Ex Parte Cudak et al

Patent Trial and Appeal Board

Jun 14, 2017

13542700 (P.T.A.B. Jun. 14, 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.
13/542,700 07/06/2012 Gary D. Cudak RPS920120011US1 8972
63638 7590 06/14/2017
STREETS & STEELE - IBM CORPORATION (ROC)
13100 WORTHAM CENTER DRIVE, SUITE 245
Suite 245
HOUSTON, TX 77065
EXAMINER
JOS, BASIL T
ART UNIT PAPER NUMBER
3668
MAIL DATE DELIVERY MODE
06/14/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY D. CUDAK, CHRISTOPHER J. HARDEE,
RANDALL C. HUMES, RUTHIE D. LYLE, and
ADAM ROBERTS
Appeal 2015-006330
Application 13/542,700
Technology Center 3600
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
FRANCES L. IPPOLITO, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Gary D. Cudak et al. (Appellants) appeal under 35 U.S.C. § 134 from
the rejection of claims 1—18. We have jurisdiction under 35 U.S.C. § 6(b).
We enter a new ground of rejection pursuant to our authority under
37 C.F.R. § 41.50(b).
Appeal 2015-006330
Application 13/542,700
CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A computer program product including computer usable
program code embodied on a non-transitory computer usable
storage medium, the computer program product comprising:
computer usable program code for obtaining a first
planned route to a destination for a first vehicle and for
navigating the first vehicle to the destination;
computer usable program code for identifying a second
vehicle within a threshold distance ahead of the first vehicle
along the planned route of the first vehicle, the second vehicle
having a speed of less than an expected speed of the first vehicle
at that location along the first planned route;
computer usable program code for obtaining a second
planned route being followed by the second vehicle and
comparing the first and second planned routes to identify a
shared segment of the first and second planned routes;
computer usable program code for computing a delay of
the first vehicle to the destination as a function of the speed of
the second vehicle along the shared segment and computing
revised route information for the first vehicle on the basis of the
delay; and
computer usable program code for automatically
communicating the revised route information to an input/output
device in the first vehicle or at a location remote from the first
vehicle.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Peeters
Tanaka
Donatelli
Disatnik
US 2005/0131628 A1 June 16, 2005
US 2007/0285305 A1 Dec. 13, 2007
US 2008/0015774 A1 Jan. 17, 2008
US 2011/0098915 A1 Apr. 28,2011
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Application 13/542,700
Yamashita US 2011/0215951 A1 Sept. 8, 2011
REJECTIONS
I. Claims 1—5, 9, 16, and 18 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yamashita.
II. Claims 6, 7, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamashita and Peeters.
III. Claims 8 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamashita and Tanaka.
IV. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamashita, Donatelli, and Peeters.1
V. Claims 12—14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamashita, Donatelli, Peeters, and Disatnik.
VI. Claim 17 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamashita and Donatelli.
DISCUSSION
New Ground of Rejection
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLSBankInt'L, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294 (2012).
1 The statement of this rejection indicates that the Donatelli reference is
“hereinafter referred to as Donatelli and Peeters.” Final Act 14. This
statement is not understood. However, as the explanation of the rejection
discusses Yamashita, Donatelli, and Peters, we understand claim 11 to stand
rejected as unpatentable over all three references. See id. at 14—15.
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Application 13/542,700
According to the Supreme Court’s framework, we must first determine
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). Id. If so, we must secondly
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. The Supreme
Court characterizes the second step of the analysis as “a 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.
For the first part of our inquiry, taking claim 1 as representative of the
claims on appeal, we observe that claim 1 recites a series of steps performed
by computer usable program code that gathers, manipulates, and transmits
data. For example, claim 1 requires that the computer usable program code
obtains first and second planned routes to a destination; compares the first
and second planned routes; computes a “delay of the first vehicle to the
destination as a function of the speed of the second vehicle along the shared
segment and computing revised route information for the first vehicle on the
basis of the delay”; and commutes the revised route information to an
input/output device. Claim 1. Considering claim 1 in its entirety, including
the limitations above, we find that the claimed subject matter is directed to
the concept of a computer program product for vehicle navigation. Claim 1;
see also Spec. 13. Similar data manipulation steps have been held
ineligible under § 101. See Content Extraction and Transmission LLC v.
Wells Fargo Bank, National Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(holding the concept of “1) collecting data, 2) recognizing certain data
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Application 13/542,700
within the collected data set, and 3) storing that recognized data in a
memory” abstract); see also Intellectual Ventures ILLC v. Capital One
Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“Intellectual Ventures
F) (concluding that customizing information and presenting it to users
based on particular characteristics is abstract as well).
Our reviewing court further instructs us that “[s] oft ware can make
non-abstract improvements to computer technology just as hardware
improvements can, and sometimes the improvements can be accomplished
through either route.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). We are further instructed that we must determine if “the
claims are directed to an improvement to computer functionality versus
being directed to an abstract idea, even at the first step of the Alice analysis.”
Id. Here, the limitations at issue are not directed to an improvement of a
computer’s functionality. Accordingly, claim 1 is directed to the abstract
idea of a computer program product for vehicle navigation.
Having determined that claim 1 is directed to an abstract idea, we
must determine whether the additional elements of the claim transforms it
into patent-eligible subject matter. Although claim 1 sets forth specific data
to be collected (e.g., a first planned route), indicates that an algorithm is to
be used to manipulate the collected data (e.g., computing a delay), and
requires that the results of the application of this algorithm is to be
communicated, they do not specify how the collection is accomplished or
indicate what use is made of the result obtained. As such, claim 1, at most,
requires only “mathematical algorithms to manipulate existing information
to generate additional information.” Digitech Image Techs., LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Moreover, on this
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record, we do not find that the claims are narrowly directed to application of
particular rules for achieving an improved technological result. Cf. McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir.
2016). Thus, these limitations of claim 1 do not transform the abstract ideas
embodied in the claim. Rather, they simply implement those ideas.
Claim 1, when considered “both individually and ‘as an ordered
combination,’” amounts to nothing more than an attempt to patent the
abstract ideas embodied in the steps of this claim. See Alice, 134 S. Ct. at
2355 (quoting Mayo, 132 S. Ct. at 1298). Accordingly, the limitations of
claim 1 fails to transform the nature of these claims into patent-eligible
subject matter. See id. (citing Mayo, 132 S. Ct. at 1297, 1298). We further
note that the limitations recited in the dependent claims at issue here also do
not transform the subject matter of the independent claims into patent
eligible subject matter for similar reasons. For example, with regard to
dependent claim 15, the use of the computer code to generate an alert
message or audio is merely insignificant post solution activity that does not
transform the abstract ideas embodied in the claim. Parker v. Flook, 437
U.S. 584 (1978) (the prohibition against patenting abstract ideas “cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment” or adding “insignificant postsolution activity”).
Accordingly, the dependent claims are not directed to patent-eligible subject
matter as well.
Rejection I
The Examiner finds that Yamashita discloses or suggests all of the
limitations of independent claim 1. See Final Act. 4—6. In particular, the
Examiner finds that Yamashita discloses:
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Application 13/542,700
computer usable program code for identifying a second vehicle
within a threshold distance ahead of the first vehicle along the
planned route of the first vehicle, the second vehicle having a
speed of less than an expected speed of the first vehicle at that
location along the first planned route (see at least 148—“vehicle
that runs ahead is recognized” and 1 135—“vehicle running
slowly ahead of the driver”).
Id. at 5.
Appellants contend that “Yamashita fails to disclose ‘the second
vehicle having a speed of less than an expected speed of the first vehicle.’”
Appeal Br. 17 (emphasis omitted). In support of this contention, Appellants
explain that
Yamashita discloses that a host vehicle can recognize that
a second vehicle is ahead of the host vehicle, but the host vehicle
does not obtain any further input about the second vehicle.
Specifically, Yamashita fails to disclose that the host vehicle
makes any measurement of a speed of the second vehicle.
Since Yamashita fails to obtain the speed of the second
vehicle, Yamashita further fails to disclose “the second vehicle
having a speed of less than an expected speed of the first
vehicle”.
Id.
Yamashita states:
If the traffic regulation above is applied to the road on
which the vehicle is travelling, guidance is given on the
distance/time over which the traffic regulation is terminated and
a search is allowed for another route that excludes the regulated
road. This reduces stress on the driver when there is a vehicle
running slowly ahead of the driver.
Yamashita 1135. Thus, in Yamashita the computer code allows for
recalculating of a route when a traffic regulation is applied. Id. Although,
Yamashita describes a benefit of this recalculation as being a reduction in
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stress on the driver of the first vehicle “when there is a vehicle running
slowly ahead of the driver,” Yamashita does not disclose computer code that
determines that the second vehicle has a speed less than an expected speed
of the first vehicle as required by claim 1. Rather, Yamashita assumes that
the second vehicle is “running slowly” based on the application of the traffic
regulation. Id. Accordingly, the Examiner’s finding is not supported by a
preponderance of evidence.
For this reason, we do not sustain the Examiner’s decision rejecting
independent claim 1, and claims 2—5, 9, 16, and 18, which depend
therefrom.
Rejections II—VI
Rejections II—VI rely upon the same erroneous finding as Rejection I.
See Final Act. 9—17. Accordingly, we do not sustain the Examiner’s
decisions rejecting claims 6—8, 10—15, and 17 for the same reason we do not
sustain the Examiner’s decision rejecting claim 1.
DECISION
The Examiner’s rejections of claims 1—18 are REVERSED.
We enter a NEW GROUND OF REJECTION of claims 1-18 under
35U.S.C. § 101.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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Application 13/542,700
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED: 37 C.F.R, $ 41.50(b)
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