Ex Parte Galperin et al

Patent Trial and Appeal Board

Jan 30, 2017

11497880 (P.T.A.B. Jan. 30, 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.
GOOG-3113-1 8521
EXAMINER
NGUYEN, TAN D
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
11/497,880 07/31/2006
14925 7590 01/31/2017
Johnson, Marcou & Isaacs, LLC
317A East Liberty Street
Savannah, GA 31401
Gregory R. Galperin
01/31/2017 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 GREGORY R. GALPERIN and CARL G. DEMARCKEN
Appeal 2014—009325
Application 11/497,880
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BIB HU R. MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Gregory R. Galperin and Carl G. Demarcken (Appellants) seek review
under 35 U.S.C. § 134 of a final rejection of claims 1—17 and 21—47, the
only claims pending in the application on appeal. Oral arguments were
presented January 26, 2017. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed March 6, 2014) and Reply Brief (“Reply Br.,” filed August 28,
2014), and the Examiner’s Answer (“Ans.,” mailed June 30, 2014), and
Final Action (“Final Act.,” mailed July 26, 2013).
Appeal 2014-009325
Application 11/497,880
The Appellants invented a way of determining a travel itinerary.
Specification 1:23—24.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer implemented method, the method
comprising:
[1] receiving a travel search request
including information regarding one or more of a
departure location and a destination location;
[2] determining by a computer system a travel itinerary
that includes
a first flight segment that is scheduled to arrive at a
first location at a first arrival time
and
a second flight segment that is scheduled to depart
from the first location at a first departure time;
[3] computing by the computer system a likelihood
that a traveler will fail to connect to the second
flight segment
based on a probability distribution of delays in the
first arrival time;
[4] deriving second flight segment annotations
relating to a possibility that the traveler will fail to
connect to the second flight segment,
from the computed likelihood;
and
[5] providing instructions causing display of the second
flight segment annotations
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proximate to the second flight segment of the
displayed travel itinerary,
in response to receipt of the travel search request.
The Examiner relies upon the following prior art:
Dettelbach US 5,253,166 Oct. 12, 1993
Weinstock US 6,223,143 B1 Apr. 24, 2001
Vance US 6,442,526 B1 Aug. 27,2002
Kallen, The Late Show, Forbes, vl39, pi66 (2), June 1, 1987
Claims 1—17 and 21—47 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Dettelbach, Kallen, Weinstock, and Vance.
NEW GROUNDS OF REJECTION
The following new grounds of rejection are entered pursuant to
37 C.F.R. § 41.50(b).
Claims 30, 34, 36, 40, 42, and 46 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
invention.
Claims 1—17, 21—29, 31—33, 35, 37—39, 41, 43—45, and 47 are rejected
under 35 U.S.C. § 101 as directed to non—statutory subject matter.
ISSUES
The issues of obviousness turn primarily on whether patentable
weight is afforded the data labels recited in the claims and to the extent
weight is afforded, whether extending Kallen’s probability distribution of
flight delays to a probability distribution of those delays resulting in failure
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to make a flight connection was predictable to one of ordinary skill. The
issues of indefiniteness turn primarily on whether the information needed to
understand the formulas recited in the claims are disclosed. The issues of
statutory subject matter turn primarily on whether adding an annotation to an
itinerary or creating an itinerary per se are more than abstract concepts.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellants ’ Disclosure
01. The Specification contains formulas of the
following nature.
cdeparture _delay y pm
Vt>(D+d—A—mct)
Spec. 15; Figure 5B. The parameters CdeParture delay, PaO), D,
A, and met are defined. The parameter t is implicitly defined in
the definition of PA(t). The parameters d and Po(d) are undefined.
Facts Related to the Prior Art
Dettelbach
02. Dettelbach is directed to travel record keeping
systems. Dettelbach 1:6—7.
03. Dettelbach shows examples of itineraries in which
flight travel is segmented which in turn describe that the first
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segment arrives at a destination in the first segment and departs
from that same location for a second segment. Dettelbach Fig. 3.
Kallen
04. Kallen is directed to flight delays. Kallen Title and
First paragraph.
05. Kallen describes the dangers of missing
connections due to flight delays. Kallen 2.
06. Kallen describes a computer program that
computes the probability of delays and estimated delay time for
various flights. Kallen 2.
Weinstock
07. Weinstock is directed to risk analysis systems.
Weinstock 1:14—16.
08. Weinstock describes as an object of the invention
providing a large range of failure probability characterizations
generally, and, in particular, for engineering applications.
Weinstock 2:59-61.
09. Weinstock describes an element/subsystem/failure
mode hierarchy that includes quantified representations of failure
modes. Weinstock 7:50-65.
10. Weinstock describes computing probability
distributions for time based failure modes. Weinstock 11:40-65.
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11. Weinstock describes computing probability
distributions for pivotal events and time distributed events.
Weinstock 14:1—60.
Vance
12. Vance is directed to a travel and transportation
information system. Vance 1:13—17.
ANALYSIS
Claims 30, 34, 36, 40, 42, and 46 are newly rejected under 35 U.S.C.
$112, second paragraph, as failing to particularly point out and distinctly
claim the invention.
These claims contain formulas of the following nature.
cdeparture _delay Y pm
Vt>(D+d—A—mct)
This formula is supported by Specification 15 and Figure 5B. The
parameters Cdeparture delay, PaCO, D, A, and met are defined. The parameter t is
implicitly defined in the definition of Pa(F). The parameters d and Po(d) are
undefined in the originally filed disclosure, including drawings, abstract, and
claims. One of ordinary skill would not understand the formula as a result.
Thus, we enter a new ground of rejection of claims 30, 34, 36, 40, 42,
and 46 under 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim what Appellants’ intend
as their invention.
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Claims 1—17, 21—29, 31—33, 35, 37—39, 41, 43—45. and 47 are newly
rejected under 35U.S.C. $ 101 as directed to non—statutory subject matter.
The Supreme Court
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. First, [] determine whether the claims at issue are
directed to one of those patent—ineligible concepts. [] If so, we
then ask, “[w]hat else is there in the claims before us? [] To
answer that question, [] 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. [The Court] described
step two of this 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.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S.Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent—ineligible concept.
While the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 does not recite what it is directed to, but the
five steps in claim 1 result in displaying annotations on an itinerary. The
Specification at 2 recites that the invention relates to providing a potential
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traveler with information on past tardiness of a flight and allows the
potential traveler to select an itinerary based on information. Thus, all this
evidence shows that claim 1 is directed to giving advice as to an itinerary,
i.e. conceptual advice.
It follows from prior Supreme Court cases, and Bilski in particular,
that the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of advice is a fundamental business practice
long prevalent in our system of commerce and travel. Thus, conceptual
advice, like hedging, is an “abstract idea” beyond the scope of § 101. See
Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of conceptual
advice at issue here. Both are squarely within the realm of “abstract ideas”
as the Court has used that term. See Alice Corp. Pty. Ltd.at 2357.
The remaining claims merely describe the nature of the advice and
parameters that might be used in formulating such advice. We conclude that
the claims at issue are directed to a patent—ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot
transform a patent—ineligible abstract idea into a patent—eligible
invention. Stating an abstract idea “while adding the words
‘apply it’” is not enough for patent eligibility. Nor is limiting
the use of an abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while adding the words
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“apply it with a computer” simply combines those two steps,
with the same deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to “implement [t]” an
abstract idea “on ... a computer,” that addition cannot impart
patent eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive data, determine data meeting specified criteria, and
derive and display annotations amounts to electronic data query and
retrieval—one of the most basic functions of a computer. The limitation of
computing a likelihood is at best a mathematical algorithm, which is also an
abstract idea. See Gottschalk v Benson, 409 U.S. 63 (1972). But as the
likelihood is not even recited as being quantitative, this limitation may be no
more than a data retrieval of pre—formulated likelihood characterizations.
All of these computer functions are well—understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
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are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of providing conceptual advice as an annotation as
performed by a generic computer. The method claims do not, for example,
purport to improve the functioning of the computer itself. Nor do they effect
an improvement in any other technology or technical field. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of conceptual advice using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent—eligible invention. See Alice Corp. Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance.
The method claims recite the abstract idea implemented on a
generic computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice Corp. Pty. Ltd. at 2360.
Claims 1—17, 21—29, 31—33, 35, 37—39, 41, 43—45. and 47 rejected
under 35 U.S.C. $ 103(a) as unpatentable over Dettelbach, Kallen,
Weinstock, and Vance.
Claim 1 recites five steps, viz., receiving a request; determining Y1;
computing a likelihood that Z2 will occur based on a probability distribution
of Zl; deriving Z3 annotations; and displaying such annotations next to Y2
on Y1, where Y1 is labeled as a travel itinerary that includes a first flight
segment that is scheduled to arrive at a first location at a first arrival time
and a second flight segment that is scheduled to depart from the first location
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at a first departure time, Y2 is labeled as second flight segment annotations
relating to a possibility that the traveler will fail to connect to the second
flight segment, Z1 is labeled delays in the first arrival time, Z2 is labeled as
a traveler will fail to connect to the second flight segment, and Z3 is labeled
as a possibility that the traveler will fail to connect to the second flight
segment. Thus the claim is really to computing the likelihood of an event
and displaying annotations based on that likelihood near where its
parameters are displayed.
Nothing in the claim depends on or enforces the perceptual labels the
claim suggests. Mental perceptions of what data represents are non­
functional and given no weight. King Pharm., Inc. v. Eon Labs, Inc., 616
F.3d 1267, 1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there
exists any new and unobvious functional relationship between the printed
matter and the substrate.’”) (citations omitted). See also In re Lowry, 32
F.3d 1579, 1583 (Fed.Cir.1994) (describing printed matter as “useful and
intelligible only to the human mind”) (quoting In re Bernhart, 417 F.2d
1395, 1399 (CCPA 1969)). Data labels are just examples of such mental
perceptions. Data, being a succession of binary digits, are just those digits,
not perceptual labels of those digits. The binary digits may impose some
functional consequence, but absent some recitation of how so, such
consequence is not an issue.
The labels pass the King Pharmaceutical test for non—functional
limitations undeserving of weight because none of the labels depend on or
affect the functions of receiving, determining, and displaying, and none of
those operations affect or depend on the perceptual labels. Although the
computing of a likelihood based on a probability distribution is itself
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functional, this function is generic and is not dependent on the particular
data labels. See King Pharm., id.
As the Examiner finds, Dettelbach describes obtaining an itinerary as
in steps 1 and 2, and Kallen describes computing probability distribution of
delays in the first arrival time. Dettelbach describes examples of displaying
annotations. Final Act. 5—10. Thus, if we grant no patentable weight to the
data labels, the art trivially shows claim 1 obvious, as one of ordinary skill
would look to Kallen for content to be displayed in Dettelbach if only
because of its high pertinence to travel itineraries.
If we grant weight to the data labels, Appellants raise the issues of
whether one of ordinary skill would have derived some comment regarding
the likelihood of missing a second flight and placing that comment near the
second flight information. App. Br. 11—15. Aside from the fact everyone
who ever had to make a flight connection knows of the risk in missing that
connection, Kallen explicitly describes this risk. As a result, one of ordinary
skill knew of the need to consider the risk of this occurring. As Kallen
already describes computing the probability of the first segment being late
and its relationship to missing the second connection, one of ordinary skill
would immediately envisage connecting these two related thoughts in a
likelihood that the first segment delay would cause missing the second
segment.
As to the placement of such advice next to the pertinent segment on
an itinerary, although the art does not show this particular example,
Dettelbach does show examples of placing hotel annotations on an itinerary
next to the applicable itinerary portion. There is nothing so different
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between information needed for hotels and airlines that one would not
immediately envisage the general idea of placing annotations next to the
information to which the annotations pertain.
As to separately argued claims 2 and 4, reciting basing the advice on
the probability distribution of delays in the first departure time and building
a statistical model, again the software described by Kallen uses such a model
and computes probability distribution of delays in the first departure time.
As a procedural matter, in light of the new ground of rejection under
35U.S.C. § 112, second paragraph supra, we reverse the rejection of claims
30, 34, 36, 40, 42, and 46 under § 103. A rejection of a claim, which is so
indefinite that “considerable speculation as to meaning of the terms
employed and assumptions as to the scope of such claims” is needed, is
likely imprudent. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding
that the examiner and the board were wrong in relying on what at best were
speculative assumptions as to the meaning of the claims and basing a
rejection under 35 U.S.C. § 103 thereon.) We find it imprudent to speculate
as to the scope of claims 30, 34, 36, 40, 42, and 46 in order to reach a
decision on the obviousness of the claimed subject matter under § 103. It
should be understood, however, that our reversal is based on the
indefmiteness of the claimed subject matter and does not reflect on the
merits of the underlying rejection. For similar reason, we do not extend the
new ground of rejection under 35 U.S.C. § 101 to these claims.
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CONCLUSIONS OF LAW
The rejection of claims 1—17, 21—29, 31—33, 35, 37—39, 41, 43—45,
and 47 under 35 U.S.C. § 103(a) as unpatentable over Dettelbach, Kallen,
Weinstock, and Vance is proper.
The rejection of claims 30, 34, 36, 40, 42, and 46 under 35 U.S.C.
§ 103(a) as unpatentable over Dettelbach, Kallen, Weinstock, and Vance is
improper.
The following new grounds of rejection are entered pursuant to
37 C.F.R. § 41.50(b).
Claims 30, 34, 36, 40, 42, and 46 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
invention.
Claims 1—17, 21—29, 31—33, 35, 37—39, 41, 43—45, and 47 are rejected
under 35 U.S.C. § 101 as directed to non—statutory subject matter.
DECISION
The rejection of claims 1—17, 21—29, 31—33, 35, 37—39, 41, 43—45,
and 47 is affirmed.
The rejection of claims 30, 34, 36, 40, 42, and 46 is reversed.
The following new grounds of rejection are entered pursuant to
37 C.F.R. § 41.50(b).
Claims 30, 34, 36, 40, 42, and 46 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to particularly point out and distinctly claim the
invention.
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Claims 1—17, 21—29, 31—33, 35, 37—39, 41, 43—45, and 47 are rejected
under 35U.S.C. § 101 as directed to non—statutory subject matter.
Our decision is not a final agency action.
This decision contains a new ground 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 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
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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.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
See 37 C.F.R. § 1.136(a)(l)(iv) (2011).
AFFIRMED-IN—PART
41.50(b)
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