Bowne, Benjamin F. et al.

Patent Trials and Appeals Board

May 1, 2020

2019001433 (P.T.A.B. May. 1, 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.
13/659,405 10/24/2012 Benjamin F. Bowne 16091.105016 5687
86528 7590 05/01/2020
Slayden Grubert Beard PLLC
401 Congress Avenue
Suite 1650
Austin, TX 78701
EXAMINER
SATANOVSKY, ALEXANDER
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
dallen@sgbfirm.com
patent@sgbfirm.com
trosson@sgbfirm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENJAMIN F. BOWNE, NICHOLAS R. BAKER,
NICK U. CHRISTOPULOS, and BRYAN T. WILKERSON
____________

Appeal 2019-001433
Application 13/659,405
Technology Center 2800
____________

Before DONNA M. PRAISS, MICHELLE N. ANKENBRAND, and
JEFFREY R. SNAY, Administrative Patent Judges.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–3, 5–13, 16–23, and 25–31.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellant is the Applicant, State Farm Mutual Automobile Insurance
Company, which, according to the Appeal Brief, is a real party in interest.
Supplemental Appeal Brief, filed December 11, 2018 (“Appeal Br.”) 2.
2 Final Office Action, mailed January 3, 2018 (“Final Act.”).
Appeal 2019-001433
Application 13/659,405

2
STATEMENT OF THE CASE
A. Background
The subject matter on appeal “relates generally to systems and
methods for collecting and evaluating driving behavior data and/or driving
environment data, automatically controlling the starting and stopping of such
data collection, and using such collected data to calculate insurance
premiums.” Specification, filed October 24, 2012 (“Spec.”) 2:10–13.
According to the Specification, an automobile insurance provider “seeks to
assess the risk level associated with a driver and price an insurance policy to
protect against that risk.” Id. at 3:19–22.
The Specification explains that “[i]n the industry today, driving
behavior data for insurance rating purposes is collected by specialized
devices that plug into vehicle data ports.” Id. at 3:27–28. “In accordance
with the teachings of the present disclosure, a mobile device, such as a
smartphone, is used to collect and transmit vehicle operation data, rather
than a specialized device that plugs into a vehicle data port.” Id. at 5:2–4.
According to the Specification, the invention may automatically detect that a
wireless connection has been established between a mobile device and a
vehicle and, in response to the detection, automatically start collection of
vehicle operation data without interaction between the mobile device and a
user. Id. at 5:19–24. The mobile device may also automatically stop
collection of the vehicle operation data in response to the vehicle being
turned off. Id. at 5:12–13.
Of the appealed claims, claims 1, 12, and 22 are independent. Claim
1 is representative of the subject matter on appeal, and is reproduced below:

Appeal 2019-001433
Application 13/659,405

3
1. A mobile device comprising:
at least one accelerometer and a GPS system provided in the
mobile device;
a processor;
a memory;
a Bluetooth enabled radio transmitter; and
a tangible non-transitory computer readable storage medium
containing instructions that, when executed on by the processor,
perform the following steps:
detect a wireless connection established between the
mobile device and a vehicle having an engine by
receiving a first indication from the Bluetooth enabled
radio transmitter that it is connected to the vehicle;
identify the vehicle by vehicle identification information
in response to (a) the vehicle engine being started and (b)
detecting the wireless connection between the mobile
device and the vehicle, automatically start to collect
vehicle operation data via the at least one accelerometer
and a GPS system provided in the mobile device;
continue to collect vehicle operation data via the at least
one accelerometer and GPS system provided in the
mobile device while the wireless connection between the
mobile device and the vehicle is maintained;
sense the orientation of the mobile device within the
vehicle;
store the collected and processed vehicle operation data
in the memory;
transmit the stored vehicle operation data from the
mobile device to a server of a remote data storage system
via a network;
store additional data after transmitting the stored vehicle
operation data;
Appeal 2019-001433
Application 13/659,405

4
automatically detect that the wireless connection between the
mobile device and the vehicle has been disconnected by
receiving a second indication from the Bluetooth enabled radio
transmitter that it is no longer connected to the vehicle; and
in response to detecting the disconnection of the wireless
connection between the mobile device and the vehicle,
automatically stop collecting vehicle operation data via
the at least one accelerometer and GPS system provided
in the mobile device and send any stored additional
vehicle operation data not previously sent to the server;
such that the collection of vehicle operation data via the
at least one accelerometer and GPS system provided in
the mobile device is automatically started and stopped
upon connection and disconnection, respectively, of the
wireless connection between the mobile device and the
vehicle;
process the collected vehicle operation data to calculate one or
more driving behavior metrics; and
transmit the one or more driving behavior metrics from the
mobile device to a remote processing computer.
Appeal Br. 21–22 (Claims App’x).
B. The References
Asahina US 2003/0061160 A1 Mar. 27, 2003
Hawkins US 2006/0184295 A1 Aug. 17, 2006
Berkobin US 2008/0255888 A1 Oct. 16, 2008
Sakai US 2011/0066310 A1 Mar. 17, 2011
Avery US 2011/0072880 A1 Mar. 31, 2011
Pudar US 2011/0301839 A1 Dec. 8, 2011
Breed US 2012/0028680 A1 Feb. 2, 2012
Nath US 2012/0235865 A1 Sept. 20, 2012
Matsuyama US 2012/0258702 A1 Oct. 11, 2012

Appeal 2019-001433
Application 13/659,405

5
C. The Rejections
The Examiner maintains the following rejections on appeal:
1. Claim 30 is rejected under 35 U.S.C § 112, second paragraph,
as indefinite;
2. Claims 1–3, 5–13, 16–23, and 25–29 are rejected under
35 U.S.C. § 101 as being directed to patent ineligible subject matter;
3. Claims 1–3, 9–13, 20–23, and 25–313 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Breed, Matsuyama, Asahina,
Berkobin, Pudar, and Avery;
4. Claims 5, 16, and 25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Breed, Matsuyama, Asahina, Berkobin, Pudar,
Avery, and Sakai;
5. Claims 6 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Breed, Matsuyama, Asahina, Berkobin, Pudar, Avery, and
Hawkins; and
6. Claims 7, 8, 18, 19, and 26 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Breed, Matsuyama, Asahina, Berkobin,
Pudar, Avery, and Nath.

3 The Examiner rejects claims 30 and 31 separately from the § 103(a)
rejection for claims 1–3, 9–13, 20–23, and 25–29. However, like the
rejection of claims 1–3, 9–13, 20–23, and 25–31, the rejections of claims 30
and 31 are over Breed, Matsuyama, Asahina, Berkobin, Pudar, and Avery.
Final Act. 21–23. Therefore, we treat claims 30 and 31 as included with
claims 1–3, 9–13, 20–23, and 25–29 in the § 103(a) rejection over Breed,
Matsuyama, Asahina, Berkobin, Pudar, and Avery.
Appeal 2019-001433
Application 13/659,405

6
OPINION
Indefiniteness Rejection
The Examiner concludes that claim 30 is indefinite because the phrase
“interrupt data collection when the mobile device is not oriented for data
collection” is indefinite. Final Act. 2. Appellant filed an amendment to
amend claim 30 after the Final Action. Amendment, dated March 1, 2018,
9–10. Subsequently, the Board administratively remanded the application to
the Examiner to clarify whether the amendment had been entered. Order
Remanding Appeal to Examiner, dated November 23, 2018. On November
30, 2018, the Examiner mailed a communication to Appellant confirming
that the amendment was entered. Miscellaneous Communication to
Applicant, dated November 23, 2018. As a result, Appellant filed a
Supplemental Appeal Brief on December 11, 2018,4 that includes the correct
language for claim 30 in the Claims Appendix, i.e., the language
corresponding to the March 1, 2018 amendment.
In view of the foregoing, claim 30 currently recites “wherein the
tangible nontransitory computer readable storage medium containing
instructions that, when executed on by the processor, further perform the
step of: interrupt data collection when the mobile device is not properly
oriented for vehicle operation data collection.” Appeal Br. 28 (Claims
App’x). The Examiner’s indefiniteness rejection, however, addresses only
the prior language of claim 30, and does not explain why the current
language of claim 30 is indefinite. Therefore, we do not sustain the

4 In this decision, we cite to Appellant’s Supplemental Appeal Brief, which
we refer to as the Appeal Brief or Appeal Br.
Appeal 2019-001433
Application 13/659,405

7
Examiner’s rejection of claim 30 as indefinite under § 112, second
paragraph.
Subject Matter Eligibility Rejection
After having considered the evidence presented in this Appeal and
each of Appellant’s contentions, Appellant does not identify reversible error
with respect to the Examiner’s rejection of claims 1–3, 5–13, 16–23, and 25–
29. We affirm the Examiner’s rejection of those claims for the reasons
expressed in the Final Action, the Answer, and explained below.
A. Section 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.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, our
inquiry focuses on the Court’s two-part framework, described in Mayo and
Alice. Id. at 217–18 (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). 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.”).
Appeal 2019-001433
Application 13/659,405

8
Concepts the Court has determined are abstract ideas and, thus, patent
ineligible, include certain methods of organizing human activity, such as
fundamental economic practices (e.g., Alice, 573 U.S. at 219–20);
mathematical formulas (e.g., Parker v. Flook, 437 U.S. 584, 594–95 (1978));
and mental processes (e.g., Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
Concepts the Court has determined are 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
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 176; 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 Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection 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 part
of the Alice and Mayo framework, where “we must examine the elements of
Appeal 2019-001433
Application 13/659,405

9
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 (quotation marks 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.
B. USPTO Section 101 Guidance
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (the “2019 Revised Guidance”).5 “All USPTO personnel are,
as a matter of internal agency management, expected to follow the
guidance.” Id. at 51; see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the 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) (“Step 2A, Prong One”); and

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
Appeal 2019-001433
Application 13/659,405

10
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2018)) (“Step 2A, Prong Two”).6
2019 Revised Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, do we then look, under Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, [and] 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 2019 Revised Guidance, 84 Fed. Reg. at 52–55.
C. Analysis
We now apply the 2019 Revised Guidance to the claims. Appellant
argues the claims together. Appeal Br. 8–13. Therefore, we confine our
discussion to claim 1, which we select as representative. Claims 2, 3, 5–13,
16–23, and 25–29 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
1. Step 2A, Prong One — The Judicial Exception
Under Step 2A, Prong One, of the 2019 Revised Guidance, we first
look to whether claim 1 recites a judicial exception, 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). 2019 Revised Guidance, 84 Fed. Reg. at 52–54.

6 We perform this evaluation by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2),
84 Fed. Reg. at 54–55.
Appeal 2019-001433
Application 13/659,405

11
The Examiner concludes that claim 1 is directed to an abstract idea.
The Examiner finds, inter alia, that claim 1’s limitations beginning with “in
response to (a). . .” and ending with “such that the collection of vehicle
operation data. . .” are directed to mental processes. Final Act. 3. More
particularly, the Examiner determines that these limitations involve
processes of comparing data and processes of organizing information that
one can perform with his or her mind. Id.
Citing McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d
1299 (Fed. Cir. 2016), Appellant contends claim 1 is directed to a mobile
device that collects vehicle operation data in a different way.7 Appeal Br.
11–13; Reply Br. 8–9. Specifically, Appellant asserts the invention of claim
1 is similar to the invention at issue in McRO because “[p]rior systems
require the human vehicle operators to personally observe and record vehicle
operation to subjectively identify notable driving events,” but “[t]he mobile
device of the invention objectively identifies notable driving events via
objective criteria,” which “is much different than what humans had
previously done.” Appeal Br. 12 (citing Spec. ¶ 80 (describing how the data
processing module may work in some embodiments)).
Appellant’s arguments are unpersuasive. Here, claim 1 includes the
limitations “in response to (a) the vehicle engine being started and
(b) detecting the wireless connection between the mobile device and the

7 Appellant also argues that claim 1 is not directed to the abstract idea of
determining insurance premiums because claim 1 does not recite this.
Appeal Br. 8; Reply Br. 3–6. Although we agree with Appellant that claim 1
does not recite determining insurance premiums, Appellant’s argument does
not identify a reversible error in the § 101 rejection because the Examiner
identifies limitations of claim 1 that recite a judicial exception (i.e., mental
processes).
Appeal 2019-001433
Application 13/659,405

12
vehicle, automatically start to collect vehicle operation data via the at least
one accelerometer and a GPS system provided in the mobile device” and
“continue to collect vehicle operation data via the at least one accelerometer
and GPS system provided in the mobile device while the wireless connection
between the mobile device and the vehicle is maintained.” Appeal Br. 21
(Claims App’x). Claim 1 also recites “store the collected and processed
vehicle operation data in the memory” and “store additional data after
transmitting the stored vehicle operation data.” Id.
These limitations regard collecting and storing data. The Federal
Circuit has concluded that abstract ideas include certain concepts of
collecting data, recognizing certain data within the collected data set, and
storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014). Such
activities regard longstanding conduct that existed well before the advent of
computers and mobile devices and a human could practically carry them out
in his or her mind. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”). Similarly, the step
of “sense the orientation of the mobile device within the vehicle” is an
activity that a person is able to perform practically with his or her mind, such
as by visually observing a vehicle and a mobile phone within the vehicle and
mentally determining the orientation of the phone in relation to the vehicle.
Appellant’s comparison of claim 1 to McRO fails to persuade us that
claim 1 does not recite mental processes. In McRO, the Federal Circuit
disagreed with a district court’s determination that claims were “drawn to
Appeal 2019-001433
Application 13/659,405

13
the [abstract] idea of automated rules-based use of morph targets and delta
sets for lip-synchronized three-dimensional animation.” 837 F.3d at 1313
(quoting McRO, Inc. v. Sony Computer Entm’t Am., LLC, 55 F.Supp.3d
1214, 1226 (C.D. Cal. 2014)). Instead, the Federal Circuit determined that
“the claims are limited to rules with specific characteristics.” Id. at 1313.
More specifically, the Federal Circuit stated:
[a]s the district court recognized during claim construction, “the
claims themselves set out meaningful requirements for the first
set of rules: they ‘define[ ] a morph weight set stream as a
function of phoneme sequence and times associated with said
phoneme sequence.’”
Id. The Federal Circuit determined “[t]he specific, claimed features of these
rules allow for the improvement realized by the invention.” Id.
In contrast, Appellant’s claim 1 does not recite any rules with specific
characteristics. Although rules of some general nature may be implicated
within some of claim 1’s limitations (e.g., automatically stopping or starting
the collection of vehicle operation data in view of the status of a wireless
connection between the vehicle and mobile device), claim 1 does not recite
rules with specific characteristics for those limitations.
In view of the foregoing, several limitations of claim 1 reasonably
involve mental processes, including observation, evaluation, and judgment.
The 2019 Revised Guidance expressly recognizes mental processes as
constituting an abstract idea. 84 Fed. Reg. at 52. Accordingly, claim 1
recites a judicial exception to patent-eligible subject matter under Step 2A,
Prong One.
Appeal 2019-001433
Application 13/659,405

14
2. Step 2A, Prong Two — Integration into a Practical Application
Under Step 2A, Prong 2 of the 2019 Revised Guidance and the
October 2019 Update, we consider whether claim 1 as a whole integrates the
judicial exception into a practical application of the exception. The October
2019 Update explains that “[a]n important consideration to evaluate when
determining whether the claim as a whole integrates a judicial exception into
a practical application is whether the claimed invention improves the
functioning of a computer or other technology.” October 2019 Update, 12.
Appellant contends the claimed invention amounts to something
significantly more than an abstract idea under the Alice and Mayo
framework because the claims solve a specific technological problem.
Appeal Br. 8–9; Reply Br. 6–7. Specifically, Appellant asserts “the claims
of the present invention are directed to solving the specific technological
problem of collecting vehicle operation data via a mobile device only when
the vehicle is actually being operated.” Appeal Br. 8. Appellant argues
“collecting data while the vehicle is turned off or merely siting stationary
merely overloads the memory of a mobile device with useless information”
and “[c]laim 1 recites specific limitations to ensure the mobile device only
collects vehicle data while the vehicle is operational.” Id. In support of
these arguments, Appellant refers to limitations of claim 1 and paragraphs
8–10, 61, 62, 92, 108, 194, 205, 208, 212, and 215 of the Specification.8
As the October 2019 Update provides, to determine whether the
claimed invention provides a technological improvement, we consider

8 The paragraphs of the original Specification are not numbered; the original
Specification includes page and line numbers instead. Appellant’s citations
appear to refer to the publication of the application, US 2013/0046510 A1,
published February 21, 2013 (“Published Application”).
Appeal 2019-001433
Application 13/659,405

15
whether Appellant’s Specification “provides sufficient details such that one
of ordinary skill in the art would recognize the claimed invention as
providing an improvement.” October 2019 Update, 12. If the Specification
sets forth an improvement in technology, we then evaluate claim 1 “to
ensure that the claim itself reflects the disclosed improvement.” Id.
The passages of the Specification that Appellant cites generally
discuss aspects of Appellant’s invention, such as the collection of vehicle
operation data, automatically detecting establishment of a wireless
connection between a mobile device and a vehicle, and automatically
starting to collect the vehicle operation data in response to detecting the
connection. See, e.g., Published Application ¶¶ 8–10, 108. These passages,
however, do not identify a problem of collecting vehicle operation data via a
mobile device only when the vehicle is actually being operated. Nor do the
cited passages indicate achieving any improvement by not collecting data
while a vehicle is turned off or is merely siting stationary so the memory of a
mobile device is not overloaded with useless information, as Appellant
argues. In other words, the cited passages of Appellant’s Specification do
not provide sufficient details such that one of ordinary skill in the art would
recognize the claimed invention as providing the improvement asserted by
Appellant.
Instead, the Specification explains that an automobile insurance
provider “seeks to assess the risk level associated with a driver and price an
insurance policy to protect against that risk.” Spec at 3:19–22. “In the
industry today, driving behavior data for insurance rating purposes is
collected by specialized devices that plug into vehicle data ports.” Id. at
3:27–28. The Specification states that “[i]n accordance with the teachings of
Appeal 2019-001433
Application 13/659,405

16
the present disclosure, a mobile device, such as a smartphone, is used to
collect and transmit vehicle operation data, rather than a specialized device
that plugs into a vehicle data port.” Id. at 5:2–4. These passages suggest
that Appellant’s invention is directed to using a mobile device instead of
“specialized devices” to collect vehicle operation data, which can be used to
assess a risk level associated with a driver and price an insurance policy. To
the extent that humans previously performed this data collection, as
Appellant argues, Appellant’s invention regards mere automation of a
manual process via a general processor and other generic components (e.g.,
memory and Bluetooth® enabled radio transmitter) of a mobile device.
“[M]ere automation of manual processes using generic computers does not
constitute a patentable improvement in computer technology.” Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
Furthermore, even if the Specification provided “sufficient details
such that one of ordinary skill in the art would recognize the claimed
invention as providing an improvement,” claim 1 does not reflect the
improvement Appellant asserts. As noted above, Appellant asserts the
claimed invention solves a problem by “collecting vehicle operation data via
a mobile device only when the vehicle is actually being operated” and
avoiding data collection “while the vehicle is turned off or merely [sitting]
stationary.” Appeal Br. 8. Claim 1 recites, for example, automatically
starting to collect vehicle operation data in response to detecting a wireless
connection between a mobile device and a vehicle and automatically
stopping or starting the data collection when there is a disconnection or
connection between the vehicle and mobile device. Claim 1, however, does
not recite that the connection status (e.g., a disconnection) is a result of the
Appeal 2019-001433
Application 13/659,405

17
operation status of the vehicle, such as the vehicle merely sitting stationary.
As a result, Appellant’s arguments do not persuade us that the
invention of claim 1 provides an improvement that integrates the judicial
exception into a practical application of the exception.
Claim 1 further recites “detect a wireless connection established
between the mobile device and a vehicle having an engine by receiving a
first indication from the Bluetooth enabled radio transmitter that it is
connected to the vehicle” and “identify the vehicle by vehicle identification
information.” Appeal Br. 21 (Claims App’x). These limitations relate to
data gathering the mobile device performs in claim 1 and, therefore, do not
integrate the judicial exception into a practical application. Insignificant
data gathering steps “add nothing of practical significance to [an] underlying
abstract idea.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
Cir. 2014).
Claim 1 also recites components of the mobile device: at least one
accelerometer and a GPS system, a processor, a memory, a Bluetooth®
enabled radio transmitter, and a tangible non-transitory computer readable
storage medium containing instructions for performing the steps that claim 1
recites. Appeal Br. 21 (Claims App’x). To the extent these limitations
attempt to impose a meaningful limitation on the judicial exception by
generally linking the abstract idea to a particular technological environment
(e.g., a mobile device), the “prohibition against patenting abstract ideas
‘cannot be circumvented by attempting to limit the use of [the abstract idea]
to a particular technological environment.’” Bilski, 561 U.S. at 610 (quoting
Diehr, 450 U.S. at 191–92).
Appeal 2019-001433
Application 13/659,405

18
In sum, we find that claim 1 does not integrate the judicial exception
into a practical application. Accordingly, claim 1 is directed to an abstract
idea.
3. Step 2B — Inventive Concept
Because claim 1 is directed to an abstract idea, we evaluate the
additional elements of the claim, individually and in combination, to
determine whether the claim provides an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
The Examiner concludes, and we agree, that the claims do not contain
any additional elements, individual or in combination, that amount to
significantly more than the abstract idea. Final Act. 4–5. As we explain
above, claim 1 contains the additional elements of at least one accelerometer
and a GPS system, a processor, a memory, and a Bluetooth® enabled radio
transmitter, “detect a wireless connection established between the mobile
device and a vehicle having an engine by receiving a first indication from
the Bluetooth enabled radio transmitter that it is connected to the vehicle”
and “identify the vehicle by vehicle identification information.”
When considered individually, the limitations “detect a wireless
connection established between the mobile device and a vehicle having an
engine by receiving a first indication from the Bluetooth enabled radio
transmitter that it is connected to the vehicle” and “identify the vehicle by
vehicle identification information” relate to routine data gathering, as
discussed above, because the wireless connection is used by the mobile
device to collect vehicle operation data from the vehicle. The “identify” step
regards gathering vehicle identification information. Routine data-gathering
Appeal 2019-001433
Application 13/659,405

19
steps, however, are “insufficient . . . to constitute an inventive concept.”
Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1169 (Fed. Cir. 2019)
(citations omitted). Further, the claim recites these limitations at a high level
of generality, as the Examiner finds. Final Act. 4–5.
The limitations of at least one accelerometer and a GPS system, a
processor, a memory, a Bluetooth® enabled radio transmitter, and a tangible
non-transitory computer readable storage medium are also recited at a high
level of generality. Id. The Specification does not indicate that these
components are anything other than generic components performing generic
functions. To the contrary, the Specification demonstrates the conventional
nature of these elements. Spec. 11:9–19, 11:25–29, 12:1–10, 13:4–7. In
addition, a generic computer processor does not transform an abstract idea
into patent-eligible subject matter. FairWarningIP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“the use of generic computer
elements like a microprocessor or user interface do not alone transform an
otherwise abstract idea into patent-eligible subject matter”).
The additional elements of claim 1 also do not indicate an inventive
concept when viewed as an ordered combination. Citing Thales Visionix,
Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), Appellant argues “the
claims of the present application are directed to handheld computing
devices, blue-tooth transmitter, etc. for collecting vehicle operation data only
when the vehicle is being operated” and, therefore, the claims are not
directed to an abstract idea. Appeal Br. 9–10; Reply Br. 7–8. The claims at
issue in Thales were directed to an unconventional arrangement of inertial
sensors and calculations based on a different reference frame to reduce
errors. 850 F.3d at 1348–49. Appellant does not explain which components
Appeal 2019-001433
Application 13/659,405

20
are arranged in an unconventional manner or how any of the generic
components are operating in an unconventional manner, such as to achieve
the improvement Appellant asserts. Therefore, the additional elements of
claim 1, individually and in combination, fail to provide an inventive
concept such that the claims recite “significantly more” than an abstract
idea.
In summary, we have carefully considered Appellant’s arguments but
are not persuaded of reversible error in the Examiner’s § 101 rejection of
claim 1. Therefore, we affirm the Examiner’s rejection of claims 1–3, 5–13,
16–23, and 25–29.
Obviousness Rejections
A. Rejection of Claims 1–3, 9–13, 20–23, and 25–31 over Breed,
Matsuyama, Asahina, Berkobin, Pudar, and Avery
The Examiner finds Breed discloses a mobile device comprising, inter
alia, at least one of an accelerometer and a GPS system, automatically
detecting that a data connection has been established between the mobile
device and a vehicle, that the data connection is a wireless one via
Bluetooth®, transmitting the collected vehicle operation data from the
mobile device to a server of a remote data storage system via a network,
processing the collected vehicle operational data to calculate one or more
driving behavior metrics, and storing the collected and processed vehicle
operation data and transmitting the stored operation data. Final Act. 7–9.
The Examiner finds Breed does not disclose or suggest
(1) automatically starting to collect vehicle operation data in response to the
vehicle’s engine starting and the detection of a wireless connection between
the mobile device and the vehicle, and (2) stopping collection of the vehicle
operation data via the mobile device upon disconnection of the wireless
Appeal 2019-001433
Application 13/659,405

21
connection between the mobile device and the vehicle, as claim 1 recites.
Id. at 9–10.
As to those limitations, the Examiner finds:
Asahina discloses that the collection of (time) data via the at least
one sensor (communication timer 244, Fig.2) automatically starts
and stops upon detection of connection and disconnection of the
wireless connection between the mobile telephone MS 1, Fig.1
(mobile device) and the switching system 24, Figs.1 and 2
(vehicle).
Id. at 11. The Examiner concludes it would have been obvious to modify
Breed in view of Asahina to, “after the detection of the
connection/disconnection status, correspondingly collect or stop collecting
(time) data in order to accomplish an accurate billing” or:
to just detect the disconnection of the wireless connection to
automatically stop collecting vehicle operation data, since the
vehicle operation data (acceleration, GPS data) would have no
ability to be wirelessly transferred to a smartphone due to a
(detected) absence of the wireless connection and, therefore,
collecting these data would serve no purpose, wherein an
automatic detection of the disconnection status of a wireless
connection, accomplished via an automatic device (control
device) as described by Matsuyama, would be a necessary step
to implement the stoppage of the automatic data collection from
the vehicle such the acceleration or GPS data.
Id. at 13–14.
Appellant argues that “Asahina addresses the problem of tracking cell
phone usage so that the user can be charged for cell phone ‘minutes’ of use
even when the cell phone is disconnected from the cell tower but data is still
being transmitted.” Appeal Br. 26. Thus, “Asahina has nothing to do with
‘in response to detecting the disconnection of the wireless connection
between the mobile device and the vehicle, automatically stop collecting
Appeal 2019-001433
Application 13/659,405

22
vehicle operation data via the at least one accelerometer and GPS system
provided in the mobile device’ as claimed in Claim 1.” Id. at 17.
Appellant’s arguments are persuasive. Breed is directed to enabling
interaction with a vehicle by coupling a smartphone to the vehicle and
transferring data between the smartphone and the vehicle to enable a number
of operations. Breed, at [57]. Breed discloses that the data transfer may be
via Bluetooth® or an equivalent protocol. Id. ¶ 458.
Asahina is directed to providing appropriate timing control and billing
information even when a connection between a mobile telephone and a
wireless section has been released. Asahina ¶¶ 2, 4, 18. In other words,
Asahina regards connections between a mobile device and a cellular system,
not wireless connections (e.g., Bluetooth® connection) between a mobile
device and a vehicle.
In response to Appellant’s arguments, the Examiner states “[t]he
important fact in establishing a rationale to combine the references is a
disclosed ability in Asahina to automatically start/stop wireless collection of
data regardless of the reason of such actions.” Ans. 9. Therefore, the
Examiner explains, “it is not necessary for the prior art to have the same or
similar utility as in the claimed invention.” Id. at 10. The Examiner further
cites the rationales set forth in the Final Office Action for why it would have
been obvious to modify Breed in view of Asahina. Id. The Examiner’s
explanations, however, do not sufficiently articulate why one of ordinary
skill in the art would have modified Breed’s Bluetooth® connection between
a smartphone and a vehicle in view of Asahina’s teachings, which regard
connections between a mobile device and a cellular system and providing
accurate billing in view of such connections. Therefore, Appellant identifies
Appeal 2019-001433
Application 13/659,405

23
a reversible error in the Examiner’s § 103(a) rejection of claim 1 over Breed,
Matsuyama, Asahina, Berkobin, Pudar, and Avery, and we reverse that
rejection.
The Examiner relies on the analysis for claim 1 in rejecting
independent claims 12 and 22. Final Act. 17 (for claim 12, “[t]he claim is
rejected analogously to the rejection of [c]laim 1”), 18 (same for claim 22).
We reverse the Examiner’s rejections of those claims for the same reasons
that we reverse the Examiner’s rejection of claim 1. The Examiner’s
rejections of claims 2, 3, 9–11, 13, 20, 21, 23, and 25–31 do not remedy the
deficiencies we identify with regard to the rejection of claim 1. Therefore,
we also reverse the Examiner’s rejection of claims 2, 3, 9–11, 13, 20, 21, 23,
and 25–31.
B. Rejections of Claims 5–8, 16–19, 25, and 26
The Examiner does not rely on Sakai, Hawkins, or Nath to remedy the
deficiencies we identify with regard to the § 103 rejection over Breed in
view of Matsuyama, Asahina, Berkobin, Pudar, and Avery. Therefore, we
do not sustain the § 103 rejections of claims 5–8, 16–19, 25, and 26 for the
same reasons as those discussed above with regard to the § 103 rejection
over Breed, Matsuyama, Asahina, Berkobin, Pudar, and Avery.

CONCLUSION
The Examiner’s rejection of claim 30 under 35 U.S.C. § 112, second
paragraph is reversed, the Examiner’s rejection of claims 1–3, 5–13, 16–23,
and 25–29 under 35 U.S.C. § 101 is affirmed, and the Examiner’s rejections
of claims 1–3, 5–13, 16–23, and 25–31 under 35 U.S.C. § 103(a) are
reversed.
Appeal 2019-001433
Application 13/659,405

24
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
30 112 Indefiniteness 30
1–3, 5–13,
16–23, 25–
29
101 Eligibility 1–3, 5–13,
16–23, 25–
29

1–3, 9–13,
20–23, 25–
31
103(a) Breed, Matsuyama,
Asahina, Berkobin,
Pudar, Avery
1–3, 9–13,
20–23,
25–31
5, 16, 25 103(a) Breed, Matsuyama,
Asahina, Berkobin,
Pudar, Avery,
Sakai
5, 16, 25
6, 17 103(a) Breed, Matsuyama,
Asahina, Berkobin,
Pudar, Avery,
Hawkins
6, 17
7, 8, 18, 19,
26
103(a) Breed, Matsuyama,
Asahina, Berkobin,
Pudar, Avery, Nath
7, 8, 18,
19, 26
Overall
Outcome
1–3, 5–13,
16–23, 25–
29
30, 31

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART