Ex Parte Liu et al

Patent Trial and Appeal Board

Jan 29, 2018

13951610 (P.T.A.B. Jan. 29, 2018)

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.
13/951,610 07/26/2013 Yimin Liu 83374608 5276
28395 7590 01/31/2018
RROOKS KTTSHMAN P C /FfTET
EXAMINER
1000 TOWN CENTER MUSSELMAN, TIMOTHY A
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YIMIN LIU, OLEG YURIEVITCH GUSIKHIN,
PERRY ROBINSON MACNEILLE, JAMES ARTHUR BUCZKOWSKI,
and ALFREDO CATERIANO
Appeal 2017-002571
Application 13/951,610
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and
ARTHUR M. PESLAK, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge CAPP.
Opinion Dissenting-in-Part filed by Administrative Patent Judge BAHR.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3—5, 8, 10-12, 15, and 17—19 under 35 U.S.C. § 101 as
not directed to patent eligible subject matter and as unpatentable under 35
U.S.C. § 103(a) over Eklund (US 2010/0184005 Al, pub. July 22, 2010) and
Roundtree (US 2005/0233733 Al, pub. Oct. 20, 2005). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Ford Global Technologies, LLC as the real-party-in­
interest. Appeal Br. 2.
Appeal 2017-002571
Application 13/951,610
THE INVENTION
Appellants’ invention relates to demonstrating vehicle features to a
driver. Spec. 7—8. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A system comprising:
a processor configured to:
detect the presence and identity of a driver in a vehicle;
determine a demonstration of a vehicle feature which has
not yet been used by the identified driver;
offer demonstration of the vehicle feature; and
upon acceptance of the offer, provide a demonstration of
the vehicle feature.
OPINION
35 U.S.C. § 101 - Patent Ineligible Subject Matter
Appellants argue all pending claims as a group. Appeal Br. 6—8. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(l)(iv).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLSBankInt'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 72—73 (2012)).
According to the Supreme Court's framework, we must first determine
whether the claims at issue are directed to one of those concepts. Id. If so,
we must secondly “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.” Id. The Supreme Court characterizes the second step of the
analysis as “a search for an ‘inventive concept’ — i.e., an element or
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Application 13/951,610
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. (brackets in original) (quoting Mayo, 566 U.S. at 72).
With respect to the first step, the Examiner determines, correctly, that
the claims are directed to an abstract idea.
Independent claims 1, 8, and 15, pertain broadly to the
abstract idea of information presentation, including the identity
determination, determination of a vehicle feature which has not
been used by a driver, and presentation of a demonstration if
desired. These concepts are considered abstract in that they
could easily be performed without a user, by simple verbal
questioning, for example.
Final Action 2.2 We agree with the Examiner’s determination. See Netflix,
Inc. v. Rovi Corporation, 2016 WL 6575091, 670 Fed.Appx. 704 (Fed. Cir.
2016) (claims directed to “using a user's viewing history to visually
distinguish watched programs from unwatched programs and to make
recommendations”); Multimedia Plus, Inc. v. PlayerLync LLC, 2017 WF
3498637 (Mem) (Fed. Cir. 2017) (claim dealt with training program); Smart
Systems Innovations, LLC v. Chicago Transit Authority, 2017 WF 4654964
(Fed. Cir. 2017) (“collection, storage, and recognition of data”).
With respect to the second step of the Alice/Mayo analysis, the
Examiner finds:
In this case, the computer merely serves to embody the broader
abstract concept, and performs general purpose computer
functions, i.e. storage, record keeping, display, I/O, etc. Thus,
2 In the case of Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA
LLC, 635 Fed. Appx. 914, 917 (Fed. Cir. 2015), the Court found that a
system for detecting physical or mental impairment of a vehicle driver is
directed to an abstract idea. The vehicle based system at issue here is
directed to an idea that is similarly abstract in character. Id.
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Application 13/951,610
the computer is not seen to add significantly more to the
concept...
Id. at 2—3.
Appellants argue that claim 1 is not directed to organizing human
activity. Appeal Br. 6. Appellants also argue that the Alice line of case
authorities deal with computerized versions of “common practices” which
Appellants distinguish from the instantly claimed subject matter. Reply
Br. 3 (“Applicant is not claiming some common practice implemented
through a computer”).
In response, the Examiner finds that the claims pertain to organizing
human activity and, more particularly, to human “learning activities.”
Ans. 8. We agree with the Examiner’s position that the invention is directed
to a method of organizing human activity.3
Appellants argue that the invention adds significant value to
improving the driver experience by encouraging the driver to use all of the
features of a vehicle. Appeal Br. 6. According to Appellants, there are
potentially hundreds of vehicle features and only a computer can determine
which features have or have not been used. Id. Appellants argue that the
invention leverages computing capability to track and process a large set of
data and then use that data in a meaningful manner. Id. at 6—7.
In response, the Examiner points out, correctly, that merely selecting
information for display does nothing significant to differentiate a
computerized process from an ordinary mental process. Ans. 9. In Content
Extraction & Transmission LLC v. Wells FargoBank, National Ass ’n, 776
3 In any event, we disagree with Appellants that delivering training content
using a computer is not a common practice. See e.g., Nelson (US
2005/0158697 Al, pub. July 21, 2005).
4
Appeal 2017-002571
Application 13/951,610
F.3d 1343, 1347 (Fed. Cir. 2014), cert, denied, 136 S. Ct. 119 (2015), the
Court found that the steps of “collecting data,” “recognizing certain data
within the collected data set,” and “storing that recognized data in memory,”
are abstract. See also Smart Systems Innovations, LLC v. Chicago Transit
Authority, 2017 WL 4654964 (Fed. Cir. 2017) (“collection, storage, and
recognition of data”).
Appealing to the data storage and processing capabilities of a
computer is insufficient to overcome a rejection under Section 101. As our
reviewing court has explained, “the fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v.
Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
Similarly, the fact that the processing of the large data set here could be
performed more quickly or efficiently via a computer does not materially
alter the patent eligibility of Appellants’ claims. It is now well settled that
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention. See Alice, 134 S.Ct. at 2358.
Thus, merely stating an abstract idea while adding the words “apply it” is
not enough to confer patent eligibility. Id.
[I]f that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
Id. at 2359.
Under the second prong of the Alice/Mayo test, we have considered
whether the claim elements, both individually and “as an ordered
combination,” “‘transform the nature of the claim’ into a patent-eligible
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application.” See Alice, 134 S.Ct. at 2355.4 We are not persuaded that using
a computer to identify and present the training content based on lack of
previous experience with a vehicle feature satisfies the “significantly more”
criteria under the second prong of Alice/Mayo. Id. at 2359. Essentially, all
Appellants have done here is use generic computer data gathering,
processing, and display technology to present a vehicle driver with a
demonstration of vehicle features based on lack of previous use of the
particular feature. As in Alice, “each step does no more than require a
generic computer to perform generic computer functions.” Id.
We have considered Appellants’ remaining arguments, including the
arguments set forth in the Reply Brief, and find them to be without merit.
Accordingly, we sustain the Examiner’s Section 101 rejection of claims 1,
3-5, 8, 10-12, 15, and 17-19.
Unpatentability of Claims 1, 3—5, 8, 10—12, 15, and 17—19
over Eklund and Roundtree
Our decision to sustain the Section 101 rejection of claims 1, 3—5, 8,
10-12, 15, and 17—19 disposes of all of the claims on appeal. Accordingly,
we do not reach the prior art Section 103 unpatentability rejection of these
same claims. See 37 C.F.R. § 41.50(a)(1) (The affirmance of the rejection of
a claim on any of the grounds specified constitutes a general affirmance of
the decision of the examiner on that claim, except as to any ground
specifically reversed).5
4 As found by the Examiner, presenting feature demonstration information to
a vehicle operator entering the vehicle for the first time is known in the art.
Final Action 4, Eklund 39, 40, 54, Fig. 11.
5 We note, also, that an alternative ground of rejection under 35 U.S.C.
§ 112(b) for indefmiteness has been withdrawn by the Examiner. Ans. 4.
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Application 13/951,610
DECISION
The decision of the Examiner to reject claims 1, 3—5, 8, 10-12, 15,
and 17—19 is affirmed.
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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Appeal 2017-002571
Application 13/951,610
OPINION DISSENTING-IN-PART
BAHR, Administrative Patent Judge, dissenting in part.
I join the decision of the majority to sustain the rejection of claims 1,
3, 5, 8, 10, 12, 15, and 17-19 under 35 U.S.C. § 101.
I dissent from the decision of the majority not to reach the rejection of
claims 1, 3, 5, 8, 10, 12, 15, and 17—19 under 35 U.S.C. § 103. The majority
has not identified any reason why a decision cannot be reached on the merits
of the rejection under 35 U.S.C. § 103(a), and, in my view, declining to do
so, simply because a rejection of the same claims under 35 U.S.C. § 101 is
being sustained, is at odds with the principles of compact prosecution
espoused by the USPTO. See, e.g., Manual of Patent Examining Procedure
(MPEP) § 2106—III, 9th ed., Rev. Nov. 2015 (“Under the principles of
compact prosecution, regardless of whether a rejection under 35 U.S.C. 101
is made based on lack of subject matter eligibility, a complete examination
should be made for every claim under each of the other patentability
requirements: 35 U.S.C. § 102, 103, 112, and 101 (utility, inventorship and
double patenting) and non-statutory double patenting.”).
The portion of 37 C.F.R. § 41.50(a)(1) quoted by the majority does
not support the decision not to reach the prior art rejection. Rather, to the
extent that this language has any pertinence to rejections other than the one
affirmed, it suggests that the affirmance of the rejection of claims 1, 3, 5, 8,
10, 12, 15, and 17—19 under 35 U.S.C. § 101 constitutes a general
affirmance of the decision of the Examiner on those claims (i.e., an
affirmance of both the rejection under 35 U.S.C. § 101 of those claims and
an affirmance of the rejection under 35 U.S.C. § 103(a) rejections of those
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Application 13/951,610
claims), that is, an affirmance as to any ground of rejection of those claims
not specifically reversed.
By filing their appeal, Appellants requested, and are entitled to, a
decision on the merits of the prior art rejection. Thus, this panel should
consider Appellants’ arguments on pages 9 and 10 of the Appeal Brief and
make a determination as to whether they apprise of error in the rejection
under 35 U.S.C. § 103(a).
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