Ex Parte Skaff et alDownload PDFPatent Trial and Appeal BoardJun 25, 201812985470 (P.T.A.B. Jun. 25, 2018) Copy Citation 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 Appeal2016-002881 Application 12/985,470 Claims 14--19 and 21 were withdrawn from consideration.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 Appeal2016-002881 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 3 Appeal2016-002881 Application 12/985,470 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 4 Appeal2016-002881 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. 5 Appeal2016-002881 Application 12/985,470 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". 6 Appeal2016-002881 Application 12/985,470 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). 7 Appeal2016-002881 Application 12/985,470 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. 8 Appeal2016-002881 Application 12/985,470 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) 9 Copy with citationCopy as parenthetical citation