Ex Parte Niu et alDownload PDFPatent Trials and Appeals BoardJun 20, 201914038122 - (D) (P.T.A.B. Jun. 20, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/038,122 09/26/2013 Xiaochuan Niu 111332 7590 06/24/2019 Perspectives Law Group, Corp. 3150 De La Cruz Blvd. Suite 206 Santa Clara, CA 95054 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. 59-154 4556 EXAMINER FE!, JORDAN S ART UNIT PAPER NUMBER 3665 NOTIFICATION DATE DELIVERY MODE 06/24/2019 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): efs@perspectiveslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte XIAOCHUAN NIU, GREGORY STEWART AIST, and RAJEEV AGARWAL Appeal2018-008192 Application 14/03 8,122 Technology Center 3600 Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-20 under 35 U.S.C. § 101.2 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Telenav, Inc. ('"Appellant"), the applicant as provided for under 37 C.F.R. § 1.46, is also identified as the real party in interest Appeal Br. 3. 2 Appeal is taken from the Final Office Action dated October 6, 201 7. Appeal2018-008192 Application 14/03 8,122 STATEMENT OF THE CASE Claims 1 and 11 are the independent claims on appeal. Claim 1, reproduced below, is exemplary of the subject matter, on appeal. 1. A method of operation of a navigation system compnsmg: generating a travel route from a current location to a destination based on a plurality of travel segments determining a start guidance area, based on a travel history and a traffic condition for a geographic region, excluding the current location for initiating a navigation guidance; determining an end guidance area, based on the travel history and the traffic condition both different from the start guidance area, excluding the destination for stopping the navigation guidance; and generating the navigation guidance with a control unit between the start guidance area and the end guidance area for displaying on a device. OPINION An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 2 Appeal2018-008192 Application 14/03 8,122 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological 3 Appeal2018-008192 Application 14/03 8,122 environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221. "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77 (alteration in original)). "[M]erely requir[ ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Guidance"). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field 4 Appeal2018-008192 Application 14/03 8,122 (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 2019 Guidance. Appellant argues independent claims 1 and 11 as a group and does not present arguments for the dependent claims apart from the arguments presented for the independent claims. Appeal Br. 10-16; id. at 14 ( claims 2- 10 and 12-20 "are believed to be allowable since they include all the limitations set forth in the independent claim from which they depend"); Reply Br. 3-7. Therefore, we select claim 1 as representative, and claims 2- 20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner determines that all of the claims recite a judicial exception: an abstract idea, and more particularly, a mathematical algorithm. 3, 4, 5 Final Act. 3-4. With respect to the independent claims, the Examiner determines that the recitation of "additional elements" (i.e., providing the information for display) are "according to their generic functionalities which are well- understood, routine and conventional." Id. at 3; see also Adv. Act. 2 ("[the 3 It is undisputed that the claims recite devices (i.e., machines) and/or methods within statutory categories of 35 U.S.C. § 101. 4 See 2019 Guidance 52 ( explaining that "the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se ): (a) Mathematical concepts-mathematical relationships, mathematical formulas or equations, mathematical calculations"). 5 Notably, the Examiner also determines that the claims recite steps of gathering and analyzing data. Final Act. 3 ("[i]t has been previously determine[ d] that a claim which only contains the steps of gathering, analyzing, and displaying data is an idea 'of itself"; citing Electric Power Group, LLC v. Alstom S.A, 830 F.3d 1350, 1354 (Fed. Cir. 2016)). 5 Appeal2018-008192 Application 14/03 8,122 claims] merely use[] the system to perform and display routine calculations"). The Examiner further determines that the claims recite "instructions to apply the abstract idea (i.e., executing an algorithm to generate the guidance areas) on a computer," which is "nothing more than requiring a generic computer system [ to apply] the abstract idea itself' and "not an improvement to a computer related art." Id. at 4; see also Adv. Act. 2 ("[the] claims are drawn exclusively towards the collection, analysis and presentation of data in which the computing system is used to perform and display routine calculations and would not be considered an improvement to a computing system"); Ans. 4-5. Appellant argues that independent claim 1 is not directed to a judicial exception, but rather, to "an improvement of computer functionality or to an abstract idea as purported by Visual Memory."6 Appeal Br. 10; see also id. at 12 (citing Enfish, LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir. 2016); Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017)); see also Reply Br. 4 (quoting Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305 (Fed. Cir. 2018) and arguing that "similar to Finjan, the asserted claims are directed to a non-abstract improvement in computer functionality") ( emphasis omitted). In particular, Appellant submits that "the claims are directed to specific improvements to the way computers operate resource allocation, as embodied in the claimed determination of start guidance area and end guidance area to generate navigation guidance." Appeal Br. 10 ( emphasis omitted). Appellant relies on the Specification's disclosure that 6 Visual Memory LLC v. Nvidia Corporation, 867 F.3d 1253 (Fed. Cir. 2017). 6 Appeal2018-008192 Application 14/03 8,122 [i]t has been discovered that the navigation system 100 determining the start guidance area 202 excluding the current location 218 and the end guidance area 204 excluding the destination 200 improves the efficiency of delivering the navigation guidance 208 to the first device 102. By generating the navigation guidance 208 for the traversal between the start guidance area 202 and the end guidance area 204, the navigation system 100 can provide the navigation guidance 208 when most desired by the user. As a result, the navigation system 100 can efficiently allocate the resource to generate the navigation guidance 208, thus, improving the safety of the user by permitting the navigation system 100 to allocate more resources to other functionalities of the navigation system 100. Id. at I 0-11 ( citing Spec. ,i 154 ). Appellant concludes that when properly characterized, the present invention is directed to a specific improvement to a process of allocating resource by determining start guidance area and end guidance area by factoring travel conditions in different areas during user's travel which human with a pencil and paper cannot perform, thus, solves the problem of pre-Internet world and overcoming a problem specifically arising in the realm of mobile navigation computer networks as analogous to subject matter discussed in Infogation Corp. 7 Appeal Br. 13 ( emphasis omitted); see also id. at 14-15. Appellant also argues that "the claimed subject matter is patent- eligible ... regardless of its implementation in hardware or software," because "specific improvements to the way computers operate are not limited to 'computer, a process or other hardware structures' but also include improvements to logical structures and processes as claimed." Id. at 12 7 Infogation Corp. v. ZTE Corporation et al., 2017 WL 1135638 (S.D. Cal. 2017). 7 Appeal2018-008192 Application 14/03 8,122 (emphasis omitted) (quoting Enfish, 822 F.3d at 1336 (inter alia, "[s]oftware can make non-abstract improvements to computer technology just as hardware improvements can")). Appellant further argues that the claimed invention provides significantly more "than an abstract idea by providing various specific technological improvements to existing technological processes," because "the claimed subject matter improves resource allocation to minimize impact on navigation system resource by collecting traffic condition in real-time for two different locations representing start guidance area and end guidance area to generate navigation guidance." Id. at 13 ( emphasis omitted). Finally, Appellant argues that the Examiner "only recited claimed limitations as [a] generic computer system without presenting any evidence that in fact the claimed limitations are generic functions/components that are common to the computer systems." Reply Br. 5 (citing Berkheimer v. HP Inc., 890 F.3d 1369 (Fed. Cir. 2018)) (emphasis omitted). 8 Step 2A, Prong 1, of the 2019 Guidance: Whether the claim recites a judicial exception Patent eligibility under 35 U.S.C. § 101 is a question of law that is reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). First, we analyze certain limitations of claim 1, 8 Notably, Berkheimer was decided on May 31, 2018, which is after the filing date of March 19, 2018 of the Appeal Brief. 8 Appeal2018-008192 Application 14/03 8,122 individually and as set forth supra, to determine whether claim 1 recites a judicial exception. We agree with the Examiner, nor does Appellant dispute, that all of the limitations of claim 1, as set forth supra, recite mathematical concepts (i.e., mathematical relationships relative to a travel route, or "navigation guidance," 9 as claimed). Final Act. 3. For example, the first step of claim 1, namely, (i) "generating a travel route from a current location to a destination based on a plurality of travel segments," involves the mathematic concept of the segmentation of a line between two points. Notably, none of the remaining steps of claim 1 involve the generated travel route, and further, the claimed current location and destination used to generate the travel route are specifically excluded from further calculations performed in step 1 (i.e., excluded from determining start and end guidance areas). The next steps of claim 1, as set forth supra, recite (ii) "determining a start guidance area, based on a travel history and a traffic condition for a geographic region, excluding the current location for initiating a navigation guidance"; and (ii) "determining an end guidance area, based on the travel history and the traffic condition both different from the start guidance area, excluding the destination for stopping the navigation guidance." As acknowledged by Appellant supra, 10 steps (ii) and (iii) of claim 1 recite 9 The claim term "navigation guidance" is explicitly defined in the Specification as "information provided by the navigation system 100 to aid the travel," including, for example, "travel route 222, a voice guidance 226, or a combination thereof." Spec. ,-J 39. 10 See Appeal Br. 13 ("the claimed invention collects information from distributed devices in real-time and converts back the additional information in real-time to determine start guidance area and end guidance area") ( emphasis omitted). Notably, claim 1 does not limit the travel history or 9 Appeal2018-008192 Application 14/03 8,122 selected information (i.e., a travel history, a traffic condition) from which start and end guidance areas are determined for initiating and stopping a navigation guidance (i.e., for determining starting and ending areas, or in terms of mathematical concepts, spaces relative to a map). Finally, step (iv) of claim 1, as set forth supra, recites "generating the navigation guidance with a control unit between the start guidance area and the end guidance area for displaying on a device." See, e.g., Spec. ,i 37 ("travel route 222 is defined as a path generated by the navigation system 100 for traveling from one physical location to another," for example, "travel route 222 can represent a path from the start guidance area 202 to the end guidance area 204"), Fig. 2. In other words, generating information representing a path, or line, between the start and end guidance areas. Our reviewing court has identified mathematical concepts as representing abstract ideas. See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a "series of mathematical calculations based on selected information" are directed to abstract ideas). Accordingly, we determine that claim 1 recites the judicial exception of an abstract idea, namely, a mathematical concept. traffic condition to real-time information, but merely "for a geographic region," nor does claim 1 recite distributed devices. Claim 1 also does not expressly recite a step of converting information back to additional information in real-time; rather, claim I merely recites determining start and end guidance areas based on travel history and traffic condition for a geographic region. 10 Appeal2018-008192 Application 14/03 8,122 Step 2A, Prong 2, of the 2019 Guidance: Do additional elements integrate the exception into a practical application of the exception? Next, in accordance with the 2019 Guidance, we evaluate whether the claim as a whole integrates the mathematical concept into a practical application of the mathematical concept by identifying whether there are any additional elements recited in the claim beyond the judicial exception, and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. 2019 Guidance, 84 Fed. Reg. at 54-55. According to the 2019 Guidance, "an additional element [that] implements a judicial exception with ... a particular machine" is "[an] exemplary consideration[] indicative that an additional element ... may have integrated the exception into a practical application." Id. at 55. In other words, as in Diehr, claims do not become nonstatutory simply because the claims recite a mathematical concept. Claim 1, as set forth supra, recites, in addition to the mathematical concepts identified supra, "a control unit" that generates the navigation guidance between the start and end guidance areas, and also "a device" upon which the navigation guidance is intended for display (i.e., claim 1 limits the navigation guidance to being capable of display on a device). The Specification discloses that first control unit 412 can execute a first software 426 to provide the intelligence of the navigation system 100. The first control unit 412 can be implemented in a number of different manners. For example, the first control unit 412 can be a processor, an embedded processor, a microprocessor, a hardware control logic, a hardware finite state machine (FSM), a digital signal processor (DSP), or a combination thereof. 11 Appeal2018-008192 Application 14/03 8,122 Spec. ,i 54. The Specification also discloses that "first control unit 412 can operate the first user interface 418 to display information generated by the navigation system 100." Id. ,i 72. The Specification further discloses that "first control unit 412 can execute the first software 426 for the guidance module 506 to generate the navigation guidance 208." Id. ,i 144. We determine that a preponderance of the evidence from the Specification supports the Examiner's determination, as set forth supra, that the claimed control unit and device (i.e., display device or user interface) are generic computing components configured to implement an abstract idea on a computer or merely to use a computer as a tool to perform an abstract idea. See MPEP 2106.05(f) ("As explained by the Supreme Court, in order to transform a judicial exception into a patent-eligible application, the additional element or combination of elements must do 'more than simply stat[ e] the uudicial exception] while adding the words 'apply it"' ( quoting Alice Corp., 573 at 134 (2014)) (alteration in original). Thus, while acknowledging that hardware and software can make non-abstract improvements to computer technology, we determine that claim 1 as a whole (i.e., including recitations of the control unit and device) fails to integrate the mathematical algorithm into a practical application of the mathematical algorithm. Step 2B of the 2019 Guidance: I/the claim is directed to a judicial exception, evaluate whether the claim provides an inventive concept The 2019 Guidance further explains that "[i]t is possible that a claim that does not 'integrate' a recited judicial exception is nonetheless patent eligible," for example, because "the claim may recite additional elements 12 Appeal2018-008192 Application 14/03 8,122 that render the claim patent eligible even though a judicial exception is recited in a separate claim element." 2019 Guidance, 84 Fed. Reg. at 56. In other words, "the additional elements recited in the claims provided 'significantly more' than the recited judicial exception (e.g., because the additional elements were unconventional in combination)." Id. As set forth supra, Appellant argues that claim 1 recites an inventive concept because claim 1 recites an improvement to computer technology: more efficient resource allocation in a computer-based navigation system by virtue of a unique architecture that generates a path between start and end areas while excluding information about the current location and destination. Appellant does not present sufficient factual evidence that the architecture of the computing system is improved by generating navigation guidance between start and end areas based on travel history and traffic condition information, but not based on current location and destination information. See Ans. 6 ("[t]here is no factual evidence that adding additional steps to exclude [] information from being present [ to the user] makes the system more efficient and improves the functionality of the computing system"). In other words, the specific selection of certain information (but not other information) for input into a generic control unit for generating navigation guidance is insufficient evidence upon which to base a conclusion that claim 1 recites an improvement to resource allocation within a computing system. Accordingly, we sustain the Examiner's rejection of independent claim 1 and claims 2-20 fall therewith. 13 Appeal2018-008192 Application 14/03 8,122 DECISION The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R. § l.136(a)(l )(iv). AFFIRMED 14 Copy with citationCopy as parenthetical citation