Ex parte Rincover

• Decision Date: 23 July 2020
• Docket Number: Application 13/274,Appeal 2019-001262,126
• Parties: Ex parte AARON RINCOVER, TOMASZ DOBROWOLSKI, and ANDREA GIAMMARCHI Technology Center 2100
• Court: Patent Trial and Appeal Board

Ex parte AARON RINCOVER, TOMASZ DOBROWOLSKI, and ANDREA GIAMMARCHI Technology Center 2100

Appeal 2019-001262

Application 13/274, 126

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

July 23, 2020

FILING DATE: 10/14/2011

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

DECISION ON APPEAL

BAUMEISTER, ADMINISTRATIVE PATENT JUDGE.

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's fin a l 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 U.S.P.Q.2d 1072, 1075 (BPAI 2010) (precedential).

We AFFIRM.

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

[(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." F in a l Ac t . 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 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 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 (c it in g 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 (c it in g 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 concept' sufficient to 'transform' the claimed abstract idea into a patent-e ligib le a p p lic a t io n ." 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-e ligible invention." Id. B. USPTO Section 101 Gui dance:

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/sit e s / default/f ile s / 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

(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...