Ex Parte Ginder et al

Patent Trial and Appeal Board

Jun 22, 2017

13795469 (P.T.A.B. Jun. 22, 2017)

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.
13/795,469 03/12/2013 John Matthew Ginder 83346834 2453
28395 7590 06/26/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER MAGUIRE, LINDSAY M
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
06/26/2017 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 JOHN MATTHEW GINDER, YIMIN LIU,
OLEG YURIEVITCH GUSIKHIN,
PERRY ROBINSON MACNEILLE, and
PAUL DUNCAN MCCARTHY
Appeal 2016-0003371
Application 13/795,469
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1—8 and 12—23.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to a payment reminder application
embedded in a vehicle-based computing system of a vehicle, or in a mobile
1 The Appellants identify “Ford Global Technologies, LLC” as the real party
in interest. Appeal Br. 3.
Appeal 2016-000337
Application 13/795,469
device or network server in communication with the vehicle-based
computing system. Spec. 110.
Claim 1 is illustrative:
1. A method, comprising:
receiving, by a payment reminder application of a vehicle,
a payment reminder requesting payment of a vehicle loan
associated with a registered combination of a vehicle identifier
of the vehicle and an occupant identifier of a mobile device of an
individual responsible for the payment determined, by the
vehicle, to be present within the vehicle; and
delivering the received payment reminder via a vehicle
human-machine interface.
Claims 1—8 and 12—23 are rejected under 35 U.S.C. § 101 as reciting
ineligible subject matter in the form of an abstract idea.
Claims 3, 12, 14, and 20 are rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
Claims 3, 12, 14, and 20 are rejected under 35 U.S.C. § 112, first
paragraph, as based on a disclosure which is not enabling.
We REVERSE.
ANALYSIS
Rejection under 35 U.S.C. ft101
We agree with the Appellants that the claims are not merely directed
to “sending a payment reminder,” as asserted by the Examiner. Appeal Br.
9-10; see also Answer 2.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
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exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Banklnt’l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
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S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
A determination of what a claim is directed to necessarily involves a
degree of claim construction, because the determination involves facts about
what the claim language means. Although sending and receiving payment
reminders may well be a fundamental economic practice long prevalent in
our system of commerce, the independent claims are directed to more than
just sending, receiving, or both sending and receiving, payment reminders.
Instead, independent claim 1 recites receiving a payment reminder for a
person and notifying of the reminder when the “mobile device of an
individual responsible for the payment [is] determined, by the vehicle, to be
present within the vehicle.” Independent claims 12 and 20 recite
substantially similar language.
Claim 1 is, thus, directed to receiving and delivering a payment
reminder after determining if a mobile device of a responsible party is
present within a vehicle that received the reminder. The Specification
confirms our understanding. For example, the “Summary” section of the
Specification indicates that embodiments of the invention are directed to
methods including a “vehicle-based computing system . . . verifying
appropriate vehicle occupants” (Spec. 14), “sending the payment reminders
to . . . and receiving confirmation from the vehicles of successful delivery of
the payment reminders to occupants of the vehicles” (Spec. 1 5), and a
“computing device” with a “payment reminder application” within a vehicle
“verifying appropriate vehicle occupants” (Spec. 6). See also Spec. Tfl[ 10,
12, 15, 19, 22, 29, 33 (disclosure concerning determining vehicle
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occupants). Given the above, the Examiner has not adequately established
on the record whether the subject matter to which claim 1 is directed, as we
determine here, is a fundamental economic practice. We conclude that the
Examiner has not sufficiently established that claim 1 is directed to an
abstract idea. The same analysis and result applies to independent claims 12
and 20.
We also agree with the Appellants that the claims require more than a
generic computer to implement the claimed method. Appeal Br. 9. Thus,
even if the claims were demonstrated to be directed to an abstract idea, we
are persuaded that they require “significantly more” than just an abstract
idea.
The Specification does not define the limits of a “mobile device,” but
describes, by example, that a “mobile device 114 may be any of various
models of networked device, such as cellular phones, tablet computers, or
other types of portable computing devices capable of execution applications
and communicate over a communications network 116.” Spec. 118. We,
nonetheless, construe a mobile device as claimed to be a form of an
electronic digital computer, because the only embodiments described rely on
that technology.
The Specification describes, by example, one method for determining
“an occupant identifier of a mobile device” as being “present within the
vehicle,” as recited in claim 1, and similarly recited in claims 12 and 20, as
follows:
In some cases, the VCS 102 may be configured to use a
network transceiver (e.g., a Bluetooth® module) to communicate
with a mobile device 114 of an occupant carried into the vehicle.
Once connected, or paired, the mobile device 114 may then be
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used to allow the VCS 102 to communicate with the
communications network 116. In one example, data can be
passed through the mobile device 114 via a data-over-voice or
data-plan of the mobile device 114, through the network
transceiver of the VCS 102, and into the processor 108 of the
VCS 102. As an additional aspect, occupants of the vehicle may
be identified according to the unique device identifiers associated
with the mobile devices 114 brought into and connected with the
VCS 102 of the vehicle.
Id. ]fl9. The use of specific technology, such as BLUETOOTH, to pair
devices requires the implementation and use of this technology on both
mobile device and the vehicle-based system in a manner that is integral to
what the claim is “directed to.” This requires specific hardware and
software that goes beyond a mere generic computer, because not every
computer is inherently capable of utilizing this type of technology without
special programming.
The claim, thus, requires more than merely implementing an abstract
idea on a general-purpose computer, because it requires a special-purpose
computer implementation. Under the second step of the Alice analysis, the
claims also transform the invention into patent-eligible subject matter, even
if they were established to be directed to an abstract idea.
For these reasons, we do not sustain the rejection of independent
claims 1,12, and 20, and dependent claims 2—8, 13—19, and 21—23 under 35
U.S.C. § 101.
Written Description Rejections under 35 U.S.C. § 112, First
Paragraph
The Examiner rejects dependent claims 3 and 14 on the basis that the
recited step of delivering a message, only when a particular identified device
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of a responsible person is within the car, is not found in the Specification.
Answer 4.
We are persuaded by the Appellants’ argument that the description of
determining if a person is “alone” in a vehicle suggests to the ordinary
artisan that only the device for the responsible person is detected. Appeal
Br. 11—12; see also Reply Br. 3^4. The Specification describes that “to
protect the privacy of the occupant of the vehicle, the payment reminder
application may be configured to hold the payment reminder until the
occupant is alone in the vehicle.” Spec. 112. The Specification also
describes that “occupant identifiers may be determined, for example,
according to identification of paired mobile devices 114 within the vehicle.”
Id. 129. This demonstrates the Appellants had possession of the claimed
invention recited in claims 3 and 14 at the time of the original disclosure.
The Examiner also rejects dependent claims 3, 12, 14, and 20 on the
basis that “there is nothing stated within the specification about ‘detecting’
anything.” Answer 4—5.
We agree with the Appellants that original claim 3 provides adequate
support that they were in possession of the claimed invention at the time of
filing. Appeal Br. 11. Original claim 3 recites “determining the occupant
identifier according to identification of occupant mobile devices inside the
vehicle.” The ordinary artisan would have recognized that determining an
identification of a mobile device indicates possession of the concept of
“detecting of unique identifiers of mobile devices,” as recited in similar form
in claims 3, 12, 14, and 20. Appeal Br. 12—13; see also Reply Br. 4—5.
For these reasons, we do not sustain the rejections under 35 U.S.C.
§ 112, first paragraph, for new matter.
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Enablement Rejections under 35 U.S.C. §112, First Paragraph
The Examiner also rejects claims 3, 12, 14, and 20 for lack of
enablement under 35 U.S.C. § 112, first paragraph. Answer 5. As to
claims 3,12, and 14, the Examiner asserts, without evidence or articulated
reasoning, that the claims are “not enabled by the disclosure.” Id.
Confusingly, the Examiner asserts that pairing a device with BLUETOOTH,
not recited in claim 20, is “not enabled by the disclosure,” but then asserts
“according to the specification this step can only work if the ‘individual
responsible for the payment of the vehicle loan’ has previously paired their
mobile device to the vehicle.” Id.
Although the Appellants dispute whether the Specification contains a
description consistent with the Examiner’s assertion about device pairing,
we agree with the Appellants’ argument that the Office “has failed to
demonstrate a lack of enablement in the disclosure.” Reply Br. 5.
The standard for determining whether the specification meets the
enablement requirement was cast in the Supreme Court decision of Minerals
Separation v. Hyde, 242 U.S. 261, 270 (1916) which postured the question:
“is the experimentation needed to practice the invention undue or
unreasonable?” That standard is still the one to be applied. In re Wands,
858 F.2d 731, 737 (Fed. Cir. 1988).
Determining enablement is a question of law based on underlying
factual findings. In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991). The
determination that “undue experimentation” would have been needed to
make and use the claimed invention is not a single, simple factual
determination. Rather, it is a conclusion that may be reached by weighing
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the following factual considerations: (A) The breadth of the claims; (B) The
nature of the invention; (C) The state of the prior art; (D) The level of one of
ordinary skill; (E) The level of predictability in the art; (F) The amount of
direction provided by the inventor; (G) The existence of working examples;
and (H) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure. In re Wands, 858 F.2d at
737.
The Examiner, however, does not address the issue of undue
experimentation, and does not present an analysis of the Wands factors.
Without establishing on the record the facts and reasoning leading to the
enablement rejection, the Examiner fails to sufficiently support the rejection.
For this reason, we do not sustain the enablement rejections of claims 3,12,
14, and 20 under 35 U.S.C. § 112, first paragraph.
DECISION
We reverse the rejection of claims 1—8 and 12—23 under 35 U.S.C.
§101.
We reverse the rejections of claims 3, 12, 14, and 20 under 35 U.S.C.
§112, first paragraph, for both written description and enablement.
REVERSED
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