Ex Parte McGee et al

Patent Trial and Appeal Board

Nov 17, 2017

13714919 (P.T.A.B. Nov. 17, 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.
13/714,919 12/14/2012 Ryan Abraham McGee 83228356 9588
28395 7590 11/21/2017
RROOKS KTTSHMAN P C /FfTET
EXAMINER
1000 TOWN CENTER INGRAM, THOMAS P
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
11/21/2017 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):
docketing @brookskushman. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN ABRAHAM MCGEE,
DIMITAR PETROV FILEV,
JOHANNES GEIR KRISTINS SON, FLING TSENG, and
ANTHONY MARK PHILLIPS
Appeal 2016-002710
Application 13/714,919
Technology Center 3600
Before MICHAEL J. STRAUSS, JON M. JURGOVAN, and
MICHAEL M. BARRY, Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002710
Application 13/714,919
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.1
CLAIMED INVENTION
The claims are directed to predicting the next destination of a vehicle
based on location and context information. Spec. Title, Abstract. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system comprising:
a processor programmed to:
receive vehicle location and context information;
execute a prediction algorithm to predict one or more
next-destinations based on the location and context information
compared to observed driver behavior stored in a database;
present the one or more next-destinations to a vehicle
occupant;
receive an occupant-selected next-destination input,
selected from the delivered one or more next-destinations; and
utilize the next-destination input as a new vehicle
location and estimate new context information, repeat execution
of the prediction algorithm, presentation of the predicted next-
destinations, and receipt of the next-destination input, until
input indicating completed journey assembly is received.
App. Br. (Claims App’x 1).
1 Our Decision refers to the Specification (“Spec.”) filed December 14,
2012, the Final Office Action (“Final Act.”) mailed February 4, 2015, the
Appeal Brief (“App. Br.”) filed May 27, 2015, the Examiner’s Answer
(“Ans.”) mailed October 27, 2015, and the Reply Brief (“Reply Br.”) filed
December 28, 2015.
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Application 13/714,919
REJECTIONS
Claims 1 and 10 stand rejected under 35U.S.C. § 101 as directed to
non-statutory subject matter. Final Act. 3^4.
Claims 1—5, 10-14, 19, and 20 stand rejected under 35 U.S.C.
§ 102(b) based on Lehmann (US 2011/0238289 Al, published Sept. 29,
2011). Final Act. 4—7.
Claims 6—9 and 15—18 stand rejected under 35 U.S.C. § 103(a) based
on Lehmann and Mendis (US 8,661,121 Bl, issued Feb. 25, 2014). Final
Act. 7-9.
ANALYSIS
§101 Rejection
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1330 (Fed. Cir. 2012).
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[wjhoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. Pty.
Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014). The rationale is that
patents directed to basic building blocks of technology would not “promote
the progress of science” under the U.S. Constitution, Article I, Section 8,
Clause 8, but instead would impede it. Accordingly, laws of nature, natural
phenomena, and abstract ideas are not patent-eligible subject matter. Thales
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VisionixInc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 134
S.Ct.at2354).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice. 134 S. Ct. at 2355. The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76—77). If so, then the eligibility analysis proceeds to the
second step of the Alice!Mayo test, in which we “examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 72, 79). The “inventive
concept” may be embodied in one or more of the individual claim
limitations or in the ordered combination of the limitations. Alice, 134 S. Ct.
at 2355. The “inventive concept” must be significantly more than the
abstract idea itself, and cannot be simply an instruction to implement or
apply the abstract idea on a computer. Alice, 134 S. Ct. at 2358. ‘“[W]ell-
understood, routine, [and] conventional activities] ’ previously known to the
industry” are insufficient to transform an abstract idea into patent-eligible
subject matter. Alice, 134 S. Ct. at 2359 (citing Mayo, 566 U.S. at 73).
In the Final Office Action, the Examiner acknowledges independent
claims 1 and 10 are directed to computer-implemented methods. Final Act.
5. Such methods constitute a “process” within the meaning of § 101.
Proceeding with the first step of the Alice/Mayo test, the Examiner
determines the “claims are directed to the abstract idea of a driver of a
vehicle predicting a next destination based on the driver’s location and
behaviors, and then repeating the process.” Final Act. 4. Applying the
second step of the Alice/Mayo test, the Examiner determines that the
“additional element or combination of elements in the claims other than the
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abstract idea per se amount to no more than: human activity of choosing
where to go next given the context and past destination history.” Id. The
Examiner maintained the § 101 rejection over Appellants’ arguments
because “the present claim language [of claims 1 and 10] fails to link the
hardware to receive the vehicle location, for example. As constructed, to
receive or receiving vehicle location, the processor and GPS must be
explicitly described as being in signal communication in determining the
location.” Final Act. 2; see also Final Act. 4.2
Appellants object to the Examiner’s characterization of the abstract
idea because no person would “predict” their own behavior, and choosing
where to go next is not the same as predicting where to go next. App. Br. 6.
However, we note that “the PTO is obligated to give claims their broadest
reasonable interpretation during examination.” See In re Am. Acad, of Sci.
Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). We interpret the
Examiner’s statement to mean that a driver provides vehicle location and
context information into a standard navigation application running on a
processor, which predicts destinations and shows them on a display for the
driver to select. Spec. ^fl[ 7, 42; Fehmann || 34, 47. Thus, in a sense, the
driver is predicting the next destination using the processor. This is in
contradistinction to the processor receiving an automatic input of vehicle
location from an onboard GPS device 24 (Spec. 128), and context
information from a database (Spec. 138). As there is no limitation in the
claims precluding the Examiner’s broad, but reasonable, interpretation, and
because the Examiner’s interpretation is consistent with the Specification
2 Other claim limitations have similar issues. For example, the processor
does not “present” destinations to a vehicle occupant without use of a
display.
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Application 13/714,919
(see, e.g., 17), which does not preclude a human entry of the vehicle
location and context information, we are not persuaded of error in the
Examiner ’ s determinations.
Furthermore, as described in Appellants’ Specification, the prediction
algorithm provides a “list of possible stop locations with much higher
relevance from which to choose [an] intended destination.” Spec. 1 33, App.
Br. 4. Thus, for example, a person recalling nearby service stations
frequented in the past for consideration as potential refueling destinations to
go next is a human activity falling within the scope of “predicting] one or
more next-destinations based on the location and context information
compared to observed driver behavior stored in a database,” as recited.
Therefore, under a broad but reasonable interpretation, we disagree with
Appellants’ argument that no person would “predict” (as broadly
interpreted) their own behavior.
Appellants next argue the claims are appropriate for streamlined
analysis under the 2014 Interim Guidance on Patent Subject Matter
Eligibility, 79 Fed. Reg. 74618, 74622 (Dec. 16, 2014). Appellants argue
“streamlined eligibility analysis presents a clean, objective standard for
whether or not claims are directed to an abstract idea, namely, ‘do the claims
seek to tie up the identified (or any other) judicial exception (abstract idea)
such that others cannot practice it?’ These claims do not.” Reply Br. 2.
In particular, Appellants note that claims 1 and 10 recite to:
execute a prediction algorithm to predict one or more next-
destinations based on the location and context information
compared to observed driver behavior stored in a database,
“present the one or more next-destinations to a vehicle
occupant,” [and] receive an occupant-selected next-destination
input, selected from the delivered one or more next-
destinations. App. Br. 7.
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Appellants argue that if, according to the language of the claims, one
abstract idea is predicting behavior, and another abstract idea is choosing
behavior, then neither abstract idea can be tied up by the claims, because
both must be practiced by an infringer. App. Br. 7.
The Examiner did not err by not using the referenced streamlined
analysis. That analysis is applicable to Examiners who are of the view that a
claim clearly does not have a subject matter eligibility problem. It is
inapplicable to Appellants. The controlling law in this proceeding on patent
eligibility is the two-step test under Alice/Mayo as described above.
Appellants’ argument is not responsive to the manner in which the
Examiner applied the rejection as set forth in the Final Office Action. The
Examiner did not identity “predicting behavior” and “choosing behavior” as
abstract ideas in the claims. Instead, as noted, the Examiner indicated the
claims embody “the abstract idea of a driver of a vehicle predicting a next
destination based on the driver’s location and behaviors, and then repeating
the process.” Final Act. 4.
Moreover, we do not agree with the proposition that if a claim recites
two abstract ideas inclusively, then it cannot preempt either abstract idea, as
Appellants’ argument seems to suggest. Such a claim would still be abstract
if it does not recite “significantly more” than the abstract ideas. See Alice at
2358. In any case, “the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015).
In claims 1 and 10, the recited functions are carried out by a generic
computer processor that fails to transform the abstract idea into a patent-
eligible implementation. See Alice at 2357. The claims merely gather and
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process data (vehicle location and context information) to generate other
data (predicted destinations). “Without additional limitations, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.” Digitech Image
Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014). Mere data-gathering steps cannot make an otherwise
nonstatutory claim statutory. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011).
We also note that, although the claims at issue here are recited as
being performed by a computer, the claimed steps can also be carried out
mentally with pencil and paper, without the aid of a computer. Under such
circumstances, our review courts have found such claims to be directed to
abstract ideas. Gottschalk v. Benson, 409 U.S. 63 (1972); Cybersource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011).
Furthermore, the claimed methods achieve no useful result or purpose,
such as presenting driving instructions on a display for the driver’s use.
Instead, the claims merely repeat presentation of predicted destinations. As
such, the claims do not recite a technical solution to a technical problem.
Alice, 134 S.Ct. at 2358; Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838
F.3d 1253, 1265 (Fed. Cir. 2016).
Moreover, as recited in claims 1 and 10, the processor is not itself
capable of carrying out certain recited functions without an additional
element, such as a GPS device, a display, or an input/output device, as the
Examiner noted. For example, the processor cannot itself “present the one
or more next-destinations to a vehicle occupant” without the use of a
display.
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Accordingly, for the stated reasons, we sustain the Examiner’s
rejection of claims 1 and 10 under 35U.S.C. § 101.
§ 102(b) Rejection
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). To establish anticipation, every element and
limitation of the claimed invention must be found in a single prior art
reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf
Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
Appellants note that claim 1 recites, inter alia, to “present the one or
more next-destinations to a vehicle occupant,” “receive an occupant-selected
next-destination input, selected from the delivered one or more next-
destinations,” and “utilize the next-destination input as a new vehicle
location and estimate new context information, [and] repeat execution of the
prediction algorithm.” App. Br. 8.
Appellants argue Fehmann fails to disclose the limitation to “receive
an occupant-selected next-destination input” as recited in claim 1. Id.
Specifically, Appellants argue that previously entering a destination is not
the same as an occupant selecting a destination. However, Fehmann states:
[t]he user of the navigation device is presented a list of one or
more predicted destinations reaching the highest prediction
score .... Upon selection of a predicted destination or upon
the explicit entry of another destination, the navigation device
instructs the user how to reach the destination.
Fehmann 147. Thus, Fehmann discloses a user selects a predicted
destination to receive driving instructions. Appellants’ remaining arguments
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(App. Br. 8—9) are not persuasive in light of the noted disclosure of
Lehmann.
Appellants argue independent claims 10 and 19, and dependent claims
2—5, 11—14, and 20, on the same basis as claim 1. Accordingly, we sustain
the § 102 rejection of these claims. 37 C.F.R. § 41.37(c)(l)(iv).
§ 103(a) Rejection
Appellants argue claims 6—9 and 15—18 distinguish over the prior art
references under 35 U.S.C. § 103(a) because Mendis fails to cure the alleged
deficiencies of Lehmann. App. Br. 9—10. Because we found Lehmann not
to be deficient, we do not find Appellants’ argument persuasive. The
Examiner has provided the necessary articulated reasoning with rational
underpinning to support the legal conclusion of obviousness. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006)).
DECISION
We affirm the Examiner’s rejection of claims 1 and 10 under 35
U.S.C. § 101, the rejection of claims 1—5, 10-14, 19, and 20 under 35 U.S.C.
§ 102(b), and the rejection of claims 6—9 and 15—18 under 35 U.S.C.
§ 103(a).
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
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