Ex Parte Aaron et al

Patent Trial and Appeal Board

Nov 20, 2018

14348016 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/348,016 03/27/2014
26875 7590 11/23/2018
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Francis Aaron
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PALL-19 3131
EXAMINER
EPSTEIN, BRIAN M
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
11/23/2018 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS AARON, JULIEN ROUYER,
SANDRINE RES SAYRE, CLEMENT LAMBRINOS, YOUSRA CHEBBI,
A YMERIC AUGUSTIN, RAPHAEL BARROIS, SYLVAIN GERON, and
ANTOINE GERON
Appeal2017-009148
Application 14/348,016
Technology Center 3600
Before ST. JOHN COURTENAY III, MATTHEW McNEILL, and
BETH SHAW, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-14 and 16-21. Claim 15 is cancelled. We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Bluecarsharing of
Puteaux, France. App. Br. 3.
Appeal2017-009148
Application 14/348,016
STATEMENT OF THE CASE
Introduction
Embodiments of Appellants' invention generally relate to "a method
for managing parking spaces within the context of the automated rental of
vehicles." Spec. 1, 11. 4--5.
Exemplary Claim
1. A method for managing parking spaces within a
context of automated rental of electric vehicles available for
rental over a plurality of sites, called rental sites, each of said
rental sites including at least one parking space, said method
comprising, for at least one rental site, the following steps:
determining an item of data, called availability data, relating to
a presence or not of an available parking space at said rental
site, said determining step comprising, for at least one parking
space of said rental site, [L 1] detecting with a detector element
a presence or an absence of an electrical connection of an
electric vehicle to a charging terminal associated with said
parking space, the charging terminal controlled by a control
element in communication with the detector element, [L2] and
in response to said detecting of an absence of an electrical
connection associated with said parking space, identifying
the parking space as an available parking space;
[L3] transmitting said item of availability data to at least one
currently rented electric vehicle via a wireless communication
network;
displaying said item of availability data in said at least one
rented electric vehicle; and
completing a rental of the rented electric vehicle based on a
connection of the rented electric vehicle to the charging
terminal associated with the available parking space.
2
Appeal2017-009148
Application 14/348,016
App. Br. 20 (Claims Appendix) (Contested limitations Ll-L3 emphasized).
Rejections
A. Claims 1-14 and 16-21 are rejected under 35 U.S.C. § 101, as
being directed to a judicial exception, without significantly more.
Final Act. 3.
B. Claims 1-7, 9-14, 16-18, and 21 are rejected under pre-AIA
§ I03(a) as being obvious over the combined teachings and
suggestions of Cahill et al. (US 2002/0099574 Al published Jul.
25, 2002), Redmann et al. (US 2011/0131083 Al published Jun. 2,
2011), and Morgal et al. (US 2010/0228405 Al published Sep. 9,
2010). Final Act. 7.
C. Claim 8 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
obvious over the combined teachings and suggestions of Cahill,
Redmann, Morgal, and Tillotson et al. (US 2006/02502278 Al
published Nov. 9, 2006). Final Act. 15.
D. Claim 19 is rejected underpre-AIA 35 U.S.C. § I03(a) as being
obvious over the combined teachings and suggestions of Cahill,
Redmann, Morgal, and Shanbhag et al. (US 2010/0007525 Al
published Jan. 14, 2010), and further in view of Kolodziej (US
8,843,307 Bl issued Sep. 23, 2014). Final Act. 16.
E. Claim 20 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
obvious over the combined teachings and suggestions of Cahill,
Redmann, Morgal, and further in view of Stefik et al. (US
2012/0095791 Al published Apr. 19, 2012). Final Act. 18.
3
Appeal2017-009148
Application 14/348,016
Related Appeals
Appellants indicate that this appeal is related to the appeal filed in
U.S. Application Serial No. 14/348,018 (corresponding to PTAB Appeal
2017-009149). App. Br. 3.
Issues on Appeal
Did the Examiner err in rejecting claims 1-14 and 16-21 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
Did the Examiner err in rejecting claims 1-14 and 16-21 under
pre-AIA 35 U.S.C. § 103(a), as being obvious over the cited combinations of
references?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection A under 35 USC§ 101
Mayo/Alice Analysis
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. CLSBanklnt'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
4
Appeal2017-009148
Application 14/348,016
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (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, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the "acts" of a claimed process manipulate only numbers, abstract
concepts or ideas, or signals representing any of the foregoing, the acts are
not being applied to appropriate subject matter. See Gottschalk v. Benson,
409 U.S. 63, 71-72 (1972). "'Phenomena of nature, thoughjust discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work."' In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk, 409
U.S. at 67). Moreover, if a method can be performed by human thought
alone, or by a human using pen and paper, it is merely an abstract idea and is
not patent eligible under§ 101. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
5
Appeal2017-009148
Application 14/348,016
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two, whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Id.
The Examiner's Rejection A under 35 USC§ 101
Regarding the first step of the Alice/ Mayo analysis, the Examiner
concludes that claims 1-14 and 16-21 are directed to a judicial exception,
i.e., an abstract idea:
Claims 1-14 and 16-21 are directed to the abstract idea of
determining and receiving parking space availability. While
independent claims 1, 11, and 16 do not explicitly recite
"determining and receiving parking space availability," the
concept of "determining and receiving parking space
availability" is described by the "detecting," "determining,"
"transmitting," "receiving," and "displaying" steps/functions of
claims 1, 11, and 16. "Determining and receiving parking space
availability" is a concept relating to managing relationships or
transactions between people ("methods of organizing
human activity") similar to the processing of loan information
6
Appeal2017-009148
Application 14/348,016
of Dealertrack, managing an insurance policy of Bancorp, and
managing a game of [b Jingo of Planet Bingo.
Final Act. 3--4 ( emphasis added). 2
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims do not include additional elements that amount to
significantly more than the judicial exception, because:
the detector/sensor, charging terminal including a control
element, electric vehicle, and wireless communication
network as recited in each of independent claims 1, 11, and 16
are generic computer components that performs functions (i.e.
determining/detecting availability data, transmitting the
availability data, displaying the availability data, and
completing a rental) that are generic functions (i.e.
electronically extracting data, receiving, processing, and storing
data, and receiving and transmitting data over a network) that
are well-understood, routine, and conventional activities
previously known to the industry, see Alice Corp, buySAFE,
Cyberfone, Content Extraction and the USPTO July
2015 Update on Subject Matter Eligibility, page 7.
None of the steps/functions of independent claims 1, 11,
and 16 whether taken alone or in an ordered combination
amount to significantly more than the abstract idea
identified above. For example, nothing in independent claims 1,
11, and 16 improve another technology or technical field,
improve the functioning of any claimed computer itself, applies
the abstract idea with a particular machine, or include any
elements that may otherwise be considered to amount to
significantly more than the abstract idea.
Accordingly, independent claims 1, 11, and 16 are ineligible.
2 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340--41 (Fed.
Cir. 2013).
7
Appeal2017-009148
Application 14/348,016
None of the dependent claims when separately
considered in combination with each dependent claims parent
claim( s) overcome the above analysis and are therefore
similarly rejected.
Final Act. 4--5 (emphasis added). 3
For the aforementioned reasons, the Examiner concludes that all
claims 1-14 and 16-21 on appeal are not patent eligible under 35 U.S.C.
§ 101.
Mayo/Alice Analysis -Step 1
Regarding Alice Step 1, Appellants contend:
the Examiner has failed to provide specific evidence in
support of the position that each of claims 1, 11, and 16, as a
whole, is directed to an abstract idea. At pages 3-4 of Final
Office Action, the Examiner alleges that each of these claims is
directed to the abstract idea of "determining and receiving
parking space availability," and, more broadly, to methods of
organizing human activity. However, the Examiner discounts
meaningful limitations of the claims, evidencing a failure to
consider the claims as a whole ... Appellant[ s] assert that
claims 1, 11, and 16 recite technological methods and a system
that are not sufficiently similar to any of the concepts that the
courts have identified as abstract ideas, including "fundamental
economic principles," "certain methods of organizing human
activity," "an idea of itself," and "mathematical
relationships/formulas."
App. Br. 11-12.
3 The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
8
Appeal2017-009148
Application 14/348,016
The Examiner disagrees. The Examiner responds that the prima facie
burden was met "by citing to the limitations that describe the identified
abstract idea and then comparing the identified abstract idea to a plurality of
[ c ]ourt decisions." Ans. 3 ( emphasis added).
In determining whether claims are patent-eligible under Section 101,
our reviewing court guides: "the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were decided."
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir.
2016). The Federal Circuit instructs that "[E]xaminers are to continue to
determine if the claim recites (i.e., sets forth or describes) a concept that is
similar to concepts previously found abstract by the courts." Id. at 1294 n.2.
Here, we note under Alice, step one, the Examiner cites to several
court decisions to support the conclusion that Appellants' claims are directed
to an abstract idea:
"Determining and receiving parking space availability" is a
concept relating to managing relationships or transactions
between people ("methods of organizing human activity")
similar to the processing of loan information of Dealertrack,
managing an insurance policy of Bancorp, and managing a
game of [b Jingo of Planet Bingo.
Final Act. 4.
On this record, we find Appellants fail to traverse the Examiner's
legal conclusion that the claims on appeal are directed to a patent-ineligible
abstract idea, without more, by substantively distinguishing the claims on
appeal from the subject claims and the courts' analyses in the three
9
Appeal2017-009148
Application 14/348,016
aforementioned cases cited by the Examiner (Dealertrack, 4 Bancorp, 5 and
Planet Bingo). 6 Arguments not made are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Moreover, we conclude that Appellants' claimed method (or system)
for managing parking spaces available for rental over a plurality of rental
sites is directed to a fundamental economic practice - managing rental
property (i.e., parking spaces) on a timeshare basis.
Therefore, on this record, we are not persuaded the Examiner erred in
concluding that claims 1-14 and 16-21 are directed to an abstract idea.
Mayo/Alice Analysis -Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Final Act. 3--4;
4 The Examiner is referring to the pre-Alice Federal Circuit opinion:
Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) (the subject
claim 7 of the '841 patent directed to "A computer based method of
operating a credit application and routing system" that selectively received
credit application data, obtained credit report data, and forwarded the credit
application data, was held to be patent ineligible by the court).
5 The Examiner is referring to the pre-Alice Federal Circuit opinion:
Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1279 (Fed.
Cir. 2012) (holding that claims directed to a method of managing a life
insurance policy are patent-ineligible under § 101 because such a method is
akin to an automated mental process-using a computer to perform an
otherwise ineligible process more efficiency than could be accomplished
manually or mentally).
6 The Examiner is referring to the post-Alice non-precedential Federal
Circuit opinion: Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005
(Fed. Cir. 2014) (Managing a game of bingo).
10
Appeal2017-009148
Application 14/348,016
Ans. 3), we tum to the second part of the Alice/Mayo analysis. We analyze
the claims to determine if there are additional limitations that individually,
or as an ordered combination, ensure the claims amount to "significantly
more" than the abstract idea. Alice, 134 S. Ct. at 2357 (internal quotations
and citation omitted).
Regarding Alice Step 2, Appellants address the purported inventive
concept of the claims. Appellants urge:
Nevertheless, even if claims 1, 11, and 16 are determined to
recite abstract ideas, these claims readily satisfy Step 2B of the
subject matter eligibility test, because each claim as a whole
recites "significantly more" than an abstract idea.
In support Appellants cite to Diamond v. Diehr, 450 U.S. 175 (1981)
App. Br. 12-13. Appellants urge:
Similar to the claims in Diamond, Appellant[s'] claims 1, 11,
and 16 recite meaningful limitations that improve existing
processes and systems for managing parking spaces for electric
vehicles. For example, each claim positively recites detecting
with a detector element (or sensor) an absence of an electrical
connection between an electric vehicle (or electric battery) and
a charging terminal associated with a parking space, the
charging terminal controlled by a control element that
communicates with the detector element. Each claim further
recites that detection of the absence of an electrical connection
yields an identification of the corresponding parking space as
an available parking space.
App. Br. 13.
We are not persuaded by Appellants' attempt (id.) to analogize the
claimed invention on appeal to the patent-eligible "process for molding raw,
uncured synthetic rubber into cured precision products," as claimed by Diehr
(Respondent) (450 U.S. at 175).
11
Appeal2017-009148
Application 14/348,016
Appellants have not persuasively explained how the claimed "method
for managing parking spaces within a context of automated rental of electric
vehicles available for rental over a plurality of sites" ( claim 1) is similar to
the Diehr chemical process for molding precision synthetic rubber products
that involved the transformation of an article (raw, uncured synthetic
rubber), into a different state or thing. See e.g., Diehr at 184:
Analyzing respondents' claims according to the above
statements from our cases, we think that a physical
and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of
possibly patentable subject matter. That respondents'
claims involve the transformation of an article, in this
case raw, uncured synthetic rubber, into a different state
or thing cannot be disputed.
( emphasis added).
Appellants note "[t]he Court [in Diehr] found that the measurement
step amounted to a meaningful limitation that improved an existing
technological process, thereby establishing "'significantly more' than the
formula and rendering the claims patent eligible." App. Br. 13.
However, we find Appellants' arguments unavailing, because
Appellants fail to establish any comparable measurement step or
transformation of an article into a different state or thing. See Diehr at 184.
Appellants also contend: "[a]s discussed below, the prior art fails to
render obvious claims 1, 11, and 16 [Jin view of at least these limitations,
and thus the limitations add meaningful value to the claims. Accordingly,
these limitations establish 'significantly more' than an abstract idea so as to
satisfy Step 2B of the subject matter eligibility test." (App. Br. 13).
However, we disagree with Appellants that "the prior art fails to
render obvious claims 1, 11, and 16." Id. See infra the evidence cited by
12
Appeal2017-009148
Application 14/348,016
the Examiner that supports our affirmance of the Examiner's rejections
under 35 U.S.C. § 103(a).
Moreover, the Supreme Court guides: "The 'novelty' of any element
or steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond v. Diehr,
450 U.S. 175, 188-89 (1981) (emphasis added). Our reviewing court further
emphasizes that "[e]ligibility and novelty are separate inquiries." Two-Way
Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed.
Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016) (holding that "even assuming" that a particular
claimed feature was novel does not "avoid the problem of abstractness").
In reviewing the record, we find the claims on appeal are silent
regarding specific limitations directed to an improved computer system,
processor, memory, network, database, or Internet. Therefore, we find
Appellants' claimed invention does not provide a solution "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks," such as considered by the court
in DDR Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014) (emphasis added).
Further regarding the use of the recited generic "wireless
communication network" ( claims 1 and 16), "system" and "display" ( claim
11 ), the Supreme Court has held "the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention." Alice, 134 S. Ct. at 2358; see also BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)
13
Appeal2017-009148
Application 14/348,016
("An abstract idea on 'an Internet computer network' or on a generic
computer is still an abstract idea."). On this record, we are of the view that
Appellants' claims do not operate the recited generic computer components
in an unconventional manner to achieve an improvement in computer
functionality.
Our reviewing court provides additional guidance: See FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use
of generic computer elements like a microprocessor or user interface do not
alone transform an otherwise abstract idea into patent-eligible subject
matter."); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) (claims reciting, inter alia, sending messages over a
network, gathering statistics, using a computerized system to automatically
determine an estimated outcome, and presenting offers to potential
customers found to merely recite "'well-understood, routine conventional
activities"' by either requiring conventional computer activities or routine
data-gathering steps (internal citation omitted)); see also Elec. Power Grp.,
830 F.3d at 1355 ("We have repeatedly held that such invocations of
computers and networks that are not even arguably inventive are
'insufficient to pass the test of an inventive concept in the application' of an
abstract idea." (quoting buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1353, 1355 (Fed. Cir. 2014))); Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Rather, the claims recite
both a generic computer element-a processor-and a series of generic
computer 'components' that merely restate their individual functions ....
That is to say, they merely describe the functions of the abstract idea itself,
without particularity. This is simply not enough under step two.").
14
Appeal2017-009148
Application 14/348,016
The Supreme Court additionally guides that the "prohibition against
patenting abstract ideas 'cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment' or [by] adding
'insignificant postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting
Diehr, 450 U.S. at 191-92).
On this record, we find Appellants have not persuasively established
that the guidance of Die hr is applicable to claims 1-14 and 16-21. Nor have
Appellants established that claims 1-14 and 16-21 are directed to an
improvement in the recited generic system and display ( claim 11 ), or the
generic wireless communication network of claims 1 and 16. Therefore, we
conclude that none of the claim limitations, viewed both individually and as
an ordered combination, amount to significantly more than the judicial
exception in order to sufficiently transform the nature of the claims into
patent-eligible subject matter.
In light of the foregoing, we conclude, under the Mayo/Alice analysis,
that each of Appellants' claims 1-14 and 16-21, considered as a whole, is
directed to a patent-ineligible abstract idea (under step one), and under step
two, does not recite something significantly more to transform the nature of
the claim into a patent-eligible application.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection A under 35 U.S.C. § 101 of claims 1-14 and 16-21, as
being directed to a judicial exception, without significantly more. 7
7 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
15
Appeal2017-009148
Application 14/348,016
Rejection B of Independent Claim 1 under 3 5 US. C. § 103 (a)
Issues: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by
finding the cited combination of Cahill, Redmann, and Morgal would have
taught or suggested the contested limitations L 1, L2, and L3:
[L 1] detecting with a detector element a presence or an
absence of an electrical connection of an electric vehicle to a
charging terminal associated with said parking space;
[L2] and in response to said detecting of an absence of
an electrical connection associated with said parking space,
identifying the parking space as an available parking space;
[L3] transmitting said item of availability data to at least
one currently rented electric vehicle via a wireless
communication network[,]
within the meaning of representative claim 1? 8 ( emphasis added).
Contested Limitations LI and L2 (Claim 1)
[L 1] detecting with a detector element a presence or an
absence of an electrical connection of an electric vehicle to a
charging terminal associated with said parking space;
[L2] and in response to said detecting of an absence of
an electrical connection associated with said parking space,
identifying the parking space as an available parking space;
8 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); see, e.g., Spec. 10, 11. 15-16 ("It is
understood that the embodiments which will be described below are in no
way !imitative.").
16
Appeal2017-009148
Application 14/348,016
The Examiner finds Cahill (in combination with Redmann and
Morgal) teaches or suggests contested limitation LI at paragraphs 3, 7, 10,
45, 46, and 49. See Final Act. 8. The Examiner finds Redmann (in
combination with Cahill and Morgal) teaches or suggests contested
limitation L2 at paragraphs 40-52, 80, 81, 93, 95-96, and Figure 6B. See
Final Act. 8.
Appellants contest limitation L 1 by arguing that an artisan would not
have been motivated to modify the system of Cahill to use Redmann' s less
accurate method of detecting the presence of a vehicle in a parking space.
App. Br. 17. As emphasized by Appellants (id.), "Cahill '547 already
utilizes sensors to detect the physical presence of a vehicle in a
parking space such as by optical recognition, motion sensing, and proximity
detection. (See, Cahill '547 at paragraph 0045.)." Appellants urge that
"Redmann '083 recognizes that the absence of an electrical connection does
not detect the availability of a parking space in the context of general
parking of vehicles." App. Br. 17.
Claim Construction 9
In response, the Examiner further explains the basis for the rejection,
and concludes, as an initial matter of claim construction, that the availability
of a parking space is based on an absence of an electrical connection, as
defined in the claims:
9 A determination of anticipation, as well as obviousness, involves two steps.
First is construing the claim, a question of law, followed by, in the case of
anticipation or obviousness, a comparison of the construed claim to the prior
art. This comparison process involves fact-finding. Key Pharms. v. Hereon
Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998) (citations omitted).
17
Appeal2017-009148
Application 14/348,016
claims 1, 11, and 16 explicitly define availability of a parking
space based on "an absence of an electrical connection."
Therefore any Appellant[-]suggested weakness in the data of
Redmann including that a vehicle may remain in a parking
space even if disconnected is equally applicable to
Appellants['] claims themselves. That is, Appellant[s] [have]
explicitly defined availability in claims 1, 11, and 16 to be
based on absence of an electrical connection and therefore
Appellants[s'] arguments that a PHOSITA may recognize a
weakness in using that data cannot be persuasive.
Ans. 6 ( emphasis added).
We agree with the Examiner's claim interpretation, because limitation
L2 identifies the parking space as an available parking space in response to
detecting an absence of an electrical connection associated with said
parking space. Therefore, the Examiner is correct that the availability of a
parking space is expressly defined in the claims as being based on an
absence of an electrical connection. See Ans. 6.
A claim meaning is reasonable if one of ordinary skill in the art would
understand the claim, when read in light of the specification, to encompass
the meaning. See In re American Academy of Science Tech Center, 367 F.3d
1359, 1364 (Fed. Cir. 2004).
Applying this guidance here, we also tum to Appellants' Specification
for context, and find the Examiner's claim construction is consistent with the
Specification:
The availability status of at least one parking space can be
determined according to at least one of the following options:
- by measuring an item of data of the presence of a vehicle in
said parking place of said rental site, for example by a presence
18
Appeal2017-009148
Application 14/348,016
detection camera, an infrared sensor, a weighing device, a
current loop, etc. such measuring of an item of presence status
data preferably carried out at the rental site, and/or
- when said parking place is provided with charging means,
called a charging terminal, by detecting an electrical connection
of said charging terminal to a vehicle, for example by the use
of a pilot wire, such a detection being preferably carried out at
the rental site, and
- optionally, by consulting a database indicating if said parking
place is reserved or not, consultation being able to be carried
out at the rental site or at the central site.
In a comprehensive embodiment, the availability status of a
parking space is determined by the use of all of the options
combined with each other.
Spec. 5 ( emphasis added).
We emphasize that the Examiner's ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
"[T]he law does not require that the references be combined for the reasons
contemplated by the inventor." In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992). "[ A ]ny need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining"
references. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007).
Moreover, "'the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made."' Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (Emphasis added); see also
MPEP § 2123.
19
Appeal2017-009148
Application 14/348,016
Turning to the evidence cited by the Examiner, we note Cahill ,r 45
describes the use of monitors (i.e., sensors) "[to] detect the presence of
absence of vehicles in the parking spaces defining a current empty/occupied
status for each parking space." As pointed out by Appellants (App. Br. 17),
Cahill ,r 45 describes:
The parking area monitors may be any suitable vehicle
detection system such as optical recognition, motion sensing,
and proximity detection. Each parking space may have a
dedicated monitor as shown in FIG. 1, or a single monitor may
monitor multiple spaces.
After reviewing the evidence, we observe Cahill is silent regarding
any mention of electric vehicles. However, we find the availability of a
parking space with a charging capability would have been the precise nature
of the problem to be solved, as would have been considered by an owner of
an electric vehicle (i.e., an artisan), at the time of Appellants' invention.
Thus, a solution to this problem was not provided by Cahill, when
considered alone, from the perspective of the artisan, who would have had
no knowledge of Appellants' claims, Specification, or drawings.
As explained by the Examiner:
Cahill is silent with regards to electrical vehicles but Redmann
discloses both "ordinary parking spaces" and "EV charging
enabled parking spaces" (Paragraph 0040 of Redmann) ...
since Cahill is silent with regards to electric vehicles and
electric vehicle recharging kiosks, Cahill cannot discloses
occupancy sensors for parking spaces having recharging
kiosks. Redmann was cited to cure this deficiency and it would
be obvious to a PHOSITA to incorporate the occupancy
decision making approach of Redmann to the method and
system of Cahill in order to provide accurate occupancy
information for EV parking spaces.
Ans. 7-8 ( emphasis added).
20
Appeal2017-009148
Application 14/348,016
The Supreme Court guides: "[A] combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR, 550 U.S. at 401.
Applying this reasoning here, we find the Examiner's proffered
rationale for the combination is supported by a preponderance of the
evidence. 10 We find an artisan would have been motivated to look to the
teachings of Redmann, in combination with Cahill, to determine whether a
parking space with a charging capability is available at a particular parking
lot or parking garage, because Redmann ,r 81 expressly teaches: "charging
kiosk 154 may provide an indicator 450, which may be on the body of kiosk
154, or may be several feet above and/or away from it, to indicate which
charging kiosks are available (i.e., not occupied, signaled by indicator 450
lighting up green)."
Moreover, we agree with the Examiner that the proffered combination
of Cahill, Redmann, and Morgal would have merely realized predictable
results from familiar elements. See Ans. 8: "a PHOSITA would have
recognized the results were predictable (Pages 9 and 14 of the July 25, 2016
Final Office Action)." See KSR, 550 U.S. at 401.
10 The Board's decision is the final decision of the Agency on patentability,
and thus the Board reviews the fact finding of the Examiner using a
preponderance of the evidence (more likely than not) standard. In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). See also 37 C.F.R. § 42.l(d)
("Evidentiary standard. The default evidentiary standard is a preponderance
of the evidence."). "After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to persuasiveness of
argument." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
21
Appeal2017-009148
Application 14/348,016
In the Reply Brief ( 4), Appellants assert the Examiner has relied upon
impermissible hindsight in formulating the rejection. However, no evidence
is provided in support. 11 In particular, Appellants have not provided
objective evidence of secondary considerations ( e.g., unexpected results,
long-felt but unmet need, commercial success), which "operates as a
beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Nor do Appellants
provide any evidence that the elements taught by the cited references are
anything other than elements which would have been familiar to artisans of
ordinary skill at the time of the invention. 12
On this record, Appellants have not provided persuasive evidence that
combining the respective teachings of Cahill, Redmann, and Morgal ( as
proffered by the Examiner-Final Act. 9-10; Ans. 7-8) would have been
"uniquely challenging or difficult for one of ordinary skill in the art," or that
such a combination would have "represented an unobvious step over the
11 It is well settled that mere attorney arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence). Thus, counsel's arguments cannot take the place of factually
supported objective evidence. See In re Huang, 100 F.3d 135, 139-40 (Fed.
Cir. 1996). See also Manual of Patent Examining Procedure (MPEP) § 2145
(9th ed. Nov. 2015) ("Attorney argument is not evidence unless it is an
admission, in which case, an examiner may use the admission in making a
rejection.").
12 "The person of ordinary skill in the art ['PHOSITA'] is a hypothetical
person who is presumed to know the relevant prior art." In re GP AC, 57
F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-
Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).
22
Appeal2017-009148
Application 14/348,016
prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007). Appellants have not identified any knowledge gleaned
only from the present application that was not within the level of ordinary
skill at the time the claimed invention was made. See In re McLaughlin, 443
F.2d 1392 (CCPA 1971).
Applying the guidance from our reviewing courts here, and based
upon our review of the record, we find the Examiner sets forth sufficient
articulated reasoning having a rational underpinning to support the proffered
combination of Cahill, Redmann, and Morgal. See Final Act. 4--6, Ans. 2---6.
Further, we find the Examiner provided sufficient evidence of a
predictable result from combining the familiar elements of Cahill, Redmann,
and Morgal, which we find outweighs any purported indicia of
impermissible hindsight.
Regarding contested limitation L2, Appellants note: "The Examiner
looks to Redmann '083 in an effort to cure the deficiencies of Cahill '57 4,
and alleges that Redmann '083 teaches 'detecting ... a presence or absence of
an electrical connection ... and, in response to said detecting ... identifying
the parking space as an available space.' (Final Office Action at p.
8.)(Emphasis added.)" App. Br. 16.
Appellants disagree with the Examiner's findings, and contend:
Redmann '083 discusses a charging kiosk 154 having an
indicator 450 disposed on the body of the kiosk or adjacent the
kiosk for providing a visual indication regarding the status of
charging to persons within sight of the kiosk. (See, Redmann
'083 at paragraph 0081 and FIG. 4.) Paragraph 0096 of
Redmann '083 only states that " [ f]ollowing the cessation of
charging ... telltale indicator 450 may be updated .... For
instance, if charging of a vehicle has just [been] manually
23
Appeal2017-009148
Application 14/348,016
interrupted ... then the indicator may be set to green, indicating
a charging parking space 150 is imminently opening up."
(Emphasis added.) Accordingly, Redmann '083 recognizes that
the mere cessation of charging does not mean that the space is
available. Indeed, persons skilled in the art would recognize
that charging may be complete and the vehicle may remain
parked in the space for an indeterminate amount
App. Br. 16-17.
However, Appellants' singular focus on Redmann fails to consider the
combined teachings and suggestions of the references cited by the Examiner.
Even if Appellants are correct that "Redmann '083 recognizes that the mere
cessation of charging does not mean that the space is available" (id. at 16),
we find the use of Cahill' s monitors (i.e., sensors) to determine whether the
space is physically occupied by a vehicle, as described at paragraph 45,
would have cured any such deficiency with Redmann. Accordingly, on this
record, we find a preponderance of the evidence supports the Examiner's
underlying factual findings and ultimate legal conclusion of obviousness
regarding contested limitations L 1 and L2 of representative claim 1.
Contested Limitation L3 (Claim 1)
[L3] transmitting said item of availability data to at least one
currently rented electric vehicle via a wireless communication
network;
The Examiner finds limitation L3 is taught or suggested (in
combination with Redmann and Morgal) by Cahill at Figure 1 and
paragraphs 10 and 47. See Final Act. 8.
Appellants contend:
Redmann '083 also does not teach or suggest transmitting to a
rented electric vehicle over a wireless communication network
24
Appeal2017-009148
Application 14/348,016
an item of availability data that is determined based on the
detecting of an absence of such electrical connection. Rather,
indicator 450 of Redmann '083 only provides a visual indication
of the status of charging ( and the possibility that an associated
space may be opening up) to persons within sight of the kiosk.
For at least these reasons, Redmann '083 fails to teach or
suggest a modification of Cahill '547 that results in the claimed
invention. Morgal '405 was only cited with respect to
completing a rental of an electric vehicle and does not cure the
deficiencies of Cahill '574 and Redmann '083 discussed above.
Appellant[ s] therefore request[] that the rejections of claims 1,
11, and 16 be reversed.
App. Br. 17.
In response, the Examiner disagrees, and notes "the 'transmission'
step/function was rejected under primary reference Cahill (Pages 8 and 13 of
the July 25, 2016 Final Office Action)." Ans. 8.
On this record, we find Appellants' contentions are not persuasive.
(App. Br. 17), because Appellants attack the teachings of the references in
isolation and do not specifically rebut the Examiner's ultimate legal
conclusion of obviousness, which is based on the combined teachings and
suggestions of Cahill, Redmann and Morgal. 13
However, in the Reply Brief, Appellants contend:
Appellant[s] note[], however, that page 16 of Appellant[s']
Brief explains how Cahill '54 7 does not disclose transmitting
availability data based on detecting an absence of an electrical
connection to a rented electrical vehicle in view of the
Examiner's admission that Cahill '54 7 does not teach or suggest
determining availability data relating to the presence or not of
an available parking space by detecting the presence or absence
13 See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. Id.
25
Appeal2017-009148
Application 14/348,016
of such an electrical connection. Accordingly, Appellant[s']
remarks regarding Redmond '083 shows that the combination
of Redmond '083 with Cahill '54 7 fails to cure the deficiencies
of Cahill '54 7 previously discussed.
Reply Br. 5.
Appellants' argument in the Reply Brief is grounded upon an
erroneous premise. We conclude that contested limitations L 1 and L2 are
obvious over the combined teachings and suggestions cited prior art of
record, for the reasons discussed above.
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness regarding contested limitations L 1, L2, and L3 of
representative claim 1. Accordingly, for at least the aforementioned reasons,
we sustain the Examiner's rejection B under§ 103(a) of representative
independent claim 1.
Claims 2-7, 9-14, 16-18, and 21 rejected under§ 103 Rejection B
The remaining claims not argued separately below (i.e., grouped
claims 2-7, 9-14, 16-18, and 21), also rejected under rejection B, fall with
representative claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
Remaining Dependent Claims 8, 19, and 20 rejected under§ 103
Appellants provide a separate heading in the Appeal Brief (18) and
advance nominal arguments pertaining to remaining dependent claims 8, 19,
and 20, that were rejected under § 103 rejections C, D, and E, respectively.
However, we find Appellants' arguments urging patentability are
grounded on an erroneous premise that the additional secondary references
26
Appeal2017-009148
Application 14/348,016
cited for rejections C, D, and E, do not cure the purported deficiencies with
the base combination of Cahill, Redmann, and Morgal, as relied on by the
Examiner to support rejection B.
For the reasons discussed above regarding § 103 rejection B of claim
1, we find no such deficiencies regarding the base combination of Cahill,
Redmann, and Morgal. Therefore, we sustain § 103 rejections C, D, and E of
claims 8, 19, and 20, respectively.
Accordingly, on this record, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness under§ 103(a) for all claims 1-14 and 16-21 on
appeal.
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner's Answer
will not be considered except for good cause. See 37 C.F.R. § 4I.41(b)(2).
CONCLUSIONS
The Examiner did not err in rejecting claims 1-14 and 16-21 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
The Examiner did not err in rejecting claims 1-14 and 16-21 under
35 U.S.C. § 103(a), as being obvious over the cited combinations of
references.
27
Appeal2017-009148
Application 14/348,016
DECISION
We affirm the Examiner's decision rejecting claims 1-14 and 16-21
under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-14 and 16-21
under pre-AIA 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
28