Ex Parte Niu et al

Patent Trials and Appeals Board

Jun 20, 2019

14038122 - (D) (P.T.A.B. Jun. 20, 2019)

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
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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
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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
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(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)).
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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).
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[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).
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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.
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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
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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.
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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.
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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
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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.
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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
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