James Bongiorno

Patent Trials and Appeals Board

Mar 20, 2020

13691821 - (D) (P.T.A.B. Mar. 20, 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.
13/691,821 12/02/2012 James Bongiorno 8999
97708 7590 03/20/2020
James Bongiorno
P.O. Box 1454
Hunlington, NY 11743
EXAMINER
TALLMAN, BRIAN A
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
03/20/2020 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 JAMES BONGIORNO
____________

Appeal 2018-008780
Application 13/691,821
Technology Center 3600

____________

Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1, 2, 4–17, 19–21, and 35–42. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellant’s “invention relates to methods and systems of planning
and executing a vacation or travel itinerary, and more particularly to

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 James
Bongiorno. (Appeal Br. 3.)
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software and a portable electronic unit, which may be dedicated to such
planning and travel assistance at the destination.” (Spec. 1–2.)
Claims 1, 35, and 41 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A computer program product for a method of
planning a travel itinerary for use at a destination and for
executing the planned travel itinerary at the destination, the
computer program product comprising: a tangible non-transitory
computer readable storage medium having computer readable
program code embodied thereon, the computer readable program
code, when executed by a processor, configured for:
storing a database of travel information about the
destination in said storage medium, said database of travel
information comprising tour sites at the destination;
storing, in said storage medium, a respective indoor-
outdoor rating for each said tour site created by assessing each of
said tour sites, each said indoor-outdoor rating comprising a
majority percentage of said respective tour site comprising
indoor site features or a majority percentage of said respective
tour site comprising outdoor site features;
providing a user access to said database of travel
information by displaying a planning graphical user interface
screen configured for selecting of a first itinerary template, and
selecting of one or more additional itinerary templates from a
plurality of said additional itinerary templates, each said plurality
of additional itinerary templates comprising a plurality of said
tour sites listed therein and relating to a category of said
additional template, said first itinerary template configured for
entering of:
a number of days for said itinerary,
an arrival city and a departure city at the destination,
a start-time and an end-time for a number of desired
touring hours for each said number of days, and
a tour intensity level for touring for each of said
number of days at the destination;
providing a sequence of tour sites forming a complete
travel itinerary for said number of days, using a portion of said
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tour sites listed in each said selected one or more additional
itinerary templates, said complete travel itinerary comprising
said sequence of tour sites being optimized to include as many
said tour sites as possible in said touring hours, for each of said
number of days, according to said tour intensity level;
providing the user access to a weather detour graphical
user interface screen configured for selecting one or more blocks
of time, each being affected by inclement weather during said
desired touring hours of said number of days;
reforming said complete travel itinerary for detouring
from said sequence of tour sites, by replacing at least a portion
of said sequence of tour sites, at least during said one or more
blocks of time affected by inclement weather, by replacing said
sites having said majority percentage of outdoor site features for
its indoor-outdoor rating, with other tour sites having a highest
said majority percentage of indoor site features for its indoor-
outdoor rating; and
communicating with a GPS receiver for receiving
directions to any of said tour sites of said reformed travel
itinerary during executing of said reformed travel itinerary at the
destination.

REJECTIONS
Claims 1, 2, 4–17, 19–21, and 35–42 are rejected under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement.
Claims 1, 2, 4–17, 19–21, and 35–42 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 1, 2, 4, 5, 7–13, 17, and 19–21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Whitsett (US 2009/0216633 A1, pub.
Aug. 27, 2009), Shuchman (US 8,082,186 B2, iss. Dec. 20, 2011), Ben-
Yehuda (US 2008/0046298 A1, pub. Feb. 21, 2008), and Purang
(US 2004/0215699 A1, pub. Oct. 28, 2004).
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Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Whitsett, Ben-Yehuda, Shuchman, Purang, and Aycock (US 5,765,138, iss.
June 9, 1998).
Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Whitsett, Ben-Yehuda, Shuchman, Purang, and Heideman
(US 6,915,204 B1, iss. July 5, 2005).
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Whitsett, Ben-Yehuda, Shuchman, Purang, Randall (US 2006/0184538 A1,
pub. Aug. 17, 2006), and Jonsson (US 2011/0137437 A1, pub.
June 9, 2011).
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Whitsett, Ben-Yehuda, Shuchman, Purang, Chavez (US 2010/0121563 A1,
pub. May 13, 2010), and Kent (US 2010/0057435 A1, pub. Mar. 4, 2010).
Claims 35, 37–39, and 41 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Whitsett, Ben-Yehuda, and Shuchman.
Claims 36 and 42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Whitsett, Shuchman, Ben-Yehuda, and Purang.
Claim 40 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Whitsett, Shuchman, Ben-Yehuda, and Aycock.

ANALYSIS
The § 112(a) rejection
The Examiner finds that each independent claim includes “the
limitation ‘a respective indoor-outdoor rating for each said tour site created
by assessing each of said tour sites, each said indoor-outdoor rating
comprising a majority percentage of indoor site features or a majority
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percentage of said respective tour site comprising outdoor site features,’”
and that this claim language lacks written description support. (Final
Action 9.) Specifically, the Examiner finds that “there is no written content
as to how or what specific calculations or steps are performed in the
assessment . . . in order to calculate the indoor-outdoor rating result.” (Id.
at 10–11.)
Appellant disagrees and argues that “the indoor-outdoor ‘rating’ of
the ‘sites’ is defined ‘in terms of a percentage to which they may fairly be
considered as being either mostly indoor or mostly outdoor in nature.’”
(Reply Br. 2 (quoting Spec. 73).) Appellant further argues:
The fact that different travel experts making the same
evaluation may arrive at slightly different conclusions/ratings as
to whether “bad weather that would impair enjoyment” of the
desirable “outdoor activities” and/or the “degree to which each
of the sites in the selected itinerary templates may be categorized
as being an ‘outdoor’ site or an ‘indoor’ site” (p. 73, lns. 5-10)
does not means that persons skilled in the art would not recognize
in the disclosure a description of the invention defined by the
claims.

(Id.) Appellant also cites to the disclosures in Table 1 of the Specification of
certain travel sites and their associated “Indoor/Outdoor Percentage (%)”
ratings, e.g., “Imperial Forums. . . 60% Indoor” and “Theatre of
Marcellus. . . 60% Outdoor.” (Id. (citing Spec. Table 1).)
The test for sufficiency of a written description is “whether the
disclosure clearly ‘allow[s] persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.’” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed.Cir.2010) (en banc) (quoting Vas–Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562–63 (Fed.Cir.1991)). The disclosure must
“reasonably convey[] to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing
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date.” Id. at 1351. Possession means “possession as shown in
the disclosure” and “requires an objective inquiry into the four
corners of the specification from the perspective of a person of
ordinary skill in the art.” Id.

Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635
F.3d 1373, 1380 (Fed. Cir. 2011). Additionally, “the level of detail required
to satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology.” Ariad Pharm., Inc., 598 F.3d at 1351. This inquiry is
a question of fact. Id.
Here, the rejection is based on the lack of “written content as to how
or what specific calculations or steps are performed in the assessment . . . in
order to calculate the indoor-outdoor rating result.” (Final Action 10–11.)
But the Specification teaches that the assessment for the rating is to be “in
terms of a percentage to which they may fairly be considered as being either
mostly indoor or mostly outdoor.” (Spec. 73.) In other words, the rating,
and hence the assessment, is described in terms of “fairly considered,” rather
than a measure requiring specific calculations or steps.
In view of the above, we are persuaded that the Specification would
have conveyed to one of ordinary skill in that art that Appellant possessed
the claim element of “a respective indoor-outdoor rating for each said tour
site created by assessing each of said tour sites, each said indoor-outdoor
rating comprising a majority percentage of said respective tour site
comprising indoor site features or a majority percentage of said respective
tour site comprising outdoor site features.” Therefore, we will reverse this
rejection.

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The § 101 rejection
Appellant does not separately argue independent claims 1, 35, and 41.
We select claim 1 as representative. Claims 35 and 41 will stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (internal quotation marks omitted) (citing Mayo, 566 U.S. at 72–
73, 79).
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With regard to step one of the Alice framework, we apply a “directed
to” two-prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that claim 1 is “directed to the abstract
idea of collecting, analyzing, displaying, and manipulating travel itinerary
data, categorized as an idea of itself and a method of organizing human
activity.” (Final Action 11 (emphasis omitted).)
Appellant disagrees and argues that claim 1 is “drawn to inventive
programming that utilizes two different highly structured graphical user
interface screens- the ‘planning graphical user interface screen’ and the
‘weather detour graphical user interface screen.’” (Appeal Br. 29.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the “directed to” inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded
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subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to “planning and executing a vacation or travel itinerary.” (Spec. 1.)
Claim 1 provides further evidence. Claim 1 recites “[a] computer program
product for a method of planning a travel itinerary . . . configured for:
storing a database of travel information . . . comprising tour sites,” “storing
. . . a respective indoor-outdoor rating for each said tour site,” “providing a
user access to said database . . . by displaying a planning graphical user
interface screen,” “providing a sequence of tour sites forming a complete
travel itinerary,” “providing the user access to a weather detour graphical
user interface,” “reforming said complete travel itinerary for detouring from
said sequence of tour sites,” and “communicating with a GPS receiver for
receiving directions to any of said tour sites of said reformed travel
itinerary.”
In short, claim 1 recites storing information (including certain ratings
of tour sites), providing access to the information (by displaying an interface
screen), providing information (a sequence of tour sites “optimized to
include as many said tour sites as possible”), providing access to another
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interface screen (weather-related), reforming the sequence of tour sites, and
communicating with a GPS receiver.
Appellant argues that claim 1 recites patent-eligible subject matter
because “[t]he ‘planning graphical user interface screen’ and the ‘weather
detour graphical user interface screen’ each require user inputs and each
utilizes particular rules, similar to the claims found patent eligible in [McRO,
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016)].” (Appeal Br. 29 (emphasis omitted).) We disagree. “The claimed
improvement [in McRO] was to how the physical display operated (to
produce better quality images), unlike (what is present here) a claimed
improvement in [the abstract idea] with no improved display mechanism.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
Additionally, claim 1 simply recites a generic “computer readable
storage medium,” a generic “processor,” a generic “GPS receiver,” and
generic “graphical user interfaces.” (See Spec. 23–24, 49, 75–77.) The
claim limitations do not recite technological implementation details for any
of the steps. Claim 1 merely recites functional results to be achieved by any
means, e.g., claim 1 does not recite how the “sequence of tour sites forming
a complete travel itinerary” is determined or how the travel itinerary is
reformed. The claim does not recite any specific asserted improvement to
computer technology.
In cases involving software innovations, such as we have here, the
inquiry as to whether the claims are directed to an abstract idea “often turns
on whether the claims focus on ‘the specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an
“abstract idea” for which computers are invoked merely as a tool.’” Finjan,
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Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting
Enfish, LLC, 822 F.3d at 1335–36). Here, the storage medium, processor,
graphical user interfaces, and GPS receiver are invoked merely as tools.
Even if we consider claim 1 to be limited to a particular technological
environment, “limiting the claims to [a] particular technological
environment . . . is, without more, insufficient to transform them into patent-
eligible applications of the abstract idea at their core.” Elec. Power Grp.,
830 F.3d at 1354. Moreover, the asserted improvement is to the information
provided, i.e., the travel itinerary, reformed travel itinerary, and directions to
the sites. But “[n]o matter how much of an advance in the . . . field the
claims recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm.” SAP
America, Inc., 898 F.3d at 1163.
We also do not find persuasive Appellant’s argument that claim 1 is
“drawn to inventive programming that utilizes two different highly
structured graphical user interface screens- the ‘planning graphical user
interface screen’ and the ‘weather detour graphical user interface screen.’”
(Appeal Br. 29.)
Claim 1 does not recite “a particular way of programming or
designing the software . . . , but instead merely claim[s] the resulting
[method].” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir.
2016). In other words, claim 1 does not recite inventive programming, but
simply recites desired results. Claim 1 is “focused on providing information
to [the user] . . . , not on improving computers or technology.” Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019)
(hereinafter “Trading Techs. II”). “Like Electric Power, the purported
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advance ‘is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions.’ 830 F.3d at 1354.
We thus conclude that the claim[ is] directed to an abstract idea.” Trading
Techs. II, 921 F.3d at 1385.
Claim 1 “do[es] not improve the functioning of the computer, make it
operate more efficiently, or solve any technological problem. Instead, [it]
recite[s] a purportedly new arrangement of generic information that assists
[users] in processing information more quickly,” i.e., in planning a travel
itinerary. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed.
Cir. 2019) (hereinafter “Trading Techs. I”). The Federal Circuit has
concluded that such claims are directed to an abstract idea. Id. Cf. Core
Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362–63
(Fed. Cir. 2018) (The court determined that “[t]he asserted claims in this
case are directed to an improved user interface for computing devices,” that
the claim “limitations disclose a specific manner of displaying a limited set
of information to the user, rather than using conventional user interface
methods,” and that “[t]he disclosed invention improves the efficiency of
using the electronic device.” The court determined that the claims were not
directed to an abstract idea.).
“As many cases make clear, 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., 898 F.3d at 1168. Moreover, the “character of
[the] information simply invokes a separate category of abstract ideas.” Id.
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In view of the above, we determine that claim 1 is directed to planning
a travel itinerary. In other words, we determine that claim 1 is directed to
managing personal behavior or relationships or interactions between people,
including social activities, and, thus, an abstract idea, characterized as being
directed to certain methods of organizing human activity. (See 2019
Guidance at 52.) This is in accord with the Examiner’s determination. (See
Final Action 11.)
Moreover, we do not see how the recitation of a generic computer
readable storage medium, a generic processor, a generic GPS receiver, and
generic graphical user interfaces, even in conjunction with the recited
functions, “ensure[s] ‘that the [claim] is more than a drafting effort designed
to monopolize the [abstract idea].’” See Alice, 573 U.S. at 221 (second and
third brackets in original) (quoting Mayo, 566 U.S. at 77.)
Nor do we find any 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 that attributes an
improvement in computer technology or functionality to the claimed
invention or that otherwise indicates that the claimed invention “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” (See 2019
Guidance at 54–55.)
Thus, under prong one of the two prong test in the 2019 Guidance,
claim 1 recites an abstract idea; and, under prong two, additional elements in
claim 1 do not “apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
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more than a drafting effort designed to monopolize the judicial exception.”
(See 2019 Guidance at 54.) As such, under step one of the Alice framework,
the claims are directed to an abstract idea, and we move to step two.
Step two of the Alice framework has been described “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, 573 U.S.
at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72–73). Under
step two, we examine, inter alia, whether a claim element or combination of
elements “[a]dds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present.” (2019 Guidance
at 56.)
Appellant argues that “the ‘weather detour graphical user interface
screen’ of claims 1, 35, and 41 is . . . unconventional” and that “the Office
Action . . . fails to even show that the claimed ‘tour intensity level’ is
disclosed in a piece of prior art . . . , and certainly does not provide any
evidence that it is ‘well understood, routine, and conventional…’” (Appeal
Br. 30.)
As an initial matter, we note that “[i]t has been clear since Alice that a
claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018). The claimed invention is, at most, an
improvement to the performance of the abstract idea, in this case, an
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improvement in planning a travel itinerary, i.e., certain methods of
organizing human activity. (See supra; see also 2019 Guidance at 52.)
In our analysis under step two of the Alice framework, we examine
“[t]he question of whether a claim element or combination of elements is
well-understood, routine and conventional to a skilled artisan in the relevant
field [which] is a question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360,
1368 (Fed. Cir. 2018). Here, the question is whether the steps of storing
information, providing access to the information, providing additional
information, providing additional access to information, analyzing
information (reforming the sequence of tour sites), and receiving
information (communicating with a GPS receiver) are well-understood,
routine and conventional.
Taking the claim elements separately, the functions performed in
claim 1 by the generic computer readable storage medium, processor, GPS
receiver, and graphical user interfaces are purely routine and conventional.
(See, e.g., Spec. 23–24, 49, 75–77.) Storing information,
providing/presenting information, analyzing information, and receiving
information are all routine and conventional functions for a computer
processor and were previously known to the industry. See Elec. Power Grp.,
830 F.3d at 1356 (The claims “do not include any requirement for
performing the claimed functions of gathering, analyzing, and displaying in
real time by use of anything but entirely conventional, generic technology.
The claims therefore do not state an arguably inventive concept . . . .”); 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
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‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”).
Considered as an ordered combination, the generic computer
components of Appellant’s claimed invention add nothing that is not already
present when the limitations are considered separately. For example,
claim 1 does not, as discussed above, purport to improve the functioning of
the computer components themselves. Nor does it effect an improvement in
any other technology or technical field. Instead, claim 1 amounts to nothing
significantly more than an instruction to apply the abstract idea using generic
computer components performing routine computer functions. (See Final
Action 4.) That is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225–26.
Regardless, Appellant also argues that
just as in [Trading Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x
1001 (Fed. Cir. 2017)], it is respectfully submitted that all of the
“additional elements” found in the structure of the claimed
“planning graphical user interface screen,” and “weather detour
graphical user interface screen,” including at least the claimed
indoor-outdoor rating, when considered as an ordered
combination at step-two of the Mayo/Alice analysis, similarly
constitute an inventive concept, and would not preempt all uses
of the asserted “abstract idea of collecting, analyzing, displaying,
and manipulating travel itinerary data.”

(Appeal Br. 32–33.)
For the reasons already discussed, we do not find persuasive
Appellant’s argument regarding the asserted additional elements, e.g., the
indoor-outdoor rating information. See, e.g., SAP Am., Inc., 898 F.3d
at 1167. Nor do we find Appellant’s preemption argument persuasive.
“Where a patent’s claims are deemed only to disclose patent ineligible
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subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1. Independent claims 35 and 41, which recite similar
subject matter, are not separately argued. Dependent claims 17, 21, 36, 40,
and 42 are also not separately argued. Claims 17, 21, 35, 36, and 40–42 fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant presents separate arguments for dependent claims 2 and 37;
4; 5, 6, and 10; 7; 8; 9; 11, 13, and 38; 12; 14; 15; 16; 19; 20; and 39.
(Appeal Br. 33–40.) All of these arguments rely on the claims “further
defin[ing] the inventive programming of [the associated parent claim(s)].”
(Id.) However, these dependent claims, like claim 1 discussed above, do not
recite “a particular way of programming or designing the software . . . , but
instead, merely claim the resulting [method].” Apple, Inc., 842 F.3d at 1241.
In other words, these dependent claims do not recite inventive programming,
but simply desired results. This is fatal to Appellant’s arguments. Like
claim 1, these dependent claims are “focused on providing information to
[the user] . . . , not on improving computers or technology.” See Trading
Techs. II, 921 F.3d at 1384. Therefore, for the reasons discussed above, we
are not persuaded that the Examiner erred in rejecting dependent claims 2,
4–16, 19, 20, and 37–39.

Appeal 2018-008780
Application 13/691,821

18
The § 103(a) rejections
Claim 1 recites, in relevant part,
storing . . . a respective indoor-outdoor rating for each said tour
site created by assessing each of said tour sites, each said indoor-
outdoor rating comprising a majority percentage of said
respective tour site comprising indoor site features or a majority
percentage of said respective tour site comprising outdoor site
features.

The Examiner finds that “both Whitsett and Shuchman teach an
indoor-outdoor rating that indicates that a ‘majority percentage’ of the site is
either indoors or outdoors.” (Answer 28–29 (citing Whitsett ¶¶ 64, 65, 67,
68, 143 and Shuchman col. 3, ll. 58–67, col. 5, ll. 20–26, 42–44, col. 11, 22–
24, col. 12, ll. 50–54, claim 15); see also Final Action 18–19, 21–22.)
Specifically, the Examiner determines that the
claim language does not prevent interpretation that the rating of
either being ‘indoors’ or ‘outdoors’ is a binary rating percentage
(e.g. if a site is recognized as being mostly indoors its binary
representation is indoors, i.e. 100% indoors, 0% outdoors; if a
site is recognized as being mostly outdoors its binary
representation is outdoors, i.e. 0% indoors, 100% outdoors).
Both 0% and 100% are binary percentages, and the Appellant’s
claim language does not require that the percentage must include
values between 0% and 100%. Therefore, both Whitsett and
Shuchman teach a respective indoor-outdoor rating . . . .

(Answer 29.)
Appellant argues that “[t]he Office Action supplies an interpretation
. . . that improperly reads limitations out of the Applicant’s claims, and/or
conversely reads teachings into the cited reference (Shuchman) that do not
exist therein.” (Appeal Br. 47.)
“[I]n proceedings before the PTO, claims in an application are to be
given their broadest reasonable interpretation consistent with the
Appeal 2018-008780
Application 13/691,821

19
specification, and that claim language should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983) (internal citation omitted).
Here, claim 1 recites “storing . . . a respective indoor-outdoor rating
for each tour site.” Claim 1 further recites “each said indoor-outdoor rating
comprising a majority percentage of said respective tour site comprising
indoor site features or a majority percentage of said respective tour site
comprising outdoor features.” In other words, a rating is stored for each site,
and each rating includes a majority percentage designating the site as either
indoor or outdoor. Because the rating for each site depends on a majority
percentage, there can only be one majority percentage rating for each site.
Thus, for any given site, there will be a single majority percentage
designation and that designation will be either indoor or outdoor.2 This
interpretation is in accord with the disclosure in the Specification. (See, e.g.,
Spec. Tables 1 & 2.)
The portions of Shuchman relied on by the Examiner or cited by
Appellant teach that “[d]uring itinerary management mode, the user may
decide to change plans.” (Shuchman, col. 3, ll. 58–59.) “The user may select
general traits he would prefer POI’s [(points of interest)] in his itinerary to

2 This is not to suggest that other ratings related to indoor or outdoor features
of a site, i.e., non-majority percentage based ratings, cannot be stored.
However, claim 1 uses the majority percentage based ratings in the claim
step of reforming the itinerary, i.e., “by replacing said sites having said
majority percentage of outdoor site features for its indoor-outdoor rating,
with other tour sites having a highest said majority percentage of indoor site
features for its indoor-outdoor rating.” In claim 1, each site must have one
indoor-outdoor rating comprising a majority percentage designating the site
as indoor or outdoor.
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Application 13/691,821

20
have. For example: user may specify that he would prefer indoor POI’s
over outdoor POI’s” (id. at col. 6, ll. 51–54), that “non-limiting, evaluation
heuristics are as follows: . . . preferred weather conditions–do the weather
conditions match the selected POI’s? (nice weather on the day out)” (id. at
col. 11, ll. 13–22), and that “if the user prefers outdoor POI’s over indoor
POI’s, an outdoor POI, such as a park will receive a higher score than in
indoor POI such as a museum” (id. at col. 9, ll. 37–41).
Thus, Shuchman teaches accepting as input a user’s preference about
visiting outdoor or indoor sites. However, it is unclear what information
Shuchman stores about a site. For example, does Shuchman store
information designating a site as both indoor and outdoor, i.e., in Shuchman,
can a site such as a castle with an outdoor garden, be designated as both
indoor and outdoor? If so, it is unclear how to select one of those
designations as being associated with a majority percentage. It is also
unclear if all sites in Shuchman must be designated as indoor or outdoor.
May some sites not be designated as either? In short, it is unclear from the
cited portions of Shuchman if Shuchman stores a respective indoor-outdoor
rating for each tour site where that rating comprises a majority percentage
designation of either indoor or outdoor. We find the same shortcoming in
the cited portions of Whitsett. Nor does the Examiner determine that it
would have been obvious to modify one or more references to store “a
respective indoor-outdoor rating for each said tour site created by assessing
each of said tour sites, each said indoor-outdoor rating comprising a majority
percentage of said respective tour site comprising indoor site features or a
majority percentage of said respective tour site comprising outdoor site
features,” as recited in claim 1.
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Therefore, we will reverse the rejection of claim 1. Independent
claims 35 and 41 contain similar language and, for the reasons discussed, we
will also reverse the rejection of claims 35 and 41. The additional references
relied on by the Examiner in rejecting dependent claims 2, 4–17, 19–21, 36–
40, and 42 do not cure this deficiency. Therefore, we will also reverse the
rejections of claims 2, 4–17, 19–21, 36–40, and 42.

CONCLUSION
The Examiner’s rejection of claims 1, 2, 4–17, 19–21, and 35–42
under 35 U.S.C. § 112(a) is reversed.
The Examiner’s rejection of claims 1, 2, 4–17, 19–21, and 35–42
under 35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1, 2, 4–17, 19–21, and 35–42
under 35 U.S.C. § 103(a) are reversed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–17,
19–21, 35–42
112(a) written description 1, 2, 4–17,
19–21, 35–
42
1, 2, 4–17,
19–21, 35–42
101 eligibility 1, 2, 4–17,
19–21,
35–42

1, 2, 4, 5, 7–
13, 17, 19–21
103(a) Whitsett,
Shuchman, Ben-
Yehuda, Purang
1, 2, 4, 5, 7–
13, 17, 19–
21
6 103(a) Whitsett, Ben-
Yehuda,
Shuchman, Purang,
Aycock
6
14 103(a) Whitsett, Ben-
Yehuda,
14
Appeal 2018-008780
Application 13/691,821

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Shuchman, Purang,
Heideman
15 103(a) Whitsett, Ben-
Yehuda,
Shuchman, Purang,
Randall, Jonsson
15
16 103(a) Whitsett, Ben-
Yehuda,
Shuchman, Purang,
Chavez, Kent
16
35, 37–39, 41 103(a) Whitsett, Ben-
Yehuda, Shuchman
35, 37–39,
41
36, 42 103(a) Whitsett,
Shuchman, Ben-
Yehuda, Purang
36, 42
40 103(a) Whitsett,
Shuchman, Ben-
Yehuda, Aycock
40
Overall
Outcome
1, 2, 4–17,
19–21,
35–42

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