Ex Parte Wang

Patent Trial and Appeal Board

May 31, 2018

14711366 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/711,366 05/13/2015 Liang Wang
111332 7590 06/04/2018
Perspectives Law Group, Corp.
3150 De La Cruz Blvd.
Suite 206
Santa Clara, CA 95054
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.
59-214 1060
EXAMINER
MALHOTRA, SANJEEV
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
efs@ipinvestlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIANG WANG
Appeal2017-007579
Application 14/711,3 66
Technology Center 3600
Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-20. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 "The real party in interest is Telenav, Inc." (Appeal Br. 3.)
Appeal2017-007579
Application 14/711,3 66
STATEMENT OF THE CASE
According to the Appellant, "[ a ]n embodiment of the present
invention relates generally to a navigation system, and more particularly to a
system with an output control." (Spec. ,r 1.)
Representative Claim
1. A method of operation of a navigation system
compnsmg:
calculating a location for representing the location of a device;
and
generating with a control unit an output characteristic based on
the location, the output characteristic for controlling one
or more characteristic or trait of a sound or an image
utilized in communicating a content communication to a
user through the device with the output characteristic
tailored to be different from or to exceed noise at the
location.
Gutman
Nakadai
Gunther
References
US 2012/0173135 Al
US 2014/0200887 Al
US 2014/0278059 Al
Rejections
July 5, 2012
July 17, 2014
Sept. 18, 2014
The Examiner rejects claims 1-20 under 35 U.S.C. § 101 as reciting a
judicial exception without significantly more. (Non-Final Action 3.)
The Examiner rejects claims 1-20 under 35 U.S.C. § I03(a) as
unpatentable over Gunther, Gutman, and Nakadai. (Non-Final Action 6-11.)
ANALYSIS
Claims 1, 11, and 16 are the independent claims on appeal, with the
rest of the claims on appeal (i.e., claims 2-10, 12-15, and 17-20) depending
directly or indirectly therefrom. (See Appeal Br., Claims App.) We select
2
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Application 14/711,3 66
independent claim 1 as the representative claim on which to decide the
issues being reviewed on appeal. 2
Independent claim 1 is a method claim reciting only two steps, namely
a "calculating" step and a "generating" step. (Appeal Br., Claims App.)
As for the "calculating" step, independent claim 1 requires the
calculation of "a location for representing the location of a device." (Appeal
Br., Claims App.) Thus, the performance and completion of this calculating
step yields nothing more than a datum representing a location.
Although a "device" is recited in the calculation step, it plays no role
in the actual enactment of this calculation step. Rather, the word "device"
subsists in the claim language only to describe the content of the datum
calculated. Independent claim 1 does not require the "device" to contribute
to, participate in, or even be aware of the calculation of location-representing
information. For example, claim 1 does not require the device to somehow
apprise, whatever or whoever is doing the calculation, of its whereabouts.
As for the "generating" step, independent claim 1 requires the
generation, "with a control unit," of "an output characteristic based on the
location." (Appeal Br., Claims App.) Thus, the performance and
completion of this step yields nothing more than a datum corresponding to
an output characteristic.
2 Independent claims 1, 11, and 16 are argued as a group for both grounds of
rejection on review. (See Appeal Br. 10, 20.) "When multiple claims
subject to the same ground of rejection are argued as a group or subgroup by
appellant, the Board may select a single claim from the group or subgroup
and may decide the appeal as to the ground of rejection with respect to the
group or subgroup on the basis of the selected claim alone." 37 C.F.R.
§ 4I.37(c)(l)(iv). Accordingly, independent claims 1, 11, and 16 "fall
together." Id.
3
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Application 14/711,3 66
As indicated above, independent claim 1 does require the generation
of the output-characteristic datum to be done "with a control unit" and
"based on the location." (Appeal Br., Claims App.) However, claim 1 does
not specify how, or even if, the control unit obtains location-related
information on which to "base" this generation. Moreover, claim 1 does not
require the control unit to do anything further with the output-characteristic
datum once it is generated.
Independent claim 1 does also specify that the output-characteristic
datum is "for controlling one or more characteristic or trait of a sound or an
image utilized in communicating a content communication to a user through
the device," and is "tailored to be different from or to exceed noise at the
location." (Appeal Br., Claims App.) But claim 1 does not require the
recited "device " "sound " "image " "content communication " and "noise "
' ' ' ' '
to contribute to, participate in, or otherwise influence the generation of the
output-characteristic datum. These words subsist in the claim language only
to describe the content of the output-characteristic datum being generated.
The Appellant implies during briefing that independent claim 1
encompasses the "aspect of receiving and outputting information and
interfacing/interacting with a user." (Appeal Br. 11.) Along this same line,
the Appellant appears to say that the steps recited in independent claim 1
result in "providing communication" and/or "outbound communications."
(Id. at 13, 17.) However, claim 1 does not require the receipt of information,
does not require the outputting of information, does not require interfacing
or interacting with a user, and does not require the creation and/or
transmission of a communication. Claim 1 only requires the calculation of
4
Appeal2017-007579
Application 14/711,3 66
information (i.e., the location-representing datum) and the generation of
information (i.e., the output-characteristic datum).
The Appellant also implies during briefing that independent claim 1
requires "controlling," "adjusting," or otherwise influencing sound/image
traits of an outbound communication. (Appeal Br. 14, 17 .) Put another way,
the Appellant contends that claim 1 requires an "implementation" of the
output-characteristic datum "to control how a device utilizes sound to
communicate the content communication." (Reply Br. 6.) But claim 1 does
not recite any such "controlling," "adjusting," or "implementing" steps. As
indicated above, independent claim 1 does not require anything further from
the output-characteristic datum once it is generated.
The Appellant additionally implies that independent claim 1 requires a
"tailoring" of the output characteristic in order to make it "specifically
distinguishable for the user for specific location." (Appeal Br. 13.) In kind,
the Appellant asserts that, in the claimed invention, there is an accustoming
of the output characteristic "according to particular locations" and/or
"specifically for a location." (Id. at 17, 22.) However, claim 1 does not
require an assessment of noise at the calculated location, and/or a tailoring of
the output characteristic according to this noise assessment. Independent
claim 1 only requires that the output characteristic be generated "based on
the location" and be "different from or to exceed noise at the location." (Id.,
Claims App.) In the method recited in claim 1, the generated datum could
be the same for all calculated locations, as long as its generation is "based
on" the location, and the so-generated datum corresponds to an output
characteristic that exceeds noise (albeit perhaps non-assessed) at the based-
on location.
5
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Application 14/711,3 66
Thus, at the end of the day, independent claim 1 requires only the
calculation of a datum (by something or someone) representing a location;
and, based on this location, the generation of a datum (by a control unit)
having a value (i.e., content) corresponding to a sound/image trait that would
be recognizable at this location.
35 US.C. § 101 Rejection
The Examiner determines that the independent claims on appeal do
not survive the two-step Alice test3 for patent eligibility. (Non-Final
Action 4.) We have carefully considered the Appellant's arguments
regarding the incorrectness of the Examiner's determination (see Appeal
Br. 10-19; see also Reply Br. 3---6); but we disagree with the Appellant's
position. We disagree because, when we apply the two-step Alice test to
independent claim 1, we reach the same conclusion as the Examiner, namely
that it does not pass muster under 35 U.S.C. § 101.
As for the first step of the Alice test, we agree with the Examiner that
independent claim 1 is directed to a concept that falls within the
information-handling category of abstract ideas. (See Answer 3.) As
discussed above, claim 1 recites only two steps, one requiring the calculation
of information and the other requiring the generation of information. A
3 The Alice test entails two steps for distinguishing between an "abstract
idea[]" and a "patent-eligible application[]" of an abstract idea. Alice Corp.
Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). The first step of
the Alice test is to determine whether the claims at issue are "directed to" an
abstract idea. Id. If so, the inquiry proceeds to the second step of the Alice
test 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.
6
Appeal2017-007579
Application 14/711,3 66
determination that such an information-focused concept is an abstract idea is
aligned with controlling case law. 4
As for the second step of the Alice test, independent claim 1 does
require the "control unit" to generate the output-characteristic datum.
However, the Specification conveys that the claimed control unit can be a
"processor" that "can execute" software. (Spec. ,r,r 69-70, 91-93). Thus,
we agree with the Examiner that this additional element does only the
generic computer function of generating ( e.g., calculating, determining,
identifying, etc.) the output-characteristic datum. (See Answer 5.) As for
the "ordered combination" of the claimed control unit, as indicated above,
independent claim 1 does not require the control unit to communicate or
coordinate with any other elements.
The Appellant argues that independent claim 1 is directed "to an
improvement in the functioning of a computer" with respect to
"communicating the content to [a] user." (Appeal Br. 14.) This argument
might have merit if independent claim 1 required the output-characteristic
datum to partake in the communication of content to user. But, as discussed
above, independent claim 1 does not require anything further of the output-
characteristic datum once it is generated. None of the alleged advantages,
improvements, or solutions listed by the Appellant (see id. at 10-15)
transpire by the mere generation of the output-characteristic datum.
For similar reasons, the Appellant's comparison to cases such as DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); and Bascom Glob.
4 See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016).
7
Appeal2017-007579
Application 14/711,3 66
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir.
2016) miss the mark. (See Appeal Br. 13-16; Reply Br. 5---6.) None of these
cases dealt with a claimed concept in which data was merely generated,
without any special software or innovative programming, and then not
further implemented to achieve an envisioned outcome. We note that, in
contrast, the claim at issue in Electric Power required the step of "deriving a
composite indicator of reliability that is an indicator of power grid
vulnerability," (830 F.3d at 1352.) but did not require anything further of
this composite indicator once derived.
Accordingly, we agree with the Examiner that independent claim 1 is
directed to an abstract idea and that any additional elements recited in
independent claim 1 do not amount to significantly more than the abstract
idea itself. Thus, we sustain the Examiner's rejection of independent
claim 1 under 35 U.S.C. § 101, and claims 2-20 fall therewith. 5
35 USC§ 103 Rejection
The Examiner determines that the method recited in independent
claim 1 would have been obvious over the collective teachings of Gutman,
Gunther, and Nakadai. (See Non-Final Action 6-8.) We have carefully
considered the Appellant's arguments regarding error in the Examiner's
determination (see Appeal Br. 20-28; see also Reply Br. 6-11 ), but are not
persuaded thereby. We are unpersuaded because the Appellant's arguments
5 Independent claims 1, 11, and 16 fall together. 37 C.F.R. § 4I.37(c)(l)(iv).
As for the dependent claims, the Appellant argues only that they "are
believed to be patent eligible since they include all [ of] the limitations set
forth in the independent claim from which they depend and claim additional
patent eligible combinations thereof." (Appeal Br. 19.)
8
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Application 14/711,3 66
overlook teachings by Gunther and/or misread the limitations recited in
independent claim 1.
The Appellant does not dispute that the prior art teaches the creation
and transmission of a communication based on a calculated location.
Rather, the Appellant acknowledges that Gunther teaches "communicating
'warning or notification of a possible collision."' (Appeal Br. 23, emphasis
omitted.) 6 However, the Appellant argues that Gunther does not teach
"controlling any characteristic or trait of sounds or images used to
communicate the 'warning or notification."' ( Appeal Br. 23.) We are not
persuaded by this argument because Gunther specifically teaches that its
communication can constitute, for example, "flashing lights." (See Gunther
,r 56.) One of ordinary skill in the art would infer that the output
characteristic corresponding to Gunther's flashing lights would include a
control parameter for a "physical" image trait, such as the "tempo" or
"timing" of the flashing lights. 7
The Appellant also argues that Gunther does not "tailor" physical
characteristics "according to the location." (Appeal Br. 24.) We are not
persuaded by this argument because, as discussed above, independent
claim 1 does not require the output characteristic to be "tailored" on a
location-by-location basis, independent claim 1 only requires the output
characteristic to be "tailored" to be "different from or to exceed noise at the
6 In Gunther, this warning is precipitated by the location of a vehicle relative
to potentially collision-causing obstacles. (See Gunther ,r,r 28-32.)
7 The Specification indicates that "[ t ]he output characteristic 208 can include
a magnitude, a sharpness or a contrast, a tempo or a timing, or a combination
thereof." (Spec. ,r 41.)
9
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Application 14/711,3 66
location." (Appeal Br., Claims App.) And one of ordinary skill in the art
would infer that the physical traits of Gunther's flashing lights would be
tailored to be different from or exceed expected noise at a collision-
vulnerable location, 8 so as to be noticeable and effectively serve as a
wammg.
Accordingly, the Appellant does not establish adequately that the
Examiner errs in determining that the method recited in independent claim 1
would have been obvious over the prior art. Thus, we sustain the
Examiner's rejection of independent claim 1 under 35 U.S.C. § 103 as
unpatentable over Gutman, Gunther, and Nakadai; and claims 2-20 fall
therewith. 9
DECISION
We AFFIRM the Examiner's rejections of claims 1-20.
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
8 The Specification indicates that noise can be "sound, light, factors
influencing communication medium, or a combination thereof. (Spec. ,r 39.)
9 Independent claims 1, 11, and 16 fall together. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv).
As for the dependent claims, the Appellant states that they "fall with the
independent claims from which they depend." (Appeal Br. 27.)
10