Ex Parte Doyle

Patent Trial and Appeal Board

Feb 20, 2018

11346012 (P.T.A.B. Feb. 20, 2018)

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.
11/346,012 02/01/2006 Thomas F. Doyle 035380. 00009 2160
4372 7590 02/22
ARENT FOX LLP
1717 K Street, NW
WASHINGTON, DC 20006-5344
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
patentdocket @ arentfox. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS F. DOYLE
Appeal 2016-007479
Application 11/346,012
Technology Center 3600
Before JAMES R. HUGHES, ERIC S. FRAHM, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—6, 8—14, and 27—33, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to asset
usage, such as a rental asset usage. See generally Spec. 1. Claim 1 is
exemplary:
1. A method of providing a rental status signal relating to a
rental asset, comprising:
Appeal 2016-007479
Application 11/346,012
receiving a rental asset completion signal by a processor
associated with the rental asset,
wherein the rental asset completion signal is initiated by
an operator of the rental asset to indicate that the rental of the
rental asset is complete;
upon receiving the rental asset completion signal,
triggering a determination by the processor of at least one rental
asset operating characteristic of the rental asset in order to
determine whether an operation of the rental asset is complete;
determining that the rental asset is not in use only upon
receipt of both
the rental asset completion signal, and
an independent indication, from a sensor coupled
to the processor, via that the at least one determined
rental asset operating characteristic indicates that
operation of the rental asset is complete, wherein the
sensor monitors the operating characteristic of the rental
asset;
generating the rental status signal based on the
determining that the rental asset is not in use;
transmitting, via a network, the rental status signal to
indicate to a remote rental agency that the rental asset is not in
use to stop billing of the rental asset at the remote rental
agency;
continuing to monitor the sensor output to determine
whether the rental asset remains not in use based on the at least
one rental asset operating characteristic and independent of the
rental status completion signal; and
when it is determined that the rental asset use has
resumed after billing at the remote rental agency has already
stopped, displaying on a display device a request for an
authorization code or billing information and transmitting a
new rental status signal indicating that the rental asset use has
resumed, and
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Application 11/346,012
receiving a status indicator alerting the operator of the
rental asset that billing has resumed.
Rejection
Claims 1—6, 8—14, and 27—33 stand rejected under 35 U.S.C. § 101
because they are directed to patent-ineligible subject matter.
ANALYSIS
We disagree with Appellant’s arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.1
On this record, the Examiner did not err in rejecting claim 1.
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 2-4; Ans. 2—
4. In particular, the Examiner finds the claims are direct to the abstract idea
of determining information associated with a rental asset. See 2—A\ Ans. 2—
4. The Examiner further finds the claims use generic computer components
to perform generic computer functions. See Ans. 2—A\ Ans. 2-4. Appellant
argues the Examiner erred. See App. Br. 6—10; Reply Br. 3—7.
Appellant has not persuaded us of error. Section 101 of the Patent Act
provides “[wjhoever 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 therefor, subject to the conditions
1 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).
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Application 11/346,012
and requirements of this title.” 35 U.S.C. § 101. That provision‘“contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v. CLSBanklnt’l,
134 S. Ct. 2347, 2354 (2014) (quoting Assn for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e 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.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[w]hat else is there in the claims before us?” To answer that
question, 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. We have described
step two of this 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.”
Alice Corp., 134 S. Ct. at 2355 (citations omitted).
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has “treated collecting
information, including when limited to particular content (which does not
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Application 11/346,012
change its character as information), as within the realm of abstract ideas.”
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348-49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Natl Assn, 776 F.3d 1343, 1347 (Fed. Cir. 2014). “In a
similar vein, we have treated analyzing information [including manipulating
information] by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.” Elec. Power, 830 F.3d at 1354 (emphasis added);
see also In re TLI Commc ’ns. LLC Patent Litig., 823 F.3d 607, 613 (Fed.
Cir. 2016). “And we have recognized that merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis.” Elec. Power, 830 F.3d at
1354 (emphasis added); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 714—15 (Fed. Cir. 2014).
The rejected claims “fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Elec. Power, 830 F.3d at 1353. Contrary to
Appellant’s arguments (App. Br. 6—9; Reply Br. 3—6), the claims are similar
to the claims of Electric Power, and are focused on the combination of
abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354.
For example, claim 1 is directed to receiving or collecting information
(“receiving a rental asset completion signal,” “an independent indication,
from a sensor coupled to the processor,” “transmitting . . . ,” “receiving a
status indicator alerting”), analyzing information (“determining that the
rental asset is not in use,” “triggering a determination by the processor,”
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Application 11/346,012
“generating the rental status signal,” “monitor the sensor output to determine
. . .”), and presenting information (“displaying on a display device a
request”). See Elec. Power, 830 F.3d at 1353.
The dependent claims are directed to similar functions or processes,
and Appellant has not shown such claims are directed to other non-abstract
functions or processes. See claims 2—6, 8—14, and 27—33. In particular, with
respect to dependent claim 13, Appellant asserts “the rental agency may
even remotely disable the rental asset if the operator of the rental asset is
unable to provide requested authorization code.” See App. Br. 8; see also
Reply Br. 6. That argument is not commensurate with the scope of the
claim, as claim 13 merely recites “disabling the rental asset until the
requested authorization is received.” In any event, Appellant has not shown
the claim is directed to non-abstract functions or processes.
Regarding Alice step two, contrary to Appellant’s assertion (App. Br.
10; Reply Br. 6—7), Appellant has not shown the claims in this case require
an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355. In
particular, the claims merely utilize computer capabilities—not
“improve[ing] computer capabilities,” as Appellant asserts (Reply Br 6).
Further, Appellant’s assertion that the claims implement “a tangible
improvement in the realm of wireless communications” (Reply Br. 6) is
unpersuasive, because Appellant does not even show the claims require
wireless communications.
Further, contrary to Appellant’s arguments (App. Br. 10; Reply Br. 6—
7), the claims are similar to the claims of Electric Power, because they do
not require any nonconventional computer, network, or display components,
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Application 11/346,012
or even a “non-conventional and non-generic arrangement of known,
conventional pieces,” but merely call for performance of the claimed
information collection, analysis, and display functions on generic computer
components and display devices. See Elec. Power, 830 F.3d at 1355; see
also Claim 1 (reciting “a processor,” “a sensor,” “a network,” and “a display
device”). The dependent claims call for similar generic components and
devices, and Appellant has not shown such claims require any non-
conventional components or devices. See claims 2—6, 8—14, and 27—33.
In addition, Appellant’s argument that the claims are drawn to a “new
and useful end” by the deficiency of prior art (App. Br. 9) is unpersuasive,
because the requirements under 35 U.S.C. §§ 102—103 are separate from the
requirement under 35 U.S.C. § 101. Likewise, Appellant’s assertion—
without persuasive analysis and support—that the claims achieve a “new and
useful end” (App. Br. 10; Reply Br. 6—7) is unpersuasive.
In short, Appellant has not shown the claims, read in light of the
Specification, require anything other than conventional computer, network,
and display technology for collecting, analyzing, and presenting the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks are “insufficient to pass the test of an inventive
concept in the application” of an abstract idea. See Elec. Power, 830 F.3d at
1355.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claims 1—6, 8—14, and 27—33 under 35
U.S.C. § 101.
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DECISION
We affirm the Examiner’s decision rejecting claims 1—6, 8—14, and
27-33.
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).
AFFIRMED
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