Ex Parte Poykko et alDownload PDFPatent Trial and Appeal BoardFeb 10, 201611913346 (P.T.A.B. Feb. 10, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111913,346 04/03/2008 466 7590 YOUNG & THOMPSON 209 Madison Street Suite 500 Alexandria, VA 22314 02/12/2016 FIRST NAMED INVENTOR Sarni Poykko 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3502-1132 3988 EXAMINER LAN, TZU-HSIANG ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 02/12/2016 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): DocketingDept@young-thompson.com yandtpair@firs ttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAMI POYKKO, VILLE RUUTU, and JUKKA-PEKKA SALMENKAITA Appeal2013-007997 1 Application 11/913,3462 Technology Center 3600 Before JOSEPH A. FISCHETTI, PHILIP J. HOFFMANN, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-3, 6, 23, and 24. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed Mar. 11, 2013), the Reply Brief ("Reply Br.," filed June 7, 2013), the Examiner's Answer ("Ans.," mailed Apr. 26, 2013), the Non-Final Office Action ("Non-Final Act.," mailed Nov. 7, 2012), and the Specification ("Spec.," filed Nov. 1, 2007). 2 According to the Appellants, the real party in interest is "Ecolane Finland OY". Appeal Br. 1. Appeal2013-007997 Application 11/913,346 STATEMENT OF THE CASE The Appellants' invention is directed to "a method and an arrangement for producing real-time location-specific information about the needs of the users of a public transport system." Spec. p. 2, 11. 16-18. Claims 1, 23, and 24 are the independent claims on appeal. Claim 1 is exemplary of the subject matter on appeal and is reproduced below (bracketing added for reference sake): 1. A method, executed m an electronic processmg system, comprising: [ 1] producing and maintaining a record describing how a passenger uses a transport system in relation to how other passengers use the transport system, [2] receiving from a terminal device of a passenger into the electronic processing system an identifier of a requested drop-off point, [3] determining an identifier of a requested pick-up point from which said passenger wants to be transported to said drop- off point, [ 4] through use of identifiers of requested pick-up and drop-off points of at least two passengers that use a transport vehicle of the transport system differently, determining a list of stopping point identifiers, which list includes the identifiers of said requested pick-up and drop-off points and constitutes an itinerary for the transport vehicle, [ 5] determining a list of passengers that have requested transport between stopping points the identifiers of which appear on said list of stopping point identifiers, and [ 6] for each passenger on said list of passengers, determining which passenger-specific group of legs between stopping points belong to the transport requested by that passenger, and calculating and storing a record that represents a relation between the passenger-specific group of legs and any of those other groups of legs that are specific to other passengers on said list of passengers. 2 Appeal2013-007997 Application 11/913,346 REJECTIONS Claims 1-3, 6, 23, and 24 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1-3, 6, and 23 stand rejected under 35 U.S.C. § 101, as being directed in ineligible subject matter. Claims 1, 2, 23, and 24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rast (US 2004/0260470 Al, pub. Dec. 23, 2004), Mashinsky (US 2006/0059023 Al, pub. Mar. 16, 2006), and Kelch (US 3,953,720, iss. Apr. 27, 1976). 3 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 4 ANALYSIS 35 USC§ 112, second paragraph The Examiner rejects claims 1-3 and 6 as being indefinite because "while the preamble recites executed in an electronic processing system, the body of the claim is silent to where the electronic system implementation takes place." Non-Final Act. 7. The Appellants contend that because the preamble states the method is executed by an electronic processing system, 3 Claims 3 and 6 are objected to as being dependent upon a rejected base claim, but containing allowable subject matter. Non-Final Act. 6. 4 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal2013-007997 Application 11/913,346 it is clear that "all the steps are carried out in the electronic processing system." Appeal Br. 9. We find that one of ordinary skill in the art would understand that the steps are carried out in some way in the electronic processing system. We note that it is not required for purposes of 35 U.S.C. § 112, second paragraph, that the claim recites which, if any, particular steps are carried out by a computer component of the system, because the fact that the claim covers a number of possibilities as to how the limitations are carried out does not in and of itself render the claim indefinite. See In re Goffe, 526 F.2d 1393, 1398 (CCPA 1975). Thus, we do not sustain the Examiner's rejection of claim 1-3 and 6 under 35 U.S.C. § 112, second paragraph. The Examiner also rejects claim 23 as being indefinite because "it is unclear whether the claim element is a means (or step) plus function limitation that invokes 35 U.S.C. 112, sixth paragraph, because the claim recites 'means adapted to ... ' instead of 'means for."' Non-Final Act. 7. The Examiner further finds that the Appellants fails to clearly link the disclosed structure with the written description. Ans. 12. The Appellants contend one of ordinary skill in the art would understand that "means adapted to" is the same as "means for," and, thus, invokes 35 U.S.C. § 112, sixth paragraph. Appeal Br. 9. The Appellants do not point to any portion of the Specification for the linked structure. Since the Appellants unequivocally admit that they are invoking § 112, sixth paragraph (id.), we find the term "means adapted to" is construed as a "means for" phrase under 35 U.S.C. § 112, sixth paragraph. We further find that the Specification discusses various structures of the system (Spec. p. 5, 1. 25 through p. 6, 1. 15), and that the Specification 4 Appeal2013-007997 Application 11/913,346 provides the structure of code associated with a computer linked to the claimed functions. Spec. p. 3, 1. 30 through p. 4, 1. 9. Thus, we do not sustain the Examiner's rejection of claim 23 under 35 U.S.C. § 112, second paragraph. 35 USC§ 101 The Examiner rejects claims 1-3 and 6 for being directed to ineligible subject matter. The Examiner finds that the method fails to meet the machine or transformation test set forth in Bilski v. Kappas, 561 U.S. 593 (2010), 5 and "the claimed invention can be understood as a mere mental process by an operator who keeps data in a processing system." Non-Final Act. 10-11. The Examiner further finds that the recitation of a machine in the preamble is not enough to make an otherwise ineligible method into a statutory process. Ans. 13. The Appellants contend that the recitation in the preamble that the method is executed in an electronic processing system ties the method to a particular device. Appeal Br. 10-11. The Examiner appears to apply only the machine or transformation step in determining eligibility. See Non-Final Act. 10-11, Ans. 13. While the machine-or-transformation test is a useful tool, it is not the only test to determine whether a claim is statutory under 35 U.S.C. § 101. Because the 5 At the time of the Examiner Answer, the test under the Federal Circuit's formulation to determine whether a claimed process recites patentable subject matter under § 101 was if: "( 1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." Bilski, 561 U.S. at 600 (citing In re Bilski, 545 F.3d 943, 959---60 (Fed. Cir. 2008)). 5 Appeal2013-007997 Application 11/913,346 Examiner only applied the machine or transformation step without making an ultimate finding of the nature of the abstract idea at issue, we are constrained to reverse the Examiner's rejection of claims 1-3 and 6 under 35 U.S.C. § 101.6 The Examiner rejects claim 23 as being directed to ineligible subject matter because the means can all be software and claims directed solely to software are not directed to statutory subject matter. See Non-Final Act. 11. The Appellants contend that because the reception means "requires structure to receive a signal," the claim is not directed to solely software and is thus statutory. Appeal Br. 11-12. As discussed above, the only structure found in the Specification for the "means for" limitations, including the receiving means, comprises code. Appellants' argument that the receiving means must comprise a receiver to receive a signal is not supported by the Specification or the claim. Claim 23 does not require receiving a signal, but only receiving identifiers. Appeal Br. 32, Claims App. Thus, claim 23 is directed solely to software and is non-statutory under 35 U.S.C. § 101. See Gottschalk v. Benson, 409 U.S. 63, 72 (1972). Therefore, we sustain the Examiner's rejection of claim 23 under 35 U.S.C. § 101. 6 As noted before, the Examiner applied Bilski at the time of the action. Although the Supreme Court has since further clarified the framework for determining whether a claim is patent-eligible under 35 U.S.C. § 101 in Alice Corp. Pty. Ltd. v CLS Banklnt'l., 134 S. Ct. 2347 (2014), we do not address the framework outlined by Alice. 6 Appeal2013-007997 Application 11/913,346 35 USC§ 103 The Appellants argue claims 1, 2, 23, and 24 as a group. Appeal Br. 12. We select claim 1 as representative, and claims 2, 23, and 24 stand or fall with claim 1. See 37 C.F.R. § 41.37 (c)(iv) (2014). The Examiner finds Rast discloses limitations [2] and [3], Mashinsky discloses limitation [ 1 ], the combination of Rast and Mashinsky discloses limitations [4] and [5], and the combination of Rast and Kelch discloses limitation [6]. Non-Final Act. 12-15. The Appellants contend the rejection of claim 1 is in error because the prior art Rast, Mashinsky and Kelch do not disclose the claim limitations. See Appeal Br. 12-27. We disagree with the Appellants' contention as discussed below. Limitation [ 1] - producing and maintaining a record The Appellants' argument that Mashinsky does not disclose limitation [ 1] of "producing and maintaining a record of the kind claimed" (Appeal Br. 12; see also id. at 22-23), is unpersuasive. The Examiner cites to paragraphs 29, 33, and 34 ofMashinsky as disclosing producing and maintaining a record as claimed. Non-Final Act. 13. Paragraph 29 provides that a reservation is created comprising multiple passengers' requests based on destination, pick-up location, and time, i.e., producing a record "describing how a passenger uses a transport system in relation to how other passengers use the transport system." Paragraphs 29 and 33 disclose that the reservations are stored and that a database can be accessed for these reservations. We note that during examination, "claims ... are to be given their broadest reasonable interpretation consistent with the specification, and ... 7 Appeal2013-007997 Application 11/913,346 claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). However, limitations appearing in the Specification, but not recited in the claim, will not be read into the claim. See CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir. 2005). Thus, we find Mashinsky's combined reservations related to passengers' destinations, pick-ups, and times, and the database of reservations, meets the claimed "producing and maintaining a record describing how a passenger uses a transport system in relation to how other passengers use the transport system," as recited. The Appellants do not provide adequate evidence or reasoning why this finding is unreasonable. The Appellants' argument that Mashinsky does not disclose an itinerary as recited by the claim (Appeal Br. 12-13, Reply Br. 2) is unpersuasive as claim limitation [ 1] does not require an itinerary. Similarly, the Appellants' argument that Mashinsky does not "make any associations between the ride requests made by different passengers" (Appeal Br. 13) is unpersuasive because claim limitation [ 1] does not require any particular association be made. Claim 1 requires only that the records describe a passenger's use "in relation to" another passenger. Limitation [ 4] - determine a list of stopping point identifiers The Appellants' arguments that Rast and Mashinsky do not disclose limitation [4] as recited (Appeal Br. 17-20, 23-24) are unpersuasive, because they are essentially arguments against each individual reference when the Examiner relies on the combination of Rast and Mashinsky for teaching the limitation. The test for obviousness is not what any one 8 Appeal2013-007997 Application 11/913,346 reference would have suggested, but rather what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 426 (CCPA 1981). "[O]ne cannot show non- obviousness by attacking references individually where, as here, the rejections are based on combinations of the references." Id. (citation omitted). To the extent the Appellants argue that the art upon which the Examiner relies for a particular teaching does not provide that teaching, the arguments are unpersuasive as discussed below. The Appellants' argument that Mashinsky "fails to disclose two passengers that use the transport vehicle differently," as recited in limitation [4] (Appeal Br. 14), is unpersuasive. The Specification, including the claims, does not define how "passengers [] use a transport system differently." The Examiner's interpretation of using a transport system differently as having different drop-off and/or pick-up destinations, i.e. legs (Non-Final Act. 14, Ans. 15) is reasonable. The Appellants' argument that the prior art does not teach that is it "possible to show which (in plural) of said legs are specific to each passenger (in singular)" (Appeal Br. 14--15), is unpersuasive because it is not commensurate with the scope of the claim. Claim 1 does not recite showing which legs are specific to each passenger. The Appellants' arguments that Rast does not disclose limitation [ 4] because Rast does not disclose that "the central system orders a particular vehicle to take the ordered fare" (Appeal Br. 19), and that "the central system would compose any instructions to the vehicles about combing the rides of different passengers" (id. at 20), are unpersuasive because they are not commensurate with the scope of the claim. Limitation [ 4] does not require the central system ordering a vehicle to take the ordered fare or 9 Appeal2013-007997 Application 11/913,346 composing instructions, but only requires "through use of identifiers of requested pick-up and drop-off points ... determining a list of stopping point identifiers .... " Id. at 29, Claims App. We agree with the Examiner's finding that Rast discloses determining stopping point identifiers, including identifiers of requested pick-up and drop-off points that constitute an itinerary for the vehicle. See Non-Final Act. 13. The Examiner's interpretation of "itinerary" as the identified pick-up and drop-off points (id.) is reasonable in light of the claim. The Appellants' arguments that neither Rast nor Mashinsky discloses an itinerary because the claimed itinerary requires at least two passengers (Appeal Br. 20), and that Rast does not teach a "list of stopping point identifiers" because "the whole idea of the invention is in ride sharing" (id. at 21 ), are unpersuasive because they are arguments against each individual reference when the Examiner relies on the combination of Rast and Mashinsky for teaching the limitation. The Appellants do not provide sufficient evidence or technical reasoning to rebut the Examiner's finding (Non-Final Act. 13-14) that the combination of Rast and Mashinsky discloses "through use of identifiers of requested pick-up and drop-off points of at least two passengers that use a transport vehicle of the transport system differently, determining a list of stopping point identifiers, which list includes the identifiers of said requested pick-up and drop-off points and constitutes an itinerary for the transport vehicle," as recited in claim 1 (Appeal Br. 29, Claims App.). The Appellants' argument that Mashinsky does not "suggest that the system would be capable of combining the requested rides from Hartford to Greenwich and from Greenwich to NYC into one" (Appeal Br. 24) is 10 Appeal2013-007997 Application 11/913,346 unpersuasive. Mashinsky specifically discloses combining several requests (Mashinsky i-f 29), and thus is capable of combining requested rides into one. Limitation [ 6] - determining which group and calculating and storing a record The Appellants' arguments that the prior art does not disclose limitation [6] (Appeal Br. 14--17, 21-23, 26-27) are unpersuasive. The Appellants' arguments that Rast and Mashinsky "fail to disclose that some calculated and stored record would be specific to a particular passenger and represent a relation between a passenger-specific group of legs and some other groups of legs" (Appeal Br. 15; see also id. at 21-23) are unpersuasive because the Examiner relies primarily on Kelch for disclosing limitation [ 6] (Non-Final Act. 14--15). The Examiner finds that although Rast discloses "calculating a record that represents the relation between the passenger share rides for at least one set of legs" (Non-Final Act. 13 (citing Rast i-f 119) ), Rast and Mashinsky "fail to explicitly teach determining passenger-specific group of legs between stopping points." Non-Final Act. 14. The Appellants' argument that Kelch does not disclose "calculating and storing any records at all" (Appeal Br. 16; see also id. at 26-27) is unpersuasive. Kelch discloses individual fares being calculated taking into account "the different, often overlapping distances travelled by the different passengers" (Kelch, col. 4, 11. 5-11), and computing the fare for an individual passenger dependent upon the number of passengers being carried (id. at col. 8, 11. 43-51). The system of Kelch includes "a storage unit 4 operative for storing signals representative of results calculated by the calculating unit 3 and also for storing raw information to be fed to the calculating unit under the control of the control unit 2." Id. at col. 4, 11. 48- 11 Appeal2013-007997 Application 11/913,346 52. Kelch further discloses that the individual fares are calculating and stored (id. at col. 7, 11. 1-13), as well as the sum of fares collected during one trip and the cumulate sum of fares over a longer time period (id. at col. 8, 11. 11-19). Thus, Kelch discloses calculating and storing fare records where the fares are dependent on the number of passengers and length of trip, i.e., "represent a relation between a passenger-specific group of legs and some other groups of legs." The Appellants' argument that Kelch does not disclose "passenger- specific groups of legs" (Appeal Br. 26), is unpersuasive. The Appellants contend that "nobody will ever keep any records of how they requested to 'use the transport system'. In practice, different passengers will just wave down the taxi at different comers." Id. This is unsupported by evidence. Further, limitation [ 6] does not require records of how passengers request to use the system, and, as discussed above, Mashinsky discloses keeping records describing how a passenger uses a transport system as recited in limitation [1]. We agree with the Examiner's finding that Kelch discloses the specific groups of legs, for example, passenger B's group is P-Z and Z- W, and passenger A's group is P-Z. See Non-Final Act. 14. Therefore, we agree with the Examiner's finding that Kelch discloses "determining which passenger-specific group of legs between stopping points belong to the transport requested by that passenger, and calculating and storing records that represents a relation between the passenger-specific group of legs and any of those other groups of legs that are specific to other passengers," as claimed (see Non-Final Act. 15, Ans. 16). The Appellants further argue that Mashinsky does not "anticipate the applicant's method as claimed, because the claimed method literally requires 12 Appeal2013-007997 Application 11/913,346 the method to be executed in an electronic processing system," as the driver of Mashinsky would have to combine the requested rides. Appeal Br. 24-- 25. The Appellants argue that Kelch's method does not teach the claimed method because it is also not executed in an electronic processing system. Id. at 26. These arguments are unpersuasive, because it is the combination of Rast, Mashinsky, and Kelch that teaches the method as claimed, and Appellants do not provide sufficient arguments against the combination as a whole. Further, we agree with the Examiner's finding that Rast discloses the method executed electronically, i.e., "in an electronic system." Non-Final Act. 12. We further note that note Mashinsky and Kelch disclose a controller performing functions. See Mashinsky Fig. 1, Kelch, Fig. 1. For the foregoing reasons, we sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a). We also sustain the Examiner's rejection of claims 2, 23, and 24, which fall with claim 1. DECISION The Examiner's rejections of claims 1-3, 6, 23, and 24 under 35 U.S.C. § 112, second paragraph, are REVERSED. The Examiner's rejection of claims 1-3, and 6 under 35 U.S.C. § 101 is REVERSED The Examiner's rejection of claim 23 under 35 U.S.C. § 101 is AFFIRMED. The Examiner's rejection of claims 1, 2, 23, and 24 under 35 U.S.C. § 103(a) is AFFIRMED. 13 Appeal2013-007997 Application 11/913,346 No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 14 Copy with citationCopy as parenthetical citation