Ex Parte Krzanowski

Patent Trials and Appeals Board

Jun 13, 2019

12210448 - (D) (P.T.A.B. Jun. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/210,448 09/15/2008
25537 7590 06/17/2019
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
FIRST NAMED INVENTOR
Roman Krzanowski
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.
20080301 6600
EXAMINER
RAPILLO, KRISTINE K
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
06/17/2019 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):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROMAN KRZANOWSKI
Appeal2018-002000
Application 12/210,448
Technology Center 3600
Before MARC S. HOFF, BETH Z. SHAW, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-20, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies the real parties in interest as Verizon Communications
Inc. and its subsidiary companies. App. Br. 3. PTO assignment records
identify the assignee as Verizon Patent and Licensing Inc.
Appeal2018-002000
Application 12/210,448
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to "providing a
route selection scheme that may be based on the inclusion and/or exclusion
of areal features." Spec. ,-J 11. 2 The scheme includes "receiving a start
location and an end location for determining a route, determining an areal
feature for at least one of inclusion or exclusion in determining the route,
determining the route based on the areal feature, and providing the
determined route." Id. at 19 (Abstract). The Specification describes a
variety of areal features including the following: ( 1) geographic features,
"e.g., a lake, a desert, a forested area, a mountainous area, etc.";
(2) administrative features, "e.g., a town, a city, a county, a state, etc.";
(3) conceptual features, "e.g., a downtown area, a suburb area, a municipal
area, a shopping district, etc."; and ( 4) points of interest, "e.g., a public or
national park, a zoo, a mall, etc." Id. ,-i,-i 11, 37, 44. In addition, the
Specification explains that exemplary "categories of areal features" include
a "downtown, city, park, urban area, etc." Id. ,-i 50, Fig. 5C.
Exemplary Claims
Independent claims 1 and 9 exemplify the claims at issue and read as
follows:
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed September 15, 2008; "Final Act." for the Final Office
Action, mailed February 9, 2017; "Adv. Act." for the Advisory Action,
mailed April 17, 2017; "App. Br." for the Appeal Brief, filed June 15, 2017;
"Ans." for the Examiner's Answer, mailed October 20, 2017; and
"Reply Br." for the Reply Brief, filed December 4, 2017.
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Application 12/210,448
1. A method performed by a device, comprising:
receiving, by the device, a start location and an end
location for use in determining a route of travel in response to a
user request;
presenting, by the device via a user interface and for user
selection, multiple categories of areal features for inclusion or
exclusion in determining the route, wherein one or more
attributes of size associated with the areal features define each
of the categories;
receiving, via the user interface and responsive to user
selection of one of the categories, a user input modifying a
value of the one or more attributes of size associated with the
areal features of the selected category;
redefining, by the device and responsive to the user input,
the selected category based on the modified value of the one or
more attributes of size of the corresponding areal features;
receiving, via the user interface, a user input identifying
an areal feature by name, wherein the identified areal feature
corresponds to the redefined category;
determining, by the device, the route based on the start
location, the end location, an exclusion or an inclusion of at
least one areal feature, corresponding to the redefined category,
from the route, and an exclusion or an inclusion of the
identified areal feature corresponding to the redefined category;
and
outputting, by the device, the determined route via an
output component.
9. A device comprising:
one or more memories to store instructions; and
one or more processors to execute the instructions and
configure the one or more processors to:
receive a start location and an end location for
determining a route of travel connecting the start location
and the end location;
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receive a user indication of an areal feature,
corresponding to a category selected from multiple
categories of areal features presented to the user, to be
used as a criterion for determining the route;
receive, responsive to the user indication, a user
input to modify a value of one or more size parameters
that define the selected category of areal features;
modify, responsive to the user input, the category
of areal features based on the modified one or more size
parameters;
receive a user input specifying an areal feature that
corresponds to the modified category;
determine the route based on a first location of the
specified areal feature and a second location of at least
one areal feature, corresponding to the modified
category, with respect to the start location and the end
location; and
output the determined route.
App. Br. 24, 26-27 (Claims App.).
The Prior Art Supporting the Re} ections on Appeal
As evidence ofunpatentability under 35 U.S.C. § 103(a), the
Examiner relies on the following prior art:
Kaplan et al. ("Kaplan") US 6,401,034 Bl June 4, 2002
Pechatnikov et al. ("Pechatnikov") US 2003/0229441 Al Dec. 11, 2003
Kreft US 7,388,519 Bl June 17, 2008
John Gibson & David McKenzie, Using Global Positioning Systems in
Household Surveys for Better Economics and Better Policy, 22 THE WORLD
BANK RESEARCH OBSERVER 217-41 (2007) ("Gibson")
The Rejections on Appeal
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 3-5.
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Application 12/210,448
Claims 1 and 3-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kaplan and Gibson. Final Act. 6-13.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Kaplan, Gibson, and Kreft. Final Act. 14-15.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Kaplan, Gibson, and Pechatnikov. Final Act. 15-16.
ANALYSIS
We have reviewed the rejections in light of Appellant's arguments
that the Examiner erred. For the reasons explained below, we agree with the
Examiner's conclusions concerning ineligibility under § 101 and
unpatentability under§ 103(a). Except as noted below, we adopt the
Examiner's findings and reasoning in the Final Office Action, Advisory
Action, and Answer. See Final Act. 3-17; Adv. Act. 2-4; Ans. 2-9. We
provide the following to address and emphasize specific findings and
arguments.
The§ 1 OJ Rejection of Claims 1-20
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 "contains an important implicit
exception" for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,216 (2014); see Diamond v.
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Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77-80; Alice, 573 U.S. at 217-18.
Under Mayo/Alice step one, we "determine whether the claims at
issue are directed to" a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the "focus" of the claims at issue and their "character as a whole."
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019
Guidance"). The 2019 Guidance applies to the Board. Id. at 50-51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility "for
providing policy direction" for the PTO). Neither the Examiner nor
Appellant had the benefit of the 2019 Guidance when advocating their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54-55. Prong one
requires evaluating "whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon." Id. at 54. "If the
claim does not recite a judicial exception, it is not directed to a judicial
exception," and it satisfies § 101. Id. "If the claim does recite a judicial
exception, then it requires further analysis" under prong two. Id. Prong two
requires evaluating "whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception." Id. "When
the exception is so integrated, then the claim is not directed to a judicial
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exception," and it satisfies § 101. Id. "If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception," and it "requires further analysis" under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we "consider the elements of each claim
both individually and 'as an ordered combination' to determine whether the
additional elements" add enough to transform the "nature of the claim" into
"significantly more" than the judicial exception. Alice, 573 U.S. at 217-18,
221-22 (quoting Mayo, 566 U.S. at 78-79). Step two involves the search for
an "inventive concept." Alice, 573 U.S. at 217-18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). "[A]n inventive concept must be evident in the claims."
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG ONE
For Mayo/Alice step one, the Federal Circuit has noted that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Here,
the Examiner determines that the claims are directed to the abstract idea of
"providing directions to a user via a device based upon criteria selected by
the user" by "collecting information, analyzing the information, and
displaying certain results of the collection and analysis." Adv. Act. 3;
Ans. 2-3. Further, the Examiner identifies the abstract ideas for the
independent claims as follows:
• claim 1-"redefining ... a category of features based on
... modified attributes" and "determining ... a route
based on ... locations and inclusion or exclusion of
features"·
'
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• claim 9-"modify ... a category of features based on ...
modified ... parameters" and "determine ... a route
based on ... locations and inclusion or exclusion of ...
locations"; and
• claim 14-"redefining a category of features based on
... modified ... values" and "selecting a route based on
... locations and inclusion or exclusion of ... route
selection criterion and locations."
Final Act. 3; Ans. 5-6.
Appellant disputes that the claims are directed to an abstract idea. See
App. Br. 8-13; Reply Br. 4-7. In particular, Appellant contends that the
identified abstract ideas are "impermissibly reductive of the features
specifically recited in the claims" and that the Examiner "ignores the
features that are actually recited in the pending claims." App. Br. 10
( emphasis omitted).
We disagree. In determining that the claims are directed to an abstract
idea, the Examiner accurately assesses the "focus" of the claims and their
"character as a whole." See Final Act. 3; Adv. Act. 2-3; Ans. 2-3, 5-6; see
also SAP Am., 898 F.3d at 1167. For instance, in making that determination,
the Examiner considers claim limitations covering "receiving data, selecting
and receiving selected data," "redefining, and determining route," and
"outputting the data." Ans. 3.
In addition, we determine that the claims recite abstract ideas falling
within the three groupings of abstract ideas specified in the 2019 Guidance:
mathematical concepts, certain methods of organizing human activity, and
mental processes. See 84 Fed. Reg. at 51-52. As relevant here, the
Guidance identifies the following as mental processes: "concepts performed
in the human mind," such as "an observation, evaluation, judgment, [or]
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opinion." Id. at 52 (footnote omitted). As explained in the following
paragraphs, each independent claim recites mental processes in various
limitations.
For instance, claim 1 recites the following limitations:
• "receiving ... a start location and an end location for use
in determining a route of travel";
• "identifying an areal feature by name"; and
• "determining ... the route based on the start location, the
end location, an exclusion or an inclusion of at least one
areal feature ... and an exclusion or an inclusion of the
identified areal feature."
App. Br. 24 (Claims App.).
The above-quoted limitations encompass an evaluation performed by
a human mentally or with pen and paper, i.e., selecting a route from an
origin to a destination including selecting intermediate stops or places to
avoid ( or both). See, e.g., DietGoal Innovations LLC v. Bravo Media LLC,
33 F. Supp. 3d 271, 274-75, 283-84 & n.6 (S.D.N.Y. 2014) (deciding that
claims encompassing "selecting meals that align with the user's individual
preferences and nutritional goals" and "calculating the dietary impact of the
addition or subtraction of certain foods" were directed to an "abstract idea or
mental concept"), aff'd, 599 F. App'x 956 (Fed. Cir. 2015).
As an example, a visitor to Washington, D.C., may mentally (1) plan
to sightsee starting at the Lincoln Memorial and ending at the U.S. Capitol,
(2) select as intermediate stops certain museums along the National Mall,
and (3) choose to avoid other museums, e.g., due to time constraints. See
Spec. ,-J 48, Fig. 5A. Consistent with this example, the Specification
explains that "the route selection described herein is not intended to be
limited to a user that may travel a route by a vehicle." Id. ,-i 53. The 2019
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Guidance identifies an evaluation performed by a human mentally or with
pen and paper as a mental process, and thus an abstract idea. 84 Fed. Reg.
at 52 & nn.14-15; see also Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016) ("[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.") ("Symantec").
Similar to claim 1, claim 9 recites the following limitations:
• "receive a start location and an end location for
determining a route of travel connecting the start location
and the end location";
• "receive a user input specifying an areal feature"; and
• "determine the route based on a first location of the
specified areal feature and a second location of at least
one areal feature ... with respect to the start location and
the end location."
App. Br. 26-27 (Claims App.). The above-quoted limitations encompass an
evaluation performed by a human mentally or with pen and paper, i.e.,
selecting a route from an origin to a destination including selecting
intermediate stops or places to avoid ( or both). As noted above, the 2019
Guidance identifies an evaluation performed by a human mentally or with
pen and paper as a mental process, and thus an abstract idea. 84 Fed. Reg.
at 52 & nn.14-15.
Similar to claims 1 and 9, claim 14 recites the following limitations:
• "determining a start location and an end location
associated with a route selection";
• "receiving a route selection criterion," e.g.,
shortest route or quickest route;
• "receiving a user input specifying an areal feature";
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• "identifying a first location of the specified areal feature
and a second location of at least one areal feature ...
relative to the start location and the end location"; and
• "selecting a route, from a plurality of alternate routes
connecting the start location and the end location, based
on the route selection criterion and the identified first and
second locations."
App. Br. 28 (Claims App.); see Spec. ,i,i 1, 11, 15, 44. The above-quoted
limitations encompass an evaluation performed by a human mentally or with
pen and paper, i.e., selecting a route from an origin to a destination including
selecting intermediate stops or places to avoid ( or both). As noted above,
the 2019 Guidance identifies an evaluation performed by a human mentally
or with pen and paper as a mental process, and thus an abstract idea. 84 Fed.
Reg. at 52 & nn.14-15.
In addition, the above-quoted limitations in claims 1, 9, and 14
amount to "managing personal behavior." For instance, someone manages
their personal behavior by selecting a route from an origin to a destination
including selecting intermediate stops or places to avoid ( or both). The 2019
Guidance identifies "managing personal behavior" as among "[ c Jertain
methods of organizing human activity," and thus an abstract idea. 84 Fed.
Reg. at 52; see Bilski v. Kappas, 561 U.S. 593, 611 (2010) (deciding that a
claim was directed to two types of abstract ideas: a "fundamental economic
practice" and a "mathematical formula").
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG Two
Because we determine that each independent claim recites abstract
ideas, we consider whether each claim as a whole integrates the recited
abstract ideas into a practical application. See 84 Fed. Reg. at 54-55. "Only
when a claim recites a judicial exception and fails to integrate the exception
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into a practical application, is the claim 'directed to' a judicial exception
.... " Id. at 51.
Appellant asserts that the claims here resemble the claims in Enfzsh
and that "the pending claims are directed to a specific improvement to
computer technology functionality namely, configuring a route selection
scheme to include and/or exclude categories of areal features, which
categories are defined by a number of attributes that are modifiable via a
user interface." App. Br. 12-13 (citing Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016); Spec. ,i,i 11, 44); see Reply Br. 6. Appellant
contends that the claimed "implementation of a route selection scheme with
respect to user-redefined categories of areal features to be included in and/or
excluded from subsequent route determinations" represents "an
improvement in software technology." Reply Br. 6-7.
Unlike the claims here, the claims in Enfzsh recited a "specific
improvement to the way computers operate," i.e., an improved database
configuration that permitted faster and more efficient searching. Enfzsh, 822
F.3d at 1330-33, 1336. The Federal Circuit has explained that the claims in
Enfzsh "did more than allow computers to perform familiar tasks with
greater speed and efficiency" and "actually permitted users to launch and
construct databases in a new way." Finjan, Inc. v. Blue Coat Sys., Inc.,
879 F.3d 1299, 1305 (Fed. Cir. 2018). The Federal Circuit has also
explained that the claims in Enfish "focused on an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity." Secured Mail Sols. LLC v. Universal Wilde,
Inc., 873 F.3d 905, 910 (Fed. Cir. 2017).
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In contrast to the claims in Enfish, the claims here use a computer in
its ordinary capacity to perform "basic calculation, storage, and transmission
functions." See App. Br. 24-30 (Claims App.); see also Alice, 573 U.S.
at 226. The claims here do not recite an advance in hardware or software
that, for example, causes a computer itself or a database itself to operate
faster or more efficiently.
Also, the Specification does not describe user-redefined categories of
areal features as an improvement over prior-art arrangements, e.g., "software
technology." See, e.g., Spec. ,i,i 1, 11-15, 37, 44, 50, 53, 56. Instead, the
Specification notes that the invention "may be implemented in many
different forms of software, firmware, and hardware." Id. ,i 56. Further, the
Specification indicates that the invention addresses a routing problem,
stating that "the selected best route" according to prior-art mapping systems
"may direct the user through an area that is not desirous to the user or the
best route may fail to direct the user through an area that is desirous to the
user." Id. ,i l; see id. ,i,i 11-15.
In addition, the Specification discusses user modifications, stating that
"the user may be able to modify how an areal feature ( e.g., downtown) is
defined" in a database by "modifying parameters associated with this areal
feature ( e.g., number of people, size of area, density, etc.)." Id. ,i 50. But
nothing indicates that the definition-modification ability amounts to an
improvement over prior-art arrangements. See, e.g., id. ,i,i 1, 11-15, 37, 44,
50, 53, 56.
Appellant analogizes the claims here to the claims in DDR Holdings.
App. Br. 15-16 (citingDDRHoldings, LLCv. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014)). But the claims here do not resemble the claims in
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DDR Holdings. There, the Federal Circuit determined that certain claims
satisfied Mayo/Alice step two because "the claimed solution amount[ ed] to
an inventive concept for resolving [a] particular Internet-centric problem,"
i.e., a challenge unique to the Internet. DDR Holdings, 773 F.3d at 1257-59.
The Federal Circuit explained that the patent-eligible claims specified "how
interactions with the Internet are manipulated to yield a desired result ...
that overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink." Id. at 1258. The court reasoned that
those claims recited a technological solution "necessarily rooted in computer
technology" that addressed a "problem specifically arising in the realm of
computer networks." Id. at 1257.
According to the Federal Circuit, "DDR Holdings does not apply
when ... the asserted claims do not 'attempt to solve a challenge particular
to the Internet."' Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)). The claims here do not
attempt to solve a challenge particular to the Internet. See App. Br. 24-30
(Claims App.); see also Ans. 6. Among other things, the claims do not
require a network or recite transmissions between different devices. App.
Br. 24-30.
Based on BASCOM, Appellant contends that the claims improve "an
existing technological process." App. Br. 14-15 (citing BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
Appellant misplaces his reliance on BASCOM. There, the claims recited a
"specific method of filtering Internet content" requiring "the installation of a
filtering tool at a specific location, remote from the end-users, with
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customizable filtering features specific to each end user." BASCOM,
827 F.3d at 1345-46, 1350. The Federal Circuit reasoned that the claims
covered "a technology-based solution ... to filter content on the Internet that
overcomes existing problems with other Internet filtering systems" and
"improve[s] an existing technological process." Id. at 1351 (citing Alice,
573 U.S. at 223); see Alice, 573 U.S. at 223 (explaining that "the claims in
Diehr were patent eligible because they improved an existing technological
process").
In contrast to the claims in BASCOM, the claims here do not cover a
technology-based solution that improves an existing technological process.
See Final Act. 16-17; Adv. Act. 2-3; Ans. 5-6. As the Examiner
determines, "the combination of elements does not 'improve an existing
technological process' or 'improve the performance of the computer system
itself'." Adv. Act. 3; Ans. 5. As the Examiner also determines, the claims
here "do not require any nonconventional computer, network or display
components, or even a 'non-conventional and non-generic arrangement of
known, conventional pieces'," in contrast to the claims in BASCOM. Adv.
Act. 2; Ans. 5-6. Hence, the claims here do not resemble the claims in
BASCOM.
Appellant also analogizes the claims here to the claims in Amdocs.
Reply Br. 5, 7 (citing Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288 (Fed. Cir. 2016)); see App. Br. 16. Appellant misplaces his reliance on
Amdocs. There, the patents concerned network components "arrayed in a
distributed architecture" that "collect[ ed] and process[ ed] data close to its
source," and thus enabled "load distribution" and reduced network
congestion. Amdocs, 841 F.3d at 1291-92, 1300, 1303, 1306. The Federal
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Circuit decided that the claims satisfied Mayo/Alice step two because they
either (1) "entail[ ed] an unconventional technological solution ... to a
technological problem" that required generic computer components to
"operate in an unconventional manner to achieve an improvement in
computer functionality" or (2) "recite[ d] a technological solution to a
technological problem specific to computer networks-an unconventional
solution that was an improvement over the prior art." Id. at 1299-1306.
In contrast to the claims in Amdocs, the claims here do not achieve an
improvement in computer functionality or recite a technological solution to a
technological problem. Adv. Act. 2-3; Ans. 5-6; see Final Act. 16-17.
Rather, the claims recite "abstract ideas that use computers as tools." Adv.
Act. 2; Ans. 5.
Appellant argues that the claims do not "preempt all ways of route
selection using a computer." App. Br. 15. That argument does not persuade
us of Examiner error. While preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See Fair Warning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering
a patent-ineligible concept, preemption concerns "are fully addressed and
made moot" by an analysis under the Mayo/Alice framework. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims "may have integrated the uudicial]
exception into a practical application." 84 Fed. Reg. at 55 & nn.25-29
(citing Manual of Patent Examining Procedure§§ 2106.05(a)-(c),
2106.05(e) (9th ed. rev. 08.2017 Jan. 2018)). As the above analysis
indicates, we have evaluated Appellant's arguments in light of those
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exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract ideas into a practical application. Thus, each claim is
directed to a judicial exception and does not satisfy § 101 under Mayol Alice
step one.
MAYO/ALICE STEP Two: PTO STEP 2B
Because we determine that each independent claim is directed to a
judicial exception, we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements" add enough to transform the "nature of the claim" into
"significantly more" than the judicial exception. See Alice, 573 U.S.
at 217-18, 221-22 ( quoting Mayo, 566 U.S. at 78-79). Under Mayo/Alice
step two, we "look with more specificity at what the claim elements add, in
order to determine 'whether they identify an "inventive concept" in the
application of the ineligible subject matter' to which the claim is directed."
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016)). An "inventive concept" requires more than
"well-understood, routine, conventional activity already engaged in" by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80).
Here, the Examiner finds that the additional elements in the claims
constitute "generic components that are configured to perform activities that
are well-understood, routine, and conventional activities previously known
to the industry." Final Act. 4; see Ans. 3. The Examiner determines that the
additional elements "do not add meaningful limits to practicing the abstract
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idea." Final Act. 4; see Adv. Act. 4. Thus, the Examiner concludes that
each independent claim "as a whole" does not "amount to significantly more
to [sic] the abstract idea." Final Act. 5; Adv. Act. 4; Ans. 4.
We agree with the Examiner. As explained in the following
paragraphs, we conclude that each independent claim lacks an "inventive
concept" that transforms the recited abstract ideas into a patent-eligible
invention.
As additional elements, the claims require a "device" with a "user
interface" and an "output component" or "display," "one or more
memories," and "one or more processors." App. Br. 24-30 (Claims App.).
The Specification describes those elements generically and evidences their
conventional nature. See, e.g., Spec. ,-J,-J 17, 24, 28-29, 31, 33; see also Final
Act. 4-5; Ans. 3-4.
For example, the Specification explains that a "user device" includes
"a GPS-based device, a computer, a portable device, a handheld device, a
mobile device, a stationary device, a wireless telephone, a personal digital
assistant (PDA), a web-browsing device, an in-car navigation system, a
navigation device, and/or some other type of computational,
communicational, and/or geographical information device." Spec. ,-J 17; see
id. ,-i 33; Final Act. 4-5; Ans. 3-4. The Specification notes that an "input
component" for a "user interface" includes "a keyboard, a keypad, a touch
screen, a touchpad, a mouse, a button, a switch, a microphone, an input port,
voice recognition logic, and/or some other type of visual and/or auditory
input component." Spec. ,-J 31. The Specification notes that an "output
component" includes "a display, a speaker, one or more light emitting diodes
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(LEDs), an output port, a vibrator, and/or some other type of visual,
auditory, and/or tactile output component." Id.
In addition, the Specification explains that a "display" includes "a
liquid crystal display (LCD), a plasma display panel (PDP), a field emission
display (FED), a thin film transistor (TFT) display, or some other type of
display technology." Spec. ,i 24.
The Specification identifies "one or more memories" as including the
following storage media:
a random access memory (RAM), a dynamic random access
memory (DRAM), a static random access memory (SRAM),
a synchronous dynamic random access memory (SDRAM),
a ferroelectric random access memory (FRAM), a read only
memory (ROM), a programmable read only memory (PROM),
an erasable programmable read only memory (EPROM), an
electrically erasable programmable read only memory
(EEPROM), and/or a flash memory.
Spec. ,i 29; see id. ,i 30; Final Act. 4-5; Ans. 3-4.
Further, the Specification identifies "one or more processors" as
including the following components:
a general-purpose processor, a microprocessor, a data
processor, a co-processor, a network processor, an application
specific integrated circuit (ASIC), a controller, a programmable
logic device, a chipset, a field programmable gate array
(FPGA), or some other component that may interpret and/or
execute instructions and/or data.
Spec. ,i 28; see Final Act. 4; Ans. 3.
Moreover, the claimed device, memories, and processors operate to
collect, process, and communicate data. See App. Br. 24-30 (Claims App.);
see also Final Act. 3-4; Ans. 2-3. Court decisions have recognized that
generic computer components operating to collect, process, and
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communicate data are well understood, routine, and conventional to a skilled
artisan. See, e.g., Alice, 573 U.S. at 226; SAP Am., 898 F.3d at 1164-65
& n. l, 1170; Symantec, 838 F.3d at 1316-20; Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014).
For example, the system claims in Alice recited a "data processing
system" with a "communications controller" and a "data storage unit," i.e.,
a memory. Alice, 573 U.S. at 226. The Supreme Court decided that the
system claims failed to satisfy § 101 because "[ n ]early every computer"
includes those generic components for performing "basic calculation,
storage, and transmission functions" and the system claims simply
implemented the same abstract idea as the method claims. Id. at 226-27.
The Court reasoned that ( 1) "the system claims are no different from the
method claims in substance"; (2) "[t]he method claims recite the abstract
idea implemented on a generic computer"; and (3) "the system claims recite
a handful of generic computer components configured to implement the
same idea." Id. at 226.
Here, the claimed device, memories, and processors perform "basic"
functions that nearly every computer performs. See App. Br. 24-30 (Claims
App.); see also Final Act. 3-5; Ans. 2-4; Spec. ,i,i 17, 24, 28-31, 33. For
instance, nearly every computer includes a processor for manipulating data
and a memory for storing data. Hence, the claimed generic computer
components do not satisfy the "inventive concept" requirement. See, e.g.,
Mortg. Grader Inc. v. First Choice Loan Servs., Inc., 811 F.3d 1314,
1324-25 (Fed. Cir. 2016) (holding that "generic computer components such
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as an 'interface,' 'network,' and 'database'" did not satisfy the "inventive
concept" requirement); FairWarning, 839 F.3d at 1095-96 (describing the
claimed "microprocessor" and "user interface" as "generic computer
elements"); Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App'x 1014,
1016-17 (Fed. Cir. 2017) ( describing the claimed "authentication server,"
"access server," "Internet Protocol network," "client computer device," and
"database" as "indisputably generic computer components").
Based on BASCOM, Appellant contends that the "inventive concept"
rests on "generat[ing] a user interface that allows users to redefine attributes
defining categories of areal features to be included in and/or excluded from a
route selection." App. Br. 15 (citing BASCOM, 827 F.3d at 1350; Spec.
,i 50). As explained above, however, the claims here do not resemble the
claims in BASCOM because they "do not require any nonconventional
computer, network or display components, or even a 'non-conventional and
non-generic arrangement of known, conventional pieces'." Adv. Act. 2;
Ans. 5-6.
Further, claim 1 recites a "device" with a "user interface" and an
"output component" but fails to specify any technical details about the
device, the user interface, or the output component. App. Br. 24. Claim 1
requires no particular presentation tool and nothing unconventional or
significant. Id. Claims 9 and 14 do not expressly require a "user interface"
or an "output component" and instead recite receiving "user input" through
some undefined input component. Id. at 26-29. Like claim 1, claims 9
and 14 require no particular presentation tool and nothing unconventional or
significant. Id. A generic "device" with generic input and output
components according to the claims at issue fails to satisfy § 101 under
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Mayo/Alice step two. See, e.g., Mortg. Grader, 811 F.3d at 1324-25;
FairWarning, 839 F.3d at 1095-96.
"Whether a combination of claim limitations supplies an inventive
concept that renders a claim 'significantly more' than an abstract idea to
which it is directed is a question of law." BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Given the claimed generic
computer components that perform generic computer functions, we conclude
that the combination of limitations in each independent claim does not
supply an "inventive concept" that renders the claim "significantly more"
than an abstract idea. Thus, each claim does not satisfy § 101 under
Mayo/Alice step two.
SUMMARY FOR PATENT ELIGIBILITY
For the reasons discussed above, each independent claim fails to
satisfy§ 101 under Mayo/Alice step one and step two. Thus, we sustain the
§ 101 rejection of the independent claims. We also sustain the § 101
rejection of the dependent claims because Appellant does not argue
eligibility separately for them. See 37 C.F.R. § 41.37(c)(l)(iv).
The§ 103 (a) Rejection of Claims 1 and 3-19
INDEPENDENT CLAIM 1: THE DISPUTED "PRESENTING" LIMITATION
As noted above, the§ 103(a) rejection of claim 1 rests on Kaplan and
Gibson. See Final Act. 6-8. Appellant argues that the Examiner erred in
rejecting claim 1 because the references fail to teach or suggest the
following limitation: "presenting, by the device via a user interface and for
user selection, multiple categories of areal features for inclusion or exclusion
in determining the route, wherein one or more attributes of size associated
with the areal features define each of the categories." See App. Br. 18-20.
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Appellant contends that the Examiner does not rely on Kaplan for this
limitation. Id. at 18-19. Appellant then asserts that Gibson "merely
describes population and travel distance data with respect to A TM and bank
branch locations, completely unrelated to defining categories" according to
claim 1. Id. at 19.
Appellant's arguments do not persuade us of Examiner error because
they attack the references individually, while the Examiner relies on the
combined disclosures in the references to teach or suggest the disputed
"presenting" limitation. See Final Act. 6-7; Adv. Act. 4; Ans. 7-8. Where a
rejection rests on the combined disclosures in the references, an appellant
cannot establish nonobviousness by attacking the references individually.
See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). For the
reasons explained below, we agree with the Examiner that the combined
disclosures in the references teach or suggest the disputed "presenting"
limitation.
In particular, Kaplan discloses a navigation system with a user
interface presenting multiple categories of areal features for inclusion or
exclusion by a user when determining a route. Kaplan, 2:41-44, 3:6-4:11,
6:50-57, 7:9-8:8, Figs. 5-6; see Final Act. 6-7; Ans. 7. Kaplan's Figure 6
(reproduced below) shows a representative user interface:
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j
I ,./
I" I
I
I
I
I
l
' I .• •••••••••••••••••••••••••••••••••••••••••••••••••••••••r••• •L '-....
-.~~-
SELECT POI CATEGORY
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! • GAS STATIONS i:
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~.-;:. .. ..,..,~. !, [__ ___________ --- - ------------------------' )- I
\ I ____ · __ : __· __ ~(~' __ 1ri~ir:_rJ1-~~~-[1 __________________ ,, ·,:,:.(' "--···
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Figure 6 depicts the user interface after the user has decided to view various
point-of-interest ("POI") categories and shows a menu listing different
categories, e.g., gas stations, hotels, museums, and restaurants. Kaplan,
7:9-28, Fig. 6; see Ans. 7. Attributes of size define those different
categories, e.g., large museums compared to small museums, as a person of
ordinary skill would appreciate.
In addition, Gibson discloses attributes of size associated with areal
features that define categories of areal features. Gibson, 221-23, 236,
Fig. l; see Final Act. 7; Adv. Act. 4; Ans. 7-8. In particular, Gibson
discusses populations within different travel distances of areal features, i.e.,
different cash outlets. Gibson, 221-23, Fig. 1. Different travel distances
encompassing different populations constitute attributes of size that define
categories of areal features, e.g., longer distances encompassing larger
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populations compared to shorter distances encompassing smaller
populations. Final Act. 7; Adv. Act. 4; Ans. 8. For instance, Gibson's
Figure 1 depicts three different areas having populations within three
different distances of a cash outlet, i.e., 2 km, 5 km, and 10 km. Gibson,
223, Fig. 1. The Specification similarly discloses areas associated with
populations, such as an urban area "where the population is over' 150,000'
and/or where the area is greater than '2 square miles."' Spec. ,i 44; see id.
iJ 37.
Gibson also discloses geographic analyses employing modifiable
user-selected distances associated with different population densities, i.e.,
"up to 2 km" for urban areas and "up to 5 km" for rural areas. Gibson, 236.
Population densities constitute attributes of size that define categories of
areal features, e.g., densely populated urban areas compared to sparsely
populated rural areas. See Spec. ,i,i 37, 44, 50.
The Specification does not disclose how attributes of size define
categories of areal features. Instead, the Specification states that a database
"may define an areal feature based on various attributes (e.g., population,
size of area, etc.)." Spec. ,i 37. The Specification also states that "the user
may be able to modify how an areal feature ( e.g., downtown) is defined" in
the database by "modifying parameters associated with this areal feature
(e.g., number of people, size of area, density, etc.)." Id. ,i 50. The
Specification further states that "the user may be able [to] select from a list
of categories of areal features, such as, for example, downtown, city, park,
urban area, etc." Id.; see id. Fig. 5C. Because the Specification indicates
that an areal feature, e.g., "downtown," may correspond to a category of
areal features, e.g., "downtown," Kaplan and Gibson disclose attributes of
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size that define categories of areal features consistent with the Specification.
See Spec. ,i,i 11, 14, 37, 44, 50, p. 15 (claim 3), Fig. 5C.
INDEPENDENT CLAIM 1: THE DISPUTED "RECEIVING" LIMITATION
Appellant also argues that the Examiner erred in rejecting claim 1
because the references fail to teach or suggest the following limitation:
"receiving, via the user interface and responsive to user selection of one of
the categories, a user input modifying a value of the one or more attributes
of size associated with the areal features of the selected category." See App.
Br. 18-20; Reply Br. 8. Specifically, Appellant asserts that Gibson "merely
describes a user-chosen radius of a 'perturbation circle' and the size of the
circle is weighted by population density at each point." App. Br. 20.
As discussed above, however, population densities constitute
attributes of size that define categories of areal features. See Spec. ,i,i 3 7,
44, 50. Thus, Gibson's disclosure of modifiable user-selected distances
associated with different population densities, i.e., "up to 2 km" for urban
areas and "up to 5 km" for rural areas, teaches or suggests the disputed
"receiving" limitation. See Final Act. 7; Adv. Act. 4; Ans. 8; Gibson, 236.
In addition, Kaplan discloses user-configurable sizes for search areas for
locating points of interest, and thus teaches or suggests "a user input
modifying a value of the one or more attributes of size associated with" an
areal feature. Kaplan, 8:1-23, 8:37-42, 8:57-63, 9:6-29, Figs. 10-14.
SUMMARY FOR INDEPENDENT CLAIM 1
For the reasons discussed above, Appellant's arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Kaplan and Gibson. In our view, the claimed subject matter
exemplifies the principle that "[t]he combination of familiar elements
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according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007); see Final Act. 7-8. Thus, we sustain the§ 103(a) rejection of
claim 1.
DEPENDENT CLAIM 3
Claim 3 depends from claim 1 and specifies that "presenting the
multiple categories of areal features comprises presenting at least two of:
a municipal area, a downtown area, an urban area, a public or national park,
a city, a county, a state, a forested area, or a geographic feature." App.
Br. 25 (Claims App.). As noted above, the§ 103(a) rejection of claim 3
rests on Kaplan and Gibson. See Final Act. 8.
Appellant argues that the Examiner erred in rejecting claim 3 because
Kaplan's "navigation system provides navigation features to an end user
using geographic data that includes information about geographic regions or
coverage areas" and Gibson's "'geographic regions/coverage areas' cannot
be reasonably construed to disclose or suggest at least two of' the categories
specified in claim 3. App. Br. 21.
Appellant's argument does not persuade us of Examiner error because
the Examiner correctly finds that (1) Kaplan discloses a navigation system
with a user interface presenting "multiple categories of areal features";
(2) Kaplan's "navigation system uses geographic data about one or more
geographic regions"; and (3) Kaplan's "geographic data" includes
information about (a) "roads and intersections in the geographic region," i.e.,
geographic features, and (b) "points of interest," e.g., hotels, restaurants,
museums, and national/public parks. Final Act. 6, 8 ( citing Kaplan,
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3:25-40, 7:35-67, Fig. 6); Ans. 8 (citing Kaplan, 1:31-41, 3:25-40,
3:48-58).
In particular, Kaplan describes a "geographic database" containing
records representing (a) "roads and intersections in a geographic region,"
i.e., geographic features, and (b) "points of interest, such as hotels,
restaurants, museums, stadiums, offices, automobile dealerships, auto repair
shops, etc." Kaplan 1:31-41, 3:48-58, 7:21-28, Fig. 6. Also, as discussed
above, Kaplan's Figure 6 depicts a user interface after the user has decided
to view various POI categories and shows a menu listing different
categories, e.g., gas stations, hotels, museums, and restaurants. Id. at
7:9-28, Fig. 6.
An obviousness analysis can "take account of the inferences and
creative steps that a person of ordinary skill" would employ. KSR, 550 U.S.
at 418. Here, a person of ordinary skill would appreciate that Kaplan's
"points of interest" include parks and that Kaplan's user interface may
display parks along with roads and intersections, i.e., geographic features.
See Final Act. 8; Ans. 8. Thus, we sustain the§ 103(a) rejection of claim 3.
INDEPENDENT CLAIMS 9 AND 14 AND
DEPENDENT CLAIMS 4-8, 10-13, AND 15-19
Appellant asserts that claims 9 and 14 recite "features similar to
features" in claim 1 and are "patentable ... for at least reasons similar to the
reasons given for" claim 1. App. Br. 20. Appellant's assertions do not
amount to separate patentability arguments. See In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (explaining that the applicable rules "require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
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found in the prior art"); see also In re Marco Guldenaar Holding B. V.,
911 F.3d 1157, 1162 (Fed. Cir. 2018). Because Appellant does not argue the
claims separately, we sustain the§ 103(a) rejection of claims 9 and 14 for
the same reasons as claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 4-8 depend from claim 1; claims 10-13 depend from claim 9;
and claims 15-19 depend from claim 14. Appellant does not argue
patentability separately for these dependent claims. See App. Br. 20-21;
Reply Br. 8. Thus, we sustain the§ 103(a) rejection of these dependent
claims for the same reasons as claims 1, 9, and 14. See 37 C.F.R.
§ 41.37(c)(l)(iv).
The§ 103(a) Rejections of Claims 2 and 20
Claim 2 depends from claim 1; and claim 20 depends from claim 14.
Appellant does not argue patentability separately for these dependent claims.
See App. Br. 21-22; Reply Br. 9. Thus, we sustain the§ 103(a) rejections of
these dependent claims for the same reasons as claims 1 and 14. See
37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision to reject claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
29