Ex Parte Bienias

Patent Trial and Appeal Board

Oct 29, 2018

13064274 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/064,274 03/15/2011
7590
Alfred F. Hoyte Jr.
7734 16th Street NW
Washington, DC 20012
10/29/2018
FIRST NAMED INVENTOR
Ronald Bienias
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.
RBOOl.UPA 7228
EXAMINER
PALA VECINO, KATHLEEN GAGE
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
10/29/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD BIENIAS
Appeal2017-007899
Application 13/064,274
Technology Center 3600
Before MICHAEL J. STRAUSS, AARON W. MOORE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 17-25. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appeal2017-007899
Application 13/064,274
CLAIMED SUBJECT MATTER
The claims are directed to interactive virtual customized vehicle
design, purchase, and final acquisition. Claim 17, reproduced below, is
illustrative of the claimed subject matter:
1 7. A method for customizing a vehicle from a vehicle
manufacturer having a plurality of dealers comprising the steps
of:
providing a computing facility associated with said
manufacturer, said facility networked with a user end terminal to
allow for the exchange of text and image data there between, said
computing facility also networked with a plurality of data
processing resources associated with manufacturers of
aftermarket components or options compatible with said vehicle,
said computing facility initiating and generating a three
dimensional display of said vehicle in response to a user entered
mqmry;
the server initiating a search of said data processing
resources associated with manufacturers of aftermarket
components to find aftermarket components compatible with
said vehicle in response to a user request, said server generating
a list of said aftermarket components and transmitting said list to
said end user;
transmitting said three dimensional display of said vehicle
from said computing facility to said user, said transmitted display
viewable as part of a product display screen on said user terminal,
said product display screen including identifying indicia
corresponding to said list of aftermarket components;
said server generating and transmitting at least a two
dimensional image of one or more user selected components or
options for display on said product display screen in response to
a user request, said two dimensional component image including
data indicating both price and availability of said selected
component or option;
generating a modified three dimensional display of said
vehicle configured with one or more of said selected components
or options, and transmitting said modified three dimensional
display from said computing facility to said user;
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whereby said vehicle is configured with said one or more
of said aftermarket components or options by said manufacturer
in response to a completed sales transaction between the user and
one of said plurality of dealers, said configured vehicle delivered
to said user at a predetermined delivery date.
App. Br. 8 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Takaoka
Pyle
Ellis
US 2003/0187753 Al
US 2007/0185777 Al
US 7,353,192 B2
Oct. 2, 2003
Aug.9,2007
Apr. 1, 2008
Selected pages from website http://www.vw.com, dated 2008 as retrieved
from web.archive.org ("VW")
REJECTIONS
Claims 17-25 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Final Act. 4--5.
Claims 17, 19, 20, and 25 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Ellis and Takaoka. Final Act. 6-16.
Claims 21-24 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ellis, Takaoka, and VW. Final Act. 16-18.
Claim 18 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ellis, Takaoka, and Pyle. Final Act. 18-19.
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Application 13/064,274
DISCUSSION
35 U.S.C. § 101 REJECTION
Legal Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bankint'l, 134 S. Ct. 2347 (2014). The Supreme Court
instructs us to "first determine whether the claims at issue are directed to a
patent-ineligible concept," id. at 2355, and, in this case, the inquiry centers
on whether the claims are directed to an abstract idea. If the initial threshold
is met, we then move to the second step, in which we "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 Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme
Court describes the second step 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. ( quoting Mayo, 566 U.S. at 72-73).
Examiner's Findings
The Examiner rejects the claims under the two-step Alice framework.
Under the first step, the Examiner determines the claims are "directed to the
abstract idea of customizing an item for purchase which is a fundamental
economic practice." Final Act. 4. The Examiner further explains:
The claims are directed to customizing an item for purchase
which is considered to be a fundamental economic practice by
comparing new and stored information using rules to identify
options. Comparing new and stored information using rules to
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Application 13/064,274
identify options has been deemed by the Federal Circuit to be an
abstract idea.
Ans. 2.
Having found the claims to be directed to an abstract idea, the
Examiner proceeds to the second step of the Alice inquiry, finding the claims
do not possess a sufficient inventive concept under Alice step 2:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because when considered separately and in combination, they do
not add significantly more to the exception. Considered
separately and as an ordered combination, the claim elements do
not provide an improvement to another technology or technical
field; do not provide an improvement to the functioning of the
computer itself; do not apply the judicial exception by use of a
particular machine; do not effect a transformation or reduce a
particular article to a different state or thing; and do not add a
specific limitation other than what is well-understood, routine
and conventional in the operation of a generic computer.
Ans. 3.
Appellant's Contentions
Appellant presents several arguments in favor of eligibility. First,
Appellant argues the claims are eligible because they are not "analogous to
those of Alice or Bilski." App. Br. 5. More specifically, Appellant argues
the claims are distinguishable over those cases because "the claims ... result
in a modified, yet tangible, output; namely a car." Id.; see also Reply Br. 1
("The present invention is directed to software which performs various tasks,
but is primarily concerned with producing an output, namely, a customized
car."). Second, Appellant argues the Examiner's characterization of the
abstract idea is incorrect because the "present invention is directed to
modifying the manufacture of an article using a related product." App.
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Br. 5. Third, Appellant contends "there is no present method for providing a
customized vehicle from a manufacturer using data obtained in real time
from third party manufacturers ( via the internet)" and that "[ t ]his is a key
aspect of the invention ... [that] is not something that can be done by a
human." Id.
Analysis
We do not find Appellant's arguments persuasive. At its core,
Appellant's invention recites a process which allows a prospective vehicle
purchaser to customize their vehicle using available aftermarket parts using
the Internet to retrieve the available parts information. We agree with the
Examiner that such a process is a fundamental economic practice.
Appellant's Specification supports this determination in various respects.
For example, the Specification states "[t]he present invention relates to
electronic commerce," Spec. 1, 1. 10, and that the invention allows a vehicle
"to be customized and, if desired, purchased using the system of the present
invention," Spec. 9, 11. 3--4.
Although the limitations recited in the claim involve computer-based
operations, all of the recited operations are merely automation of the
customization and purchasing process using generic computers and software
already known in the art. For example, the Specification does not describe
the various computing devices used in the invention in anything other than
generic terms-identifying various system components as including PC 12,
servers 21, host computing facility 18, computing resources 16, etc. See
Spec. 10, 11. 5-22. No details are provided regarding the structure of these
components, and they are described only in terms of the functions they
perform in the system. In addition, the software used to perform the recited
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function is also described at a high level. For example, the generation of the
image of a vehicle is accomplished "using CAD/CAM techniques as is
known in the art." Spec. 10, 11. 24--25; see also Spec. 12, 11. 9--11.
Our reviewing court instructs us that the "decisional mechanism" for
determining whether a claim is directed to an abstract idea compares the
claim to those claims previously found to have been directed to abstract
ideas in other cases. Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016) ("[T]he decisional mechanism courts now apply
is to examine earlier cases in which a similar or parallel descriptive nature
can be seen-what prior cases were about, and which way they were
decided."). Appellant argues the claims are dissimilar to those found to be
abstract in Alice and Bilski. We disagree.
We view the claims on appeal as having a "similar or parallel
descriptive nature" to the claims in Alice and Bilski because they ultimately
are directed to an entrepreneurial improvement (i.e., customization of
vehicles with third party aftermarket parts), and not a technological one.
The Federal Circuit has repeatedly held that such entrepreneurial
improvements are within the realm of abstract ideas. See, e.g., Bilski v.
Kappas, 561 U.S. 593, 595 (2010) ("how hedging can be used in
commodities and energy markets, [is an] attempt to patent the use of the
abstract hedging idea"); Alice, 134 S. Ct. at 2355 ("the abstract idea of
intermediated settlement"); Buysafe, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (claims that "are squarely about creating a contractual
relationship----a 'transaction performance guaranty"' held as "directed to an
abstract idea"); In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009)
(structuring a sales force or marketing company is abstract).
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We find the Federal Circuit's decision in Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017) ("CAC') instructive. In
CAC, the Federal Circuit addressed a claim "directed to a system for
maintaining a database of information about the items in a dealer's
inventory, obtaining financial information about a customer from a user,
combining these two sources of information to create a financing package
for each of the inventoried items, and presenting the financing packages to
the user." CAC, 859 F.3d at 1054. The Federal Circuit found the claim
directed to an abstract idea because it focused on an improvement to the
automobile purchasing process which, although different from the process
claimed in Alice, had "no meaningful distinction between this type of
financial industry practice and the 'the concept of intermediated settlement'
held to be abstract in Alice, or the 'basic concept of hedging' held to be
abstract in Bilski v. Kappas." CAC, 859 F.3d at 1054 (citation omitted).
As was the case in CA C, the claims here relate to improvements to the
process of automobile purchasing by collecting information, analyzing it,
and displaying certain results of the collection and analysis. As such, the
claims, like those in CA C, are directed to a fundamental economic practice,
which is an abstract idea. CAC, 859 F.3d at 1055-56; see also Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (finding
claims abstract because "[t]he advance they purport to make is a process of
gathering and analyzing information of a specified content, then displaying
the results, and not any particularly inventive technology for performing
those functions").
Appellant's second argument-that the claims are eligible because the
claimed method produces a car-is also unpersuasive. We disagree that the
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manufacture of a car is the focus of the claim. Rather, as we noted above,
the Specification expressly states that "[t]he present invention relates to
electronic commerce," Spec. 1, 1. 10, and the invention allows a vehicle "to
be customized and, if desired, purchased using the system of the present
invention," Spec. 9, 11. 3--4. Moreover, the Specification provides no details
or description relating any manufacturing or production activity. Rather, it
merely describes that "[ o ]nee the user has completed the customization,
financing, and price negotiation, if any, a final date for delivery of the
vehicle 10 is established, and the user then acquires the vehicle." Spec. 16,
11. 5-7.
Appellant's third argument is similarly unpersuasive. Appellant
argues that the claims are eligible because they are "not something that can
be done by a human." App. Br. 5. We do not find this argument persuasive
because the Federal Circuit rejected a similar argument in Electric Power
Group, finding that "[ m ]erely requiring the selection and manipulation of
information-to provide a 'humanly comprehensible' amount of information
useful for users by itself does not transform the otherwise-abstract processes
of information collection and analysis." Electric Power Group, 830 F.3d at
1355; see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1370 (Fed. Cir. 2015) ("[O]ur precedent is clear that merely
adding computer functionality to increase the speed or efficiency of the
process does not confer patent eligibility on an other-wise abstract idea.").
In sum, we are not persuaded the Examiner erred in concluding the
claims are directed to ineligible subject matter. Accordingly, we sustain the
rejection under 35 U.S.C. § 101.
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35 U.S.C. § 103 REJECTION
Issue
Whether the Examiner erred in finding Ellis teaches or suggests the
disputed limitation "said computing facility also networked with a plurality
of data processing resources associated with manufacturers of aftermarket
components or options compatible with said vehicle," as recited in claim 17.
Analysis
In rejecting claim 17, the Examiner finds Ellis teaches or suggests the
disputed limitation because it teaches user computers (the recited
"computing facility") networked with a product configuration display
system 104 ( the recited "plurality of data processing resources associated
with manufacturers of aftermarket components or options compatible with
said vehicle"). Final Act. 6. The Examiner further finds that the product
configuration display system is "associated with manufacturers of
aftermarket components" because it is used to display aftermarket
components from those manufacturers. Final Act. 6-7 ( citing Ellis col. 17,
11. 6-10).
Appellant argues that the Examiner has erred because:
Neither reference discloses or suggests using third party
databases to acquire parts to customize a vehicle at the
manufacturing site. Ellis and Takaoka both rely on parts data
stored on the manufacturer's server to effect vehicle
customization, neither reference discusses using third party
databases in a manner transparent to the user.
App. Br. 6.
We are not persuaded by Appellant's argument because it is not
commensurate with the scope of the claim. Appellant's argument seeks to
distinguish the claim on the basis that no "third party databases" are used in
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the prior art references. As the Examiner correctly notes, the claim does not
recite the presence or use of any "third party databases." Rather, the claim
recites the use of "a plurality of data processing resources associated with
manufacturers of aftermarket components or options compatible with said
vehicle," which is broader in scope. Specifically, the claim does not require
that the "data processing resources associated with manufacturers of
aftermarket components" be a database, nor does it require that the
computing resources be owned or controlled by a third party. Rather, the
language of the claim merely requires that the recited "data processing
resources" be in some way "associated with manufacturers of aftermarket
components."
The cited portions of Ellis teach data processing resources, namely a
product configuration display system 104, which displays components
manufactured by aftermarket parts manufacturers. Because Ellis' s product
configuration display system 104 displays the aftermarket components, it
teaches data processing resources which are associated with, albeit not
necessarily directly or closely, the manufacturers of those components.
Because Appellant's argument relies on an overly narrow interpretation of
the scope of the claim, we are not persuaded of Examiner error.
Accordingly, we sustain the rejection of claim 17 under 35 U.S.C. § 103(a).
SUMMARY
Because Appellant's claims are directed to an abstract idea and the
claims contain no additional elements that transform the nature of the claims
into a patent-eligible application of the abstract idea, we affirm the rejection
under 35 U.S.C. § 101. Appellant has not persuaded us the Examiner erred
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in finding Ellis teaches or suggests the disputed limitation in claim 1 7.
Accordingly, we also sustain the rejection ofclaim 17 under 35 U.S.C § 103.
Appellant does not present separate arguments for patentability of any
other claims. Accordingly, we treat claim 17 as representative, and we
sustain the rejections of the remaining claims for the same reasons.
DECISION
We affirm the Examiner's rejection of claims 17-25.
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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