Ex Parte Ross et al

Patent Trial and Appeal Board

May 14, 2013

10883926 (P.T.A.B. May. 14, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/883,926 07/02/2004 Steven J. Ross GP-305063-OST-ALS 5579
74829 7590 05/14/2013
Julia Church Dierker
Dierker & Associates, P.C.
3331 W. Big Beaver Road
Suite 109
Troy, MI 48084-2813
EXAMINER
EASWARAN, DAVID S
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
05/14/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte STEVEN J. ROSS,
EDWARD P. CHRUMKA,
JEFFREY G. RAVAS,
NATHAN D. AMPUNAN,
and GARY A. WATKINS
___________

Appeal 2011-004496
Application 10/883,926
Technology Center 3600
___________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2011-004496
Application 10/883,926

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STATEMENT OF THE CASE1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 19, 2010) and Reply Brief (“Reply Br.,” filed December 20,
2010), and the Examiner’s Answer (“Ans.,” mailed October 19, 2010).
Steven J. Ross, Edward P. Chrumka, Jeffrey G. Ravas, Nathan D. 1
Ampunan, and Gary A. Watkins (Appellants) seek review under 2
35 U.S.C. § 134 of a final rejection of claims 1, 2, 4-14, and 16-23, the only 3
claims pending in the application on appeal. We have jurisdiction over the 4
appeal pursuant to 35 U.S.C. § 6(b). 5
The Appellants invented a vehicle leasing program in telematics systems 6
by monitoring mileage in a leased vehicle to proactively provide leasing 7
options. (Specification 1:7-10). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A method of operating a vehicle leasing program, the method 12
comprising: 13
[1] receiving a mileage value from a vehicle, 14
the receiving being accomplished via a wireless 15
connection 16
established between 17
a telematics unit of the vehicle 18
and 19
a call center; 20
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[2] via a communication services manager at the call center, 1
comparing 2
the mileage value 3
with 4
a mileage threshold, 5
wherein the mileage threshold is one of 6
a percentage 7
of a lease mileage limit 8
associated with the vehicle 9
or 10
an amount equal to 11
the lease mileage limit; 12
and 13
[3] notifying a user of the vehicle 14
when the mileage value is greater than the mileage 15
threshold, 16
the notifying including transmitting, 17
to the user of the vehicle 18
via the wireless connection established 19
between the telematics unit and the call 20
center, 21
a leasing event indicator 22
including at least one option to reduce or 23
avoid an additional charge. 24
The Examiner relies upon the following prior art: 25
Murase US 2003/0046199 Al Mar. 6, 2003
Senturk US 2005/0055257 Al Mar. 10, 2005
Kapolka US 2005/0060070 Al Mar. 17,, 2005
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Application 10/883,926

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Aoki US 6,961,912 B2 Nov. 1, 2005
Claims 1, 2, and 4-11 stand rejected under 35 U.S.C. § 101 as directed to 1
non-statutory subject matter. 2
Claims 1, 2, 4-6, 8, 9, 11-14, 16,17, and 19-22 stand rejected under 35 3
U.S.C. § 103(a) as unpatentable over Kapolka and Murase. 4
Claims 7, 10, and 18 stand rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Kapolka, Murase, and Senturk. 6
Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 7
Kapolka, Murase, and Aoki. 8
ISSUES 9
The issues of statutory subject matter turn primarily on whether the 10
claimed use of technology is incidental to the claims. The issues of 11
obviousness turn primarily on whether the art shows it was predictable to 12
automatically compare a mileage threshold with mileage and communicate 13
the result wirelessly. 14
FACTS PERTINENT TO THE ISSUES 15
The following enumerated Findings of Fact (FF) are believed to be 16
supported by a preponderance of the evidence. 17
Facts Related to the Prior Art 18
Kapolka 19
01. Kapolka is directed to computer tools for storing, processing, 20
and displaying vehicle information. Kapolka ¶ 0012. 21
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02. Kapolka describes a system for remote vehicle diagnostics, 1
telematics, monitoring, configuring, and reprogramming, using an 2
on-board unit on a vehicle to send and receive data corresponding 3
to vehicle operating characteristics; an application-service-4
provider infrastructure; an application suite located on the 5
application-service-provider infrastructure to diagnose, monitor, 6
configure, reprogram, and/or obtain telematics information from 7
the at least one vehicle. Kapolka ¶ 0017. 8
03. Generally, the system allows monitoring and control of a 9
vehicle fleet by displaying and controlling data according to a 10
user's specifications. The system is designed with modular 11
applications that interact with core data and services so that 12
vehicle parameters can be monitored, analyzed and displayed in 13
a format that is meaningful to a particular user and/or a particular 14
industry. This flexibility allows different users and/or industries to 15
use the same overall system for vehicle and component 16
monitoring despite their disparate vehicle data requirements. 17
Kapolka ¶ 0045. 18
04. An application service provider may provide and allow access, 19
on a subscriber basis, to a remote vehicle diagnostics, monitoring, 20
configuration and reprogramming tool via the Internet. That is, the 21
application service provider provides the hardware and software to 22
allow its customers (e.g., fleet managers, vehicle distributors, 23
vehicle dealers, original equipment manufacturers ("OEMs"), 24
leasing/rental companies, and the like) to remotely access the 25
vehicles within a fleet. Kapolka ¶ 0048. 26
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05. Mileage is among the data transmitted by Kapolka’s system. 1
Kapolka ¶ 0136, 0167, 0168. 2
06. The fleet manager obtains trip information from the vehicle on 3
a near-real-time basis. The user can analyze trip information for 4
single vehicles as well as any increment of their fleet. This 5
application primarily uses measured parameters such as odometer 6
readings, total trip fuel, idle fuel, average fuel economy, vehicle 7
route taken, and others. The output from this application can also 8
be used as input to the billing systems of leasing companies who 9
charge customers based upon mileage. Kapolka ¶ 0136. 10
07. Alerts are a core service of Kapolka. Kapolka ¶ 0104. 11
08. "Alerts" service may include among its functions the detection 12
of a particular event by checking whether a monitored value 13
exceeds a selected threshold. Any number of diagnostic 14
parameters may be combined into an algorithm to detect 15
threshold-limit boundaries. Further, values may be monitored over 16
time, rather than as single alert-triggering events, to monitor 17
patterns and trends, and detect events more accurately. Kapolka ¶ 18
0107. 19
Murase 20
09. Murase is directed to making lease plans (including amounts of 21
payments, paying options and conditions for changes of articles or 22
vehicles), and apparatus for obtaining or presenting information 23
about lease plans. Murase ¶ 0001. 24
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10. An excess mileage fee is charged in lease contracts if the 1
monthly mileage exceeds a monthly mileage limit. Murase ¶ 2
0015. 3
ANALYSIS 4
Claims 1, 2, and 4-11 rejected under 35 U.S.C. § 101 as directed to non-5
statutory subject matter. 6
We agree with the Examiner that this is a legitimate issue for appeal. 7
While we generally agree with the Examiner’s findings, this is a case where 8
the claims recite sufficient technology in their performance that we are 9
persuaded by the Appellants’ argument that using the communication 10
between the telematics unit of the vehicle and a call center via a 11
communication services manager to monitor mileage is more than an 12
abstract concept. Absent this technology, the claims would not achieve their 13
desired result of instant notification regarding mileage thresholds. Thus this 14
technology is not incidental to the claims. 15
Claims 1, 2, 4-6, 8, 9, 11-14, 16, 17, and 19-22 rejected under 35 U.S.C. 16
§ 103(a) as unpatentable over Kapolka and Murase. 17
Claims 7, 10, and 18 rejected under 35 U.S.C. § 103(a) as unpatentable over 18
Kapolka, Murase, and Senturk. 19
Claim 23 rejected under 35 U.S.C. § 103(a) as unpatentable over Kapolka, 20
Murase, and Aoki. 21
We are not persuaded by the Appellants’ argument that Kapolka does 22
not describe a leasing system, an integrated system, and providing the 23
option. 24
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The claim preamble is for a method of operating a vehicle leasing 1
program. This is of course a mere field of use. But even granting this use 2
weight, this preamble does not specify whether the operation is by the lessee 3
or lessor. Clearly the system of Kapolka is operated at least by a lessee, as it 4
explicitly refers to leased fleets. 5
Kapolka on its face describes an integrated system. Appellants point to 6
its modularity to argue that there are separate components and there is no 7
reason to tie the components together. To this we repeat, Kapolka on its 8
face describes an integrated system. It monitors all the data in an 9
automobile. The fact that architecturally, the system is modularized does not 10
diminish the integral nature of the system. 11
The first step of claim 1 just communicates data. Kapolka essentially is 12
inoperable without that portion – it must accompany any other portion of 13
Kapolka. The second step is the threshold comparison. This is a core 14
service of Kapolka and therefore an integral part of Kapolka. The question 15
is whether mileage threshold comparison was a predictable use of that core 16
service. Kapolka explicitly recites gathering mileage and odometer data for 17
analysis and billing. Accordingly, we must conclude that mileage was a 18
predictable data element for core services, such as Kapolka’s alerts. 19
Now we come to the critical issue of whether such a predictable use of 20
mileage data would encompass comparison of actual mileage to lease 21
contract mileage limits. Here the Examiner shows that such a comparison 22
was known and practiced in lease contracts from Murase. As Kapolka is 23
explicitly directed to vehicle fleet lessees, one of ordinary skill in the auto 24
leasing industry would have been led to Kapolka as well as Murase. Such a 25
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person of ordinary skill, seeing that the mileage is already collected by 1
Kapolka, and knowing of the need for regular comparison by Murase, would 2
predictably have included that comparison in Kapolka as a cheap and 3
efficient solution to an existing practice. 4
As to the argument regarding providing an option, we first note that the 5
claim provides an indicator rather than an option. An indicator may be any 6
perceivable event. The claim does say the indicator includes an option, but 7
does not narrow the manner of such inclusion, and may be an implied 8
inclusion by foreknowledge of the correlation. Thus there is no necessary 9
transmission of the option, whatever that is, itself. We agree with the 10
Examiner that simply providing an option, absent any mechanism for 11
reacting to that option, does not affect the actual process steps of the claim 12
and therefore is non-functional and cannot distinguish the claims over the 13
prior art. In this case, an option encompasses any textual message or code 14
perceptible only to the human mind. See In re Ngai, 367 F.3d 1336, 1339 15
(Fed. Cir. 2004). 16
CONCLUSIONS OF LAW 17
The rejection of claims 1, 2, and 4-11 under 35 U.S.C. § 101 as directed 18
to non-statutory subject matter is improper. 19
The rejection of claims 1, 2, 4-6, 8, 9, 11-14, 16, 17, and 19-22 under 35 20
U.S.C. § 103(a) as unpatentable over Kapolka and Murase is proper. 21
The rejection of claims 7, 10, and 18 under 35 U.S.C. § 103(a) as 22
unpatentable over Kapolka, Murase, and Senturk is proper. 23
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The rejection of claim 23 under 35 U.S.C. § 103(a) as unpatentable over 1
Kapolka, Murase, and Aoki is proper. 2
DECISION 3
The rejection of claims 1, 2, 4-14, and 16-23 is affirmed. 4
No time period for taking any subsequent action in connection with this 5
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 6
§ 1.136(a)(1)(iv) (2011). 7
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AFFIRMED 9
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