Ex parte Boss

Ex parte GREGORY JENSEN BOSS, RICK ALLEN HAMILTON II, JACQUELYN ANNETTE MARTINO, CLIFFORD ALAN PICKOVER, and ANNE R. SAND Technology Center 3600

Appeal 2016-004868

Application 12/578, 627

United States Patent and Trademark Office, Patent Trial and Appeal Board

February 13, 2018

FILING DATE: 10/14/2009

Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and AMEE A. SHAH Administrative Patent Judges.

DECISION ON APPEAL ^[1]

SHAH Administrative Patent Judge.

The Appellants^[2] appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-3, 5-10 12-14, 16, 17, and 21-26, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

STATEMENT OF THE CASE

The Appellants' invention relates generally to "a data processing method and system for providing a location preference in a routing algorithm, and more particularly to technique for determining travel routes that take into account fee-based preferential weighting of locations." Spec. ¶1.

Claims 1, 12, and 23 are the independent claims on appeal. Claim 1 (Appeal Br. 42-44) (Claims App.) is illustrative of the subject matter on appeal, and is reproduced below (with added bracketing for reference):

1. A computer-implemented method of determining a route that includes a location according to a first fee charged to an entity associated with the location, said method comprising the steps of:

[(a)] a computer system receiving locations of a plurality of vendors;

[(b)] the computer system presenting to a vendor included in said plurality of vendors a sliding scale of fees including a first fee for assigning to a location of said vendor a first preferential weight indicating a first likelihood of selecting said location of said vendor from said locations of said plurality of vendors so that said location is included along a requested route, and further including a second fee for assigning to said location of said vendor a second preferential weight indicating a second likelihood of selecting said location of said vendor from said locations of said plurality of vendors so that said location is included along said requested route, said first fee being greater than said second fee and said first likelihood being greater than said second likelihood;

[(c)] the computer system receiving from said vendor said first fee instead of said second fee, and in response to said receiving said first fee and instead of assigning to said location of said vendor said second preferential weight, the computer system assigning to said location of said vendor said first preferential weight indicating said first likelihood of selecting said location of said vendor so that said location is included along said requested route;

[(d)] the computer system receiving a request from a user of a global positioning system (GPS) for a determination of a route from a first point to a second point, said GPS coupled to said computer system via a computer network;

[(e)] based on said first fee instead of said second fee being received from said vendor, based on said first preferential weight instead of said second preferential weight being assigned to said location of said vendor, based on said first likelihood being greater than said second likelihood, and based on said received request for said determination of said route, the computer system selecting said location of said vendor from said locations;

[(f)] in response to said step of selecting said location of said vendor based on (1) said first fee instead of said second fee being received from said vendor, (2) said first preferential weight instead of said second preferential weight being assigned to said location of said vendor, (3) said first likelihood being greater than said second likelihood, and (4) said received request for said determination of said route, the computer system determining said route so that an address of said location of said vendor is on said route, said location not being said first point or said second point;

[(g)] subsequent to said step of determining said route so that said address of said location of said vendor is on said route, the computer system instructing said GPS to present said route to said user; and

[(h)] in response to said step of instructing said GPS to present said route to said user, the GPS presenting said determined route to said user as a recommended route providing a value to said vendor.

REJECTIONS

Claims 1-3, 5-10, 12-14, 16, 17, and 21-26 stand rejected under 35U.S.C. § 101 as being directed to non-statutory subject matter.

Claims 1, 2, 7-9, 12, 13, 21-24, and 26 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Huang et al. (US 2007/0061057 A1, pub. Mar. 15, 2007) ("Huang").

Claims 3, 14, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Huang and Feng (US 2010/0268449 A1 pub. Oct. 21, 2010).

Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Huang and Rosenblatt et al. (US 2010/0082491 A1, pub. Apr. 1, 2010) ("Rosenblatt").

ANALYSIS

Patent-Ineligible Subject Matter - § 101

The Appellants argue claims 1-3, 5-10, 12-14, 16, 17, and 21-26 as a group. See Appeal Br. 9; see also id. at 24 (relying on the arguments presented for the independent claims). We select claim 1 as representative of the group with claims 2, 3, 5-10, 12-14, 16, 17, and 21-26 standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

Under 35 U.S.C. § 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347, 2354 (2014) (quoting Ass'n for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2116 (2013)).

The Supreme Court in Alice reiterated the two-step framework, set forth previously in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, IS-19 (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, 134 S.Ct. at 2355. The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. (citing Mayo, 566 U.S. at 79) (emphasis added). If so, the second step is to consider the elements of the claims "individually and 'as an ordered combination'" to determine whether the additional elements '"transform the nature of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79, 78).

In other words, the second step is to "search for an 'inventive concept'-i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'" Id. (alteration in original) (quoting Mayo, 566 U.S. at 72-73). The Court acknowledged in Mayo, that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology, or are instead directed to a result or effect that itself is the abstract idea, and merely invoke generic processes and machinery, i.e., "whether the focus of the claims is on [a] specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).

Under the first step of the Alice framework, the Examiner determines that the claims are directed to delivering a vendor location, i.e., an advertisement, to a user in the form of a map, based on a fee. See Final Act. 3; see also Ans. 2-3. Conversely, the Appellants contend that the claims are directed to "determining a route by which a location of a vendor is included in the route based on a preferential weighting of the location." Appeal Br. 12-13; see also Reply Br. 2-3.

Before determining whether the claims at issue are directed to an abstract idea, we must first determine what the claims are directed to.

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-after all, they take place in the physical world. See Mayo, 132 S.Ct. at 1293 ("For all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.") 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); see Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375, 2016 WL 1393573, at *5 (Fed. Cir. 2016) (inquiring into "the focus of the claimed advance over the prior art").

Enfish, 822 F.3d at 1335.

The step-one analysis requires us to consider the claims "in their entirety to ascertain 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). The question is whether the claims as a whole "focus on a specific means or method that improves the relevant technology" or are ...