Ex Parte Terai et alDownload PDFPatent Trial and Appeal BoardFeb 27, 201712971817 (P.T.A.B. Feb. 27, 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. 12/971,817 12/17/2010 Takao TERAI 372833US8 8717 22850 7590 03/01/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER HAN, CHARLES J ART UNIT PAPER NUMBER 3662 NOTIFICATION DATE DELIVERY MODE 03/01/2017 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): patentdocket @ oblon. com oblonpat @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TAKAO TERAI and YOSHIYUKINEZU Appeal 2014-009769 Application 12/971,817 Technology Center 3600 Before JENNIFER D. BAHR, LYNNE H. BROWNE, and JASON W. MELVIN, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Takao Terai and Yoshiyuki Nezu (Appellants) appeal under 35 U.S.C. § 134 from the rejection of claims 1—24 under 35 U.S.C. § 103(a) as unpatentable over Zheng (“Learning Transportation Mode from Raw GPS Data for Geographic Applications on the Web,” Yu Zheng, Like Liu, Longhao Wang, Xing Xie) and Lee (US 2009/0271109 Al, iss. Oct. 29, 2009). An oral hearing was held on February 23, 2017. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection pursuant to our authority under 37 C.F.R. § 41.50(b). Appeal 2014-009769 Application 12/971,817 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An information processing apparatus including a navigation function, comprising: a processor configured to receive user selection input selected by a user that specifies at least one mode of transportation used for a navigation route, retrieve the navigation route, associated with the at least one mode of transportation used and selected by the user, as a previous navigation route taken by the information processing apparatus, retrieve mode information specifying the at least one mode of transportation used and selected by the user on said previous navigation route, and store in a computer readable medium said previous navigation route in association with said mode information in a retrievable file. DISCUSSION Appellants argue independent claims 1,10, and 19 together. See Appeal Br. 4—7. In addition, Appellants argue that “dependent Claims 2—9, 11—18, and 20-24 are allowable for at least the same reasons discussed above with respect to independent Claims 1, 10, and 19.” Id. at 7. Thus, Appellants argue claims 1—24 together. We select independent claim 1 as the illustrative claim, and claims 2—24 stand or fall with claim 1. The Examiner finds that Zheng discloses all of the limitations of claim 1 except for the steps of receiving user selection input selected by a user that specifies at least one mode of transportation for a navigation route, retrieving 2 Appeal 2014-009769 Application 12/971,817 a navigation route, associated with the at least one mode of transportation used and selected by a user, and retrieving mode information specifying at least one mode of transportation. Final Act. 6 (citations omitted). The Examiner further finds that Lee discloses these limitations. Id. Based on these findings, the Examiner determines that it would have been obvious to modify the teaching of Zheng by receiving user selection input selected by a user that specifies at least one mode of transportation for a navigation route, retrieving the navigation route, associated with the at least one mode of transportation used and selected by the user, as a previous navigation route taken by the information processing apparatus, and retrieving mode information specifying at least one mode of transportation as taught by Lee in order to eliminate computer prediction computation error and accurately determine mode of transportation via manual user input, as well as intentionally and accurately specify a desired mode of transportation to be viewed such as a lowest cost route, public transportation, or a ferry. Id. at 6—7 (citing Lee 1 69). Appellants contend that modifying “Zheng with the explicit mode selection preferences of Lee would render Zheng unsatisfactory for its intended purpose.” Appeal Br. 6 (emphasis omitted). In support of this contention, Appellants note that Zheng “states that it is not feasible to require the users to manually tag corresponding transportation modes to GPS tracks, which would have to occur after the trip because, as further stated, it is difficult for people to remember when they changed their transportation modes.” Id. at 5 (citing Zheng, p. 1,13). Appellants further note that Zheng states that: [W]e do need an approach to automatically and accurately infer transportation modes as well as the transitions between them from raw GPS data. Meanwhile, to make the approach 3 Appeal 2014-009769 Application 12/971,817 more general and universal, we do not expect it relies on the data collected by other sensors like cellphone, Wi-Fi, RFID, and/or other information extracted from geographic maps, such as road networks etc. In other words, the inference approach should only depend on raw GPS data. To the best of our knowledge, no related work solves this problem. In this paper, for geographic and mobile applications on the Web, we propose an approach using raw GPS data that is based on supervised learning to automatically learn the transportation modes including walking, taking a bus, riding a bike and driving. Id. (quoting Zheng, p. 2, || 1—2). From this evidence, Appellants infer that Zheng’s intended purpose is to decipher the type of transportation mode used without input from the user. See id. Zheng further states: Learning knowledge from users’ raw GPS data can provide rich context information for both geographic and mobile applications. However, so far, raw GPS data are still used directly without much understanding. In this paper, an approach based on supervised learning is proposed to automatically infer transportation mode from raw GPS data. The transportation mode, such as walking, driving, etc., implied in a user’s GPS data can provide us valuable knowledge to understand the user. It also enables context-aware computing based on user’s present transportation mode and design of an innovative user interface for Web users. Zheng, p. 1. Thus, Appellants are correct that Zheng’s intended purpose is to use raw GPS data to infer the user’s transportation mode. See id. Substituting Lee’s user input for Zheng’s raw GPS data would defeat this purpose. If the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. See In re 4 Appeal 2014-009769 Application 12/971,817 Gordon, 733 F.2d 900, (Fed. Cir. 1984). Accordingly, Appellants’ argument is persuasive. For this reason, we do not sustain the Examiner’s decision rejecting claim 1, and claims 2—24, which depend therefrom. New Ground of Rejection Claims 1—24 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. The Supreme Court has set forth “a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294 (2012)). According to the Supreme Court’s framework, we must first determine whether the claims at issue are directed to one of those concepts (i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we must secondly “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. The Supreme Court characterizes the second step of the analysis as “a 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). Independent claims 1,10, and 19 are directed to an information processing apparatus comprising a processor configured to collect and 5 Appeal 2014-009769 Application 12/971,817 analyze data, a method of collecting and analyzing data using such an apparatus, and a non-transitory computer readable storage device having instructions for execution on such apparatus. In other words, the independent claims are directed to a set of rules performed by a computer (i.e. software). Our reviewing court instructs us that “[sjoftware can make non abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). We are further instructed that we must determine if “the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.” Id. Here, the limitations at issue are not directed to an improvement of a computer’s functionality. Accordingly, the independent claims are directed to an abstract idea. Having determined that the independent claims are directed to an abstract idea, we must determine whether the additional elements of the independent claims transform them into patent-eligible subject matter. Although the independent claims set forth specific data to be collected, indicate that an algorithm is to be used to manipulate the collected data, and require that the results of the application of this algorithm is to be stored, they do not specify how the collection is accomplished or indicate what use is made of the result obtained. As such, the independent claims at most require only “mathematical algorithms to manipulate existing information to generate additional information.” Digitech Image Techs., LLC v. Elecs.for 6 Appeal 2014-009769 Application 12/971,817 Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Thus, the limitations of these claims do not transform the abstract ideas embodied in the claims. Rather, they simply implement those ideas. The independent claims, when considered “both individually and ‘as an ordered combination,’” amount to nothing more than an attempt to patent the abstract ideas embodied in the steps of these claims. See Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298). Accordingly, the limitations of the independent claims fail to transform the nature of these claims into patent-eligible subject matter. See id. (citing Mayo, 132 S. Ct. at 1297, 1298). The dependent claims do not transform the subject matter of the independent claims for similar reasons, and thus, are not directed to patent- eligible subject matter as well. DECISION The Examiner’s rejection of claims 1—24 is REVERSED. We enter a NEW GROUND OF REJECTION of claims 1-24 under 35U.S.C. § 101. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the Appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: 7 Appeal 2014-009769 Application 12/971,817 (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 prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R, $ 41.50(b) 8 Copy with citationCopy as parenthetical citation