Ex Parte Rosalik

Patent Trial and Appeal Board

Oct 12, 2017

13273309 (P.T.A.B. Oct. 12, 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.
13/273,309 10/14/2011 Martin E. Rosalik JR. P016993-GMVE-CD 7943
80748 7590 10/16/2017
Cantor Colburn LLP-General Motors
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
TALLMAN, BRIAN A
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
10/16/2017 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN E. ROSALIK JR
Appeal 2016-0005851
Application 13/273,3 092
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 5—9, 12—16, and 19—21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
May 28, 2015) and Reply Brief (“Reply Br.,” filed October 13, 2015), and
the Examiner’s Answer (“Ans.,” mailed August 21, 2015) and Final Office
Action (“Final Act.,” mailed January 7, 2015).
2 Appellant identifies GM Global Technology Operations LLC as the real
party in interest. App. Br. 2.
Appeal 2016-000585
Application 13/273,309
CLAIMED INVENTION
Appellant’s claimed invention “relates to electric vehicles, and more
particularly, to electric vehicle charging services” (Spec. 11).
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system for implementing electric vehicle
charging services, the system comprising:
a host system computer communicatively coupled to a
vehicle infotainment system, the vehicle infotainment system
including a display device; and logic executable by the host
system computer, the logic configured to implement a method,
the method comprising:
presenting an offer, through a telematics system of
a vehicle, to a user to register for the electric vehicle
charging services via the display device of the vehicle
infotainment system, the offer presented in response to
activation of a charge unit by the user;
receiving acceptance of the offer through the
telematics system from the user;
receiving data relating to a vehicle charge operation
of the vehicle through the telematics system of the vehicle
when the charge unit that performs the vehicle charge
operation is absent a connection to a smart meter;
receiving global positioning system data indicating
a location of the vehicle, the global positioning system
data determined by a navigation component of the vehicle
and received from the telematics system of the vehicle;
determining, from the global positioning system
data, the user of the vehicle is performing the vehicle
charge operation at a home address of the user, the home
address stored in a record upon registration by the user for
the electric vehicle charging services;
determining a utility service provider that services
the location;
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Application 13/273,309
transmitting charge data, time of the vehicle charge
operation, and user identification information received
from the vehicle to the utility service provider, the charge
data and the time of the vehicle charge operation
determining a rate chargeable to the user; and
calculating a value reflecting an amount of energy
consumed at a discounted rate with respect to the vehicle
charge operation, and displaying data specifying cost
savings accrued on the display device of the vehicle
infotainment system in the vehicle.
REJECTIONS
Claims 1,2, 5—9, 12—16, and 19—21 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
Claims 1, 2, 5, 8, 9, 12, 15, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Tormey et al. (US 2011/0153474 Al, pub.
June 23, 2011) (hereinafter “Tormey”), Rory Reid, BMW ConnectedDrive
offers rolling Wi-Fi, in-car browser, Street View (October 7, 2010),
available at http://web.archive.org/web/20101007080457/
http://crave.cnet.co. uk/cartech/bmwconnecteddrive-offers-rolling-wi-fi-in-
car-browser-street-view-50001034 (hereinafter “Reid”), Gaul et al.
(US 2012/0013301 Al, pub. Jan. 19, 2012) (hereinafter “Gaul”),
Woody et al. (US 2009/0091291 Al, pub. Apr. 9, 2009) (hereinafter
“Woody”), Keefe (US 2010/0082464 Al, pub. Apr. 1, 2010), Fukumura
(JP 2007-237792, pub. September 20, 2007), and Tami et al.
(US 2008/0011844 Al, pub. Jan. 17, 2008) (hereinafter “Tami”).
Claims 6, 13, and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tormey, Reid, Gaul, Woody, Keefe, Fukumura, Tami,
and Ambrosio (US 2010/0049610 Al, pub. Feb. 25, 2010).
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Claims 7, 14, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tormey, Reid, Gaul, Woody, Keefe, Fukumura, Tami,
and Tyler Lacoma, How Does a Body Control Module Work (August 3,
2010), available at http://www.ehow.com/how-does_5003955_body-control-
module-work_.html (http ://web. archive, org/web/20100803222314/
http://www. eh ow. com/how-does_ 5003955 body-control-module-work)
(hereinafter “Lacoma”).
Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Tormey, Reid, Gaul, Woody, Keefe, Fukumura, Tami, and Hafiier et al. (US
2009/0312903 Al, pub. Dec. 17, 2009) (hereinafter “Hafiier”).
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CIS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (2012), “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., 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts. Id. If the
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claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered “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 78—79).
The Court acknowledged in Mayo, 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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
“whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under § 101, the Examiner finds that
the claims are directed to “presenting and accepting an offer for electric
vehicle charging services and using data related to vehicle charge operation
to calculate consumption and cost values,” i.e., to an abstract idea (Ans. 2
(citing Parker v. Flook, 437 U.S. 584 (1978); Versata Development Group,
Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015); and Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014))); and that the claims do
not include additional elements sufficient to amount to significantly more
than the judicial exception because “the generic functions (i.e. [,] presenting
data, transmitting data, receiving data, determining data, displaying data) are
well-understood, routine, and conventional activities known in the industry”
and further because “the computer as recited (i.e. [,] host system computer,
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computer program product, computer readable storage medium, display)” [is
a] generic computer component ] that perform[s] “functions (i.e.[,]
presenting offer, receiving acceptance data, receiving data associated with
charging, receiving GPS data, determining location from GPS data,
determining utility provider, transmitting charge data, calculating energy
consumed at discount rate, displaying cost savings) that are well-understood,
routine, and conventional activities previously known in the industry” (id.
at 3).
Appellant does not contest the Examiner’s finding that the claims are
directed to an abstract idea. Instead, Appellant notes that, as recited in the
claims, communications are conveyed and coordinated by a host computer
through multiple vehicle systems including, “e.g., a telematics system, an
infotainment system, a navigation system, a vehicle charge unit, and a body
control module, as well as between the host computer and a telematics
provider system and between the host computer and a utility service provider
system” (Reply Br. 2). Appellant summarily asserts that “[t]he coordination
of these communications and recited functions among the aforementioned
systems and components amount[s] to significantly more than an abstract
idea” (id. ). Yet we find nothing in the Specification, nor for that matter does
Appellant point to anything in the Specification, to indicate that these
components and systems are other than generic components or that they are
used other than in their normal, expected, and routine manner for receiving,
processing, and displaying information. As the Supreme Court made clear
in Alice, the recitation of generic computer limitations is not enough to
transform an otherwise patent-ineligible abstract idea into a patentable
invention. See Alice Corp., 134 S. Ct. at 2358.
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Appellant further asserts that the claimed invention improves a
technology or technical field in that “the field of electric vehicle charging is
improved through at least the identification and registration of vehicles,
tracked vehicle locations, and associations of utility service providers to the
vehicles/operators for providing discounted charging services without the
need for a smart meter” (Reply Br. 2—3 (citing Spec. 113)).3 Yet no specific
technology is claimed and, as described above, there is no indication that
any specialized hardware or inventive computer components are required.
Indeed, although the Specification discloses that the claimed system and
process allow electric and hybrid vehicle owners to receive discounted
electric rates without the need for a smart meter, the Specification is clear
that this is accomplished by merely “transmitting the user identification
information, location information, and charge data via a telematics system
and network,” i.e., using generic components in their normal, expected, and
routine manner to receive and transmit information (see, e.g., Spec. H 13,
29).
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claims 1, 2, 5—9, 12—16, and 19—21 under
35U.S.C. § 101. Therefore, we sustain the Examiner’s rejection.
3 The Specification discloses that in prior systems, in order to offer
discounted rates for electrical energy used to charge electric or hybrid
vehicles, a utility service provider was typically required to install a
specialized electric meter at a customer premises at a cost to the customer
(Spec. 12).
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Obviousness
Independent Claims 1, 8, and 15 and Dependent Claims 2, 5, 9, 12, and 16
In In re Jung, 637 F.3d 1356 (Fed. Cir. 2011), the Federal Circuit held
that, during prosecution, an examiner is governed by 35 U.S.C. § 132, which
requires notification to an applicant of the reasons for a rejection with “such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” Jung, 637 F.3d at 1362
(quoting Chester v. Miller, 906 F.2d 1574, 1578 (1990)). However, the
court made clear that section 132 does not mandate that in order to establish
a prima facie case, an examiner must make an on-the-record claim
construction of every term in every rejected claim or explain every possible
difference between the prior art and the claimed invention. Id. at 1363.
Instead, the statute only requires that “an applicant at least be informed of
the broad statutory basis for the rejection of his claims, so that he may
determine what the issues are on which he can or should produce evidence.”
Id.
Here, the Examiner notified Appellant that claims 1, 8, and 15 are
rejected under 35 U.S.C. § 103(a) as obvious over the combination of
Tormey, Reid, Gaul, Woody, Keefe, Fukumura, and Tami; and the Examiner
cited specific portions of the references, e.g., by paragraph number, that are
the bases for the rejection (see Final Act. 3—11).
We find that the Examiner’s rejection satisfies the notice requirement
of § 132, and that the Examiner has, thus, established a prima facie case of
unpatentability. Cf. Jung, 637 F.3d at 1363 (“[T]he examiner’s discussion of
the theory of invalidity . . . the prior art basis for the rejection . . . and the
identification of where each limitation of the rejected claims is shown in the
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prior art reference by specific column and line number was more than
sufficient to meet this burden.”). Therefore, the burden shifted to Appellant
to rebut the Examiner’s prima facie case by distinctly and specifically
pointing out the supposed errors in the Examiner’s action, as well as the
specific distinction believed to render the claims patentable over the cited
references. See 37 C.F.R. § 41.37(c)(vii) (2011) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”).
Appellant has failed to carry this burden. Rather than distinctly
pointing out the Examiner’s supposed errors, Appellant offers general
allegations, e.g., that the Examiner has “merely pieced together Appellant’s
claimed invention with the seven references with the benefit of hindsight”
(App. Br. 13, 15, 17); that the rejection “consists of several reasoning leaps
that Appellant asserts would not have been obvious to one of ordinary skill
in the art at the time of [Appellant’s] invention” (id. at 14, 16, 18); and that
the “analysis used to reject [claims 1, 8, and 15] is a prime example of a
flawed hindsight bias analysis that is not permitted in an obviousness
determination” (id.).
Appellant may well disagree with how the Examiner interpreted and
applied the cited references, but Appellant offers no substantive arguments
to rebut the specific underlying factual findings made by the Examiner in
support of the obviousness determination. And we decline to examine the
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claims sua sponte, looking for distinctions over the prior art. Cf. In re
Baxter TravenolLabs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
In the absence of a more detailed explanation, we are not persuaded of
error on the part of the Examiner. See Jung, 637 F.3d. at 1365 (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections . . . .” (citing Ex parte Frye, 94 USPQ2d
1072, 1075 (BPAI2010) (precedential) (“The panel then reviews the
obviousness rejection for error based upon the issues identified by appellant,
and in light of the arguments and evidence produced thereon.”))).
Therefore, we sustain Examiner’s rejection under 35 U.S.C. § 103(a) of
independent claims 1, 8, and 15, and claims 2, 5, 9, 12, and 16, which
depend therefrom.
Dependent Claims 6, 7, 13, 14, and 19—21
Appellant does not provide any argument in support of the
patentability of dependent claims 6, 7, 13, 14, and 19—21 except to assert
that the additional references cited in rejecting these claims do not cure the
alleged deficiencies in the Examiner’s rejection of independent claims 1, 8,
and 15, and that the claims are allowable based on their dependence from
independent claims 1, 8, and 15.
We are not persuaded on the present record that the Examiner erred in
rejecting independent claims 1, 8, and 15 under 35 U.S.C. § 103(a).
Therefore, we sustain the Examiner’s rejections of dependent claims 6, 7,
13, 14, and 19-21.
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DECISION
The Examiner’s rejection of claims 1, 2, 5—9, 12—16, and 19—21 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1, 2, 5—9, 12—16, and 19—21
under 35 U.S.C. § 103(a) are 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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