Ex Parte Donald et alDownload PDFPatent Trial and Appeal BoardJun 30, 201713713076 (P.T.A.B. Jun. 30, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/713,076 12/13/2012 Henry F. Donald III 83225209 9030 28395 7590 07/05/2017 RROOKS KTTSHMAN P C /FfTET EXAMINER 1000 TOWN CENTER SHUDY, ANGELINA M 22ND FLOOR SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER 3668 NOTIFICATION DATE DELIVERY MODE 07/05/2017 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): docketing @brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HENRY F. DONALD, III, RYAN SKAFF, CHRISTOPHER ADAM OCHOCINSKI, SERGEY GENNADIEVICH SEMENOV, and PAUL STEPHEN BRYAN Appeal 2016-008059 Application 13/713,0761 Technology Center 3600 Before JOSEPH L. DIXON, LARRY J. HUME, and SCOTT B. HOWARD, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the real party in interest is Ford Global Technologies, LLC. App. Br. 3. Appeal 2016-008059 Application 13/713,076 STATEMENT OF THE CASE2 The Invention Appellants' disclosed embodiments and claimed invention relate to a vehicle system for estimating travel range. Spec. 12. Exemplary Claim Claim 1, reproduced below, is representative of the subject matter on appeal (emphases and formatting added to contested limitation): 1. A vehicle system comprising: a controller configured to receive input indicative of available electric energy of a storage device, actual electrical power usage of a climate control system, and thermal requests, calculate an estimated travel range based on a product of a short-term estimated travel range and a short-term weighting factor, and a product of a long-term estimated travel range and a long term weighting factor, and generate output indicative of the estimated travel range in response to the input; and an interface communicating with the controller and configured to display a range indicator based on the estimated travel range. 2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed Oct. 6, 2015); Reply Brief ("Reply Br.," filed Aug. 23, 2016); Examiner's Answer ("Ans.," mailed June 23, 2016); Final Office Action ("Final Act.," mailed Mar. 4, 2015); and the original Specification ("Spec.," filed Dec. 13, 2012). 2 Appeal 2016-008059 Application 13/713,076 Prior Art The Examiner relies upon the following prior art as evidence in rejecting the claims on appeal: Hotta US 5,656,916 Aug. 12, 1997 Pease US 2010/0138142 A1 June 3, 2010 Siy et al. ("Siy") US 2012/0109408 A1 May 3, 2012 Cho et al. ("Cho") US 2012/0143435 Al June 7, 2012 Rejections on Appeal R1. Claims 1—20 stand rejected under 35 U.S.C. § 101 as not being directed to patent-eligible subject matter. Final Act. 4. R2. Claims 1—9, 11—14, 16, 17, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Pease and Cho. Final Act. 5. R3. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Pease, Cho, and Hotta. Final Act. 19. R4. Claims 15 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Pease, Cho, and Siy. Final Act. 20. CFAIM GROUPING Based upon Appellants' arguments (App.Br. 6—7) and the subject matter recited therein, we decide the appeal of § 101 Rejection R1 of claims 1—20 on the basis of representative claim 1. 3 Appeal 2016-008059 Application 13/713,076 Based upon Appellants' arguments (App. Br. 8—13), we decide the appeal of obviousness Rejection R2 of claims 1—9, 11—14, 16, 17, and 19 on the basis of representative claim 1. Remaining claims 10, 15, and 18 in Rejections R3 and R4, not argued separately or with specificity, stand or fall with the respective independent claim from which they depend.3 ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). We disagree with Appellants' arguments with respect to claims 1—20, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the Final Office Action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings, conclusions, and arguments regarding claim 1 for emphasis as follows. 3 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv). In addition, when Appellants do not separately argue the patentability of dependent claims, the claims stand or fall with the claims from which they depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). 4 Appeal 2016-008059 Application 13/713,076 1. $ 101 Rejection R1 of Claims 1—20 Issue 1 Appellants argue (App. Br. 6—7; Reply Br. 2-4) the Examiner's rejection of claims 1—20 under 35 U.S.C. § 101 as being directed to non- statutory subject matter is in error. These contentions present us with the following issue: Did the Examiner err in concluding the claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, allegedly do not amount to significantly more than an abstract idea? Analysis Appellants contend "[cjlaim 1 recites a vehicle system with an interface and a controller. Thus, claim 1 is directed to a machine (a combination of mechanical parts), which is one of the statutory categories of invention." App. Br. 7. Further, while the claims admittedly rely upon a mathematical relationship in calculating an estimated travel range, Appellants argue "the claim clearly does not seek to tie up this relationship so that others cannot practice it. Rather the claim adds meaningful limitations to the use of the relationship" by improving electric vehicle technology and travel range estimation. Id. Section 101 provides that anyone who "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. 35 U.S.C. § 101. The Supreme Court has repeatedly emphasized that patent protection should not extend to claims that monopolize "the basic tools of scientific and 5 Appeal 2016-008059 Application 13/713,076 technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo 566 U.S. at 71; Alice, 134 S. Ct. at 2354. Accordingly, laws of nature, natural phenomena, and abstract ideas are not patent-eligible subject matter. Id. The Supreme Court's two-part Mayo!Alice framework guides us in distinguishing between patent claims that impermissibly claim the "building blocks of human ingenuity" and those that "integrate the building blocks into something more." Id. (internal quotation marks, citation, and bracketing omitted). First, we "determine whether the claims at issue are directed to [a] patent-ineligible concept[]." Id. at 2355. If so, we "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." Id. at 2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps4 of the Alice framework are related, the "Supreme Court's formulation makes clear that the first-stage filter is a meaningful one, sometimes ending the § 101 inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the Supreme Court "has not established a definitive rule to determine what constitutes an 'abstract idea'" for the purposes of step one. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S. Ct at 2357). However, our reviewing court has held claims ineligible as directed to an abstract idea when they merely collect electronic information, display information, or embody mental processes that could be performed by 4 Applying this two-step process to claims challenged under the abstract idea exception, the courts typically refer to step one as the "abstract idea" step and step two as the "inventive concept" step. Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). 6 Appeal 2016-008059 Application 13/713,076 humans. Elec. Power Grp., 830 F.3d at 1353—54 (collecting cases). At the same time, "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. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law."). Under the "abstract idea" step we must evaluate "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." Id. (citation omitted). If the concept is directed to a patent-ineligible concept, we proceed to the "inventive concept" step. For that step we must "look with more specificity at what the claim elements add, in order to determine 'whether they identify an "inventive concept" in the application of the ineligible subject matter' to which the claim is directed." Affinity Labs, 838 F.3d at 1258 (quoting Elec. Power Grp. 830 F.3d at 1353). Turning to the claimed invention, claim 1 recites a "vehicle system" including "a controller configured to," inter alia, "receive input indicative of available electric energy of a storage device, actual electrical power usage of a climate control system, and thermal requests" and "calculate an estimated travel range based on a product of a short-term estimated travel range and a short-term weighting factor, and a product of a long-term estimated travel range and a long-term weighting factor." Claim 1 further requires "an 7 Appeal 2016-008059 Application 13/713,076 interface communicating with the controller and configured to display a range indicator based on the estimated travel range." Claims App., claim l.5 The Examiner finds "[t]he claim(s) is/are directed to the abstract idea of itself. The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than: mere instructions to implement an abstract idea on a computer." Final Act. 4.6 Under step one of the Alice/Mayo analysis, we find the invention of claim 1 is directed to an abstract idea, i.e., mathematical relationships/formulae used in an algorithm for calculating an estimated travel range of a vehicle. As the Specification observes: [A] vehicle system is provided with a controller and an interface communicating with the controller. The controller is configured to receive input that is indicative of available electric energy of a battery, actual electrical power usage of a climate control system, and thermal requests. The controller is also configured to generate output that is indicative of an estimated travel range in response to the input. The interface is configured to display a range indicator based on the estimated travel range. Spec.l 6. We find this type of activity, i.e., calculating an estimated travel range of a vehicle based upon one or more measured or estimated system parameters represents longstanding conduct that existed well before the advent of computers and the Internet, and could be carried out by a human 5 Independent claims 8 and 11 recite commensurate limitations. 6 With respect to specifically identifying the abstract idea at issue, the Examiner states "claim(s) 1—20 are directed to a vehicle system with an interface communicating with the controller and configured to display a range indicator based on the estimated travel range which is considered to be an abstract idea." Final Act. 2—3. 8 Appeal 2016-008059 Application 13/713,076 with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson").1 Our reviewing court has previously held other patent claims ineligible for reciting similar abstract concepts. For example, while the Supreme Court has altered the § 101 analysis since CyberSource in cases like Mayo and Alice, they continue to "treat[ ] analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016) (quoting Elec. Power Grp. 830 F.3d at 1354 (internal quotation marks and citation omitted)). In applying step two of the Alice analysis, our reviewing court guides we must "determine whether the claims do significantly more than simply describe [the] abstract method" and thus transform the abstract idea into patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). We look to see whether there are any "additional features" in the claims that constitute an "inventive concept," thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be more than "well-understood, routine, conventional activity." Mayo, 566 U.S. at 73. 1 CyberSource further guides "a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101." CyberSource, 654 F.3d at 1373. 9 Appeal 2016-008059 Application 13/713,076 Evaluating representative claim 1 under step 2 of the Alice/Mayo analysis, we agree with the Examiner that it lacks an "inventive concept" that transforms the abstract idea of calculating an estimated travel range into a patent-eligible application of that abstract idea. Ans. 4.8 We agree with the Examiner because, as in Alice, we find the recitation of a computer processor that calculates a value using an algorithm is simply not enough to transform the patent-ineligible abstract idea here into a patent-eligible invention. See Alice, 134 S. Ct. at 2357 ("[Cjlaims, which merely require generic computer implementation, fail to transform [an] abstract idea into a patent-eligible invention."). Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's conclusion that the appealed claims are directed to non-statutory subject matter. Therefore, we sustain the Examiner's non-statutory subject matter rejection of independent claim 1, and grouped claims 2—20 which fall therewith. See Claim Grouping, supra. 8 The Examiner finds: [T]he calculation is performed by a generic processor (see at least instant application specification [00082]). The processing is a well-understood and conventional routine for processing and carrying out the calculating limitation. Further, Appellants argue that the claims require more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities; however, Appellants have not disclosed where in the specification provides more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities. Ans. 4. We agree with the Examiner's findings, analysis, and conclusions. 10 Appeal 2016-008059 Application 13/713,076 2. $ 103(a) Rejection R2 of Claims 1—9, 11—14, 16, 17, and 19 Issue 2 Appellants argue (App. Br. 8—10; Reply Br. 4—5) the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Pease and Cho is in error. These contentions present us with the following issues: (a) Did the Examiner err in finding the cited prior art combination teaches or suggests a vehicle system that includes "a controller configured to," inter alia, "calculate an estimated travel range based on a product of a short-term estimated travel range and a short-term weighting factor, and a product of a long-term estimated travel range and a long-term weighting factor," as recited in claim 1? (b) Did the Examiner err in combining Pease and Cho under § 103 because, allegedly, Pease teaches away from the claimed invention? Analysis (a) — The Prior Art Combination Teaches all Limitations Appellants contend: Cho discloses calculating a remaining traveling distance (DTE) using a function (e.g., Formula 1) that considers measured [state of charge] SOC and gains that are based on predetermined data. Cho also discloses a long distance to empty (LDTE) function and a short distance to empty (SDTE) function that include different gains. Cho does not disclose calculating DTE based on a product of SDTE and a weighting factor and a product of LDTE and another weighting factor. App. Br. 9. Appellants generally allege "Appellant's claimed invention provides improvements over the prior art." Id. (citing Spec. ^fl[ 59 and 61). 11 Appeal 2016-008059 Application 13/713,076 We first note, "one cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981). "The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art." Id. at 425. In response to Appellants' contentions, the Examiner finds Cho at paragraph 58 teaches Formula l,9 and paragraph 61 of Cho teaches "the three functions for estimating a remaining traveling distance are divided into a long distance to empty, a middle distance to empty, and a short distance to empty; accordingly, the remaining travel distance may be estimated utilizing these three functions)." Ans. 5—6. The Examiner further explains: First, Cho uses three functions for estimating the remaining travel distance including a long distance to empty (LDTE), a middle distance to empty (MDTE), and a short distance to empty (SDTE). Cho describes calculating the remaining travel distance for the SOC of a battery by selecting one or two close functions for estimating the remaining travel distance and using the factors of the present SOC of a battery .... The two close functions are selected among the three function for estimating the remaining travel distance; therefore, the long distance to empty and a short distance to empty functions can be selected to be the two close functions. Further, the factors of the present SOC of the battery weight the long distance to empty and the short distance to empty functions, respectfully. Ans. 6. (citing Cho H 61, 65, and 73) (emphasis added). 9 "DTEi(km)=gainlixSOCi2+gain2ixSOCi+gain3i [Formula 1]." Cho 158. 12 Appeal 2016-008059 Application 13/713,076 Accordingly, on this record and the findings above, we find the combination of Pease and Cho teach or at least suggest the contested limitation of claim 1. (b) —Pease does not Teach Away from Combination with Cho Appellants contend Cho teaches calculating a remaining travel distance (i.e., "distance to empty" "DTE") that measures a battery's state of charge (SOC) based upon predetermined data (Ans. 11 (citing Cho 56—57)), and "Pease discloses calculating an expected vehicle range based on a plurality of inputs (e.g., vehicle speed, motor rpm, motor torque, battery voltage, battery current, and battery charge level, etc)." App. Br. 11 (emphasis added). Appellants also argue Pease indicates prior art systems that calculate the expected vehicle range using only a few inputs are insufficient for use with alternate fuel vehicles (such as electric vehicles) because they do not consider enough factors, resulting in a "rough guess" which is argued as being insufficient for drivers of alternative fuel vehicles. App. Br. 12. From this, Appellants contend, "Pease teaches away from Cho's function (Formula 1) for calculating DTE because it only considers one measured factor (SOC)." Id. "A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." Ricoh Co., Ltd. v. Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (internal quotation marks and citations omitted). A reference does not teach away if it merely 13 Appeal 2016-008059 Application 13/713,076 expresses a general preference for an alternative invention from amongst options available to the ordinarily skilled artisan, and the reference does not discredit or discourage investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We find one of ordinary skill in the art would have understood Pease's estimation method to merely be an alternative to Cho's use of factors including the present SOC of a battery and the calculated fuel efficiency, and using interpolation to improve the estimation accuracy of estimating the remaining travel distance. In the absence of persuasive evidence to the contrary, we fail to find that Pease teaches away from Cho's teaching of estimating a remaining travel distance of an electric vehicle . . . by setting the relationship of a DTE with a state of charge (SOC) of a battery which changes in real time under various load conditions, in consideration of the present travel pattern, in addition to the SOC of a battery and accumulated fuel efficiency for the amount of remaining fuel of the electric vehicle. Cho, Abstract. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 2—9, 11—14, 16, 17, and 19, which fall therewith. See Claim Grouping, supra. 14 Appeal 2016-008059 Application 13/713,076 3. Rejections R3 and R4 of Claims 10, 15, and 18 In view of the lack of any substantive or separate arguments directed to obviousness Rejections R2 and R3 of claims 10, 15, and 18 under § 103 (see App. Br. 13), we sustain the Examiner's rejection of these claims. Arguments not made are waived. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 2—5) 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. § 41.41(b)(2)), which Appellants have not shown. CONCLUSIONS (1) The Examiner did not err with respect to Rejection R1 of claims 1—20 under 35 U.S.C. § 101, and we sustain the rejection. (2) The Examiner did not err with respect to obviousness Rejections R2 through R4 of claims 1—19 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. DECISION We affirm the Examiner's decision rejecting claims 1—20. 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. §41.50(f). AFFIRMED 15 Copy with citationCopy as parenthetical citation