INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Jun 2, 2021

2020005744 (P.T.A.B. Jun. 2, 2021)

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.
14/744,212 06/19/2015 Chung-Sheng Li YOR920150054US2
(870CON)
7836
49267 7590 06/02/2021
Tutunjian & Bitetto, P.C.
401 Broadhollow Road
Suite 402
Melville, NY 11747
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/02/2021 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):
docketing@tb-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUNG-SHENG LI and COLIN J. PARRIS
Appeal 2020-005744
Application 14/744,212
Technology Center 3600
Before ST. JOHN COURTENAY III, JOHNNY A. KUMAR, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as INTERNATIONAL
BUSINESS MACHINES CORPORATION. Appeal Br. 3.
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Application 14/744,212
2
CLAIMED SUBJECT MATTER
The claims are directed to creating a sustainable innovation platform.
Spec ¶ 5. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for establishing a sustainable innovation platform in
a cloud computing environment including a network of
interconnected nodes communicating with a plurality of physical
devices equipped with map and navigation service capabilities,
the method comprising:
providing, by an innovation services platform in
communication with the network of interconnected nodes, a set
of independent, map services;
forming, by an innovation community platform in
communication with the network of interconnected nodes and
including a set of frameworks, an innovation community and
supporting interaction between community data and community
services;
performing, by a monitoring, data assimilation, and
simulation platform in communication with the network of
interconnected nodes, service-related monitoring, monitoring-
data model assimilation and model-based, machine-executed,
what-if simulation; and
determining, by a service enhancement and service
optimization platform in communication with the network of
interconnected nodes, service enhancements and service
optimizations to the map services exceeding a predetermined
threshold for actual usage, during each stage of incremental
deployment of the map services, based on the model-based,
machine-executed, what-if scenario simulation and performing
incremental innovation adjustments to the map services based on
evolving market demand by conducting in vivo experimentation
to establish causality among parameters pertinent to innovation
of the map services and to generate the new map services based
on the innovation adjustments to the map services.
Appeal Br. 20 (Claims App.).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Barros US 8,965,957 B2 Feb. 24, 2015
Shroff et al. (“Shroff”) US 2013/0198050 A1 Aug. 1, 2013
Kibae Kim & Jörn Altmann, Evolution of the software-as-a-service
innovation system through collective intelligence, INT. J. COOP. INF.
SYST., 22 (2013) (“Kim”)
REJECTIONS
Claims 1–6 stand provisionally rejected on the ground of nonstatutory
double patenting as unpatentable over claims 1, 9, 12, 13, and 14 of
copending Application No. 14/656,2862 (reference application). Final Act. 4.
Claims 1–13 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 5.
Claims 1–13 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final Act. 7.
Claims 1–13 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Shroff, Barros, and Kim. Final Act. 10.
ANALYSIS
Provisional Double Patenting Rejection
Claims 1–13 stand provisionally rejected on the ground of
nonstatutory double patenting over claims 1, 9, 12, 13, and 14 of co-pending
Application No. 14/656,286. Final Act. 5. Appellant will consider filing a
terminal disclaimer to obviate the double-patenting rejection upon resolution
of remaining matters. Appeal Br. 9.

2 The pending application is related to US Application No. 14/656,286, also
currently on appeal (see Appeal No. 2020-005755). See Appeal Br. 4.
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4
We decline to reach the merits of the rejection. As of this writing, the
co-pending application has not issued as a patent and, therefore, the issue is
not ripe for adjudication. See Ex parte Moncla, Appeal 2009-006448 slip op.
at 3 (BPAI June 22, 2010) (precedential) (Where the co-pending, reference
application has not issued, it is “premature for the original Board panel to
address the Examiner's provisional rejection of the claims.”). Therefore, we
sustain pro forma the Examiner’s double patenting rejection of claims 1–13.
Rejection under 35 U.S.C. § 112(a) – Written Description
The Examiner finds there is insufficient written description support
for the claim limitations
[l] forming, by an innovation community platform including a
set of frameworks, an innovation community and supporting
interaction between community data and community services;
[2] transforming, via a transformation platform, a traditional
solution to a problem involving the plurality of physical devices
into a new solution derived from a set of best solutions
previously solved under different circumstances;
[3] performing, by a monitoring, data assimilation, and
simulation platform, service-related monitoring, monitoring-
data model assimilation and model-based, machine-executed,
what-if simulation; and
[4] determining, by a service enhancement and service
optimization platform, service enhancements and service
optimizations to the map services exceeding a predetermined
threshold for actual usage, during each stage of incremental
deployment of the map services, based on the model-based,
machine-executed, what-if scenario simulation and performing
incremental innovation adjustments to the map services based
on evolving market demand by conducting in vivo
experimentation to establish causality among parameters
pertinent to innovation of the map services and to generate the
new map services based on the innovation adjustments to the
map services,
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as recited in claim 1. Final Act. 5–6. In particular, the Examiner explains
that claim 1 and the Specification use functional language specifying a
desired result, but the Specification does not sufficiently describe how the
function is performed or the result is achieved, especially in the context of
map services. Final Act. 6 (citing MPEP 2161.01(I)). The Examiner explains
“[t]he workflows depicted in the drawings simply restate the functions
recited in the claims which is not sufficient.” Id.
Appellant disputes the Examiner’s findings and asserts paragraphs
86–100 of the Specification describe how the innovation platforms described
in paragraphs 19–21 operate. Appeal Br. 10. In particular, Appellant argues
paragraph 87 recites examples of seed services, a representative service is
“map services,” and, thus, the Specification, as a whole, describes how to
implement or execute innovation platforms. Id. In Appellant’s view,
paragraph 87 of the Specification “provides a very specific example (i.e.,
map services) that can applied to such implementation.” Id. Appellant
further argues that one of ordinary skill in the art would “fully understand”
that “map services” is a specific application that can be applied to the 3-step
process for the innovation services platform described in paragraphs 86–88
of the Specification. Id. at 11. Appellant also argues that one skilled in the
art would understand how to construct test scenarios. Id. at 12 (citing Spec.
¶ 88).
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellant possessed the claimed
invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the description
must “clearly allow persons of ordinary skill in the art to recognize that [the
inventor] invented what is claimed,” and
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the test requires an objective inquiry into the four corners of the
specification from the perspective of a person of ordinary skill in the
art. Based on that inquiry, the specification must describe an invention
understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.
Ariad, 598 F.3d at 1351.
Based on our review of the Specification, we agree with the Examiner
that the Specification does not provide the requisite disclosure to convey to
the ordinarily skilled artisan that Appellant was in possession of the claimed
invention. The Specification does not describe an actual reduction to practice
of the invention claimed in claim 1. The drawings are not sufficiently
detailed to show possession because, as the Examiner points out, the
language in the drawings is the same as that in the claim. And the disclosure
cited by Appellant is not sufficiently detailed to provide evidence that
applicant was in possession of the claimed invention. For example,
Appellant relies on paragraphs 86–88, which describe that the methodology
to identify the base innovation platform services for each new domain can
include:
1. Use lifecycle (inception, development, deployment,
continuous operation, enhancement and renewal) of the
innovation domain to identify stages of the innovation
development.
2. Identify the representative services for each stage of the
lifecycle. These “representative” services are the “seed”
services (whether this is for map services, genomic sequencing,
translational medicine, syndromic surveillance, Internet of
Things, and so forth).
3. New set of services are identified through constructing “test
scenarios” from these “seed” services. These new seed services
could be decomposed and/or refactored from existing services.
The set of services become the Eigen-services when the set of
services stabilized when constructing new services.
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Spec. ¶¶ 86–88.
We agree with the Examiner that the claims define the invention in
functional language specifying a desired result, and the Specification does
not sufficiently describe how the function is performed or the result is
achieved. The Specification does not describe any algorithm or
steps/procedure taken to perform the functions with sufficient detail so that
one of ordinary skill in the art would understand how the inventor intended
the function to be performed. See MPEP §§ 2163.02 and 2181(IV). For
example, Appellant has not identified where the Specification describes how
an innovation community and supporting interaction between community
data and community services is formed; how a traditional solution to a
problem involving the plurality of physical devices is transformed into a new
solution derived from a set of best solutions previously solved under
different circumstances; how service-related monitoring, monitoring-data
model assimilation and model-based, machine-executed, and what-if
simulation is performed; and how service enhancements and service
optimizations are determined.
For the reasons discussed above, we are not persuaded of Examiner
error. Accordingly, we sustain the Examiner’s rejection of claims 1–13
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement.
Rejection of Claims Under 35 U.S.C. § 101
Appellant argues the Examiner’s rejection of claims 1–13 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error. To
the extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant argues claims 1–13 as a group. Appeal Br. 13.
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Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the § 101
rejection of claims 1–13 based on representative claim 1.
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
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9
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.3, 4
Under MPEP § 2106, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing

3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
4 The Manual of Patent Examining Procedure (“MPEP”) now incorporates
this revised guidance and subsequent updates at Section 2106 (9th ed. Rev.
10.2019, rev. June 2020). All references to the MPEP are to the Ninth
Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise
indicated.
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human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).5
MPEP § 2106.04(a)) and § 2106.04(d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,6 do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional activity” in the field; or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.7
MPEP § 2106.05(d).
Step 1
Claim 1, as a method claim, falls within the process category of
§ 101. See MPEP §§ 2106.03, 2106.06.

5 “Examiners evaluate integration into a practical application by: (1)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether” the claim as
a whole “integrates the exception into a practical application.” MPEP
§ 2106.04(d)II.
6 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not
directed to an abstract idea under part one of the Alice framework, we do not
need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
7 This corresponds to Alice part two where it is determined whether the
claim contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determines that claim 1 recites a method of organizing
human activity and a mental process. Final Act. 8. The Examiner determines
that the limitation “forming, by an innovation community platform including
a set of frameworks, an innovation community and supporting interaction
between community data and community services” recites a method of
managing relationships or interactions between people (i.e., an innovation
community), which is a method of organizing human activity. Id. The
Examiner further determined the limitation “determining, by a service
enhancement and service optimization platform, service enhancements and
service optimizations based on the model-based, machine-executed, what-if
simulation” recites a step that covers performance of the limitation in the
mind, but for the recitation of the cloud computing environment, “because it
merely requires forming a judgment or evaluation to enhance a service based
on having observed the results of monitoring.” Id.
Appellant argues that claim 1 does not recite a mental process because
“the claims describe employing maps on map navigation devices (hardware)
and generating updated maps to be displayed (on display screens) on the
map navigation devices.” Appeal Br. 15.
We are not persuaded that the Examiner errs. Appellant’s “mental
process” argument is not commensurate in scope with the Examiner’s
determination. See Final Act. 8. The Examiner determined that the
“determining” step, as recited in claim 1, is a mental process. Id. Appellant’s
argument does not specifically address the “determining” step and, therefore,
is not persuasive.
Moreover, the 2019 Revised Guidance explains that “mental
processes” include acts that people can perform in their minds or using pen
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and paper, even if the claim recites that a generic computer component
performs the acts. See MPEP § 2106.04(a)(2)(III)(C); see also Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
(“[W]ith the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper.”), quoted in MPEP
§ 2106.04(a)(2)(III).
Appellant has not presented arguments directed to the Examiner’s
determination that the “forming” limitation, as recited in claim 1, is a
method of organizing human activity, and thus an abstract idea.
For these reasons, we agree with the Examiner that claim 1 recites an
abstract idea. We proceed to Prong Two of Step 2A to determine if the idea
is integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
We next determine whether the recited judicial exception is integrated
into a practical application of that exception by: (a) identifying whether
there are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. In
claim 1, the additional elements include the limitations “a cloud computing
environment,” “a network of interconnected nodes,” “a plurality of physical
devices,” “an innovation services platform,” “a set of frameworks,” “an
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innovation community platform,” “a monitoring, data assimilation, and
simulation platform,” and “a service enhancement and service optimization
platform,” and the recited “providing” and “performing” steps, as recited in
claim 1. See Final Act. 8–9.
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)).
The Examiner determines that none of the additional limitations is
sufficient to integrate the judicial exception into a practical application. The
Examiner determines that claim 1’s recitation of a platform in a cloud
computing environment including a network of interconnected nodes
communicating with a plurality of physical devices merely limits the claim
to a field of use or technological environment in which to apply a judicial
exception. Final Act. 8. The Examiner also determines “the hardware
elements are mere tools to apply the judicial exception.” Ans. 5. The
Examiner further determines that the “providing” and “performing”
limitations amount to data gathering, which is insignificant extra-solution
activity. Final Act. 9.
Appellant argues that “a practical application is a practical utility for
the invention” that “solves a problem and offers a benefit to a user.” Appeal
Br. 14; see also Reply Br. 6–7. Appellant argues
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the practical application or practical utility involves providing new
map services to a user. New map services refers to updated map
services. This solves the problem of having outdated mapping
information and benefits the user because the user has the latest, new
or updated mapping services available.
Appeal Br. 14. Appellant notes, “[i]t appears that the meaning of the term
‘practical application’ has been lost in the context of patent law.” Id. at 14–
15.
Appellant’s arguments are not persuasive because they do not address
the additional elements and overlook the guidance for integration into a
practical application set forth in the MPEP. See MPEP § 2106.05(a), (b), (c),
and (e).
Claim 1 as a whole merely uses instructions to implement the abstract
idea on a computer or, alternatively, merely uses a computer as a tool to
perform the abstract idea. Here, for the reasons set forth by the Examiner,
the additional limitation(s) do not integrate the judicial exception into a
practical application. More particularly, the claims do not recite (i) an
improvement to the functionality of a computer or other technology or
technical field; (ii) a “particular machine” to apply or use the judicial
exception; (iii) a particular transformation of an article to a different thing or
state; or (iv) any other meaningful limitation. See MPEP § 2106.05(a), (b),
(c), (e). Rather, claim 1 recites an abstract idea as identified in Step 2A(i),
supra, and none of the limitations integrates the judicial exception into a
practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
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Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner determines that the additional elements in claim 1
“amount to no more than mere instructions to apply the exception using a
generic computer component,” which “cannot provide an inventive
concept.” Final Act. 9; Ans. 5 (citing Spec. ¶¶ 118–120).
Appellant did not present arguments directed to Step 2B of the
eligibility analysis. See Appeal Br. 15; Reply Br. 7. Thus, Appellant does not
direct our attention to anything in the Specification that indicates the
computer components perform anything other than well-understood, routine,
and conventional functions.
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
may be broadly but reasonably construed as reciting conventional computer
components and techniques. See MPEP § 2106.07(a)(III)(D) (explaining that
a specification that describes additional elements in a manner that indicates
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that the additional elements are so well-known that they do not need to be
described in detail to satisfy 35 U.S.C. § 112(a) can show that the elements
are well understood, routine, and conventional); Spec. ¶¶ 118–120.
We conclude claim 1 does not have an inventive concept because the
claim, in essence, merely recites various computer-based elements along
with no more than mere instructions to implement the identified abstract idea
using the computer-based elements.
Because the claims are directed to a judicial exception, without
significantly more, we sustain the Examiner’s § 101 rejection of independent
claim 1 and grouped claims 2–13, not argued separately with particularity.
Rejection of Claims under 35 U.S.C. § 103
Appellant disputes the Examiner’s finding that the combination of
Shroff, Barros, and Kim teaches or suggests the limitation
determining, by a service enhancement and service optimization
platform in communication with the network of interconnected
nodes, service enhancements and service optimizations to the
map services exceeding a predetermined threshold for actual
usage, during each stage of incremental deployment of the map
services,
as recited in claim 1. Appeal Br. 18; Reply Br. 9. In particular, Appellant
argues Barros does not teach “new map services,” and argues in a
conclusory manner that Barros does not teach the disputed limitation.
Appeal Br. 16–17 (citing Barros, col. 19:19–29). Appellant further argues
that Shroff paragraph 41 does not “recite” “determining enhancements and
optimizations to the map services exceeding a predetermined threshold for
actual usage” because the “usage” of Shroff “is not equivalent to” “a
predetermined threshold for actual usage.” Id. Appellant also argues that
“Kim does not cure the deficiencies of Shroff and Barros,” and “Kim was
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merely relied on to disclose an innovation platform where Google Maps is
the use case.” Id.
The Examiner finds, in relevant part, Barros teaches observing
customer usage of the system and to repurpose or create new services in
general. Ans. 5–6 (citing Barros, cols. 10:27–66, 17:2–9, 65, 18:40). The
Examiner finds Kim teaches an innovation platform that uses map services
(Google Maps). Ans. 6; Final Act. 3, 13; Kim, Introduction, Figs. 1 and 2,
Section 2.1. With regard to optimization when certain map services exceed a
threshold for actual usage, the Examiner finds Shroff teaches service usage
context data is extracted (Shroff ¶ 41), and the metered consumption is
validated against one or more predefined quota allocations, by a specified
departmental or project budget (Shroff ¶ 46). Ans. 6.
Appellant’s arguments are not persuasive of error because the
Examiner relies on the combined teachings of Shroff, Barros, and Kim to
teach or suggest the disputed limitation. See Ans. 5–6; Final Act. 10–13.
Appellant, however, attacks Shroff, Barros, and Kim individually. The test
for obviousness is not whether the claimed invention is expressly suggested
in any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Here, Appellant did not persuasively address what the combined
teachings of Shroff, Barros, and Kim would have suggested to an artisan of
ordinary skill. Nor did Appellant address the teachings of Kim in sufficient
detail to rebut the Examiner’s finding that Kim teaches an innovation
platform that uses map services. See Ans. 6; Final Act. 3, 13; Kim,
Introduction, Figs. 1 and 2, Section 2.1.
Appeal 2020-005744
Application 14/744,212
18
For these reasons, we are unpersuaded of Examiner error.
Accordingly, we sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 103. In addition, we sustain the Examiner’s rejection of
claims 2–13, which depend directly or indirectly from claim 1 and were not
argued separately. See Appeal Br. 18; see also 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
The Examiner’s decision to reject claims 1–13 is affirmed.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–13 112(a) Written
Description
1–13
1–13 101 Eligibility 1–13
1–13 103 Shroff, Barros,
Kim
1–13
Overall
Outcome
1–13
TIME PERIOD FOR RESPONSE
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