Ford Global Technologies, Inc.

Patent Trials and Appeals Board

Jun 10, 2020

2019005851 (P.T.A.B. Jun. 10, 2020)

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.
14/635,321 03/02/2015 Pietro BUTTOLO 83508903 6669
28395 7590 06/10/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
MERLINO, DAVID P
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
06/10/2020 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 PIETRO BUTTOLO, JAMES STEWART RANKIN II,
DIPANJAN GHOSH, GARY STEVEN STRUMOLO,
and STUART C. SALTER
Appeal 2019-005851
Application 14/635,321
Technology Center 3600
Before JENNIFER D. BAHR, DANIEL S. SONG, and
MICHAEL L. WOODS, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7 and 19–22.2 We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Ford Global
Technologies, LLC. Appeal Br. 1.
2 Claims 8–18 have been withdrawn from consideration. Final Act. 1
(Office Action Summary).
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “deployment of a user interface
for interior vehicle component configuration by way of a personal user
device.” Spec. ¶ 1. Claims 1 and 22, reproduced below, are the only
independent claims and are illustrative of the claimed subject matter.
1. A system comprising:
an in-vehicle component, including a first control set
having physical controls to configure the component,
configured to
identify a device associated with a user approach
to the component;
send to the device a user interface definition
descriptive of a second control set including at least one
function to configure the component unavailable in the
first control set; and
send an interaction request to the device to cause
the device to display a user interface for the component
including the second control set to configure the
component.

22. A method comprising:
receiving, to a personal device as sent from an in-vehicle
component including a first control set to configure the
component, a user interface definition descriptive of a
second control set to configure the component including
functions unavailable in the first control set; and
receiving, to the device as sent from the component, a
request to display a user interface for the component including
the second control set to configure the component.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hess US 2012/0065815 A1 Mar. 15, 2012
Lippman US 2014/0043152 A1 Feb. 13, 2014
Grimm US 2014/0142783 A1 May 22, 2014
Jain US 2014/0375477 A1 Dec. 25, 2014
General Motors Corporation, Pontiac GTO Owner’s Manual 3-19, 3-20
(2005), https://my.gm/content/dam/gmownercenter/gmna/dynamic/
manuals/2006/pontiac/gto/2006_pontiac_gto_owners.pdf (hereinafter
“Pontiac GTO”)
REJECTIONS3
Claim 22 stands rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–3 and 20–22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Grimm and Hess.4
Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable over
Grimm, Hess, and Jain.

3 Appellant presents an argument contesting the Examiner’s objection to
claim 22. See Appeal Br. 9; Final Act. 3. We do not address this argument
because it relates to a petitionable matter and not to an appealable matter.
See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (stating that there are
many kinds of decisions made by examiners that are not appealable to the
Board when they are not directly connected with the merits of issues
involving rejections of claims) (citing In re Hengehold, 440 F.2d 1395, 1403
(CCPA 1971))). Thus, the relief sought by Appellant should have been
presented by a petition under 37 C.F.R. § 1.181 instead of by appeal to this
Board. Ex parte Frye, 94 USPQ2d 1072, 1077–78 (BPAI 2010)
(precedential).
4 The Examiner also cited Pontiac GTO “[a]s further evidence” that “it is
well-known in the art that HVAC controls in vehicles are physical controls.”
Final Act. 4.
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Claims 5–7 stand rejected under 35 U.S.C. § 103 as unpatentable over
Grimm, Hess, and Lippman.
Claim 19 stands rejected under 35 U.S.C. § 103 as unpatentable over
Grimm and Pontiac GTO.5
OPINION
Eligibility
Under 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice, 573 U.S. at 217. The
first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the

5 See Final Act. 11–12 (applying Pontiac GTO’s teachings of an
air-conditioning system on/off switch and intensity controls for fan and
temperature control).
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nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 78, 79). This is “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. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that claim 22 is directed to the “abstract idea of transmitting
data,” i.e., to a concept similar to other concepts that courts have held
abstract. Final Act. 3 (citing In re TLI Commc’ns LLC Patent Litig., 823
F.3d 607 (Fed. Cir. 2016)). The Examiner also determined that the claims
do not include additional elements sufficient to amount to significantly more
than the abstract idea itself. Id. at 3–4.
After the Final Action was mailed, the U.S. Patent and Trademark
Office (the “USPTO”) published revised guidance on January 7, 2019, for
use by USPTO personnel in evaluating subject matter eligibility under
35 U.S.C. § 101. 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”). That
guidance revised the USPTO’s examination procedure with respect to the
first step of the Mayo/Alice framework by (1) “[p]roviding groupings of
subject matter that [are] considered an abstract idea”; and (2) clarifying that
a claim is not “directed to” a judicial exception if the judicial exception is
integrated into a practical application of that exception. Id. at 50. The 2019
Revised Guidance, by its terms, applies to all applications, and to all patents
resulting from applications, filed before, on, or after January 7, 2019. Id.
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Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice, 573 U.S. at 217. This first step, as set
forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test; in
Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes—concepts performed in the
human mind. 2019 Revised Guidance, 84 Fed. Reg. at 52, 54. If so, we next
consider whether the claim includes additional elements, beyond the judicial
exception, that “integrate the [judicial] exception into a practical
application,” i.e., that 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 (Step 2A, Prong Two). Id. at 54–55. Only if the claim (1) recites
a judicial exception and (2) does not integrate that exception into a practical
application do we conclude that the claim is “directed to” the judicial
exception, e.g., an abstract idea. Id.
Appellant argues that “‘transmitting data’ is not a mathematical
concept, a method of organizing human activity, or a mental process” and,
thus, is not an abstract idea in accordance with the 2019 Revised Guidance.
Appeal Br. 5. In response, the Examiner explains that claim 22 “is directed
to receiving a definition and receiving a request” and that “[t]hese two steps
could be performed within the human mind, e.g., reading a definition and
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request would be ‘receiving[.’]” Ans. 4. According to the Examiner, “but
for the recitation of generic computer components, the claim could be
performed wholly in the human mind and is, thus, directed to an abstract
idea.” Id.
In other words, the Examiner determined that claim 22 recites mental
processes, i.e., receiving a definition and receiving a request, which is one of
the groupings of abstract ideas set forth in the 2019 Revised Guidance. 2019
Revised Guidance, 84 Fed. Reg. at 52; see Mayo, 566 U.S. at 71 (stating that
“mental processes[] and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work” (quoting
Gottschalk v. Benson, 409 U.S. 63, 67 (1972))); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method that can
be performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101.”). If the broadest reasonable interpretation of a
claim covers performance in the mind but for the recitation of generic
computer components, then it is still in the mental processes category unless
the claim cannot practically be performed in the mind. See Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
(“[W]ith the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper.”); CyberSource, 654 F.3d at
1375, 1372 (holding that the incidental use of “computer” or “computer
readable medium” does not make a claim otherwise directed to a process
that “can be performed in the human mind, or by a human using a pen and
paper” (i.e., mental processes) patent eligible).
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The Examiner correctly found that claim 22 recites receiving a
definition (i.e., “a user interface definition”) and receiving a request. Claim
22 does not recite any additional method steps. Appellant does not apprise
us of error in the Examiner’s determination that, but for the recitation of
generic computer components, the method of claim 22 (receiving two pieces
of information—a definition and a request) could be performed wholly in the
human mind and, thus, recites an abstract idea (i.e., mental processes).
Having concluded that claim 22 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether claim 22
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two). The Examiner found that the
only additional items in claim 22, beyond the abstract idea, are “an in-
vehicle component and personal device,” and these elements “are merely
recited at a high level as the source and destination of the information.”
Final Act. 3–4.
As an initial matter, we do not agree with the Examiner that claim 22
recites an in-vehicle component, even as a source of the information. Claim
22 does not recite receiving from an in-vehicle component; rather, claim 22
recites receiving a user interface definition and receiving a request “as sent”
from an in-vehicle component. Nevertheless, even assuming claim 22 were
construed as positively reciting an in-vehicle component as the source of the
information (the definition and the request), for the reasons set forth below,
the in-vehicle component and personal device, considered individually or as
an ordered combination, do not integrate the abstract idea into a practical
application.
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As described in Appellant’s Specification, “a personal device may
generally refer to a mobile device such as a smartphone, or a wearable
device such as a smart watch or smart glasses,” and an in-vehicle component
“may include various elements of the vehicle . . . having user-specific
configurable settings.” Spec. ¶¶ 15, 35. Appellant does not direct our
attention to, nor do we discern, any indication in the Specification that the
steps recited in claim 22 require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, invoke any
allegedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.6

6 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
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Appellant argues that “claim 22 integrates a practical application
relating to display of a user interface for an in-vehicle component descriptive
of functions of the component that are unavailable in a control set included
by the component.” Appeal Br. 6. This argument is not persuasive because,
as the Examiner points out, claim 22 “only requires receiving a request to
display”: “there is no limitation directed to displaying.” Ans. 4. Considered
as a whole, claim 22 appears focused on receiving two pieces of
information—a definition and a request. The claim’s reference to displaying
a user interface for an in-vehicle interface amounts to a recitation of a field
of use for the information received and, thus, does not integrate the abstract
idea into a practical application. See Bilski v. Kappos, 561 U.S. 593, 612
(2010) (stating that “limiting an abstract idea to one field of use . . . did not
make the concept patentable”).
We conclude, for the reasons outlined above, that claim 22 recites
mental processes, i.e., an abstract idea, and that the additional elements in
the claim are no more than field of use limitations or generic components
used as tools to perform the recited abstract idea. As such, they do not
integrate the abstract idea into a practical application. See Alice, 573 U.S. at
223–24 (“[W]holly generic computer implementation is not generally the
sort of ‘additional featur[e]’ that provides any ‘practical assurance that the
process is more than a drafting effort designed to monopolize the [abstract
idea] itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with
the Examiner that claim 22 is directed to an abstract idea.

application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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Step Two of Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 22 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
The Examiner determined that the aforementioned “additional
elements are generic computer components recited at a high level that
perform actions consistent with known generic computer functions and do
not add significantly more.” Final Act. 4. According to the Examiner, the
recited steps of receiving information “are only intended to be implemented
on the generic computer components, which does not amount to significantly
more than the abstract idea.” Ans. 4.
As discussed above, Appellant’s Specification describes the “personal
device” and “in-vehicle component” generically as conventional items. See
Spec. ¶¶ 15, 35. Further, as discussed above, these components are merely
recited at a high level as the source (or potential source) and destination of
the information received in the receiving steps and, thus, considered both
individually and as an ordered combination, do not add significantly more to
the abstract idea so as to provide an inventive concept.
We are not apprised, on the present record, of error in the rejection of
claim 22 under 35 U.S.C. § 101, which we, thus, sustain.
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Obviousness—Claims 1–3 and 20–22
In contesting the rejection of claims 1–3 and 20–22 under
35 U.S.C. § 103, Appellant addresses independent claims 1 and 22 under
separate sub-headings, but relies on the same arguments for both claims.
Appeal Br. 6–9; see id. at 8–9 (stating that “independent claim 22 is
patentable over Grimm in view of Hess at least for reasons similar to those
given above for the patentability of independent claim 1”). Appellant also
relies on these same arguments for dependent claims 2, 3, 20, and 21. See
id. at 9. We decide the appeal of the rejection of claims 1–3 and 20–22
under 35 U.S.C. § 103 on the basis of claim 1, and claims 2, 3, and 20–22
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (permitting the
Board to select a single claim to decide the appeal as to a single ground of
rejection of a group of claims argued together).
The Examiner found that Grimm discloses a system substantially as
recited in claim 1, including “the in-vehicle component sending data to the
device and enabling interaction with the device,” but that Grimm “does not
explicitly disclose send to the device a user interface definition descriptive”
of the second control set. Final Act. 4–5. The Examiner, however, relied on
Hess for this feature. See id. at 5. Appellant does not dispute the
Examiner’s findings with respect to Hess or the Examiner’s reasoning in
combining Hess with Grimm. See Appeal Br. 8.
Appellant argues that Grimm “fails to disclose that there is ‘a second
control set including at least one function to configure the component
unavailable in the first control set.’” Appeal Br. 7. With respect to this
feature, the Examiner found that the touch-screen interface displayed by
Grimm’s mobile device 14 allows the driver to control the various vehicle
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components and, in particular, “adds additional features to the control set,”
in that “the mobile device adds a second control set including at least a
function of voice control to configure a component, such as the radio or
HVAC system.” Final Act. 5–6 (citing Grimm ¶¶ 24, 25, 33, 39, 52); see
also id. at 8 (finding, in addressing claim 22, that the touch-screen interface
displayed by Grimm’s mobile device 14 “adds additional features to the
control set, such as user preference for seat position and similar, and voice
control”). Thus, we understand the Examiner to be reading the “second
control set including at least one function to configure the component
unavailable in the first control set” of claim 1 on the voice recognition
feature that Grimm discloses in paragraph 33 and/or the vehicle
personalization feature that Grimm discloses in paragraphs 24 and 39.
Appellant argues that Grimm’s voice recognition feature is not “a
second control set including at least one function to configure the component
unavailable in the first control set” because “[w]hether commands are
accessed via voice or not using voice does not change what commands are
available via the ‘device 14.’” Appeal Br. 7; see also Reply Br. 2
(submitting that “whether functions are accessed via voice or not using voice
does not change what functions are available”). This argument is not
persuasive because Grimm discloses that the voice commands are a “value-
added feature” available on device 14, but unavailable on vehicle 10 (i.e.,
unavailable in the first control set of physical controls to configure the in-
vehicle component). Grimm ¶ 33. Even assuming that the in-vehicle
component responds in the same manner whether the commands are
accessed via the voice command function to configure the component or via
a manual function to configure the component, the voice command function
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is a function to configure the component that is unavailable in the first
control set (i.e., the control set of physical controls available on the in-
vehicle component). See id. (disclosing taking advantage of the existing
voice recognition capability in the mobile device and avoiding the cost of
adding a voice recognition system to the vehicle).
Appellant also argues that “voice interface is audio, and is therefore
not displayed within the plain meaning of the word display.” Reply Br. 2.
Claim 1 does not require that the device display the voice command itself.
Rather, claim 1 recites that the in-vehicle component is configured to “send
an interaction request to the device to cause the device to display a user
interface for the component including the second control set to configure the
component.” Claims App. A-1. Thus, the interaction request need only
cause the device to display a user interface including the voice recognition
functionality, such as, for example, an option on the touch-screen to select or
invoke voice recognition.
Moreover, the Examiner also cited the vehicle personalization feature
of Grimm, as discussed above. Appellant argues that the mention of this
vehicle personalization feature in paragraph 39 of Grimm
does not relate to “an in-vehicle component, including a first
control set having physical controls to configure the
component,” and in that context to “identify a device associated
with a user approach to the component” and “send to the device
a user interface definition descriptive of a second control set
including at least one function to configure the component
unavailable in the first control set.”
Appeal Br. 8. Further, Appellant notes that paragraph 24 of Grimm
discloses that application 22 could retain the user’s preferences on device 14
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to be employed whenever device 14 is placed on module 16. Id. Thus,
Appellant contends that Grimm discusses personalization
as being possible when the user places the device, but no
personalization is discussed in Grimm as being done that
includes additional functions unavailable in the first control set,
let alone in relation to the claim language to “send to the device
a user interface definition descriptive of a second control set
including at least one function to configure the component
unavailable in the first control set.”
Id.
The Examiner found that Grimm discloses an in-vehicle component
configured to identify a device associated with a user approach to the
component in paragraphs 27 and 52. Final Act. 5. Appellant does not
persuasively explain why this finding is in error.
In regard to the personalization option, the additional function of the
second control set that is unavailable in the first control set is the retention
on the device of preferences of the user of the device for use when the
device is placed on the interface module of the vehicle to control various in-
vehicle components. See Grimm ¶ 24. The user would enter these
preferences and request that they be saved using the touch-screen interface
that application 22 displays on device 14 from a user interface definition
descriptive of the second control set sent from the in-vehicle component in
the Grimm system as modified in view of Hess as discussed above. See id.
¶ 22 (disclosing that device 14 runs application 22, which receives data from
vehicle 10 via interface module 16). Appellant does not persuasively
explain why this is insufficient to satisfy the limitations of claim 1 to which
Appellant alludes in the argument.
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For the above reasons, Appellant does not apprise us of error in the
rejection of claim 1 as unpatentable over Grimm and Hess. Accordingly, we
sustain the rejection of claim 1 and of claims 2, 3, and 20–22, which fall
with claim 1, as unpatentable over Grimm and Hess.
Obviousness—Claims 4–7 and 19
In contesting the rejections of dependent claims 4–7 and 19, Appellant
merely relies on the arguments presented for independent claim 1, from
which they depend. Appeal Br. 9. For the reasons discussed above,
Appellant’s arguments fail to apprise us of error in the rejection of claim 1
under 35 U.S.C. § 103 and, likewise, fail to apprise us of error in the
rejections of claims 4–7 and 19 under 35 U.S.C. § 103, which we, thus,
sustain.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
22 101 Eligibility 22
1–3, 20–22 103 Grimm, Hess 1–3, 20–22
4 103 Grimm, Hess, Jain 4
5–7 103 Grimm, Hess,
Lippman
5–7
19 103 Grimm, Pontiac
GTO
19
Overall
Outcome
1–7, 19–22

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TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED