Ex Parte Schulz

Patent Trials and Appeals Board

Apr 30, 2019

13622994 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/622,994 09/19/2012
35236 7590 05/02/2019
The Culbertson Group, P.C.
2210 Western Trails Blvd., Unit 104
Austin, TX 78745
FIRST NAMED INVENTOR
Craig Schulz
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.
1351.1000 3628
EXAMINER
WEISENFELD, ARYANE
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
rculbertson@tcg-ipl.com
docket@tcg-ipl.com
rculbertson2@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG SCHULZ
Appeal2018-003122
Application 13/622,994
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-003122
Application 13/622,994
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-6, 8-13, 15-18, and 20-23. Claims 7, 14, and 19 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part. 1
Representative Claims
Representative claims 1 and 5 under appeal read as follows ( emphasis
added):
1. A method including:
(a) receiving product identifying information at a system
of one or more data processing devices included in an
evaluation system, the product identifying information
identifying a damaged product;
(b) receiving a section input from a user device, the
section input being received at the system of one or more data
processing devices included in the evaluation system and
identifying a damaged section of the damaged product;
( c) under control of the system of one or more data
processing devices included in the evaluation system, causing a
grid to be displayed at the user device along with a
representation of the identified damaged section, the grid
defining a number of grid segments with each grid segment
located over a respective portion of the representation of the
identified damaged section, the grid and representation of the
identified damaged section being displayed together with a
number of predefined damage severity indicators, each of the
number of predefined damage severity indicators indicating a
1 Herein, we refer to the Specification, filed Sept. 19, 2012 ("Spec."); Final
Office Action, mailed May 19, 2016 ("Final Act."); Appeal Brief, filed Jan.
19, 2017 ("App. Br."); and the Examiner's Answer, mailed Apr. 19, 2017
("Ans.").
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different level of damage and being associated with a
predefined representation of that respective level of damage;
( d) receiving a respective damage severity level input
from the user device for each of the grid segments
encompassing damage which is to be considered in an overall
repair cost estimate for the identified damaged section, each
respective damage severity level input being received at the
system of one or more data processing devices included in the
evaluation system and including a user-selected damage
severity indicator selected from the number of predefined
damage severity indicators displayed at the user device;
( e) at the system of one or more data processing devices
included in the evaluation system, for each respective damage
severity level input, retrieving damage estimate data from one
or more data storage devices, the retrieved damage estimate
data being specified at least in part by (i) that respective grid
segment and by (ii) the user-selected damage severity indicator
for that respective damage severity level input; and
( f) at the system of one or more data processing devices
included in the evaluation system, applying the retrieved
damage estimate data to produce the overall repair cost estimate
for the identified damaged section.
5. The method of claim 1 further including:
(a) causing a photograph of the identified section of the
damaged product to be displayed at the user device as the
representation of the identified damaged section;
(b) under control of the system of one or more data
processing devices included in the evaluation system, causing
the user device to display an outline for the grid, the outline
for the grid being separate from the representation of the
identified damaged section and matching a peripheral shape
of the representation of the identified damaged section;
( c) causing a sizing and alignment inter/ ace to be
displayed at the user device, and prompting the user to use the
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sizing and alignment inter/ ace to size and align the
photograph to the outline for the grid.
App. Br. 24-26 (Claims Appendix).
Rejections on Appeal
1. The Examiner rejected claims 1-6, 8-13, 15-18, and 2 0-2 3 under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter.2 See
Ans. 2.
2. The Examiner rejected claims 1-2, 4-6, 8-13, 15-18, and 20-23
under 35 U.S.C. § 103(a) as being unpatentable over Holden
(US 2009/0138290 Al; published May 28, 2009) ("Holden") and Xu et al.
(US 2012/0109660 Al; published May 3, 2012) ("Xu"). 3 See Ans. 2.
3. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over Holden, Xu, and Edmunds.com Homepage, Internet
Archive W ayback Machine,
http://web.archive.org/web/20090 3 26083 63 0/http://www.edmunds.com/
(March 26, 2009) ("Edmunds").4 See Ans. 2.
2 We select claim 1 as representative. Separate patentability, in compliance
with 37 C.F.R. § 41.37(c)(iv), is not argued for claims 2-6, 8-13, 15-18,
and 20-23. See App. Br. 9-15. Accordingly, except for our ultimate
decision, the rejection of claims 2-6, 8-13, 15-18, and 20-23 under
35 U.S.C. § 101 is not discussed further herein.
3 The Examiner's Answer incorrectly indicated that claims 7, 14, and 19
were also rejected. See Ans. 2. However, as previously indicated, these
claims have been cancelled. (See Preliminary Arndt., dated Feb. 12, 2016.)
Further, the patentability of claims 2, 6, 9-13, 15-18, 20-21, and 23 is not
separately argued from that of claim 1. See App. Br. 15-22. Accordingly,
except for our ultimate decision, the rejection of claims 2, 6, 9-13, 15-18,
20-21, and 23 under 35 U.S.C. § 103(a) is not discussed further herein.
4 The patentability of claim 3 is not separately argued from that of claim 1.
See App. Br. 15-22. Accordingly, except for our ultimate decision, the
rejection of claim 3 under 35 U.S.C. § 103(a) is not discussed further herein.
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Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to patent-
ineligible subject matter?
Did the Examiner err in rejecting claims 1, 2, 4, 5, 8, and 22 as being
obvious?
ANALYSIS
A. Section 1 OJ Case Law
Under 35 U.S.C. § 101, a patent may be obtained "for any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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 (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, 573 U.S. at 217. The first step in that
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts," such as an abstract idea. Id. 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, we look to whether the claims
focus on a specific means or method that improves the relevant technology
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or are instead directed to a result or effect that itself is the abstract idea and
otherwise merely recite generic processes and machinery. See Enfzsh, LLC
v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If the claims are
not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry
proceeds to the second step, in which the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78).
B. USPTO Section 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of 35 U.S.C. § 101. USPTO's
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50, 50-57 (Jan. 7, 2019) ("Revised
Guidance"). Under the Revised Guidance, we first look to whether the
claim recites:
(1) (Step 2A - Prong One) any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a fundamental
economic practice, or mental processes); and
(2) (Step 2A- Prong Two) additional elements that integrate the
judicial exception into a practical application (see MPEP
§ 2106.05(a)-(c), (e)-(h)). 5
5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Revised Guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
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See Revised Guidance 54-5 5. Only if a claim ( 1) recites a judicial exception
and (2) does not integrate that exception into a practical application, do we
then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance 56.
C. Examiner's§ 1 OJ Rejection; Alice/Mayo - Steps 1 and 2
C. l. USPTO Revised Guidance Step 2A - Prong One
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 1 is directed to an abstract idea.
Claims 1-6, 8-13, 15-18, and 20-23 are directed to an abstract
idea of evaluating damage to a vehicle, specifically, directed
towards receiving product identifying information, receiving a
section input, displaying a grid, receiving a severity level
indicator, retrieving damage estimates, and applying the
retrieved damage estimate to produce an overall repair cost
estimate, which is (i) a fundamental economic practice, (ii) a
method of organizing human activities, (iii) an idea of itself, or
(iv) a mathematical relationship or formula .. .. In this case, the
claimed invention is directed to (i) a fundamental economic
practice and (ii) a mathematical relationship or formula
because the claimed invention is simply using severity damage
estimates to produce an overall repair cost, which results in it
it under Step 1 of Alice (Step 2A of Revised Guidance). See Revised
Guidance 54-5 5.
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being (i) a fundamental economic practice and (ii) a
mathematical relationship or formula.
Additionally, the claims are directed towards the abstract idea
of evaluating damage to a vehicle. The Examiner asserts that the
claimed invention, as presented, is nothing more than being
directed towards the already recognized abstract ideas of using
damage information to produce an overall repair cost estimate,
i.e. receiving product identifying information, receiving a section
input, displaying a grid, receiving a severity level indicator,
retrieving damage estimates, and applying the retrieved damage
estimate to produce an overall repair cost estimate.
Final Act. 2-3 (emphasis added); see also Ans. 2-5.
C.2. USPTO Revised Guidance Step 2A - Prong Two
Applying step 2 of the Alice/Mayo analysis, the Examiner concludes:
The elements in the instant claims, when taken in combination,
together do not offer "significantly more" than the abstract idea
itself because the claims do not recite an improvement to
another technology or technical field, an improvement to the
functioning of the computer itself, or provide meaningful
limitations beyond generally linking an abstract idea to a
particular technological environment.
Final Act. 4 ( emphasis added).
The Examiner asserts that the claimed invention does not further
or improve upon the technology or the technical field as merely
having a general purpose device to perform the steps of the
abstract idea is nothing more than having the general purpose
device perform the well-understood, routine, and conventional
activities already known in evaluating damage to a vehicle,
which results in the claimed invention not amounting to being
significantly more than the judicial exception. The Examiner
further notes that the decision of DDR Holdings does not apply
as, unlike DDR Holdings, the claimed invention is not "deeply
rooted in the technology" since: 1.) humans have, for some time,
longed been known to perform the well-understood, routine, and
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conventional activities in the field of evaluating damage to a
vehicle, e.g., receiving identifying information, receiving input,
displaying a grid, receiving additional input, retrieving damage
estimate data, and producing an estimate, and the like; and 2.) the
well-understood, routine, and conventional activities of the
abstract idea does not change, alter, or improve upon how the
technology, i.e. the one or more data processing devices,
fundamentally functions.
Ans. 6 ( emphasis added).
C.3 USPTO Revised Guidance Step 2B
Further applying step 2 of the Alice/Mayo analysis, the Examiner
concludes:
The claims require no more than a generic computer to perform
generic computer functions that are well-understood, routine
and conventional activities previously known to the industry.
The gathering, comparing, and evaluating of data is in itself is a
well-known and fundamental computing function, and as such is
not viewed as an improvement to the field.
Final Act. 4 ( emphasis added).
In the case of the instant invention, the Examiner asserts that the
specification lacks any disclosure of evidence to demonstrate that
the invention is seeking to improve upon the technology or, more
specifically, that the claimed invention is directed towards
addressing and improving upon an issue that arose from the
technology, but merely demonstrating that the claimed invention
is directed towards the abstract idea and merely applying or
utilizing generic computing devices performing their generic
functions to carry out the well-understood, routine, and
conventional activities in the technical field of evaluating
damage to a vehicle due to the benefits that computing devices
provided, i.e. faster, more efficient, and etc.
Ans. 9-10 ( emphasis added).
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D. Appellant's§ 1 OJ Arguments
D. l. Step 2A - Prong One
Claim 1 recites, in relevant part, a method including "produc[ing] an
overall repair cost estimate for [an] identified damaged section [ of a
damaged product]." Producing a repair cost estimate for repair services is a
well-known and prevalent economic practice, as admitted by Appellant in
Appellant's Specification:
Damage estimation is commonly required for vehicles that have
been involved in some sort of accident or have otherwise suffered
damage. Damage estimates have historically been prepared by
experienced and skilled personnel such as insurance adjusters,
writers, estimators, or appraisers. The person preparing the
estimation reviews the damage, commonly in person, and
prepares an estimate of the anticipated costs for repair or
replacement based on their own judgment and experience, or
with the aid of a computer program which stores repair cost
information. Once the estimate is produced, the consumer may
take the vehicle to a repair shop where the estimate is used as a
basis for an approved payment to the repair shop in exchange
for the repair of the vehicle.
Spec. 1: 11-19. Thus, like the concept of mitigating settlement risk in Alice,
and the concept of hedging against risk in Bilski v. Kappas, 561 U.S. 593,
611 (2010), the concept of producing a repair cost estimate for repair
services "is a fundamental economic practice long prevalent in our system of
commerce." Alice, 573 U.S. at 216 (citations and internal quotation marks
omitted). Accordingly, we conclude claim 1 recites a fundamental economic
practice, which is one of certain methods of organizing human activity in the
Revised Guidance, and thus, is an abstract idea.
Further, claim 1 additionally recites, in relevant part, "receiving
product identifying information ... , the product identifying information
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identifying a damaged product," "receiving a section input ... , the section
input .. .identifying a damaged section of the damaged product," "retrieving
damage estimate data," and "applying the retrieved damage estimate data to
produce the overall repair cost estimate for the identified damaged section."
The aforementioned elements of claim 1 recite evaluating information in
order to evaluate damage to a product and identify a cost estimate to repair
the damage. Thus, claim 1 also recites an "evaluation," which is also one of
the mental processes in the Revised Guidance, and thus, is also an abstract
idea. 6
To the extent that any of Appellant's arguments assert claim 1 does
not recite an abstract idea, we disagree for the reasons supra. 7
D.2. Step 2A-Prong Two
Also as to claim 1, Appellant contends claim 1 includes "many and
significant limitations in additional to any fundamental economic practice,
mathematical relationship or formula, or the purported abstract idea of
evaluating damage to a vehicle." App. Br. 12. Appellant particularly
contends:
[E]lement ( c) of claim 1 requires causing a grid to be displayed
at a user device along with a representation of the identified
damaged section and a number of predefined damage severity
indicators each indicating a different level of damage and being
6 We do not address the Examiner's finding that claim 1 is directed to a
mathematical equation or formula (see Final Act. 3), as it is not necessary to
reach this issue to resolve the appeal.
7 We do not address the details of any such assertions as they are moot in
light of our ultimate conclusion, as described infra in the next section, that
claim 1 integrates the abstract idea into a practical application, and thus, is
not directed to the abstract idea.
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associated with a predefined representation of that respective
level of damage. The method then includes at element ( d)
receiving one or more damage severity level inputs each
including a damage severity indicator selected from the
displayed predefined damage severity indicators. Element ( e) of
claim 1 then requires retrieving damage estimate data from a
storage device for each respective damage severity level input.
This retrieved damage estimate data is specified at least in part
by (i) the respective grid segment and by (ii) the user-selected
damage severity indicator. These limitations are more than any
fundamental economic practice, mathematical relationship, or
evaluating damage to a vehicle[.]
App. Br. 12-13 (emphasis added).
Appellant's argument is persuasive. Claim 1 recites, in relevant part:
( c) under control of [a] system of one or more data processing
devices ... causing a grid to be displayed at fa] user device
along with a representation of the identified damaged section,
the grid defining a number of grid segments with each grid
segment located over a respective portion of the representation
of the identified damaged section, the grid and representation
of the identified damaged section being displayed together with
a number of predefined damage severity indicators, each of the
number of predefined damage severity indicators indicating a
different level of damage and being associated with a predefined
representation of that respective level of damage;
( d) receiving a respective damage severity level input from the
user device for each of the grid segments encompassing damage
which is to be considered in an overall repair cost estimate for
the identified damaged section, each respective damage severity
level input being received at the system of one or more data
processing devices . . . and including a user-selected damage
severity indicator selected from the number of predefined
damage severity indicators displayed at the user device;
( e) at the system of one or more data processing devices ... , for
each respective damage severity level input, retrieving damage
estimate data from one or more data storage devices, the
retrieved damage estimate data being specified at least in part
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by (i) that respective grid segment and by (ii) the user-selected
damage severity indicator for that respective damage severity
level input; and
(f) at the system of one or more data processing devices ... ,
applying the retrieved damage estimate data to produce the
overall repair cost estimate for the identified damaged section.
App. Br. 24 ( emphasis added). Rather than being directed to the concept of
producing a repair cost estimate for repair services, these elements are
directed to: (1) displaying a representation of an identified damaged section
of a product along with a grid and predefined damage severity indicators,
where each grid segment is located over a respective portion of the identified
damage section, and the grid and representation of the identified damaged
section are displayed together with the predefined damage severity
indicators; (2) receiving user-selected input related to the displayed
predefined damage severity indicators corresponding to a displayed grid
segment; (3) retrieving damage estimate data from the storage devices that is
specified by the respective grid segment and the user-selected input; and
( 4) applying the retrieved damage estimate data to provide an overall repair
cost estimate. In other words, the additional elements are directed to a
specific graphical representation of the damaged product and assessed
damage that encompass functionalities beyond generally linking the concept
of producing a repair cost estimate for repair services to a general purpose
computer. Accordingly, we conclude that these additional elements impose
meaningful limits that integrate the abstract idea into a practical application.
We, therefore, also conclude that claim 1 is not directed to an abstract idea.
Because we conclude that claim 1 integrates the abstract idea into a
practical application, and thus, is not directed to the abstract idea, we do not
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need to proceed to Step 2B of the Revised Guidance. Therefore, we are
persuaded the Examiner erred in finding claim 1 recites patent-ineligible
subject matter. Accordingly, we do not sustain the rejection of claim 1
under 35 U.S.C. § 101.
E. Section 103 Case Law
The mere existence of differences between the prior art and the claim
does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219,
230 (1976). Instead, the relevant question is "whether the difference
between the prior art and the subject matter in question is a [difference]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art." Dann, 425 U.S. at 228 (internal quotations and citations
omitted). Indeed, the Supreme Court made clear that when considering
obviousness, "the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
Further, it is well settled that "a determination of obviousness based
on teachings from multiple references does not require an actual, physical
substitution of elements." In re Mouttet, 686 F. 3d 1322, 1332 (Fed. Cir.
2012) (citations omitted). Nor is the test for obviousness whether a
secondary reference's features can be bodily incorporated into the structure
of the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art. Id.
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Additionally, non-functional descriptive material is generally not
given patentable weight when determining patentability of an invention over
the prior art. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). The PTO
may not disregard claim limitations comprised of printed matter. See
Gulack, 703 F.2d at 1384; see also Diamond v. Diehr, 450 U.S. 175, 191
(1981 ). However, the Examiner need not give patentable weight to
descriptive material absent a new and unobvious functional relationship
between the descriptive material and the substrate. See In re Lowry, 32 F.3d
1579, 1583-84 (Fed Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
2004). See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative) ("[N]onfunctional descriptive material cannot lend
patentability to an invention that would have otherwise been anticipated by
the prior art."), ajfd, 191 Fed.Appx. 959 (Fed. Cir. 2006) (Rule 36); Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) informative)
("Nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious."), ajfd, No. 06-1003 (Fed. Cir.
Jun. 12, 2006) (Rule 36). Non-functional descriptive material refers to the
content of data that does not exhibit a functional interrelationship with a
substrate and does not affect the way a computing process is performed. See
MPEP § 2106.01. An expanded panel of the Board held that descriptive
material that does not "functionally affect the [ claimed] process" is non-
functional material. Ex parte Nehls, 88 USPQ2d 1883, 1887 (BPAI 2008)
(precedential).
F. Appellant's§ 103 Arguments
F.l. Claim 1
Regarding claim 1, the Examiner found:
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In sum, Holden discloses a method, system, and computer
program for determining cost estimation of a damaged vehicle
based on comparing two images, one of the damaged vehicle
with that of the same, but undamaged vehicle. A grid system is
placed on top of each of the images to determine any differences
in the respective images based on any differences in the grids.
Then, a cost estimation is made based on the differences in the
grid. The only difference between Holden and the claimed
invention is that Holden does not discloses a predefined severity
indicator or receiving a damage severity level input from the
user, while using both the grid and the damage severity
indicator to determine the damage estimate.
Final Act. 8 ( emphasis added). The Examiner further found that Xu "is
directed to an integrated process and system for cosmetic vehicle repair,"
where Xu teaches "obtaining individual damage data of [cosmetic defects],"
and further teaches "entering the individual damage data into computing
device," where the damage data "[refers] to visible defects of a vehicle body,
including coat and paint defects, dents of a vehicle body, vehicle exterior
surface damages, etc.," and where these defects "are damage severity level
indicators because they indicate the severity of damage." Final Act. 9-10.
The Examiner further found Xu teaches that "descriptive data on the size of
the defect or type of defect, such as dent, can be entered into the portable
computing device by tapping the corresponding areae of the diagram." Final
Act. 10. According to the Examiner, "it would have been obvious to a
person having ordinary skill in the art at the time of the invention to modify
the system and method of Holden to include the above-mentioned
limitations of Xu to allow for a repairman to accurately determine the cost of
a repair." Id.
Appellant raises the following argument in contending that the
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Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a):
Appellant respectfully submits that the rejections in view of
Holden and Xu are in error because the two references apply
fundamentally incompatible processes, and thus there was no
apparent reason to combine the references as proposed in the
OA. In particular, Holden discloses a system in which damage
repair estimates are generated based on a comparison of an
image/model of a damaged vehicle and an image/model of the
undamaged vehicle to identify differences between the two
images/models which indicate damage. Holden discloses using a
grid with the images of the vehicle to facilitate a comparison of
images and identify a level of damage based on the presence or
absence of portions of the vehicle in a given grid section. On the
other hand, Xu discloses a system for repairing cosmetic damage
to vehicles and relies on entry of "[descriptive] data on the
damage of the coating" . . . . The notion of receiving a damage
severity level input of any type from a user device on a grid
segment by grid segment basis ( as required at element ( d) of
claim 1 for example) is foreign to both Holden and Xu. Also,
considering that Holden operates on an image comparison basis,
there would be no reason in the Holden system to receive user-
supplied damage information as disclosed in Xu, and certainly
not such information on a per grid segment basis.
Also, the Holden system employs the disclosed grid simply as a
tool in the comparison of images of a damaged and undamaged
vehicle, while the grid in the present claims is displayed for the
purpose of associating user-entered damage information with a
particular location on the product. Thus the rejections in view of
the combination of Holden and Xu are based on applying the
grid disclosed in Holden in a completely different way from that
reference.
App. Br. 16-17 (Appellant's citations omitted; panel emphasis added).
We are not persuaded by this argument. Both Holden and Xu teach
systems that assess damage to a vehicle and determine a cost estimate for
repairing the damage based on the assessed damage, where Holden's system
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compares a display of an image of the damaged vehicle depicted within a
grid with a display of an image of an undamaged vehicle also depicted
within the grid, and where Xu's system receives user-input descriptive data
of the damage of a vehicle, where the input is received via user-selected
indicators depicted over a displayed diagram of the vehicle. See Final
Act. 5-10 (citing Holden ,i,i 53, 55-56, 63, 69, 77-78; Xu ,i,i 11-12, 47,
115). Rather than teaching incompatible processes as argued by Appellant,
Holden and Xu teach similar processes of determining a cost estimate for
repairing damage to a vehicle, where the two similar processes are based on
two different types of damage data (i.e., image data superimposed on a grid
at taught by Holden and user-input data received via indicators as taught by
Xu). However, consistent with the Examiner's findings, a person of
ordinary skill in the art would be motivated to modify the system in Holden
to use the user-input data taught by Xu in addition to the image data and the
grid taught by Holden, as the system could use both types of data in order to
arrive at a more accurate estimate of damage. See Final Act. 1 O; see also
Ans. 15. Further, we are not persuaded by Appellant's argument that the
combination of Holden and Xu is based on applying the grid disclosed in
Holden in a way that is completely different from the way the grid is applied
as taught by Holden. Even assuming arguendo that Appellant is correct,
claim 1 merely requires the display of a grid including grid segments, which,
as the Examiner found, is taught by Holden. See Final Act. 6 ( citing Holden
,i,i 53, 77).
Regarding claim 1, the Examiner also found, while neither reference
teaches displaying the grid and representation of the identified damaged
section together with a number of predefined damage severity indicators, the
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representation of the severity indicators together with the grid represents
non-functional descriptive material that does not impart a patentable
distinction to the claim. See Final Act. 10-11. In response to this finding,
Appellant also raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a):
[T]he claim requirement that the predefined damage severity
indicators and grid are displayed together is clearly a functional
requirement because it is that arrangement which allows
receiving the damage severity level input on a grid segment by
segment basis. Appellant therefore respectfully submits that the
limitations in the claims regarding the display of the grid and
predefined damage severity indicators are limitations that must
be considered in the obviousness analysis and inf act serve to
distinguish the claims from the cited art ( that is, the cited art
which the Final Office Action concedes does not disclose the
limitations).
App. Br. 18-19 (Appellant's emphasis omitted; panel emphasis added).
We are not persuaded by this argument either. We agree with the
Examiner that the display of the grid and representation of the identified
damaged section together with the predefined damage severity indicators
does not change the functionality of the functional steps of claim 1. See
Ans. 18. Thus, we agree with the Examiner that the element "the grid and
representation of the identified damaged section being displayed together
with a number of predefined damage severity indicators," as recited in claim
1, is non-functional descriptive material that does not patentably distinguish
the claim from the cited prior art.
Accordingly, Appellant has not shown the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a).
F.2. Claim 2
Claim 2 recites "wherein the number of predefined damage severity
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indicators includes at least three predefined damage severity indicators."
App. Br. 25. In arguing that claim 2 is patentable, Appellant relies upon its
previous argument regarding claim 1 (i.e., that the combination of Holden
and Xu fails to teach or suggest damage severity indicators displayed
together with a grid and predefined representation of the respective level of
damage). See App. Br. 19. This argument is not persuasive for the reasons
previously discussed regarding claim 1. Accordingly, Appellant has not
shown the Examiner erred in rejecting claim 2 under 35 U.S.C. § 103(a).
F.3. Claim 4
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 4 under 35 U.S.C. § 103(a):
[Claims 4, 11, and 17] require that the sectional representation
comprises a representation of the entire product divided into the
number of different sections which are separately selectable, and
further require that the section input indicates a respective
section selected from the sectional representation. Furthermore,
in order to meet the limitations of these claims, the prior art must
show that different sections are displayed and are separately
selectable. Simply displaying a section of a vehicle on a display
screen does not make that section or any other section
selectable. Neither Holden nor the other references of record
teach or suggest the 2 divided section representation required
by claims 4, 11, and 17 as amended (and illustrated for 3
example in Appellant's FIGS. 5 and 6 at ref no. 501).
App. Br. 20-21 ( emphasis added); see also Reply Br. 6-7.
We are not persuaded by this argument. As found by the Examiner,
Holden discloses a system that assesses damage to a vehicle where damage
estimations take into account the make and model of a given vehicle, and
further discloses that the system displays front and side views of the vehicle.
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See Final Act. 12-13 ( citing Holden ,i,i 56, 78). Thus, Holden teaches
"causing a product sectional representation to be displayed at the user device
based on the received product identifying information, the product sectional
representation comprising a sectional representation specific to the particular
model of product indicated by the received product identifying information
and including a representation of the entire product identified by the product
identifying information divided into a number of different sections of the
product," as recited in claim 4.
As further found by the Examiner, Xu discloses a system that assesses
damage to a vehicle, where the system displays a diagram of the vehicle for
document locations and other descriptions of those defects and damages.
See Final Act. 10, 15 ( citing Xu ,i 115). As illustrated in Figures 6A and 6B
of Xu, reproduced below in annotated format, diagrams representing
different sections of the vehicle can be selected using a portable computing
device that the diagrams are displayed within:
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FIG .. 6A
FlG. 68
Figure 6A depicts a display of an exterior diagram representing the
body style of a vehicle, and Figure 6B depicts a display of an interior
diagram representing the interior layout of the vehicle. See Xu ,i 115. As
annotated above with corresponding arrows, the portable computing device
displays a user-selection interface that allows a user to select a diagram
representing a section of the vehicle to be displayed within the portable
computing device. See Xu at Figs. 6A, 6B. Thus, Xu teaches "causing a
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product sectional representation to be displayed at the user device based on
the received product identifying information ... the product identifying
information divided into a number of different sections of the product where
each of the sections is separately selectable through the user device, and
wherein the section input indicates a respective section selected from the
sectional representation," as recited in claim 4.
Therefore, we agree with the Examiner's finding that "causing a
product sectional representation to be displayed at the user device based on
the received product identifying information, the product sectional
representation comprising a sectional representation specific to the particular
model of product indicated by the received product identifying information
and including a representation of the entire product identified by the product
identifying information divided into a number of different sections of the
product where each of the sections is separately selectable through the user
device, and wherein the section input indicates a respective section selected
from the sectional representation," as recited in claim 4, would have been
obvious to one of ordinary skill in the art in light of the combination of
Holden and Xu. Accordingly, Appellant has not shown the Examiner erred
in rejecting claim 4 under 35 U.S.C. § 103(a).
F.4. Claim 5
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 5 under 35 U.S.C. § 103(a):
[Nothing] in Holden, including paragraph 0053, suggests or
discloses the outline matching the peripheral shape of the
representation of the identified damaged section as set out in
claims 5, 12, and 18. Fig. 8 of Holden shows an image of a
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damaged vehicle on a grid, but does not disclose or suggest
providing an outline for the grid to which the representation of
the product is to be sized . ... Appellant maintains that [] Holden
does not teach or suggest the limitations set out in claims 5, 12,
and 18, and the fact that Holden simply discloses an image of
the damaged vehicle and a grid is entirely immaterial to the
limitations of claims 5, 12, and 18, and to Appellant's argument.
App. Br. 21 (Appellant's emphasis and citations omitted; panel emphasis
added).
We are persuaded by this argument. Although we agree with the
Examiner that Holden teaches a grid and further teaches altering a relative
size of an image of a damaged vehicle (see Final Act. 14-15 ( citing Holden
,-J,-J53-54)), we agree with Appellant that Holden fails to teach or suggest
"causing the user device to display an outline for the grid, the outline for
the grid . .. matching a peripheral shape of the representation of the
identified damaged section" and "prompting the user to use the sizing and
alignment interface to size and align the photograph to the outline for the
grid," as recited in claim 5. Further, the Examiner has not shown, on this
record, that Xu cures the deficiencies of Holden.
Accordingly, Appellant has shown the Examiner erred in rejecting
claim 5 under 35 U.S.C. § 103(a).
F.5. Claim 8
As characterized by Appellant, claim 8 "include[ s] limitations similar
to those set out in [independent claim l], but [is] directed to the invention as
applied to additional damages sections of the damaged product." App.
Br. 22. Accordingly, in arguing the patentability of claim 8, Appellant relies
upon its previous argument regarding claim 1. See id. This argument is not
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persuasive for the reasons previously discussed regarding claim 1.
Accordingly, Appellant has not shown the Examiner erred in rejecting claim
8 under 35 U.S.C. § 103(a).
F .6. Claim 22
Claim 22 recites "causing the user device to display an inquiry for
additional information in response to the user-selected damage severity
indicator for a respective damage severity level input." Appellant argues
that "paragraph [30] of Xu refers to a selection of repairs to be made and
does not suggest displaying anything in response [to] the user-selected
damage severity indicator for a respective damage severity level input."
App. Br. 22. We are not persuaded by this argument. We agree with the
Examiner that paragraph 30 of Xu discloses displaying a repair selection
question. See Final Act. 16-17 (citing Xu ,-J []30); see also Ans. 20. As
previously discussed with respect to claim 1, Xu further discloses user-
selected indicators depicted over a displayed diagram of a vehicle that
receives damage data. See Xu ,-J 115. In light of Xu's disclosure, we agree
with the Examiner that "causing the user device to display an inquiry for
additional information in response to the user-selected damage severity
indicator for a respective damage severity level input," as recited in claim
22, would have been obvious to one of ordinary skill in the art in light of the
combination of Holden and Xu.
Accordingly, Appellant has not shown the Examiner erred in rejecting
claim 22 under 35 U.S.C. § 103(a).
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CONCLUSIONS
(1) The Examiner erred in rejecting claims 1-6, 8-13, 15-18, and 20-
23 under 35 U.S.C. § 101.
(2) The Examiner has not erred in rejecting claims 1-4, 6, 8-11, 13,
15-17, and 20-23 under 35 U.S.C. § 103(a).
(3) The Examiner has erred in rejecting claims 5, 12, and 18 under
35 U.S.C. § 103(a).
(4) Claims 1-4, 6, 8-11, 13, 15-17, and 20-23 are not patentable.
(5) On this record, claims 5, 12, and 18 have not been shown to be
unpatentable.
DECISION
We reverse the Examiner's rejections of claims 1-6, 8-13, 15-18, and
20-23 under 35 U.S.C. § 101.
We affirm the Examiner's rejections of claims 1-4, 6, 8-11, 13, 15-
17, and 20-23 under 35 U.S.C. § 103(a).
We reverse the Examiner's rejections of claims 5, 12, and 18 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED-IN-PART
26