Ex Parte Jungk et alDownload PDFPatent Trial and Appeal BoardJun 13, 201712303234 (P.T.A.B. Jun. 13, 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. 12/303,234 12/02/2008 Andreas Jungk BOSC.P5598US/11602890 3867 24972 7590 06/15/2017 NORTON ROSE FULBRIGHT US LLP 1301 Avenue of the Americas NEW YORK, NY 10019-6022 EXAMINER MORGAN, ROBERT W ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 06/15/2017 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): nyipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREAS JUNGK and STEFAN AUBERG Appeal 2016-007060 Application 12/3 03,2341 Technology Center 3600 Before LARRY J. HUME, LINZY T. McCARTNEY, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 12 and 14—32, which constitute all of the claims pending in the application. Claims 1—11 and 13 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Robert Bosch GmbH as the real party in interest. App. Br. 2. Appeal 2016-007060 Application 12/303,234 STATEMENT OF THE CASE Introduction Appellants describe the disclosed and claimed invention as follows: The invention relates to a method for selecting a driving destination from a set of stored localities, a locality name being inputted for comparison of the inputted locality name with stored locality names, and at least one of the stored localities being determined, from the comparison of the inputted locality name, as a possible driving destination, wherein a further locality is determined; a vicinity of the further locality is determined; and a locality determined as possible from the comparison is outputted for selection as a driving destination when the locality is in the determined vicinity of the further locality. Abstract.2 Claim 1 is representative and reproduced below: 1. A method for selecting a driving destination from a set of storage localities in a storage unit of a navigation unit of a vehicle, the method comprising: inputting a locality name to an input unit of a driving apparatus; comparing, with a processing unit, the inputted locality name with the stored locality names, in the storage unit of the navigation unit of the vehicle at least one of the stored localities being determined, with a processing unit, from the comparison of the inputted locality name, as a possible driving destination; 2 Our Decision refers to the Final Office Action mailed July 20, 2015 (“Final Act.”); Appellants’ Appeal Brief filed Nov. 23, 2015 (“App. Br.”); the Examiner’s Answer mailed May 11, 2016 (“Ans.”); Appellants’ Reply Brief filed July 11, 2016 (“Reply Br.”); and the original Specification filed Dec. 2, 2008 (“Spec.”). 2 Appeal 2016-007060 Application 12/303,234 inputting a further locality to the input unit, the further locality located within the inputted locality; determining, with the processing unit, a vicinity of the further locality the further locality being independent from a present locality; and outputting, with the processing unit, from an output unit, a locality from the at least one stored localities determined from the comparison as a possible driving destination for selection as a driving destination when said locality is in the determined vicinity of the further locality. Claims App. 1. Rejections on Appeal3 Claims 12 and 14—32 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Claims 12, 14, 15, 19, 20, 2, and 29-32 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Wong (US 2004/0260464 Al; published Dec. 23, 2004), Strothmann et al. (US 2006/0212319 Al; published Sept. 21, 2006) (“Strothmann”), and Ruhl (US 2002/0016669 Al; published Feb. 7, 2002). Claim 16 stands rejected under 35 U.S.C. 103(a) as being unpatentable over Wong, Strothmann, Ruhl, and Tu (US 2004/0254723 Al; published Dec. 16, 2004). Claim 17 stands rejected under 35 U.S.C. 103(a) as being unpatentable over Wong, Strothmann, Ruhl, Tu, and Musk et al. (US 6,108,650 Al; issued Aug. 22, 2000) (“Musk”). 3 The Examiner’s rejection of claims 7—11 under 35 U.S.C. § 112, first paragraph, was withdrawn. Ans. 2. 3 Appeal 2016-007060 Application 12/303,234 Claim 18 stands rejected under 35 U.S.C. 103(a) as being unpatentable over Wong, Strothmann, Ruhl, and Grell et al. (US 2007/0078851 Al; published Apr. 5, 2007) (“Grell”). Claims 21—23, 26, and 28 stand rejected under 35 U.S.C. 103(a) as being unpatentable over Ruhl, Strothmann, and Wong. Claim 24 stands rejected under 35 U.S.C. 103(a) as being unpatentable over Ruhl, Strothmann, Wong, Tu, and Musk. Claim 25 stands rejected under 35 U.S.C. 103(a) as being unpatentable over Ruhl, Strothmann, Wong, and Grell. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments in the Appeal Brief (see App. Br. 6—19) and the Reply Brief (see Reply Br. 2—16) and are not persuaded the Examiner has erred. Unless otherwise noted, we adopt as our own the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken (Final Act. 2—17) and in the Examiner’s Answer (Ans. 2—4), and we concur with the conclusions reached by the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Briefs. Rejection of Claims 12 and 14—32 under § 101 In Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014), the Supreme Court set forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Svcs. v. Prometheus Labs., Inc., 566 U.S. 4 Appeal 2016-007060 Application 12/303,234 66, 75—77 (2012)). The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. For example, abstract ideas include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355—57. If, at the first stage of the Alice analysis, we conclude that the claim is not directed to a patent-ineligible concept, it is considered patent eligible under § 101 and the inquiry ends. RapidLitig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016). If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). In other words, the second step is to “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. (brackets in original) (quoting Mayo, 566 U.S. at 72—73). The prohibition against patenting an abstract idea “‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (internal citation omitted). In determining whether a process claim recites an abstract idea, we must examine the claim as a whole, keeping in mind that an invention is not ineligible just because it relies upon a law of nature or mathematical algorithm. Digitech Image Tech. LLC v. Electronics for Imaging Inc., 758 F. 5 Appeal 2016-007060 Application 12/303,234 3d 1344, 1350 (Fed. Cir. 2014). As noted by the Supreme Court, “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Diamond v. Diehr, 450 U.S. 175, 187 (1981). The “directed to” inquiry asks not whether “the claims involve a patent-ineligible concept,” but instead whether, “considered in light of the specification,. . . ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal citations omitted). In that regard, we determine whether the claims “focus on a specific means or method that improves the relevant technology” or are “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Here, the Examiner finds the claims are directed to “the abstract idea of comparing input information to known driving destinations and their locations.” Final Act. 2 (“This is a method of organizing human activities and an idea of itself.”); Ans. 3. The Examiner states this determination was made “by a comparison to the abstract ideas identified by the courts and was found to be similar to methods of organizing human activities and comparing new and stored information and using rules to identity options.” Ans. 3. Regarding step two of Alice, the Examiner finds the additional elements or combination of elements in the claims “were not found to add significantly more to the abstract idea because they were no more than generic components executing generic computer functions.” Id.', see also Final Act. 3. 6 Appeal 2016-007060 Application 12/303,234 We are not persuaded by Appellants’ arguments that the Examiner erred. First, Appellants argue the Examiner has not first determined whether the claims are directed to one of the four statutory categories of invention. App. Br. 8. Appellants also argue method claim 12 and apparatus claim 21 are not directed to any judicial exception because these claims “are directed to a method or apparatus which is statutory subject matter.” Reply Br. 4. These arguments are not persuasive because, as the Examiner finds, “a separate rejection would have been given for being outside one of the four statutory categories,” and even though the claims are within two of the statutory categories, “the claims are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.” Ans. 2. The Supreme Court has long interpreted § 101 to include an implicit exception: “[ljaws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp., 134 S. Ct. at 2354. Second, Appellants argue Alice is inapposite to this case as there is no evidence here that claim 12 or apparatus claim 21 represents a fundamental economic practice long prevalent in our system or commerce. App. Br. 6—7, 9-11; Reply Br. 4, 7, 9. This argument is not persuasive because the Examiner does not find, and neither do we, that claims 12 and 21 represent a fundamental economic practice. Further, although we do not rely on the specific holding of Alice, we do apply the two step framework of Alice, as described above, in determining whether the claims here are patent eligible. Third, Appellants argue “the cavalier assertion” of Alice in this case is inconsistent with the Patent Office’s admonition to “tread carefully in construing this exclusion” and the Patent Office’s guidance that “an invention is not rendered ineligible simply because it involves an abstract 7 Appeal 2016-007060 Application 12/303,234 concept.” App. Br. 9-11; Reply Br. 7—9. Although we agree with these principles, we are not persuaded by Appellants’ arguments that they were not followed here for the reasons discussed infra. Regarding step one of Alice, claim 12 recites a method for selecting a driving destination from a set of stored localities by performing the steps of inputting a locality name, determining one of the stored localities as a possible driving destination by comparing the input name with the stored locality names, inputting a further locality independent from a present locality, determining a vicinity of the further locality, and outputting a locality from the stored localities when the locality is in the determined vicinity of the further locality. The focus of claim 12, therefore, is selecting a driving destination from stored localities by inputting data, comparing data, inputting additional data, processing the data, and outputting certain data, i.e., a driving destination. Similarly, apparatus claim 21 focuses on inputting data, storing data, processing data, and outputting data, i.e., a proposed driving destination. Considering the focus of the claims, we conclude they are directed to the abstract idea of determining a driving destination because they gather, process, and output data without any asserted inventive technology. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.”). Consistent with the Examiner’s conclusion, we conclude these claims do not merely involve a patent-ineligible concept, but “their character as a whole is directed to excluded subject matter.” See Enfish, LLC v. 8 Appeal 2016-007060 Application 12/303,234 Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal citations omitted). This conclusion is supported by the fact that the steps recited in the claims can be performed either mentally or with “pencil and paper.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (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.”). Regarding step two of Alice, Appellants’ have not provided persuasive evidence or arguments that any specialized computer hardware or other “inventive” computer components are required to implement the claims. Thus, we agree with the Examiner that the computer components do not add “significantly more” to the abstract idea because they are “no more than generic computer components executing generic computer functions.” See Alice, 134 S. Ct. at 2358 (“[T]he mere recitation of a generic computer cannot transform a patent in-eligible abstract idea into a patent-eligible invention. Stating an abstract idea while adding the words ‘apply if is not enough for patent eligibility”) (quoting Mayo, 566 U.S. at 72 (internal quotation marks omitted). Furthermore, as the Court explained in Electric Power, “merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.” Electric Power, 830 F.3d at 1355. Thus, considering the elements of claims 12 and 21 both individually and in combination, we conclude there are no additional elements that transform the nature of the claim into a patent-eligible application. See Alice, 134 S. Ct. at 2355. 9 Appeal 2016-007060 Application 12/303,234 For these reasons, we sustain the Examiner’s rejection of claims 12 and 21 as being directed to non-statutory subject matter. For the same reasons, we also sustain the rejection of claims 14—20 and 22—32, which are not argued separately. Rejection of Claims 12, 14, 15, 19, 20, 27, and 29—22 under § 103(a)4 Appellants argue Strothmann does not teach or suggest “a set of stored localities in a storage unit of a navigation unit of a vehicle,” as recited in claim 12. App. Br. 12—13; Reply Br. 10-11. We are not persuaded by this argument because the Examiner does not rely on Strothmann as teaching this limitation, but instead finds, and we agree, Wong teaches a method for selecting a driving destination from “a set of stored localities in a storage unit of a navigation unit of a vehicle.” Ans. 3 (citing Wong || 15, 22, 25). Appellants make a general argument regarding the “obviousness rejections.”5 App. Br. 17—19; Reply Br. 17—19. In particular, Appellants argue that, instead of providing a prima facie case of obviousness, the Examiner is simply stating, without supporting evidence, “that it would have been obvious to try the combination asserted in the Office Action.” App. Br. 17; Reply Br. 14. Appellants also argue the Examiner has not provided 4 Appellants argue these claims as a group. See App. Br. 12—13; Reply Br. 10-11. We select claim 12 as the representative claim for this group, and the remaining claims stand or fall with claim 12. See 37 C.F.R. § 41.37(c)(l)(iv). 5 In making this argument, Appellants do not identify or argue any specific combination of references relied on by the Examiner. Because of this total lack of substantive specificity with respect to the Examiner’s combinations of references, Appellants’ argument does not constitute an argument for separate patentability. See 37 C.F.R. § 41.37(c)(l)(iv). 10 Appeal 2016-007060 Application 12/303,234 proper evidence of a motivation to modify or combine the references to provide the claimed subject matter, but has used “conclusory hindsight.” App. Br. 18; Reply Br. 15—16. Appellants further argue the Examiner has failed to provide the required factual findings underlying the obviousness rejections. App. Br. 18—19; Reply Br. 16. We do not find Appellants’ arguments persuasive. First, the Examiner finds, and we agree, he did not state it would have been “obvious to try” the combinations, but specifically found the combinations of references would have been obvious because, “in this case, the combination of the prior art references yields only predictable results and the elements would have performed the same function as they did separately.” Ans. 4; see Final Act. 3—17. As stated by the Supreme Court, the “combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Here, Appellants have not provided persuasive evidence or arguments that it would not have been possible for a person of skill in the art to combine any of the references relied on by the Examiner by known methods or that the results of the combinations would have been unpredictable. Absent such evidence or arguments, we agree with the Examiner’s findings as the skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” because the skilled artisan is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420-21. Second, regarding Appellants argument that the Examiner relied on “conclusory hindsight,” it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight 11 Appeal 2016-007060 Application 12/303,234 reasoning. However, so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Appellant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, we conclude the Examiner did not use impermissible hindsight because the rejection is based on the references and what they would have taught or suggested to a person of ordinary skill in the art. See Final Act. 3—17. Third, we are not persuaded by Appellants’ argument that the Examiner failed to provide the required factual findings underlying the obviousness rejections. Here, the Examiner made detailed findings, supported by the references, that all of the limitations of the claims are taught or suggested by the combined teachings of the references and that, as discussed above, the combinations of references would have been obvious because the combination of the prior art references yields only predictable results. See Ans. 4; Final Act. 3—17. Thus, we find a preponderance of the evidence supports the Examiner’s finding that Wong teaches or suggests a set of stored localities “in a storage unit of a navigation unit of a vehicle,” as recited in claim 12. Accordingly, we are not persuaded the Examiner erred in (1) finding Wong teaches the disputed limitation of claim 12 and (2) concluding that the combination of Wong, Strothmann, and Ruhl renders the subject matter of claim 12 obvious under 35 U.S.C. § 103(a). Therefore, we sustain the Examiner’s rejection of claim 12, as well as claims 14, 15, 19, 20, 27, and 29-32, for obviousness under § 103(a). Appellants argue claims 21—23, 26, 12 Appeal 2016-007060 Application 12/303,234 and 28 are allowable for the same reasons as claim 12.6 App. Br. 14; Reply Br. 12. Because we find claim 12 is not allowable, and because Appellants do not substantively argue against the Examiner's rejection of claims 21—23, rejected over the same combination of references (App. Br. 14), we also sustain the Examiner’s rejections of claims 21—23, 26, and 28. Rejection of Claim 16 under § 103(a) Appellants argue claim 16 is allowable based on its dependence from claim 12 and because Tu does not cure the deficiencies of the primary references. Specifically, Appellants argue Tu does not teach or suggest determining a further locality that is independent from a present locality. App. Br. 14—15; Reply 12—13. We are not persuaded by this argument because the Examiner states that Tu was not relied on for this feature, but “the combination of Strothmann and Wang has been shown to teach the feature of determining a further locality that is independent from a present locality.” Ans. 3; see also Final Act. 4—5 (citing Strothmann 138). In the Reply Brief, Appellants merely repeat their argument regarding Tu and fail to respond to the Examiner’s findings in the Answer. Thus, for the reasons stated by the Examiner, we agree that Strothmann teaches or suggests determining a further locality that is independent from a present locality. Accordingly, we sustain the Examiner’s rejection of claim 16 under § 103(a). Rejections of Claims 17 and 18 under § 103(a) Claim 17 was rejected under the fourth-stated ground of rejection above, and claim 18 was rejected under the fifth-stated ground of rejection 6 Claims 21—23, 26, and 28 are rejected under the sixth-stated ground of rejection above. 13 Appeal 2016-007060 Application 12/303,234 above. Appellants argue claims 17 and 18 depend from claim 12 and are allowable for essentially the same reasons as claim 12 because the Musk and Grell references fail to cure the deficiencies of the primary references. App. Br. 15; Reply Br. 13. These arguments are not persuasive because, as discussed supra, we find that claim 12 is not allowable, as there are no deficiencies in the primary references in regard to claim 12. Thus, we sustain the Examiner’s rejection of claims 17 and 18 under § 103(a). Rejection of Claim 24 under § 103(a) Claim 24 is rejected under the seventh-stated ground of rejection above. Appellants argue claim 24 depends from claim 12 and is allowable for essentially the same reasons as claim 12 because the Tu and Musk references fail to cure the deficiencies of the primary references. App. Br. 16; Reply Br. 13—14. This argument is not persuasive because, as discussed supra, we find that claim 12 is not allowable, as there are no deficiencies in the primary references in regard to claim 12. Thus, we sustain the Examiner’s rejection of claim 24 under § 103(a). Rejection of Claim 25 under § 103(a) Claim 25 is rejected under the eighth-stated ground of rejection above. Appellants argue claim 25 depends from claim 12 and is allowable for essentially the same reasons as claim 12 because the Grell reference fails to cure the deficiencies of the primary references. App. Br. 16—17; Reply Br. 14. This argument is not persuasive because, as discussed supra, we find that claim 12 is not allowable, as there are no deficiencies in the primary references in regard to claim 12. Thus, we sustain the Examiner’s rejection of claim 25 under § 103(a). 14 Appeal 2016-007060 Application 12/303,234 DECISION We affirm the Examiner’s decision rejecting claims 12 and 14—32 under 35 U.S.C. § 101. We affirm the Examiner’s decision rejecting claims 12 and 14—32 under 35 U.S.C. § 103(a). 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). See 37 C.F.R. § 41.50(f). AFFIRMED 15 Copy with citationCopy as parenthetical citation