Sean Smith

Patent Trials and Appeals Board

Aug 30, 2019

14080416 - (D) (P.T.A.B. Aug. 30, 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.
14/080,416 11/14/2013 Sean Smith AIQ-001CP 9527
959 7590 08/30/2019
NELSON MULLINS RILEY & SCARBOROUGH LLP
FLOOR 30, SUITE 3000
ONE POST OFFICE SQUARE
BOSTON, MA 02109
EXAMINER
NEURAUTER JR, GEORGE C
ART UNIT PAPER NUMBER
2447
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
ipboston.docketing@nelsonmullins.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SEAN SMITH1
____________________

Appeal 2018-004335
Application 14/080,416
Technology Center 2400
____________________

Before ROBERT E. NAPPI, JOHN A. JEFFERY, and
JOHNNY A. KUMAR, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1 and 4–20. Claims 2 and 3 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, AUTO I.D., Inc. is the real party in interest.
Appeal Brief (“App. Br.”) 3.
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INVENTION
The invention is directed to determining options for a vehicle based
on a vehicle identifier, manufacturer codes, and model codes.
Spec. Abstract. Claim 1 is illustrative of the invention and is reproduced
below.
1. A computing system for determining additional vehicle
data for a vehicle, comprising
one or more processors for executing computer
programming instructions to:
execute an application;
receive a vehicle identifier for a vehicle;
retrieve manufacturer codes for the vehicle from a
manufacturer database provided by a manufacturer of the
vehicle, the manufacturer codes encoding a build level
configuration for the vehicle;
decode the retrieved manufacturer codes to determine
vehicle option information for the vehicle by accessing at least
one mapping table in a mapping database that maps the
manufacturer codes to the vehicle option information;
output a list of vehicle options for the vehicle to the
application based on the determined vehicle option
information; and
a storage for storing the computer programming
instructions that are executed by the one or more processors.
App. Br. 13 (Claims App.).

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EXAMINER’S REJECTION2
The Examiner rejected claims 1 and 4–20 under 35 U.S.C. § 101 for
being directed to patent-ineligible subject matter. Final Act. 2–5.
ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejections of claims 1 and 4–20 under 35 U.S.C. § 101.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites: “Whoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.”
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation
omitted); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo

2 Throughout this Decision we refer to the Appeal Brief filed October 27,
2017 (“App. Br.”), the Reply Brief filed March 19, 2018 (“Reply Br.”), the
Final Office Action mailed February 7, 2017 (“Final Act.”); and the
Examiner’s Answer mailed January 18, 2018 (“Answer”).
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and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
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of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office “USPTO” recently
published revised guidance on the application of § 101. USPTO’s January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that
guidance, we first determine whether a claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, Jan.
2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
ANALYSIS
Abstract Idea.
The Examiner determines claims 1 and 4–20 are not patent eligible as
they are directed to a judicial exception without reciting significantly more.
Final Act. 2–5; see also Ans. 2–6. Specifically, the Examiner determines the
claims are directed to “automating a process to organize and/or analysis
information in a way that can be performed mentally.” Ans. 3. The
Examiner considers this to be an abstract idea that can be performed in the
human mind or with pen and paper (i.e., mental processes). See Ans. 3, 5–6
(citing Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)).
Appellant argues the Examiner’s analysis is in error because “the
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Examiner’s characterization of the claimed invention is far too general and
over-simplified.” App. Br. 9; Reply Br. 2–3. Appellant argues that because
claim 1 “recites concrete computer system components performing
computing operations using mapping tables, databases and processors,” it
“cannot be fairly characterized as mere mental steps.” App. Br. 8.
Appellant further argues that the claims “are not merely directed to
automating a process that can be performed mentally” because claim 1: (1)
“makes reference to ‘a manufacturer database provided by a manufacturer of
the vehicle,’” (2) “recites ‘at least one mapping table in a mapping database
that maps the manufacturers code to the vehicle option information,’” and
(3) “recites that the one or more processors ‘execute an application’ and that
a list of vehicle options for the vehicle are output to the application.” Reply
Br. 2–3.
We concur with the Examiner’s conclusion that the claims are
directed to an abstract idea. Representative claim 13 recites:
execute an application . . . receive a vehicle identifier for a
vehicle . . . retrieve manufacturer codes for the vehicle from a
manufacturer database provided by a manufacturer of the
vehicle, the manufacturer codes encoding a build level
configuration for the vehicle . . . decode the retrieved
manufacturer codes to determine vehicle option information for
the vehicle by accessing at least one mapping table in a
mapping database that maps the manufacturer codes to the
vehicle option information . . . output a list of vehicle options
for the vehicle to the application based on the determined
vehicle option information . . . a storage for storing the
computer programming instructions that are executed by the
one or more processors.

3 We select claim 1 as representative of claims 1 and 4–20. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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App. Br. 13 (Claims App.).
These limitations, under their broadest reasonable interpretation,
recite an abstract mental process of collecting/gathering information (receive
a vehicle identifier and retrieve manufacturer codes), analyzing it (decode by
accessing a mapping table), providing the results (output the list of vehicle
options), and storing data. Our reviewing court has concluded that abstract
ideas include similar concepts of collecting, manipulating, providing, and
storing data. See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1340 (Fed. Cir. 2017) (we held the concept of . . . collecting
data, . . . recognizing certain data within the collected data set,
and . . . storing that recognized data in a memory abstract); see also Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343,
1347 (Fed. Cir. 2014) (claims are drawn to the basic concept of data
recognition and storage); Electric Power Grp., 830 F.3d at 1353 (merely
selecting information, by content or source, for collection, analysis, and
display does nothing significant to differentiate a process from ordinary
mental processes, whose implicit exclusion from § 101 undergirds the
information-based category of abstract ideas); CyberSource v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (purely mental
processes can be unpatentable, even when performed by a computer). Thus,
Appellant’s arguments that the claims recite elements that cannot be
characterized as mental steps or performed mentally have not persuaded us
the Examiner erred in finding the claims are directed to an abstract idea. See
App. Br. 8–9; Reply Br. 2–3.
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Practical Application/Significantly More Than Abstract Idea
The Examiner finds that the claims do not include additional elements
that are sufficient to amount to more than the judicial exception. Final Act.
3–5; Ans. 2, 5–6. Appellant disagrees, contending that the claims recite
patent eligible subject matter because the “claims are drawn to an
unconventional technological solution to a technical problem.” App. Br. 10–
11; Reply Br. 3–5 (emphasis omitted) (citing Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1300–01, 1303 (Fed. Cir. 2016), Enfish, LLC
v Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Specifically, Appellant
argues that retrieving and decoding manufacturer codes from a manufacturer
database using unique mapping tables to obtain a list of vehicle options, as
claimed, is an unconventional solution to a technological problem because
conventional systems were either manual systems or systems with
incomplete information. App. Br. 10.
We first address Appellant’s contention that the claims improve a
technological problem in a manner analogous to that in Amdocs.
App. Br. 10. Appellant states that the court, in Amdocs, “concluded that use
of [a] generic component in an unconventional manner to solve a
technological problems were [sic] directed to statutory subject matter. In
particular, the use of gatherers [] that gather information from network
devices in a unique way has [sic] deemed unconventional.” App. Br. 10.
Appellant does not explain, however, and we do not discern, how the present
invention gathers information as in Amdocs. In Amdocs, the claims were
directed to an unconventional distributed architecture. See Amdocs, 841
F.3d 1288 at 1303. The court explained that the “enhancing limitation
depends not only upon the invention’s distributed architecture, but also
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depends upon the network devices and gatherers—even though these may be
generic—working together in a distributed manner.” Id. at 1301. Here, the
claims are directed to obtaining vehicle information, decoding the vehicle
information using a mapping table in a mapping database to determine
vehicle options, providing a list of vehicle options to an application, and
storing instructions. See App. Br. 13 (Claims App.). Appellant has not
provided persuasive evidence indicating that the claims are directed to a
unique distributed architecture comprising network devices and gatherers
working together in an unconventional manner.
We next address Appellant’s contention that the claims improve a
technological problem in a manner analogous to that in Enfish. App. Br. 10.
Appellant states that, in Enfish, “the recitation of self-referential database
tables in the claims was enough of an improvement of an existing
technology for the claims to be deemed to recite patent eligible subject
matter and not an abstract idea.” Id. The claimed self-referential table in
Enfish was a specific type of data structure designed to improve the way a
computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To
the extent Appellant contends that the claimed invention uses such a data
structure to improve a computer’s functionality or efficiency, or otherwise
change the way that system functions, there is no persuasive evidence on this
record to substantiate such a contention. Rather, the generic components
recited in the claims (e.g., processor, mapping table, mapping database,
storage) are merely tools used to implement the abstract idea. See Enfish,
822 F.3d at 1336; see also Alice, 573 U.S. at 221 (“[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.”) (citation omitted).
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Accordingly, we are not persuaded by Appellant’s arguments that the
claims recite patent eligible subject matter because the “claims are drawn to
an unconventional technological solution to a technical problem.” App. Br.
10–11; Reply Br. 3–5, (emphasis omitted).
Appellant additionally contends that the claims recite significantly
more than an abstract idea, specifically arguing:
The Appellant has come up with a novel approach to
automating the obtaining of comprehensive vehicle information.
The Appellant gains access to manufacturer databases to obtain
manufacturer codes. The Appellant has determined the meaning
of each set of manufacturer codes. As was mentioned above, each
manufacturer has a different way of encoding the information
using manufacturer codes. The Appellant has discovered the
meaning of these codes and has discovered how to decode them.
Moreover, Appellant has found a mechanism, in the form of
mapping tables in a mapping database, to efficiently and quickly
map the manufacturer codes to vehicle option information so as
to decode the retrieve manufacturer codes.
App. Br. 10–11; see also Reply Br. 4–5.
Although Appellant has explained the approach to automating the
process of obtaining comprehensive vehicle information, Appellant has not
identified the specific claim limitations that are sufficient to ensure that the
claims are directed to significantly more than an abstract idea. See App. Br.
10–11; see also Reply Br. 4–5. Moreover, the Examiner finds, and we
agree, that some of the features upon which Appellant relies are not recited
in the claims. Ans. 4–5. Specifically, the claims do not recite Appellant’s
novel approach regarding: (1) gaining access to manufacturer databases, and
(2) determining the meaning of each set of manufacturer codes. Thus,
Appellant has not demonstrated how the claims amount to significantly more
than an abstract idea such that the claims are transformed into patent-eligible
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subject matter. See App. Br. 10–11; see also Reply Br. 4–5.
Further, Appellant has not demonstrated its claims provide a “solution
. . . necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks,” as
explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com, LP,
773 F.3d 1245, 1257 (Fed. Cir. 2014), or provide an unconventional
technological solution in which generic components operate in an
unconventional manner through the use of network devices and gatherers
that permit data to reside in the peripheries of the system, but still be
accessible from a central location, as explained in Amdocs, 841 F.3d 1288.
Accordingly, we are not persuaded by Appellant’s arguments that the
claims recite patent eligible subject matter because the “claims recite
significantly more than an abstract idea.” App. Br. 10–11; Reply Br. 4–5.
Appellant contends that the claims do not broadly preempt related
technologies because they are “fairly narrowly cast to a particular
implementation.” App. Br. 10, emphasis omitted. Specially, Appellant
argues the claims are limited to the use of a manufacturer database that is
provided by a manufacturer of a vehicle and that includes manufacturer
codes that encode a build level configuration for the vehicle. App. Br. 9;
Reply Br. 3.
Appellant’s arguments are not persuasive. Our reviewing court has
held “[w]here a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, . . . preemption concerns are fully
addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015). “While preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
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demonstrate patent eligibility.” Ariosa, 788 F.3d at 1379; see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract.”). As such, Appellant’s arguments directed to the claims not tying
up the related technologies have not persuaded us of error.
In summary, Appellant’s arguments have not persuaded us of error in
the Examiner’s determination that the claims are directed to an abstract idea;
a mental process. Nor have Appellant’s arguments persuaded us the claims
are directed to a practical application of the abstract idea. Further,
Appellant’s arguments have not persuaded us that the Examiner erred in
finding that the claims are not directed to: an improvement in the
functioning of the computer or to other technology or other technical fields;
a particular machine; performing or affecting a transformation of an article
to a different state or thing; and/or using a judicial exception in some
meaningful way beyond linking the exception to a particular technological
environment such that the claims as a whole are more than a drafting effort
to monopolize the judicial exception.
Accordingly, we sustain the Examiner’s rejection of claim 1 and 4–20
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.

DECISION
We affirm the Examiner’s rejections of claim 1 and 4–20 under
35 U.S.C. § 101.

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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).

AFFIRMED