Ex Parte Dickinson et al

Patent Trials and Appeals Board

Jun 26, 2019

10974335 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
10/974,335
46188 7590
Nixon Peabody LLP
P.O. Box 26769
FILING DATE
10/26/2004
06/28/2019
San Francisco, CA 94126
FIRST NAMED INVENTOR
Blake Dickinson
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.
435410-013 5190
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
ipairlink@nixonpeabody.com
sfpatents@nixonpeabody.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BLAKE DICKINSON, LISA LEI HORIUCHI,
and NATHANIEL JORDAN RAMER
Appeal 2018-001356 1
Application 10/974,3352
Technology Center 3600
BeforeBRADLEYB. BAYAT, TARAL. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the decision
rejecting claims 1-5, 19-23, 28, and 37-48, which are the only claims
pending in the Application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
May 17, 2017), Reply Brief ("Reply Br.," filed Nov. 22, 2017), as well as
the Examiner's Answer ("Ans.," mailed Sept. 22, 2017) and Final Office
Action ("Final Act.," mailed May 18, 2016).
2 According to the Appellants, the real party in interest is "Aerovironment,
Inc." Appeal Br. 3. We note that "W ebasto Charging Systems, Inc." is the
assignee recorded (Aug. 29, 2018) with the USPTO as per reel/frame
number 046970/0124.
Appeal 2018-001356
Application 10/974,335
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants' "invention relates to the field of computer science. More
particularly, the present invention relates to dyamic [sic] replenisher
management." Spec. ,-J 2. Independent claim 1, reproduced below, is
illustrative of the subject matter on appeal. 3
1. A computer-implemented method for replenishable
device asset management, the method comprising:
by a device manager having one or more processors and
memory storing one or more programs for execution by the one
or more processors:
receiving, from fleet assets comprising a plurality
of replenishable devices and vehicles associated with the
replenishable devices, device measurement data that
includes, for at least one replenishable device and one
associated vehicle: historical data and one or more of
identification data, and real-time data, the real-time data
including real-time descriptive data and real-time
performance data;
accumulating the device measurement data over a
period of time;
storing the accumulated device measurement data
for the fleet assets in the memory;
analyzing the device measurement data to create
one or more analysis results;
preparing one or more recommendations using the
one or more analysis results; and
issuing the one or more recommendations to
manage the fleet assets, the one or more
3 The independent claims reproduced in Appellants' Claims Appendix
improperly includes an amendment submitted after Final Office Action
(Amendment 2, 3, 5 (filed Sept. 19, 2016), which was not entered into the
record by the Examiner. See Advisory Action 1, box 7 (mailed Oct. 13,
2016). As such, the Amendments to the Claims filed February 19, 2016 will
be referenced hereinafter.
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Application 10/974,335
recommendations comprising recommendations to
perform one or more of:
switching a first vehicle with a second
vehicle if the first vehicle is over utilized, the
second vehicle is under utilized, and the second
vehicle is capable of performing substantially the
same functions as the first vehicle;
adding one or more vehicles to the fleet if
the accumulated device measurement data
indicates the fleet as a whole is over utilized; and
removing one or more vehicles from the
fleet if the accumulated device measurement data
indicates the fleet as a whole is under utilized,
wherein:
the identification data describes one or more time-
invariant attributes of a replenishable device or a vehicle;
the historical data describes one or more time-variant
attributes of a replenishable device or a vehicle; and
the real-time data describes a single sample of one or
more time-variant attributes of a replenishable device or a
vehicle.
Rejections
Claims 1-5, 19-23, 28, and 37-48 are rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
Claims 1-5, 19-23, 28, and 37-48 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.
Claims 1-3, 5, 19-21, 23, 28, 37-40, 42, 43-46, and 48 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Uyeki (US 2002/0184078 Al,
pub. Dec. 5, 2002) and Setoguchi et al. (US 5,672,837, issued Sept. 30,
1997) ("Setoguchi").
Claims 4, 22, 41, and 47 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Uyeki, Setoguchi, and Official Notice.
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Application 10/974,335
ANALYSIS
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. But the
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. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, first described in
Mayo and further clarified in Alice. Id. at 217-18 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)).
According to 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. Kappas, 561 U.S.
593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the
basic concept of hedging, or protecting against risk.").
If the claim is "directed to" an abstract idea, we tum 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-
eligible application." Alice, 573 U.S. at 221 ( citation 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. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
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generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
USPTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). Under Step 2A Prong One, the
Guidance extracts and synthesizes key concepts identified by the courts as
abstract ideas to explain that the abstract idea exception includes the
following groupings of subject matter: (a) mathematical concepts, (b) certain
methods of organizing human activity, and ( c) mental processes. Guidance,
84 Fed. Reg. at 52. Under Step 2A Prong Two, the judicial exception (i.e.,
an abstract idea) is evaluated for integration into a practical application (see
MPEP §§ 2106.05(a)-(c), (e)-(h)).4 Id. at 54. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, under Step 2B of the Guidance, the Examiner looks to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, 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.
Id. at 56.
4 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of Office guidance). See Guidance, 84
Fed. Reg. at 54-56.
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Consistent with Step 2A Prong One, the Examiner determined the
claimed invention is directed to a judicial exception because "the process of
'analyzing the device usage information [ . .] to create one or more analysis
results; preparing one or more recommendation [ . .]; issuing one or more
recommendation [ . .] ' falls under the abstract idea of organizing human
activities." Reply Br. 2; see Guidance, grouping (b) supra.
Appellants argue all claims together as a group. See Appeal Br. 9-10.
We select claim 1 as the representative claim for the group; thus, claims 2-5,
19-23, 28, and 37-48 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
In their Appeal Brief, Appellants do not disagree or contest the Examiner's
characterization of the abstract idea. 5 Appellants acknowledge that "[t]he
claims herein are directed to a replenishable device asset management
method that is implemented on, for example, a personal computer" (Appeal
Br. 9), and citing Enfish,6 Appellants argue:
The claimed method provides a relatively integrated
replenishable device management system in an automatic
manner, and also provides relatively efficient replenishable
device asset resource allocation. Similar to Enfish, the claims
at issue are directed to "a specific implementation of a solution
to a problem in the software arts," and not an abstract idea.
Under Enfish, Appellant[ s] only need[] to display that the
claims define specific asserted improvements ( and are not
abstract).
5 Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential) ("If an
appellant fails to present arguments on a particular issue - or, more
broadly, on a particular rejection- the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.").
6 Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
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Id. at 10. Appellants also draw a parallel between "the process of McR0"7
and the claimed invention. Reply Br. 3.
The Examiner responds:
However, Appellant[s'] argument above is not persuasive
because Enfish is relat[ ed] to the finding of technological
improvement in the computer where a database architecture
makes the searching faster; while Applicant claimed subject
matter as Applicant asserted above are not the improvement to
computer functionality and rather they are directed to the use of
generic computer as a tool for performing the abstract idea
( analyzing the device usage information [ ... ] to create one or
more analysis results; preparing one or more recommendation
[ ... ] ; issuing one or more recommendation [ .... ]). There is no
indication about special structure of the computer and thus does
not show any improvement to the functioning of the computer
and this also has been admitted by Applicant {Specification par.
0008} which merely describes the processor with memory as a
general purpose machines and therefore is not considered as
significantly more than the abstract idea.
Ans. 17-18. We agree with the Examiner.
We disagree with Appellants' argument that the claims reflect "'non-
abstract improvements to computer technology"' in view of Enfish. Appeal
Br. 9. Indeed, there is a fundamental difference between computer
functionality improvements, on the one hand, and uses of existing computers
as tools to perform a particular task, on the other. In Enfish, for example, the
court noted that "[ s ]oftware can make non-abstract improvements to
computer technology just as hardware improvements can." Enfish, 822 F.3d
at 13 3 5. The court asked "whether the focus of the claims is on [a] specific
7 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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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." Id. at 1335-36. The court found that the "plain focus of the
claims" there was on an improvement to computer functionality itself ( a self-
referential table for a computer database, designed to improve the way a
computer carries out its basic functions of storing and retrieving data), not
on a task for which a computer is used in its ordinary capacity. Id.
Appellants have not offered any persuasive evidence or technical reasoning
that the computer implementation improves the functioning of the claimed
"device manager" itself. Efficiency through automation, which Appellants
argue is the technological improvement over the prior art (Appeal Br. 1 O; see
also Spec. ,i,i 3-4), does not reflect an improvement to the functioning of the
claimed computer processor but rather invokes the computer as a tool to
manage device assets efficiently.
In McRO the court asked whether the claim as a whole "focus[ es] on a
specific means or method that improves the relevant technology" or is
"directed to a result or effect that itself is the abstract idea and merely
invoke[s] generic processes and machinery." McRO, 837 F.3d at 1314-15
( Claims determined not abstract because they "focused on a specific asserted
improvement in computer animation."). The claims in McRO were directed
to a system of lip synchronization and facial expressions of animated
characters, and the court concluded that the computerized system in McRO
operated by rules whose implementation was not previously available
manually. Id. at 1316. Here, in contrast to McRO, implementation was
previously available and conducted, although without computer assistance.
And, although manual review is time consuming and difficult to scale
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because "the burden on the operator increases as the number of replenishable
device assets increases" (Spec. ,i 3), computer-based efficiency does not
save an otherwise abstract method. See Bancorp Servs., L.L. C. v. Sun Life
Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1277-78 (Fed. Cir. 2012)
(Performance by computer of operations that previously were performed
manually or mentally, albeit less efficiently, does not convert a known
abstract idea into eligible subject matter.). Unlike Enfish and McRO, we
find the focus of the claim as a whole here is directed to a result or effect
that itself is the abstract idea, because the claimed computer processor is
merely invoked as a tool for automating "a replenishable device asset
management method," as described by Appellants. See Spec. ,i 4
("Accordingly, a need exists in the art for a solution that provides relatively
integrated replenishable device management. A further need exists for such
a solution that is relatively automated. Yet a further need exists for such a
solution that provides relatively efficient replenishable device asset resource
allocation."). Therefore, we determine that the claims do not "apply, rely
on, or use 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," i.e., the claims do not
integrate the abstract idea into a practical application. See Guidance, 84 Fed.
Reg. at 54.8
Under the second step of the Alice and Mayo framework, we are not
apprised of error in the Examiner's determination that the elements of the
claim do not contain an "inventive concept" sufficient to "transform" the
8 For purposes of maintaining consistent treatment within the Office, these
considerations are made under Step 1 of Alice (Step 2A of Office guidance).
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claimed abstract idea into a patent-eligible application. In the Appeal Brief,
Appellants contend that they "no longer need[ ] to identify the inventive
concept." Appeal Br. 10. And, any basis for asserting error in this regard
(see Reply Br. 4-5) has been waived. See 37 C.F.R. § 41.37(c)(l)(vii).
Thus, we are not persuaded of error in the Examiner's determination
that claim 1 is directed to non-statutory subject matter. Accordingly, we
sustain the rejection of independent claim 1 under 35 U.S.C. § 101, and
claims 2-5, 19-23, 28, and 37-48, which fall with claim 1.
35 U.S.C. § 112, second paragraph
Appellants do not contest the rejection of claims 1-5, 19-23, 28, and
37-48 under 35 U.S.C. § 112, second paragraph. See Appeal Br. 9-12.
Instead, Appellants introduce new arguments not presented in the original
Brief. See Reply Br. 5-6. In particular, Appellants argue that the after Final
amendments submitted (see n.3 supra) "should have been entered." Reply
Br. 6. First, the term "Reply Brief' is exactly that, a brief in reply to new
rejections or new arguments set forth in an Examiner's Answer; Appellants
may not present arguments in a piecemeal fashion. As such, this basis for
asserting error is waived. See 37 C.F.R. § 41.37(c)(l)(vii). Second,
Appellants could have filed a Petition to the Director contesting the
Examiner's decision not to enter the After Final Amendment, but the Board
will not ordinarily hear a question that should be decided by the Director on
petition.
Accordingly, we summarily sustain the rejection.
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35 U.S.C. § 103
Appellants argue independent claims 1, 19, and 28 as a group. See
Appeal Br. 10-12. We select claim 1 as the representative claim for the
group. Claims 19 and 28 stand or fall with claim 1. We are not persuaded
of error by Appellants' contention that the Examiner failed to make a prima
facie case of obviousness. Appeal Br. 11. In particular, Appellants argue
"Uyeki merely describes receiving measurement/parameter information and
fails to teach or suggest receiving historical information in conjunction with
realtime data/identification data. See, for example, paras. [0016, 0029, and
0035] and Figure 1. Setoguchi does not overcome this deficiency,
particularly in light of the features high-lighted above." Id.
Responding to Appellants' argument, the Examiner asserts that this
argument is not persuasive because UYEKI { see at least figures
1-2, pars. 0016, 0029 discloses the central computer 12 receives
vehicle parameter information (usage information) transmitted
from the vehicle sensors relating to the vehicle's current fuel
level, battery charge and mileage status (which implies vehicle
real time descriptive data, and historical data). Also UYEKI
discloses at least par. 0017, the fleet assets comprising a
plurality of replenishable devices and vehicles e.g. the vehicle
in a fleet have the desirable high fuel and battery levels and
consistent mileage level}; Note: The claim only requires
historical data and at least one of ( 1) "identification data", and
(2) "real-time data" for at least one replenishable device (A)
and one associated vehicle (B). This means that for (A):
historical data and at least one of ( 1) or (2 ); and for (B):
historical data and at least one of ( 1) or (2 ). In the other words,
there is no requirement for the at least one replenishable device
(A) and one associated vehicle (B) to have the same selections
of measurement data from (1) or (2) and this seems to be
consistent with Applicant[s' S]pecification (at least tables 4-6).
Since UYEKI discloses receiving vehicle parameter
information transmitted from the vehicle sensors relating to the
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vehicle's current fuel level, battery charge and mileage status,
UYEKI discloses the device measurement data that is from at
least one replenishable device ( e.g. battery via the sensor)
includes battery charge data, and device measurement data from
one associated vehicle ( e.g. vehicle mileage sensor, vehicle fuel
level sensor) includes fuel level, and mileage measurement
data. In the other words, UYEKI discloses receiving the battery
charge data from the battery sensor, and receiving the fuel level
from the fuel sensor of the associate vehicle. Therefore,
UYEKI meets the claimed limitation.
Ans. 18-19; see also Final Act. 7-8.
We are not persuaded of error by Appellants' argument because
besides expressing disagreement with the Examiner's findings, Appellants
offer no substantive arguments to rebut those specific underlying factual
findings made by the Examiner in support of the ultimate legal conclusion of
obviousness. First, the Examiner does not rely on Setoguchi in support of
this disputed limitation, but instead on Uyeki. See Final Act. 7-8. Second,
Appellants merely state that the paragraphs 16, 29, and 35 and Figure lof
Uyeki fail to disclose the disputed limitation without explaining why the
Examiner's findings in Uyeki do not teach the claim limitation as understood
in light of the Specification. The Examiner responds to Appellants'
argument by explaining how the disputed limitation is interpreted in light of
Appellants' Specification and disclosed by the teachings of Uyeki. See
supra. In their Reply Brief, Appellants simply reproduce the same argument
made in their Appeal Brief, without addressing or pointing to any errors in
the Examiner's findings. Reply Br. 6-7; cf Appeal Br. 11-12. Appellants
repeat the request for the Examiner to provide support by citing to the
reference in support of those findings (Reply Br. 7), which the Examiner has
done with further explanation in light of the Specification. In other words,
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Appellants fail to dispute the Examiner's findings by pointing out specific
errors or distinctions over Uyeki. And we decline to examine the claims sua
sponte, looking for distinctions over the prior art. Cf In re Baxter Travenol
Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this
court to examine the claims in greater detail than argued by an appellant,
looking for [patentable] distinctions over the prior art."). In the absence of a
more detailed explanation, we are not persuaded of error on the part of the
Examiner. See In re Jung, 637 F.3d. 1356, 1365 (Fed. Cir. 2011) ("[I]t has
long been the Board's practice to require an applicant to identify the alleged
error in the examiner's rejections," (citing Ex Parte Frye, 94 USPQ2d at
1072) ("The panel then reviews the obviousness rejection for error based
upon the issues identified by appellant, and in light of the arguments and
evidence produced thereon.")).
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 103, and claims 19 and 28, which fall with claim 1. We also
sustain the rejection of dependent claims 2-5, 20-23, and 37-48 for the
same reasons, which are argued based on their dependency on the
independent claims. See Appeal Br. 12.
DECISION
The rejection under 35 U.S.C. § 101 is AFFIRMED.
The rejection under 35 U.S.C. § 112, second paragraph, is
AFFIRMED.
The rejections under 35 U.S.C. § 103 are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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