Ex Parte Setlur et alDownload PDFPatent Trial and Appeal BoardDec 13, 201612561569 (P.T.A.B. Dec. 13, 2016) 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. 12/561,569 09/17/2009 Vidya Setlur P3359US00 2572 11764 7590 Ditthavong & Steiner, P.C. 44 Canal Center Plaza Suite 322 Alexandria, VA 22314 12/15/2016 EXAMINER BRIER, JEFFERY A ART UNIT PAPER NUMBER 2613 NOTIFICATION DATE DELIVERY MODE 12/15/2016 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): 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 VIDYA R. SETLUR, CYNTHIA KUO, AGATHE BATTESTINI, and TARIK CRNOVRSANIN Appeal 2015-005259 Application 12/561,569 Technology Center 2600 Before THU A. DANG, LINZY T. McCARTNEY, and NATHAN A. ENGELS, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. A. INVENTION According to Appellants, the invention relates to “organizing and presenting mapping information to display, highlight, or otherwise indicate contextually appropriate information of most relevance or importance to a particular user” (Spec. 11). Appeal 2015-005259 Application 12/561,569 B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A method comprising: determining context information for rendering a map; classifying, by a processor, a plurality of objects available for display in the map based on a level of importance of each of the objects to one or more users with respect to the context information; prioritizing rendering of the objects based on the classification; and causing, at least in part by the processor, rendering of the objects in the map according to a temporal order based, at least in part, on the prioritization. C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Torimoto US 2005/0134963 A1 June 23,2005 Bowman US 2007/0233379 A1 Oct. 4,2007 Grandhi US 2009/0204582 A1 Aug. 13,2009 Claims 1—16 and 18—20 stand rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1, 2, 8—10, and 16—19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bowman and Grandhi. Claims 3,6, 7, 11, 14, 15, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bowman, Grandhi, and Torimoto. II. ISSUES The principal issues before us are whether the Examiner erred in finding that: 2 Appeal 2015-005259 Application 12/561,569 1) a method comprising “determining” context information for rendering a map, “classifying” objects for display, “prioritizing” rendering of the objects, and “causing” rendering of the objects (claim 1) is directed to non-statutory subject matter; and 2) the combination of Bowman and Grandhi teaches or would have suggested “classifying ... a plurality of objects available for display in the map based on a level of importance of each of the objects to one or more users ...” and “prioritizing rendering of the objects based on the classification” (claim 1 (emphases added)). III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Grandhi 1. Grandhi relates to defining relationships between search queries based on semantic data associated with the search queries (Abstr.), wherein a visual representation of search queries are constructed in the form of a map and presented to the user (| 23). 2. The map is organized to mirror relationships between two search queries, wherein in search queries relating to one subject are clustered together in one area of the map while search queries relating to another subject are clustered in another area of the map, and related search queries have lines drawn between them to help the user see the semantic relationships (124). 3. The map is initially centered on the node that matches the user’s search query, and the user navigates between nodes in the graph based on the semantic contexts and relationships created by groupings of the nodes 3 Appeal 2015-005259 Application 12/561,569 in the graph, wherein closely related search queries are placed closer together and unrelated search queries are placed further apart (125). Top search queries are determined and are considered top level nodes (126). Bowman 4. Bowman relates to obtaining map data and displaying the map (Abstr.), wherein high-priority city names are rendered first (| 94). IV. ANALYSIS 35 U.S.C.§ 101 Appellants contend “the claims are drawn to subject matter which, when considered as a whole, are NOT drawn merely to an abstract idea” (App. Br. 7). In particular, Appellants contend “claim 1 includes features which are both new and useful” (App. Br. 11), wherein the claim includes “a series of. . . steps that are not ‘conventional’. . ., not ‘specified at a high level of generality’. . . , not ‘simply an implementation of a mathematical principle’” and “that solve a technological problem in ‘industry practice’” (App. Br. 12). Under the two-part test articulated by the Supreme Court in Alice, “[w]e [must first] determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). Secondly, “we must 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.” {Id. at 2357, internal quotations omitted). Regarding part one of the two-part test, we agree with the Examiner that the claims are “directed to the abstract idea” wherein, viewed as a 4 Appeal 2015-005259 Application 12/561,569 whole, claim elements “do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself’ (Ans. 4). Abstract ideas that have been identified by courts include, for example, fundamental economic practices, certain methods of organizing human activities, an idea “of itself,” and mathematical relationships/ formulas. Alice, 134 S. Ct. at 2355—56. We agree with the Examiner’s reference to CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (holding that a method for verifying the validity of a credit card transaction over the Internet to be a non-statutory abstract idea capable of being performed in the human mind or by a human using a pen and paper) (Ans. 4). Here, we agree with the Examiner’s conclusion that claim 1 ’s “determining,” “classifying,” “prioritizing,” and “causing” steps cover “the mental steps a user performs prior to causing the processor to perform the claimed rendering” (Ans. 18). That is, these steps can be performed by human thought alone and thus are merely abstract ideas that are not patent-eligible under § 101. CyberSource, 654 F.3d at 1373. We also direct attention to Digitech, where the Federal Circuit has provided additional guidance on the issue of statutory subject matter by holding claims to a process of organizing information through mathematical correlations was not tied to a specific structure or machine, and was thus, an abstract idea and ineligible under § 101. Digitech Image Tech., LLC v. Elec, for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014), affd. We further refer to Content Extraction, where the Federal Circuit has provided additional guidance on the issue of statutory subject matter by holding claims to 5 Appeal 2015-005259 Application 12/561,569 collecting data, recognizing certain data within the collected data set, and storing that recognized data in memory were directed to an abstract idea and therefore unpatentable under § 101.. Content Extraction & Transmission LLCv. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014). Regarding part two of the two-part test, we find merely appending purely conventional steps (such as “determining,” “classifying,” “prioritizing,” and “causing”) to an abstract idea does not supply a sufficiently inventive concept. See Alice Corp. 134 S. Ct. at 2357-58. Here, we agree with the Examiner that “the claimed steps ... are high level method steps which do not claim how each of these method steps is[sic] accomplished in a patent eligible manner,” and thus does not pass step two of Alice (Ans. 21), since they fail to contain an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. Accordingly, on this record, we are unpersuaded of error in the Examiner’s rejection of claims 1—16 and 18—20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 35 U.S.C. § 103(a) Appellants contend “GRANDHI is directed to a process for retrieving a plurality of search queries and defining relationships between the search queries based on semantic data associated with the search queries” (App. Br. 16). According to Appellants, “the objects in GRANDHI cannot be classified based on a level of importance with respect to context information, because they have already been predefined as to how they would appear in an ‘overview map’ in GRANDHF (App. Br. 17). Thus, Appellants contend 6 Appeal 2015-005259 Application 12/561,569 “aspects of ‘level of importance’ and ‘to one or more users’ are neither taught nor suggested by GRANDHF (App. Br. 18). We have considered all of Appellants’ arguments and the evidence presented. However, we disagree with Appellants’ contentions regarding the Examiner’s rejections of the claims. We are unpersuaded of error with respect to the Examiner’s conclusion that the claimed subject matter is taught or suggested by Grandhi in combination with Bowman. To determine whether the references disclose or would have suggested the claimed invention, we give the claims their broadest reasonable interpretation (BRI) consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). As the Examiner points out, the claims “do not claim how ‘level of importance to one or more users with respect to the context information’ is manifested” (Ans. 22). Thus, given their broadest reasonable interpretation, the claims “cover[] all manners of manifesting ‘level of importance . . . ’ such as priority given to results based on map type chosen by user” (Id.). Grandhi discloses constructing a map organized to mirror relationships between two search queries, wherein search queries relating to particular subjects are clustered together in one area of the map, with lines drawn between the clusters showing the semantic relationships therebetween (FF 1—2). In Grandhi, the map is initially centered on the node that matches the user’s search query, allowing the user to navigate between nodes based on the semantic contexts and relationships created by groupings of the nodes, wherein closely related search queries are placed closer together and unrelated search queries are placed further apart, with the top search queries being considered top level nodes (FF 3). That is, Grandhi discloses and 7 Appeal 2015-005259 Application 12/561,569 suggests clustering/classifying objects available for display in the map based on how closely related each is to a user’s search query (i.e., the objects level of importance to the user) (FF 1—3). As Appellants concede, Grandhi discloses predefining objects as to “how they would appear in an ‘overview map’” (App. Br. 17). Accordingly, we find no error with the Examiner’s reliance on Grandhi for teaching or at least suggesting “classifying ... a plurality of objects available for display in the map based on a level of importance of each of the objects to one or more users ...” (claim 1). That is, we disagree with Appellants’ contention that the objects in Grandhi cannot be classified based on a level of importance with respect to context information (App. Br. 17). Furthermore, we also find no error with the Examiner’s reliance on Bowman for disclosing and suggesting “prioritizing rendering of the objects based on the classification” as recited in claim 1 (FF 4). Based on this record, we are unpersuaded that the Examiner erred in rejecting claim 1 over Bowman and Grandhi. Appellants do not provide substantive arguments for independent claims 9 and 18 separate from claim 1 (App. Br. 18). Similarly, other than repeating the language of dependent claim 8, Appellants do not provide substantive arguments for dependent claims 2, 8, 10, 16, 17, and 19 (App. Br. 19). Thus, we also find Appellants have not shown the Examiner erred in rejecting 2, 8—10, and 16—19 over Bowman and Grandhi. As for claims 3, 6, 7, 11, 14, 15, and 20, Appellants merely repeat claim limitations and contend Torimoto “fails to cure the deficiencies” of Bowman and Grandhi (App. Br. 21). As we find no deficiencies with the Examiner’s reliance on Bowman and Grandhi, we are also unpersuaded of 8 Appeal 2015-005259 Application 12/561,569 error of the Examiner’s rejection of claims 3, 6, 7, 11, 14, 15, and 20 over Bowman and Grandhi, in further view of Torimoto CONCLUSION AND DECISION The Examiner’s rejections of claims 1—16, and 18—20 under 35 U.S.C. § 101; and claims 1—3, 6—11, and 14—20 under 35 U.S.C. § 103(a) are affirmed. 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 9 Copy with citationCopy as parenthetical citation