Mitchell International, Inc.

Patent Trials and Appeals Board

Feb 25, 2022

2021004043 (P.T.A.B. Feb. 25, 2022)

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. 16/823,107 03/18/2020 Umberto Laurent Cannarsa 13CN-309551-US 9118 30764 7590 02/25/2022 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP 650 Town Center Drive, 10th Floor Costa Mesa, CA 92626 EXAMINER BULLINGTON, ROBERT P ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 02/25/2022 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@SHEPPARDMULLIN.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte UMBERTO LAURENT CANNARSA, JOHN ANTHONY BACHMAN, and DANIEL JAKE KOVAR Appeal 2021-004043 Application 16/823,107 Technology Center 3700 Before BENJAMIN D. M. WOOD, JEREMY M. PLENZLER, and CARL M. DeFRANCO, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s rejection of claims 1-3 and 6-24 under 35 U.S.C. § 101 as directed to ineligible subject matter. Claims 4 and 5 have been canceled. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Mitchell International, Inc. Appeal Br. 1. Appeal 2021-004043 Application 16/823,107 2 CLAIMED SUBJECT MATTER The claims are directed to methods for managing repair of vehicle damage with head mounted display device and devices thereof. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: obtaining repair estimate information associated with a damaged vehicle damaged during an adverse incident based on vehicle identification information captured by a computing device operated by a user, the repair estimate information comprising damage information specifying one or more damaged parts of the damaged vehicle, and repair estimate procedures for repairing the one or more damaged parts of the damaged vehicle; obtaining vehicle repair workflow information based on the damage information associated with the repair estimate information, wherein the vehicle repair workflow information comprises repair workflow procedures for repairing the one or more damaged parts of the damaged vehicle; obtaining historic repair information specifying repair procedures previously used to repair vehicle damage corresponding to the one or more damaged parts of the damaged vehicle; determining one or more sets of repair procedures by correlating the repair estimate procedures with the repair workflow procedures, wherein each set of repair procedures comprises individual repair steps; determining an order for performing the individual repair steps associated with each set of repair procedures by using a machine learning algorithm trained on the historic repair information; and effectuating presentation of the one or more sets of repair procedures based on the order of the individual repair steps on the computing device. Appeal Br. 21 (Claims App.). Appeal 2021-004043 Application 16/823,107 3 OPINION Appellant argues claims 1-3 and 6-24 as a group. Appeal Br. 8-18. We select claim 1 as representative of the group, and decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv) (2020). An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted § 101 to include implicit exceptions: “[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). To determine whether a claim falls within a judicially recognized exception to patent eligibility under § 101, we apply the two-step framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and reaffirmed in Alice. Alice, 573 U.S. at 217-18 (citing Mayo, 566 U.S. at 75-77). For the first Alice step (the USPTO’s Patent Subject Matter Eligibility guidance, MPEP § 2106, designates the first step of Alice as Step 2A2), we determine whether the claims at issue are directed to a patent- ineligible concept such as an abstract idea, law of nature, or natural phenomenon. Alice, 573 U.S. at 217 (citing Mayo, 566 U.S. at 78-79). If so, we advance to the second Alice step (Step 2B of the USPTO’s Patent Subject Matter Eligibility guidance) where “we consider the elements of each claim both individually and ‘as an ordered combination’ to determine 2 Under the USPTO’s Step 1, we determine whether the claimed invention falls within one of the four statutory categories of invention under 35 U.S.C. § 101: processes, machines, manufactures, and compositions of matter. MPEP § 2106 III. Here, claim 1 recites a process, thus satisfying USPTO Step 1. Appeal 2021-004043 Application 16/823,107 4 whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application” of the otherwise patent-ineligible concept. Id. (quoting Mayo, 566 U.S. at 78-79). We also follow the USPTO’s additional guidance on applying Step 2A. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Patent Eligibility Guidance”).3 The Patent Eligibility Guidance establishes a “two-prong inquiry” for determining whether a claim is directed to a judicial exception. Id. at 54. In prong one, we determine whether the claim recites a judicial exception, such as an abstract idea. Id. The groupings of abstract ideas listed in the Patent Eligibility Guidance include “[m]athematical concepts,” “[c]ertain methods of organizing human activity,” and “[m]ental processes.” Id. at 52. If the claim recites a judicial exception, we look to whether the claim recites additional elements that integrate the judicial exception into a practical application. Id. at 50. Thus, a claim is directed to a judicial exception only if the claim recites a judicial exception and does not integrate that exception into a practical application. Id. “Integration into a practical application” requires an additional element or a combination of additional elements in the claim 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 exception. Id. at 54- 55. If we determine that the judicial exception is not integrated into a practical application, we proceed to Step 2B and determine whether the 3 Available at https://www.govinfo.gov/content/pkg/FR-2019-01- 07/pdf/2018-28282.pdf. Appeal 2021-004043 Application 16/823,107 5 claim adds a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional activity in the field, or, alternatively, whether the claim simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Patent Eligibility Guidance, 84 Fed. Reg. at 56. We have reviewed Appellant’s arguments in response to the Examiner’s rejection of claim 1 as directed to ineligible subject matter, but are not persuaded of Examiner error. Therefore, we sustain the rejection for essentially those reasons expressed in the Final Action and Answer, and add the following primarily for emphasis. Step 2A, Prong 1 The Examiner finds that claim 1 recites a judicial exception because some of the limitations of claim 1 recite mental processes and certain methods of organizing human activity. Final Act. 3. The Examiner specifically finds that some of the limitations constitute “mental processes” because they “can be performed in the human mind,” such as “an observation, evaluation, judgment or opinion.” Id. The Examiner characterizes these limitations as reciting “a process of data gathering and manipulation, which is partially analogous to ‘collecting information, analyzing it, and displaying certain results of the collection analysis.’” Id. at 3-4 (citing Elec. Power Grp., LLC v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016) (emphasis omitted)). Appellant disputes that claim 1 recites a judicial exception. Appellant asserts, among other things, that “the claims do not recite the category of Appeal 2021-004043 Application 16/823,107 6 ‘mental processes,’ because the claims do not cover ‘concepts performed in the human mind.’” Appeal Br. 12. We agree with the Examiner that claim 1 recites a judicial exception. “If a claim, under its broadest reasonable interpretation, 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.” Patent Eligibility Guidance, 84 Fed. Reg. 52 n.14. The Examiner identifies as a mental process, among other limitations, the step of “determining one or more sets of repair procedures by correlating the repair estimate procedures with the repair workflow procedures, wherein each set of repair procedures comprises individual repair steps.” Final Act 3. “[C]orrelating” repair estimate procedures with repair workflow procedures encompasses “eliminat[ing] duplicative or unrelated repair procedures.” Spec. ¶ 76. It is well within the capability of a human mind to review repair estimate procedures and repair workflow procedures to eliminate duplicative or unrelated repair procedures, particularly since claim 1 is not limited to a particular quantity or complexity of repair estimate procedures or repair workflow procedures. Appellant lists the limitations that the Examiner determines to be recitations of mental processes (plus an additional limitation), and categorically asserts that they “could not practically be performed in the human mind.” Appeal Br. 12-13; see Reply Br. 4-5. But Appellant does not provide evidence or persuasive technical reasoning supporting this assertion. Absent supporting evidence or reasoning, Appellant’s assertion constitutes mere attorney argument, which is entitled to little weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). We are therefore not Appeal 2021-004043 Application 16/823,107 7 persuaded that the Examiner erred in determining that claim 1 recites a judicial exception, and proceed to Step 2A, Prong 2. 4 Step 2A, Prong 2 Having determined that claim 1 recites a judicial exception, we next consider whether claim 1 recites additional elements that integrate the judicial exception into a practical application. The Examiner finds that the additional elements of claim 1 do not integrate the judicial exception into a practical application because: [T]o the extent that, e.g., “one or more physical processors,” “a computing device,” “a computer wearable device” and “a machine learning algorithm” are claimed, . . . these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In other words the claimed “generation of repair procedures” is not providing a practical application. Final Act. 4 (emphasis omitted). Appellant responds that the Examiner’s analysis is “conclusory” and is “contrary to the requirements set forth in, for example, MPEP 2106.07(a) and the [Patent Eligibility Guidance] at pp. 15-16.” Appeal Br. 14. Appellant apparently reads these sources as requiring a “limitation-by- limitation analysis.” Id. Appellant further asserts that the claims are patent eligible because they set forth an improvement in a relevant technology, i.e., 4 Because we agree with the Examiner that claim 1 recites mental processes, we do not consider the Examiner’s finding that it also recites certain methods of organizing human activity. Appeal 2021-004043 Application 16/823,107 8 “in the functioning of an automotive repair system.” Id. at 16 (emphasis omitted). That is, according to Appellant, the claims “delineate a particularly defined technical process in a practical application for determining sets of repair procedures and in turn determining of the order of individual repair steps.” Id. at 16. In support of this latter argument, Appellant relies on Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016), McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299, 1315 (Fed. Cir. 2016), and Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259-60 (Fed. Cir. 2017). Id. Appellant’s arguments are not persuasive of Examiner error. First, we disagree that the Examiner’s analysis is conclusory or falls short of the MPEP or Patent Eligibility Guidance. The Examiner adequately identifies those limitations drawn to generic computer implementation of the recited judicial exception. Final Act. 4; see Appeal Br. 21, 24-25, 27-28 (Claims App.) (independent claims reciting “a computing device,” “a computer wearable device,” and “a machine learning algorithm”). The Examiner also adequately identifies limitations drawn to insignificant extra-solution activities of “data gathering” and “presenting data.” Final Act. 4; see Appeal Br. 21, 24-25, 27-28 (independent claims reciting, inter alia, “obtaining . . . information” and “effectuating presentation” of information); See Patent Eligibility Guidance at 55 n.31 (steps drawn to “mere data gathering” deemed “insignificant extra-solution activity” that do not integrate a judicial exception into a practical application); Elec. Power Grp., 830 F.3d at 1354 (determining to be abstract steps for “gathering and analyzing information of a specified content, then displaying the results”). Appeal 2021-004043 Application 16/823,107 9 Second, Appellant has not persuaded us that claim 1 contains additional limitations that integrate the recited judicial exception into a practical application. Appellant relies on the steps of “correlating the repair estimate procedures with the repair workflow procedures,” and “determining an order for performing the individual repair steps” as integrating the judicial exception. Appeal Br. 16-17. But, as discussed above, the “correlating” step is itself a mental process, and therefore a judicial exception. As such, it cannot be relied upon to integrate a judicial exception into a practical application. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). As for the limitation reciting determining the order of individual repair steps, Appellant has not shown error in the Examiner’s characterization of that step as drawn to generic computer implementation of the recited judicial exception (because of its recitation of using a machine-learning algorithm). Final Act. 4. Appellant characterizes Enfish, McRO, and Visual Memory as determining certain “technological improvements” to be “non-abstract.” Appeal Br. 16. Appellant reasons that “as in these cases, the independent claims of the instant Application set forth the functionality of an improved automotive repair system that is different from other solutions.” Id. But Appellant does not refer us to any specific automotive repair technology recited in the claims. Indeed, the claims are not limited to automobiles, but apparently apply to any vehicle repair. Further, the concept of gathering and correlating multiple repair procedures and determining an optimum order of Appeal 2021-004043 Application 16/823,107 10 steps to perform the procedures could be applied to any device. Thus, these cases are inapposite. In sum, having reviewed the additional limitations individually and as an ordered combination, we agree with the Examiner that claim 1 is directed to a judicial exception. Step 2B Having determined that claim 1 is directed to a judicial exception, we next consider under Step 2B whether claim 1 includes additional elements or a combination of elements that provide an “inventive concept,” i.e., whether claim 1 includes specific limitations beyond the judicial exception that are not “well-understood, routine, conventional” in the field. Revised Guidance, 84 Fed. Reg. at 56. The Examiner determines that: [T]he claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g.[,] “one or more physical processors,” “a computing device,” “a computer wearable device” and “a machine learning algorithm” are claimed, these are generic, well-known, and conventional data gathering computing elements. As evidence that this is generic, well-known, and a conventional data gathering computing element, [Appellant’s] specification discloses them in a manner that indicates that the additional element is sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). Final Act. 4 (emphasis omitted). Appellant responds that “the pending claims recite limitations that are ‘not well-understood, routine, conventional activity in the field’ for at least Appeal 2021-004043 Application 16/823,107 11 the reasons discussed above regarding Prong Two of Step 2A and consistent with the examples in MPEP 2106.05(d).” Appeal Br. 19 (emphasis omitted). As discussed above, Appellant’s arguments in connection with Prong 2 of Step 2A are unpersuasive. Further, Appellant does not explain the relevance of any of the examples in MPEP § 2106.05(d). Therefore, we are not persuaded that the Examiner erred in determining that the additional limitations of the claims do not provide an inventive concept that renders the judicial exception patent eligible. Accordingly, we sustain the Examiner’s rejection of 1-3 and 6-24 under 35 U.S.C. § 101 as directed to ineligible subject matter. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 6-24 101 Eligibility 1-3, 6-24 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