Mark E. Krugman et al.

Patent Trials and Appeals Board

Oct 11, 2019

14260417 - (D) (P.T.A.B. Oct. 11, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/260,417 04/24/2014 Mark E. Krugman 83418785 4059
28395 7590 10/11/2019
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
WALLACE, DONALD JOSEPH
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
10/11/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK E. KRUGMAN,
JAMES RYAN CHINAVARE,
JAMES W. HELMKE, and
ERIC KRUGMAN

Appeal 2018-008787
Application 14/260,417
Technology Center 3600
____________

Before DANIEL S. SONG, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12 and 15–19. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Ford Global
Technologies, LLC.” Appeal Br. 2.
Appeal 2018-008787
Application 14/260,417

2
CLAIMED SUBJECT MATTER
The disclosed subject matter “generally relate[s] to a method and
apparatus for contact address population and verbal address selection.”
Spec. ¶ 1. System claim 1, method claim 8, and apparatus claim 15 are
independent. Claim 1 is illustrative of the claims on appeal and is
reproduced below.
1. A system comprising:
a processor configured to:
receive a natural language instruction including a
navigation instruction and a contact name;
parse the natural language instruction to identify and
extract the navigation instruction and contact name;
retrieve a physical address saved in a vehicle computing
system contact entry corresponding to the contact name;
verify validity of the retrieved address as a navigation
destination by comparison to a database of known navigable
addresses; and
responsive to a determination that the retrieved address
was invalid and that a correction has been made to the address
by a user, replace the physical address saved in the contact
entry with a new, corrected address.
REFERENCES RELIED ON BY THE EXAMINER
Moshfeghi US 2008/0319653 A1 Dec. 25, 2008
Chen US 2010/0312469 A1 Dec. 9, 2010
Davis et al. US 2013/0311091 A1 Nov. 21, 2013
THE REJECTIONS ON APPEAL
Claims 1–12 and 15–19 are rejected because the claimed invention is
directed to a judicial exception to 35 U.S.C. § 101 (i.e., is a law of nature, a
natural phenomenon, or an abstract idea) without significantly more.
Claims 1, 6–8, and 15 are rejected under 35 U.S.C. § 103 as
unpatentable over Moshfeghi and Davis.
Appeal 2018-008787
Application 14/260,417

3
Claims 2–5, 9–12, and 16–19 are rejected under 35 U.S.C. §103 as
unpatentable over Moshfeghi, Davis, and Chen.
ANALYSIS
The rejection of claims 1–12 and 15–19
under judicial exception to 35 U.S.C. § 101
In this rejection, Appellant argues all the claims that are on appeal
(i.e., claims 1–12 and 15–19) together. See Appeal Br. 6–9. We select
claim 1 for review, with the remaining claims standing or falling with claim
1. See 37 C.F.R. § 41.37(c)(1)(iv).
In addressing claim 1, the Examiner found that the listed “steps
constitute collecting and comparing known information and identifying
options . . . which can be performed in the human mind or by a human using
pencil and paper, and which have been found by the courts to constitute an
abstract idea.” Final Act. 3. The Examiner continued stating, “[t]he claims
do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the claimed elements
are performed by a generic computer in the form of a ‘processor.’” Final
Act. 3. The Examiner references Paragraph 30 of Appellant’s Specification
wherein the exemplary “processor” is discussed.2 Final Act. 3. The

2 Paragraph 30 of Appellant’s Specification states, in part,
With respect to the illustrative embodiments described in this
figure, it is noted that a general purpose processor may be
temporarily enabled as a special purpose processor for the
purpose of executing some or all of the exemplary methods
shown herein. When executing code providing instructions to
perform some or all steps of the method, the processor may be
temporarily repurposed as a special purpose processor, until
such time as the method is completed.
Appeal 2018-008787
Application 14/260,417

4
Examiner disagrees that the execution of a program on a general purpose
processor transforms that processor into a special purpose processor during
the execution of that program. Instead, the Examiner states, “the nature of
the general purpose processor is not thus transformed. It remains a generic
processor, before, during and after the execution of each program step.”
Final Act. 3–4. The Examiner concludes, “[t]he system of claim 1 therefore
comprises only a computer implementation of a series of method steps that
constitute an abstract idea of itself.” Final Act. 4. The Examiner further
concludes that these series of steps “includes recitation of generic computer
structure that serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
pertinent industry.” Final Act. 4.
Appellant states, “[t]he Examiner’s rejection largely focuses around
an apparent attempt to characterize the processor of the claims as being
generic.” Appeal Br. 8. However, according to Appellant, “[t]he processor
being configured to do something is a transformation of the processor into a
special purpose processor.” Appeal Br. 8; see also Spec. ¶¶ 28, 30, 37, 42,
56. Paraphrasing limitations found in claim 1, Appellant states, “[i]f the
attempt fails, and the user corrects the address, the system then automatically
updates contact information to fix the erroneous address.” Appeal Br. 9.
“This is not how such systems commonly function” and as a result, claim 1
recites “a more functional and robust navigation system than those
‘routinely’ or ‘commonly’ used today.” Appeal Br. 9. Hence, “[t]he whole
claim functions in a manner that is neither routine nor conventional” and
further, “[t]he Examiner’s attempt to combat this argument by insisting that
the whole process can be performed with pencil and paper does nothing to
Appeal 2018-008787
Application 14/260,417

5
address the complete lack of showing of the whole system being ‘routine’
and ‘conventional.’” Appeal Br. 9.
Appellant does not challenge any other aspect of the Examiner’s
rejection other than that “the Examiner is to consider the whole effect of the
claims” (Appeal Br. 7) and, more specifically, that the recited “processor” is
“temporarily enabled as a special purpose processor” as discussed above.
Spec. ¶ 30; see also Appeal Br. generally. Appellant’s Reply Brief likewise
addresses this “‘something more’ question,” and more specifically whether
or not the Examiner, by relying on Appellant’s own specification (see Final
Act. 3–4; Ans. 3–4), has provided a sufficient showing as to the
“routineness” of the recited “processor.” Reply Br. 2. Appellant further
states that the Examiner has failed to show that “overwrit[ing] a saved
contact address with a new, correct address” has “not been shown in the
prior art” and that “it certainly was not a routine procedure in 2014 (or
today).” Reply Br. 2. Regarding this latter “overwriting” contention, the
Examiner previously stated that “individually and as a whole,” the correction
of an address “can be performed with a pencil and paper, and have been
every time a user’s address book has been found to have an erroneous entry,
whether it be a transposed house number or a misspelled street name.” Ans.
5. The Examiner thus concludes, “[t]he claimed system does no more than
automate the process, and does so with a generic computer performing
normal computer functions.” Ans. 5.
We are guided by 37 C.F.R. § 41.37(c)(1)(iv) which states, “[e]xcept
as provided for in §§41.41, 41.47 and 41.52, any arguments or authorities
not included in the appeal brief will be refused consideration by the Board
for purposes of the present appeal.” Additionally, the U.S. Patent and
Appeal 2018-008787
Application 14/260,417

6
Trademark Office (USPTO) recently published revised guidance on the
application of § 101. See USPTO’s January 7, 2019 Memorandum, 2019
Revised Patent Subject Matter Eligibility Guidance (“Revised Guidance”),
84 Fed. Reg. 50–57. Per the Revised Guidance, 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 activities such as a fundamental economic
practice, or mental processes) which is identified as “Prong
One” of “Step 2A.” (Revised Guidance, 84 Fed. Reg. at 54,
Section III.A.1.); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
which is identified as “Prong Two” of “Step 2A.” (Revised
Guidance, 84 Fed. Reg. at 54, Section III.A.2.).
Only if a claim recites a judicial exception (see (1) above) and does
not integrate that exception into a practical application (see (2) above), do
we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); 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, and which are
identified as “Step 2B.” Revised Guidance, 84 Fed. Reg. at 56,
Section III.B.
Appeal 2018-008787
Application 14/260,417

7
Step 2A, Prong 1
Applicable to (1) above, the Examiner addresses Appellant’s use of a
processor for the “receive,” “retrieve,” “verify,” and use of the corrected
address limitations. Final Act. 2–3. The Examiner contends that these
recited limitations “can be performed in the human mind or by a human
using pencil and paper.” Final Act. 3. As indicated above, the Examiner
ascertained that correcting an incorrect address via pencil and paper is
common. See Ans. 5 (steps “have been [performed] every time a user’s
address book has been found to have an erroneous entry”). Although
Appellant disagrees with this assessment, Appellant does not explain how
the correction of an erroneous entry is an act that cannot be done via pencil
and paper. See Appeal Br. 9. We have also been informed by our reviewing
court that the incidental use of a “computer” or “computer readable
medium” does not make a claim otherwise directed to a process that “can be
performed in the human mind, or by a human using a pen and paper” patent
eligible. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375,
1372 (Fed. Cir. 2011). We thus are satisfied that this portion (1) of the
above Revised Guidance has been met.
Step 2A, Prong 2
We next turn to (2) above to ascertain whether there exist additional
elements in claim 1 that integrate the judicial exception into a practical
application. On this point the Revised Guidance itself specifically identifies
“examples in which a judicial exception has not been integrated into a
practical application.” Revised Guidance, 84 Fed. Reg. at 55 (emphasis
added). One exception example is when the claim “merely includes
instructions to implement an abstract idea on a computer, or merely uses a
Appeal 2018-008787
Application 14/260,417

8
computer as a tool to perform an abstract idea.” Revised Guidance, 84 Fed.
Reg. at 55. This is the situation before us because claim 1 recites a
“processor” that is “configured to” perform certain steps regarding a saved
address that cannot be verified and is subsequently corrected. Appellant
states that if an error occurs, and such error is corrected by the user, “the
system then automatically updates the contact information to fix the
erroneous address.” Appeal Br. 9. This is consistent with Appellant’s
Specification as well (“In at least one embodiment, the corrected address is
automatically saved.”). Spec. ¶ 61; see also Ans. 5 (“[t]he claimed system
does no more than automate the process.”).
In the matter before us, the Examiner finds that claim 1 “includes
recitation of generic computer structure . . . , i.e. a non-specific, generic
computer or computing device comprising a processor and storage medium,
the medium including computer executable instructions.” Final Act. 4. To
be clear, in addition to a “processor,” claim 1 also recites “a physical address
saved in a vehicle computing system contact entry” and comparing that
address “to a database of known navigable addresses.” Appellant’s
Specification provides no guidance that either the “contact entry” or the
“database of known navigable addresses” are anything other than names
given to generic devices. See, e.g., Spec. ¶¶ 15, 16, 23, 31–34, and Fig. 1.
Hence, it is concluded that because the additional elements recited pertain to
a computer as merely a tool to employ when performing the judicial
exception, we conclude that in accordance with direction from the Revised
Guidance, these additional elements do not integrate the judicial exception
into a practical application.
Appeal 2018-008787
Application 14/260,417

9
Step 2B
We next proceed to (3) above addressing whether the claim adds a
specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field. Revised Guidance, 84 Fed.
Reg. at 56. Or, in the alternative, we proceed to (4) above addressing
whether the claim “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.” Revised Guidance, 84 Fed. Reg. at 56.
Here, the issue to be addressed surrounds the recited “processor” and
whether the employment of such device in the manner recited is well-
understood, routine, or conventional.
It is not disputed by Appellant that the processor automates the recited
limitations. See supra. Instead, as above, Appellant contends that when the
processor is performing its programmed instructions, the processor is
“temporarily enabled as a special purpose processor for the purpose of
executing some or all of the exemplary methods shown herein.” Spec. ¶ 30;
see also id. at ¶¶ 28, 37, 42, 56; Appeal Br. 8. We are not persuaded that the
temporary operation of a machine in a particular manner transforms that
machine into a wholly different machine. In other words, the machine
remains the same, it is only operated differently. This is consistent with the
Examiner’s finding above that “the nature of the general purpose processor
is not thus transformed. It remains a generic processor, before, during and
after the execution of each program step.” Final Act. 3–4. Further, the
Supreme Court has provided instruction “that the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea ‘while adding the words
Appeal 2018-008787
Application 14/260,417

10
“apply it”’ is not enough for patent eligibility.” Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 573 U.S. 208, 223 (2014) (alterations in original) (quoting Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 72
(2012)).
In view of the above, we are not persuaded “the claim adds a specific
limitation beyond the judicial exception that is not ‘well-understood, routine,
conventional’ in the field.” Revised Guidance, 84 Fed. Reg. at 55.
Accordingly, based on the record presented and the above Revised
Guidance, we sustain the Examiner’s rejection of claims 1–12 and 15–19.
The rejection of claims 1, 6–8, and 15
as unpatentable over Moshfeghi and Davis
Independent claim 1 recites that upon a determination that a retrieved
address is invalid and that a correction thereto was been made by the user,
the processor is configured to “replace the physical address saved in the
contact entry with a new, corrected address.” Claim 1 further recites that
address invalidity is based on a “comparison to a database of known
navigable addresses” (i.e., a database separate from the “contact entry” from
which the address was initially retrieved). Independent claims 8 and 15
include similar limitations. The Examiner acknowledges that Moshfeghi
“does not expressly teach” such limitations and relies on Davis for such
teachings. Final Act. 8, 10, 11.
Appellant specifically contends that in Davis, “the database of map
data, not the contact information is updated.” Appeal Br. 10; see also
Reply Br. 3. The Examiner appears to agree stating, “Davis et al. further
teaches updating the navigation database” (Ans. 6) but remains silent about
any updating of the “address saved in the contact entry.” The Examiner
Appeal 2018-008787
Application 14/260,417

11
further acknowledges that Davis “verifies that the destination is valid by
comparison to a database of known navigable addresses, and generates a
path to the destination (Davis et al., para. [0054]).” Ans. 5. However,
updating the recited “database of known navigable addresses” and
generating a path to the destination is not the same as “replac[ing] the
physical address saved in the contact entry with a new, corrected address” as
recited. See also Davis ¶ 73, Abstract.
Accordingly, and based on the record presented, the Examiner has not
established by a preponderance of the evidence that the combination of
Moshfeghi and Davis renders claims 1, 8, or 15 obvious. Consequently, we
do not sustain the Examiner’s rejection of claims 1, 8, and 15 (or dependent
claims 6 and 7) as being unpatentable over Moshfeghi and Davis.
The rejection of claims 2–5, 9–12, and 16–19
as unpatentable over Moshfeghi, Davis, and Chen
Appellant contends that the additional reference to Chen “does not
cure the noted deficiencies of Moshfeghi/Davis with respect to” claim 1
above. Appeal Br. 11. We agree because the Examiner does not employ
Chen in a manner that might cure the above defect. See Final Act. 13.
Accordingly, we do not sustain the Examiner’s rejection of claims 2–5,
9– 12, and 16–19 as unpatentable over Moshfeghi, Davis, and Chen.
CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–12 and 15–19 § 101 1–12 and 15–
19

Appeal 2018-008787
Application 14/260,417

12
Claims
Rejected
Basis Affirmed Reversed
1, 6–8, and 15

§ 103, Moshfeghi,
Davis
1, 6–8, and 15
2–5, 9–12, and
16–19
§ 103, Moshfeghi,
Davis, Chen
2–5, 9–12, and
16–19
Overall
Outcome3
1–12 and 15–
19

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

3 37 C.F.R. § 41.50(a)(1) states, “The affirmance of the rejection of a claim
on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim.”