Ex Parte Ward et alDownload PDFPatent Trial and Appeal BoardSep 26, 201310794361 (P.T.A.B. Sep. 26, 2013) 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. 10/794,361 03/05/2004 Derek K. Ward 1302-151 8385 109667 7590 09/27/2013 Lockheed Martin MFC and Withrow & Terranova, PLLC 100 Regency Forest Drive Suite 160 Cary, NC 27518 EXAMINER SWARTHOUT, BRENT ART UNIT PAPER NUMBER 2689 MAIL DATE DELIVERY MODE 09/27/2013 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 DEREK K. WARD and MARGARET K. WALLOCH ____________ Appeal 2011-004434 Application 10/794,361 Technology Center 2600 ____________ Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and CARLA M. KRIVAK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004434 Application 10/794,361 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-7, 11, 12, 16-19, 22-25, 28, 29, 32, 35-41, 43-50, 52-59, 61-64, and 66-80.1 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. INVENTION This invention relates to "a method and apparatus for navigating a ground vehicle." (Spec. 1). Claim 1, reproduced below, is representative of the claimed subject matter: 1. A computer-implemented method for generating a dynamic mobility map, comprising: [a] classifying by type a plurality of ground objects [a1] represented in a data set comprised of overhead imagery data; and [b] classifying the objects through application of dynamic data pertaining to those ground objects. (Steps lettered and disputed limitation emphasized). REJECTIONS R1. The Examiner rejected claims 1-7, 11, 12, 16-19, 28, 29, 32, 35-41, 43-50, 61-64, 66-74, and 76-80 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. R2. The Examiner rejected claims 1, 2, 11, 12, 16, 17, 22, 23, 28, 29, 32, 35-39, 43-48, 52-57, 61, 62, 66-72, 76, 77, and 80 under 35 U.S.C. 1 We note that claims 67-74 were omitted from the Nov. 3, 2009 Final Office Action Summary page, but were rejected by the Examiner. Appeal 2011-004434 Application 10/794,361 3 § 103(a) based upon the combined teachings and suggestions of Feyereisen (US Patent 6,289,277 B1) and Block (US Patent Application Publication 2001/0035832 A1). R3. The Examiner rejected claims 3, 4, 6, 18, 19, 24, 25, 40, 41, 49, 50, 58, 59, 63, 64, 73, 74, 75,2 78, and 79 under 35 U.S.C. § 103(a) based upon the combined teachings and suggestions of Feyereisen, Block, and Takayama (US Patent 6,748,316 B2). R4. The Examiner rejected claims 5 and 7 under 35 U.S.C. § 103(a) based upon the combined teachings and suggestions of Feyereisen, Block, Takayama, and Chou (US Patent 6,915,297 B2). GROUPING OF CLAIMS Based on Appellants' arguments, we decide the appeal of rejection R1 under 35 U.S.C. § 101 of method claims 1-7, 11, 12, 28, 29, 32, 35-41, 61- 64, 66-73, and 76-80 on the basis of representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2004).3 2 The Examiner included claim 75 in rejection R3 (Advisory Action mailed Jan. 14, 2010, page 3; "Claim 75 was inadvertently omitted in the last rejection and should have been listed as rejected in Paragraph No. 4 as being unpatentable over Feyereisen et al. in view of Block and Takayama et al., it being noted that claim 75 discloses the exact same limitations as recited by claim 49 which was properly included in the stated rejection in paragraph No. 4."). 3 See MPEP Rev. 8, July 2010. Note: In the instant appeal, Appellants filed a Notice of Appeal on Feb. 1, 2010. The date of filing of the Notice of Appeal determines which set of rules applies to an Ex Parte appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004 version of the Board Rules last published in the 2011 edition of Title 37 of the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the appeal. Appeal 2011-004434 Application 10/794,361 4 Based on Appellants' arguments, we decide the appeal of rejection R1 under 35 U.S.C. § 101 of storage medium claims 16-19, 43-50, and 74 on the basis of representative claim 16. (Id.). We address the rejections R2–R4 separately, infra. ANALYSIS R1. REJECTION UNDER § 101 A. METHOD CLAIMS Our reviewing court guides “the Supreme Court has made clear that a patent claim's failure to satisfy the machine-or-transformation test is not dispositive of the § 101 inquiry.” Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (citing Bilski v. Kappos, 130 S.Ct. 3218, 3227 (2010)). However, if the “acts” of a claimed process manipulate only numbers, abstract concepts or ideas, or signals representing any of the foregoing, the acts are not being applied to appropriate subject matter. See Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972). If a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent-eligible under § 101. CyberSource, 654 F.3d at 1372-73. In considering the language of representative method claim 1 as a whole, we conclude the method of claim 1 could be performed by a person as a mental step, or by writing on a piece of paper4 (e.g., [a] “classifying by a plurality of ground objects . . .” (a human classifier classifying ground 4 “Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Appeal 2011-004434 Application 10/794,361 5 objects in her mind or on paper) and [b] “classifying the objects through application of dynamic data pertaining to those ground objects” (the human classifier classifying objects by viewing the objects or paper representations of the objects as dynamic data pertaining to those ground objects)). Because we conclude the scope of claim 1’s method steps covers functions that can be performed in the human mind, or by a human using pen and paper (e.g., a data set represented using pen and paper), unpatentable mental processes fall within the subject matter of claim 1.5 Therefore, we sustain the Examiner's §101 rejection R1 of method claim 1, and method claims 2-7, 11, 12, 28, 29, 32, 35-41, 61-64, 66-73, and 76-80, which fall therewith. B. STORAGE MEDIUM CLAIMS Although CLS Bank issued as a plurality opinion, in that case a majority of the court held that system claims that closely track method claims and are grounded by the same meaningful limitations will generally rise and fall together. Id. at 1274 n.1 (Lourie, Dyk, Prost, Reyna, & Wallach, JJ., plurality opinion) 5 See Cybersource, 654 F.3d at 1372 (“It is clear that unpatentable mental processes are the subject matter of claim 3. All of claim 3’s method steps can be performed in the human mind, or by a human using a pen and paper. Claim 3 does not limit its scope to any particular fraud detection algorithm, and no algorithms are disclosed in the ’154 patent’s specification. Rather, the broad scope of claim 3 extends to essentially any method of detecting credit card fraud based on information relating past transactions to a particular “Internet address,” even methods that can be performed in the human mind.”); see also In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007) (“The four categories [of § 101] together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.”) . Appeal 2011-004434 Application 10/794,361 6 (“[E]ight judges, a majority, have concluded that the particular method, medium, and system claims at issue in this case should rise or fall together in the § 101 analysis.”). (Accenture Global Services v. Guidewire Software, Inc., --- F.3d ----, 2013 WL 4749919 (Fed. Cir.) (decided Sept. 5, 2013.)) Regarding storage medium claims, we conclude Appellants' storage medium claims recite essentially similar limitations. (See, e.g., claims 1 and 16, which recite similar language in the body of each claim). Therefore, we conclude representative storage medium claim 16, and claims 17-19, 43-50, and 74, fall with Appellants' method claims, when we apply the guidance of the recent Federal Circuit decision in Accenture Global Services, as discussed above.6 7 We also sustain the rejection R1 of storage medium claims 16-19, 43- 50, and 74 under 35 U.S.C. § 101, because the claims do not exclude the claimed "program storage medium" from including "propagated signals." (See Spec. 30). Signals are not patentable eligible subject matter under § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). See 6 In the event of further prosecution, we leave it to the Examiner to consider if apparatus claims 22-25 should also be rejected under § 101, applying the guidance of CyberSource. (cf. claims 1 and 22). 7 In the event of further prosecution, we leave it to the Examiner to consider if apparatus claims 22-25 should also be rejected under § 112, second paragraph, because independent claim 22 recites both an apparatus and a method of using the apparatus. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (citing Ex parte Lyell, 17 U.S.P.Q.2d 1548 (B.P.A.I. 1990))(“[R]eciting both an apparatus and a method of using that apparatus [in a single claim] renders [such] claim indefinite under section 112, paragraph 2.”) Appeal 2011-004434 Application 10/794,361 7 also MPEP § 2106(I) (8th ed. Rev. 9 Aug. 2012) and Ex parte Mewherter, 2013 WL 3291360 (PTAB May 8, 2013) (precedential). R2. REJECTION UNDER § 103 A. LIMITATION [A1] "OVERHEAD IMAGERY DATA" Regarding the claim 1 limitation [a1] "overhead imagery data " and commensurate limitations recited in independent claims 1, 16, 22, 61, and 76, Appellants contend Feyereisen’s use of weather service data would not have taught or suggested the claimed "overhead imagery data," because, inter alia, Feyereisen does not state what kind of weather data is used. (App. Br. 19). Appellants' contention is not persuasive. We find Feyereisen's weather service data would have taught or suggested the broadest reasonable interpretation of "overhead imagery data." (Ans. 9-10). We agree with the Examiner that Feyereisen's weather service data would have taught or suggested dynamic overhead satellite imagery which is a commonly known type of weather data used to indicate weather conditions.8 (Ans. 9). We note that satellites take imagery data from overhead (i.e., from orbit) and that satellite weather data is dynamic. (Ans. 6, 9-10; claim 1[b] "dynamic data"). Moreover, Appellants fail to cite a more narrow definition of "overhead imagery data" in the Specification.9 (See Ans. 18; Spec. 11-12). For these reasons, on this record, we are not persuaded of Examiner error. 8 “[A]nalysis need not seek out precise teachings directed to the specific matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc. 550 U.S. 398, 418 (2007). 9 Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood Appeal 2011-004434 Application 10/794,361 8 B. LIMITATIONS [A] AND [B] Appellants contend Feyereisen and Block would not have taught or suggested [a] "classifying by type a plurality of ground objects" as recited in claim 1 and commensurate limitations of independent claims 16, 22, 28, 43, 52, 61, and 76. (App. Br. 20). Appellants also contend Feyereisen would not have taught or suggested [b] "classifying the objects through application of dynamic data pertaining to those ground objects." (App. Br. 20-21). Specifically, Appellants contend Block would not have taught or suggested [a] "classifying by type a plurality of ground objects" as recited in claim 1 because, inter alia, Block does not classify ground objects by type, but "merely displays their presence." (Reply Br. 13). Appellants' contention is not persuasive because Figs. 7A and 7B of Block show classifying and displaying at least the following ground objects by type (a) terrain 1300, (b) man-made obstacles 1500, and (c) airport (Ans. 5; Block Figs. 7A and 7B; ¶[0064]). Block classifies the objects and uses different symbols to display the different classified object types, such as curved lines for terrain and inverted "V's" for man-made objects. (Id.). Appellants also contend Feyereisen would not have taught or suggested [a] "classifying by type a plurality of ground objects" because by a person of experience in the field of the invention." Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). Appeal 2011-004434 Application 10/794,361 9 Feyereisen "only teaches classification of "weather hazards," which are not "ground objects." (Ans. 20). Appellants' contention is not persuasive. Feyereisen teaches classifying and displaying "geographic, topographical" features such as coastlines. (Col. 6, ll. 27-30). Feyereisen also classifies volcanic activity, which would have taught or suggested classifying volcano ground objects because volcanic activity arises from volcano ground objects. (Col. 5, ll. 27- 34). Feyereisen also uses color transparency to classify and display "multiple elements such as weather and land that might occur in the same location." (Id.). We find Feyereisen's classifying and displaying geographic, topographical features, volcanic activity, and weather and land at the same location, by application of a data set comprised of dynamic satellite weather data, would have taught or suggested claim 1 limitations [a], [a1], and [b]. (Col. 2, ll. 53-56; col. 5, ll. 27-34; col. 6, ll. 27-30). The Examiner also finds Feyereisen, as modified by Block's classification of ground objects, would have taught or suggested [a] "classifying by type a plurality of ground objects." (Ans. 5). Appellants fail to rebut the Examiner's findings. We further find Block's classifying ground objects through the application of database information that is updated on a regular basis also would have taught or suggested [b] "classifying the objects through application of dynamic data pertaining to those ground objects." (¶[0055]). For these reasons, on this record, we are not persuaded of Examiner error. Appeal 2011-004434 Application 10/794,361 10 C. FEYEREISEN TEACHES AWAY Appellants contend Feyereisen's classifying weather objects “teaches away” from Appellants' implementation of the present invention because the Specification teaches, in one embodiment, that clouds can be removed from the image. (App. Br. 21-22). Appellants' Specification discloses classifying weather objects by classifying objects as cloud artifacts and classifying ground objects. (Spec. 17; App. Br. 22). Feyereisen teaches classifying weather objects and also ground objects. (Col. 3, ll. 51-56; col. 6, ll. 27-30). Because both Feyereisen and Appellants' Specification teach classifying weather objects and ground objects, we find Feyereisen does not “teach away” from Appellants' invention.10 D. NO REASONABLE EXPECTATION OF SUCCESS Appellants contend, "Feyereisen et al. does not teach anything about "overhead imagery data," or "classifying ground objects," or "classifying ground objects" from "overhead imagery data." (App. Br. 23). Appellants' contention is not persuasive. As discussed above, we find Feyereisen alone or in combination with Block would have taught or suggested "classifying ground objects" from "overhead imagery data." (Ans. 8-10). For these reasons, on this record, we are not persuaded of Examiner error. 10 “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation marks omitted). Appeal 2011-004434 Application 10/794,361 11 E. Notwithstanding Appellants' arguments, we find the weight of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness for rejection R2 of independent claims 1, 16, 22, 28, 43, 52, 61, and 76. Accordingly, we sustain rejection R2 of claims 1, 16, 22, 28, 43, 52, 61, and 76, and of dependent claims 2, 11, 12, 17, 23, 29, 32, 35-39, 44-48, 53-57, 62, 66-72, 77, and 80, which were not separately argued. (App. Br. 25). R3-R4 Appellants urge the claims rejected under rejections R3-R4 are patentable for the same reasons we did not find persuasive regarding rejection R2 and representative claim 1. (App. Br. 25-26). Therefore, we sustain the Examiner's rejections R3-R4 for the same reasons discussed above regarding the rejection R2 of claim 1. DECISION We affirm the Examiner's rejection R1 of claims 1-7, 11, 12, 16-19, 28, 29, 32, 35-41, 43-50, 61-64, 66-74, and 76-80 under § 101. We affirm the Examiner's rejections R2-R4 of claims 1-7, 11, 12, 16-19, 22-25, 28, 29, 32, 35-41, 43-50, 52-59, 61-64, and 66-80 under § 103. No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED Vsh Copy with citationCopy as parenthetical citation