Ex Parte Donald et al

Patent Trial and Appeal Board

Jun 30, 2017

13713076 (P.T.A.B. Jun. 30, 2017)

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).
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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.
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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).
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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
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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).
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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
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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.
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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.
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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.
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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).
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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.
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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
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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.
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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
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