Ex Parte Gale et al

Patent Trial and Appeal Board

Dec 13, 2018

14265726 (P.T.A.B. Dec. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/265,726 04/30/2014
28395 7590 12/17/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Allan Roy Gale
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.
83350484 4515
EXAMINER
TINKLER, MURIEL S
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/17/2018 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLAN ROY GALE and DAVID ALLEN KOWALSKI
Appeal2017-010588
Application 14/265, 726 1
Technology Center 3600
Before DAVID M. KOHUT, ERIC B. CHEN, and
MATTHEW R. CLEMENTS, Administrative Patent Judges.
CLEMENTS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7 and 15-20. Claims 8-14 were withdrawn
from consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as "Ford Global Technologies,
LLC." App. Br. 1.
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STATEMENT OF THE CASE
The present invention is generally directed to a method and apparatus
for locating optimal refueling stations. Spec. ,r 1. For example, the
apparatus may recommend a fuel dispensary (e.g., fuel station) based on
fuel-quality statistics, such as the miles-per-gallon efficiency of a
dispensary's fuel. Spec. ,r,r 4--5. Claim 1 is reproduced below (disputed
limitation in italics).
1. A system comprising:
a processor configured to:
register an amount of fuel dispensed to a vehicle;
associate a fuel-dispensary with the amount of fuel;
determine miles-per-gallon efficiency while the
dispensed fuel is being used by the vehicle; and
save a record of the efficiency of the dispensed fuel, in
miles-per-gallon, with respect to a record associated
with the fuel-dispensary.
App. Br., Claims App. 1.
THE REJECTIONS
Claims 1-7 and 15-20 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception of statutory subject matter. Final Act. 4--8;
Ans. 6-9. 2
2 The Answer denotes the rejection under 35 U.S.C. § 101 as a new ground
of rejection. Ans. 6. However, the Answer clarifies that the new ground
does not fundamentally change the rejection set forth by the Final Action,
but merely identifies judicially-recognized abstract ideas (i.e., Federal
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Claims 1-3, 5, 7, 15-17, 19, and 20 stand rejected under
35 U.S.C. § I02(a)(2) as anticipated by Pierce (US 2015/0088613 Al;
published Mar. 26, 2015). Final Act. 9-10; Ans. 2--4.
Claims 4, 6, and 18 stand rejected under 35 U.S.C. § 103 as
unpatentable over Pierce and Leone (US 2012/0024262 Al; published Feb.
2, 2012). Final Act. 11-12; Ans. 5.
REJECTION OF CLAIMS 1-7 AND 15-20
UNDER 35 U.S.C. § 101
We select claim 1 as representative of claims 1-7 and 15-20 for this
rejection. See 37 C.F.R. 4I.37(c)(l)(iv) (representative claims); App. Br. 4--
6 (addressing claims 1-7 and 15-20 as a group). For the following reasons,
we are unpersuaded of error in this rejection of claim 1.
A. Principles of Law
The Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S.Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2116 (2013)). The
"abstract ideas" category embodies the longstanding rule that an idea, by
itself, is not patentable. Alice, 134 S.Ct. at 2354-55 (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)).
Circuit decisions) similar to the concepts recited by Appellants' claims. Id.
at 10. Appellants agree the "new grounds of rejection ... is not new."
Reply Br. 2. Although the Examiner's Answer cites additional case law, we
agree with Appellants and determine that the additional cases do not change
the "basic thrust of the rejection." In re Kronig, 539 F.2d 1300, 1303
(CCPA 1976).
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In Alice, the Supreme Court set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. There is no definitive rule to
determine what constitutes an "abstract idea." Rather, the Federal Circuit
has explained that "both [it] and the Supreme Court have found it sufficient
to compare claims at issue to those claims already found to be directed to an
abstract idea in previous cases." Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1334 (Fed. Cir. 2016); see also Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that,
in determining whether claims are patent-eligible under § 101, "the
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."). The Federal Circuit also noted
that "examiners are to continue to determine if the claim recites (i.e., sets
forth or describes) a concept that is similar to concepts previously found
abstract by the courts." Amdocs, 841 F.3d at 1294 n.2 (internal citation
omitted).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination' to determine whether [there are] additional
elements [that] 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S.Ct. at 2355 (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other words, the
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second step is to "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 73) (alteration in original).
Mere use of computers, even in conjunction with other hardware, does not
alone transform an abstract idea to significantly more. See e.g., Content
Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (patent-ineligible claims requiring a computer and scanner),
cert denied, 136 S.Ct. 119 (Mem) (2015); CLS Bankint'l v. Alice Corp. Pty.,
717 F.3d 1269, 1286 (Fed. Cir. 2013) ("[S]imply appending generic
computer functionality to lend speed or efficiency ... does not meaningfully
limit claim scope for purposes of patent eligibility."), aff'd by Alice.
B. Examiner's Findings
As to the first step of Alice's two-step framework, the Examiner finds
that the steps recited in claim 1 are "simply the organizing and comparison
of data, which can be performed mentally and is an idea itself." Final Act. 6
( citing Cyberfone and SmartGene ). The Examiner also finds these
operations are "directed to locating optimal refueling stations" (Ans. 7
( citing Spec. ,r 1 )), which is similar to the judicially-recognized abstract
ideas of "collecting and comparing known information" in Classen
[Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011),
"data recognition and storage" in Content Extraction, and "collecting
information, analyzing it, and displaying certain results of the collection and
analysis" in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016). Ans. 7.
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As to the second step of Alice's two-step framework, the Examiner
finds the additional elements perform generic computer functions or a field
of use limitation, neither of which add significantly more than the abstract
idea. Final Act. 7; Ans. 8. The Examiner finds that "[t]he current invention
offers no such improvement to computer technology (i.e. no technological
improvements). The Examiner further points out that improvements to an
abstract idea are not the same as improvements to computer technology.
Here, ... the improvement is to the abstract idea." Ans. 10.
C. Analysis
Appellants contend claim 1 is directed to tracking, determining, and
saving refueling data with regards to a refueling station, and that these
concepts are not similar to the judicially-recognized abstract idea of
longstanding (fundamental) commercial practices. App. Br. 4--5. In
response, the Examiner agrees and newly directs Appellants to the abstract
ideas of Classen, Content Extraction, and Electric Power. Ans. 7, 10.
Applying step one of the Alice analysis, we agree with the Examiner
that claim 1 is directed to an abstract idea of locating optimal refueling
stations. Id. Spec. ,r 1 ("The illustrative embodiments generally relate to a
method and apparatus for locating optimal refueling stations."); see also id.
,r,r 4--5 (The invention "save[ s] a record of the efficiency of the dispensed
fuel, in miles-per-gallon" (id. ,r 4) in order "to determine a recommended
fuel station ... based on ... fuel-quality statistics" (id. ,r 5).). In fact, the
independent claims are even broader because they do not recite determining
an optimal refueling station or locating it. Independent claims 1 and 15
require only determining the miles-per-gallon efficiency of fuel associated
with a dispensary and "saving a record of the efficiency of the dispensed
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fuel, in miles-per-gallon, with respect to a record associated with the fuel-
dispensary."
Moreover, we agree with the Examiner that the claimed operations
fall within the judicially-recognized abstract ideas of Classen, Content
Extraction, and Electric Power. Ans. 7. The claimed invention collects data
to review the effects of a dispensary's fuel on a vehicle, which is similar to
the collecting of data in Classen to review the effects of immunization
schedules on patients. Classen, 659 F .3d at 1067-68. Further, the claimed
invention, like the claims at issue in Content Extraction, are directed to
collecting and storing data. Content Extraction, 776 F.3d at 1348. Further,
the steps of "register" "associate " "determine " and "save" data as recited
' ' ' '
in claim 1, constitute data manipulation. It is well settled that "collecting
information [data], analyzing it, and displaying certain results of the
collection and analysis" are "a familiar class of claims 'directed to' a patent-
ineligible concept." Elec. Power Grp., 830 F.3d at 1353 (Fed. Cir. 2016).
Moreover, the recited steps also comprise actions that may be performed
mentally or by pen and paper, which is another judicially-recognized
category of abstract ideas. See Elec. Power Grp. LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) ("analyzing information by steps
people go through in their minds ... , without more, [is] ... within the
abstract idea category").
Accordingly, we agree with the Examiner with respect to step one of
the Alice analysis, and we proceed to step two.
In the second step of our analysis under Alice,
we must examine the elements of the claim to determine whether
it contains an "'inventive concept'" sufficient to "transform" the
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claimed abstract idea into a patent-eligible application. A
claim that recites an abstract idea must include "additional
features" to ensure "that the [claim] is more than a drafting effort
designed to monopolize the [ abstract idea]."
Alice, 134 S.Ct. at 2357 (alterations in original) (internal citations omitted).
Appellants contend the claimed determination of fuel efficiency for a
dispensary's fuel is a technical improvement to the abstract idea of locating
optimal fuel dispensaries, and thus transforms claim 1 into a patent-eligible
application of the abstract idea. App. Br. 4--5; Reply Br. 2-3. The Examiner
responds that this claimed determination is not an improvement to
technology, but rather to the abstract idea. Ans. 10.
Appellants' arguments are not persuasive. Claim 1 recites a generic
processor as determining the dispensary's fuel efficiency. The use of a
generic computer "do[ es] not alone transform an otherwise abstract idea into
patent-eligible subject matter."3 FairWarning IP, LLC, v. Iatric Sys., Inc.,
839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, LLC, v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)); see also Alice, 134
S. Ct. at 2358 ("Stating an abstract idea while adding the words 'apply it
3 In the event of further prosecution, the Examiner may consider whether the
claimed "processor configured to" perform the recited operations may
invoke 35 U.S.C. § 112, para. 6 (see Williamson v. Citrix Online, LLC,
792 F.3d 1339, 1349 (Fed. Cir. 2015) (en bane) ("[W]e should abandon
characterizing as 'strong' the presumption that a limitation lacking the word
'means' is not subject to§ 112, para. 6.")), and whether claim 1 may be a
"single means" claim subject to a rejection under 35 U.S.C. § 112, first
paragraph. See In re Hyatt, 708 F.2d 712, 714--15 (Fed. Cir. 1983) (A single
means claim which covered every conceivable means for achieving the
stated purpose was held non-enabling for the scope of the claim because the
specification disclosed at most only those means known to the inventor.).
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with a computer' simply combines those two steps, with the same deficient
result.").
Appellants argue the invention improves the abstract idea of locating
optimal refueling stations (App. Br. 5 ("The Examiner literally states 'this
measuring step is a function or improvement to the abstract idea of locating
optimal refueling stations."'); Reply Br. 2 ( contending the issue of inventive
concept "hinges on whether ... the claims solve a particular problem in an
atypical or uncommon manner")), but an improvement does not satisfy
Alice's second step if it is merely "an improvement in wholly abstract
ideas-the selection and mathematical analysis of information." SAP
America Inc. v. Investpic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). The
argued improvement is wholly within the selection, mathematical analysis,
and reporting of information (namely information about a dispensary's fuel),
which does not add significantly more to the abstract idea. "[E]ven if a
process of collecting and analyzing information is 'limited to particular
content' or a particular 'source,' that limitation does not make the collection
and analysis other than abstract. Electric Power, 830 F.3d at 1353, 1355
(citing cases)." SAP America Inc., 898 F.3d at 1168 (Fed. Cir. 2018).
Appellants also do not identify any alleged technical solution to a
technical problem, as the claims in DDR addressed. See DDR, 773 F .3d at
1248 ("The patents-in-suit disclose a system that provides a solution to this
problem (for the host) by ... "); see also Bascom Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) ("[DDR was]
claiming a technical way to satisfy an existing problem[.] Similarly, ... the
[present] invention is ... claiming a technology-based solution[.]"); McRO,
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Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
Thus, we are not persuaded the Examiner erred in step two of the
Alice analysis.
For the foregoing reasons, we are not persuaded of error in the
35 U.S.C. § 101 rejection of representative claim 1. Accordingly, we sustain
this rejection of claims 1-7 and 15-20.
REJECTION OF CLAIMS 1-3, 5, 7, 15-17, 19, AND 20
UNDER 35 U.S.C. § 102(a)(2)
Independent claims 1 and 15 recite "save a record of the efficiency of
the dispensed fuel, in miles-per-gallon, with respect to a record associated
with the fuel-dispensary." Claims 2, 3, 5, 7, 16, 17, 19, and 20 depend from
one of independent claims 1 and 15.
The Examiner cites Pierce's paragraph 85 as disclosing the limitation.
Final Act. 9. The Examiner also states that "Pierce ... teach[ es] saving
merchant data relating to fuel efficiency" by recording "several data factors
for the driver and vehicle including average miles-per-gallon, fleet specific
chain pricing[,] and various scores ... [related to] merchant data, transaction
data[,] and fuel related data. Id. at 4 (citing Pierce ,r,r 62,---63, 67-71, 85-
86).
Appellants argue that the Examiner has failed to show Pierce discloses
this limitation because Pierce teaches only that miles-per-gallon efficiencies
are recorded for vehicles, not for fuel associated with a fuel-dispensary.
App. Br. 6-7.
We agree with Appellants that Pierce does not teach recording miles-
per-gallon efficiency for fuel from a particular dispensary. Paragraph 85 of
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Pierce teaches that "drivers and fleet managers are enabled ... to access
driver and vehicle statistics, routes, chain scores, and facility services."
Pierce further teaches that "data may be collected by the server 102
automatically or manually, providing visibility to vehicle idle times, distance
traveled, average and real time speed, vehicle health, average miles per
gallon, required fuel type(s), driver hours, etc." Pierce ,r 85. These
disclosures teach determining "average miles per gallon" for a vehicle or a
driver, but do not teach associating fuel with a merchant, much less saving a
miles-per-gallon efficiency of a particular merchant's fuel. Id.; see also
Pierce, Figs. 1-34 (not showing a correspondence between miles-per-gallon
fuel efficiencies and merchant identifications). .
In the Answer, the Examiner states that "[t]here is no mention or
suggestion in the specification or claim that the mpg statistics must be
discretely determined for an amount of fuel dispensed at a particular
dispensary," and concludes that "[t]his implies a determination of a miles-
per-gallon efficiency for the particular vehicle." Ans. 12.
We disagree with the Examiner's conclusion. The independent claims
recite explicitly, "associat[ing] a fuel-dispensary with the amount of fuel"
and "sav[ing] a record of the efficiency of the dispensed fuel, in miles-per-
gallon, with respect to a record associated with the fuel-dispensary"
( emphasis added). The Examiner's interpretation of claims 1 and 15 would
rendering meaningless the language "with respect to a record associated with
the fuel-dispensary." The Examiner's claim interpretation would also read
the inventors' express objective-tracking the quality of a dispensary's fuel
(Spec. ,r,r 1---6}-out of the claims. See In re Power Integrations, Inc.,
884 F.3d 1370, 1376 (Fed. Cir. 2018) ("[A] problem with the board's claim
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construction is that it renders claim language meaningless."); id. at 13 77
("[A] proper claim construction analysis endeavors to assign a meaning to a
disputed claim term 'that corresponds with ... how the inventor describes
his invention in the specification.").
For the foregoing reasons, we are persuaded that the Examiner erred.
Accordingly, we do not sustain the rejection of claims 1-3, 5, 7, 15-17, 19,
and 20 under 35 U.S.C. § 102(a)(2).
REJECTION OF CLAIMS 4, 6, AND 18
UNDER 35 U.S.C. § 103
The Examiner has not shown Leone cures the above deficiencies of
Pierce. Final Act. 11 (finding Leone teaches to "save a record of the
efficiency of the fuel in miles-per-dollar"). Accordingly, we also do not
sustain the rejection of dependent claims 4, 6, and 18 under 35 U.S.C. § 103
for the same reasons as discussed above with respect to independent claims
1 and 15, from which the claims depend.
DECISION
We affirm the Examiner's decision rejecting claims 1-7 and 15-20
under 35 U.S.C. § 101. We reverse the Examiner's decision rejecting
claims 1-3, 5, 7, 15-17, 19, and 20 under 35 U.S.C. § 102(a)(2). We reverse
the Examiner's decision rejecting claims 4, 6, and 18 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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