Kyung Bo NAM et al.

Patent Trials and Appeals Board

Apr 26, 2021

2020002406 (P.T.A.B. Apr. 26, 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 04/26/2021
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
04/26/2021 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.
Opinion for the Board filed by Administrative Patent Judge CRAIG.
Opinion Dissenting filed by Administrative Patent Judge HUME.
CRAIG, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Appellant filed a Request for Rehearing (“Request”) dated March 24,
2021, seeking reconsideration of our Decision, mailed February 1, 2021
(“Decision”), in which we affirmed the rejection of claims 1, 2, 4–9, and 11–
14 under 35 U.S.C. § 101.
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ANALYSIS
New Ground of Rejection
Appellant first asks the Board to designate its Decision as a new
ground of rejection. See Request 3–4.
An appellant may request:
(c) Review of undesignated new ground of rejection. Any
request to seek review of a panel's failure to designate a new
ground of rejection in its decision must be raised by filing a
request for rehearing as set forth in §41.52. Failure of appellant
to timely file such a request for rehearing will constitute a
waiver of any arguments that a decision contains an
undesignated new ground of rejection.
37 C.F.R. § 41.50(c).
In its Request, Appellant asserts that the Board’s formulation of the
abstract idea was different than the Examiner’s formulation of the abstract
idea for claims 1, 2, 4–9, and 11–14. Request 3. In particular, Appellant
states that the Examiner “alleged that the claims are directed to the abstract
idea of ‘certain methods of organizing human activity,’” while the Board
affirmed the § 101 rejection on the basis that the claims are directed to
mental processes. Id.
We agree with this characterization of the Examiner’s determinations
and the Board’s affirmance with regard to claims 1, 2, 4–9, and 11–14.
On the facts of this case, we determine that it is reasonable to
designate the Decision as containing a new ground of rejection as our
analysis under § 101 adds new reasoning and makes findings that alter the
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thrust of those made by the Examiner. Accordingly, we grant Appellant’s
request.
Additional Arguments
We decline to modify our Decision based on the additional arguments
Appellant makes with regard to (1) whether claim 1 recites a judicial
exception, and (2) whether additional elements integrate the judicial
exception into a practical application. See Request 4–8.
A request for rehearing is properly limited to previously addressed
matters that were misapprehended or overlooked. See 37 C.F.R. § 41.52(a).
It is not an opportunity to further develop the record through the introduction
of new evidence and/or arguments. Nor is it an opportunity to disagree with
the Board’s assessment of the arguments or to bolster an insufficient
argument already made.
Appellant first argues that “[t]he claimed extraction and
determination of interest operations are not abstract mental processes that
can practically be performed in the human mind under Step 2A(i).”
Request 4. Appellant argues that the Specification describes “in detail” that
that the telematics system is installed in an automobile, and that the server
communicates with the telematics system “over a wireless data network,”
determines the interest information by scouring search engine history,
communicates with social network service (“SNS”) servers to analyze social
networking accounts associated with the driver, and determines the points of
interest (“POIs”) corresponding to the interest information in relation to “the
location of the vehicle and/or the vehicle travel route from an Internet map
server” obtained “in real-time.” Id., citing Spec. ¶¶ 28, 33, 37, 61, 62.
According to Appellant, such concepts require, for example, TCP/IP
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connections, data exchange between the mobile automobile and the server in
real-time, and “extensive searches of massive data in real-time” to determine
the interests of the driver, and are not merely concepts performed in the
human mind that are now being claimed with regard to a generic computer.
See id.
As we explained in the Decision (Decision 10), “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). We
determined that claim 1 requires extracting at least two keywords from a
“website associated with the driver.” Decision 10. We determined that
nothing in the claim precludes the keywords from being extracted by the
human mind. Id. We further determined that, in the event the keywords or
website were lengthy, such extraction could occur using pen and paper. Id.
We also determined that the “determining interests” step is 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. Id. We determined that 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.” Id.
Appellant’s new argument does not change our assessment of whether
claim 1 recites a mental process. Claim 1 does not recite, for example, the
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TCP/ IP connections, data exchange between the mobile automobile and the
server in real-time, and “extensive searches of massive-data in real-time,”
that Appellant alleges are required. See Request 5. Moreover, Appellant does
not argue, and therefore has not persuaded us, that TCP/ IP connections, data
exchange, and data searching fall outside the realm of capabilities of a
generic computer.
Second, with regard to whether the judicial exceptions are integrated
into a practical application, Appellant argues that the additional elements
“improve[e] a telemetric system included in a vehicle by increasing the
quality of the POIs presented by the telemetric system to a driver of the
vehicle.” Request 8. In other words, Appellant argues that the additional
claim elements improve the system by increasing the quality of the data
presented to the user. See Request 8. Appellant points to portions of the
Specification that describe a need to provide more data to a driver of a
vehicle by using various Internet services, in order to enhance navigation
quality and convenience. Id., citing Spec. ¶¶ 6, 7. Appellant, however, has
identified a business solution to a business problem, not a technical solution
to a technical problem. Appellant has not directed our attention to anything
in the Specification that indicates claim 1 provides a technical improvement
to the functioning of a computer or to another technology. See Alice Corp.
Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2359 (2014); see also MPEP
2106.05(a).1

1 Appellant points to Example 45 of the October 2019 Update: Subject
Matter Eligibility to bolster its improvement argument. Request 7. Not only
is Example 45 not binding on this panel, Appellant has not fully or
persuasively explained how Example 45 applies to the rejected claims.
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For these reasons, we are not persuaded that we overlooked or
misapprehended any point of law or fact in rendering our Decision.
Therefore, we decline to modify our original Decision, other than to
designate the Decision as containing a new ground of rejection.
CONCLUSION
Appellant’s Request has been granted to the extent that we designate
the Decision as containing a new ground of rejection, but is denied in all
other respects.
SUMMARY
Outcome of Decision on Rehearing
Claim(s)
Rejected
35 U.S.C.
§

Reference(s)/Basis
Granted Denied
1, 2, 4–9, 11–
14
101 Eligibility 1, 2, 4–9,
11–14

Final Outcome of Appeal after Rehearing
Claim(s)
Rejected
35 U.S.C.
§

Reference(s)/Basis
Affirmed Reversed
1, 2, 4–9, 11–
14
101 Eligibility 1, 2, 4–9,
11–14

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

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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).

GRANTED; 37 C.F.R. § 41.50(b)

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HUME, Administrative Patent Judge, dissenting.
I respectfully dissent from the majority’s Decision granting
Appellant’s Request for Rehearing and designation of the rejection of claims
1, 2, 4–9, and 11–14 under 35 U.S.C. § 101 as a new ground of rejection
under 37 C.F.R. 41.50(b).
I originally disagreed with the majority Decision that representative
claim 1 recites an abstract idea and is not directed to patent-eligible subject
matter. See generally, Dissent. However, in light of the Request, neither the
thrust nor statutory basis of the § 101 rejection has changed, nor have new
findings of fact outside the record been introduced by the majority’s
Decision. The specific issue before us now on rehearing is purely a matter
of claim construction, and not disputed findings of fact.
Although I disagree with the majority’s claim construction in the
Decision, I disagree with Appellant’s contention that the majority’s claim
interpretation rises to the level of a new ground of rejection, because claim
interpretation is the first step in any meaningful analysis, consistent with our
statutory responsibility as a Board to “review adverse decisions of
[E]xaminers upon applications for patents pursuant to section 134(a).” 35
U.S.C. § 6(b)(1).
Our review under § 101 necessarily requires construing the contested
claim limitations in light of the Specification. The issue of proper claim
construction under the broadest reasonable interpretation standard is a
preliminary consideration for review of each claim limitation contested by
Appellant. To require claim construction by the Board to be designated a
new ground of rejection would frustrate the purpose of the Administrative
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Procedure Act (“APA”), and any meaningful PTAB administrative review of
the claim terms contested on appeal. Further, Appellant does not
specifically explain how the majority’s claim interpretation changed the
thrust of the rejection set forth by the Examiner because both the Examiner’s
and the majority’s claim construction resulted in the same legal conclusion
that the claims recite and are directed to abstract ideas. See generally,
Answer and Decision.
Our reviewing court recognizes the Board need not recite and agree
with the Examiner’s rejection in haec verba to avoid issuing a new ground
of rejection:
Under the Act [(APA)], an applicant for a patent who
appeals a rejection to the Board is entitled to notice of the
factual and legal bases upon which the rejection was based. 5
U.S.C. § 554(b)(3). The Board’s rules are in accord and provide
that when the Board relies upon a new ground of rejection not
relied upon by the examiner, the applicant is entitled to reopen
prosecution or to request a rehearing. See 37 C.F.R. § 41.50(b).
The Board need not recite and agree with the examiner’s
rejection in haec verba to avoid issuing a new ground of
rejection. “[T]he ultimate criterion of whether a rejection is
considered ‘new’ in a decision by the [B]oard is whether
[applicants] have had fair opportunity to react to the thrust of
the rejection.” In re Kronig, 539 F.2d 1300, 1302–03 (CCPA
1976) (holding no new ground of rejection when the Board
relied on the same statutory basis and the same reasoning
advanced by the Examiner).
In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir. 2011).
This reasoning is applicable here, even though the Examiner and the
majority reached different conclusions as to the precise abstract
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characterization of each specific claim limitation.2 Appellant had fair
opportunity to react to the legal conclusions reached in the Decision, as
guided by Leithem and Kronig. Therefore, I find Appellant’s arguments
unpersuasive that the majority’s claim interpretation in the Decision rises to
the level of a new ground of rejection.
Therefore, in spite of my original disagreement with the majority as to
the lack of subject matter eligibility of the claims, I respectfully disagree
with the majority’s granting of the Request and designation of the § 101
rejection of claims 1, 2, 4–9, and 11–14 under 35 U.S.C. § 101 as a new
ground of rejection. For patent prosecution and judicial efficiency reasons,
and given that Appellant’s due process rights have been observed, I believe
that the majority Decision should be maintained, and the rejection under
§ 101 should be held as ripe for judicial review.

2 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).