Ex Parte Van Wiemeersch et al

Patent Trial and Appeal Board

Sep 17, 2018

13670527 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/670,527 11/07/2012
28395 7590 09/19/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
John Robert Van Wiemeersch
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.
83250712 5740
EXAMINER
EPSTEIN, BRIAN M
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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 TANYA SALYERS
Appeal2017-006063
Application 13/670,527 1
Technology Center 3600
Before MEREDITH C. PETRA VICK, KAL YANK. DESHPANDE, and
RAMA G. ELLURU, Administrative Patent Judges.
ELLURU, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 7, 18, and 27-292. We have
jurisdiction under § 6(b ).
We AFFIRM.
1 According to the Appeal Brief, the real party in interest is Ford Global
Technologies, LLC. App. Br. 2.
2 Claims 1---6, 8-17, and 19-26 have been cancelled. App. Br. 13-14.
Appeal2017-006063
Application 13/670,527
SUBJECT MATTER ON APPEAL
The invention "relates to a system and method for an automotive
wireless communication and monitoring system to enable a vehicle loaning
microbusiness." Spec. ,r 23• One embodiment describes "a vehicle
communication system comprising a processor in communication with a
data storage device, storing data applicable to a vehicle rental event." Id.
,r 8. "During the rental event, the processor is operable to detect a selection
of vehicle parameters to monitor and control, and in response to the selection
of these selected parameters, to output at least some of the data pertinent to
the vehicle rental event corresponding to the selected parameters." Id.
Claims 7 and 18 are the independent claims on appeal. Independent
claim 7, reproduced below, is illustrative of the claimed subject matter:
7. A system comprising:
a processor programmed to:
receive an owner-defined vehicle load-weight limit set as
part of a rental agreement;
determine that a rental period for a vehicle, defined by the
rental agreement, has begun;
impose the load-weight limit responsive to the beginning
of the rental period;
monitor the load-weight limit until the processor
determines that the rental period has ended; and
impose vehicle use-restrictions if the load-weight limit is
exceeded.
3 We make reference to the Specification ("Spec.," filed Nov. 7, 2012),
Appeal Brief ("App. Br.," filed Dec. 5, 2016), and Reply Brief ("Reply Br.,"
filed Feb. 28, 2017), as well as the Examiner's Answer ("Ans.," mailed Dec.
29, 2016) and Final Office Action ("Final Act.," mailed Aug. 19, 2016).
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REJECTIONS
Claims 7, 18, and 27-29 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 5.
Claims 7, 18, and 27-29 stand rejected under 35 U.S.C. § 103 as
having been obvious over the combination of Rector et al. (US
2011/0137520 Al; June 9, 2011) ("Rector") in view of Sorrells et al. (US
6,721,680 B2; Apr. 13, 2004) ("Sorrells"). Final Act. 8.
ISSUES
First Issue: Has the Examiner erred in rejecting the claims under
35 U.S.C. § 101 as being directed to ineligible subject matter?
Second Issue: Has the Examiner erred in rejecting the claims under
35 U.S.C. § 103 over a combination of Rector and Sorrells?
ANALYSIS
First Issue
AppeHant argues claims 7, 18, and 27-29 as a group. App. Br. 5-1 O;
Reply Br. 2----5. \Ne select independent claim 7 as representative. The
remaining claims of the group stand or fall with independent claim 7.
37 C.F.R. § 4I.37(c)(l)(iv).
As an initial matter, Appellant argues that the Examiner erred by not
using the "streamlined eligibility analysis." App. Br. 5, 6-7; Reply Br. 4.
Appellant also argues that the claims do not tie up the identified judicial
exception so that others cannot practice it, and thus, the claims are patent
eligible. App. Br. 7-8. Further, according to Appellant, "the Federal Circuit
never said 'preemption is not the test.'" Id. at 6.
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The Office's 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). As such, the Office's guidance
does not require a streamlined eligibility analysis, but rather states that the
streamlined analysis can be used. See rvianual of Patent Examining
Procedure ("rv1PEP") § 2106(1Il) ("[I]fthe examiner is uncertain about
whether a streamlined analysis is appropriate, the examiner is encouraged to
conduct a full eligibility analysis"). l\1oreover, although preemption may be
the concern driving the exclusion of abstract ideas from patent-eligible
subject matter, preemption is not the test for eligibility. "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." Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citation
omitted). In addition, as the Appellant recognizes, "'just because the
defendant can provide an example of a broader abstract concept not pre-
empted, does not mean that these claims are not abstract with regards to the
narrower concept."' App. Br. 6; see Fairwarning IP, LLC v. Iatric Systems,
Inc., No. 15-1985 (Fed. Cir. 2016) ("the absence of complete preemption
does not demonstrate patent eligibility."). Accordingly, we consider
Appellant's arguments under the two-step analysis for determining patent-
eligibility under § 101.
To "distinguish[] patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
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applications of those concepts," the Supreme Court has provided a two-step
framework. Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355
(2014). The first step considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea. Id. ( citing Mayo, 132 S. Ct.
at 1296-97). If so, the second step then considers whether the claim recites
an inventive concept-an element or combination of elements sufficient to
ensure the claim amounts to significantly more than the abstract idea and
transform the nature of the claim into a patent-eligible application. Id.
(citing Mayo, 132 S. Ct. at 1294, 1297-98).
The Examiner determines that claim 7 is directed to "'the abstract idea
of rental vehicle use monitoring."' Final Act. 5; Ans. 2. The Examiner
notes that claim 7 recites functions ( e.g., "receive," "determine," "impose,"
"monitor") that describe rental vehicle use monitoring, "an idea regarding
comparing new and stored information and using rules to identify options
('an idea of itself) similar to Smartgene." Final Act. 5.
Under the first step of the Alice analysis, Appellant argues that the
Examiner erred by citing to Smartgene because it is a non-precedential
opinion. App. Br. 5; Reply Br. 3--4. As the Examiner notes, however, an
Examiner may rely upon non-precedential decisions if the facts of the
application under examination uniquely match the facts at issue in the non-
precedential decision. Ans. 3 (referring to Recent Subject Matter Eligibility
Decisions4, 4); see also MPEP § 2106.07(a)(I). Here, the Examiner
appropriately applied Smartgene for that reasons----claim 7 "receives owner
defined vehicle load weight limits (stored information), determines that a
4 available at https://www.uspto.gov/sites/default/files/documents/McRo-
Bascom-Memo.pdf.
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Application 13/670,527
rental period has begun and monitors the load weight limit (new
information), and imposes load weight limits and vehicle use restrictions
( compare the new and stored information and uses rules to identify
options)." See Ans. 3. Appellant's attempt to distinguish the Smartgene
claims from claim 7 are unavailing. See Reply Br. 2-3. We recognize that
there are differences in the claims, but the differences do not distinguish
claim 7 from the Smartgene claims for patent eligibility purposes.
Furthermore, contrary to Appellant's argument (id. at 9-10), the Examiner
did analogize claim 7 to actual judicial decisions, as discussed above. See
also Ans. 5---6 ( citing Vehicle Intelligence & Safety LLC v. Mercedes-Benz
USA, LLC, 635 F. App'x No. (Fed. Cir. 2015), cert. denied, 136 S. Ct. 2390
(2016)).
Appellant next argues that "load weight monitoring" is not a long
standing practice, and thus, the Examiner erred in finding that the claimed
method is merely a computerized method of performing this long standing
practice. App. Br. 6, 8-9; see Reply Br. 4--5. Appellant asserts "Applicant
does not even know how one would 'monitor weight limits' as a 'standard
practice' in a way that does not involve computers, let alone impose use
restrictions." Id. at 6. However, monitoring and imposing vehicle use
parameters and restrictions is a long standing practice. Ans. 5 ("For
example, any new driver driving with a parent setting limits and monitoring
those limits when driving a family vehicle has experienced the claimed
abstract concept."). That claim 7 narrows that idea to "load monitoring"
does not alter the abstract nature of the claim, as discussed above.
Furthermore, Appellant's argument that claim 7 requires a computer to
"monitor a weight limit" (Reply Br. 5) is unavailing because the use of
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Application 13/670,527
computers, in and of itself, does not does not preclude a determination that
the claim is directed to an abstract idea. See, e.g., In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) ("[N]ot every claim that
recites concrete, tangible components escapes the reach of the abstract-idea
inquiry" ( citations omitted)).
Under the second step of Alice, the Examiner determines that
[t]he claims do not include additional elements that are sufficient
to amount to significantly more than the abstract idea because the
processor as recited is a generic computer component that
performs functions (i.e.[,] receiving load limit data, determining
rental period starting times, imposing load limits, monitoring
load limits, and imposing vehicle use restrictions of claim 7) that
are generic computer functions that are well-understood, routine,
and conventional activities previously known to the industry.
Final Act. 6. With respect to the second step, Appellant acknowledges that
"'processing data'" is a generic computer function, but contends that claim 7
recites more than generic and routine computer functions. App. Br. 8-9.
We disagree.
As the Examiner determines, the claims "impose vehicle user
restrictions," an abstract idea, and the claimed "processor" is programmed to
perform the abstract idea, and is a "generic computer component" that
performs a "generic computer function." Ans. 5. Claim 7 does not claim
"any specific implementation" of the claimed functions ( e.g., "impose").
Id. Rather, claim 7 requires that the processor impose vehicle use
restrictions and store the recognition, which are generic computer functions
of processing and storing data. Id. The specification describes the processor
as being generic and performing generic functions. See, e.g., Spec. ,r,r 22-23
( describing the processor as allowing "processing of commands and
routines," "connected" to storage, and "[t]he processor is also provided with
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Application 13/670,527
a number of different inputs allowing the user to interface with the
processor."). Furthermore, Appellant's reliance on Enfzsh and allegation
that "the claims provide an improvement in the field of vehicle rental use
compliance, namely, allowing for the monitoring of specified weight limits
and the imposition of use-restrictions when those weight limits are
exceeded" are unavailing. See App. Br. 8, 10; Reply Br. 4--5. As the
Examiner finds, claim 7 does not provide an improvement to computers or
computer technology, a computer solution to a computer problem, or an
improvement to another technology or technical field. Ans. 6.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's determination that independent claim 7 is patent-ineligible.
Accordingly, we sustain the rejection of independent claim 7 under
35 U.S.C. § 101, with claims 18 and 27-29 falling therewith.
Second Issue
Appellant argues claims 7, 18, and 27-29 as a group. App. Br. 24-30;
Reply Br. 10-13. \Ve select independent claim 7 as representative. The
remaining claims of the group stand or faH with independent claim 7.
37 C.F.R. § 4I.37(c)(l)(iv). Claim 7 was rejected over the combination of
Rector and Sorrells. Final Act. 8.
Claim 7 recites "determine that a rental period for a vehicle, defined
by the rental agreement, has begun" ( emphasis added). We agree with the
Examiner's interpretation of the recited "rental period" of claim 7, under the
broadest reasonable interpretation, to include "the time [when] the
borrowing child/employee of[] Rector is driving." Ans. 6. As the Examiner
notes that nothing in claim 7 suggests the claim is necessarily driver
agnostic. Id. at 7.
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Application 13/670,527
Appellant responds that "rental period" is "defined based on timing,"
as understood by skilled artisans. Reply Br. 6. The Specification, however,
does not support Appellant's position. For example, the Specification refers
to a "rental event," without limiting "rental event" to a date and time or
precluding "rental period" to include the time when a certain driver is
driving. See Spec. ,r 8; see also id. ,r 45 (describing a key ignition devices
that provides a driver status signal indicating, for example, that the drive is a
temporary user, teenager, employee, etc. and restricts vehicle functionality
based on the driver); ,r 75 ("Once the Temporary User initiates the rental
event, the system detects a rental time start at step 706").
The Examiner finds that Rector teaches the claimed "determine that a
rental period for a vehicle, defined by the rental agreement, has begun."
Final Act. 8 (citing Rector ,r,r 31-32, 40, 43). Specifically, the Examiner
finds that "Rector teaches the smart vehicle determines the borrowing
child/employee is about to use the vehicle upon vehicle entry/start." Id. The
Examiner further finds that Rector teaches imposing vehicle restrictions
( e.g., maximum allowed speed) when a certain driver ( e.g., child) is driving.
Id. (citing (Rector ,r,r 31-32 ("When smart vehicle 100 determines that the
child is driving, smart vehicle 100 limits the maximum speed that smart
vehicle 100 will travel.") (bolding omitted)).
Appellant disagrees that Rector teaches this limitation. Appellant
argues that "[ w ]hat Rector teaches is that the vehicle identifies a driver
[0030] and then imposes the restrictions associated with [] the driver." App.
Br. 10. According to Appellant, claim 7 imposes a restriction (weight limit)
''for a time period, beginning a[t] the beginning of a rental period," whereas
in Rector, "switching drivers switches the restrictions." Id. at 10-11.
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Appellant asserts that claim 7 is "driver agnostic and relates to a rental
period, not who is driving the vehicle." Id. at 11. We are not persuaded. As
discussed above, Applicant's interpretation of "rental period" is not
supported. In addition, that Rector might require additional technology to
identify the driver does not take away from the teaching of imposing
restriction when a certain driver is driving. See Reply Br. 6.
Accordingly, in view of the foregoing, Appellant does not apprise us
of error in the Examiner's determination that independent claim 7 is
unpatentable. Accordingly, we sustain the rejection of independent claim 7
under 35 U.S.C. § 103, with claims 18 and 27-29 falling therewith.
DECISION
The Examiner's decision to reject claims 7, 18, and 27-29 under 35
U.S.C. § 101 is affirmed.
The Examiner's decision to reject claims 7, 18, and 27-29 under 35
U.S.C. § 103 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
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