patent-eligible subject matter (App. Br. 16–17), and assert that “it is not clear what exactly the Office identifies as the abstract idea of the pending claims (App. Br. 16). More specifically, Appellants contend (App. Br. 16) the claims recite technical solutions to a technical problem (e.g., preserving memory resources as explained at paragraphs 13 and 16 of the Specification), in a way that improves computer technology, and the recited method of removing map data from memory cannot be considered conventional or well-known (App. Br. 16–17). We agree. Appellants describe the invention as relating “to interactive digital maps, and more particularly, to managing offline map data in client device” (Spec. ¶ 2), used in digital mapping applications of portable computing devices (see Spec. ¶ 4). The disclosed and claimed invention allows users of portable computing devices to use mapping applications that can access cached map data in an offline mode, and conserves memory resources by removing map data from memory at determined times based on the likelihood of future requests for the map data (see Spec. ¶¶ 4–8; Abstract; claims 1, 7, 14). Appeal 2018-007232 Application 14/743,548 12 Appellants’ claims recite (i) a method for managing offline map data using one or more processors and a memory of a computing device (claims 1, 7); and (ii) a portable computing device connected to a network server over a network interface and having a memory and one or more processors including a mapping module (claim 14), that can remove map data from memory at a time determined by the multi-step process recited, for example, in limitations [A]–[C] in claim 1 (and as commensurately recited in claims 7 and 14). In this light, the methods (claims 1 and 7) and apparatus (claim 14) for managing offline map data do not fall into any of the subcategories of abstract ideas enumerated in the Revised Guidance, namely: (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). Revised Guidance, 84 Fed. Reg. at 52 (footnotes omitted). Claims 1, 7, and 14 do not recite mathematical concepts, because there are no mathematical relationships, formulas, equations, or calculations analyzed or performed in the claim. Claims 1, 7, and 14 also do not recite any of the methods of organizing human activity identified in the Revised Guidance. That is, Appeal 2018-007232 Application 14/743,548 13 claims 1, 7, and 14 relate to managing offline map data in a computing device, not fundamental economic principles or practices, commercial or legal interactions, or managing personal behavior or relationships or interactions between people. See Revised Guidance. Finally, claims 1, 7, and 14 do not recite mental processes, because the steps for determining a time to remove map data (see e.g., the determining steps of limitations [A]–[C] and the removing step of limitation [D]) are not something that can be practically performed in the human mind—these operations exist exclusively in the realm of managing data in a computing device with limited memory space. The dissent’s determination that the claims recite mental processes, which are an abstract idea, is limited only to the consideration of limitations [A]–[D]. However, such a determination is more appropriately made in view of the claims as a whole. For example, in considering the “method for managing offline map data” recited in claim 1, “map data” is used by “a computing device” to generate “a digital map of a geographic area” using “map data” that is “fetch[ed], by one or more processors” into “a memory of a computing device” (claim 1). Because generating a digital map from map data of a geographic area would large quantities of digital data it is not something a person can reasonably process in their mind, we cannot agree with the dissent that the method of claim 1 can be performed solely in the human mind. In this light, claim 1, as a whole, does not describe a process performable in one’s mind, or with the assistance of pen and paper (i.e., a mental process), because a human could not generate a digital map by memorizing (i.e., “fetching” and “retrieving” as claimed) “a digital map of a geographic area” made up of map data which is in turn made up of thousands of bits. Similarly, the determination of the Appeal 2018-007232 Application 14/743,548 14 likelihood of a second request in limitation [B], used to determine the time for removing map data in limitations [C] and [D], involves statistical determinations not likely capable of being performed in the human mind. Lastly, and most importantly, removing map data from memory, as recited in limitation [D] of claim 1, could not be performed solely by a human because “map data for generating a digital map of a geographic area” includes too much digital data for processing by a human without the assistance of a computing device. Accordingly, we determine claims 1, 7, and 14 do not recite an abstract idea because none of the limitations fall within the enumerated categories of abstract ideas under the Revised Guidance. Because claims 1, 7, and 14 do not recite subject matter falling into one of the recognized categories of abstract ideas (e.g., mathematical concepts, certain methods of organizing human activity, and mental processes), we are persuaded by Appellants’ arguments (App. Br. 7–8; Reply Br. 2–3) claims 1, 3–10, 12–15, and 17–20 are not directed to an abstract idea, and thus the Examiner erred in concluding claims 1, 3–10, 12–15, and 17–20 are directed to an abstract idea. Step 2A, Prong 2 Even if claims 1, 3–10, 12–15, and 17–20 were not directed to a judicial exception, we conclude that these claims contain additional limitations that integrate the alleged judicial exception into a practical application under Step 2A, Prong 2. In the instant case on appeal, claims 1, 7, and 14 recite a method and apparatus for managing offline map data in a computing device, including limitations for determining the time to remove map data from memory (see Appeal 2018-007232 Application 14/743,548 15 e.g., claim 1 limitations [A]–[D]). By removing map data from the memory of the computing device at the determined time, and “in view of the anticipated subsequent use of the map data,” memory resources can be preserved (Spec. ¶ 13; see also Spec. ¶ 16), and offline map data can be dynamically expired (see Spec. ¶ 18). This results in “efficiently preserving memory resources,” which is a technical solution to a technical problem (Reply Br. 2). Considering claims 1, 7, and 14 as a whole, the final step of removing the offline map data at the determined time applies or uses the abstract idea in a meaningful way such that the claim as a whole is more than a drafting effort designed to monopolize the exception. The determining limitations (see e.g., claim 1 limitations [A]–[C]), taken in combination with the removing limitation (see e.g., claim 1 limitation [D]), operate to remove offline map data from the memory more efficiently based on the determinations made by the one or more processors of the computing device. The last clause in particular, “removing, by the one or more processors, the map data from the memory at the determined time” (claim 1 and commensurate limitations recited in claims 7 and 14), provides a technological improvement and integrates the abstract idea into a practical application. We conclude that even if the claims are directed to the collection and manipulation of data, and therefore directed to an abstract idea, claims 1, 7, and 14 integrate such an idea into a practical application. In particular, claims 1, 7, and 14 recite elements/steps that allow for removal of offline map data by taking into account the likelihood of a future request based on the geographic location of a user. Our reviewing court has held that claims Appeal 2018-007232 Application 14/743,548 16 which recite rules that allow automation of animation tasks that could only be performed manually were not directed to an abstract idea. See McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1313‒14 (Fed. Cir. 2016); see also MPEP 2106.05(a). Like McRO, the claims here improve an existing technology (e.g., computing devices having memories for storing offline map data) and are, therefore, not directed to an abstract idea. In this light, we agree with Appellants’ contentions that claims 1, 7, and 14 provide an improvement in computer related technology (App. Br. 16–17; Reply Br. 2), and do so “by efficiently preserving memory resources” (Reply Br. 2). As a result, under Step 2, Prong 2, claims 1, 3–10, 12–15, and 17–20 provide improvements to the functioning of computing devices, and more particularly the technology or technical field of offline map data management. See MPEP § 2106.05(a). Because the determining and removing limitations in claims 1, 7, and 14 integrate the judicial exception into a practical application, we find persuasive Appellants’ assertion that the claims are patent eligible. This determination (Step 2, Prong 2 – Practical Application) concludes the eligibility analysis. Because we conclude that Appellants’ claims include additional elements that integrate the judicial exception (mathematical concepts) into a practical application (see MPEP § 2106.05(a) discussed above), we do not reach and address Appellants’ arguments pertaining to Step 2B. In view of the foregoing, under the Revised Guidance, and informed by our governing case law concerning 35 U.S.C. § 101, the Examiner erred Appeal 2018-007232 Application 14/743,548 17 in concluding claims 1, 3–10, 12–15, and 17–20 are directed to a judicial exception, i.e., an abstract idea, without significantly more, and thus are patent-ineligible under § 101. Accordingly, we cannot sustain the Examiner’s § 101 rejection of independent claims 1, 7, and 14, as well as the Examiner’s rejection of dependent claims 3–6, 8–10, 12, 13, 15, and 17–20, which fall with the independent claims from which they depend. Issue (2): Obviousness of Claims 1, 3, 6–10, 12–15, 17, and 20–23 We have reviewed the Examiner’s rejections (Final Act. 4–15; Ans. 5–16) in light of Appellants’ arguments in the Appeal Brief (App. Br. 20– 23) and Reply Brief (Reply Br. 4–5) that the Examiner has erred, along with the Examiner’s response to Appellants’ arguments found at pages 20 through 24 of the Examiner’s Answer. With regard to representative claim 1 for obviousness over the combination of Kalai and IBM, Appellants’ arguments that the Examiner has erred are unpersuasive. We concur with the findings and conclusion reached by the Examiner as to the obviousness of representative claim 1 (see Final Act. 4–5; Ans. 5–6), and we provide the following for emphasis. In rejecting claims under 35 U.S.C. §§ 102 and 103, it is incumbent upon the Examiner to establish a factual basis to support the prior art rejection — the so-called “prima facie” case. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the USPTO has the initial burden of proof “‘. . . to produce the factual basis for its rejection of an application under sections 102 and 103.’” (quoting In re Warner, 379 F.2d 1011, 1016 (CCPA 1967))). “[T]he examiner bears the initial burden, on review of the prior art Appeal 2018-007232 Application 14/743,548 18 or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In the instant case before us on appeal, the Examiner sufficiently mapped the teachings of Kalai (see Final Act. 4–5; Ans. 5–6) and IBM (see Final Act. 5; Ans. 6) to the limitations of claim 1, and thus set forth a prima facie case of obviousness. As to limitations [A] and [B], at least Kalai’s paragraphs 57 and 59 teach or suggest “determining . . . at least one of (i) a frequency of visitation of the geographic area by the user or (ii) whether the user is expected to make one or more visits to the geographic area” and “determining . . . a likelihood of a second request” as recited in claim 1. For example, paragraph 57 describes a process to “automatically precache geographic areas a user is most likely to visit based on the user’s travel history, search history, personal profile, calendar entries or other resource” (Kalai ¶ 57)(emphasis added). And, paragraph 59 describes “a protocol may be defined to prefetch the user’s most important N geographic areas (e.g., recently viewed places, frequently visited places, user’s home town, or area of work)” (Kalai ¶ 59)(emphasis added). We note that each reference cited by the Examiner must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (finding one cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references). A determination of obviousness does not require the claimed invention to be expressly suggested by any one or all of the references. See, e.g., In re Keller, 642 F.2d 413, 425 (CCPA 1981). Appeal 2018-007232 Application 14/743,548 19 As to limitations [C] and [D], we agree with the Examiner (see Ans. 22–24) that Kalai teaches or suggests deleting the map data at a designated time, e.g., either automatically or when the user desires (see Kalai 58), and IBM (IBM page 1, ¶ 2) teaches or suggests deleting map data when a period of time expires. As a result, we agree with the Examiner’s determination (Final Act. 4–5; Ans. 5–6, 20–24) that the combination of Kalai and IBM teaches or suggests limitations [C] and [D]. In this light, Appellants’ arguments (App. Br. 20–21; Reply Br. 4) that IBM fails to disclose or suggest limitation [C] and Kalai fails to teach or suggest [D] are unpersuasive, because the Examiner relies upon the properly made combination of Kalai and IBM as teaching or suggesting limitations [C] and [D] recited in claim 1 (see Final Act. 5; Ans. 6, 20–24). Appellants have not adequately shown the Examiner erred in rejecting claims 1, 3, 6–10, 12–15, 17, and 20–23 under 35 U.S.C. § 103(a) over the base combination of Kalai and IBM, because the properly made base combination of Kalai and IBM teaches or suggests limitations [C] and [D], where the time from limitation [D] is determined using information as set forth in limitations [A] and [B], as recited in representative claim 1. In view of the foregoing, Appellants have not persuasively shown the Examiner erred, and we sustain the rejection of representative claim 1, as well as claims 3, 7, 12, 14, 17, 21, and 23 grouped therewith, as being obvious over the combination of Kalai and IBM. And, (i) for similar reasons; (ii) because claims 6, 8–10, 13, 15, 20, and 22 each contain commensurate limitations as claims 1, 7, and 14; and (iii) Appellant argues claims 6, 8–10, 13, 15, 20, and 22 for the same reasons as claims 1, 7, and Appeal 2018-007232 Application 14/743,548 20 14 (see App. Br. 9; Reply Br. 5), we also sustain the Examiner’s obviousness rejections of claims 6, 8–10, 13, 15, 20, and 22. Issue (3): Obviousness of Claims 4 and 18 With regard to claims 4 and 18, the Examiner finds (Final Ans. 6) that Kalai’s paragraphs 55 through 59 disclose determining whether a user is visiting a geographic area during a trip as claimed. Appellants argue that the Examiner fails to provide any explanation as to why paragraphs 55 through 59 of Kalai teach or suggest a “trip” as claimed. However, we agree with the Examiner (Ans. 24) that paragraph 55 of Kalai teaches or suggests the recited “trip.” Kalai’s paragraph 55 describes that “a user moves towards a destination” (which one of ordinary skill in the art would understand is during a “trip”), and when new map data is requested, “cache memory 164 may be cleared” to make room for the next map data to be received. In view of the foregoing, Appellants have not persuasively shown the Examiner erred, and we sustain the rejection of claims 4 and 18 as being obvious over the combination of Kalai and IBM. Issue (4): Obviousness of Claims 5 and 19 With regard to claims 5 and 19, the Examiner finds (Final Act. 6) Kalai’s paragraphs 55 through 61 disclose “determining . . . a time at which the request for the digital map is received, including determining at least one of (i) day of week, and (ii) time of day; wherein determining the time when the map data should be removed from the memory is further based on the determined time at which the request for the digital map is received.” The Examiner reasons that by removing map data “based on usage relatively Appeal 2018-007232 Application 14/743,548 21 frequently,” Kalai determines a day of week and time of day for the data removal (Final Act. 6; see also Ans. 24–25). However, we agree with Appellants (App. Br. 22; Reply Br. 5), that nowhere in paragraphs 55 through 61 does Kalai disclose the disputed feature of determining a day of week and/or time of day at which the request for the digital map is received, and removing the map data from memory based on that determined time, as recited in claims 5 and 19. Kalai is silent as to this feature, and at best, the Examiner leaves us to speculate as to how/why one of ordinary skill in the art would modify Kalai to meet the limitations of recited in claims 5 and 19. We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding and/or reasoning. See Application of Warner, 379 F.2d 1011, 1017 (CCPA 1967); Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). As such, based on the record before us, we find that the Examiner improperly relies upon the combination of Kalai and IBM to teach or suggest determining a day of week and time of day for data removal as recited in claims 5 and 19. See Warner at 1017. In view of the foregoing, Appellants have shown the Examiner erred, and we do not sustain the rejection of claims 5 and 19 as being obvious over the combination of Kalai and IBM. Appeal 2018-007232 Application 14/743,548 22 CONCLUSIONS (1) Appellants have shown the Examiner erred in rejecting claims 1, 3–10, 12–15, and 17–23 under 35 U.S.C. § 101, as being directed to a judicial exception (e.g., an abstract idea), without significantly more. (2) Appellants have not shown the Examiner erred in rejecting (a) claims 1, 3, 4, 7, 12, 14, 17, 18, 21, and 23 under 35 U.S.C. § 103 over the combination of Kalai and IBM; and/or (b) claims 6, 8–10, 13, 15, 20, and 22 over various other references combined with the same base combination of Kalai and IBM. (3) Appellants have shown the Examiner erred in rejecting claims 5 and 19 under 35 U.S.C. § 103 over the combination of Kalai and IBM. DECISION For the above reasons, we (1) reverse the Examiner’s decision to reject (a) claims 1, 3–10, 12–15, and 17–23 under 35 U.S.C. § 101, and (b) claims 5 and 19 under 35 U.S.C. § 103 over the combination of Kalai and IBM; and (2) affirm the Examiner’s decision to reject claims 1, 3, 4, 6–10, 12–15, 17, 18, and 20–23 as being unpatentable under 35 U.S.C. § 103 over the base combination of Kalai and IBM. 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 UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte YIYANG JOY DING and JENNIFER MAURER ____________________ Appeal 2018-007232 Application 14/743,548 Technology Center 2100 ____________________ Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN, Administrative Patent Judges. CYGAN, Administrative Patent Judge, concurring-in-part and dissenting-in- part. I fully join the decision as to the disposition of claims under 35 U.S.C. § 103. However, I respectfully disagree with my colleagues’ conclusion that the claims are eligible under 35 U.S.C. § 101. With respect to the Examiner’s rejection under 35 U.S.C. § 101, the panel’s decision determines that the claims do not recite an abstract idea because the acts for determining a time to remove map data, as set forth in limitations [A]–[D], are not something that can be practically performed in the human mind, but instead Appeal 2018-007232 Application 14/743,548 2 exist exclusively in the realm of managing data in a computing device with limited memory space. Maj. Op. 12. The panel further determines that even if the claims do recite an abstract idea, the claims are not directed to that abstract idea, and thus are eligible. I write separately to explain how I find the claims to recite ineligible subject matter under the USPTO’s 2019 Revised Guidance. Step 2A, Prong One: Recites an Abstract Idea The Revised Guidance states that the abstract idea exception includes mental processes “when recited as such in a claim limitation(s) (that is when recited on their own or per se).” Revised Guidance, 84 Fed. Reg. at 52. Limitations [A]–[C] recite acts of observation, evaluation, judgment, and opinion that would qualify as mental processes under the Revised Guidance. Id. Limitation [A] determines how frequently a user visits a particular geographic area, and/or determining whether the user is expected to make one or more visits to the geographic area. The first clause is an act of observation of a user’s travel. The second clause is an act of forming an opinion on a user’s expected future travel plans. Limitation [B] determines the likelihood of a future request for at least a portion of a digital map within a certain period of time based upon the result of limitation [A]. This is an act of evaluating the result of limitation [A] to form a judgment upon the likelihood of a future request for stored digital map data. Limitation [C] requires determining a time when the digital map data should be removed from memory, based at least in part on the results of limitation [B]. This is an act of evaluating the results of limitation [B], and forming an opinion or judgment therefrom. Appeal 2018-007232 Application 14/743,548 3 These steps describe a process performable in one’s mind, or with the assistance of pen and paper. Viewed together, limitations [A]–[C] describe evaluations of past and/or prospective travel so as to form an opinion of a time when map data is no longer needed for a particular geographic area. A person performs these steps merely by thinking about when they will next visit a particular destination, reasoning therefrom the likelihood of needing a map for that destination, and then deciding on a time that map data will no longer be needed. The involvement of the computing device in performing these steps does not preclude a finding that the steps recite an abstract idea. Revised Guidance, 84 Fed. Reg. at 52 n. 15 (citing Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015)) for the proposition that “[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”). Upon consideration of the entirety of the Revised Guidance, limitations [A]–[C] recite acts of observation, judgment, opinion, and evaluation. Such acts, practically performable in a person’s mind or via pen and paper, are mental processes under the Revised Guidance. Therefore, the claims, each considered as a whole, recite an abstract idea. Step 2A Prong Two: Directed to an Abstract Idea The Revised Guidance provides a decisional procedure for determining whether additional limitations are directed to the identified abstract idea because they integrate the abstract idea into a practical application of the idea. Revised Guidance, 84 Fed. Reg. at 54–55. In view of the Revised Guidance, and in view of the cases and sections of the Appeal 2018-007232 Application 14/743,548 4 Manual of Patent Examining Procedure referred to therein, the additional limitations in the claims do not integrate the above-identified abstract idea into a practical application of that abstract idea. The additional limitations of fetching map data into memory, retrieving the data from the memory, and removing the data from the memory are extra-solution activities; i.e., the activity of data gathering and its corollary action of data removal. The act of removing data at the time determined by the above-identified abstract idea is also considered to be merely an instruction to apply the identified abstract idea. This characterization of the steps additional to the abstract idea indicates that the abstract idea has not been integrated into a practical application. Revised Guidance, 84 Fed. Reg. at 55. Moreover, the fact that the claimed operations are performed on digital data does not cause the claim to necessarily integrate the abstract idea into a practical application. See, e.g., Revised Guidance, 84 Fed. Reg. at 52– 53 nn. 14–15; Alice Corp., 573 U.S. at 225–226 (finding ineligible operations on digital data using a generic computer); Benson, 409 U.S. at 65 (finding ineligible operations on digital data); Digitech Image Techs., LLC v. Elecs for Imaging, 758 F.3d 1344 (Fed. Cir. 2014) (finding ineligible a method for gathering and combining digital image data). Furthermore, the fact that the type of data is being gathered and removed is digital map data, rather than paper map data, does not itself provide eligibility. Revised Guidance, 84 Fed. Reg. at 55; Intellectual Ventures I, LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (finding that use of XML [extensible markup computer language] documents rather than other types of documents limited the field of use but Appeal 2018-007232 Application 14/743,548 5 did not render an otherwise abstract concept any less abstract). The claimed steps do not rely on any property of the map data or its relationship to the host computing device, because the Specification clearly states the applicability of the technique to “any suitable type of map data, regardless of which technique was used to select and store map data for storage.” Spec. ¶ 18. The participation of the map data is therefore limited to providing a field of use, which does not provide eligibility to an otherwise ineligible abstract idea. Accordingly, the additional elements are not considered to reflect an improvement to mapping technology or a mapping-related technical field. Id. Nor does the implementation of the claimed operations by a generic memory and processor(s) provide an improvement to computer technology. An improvement to computer technology may be found where the improvement is to the functionality of the computer itself, rather than to a task for which a computer is used in its ordinary capacity. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 1339 (Fed. Cir. 2016) (finding the claimed invention “to improve the way a computer stores and retrieves data in memory” and not merely am improvement to “other tasks for which a computer is used in its ordinary capacity”). For example, a task may be performed faster on a computer relative to other tasks, but that may not improve the computer functionality itself; in such cases, the alleged improvement may be the result of the ability of a computer to quickly perform actions. FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (2016) (“While the claimed system and method certainly purport to accelerate the process of analyzing audit log data, the speed increase comes from the capabilities of a general-purpose computer, rather than the patented Appeal 2018-007232 Application 14/743,548 6 method itself”); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter”). Appellants argue that the claim improves computer technology by efficiently preserving memory resources. App. Br. 16–17. Here, the alleged preservation of memory resources is concerned with removing map data that was previously added to memory for the purpose of providing a user with a map. Spec. ¶¶ 4–5. Accordingly, the improvement is to the task of providing a (single) map to a user, in the form of determining a time to remove the map from the user’s possession. Any alleged improvement is relative to other methods of providing a map to a user; i.e., relative to other methods of providing a map that do not involve determining a time to remove the map data from the memory afterwards. Notably, the alleged improvement is not in deleting the data, which is performed through the ordinary operation of the processor and memory, but merely in determining the timing of deleting the data. Id. ¶¶ 5, 15. Any alleged improvement in memory storage derives, not from the “way” the computer stores and removes data, but instead from the evaluation of when to delete a specific file from memory. This evaluation is based a subjective judgment of the projected usefulness of the content of that file, with the act of removing the map data utilizing only the ordinary memory storage capabilities of a general-purpose computer. Such an asserted advantage is of a quite different character than prior court determinations of claims directed to computer improvements. Appeal 2018-007232 Application 14/743,548 7 For example, our reviewing court has found improvement to computer and related technology where the claimed invention is more than merely reciting some pre-computer practice with the requirement to perform it on a computer. DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245, 1257 (Fed. Cir. 2014) (modification of internet hyperlink protocol to dynamically produce a dual-source hybrid web page); McRO, Inc., 837 F.3d at 1316 (finding the claimed invention does not “simply use a computer as a tool to automate conventional activity” but instead uses the computer to “perform a distinct process” that, unlike the tasks in Flook, Bilski, and Alice Corp., is carried out in a different way than the prior non-computer method to improve the technology of 3-D animation techniques); Enfish, 822 F.3d at 1336–1337 (finding “a specific improvement to the way computers operate, embodied in [a] self-referential table” that “functions differently than conventional database structures” and “achieves benefits over conventional databases”); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir. 2016) (claims directed to an abstract idea where they “replace a server’s notepad or mental list with an electronic device programmed to allow menu items to be selected as a customer places an order”). Here, the Specification provides an example of storing a trail map in a computer memory where the trail area is likely not to have a reliable network connection. Spec. ¶ 15. The Examiner analogizes the claimed process to the pre-computer practice of storing road maps in a glove compartment. Final Act. 3. In view of the Examiner’s apt analogy of the claimed process to pre-computer practice, the claimed invention is not considered to be more than the requirement to perform on a computer the pre-computer practice of storing pertinent maps in a glove compartment Appeal 2018-007232 Application 14/743,548 8 having limited space. Thus, the instant claims on appeal bear more similarity to the claims found to be directed to an abstract idea in Apple, Inc. than in the aforementioned cases finding the claims not directed to an abstract idea. Our reviewing court has also found improvement to computer technology where the improvement derives from an unconventional arrangement of computer devices. Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300–01 (Fed. Cir. 2016) (utilizing network devices and gatherers, ISMs [Information Source Modules], a central event manager, a central database, a user interface server, and terminals or clients to enhance data in a distributed fashion; see also BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350–51 (Fed. Cir. 2016) (finding eligibility where installation of a filtering tool at a specific location, remote from the end-users and with customizable filtering features specific to each user, realizes the benefits of filters on both local and remote servers). Here, the claims require a memory and one or more processors. The Specification does not set forth any unconventional arrangement of the memory and processors such that the computer architecture itself provides an improvement to computer technology; rather, the alleged improvement is the manner by which data is scheduled for removal on an otherwise generic computer system. See Spec. ¶¶ 4, 25, 48. As stated by the Court, “Given the ubiquity of computers . . . wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice Corp., 573 U.S. at 223–224. Thus, the claims bear more similarity to the claims directed to an abstract Appeal 2018-007232 Application 14/743,548 9 idea in Alice Corp. than in the aforementioned cases finding the claims not directed to an abstract idea. Nor is this a situation similar to those in which the courts have found software improvements to result in improved computer hardware component interactions. Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 862– 63 (Fed. Cir. 2010) (thresholding digital images to improve their quality on computer displays and printers); Visual Memory, LLC v. NVIDIA Corp., 867 F.3d 1253, 1259-60 (Fed. Cir. 2017) (a memory system having programmable operational characteristics that are configurable based on the type of processor, which can be used with different types of processors without a tradeoff in processor performance); Core Wireless Licensing, S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018) (improved interface for electronic devices, enabling improved selection of items on screens, particularly small screens). Here, there is no indication that the programming results in improved interactions between the memory system and the processor in a manner similar to the improved interactions in the above-described cases. Instead, the programming and memory interact merely in the ordinary course of a processor causing data to be added to or removed from a memory, under conditions reflecting the user’s travel history and expectations. See, e.g., Reply Br. 4 (“the time when map data should be removed from memory relates to the user who interacts with this map data”). Upon consideration of the entirety of the Revised Guidance, including but not limited to the cases discussed above, the additional limitations amount to no more than an instruction to apply the above-identified abstract idea on a generic computing system having a memory and processor(s) Appeal 2018-007232 Application 14/743,548 10 performing their normal functions. Therefore, the claims, each considered as a whole, do not integrate the recited abstract idea into a practical application. Step 2B: Inventive Concept Viewed individually, the additional limitations of processor(s) and memory are used for their well-understood, routine, conventional functions of, respectively, carrying out computer operations to determine an estimated outcome, and temporarily storing and retrieving data. See OIP Techs. Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015); Versata Dev. Group, Inc., 793 F.3d at 1334. Viewed as an ordered combination, each additional element is used merely for its conventional functions, and the combination simply appends the well-known, conventional functions of processors and memory to the pre-computer practice of determining when to discard data based on its projected desirability, as applied to the field of map data. The claims therefore exhibit no inventive concept providing eligibility. Accordingly, I would conclude that claims 1, and dependent claims 3– 10, 12–15, and 17–23 rejected on the same basis, are ineligible under 35 U.S.C. § 101.