Ex Parte Kleve et al

Patent Trial and Appeal Board

Dec 19, 2018

12565214 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/565,214 09/23/2009
28395 7590 12/21/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Robert Bruce Kleve
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.
81197148 1043
EXAMINER
KHATIB, RAM!
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
12/21/2018 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT BRUCE KLEVE and
JOHN ROBERT VAN WIEMEERSCH
Appeal2018-002523
Application 12/565,214
Technology Center 3600
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Bruce Kleve and John Robert Van Wiemeersch (Appellants) 1
appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims
1---6, 9, 21-26, 29, and 30. 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. Appeal Br. 1.
Appeal2018-002523
Application 12/565,214
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A computer-implemented method comprising:
receiving a diagnostic request signal requesting vehicle
component diagnosis;
retrieving a vehicle state threshold parameter;
determining that a vehicle state value exceeds a threshold
defined by the parameter; and
responsive to the vehicle state value exceeding the
threshold defined by the parameter:
receiving a vehicle component diagnostic status;
and
displaying the diagnostic status on vehicle display.
REJECTIONS
I. Claims 1-6, 9, 21-26, 29, and 30 stand rejected under
35 U.S.C. § 112, second paragraph, as indefinite.
II. Claims 1-6, 9, 21-26, 29, and 30 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.
III. Claims 1---6, 21-26, and 30 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Sonnenrein (US 2004/0112124
Al, pub. June 17, 2004) and Triphathi (US 2003/0208309 Al,
pub. Nov. 6, 2003).
IV. Claims 9 and 29 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Sonnenrein, Triphathi, and Johnson
(US 2003/0004741 Al, pub. Jan. 2, 2003).
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DISCUSSION
Rejection I
Independent claims 1, 21, and 3 0 recite, in relevant part, retrieving "a
vehicle state threshold parameter" and determining "that a vehicle state
value exceeds a threshold defined by the parameter." Claims App. 1--4. The
Examiner's stated basis for rejecting the claims under 35 U.S.C. § 112,
second paragraph, as indefinite is that "[i]t is not clear ... whether the two
thresholds are the same threshold or different thresholds." Final Act. 2.
Appellants argue that "there is only one noun-usage of the word
'threshold' and thus there is only one threshold." Appeal Br. 5. Appellants
assert that "vehicle state threshold" simply describes ( as an adjective phrase)
the type of parameter being retrieved, and "a threshold defined by the
parameter" represents the actual threshold value. Id. According to
Appellants, "[ a ]s an example, a [ vehicle state threshold] parameter would be
something like 'temperature' and the threshold would be a temperature
value." Id.
We agree with Appellants that the limitations at issue do not render
the claims indefinite. A person of ordinary skill in the art would understand
that "the threshold is a component of the parameter." Id. In other words, the
threshold is a value that corresponds to the vehicle state threshold parameter,
and, thus, the claims require only one threshold. Accordingly, we do not
sustain the Examiner's rejection of claims 1---6, 9, 21-26, 29, and 30 under
35 U.S.C § 112, second paragraph, as indefinite.
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Rejection II
In contesting this rejection, Appellants reference certain limitations
recited in independent claim 1, but otherwise present arguments without
regard to any particular claim. See Appeal Br. 5---6; Reply Br. 3--4. Thus,
we select independent claim 1 as representative of the claims subject to this
rejection, with claims 2---6, 9, 21-26, 29, and 30 standing or falling with
claim 1. 3 7 C.F .R. § 41.3 7 ( c )(1 )(iv).
Section 101 of the patent law provides that one may obtain a patent
for "any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof." 35 U.S.C. § 101. The
Supreme Court has held that this provision includes important exceptions,
notably those that prohibit one from patenting abstract ideas, laws of nature,
or natural phenomena. Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 573 U.S.
208, 216-17 (2014). Although a law of nature or an abstract idea is not
patentable, the application of these concepts may be patentable. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70-72 (2012).
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice,
573 U.S. at 217 (citing Mayo, 566 U.S. at 71-72). Under that framework,
we first "determine whether the claims at issue are directed to one of those
patent-ineligible concepts"-i.e., a law of nature, a natural phenomenon, or
an abstract idea. Id. If so, we secondly "consider the elements of each claim
both individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 77-79). The Supreme Court
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has described the second part of the analysis as "a search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Id. (alteration in original) (quoting
Mayo, 566 U.S. at 72-73).
Part One: Are the Claims Directed to an Abstract Idea?
The Federal Circuit has described the first step as a determination of
the "basic character of the claimed subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (citing Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Canada, 687 F.3d 1266, 1273-74
(Fed. Cir. 2012)). The Federal Circuit has also indicated that this step
should determine whether a claimed method "recites an abstraction-an
idea, having no particular concrete or tangible form." Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see also Alice, 573 U.S. at
217 ("The 'abstract ideas' category embodies 'the longstanding rule that
"[a]n idea of itself is not patentable.""' (quoting Gottschalkv. Benson, 409
U.S. 63, 67 (1972) (further quotations and citations omitted))).
The Examiner determines that claim 1 is "directed to the abstract idea
of collecting and displaying data." Final Act. 3; see also Ans. 4
( determining that "the limitations 'receiving a diagnostic request', and
'retrieving vehicle state threshold parameter' are mere data gathering, and
the steps of 'determining, 'responsive to exceeding a threshold, receiving .... '
and 'displaying' are mere data manipulation, and mathematical relationship
thereof and thus an abstract idea"). The Examiner explains that "the steps of
gathering and manipulating data ... are an abstract idea similar to the
concepts that have been identified as abstract by the courts." Ans. 4 ( citing
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Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344 (Fed.
Cir. 2014); Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat. Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014); Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
Appellants do not contest the Examiner's determination that claim 1 is
directed to an abstract idea. See Appeal Br. 5---6 (presenting argument only
with respect to whether the claim recites additional elements amounting to
"something more" than the abstract idea itself); Reply Br. 3--4.
Part Two: Is There an Inventive Concept?
The Examiner determines that the claims do not include additional
elements sufficient to amount to significantly more than the abstract idea.
See Final Act. 3--4; Ans. 4. In particular, the Examiner explains that "the
computer/processor ... recited in claims 1, 21, and 30 is a generic computer
component that performs generic computer functions (i.e. receiving,
retrieving, and displaying)." Final Act. 3. The Examiner also explains that
"[t]he claims recite a computer, a processor, and a vehicle display, which do
not add meaningful limitations to the idea of collecting and displaying data
beyond generally linking the abstract idea to a particular technological field
or environment, that is, implementation via computers." Id. According to
the Examiner, "all the claimed steps ... are generic computer functions that
are well-understood, routine, and conventional activities previously known
in the industry." Ans. 4.
Appellants argue that the Examiner did not "consider[] the whole
solution presented by the whole claim," but, rather, "considered the elements
individually without any regard to how the individual steps function in
concert." Appeal Br. 6. Appellants assert that "[t]he whole solution of the
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claims is to receive a diagnostic request and a parameter, including a
threshold value, and then to display a component diagnostic status when the
threshold is exceeded." Id. Appellants assert that "it is neither common nor
typical for a vehicle to display a component diagnostic status in response to a
vehicle state exceeding a threshold." Reply Br. 3; see also Appeal Br. 6
( asserting that "[ d]iagnostics are typically done by a mechanic or dealer, and
diagnostic statuses are typically not displayed on a vehicle display").
According to Appellants, "the elements of the claims function as a whole
solution that is atypical and uncommon, which is all that is required to pass
the 'something more' threshold as explained in Example 35 of the December
guidance." Appeal Br. 6 (citing "Subject l\tfatter Eligibility Examples:
Business 1\rfethods," issued December 15, 2016 (hereinafter "Guidance")).
We are not persuaded by Appellants' argument.
In Example 35 of the Guidance, hypothetical claims directed to a
method of conducting a secure ATM transaction were deemed eligible
because the combination of steps "operate[ d] in a non-conventional and non-
generic way to ensure that the customer's identity is verified in a secure
manner that is more than the conventional verification process employed by
an ATM alone." Guidance 10. The Guidance explains that, "[i]n
combination, these steps do not represent merely gathering data for
comparison or security purposes, but instead set up a sequence of events that
address unique problems associated with bank cards and ATMs ( e.g., the use
of stolen or 'skimmed' bank cards and/or customer information to perform
unauthorized transactions)." Id. According to the Guidance, the example
claims are similar to the eligible claims in BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) because "the
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claimed combination of additional elements presents a specific, discrete
implementation of the abstract idea." Id. However, unlike the claims at
issue in BASCOM, Appellants' claim 1 is not directed to a solution that
improves an existing technological process (e.g., it does not improve the
performance of a computer system itself). See BASCOM, 827 F.3d at
1351. Rather, the computer elements recited in the claim are simply invoked
as conventional tools to collect, analyze, and display data. The Guidance
also explains that the combination of steps in the example claims "describes
a process that differs from the routine and conventional sequence of events
normally conducted by ATM verification, such as entering a PIN, similar to
the unconventional sequence of events in DDR [ Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)]." Id. However, in
contrast to the claims in DDR, the steps in Appellants' claim 1 are not
"necessarily rooted in computer technology in order to overcome a problem
arising in the realm of computer networks." DDR, 773 F.3d at 1257.
Appellants have not provided any specificity regarding any particular
inventive technology associated with the steps in claim 1. The computer
elements described in the Specification and recited in the claim ( e.g.,
"computer" and "display") appear to function in a conventional manner to
gather data, execute program instructions and operations, and output results.
There is no further description, in the claims or the Specification, of any
particular technology for performing the steps recited in the claim other than
generic computer components used in their ordinary capacity as tools to
apply the abstract idea. See, e.g., Spec. 3, 4, 7, 8, 14, 15 (disclosing generic
"server( s) 101, "cellular communication module 200," and graphical
display). In this regard, the "recitation of generic computer limitations does
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not make an otherwise ineligible claim patent-eligible." DDR, 773 F.3d at
1256 (citing Alice, 134 S.Ct. at 2358).
To the extent Appellants argue that the claim elements provide an
inventive concept because they are directed to an allegedly novel and/or
non-obvious solution (see Appeal Br. 6; Reply Br. 3), such an argument is
unavailing. A finding of novelty or non-obviousness does not automatically
lead to the conclusion that the claimed subject matter is patent-eligible. See
Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) (stating that "[t]he
'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").
Although the second step in the A{ayo/Alice framework is termed a search
for an "inventive concept," the analysis is not an evaluation of novelty or
nonobviousness, but rather, a search for "an element or combination of
elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice,
573 U.S. at 217 (citation omitted); see also SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018) ("\Ve may assume that the techniques
c 1ai med are [g]roundbreak ing, innovative, or even brrn iant, but that is not
enough for eligibility. Nor is it enough for subject-matter eligibility that
claimed techniques be novel and nonobvious in light of prior art, passing
muster under 35 U.S.C. §§ 102 and 103." (citations and quotations
omitted)).
For the above reasons, the recited elements, considered individually
and as an ordered combination, do not constitute an "inventive concept" that
transforms independent claim 1 into patent-eligible subject matter. See
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Alice, 573 U.S. at 217. Accordingly, we sustain the rejection of claim 1, and
of claims 2---6, 9, 21-26, 29, and 30 falling therewith, under 35 U.S.C. § 101
as directed to patent-ineligible subject matter.
Rejection III
Appellants rely on the same arguments asserted for patentability of
independent claim 1 in contesting the rejection of independent claims 21 and
30. See Appeal Br. 6-8; Reply Br. 4--5. Appellants do not assert any
separate arguments for patentability of dependent claims 2-6 and 22-26,
apart from their dependence, directly or indirectly, from one of claims 1, 21,
and 30. See Appeal Br. at 8. We select claim 1 as representative, with
claims 2-6, 21-26, and 30 standing or falling therewith.
The Examiner finds that Sonnenrein discloses most of the limitations
recited in claim 1, except for "determining that a vehicle state value exceeds
a threshold defined by the parameter; and responsive to the vehicle state
value exceeding the threshold defined by the parameter: receiving a vehicle
component diagnostic status." Final Act. 5. However, the Examiner finds
that Triphathi discloses this feature. See id. ( citing Triphathi ,r 27). The
Examiner determines that it would have been obvious to modify Sonnenrein
"with the vehicle analyzer, as taught by Triphathi[], in order to determine
whether the vehicle to be diagnosed operates outside of the normal
operation, therefore, providing a means of early detection of failure of
specific components." Id. at 5---6 ( citing Triphathi ,r,r 8-9, 15-16).
According to the Examiner, "one skilled in the art could have combined the
elements as claimed by known methods with no change in their respective
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functions, and the combination would have yielded predictable results." Id.
at 6.
The Examiner clarifies in the Answer that Sonnenrein discloses a
server (service center 20) receiving a diagnostic request, selecting diagnostic
parameters, sending the parameters to a vehicle, receiving diagnostic data
from the vehicle, and sending a diagnostic status back to the vehicle, but
does not disclose how the data is evaluated by the server to detect a problem.
See Ans. 6 ( citing Sonnenrein ,r 45). The Examiner explains that Triphathi
cures this deficiency by disclosing "that analysis is done on a server level 'at
the master database', and according to exceeding threshold parameters 'if
data is outside statistical limits."' Id. ( citing Triphathi ,r 27).
Appellants argue that Triphathi discloses "software operating at 'the
master database,' so this already fails to meet the claim limitation of a single
processor (which interfaces with a vehicle display) performing all the steps
thereof." Appeal Br. 7. This argument is unpersuasive because it is not
commensurate with the scope of claim 1, which does not recite that a single
processor performs all of the steps. See In re Self, 671 F.2d 1344, 1348
(CCP A 1982) (noting that it is well established that limitations not appearing
in the claims cannot be relied upon for patentability). Moreover, even if the
claim recited a limitation requiring that a single processor perform the steps,
Appellants' argument would still be unavailing. The Examiner takes the
position that "[t]he combination of Sonnenrein and Triphathi would result in
all the steps being performed on a server level[,] and that reads on the single
processor limitation." Ans. 6. In this regard, Appellants do not specifically
address the Examiner's position or explain why it is deficient.
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Appellants assert that Triphathi "teaches that the system sends a
phone message 'that suggests how to diagnose the problem[,]' [ w ]hich,
presumably, in this case, would be 'call a mechanic and have them perform
the process of Sonnenrein. "' Appeal Br. 7; see also id. at 8 ( stating that
"[t]he user would then call a mechanic (Sonnenrein) and the mechanic
would remotely define a set of diagnostic parameters"). According to
Appellants, "[t]he problem with this combination [of Sonnenrein and
Triphathi] is that there is a human being smack in the middle of the process,
and nothing in [Triphathi] or Sonnenrein allows one to remove that human
being." Reply Br. 5. We are not persuaded by this line of argument.
Appellants do not point to, nor do we find, any evidence that either of the
respective processes in Sonnenrein or Triphathi requires a human being who
cannot be removed. See Sonnenrein ,r 29 ( disclosing service center 20 being
associated with a mobile radio gateway through which data can be
exchanged with a plurality of vehicles, and service center 20, not a human
being, identifying suitable diagnostic mechanisms and/or diagnostic
parameters and transferring them to a vehicle via mobile radio gateways);
Triphathi ,r,r 23, 25-27 (disclosing "a vehicle analyzer, such as an OBD scan
tool hardware device," collecting, processing, and transmitting data, and
software on a master database performing statistical analysis to establish
upper and lower control limits and determining if there are any trends in the
data or if data is outside statistical limits). In this regard, Appellants'
assertion amounts to nothing more than attorney argument unsupported by
evidence and, thus, is entitled to little, if any, weight. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399,
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1405 (CCPA 1974) (An attorney's arguments in a brief cannot take the place
of evidence.).
Appellants assert that "neither reference ever defines automatically
determining which component data to pull and display based on a vehicle
state exceeding a threshold." Reply Br. 5 (boldface and italics omitted).
This assertion is unavailing because it is not commensurate with the scope of
claim 1, which does not recite automatically determining which component
to retrieve and display. See Self, 671 F.2d at 1348.
For the above reasons, Appellants do not apprise us of error in the
Examiner's determination that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1, and of claims 2-
6, 21-26, and 30 falling therewith, under 35 U.S.C. § 103 as unpatentable
over Sonnenrein and Triphathi.
Rejection IV
In contesting the rejection of dependent claims 9 and 29, Appellants
rely solely on the arguments presented for respective base claims 1 and 21.
See Appeal Br. 8. For the reasons discussed above, Appellants' arguments
do not apprise us of error in the rejection of claims 1 and 21, and, likewise,
do not apprise us of error in the rejection of claims 9 and 29. Accordingly,
we sustain the rejection of claims 9 and 29 under 35 U.S.C. § 103 as
unpatentable over Sonnenrein, Triphathi, and Johnson.
DECISION
The Examiner's decision rejecting claims 1---6, 9, 21-26, 29, and 30
under 35 U.S.C. § 112, second paragraph, as indefinite is REVERSED.
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The Examiner's decision rejecting claims 1---6, 9, 21-26, 29, and 30
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is
AFFIRMED.
The Examiner's decision rejecting claims 1---6, 21-26, and 30 under
35 U.S.C. § 103(a) as unpatentable over Sonnenrein and Triphathi is
AFFIRMED.
The Examiner's decision rejecting claims 9 and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Sonnenrein, Triphathi, and Johnson is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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