Ex Parte Freed et alDownload PDFPatent Trial and Appeal BoardOct 27, 201713472866 (P.T.A.B. Oct. 27, 2017) Copy Citation 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. 13/472,866 05/16/2012 Erik Stephen Freed PLR-00PR-26303.01 ■-US-e 3075 93175 7590 10/31/2017 Faegre Baker Daniels LLP-Polaris 300 N. Meridian Street Suite 2700 Indianapolis, IN 46204 EXAMINER SMITH, ISAAC G ART UNIT PAPER NUMBER 3662 NOTIFICATION DATE DELIVERY MODE 10/31/2017 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): inteas @faegrebd.com sue.meyer@polaris.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIK STEPHEN FREED, KYLE KENNETH ESTES, and RANDY LEN MILBERT Appeal 2017-000278 Application 13/472,8661 Technology Center 3600 Before KRISTEN L. DROESCH, MATTHEW J. McNEILL, and ALEX S. YAP, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-16, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Polaris Industries Inc. App. Br. 3. Appeal 2017-000278 Application 13/472,866 STATEMENT OF THE CASE Introduction Appellants’ application relates to encoding data for three-dimensional structures into a two-dimensional raster for that data to be used in route planning. Spec. 11. Claim 1 is illustrative of the appealed subject matter and read as follows: 1. A computer-implemented method of representing discrete and sparsely-connected three-dimensional stmctures in a two-dimensional raster for purposes of route planning, the raster including a plurality of pixels, and each pixel including a plurality of bits, the method comprising: configuring with a computer a first subset of bits in the plurality of pixels of the raster to encode a two-dimensional coordinate plane that each pixel occupies; configuring with the computer a second subset of bits in the plurality of pixels of the raster to encode a plurality of categories indicating a type of land cover or structure the pixel represents; and configuring with the computer a third subset of bits in the plurality of pixels of the raster to encode a plurality of inter plane connections between adjacent two-dimensional coordinate planes. The Examiner’s Rejections Claims 1-16 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 5-6. Claims 1-16 stand rejected under § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventors regard as the invention. Final Act. 6-8. Claims 1-3, 5, 6, and 8-15 stand rejected under § 103(a) as unpatentable over White et al. (US 2012/0029804 Al; Feb. 2, 2012), 2 Appeal 2017-000278 Application 13/472,866 Rasmussen et al. (US 8,005,613 B2; Aug. 23, 2011), and Hardt (US 2012/0278505 Al; Nov. 1, 2012). Final Act. 9-17. Claim 4 stands rejected under § 103(a) as unpatentable over White, Rasmussen, Hardt, and Sugita et al. (US 2007/0229506 Al; Oct. 4, 2007). Final Act. 18-20. Claims 7 and 16 stand rejected under § 103(a) as unpatentable over White, Rasmussen, Hardt, and Gotoh et al. (US 8,265,345 B2; Sept. 11, 2012). Final Act. 20-21. Claims 1-3, 5, 6, and 8-14 stand rejected under § 103(a) as unpatentable over Hardt, Verlut et al. (US 2010/0094485 Al; Apr. 15, 2010), and Anastassiou (US 4,546,385; Oct. 8, 1985). Final Act. 22-29. Claim 4 stands rejected under § 103(a) as unpatentable over Hardt, Verlut, Anastassiou, and Case (US 7,956,861 B2; June 7, 2011). Final Act. 30-32. Claims 7 and 16 stand rejected under § 103(a) as unpatentable over Hardt, Verlut, Anastassiou, and Gotoh. Final Act. 33-34. ANALYSIS Patent Ineligible Subject Matter Alice identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under § 101. In Alice, the Supreme Court reiterated the framework set out in Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66 (2012), for “distinguishing patents that claim . . . abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS Banklnt’l, 134 S. Ct. 2347, 2355 (2014). Assuming that a claim nominally 3 Appeal 2017-000278 Application 13/472,866 falls within one of the statutory categories of machine, manufacture, process, or composition of matter, the first step in the analysis is to determine if the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (judicial exceptions). If so, the second step is to determine whether any element or combination of elements in the claim is sufficient to transform the nature of the claim into a patent eligible application, that is, to ensure that the claim amounts to significantly more than the judicial exception. Appellants argue the Examiner erred in rejecting claim 1 as directed to patent-ineligible subject matter because the “specific and detailed configuring of bits” recited in claim 1 does not describe a fundamental mathematical formula. App. Br. 12. Appellants argue the claims are directed to a “narrowly tailored way of facilitating route planning” and do not incorporate a longstanding practice into software or preclude the field of route planning or computerized route planning. Id. at 12-13. Claim 1 recites “configuring ... a first subset of bits ... to encode a two-dimensional coordinate plane that each pixel occupies.” Claim 1 further recites “configuring ... a second subset of bits ... to encode a plurality of categories indicating a type of land cover or structure the pixel represents.” Claim 1 also recites “configuring ... a third subset of bits ... to encode a plurality of inter-plane connections between adjacent two-dimensional coordinate planes.” In other words, claim 1 recites configuring bits to encode three types of data regarding pixels representing three-dimensional structures into a two-dimensional raster. Appellants’ argument that claim 1 is a “narrowly tailored way of facilitating route planning” is unpersuasive because claim 1 merely recites configuring bits “for purposes of route planning,” not route planning itself. 4 Appeal 2017-000278 Application 13/472,866 Our reviewing court has concluded that classifying and storing data in an organized manner is a well-established ‘“basic concept’” sufficient to fall under Alice step 1. In re TLI Commons LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (internal citation omitted). Here, the steps recited in the claims involve nothing more than collecting and normalizing data, in particular data for purposes of route planning. Our reviewing court has also “made clear that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.” Credit Acceptance Corp. v. Westlake Svcs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Like the claims in Credit Acceptance, the focus of the claims is on the business practice (route planning), “and the recited generic computer elements ‘are invoked merely as a tool.’” Id. (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)); see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting cases). Accordingly, we agree with the Examiner that the claims do not recite an “inventive concept” sufficient to transform the claims from an abstract idea to a patent eligible application. Moreover, just as in Alice, “these computer functions are ‘well- understood, routine, conventional activities],’ previously known to the industry.” Alice, 134 S. Ct. at 2359 (quoting Mayo, 566 U.S. 66 U.S. at 73); see also 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”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a computer “employed only for its most basic 5 Appeal 2017-000278 Application 13/472,866 function . . . does not impose meaningful limits on the scope of those claims”). The broadly recited computer implementation limitations of the claims do little to limit their scope. Furthermore, the subject matter of the claims can be performed either mentally or with “pencil and paper.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011). “[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.” CyberSource, 654 F.3d at 1373. In this regard, the claims are similar to the claims that the Federal Circuit determined are patent ineligible in Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350, 1353— 54 (Fed. Cir. 2016) (collecting information and “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category”), OIP Tech., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (offer-based price optimization), Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information presented to a user based on particular information), Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014 (employing mathematical algorithms to manipulate existing information), Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir. 2013) (generating tasks in an insurance organization), and Versata Dev. Grp. v. SAP Am., 793 F.3d 1306, 1333—34 (Fed. Cir. 2015) (price-determination method involving arranging organizational and product group hierarchies). Appellants’ argument that the claims are patentable because they do not preempt every application of route planning or computerized route 6 Appeal 2017-000278 Application 13/472,866 planning is also unpersuasive because lack of preemption does not make the claims any less abstract. See buySAFE, 765 F.3d at 1355 (collecting cases); Accenture, 728 F.3d at 1345; Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility”). Accordingly, Appellants have not persuaded us the Examiner erred in rejecting claim 1 as directed to patent-ineligible subject matter. We, therefore, sustain the patent-ineligibility rejection of claim 1. We also sustain the patent-ineligibility rejection of independent claims 8 and 11 and dependent claims 2-7, 9, 10, and 12-16, which Appellants did not argue separately. See App. Br. 13. Indefiniteness The Examiner rejected claims 1-16 under 35 U.S.C. § 112(b) as indefinite because “[i]t is unclear what the ‘two-dimensional plane’ refers to, as it is unclear if the ‘plane’ is information regarding an elevation of a point determined from map data, or if the ‘plane’ is merely a type of land or structure.” Final Act. 7. The Examiner also states “unclear what a[n] ‘inter plane connection’ between ‘adjacent two-dimensional coordinate planes’ refers to and how it is determined.” Id. (emphasis omitted). Appellants argue the Examiner erred because an ordinarily skilled artisan, in light of the Specification, would understand the claim limitation “plane” to refer to a “layer” that is agnostic with respect to a type of land or structure. App. Br. 16. We agree with Appellants. Claim 1 recites “encod[ing] a two- dimensional coordinate plane that each pixel occupies.” The claim further 7 Appeal 2017-000278 Application 13/472,866 recites “encoding] a plurality of inter-plane connections between adjacent two-dimensional coordinate planes.” The Specification describes a raster map that “accounts] for the fact that features like bridges and tunnels exist on a physically discrete plane from the ground and are accessible only via endpoints.” Spec. 115. We agree that an ordinarily skilled artisan would understand that the claimed “plane” refers to a “layer” in a map, including a ground plane and other planes other than the ground plane. Accordingly, we do not sustain the Examiner’s indefiniteness rejection of claim 1, independent claims 8 and 11 that recite commensurate limitations, or claims 2-7, 9, 10, and 12-16, which depend therefrom. Obviousness — White, Rasmussen, and Hardt The Examiner finds White teaches “configuring with the computer a third subset of bits in the plurality of pixels of the raster to encode a plurality of inter-plane connections between adjacent two-dimensional coordinate planes,” as recited in claim 1. Final Act. 10-12. The Examiner interprets “plane” to “encompass a ‘plane’ defined only by the type of land, such as ground, water, etc.” Ans. 14. The Examiner finds White teaches types of land, such as ground, water, etc., and, therefore, teaches the claimed “planes.” The Examiner also finds White teaches “inter-plane connection[s]” by teaching nearest-neighbor sampling, which encodes bit colors to represent linear land features across multiple pixels. Id. Appellants argue the Examiner erred because White teaches a single two-dimensional grid with a plurality of nodes, but does not teach a second grid on a different elevational plane. App. Br. 19. Appellants argue that because White teaches only a single grid, there is no indication of which 8 Appeal 2017-000278 Application 13/472,866 plane or grid a pixel belongs to and, therefore, no teaching of an “inter-plane connection,” as recited in claim 1. Id. Appellants have persuaded us of Examiner error. Claim 1 recites “configuring ... a first subset of bits ... to encode a two-dimensional coordinate plane that each pixel occupies.” Claim 1 further recites “configuring ... a third subset of bits ... to encode a plurality of inter-plane connections between adjacent two-dimensional coordinate planes.” The Examiner has established that White teaches a single two-dimensional coordinate plane. The Examiner has also established that White teaches connections between adjacent pixels in the two-dimensional coordinate plane. See Ans. 14. However, the Examiner has failed to establish that White teaches “inter-plane connections between adjacent two-dimensional coordinate planes.” Accordingly, we do not sustain the Examiner’s rejection of claim 1 over White, Rasmussen, and Hardt. We also do not sustain the rejections over White, Rasmussen, and Hardt of independent claims 8 and 11, which recite commensurate limitations, and claims 2, 3, 5, 6, 9, 10, and 12-15, which depend directly or indirectly from the independent claims. The Examiner rejects claim 4 as unpatentable over White, Rasmussen, Hardt, and Sugita. The Examiner does not find Sugita’s teachings remedy the identified deficiency. Accordingly, we also do not sustain the rejection of claim 4 over White, Rasmussen, Hardt, and Sugita. The Examiner rejects claims 7 and 16 as unpatentable over White, Rasmussen, Hardt, and Gotoh. The Examiner does not find Gotoh’s teachings remedy the identified deficiency. Accordingly, we also do not 9 Appeal 2017-000278 Application 13/472,866 sustain the rejection of claims 7 and 16 over White, Rasmussen, Hardt, and Gotoh. Obviousness — Hardt, Verlut, and Anastassiou The Examiner finds Verlut teaches “configuring with the computer a third subset of bits in the plurality of pixels of the raster to encode a plurality of inter-plane connections between adjacent two-dimensional coordinate planes,” as recited in claim 1. Final Act. 23-24. In particular, the Examiner finds Verlut teaches determining a set of raster points representing terrain where the raster points include area coordinate and height information. Id. The Examiner finds the “height information” indicates the “two-dimensional plane” of each raster point. Id. The Examiner finds Verlut teaches a weighted graph which may be assigned weights to transitioning between each edge of each raster point to determine the cost of transitioning between nodes teaches the claimed “inter-plane connections.” Id. Appellants argue the Examiner erred because Verlut teaches multiple three-dimensional raster points rather than assigning a pixel to a two- dimensional coordinate plane. App. Br. 23. According to Appellants, even if every potential height value were considered a separate two-dimensional plane, Verlut does not teach encoding inter-plane connections between adjacent planes. Id. Instead, Appellants contend Verlut teaches traversing from one coordinate with a first z value to a second coordinate with a second z value without connections between discrete planes. Id. Appellants have persuaded us of Examiner error. Verlut teaches three-dimensional coordinate points and a cost of transitioning between nodes associated with these points. See Ans. 24. However, the Examiner has failed to establish that Verlut teaches encoding bits representing the 10 Appeal 2017-000278 Application 13/472,866 connections between adjacent two-dimensional coordinate planes, rather than three-dimensional coordinate points. Accordingly, we do not sustain the Examiner’s rejection of claim 1 over Hardt, Verlut, and Anastassiou. We also do not sustain the rejections over Hardt, Verlut, and Anastassiou of independent claims 8 and 11, which recite commensurate limitations, and claims 2-3, 5, 6, 9, 10, and 12-14, which depend directly or indirectly from the independent claims. The Examiner rejects claim 4 as unpatentable over Hardt, Verlut, Anastassiou, and Case. The Examiner does not find Case’s teachings remedy the identified deficiency. Accordingly, we also do not sustain the rejection of claim 4 over Hardt, Verlut, Anastassiou, and Case. The Examiner rejects claims 7 and 16 as unpatentable over Hardt, Verlut, Anastassiou, and Gotoh. The Examiner does not find Gotoh’s teachings remedy the identified deficiency. Accordingly, we also do not sustain the rejection of claims 7 and 16 over Hardt, Verlut, Anastassiou, and Gotoh. DECISION We affirm the Examiner’s rejection under 35U.S.C. § 101 of claims 1-16. We reverse the Examiner’s rejection under 35 U.S.C. § 112(b) of claims 1-16. We reverse the Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1-16. 11 Appeal 2017-000278 Application 13/472,866 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation