Zhou Bailiang

Patent Trials and Appeals Board

May 4, 2020

2018008825 (P.T.A.B. May. 4, 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.
14/957,425 12/02/2015 Zhou Bailiang 31730/22447-00 5639
12716 7590 05/04/2020
Marshall, Gerstein & Borun LLP (Google)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
EXAMINER
SCHNEIDER, PAULA LYNN
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHOU BAILIANG
Appeal 2018-008825
Application 14/957,425
Technology Center 3600
Before CHARLES N. GREENHUT, JAMES P. CALVE, and
BRETT C. MARTIN, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–9, and 11–23. Claims 4 and 10
were canceled during prosecution. Claims Appendix. 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 Google, LLC. Appeal
Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a system and a method for aligning visual
indicators of map elements. Spec. ¶ 1. Claim 7, reproduced below, is
illustrative of the claimed subject matter:
7. A computer-implemented method for rearranging map
labels corresponding to map elements for display along a route
within a digital map, the method comprising:
obtaining map data for generating a digital map of a
geographic area at a certain zoom level, including obtaining an
indication of a first placement of map labels corresponding to
map elements included in the digital map;
displaying the digital map with the first placement of the
labels in a first instance;
receiving a request for a route between an origin and a
destination;
obtaining route data in response to the request, the route
data defining the route traversing the geographic area;
displaying the digital map of the geographic area at the
same zoom level, in a second instance, with a second placement
of the map labels, including:
displaying the route on the digital map; and
repositioning a subset of the map labels
corresponding to map elements that intersect the route at
one or more points so as to align the subset of the map
labels with the route for visual emphasis.
.
Claims Appendix A-2–A-3.
REJECTIONS
Claims 1–3, 5–9, and 11–23 stand rejected under 35 U.S.C. § 101 as
being directed to unpatentable subject matter. Final Act. 4.

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OPINION
Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept,” id. at 216–18, and, in this case, the inquiry
centers on whether the claims are directed to an abstract idea. If this initial
condition is met, we then move to the second step, in which we “consider
the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. at 217 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78
(2012)). The Supreme Court describes the second step 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.’” Id. (quoting Mayo, 566
U.S. at 72–73).
The USPTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance (“Guidance”), 84
Fed. Reg. 50 (Jan. 7, 2019).2 Under that guidance, we first look to whether
the claim recites:

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility,
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf.
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(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 practice, and
mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look, under “Step 2B,” to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” 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.
See generally Guidance.
ANALYSIS
Claim Grouping
Appellant argues the independent claims as a group for the purpose of
the rejection under a judicial exception to § 101. Appeal Br. 15‒17. As to
this rejection, we select claim 7 as representative of the group, and the
remaining independent claims stand or fall with claim 7. See 37 C.F.R.
§ 41.37(c)(1)(iv).

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Examiner’s Findings and Conclusion
In the first step of the Alice inquiry, the Examiner rejects the claims,
stating that the claims are drawn to the abstract idea of an “idea ‘of itself’
and ‘certain methods of organizing human activity’” similar to concepts that
courts have held to be abstract ideas. Final Act. 8; Ans. 3–4. At Alice step
2, the Examiner additionally determines that the claims do not add a
meaningful limitation to the abstract idea so as to amount to significantly
more than the judicial exception because they implement the abstract idea on
generic processors that perform generic computer functions. Final Act. 9–
10; Ans. 4–5.
Analysis According to the Guidance
Step One: Does Claim 7 Fall within a Statutory Category of § 101?
We first examine whether the claim recites one of the enumerated
statutory classes of subject matter, i.e., process, machine, manufacture, or
composition of matter, eligible for patenting under 35 U.S.C. § 101.
Claim 7 is drawn to a method, which is one of the statutory classes (i.e., a
process) under 35 U.S.C. § 101.
Step 2A, Prong One: Does Claim 7 Recite a Judicial Exception?
We next look to whether the claim recites any judicial exceptions,
including certain groupings of abstract ideas, i.e., mathematical concepts,
certain methods of organizing human activity such as a fundamental
economic practice, and mental processes.
In this instance, claim 7 recites steps that amount to mental processes
and/or certain methods of organizing human activity by managing personal
behavior involved in planning a route. Specifically, the claim recites:
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obtaining map data for generating a digital map of a
geographic area at a certain zoom level, including obtaining an
indication of a first placement of map labels corresponding to
map elements included in the digital map;
displaying the digital map with the first placement of the
labels in a first instance;
receiving a request for a route between an origin and a
destination;
obtaining route data in response to the request, the route
data defining the route traversing the geographic area;
displaying the digital map of the geographic area at the
same zoom level, in a second instance, with a second placement
of the map labels, including:
displaying the route on the digital map; and
repositioning a subset of the map labels
corresponding to map elements that intersect the route at
one or more points so as to align the subset of the map
labels with the route for visual emphasis

Although these steps are claimed as being done by a computer, the
activities themselves are all capable of being performed by a human without
a computer, and fall into the abstract idea of mental processes. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.”); see id. at 1372–73 (holding that constructing and
using a map of credit card numbers recited a mental process performable in
the human mind); In re Villena, 745 F. App’x 374, 375–76 (Fed. Cir. 2018)
(holding that claims to generating a map-like display for a geographic region
with icons of residential properties and their values recited an abstract idea).
We therefore determine that claim 7 recites the abstract idea of mental
processes, which is a judicial exception to patent-eligible subject matter.
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Step 2A, Prong Two: Does Claim 7 Recite Additional Elements that
Integrate the Judicial Exception into a Practical Application?
Following our Office guidance, having found that claim 7 recites a
judicial exception, we next determine whether the claim recites “additional
elements that integrate the exception into a practical application” (see MPEP
§§ 2106.05(a)–(c), (e)–(h)). See Guidance, 84 Fed. Reg. at 54. As noted
above, each of the claimed steps is recited as being performed by a computer
device specified at a high level of generality and, does not result in an
improvement in the functioning of a computer or other technology or
technological field. The recitations of the generic structures with which the
recited steps are performed are merely instructions to use a generic computer
system as a tool to perform the abstract idea. Thus, claim 7 does not apply,
rely on, or use the abstract idea in a manner that imposes a meaningful limit
on those steps. Rather, the claim is simply a drafting effort designed to
monopolize the abstract idea steps of claim 7. See MPEP § 2106.05(f) (“Use
of a computer or other machinery in its ordinary capacity for . . . tasks (e.g.,
to receive, store, or transmit data) or simply adding a general purpose
computer or computer components after the fact to an abstract idea . . . does
not provide significantly more.”).
In short, the additional elements discussed above: (1) do not result in
an improvement to the functioning of a computer or other technology;
(2) are not any particular machine; (3) do not effect a transformation of a
particular article to a different state; and (4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment. See MPEP §§ 2106.05(a)–(c), (e)–
(h); Guidance, 84 Fed. Reg. at 55. Consequently, the claimed invention does
not integrate the abstract idea into a “practical application.”
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For these reasons, the additional elements of claim 7 do not integrate
the judicial exception into a practical application. Thus, claim 7 is directed
to an abstract idea, which is a judicial exception to patent-eligible subject
matter under 35 U.S.C. § 101.
Step 2B: Does Claim 7 Recite an Inventive Concept?
We next consider whether claim 7 recites any additional elements,
individually or as an ordered combination, that transform the abstract idea
into a patent-eligible application, e.g., provide an inventive concept. Alice,
573 U.S. at 217–18. Claim 7 consists wholly of steps that recite abstract
ideas that are performed by a generic computer and thus does not recite any
such additional elements. See Spec. ¶¶ 48–56 (describing generic computer
components of a system 700 used to perform the claimed method).
According to Office guidance, under Step 2B, “examiners should . . .
evaluate the additional elements individually and in combination . . . to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
See Guidance, 84 Fed. Reg. at 56 (emphasis added). Thus, the second step
of the inquiry (Step 2B) looks at the additional elements in combination.
See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (“It 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.”).
As noted above, the computer is invoked as a conventional tool.
Apart from being used to perform the abstract idea itself, the generic
computer system components only serve to perform well-understood
functions (e.g., obtaining, receiving, repositioning, transmitting, etc.). See
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FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (“[T]he use of generic computer elements like a microprocessor or
user interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”). In our view, claim 7 fails to add a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field, but instead “simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.”
See Guidance, 84 Fed. Reg. at 56. That is, claim 7 is not directed to a
specific application designed to achieve an improved technological result, as
opposed to being directed to merely ordinary functionality of the above-
recited additional elements to apply an abstract idea. For the reasons
discussed above, we find no additional element, alone or in combination,
recited in claim 1 that contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. See Alice, 573 U.S. at 221.
Appellant’s Contentions
Appellant contends that the Examiner failed to consider the claim
elements as a whole and rather “separately compared individual steps of
claim 7 . . . to different Federal Circuit decisions.” Appeal Br. 15. Although
it is true that the Examiner analogized each step to various Federal Circuit
decisions that determined similar steps to recite abstract ideas, the Examiner
did find that the claim as a whole is directed merely to an idea itself or
organizing human activity. The Examiner further states that “[a]ll of the
elements in the claims amount to no more than automating collection,
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comparison and analyzation of data which the precedential courts have
recognized as well-understood, routine and conventional.” Final Act. 9.
Appellant also argues that the claims amount to a “particular solution
to the technical problem [of] placing labels on a digital map [that] includes
displaying a route on a digital map and repositioning a subset of the map
labels corresponding to map elements that intersect the route at [at] least one
point so as to align the subset of the map labels with the route.” Appeal Br.
16. The claims, however, do not represent any particular solution to the
problem. At best they identify a potential problem with labels not falling
onto a route and then simply move those labels accordingly. Appellant’s
claims do not specify any particular manner in which this is done, nor does
the Specification explain why this alleged problem requires any particular
solution in terms of hardware, software, or other technology. At their core,
the claims merely reposition labels on a map to align the labels with a route,
which recites an abstract idea as discussed above. They provide in a digital
map what drivers encounter in the physical world, namely, street signs and
other directional indicia positioned along a route.
We agree with the Examiner’s determination that this process
involves organizing human activity and mental processes because the claims
essentially amount to computer automation of what also could be done with
an actual map. For instance, a user could take a map and physically
highlight a chosen route on the map. The user could then take repositionable
markers or arrows already on the map and relocate them closer to the route
for better visual appearance or simply write in the street names and other
map labels along a route. The claims do not recite any particular method for
repositioning the labels and simply automate what could easily be done by a
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human with an actual map and movable markers or pen and paper as a
mental process.
As to the dependent claims, these claims mostly recite which and
where the labels are repositioned, for example along the lengthwise edge of
the route. In other words, they recite additional features of the abstract ideas
recited in the independent claims. Again, there is no particular technical
solution for moving the labels as claimed, merely automating what could
otherwise be done by a human with a computer. As to claim 22, this claim
merely identifies which labels are movable in the same manner that a human
using a physical map can identify which markers are movable and which
ones are actually printed on the map and, thus, cannot be moved. In sum,
the claims do not recite any particular manner of moving the labels using
some specific computer routine, but merely use a computer to accomplish
what can otherwise be done by a human with a physical map.
Appellant’s arguments that summarize what these claims recite and
allege that they recite “significantly more” than an abstract idea (Appeal Br.
17–18) are not persuasive. See 37 C.F.R. § 41.37(c)(1)(iv); BSG, 899 F.3d
at 1291 (“As a matter of law, narrowing or reformulating an abstract idea
does not add ‘significantly more’ to it.”); see RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea (encoding and decoding) does not render the claim
non-abstract.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract
idea.”); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016)
(“An abstract idea can generally be described at different levels of
abstraction.”).
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As such, we are not persuaded of error in the Examiner’s rejection.
CONCLUSION
The Examiner’s rejection is AFFIRMED.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–3, 5–9,
11–23
101 Eligibility 1–3, 5–9,
11–23

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED