Ex Parte Theisen et al

Patent Trial and Appeal Board

Oct 31, 2017

13333162 (P.T.A.B. Oct. 31, 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.
13/333,162 12/21/2011 Thomas Theisen 509013 6129
53609 7590 11/02/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
BORISSOV, IGORN
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS THEISEN, ARMIN GAUL, INGO DIEFENBACH,
CHRISTIAN REHTANZ, WILLI HORENKAMP, and
JOHANNES ROLINK
Appeal 2016-0026871
Application 13/333,1622
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
decision to reject claims 1—15 and 17. We have jurisdiction under § 6(b).
We AFFIRM.
1 Our Decision references Appellants’ Specification (“Spec.,” filed Dec. 21,
2011), Appeal Brief (“Appeal Br.,” filed July 7, 2015), and Reply Brief
(“Reply Br.,” filed Jan. 5, 2016), as well as the Examiner’s Final Office
Action (“Final Act.,” mailed Feb. 10, 2015) and Answer (“Ans.,” mailed
Nov. 5,2015).
2 Appellants identify RWE AG as the real party in interest. Appeal Br. 2.
Appeal 2016-002687
Application 13/333,162
SUBJECT MATTER ON APPEAL
The invention “relates to a method, a system and a device for
determining quantities of power, in particular for determining quantities of
power obtained by electric vehicles.” Spec. 12. Claims 1 and 15 are the
independent claims on appeal. Independent claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. Method for determining quantities of energy exchanged
between a vehicle on a vehicle side and a charging station on a
charging station side, comprising:
registering, by a calibrated meter on the vehicle
side, a first quantity of energy exchanged with the charging
station;
sending out, by the calibrated meter on the vehicle
side, information concerning the first quantity of energy;
registering, by a remotely readable meter on the charging
station side, a total quantity of energy formed from the sum of
the first quantity of energy and also a second quantity of energy
made available by the charging station independently of the
vehicle;
determining the second quantity of energy, by the
remotely readable meter, by subtracting the first quantity of
energy received by the vehicle from the total quantity of energy.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Sway-Tin et al. (“Sway-Tin”)
Kempton et al. (“Kempton”)
Pollack et al. (“Pollack”)
Kressner et al. (“Kressner”)
US 5,568,052
US 2007/0282495 Al
US 2009/0043520 Al
US 2009/0062967 Al
Oct. 22, 1996
Dec. 6, 2007
Feb. 12, 2009
Mar. 5, 2009
2
Appeal 2016-002687
Application 13/333,162
REJECTIONS
The Examiner rejects the claims on appeal as follows:
claims 1—15 and 17 under 35 U.S.C. § 101 as non-statutory subject
matter; and
claims 1—15 and 17 under § 103(a) as unpatentable over Kressner,
Kempton, Sway-Tin, and Pollack.
ANALYSIS
Non-Statutory Subject Matter
In rejecting the claims under 35 U.S.C. § 101, the Examiner analyzes
the claims using the two-step framework set forth in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296—97 (2012)
and reiterated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347, 2355 (2014), which, in the first step, considers whether the claims are
directed to a patent-ineligible concept, e.g., an abstract idea, and, if so,
considers, in the second step, whether the claims, individually and as an
ordered combination, recite an inventive concept—an element or
combination of elements sufficient to ensure the claims amount to
significantly more than the abstract idea and transform the nature of the
claims into a patent-eligible concept. Final Act. 2—3; Ans. 4—6. More
specifically, pursuant to the first step, the Examiner finds the claims are
directed to the abstract idea of calculating energy consumed. Final Act. 2.
According to the Examiner, the concept of calculating energy consumed is
similar to the basic concept of manipulating information using mathematical
relationships, e.g., converting numerical representation in Gottschalk v.
Benson, 409 U.S. 63 (1972), which has been held to be an abstract idea.
3
Appeal 2016-002687
Application 13/333,162
Ans. 4. Under the second step, the Examiner finds the claims do not include
additional elements amounting to significantly more than the abstract idea
because the recited hardware is known and conventional and offers no
meaningful limitation beyond generally linking the use of the method to a
particular technological environment. Final Act. 3; Ans. 5, 6. The Examiner
also finds the claim elements, considered separately and as an ordered
combination: do not provide an improvement to another technology or
technical field; do not improve the functioning of the hardware itself; do not
apply the abstract by use of a particular machine; do not effect a
transformation or reduce a particular article to a different state or thing; and
do not add a specific limitation other than what is well-understood, routine,
and conventional in the operation of generic metering devices. Ans. 5.
As an initial matter, we find unpersuasive Appellants’ argument that
the Examiner erred by not assessing whether the claims recite patent-eligible
subject matter under the streamlined eligibility analysis set forth in the
Office’s guidance. Appeal Br. 6—8 (citing 2014 Interim Guidance on Patent
Subject Matter Eligibility, 79 Fed. Reg. 74618, 74622, 74625 (Dec. 16,
2014)); Reply Br. 6—9 (citing July 2015 Update: Subject Matter Eligibility
(July 15, 2015), http://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf). As Appellants point out, the guidance explains that “a
streamlined eligibility analysis can be used for a claim that may or may not
recite a judicial exception but, when viewed as a whole, clearly does not
seek to tie up any judicial exception such that others cannot practice it.”
2014 Interim Guidance, 79 Fed. Reg. at 74625 (emphasis added);
Reply Br. 6. As such, the Office’s guidance does not require a streamlined
eligibility analysis, but rather states that the streamlined analysis can be
4
Appeal 2016-002687
Application 13/333,162
used. Moreover, although preemption may be the concern driving the
exclusion of abstract ideas from patent-eligible subject matter, preemption is
not the test for eligibility. See Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015) (“The Supreme Court has made clear
that the principle of preemption is the basis for the judicial exceptions to
patentability. For this reason, questions on preemption are inherent in and
resolved by the § 101 analysis.” (citation omitted)). Accordingly, we
consider Appellants’ arguments under the two-step analysis for determining
patent-eligibility under § 101.
Appellants argue the Examiner erred in finding that the claimed
calibrated meter and readable meter do nothing more than link the claims to
a particular technological environment because the claimed meters are
specialized componentry used in the context of electrical vehicle charging,
not simply general purpose computers. Appeal Br. 7—8, 10; Reply Br. 8—9,
11. Appellants similarly assert the claims recite significantly more than the
abstract idea because the claimed invention uses a particular machine to
apply the abstract idea, namely a calibrated meter on a vehicle side and a
remotely readable meter on the charging station side. Appeal Br. 9 (citing
Bilski v. Kappos, 130 S. Ct. 3218 (2010)); Reply Br. 11. Appellants’
arguments do not apprise us of error.
Even if we agree with ts that the claimed invention is to
the recited meters so as to satisfy the “machine-or-transformation” test
described in Bilski, the recited meters are insufficient to confer patent-
eligibility. According to the Federal Circuit, “satisfying the machine-or-
transformation test, by itself, is not sufficient to render a claim patent-
eligible, as not all transformations or machine implementations infuse an
5
Appeal 2016-002687
Application 13/333,162
otherwise ineligible claim with an ‘inventive concept.’” DDR Holdings,
LLC v. Hotels.com, 773 F.3d 1245, 1256 (Fed. Cir. 2014). The Federal
Circuit has also made clear that “after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” Id. (citing Alice, 134 S. Ct. at 2358).
Here, although the claimed meters are used in the field of electric
vehicle charging, there is no indication that the claimed meters are
something other than generic computing components. Appellants’
Specification, for example, explains that a programmed microprocessor may
be arranged in the vehicle for measurement purposes and that the disclosed
method steps in the vehicle may be carried out by a computer program
implemented in the microprocessor of the vehicle. Spec, 12,
Furthermore, there is no indication that the meters require something
apart from well-known, routine, and conventional functions to perform the
recited steps. The claims recite that the meters register quantities of energy
and send and receive information. The claims also recite that the remotely
readable meter calculates a quantity of energy from the registered quantities.
Registering quantities of energy is the central function of an energy meter.
Furthermore, sending and receiving data and performing calculations are
basic functions of a computer. As such, we see no error in the Examiner’s
finding that the recited meters simply provide the technological environment
for implementing the abstract idea, which is insufficient to confer patent-
eligibility.
Appellants further argue that the claims amount to significantly more
than the abstract idea because the claimed invention is an improvement in
the technical field of electric vehicle infrastructure. Appeal Br. 9;
6
Appeal 2016-002687
Application 13/333,162
Reply Br. 10. More specifically, Appellants assert that the elements of the
claims, as an ordered combination, present a dual-meter configuration that is
an improvement to charging station arrangements, as well as to the field of
electric vehicles and the related infrastructure. Appeal Br. 10—13;
Reply Br. 11—13. Appellants’ arguments are not persuasive of error.
We agree with Appellants that the claims recite a dual-meter
configuration that allows for the separate billing of power obtained by an
electric vehicle apart from a total quantity of power consumed by a location.
Appeal Br. 12; Reply Br. 13 (both citing Spec. Tflf 9-10). The dual meter
configuration, however, improves the billing for the energy used by electric
vehicles; it does not improve the electric vehicles themselves or the
corresponding infrastructure. Said differently, the claims recite an
improvement to a business practice, i.e., billing, as opposed to an
improvement to a technology or technical field. Accordingly, Appellants do
not apprise us of error in the Examiner’s finding that the claim elements,
individually and as an ordered combination, do not provide an improvement
to another technology or technical field.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s determination that the claims are directed to non-statutory
subject matter. We, therefore, sustain the rejection of claims 1—15 and 17
under 35 U.S.C. § 101.
Obviousness
Appellants assert the Examiner erred in combining the teachings of
Kressner and Kempton. Appeal Br. 13—20; Reply Br. 14—18. For the
reasons discussed below, Appellants’ arguments do not apprise us of error.
7
Appeal 2016-002687
Application 13/333,162
The Examiner finds Kressner discloses monitoring a total amount of
energy consumed by a residence, i.e., a total quantity of energy, and an
amount of energy consumed by an electric vehicle, i.e., a first quantity of
energy, but does not disclose subtracting the first quantity of energy from the
total quantity of energy, as claimed. Final Act. 4—5; Ans. 7. The Examiner
further finds Kempton teaches an accounting arrangement for the energy
consumed and generated by electric vehicles that involves the addition or
subtraction of an amount registered by a mobile-meter on an electric vehicle,
i.e., a first quantity of energy, to an amount registered on a fixed-meter at a
location where the electric vehicle is plugged, i.e., a total quantity of energy.
Final Act. 5; Ans. 7 (both citing Kempton 1151). According to the
Examiner, it would have been obvious to modify the teachings of Kressner
to include Kempton’s teaching of subtracting the first quantity of energy
from the total quantity of energy to allow reconciliation of the fixed-meter
billing. Final Act. 5; Ans. 7 (both citing Kempton 1151).
Appellants argue the Examiner’s reason for combining the teachings
of Kressner and Kempton, i.e., to allow reconciliation of the fixed-meter
billing, lacks rational underpinnings because Kressner does not disclose a
need to reconcile the fixed-meter billing, i.e., the electric bill for the
residence. Appeal Br. 16. According to Appellants, Kressner discloses
charging an electric vehicle at a residence 46, and there is no reason to
believe a resident cares how much of the residence’s electric bill is based on
the electric vehicle versus other usages of electricity. Id. at 15—18;
Reply Br. 14—16. Appellants’ argument is not persuasive of error.
Even if we agree with Appellants that Kressner does not provide a
reason to combine the teachings of Kressner and Kempton, the Examiner is
8
Appeal 2016-002687
Application 13/333,162
not relying on Kressner for that reason. Rather, as set forth above, the
Examiner is relying on Kempton, and Kempton indeed teaches that it is
desirable to reconcile an electric bill for a commercial establishment.
Final Act. 5; Ans. 7; Kempton 1151. A person of ordinary skill in the art
would appreciate that it is similarly desirable to reconcile a residence’s
electric bill when the residence’s electricity is being used by multiple
vehicles. See KSR Inti Co. v. Teleflex Inc., 127 S. Ct. 1727, 1731 (2007)
(“[I]f a technique has been used to improve one device, and a person of
ordinary' skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond that person’s skill.”). Accordingly, the Examiner’s
reason for combining the teachings of Kressner and Kempton, i.e., to allow
reconciliation of the fixed-meter billing, is supported by rational
underpinnings.
Appellants also argue the Examiner’s reason for combining the
teachings of Kressner and Kempton lacks rational underpinnings because
Kressner’s system already solves the problems associated with ensuring
reconciliation for proper billing in the public context. Appeal Br. 18;
Reply Br. 16—17. More specifically, Appellants contend that Kressner’s
embodiment disclosing a public charging facility achieves its billing
functionality through the use of localized computers and readers.
Appeal Br. 18 (citing Kressner, Fig. 13); Reply Br. 16.
The Examiner, however, is not relying on Kressner’s embodiment
involving a public charging facility, which uses only a single meter. Instead,
the Examiner relies on the embodiment involving two meters, namely
meter 60 on the electric vehicle and residential meter 72. Final Act. 4 (citing
9
Appeal 2016-002687
Application 13/333,162
Kressner, Fig. 3). As set forth above, the Examiner has provided a reason
supported by rational underpinnings as to why a person of ordinary skill in
the art would modify the teachings of Kressner to subtract the energy
registered by vehicle meter 60, i.e., a first quantity of energy, from the
energy registered by residential meter 72, i.e., a total quantity of energy, as
taught by Kempton.
Appellants additionally argue the Examiner’s proposed combination
would render Kressner unsatisfactory for its intended purpose.
Appeal Br. 19-20; Reply Br. 17—18. According to Appellants, Kressner
discloses a system that minimizes demand loading on a local distribution
network for electrical power, whereas Kempton teaches a system that
provides information to a client to assist with the determination of pricing
and availability of electrical power. Appeal Br. 19; Reply Br. 18.
Appellants contend Kempton’s price indication may be entirely
contradictory to Kressner’s goals of load management because a favorable
price may motivate a greater system loading, which Kressner’s system seeks
to mitigate or avoid entirely. Appeal Br. 19; Reply Br. 18. Appellants’
argument is not persuasive of error.
Here, the Examiner is not proposing to modify the teachings of
Kressner to include Kempton’s objective of determining pricing and
availability of electrical power. Rather, as set forth above, the Examiner
proposes to modify Kressner’s system to include Kempton’s teaching of
subtracting a first quantity of energy from the total quantity of energy.
Appellants do not explain, and we fail to see, how the Examiner’s proposed
inclusion of Kempton’s subtraction step would render Kressner
unsatisfactory for its intended purpose of load management.
10
Appeal 2016-002687
Application 13/333,162
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s determination that the claimed subject matter is obvious. We,
therefore, sustain the rejection of claims 1—15 and 17 under 35 U.S.C.
§ 103(a).
DECISION
The Examiner’s decision to reject claims 1—15 and 17 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s decision to reject claims 1—15 and 17 under 35 U.S.C.
§ 103(a) is 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). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
11