Ex Parte Humble et al

Patent Trial and Appeal Board

Dec 31, 2018

14022968 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/022,968 09/10/2013
101373 7590 01/03/2019
Eversheds Sutherland (US) LLP / CEI
999 Peachtree Street
Suite 2300
Atlanta, GA 30309
FIRST NAMED INVENTOR
Mark William Humble
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.
26454-0105 9489
EXAMINER
MINCARELLI, JAN P
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK WILLIAM HUMBLE, MARC ERDREICH HAEGELIN,
MICHAEL ALLAN CHASTAIN, and JULIE ELIZABETH WARPOOL
Appeal2017-010984
Application 14/022,968 1
Technology Center 3600
Before JASON J. CHUNG, BETH Z. SHAW, and
JASON M. REPKO, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 4--9, 13, and 16-20. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is directed to evaluating repairs or combinations of
repairs for vehicles. Abstract. Claim 1 is illustrative of the invention and is
reproduced below:
1 According to Appellants, Manheim Investments, Inc. is the real party in
interest. App. Br. 1.
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Application 14/022,968
1. A method, comprising:
receiving, by one or more computers comprising one or
more processors, information regarding damage associated with
at least one vehicle;
receiving, by the one or more computers, information
regarding repair costs associated with one or more repairs related
to addressing the damage associated with the at least one vehicle;
determining, by the one or more computers and based at
least in part on the damage associated with the at least one
vehicle, an initial value of the at least one vehicle;
determining, by the one or more computers, an initial
value modifier associated with each of the one or more repairs;
receiving, by the one or more computers, an indication of
a selection of at least one of the one or more repairs;
determining, by the one or more computers and based at
least in part on the selection of the at least one of the one or more
repairs, a revised value modifier for the one or more repairs that
were not selected; and
determining, by the one or more computers and based at
least in part on the selected one or more repairs, a revised value
of the at least one vehicle.
REJECTIONS AT ISSUE
Claims 1, 4--9, 13, and 16-20 stand rejected under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement. Final Act. 3-
9.
Claims 1, 4--9, 13, and 16-20 stand rejected under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter. Final Act. 10-15.
Claims 1, 4, 6-9, 13, 16, and 18-20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the combination of Watson (US 6,581,045
B 1; June 17, 2003) and Boyden (US 2003/0036964 Al; Feb. 20, 2003).
Final Act. 16-22.
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Claims 5 and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Watson, Boyden, and Shames (US
2008/028834 Al; Nov. 20, 2008). Final Act. 22-24.
ANALYSIS
1. Rejection Under 35 USC§ l 12(a)
The Examiner concludes the present claims fail to comply with the
written description requirement because Appellants fail to provide any
working examples of determinations of an "initial value modifier" and a
"revised value modifier" as recited in independent claims 1 and 13. Final
Act. 3--4. Moreover, the Examiner concludes this amounts to claiming the
genus of all ways to calculate values without adequately disclosing a
sufficient number of species. Id. at 4. The Examiner concludes the
paragraphs 44 through 46 provide the closest written description support. Id.
at 6-8 ( citing ,r,r 44--46). Furthermore, the Examiner concludes the
"proprietary algorithm" disclosed in paragraphs 44 through 46, without
specifics as to what the algorithm includes, fails to comply with the written
description requirement. Id. at 6-9 ( citing ,r,r 44--46).
Appellants argue the claims do not recite a "proprietary algorithm" to
determine values. App. Br. 3; Reply Br. 2. We agree with Appellants.
As an initial matter, the present claims do not recite details of a
"proprietary algorithm" to determine values so this rejection is misplaced.
Moreover, we conclude paragraphs 44 through 46 provide adequate support
for the limitations "initial value modifier[ s ]" and "revised value modifier[ s ]"
to comply with the written description requirement. Spec. ,r,r 44--46. In
particular, paragraph 44 discusses an "initial value" of a vehicle and
paragraph 45 discusses each repair includes an associated modifier such as
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an incremental value increase, which provides adequate written description
support for "initial value modifier." Id. ,r,r 44--45. Moreover, paragraph 46
describes a revised value and a revised modifier such as an incremental
value increase, which provides adequate written description support for
"revised value modifier." Id. ,r 46.
Accordingly, we do not sustain the Examiner's rejection of
independent claims 1, 4--9, 13, 16-20 under 35 U.S.C. § 112(a).
2. Rejection Under 35 USC§ 101
a. The Examiner's Conclusions and Appellants' Arguments
The Examiner concludes determining values for a damaged vehicle
and revised values based on selected repairs is considered an abstract idea
because it consists of a mental process that could be performed in the human
mind or by a human using pen and paper. Final Act. 11-12. Additionally,
the Examiner concludes the present claims are analogous to the abstract idea
in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016), Cybeifone Systems, LLC v. CNN Interactive Group, Inc., 558 F.
App'x 988 (Fed. Cir. 2014), and SmartGene, Inc. v. Advanced Biological
Laboratories, SA, 555 F. App'x 950 (Fed. Cir. 2014). Final Act. 10-13.
The Examiner finds the present claims require no more than a generic
computer as recited to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
industry. Id. at 14 ( citing Spec. ,r,r 24, 29-31 ); Ans. 16 ( citing Spec. ,r,r 24,
29-31).
Appellants argue the present claims are not abstract because Examiner
did not provide any evidence and, therefore, fails to present a prima facie
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case of patent ineligibility. App. Br. 5---6. Appellants argue the present
claims are not abstract because they solve the technological problem of
dynamically determining a change in the overall value and/or profitability of
a vehicle based on a selected repair to the vehicle and what impact the
selected repair has on the value added of non-selected repairs to the overall
value and/or profitability of the vehicle, similar to DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Trading Technologies
International, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir. 2017), McRO,
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1308-14 (Fed.
Cir. 2016), and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016). App. Br. 6-9; Reply Br. 3--4.
Appellants argue the present claims are significantly more than any
abstract idea because they are directed to an inventive concept similar to
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016) and Amdocs (Israel) Limited v. Openet Telecom, Inc.,
841 F.3d 1288 (Fed. Cir. 2016). App. Br. 10-14. Appellants argue the
present claims are significantly more than any abstract idea because they do
not preempt all practical applications of the abstract idea. App. Br. 11-12.
We disagree with Appellants.
b. Legal Principles
Section 101 of the Patent Act provides "[ w ]hoever 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 has long held that this
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provision contains an implicit exception: "' [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) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589--90 (2013)). The
Court has set forth a two-part inquiry to determine whether this exception
applies.
First, we must "determine whether the claims at issue are directed to
one of those patent-ineligible concepts." Alice, 134 S. Ct. at 2355. Second,
if the claims are directed to one of those patent-ineligible concepts, 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 Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 77-78 (2012)). Put differently, we must search the claims for an
"inventive concept," that is, "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, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
c. Based Upon a Preponderance of the Evidence, and our Review of the
Record, we Disagree with Appellants 'Arguments
i. Alice Step 1
On this record, we discern no error in the Examiner's analysis and
conclusion that the present claims are analogous to the abstract idea in
Electric Power, which is collecting information, analyzing it, and displaying
certain results of the collection and analysis. Final Act. 10-13. Moreover,
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we conclude the claims are also analogous to the abstract idea in Versata
Software, Inc., v. SAP America, Inc., 717 F.3d 1255 (Fed. Cir. 2013), which
is determining a price, using organizational and product group hierarchies.
In addition, we agree with the Examiner's conclusion that determining
values for a damaged vehicle and revised values based on selected repairs is
considered an abstract idea because it consists of a mental process that could
be performed in the human mind or by a human using pen and paper. Final
Act. 11-12.
Regarding Appellants' argument that the Examiner did not present a
primafacie case of patent ineligibility (App. Br. 5---6), patent eligibility
under 35 U.S.C. § 101 is a question of law that is reviewable de nova. See
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). The
Federal Circuit has repeatedly noted that "the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The Examiner
satisfies the burden of establishing a primafacie case under 35 U.S.C. § 132
by setting forth a rejection in a sufficiently articulate and informative
manner. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). If the Examiner
"adequately explain[ s] the shortcomings ... the burden shifts to the
applicant to rebut the prima facie case with evidence and/or argument."
Hyatt, 492 F.3d at 1370. The Final Office Action adequately explains the§
101 rejection. See Final Act. 3-9. The Examiner's statements satisfy§
132(a) because they apply the Alice analytical framework and apprise
Appellants of the reasons for the§ 101 rejection under that framework.
Appellants have not responded by alleging a failure to understand the
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rejection. To the contrary, Appellants clearly identify the abstract idea. See,
e.g., App. Br. 5-9.
In addition, we disagree with Appellants' argument that the present
claims solve the technological problem of dynamically determining a change
in the overall value and/or profitability of a vehicle based on a selected
repair to the vehicle and what impact the selected repair has on the value
added of non-selected repairs to the overall value and/or profitability of the
vehicle, similar to DDR2 , Trading Technologies, McRO, and Enfish (App.
Br. 6-9; Reply Br. 3--4) because we conclude the present claims are directed
to improvements to an abstract idea discussed supra that implements the
abstract idea using generic components.
Because the present claims are directed to an abstract idea, we
proceed to step (2) of the Alice, two-part test.
ii. Alice Step 2
On this record, we discern no error in the Examiner's analysis and
finding that the present claims require no more than a generic computer as
recited to perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the industry. Final
Act. 14 ( citing Spec. ,r,r 24, 29-31 ); Ans. 16 ( citing Spec. ,r,r 24, 29-31 ).
2 Appellants incorrectly characterize DDR as an abstract idea issue (i.e.,
Alice step 1). App. Br. 21-23. Instead, DDR is an Alice step 2 issue. See
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) (Judge Chen, who is the same judge that authored DDR,
characterizes DDR as an Alice step 2 issue). Nonetheless, we conclude the
present claims are directed to an abstract idea without significantly more for
the reasons stated supra and infra.
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Furthermore, paragraphs 24 and 29 through 31 of the Specification explicitly
states "user devices 104 may be any type of computing devices." Spec.
,r,r 24, 29--31.
We disagree with Appellants' argument that, similar to the claims in
BASCOM and Amdocs, the present claims are directed to an inventive
concept (App. Br. 10-14) because the present claims are directed to
improvements to an abstract idea discussed supra that implements the
abstract idea using generic components.
Furthermore, we disagree with Appellants' argument that the present
claims are patent eligible because they do not preempt any abstract idea
(App. Br. 11-12); although preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See FairWarning, IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims
covering a patent-ineligible concept, preemption concerns "are fully
addressed and made moot" by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Appellants do not argue separately claims 4--9, 13, 16-20 with
particularity, but assert the rejections of those claims should be withdrawn
for at least the same reasons as the rejection for claim 1 should be
withdrawn. App. Br. 5-14. Accordingly, we sustain the Examiner's
rejection of independent claims 4--9, 13, 16-20 under 35 U.S.C. § 101.
3. Rejection Under 35 USC§ 103
The Examiner finds Watson teaches determining the repair cost of the
roof and then determining the financial impact of other costs such as
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repairing flashing, relative to doing nothing, which the Examiner maps to the
limitation "determining, by the one or more computers and based at least in
part on the selection of the at least one of the one or more repairs, a revised
value modifier for the one or more repairs that were not selected" as recited
in claim 1 ( and similarly recited in claim 13 ). Final Act. 18 ( citing Watson,
7:46-59, 25:58---63, 25:19--31, 26:15-31).
Appellants argue Watson fails to teach the aforementioned limitation
because Watson fails to recalculate non-selected repairs impact on the roof
in view of the selected repairs; that is, in Watson, the impact of the other
non-selected repairs would not be affected by the selected repairs such that
the users are not provided with revised value modifiers for each repair once
certain repairs are selected and/or implemented. App. Br. 15-16. We
disagree with Appellants.
The cited portions of Watson teach determining the repair cost of the
roof and then determining the financial impact of other costs being
undertaken regarding the problem defects related to the roof such as
repairing flashing relative to doing nothing (i.e., flashing is the non-selected
repair), which teaches the limitation "determining, by the one or more
computers and based at least in part on the selection of the at least one of the
one or more repairs, a revised value modifier for the one or more repairs that
were not selected" as recited in claim 1 ( and similarly recited in claim 13).
Final Act. 18 (citing Watson, 7:46-59, 25:58---63, 25:19--31, 26:15-31).
Appellants do not argue separately claims 4--9, 13, and 16-20 with
particularity, but assert the rejections of those claims should be withdrawn
for at least the same reasons as the rejection for claim 1 should be
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withdrawn. App. Br. 14--16. Accordingly, we sustain the Examiner's
rejection of independent claims 4--9, 13, and 16-20 under 35 U.S.C. § 103.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We reverse the Examiner's decision rejecting claims 1, 4--9, 13, 16-
20 under 35 U.S.C. § 112(a).
We affirm the Examiner's decision rejecting claims 1, 4--9, 13, 16-20
under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1, 4--9, 13, 16-20
under 35 U.S.C. § 103.
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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