Ex Parte Yang et al

Patent Trial and Appeal Board

Aug 13, 2018

14525358 (P.T.A.B. Aug. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/525,358 10/28/2014
113140 7590 08/15/2018
Bejin Bieneman PLC
Ford Global Technologies, LLC
2000 Town Center
Suite 800
Southfield, MI 48075
FIRST NAMED INVENTOR
Hsin-hsiang Yang
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.
83474151(65080-1396) 3119
EXAMINER
HUYNH,LUATT
ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
08/15/2018 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):
docket@b2iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HSIN-HSIANG YANG and
KWAKU 0. PRAKAH-ASANTE
Appeal2017-010268
Application 14/525,358
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE, and enter a NEW GROUND of rejection pursuant
to 37 C.F.R. §41.50(b).
1 According to Appellants, the "real party in interest is Ford Global
Technologies, LLC." Appeal Br. 2.
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Application 14/525,358
According to Appellants, the invention relates to a remote device that
communicates driver preference information to a vehicle. Spec. ,r 8.
Claims 1, 8, and 14 are the independent claims on appeal. Below, we
reproduce claim 14 as illustrative of the appealed claims.
14. A method comprising:
receiving driver data in real-time during operation of a first
vehicle;
processing the driver data; and
generating a command signal commanding a second
vehicle to update at least one parameter in accordance with the
driver data.
REJECTION AND PRIOR ART
The Examiner rejects claims 1-20 under 35 U.S.C. § I02(a)(l) as
anticipated by Wright et al. (US 2010/0036560 Al, pub. Feb. 11, 2010)
(hereinafter "Wright").
ANALYSIS
Anticipation Reiection
Based on our review of the record, including the Examiner's Final
Office Action and Answer, and Appellants' Appeal Brief and Reply Brief,
for the reasons discussed below, the Examiner fails to support adequately the
anticipation rejection of claims 1-20 based on Wright. Thus, we do not
sustain the rejection.
With respect to independent claim 14, the Examiner finds that
Wright's paragraph 6 discloses receiving driver data in real-time during
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operation of a first vehicle, as claimed. Final Action 2-3. Appellants argue
that the Examiner's finding is erroneous, because
Wright's profile data is not collected "in real-time during
operation of a first vehicle" in the context of claim 1 . . . . Wright
explains that "[t]he driver may create a vehicle-operator profile
using a computer acting as a profile-entry device." Wright[]
at [0020] ( emphasis added). With reference to Wright's
F[igure] 2A, Wright's computer presents a simulated dashboard
so the user can manually enter the profile information. "The
adjustable-vehicle-related parameters may be determined via
simulation, such as a simulation that allows the driver to adjust
various adjustable devices in the vehicle." Wright[] at [0021]
(emphasis added). "[T]he adjustable-vehicle-related parameters
may be set based on the simulated adjustments made during the
simulation." [Id.] (emphasis added) ....
A computer simulation is not an automobile. Thus, because
Wright requires the user to enter data via a simulated vehicle
dashboard, Wright does not disclose collecting data "in real-time
during operation of a first vehicle[,]" as recited in the context of
claim 1.
Appeal Br. 6. Based on our review, we agree with Appellants, and therefore
the Examiner does not support adequately that Wright's data collection
during a computer simulation discloses the claimed "receiving driver data in
real-time during operation of a first vehicle."
Thus, based on the foregoing, we do not sustain the Examiner's
anticipation rejection of independent claim 14. We also do not sustain the
Examiner's anticipation rejection of independent claims 1 and 7 that each
recite a similar recitation as that discussed above with respect to claim 14.
Appeal Br., Claims App. Further, we do not sustain the anticipation
rejection of claims 2--4 and 8-10 that depend from claims 1 and 7.
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New Eligibility Reiection
Pursuant to our authority under 37 C.F.R. § 4I.50(b), we set forth a
NEW GROUND of rejection. Specifically, we reject claims 1-20 under 35
U.S.C. § 101 as ineligible subject matter.
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 abstract ideas" are not
eligible for patenting. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step analysis
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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 Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step, where
the elements of the claims are considered "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." Id.
(quoting Mayo, 566 U.S. at 78, 79).
As set forth above, independent claim 14 recites the following:
14. A method comprising:
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Application 14/525,358
receiving driver data in real-time during operation of a first
vehicle;
processing the driver data; and
generating a command signal commanding a second
vehicle to update at least one parameter in accordance with the
driver data.
Appeal Br., Claims App. Restated, the claim recites "receiving" data,
"processing" the data, and "generating a command signal" based on the data.
Appellants' Specification describes that "[ d]river data may relate to the
driver's preferences," and that "remote device 105 may process the driver
data to determine a driver's behavior, preferences, or both." Spec. f 11-12.
Additionally, Appellants' Specification describes that "processor 115 may
generate and output a command signal to the second vehicle using the
communication interface 125." Id. ,r 17. Thus, claim 14 may be construed
to encompass broadly receiving preference data, organizing the data for
transmission, and transmitting the data, which encompasses all recited
limitations of the claim. Therefore, independent claim 14 is "directed to"
the abstract idea of receiving data from a first vehicle and transmitting that
data to a second vehicle.
This finding that claim 14 is "directed to" an abstract idea is
consistent with the findings of courts evaluating similar claims. For
example, Appellants' independent claim 14 is similar to claim 10 of
U.S. Patent 7,355,509, which was found to be directed to the abstract idea of
collecting information from a vehicle and transmitting that information over
a network, in Concaten, Inc. v. Ameritrak Fleet Solutions, LLC, 131
F.Supp.3d 1166 (D.Colo. 2015), aff'd, 2016 WL 5899749 (Mem) (Fed.
Cir. 2016). Claim 14 is also similar to the method found to be directed to an
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abstract idea in Cyberfone, where the Court held that "using categories to
organize, store, and transmit information is well-established," and "the well-
known concept of categorical data storage, i.e., the idea of collecting
information in classified form, then separating and transmitting that
information according to its classification, is an abstract idea that is not
patent-eligible." Cyberfone Systems, LLC v. CNN Interactive Group, Inc.,
558 Fed. Appx. 988, 992 (Fed. Cir. 2014).
Regarding whether there are additional elements that transform the
nature of the claim into a patent-eligible application, Appellants'
Specification indicates that a "first vehicle may capture the driver data and
transmit the driver data to the remote device 105 via the communication
interface 125," but does not limit the source of the data. Spec. f 21. The
driver data, thus, could be preference data that the user enters directly
through some data input device, such as a real or simulated keyboard. The
"receiving" step, broadly, may be a data input step, and fairly may be
characterized as insignificant extra-solution activity. See Bilski v. Kappas,
545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), ajf'd sub nom Bilski v.
Kappas, 561 U.S. 593 (2010) (characterizing data gathering steps as
insignificant extra-solution activity). The transmission of the data to a
second vehicle may fairly be characterized as "insignificant post-solution
activity," because it merely outputs data. See Bilski v. Kappas, 130 S.
Ct. 3218, 3230 (2010).
Appellants' Specification describes that the claimed "processing" may
involve merely "associating" data with other data. Spec. ,r 16
("processor 115 may be further programmed to associate the driver data with
one or more operating parameters."). Even if this somehow transforms the
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driver data into different data, a process that starts with data, applies an
algorithm, and ends with a new form of data is directed to an abstract idea,
and does not transform the nature of the claim into a patent-eligible
application. Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014). Here, no algorithm for processing the
data is claimed or described, so "processing" may broadly encompass a
similar transformation of data.
Claim 14 does not recite any particular device or structure that
performs the receiving, processing, and generating steps-thus, it appears
that Appellants contemplate that the method may be performed on a general-
purpose computer, or by a human using mental processes. Because any
general-purpose computer is capable of receiving and processing data, and
generating a message to transmit data, as easily as a human, we find nothing
either "inventive" or that represents "something more" in claim 14, which
transforms the abstract idea into eligible subject matter.
Therefore, we enter a NEW GROUND of rejection of claim 14 under
35 U.S.C. § 101 as ineligible subject matter. Dependent claims 15-20 lack
additional elements that would render the claims patent-eligible. More
specifically, claims 15 and 16 recite using wireless communication, which is
well-known in general purpose computers. Claims 17-19 recite storing data
in memory, and receiving and responding to a query, which are also within
the normal functions of general-purpose computers. Claim 20 recites
making a determination and discarding data. The Specification describes
that the determination may be based on whether "host vehicle 100 is no
longer in communication with ... remote device 105." Spec. ,r 31. A
general-purpose computer is able to determine whether a communication
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link has ended, and is able to erase data. Therefore, we also enter a new
ground of rejection of claims 15-20 under 35 U.S.C. § 101 as ineligible
subject matter.
Further, we find no meaningful distinction between independent
method claim 14 and either independent system claim 1 or 8-the claims all
are directed to the same underlying invention. Independent claim 1 recites a
"remote device" to perform steps corresponding to those recited in claim 14.
Independent claim 8 recites a "processor" to do likewise. In support of these
structures, Appellants direct us to paragraphs 8, 16, 19, and 21 of the
Specification. Appeal Br. 2-3. Paragraph 8 describes that the "remote
device includes a processor programmed" to perform the claimed steps.
Paragraph 16 describes essentially the same thing. Paragraph 19 describes
that the processor may be in a vehicle instead of a remote device, and that
the processor similarly is programmed to perform the claimed steps.
Paragraph 21 does not significantly add to the descriptions already
summarized.
Appellants' Specification also describes that "the computing systems
and/or devices described may employ any of a number of computer
operating systems," which encompass many well-known general purpose
computer operating systems. Spec. ,r 34. A generic computer component
does not satisfy the requirement that the claim recite an inventive concept-
"after Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible. The
bare fact that a computer exists in the physical rather than purely conceptual
realm is beside the point." DDR Holdings, LLC v. Hotels.com, L.P., 773
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F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations and quotation marks
omitted).
Therefore, we enter a NEW GROUND of rejection of independent
claims 1 and 8 under§ 101. As the Federal Circuit has made clear, "the
basic character of a process claim drawn to an abstract idea is not changed
by claiming only its performance by computers, or by claiming the process
embodied in program instructions on a computer readable medium." See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375-76 (Fed.
Cir. 2011) (citing In re Abele, 684 F.2d 902 (CCPA 1982)). We also enter a
NEW GROUND of rejection of dependent claims 2-7 and 9-13, which
depend from independent claims 1 and 8, for the same reasons as the other
claims.
DECISION
We REVERSE the Examiner's anticipation rejection of claims 1-20.
We ENTER A NEW GROUND of rejection of claims 1-20 under
35 U.S.C. § 101 as ineligible subject matter.
As set forth above, this decision contains a new ground of rejection
pursuant to 37 C.F.R. § 4I.50(b) (2008). 37 C.F.R. § 4I.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 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:
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( 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 ....
REVERSED; 37 C.F.R. § 4I.50(b)
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