Ex Parte Giuli et al

Patent Trial and Appeal Board

Nov 13, 2018

12612985 (P.T.A.B. Nov. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/612,985 11/05/2009
28395 7590 11/15/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Thomas J. Giuli
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.
81193543 5489
EXAMINER
POND, ROBERT M
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
11/15/2018 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 THOMAS J. GIULI,
KRISHNASWAMY VENKA TESH PRASAD,
HENRY HEPING HUANG, and JOHN MATTHEW GINDER
Appeal2017-006031
Application 12/612,985 1
Technology Center 3600
Before DEBRA K. STEPHENS, ADAM J. PYONIN, and
NABEEL U. KHAN, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3, 10-13, 17, and 19-37, which are all of the claims pending in the
application. Claims 4--9 14--16, and 18 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to a telematics
computer system and method for mobile wireless retail order processing and
1 According to Appellants, the real party in interest is Ford Global
Technologies, LLC (App. Br. 2).
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Application 12/612,985
fulfillment (Abstract, Title). Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A computer-implemented method comprising:
establishing a wireless connection between a vehicle
computing system (VCS) and a remote computing system
(RCS);
presenting a list of available merchants, received from the
RCS, from which a vehicular-based order can be placed
via the VCS;
receiving an order at the VCS, including merchant and
good selection; and
transmitting the order, payment account information pre-
stored on the VCS, and vehicle-identifying visual traits
including at least color and model from the VCS to the
RCS.
App. Br. 11 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Barnes, Jr. (hereinafter
"Barnes")
Spaur et al. (hereinafter
"Spaur")
Vaughn et al. (hereinafter
"Vaughn")
US 2003/0065805 Al
US 2004/0185842 Al
US 2007/0088624 Al
REJECTIONS
Apr. 3, 2003
Sept. 23, 2004
Apr. 19, 2007
Claims 1-3, 10-13, 17 and 19-37 stand rejected under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter (Final Act. 11-18).
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Claims 1-3, 10-13, 17, 19, 21-37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Spaur and Vaughn (Final Act. 18-29,
31-32).
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spaur, Vaughn, and Barnes (Final Act. 29-31 ).
ISSUES
1. Are claims 1-3, 10-13, 17 and 19-37 directed to ineligible
subject matter under 35 U.S.C. § 101?
2. Does the combination of Spaur and Vaughn teach or suggest
"transmitting the order, payment account information pre-stored on the VCS,
and vehicle-identifying visual traits including at least color and model from
the VCS to the RCS," as recited in claim 1?
ANALYSIS
35 US.C. § 101: Claims 1-3, 10-13, 17, 19-37
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). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
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"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 'l, 134 U.S. 2347, 2355 (2014)).
"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" (RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017)). 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."
Enfzsh, 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).
The Federal Circuit has identified abstract ideas that are related to
methods of organizing human activity, which are similar to the instant
claimed invention. Specifically, the Federal Circuit stated "not every claim
that recites concrete, tangible components escapes the reach of the abstract-
idea inquiry," including a finding that "claims reciting an 'interface,'
'network,' and a 'database' are nevertheless directed to an abstract idea" (In
re TL! Commc 'n LLC Patent Litigation, 823 F.3d 607, 611 (Fed. Cir. 2016)
( citing Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F .3d 1314,
1324--25 (Fed. Cir. 2016)). The Federal Circuit found the "eleven steps for
displaying an advertisement in exchange for access to copyrighted media"
was directed to an abstract idea, despite the claim at issue reciting "certain
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additional limitations ... [that] add a degree of particularity" (Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 714--15 (Fed. Cir. 2014)). Further, the
Federal Circuit noted "the concept embodied by the majority of the
limitations describes only the abstract idea of showing an advertisement
before delivering free content," and the addition of novel or non-routine
components did not "necessarily tum[] an abstraction into something
concrete" (id. at 716).
In contrast, the Federal Circuit has found claims that "are not simply
directed to any form of storing tabular data, but instead are specifically
directed to a self-referential table for a computer database" are "directed to
an improvement of an existing technology ... achiev[ing] other benefits
over conventional databases, such as increased flexibility, faster search
times, and smaller memory requirements" (Enfzsh, 822 F.3d at 1337
( citations omitted)). However, the heart of the claimed invention must be
focused on the underlying technology itself, and how the underlying
technology is altered "in a way that leads to an improvement in the
technology" (Intellectual Ventures Iv. Erie Indem. Co., 850 F.3d 1315, 1328
( citing Enfzsh ); see also TL! Commc 'n, 823 F .3 d at 612 ).
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 U.S. 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)).
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The Federal Circuit has also identified when abstract ideas related to
methods of organizing human activity may amount to significantly more
than the judicial exception. The Federal Circuit held the abstract idea of
classifying and storing digital images in an organized manner was not
significantly more than an abstract idea because "the recited physical
components behave exactly as expected according to their ordinary use" and
the claimed invention "fails to provide the requisite details necessary to
carry out th[ e] idea" ( TL! Commc 'n, 823 F .3d at 615). Moreover, the
Federal Circuit held the idea of "receiving copyrighted media, selecting an
ad, offering the media in exchange for watching the selected ad, displaying
the ad, allowing the consumer access to the media, and receiving payment
from the sponsor of the ad" was not significantly more than the abstract idea
because "the claims simply instruct the practitioner to implement the
abstract idea with routine, conventional activity" ( Ultramercial, Inc., 772
F.3d at 715). Additionally, the Federal Circuit noted "[n]one of these eleven
individual steps, viewed 'both individually and "as an ordered
combination,"' transform the nature of the claim into patent-eligible subject
matter" (id. ( citations omitted)).
In contrast, the Federal Circuit held claims directed to methods of
organizing human activity may be significantly more "when the claim
limitations were considered individually and as an ordered combination,
they recited an invention that is not merely the 'routine and conventional
use' of technology" (Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1301---02 (Fed. Cir. 2016) (citing DDR Holdings and BASCOM Global
Internet Serv., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
Additionally, the Federal Circuit held the ordered combination of the
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claimed invention recited an inventive concept because "the distributed,
remote enhancement that produced an unconventional result," which
represented "a technical improvement over prior art technologies and served
to improve the performance of the system itself' (Amdocs, 841 F.3d at 1302
(emphasis added); see also BASCOM, 827 F.3d at 1352 ("an inventive
concept can be found in the ordered combination of claim limitations that
transform the abstract idea of filtering content into a particular, practical
application")).
Here, for the first step, Appellants argue "the Examiner's conclusion
that 'a full analysis is required rather than a streamlined analysis' is
completely misguided" (App. Br. 6). Further, Appellants argue the "analysis
is not an optional analysis-unless the Examiner can prove that the claim
clearly seeks to tie up an abstract idea such that others cannot practice it"
(id. at 7). Appellants contend "[t]he Examiner's response utterly fails to
demonstrate how Applicant's claim 1 has tied up the abstract idea of
'making a purchase from a listed merchant,' and thus the claim is patent
eligible under the streamlined eligibility analysis" (id. at 7).
The Examiner responds the "[f]ull analysis was required because the
claim as a whole fails to add significantly more than the abstract idea itself'
(Ans. 25). Instead, the Examiner asserts, when"[ v ]iewing the claims as a
whole, an implied user is making a purchase from a listed merchant" (id.).
Specifically, the Examiner finds the claims are directed to "certain method
of organizing human activity," where the claimed purchasing from a listed
merchant is implemented by an "order compris[ing] merchant and good
selection information, vehicle-identifying information and payment
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information that is transmitted from the vehicle computing system (VCS) to
the remote computing system (RCS)" (id.; see also Final Act. 12-13).
Initially, the Board notes that eligibility under 35 U.S.C. § 101 is a
question of law (see SAP Am., Inc. v. InvestPic, LLC, 890 F .3d 1016, 1020
(Fed. Cir. 2018) ); therefore, the Board will determine the eligibility of the
claims based on the underlying facts. Additionally, Appellants' argument
that the Examiner's full analysis is misguided is not persuasive. Appellants
quote the streamlined analysis in their arguments, underlining portions
"contradicting Examiner analysis" (App. Br. 6); however, Appellants fail to
acknowledge the cited streamlined eligibility analysis "can be used for a
claim that may or may not recite a judicial exception" (MPEP § 2106. 06( a)
(emphasis added)). More specifically, the Federal Circuit has explained that
some improvements to technology or computer functionality may not require
full analysis when appropriately claimed (Enfzsh, 822 F.3d at 1335-36). The
Federal Circuit also clarified that when the claims represent a close call, as
to whether the claims represent an improvement to technology or computer
functionality, a full analysis is appropriate and should be performed to
determine eligibility (BASCOM, 827 F.3d at 1349).
Here, the Examiner finds, and we agree, that a full analysis is
appropriate. The Federal Circuit treats "analyzing 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 Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir.
2016)). We agree with the Examiner that claim 1 "describes a business
process pertaining to making a purchase from a listed merchant" (Ans. 26).
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For the second step, Appellants argue that the claims recite
significantly more because "there is nothing about the claims at issue that
represents an 'abstract mathematical formula"' (App. Br. 8). However, we
agree with the Examiner that claim 1 "executes the abstract idea with
generic computing devices" (Ans. 26). The Examiner points out, and we
agree, "[ t ]he claims as a whole [are] in fact a business process that transmits
order data from one computing system to another" (id. at 29; see also Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("Where a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot")).
Next, Appellants argue that the claims are patent eligible because like
the claims "in Enfzsh, the claims are directed to a specific method of
facilitating a purchase between a merchant and vehicle occupant and further
expeditious completion of that purchase through transmission of merchant-
relevant information" (App. Br. 8). As discussed supra, we agree with the
Examiner that the claims utilize generic computing devices, and Appellants
fail to explain how the underlying technology or technical field is improved.
Unlike the claims in Enfish, which improved computing technology with
more efficient processing utilizing a self-referential data-table, the instant
claims and specification seek to improve order fulfillment for consumer
convenience (see e.g., Spec. 1, claim 1 ). In other words, Appellants are
merely using the underlying technology to perform conventional tasks,
rather than improving the underlying technology to better perform those
tasks.
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Accordingly, we sustain the Examiner's rejection under§ 101 of
claims 1, 9, and 16 and dependent claims 2-8, 10-15, and 17-20, which
Appellants do not argue separately (see App. Br. 4--9; 37 C.F.R.
§ 4I.37(c)(l)(iv)).
35 USC§ 103(a): Claims 1-3, 10-13, 17, 19, 21-37
Appellants contend their invention, as recited in claims 1-3, 10-13,
17, 19, 21-37, is patentable over Spaur and Vaughn (App. Br. 9-10). 2
Specifically, Appellants contend that Vaughn does not teach or suggest the
transmission step recited in claim 1 because "Vaughn [] explicitly teaches
that what is transmitted by the RFID tag of Vaughn is a unique identifier
[0051 ], which Applicant notes is not any of the make, model, or color" of
the vehicle-identifying visual traits, as recited in claim 1 (App. Br. 9).
Further, Appellants contend "[t]he mere fact that a person utilizing a
combination of Spaur and Vaughn can achieve the same result (identifying
the vehicle by model and color) does not mean the two references render the
claims obvious" (id.). Additionally, Appellants argue the "transmission of
information cited in Spaur as 'authorization/identification' information is
actually just 'authorization' information," and while "[t]he identity aspect of
this information may pertain to a user and the authorization thereof, [ the
authorization information] has nothing to do with a vehicle identification"
2 Rather than repeat the arguments here, we refer to the Appeal Brief and
Reply Brief for the positions of Appellant and the Final Office Action and
Answer for the positions of the Examiner. Only those arguments actually
made by Appellant have been considered in this decision. Arguments that
Appellant did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2012).
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(id.). Thus, Appellants argue, "even if Vaughn were cited for the mere
reason of proving that a model and color can be used to identify a vehicle,
nothing in either reference, alone or in combination, teaches or suggests that
this information" would be used to perform the transmission step recited in
claim 1.
The Examiner finds the combination of Spaur and Vaughn teaches or
suggests the argued claim limitation (Final Act. 22-25; Ans. 31-36).
Specifically, the Examiner relies on Spaur for teaching or suggesting
"transmitting the order, payment account information pre-stored on the VCS,
and a vehicle-identifying trait from the VCS to the RCS," as recited in claim
1 (Final Act. 21-22 (citing Spaur ,r,r 40, 45, 52, 85, 142, and Figure 3); Ans.
33-36). The Examiner additionally finds Vaughn teaches the recited
"vehicle-identifying visual traits including at least color and model" (Final
Act. 22-24 (citing Vaughn ,r,r 29-31, 39-50, 54---65, 67, 69, 73, and Figures
1, 6, 7, and 9); Ans. 31-36). According to the Examiner, an ordinarily
skilled artisan would have found it obvious to combine the
authorization/identity information transmitted from the vehicle computer
system, taught by Spaur, with the in-vehicle electronic commerce system
that identifies a vehicle by make model, color, and license plate number, as
taught by Vaughn, because the combination "would have yielded predictable
results and resulted in an improved system" (Final Act. 22-25 ( citing KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007)); Ans. 31-36).
Section 103 forbids issuance of a claim when "the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious to one at the
time the invention was made to a person having ordinary skill in the art" (35
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U.S.C. § 103). The ultimate determination of obviousness under§ 103 is a
question of law based on underlying factual findings (In re Baxter Int 'l, Inc.,
678 F.3d 1357, 1362 (Fed. Cir. 2012) (citing Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1996))). These underlying factual considerations
include: (1) the "level of ordinary skill in the pertinent art," (2) the "scope
and content of the prior art," (3) the "differences between the prior art and
the claims at issue," and (4) "secondary considerations" of non-obviousness
such as "commercial success, long-felt but unsolved needs, failure of other,
etc." (KSR Int'!, 550 U.S. at 406 (quoting Graham, 338 U.S. at 17-18)).
We are not persuaded by Appellant's arguments. We agree with the
Examiner that Spaur discloses a secure telematics system allowing wireless
transmission of an order to a vehicle, upon acceptance and payment (Spaur ,r
142; see also Final Act. 22). Further, we agree with the Examiner that
authorization/identity information of a vehicle identifying trait is transmitted
from the vehicle computer to remote entities and is disclosed in the cited
portions of Spaur (see e.g., Spaur ,r 52 ("[a]n important part is establishing
or identifying a certificate authority (CA) that provide certificates for use in
the secure telematics system 20. The CA is responsible for issuing
certificates to approved resources for use in the vehicle" ( emphasis added));
see also Final Act. 22).
The Examiner finds, and we agree, that Vaughn employs "vehicle-
identifying visual traits including at least color and model" to identify a
customer associated with a vehicle (Final. Act. 22-24). In particular,
Vaughn discloses account information can be provided by the customer,
where "[i]n addition to providing the make, model, and color of the car, the
customer may also provide a license plate number which can be used to
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uniquely identify the customer" (Vaughn ,r 67; see also Final Act. 24).
Additionally, Vaughn discloses ( 1) an RFID tag may transmit an identifier
"uniquely associated with the customer," or (2) a "license plate recognition
(LPR) system may be implemented as part of the remote ordering system to
automatically scan license plates of automobiles as they approach the
restaurant" (Vaughn ,r,r 51, 67; Final Act. 23-24).
The Examiner identifies the similarities of Spaur and Vaughn, and
specifically, that both the Spaur and Vaughn systems provide in-vehicle
commerce and both systems remotely transmit customer information (Final
Act. 22). Therefore, we agree with the Examiner that an ordinarily skilled
artisan would have found it obvious to modify the vehicle identifying trait in
Spaur by "applying the known techniques of using visual vehicle traits,
e.g[.,] make, model, color and license plate tag, and a key fob that uniquely
identif[ies] a customer associated with the vehicle[,] as taught by Vaughn,"
yielding predictable results and an improved system (Final Act. 25).
We are persuaded the combination of Spaur and Vaughn teaches or
suggests "transmitting the order, payment account information pre-stored on
the VCS, and vehicle-identifying visual traits including at least color and
model from the VCS to the RCS," as recited in claim 1. Accordingly, we
are not persuaded the Examiner fails to show the combination of Spaur and
Vaughn teaches or suggests the limitations as recited in claim 1 and claims
2, 3, 10-13, 17, 19, and 21-3 7, not separately argued. Therefore, we sustain
therejectionofclaims 1-3, 10-13, 17, 19,21-37under35U.S.C. § 103(a)
as being unpatentable over Spaur and Vaughn.
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35 US.C. § 103(a): Claim 20
Appellants do not separately argue claim 20, instead relying on the
reasons argued with respect to claims 1-3, 10-13, 17, 19, and 21-37 (App.
Br. 10). For the reasons set forth above, we sustain the rejection of claim 20
under 35 U.S.C. § 103(a) as being unpatentable over Spaur, Vaughn, and
Barnes.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-3, 10-13, 17 and 19-37 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-3, 10-13, 17,
19-37 under 35 U.S.C. § 103(a).
No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a) (see 37 C.F.R. § 4I.50(f)).
AFFIRMED
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