Ex Parte Prakah-Asante et al

Patent Trial and Appeal Board

Oct 5, 2017

13804401 (P.T.A.B. Oct. 5, 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.
13/804,401 03/14/2013 Kwaku O. Prakah-Asante 83355993 2083
28395 7590 10/10/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER LEWANDROSKI, SARA J
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
10/10/2017 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 KWAKU O. PRAKAH-ASANTE, HSIN—HSIANG YANG, and
GARY STEVEN STRUMOLO
Appeal 2015-006113
Application 13/804,401
Technology Center 3600
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
FRANCES L. IPPOLITO, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kwaku O. Prakah—Asante et al (Appellants)1 seek our review under
35 U.S.C. § 134 of the Examiner’s rejections2 of claims 1—4, 6, 8—13, 15—18,
and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Ford Global
Technologies, LLC. Reply Br. 2.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, mailed January 14, 2015 (“Final Act.”).
Appeal 2015-006113
Application 13/804,401
CLAIMED SUBJECT MATTER
Claims 1, 8, and 15 are independent. Claim 1 is reproduced below
and illustrates the claimed subject matter.
1. A system comprising:
a processor programmed to:
identify upcoming high driving-demand areas on a current
route, based on received information representing previously
observed driving-demand levels at the high driving demand
areas;
engage a service to elevate driver focus, persisting while a
vehicle travels within the identified areas; and
report observed driving-demand levels while the vehicle
travels within the identified areas to a remote source that
provided the received information representing previously
observed driving-demand level.
REJECTIONS
The following Examiner’s rejections are before us for review.3
1. Claims 1—4, 6, 8—13, 15—18 and 20 are rejected under 35 U.S.C. §
101 because the claimed invention is directed to non-statutory subject matter
because the claim(s) as a whole, considering all claim elements both
individually and in combination, do not amount to significantly more than an
abstract idea.
2. Claims 1—4, 8, and 15 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as the invention.
3. Claims 1—4, 8—12, and 15—18 are rejected under 35 U.S.C. §
102(e) as anticipated by Pierlot (US 2013/0033384 Al, pub. Feb. 7, 2013).
3 Claim 5 was cancelled in an Amendment filed February 5, 2015 and claims
7, 14, and 19 were cancelled in an Amendment filed December 22, 2014.
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4. Claims 6, 13, and 20 are rejected under U.S.C. § 103(a) as
unpatentable over Pierlot and Naboulsi (US 6,731,925 B2, iss. May 4,
2004).
ANALYSIS
Rejection of Claims 1—4, 6, 8—13, 15—18 and 20 as Directed to Non-
Statutory Subject Matter
Appellants argue the claims subject to this rejection as a group.
Appeal Br. 6—7, Reply Br. 1. We select claim 1 as representative, with the
remaining claims standing or falling with claim 1. 37 C.F.R. § 41.37(c)(1)
(iv) (2014).
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. Nevertheless, this provision contains an
important implicit exception: laws of nature, natural phenomena, and
abstract ideas are not patentable. See Alice Corp. v. CLS BankInt’l, 134 S.
Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)
(“Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.”). (“Athough hedging is a longstanding
commercial practice, it is a method of organizing human activity, not a
‘truth’ about the natural world.”) Alice, 134 S. Ct. at 2356
In Alice, the Court also reaffirmed the framework set forth previously
in Mayo “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
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of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S.
at 79, 77-78).
Regarding the first step in the Alice framework, the Examiner finds
that “the claimed invention is directed to non-statutory subject matter
because the claim(s) as a whole, considering all claim elements both
individually and in combination, do not amount to significantly more than an
abstract idea ... of a method that could be performed through mental
activity or human behavior.” Final Act. 5.
Regarding Alice’s second step, the Examiner finds the additional
elements in the claims “do not provide meaningful limitation(s) to transform
the abstract idea into a patent eligible application of the abstract idea such
that the claim(s) amounts to significantly more than the abstract idea itself,”
and concludes that “the claim(s) are rejected under 35 U.S.C. 101 as being
directed to non-statutory subject matter.” Id. at 5—6.
Appellants respond by first quoting portions of a New Interim
Eligibility Guidance published by the USPTO in the Federal Register on
December 12, 2014, pointing out, inter alia, that §1 (B)(3) provides that “for
purposes of efficiency in examination, a streamlined eligibility analysis
can be used for a claim that may or may not recite a judicial exception
but, when viewed as a whole, clearly does not seek to tie up any judicial
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exception such that others cannot practice it. ” Appeal Br. 6.4 . However,
“[w]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Without disputing whether the claims are directed to an abstract idea,
Appellants first argue because the Examiner contends each of the elements
of claim 1 are an abstract idea, that “no one abstract idea is sought to be tied
up by the claims as a whole, [thus] the whole Alice inquiry ends according
to the Interim Guidelines §1 (B)(3).” Id. at 7. More specifically, Appellants
contend that “[o]nly by performing all elements of the claim would another
infringe the claim, which means that the inclusion of the additional abstract
ideas prevents monopolization of any of the singular abstract ideas.” Reply
Br. 1
However, Appellants misread the Examiner’s rejection that does not
describe each method step as a separate abstract idea, but explains that the
abstract idea is directed to a series of recited mental activities, including
elements that “identity,” “engage,” and “report.” See Final Act. 2—\.
Furthermore, we are not persuaded by this argument.5 Although the Alice
Court discussed the pre-emption of abstract ideas as a basis to exclude them
4 Appellants express a willingness to amend claim 1 as suggested by the
Examiner at page 4 of the Final Rejection. Id. at 7. However, in an appeal
under 35 U.S.C. § 134(a), it is the Examiner’s final rejection that we review.
See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990).
5 We agree with the Examiner that “[t]he general allegations that the claims
clearly denote vehicular actions and are patent eligible ‘under the
streamlined eligibility analysis’ without specifically pointing out how the
language of the claims are patent eligible do not address the rejections under
35 U.S.C. [§] 101.” Ans. 5.
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from patent eligibility under Section 101, Alice, 134 S. Ct. at 2354,
Appellants do not explain how the pending claims would not “tie up any
judicial exception such that others cannot practice it,” so that they would not
constitute preemption of that abstract idea. Appeal Br. 6. Thus, Appellants
have provided no evidence to support this contention. We are instructed
“[ajttorney’s arguments in a brief cannot take the place of evidence.” In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (citation omitted); see also In
re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (holding that lawyer
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value).
Appellants also contend that “limitations such as ‘a processor
configured to ... engage a service ... ‘clearly denote vehicular (or other
computer) actions that are not mere human mental activity.” Appeal Br. 7.
However, as the Examiner again explains, “[a] ‘service’ is very broad and
does not imply a physical system installed in a vehicle,” noting that “[tjhere
is no claim language that implies any component of the vehicle is being
controlled at all,” and concluding that “[i[t would not be reasonable to one of
ordinary skill in the art to read ‘vehicular actions’ into the claimed ‘engage a
service.’”
Appellants do not provide any additional arguments for the
patentability of claims 1—4, 6, 8—13, 15—18 and 20 under 35 U.S.C. § 101.
See Reply Br. 1—2. Accordingly, we sustain the rejection of these claims
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
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Rejection of Claims 1—4, 8, and 15 as being Indefinite
In rejecting the claims as being indefinite, the Examiner observes that
as “supported by the disclosure in 10029 of the specification, the only way
that [claim 1] can be interpreted ... is that the claimed ‘system’ is
interpreted as the disclosed remote computing system and the claimed
‘remote source’ is interpreted as the disclosed wireless device.” Final Act.
6—7. Thus, the Examiner reasons because “Figure 1 depicts the nomadic
device 53 as being within the vehicle and not remote from the vehicle,” that
“if this ‘remote source’ was intended to be remote from the vehicle, this
would not be supported by the disclosure.” Id. at 7.
Appellants respond by reasoning that “[paragraph 29 clearly states
that the vehicle computing system is capable of performing the exemplary
processes,” illustrated by the recited limitations of claim 1, annotated to
portions of the Specification, that describe “how the limitation are performed
by an in-vehicle processor.” Appeal Br. 7—8. Appellants also explain how
the Driving Demand Likelihood Module (DDLL) “can function as the
‘remote source,’ sending and receiving input and output, and how the rest of
the steps could be performed at a vehicle computer.” Id. at 8.
While noting that Appellants’ response “provides an explanation of
how the DDLL can also function as the claimed remote source,” the
Examiner finds that the explanation “has not addressed the complete
rejection of claim 1 under 35 U.S.C. [§] 112(b), specifically in regards to the
lack of relationship between the claimed vehicle and system.” Thus, the
Examiner’s argument pertains to written description support for the claim,
rather than clarity of the claim.
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In that the Examiner acknowledges that paragraph 29 supports an
understanding of what is being claimed, we find that one skilled in the art
would understand what is recited by claim 1 when read in light of the
Specification.6
For the foregoing reasons, we do not sustain the rejection of claims 1—
4, 8, and 15 as under 35 U.S.C. § 112(b), as being indefinite.
Rejection of Claims 1—4, 8—12, and 15—18 as anticipated by Pierlot
Appellants argue the claims subject to this rejection as a group.
Appeal Br. 8—9, Reply Br. 2. We select claim 1 as representative, with the
remaining claims standing or falling with claim 1. 37 C.F.R. §
41.37(c)(l)(iv) (2014).
The Examiner finds that Pierlot anticipates the claims by disclosing,
inter alia, a processor programed to “engage a service to elevate driver focus
persisting while a vehicle travels within the identified area.” Final Act. 8—9
(citing Pierlot, || 81—87).
However, Appellants contend Pierpont merely teaches “displaying
information or announcing information relating to an upcoming obstruction
prior to the vehicle reaching the obstruction,” while “[t]he whole point of
Pierlot is to warn the user in advance of encountering the obstruction,” and
6 If there is further prosecution of this application, the Examiner may wish to
consider whether the claims should be rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
“[T]he test for sufficiency [of the written description] is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en banc) (citations omitted).
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that “[n]othing in Pierlot relates to elevating driver focus via an action that
persists while the vehicle travels within the identified areas.” Appeal Br. 9.
(emphasis added).
In response, the Examiner first points out “the [Specification] does not
contain the term ‘persisting’ [as that term] was amended to the claims filed
12/22/2014,” but merely discloses “that the services are engaged ahead of
demanding driving conditions . . . without stating that the service persists.”
Ans. 6 (citing Spec. 134). The Examiner also observes, “Pierlot does not
disclose deactivating the display after the information regarding the
obstruction is displayed,” but teaches “that a message (e.g. ‘obstruction still
present?’) is generated after the vehicle has passed the obstruction (see at
least 10087) to allow the user to verify or invalidate the existence of the
obstruction.” Id. The Examiner concludes “from Pierlot and the
specification, [that] it is clear that Pierlot discloses the claimed limitation at
least to the same extent that the [Appellants disclosed] the limitation in the
specification.” Id. at 7.
In the Reply Brief, Appellants respond that “one would understand
that the purpose of a do not disturb function is so that a driver will not be
disturbed, thus elevating focus and naturally persisting for the duration of
the area of high demand, are more than sufficient to distinguish over
Pierlot’s teachings, certainly at a minimum from an anticipation
perspective.” Reply Br. 2. However, Appellants’ argument is not
responsive to an argument newly raised in the Examiner’s Answer. Thus,
Appellants did not set forth this argument relating to the do not disturb
function in a timely manner prior to filing of the Reply Brief to permit the
Examiner an opportunity to fully respond. See 37 C.F.R. § 41.41(b)(2)
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(2014) (“Any argument raised in the reply brief which was not raised in the
appeal brief, or is not responsive to an argument raised in the examiner’s
answer . . . will not be considered by the Board for purposes of the present
appeal, unless good cause is shown.”).
For the foregoing reasons, we discern no error in the Examiner’s
findings and sustain the Examiner’s rejection of claims 1—4, 8—12, and 15—
18 as anticipated by Pierlot.
Rejection of Claims 6, 13, and 20 over Pierlot and Naboulsi
Appellants do not separately argue the rejection of claims 6, 13, and
20 over Pierlot and Naboulsi. See generally Appeal Br. and Reply Br.
Accordingly, we summarily sustain the rejection as uncontested. 37 C.F.R.
§ 41.37(c)(iv); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)(“[T]he
applicant can waive appeal of a ground of rejection”)
DECISION
We AFIRM the rejection of claims 1—4, 6, 8—13, 15—18 and 20 under
35U.S.C. § 101.
We REVERSE the rejection of claims 1—4, 8, and 15 under 35 U.S.C.
§112, second paragraph.
We AFFIRM the rejection of claims 1—4, 8—12, and 15—18 under 35
U.S.C. § 102(e) as anticipated by Pierlot.
We AFFIRM the rejection of claims 6, 13, and 20 under U.S.C. §
103(a) as unpatentable over Pierlot and Naboulsi.
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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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