James Bongiorno

Patent Trials and Appeals Board

Mar 20, 2020

12910790 - (D) (P.T.A.B. Mar. 20, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/910,790 10/23/2010 James Bongiorno 8903
97708 7590 03/20/2020
James Bongiorno
P.O. Box 1454
Hunlington, NY 11743
EXAMINER
NELSON, FREDA ANN
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
03/20/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES BONGIORNO
____________

Appeal 2019-000130
Application 12/910,790
Technology Center 3600

____________

Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1–4, 6–8, 15, and 32–57.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as James
Bongiorno. (Appeal Br. 3.)
2 In view of the inclusion of claims 6–8 on page 2 of the Final Action, we
treat the omission of claims 6–8 on page 1 of the Final Action as a
typographical error.
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CLAIMED SUBJECT MATTER
Appellant’s “invention relates to methods and systems of planning
and executing a vacation or travel itinerary, and more particularly to
software and a portable electronic unit, which may be dedicated to such
planning and travel assistance at the destination.” (Spec. 1.)
Claims 1, 15, and 32 are the independent claims on appeal. Claim 1 is
illustrative. It recites (some paragraphing added):
1. A travel itinerary device comprising:
a housing;
a non-transitory computer-readable program storage
medium having computer readable program code embodied
therein, said computer readable code being configured for
planning of a travel itinerary;
a database of travel information, relating to a destination,
stored in said non-transitory computer-readable program storage
medium;
a viewing screen;
a processor for executing said computer readable code,
said computer readable code comprising instructions for
accessing said database of information on said non-transitory
computer-readable program storage medium, and for causing
displaying, on said viewing screen, of one or more image screens
permitting selective planning of said travel itinerary;
a plan itinerary button, an alter itinerary button, and one or
more additional buttons configured, when toggled, for
communicating a selection, from among a plurality of options
displayed within said one or more image screens, to said
processor, and for permitting selective entry of one or more
characters;
wherein said selective planning comprises
actuating said plan itinerary button for causing displaying
of a first image screen by said instructions, said first image screen
configured for selecting a first itinerary template and one or more
additional itinerary templates from among a plurality of said
additional templates,
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said first itinerary template comprising a template for
entering of a number of days for said itinerary, an arrival city and
a departure city, and for selecting of one of a plurality of
graduated levels of a tour schedule intensity, each of said
graduated levels of said tour schedule intensity comprising a
range of hours for touring for each of said number of days;
each of said plurality of additional itinerary templates
comprising a respective list of sites relating to a category of said
additional template, with a portion of said list of sites in each said
selected one or more additional itinerary templates being used to
form a complete travel itinerary,
said complete travel itinerary comprising a sequence of
sites, for each of said number of days, with said sequence of sites
being optimized to include as many sites as possible in said range
of touring hours, for touring at the destination;
wherein said selective planning further comprises said
alter itinerary button configured for causing displaying of a
customizing image screen, said customizing image screen
permitting, but not requiring, customizing of said sequence of
sites of said complete itinerary, using selective access to said
database of travel information, for creating a customized
sequence of sites for a complete customized travel itinerary; and
wherein said computer readable code is configured for
retrievably storing said selective planning within said program
storage medium; and
a use itinerary button, said use itinerary button configured,
when actuated, for causing displaying of a guidance screen
configured for communicating with a GPS receiver for providing
guidance during executing of said travel itinerary at the
destination, said guidance comprising providing directions to
any of said sequence of sites from a current location of said travel
itinerary device.

REJECTIONS
Claims 1–4, 6–8, 15, and 32–57 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
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Claims 1–4, 6–8, 15, 32–35, 37, 42–47, 52, and 53 are rejected under
35 U.S.C. § 103(a) as unpatentable over Whitsett (US 2009/0216633 A1,
pub. Aug. 27, 2009), Ben-Yehuda (US 2008/0046298 A1, pub.
Feb. 21, 2008), Erhardt (US 2010/0332115 A1, pub. Dec. 30, 2010), and
DeLorme (US 2003/0182052 A1, pub. Sept. 25, 2003).
Claims 15, 48, 49, and 51 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Whitsett, Ben-Yehuda, and Erhardt.
Claims 36, 38, and 39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Whitsett, Ben-Yehuda, Erhardt, DeLorme, and Chavez
(US 2010/0121563 A1, pub. May 13, 2010).
Claim 40 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Whitsett, Ben-Yehuda, Erhardt, DeLorme, and Randall
(US 2006/0184538 A1, pub. Aug. 17, 2006).
Claim 41 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Whitsett, Ben-Yehuda, Erhardt, DeLorme, Randall, and Bakewell
(US 2008/0201227 A1, pub. Aug. 21, 2008).
Claims 50 and 54–57 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Whitsett, Ben-Yehuda, Erhardt, DeLorme, Chavez, and
Ben-Yitschak (US 2010/0305984 A1, pub. Dec. 2, 2010).

ANALYSIS
The § 101 rejection
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
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“contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (internal quotation marks omitted) (citing Mayo, 566 U.S. at 72–
73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two-prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] 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 USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).

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Claims 1–4, 6, and 7
The Examiner determines that claim 1 is “directed to the abstract idea
of preparing a custom travel itinerary for use at a destination which is similar
to . . . using rules to identify options . . . and/or [c]reating a contractual
relationship.” (Final Action 8 (emphasis and internal quotation marks
omitted).) The 2019 Guidance identifies “commercial or legal interactions
(including agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business relations)”
and “managing personal behavior or relationships or interactions between
people (including social activities, teaching, and following rules or
instructions)” as certain methods of organizing human activity, and a
category of abstract ideas. (2019 Guidance at 52.) Viewing the Examiner’s
determination through the lens of the 2019 Guidance, the Examiner’s
determination is that claim 1 is directed to the abstract idea of certain
methods of organizing human activities.
Appellant argues that “[t]here is no contractual relationship that is
explicitly or impliedly formed by the claim language” and that “the
apparatus recited in claim 1 goes substantially beyond just organizing[,]
storing, and transmitting information.” (Appeal Br. 19.3)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).

3 References to “Appeal Br.” are to the appeal brief filed
December 21, 2016.
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The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the “directed to” inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether “their character as a whole is directed to excluded
subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to “planning and executing a vacation or travel itinerary.” (Spec. 1.)
Claim 1 provides further evidence. Claim 1 recites “[a] travel itinerary
device comprising: a housing; a non-transitory computer-readable program
storage medium,” “a database of travel information,” “a processor . . . for
accessing said database . . . and for causing displaying . . . of one or more
image screens permitting selective planning of said travel itinerary,”
“buttons . . . for communicating a selection,” “said selective planning
comprises . . . selecting a first itinerary template and one or more additional
itinerary templates . . . for entering” itinerary information, “additional
itinerary templates comprising a respective list of sites,” “said complete
travel itinerary comprising a sequence of sites . . . with said sequence of sites
being optimized to include as many sites as possible,” “said selective
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planning further comprises said alter itinerary button . . . for creating a
customized sequence of sites,” “retrievably storing said selective planning,”
“and a use itinerary button . . . for causing displaying of a guidance screen
configured for communicating with a GPS receiver for providing guidance
during executing of said travel itinerary . . . comprising providing directions
to any of said sequence of sites from a current location.”
In short, claim 1 recites a device with a processor, a memory, and a
screen. The memory contains information and program code for displaying
screens/templates for inputting information, analyzing information (forming
a sequence of tour sites “optimized to include as many sites as possible”),
displaying a screen for inputting additional information, retrieving
information from memory, and displaying a screen for communicating with
a GPS receiver to provide information.
Appellant argues:
The inventive programming of the claimed apparatus of
claim 1 utilizes an amalgam of rules that are found in the list of
sites of the “one or more additional templates,” and in the
framework of the itinerary that is defined by the traveler in the
“first itinerary template,” which is nonetheless alterable using the
“alter itinerary button.” It is this amalgam of rules that serves to
improve the existing technological process “by allowing the
automation of further tasks,” which provided the basis for the
patent-eligibility of the claimed subject matter in [McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016)].

(Appeal Br. 20.) We do not find this argument persuasive. “The claimed
improvement [in McRO] was to how the physical display operated (to
produce better quality images), unlike (what is present here) a claimed
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improvement in [the abstract idea] with no improved display mechanism.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
Claim 1 recites a generic “housing,” a generic “computer-readable
program storage medium,” a generic “viewing screen,” a generic
“processor,” and a generic “GPS receiver.” (See Spec. 18, 44–45.) The
claim limitations do not recite technological implementation details for any
of the steps. Claim 1 merely recites functional results to be achieved by any
means, e.g., claim 1 does not recite how the plan itinerary button “caus[es]
displaying of a first image screen,” how the sequence of sites of the
complete travel itinerary is “optimized to include as many sites as possible,”
how said alter itinerary button “caus[es] displaying of a customizing image
screen . . . for creating a customized sequence of sites,” or how the use
itinerary button “caus[es] displaying of a guidance screen configured for
communicating with a GPS receiver” where the guidance “provid[es]
directions to any of said sequence of sites from a current location.” The
claim does not recite any specific asserted improvement to computer
technology.
In cases involving software innovations, such as we have here, the
inquiry as to whether the claims are directed to an abstract idea “often turns
on whether the claims focus on ‘the specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an
“abstract idea” for which computers are invoked merely as a tool.’” Finjan,
Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting
Enfish, LLC, 822 F.3d at 1335–36). Here, the housing, program storage
medium, viewing screen, processor, and GPS receiver are invoked merely as
tools.
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Even if we consider claim 1 to be limited to a particular technological
environment, “limiting the claims to [a] particular technological
environment . . . is, without more, insufficient to transform them into patent-
eligible applications of the abstract idea at their core.” Elec. Power Grp.,
830 F.3d at 1354. The asserted improvement is to the information provided,
i.e., the travel itinerary, customized travel itinerary, and directions to the
sites. But “[n]o matter how much of an advance in the . . . field the claims
recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm.” SAP
America, Inc., 898 F.3d at 1163.
We also do not find persuasive Appellant’s argument:
Claim 1 claims a “plan itinerary button,” an “alter itinerary
button,” and a “use itinerary button” as elements of the apparatus,
which provides a synergism of functionality based on the
combination of inventive programming for planning a custom
itinerary, in combination with GPS communications to provide
guidance during execution of the custom planned itinerary, while
at the destination.

(Appeal Br. 19.)
Claim 1 does not recite “a particular way of programming or
designing the software . . . , but instead merely claim[s] the resulting
system[].” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed.
Cir. 2016). In other words, claim 1 does not recite inventive programming,
but simply recites desired results. Claim 1 is “focused on providing
information to [the user] . . . , not on improving computers or technology.”
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019)
(hereinafter “Trading Techs. II”). “Like Electric Power, the purported
advance ‘is a process of gathering and analyzing information of a specified
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content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions.’ 830 F.3d at 1354.
We thus conclude that the claim[ is] directed to an abstract idea.” Id.
at 1385.
Claim 1 “do[es] not improve the functioning of the computer, make it
operate more efficiently, or solve any technological problem. Instead, [it]
recite[s] a purportedly new arrangement of generic information that assists
[users] in processing information more quickly.” Trading Techs. Int’l, Inc.
v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (hereinafter “Trading
Techs. I”). The Federal Circuit has concluded that such claims are directed
to an abstract idea. Id. Cf. Core Wireless Licensing S.A.R.L. v. LG Elecs.,
Inc., 880 F.3d 1356, 1362–63 (Fed. Cir. 2018) (The court determined that
“[t]he asserted claims in this case are directed to an improved user interface
for computing devices,” that the claim “limitations disclose a specific
manner of displaying a limited set of information to the user, rather than
using conventional user interface methods,” and that “[t]he disclosed
invention improves the efficiency of using the electronic device.” The court
determined that the claims were not directed to an abstract idea.).
“As many cases make clear, even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.” SAP Am., Inc., 898 F.3d at 1168. Moreover, the “character of
[the] information simply invokes a separate category of abstract ideas.” Id.
In view of the above, we determine that claim 1 is directed to planning
and executing a travel itinerary using “an amalgam of rules.” (See Appeal
Br. 20.) In other words, we determine that claim 1 is directed to managing
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personal behavior or relationships or interactions between people, and, thus,
an abstract idea, characterized as being directed to certain methods of
organizing human activity. (See 2019 Guidance at 52.) This is in accord
with the Examiner’s determination. (See Final Action 8.)
Moreover, we do not see how the recitation of a generic housing, a
generic computer readable program storage medium, a generic viewing
screen, a generic processor, and a generic GPS receiver, even in conjunction
with the recited functions, “ensure[s] ‘that the [claim] is more than a drafting
effort designed to monopolize the [abstract idea].’” See Alice, 573 U.S.
at 221 (second and third brackets in original) (quoting Mayo, 566 U.S.
at 77).
Nor do we find any indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer technology or functionality to the claimed
invention or that otherwise indicates that the claimed invention “appl[ies],
rel[ies] on, or use[s] 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
Guidance at 54–55.)
Thus, under prong one of the two prong test in the 2019 Guidance,
claim 1 recites an abstract idea; and, under prong two, additional elements in
claim 1 do not “apply, rely on, or use 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.”
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(See 2019 Guidance at 54.) As such, under step one of the Alice framework,
the claims are directed to an abstract idea, and we move to step two.
Step two of the Alice framework has been described “as a search for
an ‘ “inventive concept” ’ –i.e., an element or combination of elements that
is ‘sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S.
at 217–18 (brackets in original) (quoting Mayo, 566 U.S. at 72–73). Under
step two, we examine, inter alia, whether a claim element or combination of
elements “[a]dds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present.” (2019 Guidance
at 56.)
Here, the question is whether the steps of displaying screens/templates
for inputting information, analyzing information, displaying a screen for
inputting additional information, retrieving information from memory, and
displaying a screen for communicating with a GPS receiver are well-
understood, routine and conventional.
Taking the claim elements separately, the functions performed in
claim 1 by the generic housing, computer readable program storage medium,
viewing screen, processor, and GPS receiver are purely routine and
conventional. (See, e.g., Spec. 23–24, 49, 75–77.) Storing information,
providing/presenting information, analyzing information, and receiving
information are all routine and conventional functions for a computer
processor and were previously known to the industry. See Elec. Power Grp.,
830 F.3d at 1356 (The claims “do not include any requirement for
performing the claimed functions of gathering, analyzing, and displaying in
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real time by use of anything but entirely conventional, generic technology.
The claims therefore do not state an arguably inventive concept . . . .”); see
also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”).
Considered as an ordered combination, the generic computer
components of Appellant’s claimed invention add nothing that is not already
present when the limitations are considered separately. For example,
claim 1 does not, as discussed above, purport to improve the functioning of
the computer components themselves. Nor does it effect an improvement in
any other technology or technical field. Instead, claim 1 amounts to nothing
significantly more than an instruction to apply the abstract idea using generic
computer components performing routine computer functions. (See Final
Action 8–9.) That is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225–26.
Appellant presents separate arguments for dependent claims 2–4, 6,
and 7. (Appeal Br. 20–22.) These arguments rely on the claims “further
defin[ing] the inventive programming of [the associated parent claim(s)].”
(Id.) However, these dependent claims, like claim 1 discussed above, do not
recite “a particular way of programming or designing the software . . . , but
instead merely claim the resulting system[].” Apple, Inc., 842 F.3d at 1241.
In other words, these dependent claims do not recite inventive programming,
but simply desired results. This is fatal to Appellant’s arguments. Also like
claim 1, these dependent claims are “focused on providing information to
[the user] . . . , not on improving computers or technology.” See Trading
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Techs. II, 921 F.3d at 1384. Therefore, for the reasons discussed above, we
are not persuaded that the Examiner erred in rejecting dependent claims 2–4,
6, and 7.

Claim 8
Claim 8 recites:
8. The travel itinerary device of claim 7, further comprising
a [sic, said] GPS receiver; and wherein said guidance screen is
configured for selective displaying of:
said sequence of sites of said travel itinerary;
a scalable map region for one or more of said sites of said
travel itinerary; and
wherein said providing of directions to any of said sites of
said travel itinerary comprises providing direction based on a
current GPS location of said device.

As an initial matter, we note that in view of the recitation in claim 8 of
“said guidance screen,” which relies on the recitation in claim 1 of “a
guidance screen for communicating with a GPS receiver” for its antecedent
basis, we treat the recitation in claim 8 of “a GPS receiver” as a
typographical error, i.e., that the recitation should have been “said GPS
receiver.”
Appellant argues that “[t]he use of the GPS receiver to provide
guidance . . . in combination with the inventive concept of using the claimed
templates . . . and the claimed buttons to create the itinerary, is not
conventional.” (Appeal Br. 22.) We do not find this argument persuasive.
Appellant does not claim to have invented a GPS receiver. Nor does
Appellant claim that using a GPS receiver to obtain directions is not
conventional. Claim 8 merely recites the conventional use of a GPS device
to receive map and location information. See, e.g., Location Based Servs.,
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LLC v. Niantic, Inc., 295 F. Supp.3d 1031 (N.D. Cal. 2017), aff’d, 742 F.
App’x 506 (Fed. Cir. 2018); Peschke Map Techs. LLC v. Rouse Props. Inc.,
168 F. Supp.3d 881 (E.D. Va. 2016).
Also claim 8, like claim 1, does not recite “a particular way of
programming or designing the software . . . , but instead merely claim[s] the
resulting system[].” Apple, Inc., 842 F.3d at 1241. Claim 8 is “focused on
providing information to [the user] . . . , not on improving computers or
technology.” Trading Techs II, 921 F.3d at 1384. In sum, the claim
limitations do not recite technological implementation details for any of the
steps. The claim merely recites functional results to be achieved by any
means, e.g., claim 8 does not recite how the guidance screen displays “a
scalable map region for one or more of said sites of said travel itinerary,” or
how it provides “directions to any of said sites of said travel itinerary.” The
claim recites the aspirational goal of performing these tasks. It does not
recite any specific asserted improvement to computer technology.
Nor do we find persuasive Appellant’s attempt to analogize claim 8 to
the claims in BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). (Appeal Br. 22.) In BASCOM,
the court determined that “an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces.”
BASCOM Glob. Internet Servs., Inc., 827 F.3d at 1350. Here, claim 8 does
not specify that the recited computer components must be arranged in a non-
conventional manner.
Taking the claim elements separately, the functions performed in
claim 8 by the generic components are purely routine and conventional.
Considered as an ordered combination, the generic components of
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Appellant’s claimed invention add nothing that is not already present when
the limitations are considered separately.
For the reasons discussed above, we are not persuaded that the
Examiner erred in rejecting claim 8.

Claim 36
Claim 36 recites “[t]he travel itinerary device of claim 8, further
comprising an en route detour button configured for causing, when actuated,
displaying of a detour option screen on said viewing screen, said detour
option screen configured for identifying alternative nearby sites in close
proximity to a current location of said device.”
Appellant argues:
The “en route detour button” leverages use of the GPS
receiver to provide guidance not only in moving between each of
the “sequence of sites” of the planned itinerary, but also in
moving to other alterative [sic] nearby sites, that along with the
displaying of such sites on the “scalable map region” recited in
claim 8, in combination with the claimed templates and other
buttons to create the itinerary, serves to further the inventive
concept. The combination is not conventional.

(Appeal Br. 23.)
Claim 36, however, does not recite “a particular way of programming
or designing the software . . . , but instead merely claim[s] the resulting
system[].” Apple, Inc., 842 F.3d at 1241. Claim 36 is “focused on providing
information to [the user] . . . , not on improving computers or technology.”
Trading Techs II, 921 F.3d at 1384. The claim limitations do not recite
technological implementation details for any of the steps. Claim 36 does not
recite any specific asserted improvement to computer technology.
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Taking the claim elements separately, the functions performed in
claim 36 by the generic components are purely routine and conventional.
Considered as an ordered combination, the generic components of
Appellant’s claimed invention add nothing that is not already present when
the limitations are considered separately.
For the reasons discussed above, we are not persuaded that the
Examiner erred in rejecting claim 36.

Claim 50
Claim 50 recites:
50. The travel itinerary device according to claim 36, further
comprising:
a sound generator;
a microphone;
a language database stored in said storage medium;
a translate phrase button configured, when actuated, for
causing displaying of a language translation screen on said
viewing screen, said language translation screen configured for
translating one or more words entered into said device in a first
language, into a second language being used at the destination,
and to cause said sound generator to articulate said translated one
or more words; and
one or more speech recognition algorithms configured for
translating a response in said language used at the destination
into said first language.

Appellant argues:
This additional combination of elements furthers the
inventive concept beyond just “preparing a custom travel
itinerary.” It provides comprehensive support for a traveler
while traveling in a foreign country where the foreign citizens do
not speak the same language. The ordered combination of
elements provides for an apparatus that enables the person to not
only plan a “complete travel itinerary,” and be given custom
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directions to navigate about the foreign nation while in-country
to execute that custom itinerary, but furthermore enables the
traveler to interact and communicate with the foreign-speaking
citizens, when necessary.

(Appeal Br. 24.)
Claim 50 does not recite “a particular way of programming or
designing the software . . . , but instead merely claim[s] the resulting
system[].” Apple, Inc., 842 F.3d at 1241. Claim 50 is “focused on providing
information to [the user] . . . , not on improving computers or technology.”
Trading Techs II, 921 F.3d at 1384. The claim limitations do not recite
technological implementation details for any of the steps. Claim 50 does not
recite any specific asserted improvement to computer technology.
Moreover, “[i]t has been clear since Alice that a claimed invention’s use of
the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech LLC, 899 F.3d at 1290. The claimed invention is, at
most, an improvement to the performance of the abstract idea, in this case,
an improvement in planning and executing a travel itinerary, i.e., certain
methods of organizing human activity. (See supra; see also 2019 Guidance
at 52.)
Taking the claim elements separately, the functions performed in
claim 50 by the generic components are purely routine and conventional.
Considered as an ordered combination, the generic components of
Appellant’s claimed invention add nothing that is not already present when
the limitations are considered separately.
For the reasons discussed above, we are not persuaded that the
Examiner erred in rejecting claim 50.
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Claim 54
Claim 54 depends from claim 50 and recites the device “being further
configured for using said sound generator for providing alarm prompts for
giving notice of when a visit at one site of said sequence of sites is scheduled
to end, and movement towards a next site in said sequence of sites is to
begin.”
As with claim 50, the claim does not recite technological
implementation details or any asserted improvement to computer
technology. And Appellant does not assert that Appellant invented using a
sound generator to provide an alarm.
Taking the claim elements separately, the functions performed in
claim 54 by the generic components are purely routine and conventional.
Considered as an ordered combination, the generic components of
Appellant’s claimed invention add nothing that is not already present when
the limitations are considered separately.
For the reasons discussed above, we are not persuaded that the
Examiner erred in rejecting claim 54.

Claim 56
Claim 56 recites: “The travel itinerary device according to claim 54,
wherein each of said buttons comprises a mechanical button configured to be
manually depressed to be actuated.”
Appellant argues:
Claim 56 improves the relevant technology, because it no
longer may constitute utilization of the claimed inventive
programming on a conventional mobile computing device.
Conversely, it is now explicitly defined and limited to be a new
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“non-conventional” custom electromechanical device (i.e., the
first device embodiment shown in FIGS. 1-68 and/or the second
device embodiment shown in FIG. 69), in which “each of said
buttons comprises a mechanical button configured to be
manually depressed to be actuated.” The unique and custom
apparatus of claim 56 is particularly configured to assist the
traveler through its buttons that are easily accessed, which
provide diverse functionality for both the planning and executing
of a travel itinerary that may thereby be created, as defined in
claims 1, 2, 3, 4, 6, 7, 8, 36, 50, and 54.

(Appeal Br. 25.)
We do not find Appellant’s argument persuasive. As an initial matter,
we note that Appellant is not claiming to have invented mechanical buttons
or the use of mechanical buttons for communicating selections. Even if we
consider Appellant’s claimed use of mechanical buttons to be limited to a
particular technological environment, “limiting the claims to [a] particular
technological environment . . . is, without more, insufficient to transform
them into patent-eligible applications of the abstract idea at their core.”
Elec. Power Grp., 830 F.3d at 1354.
Nor do we find persuasive Appellant’s argument that the “buttons . . .
are easily accessed.” The claim does not recite accessibility and thus
Appellant’s argument is not commensurate with the scope of the claim.
Nor do we find persuasive Appellant’s argument that “[t]he claimed
device with its customized mechanical buttons and functionality constitutes
the ‘improvement’ noted in Enfish that is explicitly ‘defined by reference to
“physical” components’ and ‘particular physical features.’” (Appeal Br. 25.)
Enfish explained that simply because “the improvement is not defined by
reference to ‘physical’ components does not doom the claims.” Enfish, LLC,
822 F.3d at 1339. Indeed, the claims in Enfish were “specifically directed to
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a self-referential table for a computer database.” Enfish, 822 F.3d at 1337.
That is, unlike claim 56 here, in Enfish, “the plain focus of the claims [was]
on an improvement to computer functionality itself, not on economic or
other tasks for which a computer is used in its ordinary capacity.” Id. at
1336.
For the reasons discussed above, we are not persuaded that the
Examiner erred in rejecting claim 56.

Claim 57
Claim 57 recites:
57. The travel itinerary device according to claim 54, wherein
said viewing screen comprises a touch screen; and wherein each
of said buttons comprise a graphical button displayed in a
graphical user interface on said touch screen, each said graphical
button configured to be actuated by touching its digital
appearance on said touch screen.

Appellant argues that “[t]he inventive programming of claim 57
improves the relevant technology.” (Appeal Br. 25.) We are not persuaded
of error.
Claim 57 does not recite “a particular way of programming or
designing the software . . . , but instead merely claim[s] the resulting
system[].” Apple, Inc., 842 F.3d at 1241. It does not recite inventive
programming, but simply desired results. This is fatal to Appellant’s
argument. Nor are we persuaded that the conventional use of a touch screen
to input information is an improvement to computers or technology. See
Trading Techs. I, 921 F.3d at 1093. Therefore, for the reasons discussed
above, we are not persuaded that the Examiner erred in rejecting claim 57.

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Claim 15
Independent claim 15 recites subject matter similar to that of claim 1.
However, “the method of claim 15 does not recite the ‘buttons’ found in
claim 1.” (Appeal Br. 26.)
Appellant argues that “[t]he inventive method . . . utilizes ‘a portion of
said sites in said respective list of sites in each of said selected two or more
additional templates’ in accordance with the selected ‘tour schedule
intensity’ for ‘forming a complete travel itinerary,’ which requires
‘optimizing said sequence of sites.’” (Id.) Appellant further argues that “the
method permits ‘displaying a customizing image screen’” and permits “the
user to form ‘a customized sequence of sites for a complete customized
travel itinerary.’” (Id.)
We do not find Appellant’s argument persuasive. As discussed above
with regard to claim 1, “[i]t has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.” BSG Tech LLC, 899 F.3d at 1290. The claimed
invention is, at most, an improvement to the performance of the abstract
idea, in this case, an improvement in planning and executing a travel
itinerary, i.e., certain methods of organizing human activity. (See supra; see
also 2019 Guidance at 52.)
Moreover, claim 15 does not recite “a particular way of programming
or designing the software . . . , but instead merely claim[s] the resulting
system[].” Apple, Inc., 842 F.3d at 1241. Claim 15 merely recites
functional results to be achieved by any means. For example, claim 15 does
not recite how the method “optimiz[es] said sequence of sites.”
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Claim 15 is “focused on providing information to [the user] . . . , not
on improving computers or technology.” Trading Techs. II, 921 F.3d
at 1384. “Like Electric Power, the purported advance ‘is a process of
gathering and analyzing information of a specified content, then displaying
the results, and not any particular assertedly inventive technology for
performing those functions.’ 830 F.3d at 1354. We thus conclude that the
claim[ is] directed to an abstract idea.” Trading Techs. II, 921 F.3d at 1385.
Taking the claim elements separately, and as discussed above with
regard to claim 1, the functions performed by the generic processor(s),
machine-readable program storage medium, and display screen(s) are purely
routine and conventional. (See, e.g., Spec. 23–24, 49, 75–77.) And
considered as an ordered combination, the generic computer components of
Appellant’s claimed invention add nothing that is not already present when
the limitations are considered separately. Therefore, we are not persuaded
that the Examiner erred in rejecting claim 15.

Claims 48, 49, 51–53, and 55
Dependent claims 48, 49, 51–53, and 55 depend from independent
claim 15. Appellant argues that each of claims 48, 49, 51–53, and 55
“narrows the method of ‘planning a travel itinerary’” (Appeal Br. 27–28) or
“narrows the method for forming the ‘complete travel itinerary’” (id. at 29).
Appellant does not persuasively argue why simply narrowing the scope of
the patent-ineligible subject matter transforms it into patent-eligible subject
matter. As discussed above, “a claimed invention’s use of the ineligible
concept to which it is directed cannot supply the inventive concept that
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renders the invention ‘significantly more’ than that ineligible concept.” BSG
Tech LLC, 899 F.3d at 1290.
We are also not persuaded by Appellant’s argument that claim 55
“goes significantly beyond the abstract idea of just ‘preparing a custom
travel itinerary,’ in the same way that the Federal Circuit determined that the
claimed ‘filtering of content’ in Bascom went beyond the claims that were
considered in Alice.” (Appeal Br. 29.) As discussed above, in BASCOM,
the court determined that “an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces.”
BASCOM Glob. Internet Servs., Inc., 827 F.3d at 1350. The method claimed
in claim 55 does not specify that the recited computer components must be
arranged in a non-conventional manner.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 48, 49, 51–53, and 55.
Claims 32–35, 37–39, and 44
Appellant argues that independent claim 32 recites “patent-eligible
subject matter for the reasons provided hereinabove with respect to claim 1
and claim 15.” (Appeal Br. 31.) For the reasons discussed above with
regard to claims 1 and 15, we do not find the argument persuasive.
Dependent claim 44 is not separately argued and falls with claim 32.
See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues that claims 33, 34, 35, 37, 38, and 39 recite patent-
eligible subject matter for the reasons provided with regard to claims 2 and
48, 6 and 52, 7 and 53, 4 and 51, 8 and 55, and 36 and 55, respectively.
(Appeal Br. 32–33.) For the reasons discussed above with regard to those
claims, we do not find the arguments persuasive.
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Claim 40
Claim 40 depends from claims 32 and 33 and “further narrows the
method for forming the ‘complete travel itinerary’ whereby it further
includes ‘displaying an audio tour screen configured for selecting of one or
more pre-recorded audio tours from among a plurality of audio tours.’” (Id.
at 33.)
Appellant does not persuasively argue why simply narrowing the
scope of the patent-ineligible subject matter transforms it into patent-eligible
subject matter. Also, as discussed above, “a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”
BSG Tech LLC, 899 F.3d at 1290. Nor does Appellant persuasively argue
that, e.g., the image/display screen is being used in anything but a
conventional manner to display information to the user.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 40.

Claims 41, 43, 46, and 47
Dependent claims 41, 43, 46, and 47 depend from independent
claim 32. Appellant argues that each of claims 41, 43, 46, and 47 “further
narrows the method of ‘planning a travel itinerary.’” (Appeal Br. 34–35.)
Once again, Appellant does not persuasively argue why simply narrowing
the scope of the patent-ineligible subject matter transforms it into patent-
eligible subject matter. As discussed above, “a claimed invention’s use of
the ineligible concept to which it is directed cannot supply the inventive
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concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech LLC, 899 F.3d at 1290.
Appellant also argues that the claims “further contribute[] to the
inventive programming.” (Appeal Br. 34–36.) However, these dependent
claims do not recite “a particular way of programming or designing the
software . . . , but instead merely claim[s] the resulting system[].” Apple,
Inc., 842 F.3d at 1241. In other words, these dependent claims do not recite
inventive programming, but simply desired results. Therefore, we do not
find these arguments persuasive.

Claims 42 and 45
Appellant argues that claim 42 recites patent-eligible subject matter
for the reasons provided with regard to claims 3 and 49, and that claim 45
recites patent-eligible subject matter for the reasons provided with regard to
claim 1. (Appeal Br. 34–35.) For the reasons discussed above with regard
to claims 3, 49, and 1, we do not find the arguments persuasive.

The § 103(a) rejections
Claims 1, 15, and 32 – the Erhardt reference
Appellant does not separately argue claims 1, 15, and 32. We select
claim 1 as representative. Claims 15 and 32 will stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
In relevant part, the Examiner finds:
Whitsett et al. in view of Ben-Yehuda et al. does not
disclose said sequence of sites being optimized to include as
many sites as possible in said range of touring hours, for touring
at a destination.
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Erhardt discloses said sequence of sites being optimized
to include as many sites as possible in said range of touring
hours, for touring at a destination ([0005],[0008],[0028]-[0029],
[0055]-[0058]). Therefore, it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify the
invention of Whitsett et al. in view of Ben-Yehuda et al. to
include the method disclosed by Erhardt to maximize the
likelihood of visiting all desired locations within a certain time
frame ([0008]).

(Final Action 11.)
Appellant disagrees and argues that “there is a distinction between
[the] teaching in Erhardt, and the Applicant’s claimed limitation.” (Appeal
Br. 37.) Specifically:
Because only the “visitor” selects “desired exhibits” in
Erhardt, there is no way of ascertaining whether the resulting
schedule has actually been “optimized to include as many sites
as possible,” as claimed herein. If the visitor has under-selected
the number of sites that may reasonably be seen during the
available touring time, the schedule would fail to be
appropriately optimized.
Even the further teaching in Erhardt that “visitors may
prefer to take advantage of pre-packaged routes and schedules”
(¶ [0044]), fails to ensure that the schedule has actually been
“optimized to include as many sites as possible in said range of
touring hours.”

(Id. at 38.)
In relevant part, claim 1 recites (emphasis and some paragraphing
added):
a processor . . . for causing displaying, on said viewing
screen, of one or more image screens permitting selective
planning of said travel itinerary;
a plan itinerary button, an alter itinerary button, and one or
more additional buttons configured, when toggled, for
communicating a selection, from among a plurality of options
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displayed within said one or more image screens, to said
processor, and for permitting selective entry of one or more
characters;
wherein said selective planning comprises
actuating said plan itinerary button for causing
displaying of a first image screen . . . , said first image
screen configured for selecting a first itinerary template
and one or more additional itinerary templates from
among a plurality of said additional templates,
said first itinerary template comprising a template
for entering of a number of days for said itinerary, an
arrival city and a departure city, and for selecting of one
of a plurality of graduated levels of a tour schedule
intensity, each of said graduated levels of said tour
schedule intensity comprising a range of hours for touring
for each of said number of days;
each of said plurality of additional itinerary
templates comprising a respective list of sites relating to a
category of said additional template, with a portion of said
list of sites in each said selected one or more additional
itinerary templates being used to form a complete travel
itinerary,
said complete travel itinerary comprising a
sequence of sites, for each of said number of days, with
said sequence of sites being optimized to include as many
sites as possible in said range of touring hours, for touring
at the destination.

Erhardt teaches “a method and apparatus for scheduling and routing.”
(Erhardt, Abstract.) In particular, Erhardt teaches that
[a] visitor provides input as to desired locations as well as a time
limit for the overall visit. In one embodiment, the visitor may
also rank the locations in an order of preference. . . . Using this
data, the system provides a schedule and a route for the visitor
designed to satisfy the visitors [sic] desire to visit certain
locations within a certain time frame.

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(Id. ¶ 8.) Erhardt further teaches that “the system uses the information from
the visitor and generates a route/schedule designed to optimize the visit. The
route/schedule attempts to ensure that the preferred exhibits can be seen by
the visitor in the time allotted.” (Id. ¶ 28.)
Appellant’s argument, rephrased, is that if the visitor does not select
enough locations or exhibits to fill the chosen time frame, i.e., “under-
selected the number of sites,” “there is no way of ascertaining whether the
resulting schedule has actually been ‘optimized to include as many sites as
possible.’” (See Appeal Br. 38.) While true, we do not find Appellant’s
argument persuasive. Indeed, rather than distinguishing over Appellant’s
claimed invention, Appellant’s claimed invention would suffer the same
shortcoming. For example, if the user selects two “additional itinerary
templates” and each such additional template includes two sites, and if the
minimum recommended viewing time for each site plus the travel time
between sites, is less than the user’s stated time frame, then there would also
be no way to ascertain if the resulting schedule had been optimized.
Appellant also argues that “it would be inappropriate to combine such
teachings with those of Whitsett.” (Appeal Br. 38.) Specifically, Appellant
argues that “Whitsett teaches away from optimizing the maximum number
of tour sites that may be visited in a given touring period, and instead
teaches producing an itinerary that is entirely driven by and limited by its
cost.” (Id. at 39.)
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
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(Fed. Cir. 1994). “Under the proper legal standard, a reference will teach
away when it suggests that the developments flowing from its disclosures
are unlikely to produce the objective of the applicant’s invention.” Syntex
(U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
Whitsett teaches providing “a travel itinerary comprising several
available products and/or services, for example, so that a user can build and
modify a themed travel itinerary in real-time around a skeleton itinerary
including selected and recommended travel products having a selected
theme.” (Whitsett ¶ 2.) Whitsett teaches that
a user input request for a range of ranked travel packages is
received and, in response to the user input request for a range of
ranked travel packages, a plurality of travel packages are
provided to the user in an order, such as an order of price, length
of stay, or star rating.

(Whitsett ¶ 124.) In other words, Whitsett specifically discloses proffered
travel packages, i.e., potential travel itineraries, not entirely driven by costs.
Thus, we do not agree with Appellant that Whitsett “teaches producing an
itinerary that is entirely driven by and limited by its cost.” (Appeal Br. 39.)
It follows that we do not find persuasive Appellant’s argument that because
Whitsett teaches an itinerary entirely driven by its cost, there is no
motivation to modify the teachings of Whitsett in view of Erhardt.

Claims 1 and 32 – the DeLorme reference
Appellant argues:
Paragraph [0060] of DeLorme only teaches that generic
“[h]ardware and software buttons provide for menus,” while
paragraph [0062] only further teaches use of “menus, toolbars,
and the like- to select, alter and move between alternate screens,
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displays or output modes, as described in more detail
hereinafter ... ”
DeLorme fails to cure the cited deficiency because
[DeLorme] fails to teach or suggest the specific functionality
associated with the herein claimed buttons.

(Appeal Br. 42.) In other words, Appellant’s argument is directed to
whether DeLorme teaches buttons with the specific functionality recited in
the claims.
The Examiner finds that Whitsett teaches, e.g., the functionality of
“accessing an algorithm permitting selective planning of said travel
itinerary” and “using selective access to said database of travel information
for creating a customized sequence of sites for a customized complete
itinerary.” (See Final Action 10.)
DeLorme teaches an
Integrated Routing/Mapping Information System (IRMIS) for
travel planning, travel guidance, and recording travel locations
and paths during business or recreational use, particularly in
regard to the linkage of small, memory-limited computing
systems with personal and/or mainframe computers. The
invention may include the capability to provide an interactive
computer travel-planning guide for determining a route between
a user selected travel origin and travel destination following user
selected intermediate waypoints along the way.

(DeLorme ¶ 2.)
Additionally, the Examiner cites to paragraph 60 of DeLorme which
teaches devices with “[h]ardware and software buttons provid[ing] for
menus, paging, and other user selection and manipulation means.” (Id. ¶ 60;
see also Answer 12.) Moreover, the Examiner finds that
it would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the invention of Whitsett et
al. in view of Ben-Yehuda et al. and Erhardt to include the
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convenience of hardware/software buttons to provide itinerary
users with menus, paging, and other user selection and
manipulation means on touchscreens.

(Final Action 12, 17.) In short, the Examiner relies on DeLorme in
combination with Whitsett, Ben-Yehuda, and Erhardt as teaching this claim
limitation.
“[O]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). A reference
“must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). In short, obviousness is more than what is specifically
disclosed in the cited references. “If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). In view of the above, we
do not find Appellant’s argument persuasive.

Claims 3, 42, and 49
Appellant argues:
Claims 3, 42, and 49 are also not obvious because the
combination of prior art references fails to teach or suggest the
claimed “entering of a total number of desired cities for touring
at the destination; and said instructions using a portion of said
list of sites in each said selected additional templates for each of
said desired cities, for adding sites at each of said desired cities
to said sequence of sites.”

(Appeal Br. 43 (emphasis omitted).) Appellant’s argument quotes
essentially all of dependent claim 3. Appellant’s sole specific argument is
that “Ben-Yehuda only teaches in paragraph [0471] that ‘FIG. 130 enables
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cities selection for each country/state chosen,’ but fails to teach the entire
recitation.” (Id.) We do not find this argument persuasive.
In rejecting claims 3 and 42, the Examiner relies on paragraphs 233,
234, 279, 419, 420, and 471, as well as Figures 120 and 130 of Ben-Yehuda.
(Final Action 12–13, 18–19.) In rejecting claim 49, the Examiner
additionally relies on paragraphs 17, 94, and 120 of Whitsett. (Id. at 22.)
And in answering Appellant, the Examiner finds:
Ben-Yehuda discloses in [0233] that, it is now disclosed for the
first time a system for displaying information about a plurality of
travel legs of a multi-leg journey, the system comprising: [0234]
a) an [sic] location interface for specifying at least three locations
associated with a multi-leg journey having at least two travel legs
between said specified at least three locations; [0235] b) a single
leg display interface for displaying information about a single
said travel leg; and [0236] c) a selection mechanism for selecting
one said travel leg from said at least two travel legs, [0237]
wherein said single leg display interface is operative to display
information about said selected travel leg. Ben-Yehuda further
discloses in [0279], generating a route of travel between origin
and destination, including waypoints along the way, based upon
query results and a consideration of scheduling factors,
appointments that cannot be changed, priority, geographical
location, proximity and availability to the public.

(Answer 44.) In view of the above, we are not persuaded that, e.g., the
disclosure in Ben-Yehuda of “generating a route of travel between origin
and destination, including waypoints along the way, based upon query
results and a consideration of [other] factors” (Ben-Yehuda ¶ 278–79), does
not teach “adding sites at each of said desired cities.” (See Answer 44.)
Thus, we disagree with Appellant’s sole argument that Ben-Yehuda only
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teaches cities selection for each chosen country or state.4 (See Appeal
Br. 43.)
In sum, Appellant’s argument does not persuade us that the Examiner
erred in rejecting claims 3, 42, and 49.

Claims 4 and 51
Claim 4 recites:
4. The travel itinerary device of claim 3, wherein said
instructions are configured for optimizing said sequence of sites
for including as many sites as possible in said range of touring
hours, based upon a minimum recommended viewing time for
each of said sites.

The Examiner finds that Ben-Yehuda discloses “provid[ing] said first
itinerary template based upon said selected level of tour schedule intensity to
include a maximum number of sites in said sequential list of sites, within
said range of hours of touring time, based upon a minimum recommended
viewing time for each of said sites ([0322],[0385]).” (Final Action 13; see
also Answer 45.)
Appellant argues that
paragraph [0322] of [Ben-Yehuda] only teaches that “the user
provides a limitation on the types of recreational or tourism
activities for which he wants a recommendation...” Paragraph
[0385] of [Ben-Yehuda] only teaches that “a user specifies a
number, or a minimum number, or a maximum number of

4 To the extent Appellant seeks to use the quotation of claim 3 as an
argument that some other, unspecified, claim elements are not taught by the
cited art, we note that “[a] statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.” 37 C.F.R. § 41.37(c)(1)(iv).
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activities from a given category to be selected and/or scheduled
during a certain time period...”

(Appeal Br. 43.)
We are persuaded of error. We do not find in the cited portions of
Ben-Yehuda a teaching regarding a minimum recommended viewing time
for a site. At best, in the cited portions, Ben-Yehuda teaches that a user may
“specif[y] a number, or a minimum number, or a maximum number of
activities from a given category to be selected and/or scheduled during a
certain time period.” (Ben-Yehuda ¶ 385.) Therefore, we will reverse the
rejection of claim 4. Claim 51 contains similar language and the Examiner
relies on the same portions of Ben-Yehuda. (See Final Action 23.)
Therefore, we will also reverse the rejection of claim 51.

Claims 6–8, 34, 36, 50, and 52–57
In relevant part, claim 6 recites “said list of sites in each of said
additional itinerary templates comprises an ordered list of sites, said ordered
list of sites being ordered according to one or more of: a popularity of said
sites, and a significance of said sites.”
The Examiner finds that “Erhardt discloses arranging said sites within
each said itinerary template into an ordered list of sites . . . according to one
or more of: a popularity of said sites, and a significance of said sites
([0005],[0008],[0028]-[0029],[0055]-[0058]).” (Final Action 14.)
Appellant argues that “only paragraph [0008] of Erhardt teaches any
‘order’ with respect to the ‘desired locations,’ and conversely teaches that
‘the visitor may also rank the locations in an order of preference.’” (Appeal
Br. 44.) Specifically, Appellant argues that
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Erhardt fails to teach or suggest the claimed “additional
templates” that include a “rank ordering” of sites for use in
forming the itinerary, where the “ordering” of the sites within
each “template” is “according to one or more of: a popularity of
said sites, and a significance of said sites... .”

(Id.)
As an initial matter, we note that claim 6, unlike claims 34 and 52,
does not use the term “rank ordering.” However, we do not find that to be
determinative in this case. Claim 6 recites a particular ordering of sites, i.e.,
“according to one or more of: a popularity of said sites, and a significance
of said sites.” Claims 34 and 52 include similar language.
Erhardt discloses that a “visitor may . . . rank the locations in an order
of preference.” (Erhardt ¶ 8.) Appellant’s Specification discloses that “[a]s
with the list of cities, the listing of sites may be ordered according to
different preferences, such as a rank order according to popularity, or
significance, or other categories.” (Spec. 36.) In other words, ranking by
popularity and/or significance is a particular type of ranking. We do not see,
in the cited portions of Erhardt, where there is a teaching of either of these
particular types of ranking.
Therefore, we will reverse the rejection of claims 6, 34, and 52.
Because claims 7, 8, 36, 50, 54, 56, and 57 depend from claim 6, and the
Examiner does not rely on the other cited art to cure this deficiency (see
Final Action 14–15, 23–24, 27–31), we will also reverse the rejection of
claims 7, 8, 36, 50, 54, 56, and 57. Also, because claims 53 and 55 depend
from claim 52, and the Examiner does not rely on the other cited art to cure
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38
this deficiency (see Final Action 20, 29–305), we will also reverse the
rejection of claims 53 and 55.

Claims 2, 33, 35, 37–41, and 43–48
Dependent claims 2, 33, 35, 37–41, and 43–48 are not separately
argued and fall with their respective parent claims. See 37 C.F.R.
§ 41.37(c)(1)(iv).

CONCLUSION
The Examiner’s rejection of claims 1–4, 6–8, 15, and 32–57 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1–3, 15, 32, 33, 35, and 37–49
under 35 U.S.C. § 103(a) are affirmed.
The Examiner’s rejections of claims 4, 6–8, 34, 36, and 50–57 under
35 U.S.C. § 103(a) are reversed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–8, 15,
32–57
101 eligibility 1–4, 6–8,
15, 32–57

1–4, 6–8, 15,
32–35, 37,
42–47, 52, 53
103(a) Whitsett, Ben-
Yehuda, Erhardt,
DeLorme
1–3, 15,
32, 33, 35,
37, 42–47
4, 6–8, 34,
52, 53
15, 48, 49, 51 103(a) Whitsett, Ben-
Yehuda, Erhardt
15, 48, 49 51
36, 38, 39 103(a) Whitsett, Ben-
Yehuda, Erhardt,
DeLorme, Chavez
38, 39 36

5 We note that the Examiner erroneously indicates that claim 55 depends
from claim 54. (See Final Action 29.)
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39
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
40 103(a) Whitsett, Ben-
Yehuda, Erhardt,
DeLorme, Randall
40
41 103(a) Whitsett, Ben-
Yehuda, Erhardt,
DeLorme, Randall,
Bakewell
41
50, 54–57 103(a) Whitsett, Ben-
Yehuda, Erhardt,
DeLorme, Chavez,
Ben-Yitschak
50, 54–57
Overall
Outcome
1–4, 6–8,
15, 32–57

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED