14879485 - (D) (P.T.A.B. Aug. 4, 2020)

Ford Global Technologies, LLC

Patent Trials and Appeals BoardAug 4, 2020

14879485 - (D) (P.T.A.B. Aug. 4, 2020)

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. 14/879,485 10/09/2015 Manpreet Singh Bajwa 83565989 4499 28395 7590 08/04/2020 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER HALIM, SAHERA ART UNIT PAPER NUMBER 2457 NOTIFICATION DATE DELIVERY MODE 08/04/2020 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 MANPREET SINGH BAJWA, OMAR MAKKE, PERRY ROBINSON MACNEILLE, and OLEG YURIEVITCH GUSIKHIN Appeal 2019-002970 Application 14/879,485 Technology Center 2400 Before JAMES B. ARPIN, NABEEL U. KHAN, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1, 5–11, 14, and 21–27, all of the claims pending. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Ford Global Technologies, LLC as the real party-in-interest. Appeal Br. 2. Appeal 2019-002970 Application 14/879,485 2 TECHNOLOGY The application relates to a vehicle playing media content in response to a trigger condition being met (e.g., a change in weather or vehicle speed), where the media content and trigger are set forth in an invitation from a source outside the vehicle (e.g., a friend’s car). See Spec. ¶ 13. “For example, one vehicle may send to a second vehicle a share request including the description of a song ‘Riders on the Storm’ by The Doors with the context to play when it is raining.” Id. ¶ 14. The receiving vehicle then would play “Riders on the Storm” the next time the vehicle detects rain. Id. ILLUSTRATIVE CLAIM Claim 1 is illustrative and reproduced below. 1. A vehicle comprising: a vehicle interface; and a vehicle infotainment system including a processor configured to, responsive to a speed of the vehicle meeting or exceeding a predefined speed specified by an invitation from a source remote from the vehicle and that identifies media content, select a medium carrying the media content and play the media content via the vehicle interface. REJECTIONS Claims 1, 5–11, 14, and 21–27 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter without significantly more. Final Act. 2. Claims 1, 5–8, 11, 14, and 23–27 stand rejected under 35 U.S.C. § 102(a)(2) as anticipated by Hampiholi (US 2015/0006541 A1; Jan. 1, 2015). Final Act. 18. Appeal 2019-002970 Application 14/879,485 3 Claims 9, 10, 21, and 22 stand rejected under 35 U.S.C. § 103 as obvious over the combined teachings of Hampiholi and Bai (US 2012/0151073 A1; June 14, 2012). Final Act. 22. Claims 1, 8, 11, 14, and 24 stand rejected under 35 U.S.C. § 112(b) as indefinite. Final Act. 14–16. ISSUES 1. Did the Examiner err in concluding that claim 1 was directed to an abstract idea without significantly more? 2. Did the Examiner err in finding Hampiholi discloses a trigger condition “specified by an invitation from a source remote from the vehicle and that identifies media content,” as recited in claim 1? 3. Did the Examiner err in finding the combination of Hampiholi and Bai teaches or suggests “the source remote from the vehicle is a remote vehicle infotainment system,” as recited in claim 9? 4. Did the Examiner err in concluding that the phrase “and that identifies media content” renders claim 1 indefinite? 5. Did the Examiner err in concluding that an “occupant identify” renders claim 8 indefinite? ANALYSIS § 101 The U.S. Supreme Court has set forth a two part test for § 101 to determine whether the subject matter of a claim is patentable: (1) “whether the claims at issue are directed to” “laws of nature, natural phenomena, and abstract ideas” and (2) “whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice Corp. v. CLS Appeal 2019-002970 Application 14/879,485 4 Bank Int’l, 573 U.S. 208, 217 (2014) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). “Eligibility under 35 U.S.C. § 101 is a question of law, based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166 (Fed. Cir. 2018). In 2019, the U.S. Patent & Trademark Office (“USPTO”) clarified its application of the Court’s test with revised guidance. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”); USPTO, October 2019 Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf (“Oct. Update”). Under that Guidance, we use the following steps to determine whether a claim recites the following items: USPTO Step Does the claim recite ___? MPEP § 1 A process, machine, manufacture, or composition of matter 2106.03 2A, Prong 1 A judicial exception, such as a law of nature or any of the following groupings of abstract ideas: 1) Mathematical concepts, such as mathematical formulas; 2) Certain methods of organizing human activity, such as a fundamental economic practice; or 3) Mental processes, such as an observation or evaluation performed in the human mind. 2106.04 2A, Prong 2 Any additional limitations that integrate the judicial exception into a practical application 2106.05(a)– (c), (e)–(h) 2B Any additional limitations beyond the judicial exception that, alone or in combination, were not “well-understood, routine, conventional” 2106.05(d) See Guidance, 84 Fed. Reg. at 52, 55, 56. In this case, the Guidance was published after the Examiner’s Answer but before Appellant’s Reply Brief. Under the intervening Guidance, we Appeal 2019-002970 Application 14/879,485 5 agree with Appellant that, although some limitations may recite an abstract idea (e.g., the mental process of comparing a speed to a predetermined speed), the claims as a whole integrate that abstract idea into a practical application. See Guidance, 84 Fed. Reg. at 54–55. “The inquiry often is whether the claims are directed to ‘a specific means or method’ for improving technology or whether they are simply directed to an abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017). Here, the claims set forth a specific means for achieving the end result. In particular, “a source remote from the vehicle” must provide “an invitation” that both specifies the trigger condition and identifies media content. See claims 1, 8, 24. A “vehicle infotainment system” also is configured to “select a medium carrying the media content and play the media content” when the trigger condition occurs. Id. These additional elements reflect an improvement in the technical field of vehicle infotainment systems. See MPEP § 2106.05(a). An invention need not be groundbreaking or highly valuable to be technical. Cf. Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”); Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013) (“Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.”). Instead, novelty and obviousness are addressed through §§ 102 and 103, which we discuss below. Appeal 2019-002970 Application 14/879,485 6 Accordingly, we do not sustain the Examiner’s § 101 rejection of independent claims 1, 8, and 24, and their dependent claims 5–7, 9–11, 14, 21–23, and 25–27. § 102 Appellant concedes that Hampiholi’s “engine 102 intelligently selects content based on feedback from sensors of the vehicle” (e.g., “content about thunderstorms on rainy days”), but argues that “[n]othing in Hampiholi . . . discloses a source remote from the vehicle specifying via an invitation or share request” both a trigger condition (e.g., “a predefined speed”) and “corresponding media content such that the vehicle will play the media content responsive to” the trigger condition. Appeal Br. 4–5. The trigger conditions in the three independent claims are for speed (claim 1), a particular occupant (claim 8), and weather (claim 24). We agree with the Examiner that Hampiholi discloses picking media based on all three trigger conditions. Hampiholi ¶¶ 31 (“The content selected by the engine 102 may be determined based on the speed of travel”), 57–59 (“One or more users (e.g., passengers) may be identified based on a captured image . . . and each passenger’s media preferences retrieved”), 62 (“Environmental conditions may also be detected . . . for determining the media experience information . . . . Non-limiting examples of environmental conditions include . . . weather . . . . ”); Final Act. 18, 19, 21; Ans. 9–10. Hampiholi also discloses that “the engine 102 may be executing remotely on a remote server network accessible over a network connection such as the Internet, also known to one of ordinary skill as ‘the cloud.’” Hampiholi ¶ 25; Ans. 9. Thus, Hampiholi discloses engine 102 can be “a source remote from the vehicle.” Appeal 2019-002970 Application 14/879,485 7 We therefore agree with the Examiner that Hampiholi discloses a vehicle infotainment system plays media content from a selected medium responsive to a trigger condition specified by an invitation from a source remote from the vehicle and that identifies the media content. Accordingly, we sustain the Examiner’s § 102 rejection of independent claims 1, 8, and 24, and their dependent claims 5–7, 11, 14, 23, and 25–27, which Appellant argues are patentable for similar reasons. See Appeal Br. 5; 37 C.F.R. § 41.37(c)(1)(iv). § 103 Claims 10 and 22 For the § 103 rejection against claims 10 and 22, Appellant only argues that “[c]laims 10 and 22 are patentable because they depend from claims 8 and 1 respectively.” Appeal Br. 5. As discussed above, we are not persuaded by Appellant’s § 102 arguments for claims 1 and 8. Accordingly, we sustain the § 103 rejection of claims 10 and 22. Claims 9 and 21 Dependent claims 9 and 21 further recite “the source remote from the vehicle is a remote vehicle infotainment system.” Appellant concedes that Bai discloses “collective sharing,” such that “if the driver of vehicle ‘X’ cannot find the desired content on the cache of vehicle ‘X,’ the driver can attempt to obtain the desired content from the collective cache” (i.e., from other vehicles such as “vehicle ‘Y’”). Appeal Br. 5. However, Appellant argues that “[t]he driver of vehicle ‘X’ . . . cannot specify media content and an associated trigger condition for vehicle ‘Y’ at which the media content will be played by vehicle ‘Y.’” Id. Further, Appellant argues that the Examiner has not explained sufficiently why a Appeal 2019-002970 Application 14/879,485 8 person of ordinary skill in the art would have moved Hampiholi’s engine 102 to a second vehicle rather than to Hampiholi’s remote server when two vehicles can move “potentially thousands of miles from each other.” Reply Br. 5. We agree with Appellant. Even if Bai’s teachings were used to retrieve the media content via a vehicle-to-vehicle network, the Examiner has not explained sufficiently why it would have been obvious that the invitation specifying the trigger condition come from a second vehicle, or why it would have been obvious to put Hampiholi’s engine 102 in a second vehicle. Accordingly, we do not sustain the § 103 rejection of claims 9 and 21. § 112(b) Claims 1 and 24 The Examiner determines that independent claims 1 and 24 are indefinite because “it is unclear if the media content is identified by the invitation or by the infotainment system.” Ans. 6. However, we agree with Appellant that based on context and grammar, the disputed limitation “and that identifies media content” modifies “an invitation.” Appeal Br. 3–4; Reply Br. 3. The commas indicate that the disputed limitation is part of the “responsive to” clause (“, responsive to a speed of the vehicle meeting or exceeding a predefined speed specified by an invitation from a source remote from the vehicle and that identifies media content,”). The verb forms further confirm that this particular limitation (“and that identifies media content”) would not fit outside the “responsive to” clause (“a vehicle infotainment system including a processor configured to . . . select . . . and play . . . ”). Within the Appeal 2019-002970 Application 14/879,485 9 “responsive to” clause, context makes clear that the limitation modifies “an invitation.” For example, a “speed” does not “identify media content,” and the word “and” prevents the disputed limitation from modifying “the vehicle.” The Examiner further determines that “[t]here is no mention of meeting or exceeding a predefined speed in the specification” (as in claim 1) or “how the . . . condition relates to the predefined weather condition” (as in claim 24). Ans. 7–8; see also Final Act. 15. However, the Specification discloses “the song ‘Born to be wild’ may play if the speed of the vehicle exceeds 75 miles per hour” and “one vehicle may send to a second vehicle a share request including the description of a song ‘Riders on the Storm’ by The Doors with the context to play when it is raining.” Spec. ¶¶ 33, 14; see also id. ¶ 15 (“an album ‘Stormwatch’ by Jethro Tull . . . during a thunderstorm”); Appeal Br. 3; Reply Br. 3. Thus, the Examiner has not explained sufficiently why a person of ordinary skill in the art would not have understood the claims. Accordingly, we do not sustain the Examiner’s § 112 rejection of claims 1 and 24. Claims 8, 11, and 14 For independent claim 8, Appellant concedes that “[t]he examiner has correctly pointed out that the phrase in question contains typographical errors: ‘identify’ should read ‘identity.’” Appeal Br. 4; Ans. 7. Accordingly, we sustain the Examiner’s § 112 rejection of claim 8 and its dependent claims 11 and 14, which Appellant does not argue separately. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-002970 Application 14/879,485 10 OUTCOME The following table summarizes the outcome of each rejection: Claims Rejected 35 U.S.C. § Basis / Reference(s) Affirmed Reversed 1, 5–11, 14, 21–27 101 Eligibility 1, 5–11, 14, 21–27 1, 5–8, 11, 14, 23–27 102 Hampiholi 1, 5–8, 11, 14, 23–27 9, 10, 21, 22 103 Hampiholi, Bai 10, 22 9, 21 1, 8, 11, 14, 24 112(b) Indefiniteness 8, 11, 14 1, 24 Overall Outcome 1, 5–8, 10, 11, 14, 22–27 9,2 21 TIME TO RESPOND No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.36(a)(1)(iv). AFFIRMED-IN-PART 2 In the event of further prosecution, the Examiner may wish to consider whether claim 9 is indefinite based on its dependency from claim 8.