Ex Parte Pandya et al

Patent Trial and Appeal Board

May 24, 2017

13558745 (P.T.A.B. May. 24, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/558,745 07/26/2012 Ritesh Pandya 83218331 5864
28395 7590 05/26/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER BADII, BEHRANG
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
05/26/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RITESH PANDYA and
CHARLES MICHAEL BROADWATER
Appeal 2015-006612
Application 13/558,745
Technology Center 3600
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
LISA M. GUIJT, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
2, 4, 6—10, 13, 14, 16, and 18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate our affirmance as including a new ground of
rejection.
Appeal 2015-006612
Application 13/558,745
CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for point of interest
evaluation. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system comprising:
a processor configured to:
receive input defining two points of interest (POI)s;
search for a first POI in first proximity to a current route;
subsequent to the first POI search, for each of a plurality
of found first POIs, automatically search for a second POI in
second, user-input proximity to the first POI; and
output instances wherein the second POI is found to be in
second proximity to the first POL
REJECTIONS
Claims 1, 2, 4, 6—10, 13, 14, 16, and 18 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
Claims 1, 2, 4, 6—10, 13, 14, 16, and 18 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hwang (US 2011/0130959 Al; June 2,
2011) or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over
Hwang, Doan (US 2010/0268448 Al; Oct. 21, 2010), or Onishi (US
2006/0241857 Al; Oct. 26, 2006).
OPINION
Rejections under 102(b) and 103(a)
Appellants correctly identify the error in the Examiner’s rejection
based on Hwang alone: “Hwang performs an individual search for a
selected POI, based on second POI input subsequent to selection of the first
POI from the list” whereas independent claims 1 and 13 each requires
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“automatically searching]” “for each of a plurality” of first POIs. App. Br.
7—8, 10-11; Reply Br. 3 (emphasis added). We understand “automatically”
to refer to a process lacking user intervention as in Hwang, and the
Examiner does not set forth any alternative construction of the term or
further explain how this limitation is satisfied by Hwang’s system. See Ans.
10—11. Claim 9 requires searching for both POIs in proximity to the route
whereas Hwang, as Appellants point out, is searching for the second POI in
a proximity to the first POI. App. Br. 9.
We also agree with Appellants’ analysis that neither Doan nor Onishi
remedy these deficiencies in Hwang. As Appellants correctly point out,
Doan’s searching for a plurality of second POIs in proximity to the first
found POI is not what is required by the language of the claims before us.
App. Br. 11—12; Ans. 11. The cited portions of Onishi do not appear to
disclose any more than Hwang, only the ability to search for a second POI
near a first, and not automatically searching for second POI near each of a
plurality of first POIs (claims 1 and 13) or searching for multiple POIs in
proximity to a route (claim 9). There is no legally recognizable essential gist
or heart of the invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1548 (Fed. Cir. 1983). All words in a claim must be considered
in judging the obviousness of the claimed subject matter. See In re Wilson,
424 F.2d 1382, 1385 (CCPA 1970). Here, the argued limitations of claims
1, 9, and 13 are essentially left unaddressed by the Examiner.
Accordingly, the prior-art rejections cannot be sustained on the basis
set forth by the Examiner.
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Appeal 2015-006612
Application 13/558,745
Rejection under £101
Regarding the rejection under § 101, although we agree that the
Examiner does not appear to have properly considered the language of the
claims (App. Br. 6—7; Reply Br. 2; Final Act. 6—7; Ans. 3 4), we do
ultimately agree that representative claim 1 (see 37 C.F.R. § 41.37(c)(l)(iv)),
encompasses non-statutory subject matter.
Principles of Law
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has consistently held that
this provision contains an important implicit exception: laws of nature,
natural phenomena, and abstract ideas are not patentable. See Alice Corp.
Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalkv.
Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just
discovered, mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work.”).
Notwithstanding that a law of nature or an abstract idea, by itself, is not
patentable, an application of these concepts may be deserving of patent
protection. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S. Ct. 1289, 1293—94 (2012). In Mayo, the Court stated that “to transform
an unpatentable law of nature into a patent-eligible application of such a
law, one must do more than simply state the law of nature while adding the
words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo “for distinguishing patents that claim laws of nature, natural
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phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Alice, 134 S. Ct. at 2355. If the claims
are directed to a patent-ineligible concept, then the second step in the
analysis is to consider the elements of the claims “individually and ‘as an
ordered combination”’ to determine whether there are additional elements
that “‘transform the nature of the claim’ into a patent-eligible application.”
Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297).
In Gottschalkthe Court, citing O’Reilly v. Morse (56 U.S. 65 (1853)),
cautioned that a claim “so abstract and sweeping as to cover both known and
unknown uses” is not directed to patent-eligible subject matter under
35 U.S.C. § 101. Gottschalk, 409 U.S. at 68. In Alice the Supreme Court
reaffirmed this principle:
We have long held that this provision contains an important
implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable. We have interpreted § 101
and its predecessors in light of this exception for more than 150
years.
We have described the concern that drives this exclusionary
principle as one of pre-emption. Laws of nature, natural
phenomena, and abstract ideas are the basic tools of scientific
and technological work. [Monopolization of those tools
through the grant of a patent might tend to impede innovation
more than it would tend to promote it, thereby thwarting the
primary object of the patent laws. We have repeatedly
emphasized this . . . concern that patent law not inhibit further
discovery by improperly tying up the future use of these
building blocks of human ingenuity.
Alice, 134 S. Ct. at 2354 (quotations and citations omitted).
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Analysis
The abstract idea to which claim 1 is directed is finding multiple
destinations, or points-of-interest (POIs), in proximity to both each other and
a route of travel. The extent of this claim is significant. Were it not for the
recitations of “a processor” and “automatically” this claim would cover
every conceivable way one finds multiple destinations in proximity to each
other and their route. Such a claim would be met, for example, by any
occupant of a vehicle that searched a map seeking to stop at a town along his
or her route having any two points of interest, such as a park and a museum,
a river and a campsite, etc. Adding the terms “system”, “processor”, and
“automatically” to the claim means that Appellants seek to obtain the
exclusive right to essentially every technological innovation hereafter that
can perform this basic navigational task by means of any conceivable type of
automated processing system. It matters not what type of processor is used
or what type of automation; the claim lacks any meaningful structural
limitations. The claim also lacks any meaningful limitations with regard to
the manipulative steps the processor is configured to perform to bring about
the various effects recited in the claim. The “input” and “output” may be
received and provided by any conceivable process or machinery. The
“search[es]” may be similarly conducted by any process, algorithm, or
apparatus. Accordingly, we are unable to identity any language in the claim
that serves to transform an unpatentable abstract idea into a patent-eligible
application of that idea. Generic recitations of “a system”, “a processor”,
and “automatically” “cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice, 134 S, Ct. at 2358—59.
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we agree with the Examiner’s conclusion that the claimed
subject matter is not patent-eligible, as we have supplemented the
Examiner’s reasoning, pursuant to 37 C.F.R. § 41.50(b), we designate our
affirmance of the Examiner’s rejection under § 101 as including a new
ground of rejection so as to afford Appellants a fair opportunity to respond.
DECISION
The Examiner’s prior-art rejections are reversed.
The Examiner’s § 101 rejection is affirmed but designated as
including a new ground under 37 C.F.R. § 41.50(b).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R, $ 41.50(b)
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