Ex Parte StewardDownload PDFPatent Trials and Appeals BoardJun 28, 201914887093 - (D) (P.T.A.B. Jun. 28, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/887,093 10/19/2015 27530 7590 07/02/2019 Nelson Mullins Riley & Scarborough LLP IP Department One Wells Fargo Center 301 South College Street, 23rd Floor Charlotte, NC 28202 FIRST NAMED INVENTOR Lucas Dale Steward 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. 48379/09056 2275 EXAMINER CHEN,YU ART UNIT PAPER NUMBER 2613 NOTIFICATION DATE DELIVERY MODE 07/02/2019 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): ip@nelsonmullins.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte LUCAS DALE STEWARD 1 Appeal2018-006715 Application 14/887 ,093 Technology Center 2600 Before ST. JOHN COURTENAY III, JAMES HUGHES, and JAMES W. DEJMEK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 2, 7, 8, 10, and 21-33, which constitute all the claims pending in this application. Claims 3---6, 9, and 11-20 are canceled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is Navico Holding AS. App. Br. 1. Appeal2018-006715 Application 14/887 ,093 STATEMENT OF THE CASE2 According to the Specification, "GPS trails displayed on a multi- function display can be useful to fishermen, boat pilots and other users of GPS navigation data displays." Spec. ,r 2. Disclosed embodiments of Appellant's invention relate to "[a] device that can use secondary data to improve displayed GPS trails .... " Id. Exemplary Claim 1. A non-transitory computer-readable medium having stored thereon a plurality of computer-executable instructions which, when executed by a computer, cause the computer to: display a trail line extending from a representation of the watercraft, wherein the trail line is displayed at a plurality of geographical locations that the watercraft travelled along a surface of a body of water such that the trail line is representative of a path the watercraft travelled; receive, as the watercraft travels along the surface of the body of water, a current geographical location of the watercraft; receive, as the watercraft travels along the surface of the body of water, at least one value of secondary data, wherein the at least one value of the secondary data is associated with the current geographical location of the watercraft, wherein the at least one value of the secondary data comprises a value corresponding to at least one of motor status data, temperature data, depth data, and speed data, and wherein the at least one value of the secondary data was determined by one or more 2 We herein refer to the Final Office Action, mailed July 28, 2017 ("Final Act."); Appeal Brief, filed Dec. 20, 2017 ("App. Br."); Examiner's Answer, mailed Apr. 19, 2018 ("Ans."); and the Reply Brief, filed June 14, 2018 ("Reply Br."). 2 Appeal2018-006715 Application 14/887 ,093 sensors of the watercraft when the watercraft was at the current geographical location; [L 1] determine an assigned graphical line attribute associated with the received at least one value of the secondary data, wherein the assigned graphical line attribute is variable based on the received value of the secondary data such that at least two different values of the secondary data are each associated with a different assigned graphical line attribute; and [L2] display a portion of the trail line at the current geographical location in accordance with the assigned graphical attribute, wherein the displayed portion of the trail line at the current geographical location is different than at least one other portion of the displayed trail line at a different geographical location. App. Br. 10 (Claims Appendix) (Emphasis added regarding the contested limitations LI and L2). Rejections A. Claims 1, 2, 7, 8, 10 and 21-33 are rejected under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more. Final Act. 5. B. Claims 1, 7, 21-25, and 29-33 are rejected under 35 U.S.C. § I02(a)(l) as being anticipated by Brown et al. (US 2013/0148471 Al; published June 13, 2013; filed Dec. 7, 2011 (hereinafter "Brown")). Final Act. 10. C. Claims 2, 8, 26, and 27 are rejected under 35 U.S.C. § 103 as being obvious over the combined teachings and suggestions of Brown and Michaels et al. (US 2007 /0008186 Al; published Jan. 11, 2007; (hereinafter "Michaels")). Final Act. 20. 3 Appeal2018-006715 Application 14/887 ,093 D. Claims 10 and 28 are rejected under 35 U.S.C. § 103 as being obvious over the combined teachings and suggestions of Brown, Michaels, and Bostick et al. (U.S. 2016/0284125 Al; published Sep. 29, 2016; (hereinafter "Bostick")). Final Act. 23. Issues on Appeal 1. Did the Examiner err in rejecting claims 1, 2, 7, 8, 10, and 21-33 under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more? 2. Did the Examiner err in rejecting claims 1, 7, 21-25, and 29-33 under 35 U.S.C. § I02(a)(l), as being anticipated by Brown? 3. Did the Examiner err in rejecting claims 2, 8, 10, and 26-28 under 35 U.S.C. § 103, as being obvious over the cited combinations of prior art? ANALYSIS We have considered all of Appellant's arguments and any evidence presented. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2017). In our analysis below, we highlight and address specific findings and arguments for emphasis. Rejection A of Claims 1, 2, 7, 8, 10, and 21-33 under 35 U.S.C. § 101 Issue: Under 35 U.S.C. § 101, did the Examiner err by rejecting claims 1, 2, 7, 8, 10, and 21-33, as being directed to a judicial exception, without significantly more? 4 Appeal2018-006715 Application 14/887 ,093 Principles of Law-35 U.S.C. § 101 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 Jaws of nature, natural phenomena, and abstract ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). 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. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014) (citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 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." (emphasis omitted)); 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 of rubber products" (Diehr, 450 U.S. at 193); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" 5 Appeal2018-006715 Application 14/887 ,093 (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267---68 (1854))); 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 187; 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 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 ( quotation marks omitted). "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. (alterations in original) (quoting Mayo, 6 Appeal2018-006715 Application 14/887 ,093 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention." Id. Subject Matter Eligibility- 2019 Revised Guidance The USPTO recently published revised guidance on the application of 35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). This new guidance is applied in this opinion. Under the 2019 Revised Guidance, we first look to whether the claim recites: ( 1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, mental processes, or certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people); and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure ("MPEP") §§ 2106.05(a}-(c), (e}-(h)). 3 See 2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55. A claim that integrates a judicial exception into a practical application applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so integrated, then the claim is not directed to a judicial exception and is patent eligible under § 101. Id. 3 All references to the MPEP are to the Ninth Edition, Revision 08-201 7 (rev. Jan. 2018). 7 Appeal2018-006715 Application 14/887 ,093 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an inventive concept. See 2019 Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217-18. For example, we look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or ( 4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 56. Because there is no single definition of an "abstract idea" under Alice step 1, the PTO has recently synthesized, for purposes of clarity, predictability, and consistency, key concepts identified by the courts as abstract ideas to explain that the "abstract idea" exception includes the following three groupings: Mathematical concepts-mathematical relationships, mathematical formulas or equations, mathematical calculations; Mental processes- concepts performed in the human mind (including an observation, evaluation, judgment, opinion); and Certain methods of organizing human activity-fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See 2019 Revised Guidance, 84 Fed. Reg. at 52. 8 Appeal2018-006715 Application 14/887 ,093 According to the 2019 Revised Guidance, "[ c ]laims that do not recite [subject] matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas," except in rare circumstances. Even if the claims recite any one of these three groupings of abstract ideas, these claims are still not "directed to" a judicial exception (abstract idea), and thus are patent eligible, if "the claim as a whole integrates the recited judicial exception into a practical application of that exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53. For example, limitations that are indicative of "integration into a practical application" include: 1. Improvements to the functioning of a computer, or to any other technology or technical field- see MPEP § 2106.05(a); 2. Applying the judicial exception with, or by use of, a particular machine-see MPEP § 2106.05(b); 3. Effecting a transformation or reduction of a particular article to a different state or thing-see MPEP § 2106.05(c); and 4. Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP § 2106.05( e ). In contrast, limitations that are not indicative of "integration into a practical application" include: 1. Adding the words "apply it" ( or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea-see MPEP § 2106.05(±); 2. Adding insignificant extra-solution activity to the judicial exception - see MPEP § 2106.05(g); and 3. Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h). 9 Appeal2018-006715 Application 14/887 ,093 See 2019 Revised Guidance, 84 Fed. Reg. at 54--55 ("Prong Two"). 2019 Revised Guidance, Step 2A, Prong One 4 The Judicial Exception Under the 2019 Revised Guidance, we begin our analysis by first considering whether the claims recite any judicial exceptions, including certain groupings of abstract ideas, in particular: (a) mathematical concepts, (b) mental steps, and ( c) certain methods of organizing human activities. The Examiner concludes the claimed steps or functions can be performed alternatively as mental steps: "the claims describe drawing a trail on a map that can be performed in the human mind or by a human using a pen and paper." Final Act. 6. The Examiner further concludes: "[s]uch a basic concept is similar to other kind[ s] of abstract idea[ s] found by the courts to be abstract such as [ d]ynamic tabs for a graphical user interface in Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 115 U.S.P.Q.2d 1414 (Fed. Cir. 2015)." Id. Turning to independent claim 1, we observe the claim recites, inter alia, the following functions: determine an assigned graphical line attribute associated with the received at least one value of the secondary data, wherein the assigned graphical line attribute is variable based on the received value of the secondary data such that at least two different values of the secondary data are each associated with a different assigned graphical line attribute; and 4 Throughout this opinion, we give the claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 10 Appeal2018-006715 Application 14/887 ,093 display a portion of the trail line at the current geographical location in accordance with the assigned graphical attribute, wherein the displayed portion of the trail line at the current geographical location is different than at least one other portion of the displayed trail line at a different geographical location. Claim 1 ( emphasis added). Thus, we conclude the aforementioned limitations emphasized in italics (id.) could be performed alternatively as mental processes, i.e., as concepts performed in the human mind, with the aid of pen and paper (including an observation, evaluation, judgment, and opinion) under the 2019 Revised Guidance, 84 Fed. Reg. at 52. 5 Therefore, we conclude aforementioned limitations emphasized in italics recite an abstract idea (i.e., a mental process). In contrast, we conclude the aforementioned "display" function (i.e., "display a portion of the trail line at the current geographical location in accordance with the assigned graphical attribute") is post-solution activity. 6 5 If a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent eligible under§ 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011); "That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson." Cy her Source, 654 F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016). 6 The Supreme Court guides that the "prohibition against patenting abstract ideas 'cannot be circumvented by attempting to limit the use of the formula to a particular technological environment' or [by] adding 'insignificant post solution activity."' Bilski v. Kappas, 130 S. Ct. 3218 (2010), (quoting 11 Appeal2018-006715 Application 14/887 ,093 Similarly, we conclude the "display" limitation immediately following the preamble is extra-solution activity: "display[ing] a trail line extending from a representation of the watercraft, wherein the trail line is displayed at a plurality of geographical locations that the watercraft travelled along a surface of a body of water such that the trail line is representative of a path the watercraft travelled."7 Because the remaining two "receive" functions of claim 1 gather data, we conclude these "receive" functions are also extra- solution activity. We note remaining independent method claim 25 recites similar language of commensurate scope that we conclude also falls into the abstract idea category of a mental process including the abstract idea subcategories of observation, evaluation, judgment, and opinion. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Claim 1 recites the additional non-abstract generic limitations of a watercraft (i.e., a boat or ship), a body of water, and a computer. Remaining independent method claim 25 recites the same non-abstract watercraft and body of water as an additional limitations, except that claim 25 is silent regarding any mention of a computer. However, claim 25 additionally recites a generic display "screen." Because we conclude all claims on appeal recite an abstract idea, as specifically identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong Two. Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)). 7 See MPEP § 2106.05(g) "Insignificant Extra-Solution Activity." 12 Appeal2018-006715 Application 14/887 ,093 2019 Revised Guidance, Step 2A, Prong Two Integration of the Judicial Exception into a Practical Application Further pursuant to the 2019 Revised Guidance, we consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 54--55. We have identified supra the additional non-abstract limitations recited in independent claims 1 and 25. Under MPEP § 2106.05(a) ("Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field"), Appellant contends the claims amount to significantly more than an abstract idea. App. Br. 13. In support, Appellant cites to McRO, and contends the claims: add[] significantly more than the alleged abstract ideas because the claimed invention presents a specific means and/ or method that improves the relevant technology. See McRo, Inc., d.b.a. Planet Blue, v. Bandai Namco Games America Inc., Case 2015- 1080 (Fed. Cir. 2016). To explain, as evidenced by the above noted distinctions with the prior art, the claimed invention provides a significant improvement to navigational displays that includes providing for, at least, variable assigned graphical attributes that are used to display a trail on a map and provide instantaneous visual information to a user. Appeal Br. 9 ( emphasis added). 8 We find Appellant's reliance on McRO is misplaced. For example, McRO 's '576 patent (U.S. Patent No. 6,307,576) describes computer software for matching audio to a 3D animated mouth movement to provide 8 See McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). 13 Appeal2018-006715 Application 14/887 ,093 lip-synced animation. McRO 's claims contain (i) specific limitations regarding a set of rules that "define[] a morph weight set stream as a function of phoneme sequence and times associated with said phoneme sequence" to enable computers to produce "'accurate and realistic lip synchronization and facial expressions in animated characters'" (McRO, 837 F.3d at 1313) and, when viewed as a whole, are directed to (ii) a "technological improvement over the existing, manual 3-D animation techniques" that uses "limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice." McRO, 837 F.3d at 1316. In contrast to McRO, we conclude "display[ing] a portion of the trail line at the current geographical location in accordance with the assigned graphical attribute" ( claim 1 ), does not improve the computer functionality or provide any technological solution to GPS navigation data displays. Regarding the recited additional generic "computer" limitation recited in independent claim 1, we tum to the Specification for support and find merely an exemplary, non-limiting description: "The computing device 410 may be a marine electronics device, MFD, smart phone, computer, laptop, tablet, etc." Spec. ,r 29 ( emphasis added). Given the description of the use of generic computer components in the Specification (id.), we agree with the Examiner that, without more, the additional limitations: are generic computer components performing generic computer functions at a high level of generality such as displaying, transmitting, storing, retrieving and processing data through the program that enables the operation of drawing a trail. Merely using these generic computer components to perform the identified basic functions does not constitute meaningful 14 Appeal2018-006715 Application 14/887 ,093 limitations that would amount to significantly more than the abstract idea. Moreover, narrowing the idea to a computer readable medium executed by a computer is an attempt to limit the use of the abstract idea to a particular technological environment, without causing improvements to any technology or improvements in the functioning of the computer itself. Final Act. 6-7. We note McRO provides additional guidance: "[t]he abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished.'" 837 F.3d at 1312 (quoting O'Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). MPEP § 2106.05(b) Particular Machine MPEP § 2106.05(c) Particular Transformation Appellant advances no arguments applying the Bilski machine-or- transformation test to any claims on appeal. We note "[t]he mere manipulation or reorganization of data, however, does not satisfy the transformation prong." CyberSource, 654 F.3d at 1375 (emphasis added). See also Benson, 409 U.S. at 71-72 (holding that a computer-based algorithm that merely transforms data by converting BCD [ (Binary Coded Decimal)] numerals to pure binary numerals is not patent eligible). Nor on this record has Appellant established that the additional non- abstract limitations recited in independent claims 1 and 25 (i.e., a computer, and a screen of a marine electronics device attached to a watercraft) are "particular" machines under MPEP § 2106.05(b) ( emphasis added). Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv). 15 Appeal2018-006715 Application 14/887 ,093 MPEP § 2106.05(e) "Other Meaningful Limitations." Appellant advances no arguments in the Briefs pertaining to any specific claim limitations that purportedly provide a meaningful limitation beyond generally linking the use of the judicial exception to a particular technological environment. Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv). Therefore, on this record, we are not persuaded the Examiner erred in concluding: "Merely using [] generic computer components to perform the identified basic functions does not constitute meaningful limitations that would amount to significantly more than the abstract idea." Final Act. 7 ( emphasis added). As emphasized above, we conclude Appellant's recited additional limitations of a computer and a screen of a marine electronics device attached to a watercraft are merely generic computer components. See independent claims 1 and 25. MPEP § 2106.05(g) Insignificant Extra-Solution Activity [R-08.2017] As discussed above, we conclude the two recited "receive" functions of claim 1 merely gather data. Therefore, we conclude these "receive" functions are extra-solution activity. The remaining displaying limitations of claims 1 and 25 perform insignificant extra-solution or post-solution activity, such as searching, list compiling, and displaying information. See MPEP § 2106.05(g). Nor do the claims present any other issues as set forth in the 2019 Revised Guidance regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 55. 16 Appeal2018-006715 Application 14/887 ,093 Rather, we conclude the claims on appeal merely use instructions to implement an abstract idea on a computer, or merely use a computer as a tool to perform an abstract idea. Id. Thus, under Step 2A, Prong Two (MPEP §§ 2106.0S(a}-(c) and (e}- (h)), we conclude claims 1, 2, 7, 8, 10, and 21-33 do not integrate the judicial exception into a practical application. Therefore, we proceed to Step 2B, The Inventive Concept. The Inventive Concept - Step 2B Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) Under the 2019 Revised Guidance, 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 adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.05( d)); or, simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. We note Berkheimer was decided by the Federal Circuit on February 8, 2018. On April 19, 2018, the PTO issued the Memorandum titled: "Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer Memorandum"). 9 9 Available at https://www.uspto.gov/sites/default/files/documents/memo- berkheimer-20180419 .PDF. 17 Appeal2018-006715 Application 14/887 ,093 Because the Reply Brief was filed on June 14, 2018, Appellant had constructive notice of both the Berkheimer Federal Circuit decision and the USPTO "Berkheimer Memorandum." We note the Berkheimer Memorandum provided specific requirements for an Examiner to support with evidence any finding that claim elements (or a combination of elements) are well-understood, routine, or conventional. Here, the Examiner finds the claims do not include additional elements that are: sufficient to amount to significantly more than the judicial exception because the addition of limitations such as "executed by a computer", "receive data", "display" amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Final Act. 6 ( emphasis added in bold). Pursuant to the Berkheimer Memorandum, Appellant argues: "Since the Examiner's arguments fail to provide any analysis of all of the claim elements [(under Berkheimer)], the rejection is improper for failing to present a prima facie case of subject matter ineligibility." Reply Br. 3. In reviewing the record, Appellant has persuaded us the Examiner has not shown the additional elements are well-understood, routine, or conventional, because the Examiner has not supported the § 101 rejection in writing under Berkheimer with one or more of the following:" 1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s) .... 18 Appeal2018-006715 Application 14/887 ,093 2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s). 3. A citation to a publication that demonstrates the well- understood, routine, conventional nature of the additional element( s ) .... 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s) .... Berkheimer Memorandum at 3--4. Thus, responsive to Appellant's argument (Reply Br. 3), and in applying the 2019 Revised Guidance, we find the Examiner has not provided any of the four categories of factual evidence expressly required by the USPTO Berkheimer Memorandum. Therefore, the record supports Appellant's argument that because the Examiner did not provide any analysis under Berkheimer of the additional claim elements, the rejection is improper for failing to set forth a prima facie case of subject matter ineligibility under 35 U.S.C. § 101. See Reply Br. 3. Accordingly, because the Examiner has not provided sufficient evidence as required by Berkheimer (881 F.3d at 1369), and the USPTO Berkheimer Memorandum, we are constrained on this record to reverse the Examiner's rejection under 35 U.S.C. § 101 of all claims 1, 2, 7, 8, 10, and 21-33 on appeal. 19 Appeal2018-006715 Application 14/887 ,093 Anticipation Rejection B of Representative Independent Claim 1 Issue: Under 35 U.S.C. § 102(a)(l), did the Examiner err by finding Brown anticipates the following contested limitations L 1 and L2: receive, as the watercraft travels along the surface of the body of water, at least one value of secondary data, wherein the at least one value of the secondary data is associated with the current geographical location of the watercraft, wherein the at least one value of the secondary data comprises a value corresponding to at least one of motor status data, temperature data, depth data, and speed data, and wherein the at least one value of the secondary data was determined by one or more sensors of the watercraft when the watercraft was at the current geographical location; [L 1] determine an assigned graphical line attribute associated with the received at least one value of the secondary data, wherein the assigned graphical line attribute is variable based on the received value of the secondary data such that at least two different values of the secondary data are each associated with a different assigned graphical line attribute; and [L2] display a portion of the trail line at the current geographical location in accordance with the assigned graphical attribute, wherein the displayed portion of the trail line at the current geographical location is different than at least one other portion of the displayed trail line at a different geographical location. within the meaning of representative independent claim 1? 10 (Emphasis added). We note limitations L 1 and L2 of claim 1 are recited in similar form having commensurate scope in remaining independent claim 25. 10 See supra, n.4. We give the contested claim limitations the broadest reasonable interpretation (BRI) consistent with the Specification. See Morris, 127 F.3d at 1054. 20 Appeal2018-006715 Application 14/887 ,093 We focus our analysis on the limitations L 1 and L2, as argued by Appellant. See App. Br. 5---6. Appellant focuses on the "secondary data" recited in claim 1. Id. Specifically, Appellant contends: In the final Office Action, the Examiner [finds] that the variation in pixel color for the sonar image ( as generated by the range cell data) of Brown is the equivalent of the claimed variation in the graphical attribute for the received values of the secondary data. See Page 3 of the final Office Action. Notably, the claim recites the secondary data as one of "motor status data, temperature data, depth data, and speed data." Appellant submits, however, that the Examiner's argument equating the variation in pixel color for the sonar image to any of "motor status data, temperature data, depth data, and speed data" is improper. In this regard, to explain, the pixel color of Brown ( and the sonar images/range cell data of Brown) is based on the amplitude of the sonar return. This is different and unrelated to the depth ( or time of travel) of the sonar return. Brown clearly distinguishes the two attributes (i.e., amplitude vs. depth) in Paragraph [0047]. For example. Brown states that "a range cell may be a form of the sonar data that indicates an amplitude of an echo return at a particular depth ( or distance from the transducer)" ( emphasis added). This statement acknowledges that the sonar return has a depth/distance attribute and a separate amplitude attribute. The pixel coloring of Brown, as known by one of ordinary skill in the art at the time of Brown, is based on the amplitude attribute. [paragraph break inserted] Thus, the grey scale or color in the Figures of Brown is based on that amplitude data-not on the depth data. Indeed, sonar returns at different depths may in fact have the same/similar amplitude and, thus, be presented in the same color on the image. In this regard, while the amplitude data may be a portion of sonar data received, it is not depth data (which 21 Appeal2018-006715 Application 14/887 ,093 is claimed). Thus, Appellant submits that Brown fails to teach or suggest providing a variable assigned graphical line attribute based on "depth data". Further, Brown's pixel color based on amplitude does not fall within the other claimed categories of motor status of the vessel, temperature of the water, or speed of the vessel. The remainder of Brown's disclosure does not cure this deficiency. Thus, Appellant submits that Brown fails to disclose, teach, or suggest such a feature." App. Br. 5-6. The Examiner's Answer In response, the Examiner disagrees. The Examiner refers to the mapping of the claimed "secondary data" to two different types of data found in Brown, as set forth in the Final Office Action 11-13. See Ans. 6. The Examiner addresses Appellant's arguments (App. Br. 5---6), based on the claimed two different types of data- "depth data" and "speed data." See Ans. 6-9. See Claim 1. As a matter of claim construction, the Examiner concludes the claim term "graphical line attribute" is a broad term. Claim 1. See Ans. 6. The Examiner interprets any graphical related variable as a "graphical line attribute" (for example, colors, gray scale, shapes, size, location, numbers etc.), emphasizing that "a graphical line attribute" ( claim 1) is not limited to just colors. See Ans. 6. We begin our analysis with claim construction. 11 Claim 1 recites: "the secondary data comprises a value corresponding to at least one of 11 Claim construction is an important step in a patentability determination. A legal conclusion that a claim is obvious involves two analytical steps, assuming the references have been properly combined under § 103. See Medichem, S.A. v. Rolabo, S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) ("Both anticipation under § 102 and obviousness under § 103 are two-step inquiries. 22 Appeal2018-006715 Application 14/887 ,093 motor status data, temperature data, depth data, and speed data." ( emphasis added). We tum to the Specification for context regarding the claimed secondary data: Figure 2 illustrates a GPS navigation data image 200 that may be displayed by a multi-function display device in accordance with various implementations described herein. As in previously discussed implementations, the multi-function display device may be associated with a motor vehicle, such as a motorized marine vessel. The multifunction display device may acquire GPS navigation data as well as some secondary data of interest. In the case of a land vehicle, the secondary data may include speed, elevation, or any other data of interest. The secondary data may be acquired by the display device itself, the vehicle, or some associated external device. In the case of a marine vessel, the secondary data may include speed, surface water temperature, water depth, wave height, or any other data of interest. This secondary data may also be any data acquired by the display device, the vehicle, or an associated external device. Spec. ,r 25 ( emphases added). Given this supporting description of secondary data (id.), we tum to the evidence relied upon by the Examiner (Final Act. 13-14; Ans. 5-9). The The first step in both analyses is a proper construction of the claims .... The second step in the analyses requires a comparison of the properly construed claim to the prior art." (internal citations omitted)). Under the second step, the Board must compare the construed claim to one or more prior art references and make factual findings regarding the limitations contested by Appellant. See In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). Because the PTO is entitled to give claims their broadest reasonable interpretation, a court's review of the Board's claim construction is limited to determining whether it was reasonable. See Morris, 127 F.3d at 1055. 23 Appeal2018-006715 Application 14/887 ,093 Examiner finds limitation LI of claim 1 is disclosed by Brown, at ,r,r 6, 70, 45, 48 and Fig. 9. Final Act. 13-14. We reproduce the pertinent cited portions of Brown below: The display device may be configured to render the sonar image data with a presentation of a geographic map. Brown ,r 6. In this regard, the extent trail view 900 includes a rendering indicating the vessel trail 905, the starboard side scan extent trail 910, and the port side scan extent trail 915. The vessel trail 905 may be determined based on the positioning data provided by position sensing circuitry, and, based on an association between the positioning data and the width of the sonar column, the starboard and port extent trails can be determined and rendered. . .. According to some example embodiments, the extent trails may be an option to be toggled in a vessel view that shows where the vessel has previously been located. Brown ,r 70 ( emphasis added). The waterfall view 400 illustrates the rending of sonar image data derived from raw sonar data provided by port and starboard sidescan transducers over a period of time as the watercraft travels. The right half of the waterfall view 400 is a representation of the raw sonar data generated by the starboard sidescan transducer and the left half of the waterfall view 400 is a representation of the raw sonar data generated by the port sidescan transducer as a watercraft moves through a body of water. The image is referred to as a waterfall view because new sonar data is rendered across the top of the view as old sonar data falls off the bottom of the view. As such, movement of the watercraft is from the bottom to top of the image presentation and the image ratchets downward with the rendering of each scan performed by the transducers. Brown ,r 45 ( emphases added). 24 Appeal2018-006715 Application 14/887 ,093 When rendering the sonar data, the range cell values may be converted into pixel values. For example, the pixels may be formatted in a 32-bit ARGB (Alpha, Red, Green, Blue) pixel format, where each segment of the pixel may be 8 bits. Brown ,r 48 ( emphasis added). Shown below, Brown's Figure 9 depicts a display of the watercraft speed and vessel trail ._.-._ ---. -, .~.,,. ... -~ \, HG.9 \ ~ \ Figure 9 of Brown, shown above, illustrates an example rendering of extent trails, as described in paragraph 70. As noted above, Appellant's claim 1 recites: "the secondary data comprises a value corresponding to at least one of motor status data, temperature data, depth data, and speed data." (emphasis added). In reviewing the record, we find Brown, paragraph 33 expressly describes watercraft speed data: 25 Appeal2018-006715 Application 14/887 ,093 According to some example embodiments, the position sensing circuitry 110 may also determine a direction and speed of movement, and provide the direction and speed of movement in the positioning data provided to the processing circuitry 115. Alternatively, the processing circuitry 115 may be configured to determine the direction and speed of movement based on historical time-stamped location information received from the position sensing circuitry 110. Brown ,r 33 (emphasis added). Brown's paragraphs 47, 64, and 72 expressly describe depth data: According to various example embodiments, a range cell may be a form of the sonar data that indicates an amplitude of an echo return at a particular depth ( or distance from the transducer). Brown ,r 4 7 ( emphasis added). the rendering of the sonar image data as the adjusted sonar representation 820 may be one of a plurality of user- selectable layers that may overlie the presentation of the geographic map. In some example embodiments, the plurality of user-selectable layers may include a weather layer, a radar layer, or a depth sounding layer ( described further below with respect to FIG. 10). Brown ,r 64 ( emphasis added). Brown's paragraph 72 expressly describes the sonar system may be configured to take depth measurements using a downscan transducer element: Yet another optional feature that may be implemented in the Live Mode or in the Saved Mode ( as described below) may be a composite map with depth sounding indicators. The composite map 1000 of FIG. 10 provides an 26 Appeal2018-006715 Application 14/887 ,093 example rendering of a Live Mode adjusted sonar representation 1010 with depth sounding indicators 1005. The depth sounding indicators may be added as a separate layer on the composite map. In this regard, as a watercraft moves through an area, the sonar system may be configured to take depth measurements using, for example, a downscan transducer element. The depth measurement may be associated with positioning data provided by the position sensing circuitry at the time that the depth measurement is taken to generate a geo-located depth measurement. The geo- located depth measurements may then be rendered as depth sounding indicators on a composite map with a Live Mode adjusted sonar representation as depicted in FIG. 10. As mentioned above, depth sounding indicators may also be rendered with data that is processed in accordance with the Saved Mode. Brown ,r 72 ( emphasis added). See also Brown, Figure 10 depicting depth sounding indicators 1005. Claim 1, limitation L 1 requires: "determine an assigned graphical line attribute associated with the received at least one value of the secondary data, wherein the assigned graphical line attribute is variable based on the received value of the secondary data such that at least two different values of the secondary data are each associated with a different assigned graphical line attribute." ( emphasis added). As pointed out by the Examiner, Brown expressly teaches: "When rendering the sonar data, the range cell values may be converted into pixel values." Brown ,r 48 (emphasis added). See Final Act. 14. Thus, we find Brown describes the "graphical line attributes" associated with secondary data as claimed. Based upon a preponderance of the evidence, and because Appellant's fail to address the Examiner's specific findings regarding Brown ,r 48 (Final 27 Appeal2018-006715 Application 14/887 ,093 Act. 14), on this record, we are not persuaded of error regarding the Examiner's finding that Brown discloses contested limitation L 1. See Final Act. 13-14. Contested Limitation L2 of Independent Claim 1 under 102 Rejection B display a portion of the trail line at the current geographical location in accordance with the assigned graphical attribute, wherein the displayed portion of the trail line at the current geographical location is different than at least one other portion of the displayed trail line at a different geographical location. Claim 1. See App. Br. 10. Turning to the evidence found by the Examiner, Brown describes display of current trail line: In this regard, the extent trail view 900 includes a rendering indicating the vessel trail 905, the starboard side scan extent trail 910, and the port side scan extent trail 915. The vessel trail 905 may be determined based on the positioning data provided by position sensing circuitry, and, based on an association between the positioning data and the width of the sonar column, the starboard and port extent trails can be determined and rendered .... According to some example embodiments, the extent trails may be an option to be toggled in a vessel view that shows where the vessel has previously been located. Brown ,r 70. Given this evidence (id.), on this record, we are not persuaded of error regarding the Examiner's finding of anticipation, as pertaining to contested limitation L2 of representative claim 1. For at least the aforementioned reasons, and based upon a preponderance of the evidence, we are not persuaded the Examiner erred regarding anticipation Rejection B of representative independent claim 1. 28 Appeal2018-006715 Application 14/887 ,093 For similar reasons, we find a preponderance of the evidence supports the Examiner's finding of anticipation for Rejection B of independent claim 25, which recites similar limitations of commensurate scope to those contested by Appellant for claim 1. See Final Act. 16-18. Therefore, grouped claims 7, 21-25, and 29-33, also rejected under anticipation Rejection B (and not argued separately) fall with representative independent claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). Accordingly, we sustain the Examiner's Rejection B of claims 1, 7, 21-25, and 29-33. Rejections C and D of Remaining Dependent Claims 2, 8, 10, and 26--28 Regarding all remaining dependent claims rejected under § 103: "Appellant submits that none of the additional cited references cure the above noted deficiencies of Brown." See App. Br. 9. However, we find no deficiencies with Brown for the same reasons discussed above regarding anticipation Rejection B of claim 1. Accordingly, we sustain the Examiner's Rejection C under§ 103 of claims 2, 8, 26, and 27, and the Examiner's Rejection D under§ 103 of claims 10 and 28. CONCLUSIONS The Examiner erred in rejecting claims 1, 2, 7, 8, 10, and 21-33 under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more. The Examiner did not err in rejecting claims 1, 7, 21-25, and 29-33 under 35 U.S.C. § 102(a)(l), as being anticipated by Brown. 29 Appeal2018-006715 Application 14/887 ,093 The Examiner did not err in rejecting claims 2, 8, 10, and 26-28 under 35 U.S.C. § 103, as being obvious over the cited combinations of prior art. DECISION We reverse the Examiner's decision rejecting claims 1, 2, 7, 8, 10, and 21-33 under 35 U.S.C. § 101. We affirm the Examiner's decision rejecting claims 1, 7, 21-25, and 29-33 under 35 U.S.C. § 102(a)(l). We affirm the Examiner's decision rejecting claims 2, 8, 10, and 26-28 under 35 U.S.C. § 103. Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner's decision is affirmed. See 37 C.F.R. § 4I.50(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(±). AFFIRMED 30 Copy with citationCopy as parenthetical citation