Ex Parte Basir

Patent Trial and Appeal Board

Nov 27, 2017

12332122 (P.T.A.B. Nov. 27, 2017)

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.
12/332,122 12/10/2008 Otman A. Basir 67182-018PUS1 3898
26096 7590 11/29/2017
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
SHAPIRO, JEFFREY ALAN
ART UNIT PAPER NUMBER
3653
NOTIFICATION DATE DELIVERY MODE
11/29/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OTMAN A. BASIR
Appeal 2017-002542
Application 12/332,122
Technology Center 3600
Before JOSEPH L. DIXON, MICHAEL J. STRAUSS, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 8, 9, and 26—34, which are all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is INTELLIGENT
MECHATRONIC SYSTEMS INC. App. Br. 1.
Appeal 2017-002542
Application 12/332,122
INVENTION
Appellant’s invention relates to a vehicle communication system with
destination selection for navigation. Abstract. Claims 8 and 9 read as
follows:
8. A method for selecting a destination for a navigation system
including the steps of:
a) storing a plurality of contacts on a mobile
communication device, each of the plurality of contacts having a
different location associated therewith;
b) the mobile communication device receiving a selection
of one of the plurality of contacts;
c) finding a plurality of points of interest proximate the
location associated with the selected contact; and
d) receiving a selection of one of the points of interest as a
destination for the navigation system.
9. A method for selecting a destination for navigation including
the steps of:
a) selecting a contact from among a plurality of contacts
on a mobile communication device, each of the plurality of
contacts associated with a location;
b) choosing the location associated with the selected
contact as a destination;
c) moving the mobile communication device from a
location away from a vehicle to a location near the vehicle;
d) calculating a route to the location in response to step c).
REJECTIONS
Claims 8, 9, and 26—34 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception without significantly
more.
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Claim 8 stands rejected under pre-AIA 35 U.S.C. § 102(e) as
anticipated by Brillhart (US 2009/0017803 Al; published Jan. 15, 2009).
Claim 8 stands rejected under pre-AIA 35 U.S.C. § 102(e) as
anticipated by Scheibe (US 2009/0100037 Al; published Apr. 16, 2009).
Claims 9 and 26—33 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over the combination of Brillhart and Ohki (US 2008/0036586
Al; published Feb. 14, 2008).
Claim 34 stands rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over the combination of Brillhart, Ohki, and Basir (US
2007/0042812 Al; published Feb. 22, 2007).
ANALYSIS
We have reviewed the rejections of claims 8, 9, and 26—34 in light of
Appellant’s arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments that Appellant could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Rejection of Claims 8, 9, and 26—34 under 35 U.S.C. § 101
With regard to the Examiner’s rejection of claims 8, 9, and 26—34 as
directed to patent-ineligible subject matter, we agree with and adopt as our
own the Examiner’s findings of facts and conclusions as set forth in the
Answer and in the Action from which this appeal was taken. We have
considered Appellant’s arguments, but do not find them persuasive of error.
We provide the following explanation for emphasis.
The Supreme Court has long held that “[ljaws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
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CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc, for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
“abstract ideas” category embodies the longstanding rule that an idea, by
itself, is not patentable. Alice, 134 S. Ct. at 2355 (quoting Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). The first step in the analysis
is to “determine whether the claims at issue are directed to one of those
patent-ineligible concepts,” such as an abstract idea. Id. If the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is
to “search for an ‘inventive concept’—i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id.
(brackets in original) (quoting Mayo, 132 S. Ct. at 1294).
Turning to the first step of the Alice inquiry, the Examiner found
claims 8 and 9, which are representative of the claims on appeal, are directed
to the abstract concept of data gathering and data combination through the
recited steps. Final Act. 2—3. Appellant argues in a conclusory manner that
the claims do not recite an abstract idea. App. Br. 2—3.
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We do not find Appellant’s argument persuasive. Claim 8 requires
“storing” contacts, “receiving” a selected contact, “finding” points of
interest, and “receiving” a selected point of interest, but does not sufficiently
describe how to achieve these results in a non-abstract way, i.e., reciting
desired results without recitation of corresponding structure or steps to
achieve the result. See App. Br. 6. Similarly, claim 9 requires “selecting” a
contact, “choosing” a location, “moving” a mobile communication device,
and “calculating” a route, but does not sufficiently describe how to achieve
these results in a non-abstract way. See id. Claims 8 and 9 are similar to
other claims found to be directed to an abstract idea. In Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016), the
challenged claims were directed to systems and methods for achieving real­
time performance monitoring of an electric power grid. The Federal Circuit
held that the challenged claims were directed to the abstract idea of
“gathering and analyzing information of a specified content, then displaying
the results, and not any particular assertedly inventive technology for
performing those functions.” Id. at 1354. In the same way, claims 8 and 9
manipulate data but fail to recite specific algorithms for, much less an
improvement to, any data manipulation routine. Moreover, Appellant has
not persuaded us of error in the Examiner’s findings (Ans. 5) that claims 8
and 9 are similar to the claims in Cybersource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366 (Fed. Cir. 2011) (finding abstract claims that covered the
steps of collecting, recognizing and storing data, and communicating a result
of the recognizing step back to a querying computer) and Content Extraction
and Transmission LLC v. Wells Fargo Bank National Association, 776 F.3d
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1343, 1347 (Fed. Cir. 2014) (“The concept of data collection, recognition,
and storage is undisputedly well-known.”).
Appellant further argues the Examiner erred because the claims recite
a “mobile communication device,” which is a machine. App. Br. 2.
Appellant also argues the claims are patent-eligible because contacts are
transformed in claim 8, and the mobile communication device must be
moved in claim 9, prompting calculation of a route. Id.
Appellant’s arguments are not persuasive. Satisfying the machine-or-
transformation test, by itself, is not sufficient to render a claim patent-
eligible, as not all transformations or machine implementations infuse an
otherwise ineligible claim with an “inventive concept.” See Mayo, 132 S.
Ct. at 1304 (“[SJimply implementing a mathematical principle on a physical
machine, namely a computer, [i]s not a patentable application of that
principle.”). Here, Appellant points to no inventive concept, and we find
none. We agree with the Examiner that the recited “mobile communication
device” is conventional and generic and recited broadly and with a high
level of generality. Ans. 4. Thus, the mere recitation of a “mobile
communication device,” without more, is insufficient to render claims 8 and
9 patent-eligible. Moreover, Appellant has not persuaded us of error in the
Examiner’s finding that the data transformation in claims 8 and 9 is
insufficient to render the claims patent eligible. See Ans. 5.
For these reasons, we agree with the Examiner that each of claims 8
and 9 is directed to a patent-ineligible abstract idea.
Turning to Alice step two, we consider the elements of the claims,
both individually and as an ordered combination, to assess whether the
additional elements transform the nature of the claim into a patent-eligible
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application of the abstract idea. Content Extraction, 776 F.3d at 1347. To
survive Alice step two, an inventive concept must be evident in the claims.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
We agree with the Examiner that the navigation system and mobile
communication device recited in claims 8 and 9 do not add meaningful
limitations to the abstract ideas because the recited system and device are
merely used in applying the abstract idea of data gathering in a routine and
conventional manner. Final Act. 2—3. We also agree with the Examiner that
the claims are not directed to overcoming a problem associated with
computers, navigation systems, or mobile communication devices, but rather
are directed toward using a computer application (or mobile communication
device application) to implement the abstract idea of gathering the contact
information required to select a destination, for example. Id. at 3-A. Alice
made clear that claims untethered to any advance in science or technology
do not pass muster under § 101. 134 S. Ct. at 2359.
Appellant argues that the claimed solution is ‘“necessarily rooted in
computer technology,’ i.e. human-computer interfaces.” App. Br. 3 (citation
omitted). Specifically, Appellant argues the methods recited in claims 8 and
9 “overcome[] a problem in human-computer interfaces for using a mobile
device in connection with navigation. The claimed method provides a quick,
efficient and accurate human-computer interface for using a mobile device
in connection with navigation.” Reply Br. 3. Appellant, however, provides
no evidence indicating, or discussion about, how the claimed solutions are
necessarily rooted in computer technology to overcome a problem
specifically arising in the realm of user interfaces. Appellant’s general
assertion that the claimed methods provide “a quick, efficient and accurate
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human-computer interface” is insufficient to explain how the claimed
functionality leads to an improvement in the functioning of the computer
itself.
Appellant presents for the first time in the Reply Brief the additional
argument that claims 8 and 9 do not “preempt all techniques” for using a
mobile device in connection with navigation. See Reply Br. 2. Appellant,
however, has waived this argument because it was presented for the first
time in the Reply Brief without a showing of good cause. See 37 C.F.R.
§ 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d 1473, 1473—74
(BPAI 2010) (informative opinion) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner's rejections, but were not.”).
Furthermore, although preemption ‘“might tend to impede innovation more
than it would tend to promote it,’ thereby thwarting the primary object of the
patent laws” (Alice Corp., 134 S. Ct. at 2354 (citing Mayo, 132 U.S. at 71)),
“the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); see also OIP Techs., 788 F.3d at 1362-63 (“[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
For these reasons, we are not persuaded the Examiner erred in
concluding claims 8 and 9 are directed to patent-ineligible subject matter.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of claims
8 and 9, and of claims 26—34, not argued separately.
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Rejection of Claim 8 under 35 U.S.C. § 102 over Brillhart
Appellant contends the Examiner erred in rejecting claim 8 as
anticipated by Brillhart because the “convergence location” disclosed in
Brillhart “is not proximate any of the participants in particular” and “is not a
‘location associated with a contact,’” as claim 8 requires. App. Br. 3; Reply
Br. 4. Appellant argues Brillhart “uses the current location of the person,
not the location stored in the person’s contact.” App. Br. 3. Appellant
further argues that, “since Brillhart uses a ‘convergence location’ of the
plurality of users, it does not search for points of interest proximate a
‘selected contact,’ as claimed.” Id.
We are not persuaded by Appellant’s arguments. With regard to the
“storing” step of claim 8, the plain language of the claim does not require
that the associated location be “stored in the person’s contact,” as Appellant
asserts. See App. Br. 3. Moreover, Appellant has not persuasively rebutted
the Examiner’s finding that Brillhart discloses storing a plurality of contacts,
noting that each of the mobile communication devices (502, 504) in Brillhart
has a GPS device (510, 512) that determines a location (536) for each
contact, which is associated with the particular contact. See Ans. 7.
Appellant also has not shown error in the Examiner’s finding that Brillhart’s
“convergence point” is the same as the recited “contact” because it is a
location indicator. See Final Act. 14. In particular, Appellant has not
persuasively shown the Examiner’s interpretation of the claim term
“contact” is overly broad, unreasonable, or inconsistent with the
Specification.2
2 As an initial matter of claim construction, we give the claim its broadest
reasonable interpretation consistent with the Specification. See In re Morris,
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Regarding the “finding” step and Appellant’s argument that Brillhart
does not search for points of interest “proximate a ‘selected contact,’”
Appellant has not persuasively rebutted the Examiner’s finding that the
disputed limitation “can be construed to be met by Brillhart’s paragraph 54.”
Ans. 8. Specifically with regard to the claim term “proximate,” Appellant
argues the claim must be interpreted in light of the Specification, but points
to no explicit or implicit meaning of “proximate” in the Specification. See
Reply Br. 4—5. Rather, Appellant argues “[t]he claim requires using the
location associated with the contact as the starting point for fm[d]ing points
of interest.” Id. at 5. The plain language of claim 8 does not require that
limitation, and Appellant has not persuaded us the claim should be
interpreted to require it.
For these reasons, we are not persuaded the Examiner erred in finding
Brillhart discloses the disputed limitations of claim 8. Accordingly, we
sustain the Examiner’s 35 U.S.C. § 102(e) rejection of claim 8 over
Brillhart.
Rejection of Claim 8 under 35 U.S.C. § 102 over Scheibe
Appellant contends the Examiner erred in rejecting claim 8 as
anticipated by Scheibe because the “center location” disclosed in Scheibe “is
not proximate any of the users in particular and it is based upon their current
location, not their location associated with them in a contact.” App. Br. 3.
Appellant further argues that, “since Scheibe uses a ‘center location’ of the
127 F.3d 1048, 1054 (Fed. Cir. 1997). “In the patentability context, claims
are to be given their broadest reasonable interpretations[;] . . . limitations are
not to be read into the claims from the specification.” In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
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plurality of users, it does not search for points of interest proximate a
‘selected contact,’ as claimed.” Id.
Appellant’s arguments are not persuasive. The Examiner found that
Scheibe’s “center location” functions as the claimed “contact” because both
provide location information. Final Act. 14; see also Ans. 9. Similar to the
Examiner’s finding with regard to Brillhart’s “convergence point,” the
Examiner found in Scheibe that “the points of interest about the center
location may also be interpreted as proximate any of the selected contacts.”
Ans. 10. Appellant has not persuasively rebutted the Examiner’s findings.
See Reply Br. 5. Instead, Appellant maintains Scheibe does not search for
points of interest proximate a “selected contact,” as claimed. Id. In
particular, Appellant does not argue persuasively that the Examiner’s
interpretation of “contact” as broad enough to include Scheibe’s “center
location” is overly broad, unreasonable, or inconsistent with the
Specification.
For these reasons, we are not persuaded the Examiner erred in finding
Scheibe discloses the disputed limitations of claim 8. Accordingly, we
sustain the Examiner’s 35 U.S.C. § 102(e) rejection of claim 8 over Scheibe.
Rejections of Claim 9 and 26—34 under 35 U.S.C. § 103
We agree with Appellant that the Examiner erred in rejecting
independent claim 9 for obviousness. In particular, we agree that the
Examiner has not clearly shown the combination of Brillhart and Ohki
teaches or suggests the limitation “calculating a route to the location in
response to step c),” where step c) recites “moving the mobile
communication device from a location away from a vehicle to a location
near the vehicle.” App. Br. 3—4. The Examiner found “Ohki teaches
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moving the mobile communication device (12) from a location away from a
vehicle to a location near the vehicle . . wherein the step of moving the
mobile communication system (device) prompts automatically retrieving
new SMS messages from the mobile device and periodically polls the
mobile device for newly received messages.” Ans. 11. The Examiner,
however, has not provided persuasive articulated reasoning with rational
underpinning for an artisan of ordinary skill to have modified the system of
Brillhart with Ohki’s interfacing a navigation system with a mobile device to
perform a task, such as automatically retrieving new messages from said
mobile device. See id. at 12—13. In particular, we find the Examiner’s
reliance on “logic, reason, and common sense” insufficient.
For these reasons, we do not sustain the Examiner’s 35 U.S.C.
§ 103(a) rejection of claim 9. Nor do we sustain the Examiner’s 35 U.S.C.
§ 103(a) rejections of claims 30-33, which depend from claim 9.
We also do not sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
claim 34, which depends from claim 9. The Examiner does not rely on Basir
in any manner that remedies the deficiencies noted above with respect to the
Brillhart and Ohki references. See Final Act. 12—13.
Nor do we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of
dependent claims 26—29, which depend from claim 8. The Examiner
rejected claim 8 under 35 U.S.C. § 102(e) as anticipated by Brillhart, as
discussed above. The Examiner, however, has not provided persuasive
articulated reasoning with rational underpinning for an artisan of ordinary
skill to have modified the system of Brillhart with Ohki. See Final Act. 10—
11. Accordingly, we conclude that the subject matter of claims 26—29 would
not have been obvious from the combined teachings of Brillhart and Ohki.
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DECISION
The decision of the Examiner to reject claims 8, 9, and 26—34 under
35 U.S.C. § 101 is affirmed.
The decision of the Examiner to reject claim 8 under 35 U.S.C.
§ 102(e) is affirmed.
The decision of the Examiner to reject claims 9 and 26—34 under
35 U.S.C. § 103(a) is reversed.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 8, 9, and 26—
34 is affirmed. See 37 C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. §41.50(f).
AFFIRMED
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