Ex Parte Jungk et al

Patent Trial and Appeal Board

Jun 13, 2017

12303234 (P.T.A.B. Jun. 13, 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.
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.”).
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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.
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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.
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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.
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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.
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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
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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.
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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.
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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).
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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
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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,
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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.
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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).
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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
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