Ex Parte Monjanel et al

Patent Trial and Appeal Board

Aug 29, 2016

13102611 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/102,611 05/06/2011
28395 7590 08/31/2016
BROOKS KUSHMAN P,CJFG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Paul-Henri Rene Jean Monjanel
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.
83169994 7485
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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 PAUL-HENRI RENE JEAN MONJANEL,
MATTHEW JAMES STRALEY, and JAMES CHARLES HORR
Appeal2014-005051
Application 13/102,611 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and,
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-12. Claims 13-23 are withdrawn. We have
jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify Ford Global Technologies, LLC as the real party in
interest. Br. 1.
Appeal2014-005051
Application 13/102,611
THE INVENTION
Appellants claim various embodiments relating to a method for
financing an acquisition of a vehicle. Spec. 1.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method for financing an
acquisition of a vehicle, the computer-implemented method
compnsmg:
submitting a request to a vehicle financier to obtain
financial qualification information;
tailoring, via a computer, individual-specific financing
programs based on information provided by a vehicle
consumer, received financial qualification information and
purchase incentives;
outputting tailored financing programs; and
transmitting a customer-accepted, tailored financing
program to the vehicle financier for financing.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Arunachalam US 7 ,340,506 B2 Mar. 4, 2008
The following rejections are before us for review:
Claims 1-12 are rejected under 35 U.S.C. § 101.
Claims 1-12 are rejected under 35 U.S.C. § 102(b) over Arunachalam.
Claims 1-12 are rejected under 35 U.S.C. § 112 (b ).
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Application 13/102,611
FINDINGS OF FACT
1. We adopt the Examiner's findings as set forth on pages 2--4 of the
Answer concerning only the rejection made under 35 U.S.C. § 101.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-12 under 35 U.S.C. § 101.
The Supreme Court
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. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[w]hat
else is there in the claims before us? [] To answer that
question, [ ] 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. [The Court] 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."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Claim 1 is a method claim. We find that the claim itself and the
Specification provide enough information to inform one as to what it is
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Appeal2014-005051
Application 13/102,611
directed to, which, in this case, is a method of offering plural financing
options for financing a vehicle.
We find that the claim on its face is drawn to the fundamental
economic practice of tailoring individual financing programs for a vehicle
consumer and hence an abstract idea. The concept of tailoring/determining
plural paths for solutions to best serve a customers' financial needs has been
practiced in the minds of merchants and buyers in the face of purchasing a
costly item/services for thousands of years.
We find that the introduction of the phrase "computer implemented
method" and "tailoring, via a computer" does not alter the analysis at Mayo
step two. The mere addition of having a computer perform these steps, if
required, does not add any meaningful limitation beyond generally linking
the abstract method to a general purpose computer. See Alice, 134 S. Ct. at
2350, quoting Mayo, 132 S. Ct. at 1300. Adding a nominal recitation of a
computer to a claim covering an abstract concept is insufficient to make a
claim patent eligible. See Bancorp Servs. v. Sun Life Assurance Co., 687
F.3d 1266, 1278 (Fed. Cir. 2012). See also Mayo, 132 S. Ct. at 1294 (a
claim cannot simply state the abstract idea and add the words "'apply it."')
Under our precedents, that is not enough to transform an abstract idea
into a patent-eligible subject matter.
35 U.S.C. § 102 (b) REJECTION
argue,
Concerning claim 1 the only independent claim before us, Appellants
Arunachalam discloses an environment that allows a real-time
transaction between a consumer, a bank and a car dealership as
stated in Col 7 Line 64-66. Arunachalam gives an example of
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Appeal2014-005051
Application 13/102,611
real-time transaction by disclosing a user moving $500 from his
checking account into his saving account, stating that the
transaction will be performed in real-time, in the same manner
the transaction would have been performed by a live teller at
the bank or an ATM machine as stated in Col 7 Lines 45-56.
This is not tailoring individual financing programs. This is
processing a bank transaction in real time. Arunachalam is
silent with regards to tailoring individual-specific financing
pro grams. . . .
All the cited portion of Arunachalam discusses is general
provision of an auto loan by a bank. Applicant's computer-
implemented method results in the output of tailored financing
programs by the vehicle financier. Arunachalam is silent with
regards to "outputting tailored financing programs" by the
vehicle financier. For at least the reason above, claim 1 is not
anticipated by Arunachalam.
(Br. 5---6).
The Examiner however found,
Appellants do not define and the instant specification is also
silent to "tailoring individual specific financing programs".
Further, in column 7 lines 59-65, Arunachalam discloses
customized financial services where the Bank and the car
dealership allow the bank customers to purchase a car form
[sic] that dealer, request a car loan from the bank and have the
entire transaction performed on the network and transactions
are flexible and allow cooperation and a flexible variety of
robust real time transactions on the network. Arunachalam is
concerned with allowing the customer to receive customized
financing based on information provided to the dealer to
purchase a car.
(Answer 5).
We agree with Appellants. The independent claims require
tailoring, via a computer, individual-specific financing
programs based on information provided by a vehicle
consumer, received financial qualification information and
purchase incentives .. ..
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Application 13/102,611
Claim 1, App 'x. The Examiner found that this limitation is disclosed by
Arunachalam in column 7 lines 59---65. (Final Act. 10). But, Arunachalam
only discloses at this section:
Bank can also decide to provide other types of services in
POSvc application 510(1 ). For example, Bank may agree with
Car dealership to allow Bank customers to purchase a car from
that dealer, request a car loan from Bank, and have the entire
transaction performed on the network, as illustrated in FIG. SE.
In this instance, the transactions are not merely two-way,
between the user and Bank, but three-way, amongst the
consumer, Bank and Car dealership.
Therefore, it is apparent from this section of Arunachalam that only a single
financing program is proposed, namely, "allow Bank customers to purchase
a car from that dealer, request a car loan from Bank and have the entire
transaction performed on the network .... " At best, in order to have this
limitation meet the claim requirements, we would need to construe each step
of the single financial program as disclosing one of plural financial
programs. If this is the case, then according to the claim, only one of the
proposed deal components would be transmitted, which would not be a
complete financing program. Therefore, we will not sustain the anticipation
rejection of independent claim 1. "A claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference." Verdegaal Bros. v.
Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987).
Since claims 2-12 depend from claim 1, and since we cannot sustain
the rejection of claim 1, the rejection of claims 2-12 likewise cannot be
sustained.
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Application 13/102,611
35 U.S.C. § 112 REJECTION
We do not sustain the rejection of claims 1-12 under 35 U.S.C.
§ 112, second paragraph, because a rejection made solely under second
paragraph of 35 U.S.C. § 112, based on insufficiency of disclosure in a
computer implemented claim, has precedentially been made in the context of
Appellant using means-plus-function claim language, which is not the case
in the claims before us. Specifically, where a limitation of a claim lacks
sufficient disclosure of structure under 35 U.S.C. § 112 i-f 6, that claim is
unpatentable as indefinite under 35 U.S.C. § 112 i-f 2, however, the Examiner
has not shown sufficiently that any limitations of independent claim 1 are in
a means-plus-function format. In re Aoyama, 656 F.3d 1293, 1296-97 (Fed
Cir. 2011) (citing Aristocrat Techs. Aust!. PTY Ltd. v. Int'! Game Tech., 521
F.3d 1328, 1337-38 (Fed. Cir. 2008)).
Concerning the rejection of claims 8 and 10, we will not sustain the
rejection of these claims for the reasons pointed out by the Appellants in the
Brief on page 4 showing proper antecedent basis.
OBJECTIONS
The objection based on new matter (Final Act. 2-4) relates to a
petitionable matter and not to an appealable matter. See In re Schneider, 481
F.2d 1350, 1356-57 (CCPA 1973) andin re Mindick, 371F.2d892, 894
(CCPA 1967). See also the MPEP § 1002.02(c), item 3(a) and§ 1201.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-12 under
35 U.S.C. § 101.
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Application 13/102,611
We conclude the Examiner did err in rejecting claims 1-12 under
35 U.S.C. § 103.
We conclude the Examiner did err in rejecting claims 1-12 under
35 U.S.C. § 112.
DECISION
The decision of the Examiner to reject claims 1-12 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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