Ex Parte WHITAKER et al

Patent Trial and Appeal Board

Dec 26, 2018

14858183 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/858,183 09/18/2015
28395 7590 12/28/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Matthew Atwood WHITAKER
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.
83552565 7408
EXAMINER
MOTT, GENNA M
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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
Exparte MATTHEW ATWOOD WHITAKER and
JOSEPH PAUL RORK
Appeal2018-002287
Application 14/858, 183
Technology Center 3600
Before EDWARD A. BROWN, JAMES P. CALVE, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1-5, 9-11, and 13-16. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant is the Applicant, Ford Global Technologies, LLC, which the
Appeal Brief identifies as the real party in interest. Appeal Br. 1.
Appeal2018-002287
Application 14/858, 183
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a method and apparatus for
secure pairing" between a device and a vehicle. Spec. ,r,r 1-2. Claims 1, 10,
and 14 are independent. Claim 1 is reproduced below.
1. A system comprising:
a processor configured to:
receive a pairing request from a mobile device to pair
with a vehicle;
wirelessly identify simultaneous presence of both a first
vehicle key and a second vehicle key; and
approve the request based on the wireless identification.
Appeal Br., Claims App. 1.
THE REJECTIONS
Appellant seeks review of the following rejections on appeal:
1. Claims 1-5, 9-11, and 13-16 under 35 U.S.C. § 101 as directed
to ineligible subject matter.
2. Claims 1-5, 10, 11, 14, and 15 under 35 U.S.C. § 103 as
unpatentable over Kleve (US 2012/0254948 Al, published
Oct. 4, 2012), Harris (US 9,082,295 Bl, issued July 14, 2015),
and Takizawa (US 2010/0148923 Al, published June 17, 2010).
ANALYSIS
1 OJ Rejection
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
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abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
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, 75-77 (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, 134 S. Ct.
at 2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are directed to a patent-ineligible concept, the second step in the
analysis is to consider the elements of the claims "individually and 'as an
ordered combination'" to determine whether there are additional elements
that "'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). In other
words, the second step is to "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."' Id. (brackets in original) (quoting Mayo, 566
U.S. at 72-73).
The Examiner found that the claims are directed to an abstract idea
"similar to concepts that have been identified as abstract by the courts, such
as (i) obtaining and comparing intangible data and/or (ii) comparing new and
stored information and using rules to identify options." Final Act. 5. The
Examiner also found that the claims do not include limitations that amount
to "significantly more" than the abstract idea because when considering the
limitations individually or as an ordered combination, they do not amount to
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more than the abstract idea. Id. at 5---6. More specifically, the Examiner
found that processor limitations in the claims are no more than generic
computer components recited at a high level of generality. Id. ( citing Spec.
,r,r 30, 37). The Examiner further found that the aspect of the claims
requiring the physical presence of keys does not mandate a different
conclusion, because the Examiner "determined that checking for the
presence of an identifying object (a key, fob, RFID tag, etc.) was a known
method of approving or denying access/communication at the time of filing
the application." Id. at 3. The Examiner then referred to the prior art
rejections that we will address below, and found that "[ c ]hecking for the
presence of multiple objects is an obvious extension of this practice and was
also known in the art," and that the claims recite "a series of conventional
steps which, taken individually or in combination, do not provide any
improvement to the technical field." Id.; see also Ans. 4 (finding that "there
is nothing atypical about [ the claimed steps ]-individually or as a
combination").
Appellant does not argue that the Examiner erred in finding that the
claims2 are directed to an abstract idea, or that the limitations when
considered individually fail to amount to "significantly more" than the
abstract idea. See Appeal Br. 4---6. Instead, Appellant confines its argument
regarding the § 101 rejection to whether the claims as a whole amount to
significantly more. See id. In that respect, Appellant contends that the
Examiner failed to properly analyze the claims as a whole, which led the
Examiner to erroneously conclude that the claims were not directed to
2 Appellant does not argue the claims individually, and instead argues the
claims subject to the§ 101 rejection as a group. See Appeal Br. 4--6.
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"something more" than the abstract idea. Id. Appellant relies on Example
35 from the December 2016 Guidelines, and argues that the example
underscores the need to consider the claims as a whole when determining
whether the claims are directed to something more. Id. at 4--5. After
quoting extensively from the example in the Guidelines, Appellant argues
that "when viewed as a whole, the combination results in an atypical
solution to a problem-here, the problem of preventing unauthorized access
to a vehicle system by a mobile device, which is solved in an uncommon and
atypical manner by the combination of steps as recited." Id. at 6 ( emphasis
omitted); see also Reply 2 (arguing that the Examiner continues to
improperly focus on claim limitations individually, rather than as a whole).
Appellant's arguments do not apprise us of error in the Examiner's
§ 101 rejection. As Appellant does not contest the Examiner's finding that
the claims are directed to an abstract idea and that step 1 of the Alice
framework is satisfied, we will therefore not consider that issue here. As to
step 2, Appellant's argument that the Examiner failed to consider the claims
as a whole ignores the express language of the rejection, which states three
separate times that even when considered as a "combination," the claims fail
to amount to significantly more. See Final Act. 3, 5, 6. The Examiner
expands on that analysis in the Answer, but Appellant does not respond to
any of those specific findings in the Reply. See Ans. 4; Reply 1. The
Examiner correctly interprets claim 1 to recite a system that comprises only
a processor that is configured/programmed to perform several steps typically
followed (individually and combined) in an authentication request. Ans. 4.
The Examiner finds that the steps, considered as a combination, do not add
anything additional/further than considering the limitations individually. Id.
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Importantly, Appellant ignores the Examiner's finding that the prior
art also discloses checking for the presence of physical keys, in addition to
the other routine processor limitations, and therefore fails to establish error
in those findings. See Final Act. 3. Appellant relies heavily on an example
from the December 2016 Guidelines in arguing that the claims must be
considered as a whole, but the Examiner acknowledges this requirement
throughout as noted above. To the extent that Appellant argues that the
example requires a conclusion that "something more" is present in the
claims at issue here, we disagree. Appellant provides no analysis of any
particular claim or claim limitation, individually or considering the claim as
a whole, and never quotes any of the relevant claim language in its
argument, even after the Examiner pointed out this problem in the Answer.
See Ans. 4 ("Appellant has provided no arguments or remarks specifying
any particular word or phrase (i.e. meaningful limitation) that, in the
combination with the whole, amounts to 'significantly more."'); Appeal Br.
4---6; Reply 1. Without any analysis of any claim language by Appellant, we
are not apprised of error in the Examiner's finding that the claim limitations,
considered individually and as an ordered combination, fail to provide the
"something more" to render the claims patent eligible.
Because we do not agree with Appellant that the Examiner failed to
consider the claims as a whole, or otherwise erred in finding that the claims
do not recite "something more" than the abstract idea, we sustain the
rejection of claims 1-5, 9-11, and 13-16 under 35 U.S.C. § 101.
103 Rejection
Appellant separately argues independent claims 1 and 10, but does not
separately argue any of the remaining claims subject to the § 103 rejection.
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See Appeal Br. 6-9. We will therefore address claims 1 and 10 in tum
below.
As to claim 1, the Examiner found that Kleve discloses most of the
limitations, including the step of "wirelessly identify simultaneous presence
of both a first vehicle key and a second vehicle key." Final Act. 6-7. The
Examiner found that Kleve discloses an RF module that wirelessly monitors
for the presence of at least two vehicle keys. Id. at 7 ( citing Kleve ,r,r 71,
76). The Examiner further found that Harris discloses the "receive a pairing
request" step, which was the only aspect of claim 1 that Kleve does not
disclose. See id. The Examiner determined that it would have been obvious
to modify "Kleve to grant/ deny a pairing request as taught by Harris ...
since all the claimed elements were known in the prior art and one skilled in
the art could have combined the elements as claimed by known methods ... ,
and the combination would have yielded predictable results." Id.
Appellant argues that Harris only teaches allowing pairing if the key
is inserted in the ignition, an active step taken by a user, which functions
differently than the claimed, passive solution. Appeal Br. 7. Appellant
maintains that even though Kleve teaches authentication based on the
presence of two keys, "the Examiner cannot materially change the active
(insertion based) solution of Harris to a passive one of Kle[ v ]e" because this
"fundamentally alters how Harris works." Id.
As the Examiner correctly points out in the Answer, the rejection only
relies on Harris to teach a request for pairing. Ans. 7. The Examiner does
not rely on the manner in which Harris pairs its device in any way, including
insertion of the key. See id.; Final Act. 7. Because the Examiner relies
entirely on Kleve for its authentication method that relies on the presence of
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two or more vehicle keys, and relies in a limited way on Harris only for the
pairing feature, we agree with the Examiner that the "means by which
Harris detects key presence is wholly irrelevant." Ans. 7. Nor do we find
error in the proposed combination because of alleged problems with how
Harris would work in the proposed combination. See Appeal Br. 7. The
rejection proposes a modification of Kleve, not Harris, and therefore no
alteration of Harris is contemplated. Based on the foregoing, we sustain the
rejection of claim 1 under§ 103, as well as independent claim 14, and their
respective dependent claims 2-5, and 13-15.
As to claim 10, the Examiner again relies on Kleve as disclosing all of
the limitations of the claim with the exception of the pairing request, and
relies on Harris for the pairing limitation. See Final Act. 8-9. Claim 10,
unlike claim 1, requires an additional authentication step------determining "that
a predefined sequence of vehicle controls, whose primary function is other
than that of pairing approval, has been actuated subsequent to detection of
both keys." Appeal Br., Claims App. 2. The Examiner found that Kleve
discloses the limitation because it discloses the use of codes or a pattern of
maneuvers as possible authentication steps. Final Act. 8 ( citing Kleve
,r,r 71-73). The Examiner construed "vehicle controls" to include "at least
pressing buttons on a device or in the vehicle" and found that entering codes
or a pattern of maneuvers in Kleve satisfies this limitation. Ans. 8 ( citing
Spec. ,r 34; Kleve ,r,r 71, 73).
Appellant argues that Kleve fails to disclose the limitation because the
codes and maneuvers are not "vehicle controls." Appeal Br. 8. Appellant
also argues that even if Kleve' s HMI (Human Machine Interface) presents
interactive graphics as the claimed "control," it still fails to disclose the
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claimed "sequence" and that the control has a different "primary function"
than pairing approval. Reply Br. 3.
We are not persuaded that the Examiner erred in the rejection of claim
10 under§ 103. Appellant's own specification states that the second form of
authentication that claim 10 refers to "can include, but is not limited to:
pressing a pre-determined key or sequence on one or both of the fobs; ...
acknowledging pairing opportunity in center stack by clicking a modal or
non-modal button on interface; pressing a specific sequence of keys in the
vehicle; performing a fob utilization." Spec. ,r 34. In light of this limited
detail in the specification, the Examiner properly construed the term "vehicle
control" broadly to encompass at least pressing buttons in the vehicle. See
Ans. 8. The Examiner also adequately supported the finding that Kleve's
paragraphs 71 and 73 disclose the limitation, given the similarity between
that disclosure and Appellant's own. See id. Kleve' s paragraph 71 discloses
the use of "one or more codes ( e.g., numeric, alphabetic, or alphanumeric)"
or a "pattern of maneuvers." Kleve ,r 71. Kleve' s paragraph 73 discloses
specific examples of the "code or maneuvers," including input of "the code
using the vehicle's HMI (e.g., and without limitation, a touchscreen display,
a microphone, one or more controls in the center stack, a vehicle keypad,
and others)." Id. ,r 73. This disclosure adequately supports the Examiner's
findings because it refers to "one or more codes" as well as multiple controls
usable in sequence to provide further authentication. As to the "whose
primary function is other than that of pairing approval" limitation, we
disagree with Appellant's argument that the HMI's primary function is to
pair devices, and view the HMI' s primary purpose as providing interaction
with vehicle systems such as HV AC, audio, etc. See id.
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The Examiner's findings are consistent with the specification, given
its lack of specificity in describing the claimed "sequence" as well as the
"primary function" limitation. See Spec. ,r 34 (referring without elaboration
to "pressing a sequence of keys" and not explicitly describing the "primary
function" limitation). In addition, Appellant does not provide us with a
proposed claim construction, consistent with the specification, that does not
read on Kleve's disclosure. Based on the foregoing, we sustain the rejection
of claim 10, and claim 11 that depends from claim 10.
DECISION
We affirm the decision of the Examiner to reject claims 1-5, 9-11,
and 13-16.
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).
AFFIRMED
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