Meyer, Jason et al.

Patent Trials and Appeals Board

Dec 26, 2019

14341069 - (D) (P.T.A.B. Dec. 26, 2019)

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.
14/341,069 07/25/2014 Jason Meyer 83454384;
67186-105 PUS1
2475
46442 7590 12/26/2019
CARLSON, GASKEY & OLDS, P.C./Ford
400 W. MAPLE RD.
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
CASTRO, PAUL A
ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON MEYER, RYAN ABRAHAM MCGEE,
FLING FINN TSENG, and JOHANNES GEIR KRISTINSSON
Appeal 2019-001559
Application 14/341,069
Technology Center 3600
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION
in accordance with 37 C.F.R. § 41.50(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Ford Global
Technologies, LLC, which is owned by Ford Motor Company. Appeal Br.
1.
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CLAIMED SUBJECT MATTER
The claims are directed to predicting vehicle energy consumption.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method of crowd-sourcing energy consumption
data for vehicles, comprising:
at a server remote from a vehicle, selecting a route for the
vehicle in response to a predicted energy consumption that is
continually updated based on a difference between a previous
predicted energy consumption and a previous actual base
energy consumption;
providing the route to the vehicle using a built-in
communication link; and
routing the vehicle along the route.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hiestermann US 2011/0307166 A1 Dec. 15, 2011
Sellschopp US 2014/0214267 A1 July 31, 2014
REJECTIONS
Claims 1–8 and 20 are rejected under 35 U.S.C. § 112(b) as being
indefinite.
Claim 1–16 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Hiestermann.
Claim 17–19 are rejected under 35 U.S.C. § 103 as being unpatentable
over Hiestermann and Sellschopp.
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OPINION
Indefiniteness
The Examiner rejects claim 1 as indefinite “for omitting essential
steps, such omission amounting to a gap between the steps.” Final Act. 7
(citing MPEP § 2172.01). The Examiner explains that “[t]he omitted steps
are: for a method of crowd-sourcing energy consumption data for vehicles
however the claims only recite using a server remote from a vehicle,
selecting a route for the vehicle, providing the route to the vehicle and
routing the vehicle.” Id. The Examiner further explains that “[t]here is no
actual mention of using crowd-sourced information from vehicles, or even
using crowd-sourced information or even a plural amount of vehicles,” and
that “[t]he claim should tie some method that actually involves crowd-
sourced data from vehicles into the method.” Id.
Appellant responds that “[t]he essential matter requirement relates to
matter ‘defined by applicant(s) in the specification’ as essential,” and “the
preamble recit[ing] ‘crowd-sourcing energy consumption data’ does not
mean that the Examiner’s suggested features are ‘defined’ by the Appellant
as ‘essential’ in the specification.” Appeal Br. 3 (citing MPEP § 2172.01).
Appellant further explains that “the present application indicates a crowd
consists of one or more vehicles, e.g., in some examples, the crowd is a
single vehicle . . . and therefore, a crowd of more than one vehicle is not
defined as an ‘essential’ feature of the present application, as the Examiner
seems to suggest.” Id. at 4.
The Examiner addresses Appellant’s contentions by asserting that
“‘crowd-sourcing’ which is ultimately a concept on its own and would be
understood by one of ordinary skill in the art to require information
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gathering from multiple sources (crowdsourcing),” and “[t]he Appellant has
not explicitly redefined ‘crowd-sourcing.’” Ans. 7.
Appellant has the better position because the Examiner’s rejection has
at least two shortcomings. First, regardless of whether “crowd-sourcing”
may typically require more than one source, as Appellant notes, the
Specification specifically contemplates crowd-sourcing with a single source.
Spec. ¶ 29. Second, the preamble, which recites the claim language at issue,
does not limit the claim.
“In general, a preamble limits the invention if it recites essential
structure or steps, or if it is ‘necessary to give life, meaning, and vitality’ to
the claim.” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 808 (Fed. Cir. 2002). A preamble, however, “generally is not limiting
when the claim body describes a structurally complete invention such that
deletion of the preamble phrase does not affect the structure or steps of the
claimed invention.” Id. at 809. One guidepost for determining the effect of
a preamble on claim scope is whether the preamble language provides
antecedent basis for any limitation in the body of the claim. Id. at 808. A
preamble describing the purpose or intended use of an invention generally
does not limit the claim. Id. at 809. In claim 1, “crowd-sourcing energy
consumption data for vehicles” simply describes “the purpose or intended
use” of the method, and does not affect the steps of the method. The
preamble does not provide antecedent basis for any claim term, and
understanding the steps of the claim does not require reliance on the
preamble.
For at least these reasons, we do not sustain the Examiner’s decision
to reject claims 1–8 and 20 under 35 U.S.C. § 112(b).
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Obviousness – Claims 1–16
Independent claims 1 and 9 each recite “selecting a route for the
vehicle in response to a predicted energy consumption that is continually
updated based on a difference between a previous predicted energy
consumption and a previous actual base energy consumption.” The
Examiner finds that Hiestermann teaches “selecting a route for the vehicle in
response to a predicted energy consumption that is continually updated . . .
based on a difference between a previous predicted energy consumption
(Optimal Longitudinal Speed Profile OLSP) and a previous actual base
energy consumption (RRDSL . . .).” Final Act. 8 (citing Hiestermann ¶¶ 48,
51, Figs. 10 and 11). The Examiner acknowledges that “Hiester[mann] does
not use the terms energy consumption,” but “refers to the system as using
Optimal longitudinal speed profiles.” Id. at 9. The Examiner finds that “[i]t
would be understood . . . that Hiester[mann]’s OLSP are a reference to
energy consumption as minimizing accelerations and maintaining ideal
speeds are directly correlated with energy efficiency of a vehicle.” Id. The
Examiner reasons that “[i]t would be obvious . . . to use Hiester[mann]’s
OLSPs as a reference to determine energy consumption efficiency for
vehicles.” Id (citing Hiestermann ¶ 17).
Appellant responds that because “the speed profile of Heistermann
fails to teach energy consumption, the rejection should be reversed,” but
“[e]ven if Heistermann’s OLSP represents energy consumption, claims 1
and 9 recite ‘selecting a route for the vehicle in response to a predicted
energy consumption that is continually updated based on a difference
between a previous predicted energy consumption and a previous actual
base energy consumption.” Appeal Br. 4. Appellant contends that “even if
RRDSL did represent energy consumption, Hiestermann never discloses
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routing a vehicle based on a difference between OLSP and RRDSL.” Id.
at 6.
In the Answer, the Examiner explains that “[t]he claim language states
‘selecting . . . in response to a predicted energy consumption that is
continually updated based on a difference between a previous predicted
energy consumption and a previous actual base energy consumption[,]’”
which “is vague” and “considering the claim neither details further to how
these limitations relate further, nor does it specify what ‘actual base energy
consumption’ refers to (is energy base consumption different from actual
energy consumption), it is difficult to map explicit details to that claim.”
Ans. 9–10. The Examiner may be correct. Nevertheless, we know that the
claim at least requires that the “predicted energy consumption” is “based on
a difference between a previous predicted energy consumption and a
previous actual base energy consumption.” That is, there must be some
calculated difference between energy consumption values that is used to
route the vehicle.
Hiestermann explains that “[a] Raw Road Design Speed Limit
(RRDSL) may be derived from . . . collected probe data . . . and then
statistically analyzed to derive the speed at every point along . . . the road
segment.” Hiestermann ¶ 37. “Once the RRDSL 16 has been determined,
. . . a driver operating with a navigation-capable device is able to continually
compare their current speed . . . with the undisturbed speeds represented by
the RRDSL 16 for the particular road segment.” Id. ¶ 45. This allows “the
driver [to] alter their driving speed to match or more closely mimic the target
speeds along the road segment on which the vehicle is currently traveling”
so that “the driver can . . . optimize their use of fuel . . . because the free
flow conditions (upon with the RRDSL 16 was derived) represent the closest
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to steady-speed operation taking into account the practical considerations of
road geometry and other real-world factors that influence driving speeds.”
Id. That is, the RRDSL provides information to the driver regarding a target
speed for optimal fuel efficiency along a given road segment.
Hiestermann further explains that “[t]o improve energy efficiency
amid sharp changes in the target speed, an Optimal Longitudinal Speed
Profile (OLSP) 18 may be introduced,” which “reflects driving without too
many accelerations/decelerations and thus represents minimal energy
losses.” Hiestermann ¶ 47. “The OLSP 18, like the RRDSL 16, is also a
function of the longitudinal profile, based on position along a road section
and of the travel-based direction.” Id. ¶ 49. “Stated simply, the OLSP 18 is
a continuous or semi-continuous averaged speed distribution of vehicles
driving along the same road and direction, considering the RRDSL 16 . . .
and minimizing the number of accelerations/decelerations but keeping close
to the RRDSL 16.” Id.
Hiestermann illustrates energy benefits of the OLSP relative to the
RRDSL in Figure 10, reproduced below.

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Hiestermann’s Figure 10 illustrates a “speed diagram for a road segment . . .
showing both the RRDSL and OLSP with energy savings represented by the
OLSP being shown as an energy difference between the curves.”
Hiestermann ¶ 30. Hiestermann explains that “[t]he energy saved by
observing the OLSP 18 rather than the RRDSL 16 is proportional to the
available energy conservation” and, therefore, “[i]ndividual vehicles driving
according to the OLSP 18 will be using less fuel.” Id. ¶ 51.
The Examiner has not established sufficiently that the energy
difference between Hiestermann’s “OLSP” and “RRDSL” (illustrated in
Figure 10) is used to route the vehicle. See Final Act. 8; Ans. 10. Although
Hiestermann determines an energy difference between the OLSP and
RRDSL, as seen above in Figure 10, the portions of Hiestermann identified
by the Examiner (¶¶ 48, 51) do not discuss using that energy difference to
select a route, as required by the claims. The cited portions of Hiestermann
do not even discuss using the difference between velocities illustrated in
Figure 10 to select a route for the vehicle.
For at least these reasons, we do not sustain the Examiner’s decision
to reject claims 1–16.

Obviousness – Claims 17–19
Claim 17 recites:
A system for crowd-sourcing information to predict
vehicle energy consumption, comprising:
a server in communication with a crowd of vehicles; and
a database on the server, wherein at least one of the server
and database collect data corresponding to vehicle energy
consumption from the crowd of vehicles, update the data in the
database, and provide data corresponding to vehicle energy
consumption to the crowd of vehicles.
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The Examiner finds that Hiestermann teaches the features recited in
claim 17, but “is not explicit to providing the data to the crowd of vehicles.”
Final Act. 12–13. The Examiner cites Sellschopp as teaching this feature
and proposes modifying Hiestermann’s teachings accordingly. Id. at 13.
Appellant disputes the Examiner’s rejection only with respect to the
type of data collected and disseminated. See Appeal Br. 8–9. Appellant’s
contentions do not apprise us of error because the particular type of data
collected and disseminated does not impart patentability into the claim.
Our reviewing court has held that nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (noting that
when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability). King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010) (“[T]he relevant question is whether ‘there exists any
new and unobvious functional relationship between the printed matter and
the substrate.’”) (citations omitted).
In claim 17, the particular type of data is not functionally related to
the server or database. The particular type of data does not affect how the
server or the database functions. This is similar to the type of data
considered non-functional descriptive material in Ex parte Nehls, 88
USPQ2d 1883 (BPAI 2008) (precedential). Nehls addressed a claim
reciting:
A computer-based system for identifying nucleic acid
fragments of the human genome of commercial importance
comprising the following elements:
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a) a data storage means comprising the sense or antisense
sequence of at least 18 contiguous nucleotides of any one of SEQ
ID NOS:9-1,008;
b) search means for comparing a target sequence to each
of the sequences of the data storage means of step a) to identify
homologous sequence(s); and
c) retrieval means for obtaining said homologous
sequence(s) of step (b).
Id. at 1884. The Board determined that
[t]he recited sequences are not functionally related to the
computer system carrying out the comparison because the
computer compares a target sequence to a database the same way
regardless of whether the database includes any of SEQ ID NOs
9-1008: the SEQ ID NOs and the computer do not depend on
each other for their function.
Id. at 1888–89. Like the relationship between the computer system and the
“SEQ ID NOs” in Nehls, neither the server nor the database in claim 17
depends on the type of data (i.e., that it is “data corresponding to vehicle
energy consumption”) for their function. See also Ex parte Curry, 84
USPQ2d 1272 (BPAI 2005), aff’d (Fed. Cir. Appeal No. 2006-1003, aff’d
Rule 36 June 12, 2006) and Ex parte Mathias, 84 USPQ2d 1276 (BPAI
2005), aff’d 191 Fed. Appx. 959 (Fed. Cir. 2006).
Accordingly, the particular type of data recited in claim 17 is not
entitled to patentable weight. Because there are no other issues disputed
with respect to the Examiner’s rejection of claims 17–19, we are not
apprised of reversible error.
Moreover, even if the particular type of data recited in claim 17 is
entitled to patentable weight, we are still not apprised of Examiner error.
Unlike claims 1 and 9, claim 17 merely requires “data corresponding to
vehicle energy consumption.” Claim 17 does not require “predicted energy
consumption . . . based on a difference between a previous predicted energy
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consumption and a previous actual base energy consumption.” There is no
dispute that Hiestermann teaches collecting, updating, and providing
velocity information via a server and database. Compare Appeal Br. 8–9
with Final Act. 12 (discussing speed profiles). As discussed above, and
illustrated in Figure 10 of Hiestermann reproduced above, vehicle speed
“correspond[s] to vehicle energy consumption.”
For at least the reasons set for above, we sustain the Examiner’s
decision to reject claims 17–19.

Enablement New Ground – Claims 1–16 and 20
“The specification shall contain a written description of the invention
. . . to enable any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the same.” 35 U.S.C. § 112(a).
“Enablement serves the dual function in the patent system of ensuring
adequate disclosure of the claimed invention and of preventing claims
broader than the disclosed invention.” MagSil Corp. v. Hitachi Glob.
Storage Techs., Inc., 687 F.3d 1377, 1380–81 (Fed. Cir. 2012).
“The test of enablement is whether one reasonably skilled in the art
could make or use the invention from the disclosures in the patent coupled
with information known in the art without undue experimentation.” U.S. v.
Telectronics, Inc., 857 F.2d 778, 785 (Fed. Cir. 1988). “Whether undue
experimentation is needed is not a single, simple factual determination, but
rather is a conclusion reached by weighing many factual considerations.” In
re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). These factors include: (1) the
quantity of experimentation necessary, (2) the amount of direction or
guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill
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of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims. Id. Not all of the Wands factors need to be
reviewed when determining whether a disclosure is enabling. Enzo
Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (Fed. Cir. 1999).
Rather, the Wands factors “are illustrative, not mandatory. What is relevant
depends on the facts.” Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d
1200, 1213 (Fed. Cir. 1991).
Based on the record before us, the Wands factors weigh in favor of
rejecting claims 1–16 and 20 for lack of enablement. As noted above, there
is little (if any) guidance provided as to how one skilled in the art would
determine “a difference between a previous predicted energy consumption
and a previous actual base energy consumption,” as recited in claims 1
and 9. The Specification explains that “database 112 receives and stores
data about the actual energy consumption of the vehicles 102” and “[t]he
server 104 and database 112 process the data to make predictions about
vehicle 102 energy consumption.” Spec. ¶¶ 34, 35. The Specification is
lacking any detail, however, as to how this prediction is made (e.g., there are
no working examples). The claims are broad, in that they, too, fail to
provide any detail regarding the recited predictions.
A similar problem exists with respect to the “base energy
consumption” recited in the claims. The Specification explains that
“database 112 may also include additional base energy consumption data for
a particular vehicle 102,” which “can be modified by the crowd-sourced
data.” Spec. ¶ 35. With respect to how the “base energy consumption” is
determined, the Specification simply states that “the method 200 determines
a base energy consumption rate for a vehicle 102 on each road segment
based on a personalized energy consumption model,” and that “model can
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take into account, for example, driver habits, vehicle make and model, etc.,”
without further detail.2 Id. ¶ 37. Later, the Specification again simply
repeats that at “step 304, the method 300 predicts a base energy consumption
for the vehicle 102 travelling on the road segment based on a personalized
energy consumption model.” Id. ¶ 41. Notably, the phrase “actual base
energy consumption” never appears in the Specification, leaving some
confusion as to whether the claim should recite “actual energy consumption”
instead of “actual base energy consumption.” See id. (“In Step 306, the
method 300 observes the actual energy consumption of the vehicle 102 on
the road segment. In Step 308, the method 300 determines a difference
between the predicted base energy consumption and the actual energy
consumption.”) (emphasis added).
Claim 11, which depends from claim 9, additionally recites a
“relevancy factor.” That, too, is problematic due to the lack of detail
provided as to how the “relevancy factor” is determined. Claim 11 only
recites that the “relevancy factor” is “based on a first set of data entries
corresponding to roads along the route and a second set of data entries
corresponding to roads similar to the roads along the route” and “prioritizes
energy consumption data for the vehicle.” The Specification is similarly
light on details, explaining that “[t]he relevancy factor can depend on road
characteristics, such as number of lanes, speed limit, road grade, road
classification, number of traffic lights or stop signs, etc.” and “can also
depend on a time since the data entries were collected,” without detail as to
how it can depend on these features. Spec. ¶ 38. The most detail provided
as to how the relevancy factor is determined is that “[w]hen the similarity of

2 The model is recited in claim 2 without additional detail.
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road characteristics is high and the time since the data entry was collected is
low, the relevancy factor is the highest and the data is prioritized for use in
Step 212.” Id. Again, however, the direction or guidance presented is
extremely limited, and there are no working examples.
For the reasons set forth above, we reject claims 1–16 and 20 as
failing to comply with the enablement requirement.
CONCLUSION
The Examiner’s decision to reject claims 1–16 and 20 is reversed, and
the decision to reject claims 17–19 is affirmed. A new ground of rejection is
entered with respect to claims 1–16 and 20.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1–8, 20 112(b) Indefiniteness 1–8, 20
1–16, 20 103 Hiestermann 1–16, 20
17–19 103 Hiestermann,
Sellschopp
17–19
1–16, 20 112(a) Enablement 1–16, 20
Overall
Outcome
17–19 1–16, 20 1–16, 20

TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b).
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Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
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:

(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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.

(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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.
§ 1.136(a)(1)(iv).
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AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)