Kenichiro Oi et al.

Patent Trials and Appeals Board

Sep 10, 2019

15041752 - (D) (P.T.A.B. Sep. 10, 2019)

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.
15/041,752 02/11/2016 Kenichiro OI 1946-0802B 4381
60803 7590 09/10/2019
Paratus Law Group, PLLC
1765 Greensboro Station Place
Suite 320
Tysons Corner, VA 22102
EXAMINER
EL-CHANTI, HUSSEIN A
ART UNIT PAPER NUMBER
3663
MAIL DATE DELIVERY MODE
09/10/2019 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 KENICHIRO OI, QUAN WANG,
KOUICHI MATSUDA, and
TAKAYUKI YOSHIGAHARA
____________________

Appeal 2018-002819
Application 15/041,752
Technology Center 3600
____________________

Before: JILL D. HILL, FREDERICK C. LANEY, and
PAUL J. KORNICZKY, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Sony Corporation (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1–19.1 We have jurisdiction
under 35 U.S.C. § 6(b).

We REVERSE.

1 Applicant Sony Corporation is identified as the real party in interest.
Appeal Br. 3.
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THE CLAIMED SUBJECT MATTER
Independent claims 1 (device), 14 (method), and 15 (non-transitory
computer-readable medium) are pending. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. An information processing device comprising:
a global map acquiring unit configured to acquire at least
a part of a global map representing positions of one or more
objects in a real space;
a local map generating unit configured to generate a local
map representing positions of the one or more objects detectable
by a device associated with a user;
a calculating unit configured to compare three-
dimensional position of feature points included in common in the
global map and in the local map, and to calculate a relative
position of the local map relative to the global map based on the
comparison;
a converting unit configured to convert the position data
of one or more objects included in the local map into data of the
global map; and
an updating unit configured to update at least a portion of
the global map based on the local map, by replacing the updated
portion of the global map with a corresponding portion of the
local map at a predetermined period of time, or by adding the
corresponding portion of the local map to the global map,
wherein the position data further includes a time stamp
indicating a point in time when the position data is generated,
and
wherein the global map acquiring unit, the local map
generating unit, the calculating unit, the converting unit, and the
updating unit are each implemented via at least one processor.

App. Br. 16 (Claims Appendix).

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REJECTION
Claims 1–19 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.

ANALYSIS
The Examiner rejects claims 1–19 under 35 U.S.C. § 101, finding that
the claims are directed to an abstract idea without significantly more. See
Final Act. 2. In particular, the Examiner finds that the claimed system is
directed to map updating, which concept is “an idea of itself” and “an
abstract idea.” Id. The Examiner also finds that the claim limitations “are
merely instructions to implement the abstract idea on a computer and require
no more than a generic computer to perform generic computer functions that
are well-understood, routine and conventional activities.” Id. According to
the Examiner, the processor recited in claim 1 does not satisfy the inventive
concept requirement, because it can be “merely a general purpose computer
[performing] basic computer functions that are well-understood routine and
conventional.” Id. at 3.
The Examiner further finds that “[n]othing in the claims seems to
improve the functioning of the computer itself or effect an improvement in
another technology or technical field . . . [n]or do the claims solve a problem
unique to the Internet.” Id. at 2. The Examiner then finds that “[t]he claims
do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because they are merely an
abstract idea with additional generic computer elements.” Id. at 3.
The Examiner then finds that “[t]he concept of map updating is a
well-known and conventional step in the licensing field,” such that
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“[m]onopolization of this well-known and vital concept ‘through the grant of
a patent might tend to impede innovation more than it would tend to promote
it, thereby thwarting the primary object of the patent laws.’” Id. at 3–4
(citing Alice Corp. Pty, Ltd. V. CLS Bank Int’l, 573 U.S. 208, 216 (2014)).
Appellant argues that the claimed time stamp, and the recited
detecting, calculating, and updating, amount to “significantly more than the
judicial exception due to being more than just an abstract idea with
additional generic computer elements,” and “affect an improvement to
another technology or technical field, and are not “conventional or routine.”
Appeal Br. 13–14.
The Examiner responds that the claims, despite reciting detecting,
comparing, calculating, and updating, are still directed to the abstract idea of
updating a map, and are similar to comparing and collecting information
(see Classen v. Biogen, 659 F.3d 1057, 1068 (Fed. Cir. 2011) (reviewing
effects of known immunization schedules was directed to an abstract idea,
but immunizing based thereon made claims directed to patent eligible
subject matter)), and collecting, analyzing and displaying certain results of
the collection and analysis (see FairWarning v. Iatric, 839 F.3d 1089, 1093–
94 (Fed Cir 2016) (collecting information, analyzing information “by steps
people go through in their minds, or by mathematical algorithms,” and
presenting results of such data collection and analysis, without more, is an
abstract idea)) which have been found by the courts to be abstract ideas.
Ans. 4.
The Examiner further responds that even if the claims solve “a
technical problem including enabling a change in position of a physical
object in the real space to be more quickly and accurately shared among
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users,” the claims use “generic functional language to achieve the solutions,”
and “[n]othing in the claim requires anything other than conventional
computer/components operating according to their ordinary functions.” Id.
Thus, the Examiner contends, the claims recite “mere instructions to
implement the abstract idea on a computer,” and “[t]aking these computer
limitations as an ordered combination adds nothing that is not already
present when the elements are taken individually,” so that the claims “do[]
not amount to significantly more than the recited abstract idea and the
additional limitations add no inventive concept.” Id. at 5.
Appellant replies that the claims are directed to “improvements to a
computer-related technology,” that “‘enable a change in position of a
physical object in the real space to be more quickly and accurately shared
among user.’” Reply Br. 4. Appellant further argues that the combined
claim elements are “clearly not a fundamental or well-known practice, and
the Examiner has not properly considered the elements of the claim that go
beyond mere comparing, collecting, analyzing, and displaying of
information using conventional or routine configurations.” Id. at 6.
According to Appellant, the Specification explains how the claim elements
“improve[] a computer technology by providing a particular solution to a
problem or particular way to achieve a desired outcome.” Id. at 7–8 (citing
Spec. ¶¶ 5, 29–30, 55–62). Appellant contends that “detection and
comparison of physical three-dimensional positions of feature points
between a global map and a local map, along with the calculation of relative
position based on the comparison and updating the global map,” as recited in
the claims, “represent improvements to a technical solution of map sharing
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related to tangible objects at least by the manner in which feature points are
utilized in the claims.” Id. at 8
Section 101 of the Patent Act provides, “[w]hoever 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. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “‘[l]aws of nature, natural
phenomena, and abstract ideas”’ are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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.”); see also Bilski v. Kappos, 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). If the
claim is “directed to” an abstract idea, we turn to the second step of the Alice
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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).
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Revised Guidance”). Under that guidance, we first look to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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:
(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, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See 2019 Revised Guidance. “The question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
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skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
Step 2A, Prong One
Under the 2019 Revised Guidance, we begin our analysis by first
turning to Alice step one (Step 2A of the 2019 Revised Guidance).
Claim 1 recites an information processing device including a global
map acquiring unit, a local map generating unit, a local-global map relative
position calculating unit, a local-to-global map position data converting unit,
and a global map updating unit, wherein the position data includes a time
stamp. Appeal Br. 16 (Claims App.).
We agree with the Examiner that the claims, despite reciting
acquiring, generating, comparing, converting, and updating, are still directed
to updating a map, which is similar to comparing, collecting, and analyzing
information, and displaying certain results of the collection and analysis,
which have been found by the courts to be abstract ideas (Ans. 4).
Rather than refuting the Examiner’s determination that map updating
is similar to comparing, collecting, and analyzing information, and
displaying certain results of the collection and analysis, which have been
found by the courts to be abstract ideas, Appellant argues that the claims
recite additional elements or “significantly more” than the judicial
exception, for example, a time stamp and detection and comparison of
feature points for global and local map correlation. Appeal Br. 13–14.
Appellant also argues that the claim elements improve computer-related
technology. Reply Br. 4. We consider these arguments below.
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Step 2A, Prong Two – Practical Application
Because we determine that the claims recite an abstract idea, we turn
to prong two of the first step of the Alice analysis and consider whether these
claims integrate this abstract idea into a practical application. See 2019
Revised Guidance, 84 Fed. Reg. 51. In doing so, we consider whether there
are any additional elements beyond the abstract idea that, individually or in
combination, “integrate the [abstract idea] into a practical application, using
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.” See 2019 Revised Guidance, 84 Fed. Reg. 54–55.
Appellant also argues that the claim elements improve computer-
related technology. Reply Br. 4. Appellant’s assertion, however, fails to
explain how any actual functioning of the computer is improved. We do not
find this unsupported assertion persuasive.
We agree with the Examiner that the claims require only a generic
computer performing routine steps. Final Act. 2. “[T]he relevant question is
whether the claims here do more than simply instruct the practitioner to
implement the abstract idea . . . on a generic computer.” Alice, 573 U.S. at
225. They do not.
We determine that the claimed controller does not integrate the recited
abstract ideas into a practical application. See 2019 Revised Guidance, 84
Fed. Reg. 55 (explaining that courts have identified “merely us[ing] a
computer as a tool to perform an abstract idea” as an example of when a
judicial exception may not have been integrated into a practical application).
Further, we conclude that the claims do not integrate the judicial exception
into a practical application, and thus are directed to the judicial exception.
In particular, we determine the do not recite:
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(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a particular
machine;
(iv) a transformation or reduction of a particular article to a different
state or thing; or
(v) other meaningful limitations beyond generally linking the use of
the abstract idea to a particular technological environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h).
Step 2B –– Inventive Concept
Finally, we consider whether claims 1 and 8 incorporate an inventive
concept, that is, whether any additional claim elements “‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217 (quoting Mayo, 566 U.S. at 78, 79). This requires us to evaluate
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append [] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” See 2019 Revised Guidance, 84 Fed. Reg. 56.
Appellant argues that the claims recite additional elements or
“significantly more” the judicial exception. Appeal Br. 13–14. Appellant
argues that the additional elements include (1) the time stamp, (2) the
detecting, calculating, and updating steps, and (3) the detection and
comparison of physical three-dimensional positions of feature points
between the global and local map, along with calculation of relative position
based on the comparison. Appeal Br. 13; Reply Br. 8. The Examiner
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provides no analysis or evidence that these additional elements, particularly
detection and comparison of feature point positions between the global and
local map, along with calculation of relative position based on the
comparison are well known or conventional, or fail to pose a meaningful
limit on the map updating. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed.
Cir. 2018) (whether the purported improvements were more than well-
understood, routine, conventional activity previously known in the industry
is a factual determination). While map updating may be known, the
Examiner provides no evidence that comparing feature point positions to
determine a relative position of global and local maps is well-known and
fundamental in the field.
The Examiner’s analysis, therefore, fails to consider the claim
elements individually, and the finding that “[t]he concept of map updating is
a well-known and conventional step in the licensing field and therefore the
abstract idea is deemed fundamental in this field” (Ans. 3), fails to consider
the claim elements individually and completely, and is not supported by
substantial evidence.
Considering the claims as a whole, we determine that the additional
elements recited in the claims provide “a specific limitation or combination
of limitations that are not well-understood, routine, conventional activity in
the field.” See 2019 Revised Guidance, 84 Fed. Reg. 56. For this reason,
we do not sustain the rejection of the claims as directed to non-statutory
subject matter.

DECISION
The Examiner’s decision rejecting claims 1–19 is reversed.
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REVERSED