Ex Parte Hannukainen et al

Patent Trial and Appeal Board

Aug 22, 2017

13449824 (P.T.A.B. Aug. 22, 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.
13/449,824 04/18/2012 Jaakko Hannukainen P6125US00 6183
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
EXAMINER
SWEENEY, BRIAN P
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
docket@dcpatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAAKKO HANNUKAINEN, ANTTI JOHANNES ERONEN,
JUSSI LEPPANEN, AMIR ABDI, and HENRI PURANEN
Appeal 2015-003653
Application 13/449,824
Technology Center 3600
Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART and ENTER a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Oct. 29, 2014), Reply Brief (“Reply Br.,” filed Jan. 30,
2015), and Specification (“Spec.,” filed Apr. 18, 2012), and to the
Examiner’s Answer (“Ans.,” mailed Dec. 10, 2014) and Final Office Action
(“Final Act.,” mailed Apr. 29, 2014).
2 According to the Appellants, the real party in interest is Nokia
Corporation. Appeal Br. 1.
Appeal 2015-003653
Application 13/449,824
STATEMENT OF THE CASE
The Appellants’ invention is directed to “an approach for providing a
calculated route using waypoints associated with a traveled route.” Spec.
12.
Claims 1 and 11 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below:
1. A method comprising facilitating a processing of and/or
processing (1) data and/or (2) information and/or (3) at least one
signal, the (1) data and/or (2) information and/or (3) at least one
signal based, at least in part, on the following:
a processing, by a processor, of one or more location logs
to determine one or more waypoints, wherein the one or more
location logs include, at least in part, one or more location
samples for at least one device on a traveled route; and
a processing of the one or more waypoints via one or more
routing engines to determine a calculated route as a
representation of the traveled route, wherein the one or more
waypoints are determined based, at least in part, on the one or
more location samples.
Appeal Br. 21 (Claims App.).
REJECTIONS
Claims 1—20 stand rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite. Final Act. 4.
Claims 1 and 11 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Bleckman (US 2008/0201074 Al, pub. Aug. 21, 2008). Id.
at 5.
Claims 2—10 and 12—20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bleckman and Case, JR. (US 2009/0319230 Al,
pub. Dec. 24, 2009) (“Case”). Id. at 6.
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ANALYSIS
§ 112—Indefiniteness
The Examiner rejects claims 1—20 because the uses of the phrase
“and/or” render the scope of the claims “unascertainable” and therefore
indefinite. Final Act. 4. The Examiner further rejects claims 1—15 and 19
because the recited term “at least in part” is a relative term such that “one of
ordinary skill in the art would not be reasonably apprised of the scope of the
invention,” and is therefore indefinite. Id. at 4—5.
Conversely, the Appellants contend that one of ordinary skill in the art
would understand that “and/or” means that the claim can include one or
more of the elements that follow, for example “‘A and/or B and/or C’
means: ‘A’; ‘B’; ‘C’; ‘A and B’; ‘A and C\ ‘A and B and C’; or ‘B and C.’”
Appeal Br. 5. The Appellants further contend that one of ordinary skill in
the art would understand that “at least in part” similarly means at least one
of the elements that follow. Id. at 5—6.
We conclude that the claims are not indefinite in that one of ordinary
skill in the art would be able to readily ascertain whether the claims were
infringed by a particular method. One of ordinary skill in the art would
understand that “and/or” means one or more of the recited elements. See id.
The Examiner’s concerns appear to be directed to matters of claim breadth,
not indefmiteness. “Breadth is not indefmiteness.” In re Gardner, 427 F.2d
786, 788 (1970).
The Examiner further rejects claims 12—20 because “the phrase ‘is
further caused to’ render[] the claims indefinite because the claim[s] include
elements not actually disclosed (those encompassed by ‘is further caused
to’) as the element that causes a next step is not disclosed, thereby rendering
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the scope of the claims unascertainable.” Final Act. 5. Conversely, the
Appellants contend that the phrase ‘“is further caused to’ ... is analogous to
the use of ‘and further comprising’ with ‘comprising.’” Appeal Br. 6.
We conclude that the claims are not indefinite in that one of ordinary
skill in the art would be able to readily ascertain whether the claims were
infringed by a particular method. One of ordinary skill in the art would
understand the claims to recite that the apparatus of claim 11, which is
caused by the processor to perform an action, is further caused to perform
the recited actions or functions that follow. We find that one of ordinary
skill in the art would understand “the element that causes a next step” is the
processor of claim 11 that causes the apparatus to perform functions. See id.
Therefore, we are persuaded of error in the Examiner’s rejection, and
we do not sustain the Examiner’s rejections of claims 1—20 under 35 U.S.C.
§112, second paragraph.
§ 102—Anticipation
The Appellants contend that the Examiner’s rejection of independent
claims 1 and 11 is in error because Bleckman “fails to teach or even
suggest” the processing steps recited in claim 1 and similarly recited in
claim 11. Appeal Br. 10; Reply Br. 2, 5. After careful review of the
Appellants’ arguments as presented in the Appeal and Reply Briefs, we do
not agree with the Appellants’ contention.
The Examiner relies on Bleckman’s Abstract and paragraphs 2 and 7
for disclosing the subject matter of claims 1 and 11. Final Act. 5—6. The
Examiner finds that Bleckman’s geographic locations are “reference points
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in physical space used for purposes of navigation” as one of ordinary skill in
the art would interpret “waypoint.” Ans. 3.
Bleckman discloses a “device, system, and method for converting
geographic coordinates such as track logs to navigational routes matched to
known paths such as known road networks.” Bleckman 12. The device
includes a GPS receiver, a processing system, and a display. Id. Abstract.
The GPS receiver and processor determine “a track log or other series of
geographic coordinates corresponding to points along a path traveled by a
user of the device.” Id. Tflf 7, 30. The processing system causes the device to
access and convert the determined series of coordinates into a navigation
route which can be easily followed by the user. Id. 17. In particular, the
processing system compares the determined series to a database of known
paths, including road segments, hiking trails, tracks, or other mapped paths,
and displays to a user at least a portion of the matching path along with
navigational directions. Id.
The Appellants’ argument that Bleckman does not anticipate the
claims because it “fails to even recognize the problem addressed and solved
by the claimed subject matter” (Appeal Br. 8; Reply Br. 2) is unpersuasive at
least because it is not commensurate with the scope of the claims. Claims 1
and 11 do not recite limitations of addressing a specific problem.
We further find unpersuasive the Appellants’ argument that Bleckman
does not disclose the claimed limitations. See Appeal Br. 10; Reply Br. 5.
Claims 1 and 11 recite a method and system for facilitating processing or
processing data, information, or a signal based on processing location logs to
determining waypoints and processing waypoints via a routing engine to
calculate a route as a representation of a traveled route wherein the
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waypoints are determined at least on location samples. See Appeal Br. 21,
24, 25 (Claims App.). The Specification does not provide a specific
definition of “waypoint.” As such, we find that the Examiner appropriately
applies the broadest reasonable interpretation of “waypoint” in interpreting
Bleckman’s geographic coordinates corresponding to points as waypoints.
The Specification further does not provide a specific definition of
“processing,” and the claims do not recite the specific steps/manner by
which the processing limitations occur. As noted above, Bleckman discloses
processing, by the apparatus including the GPS receiver, i.e., processor,
points along a path traveled by a user, i.e., a location log with at least one
location sample, into one or a series of geographic locations, i.e., one or
more waypoints. See Bleckman 17. Bleckman further discloses processing,
via the routing engine, i.e., processing system, the determined series, i.e.,
waypoints, to determine a calculated path, i.e., route. See id. As such, we
find supported by a preponderance of the evidence the Examiner’s findings
that Bleckman discloses the limitations as broadly recited in claims 1 and 11.
Thus, we are not persuaded of error on the part of the Examiner in the
rejection of independent claims 1 and 11. We therefore sustain the rejection
under 35 U.S.C. §102 of claims 1 and 11.
§103 — Obviousness
Claims 2—7 and 12—17
The Appellants contend that the Examiner’s rejection of claims 2 and
12 is in error because Case, upon which the Examiner relies, does not
disclose “at least one determination of an area bounded by the calculated
route ... a designation of the area as a conquered area,” as recited in claim 2
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and similarly recited in claim 12. Appeal Br. 13. Specifically, the
Appellants argue that paragraph 112 of Case does not disclose determining
an area bounded by the calculated route or designating an area as a
conquered area. Id. at 14.
The Examiner finds that Case, at Figure 3 and paragraph 112, teaches
“determination of an area bounded by the calculated route.” Final Act. 7.
The Examiner acknowledges that Case does not state that an area has been
conquered, but determines that the display of an area previously being bound
meets the limitation. See id. The Examiner further determines that
combining the teachings of Bleckman and Case would “improve upon
processing data.” Id.
However, the Examiner does not adequately explain how Case’s
display of data superimposed on a map corresponding to a location (see Case
1112) teaches determining an area bounded by the calculated route or
designating the area as a conquered, or bound, area. Even assuming
arguendo that Case discloses determining or designating a bound area, the
Examiner has not adequately explained how one of ordinary skill in the art
would combine that with Bleckman’s calculated route to meet the claimed
limitation, or how such a combination would improve the data.
Thus, we are persuaded of error in the Examiner’s rejection of claims
2 and 12. We therefore do not sustain the rejection under 35 U.S.C. § 103 of
claims 2 and 12. We also do not sustain the rejection under 35 U.S.C. § 103
of claims 3—7 and 13—17, which ultimately depend from claims 2 or 12.
Appeal Br. 21—26 (Claims App.)
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Claims 8, 9, 18, and 19
Claims 8, 9, 18, and 19 depend from claims 1 or 11. Appeal Br. 22,
27 (Claims App.). For these claims, the Appellants do not provide separate
arguments, but rely on the arguments presented for the rejection of claims 1
and 11. See Appeal Br. 12. Thus, for the same reasons we were not
persuaded of error in the rejection of claims 1 and 11, we are also not
persuasive of error in the rejection of claims 8, 9, 18 and 19. We therefore
sustain the rejection under 35 U.S.C. § 103 of claims 8, 9, 18, and 19.
Claims 10 and 20
The Appellants contend that the Examiner’s rejection of claims 10 and
20 is in error because Case, upon which the Examiner relies, does not
disclose the data, information, or signal being based in part on a processing
of logs to cause a filtering of a location sample by removing certain samples
that exceed a rate of travel range, wherein the waypoints are determined
based on the filtering, as recited in claim 10 and similarly recited in claim
20. Appeal Br. 18. Specifically, the Appellants argue that Case does not
disclose filtering any data, and particularly does not disclose filtering based
on travel range. Id.
The Examiner finds that Case, at paragraphs 6 and 8, teaches the
claimed limitation. Final Act. 10. A review of the cited paragraphs reveals
that Case discloses using GPS data to calibrate devices and using GPS
system and non-GPS system data to provide information. However, the
Examiner does not adequately explain, and we do not see, how the cited
paragraphs teach filtering data based on the required criteria of travel range.
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Thus, we are persuaded of error in the Examiner’s rejection of claims
10 and 20. We therefore do not sustain the rejection under 35 U.S.C. § 103
of claims 10 and 20.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
claims 1—20 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter. We find the claims ineligible for patent protection because they are
directed to a non-statutory abstract idea.
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)). The Court has, thus, made clear that “[phenomena of nature,
though just discovered, mental processes, and abstract intellectual concepts
are not patentable, as they are the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
Following the Supreme Court, the Federal Circuit has similarly held
that mental processes are not patent-eligible subject matter. Therefore, the
court has held that methods which can be performed entirely in the human
mind are unpatentable not because “there is anything wrong with claiming
mental method steps as part of a process containing non-mental steps,” but
rather because “methods which can be performed entirely in the human mind
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are the types of methods that embody the ‘basic tools of scientific and
technological work’ that are free to all men and reserved exclusively to
none.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373
(Fed. Cir. 2011) (citation omitted).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. The first
step in that analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination”’ to determine whether the additional elements “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132
S. Ct. at 1298). 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. (alteration in original)
(citing Mayo, 132 S. Ct. at 1294). The Court acknowledged in Mayo, that
“all inventions at some level embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293.
We, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea, and merely invoke generic
processes and machinery. See Enflsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
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Under the first step of the analysis, the claimed subject matter of
claims 1—20 is directed to processing data. See Appeal Br. 21 (Claims
App.). Further, according to the Specification, the invention relates to
“providing a calculated route.” Spec. 12. In that context, the claims are
directed to processing data to calculate a route, a mathematical algorithm for
organizing human activity and a fundamental economic practice — an
abstract idea similar to those of Parker v. Flook, 437 U.S. 584 (1978)
(mathematical algorithm used for adjusting an alarm limit); Digitech Image
Techs., LLCv. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014
(employing a mathematical algorithm to generate a device profile); Elec.
Power Grp. LLC v. Alstom, 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)
(collecting information and “analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category.”); and In re
Meyer, 688 F.2d 789, 795—6 (CCPA 1982) (identifying probable locations of
malfunctions is a “mathematical algorithm representing a mental process
that has not been applied to physical elements or process steps”). Here, the
claims involve nothing more than generically processing data to calculate a
route, without any particular inventive technology, i.e., an abstract idea. See
Elec. Power Grp., 830 F.3d at 1354.
Under the second step of the analysis, we find neither independent
claims 1 and 11 nor dependent claims 2—10 and 12—20 have any additional
elements, alone or in combination, that amount to significantly more to
transform the abstract idea of processing data to calculate a route into a
patent-eligible invention. Independent claim 1 recites a method for
facilitating the processing or processing data, information, or signals based
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on the processing of location data and determined waypoint data. Appeal
Br. 21 (Claims App.) Dependent claims 2—10 further define the data,
information, or signal. See id. at 21—24. Similarly, independent claim 11
and dependent claims 12—20 recite an apparatus comprising a generic
processor and memory for processing location data and waypoint data. Id. at
24—27. Any general purpose computer available at the time the application
was filed would have been able to perform these functions. The
Specification supports that view. See Spec. 26—30, Fig. 1 (showing a
generic computer). The introduction of a computer to implement an abstract
idea is not a patentable application of the abstract idea. Alice, 134 S. Ct.
at 2357—58. The computer implementation here is purely conventional and
performs basic functions. See id. at 2359—60. The claims do not purport to
improve the functioning of the computer itself, nor do they effect an
improvement in any other technology or technical field. See id. at 2359.
Thus, under the two-part analysis, we find that claims 1—20 cover
claimed subject matter that is judicially-excepted from patent eligibility
under § 101.
Therefore, we enter a new ground of rejection of claims 1—20 under
35U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 112,
second paragraph, is REVERSED.
The Examiner’s rejection of claims 1 and 11 under 35 U.S.C. § 102(b)
is AFFIRMED.
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The Examiner’s rejection of claims 2—7, 10, 12—17, and 20 under
35 U.S.C. § 103(a) is REVERSED.
The Examiner’s rejection of claims 8, 9, 18, and 19 under 35 U.S.C.
§ 103(a) is AFFIRMED.
A NEW GROUND OF REJECTION has been entered for claims
1—20 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
In addition to affirming the Examiner’s rejection of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 proceeding will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
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).
AFFIRMED-IN-PART; 37 C.F.R, $ 41,501b)
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