Great Circle Technologies, Inc.

Patent Trials and Appeals Board

Sep 2, 2020

14105367 - (D) (P.T.A.B. Sep. 2, 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.
14/105,367 12/13/2013 Brent BURSEY 00748.01.0101 1790
110669 7590 09/02/2020
Ajay A. Jagtiani
Miles & Stockbridge
1751 Pinnacle Drive
Suite 1500
Tysons Corner, VA 22102
EXAMINER
SADANANDA, ABHIJIT B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
bgoodman@milesstockbridge.com
ipdocketing@milesstockbridge.com
lmansfield@milesstockbridge.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRENT BURSEY

Appeal 2020-001028
Application 14/105,367
Technology Center 3600
____________

Before MELISSA A. HAAPALA, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–12 and 14–28, constituting all claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Great-Circle
Technologies, Inc. Appeal Br. 1.
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STATEMENT OF THE CASE
This is the second appeal that the Board has considered regarding this
patent application. In Appeal No. 2016-008118 (PTAB Nov. 2, 2017), the
Board affirmed the Examiner’s rejections based on 35 U.S.C. § 101 and 35
U.S.C. § 103(a) over the same references as in the current appeal. We note
that the claims were amended subsequent to the Decision in the first appeal.
Appellant’s invention generally relates to “[a]n enterprise geospatial
intelligence service oriented architecture (EGI-SOA) [that] provides a
consumer with one or more tailored products in response to either a dynamic
request or a standing request by the consumer.” Spec., Abstract. Claims 5,
17, and 25 are independent. Claim 5, reproduced below, is illustrative of the
claimed subject matter:
5. A method comprising the following steps:
(a) one or more computers autonomously determining if
one or more tailored geospatial intelligence products are
requested tailored geospatial intelligence products that meet
criteria of a standing request by a consumer; and
(b) one or more computers autonomously pushing to the
consumer the one or more requested tailored geospatial
intelligence products, autonomously transforming each of the
one or more tailored geospatial intelligence products by the one
or more computers based on contexts for each respective
tailored geospatial intelligence product by an autonomous
transforming process comprising the following steps:
(c) the one or more computers filtering an event cloud to
match one or more events in the event cloud to an event pattern;
(d) the one or more computers extracting contexts for
each event matched in step (c);
(e) the one or more computers translating a workflow
with the contexts into an executable process;
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(f) the one or more computers generating a first
descriptive intermediate file based on a workflow to be used in
forming the one or more tailored geospatial intelligence
products;
(g) the one or more computers generating a second
descriptive intermediate file based on the services associated
with the workflow that will be used to form one or more
tailored geospatial intelligence products;
(h) the one or more computers generating a third
descriptive intermediate file based on how the services interact
with each other; and
(i) the one or more computers generating a fourth
descriptive intermediate file based on the support data for the
workflow.

REJECTIONS2
Claims 2, 4–11, 14, 16–23, and 25–28 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over the combination of Kelly et al. (US
2005/0278386 A1, published Dec. 15, 2005 (hereinafter “Kelly”)), Clar et al.
(US 2009/0202109 A1, published Aug. 13, 2009 (hereinafter “Clar”)), and
Balabhadrapatruni et al. (US 2002/0178252 A1, published Nov. 28, 2002
(hereinafter “Balabhadrapatruni”)). Final Act. 8–19.

2 The Examiner objects under 35 U.S.C. § 132(a) to Appellant’s amendment
to incorporate U.S. Patent No. 9,535,927 B2 by reference in the
Specification, and states “Applicant is required to cancel the new matter in
the reply to this Office Action.” Final Act. 2; Ans. 4–5. We do not address
Appellant’s arguments as to this objection (Appeal Br. 8), as it is not an
appealable matter. See MPEP § 604.4(c) (“Where the new matter is
confined to amendments to the specification, review of the examiner’s
requirement for cancelation is by way of petition.”).
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Claims 3, 12, 15, and 24 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over the combination of Kelly, Clar,
Balabhadrapatruni, and Admitted Prior Art. Final Act. 19–21.

ANALYSIS
Appellant presents four arguments as to why the Examiner erred in
rejecting independent claims 5, 17, and 25 over the combination of Kelly,
Clar, and Balabhadrapatruni: (1) Kelly does not teach or suggest
“autonomously transforming”; (2) Kelly teaches away from “autonomously
transforming”; (3) modifying Kelly to provide “autonomously transforming”
changes the principle of operation of Kelly; and (4) Clar does not teach or
suggest “autonomously transforming.” See generally Appeal Br.; Reply Br.
We do not find Appellant’s arguments persuasive. There is no dispute
that “autonomously transforming” should be interpreted to mean “without
any direct human intervention.” Spec. ¶ 47; Ans. 6; Appeal Br. 12–13.
There is also no dispute that Kelly does not explicitly teach “autonomously
transforming.” See Ans. 6 (“Kelly does not explicitly teach autonomously
transforming comprising autonomously filtering, autonomously extracting,
and autonomously translating”); Final Act. 4, 10 (same); Appeal Br. 16
(“Kelly discloses a scheme whereby the user is directly involved and,
therefore, does not disclose or fairly teach ‘autonomously transforming,’ as
claimed”) (emphasis omitted); Reply Br. 4–5 (same). The Examiner relies
on Clar to teach or suggest “autonomously transforming,” and provides
rationale to modify Kelly with the teachings of Clar. See Final Act. 4, 6, 10–
12. Appellant has not explicitly addressed or rebutted the Examiner’s
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rationale for modifying Kelly with the teachings of Clar, other than as
described below. See generally Appeal Br., Reply Br.3
Appellant argues that Kelly teaches away from the claimed invention
because the Kelly workflow “occurs with reliance upon customer or
technician intervention.” Appeal Br. 16; see also Appeal Br. 19 (arguing
Kelly teaches away because “Kelly specifically requires human
intervention”) (emphasis omitted); Reply Br. 5 (“by definition Kelly must
teach away from the disclosed invention, since, it is inarguable that Kelly
specifically requires human intervention”).
We are not persuaded by this argument. “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 Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “A reference
does not teach away, . . . if it merely expresses a general preference for an

3 Appellant contends that based on previous appeal 2014-003565, which
dealt with a related application, it is res judicata that Kelly fails to provide
. . . a reason to modify Kelly to perform the “autonomously transforming”
step. Appeal Br. 19. However, in that case, the Board found that “[w]hat is
missing here is a reason to modify Kelly to perform, at least, step (e),
‘autonomously’ . . . as MacLaurin is alleged to disclose.” Ex parte Bursey,
2017 WL 2377769, at *2 (PTAB May 25, 2017). Although the Examiner
must establish that “there was an apparent reason to combine the known
elements in the fashion claimed,” KSR Int’l Int’l Co. v. Teleflex, 550 U.S.
398, 418 (2007), the apparent reason to combine references need not come
from the references themselves. See DyStar Testilfarben GmbH v. C.H.
Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). Here, the Examiner has
provided reasoning to combine Kelly with Clar (a different reference than in
previous appeal 2014-003565), which Appellant has not persuasively
rebutted or addressed. See Final Act. 4, 6, 10–12.
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alternative invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.” Galderma Labs., L.P. v. Tolmar,
Inc., 737 F.3d 731, 738 (Fed. Cir. 2013); see also In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). We agree with the Examiner that Appellant
has not persuasively argued that Kelly teaches away from the claimed
invention. See Ans. 7–9. Appellant merely argues that Kelly provides an
alternative solution – that allows for human intervention – without providing
persuasive evidence or reasoning that Kelly criticizes, discredits,
discourages, or would lead away from performing the relevant actions
without human intervention. In effect, Appellant is arguing that Kelly does
not teach the limitation, which is not sufficient to show that Kelly teaches
away from the disputed limitation.
Appellant further argues that one of ordinary skill in the art would not
modify Kelly “to provide ‘autonomously’ or ‘autonomously transforming’
as claimed, since doing so would change the principle of operation of Kelly
(which requires reliance upon customer or technician intervention), thereby
rendering Kelly unsatisfactory for its intended purpose.” Appeal Br. 16; see
also Reply Br. 8–9. The Examiner responds that “[t]he intended purpose of
Kelly is to provide a system that ‘facilitates updating of geospatial
information’ and ‘allows updates to be effectuated in an efficient manner.’”
Ans. 7. Appellant has not rebutted the Examiner’s statement of Kelly’s
intended purpose, nor has Appellant provided more than conclusory
statements in support of its arguments that the proposed modification
changes Kelly’s principle of operation. See Appeal Br. 16; Reply Br. 8–9.
Nor has Appellant stated what it believes to be Kelly’s intended purpose.
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Kelly is generally directed to “updating geospatial information such as
those used in generation of maps, online maps, and navigational systems.”
Kelly ¶ 2. Kelly describes several advantages to its system, including
“providing a geospatial information system and method that facilitates
updating of geospatial information” and “providing a geospatial information
system and method that allows updates to be effectuated in an efficient
manner.” Kelly ¶¶ 19–20. Based on Kelly’s disclosure, we agree with the
Examiner’s description of Kelly’s intended purpose and are not persuaded
that Kelly’s intended purpose is reliant upon customer or technician
intervention. We, therefore, are not persuaded that the Examiner’s proposed
modifications would render Kelly unsatisfactory for its intended purpose.
Appellant further contends that Clar does not disclose
“autonomously” or “autonomously transforming,” because Clar discloses
user intervention by allowing a user of the system “to adjust the mapping
sensitivity of the system and/or allowing the threshold λ to be fixed and/or
configurable by a user.” Appeal Br. 20–21 (citing Clar ¶¶ 58, 66); see also
Reply Br. 5–8.
Appellant’s arguments are not persuasive. Paragraph 58 of Clar
states:
Controller 34 may compare the newly-gathered points
stored in temporary map 46 to corresponding previously-
gathered points contained in terrain map 32 (i.e., the
previously-mapped surface). Controller 34 may determine
whether an update to terrain map 32 is warranted based on the
comparison. In particular, controller 34 may compare the
heights of points stored in temporary map 46 to the heights of
corresponding points stored in terrain map 32. FIG. 7 shows a
graphical illustration of the height differences Δ between terrain
map 3 2 and temporary map 46 at each x0 -y0 coordinate pair.
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Each height difference Δ may or may not warrant an update to
terrain map 32. It is to be appreciated that height differences Δ
(positive or negative) below a certain height magnitude
threshold λ may not warrant an update to terrain map 32. For
example, if a small amount of material is removed from or
added to a location on the surface 14 of worksite 10 that causes
a change in height Δ of only a few centimeters, an update to
terrain map 32 is probably not warranted. Updating terrain map
32 in such instances may, for example, impose an undue
processing burden on system 22. Conversely, changes of height
Δ greater than a few centimeters, or another magnitude λ
indicative of a significant change to the worksite terrain 16,
may warrant an update to terrain map 32. As such, controller
34 may have a stored value for magnitude threshold λ. The
value may be preset based on the particular application or
configurable to allow a user of system 22 to adjust the mapping
sensitivity of system 22.
Clar ¶ 58 (emphasis added). Paragraph 66 of Clar states:
Controller 34 may then determine if a change to terrain
map 32 is warranted based on the comparison in step 72 (step
74). Specifically, controller 34 determine if height differences
between terrain map 3 2 and temporary map 46 at x0 -y0
coordinate pairs are greater in magnitude than a height
magnitude threshold λ. As mentioned above, the threshold λ
may be fixed and/ or configurable by a user of system 22 allow
changes in mapping sensitivity of system 22.
Clar ¶ 66 (emphasis added). Clar generally describes performing a
comparison of heights of points to determine if changes to a terrain map
should be made. Clar ¶¶ 58, 66. If a height difference is below a certain
threshold (λ), changes may not be warranted. Id. Appellant contends that
the configuration of Clar’s threshold (λ) requires human intervention, and
therefore, is not “autonomous.” Appeal Br. 21; Reply Br. 6–8. Appellant
argues that “[w]ithout human, the system of Clar would have a fixed
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threshold, i.e., not transformed. Such user intervention is in the only means
to transform and is in direct contrast to operating ‘autonomously’ or in a
manner of ‘autonomously transforming,’ as claimed.” Reply Br. 8.
We disagree. As emphasized above, Clar explicitly discloses that
threshold λ may be preset at a fixed value. Clar ¶¶ 58, 61. Alternatively,
Clar discloses that threshold λ may be configurable by the user, in order to
adjust the system sensitivity. Id. Appellant’s arguments solely focus on the
latter disclosure and ignore Clar’s disclosure of a preset threshold λ.
Appellant does not persuasively address why a preset threshold λ requires
human intervention. We agree with the Examiner that Clar’s disclosure of a
preset threshold λ suggests that no human intervention is involved. See Ans.
9. Moreover, although, Appellant argues that a “fixed threshold” is not
“transformed,” (Reply Br. 8), Appellant does not sufficiently explain this
argument in the context of the claims. Rather, we agree with the Examiner
that even in an embodiment where the user configures the threshold
parameter, this step is outside the scope of the claim limitations, and would
not preclude the system from performing the recited actions autonomously
(e.g., comparing values to the threshold without human intervention). See
Ans. 9.
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 5, 17, and 25 under 35 U.S.C. § 103. Appellant does not separately
or substantively argue dependent claims 2–4, 6–12, 14–16, 18–24, and 26–
28; rather, Appellant repeats the argument that the combination of references
does not teach or suggest “autonomously” or “autonomously transforming,”
argues that the additional references fail to cure the deficiencies, then
conclusorily states that Kelly, Clar, Balabhadrapatruni, or Official Notice
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“fail to disclose or fairly suggest the additional elements [of the dependent
claim],” and repeats the claim language without further argument. See
Appeal Br. 26–34; Reply Br. 9–12.4 Such arguments are not substantive
arguments for patentability and are insufficient to establish error in the
rejection. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e
hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388, 391
(Fed. Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for non-obvious
distinctions over the prior art.”).
Accordingly, for the reasons set forth above, we sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of claims 2–12 and 14–28.

4 In support of its arguments for claims 3, 12, 15, and 24, Appellant also
argues that it “disagrees with the Office Action’s assertion that ‘[t]he
existing knowledge hereby construed as facts includes: it is an old and well-
known business practice to check whether a product matches a customer’s
specification and customizing and completing the development of the
product; Bayesian inference is an old and well-known concept used in the
field of invention to statistically improve decision making by a computing
system.’” Appeal Br. 32. However, to adequately traverse the Examiner’s
taking of Official Notice, Appellant must present arguments to the effect that
the Officially Noticed facts are not common knowledge. See MPEP
§ 2144.03C (9th Ed.); see also In re Boon, 439 F.2d 724, 728 (CCPA 1971);
In re Chevenard, 139 F.2d 711, 712 (CCPA 1944). Appellant has not done
so here. We agree with the Examiner that Appellant has failed to adequately
traverse the Official Notice. See Ans. 15.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2, 4–11,
14, 16–
23, 25–
28
103(a) Kelly, Clar,
Balabhadrapatruni
2, 4–11,
14, 16–
23, 25–
28

3, 12, 15,
24
103(a) Kelly, Clar,
Balabhadrapatruni,
Admitted Prior Art
3, 12, 15,
24

Overall
Outcome
2–12,
14–28

AFFIRMED