Ex Parte Cudak et alDownload PDFPatent Trial and Appeal BoardJun 14, 201713542700 (P.T.A.B. Jun. 14, 2017) Copy Citation 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 2 Appeal 2015-006330 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. 3 Appeal 2015-006330 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 4 Appeal 2015-006330 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 5 Appeal 2015-006330 Application 13/542,700 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: 6 Appeal 2015-006330 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 7 Appeal 2015-006330 Application 13/542,700 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 8 Appeal 2015-006330 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) 9 Copy with citationCopy as parenthetical citation