Ex Parte Failing

Patent Trial and Appeal Board

Jul 20, 2018

13015957 (P.T.A.B. Jul. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/015,957 01/28/2011
107691 7590 07/23/2018
BRYN c/o Cortex Law Group, P.C.
PO Box 1210
Morgan Hill, CA 95038
FIRST NAMED INVENTOR
Bryan Marc Failing
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.
BRYN-0001.US 1 3590
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
07/23/2018 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 BRYAN MARC FAILING
Appeal2017-004852
Application 13/015,957
Technology Center 3600
Before CAROLYN D. THOMAS, KARA L. SZPONDOWSKI, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 20-43, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to "managing an energy transfer between a
vehicle and an energy transfer system." Spec. Title ( capitalization omitted).
Illustrative Claim
Claim 20 is illustrative and reproduced below with certain limitations
at issue emphasized:
Appeal2017-004852
Application 13/015,957
20. A method of managing at least one transfer of energy, said
method comprising:
determining a plurality of attributes associated with a
transfer of energy between a vehicle and an energy transfer
system;
determining a plurality of costs associated with said
plurality of attributes;
determining a selection, input via a user interface,
associated with at least one attribute of said plurality of
attributes, wherein said user interface includes a first listing of
said plurality of attributes and a second listing of said plurality
of costs, and wherein each attribute of said first listing of said
plurality of attributes corresponds to a respective cost of said
second listing of said plurality of costs; and
generating a request to perform, in accordance with said at
least one attribute, an energy transfer between said vehicle and
said energy transfer system, and
wherein said generating is performed using a processor.
Rejections
Claims 20-43 stand rejected under 35 U.S.C. § 101 as being directed
to ineligible subject matter. Final Act. 3.
Claims 20-43 stand rejected under 35 U.S.C. § I03(a) as obvious over
Ambrosio et al. (US 2009/0313103 Al; Dec. 17, 2009). Final Act. 5.
ISSUES
1. Did the Examiner err in concluding that claims 20-43 were
directed to ineligible subject matter without significantly more under § 101?
2. Did the Examiner err in finding Ambrosio teaches or suggests
"said user interface includes a first listing of said plurality of attributes and a
second listing of said plurality of costs," as recited in claim 20?
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Application 13/015,957
ANALYSIS
§ 101
Section 101 defines patentable subject matter: "Whoever 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 and requirements of this
title." 35 U.S.C. § 101. The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). "Eligibility under 35 U.S.C. § 101 is a question of law,
based on underlying facts." SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016,
1020 (Fed. Cir. 2018). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014).
A court must be cognizant that "all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas" (Mayo, 566 U.S. at 71), and "describing the claims at ... a high level
of abstraction and untethered from the language of the claims all but ensures
that the exceptions to§ 101 swallow the rule." Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, "the claims are
considered in their entirety to ascertain whether their character as a whole is
directed to excluded subject matter." Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
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In the second step, 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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has "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." Id. (quotation omitted).
Here, the Examiner determines that "[t]he claimed invention is
directed to managing energy transfer by selecting at least one energy transfer
attribute, with each attribute having a corresponding cost; and generating a
request to perform said energy transfer based on the selected attribute."
Ans. 2. The Examiner explains that the "claimed invention could be
performed in the human mind, or by a human using a pen and paper"
because "the attributes and the corresponding costs can be determined from
a piece of paper/book/human mind, and selection made from said
paper/book/human mind." Id. at 3. The Examiner analogizes to
"determining the cost of repairing a vehicle part" using a "paper guide" with
a "plurality of parts and their corresponding labor costs." Id.
Appellant argues that the Examiner's abstract idea relies on "several
phrases which are not recited in the Claims," such as "managing energy
transfer" and "with each attribute having a corresponding cost." Reply Br.
4; see also App. Br. 17-20. However, the Examiner's abstract idea merely
paraphrases certain claim language, and repeating claim language verbatim
is not required. For example, in Alice, the Supreme Court condensed the
entire abstract idea into the phrase "intermediated settlement," even though
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Application 13/015,957
those express words never appeared in the claim. Alice, 134 S. Ct. at 2355.
The same applies here. For example, claim 20 recites "each attribute of said
first listing of said plurality of attributes corresponds to a respective cost of
said second listing of said plurality of costs," which the Examiner
reasonably condensed to "each attribute having a corresponding cost."
Thus, we are not persuaded the Examiner erred in paraphrasing or
summarizing the claim language.
Appellant also argues that a "user interface" and "processor" require
"hardware and/or software, and therefore ... cannot be performed in the
human mind, or by a human using a pen and paper." Reply Br. 5 ( quotation
omitted); App. Br. 20-21. We are not persuaded by Appellant's argument.
"[M]erely configuring generic computers in order to supplant and enhance
an otherwise abstract manual process is precisely the sort of invention that
the Alice Court deemed ineligible for patenting." Credit Acceptance Corp.
v. Westlake Servs., 859 F.3d 1044, 1057 (Fed. Cir. 2017) (quotation
omitted). As the Supreme Court has said, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." Alice, 134 S. Ct. at 2358.
Instead, we agree with the Examiner that "with 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." Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed. Cir. 2016); see also Ans. 2. Other than a generic
"processor" and "user interface," the Examiner is correct in analogizing the
present claims to a price list in the human mind or on paper. Ans. 3. A price
list is a "listing of [a] plurality of attributes" and the "respective cost" of
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each attribute. "[M]ere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology." Credit Acceptance, 859 F.3d at 1055; see also Mortg. Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir.
2016) ("generic computer components such as an 'interface,' 'network,' and
'database' .... do not satisfy the inventive concept requirement").
Further, limiting the field of use to an energy transfer to or from a
vehicle does not render them patentable. "The Supreme Court and this court
[i.e., the Federal Circuit] have repeatedly made clear that merely limiting the
field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract." Affinity Labs of
Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016).
Appellant recites nearly the entirety of the claim and asserts that it is
significantly more, but that is an insufficient argument because it fails to
explain why the claim recites significantly more than the abstract idea. See
Reply Br. 9-10; App. Br. 23-24. As discussed above, the claim elements
relied upon by Appellant either are part of the abstract idea ( e.g., with minor
paraphrasing) or are things that the Federal Circuit has held do not amount to
significantly more ( e.g., a processor).
For dependent claim 33, Appellant argues§ 101 does not apply
because that claim recites "performing said energy transfer using an
interface between said vehicle and said energy transfer system." App. Br.
25. But we agree with the Examiner that "[t]his is simply a post-solution
activity" and "does not make it less abstract." Ans. 4; see also Diamond v.
Diehr, 450 U.S. 175, 191-92 (1981) ("Similarly, insignificant post-solution
activity will not transform an unpatentable principle into a patentable
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process."). For example, nothing in claim 33 provides a technical solution
for how the generic "interface" performs an energy transfer; it merely recites
the desired result, which is the same next step one would have expected
from "generating a request to perform ... an energy transfer" in independent
claim 20, from which claim 33 depends. See RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) ("The inquiry often is whether the
claims are directed to 'a specific means or method' for improving
technology or whether they are simply directed to an abstract end-result.").
For the remaining dependent claims, Appellant argues the Examiner
has not included any detailed discussion of each and every limitation. App.
Br. 25-26. Yet Appellant also does not identify any particular limitation
which adds significantly more than the abstract idea, whereas the Examiner
has determined that "the dependent claims do not resolve the issues raised in
the independent claim 20." Ans. 4. The Federal Circuit has held that
"[ c ]ourts may treat a claim as representative in certain situations, such as if
the patentee does not present any meaningful argument for the distinctive
significance of any claim limitations not found in the representative claim."
Berkheimer v. HP Inc., 881 F.3d 1360, 1365 (Fed. Cir. 2018). That is the
case here.
Accordingly, we sustain the § 101 rejection of claims 20-43.
§ 103
Independent claims 20, 42, and 43 each recite "said user interface
includes a first listing of said plurality of attributes and a second listing of
said plurality of costs."
The Examiner finds that "Ambrosio teaches different costs for
different attributes," such as "the night price of electricity (attribute 1) as 9
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cents, and the noon time price of electricity (attribute 2) as 15 cents." Ans. 4
( citing Ambrosio ,r 95). Thus, we agree with the Examiner that Ambrosio
teaches a plurality of attributes and a plurality of costs.
Nevertheless, we agree with Appellant that the Examiner fails to show
Ambrosio teaches or suggest a user interface that includes listings of the
plurality of attributes and respective costs. App. Br. 35-38. The Examiner
points to paragraph 3 6 of Ambrosio as disclosing "[ e ]lectric vehicle 116 and
charging station 118 send and receive data associated with ... the price of
electricity received from a power grid ... and/or any other data relevant to
charging or de-charging electric vehicle 116." Ans. 4--5. The Examiner
then states "[ t ]his is considered to include the lists of said attributes and their
corresponding costs." Id. at 5. However, even if "price" were considered
plural rather than singular, this would merely disclose sending and receiving
multiple prices, not necessarily displaying or listing multiple prices (i.e.,
"said user interface includes a first listing ... "). The Examiner has given no
further explanation why it would have been obvious for Ambrosio's user
interface to include the claimed listings.
Accordingly, we reverse the § 103 rejection of independent claims 20,
42, and 43, and their dependent claims 21--41.
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Application 13/015,957
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 2 0-4 3 under § 101, but we reverse the Examiner's decision rejecting
claims 2 0-4 3 under § 1 0 3.
Because we affirm at least one rejection for every appealed claim, we
designate this Decision as an affirmance.
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.
§ 41.50(±).
AFFIRMED
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