Ex parte Bongiorno

FILING DATE 10/23/2010

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

DECISION ON APPEAL

WIEDER, ADMINISTRATIVE PATENT JUDGE.

Appellant^[1] seeks review under 35 U.S.C. § 134 from the Examiner's final rejection of claims 1-4, 6-8, 15, and 32-57.^[2] We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

CLAIMED SUBJECT MATTER

Appellant's "invention relates to methods and systems of planning and executing a vacation or travel itinerary, and more particularly to software and a portable electronic unit, which may be dedicated to such planning and travel assistance at the destination." (Spec. 1.)

Claims 1, 15, and 32 are the independent claims on appeal. Claim 1 is illustrative. It recites (some paragraphing added):

1. A travel itinerary device comprising

a housing

a non-transitory computer-readable program storage medium having computer readable program code embodied therein, said computer readable code being configured for planning of a travel itinerary

a database of travel information, relating to a destination stored in said non-transitory computer-readable program storage medium;

a viewing screen;

a processor for executing said computer readable code, said computer readable code comprising instructions for accessing said database of information on said non-transitory computer-readable program storage medium, and for causing displaying, on said viewing screen, of one or more image screens permitting selective planning of said travel itinerary;

a plan itinerary button, an alter itinerary button, and one or more additional buttons configured, when toggled, for communicating a selection, from among a plurality of options displayed within said one or more image screens, to said processor, and for permitting selective entry of one or more characters;

wherein said selective planning comprises

actuating said plan itinerary button for causing displaying of a first image screen by said instructions, said first image screen configured for selecting a first itinerary template and one or more additional itinerary templates from among a plurality of said additional templates,

said first itinerary template comprising a template for entering of a number of days for said itinerary, an arrival city and a departure city, and for selecting of one of a plurality of graduated levels of a tour schedule intensity, each of said graduated levels of said tour schedule intensity comprising a range of hours for touring for each of said number of days;

each of said plurality of additional itinerary templates comprising a respective list of sites relating to a category of said additional template, with a portion of said list of sites in each said selected one or more additional itinerary templates being used to form a complete travel itinerary,

said complete travel itinerary comprising a sequence of sites, for each of said number of days, with said sequence of sites being optimized to include as many sites as possible in said range of touring hours, for touring at the destination;

wherein said selective planning further comprises said alter itinerary button configured for causing displaying of a customizing image screen, said customizing image screen permitting, but not requiring, customizing of said sequence of sites of said complete itinerary, using selective access to said database of travel information, for creating a customized sequence of sites for a complete customized travel itinerary; and

wherein said computer readable code is configured for retrievably storing said selective planning within said program storage medium; and

a use itinerary button, said use itinerary button configured, when actuated, for causing displaying of a guidance screen configured for communicating with a GPS receiver for providing guidance during executing of said travel itinerary at the destination, said guidance comprising providing directions to any of said sequence of sites from a current location of said travel itinerary device.

REJECTIONS

Claims 1-4, 6-8, 15, and 32-57 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more.

Claims 1-4, 6-8, 15, 32-35, 37, 42-47, 52, and 53 are rejected under 35 U.S.C. § 103(a) as unpatentable over Whitsett (US 2009/0216633 A1, pub. Aug. 27, 2009), Ben-Yehuda (US 2008/0046298 A1, pub. Feb. 21, 2008), Erhardt (US 2010/0332115 A1, pub. Dec. 30, 2010), and DeLorme (US 2003/0182052 A1, pub. Sept. 25, 2003).

Claims 15, 48, 49, and 51 are rejected under 35 U.S.C. § 103(a) as unpatentable over Whitsett, Ben-Yehuda, and Erhardt.

Claims 36, 38, and 39 are rejected under 35 U.S.C. § 103(a) as unpatentable over Whitsett, Ben-Yehuda, Erhardt, DeLorme, and Chavez (US 2010/0121563 A1, pub. May 13, 2010).

Claim 40 is rejected under 35 U.S.C. § 103(a) as unpatentable over Whitsett, Ben-Yehuda, Erhardt, DeLorme, and Randall (US 2006/0184538 A1, pub. Aug. 17, 2006).

Claim 41 is rejected under 35 U.S.C. § 103(a) as unpatentable over Whitsett, Ben-Yehuda, Erhardt, DeLorme, Randall, and Bakewell (US 2008/0201227 A1, pub. Aug. 21, 2008).

Claims 50 and 54-57 are rejected under 35 U.S.C. § 103(a) as unpatentable over Whitsett, Ben-Yehuda, Erhardt, DeLorme, Chavez, and Ben-Yitschak (US 2010/0305984 A1, pub. Dec. 2, 2010).

ANALYSIS

The § 101 rejection

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101. Section 101, however, "contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank lnt'l, 573 U.S. 208, 216 (2014) (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).

Alice applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 573 U.S. at 217.

Under the two-step framework, it must first be determined if "the claims at issue are directed to a patent-ineligible concept." Id. at 218. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if "the elements of the claim . . . contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Id. at 221 (internal quotation marks omitted) (citing Mayo, 566 U.S. at 72-73, 79).

With regard to step one of the Alice framework, we apply a "directed to" two-prong test to: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim "appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter "2019 Guidance").

Claims 14, 6, and 7

The Examiner determines that claim 1 is "directed to the abstract idea of preparing a custom travel itinerary for use at a destination which is similar to . . . using rules to identify options . . . and/or [c]reating a contractual relationship." (Final Action 8 (emphasis and internal quotation marks omitted).) The 2019 Guidance identifies "commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations)" and "managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)" as certain methods of organizing human activity, and a category of abstract ideas. (2019 Guidance at 52.) Viewing the Examiner's determination through the lens of the 2019 Guidance, the Examiner's determination is that claim 1 is directed to the abstract idea of certain methods of organizing human activities.

Appellant argues that "[t]here is no contractual relationship that is explicitly or impliedly formed by the claim language" and that "the apparatus recited in claim 1 goes substantially beyond just organizing[, ] storing, and transmitting information." (Appeal Br. 19.^[3])

Under step one of the Alice framework, we "look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).

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

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In other...