Ex Parte Aaron et alDownload PDFPatent Trial and Appeal BoardNov 20, 201814348016 (P.T.A.B. Nov. 20, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/348,016 03/27/2014 26875 7590 11/23/2018 WOOD, HERRON & EV ANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Francis Aaron UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www .uspto.gov ATTORNEY DOCKET NO. CONFIRMATION NO. PALL-19 3131 EXAMINER EPSTEIN, BRIAN M ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 11/23/2018 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): usptodock@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANCIS AARON, JULIEN ROUYER, SANDRINE RES SAYRE, CLEMENT LAMBRINOS, YOUSRA CHEBBI, A YMERIC AUGUSTIN, RAPHAEL BARROIS, SYLVAIN GERON, and ANTOINE GERON Appeal2017-009148 Application 14/348,016 Technology Center 3600 Before ST. JOHN COURTENAY III, MATTHEW McNEILL, and BETH SHAW, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-14 and 16-21. Claim 15 is cancelled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b ). We affirm. 1 According to Appellant, the real party in interest is Bluecarsharing of Puteaux, France. App. Br. 3. Appeal2017-009148 Application 14/348,016 STATEMENT OF THE CASE Introduction Embodiments of Appellants' invention generally relate to "a method for managing parking spaces within the context of the automated rental of vehicles." Spec. 1, 11. 4--5. Exemplary Claim 1. A method for managing parking spaces within a context of automated rental of electric vehicles available for rental over a plurality of sites, called rental sites, each of said rental sites including at least one parking space, said method comprising, for at least one rental site, the following steps: determining an item of data, called availability data, relating to a presence or not of an available parking space at said rental site, said determining step comprising, for at least one parking space of said rental site, [L 1] detecting with a detector element a presence or an absence of an electrical connection of an electric vehicle to a charging terminal associated with said parking space, the charging terminal controlled by a control element in communication with the detector element, [L2] and in response to said detecting of an absence of an electrical connection associated with said parking space, identifying the parking space as an available parking space; [L3] transmitting said item of availability data to at least one currently rented electric vehicle via a wireless communication network; displaying said item of availability data in said at least one rented electric vehicle; and completing a rental of the rented electric vehicle based on a connection of the rented electric vehicle to the charging terminal associated with the available parking space. 2 Appeal2017-009148 Application 14/348,016 App. Br. 20 (Claims Appendix) (Contested limitations Ll-L3 emphasized). Rejections A. Claims 1-14 and 16-21 are rejected under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more. Final Act. 3. B. Claims 1-7, 9-14, 16-18, and 21 are rejected under pre-AIA § I03(a) as being obvious over the combined teachings and suggestions of Cahill et al. (US 2002/0099574 Al published Jul. 25, 2002), Redmann et al. (US 2011/0131083 Al published Jun. 2, 2011), and Morgal et al. (US 2010/0228405 Al published Sep. 9, 2010). Final Act. 7. C. Claim 8 is rejected under pre-AIA 35 U.S.C. § I03(a) as being obvious over the combined teachings and suggestions of Cahill, Redmann, Morgal, and Tillotson et al. (US 2006/02502278 Al published Nov. 9, 2006). Final Act. 15. D. Claim 19 is rejected underpre-AIA 35 U.S.C. § I03(a) as being obvious over the combined teachings and suggestions of Cahill, Redmann, Morgal, and Shanbhag et al. (US 2010/0007525 Al published Jan. 14, 2010), and further in view of Kolodziej (US 8,843,307 Bl issued Sep. 23, 2014). Final Act. 16. E. Claim 20 is rejected under pre-AIA 35 U.S.C. § I03(a) as being obvious over the combined teachings and suggestions of Cahill, Redmann, Morgal, and further in view of Stefik et al. (US 2012/0095791 Al published Apr. 19, 2012). Final Act. 18. 3 Appeal2017-009148 Application 14/348,016 Related Appeals Appellants indicate that this appeal is related to the appeal filed in U.S. Application Serial No. 14/348,018 (corresponding to PTAB Appeal 2017-009149). App. Br. 3. Issues on Appeal Did the Examiner err in rejecting claims 1-14 and 16-21 under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more? Did the Examiner err in rejecting claims 1-14 and 16-21 under pre-AIA 35 U.S.C. § 103(a), as being obvious over the cited combinations of references? ANALYSIS We have considered all of Appellants' arguments and any evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below. Rejection A under 35 USC§ 101 Mayo/Alice Analysis Under 35 U.S.C. § 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLSBanklnt'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor 4 Appeal2017-009148 Application 14/348,016 Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Supreme Court in Alice reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent- eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in that analysis is to determine whether the claims at issue are directed to one of those patent-ineligible concepts, such as an abstract idea. Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If the "acts" of a claimed process manipulate only numbers, abstract concepts or ideas, or signals representing any of the foregoing, the acts are not being applied to appropriate subject matter. See Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972). "'Phenomena of nature, thoughjust discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work."' In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk, 409 U.S. at 67). Moreover, if a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent eligible under§ 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011). If the claims are not directed to a patent-ineligible concept, the inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed. Cir. 2017). 5 Appeal2017-009148 Application 14/348,016 Otherwise, the inquiry proceeds to the second step in which the elements of the claims are considered "individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of whether the claims are directed to a specific improvement in the capabilities of the computing devices, or, instead, "a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). We, therefore, decide under step two, whether the claims: (a) set forth an inventive concept that provides a specific means or method that improves the relevant technology, or (b) are directed to a result or effect that itself is the abstract idea, in which the claims merely invoke generic processes and machinery. See Id. The Examiner's Rejection A under 35 USC§ 101 Regarding the first step of the Alice/ Mayo analysis, the Examiner concludes that claims 1-14 and 16-21 are directed to a judicial exception, i.e., an abstract idea: Claims 1-14 and 16-21 are directed to the abstract idea of determining and receiving parking space availability. While independent claims 1, 11, and 16 do not explicitly recite "determining and receiving parking space availability," the concept of "determining and receiving parking space availability" is described by the "detecting," "determining," "transmitting," "receiving," and "displaying" steps/functions of claims 1, 11, and 16. "Determining and receiving parking space availability" is a concept relating to managing relationships or transactions between people ("methods of organizing human activity") similar to the processing of loan information 6 Appeal2017-009148 Application 14/348,016 of Dealertrack, managing an insurance policy of Bancorp, and managing a game of [b Jingo of Planet Bingo. Final Act. 3--4 ( emphasis added). 2 Regarding the second step of the Mayo/Alice analysis, the Examiner finds the claims do not include additional elements that amount to significantly more than the judicial exception, because: the detector/sensor, charging terminal including a control element, electric vehicle, and wireless communication network as recited in each of independent claims 1, 11, and 16 are generic computer components that performs functions (i.e. determining/detecting availability data, transmitting the availability data, displaying the availability data, and completing a rental) that are generic functions (i.e. electronically extracting data, receiving, processing, and storing data, and receiving and transmitting data over a network) that are well-understood, routine, and conventional activities previously known to the industry, see Alice Corp, buySAFE, Cyberfone, Content Extraction and the USPTO July 2015 Update on Subject Matter Eligibility, page 7. None of the steps/functions of independent claims 1, 11, and 16 whether taken alone or in an ordered combination amount to significantly more than the abstract idea identified above. For example, nothing in independent claims 1, 11, and 16 improve another technology or technical field, improve the functioning of any claimed computer itself, applies the abstract idea with a particular machine, or include any elements that may otherwise be considered to amount to significantly more than the abstract idea. Accordingly, independent claims 1, 11, and 16 are ineligible. 2 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340--41 (Fed. Cir. 2013). 7 Appeal2017-009148 Application 14/348,016 None of the dependent claims when separately considered in combination with each dependent claims parent claim( s) overcome the above analysis and are therefore similarly rejected. Final Act. 4--5 (emphasis added). 3 For the aforementioned reasons, the Examiner concludes that all claims 1-14 and 16-21 on appeal are not patent eligible under 35 U.S.C. § 101. Mayo/Alice Analysis -Step 1 Regarding Alice Step 1, Appellants contend: the Examiner has failed to provide specific evidence in support of the position that each of claims 1, 11, and 16, as a whole, is directed to an abstract idea. At pages 3-4 of Final Office Action, the Examiner alleges that each of these claims is directed to the abstract idea of "determining and receiving parking space availability," and, more broadly, to methods of organizing human activity. However, the Examiner discounts meaningful limitations of the claims, evidencing a failure to consider the claims as a whole ... Appellant[ s] assert that claims 1, 11, and 16 recite technological methods and a system that are not sufficiently similar to any of the concepts that the courts have identified as abstract ideas, including "fundamental economic principles," "certain methods of organizing human activity," "an idea of itself," and "mathematical relationships/formulas." App. Br. 11-12. 3 The patent-eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact." Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). 8 Appeal2017-009148 Application 14/348,016 The Examiner disagrees. The Examiner responds that the prima facie burden was met "by citing to the limitations that describe the identified abstract idea and then comparing the identified abstract idea to a plurality of [ c ]ourt decisions." Ans. 3 ( emphasis added). In determining whether claims are patent-eligible under Section 101, our reviewing court guides: "the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016). The Federal Circuit instructs that "[E]xaminers are to continue to determine if the claim recites (i.e., sets forth or describes) a concept that is similar to concepts previously found abstract by the courts." Id. at 1294 n.2. Here, we note under Alice, step one, the Examiner cites to several court decisions to support the conclusion that Appellants' claims are directed to an abstract idea: "Determining and receiving parking space availability" is a concept relating to managing relationships or transactions between people ("methods of organizing human activity") similar to the processing of loan information of Dealertrack, managing an insurance policy of Bancorp, and managing a game of [b Jingo of Planet Bingo. Final Act. 4. On this record, we find Appellants fail to traverse the Examiner's legal conclusion that the claims on appeal are directed to a patent-ineligible abstract idea, without more, by substantively distinguishing the claims on appeal from the subject claims and the courts' analyses in the three 9 Appeal2017-009148 Application 14/348,016 aforementioned cases cited by the Examiner (Dealertrack, 4 Bancorp, 5 and Planet Bingo). 6 Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv). Moreover, we conclude that Appellants' claimed method (or system) for managing parking spaces available for rental over a plurality of rental sites is directed to a fundamental economic practice - managing rental property (i.e., parking spaces) on a timeshare basis. Therefore, on this record, we are not persuaded the Examiner erred in concluding that claims 1-14 and 16-21 are directed to an abstract idea. Mayo/Alice Analysis -Step 2 Because we conclude the claims are directed to an abstract idea for essentially the same reasons articulated by the Examiner (Final Act. 3--4; 4 The Examiner is referring to the pre-Alice Federal Circuit opinion: Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012) (the subject claim 7 of the '841 patent directed to "A computer based method of operating a credit application and routing system" that selectively received credit application data, obtained credit report data, and forwarded the credit application data, was held to be patent ineligible by the court). 5 The Examiner is referring to the pre-Alice Federal Circuit opinion: Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1279 (Fed. Cir. 2012) (holding that claims directed to a method of managing a life insurance policy are patent-ineligible under § 101 because such a method is akin to an automated mental process-using a computer to perform an otherwise ineligible process more efficiency than could be accomplished manually or mentally). 6 The Examiner is referring to the post-Alice non-precedential Federal Circuit opinion: Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014) (Managing a game of bingo). 10 Appeal2017-009148 Application 14/348,016 Ans. 3), we tum to the second part of the Alice/Mayo analysis. We analyze the claims to determine if there are additional limitations that individually, or as an ordered combination, ensure the claims amount to "significantly more" than the abstract idea. Alice, 134 S. Ct. at 2357 (internal quotations and citation omitted). Regarding Alice Step 2, Appellants address the purported inventive concept of the claims. Appellants urge: Nevertheless, even if claims 1, 11, and 16 are determined to recite abstract ideas, these claims readily satisfy Step 2B of the subject matter eligibility test, because each claim as a whole recites "significantly more" than an abstract idea. In support Appellants cite to Diamond v. Diehr, 450 U.S. 175 (1981) App. Br. 12-13. Appellants urge: Similar to the claims in Diamond, Appellant[s'] claims 1, 11, and 16 recite meaningful limitations that improve existing processes and systems for managing parking spaces for electric vehicles. For example, each claim positively recites detecting with a detector element (or sensor) an absence of an electrical connection between an electric vehicle (or electric battery) and a charging terminal associated with a parking space, the charging terminal controlled by a control element that communicates with the detector element. Each claim further recites that detection of the absence of an electrical connection yields an identification of the corresponding parking space as an available parking space. App. Br. 13. We are not persuaded by Appellants' attempt (id.) to analogize the claimed invention on appeal to the patent-eligible "process for molding raw, uncured synthetic rubber into cured precision products," as claimed by Diehr (Respondent) (450 U.S. at 175). 11 Appeal2017-009148 Application 14/348,016 Appellants have not persuasively explained how the claimed "method for managing parking spaces within a context of automated rental of electric vehicles available for rental over a plurality of sites" ( claim 1) is similar to the Diehr chemical process for molding precision synthetic rubber products that involved the transformation of an article (raw, uncured synthetic rubber), into a different state or thing. See e.g., Diehr at 184: Analyzing respondents' claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter. That respondents' claims involve the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing cannot be disputed. ( emphasis added). Appellants note "[t]he Court [in Diehr] found that the measurement step amounted to a meaningful limitation that improved an existing technological process, thereby establishing "'significantly more' than the formula and rendering the claims patent eligible." App. Br. 13. However, we find Appellants' arguments unavailing, because Appellants fail to establish any comparable measurement step or transformation of an article into a different state or thing. See Diehr at 184. Appellants also contend: "[a]s discussed below, the prior art fails to render obvious claims 1, 11, and 16 [Jin view of at least these limitations, and thus the limitations add meaningful value to the claims. Accordingly, these limitations establish 'significantly more' than an abstract idea so as to satisfy Step 2B of the subject matter eligibility test." (App. Br. 13). However, we disagree with Appellants that "the prior art fails to render obvious claims 1, 11, and 16." Id. See infra the evidence cited by 12 Appeal2017-009148 Application 14/348,016 the Examiner that supports our affirmance of the Examiner's rejections under 35 U.S.C. § 103(a). Moreover, the Supreme Court guides: "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." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) (emphasis added). Our reviewing court further emphasizes that "[e]ligibility and novelty are separate inquiries." Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (holding that "even assuming" that a particular claimed feature was novel does not "avoid the problem of abstractness"). In reviewing the record, we find the claims on appeal are silent regarding specific limitations directed to an improved computer system, processor, memory, network, database, or Internet. Therefore, we find Appellants' claimed invention does not provide a solution "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks," such as considered by the court in DDR Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (emphasis added). Further regarding the use of the recited generic "wireless communication network" ( claims 1 and 16), "system" and "display" ( claim 11 ), the Supreme Court has held "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358; see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) 13 Appeal2017-009148 Application 14/348,016 ("An abstract idea on 'an Internet computer network' or on a generic computer is still an abstract idea."). On this record, we are of the view that Appellants' claims do not operate the recited generic computer components in an unconventional manner to achieve an improvement in computer functionality. Our reviewing court provides additional guidance: See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter."); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite "'well-understood, routine conventional activities"' by either requiring conventional computer activities or routine data-gathering steps (internal citation omitted)); see also Elec. Power Grp., 830 F.3d at 1355 ("We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are 'insufficient to pass the test of an inventive concept in the application' of an abstract idea." (quoting buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353, 1355 (Fed. Cir. 2014))); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Rather, the claims recite both a generic computer element-a processor-and a series of generic computer 'components' that merely restate their individual functions .... That is to say, they merely describe the functions of the abstract idea itself, without particularity. This is simply not enough under step two."). 14 Appeal2017-009148 Application 14/348,016 The Supreme Court additionally guides that the "prohibition against patenting abstract ideas 'cannot be circumvented by attempting to limit the use of the formula to a particular technological environment' or [by] adding 'insignificant postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting Diehr, 450 U.S. at 191-92). On this record, we find Appellants have not persuasively established that the guidance of Die hr is applicable to claims 1-14 and 16-21. Nor have Appellants established that claims 1-14 and 16-21 are directed to an improvement in the recited generic system and display ( claim 11 ), or the generic wireless communication network of claims 1 and 16. Therefore, we conclude that none of the claim limitations, viewed both individually and as an ordered combination, amount to significantly more than the judicial exception in order to sufficiently transform the nature of the claims into patent-eligible subject matter. In light of the foregoing, we conclude, under the Mayo/Alice analysis, that each of Appellants' claims 1-14 and 16-21, considered as a whole, is directed to a patent-ineligible abstract idea (under step one), and under step two, does not recite something significantly more to transform the nature of the claim into a patent-eligible application. Accordingly, for the reasons discussed above, we sustain the Examiner's rejection A under 35 U.S.C. § 101 of claims 1-14 and 16-21, as being directed to a judicial exception, without significantly more. 7 7 To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 4I.37(c)(l)(iv). 15 Appeal2017-009148 Application 14/348,016 Rejection B of Independent Claim 1 under 3 5 US. C. § 103 (a) Issues: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by finding the cited combination of Cahill, Redmann, and Morgal would have taught or suggested the contested limitations L 1, L2, and L3: [L 1] detecting with a detector element a presence or an absence of an electrical connection of an electric vehicle to a charging terminal associated with said parking space; [L2] and in response to said detecting of an absence of an electrical connection associated with said parking space, identifying the parking space as an available parking space; [L3] transmitting said item of availability data to at least one currently rented electric vehicle via a wireless communication network[,] within the meaning of representative claim 1? 8 ( emphasis added). Contested Limitations LI and L2 (Claim 1) [L 1] detecting with a detector element a presence or an absence of an electrical connection of an electric vehicle to a charging terminal associated with said parking space; [L2] and in response to said detecting of an absence of an electrical connection associated with said parking space, identifying the parking space as an available parking space; 8 We give the contested claim limitations the broadest reasonable interpretation ("BRI") consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see, e.g., Spec. 10, 11. 15-16 ("It is understood that the embodiments which will be described below are in no way !imitative."). 16 Appeal2017-009148 Application 14/348,016 The Examiner finds Cahill (in combination with Redmann and Morgal) teaches or suggests contested limitation LI at paragraphs 3, 7, 10, 45, 46, and 49. See Final Act. 8. The Examiner finds Redmann (in combination with Cahill and Morgal) teaches or suggests contested limitation L2 at paragraphs 40-52, 80, 81, 93, 95-96, and Figure 6B. See Final Act. 8. Appellants contest limitation L 1 by arguing that an artisan would not have been motivated to modify the system of Cahill to use Redmann' s less accurate method of detecting the presence of a vehicle in a parking space. App. Br. 17. As emphasized by Appellants (id.), "Cahill '547 already utilizes sensors to detect the physical presence of a vehicle in a parking space such as by optical recognition, motion sensing, and proximity detection. (See, Cahill '547 at paragraph 0045.)." Appellants urge that "Redmann '083 recognizes that the absence of an electrical connection does not detect the availability of a parking space in the context of general parking of vehicles." App. Br. 17. Claim Construction 9 In response, the Examiner further explains the basis for the rejection, and concludes, as an initial matter of claim construction, that the availability of a parking space is based on an absence of an electrical connection, as defined in the claims: 9 A determination of anticipation, as well as obviousness, involves two steps. First is construing the claim, a question of law, followed by, in the case of anticipation or obviousness, a comparison of the construed claim to the prior art. This comparison process involves fact-finding. Key Pharms. v. Hereon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998) (citations omitted). 17 Appeal2017-009148 Application 14/348,016 claims 1, 11, and 16 explicitly define availability of a parking space based on "an absence of an electrical connection." Therefore any Appellant[-]suggested weakness in the data of Redmann including that a vehicle may remain in a parking space even if disconnected is equally applicable to Appellants['] claims themselves. That is, Appellant[s] [have] explicitly defined availability in claims 1, 11, and 16 to be based on absence of an electrical connection and therefore Appellants[s'] arguments that a PHOSITA may recognize a weakness in using that data cannot be persuasive. Ans. 6 ( emphasis added). We agree with the Examiner's claim interpretation, because limitation L2 identifies the parking space as an available parking space in response to detecting an absence of an electrical connection associated with said parking space. Therefore, the Examiner is correct that the availability of a parking space is expressly defined in the claims as being based on an absence of an electrical connection. See Ans. 6. A claim meaning is reasonable if one of ordinary skill in the art would understand the claim, when read in light of the specification, to encompass the meaning. See In re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). Applying this guidance here, we also tum to Appellants' Specification for context, and find the Examiner's claim construction is consistent with the Specification: The availability status of at least one parking space can be determined according to at least one of the following options: - by measuring an item of data of the presence of a vehicle in said parking place of said rental site, for example by a presence 18 Appeal2017-009148 Application 14/348,016 detection camera, an infrared sensor, a weighing device, a current loop, etc. such measuring of an item of presence status data preferably carried out at the rental site, and/or - when said parking place is provided with charging means, called a charging terminal, by detecting an electrical connection of said charging terminal to a vehicle, for example by the use of a pilot wire, such a detection being preferably carried out at the rental site, and - optionally, by consulting a database indicating if said parking place is reserved or not, consultation being able to be carried out at the rental site or at the central site. In a comprehensive embodiment, the availability status of a parking space is determined by the use of all of the options combined with each other. Spec. 5 ( emphasis added). We emphasize that the Examiner's ultimate legal conclusion of obviousness is based upon the combined teachings of the cited references. "[T]he law does not require that the references be combined for the reasons contemplated by the inventor." In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). "[ A ]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining" references. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Moreover, "'the question under 35 USC 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made."' Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (Emphasis added); see also MPEP § 2123. 19 Appeal2017-009148 Application 14/348,016 Turning to the evidence cited by the Examiner, we note Cahill ,r 45 describes the use of monitors (i.e., sensors) "[to] detect the presence of absence of vehicles in the parking spaces defining a current empty/occupied status for each parking space." As pointed out by Appellants (App. Br. 17), Cahill ,r 45 describes: The parking area monitors may be any suitable vehicle detection system such as optical recognition, motion sensing, and proximity detection. Each parking space may have a dedicated monitor as shown in FIG. 1, or a single monitor may monitor multiple spaces. After reviewing the evidence, we observe Cahill is silent regarding any mention of electric vehicles. However, we find the availability of a parking space with a charging capability would have been the precise nature of the problem to be solved, as would have been considered by an owner of an electric vehicle (i.e., an artisan), at the time of Appellants' invention. Thus, a solution to this problem was not provided by Cahill, when considered alone, from the perspective of the artisan, who would have had no knowledge of Appellants' claims, Specification, or drawings. As explained by the Examiner: Cahill is silent with regards to electrical vehicles but Redmann discloses both "ordinary parking spaces" and "EV charging enabled parking spaces" (Paragraph 0040 of Redmann) ... since Cahill is silent with regards to electric vehicles and electric vehicle recharging kiosks, Cahill cannot discloses occupancy sensors for parking spaces having recharging kiosks. Redmann was cited to cure this deficiency and it would be obvious to a PHOSITA to incorporate the occupancy decision making approach of Redmann to the method and system of Cahill in order to provide accurate occupancy information for EV parking spaces. Ans. 7-8 ( emphasis added). 20 Appeal2017-009148 Application 14/348,016 The Supreme Court guides: "[A] combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR, 550 U.S. at 401. Applying this reasoning here, we find the Examiner's proffered rationale for the combination is supported by a preponderance of the evidence. 10 We find an artisan would have been motivated to look to the teachings of Redmann, in combination with Cahill, to determine whether a parking space with a charging capability is available at a particular parking lot or parking garage, because Redmann ,r 81 expressly teaches: "charging kiosk 154 may provide an indicator 450, which may be on the body of kiosk 154, or may be several feet above and/or away from it, to indicate which charging kiosks are available (i.e., not occupied, signaled by indicator 450 lighting up green)." Moreover, we agree with the Examiner that the proffered combination of Cahill, Redmann, and Morgal would have merely realized predictable results from familiar elements. See Ans. 8: "a PHOSITA would have recognized the results were predictable (Pages 9 and 14 of the July 25, 2016 Final Office Action)." See KSR, 550 U.S. at 401. 10 The Board's decision is the final decision of the Agency on patentability, and thus the Board reviews the fact finding of the Examiner using a preponderance of the evidence (more likely than not) standard. In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). See also 37 C.F.R. § 42.l(d) ("Evidentiary standard. The default evidentiary standard is a preponderance of the evidence."). "After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). 21 Appeal2017-009148 Application 14/348,016 In the Reply Brief ( 4), Appellants assert the Examiner has relied upon impermissible hindsight in formulating the rejection. However, no evidence is provided in support. 11 In particular, Appellants have not provided objective evidence of secondary considerations ( e.g., unexpected results, long-felt but unmet need, commercial success), which "operates as a beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Nor do Appellants provide any evidence that the elements taught by the cited references are anything other than elements which would have been familiar to artisans of ordinary skill at the time of the invention. 12 On this record, Appellants have not provided persuasive evidence that combining the respective teachings of Cahill, Redmann, and Morgal ( as proffered by the Examiner-Final Act. 9-10; Ans. 7-8) would have been "uniquely challenging or difficult for one of ordinary skill in the art," or that such a combination would have "represented an unobvious step over the 11 It is well settled that mere attorney arguments and conclusory statements, which are unsupported by factual evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence). Thus, counsel's arguments cannot take the place of factually supported objective evidence. See In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also Manual of Patent Examining Procedure (MPEP) § 2145 (9th ed. Nov. 2015) ("Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection."). 12 "The person of ordinary skill in the art ['PHOSITA'] is a hypothetical person who is presumed to know the relevant prior art." In re GP AC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey- Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)). 22 Appeal2017-009148 Application 14/348,016 prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Appellants have not identified any knowledge gleaned only from the present application that was not within the level of ordinary skill at the time the claimed invention was made. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Applying the guidance from our reviewing courts here, and based upon our review of the record, we find the Examiner sets forth sufficient articulated reasoning having a rational underpinning to support the proffered combination of Cahill, Redmann, and Morgal. See Final Act. 4--6, Ans. 2---6. Further, we find the Examiner provided sufficient evidence of a predictable result from combining the familiar elements of Cahill, Redmann, and Morgal, which we find outweighs any purported indicia of impermissible hindsight. Regarding contested limitation L2, Appellants note: "The Examiner looks to Redmann '083 in an effort to cure the deficiencies of Cahill '57 4, and alleges that Redmann '083 teaches 'detecting ... a presence or absence of an electrical connection ... and, in response to said detecting ... identifying the parking space as an available space.' (Final Office Action at p. 8.)(Emphasis added.)" App. Br. 16. Appellants disagree with the Examiner's findings, and contend: Redmann '083 discusses a charging kiosk 154 having an indicator 450 disposed on the body of the kiosk or adjacent the kiosk for providing a visual indication regarding the status of charging to persons within sight of the kiosk. (See, Redmann '083 at paragraph 0081 and FIG. 4.) Paragraph 0096 of Redmann '083 only states that " [ f]ollowing the cessation of charging ... telltale indicator 450 may be updated .... For instance, if charging of a vehicle has just [been] manually 23 Appeal2017-009148 Application 14/348,016 interrupted ... then the indicator may be set to green, indicating a charging parking space 150 is imminently opening up." (Emphasis added.) Accordingly, Redmann '083 recognizes that the mere cessation of charging does not mean that the space is available. Indeed, persons skilled in the art would recognize that charging may be complete and the vehicle may remain parked in the space for an indeterminate amount App. Br. 16-17. However, Appellants' singular focus on Redmann fails to consider the combined teachings and suggestions of the references cited by the Examiner. Even if Appellants are correct that "Redmann '083 recognizes that the mere cessation of charging does not mean that the space is available" (id. at 16), we find the use of Cahill' s monitors (i.e., sensors) to determine whether the space is physically occupied by a vehicle, as described at paragraph 45, would have cured any such deficiency with Redmann. Accordingly, on this record, we find a preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness regarding contested limitations L 1 and L2 of representative claim 1. Contested Limitation L3 (Claim 1) [L3] transmitting said item of availability data to at least one currently rented electric vehicle via a wireless communication network; The Examiner finds limitation L3 is taught or suggested (in combination with Redmann and Morgal) by Cahill at Figure 1 and paragraphs 10 and 47. See Final Act. 8. Appellants contend: Redmann '083 also does not teach or suggest transmitting to a rented electric vehicle over a wireless communication network 24 Appeal2017-009148 Application 14/348,016 an item of availability data that is determined based on the detecting of an absence of such electrical connection. Rather, indicator 450 of Redmann '083 only provides a visual indication of the status of charging ( and the possibility that an associated space may be opening up) to persons within sight of the kiosk. For at least these reasons, Redmann '083 fails to teach or suggest a modification of Cahill '547 that results in the claimed invention. Morgal '405 was only cited with respect to completing a rental of an electric vehicle and does not cure the deficiencies of Cahill '574 and Redmann '083 discussed above. Appellant[ s] therefore request[] that the rejections of claims 1, 11, and 16 be reversed. App. Br. 17. In response, the Examiner disagrees, and notes "the 'transmission' step/function was rejected under primary reference Cahill (Pages 8 and 13 of the July 25, 2016 Final Office Action)." Ans. 8. On this record, we find Appellants' contentions are not persuasive. (App. Br. 17), because Appellants attack the teachings of the references in isolation and do not specifically rebut the Examiner's ultimate legal conclusion of obviousness, which is based on the combined teachings and suggestions of Cahill, Redmann and Morgal. 13 However, in the Reply Brief, Appellants contend: Appellant[s] note[], however, that page 16 of Appellant[s'] Brief explains how Cahill '54 7 does not disclose transmitting availability data based on detecting an absence of an electrical connection to a rented electrical vehicle in view of the Examiner's admission that Cahill '54 7 does not teach or suggest determining availability data relating to the presence or not of an available parking space by detecting the presence or absence 13 See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Id. 25 Appeal2017-009148 Application 14/348,016 of such an electrical connection. Accordingly, Appellant[s'] remarks regarding Redmond '083 shows that the combination of Redmond '083 with Cahill '54 7 fails to cure the deficiencies of Cahill '54 7 previously discussed. Reply Br. 5. Appellants' argument in the Reply Brief is grounded upon an erroneous premise. We conclude that contested limitations L 1 and L2 are obvious over the combined teachings and suggestions cited prior art of record, for the reasons discussed above. Therefore, on this record, we find a preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness regarding contested limitations L 1, L2, and L3 of representative claim 1. Accordingly, for at least the aforementioned reasons, we sustain the Examiner's rejection B under§ 103(a) of representative independent claim 1. Claims 2-7, 9-14, 16-18, and 21 rejected under§ 103 Rejection B The remaining claims not argued separately below (i.e., grouped claims 2-7, 9-14, 16-18, and 21), also rejected under rejection B, fall with representative claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015). Remaining Dependent Claims 8, 19, and 20 rejected under§ 103 Appellants provide a separate heading in the Appeal Brief (18) and advance nominal arguments pertaining to remaining dependent claims 8, 19, and 20, that were rejected under § 103 rejections C, D, and E, respectively. However, we find Appellants' arguments urging patentability are grounded on an erroneous premise that the additional secondary references 26 Appeal2017-009148 Application 14/348,016 cited for rejections C, D, and E, do not cure the purported deficiencies with the base combination of Cahill, Redmann, and Morgal, as relied on by the Examiner to support rejection B. For the reasons discussed above regarding § 103 rejection B of claim 1, we find no such deficiencies regarding the base combination of Cahill, Redmann, and Morgal. Therefore, we sustain § 103 rejections C, D, and E of claims 8, 19, and 20, respectively. Accordingly, on this record, we find a preponderance of the evidence supports the Examiner's underlying factual findings and ultimate legal conclusion of obviousness under§ 103(a) for all claims 1-14 and 16-21 on appeal. Reply Brief To the extent Appellants may advance new arguments in the Reply Brief not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner's Answer will not be considered except for good cause. See 37 C.F.R. § 4I.41(b)(2). CONCLUSIONS The Examiner did not err in rejecting claims 1-14 and 16-21 under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more. The Examiner did not err in rejecting claims 1-14 and 16-21 under 35 U.S.C. § 103(a), as being obvious over the cited combinations of references. 27 Appeal2017-009148 Application 14/348,016 DECISION We affirm the Examiner's decision rejecting claims 1-14 and 16-21 under 35 U.S.C. § 101. We affirm the Examiner's decision rejecting claims 1-14 and 16-21 under pre-AIA 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37 C.F.R. § 4I.50(f). AFFIRMED 28 Copy with citationCopy as parenthetical citation