Ex Parte Freed et al

Patent Trial and Appeal Board

Oct 27, 2017

13472866 (P.T.A.B. Oct. 27, 2017)

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.
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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),
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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
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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.
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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
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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
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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
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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
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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
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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
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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.
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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
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