Ex Parte Vu et al

Patent Trial and Appeal Board

Nov 13, 2017

12380180 (P.T.A.B. Nov. 13, 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.
12/380,180 02/24/2009 Tien Vu ALPINE. 128AUS 9352
7590
Muramatsu & Associates
Suite B
26471 Rancho Parkway South
Lake Forest, CA 92630
EXAMINER
WILDER, ANDREW H
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
11/13/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIEN YU and SHINOBU DOI
Appeal 2016-0010211
Application 12/3 80,1802
Technology Center 3600
Before NINA L. MEDLOCK, CYNTHIA L. MURPHY and
TARA L. HUTCHINGS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
June 9, 2014) and Reply Br. (“Reply Br.,” filed November 26, 2014), and
the Examiner’s Answer (“Ans.,” mailed September 10, 2014) and Final
Office Action (“Final Act.,” mailed November 27, 2013).
2 Appellants identify Alpine Electronics, Inc. as the real party in interest.
App. Br. 1.
Appeal 2016-001021
Application 12/380,180
CLAIMED INVENTION
Appellants’ claimed invention “relates generally to a method and
apparatus for detecting and correcting a route for a navigation system, and
more particularly, to a method and apparatus for detecting a freeway-ramp-
freeway situation in a calculated route to a destination and correcting the
calculated route by replacing the freeway-ramp-freeway situation with all-
freeway segments” (Spec. 1,11. 6—12).
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method of correcting a
particular situation in a calculated route between a start point to
a destination for a navigation system, comprising, by using a
processor which executes a program stored in a memory, the
following steps of:
establishing the calculated route between the start point
and the destination where the calculated route includes a
freeway;
examining the calculated route from one end to another
end (forward direction) to detect whether there is a first point
where the calculated route exits a freeway;
further examining the calculated route in the forward
direction in order to detect whether there is a second point where
the calculated route enters a freeway by shifting for a limited
distance to find whether there is a ramp to-freeway transition;
evaluating map data associated with the calculated route
to determine whether the freeway exited at the first point and the
freeway entered at the second point are the same freeway;
determining that a freeway-ramp freeway situation exists
in the calculated route when the freeway exited and the freeway
entered are the same where the freeway-ramp-freeway situation
is defined as a situation where the calculated route exits a
freeway and immediately enters the same freeway;
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Application 12/380,180
retrieving one or more freeway segments between the first
point and the second point by searching all-freeway segments;
and
replacing road segments of the calculated route between
the first point and the second point constituting the freeway-
ramp-freeway situation with the retrieved freeway segments
between the first point and the second point, thereby changing
the freeway-ramp-freeway situation to an all-freeway situation
and creating a new route.
REJECTIONS
Claims 1—20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—3, 6—13, and 16—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nesbitt (US 2004/0176907 Al, pub. Sept. 9, 2004),
Beesley et al. (US 2005/0090976 Al, pub. Apr. 28, 2005) (hereinafter
“Beesley”) and Yoshikawa et al. (US 2006/0004511 Al, pub. Jan. 5, 2006)
(hereinafter “Yoshikawa”).
Claims 4, 5, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nesbitt, Beesley, Yoshikawa, and Nomura
(US 2005/0203937 Al, pub. Sept. 15, 2005).
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, 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 Corp.,
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 the claims are not directed to a patent-ineligible concept, e.g., an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 132 S. Ct. at 1297).
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 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
finds that claim 1 is directed to “evaluating map data in calculated routes to
discover an undesired shortcut,” i.e., to a method of organizing human
activity (evaluating a map and providing recalculated routes which replace
freeway-ramp-freeway situations with all-freeway sections) and, therefore,
to an abstract idea; and that the claim does not include elements or a
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Application 12/380,180
combination of elements that amounts to more than the abstract idea itself
because “the claim does not affect [sic] an improvement to another
technology or technical field; the claim does not amount to an improvement
to the functioning of a computer itself; and the claim does not move beyond
a general link of the use of an abstract idea to a particular technological
environment” (Ans. 2—5). The Examiner rejects claims 2—20 on the same
bases {id. at 5 (“Claims 2—20 fail to remedy these deficiencies, thus
claims 2—20 are considered to be directed to non-statutory subject matter”)).
Addressing the first step of the Mayo!Alice framework, Appellants
charge that the Examiner, in finding that the claims are directed to an
abstract idea, disregards that the claimed invention is directed to a method
and apparatus that performs route guidance between a start point and a
destination through a calculated route, i.e., “a route on actual and physical
routes connecting the start point and the destination” (Reply Br. 3).
Appellants assert that “[ajthough a calculated route is established by
evaluating the map data,. . . such a calculated route and map data are
directed to actual roads, buildings and constructions, topological structures,
etc., i.e., real world products” {id.). Appellants maintain that the claims are
directed to “the process of determining the route between the start point and
the destination by incorporating the physical distances, locations, structural
connections of the road including the freeway, the entrance and exit to the
freeway and their unique combination” and, therefore, not directed to an
abstract idea {id. at 3 4). Yet it is clear from the Specification, including the
preamble of the claims, that claims are directed to correcting a particular
situation (namely, a freeway-ramp-freeway situation) in a calculated route
between a start point and destination, i.e., directed to “evaluating map data
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in calculated routes to discover an undesired shortcut,” as the Examiner
concludes (see, e.g., Spec. 2—3 (describing that an object of the invention is
to detect and, if necessary, correct a freeway-ramp-freeway situation in a
calculated route)).
Although claim 1, for example, refers to freeways and freeway ramps,
these elements have no material involvement in the claimed method beyond
merely constituting the physical environment on which the calculated route
and the map data are based. The claimed method does not alter or otherwise
affect in any way the physical structure or location of the freeways and
freeway ramps and/or the structural relationships between them.
Turning to the second step of the Mayo!Alice framework, Appellants
argue that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because the claimed subject matter represents a
“practical application having a real world use” (Reply Br. 4; see also id.
at 5). Yet limiting the use of the abstract idea to a particular technological
environment does not make the claims any less abstract. See Alice Corp.,
134 S. Ct. at 2358. Nor is the recitation of a practical application for an
abstract idea sufficient to transform the abstract idea into a patent-eligible
invention. Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1371 (Fed. Cir. 2011) (“The Court [in Parker v. Flook, 437 U.S. 584 (1978)]
rejected the notion that the recitation of a practical application for the
calculation could alone make the invention patentable.”).
Focusing specifically on method claims 1—10, and ostensibly relying
on the Bilski machine-or-transformation test, Appellants next argue that
claims 1—10 are patent-eligible because the claimed process is “clearly tied
to a particular machine or apparatus” (Reply Br. 4 (“independent Claim 1
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clearly defines that the method steps are executed by a processor, i.e., a
particular machine or apparatus”)). In fact, the method claims are not tied to
any particular machine or apparatus at all; the claims merely recite a
processor, and we find no indication in the Specification that the claimed
processor is other than a general purpose computer.3
Ostensibly alluding to In reAlappat, 33 F.3d 1526, 1543 (Fed. Cir.
1994), Appellants assert that “a general purpose computer may be
sufficiently ‘particular’ when programmed to perform the process steps”
because the general purpose computer becomes “a special purpose computer
once it is programmed to perform particular functions pursuance to
instructions from program software” (Reply Br. 5). However, the Federal
Circuit, in Eon Corp. v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir.
2015), explicitly noted that “Alappat has been superseded by Bilski,
561 U.S. at 605—06, 130 S. Ct. 3218, and Alice Corp. v. CLS Bank Inti,-----
U.S.----- , 134 S. Ct. 2347, 189 L.Ed.2d 296 (2014).” And it is clear from
the Supreme Court decision in Alice that merely implementing an abstract
idea on a general purpose computer does not make an otherwise ineligible
claim patent-eligible.
3 Although the Supreme Court noted in Bilski v. Kappos, 130 S. Ct. 3218
(2010) that the machine-or-transformation test is a “useful and important
clue” for determining patent eligibility, id. at 3227, the Court, in Mayo
emphasized that satisfying the machine-or-transformation test, by itself, is
not sufficient to render a claim patent-eligible, as not all transformations or
machine implementations infuse an otherwise ineligible claim with an
“inventive concept.” See Mayo, 132 S. Ct. at 1301 (“[SJimply implementing
a mathematical principle on a physical machine, namely a computer, [i]s not
a patentable application of that principle.”) (describing Gottschalk v.
Benson, 409 U.S. 63, 64 (1972)).
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Finally, we are not persuaded of Examiner error by Appellants’
argument that the claims are patent-eligible because “the claimed invention
makes an improvement on a specific routing process” and, thus, “makes
improvements to another technology or technical fields” (Reply Br. 6).
Rather than constituting an improvement in technology, the allegedly
improved routing process (i.e., evaluating map data in calculated routes to
detect and correct an undesired ffeeway-ramp-freeway route) is, in fact,
itself the abstract idea.
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claims 1—20 under 35 U.S.C. § 101. Therefore,
we sustain the Examiner’s rejection.
Obviousness
Independent Claims 1 and 11 and Dependent Claims 2, 3, 6—10, 12, 13, and
16-20
Appellants argue claims 1—3, 6—13, and 16—20 as a group (App. Br. 7—
12). We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because
none of Nesbitt, Beesley, and Yoshikawa discloses or suggests “examining
the calculated route in the forward direction in order to detect whether there
is a second point where the calculated route enters a freeway by shifting for
a limited distance to find whether there is a ramp-to-freeway transition [i.e.,
a situation where the calculated route exits a freeway and immediately enters
the same freeway],” as recited in claim 1 (App. Br. 7—10).
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In rejecting claim 1 under § 103(a), the Examiner acknowledges that
Nesbitt fails to specifically teach the argued limitation (Final Act. 9). And
the Examiner cites Beesley to cure the deficiency of Nesbitt {id. at 9—10
(citing Beesley H 14 and 68—77 and Fig. 8)).
Beesley is directed to a method and apparatus for estimating an
impedance (measured in time or distance) through a node at an intersection
between roads in a roadway network (Beesley, Abstract), and discloses in
paragraph 14, cited by the Examiner, that in one embodiment, a navigation
system comprises (1) a storage unit that stores data, including road-type
information that classifies roads into a hierarchy of route levels; (2) a route
calculation module; and (3) a correction module. Beesley discloses that the
route calculation module calculates a planned route between source and
destination locations over the network based on the stored data, and that the
correction module identifies undesirable shortcuts using the road-type
information (Beesley 114).
Figure 8 of Beesley shows a method for applying additional
impedance values through a node to discourage a route from being planned
through certain portions of the roadway network {id. 144). Referring to
Figure 8, Beesley discloses that when choosing the shortest distance route
between two points, it is possible that the shortest distance route will include
undesirable shortcuts {id. 168). Beesley, thus, describes that if a route were
planned between point D and point E in Figure 5, it would not be
advantageous to exit and immediately re-enter an interstate highway; the
incremental impedance factor for taking the exit ramp (road 204 in Figure 5)
would, thus, be increased to prevent the processor from directing the driver
off the interstate highway (road 202) at node 216 and back onto the same
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interstate via entry ramp (road 206), even if the combined distance of the
entry ramp and the exit ramp is less than the distance traveled by remaining
on the interstate {id. 173).
Addressing Appellants’ arguments in the Answer, the Examiner
references Beesely’s disclosure that the shortest distance route between two
points may include an undesirable shortcut, and the Examiner takes the
position that under a broadest reasonable interpretation, examining a route
between two points to identify undesired shortcuts, as disclosed in Beesley,
teaches “shifting for a limited distance to find whether there is a ramp-to-
ffeeway transition,” as recited in claim 1 (Ans. 6). Responding in the Reply
Brief, Appellants summarily assert that “[rjather than examining routes
between points, the present method starts from the first point and shifts for a
limited distance, which allows to [sic] reduce searching distance and
processing load” (Reply Br. 8). However, we fail to see why, and
Appellants do not adequately explain why, the Examiner’s position is
unreasonable or unsupported.
Appellants note in their Appeal Brief that the Specification provides
“an exemplary distance of 0.5 miles to 1.5 miles for the limited distance”
(App. Br. 8). And Appellants ostensibly take the position that the “limited
distance” must be a “predetermined distance” {see, e.g., id. at 4, 8; see also
Ans. 5).4 But we find nothing in the claim language that requires the
“limited distance” to be “predetermined” and, therefore, nothing to support
such an interpretation.
4 The Specification, at page 20, states, “The predetermined distance D1 for
searching the next freeway segment F3 may be set arbitrary, for example,
between 0.5 miles to 1.5 miles.”
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We also are not persuaded of Examiner error by Appellants’ further
argument that Yoshikawa, on which the Examiner relies, does not disclose
or suggest “retrieving one or more freeway segments between the first point
and the second point by searching all-freeway segments,” as recited in
claim 1 (App. Br. 11). Appellants argue that in Yoshikawa, a pathfinding
algorithm involving cost calculation is used, and that the route search
considers both freeway segments and non-freeway segments (id. at 11).
According to Appellants, Yoshikawa, thus, “searches both the non-freeway
segments] and the freeway segments using the cost calculation to find
suitable routes” whereas “the navigation system of the present invention
retrieves all of the freeway segments. . . without employing cost calculation”
(id.; see also Reply Br. 9).
Appellants’ argument is not persuasive at least because there is
nothing in the claim language that precludes the use of cost calculation in
retrieving the freeway segments. Instead, claim 1 merely recites “retrieving
one or more freeway segments between the first point and the second point
by searching all-freeway segments.”
Moreover, Yoshikawa teaches searching for a recommended route
(and one or more alternative routes) based on the received current position,
the destination, and/or a search condition (see Yoshikawa 1 59), and
expressly discloses that the search condition can be set so that the server
preferably searches highways (id. 1 59). Yoshikawa discloses that, if the
information distribution server distributes predicted traffic congestion
information, a next step of the route selection may include consideration of
traffic congestion, i.e., a cost calculation. However, as the Examiner
observes, “given the right conditions of cost calculations where it would be
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more costly to take a residential road than a freeway, Yoshikawa would
select a freeway segment” (Ans. 8). Also, in some circumstances, a route
may be selected for which the information distribution server did not
distribute predicted congestion information and, in that event, no cost
calculations are employed {id. (citing Yoshikawa 1 66)).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a). We also sustain the rejection of claims 2,
3, 6—10, 12, 13, and 16—20, which fall with claim 1.
Dependent Claims 4, 5, 14, and 15
Appellants do not provide any argument in support of the patentability
of claims 4, 5, 14, and 15 except to assert that Nomura fails to cure the
alleged deficiencies of Nesbitt, Beesley, and Yoshikawa, and that these
claims are allowable based on their dependence from independent claims 1
and 11 (App. Br. 12). We are not persuaded for the reasons outlined above
that the Examiner erred in rejecting claims 1 and 11. Therefore, we sustain
the Examiner’s rejection under 35 U.S.C. § 103(a) of dependent claims 4, 5,
14, and 15.
DECISION
The Examiner’s rejection of claims 1—20 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejections of claims 1—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
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