Ex Parte Gibson et alDownload PDFPatent Trial and Appeal BoardNov 13, 201713435419 (P.T.A.B. Nov. 13, 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. 13/435,419 03/30/2012 George Amos Gibson 20111143-US-NP 2437 144759 7590 Gibb & Riley, LLC 844 West St. Suite 200 Annapolis, MD 21401 11/15/2017 EXAMINER SCHEUNEMANN, RICHARD N ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 11/15/2017 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): support @ gibbiplaw .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE AMOS GIBSON, MARINA THARAYIL, BARRY P. MANDEL, and POLYKARPOS PAVLIDIS Appeal 2015-008287 Application 13/435,419 Technology Center 3600 Before MURRIEL E. CRAWFORD, MATTHEW S. MEYERS, and ALYSSA A. FINAMORE, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s final decision rejecting claims 1, 2, 4, 6, 7, 9, 11, 12, 14, 16, 17, 19, and 21—28. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). BACKGROUND Appellants’ invention is directed to route planning systems, methods and devices. Spec. 11. Claim 1 is illustrative: 1. A method of providing route guidance comprising: Appeal 2015-008287 Application 13/435,419 maintaining a plurality of user preferences within a non volatile storage medium of a route guidance device; receiving a beginning location and an ending location of a trip from a user into said route guidance device; receiving a trip purpose relating specifically to said trip from said user into a dedicated trip purpose input field of said route guidance device; automatically generating multiple different routes between said beginning location and said ending location using said route guidance device; automatically creating a subset of less than all of said user preferences that match said trip purpose based on said trip purpose received from said user and without further input from said user to produce purpose-specific preferences of less than all said user preferences using said route guidance device; automatically ranking said multiple different routes by ranking routes that match more of said purpose-specific preferences ahead of routes that match less of said purpose- specific preferences to produce a ranked order, using said route guidance device; and automatically outputting said multiple different routes in said ranked order to said user from said route guidance device. The Examiner relies on the following prior art references as evidence of unpatentability: Seymour US 6,216,086 B1 Apr. 10,2001 US 6,834,229 B2 Dec. 21, 2004 US 2005/0096842 A1 May 5, 2005 US 2012/0089322 A1 Apr. 12, 2012 Rafiah Tashiro Horvitz (filed Dec. 15,2011) 2 Appeal 2015-008287 Application 13/435,419 Appellants appeal the following rejections: Claims 1, 2, 4, 6, 7, 9, 11, 12, 14, 16, 17, 19, and 21—28 stand rejected under 35U.S.C. § 101 because the claimed invention is directed to patent ineligible subject matter, i.e., an abstract idea, without significantly more. Claims 1, 4, 6, 9, 11, 14, 16, 19, 21, 23, 25, and 27 under 35 U.S.C. § 103(a) as unpatentable over Seymour in view of Rafiah. Claims 2, 7, 12, and 17 under 35 U.S.C. § 103(a) as unpatentable over Seymour, Rafiah and further in view of Horvitz. Claims 22, 24, 26, and 28 are rejected under 35 U.S.C. § 103(a) as unpatentable over Seymour, Rafiah and further in view of Tashiro. PRINCIPLES OF LAW An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include implicit exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014). In determining whether a claim falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court’s two- step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). In accordance with that framework, we first determine whether the 3 Appeal 2015-008287 Application 13/435,419 claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 (“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.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing respondents’ claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter.”); Parker v. Flook, 437 U.S. 584, 594—95 (1978) (“Respondent’s application simply provides a new and presumably better method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S. 63, 64 (1972) (“They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals.”). The patent-ineligible end of the spectrum includes fundamental economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611; mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of scientific and technological work, Benson, 409 U.S. at 69. On the patent- eligible side of the spectrum are physical and chemical processes, such as curing rubber, Diehr, 450 U.S. at 184 n.7, “tanning, dyeing, making water proof cloth, vulcanizing India rubber, smelting ores,” and a process for manufacturing flour, Gottschalk, 409 U.S. at 69. If the claim is “directed to” a patent-ineligible abstract idea, we then consider the elements of the claim—both individually and as an ordered combination—to assess whether the additional elements transform the nature of the claim into a patent- eligible application of the abstract idea. Alice, 134 S. Ct. at 2355. This is a 4 Appeal 2015-008287 Application 13/435,419 search for an “inventive concept”—an element or combination of elements sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. Id. ANALYSIS Rejection under 35 U.S.C. §101 Appellants argue that the claims are not directed to an abstract idea because the claimed processes are fully integrated with a special-purpose route guidance device. Appeal Br. 12. Specifically, Appellants argue that the route guidance device recited in the claims is not a general purpose computer. We agree with the Examiner’s response to this argument found on page 6 of the Answer, i.e., that the steps of the claim could be performed by a general purpose computer or even mentally or on paper. We also note that Appellants’ Specification at paragraphs 9, 38, and 41 specifically discloses that the various computerized devices such as personal computers, personal digital assistant units, cell phones and GPS units can provide route guidance. We also agree that the computer that forms the route guidance device is merely used for data acquisition, data processing and reporting which are processes conventionally performed by a generic computer. We are not persuaded of error on the part of the Examiner by Appellants’ argument that the claims improve the performance of the route guidance device itself because the defining features avoid the need for the user to change their preferences and, thus, frees up processing resources. We agree with the Examiner’s response to this argument found on page 6 of the Answer and adopt this response as our own. In addition, claim 1 recites 5 Appeal 2015-008287 Application 13/435,419 generic computer actions such as maintaining data in storage, receiving data, processing data and outputting data. “[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent- eligible invention.” Alice, 134 S. Ct. at 2358. Considered individually and as an ordered combination, the additional elements in claim 1 do not transform the “nature of the claim” into “significantly more” than a patent- ineligible abstract idea. Ans. 4. Without sufficient additional elements, “a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). In view of the foregoing, we will sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101. We will also sustain this rejection as it is directed to the remaining claims because the Appellants have not eligibility of these claims. Rejections under 35 U.S.C. § 103 We will not sustain this rejection because we agree with the Appellants that the prior art does not disclose “receiving a trip purpose relating specifically to said trip from said user into a dedicated trip purpose input field of said route device,” as recited in claim 1. The Examiner relies on column 4, lines 11—43 of Seymour for teaching this subject matter. Appellants’ Specification discloses in paragraph 24 that a drop down menu is provided to the user so that the user can input a trip purpose. The drop-down menu can include a wide range of options such as sightseeing, business commute, attend sporting event, visit dining establishment, etc. As 6 Appeal 2015-008287 Application 13/435,419 depicted in Figure 3, the user can also provide user travel preferences such as maximum number of transfers, maximum walking distance, maximum waiting time, etc. The method of the instant invention then filters the user preferences to create a set of less than all of the user preferences so as to make the preferences be more aligned with the selected trip purpose. Spec. 135. We find that Seymour discloses and depicts in Figure 5 that a user can input a set of preferences for a trip including driver congestion tolerance, driver concentration intensity tolerance and whether the trip is an emergency trip (col. 4,11. 11—43). After all of these inputs, the method of Seymour selects a route, as depicted in Figure 6, that considers all of the inputted preferences and provides a route that most accommodates all of the preferences (col. 6,11. 62—67). The Examiner considers the preferences taught in the Seymour to be a teaching of entering a purpose. Final Act. 7; Ans. 7. We are not convinced that Seymour discloses entering a purpose. In this regard, it is not clear from the Examiner’s rejection which of the attributes entered by the user in Seymour is considered a preference and which is considered a purpose. However, even if we agreed with the Examiner that at least one of the preferences entered by the user in the Seymour method is a purpose, there still would be no disclosure in Seymour that a subset of less than all of the preferences is created to match a trip purpose, as recited in claim 1. Rather, in Seymour, each preference is considered in creating a route (col. 6,11. 62— 66). In view of the foregoing, we will not sustain the Examiner’s rejection of claim 1. 7 Appeal 2015-008287 Application 13/435,419 We will also not sustain the rejections directed to the remaining claims because each of these claims includes similar subject matter we found missing in Seymour above and the Examiner relies on Seymour for teaching this subject matter in rejecting each of the remaining claims. DECISION We affirm the Examiner’s § 101 rejection. We do not affirm the Examiner’s § 103 rejections. TIME PERIOD 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). ORDER AFFIRMED 8 Copy with citationCopy as parenthetical citation