Sabrina Tai-Chen. Yeh et al.

Patent Trials and Appeals Board

Nov 26, 2019

14037286 - (D) (P.T.A.B. Nov. 26, 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.
14/037,286 09/25/2013 Sabrina Tai-Chen Yeh 201304965.02 8252
36738 7590 11/26/2019
ROGITZ & ASSOCIATES
4420 Hotel Circle Court
SUITE 230
SAN DIEGO, CA 92108
EXAMINER
WILLIAMS, KELLY D
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
11/26/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
John@rogitz.com
Noelle@rogitz.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SABRINA TAI-CHEN YEH and DAVID ANDREW YOUNG
____________

Appeal 2018-003584
Application 14/037,286
Technology Center 3600
____________

Before HUBERT C. LORIN, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–8 and 25–32. 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. The Appellant identifies the real party in interest as Sony
Corp. Appeal Br. 2.
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ILLUSTRATIVE CLAIM
1. A device comprising:
at least one computer memory that is not a transitory
signal and that comprises instructions executable by at least one
processor for:
accessing map information;
accessing location information indicating location of the
device;
presenting on a display at least one user interface (UI);
receiving, from the UI, user input including a margin of
error;
using the location information, map information, and user
input from the UI to determine a route associated with at least
one of: an exercise period, a distance, the exercise period
and/or distance being one of plural exercise periods and/or
distances falling within the margin of error; and
outputting the route on a presentation device.
CITED REFERENCES
The Examiner relies upon the following references:
Endo et al. US 2003/0191580 A1 Oct. 9, 2003
(hereinafter “Endo”)
Krull et al. US 6,901,330 B1 May 31, 2005
(hereinafter “Krull”)
Brooks US 2006/0206258 A1 Sept. 14, 2006
Shirai et al. US 2010/0191454 A1 July 29, 2010
(hereinafter “Shirai”)
Tang et al. US 2012/0130630 A1 May 24, 2012
(hereinafter “Tang”)
Van Hende US 2013/0304377 A1 Nov. 14, 2013
Holm et al. US 2014/0074392 A1 Mar. 13, 2014
(hereinafter “Holm”)
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Kuri et al. US 2014/0108137 A1 Apr. 17, 2014
(hereinafter “Kuri”)
Lee et al. US 2014/0278064 A1 Sept. 18, 2014
(hereinafter “Lee”)
REJECTIONS2
I. Claims 31 and 32 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.3
II. Claims 1, 2, and 5–7 are rejected under 35 U.S.C. § 103 as
unpatentable over Van Hende and Brooks.
III. Claim 3 is rejected under 35 U.S.C. § 103 as unpatentable over
Van Hende, Brooks, and Tang.
IV. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over
Van Hende, Brooks, and Holm.
V. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over
Van Hende, Brooks, and Kuri.
VI. Claims 25 and 26 are rejected under 35 U.S.C. § 103 as
unpatentable over Van Hende and Krull.
VII. Claim 27 is rejected under 35 U.S.C. § 103 as unpatentable
over Van Hende, Krull, and Kuri.
VIII. Claims 28 and 29 are rejected under 35 U.S.C. § 103 as
unpatentable over Van Hende, Krull, and Shirai.

2 In addition to the identified rejections, the Final Action (page 4) rejects
claim 26 under 35 U.S.C. § 112(b) as being indefinite. This rejection is
withdrawn. See Advisory Action (March 29, 2017).
3 The Final Action (pages 3–4) also rejects claims 1–3, 5–8, and 25–30
under 35 U.S.C. § 101. The rejection of these claims is withdrawn. See
Answer 2.
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IX. Claim 30 is rejected under 35 U.S.C. § 103 as unpatentable
over Van Hende, Krull, and Endo.
X. Claim 31 is rejected under 35 U.S.C. § 103 as unpatentable
over Van Hende and Lee.
XI. Claim 32 is rejected under 35 U.S.C. § 103 as unpatentable
over Van Hende, Lee, and Kuri.
RELATED CASES
At the time the Appeal Brief was filed in the present case, a Notice of
Appeal had been filed in at least the related U.S. Application 14/037,263
(Appeal 2016-007380). The Appellant fails to cite this related Appeal as
required by 37 C.F.R. § 41.37(c)(ii). See Appeal Br. 2.
We remind the Appellant and counsel to review prior and pending
proceedings before the Board, as well as any other qualifying matters, so as
to ensure that all related cases are identified. Representations to the Office
are subject to requirements of, e.g., 37 C.F.R. §§ 1.56, 11.18, and 11.303.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
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and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88–89 (2012)). The first step determines whether
the claim is directed to judicially excluded subject matter (such as a so-
called “abstract idea”); the second step determines whether there are any
“additional elements” recited in the claim that (either individually or as an
“ordered combination”) amount to “significantly more” than the identified
judicially excepted subject matter itself. Id. at 217–18.
The USPTO recently published revised guidance on the application of
§ 101, in accordance with judicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (“2019
Revised Guidance”). Under the 2019 Revised Guidance, a claim is “directed
to” an abstract idea, only if the claim recites any of (1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes — without integrating such abstract idea into a “practical
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application,” i.e., without “apply[ing], rely[ing] on, or us[ing] 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.” Id. at 52–55. The considerations
articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim
element (or combination of elements) integrates an abstract idea into a
practical application. Id. at 55. A claim that is “directed to” an abstract idea
constitutes ineligible subject matter, unless the claim recites an additional
element (or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
Although created “[i]n accordance with judicial precedent” (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court’s Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of § 101. Id. at 53–54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited, Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54–55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element (or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
Independent claim 31 and dependent claim 32 stand rejected as
ineligible subject matter. Claim 31 recites:
31. A device comprising:
at least one presentation device, the at least one
presentation device being a video display and/or an audio
speaker;
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at least one computer memory;
at least one processor configured to access instructions
on the memory for:
accessing map information;
accessing location information indicating location of the
device;
presenting on the presentation device at least one user
interface (UI);
accessing a database of routes determined to be popular
based on plural user ratings and/or user reviews;
using the map information and information from the
database to determine a route; and
outputting the route on a presentation device.
With respect to Step 1 of the 2019 Revised Guidance, the Examiner
does not determine that the claims are outside the identified categories of
§ 101.
Turning to Step 2A, Prong One, of the analytical framework
delineated in the 2019 Revised Guidance, the Examiner addresses the
following limitations of claim 31: “accessing map information”; “accessing
location information indicating location of the device”; “presenting on the
presentation device at least one user interface (UI)”; “accessing a database of
routes determined to be popular based on plural user ratings and/or user
reviews”; “using the map information and information from the database to
determine a route”; and “outputting the route on a presentation device.” See
Answer 3. The Examiner regards these limitations as embodying an abstract
idea, comparing the claim limitations to those addressed in Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). Id.
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Viewed through the lens of the 2019 Revised Guidance, 84 Fed. Reg.
at 52, the identified limitations of claim 31 depict the claimed subject matter
as a mental process. Specifically, the use of map information to determine a
route is the sort of activity that may be reasonably “performed in the human
mind.” Id. See also Electric Power Group, 830 F.3d at 1354 (“[W]e have
treated analyzing information by steps people go through in their minds, or
by mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.”)
The Appellant argues that Electric Power Group is inapposite:
There is nothing in the electric grid-related claims at
issue in [Electric Power Group] that remotely resemble the
provisioning of map information. Moreover, unlike the
CAFC’s criticism of the claims in [Electric Power Group], in
which the received data is “unidentified” data received from
“generic data sources”, in instant Claim 31 a specific source of
data — a database of routes determined to be popular based on
user ratings and/or reviews — is accessed. Moreover, whereas
in [Electric Power Group] “events” in the power grid data
streams were derived from a list of generic electrical parameters
and displayed without stating the use of a computer monitor to
do so, in Claim 31 the map information and information from
the database is output to determine a route, which in turn is
output on a presentation device such as the display/speaker
device recited earlier in the claim.
Reply Br. 4–5.
The Appellant’s proposed distinctions between the sources and
contents of data in the Electric Power Group claims, in contrast to claim 31
in this Appeal (see Reply Br. 4–5), do not bear upon the question of whether
the Examiner’s identified claim limitations recite a mental process — a
category of abstract idea. Indeed, “even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
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‘source,’ that limitation does not make the collection and analysis other than
abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir.
2018). Therefore, the Appellant’s arguments do not persuade us of error, in
regard to Step 2A, Prong One.
Turning to Step 2A, Prong Two, unless a claim that recites a judicial
exception (such as an abstract idea) “integrates the recited judicial exception
into a practical application of that exception,” the claim is “directed to” the
judicial exception. Id. at 53. The analysis of such an “integration into a
practical application” involves “[i]dentifying . . . any additional elements
recited in the claim beyond the judicial exception(s)” and “evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application.” Id. at 54–55.
Among the considerations “indicative that an additional element (or
combination of elements) may have integrated the exception into a practical
application” is whether “[a]n additional element reflects an improvement in
the functioning of a computer, or an improvement to other technology or
technical field.” Id. at 55 (footnote omitted). “[W]hether an additional
element or combination of elements integrate the exception into a practical
application should be evaluated on the claim as a whole.” Id. at 55 n.24.
In regard to the inquiries of Step 2A, Prong Two, the Appellant argues
that claim 31 is similar to claims determined to be patent-eligible in Core
Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 800 F.3d 1356 (Fed. Cir.
2018), by providing “an improved user interface.” Reply Br. 5. The
Appellant states:
As is the case with Claim 31, the claims in Core Wireless were
directed to a particular manner of summarizing and presenting
information in electronic devices. While Appellant recognizes
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that the UI of Core Wireless is not identical to Claim 31,
Appellant believes that as was the case with Core Wireless, in
which the claim “disclose[s] a specific manner of displaying a
limited set of information to the user”, Claim 31 likewise
presents displaying a limited set for information to the user.
The claim in Core [Wireless] was said by the CAFC have the
effect of “bringing together ‘a limited list of common functions
and commonly accessed stored data’”, which can be said of
Claim 31. While the Core [Wireless] opinion also discussed
other claim limitations peculiar to the claim at issue, what was
true in Core [Wireless] is true of Claim 31: “the claims are
directed to an improvement in the functioning of computers,
particularly those with small screens.”
Id.
Yet, the Appellant does not identify any feature set forth in claim 31
that might signify the alleged “improved user interface.” Id. Contrary to the
Appellant’s assertion that claim 31 is akin to the claim at issue in Core
Wireless (id.), claim 31 contains no element that purportedly accomplishes
“an improvement in the functioning of computers, particularly those with
small screens.” Core Wireless, 800 F.3d at 1363. By contrast, the claim at
issue in Core Wireless:
requires “an application summary that can be reached directly
from the menu,” specifying a particular manner by which the
summary window must be accessed. The claim further requires
the application summary window list a limited set of data,
“each of the data in the list being selectable to launch the
respective application and enable the selected data to be seen
within the respective application.” This claim limitation
restrains the type of data that can be displayed in the summary
window. Finally, the claim recites that the summary window
“is displayed while the one or more applications are in an un-
launched state,” a requirement that the device applications exist
in a particular state.
Id. at 1362–63.
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Therefore, the Appellant does not persuasively argue that the
Examiner erred, in regard to Step 2A, Prong Two, of the 2019 Revised
Guidance.
Turning to Step 2B of the 2019 Revised Guidance (84 Fed. Reg. at
56), a claim that recites a judicial exception (such as an abstract idea) might,
nevertheless, be patent-eligible, if the claim contains “additional elements
amount[ing] to significantly more than the exception itself” — i.e., “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.” See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”)
The Appellant does not identify any elements of claim 31 that might
amount to significantly more than the identified judicial exception, whether
individually or in combination, under Step 2B. The only elements of claim
31 that are not part of the Examiner’s identified judicial exception are the
recited “presentation device . . . being a video display and/or an audio
speaker,” the “computer memory,” and the “processor.” These elements do
not amount to significantly more than the identified judicial exception;
rather, these elements simply situate the abstract concept in a particular
technological environment of an interactive computing device. See Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016)
(“[M]erely limiting the field of use of the abstract idea to a particular
existing technological environment does not render the claim[ ] any less
abstract.”)
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In view of the foregoing, we are not persuaded of error in the rejection
of independent 31, or dependent claim 32 (for which the Appellant presents
no separate argument), under 35 U.S.C. § 101. The rejection is sustained.
Obviousness
The Appellant contests the obviousness rejections, only with regard to
claims 4, 28, 29, and 31. Appeal Br. 8–13. We address these arguments
below. The Appellant’s argument for independent claim 31 applies also to
dependent claim 32. We summarily sustain the rejections of claims 1–3, 5–
8, and 25–27, and 30, under 35 U.S.C. § 103, which the Appellant does not
otherwise challenge.
Claim 4
Claim 4 recites:
4. The device of Claim 1, wherein the instructions are
executable for:
during user traversal of the route, accessing biometric
information of the user; and
altering the route based on the biometric information to
render an altered route and presenting the altered route on a
presentation device.
Emphasis added.
The Appellant contends that the Examiner erred in rejecting claim 4,
because the prior art of record (specifically, the Holm reference) does not
teach or suggest the recited feature of “altering the route based on the
biometric information.” Appeal Br. 8–11. Although Holm ¶ 53 discloses
“determin[ing] the alternate route based on the one or more user parameters”
and Holm ¶ 66 states that “the user parameters may be associated directly
with the user, such as the physical fitness of the user,” the Appellant
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contends that Holm’s “user parameters” do not include the claimed
“biometric information.” Id. at 10–11. Notably, the Appellant argues that
the Specification, at page 19, line 1, “explicitly distinguishes between
‘fitness information’ and ‘biometric information.’” Id. at 10. The Appellant
further argues: “General fitness information is not ‘unique’ to an individual,
but is shared among millions of other people of the same fitness, nor does
general fitness information lend itself readily to mathematical or statistical
analysis.” Id.
The Appellant relies, in part, upon proffered definitions of
“biometric”:
Appellant has made of record definitions downloaded from
www.dictionary.com. The most relevant definitions include
“pertaining to, noting, or using a person’s unique physical and other
traits for the purposes of identification and security” and “relating to
the analysis of biological data using mathematical and statistical
methods”.
Id. at 9. The Appellant contends that these definitions are consistent with
the Specification. Id. The Specification states that examples of “biometric
sensors” include:
[H]eart rate sensors and/or heart monitors, calorie counters, blood
pressure sensors, perspiration sensors, odor and/or scent detectors,
fingerprint sensors, facial recognition sensors, iris and/or retina
detectors, DNA sensors, oxygen sensors (e.g. blood oxygen sensors
and/or V02 max sensors), glucose and/or blood sugar sensors, sleep
sensors (e.g. a sleep tracker), pedometers and/or speed sensors, body
temperature sensors, nutrient and metabolic rate sensors, voice
sensors, lung input/output and other cardiovascular sensors, etc.
Spec. 16, ll. 6–12.
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The passage of the Specification that, according to the Appellant,
draws the asserted distinction (between “fitness” information and
“biometric” information) states:
[A]fter block 70 the logic then moves to block 72 where the logic
accesses fitness and/or biometric information associated with the user
(e.g. by receiving/gathering input from biometric sensors in
communication the CE [i.e., “consumer electronics”] device and
measuring one or more types of biometric information associated with
the user, based on user input of biometric information, etc.).
Spec. 18, l. 23–19, l. 4 (emphasis added). Although this passage indicates
that there is at least some “biometric information” that would not constitute
“fitness” information, the passage does not establish that “fitness”
information is wholly distinct from “biometric information.” Indeed, the
Specification elsewhere states that “the user’s fitness level” is “based on one
or more biometric pieces of information”:
[I]n exemplary embodiments e.g. the CE device may receive
input of a desired distance in accordance with present
principles, but may then e.g. determine a shorter or longer route
than what was indicated by the desired distance that nonetheless
would cause the user to exert the same physical effort/output.
Thus, for instance, if the user indicated that he or she wished to
run five miles on flat ground, but the surrounding terrain was
full of hilly terrain, then the CE device may e.g. determine the
user’s fitness level based on one or more biometric pieces of
information from the biometric sensors discussed above, and
either shorten or extend the route based on an estimate of what
the user's physical output would have been on flat ground to
match that estimate when the hilly terrain is accounted for.
Thus, for instance going downhill the user may have to travel
further than he or she would on flat ground, and going uphill
the user may have to travel shorter than he or she would on flat
ground.
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Spec. 36, ll. 8–18 (emphasis added). Thus, although a “user’s fitness level”
may be derived from more fundamental “biometric pieces of information”
obtained with “biometric sensors” (id. at 36, ll. 13–14), the Specification
does not exclude “fitness” information from the category of “biometric
information.” The Examiner emphasizes this point, in regard to paragraphs
41, 44, 53, and 66 of the Holm reference, stating:
Although Holm does not use the term “biometric” in the
disclosure, Holm does teach accessing biometric information of
the user and altering the route based on the biometric
information because the user parameters of Holm relate to the
analysis of biological data using mathematical and statistical
methods (see Appellant's definition on page 9 of the Brief) and
are unique to the individual user. The Examiner respectfully
disagrees with Appellant’s interpretation of [0066] of Holm (on
page 11 of the Brief) in light of and in combination with at least
the cited portions of Holm’s disclosure which describe the user
parameters/characteristics as being directly associated with the
user and not general physical fitness information.
Answer 5–6.
The Appellant also argues that the Office Action of December 3,
2015, distinguished “fitness” information from “biometric information,”
because, “the examiner imposed a restriction on the basis that ‘the
inventions of claims 21–24 are distinct from that of claims 1–8’” and, at the
time of the Office Action, claim 23 recited “accessing fitness information
pertaining to a fitness level of the user, and using the fitness information to
determine the route.” Appeal Br. 11. Yet, as of December 3, 2015, none of
claims 1–8 recited “biometric information”; moreover, the then-extant
version of claim 4 recited the same limitation that appeared in claim 23 (i.e.,
“accessing fitness information pertaining to a fitness level of the user, and
using the fitness information to determine the route”). See Response to
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Office Action (Sept. 8, 2015) 3, 5. Therefore, we are not persuaded that the
Office Action of December 3, 2015, supported the proposed distinction
between “fitness” information and “biometric information.”
In view of the foregoing, we sustain the rejection of claim 4 under 35
U.S.C. § 103.
Claim 28
Claim 28 recites:
28. The method of Claim 25 wherein the UI is a first UI
and the method comprises:
presenting at least a second UI to provide notification
that the route will not be completed in time to meet an
upcoming calendar appointment in calendar information.
Claim 28 depends from independent claim 25, which indicates that “UI”
refers to “user interface.”
In rejecting claim 28, the Examiner relies, in particular, upon
paragraph 21 of the Shirai reference to teach the limitations added in claim
28. Final Action 12; Answer 6–7. Shirai’s paragraph 21 discloses the use of
logic to determine whether the estimated time of arrival “is later than the
scheduled start time of the event as indicated on the calendar” and, if so,
presenting a “visual alert” to this effect, on a “display.” Shirai ¶ 21. The
Examiner regards a “UI” as “a display which is configured to provide
information to a user.” Answer 6 (citing ¶ 71 of published application
US 2015/0081210 A1, corresponding to Spec. 31, ll. 13–23, and Fig. 8,
element 206). The Examiner further explains: “[O]ne of ordinary skill in
the art would recognize that the personal organizer 10 disclosed in Shirai is
not merely a display device (such as a computer monitor or television), but
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an interactive user device configured to receive input from a user via one or
more input devices 26.” Id. at 7 (citing Shirai ¶¶ 14–15, Fig. 1).
Disputing the rejection, the Appellant argues that paragraph 21 of
Shirai “does not discuss a user interface, but rather simply an alert that is
presented on an otherwise unidentified ‘display’ which is not said to have
user interface functionality.” Appeal Br. 12. In addition, the Appellant
asserts that the Specification “does not define a UI as a ‘display which is
configured to provide information to a user’, so the [Examiner’s]
representation in the Answer on this score is misleading.” Reply Br. 8.
The sufficiency of Shirai, in the Examiner’s obviousness analysis,
turns upon the construction of the claimed “second UI.” “During
examination, ‘claims . . . are to be given their broadest reasonable
interpretation consistent with the specification, and . . . claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.’” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed.
Cir. 1990)). Sources for claim construction may include intrinsic sources
(such as the claims, the Specification, and the cited references), as well as
extrinsic sources (such as technical treatises and dictionaries). See Vitronics
Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582–84 & n.6 (Fed. Cir. 1996).
The Specification refers to “UI 214” of Figure 9 as accomplishing the
functionality described in claim 28: “[I]n reference to Figure 9, an
exemplary UI 214 is shown that is presentable on a [consumer electronics]
device in accordance with present principles to e.g. notify the user that the
route being traveled will not be completed within an estimated time and/or
before an upcoming calendar appointment.” Spec. 32, ll. 11–14. The UI
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214 also permits the user to “select an alternate route(s) selector element 218
for alternate possible routes from the user’s current location as determined
by the CE device to arrive and an ending location previously input by the
user.” Id. at 32, ll. 17–19. Therefore, as employed in claim 28 and the
corresponding portion of the Specification, a “user interface” (i.e., a “UI”)
constitutes an instrumentality for presenting certain visual information to a
user and for the user to input information for the device to act upon. This
interpretation is consistent with the general understanding of “user interface”
to a person of ordinary skill in the art, as “[a]ll the features of a program or
computer that govern the way people interact with the computer.” Bryan
Pfaffenberger, Webster’s New World Computer Dictionary (10th ed. 2003)
(definition of “user interface”),
https://search.credoreference.com/content/entry/webstercom/user_interface/
0?institutionId=743 (last visited Nov. 20, 2019).
In view of the foregoing, the Examiner sufficiently establishes that
Shirai discloses a user interface having the features of the recited “second
UI,” because — as the Examiner points out — Shirai’s device includes
equipment for both the display and the input of information. Answer 7
(citing Shirai ¶¶ 14–15, Fig. 1). Accordingly, we sustain the rejection of
claim 28 under 35 U.S.C. § 103.
Claim 29
Claim 29 recites:
29. The method of Claim 26, comprising presenting a
second UI, wherein the second UI presents an indication of an
alternate possible route to be followed to meet a calendar
appointment.
Appeal 2018-003584
Application 14/037,286

19
Claim 29 depends ultimately from independent claim 25, which indicates
that “UI” refers to “user interface.”
In rejecting claim 29, the Examiner relies, in particular, upon
paragraph 21 of the Shirai reference to teach or suggest the limitations added
in claim 29. See Final Action 12–13; Answer 7. According to the
Examiner, “claim 29 requires the presentation of an indication of an
alternate possible route, which is analogous to the alternate route suggestions
in Shirai [0021].” Answer 7. The Examiner regards Shirai as rendering
obvious the feature of providing a route to the user that allows the user to
arrive on time for calendar appointments. Final Action 13.
Disputing the rejection, the Appellant argues that Shirai’s paragraph
21 “simply states that the ‘alert’ presented in an otherwise unidentified
fashion can include alternate route suggestions, but not that those
suggestions are tailored to meet the calendar appointment as claimed.”
Appeal Br. 12. See also Reply Br. 8–9.
Yet, the Examiner regards Shirai as at least suggesting the provision
of a route that would allow the user to arrive in time for the calendar
appointment. See Final Action 12–13; Answer 7. Shirai states that a “visual
alert” may be presented on a display, if a user is estimated to arrive “later
than the scheduled start time of the event as indicated on the calendar.”
Shirai ¶ 21. Shirai further states: “In some embodiments the alert may
include optional action suggestions, e.g., alternate route suggestions.” Id.
Thus, it is reasonable for the Examiner to find that Shirai’s “alternate route
suggestions” (id.) would include routes that permit the user to arrive in time
for the event.
Therefore, we sustain the rejection of claim 29 under 35 U.S.C. § 103.
Appeal 2018-003584
Application 14/037,286

20
Claims 31 and 32
The Appellant contends that independent claim 31 stands erroneously
rejected, because the Lee reference is not prior art to the application at issue
in this Appeal. Appeal Br. 13.
The Lee reference is a published patent application, dated September
18, 2014 (Publication Number US 2014/0278064 A1), based upon an
application filed on March 12, 2014 (Application Number 14/206,972). In
turn, the Lee reference “claims the benefit of provisional U.S. Patent
Application No. 61/792,704 . . . filed Mar. 15, 2013.” Lee ¶ 1. We refer to
this provisional application as the “Lee Provisional.”
The application that is the subject of this Appeal (Application Number
14/037,286) was filed on September 25, 2013 and “claims priority to U.S.
provisional patent application serial no. 61/878,835, filed September 17,
2013.” Spec. 1, ll. 1–2. Therefore, the Lee reference may constitute prior
art, only if afforded the filing date of the Lee Provisional.
The Federal Circuit has addressed the matter of determining the
priority dates afforded to references based upon U.S. patent applications in
Dynamic Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375 (Fed.
Cir. 2015), and Amgen, Inc. v. Sanofi, 872 F.3d 1367 (Fed. Cir. 2017). In
Dynamic Drinkware, the Federal Circuit applied the statute governing
whether a patent may claim priority from the filing date of a provisional
application (35 U.S.C. § 119(e)(1)) to the matter of determining the
availability of the provisional application’s filing date, when such a patent is
used as a prior-art reference: “A reference patent is only entitled to claim
the benefit of the filing date of its provisional application if the disclosure of
the provisional application provides support for the claims in the reference
Appeal 2018-003584
Application 14/037,286

21
patent in compliance with § 112, ¶ 1.” Dynamic Drinkware, 800 F.3d at
1382. In Dynamic Drinkware, the prior art reference was an issued patent,
but Amgen states that the principle articulated in Dynamic Drinkware also
applies to published patent applications. Amgen, 872 F.3d at 1380 (“[W]e
have previously stated that ‘for the non-provisional utility application to be
afforded the priority date of the provisional application, . . . the written
description of the provisional must adequately support the claims of the non-
provisional application.’ New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co.,
298 F.3d 1290, 1294 (Fed. Cir. 2002).”)
The MPEP provides additional clarity in determining whether a prior
art patent or published application may be afforded the date of a
corresponding provisional application. Specifically, the filing date of the
provisional application applies, if the provisional application provides
written-description support for at least one claim in the issued patent or
published application. See MPEP § 2136.03(III) (9th ed., Rev. 08.2017, Jan.
2018) (“[T]he reference date under pre-AIA 35 U.S.C. 102(e) of a U.S.
patent may be the filing date of a relied upon provisional application only if
at least one of the claims in the patent is supported by the written description
of the provisional application in compliance with pre-AIA 35 U.S.C. 112,
first paragraph.”) (emphasis added).
In the present Appeal, establishing a prima facie case of obviousness
for claim 31, based upon the Lee reference in the manner set forth, requires
the Examiner not only to demonstrate the availability of the Lee
Provisional’s filing date (per Dynamic Drinkware and Amgen), but also to
demonstrate that the relied-upon teachings of Lee are also disclosed in the
Appeal 2018-003584
Application 14/037,286

22
Lee Provisional. See Ex parte Yamaguchi, Appeal 2007-004412, 2008 WL
4233306, at *10 (BPAI Aug. 29, 2008) (precedential).
Rather than addressing the relationship between the Lee reference and
the Lee Provisional, the Appellant’s argument focuses on whether the Lee
Provisional provides written-description support for the patent
(US 9,255,807) that issued, based upon the non-provisional application
corresponding to the Lee reference. See Appeal Br. 13; Reply Br. 10–12.
However, the Examiner’s rejection relies upon the Lee reference — not the
patent that issued from its corresponding application.4

4 The Appellant’s argument illustrates the potential for paradoxical
outcomes, in applying the Dynamic Drinkware/Amgen approach for
determining whether a patent or published application (when used as prior
art) may be afforded the filing date of a respective provisional application.
Multiple published non-provisional applications and/or issued patents may
claim priority from a single provisional application. Yet, the provisional
application may provide written-description support for at least one claim in
some of these applications/patents, but not others — notwithstanding the
contents of their disclosures. With regard to the present Appeal, for
example, the claims of the published Lee reference (US 2014/0278064 A1)
differ from those in the patent that ultimately issued on the corresponding
application (US 9,255,807), creating the possibility that these two
documents might have different effective dates, when used as prior art.
Furthermore, even if written-description support (for published or issued
claims) were lacking, the potential remains for future published applications
(or issued patents) with claims having such written-description support,
thereby unlocking the availability of the provisional application’s filing date.
The United States Solicitor General has advocated an approach that
would avoid such conundrums, arguing that the requirements of 35 U.S.C.
§ 119 (for determining whether a non-provisional application might be
afforded the benefit of an earlier provisional application’s filing date) should
not dictate whether a patent or published application constitutes prior art:
In the view of the United States, . . . Section 119(e) has no
bearing on the date on which a patent application qualifies as
Appeal 2018-003584
Application 14/037,286

23
Although the Examiner takes the position that the relied-upon
disclosures of the Lee reference also appear in the Lee Provisional (see
Answer 8–9), the Examiner does not address whether the Lee Provisional
provides written-description support for any claim in the Lee reference, in
the manner articulated in Dynamic Drinkware, Amgen, and MPEP
§ 2136.03(III). In view of the absence of such an inquiry, we do not sustain
the rejection of independent claim 31 and its dependent claim 32 under
35 U.S.C. § 103.

prior art under [pre-AIA] Section 102(e). Section 119 is
directed to the separate question of when patent applicants are
entitled to claim priority for their own applications. There is no
textual basis for using that provision’s priority rules to backdate
patent applications sought to be relied on as prior art under
Section 102(e). . . .
Given that Section 102(e) focuses on questions of novelty and
public disclosure, imposing on that inquiry the stringent claim-
based requirements set out in Section 119(e) therefore would
serve no purpose. Nor does any other Patent Act provision
suggest that the applicability of Section 102(e) should turn on
whether the applicant named in a prior-art application satisfied
Section 119(e).
Brief for the United States as Amicus Curiae at 11–12, 14 (May 21,
2019), Ariosa Diagnostics, Inc. v. Illumina, Inc., 139 S. Ct. 2740
(2019) (petition for writ of certiorari denied) (No. 18-109)
(https://www.supremecourt.gov/DocketPDF/18/18-
109/100530/20190521150718908_18-
109%20Ariosa%20Diagnostics%20Inc..pdf).
Appeal 2018-003584
Application 14/037,286

24
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
31, 32 101 Eligibility 31, 32
1, 2, 5–7 103 Van Hende, Brooks 1, 2, 5–7
3 103 Van Hende, Brooks,
Tang
3
4 103 Van Hende, Brooks,
Holm
4
8 103 Van Hende, Brooks,
Kuri
8
25, 26 103 Van Hende, Krull 25, 26
27 103 Van Hende, Krull,
Kuri
27
28, 29 103 Van Hende, Krull,
Shirai
28, 29
30 103 Van Hende, Krull,
Endo
30
31 103 Van Hende Lee 31
32 103 Van Hende, Lee, Kuri 32
Overall Outcome 1–8, 25–32

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

Notice of References Cited

Application/Control No.
14/037,286
Applicant(s)/Patent Under
Reexamination

Examiner

Art Unit

Page 1 of 1

U.S. PATENT DOCUMENTS

* Document Number Country Code-Number-Kind Code Date MM-YYYY

Name

Classification
1 A US- 1 1
B US-
C US-
D US-
E US-
F US-
G US-
H US-
I US-
J US-
K US-
L US-
M US-
FOREIGN PATENT DOCUMENTS

* Document Number Country Code-Number-Kind Code Date MM-YYYY

Country

Name

Classification
N
O
P
Q
R
S
T
NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)

U

https://search.credoreference.com/content/entry/webstercom/user_interface/0?institutionId=743 (last visited Nov. 20, 2019).

V

W

X

*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.

U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
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