Ex Parte Bolin

Patent Trial and Appeal BoardJul 25, 2016

13322098 (P.T.A.B. Jul. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/322,098 11/22/2011 Johan Bolin 24112 7590 07/25/2016 COATS & BENNETT, PLLC 1400 Crescent Green, Suite 300 Cary, NC 27518 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 4015-7867 /P28611-US1 4304 EXAMINER MOYER, DALES ART UNIT PAPER NUMBER 3664 MAILDATE DELIVERY MODE 07/25/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHAN BOLIN Appeal2014-005442 Application 13/322,098 Technology Center 3600 Before LINDA E. HORNER, MICHAEL L. HOELTER, and PAUL J. KORNICZKY, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a), from the Examiner's Final rejection of claims 36-62 and 64-69. 1 App. Br. 2. Claims 1-35 have been cancelled. App. Br. 2. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 41.50(b). 1 Claim 63 is objected to. Final Act. 1 (Office Action summary). Appeal2014-005442 Application 13/322,098 THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates to presenting of digital maps via user terminals." Spec. 1: 5-6. Claims 3 6, 61, and 69 are independent claims.2 Method claim 36 is illustrative of the claims on appeal and is reproduced below: 36. A method for presenting a digital map via a map presenting unit of a user terminal comprising: obtaining a first object and a first position of this first object; obtaining a digital map, said digital map comprising a reference position and the first position; determining a first line, which at one end is connected to the reference position and at another opposite end to said first position; and presenting a geographical area of the digital map including the reference position by: presenting a part of the first line that stretches through the geographical area when said first position is outside of the geographical area, and not presenting the first line \"1hen said first position is not outside of the geographical area, wherein the first line is at one end connected to the reference position and at another opposite end to said first position; and wherein an appearance of the first line, when presented, is dependent on a distance between the reference position and the first position. REFERENCE RELIED ON BY THE EXAMINER Machii et al. US 6,324,467 B 1 Nov. 27, 2001 (hereinafter "Machii") 2 Claim 61 recites a "map providing device" and claim 69 recites a "computer program product." 2 Appeal2014-005442 Application 13/322,098 THE REJECTIONS ON APPEAL Claim 69 is rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Claims 36-60 are rejected under 35 U.S.C. Â§ 101 because they are held to claim an abstract idea, and are therefore rejected as ineligible subject matter under 35 U.S.C. Â§ 101. Claims 36, 37, 42, 44--48, 52, 53, 57-59, 61, 62, and 64-69 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. Â§ 103(a) as obvious over Machii. 3 ANALYSIS The rejection of claim 69 as being indefinite The Examiner states, "the phrase 'which at one end is to be connected to the reference position .... ' on line 8 of claim 69 renders the claim indefinite." Final Act. 8. The Examiner specifically addresses "the words 'to be."' Final Act. 8. Appellant removed these words from claim 69 in their Response After Final dated May 7, 2013 and further, this rejection of indefiniteness was not repeated in the Examiner's Answer mailed January 24, 2014. See Ans. 2. However, there is no indication that Appellant's amendment was entered by the Examiner (see Advisory Action dated May 14, 2013) or that this rejection was withdrawn by the Examiner (see Ans. 2). We, thus, address claim 69 as it existed prior to the filing of the Appellant's 3 "The rejection of claims 38-41, 43, 49-51, 54-56, and 60 under 35 U.S.C. Â§ 102(b) as anticipated by, or in the alternative, under 35 U.S.C. Â§ 103(a) as obvious over Machii et al. (US 6,324,467) have been withdrawn." Ans. 2. 3 Appeal2014-005442 Application 13/322,098 proposed amendment and we also consider the indefinite rejection of claim 69 as being subject to our review. Appellant does not address this indefinite rejection in either the Appeal Brief or the Reply Brief, presumably believing the amended claim had been entered and the rejection withdrawn. Because we have not located, nor have we been informed, where either occurred, we sustain the Examiner's rejection of claim 69 as being indefinite under 35 U.S.C. Â§ 112, second paragraph. The rejection of claims 36--60 as being directed to an abstract idea In responding to this rejection, Appellant only addresses method claim 3 6 contending, "the Â§ 101 rejection of claims 3 6-60 is improper" because "[ c ]laim 36 unquestionably meets the criteria for statutory subject matter under Â§ 10 l ."4 App. Br. 6. We select claim 36 for review with claims 37- 60 standing or falling therewith. See 37 C.F.R. Â§ 41.37(c)(l)(iv). Method claim 36 recites the data gathering steps of "obtaining" a first position and "obtaining" a digital map comprising this first position and a reference position. Claim 36 also recites, "determining a first line" between these two positions as well as "presenting a geographical area of the digital map" that includes the reference position. Claim 36 further recites, "wherein an appearance of the first line, when presented, is dependent on a distance between the reference position and the first position." 4 The Examiner finds, "claim(s) 37-60 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. Â§ 101 because the additional recited limitation(s) fail(s) to establish that the claims are not directed [sic] to an abstract idea." Final Act. 9. 4 Appeal2014-005442 Application 13/322,098 The Examiner addresses claim 3 6 and summarizes the various factors weighing toward subject matter eligibility,5 and weighing against subject matter eligibility.6 The Examiner concludes that claim 36 is directed to "an abstract idea, and [is] therefore rejected as ineligible subject matter under 35 U.S.C. Â§ 101." Final Act. 9. Appellant addresses the Supreme Court's Bilski decision,7 but states that this case "did not define the specific criteria for classifying an invention as an abstract idea." App. Br. 6. Instead, Appellant references a Federal Circuit decision, i.e., Research,8 contending that this case provides "a number of different factors to consider for discerning whether an invention is not an abstract idea." App. Br. 6; see also Reply Br. 3. Appellant addresses three factors contending that they weigh in favor of eligible subject matter (see App. Br. 6; see also Reply Br. 3, 5) whereas the Examiner addresses these same three factors and disagrees with Appellant's conclusion (Ans. 3). The Supreme Court has once more revisited the matter of abstract ideas in the case of Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347 (2014), 5 The Examiner provides one reason weighing toward eligibility, i.e., "the claim is more than a mere statement of concept because performance of at least one step is observable and verifiable." Final Act. 9. 6 The Examiner provides three distinct reasons weighing against eligibility. First, the Examiner finds, "the involvement of a machine or transformation [is] nominally, insignificantly, or tangentially related to the performance of the steps." Final Act. 9. Second, "the mechanism(s) by which the claimed method steps are implemented is subjective or imperceptible." Id. Third, "the claimed steps can be performed without any apparatus." Id. 7 Bilski v. Kappas, 561 U.S. 593 (2010). 8 Research Corporation Technologies, Inc. v. Microsoft Corporation, 627 F.3d 859 (Fed. Cir. 2010). 5 Appeal2014-005442 Application 13/322,098 and our analysis will employ this most recent interpretation. According to the Supreme Court's framework, we must first determine whether the claims at issue are directed to a law of nature, a natural phenomenon, or an abstract idea. Alice, 134 S. Ct. at 2354-55. If (as is in dispute here) the claims are directed to an abstract idea, we must secondly "consider the elements of [claim 36] 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 2355 (quoting Mayo Collaborative Services v. Prometheus Labs, Inc., 566 U.S. , , 132 S. Ct. 1289, 1298, 1297 (2012). The Supreme Court characterizes the second step of the analysis 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_, 132 S. Ct. at 1294). In order to ascertain if claim 3 6 is directed to an abstract idea (the first determination above), we look to the claim language and the Specification. Appellant initially contends, "the limitations of claim 36 recite hardware" and that "the method of claim 36 is performed via hardware." App. Br. 6; see also Reply Br. 3-5. Hence, Appellant alleges that claim 36 is eligible subject matter because claim 36 satisfies the criteria that it be "tied to a particular machine or apparatus" (while also acknowledging that the machine-or-transformation test "is not the sole test," but "is a useful investigative tool"). App. Br. 7. The Examiner disagrees stating that claim 36 "failed the machine and transformation test" because "[t]here is no particular machine involvement for the claimed steps." Ans. 4. Appellant contends that claim 36 "explicitly recites a user terminal as well as a digital 6 Appeal2014-005442 Application 13/322,098 map" (i.e., "hardware"). App. Br. 6-8; see also Reply Br. 3-5. We note that the recitation to a "user terminal" is found only in the preamble whereas the recitation to a "digital map" (assuming, of course, and for purposes of this discussion only, that a digital map can be properly classified as "hardware") is found in both the preamble and the body of claim 36. Nevertheless, this hardware appears to only "nominally, insignificantly or tangentially" relate (Final Act. 9) to the performance of the recited steps of "obtaining," "determining," and "presenting." Regarding the equipment to be employed, the field of use of Appellant's method, as stated in the preamble, is "for presenting a digital map via a map presenting unit of a user terminal."9 Reply Br. 4. Hence, such field of use language is, like the language in Alice, also directed to some unspecified, generic equipment. Accordingly, we are of the opinion that as in Alice, "nothing significantly more" is claimed by Appellant (other than, perhaps, the appearance of the line, see infra). Consequently, we agree with the Examiner that "the mechanism(s) by which the claimed method steps are implemented is subjective or imperceptible." Final Act. 9. Further, Appellant does not contend that the "user terminal" is transformed into a different state or thing, and Appellant acknowledges that any transformation occurring with respect to the "digital map" is data related. App. Br. 8-9. Hence, we agree with the Examiner that the machine or transformation test does not weigh in favor of Appellant's contention that claim 36 is not directed to an abstract idea. Final Act. 9 9 "Preamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim." Bicon, Inc. v. Straumann Co., 441F.3d945, 952 (Fed. Cir. 2006). 7 Appeal2014-005442 Application 13/322,098 Appellant next addresses the limitations that, as per Appellant, "clearly identify the map being processed and presented (i.e., displayed) to the user as a digital map." App. Br. 7. When Appellant addresses the Examiner's dictionary definitions of the claim term "presenting" (Ans. 4), we note that Appellant has not accurately paraphrased the claim limitation under consideration. Reply Br. 4. As stated, Appellant contends that the presentation to the user must be conducted digitally, i.e., "as a digital map," when, in fact, claim 36 is not so explicit. Claim 36 recites, "presenting a geographical area of the digital map" and does not recite that such presentation must occur digitally. As such, Appellant does not demonstrate error in the Examiner's finding that the step of "presenting a geographical area of the digital map" "could be practiced by a person sketching the viewed digital map using a pencil and paper."10 Final Act. 3. Appellant instead contends that the Examiner employed "an unreasonably broad definition of the term 'presenting."' Reply Br. 4. We do not find fault with the Examiner's dictionary definition of this term (Ans. 4), and we do not agree with Appellant that the claimed presentation must be conducted only in a digital manner, i.e., "must be displayed to the user on a piece of hardware -i.e., a display device." Reply Br. 4. 11 10 Appellant further states, "[ o ]ne thing is certain - whatever sketch or drawing is produced from such a proffered 'sketching,' is not a digital map, as claimed." App. Br. 8. However, as indicated supra, claim 36 pertains to "presenting" either a "digital map" (preamble) or "a geographical area of the digital map" (body). Claim 36 does not require that such "presenting" be only in digital form. 11 Interestingly, Appellant seems to agree with the Examiner when arguing, "the Examiner concedes that the performing the method with an electronic device is one way to practice the invention" (implying that there are more). App. Br. 7 (emphasis added). 8 Appeal2014-005442 Application 13/322,098 In Alice, the Court determined that Alice Corp.' s claims to methods were directed to the abstract idea of intermediated settlement. Alice, 134 S. Ct. at 2356. This holding in Alice is analogous to the present claims in that Appellant is seeking patent protection for determining a line and presenting an area of a digital map that includes presenting a reference position and part of the line. Additionally, Appellant does not persuasively indicate how such claimed steps, whose determining and presenting operations can be accomplished non-digitally (see supra), renders this claim anything other than an abstract idea. Accordingly, in view of the above, we are in agreement with the Examiner that, for the purpose of furthering the Alice analysis, claim 3 6 is directed to the abstract idea of mapping. We must now proceed to the second step of the Alice analysis to determine whether the abstract idea has been applied in an eligible manner. The second step of the Alice analysis seeks to ascertain whether there are other limitations in the claim that show a patent-eligible application of the abstract idea, e.g., significantly more than a mere instruction to apply the abstract idea. Id. at 2360 (holding that "the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of intermediated settlement using some unspecified, generic computer") (internal quotation marks omitted). In this regard, Alice provides guidance as to whether "significantly more" can be found by providing an example as to whether the claimed improvement is to another technology or field. Another possibility for a showing of "significantly more" is whether the claim recites meaningful limitations beyond generally linking the abstract idea to a particular environment. We are instructed that if there are no 9 Appeal2014-005442 Application 13/322,098 meaningful limitations in the claim, then the claim should be rejected under Section 101. We also note that Appellant addresses the last limitation (a "wherein" limitation) directed to the "appearance of the first line." App. Br. 8-9; see also Reply Br. 3-5. However, Appellant states that this "appearance" limitation has been "explained to the Examiner how the user perceives the first line when the first line is presented - i.e., that it depends on the appearance of the first line." Reply Br. 3. Appellant does not explain how this "appearance" limitation, based on Appellant's clarification above, is not directed to the abstract concept of "how the user perceives" the line. Id. Accordingly, even in view of this "wherein" clause, Appellant has not demonstrated error in the Examiner's conclusion that claim 3 6 (and hence also claims 37-60) is directed to an abstract idea. In conclusion, and based on the analysis above, we are not persuaded the Examiner's rejection of claims 36-60 as being ineligible subject matter is improper. However, we are instructed that"[ m ]ere reliance by the Board on the same type of rejection or the same prior art references relied upon by the [E]xaminer, alone, is insufficient to avoid a new ground of rejection where it propounds new facts and rationales to advance a rejection-none of which were previously raised by the [E]xaminer." In re Stepan Co., 660 F.3d 1341, 1345 (Fed. Cir. 2011). Accordingly, we enter a new ground of rejection under 35 U.S.C. Â§ 101 with respect to method claim 36 (and claims 37-60 which stand or fall therewith) as being directed to ineligible subject 10 Appeal2014-005442 Application 13/322,098 matter, and we enter this new ground of rejection in order to afford Appellant a fair opportunity to respond. 12 The rejection of claims 36, 37, 42, 44--48, 52, 53, 57-59, 61, 62, and 64--69 as anticipated by or, in the alternative, as obvious over Machii Appellant argues many of these claims individually and others as a group. App. Br. 10-26. Appellant also addresses the anticipation rejection of these claims (App. Br. 9-24) separate from the obviousness rejection of these claims (App. Br. 24-26). We address these claims, and the arguments made, in the order they are presented in Appellant's Appeal Brief. Claim 36 The anticipation rejection of independent claim 3 6 is separately addressed by Appellant. App. Br. 10-13. Appellant acknowledges that Machii discloses the display of a route to travel, but contends that claim 36 is directed to a "line" and that "the claimed line is not a route." App. Br. 10, 11; see also Reply Br. 5-6. Appellant states that this distinction is "defined in the [S]pecification" but Appellant does not indicate where this definition (i.e., to the effect that "the claimed line is not a route") can be found. App. Br. 1 O; see also Reply Br. 6. There are, however, multiple instances where Appellant's Specification associates the claimed line to a distance between its endpoints. See Spec. 3:13-15; 3:22-29; 4:27-29; 5:29-6:2; and 6:10-13. Additionally, Appellant contends, "the claimed line is an indicator of the 12 Should there be further prosecution of this application, it is suggested the Examiner also evaluate claims 61-69 under Alice as well. 11 Appeal2014-005442 Application 13/322,098 physical distance between the two physical locations." 13 App. Br. 10; see also Reply Br. 6. Appellant does not explain how Machii's corresponding "line" is not also an indicator of a distance between two locations. Final Act. 10-11 (referencing Machii item 1403 (a curved line) in Figure 14); see also Ans. 5-6 (discussing the written description and providing "line" with its "broadest reasonable interpretation"). Hence, Appellant's contention is not persuasive of Examiner error. Appellant also contends that "the claimed line is 'coded' with distance information" (App. Br. 10; see also Reply Br. 6) but Appellant does not identify where such coding is recited in claim 36 (Ans. 6). Appellant further addresses the limitation of "wherein appearance of the first line, when presented, is dependent on a distance between the reference position and the first position." App. Br. 10. On this point, the Examiner addresses the length Machii' s line 1403 finding "the appearance of line 1403 is dependent on the distance between first position 1402 and reference position 1401." Ans. 6. In summary, Appellant's argument is not persuasive that the length of Machii's line 1403 as depicted in Figure 14 fails to indicate (i.e., fails to provide an appearance of) the distance between its endpoints. App. Br. 11. The fact that Machii also discusses memory capacity (see App. Br. 11-12) is 13 It is noted that Appellant employs the term "physical distance" as if to imply distance in a straight line or "as the crow flies." App. Br. 1 O; see also Reply Br. 6-7. However, when Appellant's Specification refers to distance, the term "physical" is not associated therewith, nor does claim 36 recite anything other than "distance." Hence, we do not construe the claim term "line" (representative of a distance in claim 36) as being limited to a "distance" involving only a straight line because "distance" can also mean, "an extent of space measured other than linearly." See Merriam- Webster.com and particularly, http://www.merriam- webster.com/dictionary/distance. 12 Appeal2014-005442 Application 13/322,098 not pertinent to whether or not Machii teaches or suggests the "line" limitations of claim 36. Accordingly, based on the record presented, we sustain the Examiner's rejection of claim 36 as anticipated by Machii. Claims 61 and 69 For independent claims 61 and 69, Appellant relies on similar arguments as set forth above with respect to claim 36. See App. Br. 13-14. Accordingly, we sustain the Examiner's rejection of claims 61 and 69 as anticipated by Machii for similar reasons as claim 36. Claim 37 Claim 37 depends from claim 36 and includes the additional limitation "a second line component perpendicular to the first line component, and wherein the appearance [of the line is dependent] on distance data reflecting the distance that is coded into the second line component." The Examiner correlates the width of Machii's line 1403 to this perpendicular second line component. Final Act. 11; see also Ans. 7. Appellant disagrees that Machii discloses a perpendicular second line component that reflects a distance as claimed. App. Br. 15-16. The various lines depicted in Machii are rendered with a constant thickness regardless of the distance between endpoints. In other words, although the length of Machii's line may vary, its width does not. See e.g., Machii Figs. 3 and 14. Accordingly, we agree with Appellant that Machii does not disclose this claim limitation and particularly any distance data 13 Appeal2014-005442 Application 13/322,098 "coded into the second line component." We reverse the Examiner's rejection of claim 3 7 as anticipated by Machii. Claim 42 Claim 42 depends from claim 37 discussed above, whose rejection was reversed. Because we reversed the Examiner's rejection of claim 37, we likewise reverse the Examiner's rejection of depending claim 42 as anticipated by Machii. Claim 44 Claim 44 depends from independent claim 36 discussed above, whose rejection was sustained. Claim 44 includes the additional limitation that the first line "is indicated using a line type, a colour, or a variation in an intensity of the first line." The Examiner relies on this "colour" limitation finding that the line/line segment relied upon by iviachii is colored black. Final Act. 12; see also Ans. 9. Appellant does not dispute the color of this line depicted by Machii, but instead addresses line segment 306 (cited by the Examiner, Final Act. 12; see also Ans. 9) contending that"[ e ]lement 306 in Figure 3 is not a line, but rather, is an arrowhead at the head of a line." App. Br. 20. Appellant's contention does not address the Examiner's rejection based on Machii depicting this line in a color (black). We sustain the Examiner's rejection of claim 44 as anticipated by Machii. Claims 45 and 62 14 Appeal2014-005442 Application 13/322,098 Claim 45 depends from independent claim 36, while claim 62 depends from independent claim 61. The rejection of both independent claims 36 and 61 were affirmed (see supra). Each claim 45 and 62 recites "providing a user input area in the presented geographical area." The Examiner relies on Machii's input unit 104 for disclosing this additional limitation. Final Act. 12; see also Ans. 9. It is not disputed that Machii discloses the ability of a user to input data. See, e.g., Machii Figs. 1, 2, 6, and 7; see also App. Br. 21 ("[ e ]lement 104 in Figure 1 is a user input unit"). However, Appellant contends that nothing in Machii discloses providing this input area "in the presented geographical area" as recited. App. Br. 21. We agree with Appellant on this point because the Examiner does not indicate where Machii's input area can be found "in the presented geographical area" as recited. Id. Instead, as per Machii Figure 1, input unit 104 is separate from map display unit 107, and we are not informed where Machii teaches or discloses that input unit 104 is found in or on display unit 107. Instead, the two appear to involve separate and distinct screens (compare Fig. 3 with Figs. 6 and 7). Accordingly, we are not persuaded the Examiner has established by a preponderance of the evidence that Machii anticipates either claim 45 or claim 62. We reverse the rejection of claims 45 and 62 as anticipated by Machii. Claims 46--48, 52, and 53 Each of claims 46--48, 52, and 53 depend, directly or indirectly, from claim 45, whose rejection was reversed. Because we reversed the 15 Appeal2014-005442 Application 13/322,098 Examiner's rejection of claim 45, we likewise reverse the Examiner's rejection of claims 46--48, 52, and 53 as anticipated by Machii. Claims 57-59 Each of claims 57-59 depend, directly or indirectly, from independent claim 36, whose rejection was sustained. Appellant does not address the Examiner's rationale for rejecting these dependent claims. See App. Br. 24; see also Final Act. 13. Instead, Appellant contends that claims 57-59 are allowable "due at least to their respective dependencies" from claim 36. App. Br. 24. Appellant's contention is not persuasive of Examiner error. We sustain the Examiner's rejection of claims 57-59 as anticipated by Machii. Claims 64-68 Each of claims 64-68 depend directly or indirectly from independent claim 61, whose rejection was sustained. Appellant does not address the Examiner's rationale for the rejection of these dependent claims. See App. Br. 24; see also Final Act. 13-14. Instead, Appellant contends that claims 64-68 are allowable "due at least to their respective dependencies" from claim 61. App. Br. 24. Appellant's contention is not persuasive of Examiner error. We sustain the Examiner's rejection of claims 64-68 as anticipated by Machii. 16 Appeal2014-005442 Application 13/322,098 The obviousness rejection of claims 36, 37, 42, 44-48, 52, 53, 57-59, 61, 62, and 64-69 When addressing the obviousness rejection of the above indicated claims (see App. Br. 24-26; see also Reply Br. 7-9), Appellant discusses the need for the Examiner to present a prima facie case of obviousness and how the Examiner must make a showing "for all of the features of a claim in the prior art." App. Br. 24; see also App. Br. 25 and Reply Br. 8. Appellant contends, "[a ]s evidenced above with respect to the Â§ 102(b) rejections, Machii does not teach each and every limitation of the independent claims" (i.e., claims 36, 61, and 69). App. Br. 25; see also Reply Br. 8. As a result, Appellant contends that Machii "cannot possibly render any of these claims obvious underÂ§ 103(a)."14 App. Br. 25; see also Reply Br. 8. In short, Appellant states, "[ f]or the reasons noted above with respect to the Â§ 102 rejections, the Examiner has failed to prove that any of the cited passages of 14 More specifically, Appellant contends that the Examiner must provide "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." App. Br. 25; see also Reply Br. 7-8. However, the Examiner's stated motivation is "for the purpose of confirming the location of the destination with the user." Final Act. 11. As indicated, Appellant only generally alleges a lack of articulated reasoning and does not specifically indicate how the Examiner's express statement is faulty or otherwise lacks rational underpinning. Lacking any such explanation, Appellant's generic discussion of case law does not rise to the level of identifying an error in the Examiner's stated rationale for our review on appeal. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (holding that "the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection"). 17 Appeal2014-005442 Application 13/322,098 Machii ... teach or suggest any of the above-cited limitations" of these claims "underÂ§ 103(a)." App. Br. 26. For the reasons stated above regarding our analysis of these claims under Â§ 102(b ), we do not modify our analysis when considering the Examiner's alternative rejection of these same claims underÂ§ 103(a). DECISION The Examiner's rejection of claim 69 as being indefinite under 35 U.S.C. Â§ 112, second paragraph, is affirmed. The Examiner's rejection of claims 30-60 as being directed to an abstract idea, and therefore ineligible subject matter under 35 U.S.C. Â§ 101, is affirmed, but see infra. The Examiner's rejection of claims 36, 44, 57-59, 61, and 64-69 as anticipated by or, in the alternative, as obvious over Machii is affirmed. The Examiner's rejection of claims 37, 42, 45--48, 52, 53, and 62 as anticipated by or, in the alternative, as obvious over Machii is reversed. Regarding the affirmance of the Examiner's rejection of claims 30-60 as being directed to patent ineligible subject matter, this affirmance is designated as a New Ground of Rejection under 37 C.F.R. Â§ 41.50(b). This New Ground of Rejection designation is made because our reasoning differs from and/or adds to the reasoning stated by the Examiner. This designation provides Appellant a fair opportunity to respond to the reasoning provided in this Decision. Further, 37 C.F.R. Â§ 41.50(b) provides that, "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial 18 Appeal2014-005442 Application 13/322,098 review." 37 C.F.R. Â§ 41.50(b) also provides that Appellant must, WITHIN TWO MONTHS, exercise one of the following options: (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 proceeding will be remanded to the Examiner .... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ l.136(a)(l)(iv). Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. AFFIRMED-IN-PART; 37 C.F.R. Â§ 41.50(b) 19