Ex Parte Steward

Patent Trials and Appeals Board

Jun 28, 2019

14887093 - (D) (P.T.A.B. Jun. 28, 2019)

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.").
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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.
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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?
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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"
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(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,
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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).
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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.
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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).
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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).
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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
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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."
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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).
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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
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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).
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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.
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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.
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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) ....
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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.
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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.
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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
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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.
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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.
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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).
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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:
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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
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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
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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.
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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.
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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