Ex Parte Skaff et al

Patent Trial and Appeal Board

Jun 25, 2018

12985470 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/985,470 01/06/2011
28395 7590 06/27/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Ryan Skaff
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.
83163116 4405
EXAMINER
HILGENDORF, DALE W
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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 RY AN SKAFF,
DEREK HARTL,
PAUL ALDIGHIERE,
JEFFREY ALLEN GREENBERG,
DAVIDL. WATSON,
DALE GILMAN,
CRAIG SANDVIG,
LESLIE BODNAR,
LEANN KRIDNER, and
ANGELAL. WATSON
Appeal2016-002881
Application 12/985,470 1
Technology Center 3600
Before HUBERT C. LORIN, JAMES A. WORTH and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ryan Skaff, et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 1, 4---6, 9, 10, 13-19, 21, and 22.
1 The Appellants identify Ford Global Technologies, LLC as the real party in
interest. App. Br. 2.
Appeal2016-002881
Application 12/985,470
Claims 14--19 and 21 were withdrawn from consideration. Final Rej. 2. We
have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We REVERSE but enter a NEW GROUND OF REJECTION.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method comprising:
calculating a maximum remaining vehicle travel-range, by a
vehicle-associated computer, based on remaining charge and gasoline;
calculating projected charge and gasoline usage for a predefined
trip;
displaying a gauge including both charge and gasoline
remaining-range, displayed as independent components of a single
gauge; and
displaying an indicator on the single gauge, visually indicating
the projected charge and gasoline usage as portions of displayed
charge or gasoline remaining-range.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Yasuda
Hershkovitz
Mizutani
Gutman
US 2005/0049779 Al
US 2010/0094496 Al
US 2010/0194553 Al
US 2012/0173134 Al
2
Mar. 3, 2005
Apr. 15, 2010
Aug. 5, 2010
July 5, 2012
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Application 12/985,470
The following rejections are before us for review:
1. Claims 1, 4---6 and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mizutani and Gutman.
2. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mizutani, Gutman, and Hershkovitz.
3. Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Mizutani, Gutman, and Yasuda
ISSUES
Did the Examiner err in rejecting claims 1, 4---6 and 22 under
35 U.S.C. § 103(a) as being unpatentable over Mizutani and Gutman?
Did the Examiner err in rejecting claims 9 and 10 under 35 U.S.C.
§ 103(a) as being unpatentable over Mizutani, Gutman, and Hershkovitz?
Did the Examiner err in rejecting claim 13 under 35 U.S.C. § 103(a)
as being unpatentable over Mizutani, Gutman, and Yasuda?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1, 4-6 and 22 under 35 USC§ 103(a) as being
unpatentable over Mizutani and Gutman.
The Examiner states that
Mizutani et al do not teach the claimed calculating projected
charge and gasoline usage for a predefined trip and the claimed
displaying an indicator on the single gauge to visually indicate the
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projected charge and gasoline usage as portions of displayed charge or
gasoline remaining range.
Final Rej. 5.
The Examiner argues that "Gutman [instead] teaches the claimed
calculating projected charge and gasoline usage for a predefined trip." Final
Rej. 5 (emphasis added). The Examiner explains that Gutman discloses
"The navigation system 100 can calculate an estimated resource level
310. The estimated resource level 310 is defined as the estimation of
the amount of resource remaining when the vehicle reaches one of the
intermediate stops 210, the replenishment locations 218, the
destination 206, or the combination thereof." P[O 101] and "The
navigation system 100 can calculate an estimated fuel level 312. The
estimated fuel level 312 is defined as the estimation for the amount of
fuel remaining when the vehicle reaches one of the intermediate stops
210, the replenishment locations 218, the destination 206, or the
combination thereof." P[0103] See Figure 3 reference numbers 310
and 312. The example 75% fuel level remaining 312 and the 50%
resource remaining 310 are equivalent to the claimed portion of
remaining distance. In the examples, the portion of fuel that is used up
is 25%, and the portion of resource that is used up is 50%, (calculated
to reach the destination).
Final Rej. 5. According to the Examiner, the estimation for the amount of
fuel remaining is "equivalent to the claimed portion of remaining distance."
Final Rej. 5.
While we agree that an amount of remaining fuel could be translated
into a remaining distance that can be travelled on the remaining fuel, that is
not what is claimed. What is claimed is ''projected charge and gasoline
usage," not the projected distance for an amount of fuel. We agree with the
Appellants that "Gutman does not show the amount of projected charge or
gasoline usage as claimed. What Gutman shows is the projected amount of
fuel resources remaining." App. Br. 5. We do not see how one of ordinary
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Application 12/985,470
skill in the art given Gutman's disclosure of an amount of remaining fuel
would be led to "calculat[ e] projected charge and gasoline usage for a
predefined trip" as claimed.
Accordingly, the rejection is not sustained.
The rejection of claims 9 and 10 under 35 US.C. § 103(a) as being
unpatentable over Mizutani, Gutman, and Hershkovitz.
The rejection of claim 13 under 35 US. C. § 103 (a) as being unpatentable
over Mizutani, Gutman, and Yasuda.
These rejections of dependent claims 9, 10, and 13 are not sustained
for the reasons given above in not sustaining the rejection of the independent
claims from which they depend. The Examiner relies on finding that
Gutman discloses "projected charge and gasoline usage". Final Rej. 9-10.
However, it has not been established in the first instance that Gutman in fact
discloses "projected charge and gasoline usage" as claimed.
NEW GROUND OF REJECTION
Claims 1, 4---6, 9, 10, 13, and 22 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
234 7 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under
35 U.S.C. § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
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In that regard, generally-speaking, the claims are directed to
projections; more specifically, determining a vehicle's projected charge and
gasoline usage. We see little difference between what these claims are
directed to and the subject - "a series of mathematical calculations based on
selected information and the presentation of the results of those calculations
(in the plot of a probability distribution function)" - of the claims at issue in
SAP America, Inc. v. InvestPic LLC, 890 F.3d 1016, 1018 (Fed. Cir. 2018).
As in SAP, "[t]he claims in this case are directed to abstract ideas. The focus
of the claims, as is plain from their terms, quoted above, is on selecting
certain information, analyzing it using mathematical techniques, and
reporting or displaying the results of the analysis. That is all abstract." SAP,
890 F.3d at 1021.
Step two is "a search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 US 66, 73 (2012)).
In that regard, the claims do not add an element or combination of
elements sufficient to ensure that the subject matter claimed in practice
amounts to significantly more than to be upon the projection abstract idea
itself. This is so because aside from the "selecting certain information,
analyzing it using mathematical techniques, and reporting or displaying the
results of the analysis" (SAP, 890 F .3d at 1021 ), the claims encompass
adding (a) a conventional "vehicle-associated computer" (claim 1) and (b) a
drawing of "gauge".
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Regarding the vehicle associated computer, claim 4 further limits it to
be "included with a vehicle navigation display installed in the vehicle" and
claim 5 limits it to "a remote personal computer." But the "vehicle-
associated computer" of the claims, even as limited by claims 4 and 5,
covers that which was already widely available at the time of filing. See
Spec., paras. 32 ("any other suitable display") and 33 ("PC"). Cf SAP, 890
F.3dat 1023:
Some of the claims require various databases and processors, which
are in the physical realm of things. But it is clear, from the claims
themselves and the specification, that these limitations require no
improved computer resources InvestPic claims to have invented, just
already available computers, with their already available basic
functions, to use as tools in executing the claimed process.
The claims also include limitations to "displaying a gauge."
However, the gauge is not further limited in any structural way and therefore
reasonably broadly covers any technique for accomplishing that end
("displaying a gauge"). Claims 1 and 22 cover displaying a gauge
containing two values and indicating portions of those values. Cf In re
Bilski, 545 F.3d 943, 965 (Fed. Cir. 2008) ("[A]pplication of [only] human
intelligence to the solution of practical problems is no more than a claim to a
fundamental principle.")
The other dependent claims describe various information processing
schemes which do little to patentably transform the abstract idea. Where
such claims are directed to the same abstract idea, "addressing each claim of
the asserted patents ... [is] unnecessary." Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1348
(Fed. Cir. 2014).
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CONCLUSIONS
The rejection of claims 1, 4--6, and 22 under 35 U.S.C. § 103(a) as
being unpatentable over Mizutani and Gutman is reversed.
The rejection of claims 9 and 10 under 35 U.S.C. § 103(a) as being
unpatentable over Mizutani, Gutman, and Hershkovitz is reversed.
The rejection of claim 13 under 35 U.S.C. § 103(a) as being
unpatentable over Mizutani, Gutman, and Yasuda is reversed.
Claims 1, 4--6, 9, 10, 13, and 22 are newly rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
DECISION
The decision of the Examiner to reject claims 1, 4--6, 9, 10, 13, and 22
is reversed.
Claims 1, 4--6, 9, 10, 13, and 22 are newly rejected.
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NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
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).
REVERSED; 37 C.F.R. § 41.50(b)
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