Ex Parte Mitchell et al

Patent Trial and Appeal BoardAug 28, 2018

13360076 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/360,076 01/27/2012 Guy Mitchell 145169 7590 08/30/2018 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP (DXC) 379 Lytton Avenue Palo Alto, CA 94301 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. 36MK-255211 2110 EXAMINER KRINGEN, MICHELLE THERESE ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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): svpatents@sheppardmullin.com SheppardMullin_Pair@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GUY MITCHELL and NAY AN BHAGW ANJI RUP ARELIA Appeal2017-005926 Application 13/360,076 1 Technology Center 3600 Before HUBERT C. LORIN, BRUCE T. WIEDER, and AMEE A. SHAH, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134 from the Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Hewlett-Packard Enterprise Development LP ("HPED"), a wholly owned affiliate of Hewlett Packard Enterprise. The general or managing partner of HPED is Enterprise DC Holdings, LLC. (Appeal Br. 3.) However, a "Statement Under 37 CPR 3.73(c)," filed June 21, 2017, indicates an assignment of U.S. Patent Application 13/360,076 from HPED to Ent. Services Development Corporation LP. Appeal2017-005926 Application 13/360,076 CLAIMED SUBJECT MATTER Appellants' invention relates to "a method and system for optimum routing for GPS navigational systems." (Spec. ,r 11.) Claims 1, 9, and 16 are the independent claims on appeal. Claim 1 is illustrative. It recites: 1. A computer-implemented method for optimum routing for a vehicle, the method comprising: determining a current location of the vehicle; determining, by a processing unit, a travel pattern of the vehicle based on historical routes taken by the vehicle; predicting, by the processing unit, a destination for the vehicle based on the travel pattern of the vehicle; detecting, by a vehicle sensor, a mechanical condition of the vehicle; calculating, by the processing unit, an optimum route of travel from the current location to the predicted destination based on the detected mechanical condition of the vehicle and a distance between the current location and the predicted destination; predicting, by the processing unit, a shopping item and a timing for purchasing the shopping item based on the travel pattern of the vehicle and a consumption pattern of a user; identifying a retail store that carries the predicted shopping item and along the calculated optimum route of travel from the current location to the predicted destination of the vehicle; recalculating the optimum route of travel to the predicted destination based on a cost of the shopping item and a cost of travel from the current location to the predicted destination via the retail store; and displaying the optimum route. 2 Appeal2017-005926 Application 13/360,076 REJECTI0N2 Claims 1-20 are rejected under 35 U.S.C. Â§ 101 as directed to a judicial exception without significantly more. ANALYSIS Claims 1-20 are argued together. Therefore, these claims will stand or fall together. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). We select claim 1 as representative. "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. Â§ 101. Section 101, however, "'contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). Alice applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "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. Under the two-step framework, it must first be determined if "the claims at issue are directed to a patent-ineligible concept." Id. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract 2 The rejection of claims 1-20 under 35 U.S.C. Â§ 103(a) was withdrawn. (Answer 2.) 3 Appeal2017-005926 Application 13/360,076 idea, then the second step of the framework is applied to determine if "the elements of the claim ... contain[] an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Id. at 2357 (citing Mayo, 566 U.S. at 72-73, 79). With regard to step one of the Alice framework, the Examiner determines that the claims "are directed to a method, system and computer readable storage medium for determining an optimum route of travel, and calculating [the route] based on a cost of a shopping item and a cost of travel, which is an abstract idea." (Final Action 2.) Appellants disagree and argue that "when considering whether a claim is directed to an abstract idea, the 'directed to' inquiry applies to the claims based on whether their character as a whole is directed to a patent ineligible concept." (Appeal Br. 9, emphasis omitted.) But, Appellants argue, "the Examiner asserts that independent claims are directed to an abstract idea by analyzing each step in independent claim 1 individually and then asserting that each of those steps is either [sic] an abstract idea, organizing human activity, fundamental economic practice, or well known in the art. (Id., emphasis omitted.) Under step one of the Alice framework, we "look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). The Specification provides evidence as to what the claimed invention is directed. In this case, the Specification discloses that Appellants' invention relates to "a method and system for optimum routing for GPS 4 Appeal2017-005926 Application 13/360,076 navigational systems." (Spec. ,r 11.) Claim 1 provides further evidence. Claim 1 recites a "method for optimum routing for a vehicle ... comprising: determining a current location of the vehicle," "determining ... a travel pattern of the vehicle," "predicting ... a destination for the vehicle," detecting ... a mechanical condition of the vehicle," "calculating ... an optimum route," "predicting ... a shopping item and a timing for purchasing," "identifying a retail store," "recalculating the optimum route," "and displaying the optimum route." Although we and the Examiner describe, at different levels of abstraction, to what the claims are directed, it is recognized 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, claim 1 recites determining a current location and travel pattern for a vehicle, and predicting a destination, i.e., analyzing information; detecting a condition of the vehicle, i.e., collecting information; calculating a route, i.e., applying an algorithm to information/data; predicting a shopping item and identifying a store, i.e., analyzing information; recalculating the route, i.e., applying an algorithm to information/data; and displaying information. "[W]e have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas." Elec. Power Grp., 830 F.3d at 1353. "In a similar vein, we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category." Id. at 1354. "And we have recognized that merely presenting the results of abstract 5 Appeal2017-005926 Application 13/360,076 processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis." Id. "Here, the claims are clearly focused on the combination of those abstract-idea processes." Id. See also Peschke Map Techs. LLC v. Rouse Props. Inc., 168 F. Supp. 3d 881, 887 (E.D. Va. 2016) ( claims directed to "an electronic map navigation system that enables a user to 'locate a particular store through the use of location and layout information'" are directed to an abstract idea). We do not find persuasive Appellants' argument that "because there is no mathematical formula in the claims," the Examiner erred in determining that "[ c ]alculation of optimum routes using variables ... is essentially a mathematical principle." (See Reply Br. 8, quoting Answer 6.) Regardless of whether a specific, mathematical formula is recited in claim 1, Appellants do not dispute that the claim requires the application of algorithms, i.e., mathematical rules or procedures, to, for example, "predict[] ... a destination for the vehicle," "calculate[ e] ... an optimum route," "recalculat[ e] the optimum route," etc. Appellants also argue that "[ t ]he Examiner oversimplifies and overgeneralizes the claims." (Reply Br. 5, emphasis omitted.) We disagree. As discussed above, "to determine if the claim's 'character as a whole' is directed to excluded subject matter," we "look at the 'focus of the claimed advance over the prior art."' Affinity Labs of Texas, LLC, 838 F.3d at 1257. Here, the Examiner determines that the focus of claim 1 is on "determining an optimum route of travel, and calculating [ the route] based on a cost of a shopping item and a cost of travel." (Final Action 2.) 6 Appeal2017-005926 Application 13/360,076 Appellants further argue that "independent claim 1 recites specific steps to calculate and then display the optimum route of travel." (Reply Br. 7.) We disagree. Here, the limitations do not recite implementation details. Instead, they recite functional results to be achieved. In other words, the claims do not recite "a particular way of programming or designing the software ... , but instead merely claim the resulting [method]." Apple, Inc., 842 F.3d at 1240. In view of the above, we agree with the Examiner that claim 1 is directed to an abstract idea. Step two of the Alice framework has been described "as a 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."' Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 72-73). In addressing step two, we ask "' [ w ]hat else is there in the claims before us?' To answer that question, we consider the elements of the claims both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Id. (citations omitted) (quoting Mayo, 566 U.S. at 78, 79). The Examiner determines: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the functions performed by the computer at each step of the process are purely conventional. Using a computer to determine location, determine a pattern, predict a location, detect a condition, calculate a route, predict an item, 7 Appeal2017-005926 Application 13/360,076 predict a timing, identify a store, recalculate a route, and display a route, are within the most basic functions of a computer. (Final Action 3--4.) Appellants disagree and argue that the features recited in the claims, including "predicting a shopping item and a timing for purchasing the shopping item based on the travel pattern of the vehicle and a consumption pattern of a user" and "recalculating the optimum route of travel to the predicted destination based on a cost of the shopping item and a cost of travel from the current location to the predicted destination via the retail store," provide an improvement to the GPS navigation systems. Thus, the claims in the present application use computer technology to provide improvements to another technology or technical field of GPS navigation systems. (Appeal Br. 12; see also Reply Br. 6, 10.) Appellants also argue that "the claimed invention provides a faster GPS navigation system." (Reply Br. 10.) As an initial matter, we note that claim 1 does not recite a GPS navigation system. Thus, Appellants' arguments are not commensurate with the scope of the claim. Moreover, Appellants do not explain how the claimed invention modifies a GPS system to operate more quickly. To the extent Appellants are arguing that the use of the processing unit performs tasks more quickly or more accurately, that is not sufficient to render the claim eligible. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Taking the claim elements separately, the function performed by the processing unit at each step is purely conventional. Analyzing information, collecting information, applying an algorithm to information/data, analyzing additional information, applying an algorithm to additional information/data, and displaying information, are routine computer functions. See, e.g., Elec. 8 Appeal2017-005926 Application 13/360,076 Power Grp., 830 F.3d at 1355 ("The claims at issue do not require any nonconventional computer, network, or display components, or even a 'non- conventional and non-generic arrangement of known, conventional pieces,' but merely call for performance of the claimed information collection, analysis, and display functions 'on a set of generic computer components' and display devices. Bascom [Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349--52 (Fed. Cir. 2016)]."). In other words, each program step does no more than require a generic computer to perform routine computer functions, and "relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible." OIP Techs., Inc., 788 F.3d at 1363. Appellants also argue that "[b ]y performing the set of rules recited in independent claim 1, the claimed invention allows the computer to perform of a [sic] function not previously performed." (Reply Br. 10.) We do not find this argument persuasive. Here, the "set of rules" is merely an instruction to implement the abstract idea on a computer, and that does not "impart patent eligibility." Alice, 134 S. Ct. at 2358. Considered as an ordered combination, the processing unit and program steps of Appellants' claim add nothing that is not already present when the steps are considered separately. The claims do not, for example, purport to improve the functioning of the processing unit or vehicle sensor. Nor do they effect an improvement in any other technology or technical field. "At best, the claims describe the automation of the [abstract idea] through the use of generic-computer functions." OIP Techs., Inc., 788 F.3d at 1363. That is not enough to transform an abstract idea into a patent- eligible invention. See Alice, 134 S. Ct. at 2360. 9 Appeal2017-005926 Application 13/360,076 DECISION The Examiner's rejection of claims 1-20 under 35 U.S.C. Â§ 101 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 10