Ex Parte Pandya et alDownload PDFPatent Trial and Appeal BoardMay 24, 201713558745 (P.T.A.B. May. 24, 2017) Copy Citation 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 2 Appeal 2015-006612 Application 13/558,745 “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. 3 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 4 Appeal 2015-006612 Application 13/558,745 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). 5 Appeal 2015-006612 Application 13/558,745 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. 6 Appeal 2015-006612 Application 13/558,745 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. 7 Appeal 2015-006612 Application 13/558,745 (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) 8 Copy with citationCopy as parenthetical citation