RINCOVER, Aaron et al.

Patent Trials and Appeals Board

Jul 23, 2020

2019001262 (P.T.A.B. Jul. 23, 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.
13/274,126 10/14/2011 Aaron RINCOVER 064359/454430 8508
139885 7590 07/23/2020
HERE Global/Alston & Bird
Bank of America Plaza
101 South Tryon Street, Suite 4000
Charlotte, NC 28280-4000
EXAMINER
BLACK, LINH
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
07/23/2020 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte AARON RINCOVER,
TOMASZ DOBROWOLSKI, and ANDREA GIAMMARCHI
________________

Appeal 2019-001262
Application 13/274,126
Technology Center 2100
________________

Before BRADLEY W. BAUMEISTER, JOHN F. HORVATH, and
SCOTT RAEVSKY, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–5, 7–9, 11–19 and 49–52, which constitute all of the
pending claims.1 Appeal Br. 7–15. These claims all stand rejected under
35 U.S.C. §§ 101 and 103. We have jurisdiction under 35 U.S.C. § 6(b).
The Board conducts a limited de novo review of the appealed rejections for
error based upon the issues identified by Appellant, and in light of the
arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI 2010) (precedential). 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 HERE
Global B.V. Appeal Brief filed June 6, 2018 (“Appeal Br.”), 2.
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THE CLAIMED INVENTION
Appellant describes the invention as follows:
An approach is provided for presenting search results in
an active user interface element at specific location in a user
interface that correspond to the desired information with respect
to user interface search element. An element of a user interface
receiving a search parameter enables processing of the search
parameter to yield location information of the desired
information. The location or locations of the desired information
are then presented to a user on the user interface.
Abstract.

THE SECTION 101 REJECTION
Claims 1–5, 7–9, 11–19, and 49–52 stand rejected under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter. Final Act. 5–10.2
Independent claim 1, representative of the appealed claims,3 is reproduced
below with paragraph designators added for clarity and emphasis added to
the claim language that recites an abstract idea:
1. A method comprising
[(a)] receiving an indication of a first user input specifying one
point defining a location on a map-based user interface;
[(b)] causing display of a search input user interface element at
the one point on the map-based user interface;

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
October 19, 2017 (“Final Act.”); the Examiner’s Answer mailed October 1,
2018 (“Ans.”); and the Reply Brief filed November 26, 2018 (“Reply Br.”).
3Appellant argues the section 101 rejection of all of the appealed claims
together as a group. Appeal Br. 7–11. Accordingly, we select independent
claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
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[(c)] receiving a second user input within the search input user
interface element; and
[(d)] generating a search query that includes as search
parameters: the location of the search input user interface
element on the map-based user interface, and the second user
input received within the search input user interface displayed at
the one point on the map-based user interface.
Appeal Br. 16 (Claims App.).
Examiner’s Determinations
The Examiner finds that the independent claims “are directed to an
interactive map-based user interface where the user can point to a location
and enter a search in a search box displayed on the location map to search
for products/services etc. in relat[ion] to said location.” Final Act. 5. The
Examiner determines that Appellant’s claimed subject matter “is similar to
other ideas found to be abstract by the courts.” Id. at 5–6 (citing Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) for the
proposition that claims directed towards merely collecting information,
analyzing the collected information, and displaying certain results of the
collection and analysis do not add significantly more to an abstract idea).
The Examiner also finds, “[t]he claims recite the additional limitation
of ‘an apparatus comprising at least one processor’, ‘a memory[,]’ and
‘a computer program product comprising at least one non-transitory
computer-readable medium.” Final Act. 7. But the Examiner determines
that these additional elements do not add significantly more to the abstract
idea because these elements “are recited at a high level of generality and are
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recited as performing generic computer functions routinely used in computer
applications.” Id.
Appellant presents various arguments in relation to the Examiner’s
determinations. Appeal Br. 7–15; Reply Br. 1–4. We address these
arguments in the Analysis section, below.
Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. 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. Alice Corp. 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 Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (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.”); 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
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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)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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
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 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. at 191 (citing
Benson and Flook) (citation omitted); see also, 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 turn 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
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concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal 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,
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.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the U. S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1.
Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
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, [and] 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.
2019 Guidance, 84 Fed. Reg. at 56.
Analysis
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54.
Limitation (d) recites “generating a search query that includes as
search parameters: the location of the search input user interface element on
the map-based user interface, and the second user input received within the
search input user interface displayed at the one point on the map-based user
interface.” Aside from any use of a computer receiving the user inputs,
generating a search query in this manner reads on generating a search based
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on a person pointing to a location on a map with her finger and saying that
she is looking for a restaurant close to that location. That is, the claimed
search-generating limitation recites a mental process, such as an evaluation
or judgment that can be performed in the human mind. The 2019 Guidance
expressly recognizes such mental processes as constituting patent-ineligible
abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52; see also Move Inc. v Real
Estate Alliance, 721 Fed. Appx 950, 954 (Fed. Cir. 2018) (finding a claimed
“method for collecting and organizing information . . . and displaying this
information on a digital map that can be manipulated by a user” to recite a
patent-ineligible abstract idea). Accordingly, limitation (d) recites a judicial
exception (an abstract idea) to patent-eligible subject matter under step 2A,
prong 1, of the 2019 Guidance.
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that, individually or in
combination, integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance provides
exemplary considerations that are indicative of an additional element or
combination of elements integrating the judicial exception into a practical
application, such as an additional element reflecting an improvement in the
functioning of a computer or an improvement to other technology or
technical field. Id. at 55; MPEP § 2106.05(a).
The preceding analysis of claim 1’s recited abstract ideas indicates
that claim 1’s “additional elements” only consist of a “display” and a
“search input user interface element” of “a map-based user interface.”
Based on the Specification, these elements simply are generic computer
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elements that implement the abstract idea. See, e.g., Spec. ¶ 106 (listing
various types of generic display and user-interface devices). Nothing in
claim 1 reasonably indicates that anything other than a generic computer
needs to be used to carry out the abstract ideas that are noted in the prong-
one analysis.
Furthermore, limitations (a) through (c) do not integrate the abstract
idea into a practical application because these steps constitute insignificant
extra-solution activity. For example, limitation (a) recites “receiving an
indication of a first user input specifying one point defining a location on a
map-based user interface.” This claim language arguably is written broadly
enough to read on a person receiving an oral indication specifying where to
locate the first user input on a map-based user interface.
However, even if we interpret limitation (a) more narrowly to mean
that a map-based user interface or some other apparatus receives an
indication specifying where to locate the first user input, this limitation still
would not integrate the abstract idea into a practical application. Under such
a narrow interpretation, limitation (a) merely would entail a step of
insignificant pre-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Limitation (b) recites “causing display of a search input user interface
element at the one point on the map-based user interface.” Appellant’s
Specification indicates that the claimed “search input user interface element”
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corresponds to, e.g., the search box 505 of Appellant’s Figure 5. Spec. ¶ 76,
cited in Appeal Br. 4. As such, limitation (b) merely requires that the
interface element, such as a search box, be located at a point selected on the
map-based interface 501.
This limitation, then, merely recites the abstract idea of conveying
information visually in a particular manner, coupled with the insignificant
extra-solution activity of doing so on a generic computer display. That is,
limitation (b) merely recites the location on the computer display to be used
to display the user interface element and the location to be used in the
location based search query of limitation (d). In Move, Inc. v. Real Estate
Alliance Ltd., 221 F. Supp. 3d 1149, 1159 (C.D. Cal. 2016), aff’d, 721 Fed.
Appx. 950 (Fed. Cir. 2018), a patentee claimed a method for collecting and
organizing information about available real estate properties and displaying
this information on a digital map that can be manipulated by the user. Id. at
1154. In granting summary judgment that the claims were invalid under
35 U.S.C § 101 (id. at 1165), the court reasoned, “if the essential features of
the claim can be implemented within the human mind or with pen and paper,
the claim is directed to an abstract idea.” Id. at 1159 (citing CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011));
see also, Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed.
Cir. 2019) (a claim that “focuse[s] on providing information . . . in a way
that helps [a human] process information more quickly,” or analogously,
with less ambiguity, does not recite some manner of “improving computers
or technology.”); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in light of the
specification, requires anything other than off-the-shelf, conventional
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computer, network, and display technology for gathering, sending, and
presenting the desired information.”).
Limitation (c) recites “receiving a second user input within the search
input user interface element.” This limitation merely recites a data-gathering
step, namely a second input for the location-based search query of
limitation (d), and as such, also merely recites insignificant pre-solution
activity. Accordingly, the additional element of limitation (c) does not
integrate the abstract idea into a practical application for the same reasons
set forth in relation to limitation (a).
Appellant argues that the facts of Electric Power Group, cited by the
Examiner, are distinguishable from the language of the present claims.
Appeal Br. 7–8. Appellant argues that claim 1 is more similar to a claim
found eligible in a non-precedential PTAB opinion in which the Board held
that a claim limited to using a tangible device—a user interface to control
the appearance of information represented on a display—was patent eligible
because the limitations were “sufficient to prevent [that claim] from
monopolizing the abstract idea of visually displaying information.” Appeal
Br. 8 (citing Ex parte Scott, Appeal No. 2019-009834 (PTAB Mar. 12,
2015)).
This argument is unpersuasive for multiple reasons. Primarily,
Ex parte Scott, was a non-precedential Board opinion. As such, that opinion
has negligible persuasive value when compared, for example, to Trading
Techs., 921 F.3d 1084. In Trading Techs., our reviewing court held claims
to be patent ineligible where the claims “recite a purportedly new
arrangement of generic information [that] assists traders in processing
information more quickly.” Id. at 1093. The Trading Techs. court held that
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a claim “focused on providing information . . . in a way that helps [a human]
process information more quickly,” or analogously, with less ambiguity,
does not recite some manner of “improving computers or technology.” Id. at
1384. Where an “invention makes the trader faster and more efficient, not
the computer . . .[, it] is not a technical solution to a technical problem.” Id.
at 1090.
Regarding Appellant’s supporting argument concerning the lack of
preemption, we recognize that the Supreme Court has described “the
concern that drives this exclusionary principle [i.e., the exclusion of abstract
ideas from patent eligible subject matter] as one of pre-emption.” Alice,
573 U.S. at 216. However, characterizing preemption as a driving concern
for patent eligibility is not the same as characterizing preemption as the sole
test for patent eligibility. As our reviewing court has explained: “The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa, 788 F.3d at 1379.
For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the functioning of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor does Appellant
persuasively demonstrate that claim 1 is directed to a particular machine or
transformation, or that claim 1 adds any other meaningful limitations for the
purposes of the analysis under Section 101. MPEP §§ 2106.05(b), (c), (e).
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Accordingly, Appellant does not persuade us that claim 1 integrates the
recited abstract ideas into a practical application within the meaning of the
2019 Guidance. See 2019 Guidance, 84 Fed. Reg. at 52–55.
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 84 Fed. Reg. at 56;
MPEP § 2106.05(d).
Appellant’s Specification indicates that the display, including a map-
based user interface and a search input user interface element, as recited in
claim 1, are merely well-understood, routine, and conventional. See, e.g.,
Spec. ¶ 25 (“a user may utilize a user device (e.g., computers, mobile
devices, PDAs, etc.) to search for and/or request information and/or content
items available over the Internet.”); ¶ 27 (describing submitting a search
query via a UI search element as conventional); ¶ 48 (discussing how the
invention can use conventional global positioning satellites and conventional
approaches of 3D modeling to create the map information).
Furthermore, Appellant’s Specification does not indicate that
consideration of these conventional elements as an ordered combination
adds any significance beyond the additional elements, as considered
individually. Rather, Appellant’s Specification indicates that the invention
is directed to an abstract idea that is made more efficient with generic
computer components—presenting search results in an active user interface
element in an efficient and effective manner. Spec. ¶¶ 1, 2.
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For these reasons, we determine that claim 1 does not recite additional
elements that, either individually or as an ordered combination, amount to
significantly more than the judicial exception within the meaning of the
2019 Guidance. 84 Fed. Reg. at 52–55; MPEP § 2106.05(d).
CONCLUSION:
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. We,
likewise, sustain the 101 rejection of claims 2–5, 7–9, 11–19, and 49–52,
which Appellant does not argue separately. Appeal Br. 11.

THE SECTION 103 REJECTION
The Bases of Rejection
Claims 1–5, 7, 9, 11–17, 19, 49, and 50 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Florance (US 2005/0203768; published
Sept. 15, 2005) and Tseng et al. (US 2010/0100839; published Apr. 22,
2010). Final Act. 11–20.
Claims 8 and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Florance, Tseng, and Nevins (US 2009/0164439 Al;
published June 25, 2009). Final Act. 20.
Determination and Contentions
The Examiner finds that Florance teaches most of the limitations of
independent claim 1, but
Flor[a]nce does not explicitly teach: causing display of a search/
communication box at the one point on the map-based user
interface; the location of the search input user interface element
on the map-based user interface, and a second user input received
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within the search input user interface displayed at the one point
on the map-based user interface.
Final Act. 13.
We understand the Examiner’s position to be that Florance does not
teach, inter alia, “generating a search query that includes as a search
parameter[,] the location of the search input user interface element on the
map-based user interface,” as claimed. We reach this conclusion, in part,
because the Examiner next finds,
Tseng discloses
causing display of a search/communication box at the one
point on the map-based user interface; the location of the
search input user interface element on the map-based user
interface, and a second user input received within the search
input user interface displayed at the one point on the map-
based user interface.
Id. (citing Tseng ¶¶ 8, 28, 53, 67, 82; Figs. 1, 4).
The Examiner subsequently restates how the cited references’
respective teachings are being interpreted:
Florance does teach a map-based user interface where [a] user
can identify a location/region on a map and specify[] criteria by
which to search for, for example, properties or restaurants within
that region, the search area and search results are overlaid on a
map of either a geographic area or an aerial photographic view
of the geographic area.
The teachings of Tseng were relied upon to further teach
the search input user interface element or the second user input
box is displayed on the one point or first user input/selected
location on the map-based interface.
Ans. 9–10.
Appellant argues, inter alia, that Florance does not teach “receiving
an indication of a first user input specifying one point defining a location on
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a map-based user interface.” Appeal Br. 11. Appellant also argues that
Florance does not use a map point in a search query because “[t]here is no
‘point’ specified by an indication of a first user input that corresponds to a
location that is used for a search query.” App. Br. 12
Appellant further argues that Tseng fails to teach that which
[t]he Final Office Action admits . . . that Florance does not teach
or suggest[:] “causing display of a search input user interface
element at the one point on the map-based user interface; the
location of the search input user interface element on the map-
based user interface, and a second user input received within the
search input user interface displayed at the one point on the map-
based user interface.”
Appeal Br. 13 (citing Final Act. 7).
According to Appellant,
Tseng merely teaches providing for presentation of a search box
in the display overlaid on a map. The location of the search box
on the display has no influence on the search that is conducted
using the search box. Tseng clarifies that the location/position
of the search box within the display has no influence on the
search.
Appeal Br. 13. Appellant reiterates, “the search box of Tseng is merely
presented over a map in some example embodiments; however, the location
of the pop-up has no influence over how the search is conducted.” Id.
(citing Tseng ¶ 53).
Central to Appellant’s arguments is the premise that neither of the
cited references teaches or suggests generating a search query based on the
claimed “point” defining a location, as defined by Appellant’s Specification:
“the system 100 can present a search element at a point within
the augmented reality display that is most relevant to the search
(e.g., at a point corresponding to a location from which to initiate
a location based query).” This point in the map-based user
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interface is the location where the search input user interface
element is presented, and the point defines the location that is
used as one of the parameters of the search query.
Reply Br. 3 (citing Spec. ¶ 28).
Analysis
Appellant’s Specification indicates that a “point on a map-based user
interface” is not limited to an exact GPS coordinate or single pixel of a map-
based user interface, but that the “point,” instead, can correspond to larger
geographical areas, including locations at least as large as cities:
In one embodiment, [search] information may be
associated with location information including, for instance,
geographical or physical location of the user and/or a location
of specified points of interest (POIs) by the user. Further, the
information may be associated with one or more categories
specified by a service provider and/or a database provider. For
example, a user wishes to search for restaurants based on a
particular location (e.g., a user location, at a given city, etc.), a
category (e.g., Italian food) and/or other parameters, creates and
submits a search query to a service provider (e.g., a search
engine) via a user interface (UI) (e.g., typing into a text box on a
header of a web page, a search box on a side panel of the UI, a
map application, via audio interface, etc.) on the user device.
Further, available search results from the service provider may
be presented to the user via the UI on a map application and/or
may be listed with text, flags, points, pins, etc. on the map.
Spec. ¶ 25 (emphasis added).
Appellant’s Specification also explain that “receiving an indication of
a first user input specifying one point defining a location on a map-based
user interface,” as recited in limitation (a), reads on a user clicking, within a
map of the United States, for example, on a point specifying a geographic
region, such as the waterfront region of San Francisco. Spec. ¶ 25. We
understand the step of “causing display of a search input user interface
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element at the one point on the map-based user interface,” as recited in
limitation (b), to read on displaying a search input user interface at that
specified point (e.g., the waterfront geographic region of San Francisco) on
the map-based user interface. See Appellant’s Figure 5 (depicting a
specified geographic region of San Francisco 507).
Furthermore, Appellant’s Specification also describes the act of
displaying a “search user interface element at the one point on the map-
based user interface,” as follows:
In step 303, the runtime module 905 causes, at least in part,
a rendering of a search user interface element at the at least one
point. In one embodiment, a search UI element is rendered at the
at least one point. For example, a UI element is presented to the
user for entering text wherein the UI element is substantially at
the same location as the first UI element, wherein the user
interface includes, at least in part, a selection of one or more
category-based search terms.
Spec. ¶ 63 (emphasis added).
That is, Appellant’s Specification defines rendering a search UI
element “at the at least one point” as broadly including placing the UI
element “substantially at the same location” as the selected point on the map.
Id. Appellant does not point to any objective definition for what it means to
be “substantially at the same location.” See generally Appeal Br. Under the
broadest reasonable interpretation, then, we see no reason that would
preclude the claim language from reading on displaying a search box
anywhere within the map-based interface near a selected geographic area (as
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opposed to, for example, having the search box disposed in a header area of
the screen, outside of the map-based interface).4
Based on the claim interpretations noted above, Appellant’s
arguments are unpersuasive. Appellant does not dispute the Examiner’s
finding that Florance teaches a polygonal or click-and-drag-radius search
tool that can be used to define a region or “one point defining a location on a
map-based user interface.” Appeal Br. 11–13; Final Act. 11–13. Thus,
contrary to Appellant’s arguments, Florance does teach “a user input that
specifies ‘one point defining a location on a map-based user interface’,” i.e.,
the point identified in the click-and-drag radius search tool. Appeal Br. 11–
12; Florance ¶¶ 547–49. Florance further teaches generating a search query
based on that point. Florance ¶¶ 548–49.
Likewise, Appellant acknowledges the Examiner’s finding (Final
Act. 13–14) that Tseng teaches displaying a Google search dialog box within
a map-based user interface 404. Appeal Br. 13 (“the search box of Tseng is
merely presented over a map”). Appellant only argues, “the location of the
pop-up [search box] has no influence over how the search is conducted.” Id.
But the Examiner relies on Florance, not Tseng, for performing a
location-based search. See Final Act. 12–13. The Examiner relies on Tseng
merely for displaying a search box (second user interface element) near the
point selected for the location based search. Id. at 13–14.

4 Any future arguments that the claim language must be interpreted narrower
than outlined above may raise questions of whether the metes and bounds of
the claim language “at the one point” can be reasonably ascertained because
it may be insufficiently clear how close a search input user interface element
would have to be to a point to reasonably be considered to be “substantially
at the same location.”
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As explained above, Appellant’s Specification does not indicate that
the claim language means that the search box 505 must be displayed at the
exact coordinates of the map point identified by the first user input. Rather,
Appellant’s Specification indicates that the claim language means that the
search box is displayed near that point, and Tseng discloses displaying a
search box in a map-based user interface and using the search box to receive
input to perform map-based searches:
a map search box 108 may appear over or near the map shown in
display 102 so that the user may input an address or other
appropriate information. The map search box 108 may be
context-dependent such that user-entered search queries are used
to find maps, locations, and address information pertaining to the
mapping application. That is, the map search box 108 may
search a map database.
Tseng ¶ 33.
We, therefore, affirm the Examiner’s obviousness rejection of
independent claim 1 and of claims 2–5, 7, 9, 11–17, 19, 49, ad 50, which
Appellant does not argue separately. Appeal Br. 13–14.
Dependent Claim 8
Dependent claim 8 reads as follows: “The method of claim 1,
wherein the user interface is a three-dimensional user interface, and the
method further comprises causing display of one or more results with a z-
axis displacement based on a geographic hierarchy.”
The Examiner relies on the combination of Florance, Tseng, and
Nevins to teach these additional features. Final Act. 20. More specifically,
the Examiner initially relies on Nevins to teach a three dimensional map-
based interface, with the z-axis representing a third dimension. Id. The
Examiner subsequently clarifies that Florance additionally teaches
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“display[ing] a portion of a map with different geographical regions in a
selection box for a user to select a location/geographical region in order to
initiate a search.” Ans. 13 (citing Florance, Fig. 117).
Appellant argues that the Examiner admits that neither Florance nor
Tseng teaches the language of claim 8, and Appellant further argues that
Nevins is similarly deficient. Appeal Br. 14. According to Appellant,
Nevins does not teach search results being provided for display “with a z-
axis displacement based on geographic hierarchy.” Id. This is so, Appellant
argues, because “[t]he ‘z-axis’ of Nevin[s] is described with respect to a
timeline, such that a distance along the z-axis represents a point in time.” Id.
Before addressing the merits of the rejection, we first must determine
the meaning and scope of the claim. In re Geerdes, 491 F.2d 1260, 1262
(CCPA 1974). In the instant case, it is not reasonably clear on its face what
it means to “caus[e] display of one or more results with a z-axis
displacement based on a geographic hierarchy.” Furthermore, Appellant
does not reasonably explain in its Arguments section of the Appeal Brief
what this language means. See Appeal Br. 14–15. We, therefore, look to
Appellant’s Specification for guidance. See Phillips v. AWH Corp., 415
F.3d 1303, 1321 (Fed. Cir. 2005) (en banc) (noting that the Specification is
the single best guide to a disputed term’s meaning and that the Specification
acts as a dictionary when it expressly defines terms recited in the claims).
In the Summary of Claimed Subject Matter section of its Appeal Brief,
Appellant states that paragraphs 41 and 42 of its Specification provide
support for the language of claim 8. Id. 4–5. These cited paragraphs of
Appellant’s Specification read as follows:
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In various embodiments, one or more rendering
characteristics are determined for the one or more results, the
selected at least one result, the one or more other results, the
selected at least one other result, or a combination thereof based,
at least in part, on the hierarchy. For example, a general
geographical location for the one or more results and the one or
more other results can be determined as a first level in a hierarchy
for presentation of the results. In another example, the one or
more results of a first search enquiry can be determined as a
second level in the hierarchy. In various embodiments, the
hierarchy may be determined by the user, a service provider, a
user device configuration and the like. In various embodiments,
the one or more results, the selected at least one result, the one or
more other results, the selected at least one other result, or a
combination thereof in the user interface are rendered based, at
least in part, on the one or more rendering characteristics. For
example, an overall location information for the one or more
results and the one or more other results may indicate that the
results are for a general geographical area (e.g., a city), which
can be presented at a higher position/level on a map application.
In another example, one or more results for a first search query
(e.g., a first POI) may be placed below the general geographical
area (e.g., a city) and above the one or more other results for a
second search query (e.g., a second POI). In various
embodiments, the user interface is a three-dimensional user
interface, and wherein the one or more rendering characteristics
include a z-axis displacement. For example, a map application
renders an image of a geographical area wherein the objects in
the map have different heights (e.g., in the z-axis direction) and
wherein one or more tags are placed at different z-axis levels.
In another embodiment, the system 100 renders the active
search UI element based on the three-dimensional (3D) direction
along which a user device is pointed. More specifically, the
system 100 utilizes augmented reality (e.g., using live or actual
images of a location) or augmented virtual reality (e.g., using 3D
models and 3D mapping information) to present a model of an
map object (e.g., the Earth), seen in a first person view from the
user device's current location so that the locations seen in the
view match corresponding physical locations in reality.
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Although various embodiments are discussed with respect to the
Earth as the three-dimensional map object, it is contemplated that
the approach described herein is applicable to any map object
including any real objects (e.g., a house, road, paper mill, etc.)
and/or virtual objects (e.g., planned architectural models,
renderings of fictitious objects, game environments, fictional
environments, etc. ). In one embodiment, a search is initiated
when the system 100 receives an input from the active search UI
element in, for instance, a user equipment 101 and determines
available location information based, at least in part, on the
input[.] Once the location information is verified and availability
of the location information is determined, the system 100
generates a user interface to present the location information via
the active search UI element as discussed above. By way of
example, the location information may indicate: (1) a location of
a point of interest (POI) that is a result of a search, (2) a location
where the information relating to the item was captured, e.g.,
geo-tagged data, and (3) a location of a provider of the
information, or any other data or information that include or are
otherwise associated with one or more results of the search. It is
also contemplated that the desired information item may be
associated with multiple locations.
Spec. ¶¶ 41–42.
These cited paragraphs provide support for various concepts, such as
presenting search results based on a hierarchy of geographical locations or
based on whether an image of a geographical area is to be rendered in three
dimensions, with tags paced at different z-axis levels. Id. ¶ 41. However,
these cited paragraphs do not disclose providing search results for display
“with a z-axis displacement based on a geographic hierarchy,” as Appellant
argues. See Appeal Br. 14.
Furthermore, the current language of claim 8 does not appear in the
claims, as originally filed—the present language was first added by the
claim amendment associated with the Request for Continued Examination,
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filed February 12, 2015. And, the REMARKS section of that
2015 Amendment does not specify where that amended claim language finds
support in the originally filed Specification. In short, Appellant’s asserted
interpretation of claim 8 raises significant questions of adequate written-
description support under 35 U.S.C.§ 112(a) (pre-AIA § 112, ¶ 1) and
definiteness under 35 U.S.C. § 112(b) (pre-AIA § 112, ¶ 2).
Because of the problems that are associated with interpreting claim 8
in a manner that is consistent with Appellant’s arguments, we, instead,
interpret claim 8 in the only manner we see that makes sense and that is
adequately supported by Appellant’s Specification. Based on cited
paragraphs 41 and 42 of Appellant’s Specification, we understand the claim
language “based on a geographic hierarchy” to be modifying the language
“causing display of one or more results”—not to be modifying the language
“with a z-axis displacement.” That is, we understand claim 8 to mean, “[t]he
method of claim 1, wherein the user interface is a three-dimensional user
interface, and the method further comprises causing display of one or more
results with a z-axis displacement[, and wherein the one or more results is]
based on a geographic hierarchy.”
Based on this interpretation, Appellants arguments are unpersuasive.
As noted above, the Examiner sets forth how the cited combination teaches
these limitations. Final Act. 20; Ans. 12–13. Appellant’s arguments, in
contrast, are not commensurate in scope with claim 8 as we interpret that
claim language.
Moreover, contrary to Appellant’s argument that Nevins “z-axis”
refers to a temporal rather than spatial dimension, Nevins teaches
embodiments in which the z-axis represents a spatial dimension, allowing
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items to be displayed in three-dimensional space. See Nevins ¶ 125
(disclosing “the z-axis 1576 in the interface 1500 of FIG. 15 defines location
instead of time. Therefore, in FIG. 15, the x-axis 1568, the y-axis 1572, and
the z-axis 1576 function together to plot events . . . in three-dimensional
space.”).
For each of these reasons, Appellant does not persuade us of error in
the Examiner’s determination of obviousness. We, therefore, affirm the
obviousness rejection of claim 8 and of claim 18, which recites similar claim
language.

DECISION SUMMARY
In summary:

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).
Claims Rejected 35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–5, 7–9, 11–19,
49–52
101 Eligibility 1–5, 7–9,
11–19, 49–
52

1–5, 7, 9, 11–17,
19, 49, 50
103 Florance,
Tseng
1–5, 7, 9,
11–17, 19,
49, 50

8, 18 103 Florance,
Tseng,
Nevins
8, 18
Overall
Outcome
1–5, 7–9,
11–19, 49–
52

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AFFIRMED