Kyung Bo NAM et al.

Patent Trials and Appeals Board

Feb 1, 2021

2020002406 (P.T.A.B. Feb. 1, 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.
13/217,588 08/25/2011 Kyung Bo NAM 16634-000079/US 6281
30593 7590 02/01/2021
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
OSMAN BILAL AHME, AFAF
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/01/2021 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):
dcmailroom@hdp.com
jcastellano@hdp.com
jhill@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYUNG BO NAM and CHOONG HEE LEE
Appeal 2020-002406
Application 13/217,588
Technology Center 3600
Before LARRY J. HUME, MELISSA A. HAAPALA, and JOYCE CRAIG,
Administrative Patent Judges.
PER CURIAM
Opinion Dissenting filed by Administrative Patent Judge HUME.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–2, 4–9, and 11–14, which are all
claims pending in the application. Appellant has canceled claims 3 and 10.
See Appeal Br. 30 et seq. (Claims App.). 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 NHN Corporation.
Appeal Br. 2.
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STATEMENT OF THE CASE2
The claims are directed to an internet telematics service providing
system and method for providing personalized and social information. See
Spec. (Title). In particular, Appellant’s disclosed embodiments and claimed
invention “relate to an Internet telematics service providing system and
method that may provide personalized point of interest (POI) information
using various types of Web information.” Spec. ¶ 3.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphases added to dispositive limitations):
1. A server configured to provide various information
to a telematics system installed in a vehicle, the server
comprising:
a memory having computer readable instructions stored
thereon; and
at least one processor configured to execute the computer
readable instructions to,
obtain interest information indicating interests of a
driver of the vehicle, the interest information being obtained by,
extracting a plurality of keywords from at least one
of online communities and social media accounts
associated with the driver, a bookmarked website
associated with the driver, a website associated with the
driver, interest information of an operator of the website

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Mar. 15, 2019); Reply Brief (“Reply Br.,” filed Feb. 6, 2020); Examiner’s
Answer (“Ans.,” mailed Dec. 12, 2019); Final Office Action (“Final Act.,”
mailed Oct. 19, 2018); and the original Specification (“Spec.,” filed
Aug. 25, 2011).
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associated with the driver, a search history of a search
engine, and a history in the telematics system, and
determining interests of the driver based on an
extraction frequency for each of the plurality of
keywords,
receive, in real-time, at least one of a location and a
travel route from the telematics system installed in the vehicle,
extract, in real-time, points of interest (POI) information
corresponding to the interest information and the at least one of
the location and the travel route from the telematics system, the
POI information including POIs proximate to at least one of the
location of the telematics system installed in the vehicle and the
travel route of the vehicle,
provide, in real-time, the POI information to the
telematics system, and
instruct, in real-time, the telematics system installed in
the vehicle to display the POI information on a map screen with
a marker on the map screen, the POI information including at
least one of a location information of at least one of the POIs, a
telephone number of at least one of the POIs, and an address of
at least one of the POIs.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Steele et al. (“Steele”) US 2002/0046084 A1 Apr. 18, 2002
Zilka US 2012/0046864 A1 Feb. 23, 2012

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REJECTIONS
R1. Claims 1, 2, 4–9, and 11–14 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to patent-ineligible subject
matter. Final Act. 11.
R2. Claims 1, 2, 4–9, and 11–14 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Steele and Zilka.
Final Act. 13.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. 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).
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to obviousness Rejection R2 of claims 1, 2, 4–9, and 11–14 under 35 U.S.C.
§ 103(a) for the specific reasons discussed below.
However, we disagree with Appellant’s arguments with respect to
Rejection R1 of claims 1, 2, 4–9, and 11–14 under 35 U.S.C. § 101 and,
unless otherwise noted, we incorporate by reference herein and adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellant’s arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
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1. § 101 Rejection R1 of Claims 1, 2, 4–9, and 11–14
Issue 1
Appellant argues (Appeal Br. 9–20; Reply Br. 2–6) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, has Appellant persuasively argued that
claim 1 is patent eligible under § 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.3
However, the 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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)

3 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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(citing Mayo, 566 U.S. at 75–77). 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” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India 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))).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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Examples of claims that do not recite mental processes because they
cannot be practically performed in the human mind include: (a) a claim to a
method for calculating an absolute position of a GPS receiver and an
absolute time of reception of satellite signals, where the claimed GPS
receiver calculated pseudoranges that estimated the distance from the GPS
receiver to a plurality of satellites, SiRF Technology, Inc. v. International
Trade Commission, 601 F.3d 1319, 1331–33 (Fed. Cir. 2010); (b) a claim to
detecting suspicious activity by using network monitors and analyzing
network packets, SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304
(Fed. Cir. 2019); and (c) a claim to a specific data encryption method for
computer communication involving a several-step manipulation of data,
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed.
Cir. 2016) (distinguishing TQP Development, LLC v. Intuit Inc., 2014 WL
651935 (E.D. Tex. Feb. 19, 2014)) (the specific data encryption method
“could not conceivably be performed in the human mind or with pencil and
paper”). Whereas a claim limitation to a process that “can be performed in
the human mind, or by a human using a pen and paper” qualifies as a mental
process, a claim limitation that “could not, as a practical matter, be
performed entirely in a human’s mind” (even if aided with pen and paper)
would not qualify as a mental process.4
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the

4 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 1375-
76 (Fed. Cir. 2011) (distinguishing Research Corp. Techs. v. Microsoft
Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319 (Fed. Cir. 2010)).
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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 (citation 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.
B. USPTO Revised Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.5 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).6
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 human activity such as a fundamental economic

5 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “Revised Guidance”) (https://www.govinfo.gov/
content/pkg/FR-2019-01-07/pdf/2018-28282.pdf). In response to formal
public comments, the Office issued further guidance on October 17, 2019,
clarifying the 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.
6 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
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practice, or mental processes) (“Step 2A, Prong One,” referred
to herein as “Step 2A(i)”); and
(2) additional elements that integrate the judicial
exception into a practical application (“Step 2A, Prong Two,”
referred to herein as “Step 2A(ii)”).7
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,8 do we then look, under
Step 2B (referred to herein as “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.9
MPEP § 2106.05(d).

7 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception, 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, using one or more of the
considerations introduced in subsection I supra, and discussed in more detail
in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and
2106.05(e) through (h).” MPEP § 2106.04(d)II.
8 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).
9 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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Analysis
Under Step 2A(i) of the Revised Guidance, we determine the claims
recite a judicial exception—namely, a mental process. Consistent with
Appellant’s description of the claims (Spec. ¶¶ 10, 37), the “extract” step, as
recited in claim 1, describes processing collected data to extract points of
interest (“POI”) information that is provided to a telematics system for
display. The recited “extract” and “determining interests” steps fall into the
“mental processes” category of abstract ideas because they can be performed
by the human mind or with pen and paper.
“Mental processes” include acts that people can perform in their
minds or using pen and paper, even if the claim recites that a generic
computer component performs the acts. See MPEP 2106.04(a)(2)(III); 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). Here, for example, claim 1 requires extracting at
least two keywords from a “website associated with the driver.” Nothing in
the claim precludes the keywords from being extracted by the human mind.
In the event the keywords or website were lengthy, such extraction could
occur using pen and paper. Further, the “determining interests” step is also a
mental process step because a person can mentally, or with the aid of pen or
paper, determine interests based on the extraction frequency of the plurality
of keywords. A count of the frequency of keywords would be particularly
simple to do in the human mind in the case of a short website with only a
few keywords chosen for “extraction.”
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Appellant argues that claim 1 does not recite a mental process because
“it would not be possible for a person to provide this information in real time
given the speed at which vehicles travel.” Appeal Br. 11. Not only is
Appellant’s argument conclusory, it does not explicitly address the “extract”
or “determine interests” limitations, as recited in claim 1. In other words,
Appellant has not persuasively explained how extracting POI information or
“determining interests” is impossible for the human mind. Furthermore,
Appellant’s argument is not commensurate with the scope of claim 1 as
claim 1 does not require the “extract” and “determining interests” steps to be
performed in “real time.” Even if the claim were to have such a
requirement, we note that the human mind makes determinations in real
time. Even considering “real-time” in a computer sense, this feature in
electronic computing amounts to no more than using well-known computer
technology for its intended purpose. With the exception of generic computer
implemented functions or steps, then, there is nothing in claim 1 that
forecloses the “extract” or “determining interests” step from being
performed by a human, mentally or with pen and paper.
Turning to Step 2A(ii) of the Revised Guidance, we determine the
abstract mental process recited in claim 1 is not integrated into a practical
application by any additional elements recited in the claim beyond the
judicial exception. In claim 1, the additional elements include the “obtain,”
“receive,” “provide,” and “instruct” steps, as well as the “telematics
system,” “server,” “memory,” “processor,” limitations, as recited in claim 1.
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
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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)).
Here, the “obtain” and “receive” limitations amount to insignificant
extra-solution activity that is insufficient to integrate the judicial exception
into a practical application. MPEP § 2106.05(g). More specifically, the
“obtain” limitation, which includes the steps of “extracting” and
“determining,” and the “receive” limitation amount to data gathering steps
because they merely provide input for the recited data processing steps.
Tying a claimed mental process to specific data cannot turn an abstract idea
into patent-eligible subject matter because “mere ‘[data-gathering] step[s]
cannot make an otherwise nonstatutory claim statutory.” CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (internal
citations omitted); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015) (collecting and analyzing data amounted to mere data
gathering); In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d
sub nom Bilski v. Kappos, 561 U.S. 593 (2010) (characterizing data
gathering steps as insignificant extra-solution activity).
Similarly, the “provide” and “instruct” limitations, as recited in claim
1, which in real-time send the POI information to the telematics system and
render the information on a display, amount to insignificant extra-solution
activity. MPEP § 2106.05(g); Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1355 (Fed. Cir. 2016) (explaining that “selecting information, by
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content or source, for collection, analysis, and display does nothing
significant to differentiate a process from ordinary mental processes”); id. at
1354 (recognizing “that merely presenting the results of abstract processes
of collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis.”); Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 771 F.Supp.2d 1054, 1066 (E.D. Mo. 2011) aff’d, 687 F.3d 1266
(Fed. Cir. 2012) (explaining that “storing, retrieving, and providing data . . .
are inconsequential data gathering and insignificant post solution activity”).
Moreover, the generic computer limitations “telematics system,”
“server,” “memory,” and “processor” do not impose any meaningful limit on
the computer implementation of the abstract idea. See, e.g., Spec. ¶ 28 (“The
telematics system 120 may be any electronic device that can communicate
with the Internet telematics service providing system 110 and/or the
communication terminal 130 in any suitable manner.”).
Appellant argues that claim 1 recites features “directed to the
improvement over prior art systems” by linking the in-vehicle telematics
system to a server that automatically determines and instructs the in-vehicle
telematics system to display potential POIs to the driver in real-time. Reply
Br. 4. Appellant, however, confuses the standards of novelty and patent
eligibility. The novelty of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter. Diehr, 450 U.S. at 188–89; Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016)
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(holding that “[e]ven assuming” that a particular claimed feature was novel
does not “avoid the problem of abstractness”).
Thus, the Examiner correctly determines that none of the additional
limitations integrates the judicial exception into a practical application
because any claimed improvements are to the underlying business method,
not to a computer, technology, or technical field. See Ans. 7.
Turning now to Step 2B of the Revised Guidance, we determine, that
the additional elements also do not add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional
activity” in the field, and Appellant does not direct our attention to anything
in the Specification that indicates they do. See buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive”); Alice, 573 U.S. at 225–26 (receiving, storing,
sending information over networks insufficient to add an inventive concept).
Moreover, claim 1 can be distinguished from patent-eligible claims such as
those in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed.
Cir. 2016), that require the generic components operate in an unconventional
manner. See Reply Br. 8.
Appellant argues that “the claims are directed to a novel system that
provides a real-time display of useful information, beyond the conventional
information provided by a telematics system, to the user based on the
interest information of the user.” Reply Br. 5. Appellant’s reliance on the
novelty of the invention is once again unavailing. Moreover, merely making
the practice of an abstract idea more effective by implementing the idea on a
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computer does not suffice to meet the inventive concept requirement of
Alice. See OIP Techs., 788 F.3d at 1363 (“[R]elying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible.”). And performing the claimed functions in
real-time is also insufficient to provide an inventive concept where, like
here, only conventional, generic technology is involved. Electric Power,
830 F.3d at 1356; In re TLI Communications LLC Patent Litigation, 823
F.3d 607 (Fed. Cir. 2016) (collecting and organizing data in the form of
digital images is abstract and patent ineligible, and using computer systems
in their generic ways do not add an inventive concept). Thus, we conclude
the limitations, considered individually and in combination, do not provide
an inventive concept.
Therefore, we sustain the Examiner’s eligibility rejection of claim 1,
and dependent claims 2, 4–9, and 11–14, which are not argued separately.
2. § 103(a) Rejection R2 of Claims 1, 2, 4–9, and 11–14
Issue 2
Appellant argues (Appeal Br. 20–28; Reply Br. 6–9) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Steele and Zilka is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] server configured to provide various information to a
telematics system installed in a vehicle,” including “at least one processor
configured to execute [ ] computer readable instructions to,” inter alia,
“obtain interest information indicating interests of a driver of the vehicle,”
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and “determining interests of the driver based on an extraction frequency for
each of the plurality of keywords,” as recited in claim 1?10
Principles of Law
The test for obviousness is what the combined teachings of the prior
art would have suggested to the hypothetical person of ordinary skill in the
art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Analysis
The Examiner finds Zilka in paragraphs 347 and 348 teaches parsing
words in a document and identifying repeated words, and further finds,
based upon Zilka’s purported teachings, “identifying the repeated words
may include implementing a statistical analysis on the repeated words to
determine a frequency of use and/or a relevance analysis (i.e. the
likelihood the word is relevant in the context used).” Final Act. 14–15.
Appellant responds by contending:
Claim 1 requires the point of interest information
corresponds to “interest information” obtained by “extracting a
plurality of keywords from at least one of online communities
and social media accounts associated with the driver [. . . ] and
a history in the telematics system, and determining interests of
the driver based on an extraction frequency for each of the
plurality of keywords.”
Appeal Br. 21 (emphasis added). Appellant further argues:

10 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
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Zilka discloses extracting keywords and using the frequency of
the keywords to establish tags. . . . [that] can be used for oral
commands. However, this teaching of Zilka does not relate to
interest information for determining ‘points of interest’ of a
user . . . [and Zilka] does not even mention the ‘tags’ or how the
information corresponds to the tags.
Id. at 22.
We are persuaded by Appellant’s arguments. Claim 1 requires
determining interests of the driver based on an extraction frequency for each
of a plurality of keywords. Although Zilka discloses determining a
frequency of use of repeated words, the Examiner does not explain how the
cited combination teaches using the extraction frequency to determine
interests. Thus, on this record, we do not see where the Examiner provides a
clear mapping of the dispositive limitation to Zilka’s teaching of
determining a frequency of use of a word in a document in connection with
generating a tag, and how any such determined frequency of use reasonably
teaches or suggests the recited “interest information indicating interests of a
driver of the vehicle,” as recited in claim 1.
Based upon the findings above, on this record, we are persuaded of at
least one error in the Examiner’s reliance on the cited prior art combination
to teach or suggest the dispositive limitations of claim 1, such that we find
error in the Examiner’s resulting legal conclusion of obviousness.
Therefore, we do not sustain the Examiner’s obviousness rejection of
independent claim 1, and dependent claims 2 and 4–7, which depend from
claim 1. For similar reasons, we do not sustain Rejection R2 of independent
claim 8, which recites the dispositive limitations in commensurate form. We
also do not sustain the rejection of dependent claims 9 and 11–14 which
depend from claim 8.
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CONCLUSIONS
(1) Appellant has not persuasively argued under our Revised
Guidance, governed by relevant case law, that claims 1, 2, 4–9, and 11–14
are patent-eligible under 35 U.S.C. § 101, and we sustain the rejection.
(2) Appellant has persuasively argued that the Examiner erred with
respect to obviousness Rejection R2 of claims 1, 2, 4–9, and 11–14 under
35 U.S.C. § 103(a) over the cited prior art combination of record, and we do
not sustain the rejection.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See
37 C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Basis /
References
Affirmed Reversed
1, 2, 4–9,
11–14
101 Eligibility 1, 2, 4–9,
11–14

1, 2, 4–9,
11–14
103(a) Obviousness
Steele, Zilka
1, 2, 4–9,
11–14
Overall
Outcome
1, 2, 4–9,
11–14

AFFIRMED

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYUNG BO NAM and CHOONG HEE LEE
Appeal 2020-002406
Application 13/217,588
Technology Center 3600

HUME, Administrative Patent Judge, dissenting.
I respectfully dissent from the majority’s opinion affirming the
Examiner’s rejection of claims 1, 2, 4–9, and 11–14 under 35 U.S.C. § 101.
The majority determines that representative claim 1 recites an abstract
idea and, more particularly, recites a mental process. Dec. 10. Accordingly,
the majority concludes that claim 1 is not directed to patent-eligible subject
matter. Id. at 14. I respectfully disagree with the majority’s conclusion.
In the Answer, the Examiner relies upon the Revised Guidance in
formulating the rejection, and concludes claim 1 “appears to be directed
toward a judicial exception, namely the abstract idea of providing various
information to a telematics system installed in a vehicle. . . [and] the
limitations . . . are considered to be abstract because the limitations are
directed towards ‘obtaining and/ or collecting information, analyzing it, and
displaying certain results[’].” Ans. 4. The above limitations are considered
to be abstract because the limitations are “an example of organizing human
activity such as managing personal behavior or relationships or interactions
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Application 13/217,588

2
between people (including social activities, teaching, and following rues
[sic] or instructions).” Ans. 4–5 (emphasis omitted).The Examiner further
states the analysis of these limitations as an abstract idea fits into certain
methods of organizing human activity under the newer guidelines. Ans. 5.
Appellant argues:
However, according to the 2019 PEG, “managing
personal behavior or relationships or interactions between
people” includes social activities, teaching, and following rules
or instructions. Examples of these sub-groupings include
subject matter such as a set of rules for playing a dice game,
voting, verifying the vote, and submitting the vote for
tabulation, assigning hair designs to balance head shape, and a
series of instructions of how to hedge risk. Further, the October
2019 update to the 2019 PEG warns that “the term “certain”
qualifies the “certain methods of organizing human activity”
grouping as a reminder [that] this grouping is limited to
activity that falls within the enumerated sub-groupings of
fundamental economic principles or practices, commercial or
legal interactions, managing personal behavior, and
relationships or interactions between people, and is not to be
expanded beyond these enumerated sub-groupings except in
rare circumstances.”
Reply Br. 3; see also MPEP § 2106.04(a)(2)(II).
[T]he fact that the claim requires obtaining interest information
of the driver by extracting key words from social media
accounts associated with the driver, does not result in the claim
reciting or being directed to managing the personal behavior or
social activity of the driver, rather the claim is directed to
utilizing social media to determine the driver[’]s interests and
then extracting POIs based on the obtained interests, a current
location and a travel route of the user.
Reply Br. 3.
Appeal 2020-002406
Application 13/217,588

3
For purposes of the analysis in this dissent, I accept the Examiner’s
determination that the claim is directed to “providing various information to
a telematics system installed in a vehicle,” and apply the Revised Guidance
to this construction.
However, I conclude the idea identified by the Examiner does not
implicate a mathematical concept and, in contrast to the majority’s Decision
(10), I conclude claim 1 does not involve mental processes that can be
practically performed in the human mind. See MPEP §§ 2106.04(a)(2)(I),
2106.04(a)(2)(III). See also MPEP § 2106.04(a)(2)(III)(A) (“Claims do not
recite a mental process when they do not contain limitations that can
practically be performed in the human mind, for instance when the human
mind is not equipped to perform the claim limitations.”).11 Thus, my
analysis focuses on whether the claim invokes the abstract idea category of
“Certain Method of Organizing Human Activity” (see MPEP
§ 2106.04(a)(2)(II)) and its various sub-categories (“A. Fundamental
Economic Practices or Principles,” “B. Commercial or Legal Interactions,”
and “C. Managing Personal Behavior or Relationships or Interactions
Between People”).
Claim 1 recites, in pertinent part:
A server configured to provide various information to a
telematics system installed in a vehicle, the server comprising:

11 Citing SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304 (Fed.
Cir. 2019) (declining to identify the claimed collection and analysis of
network data as abstract because “the human mind is not equipped to detect
suspicious activity by using network monitors and analyzing network
packets as recited by the claims”).
Appeal 2020-002406
Application 13/217,588

4
a memory having computer readable instructions stored
thereon; and
at least one processor configured to execute the computer
readable instructions to,
obtain interest information indicating interests of a driver
of the vehicle, the interest information being obtained by,
extracting a plurality of keywords from at least one of
online communities and social media accounts associated with
the driver, a bookmarked website associated with the driver, a
website associated with the driver, interest information of an
operator of the website associated with the driver, a search
history of a search engine, and a history in the telematics
system, and
determining interests of the driver based on an extraction
frequency for each of the plurality of keywords. . . .
Claim 1 (emphasis added).
On this record, in light of the claim recitations, I conclude claim 1
does not recite either a fundamental economic activity or a commercial or
legal interaction because I find that “providing various information to a
telematics system” does not, by its plain language, necessarily implicate
these types of abstract ideas. As for the sub-category apparently relied upon
by the Examiner, i.e., “organizing human activity such as managing personal
behavior or relationships or interactions between people (including social
activities, teaching, and following [rules] or instructions),” when the claim is
viewed as a whole, I see no limitation in independent claim 1 (or
independent claim 8) that fits in this category, particularly in light of
Appellant’s argument quoted above and USPTO eligibility guidance found
in MPEP § 2106.04(a)(2)(II).
Appeal 2020-002406
Application 13/217,588

5
Based upon the claim language, in light of the Specification and
Appellant’s arguments, I conclude claim 1, as a whole, is directed to the
non-abstract idea of providing various information to a telematics system,
where the information includes information regarding the interests of the
driver based on a frequency of occurrence of keywords obtained from one or
more web-based information sources, as set forth in the claim.
Because the claim does not recite a judicial exception (a law of nature,
natural phenomenon, or subject matter within the enumerated groupings of
abstract ideas above), in accordance with my interpretation of the Revised
Guidance, I conclude the claim is patent-eligible at Step 2A(i). This
determination concludes the eligibility analysis. Thus, I do not agree with
the Examiner’s rejection of claims 1, 2, 4–9, and 11–14 under 35 U.S.C.
§ 101, or with the Majority’s decision to affirm this rejection.
For these reasons, I conclude the claims as written constitute patent
eligible subject matter.
Accordingly, I respectfully dissent from the majority’s opinion
affirming the Examiner’s rejection of claims 1, 2, 4–9, and 11–14 under 35
U.S.C. § 101. I concur, however, with the majority’s decision reversing the
Examiner’s decision rejecting claims 1, 2, 4–9, and 11–14 under 35 U.S.C.
§ 103(a).