Gibson, George Amos. et al.

Patent Trials and Appeals Board

May 8, 2020

13435419 - (D) (P.T.A.B. May. 8, 2020)

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.
13/435,419 03/30/2012 George Amos Gibson 20111143-US-NP 2437
144759 7590 05/08/2020
Gibb & Riley, LLC
FREDERICK W. GIBB, III
537 Ritchie Highway
Suite 2F
Severna Park, MD 21146
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
05/08/2020 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):
Conduent.PatentDocketing@conduent.com
support@gibbiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGE AMOS GIBSON, MARINA THARAYIL,
BARRY P. MANDEL, and POLYKARPOS PAVLIDIS
____________

Appeal 2019-002115
Application 13/435,419
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MATTHEW S. MEYERS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1, 2, 4, 6, 7, 9, 11, 12, 14, 16, 17, 19, and 21–28.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
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THE INVENTION
Appellant claims route planning systems, methods, and devices, and
more particularly utilizing the purpose of the trip to refine user preferences
when selecting between multiple possible routes. (Spec. ¶ 1).
Claim 1 is representative of the subject matter on appeal.
1. A method of providing route guidance comprising:
maintaining a plurality of user preferences within a non-
volatile storage medium of a route guidance device;
receiving a beginning location and an ending location of
a trip from a user into said route guidance device;
receiving a trip purpose relating specifically to said trip
from said user into a dedicated trip purpose input field of said
route guidance device;
automatically generating multiple different routes
between said beginning location and said ending location using
said route guidance device;
automatically filtering said user preferences by
automatically selecting ones of said user preferences that match
said trip purpose and automatically deselecting ones of said
user preferences that do not match said trip purpose to create a
subset of less than all of said user preferences that match said
trip purpose without further input from said user to produce
purpose-specific preferences of less than all said user
preferences using said route guidance device;
automatically changing a weighting priority of said
purpose-specific preferences based on said trip purpose
received from said user and without further input from said user
to produce purpose-specific weighted preferences using said
route guidance device;
automatically ranking said multiple different routes by
ranking routes that match more of said purpose-specific
weighted preferences ahead of routes that match less of said
purpose-specific weighted preferences to produce a ranked
order, using said route guidance device; and
automatically outputting said multiple different routes in
said ranked order to said user from said route guidance device.
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THE REJECTION
Claims 1, 2, 4, 6, 7, 9, 11, 12, 14, 16, 17, 19, and 21–28 are rejected
under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1, 2, 4, 6, 7, 9, 11, 12, 14, 16,
17, 19, and 21–28 under 35 U.S.C. § 101.
The Supreme Court
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. First, . . .
determine whether the claims at issue are directed
to one of those patent-ineligible concepts. If so, . .
. then ask, “[w]hat else is there in the claims before
us?” To answer that question, . . . 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. [The
Court] described step two of this 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.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 72–73 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
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explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two-prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).
The Examiner determines that the claims are directed to providing
route guidance which includes collecting information, analyzing information
to rank routes and outputting the rankings. (Final Act. 5). The Examiner
determines the claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception because the
claims do not recite an improvement to another technology or technical field
nor do they recite an improvement to the functioning of the computer itself.
Id.
The Specification describes that the claimed method provides route
guidance and maintains a plurality of the user preferences within a non-
volatile medium of at least one computerized device. (Spec. ¶ 3). The user
preferences are categorized into different pre-established trip purposes. The
method receives a beginning location and an ending location of a trip and a
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trip purpose. (Spec. ¶ 3). The user enters the point to point travel
requirements and information about travel preferences (travel time, total
waiting time, total fare, amount of walking involved, etc.). (Spec. ¶ 27). In
response, a number of alternative routes are provided as output to the user.
(Spec. ¶ 27). Therefore, the Specification discloses that information about
the travel destination is entered by the user, that information is processed by
the method to determine preferences and information is outputted in the
form of alternative routes. As such, the Specification supports the
Examiner’s determination that the claims recite collecting information,
analyzing information, and outputting information.
Consistent with this disclosure, claim 1 recites “receiving a beginning
location” (receiving information), “receiving a trip purpose” (receiving
information), “generating multiple different routes” (analyzing information),
“filtering . . . user preferences” (analyzing information), “changing a
weighting priority” (analyzing information) and “outputting said multiple
different routes” (outputting information). As such, the recitations in claim
1 also support the Examiner’s determination that the claims recite collecting
information, analyzing information, and outputting information.
We thus agree with the Examiner’s findings that the claims are
directed to collecting information, analyzing information, and outputting
information. The Federal Circuit has treated analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more, as essentially mental processes within the abstract-idea category.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (determining claims directed to certain arrangements involving
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contractual relations are directed to abstract ideas). Thus, we find that the
claims recite the judicial exception of a mental process.
Turning to the second prong of the “directed to test,” claim 1 merely
requires a “route guidance device.” The Specification discloses that the
route guidance device can be various computerized devices. (Spec. ¶ 9).
The recitation of the words “route guidance device” does not impose “a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance, 84
Fed. Reg. at 52. We find no indication in the Specification, nor does
Appellant directs us to any indication, that the operations recited in
independent claim 1 invoke any inventive programming, require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
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In this regard, the recitation of a route guidance device does not affect
an improvement in the functioning of a computer or other technology, does
not recite a particular machine or manufacture that is integral to the claims,
and does not transform or reduce a particular article to a different state or
thing. Id. Thus, claim 1 recites a judicial exception that is not integrated
into a practical application, and claim 1 is directed to an “abstract idea.”
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas, the claims must include an
“inventive concept” in order to be patent eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73 ).
The introduction of a computer into the claims does not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer”
simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to
“implemen[t]” an abstract idea “on . . . a
computer,” that addition cannot impart patent
eligibility. This conclusion accords with the
preemption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers,
wholly generic computer implementation is not
generally the sort of “additional featur[e]” that
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provides any “practical assurance that the process
is more than a drafting effort designed to
monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. They do not.
Taking the claim elements separately, the function performed by the
route guidance device, i.e., computer, at each step of the process is purely
conventional. Using a computer to retrieve, select, and apply decision
criteria to data and modify the data as a result amounts to electronic data
query and retrieval—one of the most basic functions of a computer. All of
these computer functions are well-understood, routine, conventional
activities previously known to the trading industry. See Elec. Power Grp.,
830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming.”). In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, “even if a process of collecting and analyzing information is ‘limited
to particular content’ or a particular ‘source,’ that limitation does not make
the collection and analysis other than abstract.” SAP Am. Inc. v. InvestPic,
LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
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access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (holding the sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction);
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (holding that sequence of data retrieval, analysis,
modification, generation, display, and transmission was abstract); Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017) (holding sequence of processing, routing, controlling, and
monitoring was abstract). The ordering of the steps is, therefore, ordinary
and conventional.
The claims do not, for example, purport to improve the functioning of
the route guidance device. As we stated above, the claims do not effect an
improvement in any other technology or technical field. The Specification
spells out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of information access under different
scenarios. (Spec. ¶ 9). In particular, the Specification discloses that the
route guidance device may be a personal computer, personal digital
assistant, cell phones, and global positioning system units having a non-
volatile storage medium operatively connected to a processor. Thus, the
claims at issue amount to nothing significantly more than instructions to
apply the abstract idea of providing route guidance using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226.
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We have reviewed all the arguments (Appeal Br. 19–28; Reply Br. 1–
6) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. However, for purposes of completeness, we will address
various arguments in order to make individual rebuttals of the same.
Appellant argues all of the claims as a group. (Appeal Br. 19).
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv)
(2013), we limit our discussion to claim 1, and all other claims on appeal
stand or fall together with claim 1.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims do not attempt to preempt all ways of
performing route guidance. (Appeal Br. 20). “While preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir.), cert. denied, 136 S.
Ct. 701 (2015) (“[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract.”). And, “[w]here a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa, 788 F.3d at 1379.
We are not persuaded that the claimed invention is analogous to the
claimed invention in McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299 (Fed. Cir. 2016). (Appeal Br. 21–22). The claims in McRO were
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directed to a specific asserted improvement in computer animation, i.e., the
automatic use of rules of a particular type. McRO, 837 F.3d at 1313. The
McRO claims were directed to a patentable, technological improvement over
the existing, manual 3-D animation techniques. The McRO claims used the
limited rules in a process specifically designed to achieve an improved
technological result in conventional industry practice. There is no technical
improvement recited in the instant claims.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims are similar to the claims in BASCOM
Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016). According to Appellant, the claims provide a technology-specific
way to interact with the technology, which makes it easier for individuals
using such technology. (Appeal Br. 22). Contrary to Appellant’s
arguments, the Federal Circuit did not find that the claims in BASCOM
recited an inventive concept because the claims recited a specific
implementation of the abstract idea of filtering content. Rather, in
BASCOM, the Federal Circuit followed the Supreme Court’s guidance for
determining whether the claims recite an inventive concept set forth in Alice,
134 S. Ct. at 2357–60.
In Alice, the Supreme Court explained that, under the second step of
the patent-eligibility analysis, “the relevant question is whether the claims
here do more than simply instruct the practitioner to implement the abstract
idea of intermediated settlement on a generic computer.” 134 S. Ct. at 2359.
The Supreme Court also provided examples of claims that represent more
than instructions to implement an abstract idea on a generic computer, such
as claims that purport to improve the functioning of the computer itself and
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claims that effect an improvement in any other technology or technical field.
Id. at 2359–60.
Turning to BASCOM, the Federal Circuit held “[t]he inventive
concept described and claimed in the ’606 patent is the installation of a
filtering tool at a specific location, remote from end-users, with
customizable filtering features specific to each end user.” 827 F.3d at 1350.
In determining this feature to be an inventive concept, the Federal Circuit
explained that the remote location of a filtering tool having customizable
user-specific filtering features provides the filtering tool both the benefits of
a filter on a local computer and the benefits of a filter on the ISP server and
is a technical improvement over prior art ways of filtering content. Id. at
1350–51. Notably, the Federal Circuit specifically determined that “the
claims may be read to ‘improve[] an existing technological process.’” Id. at
1351 (citing Alice, 134 S. Ct. at 2358). We agree with the Examiner that
using a trip purpose to define a set of preferences does not involve a
technology or technological process. (Ans. 5). As we stated above, there is
no improvement to existing technology or technological process recited in
claim 1.
Appellant argues that because the claims change the way users
interact with the menu screens of the computerized route guidance system,
they cannot be considered as steps that could be performed mentally or on
paper. (Appeal Br. 25). Specifically, Appellant argues that claim 1 very
specifically alters menu selections of user preference screens within
computerized route guidance systems based on a newly created input field.
(Appeal Br. 25). This argument is not persuasive because the claim 1 does
not recite menu screens.
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Appellant also argues that claim 1 recites a specific, structured
graphic user interface having a dedicated trip purpose field paired with a
prescribed functionality that resolves a specifically identified problem.
(Appeal Br. 26). This argument is also not persuasive because claim 1 does
not recite a structured graphic user interface.
In view of the foregoing, we will sustain this rejection as directed to
claims 1, 2, 4, 6, 7, 9, 11, 12, 14, 16, 17, 19, and 21–28.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting the appealed claims
under 35 U.S.C. § 101.

DECISION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)
/Basis
Affirmed Reversed
1, 2, 4, 6, 7, 9,
11, 12, 14, 16,
17, 19, 21–28
101 Eligibility 1, 2, 4, 6, 7, 9,
11, 12, 14, 16,
17, 19, 21–28

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED