Ex Parte Berezin et al

Patent Trial and Appeal Board

May 9, 2018

13889911 (P.T.A.B. May. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/889,911 05/08/2013
73811 7590 05/11/2018
Leydig, Voit & Mayer, Ltd.
Two Prudential Plaza, Suite 4900
180 North Stetson Avenue
Chicago, IL 60601-6731
FIRST NAMED INVENTOR
Vyacheslav Berezin
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.
P021380-0ST-ALS/71091 l 5239
EXAMINER
BORISSOV, IGOR N
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
05/11/2018 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VYACHESLA V BEREZIN and NORMAN J. WEIGERT
Appeal2017-005614
Application 13/889,911
Technology Center 3600
Before LYNNE H. BROWNE, FRANCES L. IPPOLITO, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection2 of claims 1--4, 6-9, 11, 12, and 14--23. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as GM Global Technology
Operations LLC. Appeal Br. 1.
2 Appeal is taken from the Final Office Action dated April 29, 2016.
Appeal2017-005614
Application 13/889,911
STATEMENT OF THE CASE
Claims 1, 9, and 1 7 are the independent claims on appeal. Claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A method for transmitting information pertaining to a
charging event, by a plug-in electric vehicle (PEV), which
includes a telematics unit, to an electrical power utility (EPU)
server via a telematics service provider (TSP), the method
compnsmg:
receiving, by the telematics unit of the PEV from an
electric vehicle supply equipment (EVSE), the information
pertaining to the charging event and instructions, wherein the
instructions include instructions directing the telematics unit to
transmit the information pertaining to the charging event to the
TSP·
'
transmitting, by the telematics unit to the TSP, the
information pertaining to the charging event; and
transmitting, by the telematics unit to the TSP, instructions
directing the TSP to forward the information pertaining to the
charging event to the EPU server;
wherein the information pertaining to the charging event
comprises a unique identifier of the EVSE.
THE REJECTIONS
I. Claims 1--4, 6-9, 11, 12, and 14--23 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter.
II. Claims 1, 6-9, 14, 15, 17, and 20 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Shelton (US 8,983,875 B2; issued
Mar. 17, 2015) and Link, II (US 2010/0228404 Al; published Sept. 9,
2010). 3
3 The listing of claims 21-23 in the Examiner's statement of this rejection is
a typographical error, in view of the Examiner's omission of any findings or
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Application 13/889,911
III. Claims 2, 18, and 21-23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Shelton, Link, II, and Solomon (US
2013/0090936 Al; published Apr. 11, 2013).
IV. Claims 3, 11, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shelton, Link, II, Solomon, and Kunhappan (US
2008/0175246 Al; published July 24, 2008).
V. Claims 4 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shelton, Link, II, and Beyer (US 2014/0003255 Al;
published Jan. 2, 2014).
ANALYSIS
Rejection I
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). Under
that framework, we first "determine whether the claims at issue are directed
to one of those patent-ineligible concepts"-i.e., a law of nature, a natural
phenomenon, or an abstract idea. Id. If so, we secondly "consider the
elements of each claim both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79,
78). The Supreme Court has described the second part of the analysis as "a
reasoning directed to claims 21-23 in Rejection II, but inclusion of such
findings and reasoning in Rejection III.
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Application 13/889,911
search for an 'inventive concept'-i.e., an element or combination of
elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept]
itself."' Id. (alteration in original) (quoting Mayo, 566 U.S. at 73).
The Examiner determines that although the pending claims recite a
statutory category of patentable inventions (i.e., a method or a system), the
claims are directed to a judicial exception (i.e., an abstract idea), and
therefore, are not eligible for patentability under 35 U.S.C. § 101. Final Act.
2---6 (citations omitted). In particular, the Examiner determines that the
claims are directed to the "concept of informing a utility regarding a
charging event" through the receipt and transmission of data. 4 Final Act. 3;
Ans. 4. The Examiner also determines that the elements of the claims do not
add significantly more than the abstract idea itself. In support, the Examiner
finds that "a telematics unit (a cellular chip and a wireless modem) for
receiving and transmitting information" is a "generic" and "known and
conventional" computing component, and that receiving and transmitting
data does not "require a particular machine." Final Act. 4; see also Ans. 5
("The claims do not include additional elements beyond the abstract idea of
gathering and combining data, and, as such, do not amount to more than the
abstract idea."). The Examiner further determines that "the recited steps do
not improve the functioning [of] computers [themselves]." Final Act. 4.
4 The Examiner relies on Bilski v. Kappas, 561 U.S. 593 (2010) as an
example of a case holding that "concepts involving human activity relating
to commercial practices" are abstract ideas, and on Gottschalk v. Benson,
409 U.S. 63 (1972) as an example of a case holding that "manipulating
information using mathematical relationships" is an abstract idea. Final Act.
3--4; Ans. 4.
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Application 13/889,911
Appellants argue that the pending claims amount to significantly more
than an abstract idea itself, because the claims recite additional elements that
"specify a particular way of carrying out the general idea of forwarding
electric vehicle recharging service information originating from an electric
vehicle supply equipment (EVSE) to an Electrical Power Utility (EPU)."
Appeal Br. 5. In particular, Appellants submit that "[t]he additional
elements recite forwarding specific information originating from the EVSE
to the EPU via specific communications links in a communications path that
passes through both: a telematics unit and telematics service provider." Id.
We are not persuaded by Appellants' argument that the claim
elements contain an inventive concept sufficient to transform the claimed
abstract idea into a patent-eligible application because the claims specify a
particular type of information (i.e., information including instructions and/or
a unique identifier). Rather, our reviewing court reminds us that
"[i]nformation as such is an intangible" and that "we have treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas."
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016) (internal citations and quotations ornitted).
\Ve are also not persuaded by Appellants' argument that because the
claims specify communication link~', the claim elements contain an inventive
concept sufficient to transform the claimed abstract idea into a patent-
eligible application. Rather, a preponderance of the evidence supports the
Examiner's determination that the claimed telematics unit of a plug-in
electric vehicle ("PEV") is a generic comrnunication and/or computing
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Application 13/889,911
component, or put another way, conventional. Figure l of the Specification
is reproduced below.
!
!m
L~~~~~
~-----------,-----
\
--------------~-------------------
'---· ~ ~ (~
FIG~ 1
Figure 1 is "a schematic diagram of an operating environment for a mobile
vehicle communication system" (Spec. ir 9), wherein "[i]t should be
appreciated that the overall architecture, setup and operation, as well as the
individual components ofa system such as that shown in FIG. 1 are
generally known in the art" (id. ii 14 (emphasis added). \Vi th reference to
Figure 1, the Specification discloses that (i) "vehicle 102 is ... driven by an
electric motor that periodically requires recharging" and "vehicle hardware
110 ... includes: a telematics unit 114" (id. ir 15); (ii) "telematics unit 114 .
. . includes ... a cellular chipset/component 124 [and] a wireless modem
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126," which together ''may be called the network access device (NAD) of
the telematics unit 114," wherein "[t]he NAD 114 further includes a short-
range wireless unit 131" that "may communicate with an electric vehicle
~' .
supply equipment (EVSE)" (id. ii 16); and (iii) "[i]nfotainment-related
services are provided by the [telematics service provider or] TSP," wherein
"content is downloaded to an infotaimnent center 136 operatively connected
to the telematics unit 114 via a vehicle bus 122" (id. ir 19). His further
conventional to communicate (or aggregate) charging infonnation using
links between a plug-in electric vehicle (PEV), electrical vehicle supply
equipment (EVSE), and an electrical power utility (EPU). 5'ee, e.g., Shelton
12:56 to 13:22 (disclosing that it is known to use a PEV's telemetry to tag
charging events with a unique identifier associated with an EVSE (or grid
connection point) and to send the event infonnation to an EPU, which
provides a billing service). Thus, the components of the claimed methods
and system, when considered individually and as an ordered combination,
are conventional, as disclosed by the Specification, and therefore,
insufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the abstract idea itself.
Moreover, the claim elements involve selecting information from
information sources (i.e., links) known to be available in a power grid
involving PEVs. As the court determined in Electric Power Group,
a large portion of the lengthy claims is devoted to enumerating
types of information and information sources available within
the power-grid environment. But 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 form § 101
undergirds the information-based category of abstract ideas.
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Electric Power Group, 830 F.3d at 1355.
Appellants further argue that the claims "define a particular sequence
of operations carried out on a network and a particular configuration of set
of network nodes that, taken as a whole, recite substantially more than
merely sending charge information relating to a PEV to an electrical utility
server." Appeal Br. 7. However, we fail to see how the particular sequence
of first receiving and then transmitting information, via a known telematics
unit and TSP, when considered individually and as an ordered combination,
transforms the claims into patentable subject matter.
Appellants also argue that because the claimed invention is
"sufficiently focused to address particularized needs arising from a
recharging electrically powered vehicles at electric power service stations,"
the claimed invention does not "preclud[ e] a vast variety of alternative ways
to communicate electrical power service usage from an EVSE to an EPU."
Appeal Br. 5. To the extent Appellants are arguing that the claims do not
preempt other practical applications of informing a utility regarding a
charging event through the receipt and transmission of data from a
telematics unit of an electrical vehicle, we do not find Appellants' argument
persuasive. Al though the Supreme Court has described "the concern that
drives [the exclusion of abstract ideas from patent eligible subject matter] as
one of pre-emption," Alice Corp., 134 S. Ct. at 2354, characterizing pre-
emption as a driving concern for patent eligibility is not the same as
characterizing preemption as the sole test for patent eligibility. "The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability" and "[flor this reason, questions
on preemption are inherent in and resolved by the§ 101 analysis." Ariosa
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Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility." Id.
Appellants also argue that the claimed "combination of elements is
non-obvious over the prior art" and therefore, "not merely a computerization
of conventional/known ideas." Appeal Br. 6. To the extent Appellants
argue that the claims necessarily contain an "inventive concept" based on
their alleged non-obviousness over the prior art, this argument is
unpersuasive. Although the second step in the Alice/Mayo framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for "an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 134 S. Ct. at 2355. A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90. Moreover, we are not apprised of error in the
Examiner's determination that receiving and transmitting electric power
usage information within the communication system of electrical consumers
(such as an electric vehicle and charging systems) and an electrical power
utility, is unconventional.
Appellants submit that "two pertinent recent decisions" support
Appellants' argument that the independent claims do not fall within the
judicial exception of an abstract idea. Appeal Br. 9. First, with reference to
Bascom Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016), Appellants submit that the Federal Circuit recognizes that
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"an inventive concept can be found in a non-conventional and non-generic
arrangement of known, conventional pieces" and that in finding that the
claims represented patent-eligible subject-matter, the Federal Circuit further
states, "[ n ]or do the claims preempt all ways of filtering content on the
Internet; rather, they recite a specific, discrete implementation of the abstract
idea of filtering content." Id. at 1350 (citations omitted).
Appellants, however, fail to provide persuasive argument or evidence
that the pending claims represent a non-conventional and non-generic
arrangement of known, conventional pieces. Rather, the claims are similar
to those determined to be patent ineligible in Electric Power Group, wherein
the Federal Circuit determined that the claims were directed to an abstract
idea, because "[ t ]he advance [the claims] purport to make is a process of
gathering and analyzing information of a specified content, ... and not any
particular assertedly inventive technology for performing those functions."
Electric Power Group, 830 F.3d at 1354. Noting that "a large portion of the
lengthy claims is devoted to enumerating types of information and
information sources available within the power-grid environment," the court
determined that "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." Id. at
1355.
Second, with reference to Ex parte Barous, 5 Appellants submit that
the Examiner fails to provide "meaningful evidence ... supporting a bald
5 2016 WL 4128678 (PTAB 2016).
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assertion that the additional claim elements did not amount to significantly
more." Appeal Br. 10 (citing Ex parte Barous 9). We disagree. The
Examiner has provided support for the analysis of both steps one and two of
the Alice/Mayo framework, as set forth supra.
Accordingly, we sustain the Examiner's rejection of independent
claims 1, 9, and 17. Appellants rely on the same arguments presented for the
rejection of independent claims 1, 9, and 17 for the patentability of 2--4, 6-8,
11, 12, 14--16, and 18-23. Appeal Br. 5-12; Reply Br. 4--7. Therefore, for
the same reasons stated supra, we also sustain the Examiner's rejection of
claims 2--4, 6-8, 11, 12, 14--16, and 18-23.
Rejection II
Regarding independent claim 1, the Examiner finds that Shelton
teaches receiving, by the telematics unit of a plug-in electric vehicle (PEV)
from an electric vehicle supply equipment (EVSE), information pertaining to
a charging event and instructions directing the telematics unit to transmit the
information to an electrical power utility (EPU) server, wherein the
information comprises a unique EVSE identifier, as claimed. Final Act. 7
(citing Shelton 9:54--10:5, 12:56-65, 13:4--45, 13:65-14:6, Figs. 1, 3). The
Examiner determines that although "Shelton teaches that the telemetry unit
is installed by a service provider ... , Shelton does not explicitly teach that
said service provider is a telematics service provider (TSP), and
transmitting, by the telematics unit to the service provider, instructions
directing the service provider to transmit the information pertaining to the
charging event to the EPU." Id. at 7-8 (citing Shelton 13:4--17). The
Examiner relies on Link, II for disclosing
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a method and system for providing services by a telematics
service provider (TSP) to subscribers - vehicle owners, wherein
the TSP assists the subscribers with charging electric vehicles
and payment processing related to said charging . . . , and
discloses that the telematics provider may forward the user
inputted information from the interface to another service
provider after it verifies user log in credentials, wherein said
information comprises a unique identifier of the EVSE, thereby
suggesting said "forwarding" feature.
Final Act. 8 (citing Link, II i-fi-155-58). The Examiner reasons that it would
have been obvious "to modify Shelton to include the recited limitations, as
disclosed and suggested in Link, II, because it would advantageously ...
provide the subscriber with a listing of all public charging stations in
accordance with the subscriber's preferences, as specifically disclosed in
Link, II." Id. (citing Link, II i-fi-f 57-58).
Appellants argue that "neither reference describes Appellants'
claimed method, recited in claim 1, wherein a TSP operates as an
intermediate recipient of charging event information (including 'a unique
identifier of the EVSE ') that was received by a telematics." Appeal Br. 15.
However, as set forth supra, the Examiner does not rely on either reference
alone for such a disclosure, but rather on Shelton for disclosing that a
telematics unit of an PEV receives information about a charging event
(including the EVSE's unique identifier) and on Link, II for disclosing that a
TSP may be an intermediary regarding public charging station information,
such that the combination of Shelton and Link, II renders the claimed subject
matter obvious. Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981).
Appellants also argue that
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none of the references demonstrates any awareness of a
particularized problem that would provide a reason to modify
Shelton (in view of Link) in a way that resulted in Appellants'
claimed distinguishing elements that includes: (1) a
particularized transmission path, including the PEV and TSP,
between the EVSE and the EPU; and (2) a "particular
information pertaining to the charging event" passed to the EPU
-notably the "unique identifier for the EVSE."
Appeal Br. 15.
To the extent Appellants are arguing that the prior art references must
provide a rationale for the Examiner's proposed modification, such an
argument appears to be holding the Examiner to the old TSM (teaching,
suggestion, or motivation) standard, which is no longer required. KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). Notwithstanding, the
Examiner provides a rationale from Link, II, namely, that because Link, II
discloses using a TSP to provide information to a telematics unit regarding
public charging stations, Link, II suggests that a TSP is useful as an
intermediary for information relating to vehicle charging. See Final Act. 8
("Link, II ... teaches ... providing services by a telematics service provider
(TSP) to subscribers" and that it is advantageous "to provide the subscriber
with a listing of all public charging stations."). The Examiner relies on
Shelton for disclosing the receipt and transmission of information by the
telematics unit of a PEV to an EPU server regarding a charging event, and
proposes modifying Shelton to include a TSP, as claimed, based on the
teachings of Link, II. See id. at 7-8 ("Shelton ... teaches a method for
transmitting information pertaining to a charging event, by a plug-in electric
vehicle (PEV), which includes a telematics unit, to an electric power utility
(EPU) server" and "transmitting, by the telematics unit"). Appellants'
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argument does not apprise us of error in the Examiner's findings or
reasomng.
According, we sustain the Examiner's rejection of independent claim
1 under 35 U.S.C. § 103(a) as unpatentable over Shelton and Link, II.
Appellants rely on the same arguments presented for the rejection of claim 1
for the patentability of independent claims 9 and 17, and depending claims
6-8, 14, 15, and 20. Appeal Br. 13-16; Reply Br. 7-8. Therefore, for the
same reasons stated supra, we also sustain the Examiner's rejection of
claims 6-9, 14, 15, 17, and 20.
Rejections 111-V
Appellants rely on the same arguments presented for the rejection of
independent claims 1, 9, and 17 for the patentability of claims 2--4, 11, 12,
18, 19, and 21-23. Appeal Br. 16-17; Reply Br. 8. Therefore, for the same
reasons stated supra, we also sustain the Examiner's rejection of claims 2--4,
11, 12, 18, 19, and21-23.
DECISION
The Examiner's rejection of claims 1--4, 6-9, 11, 12, and 14--23 under
35 U.S.C. § 101 is AFFIRMED.
The Examiner's rejection of claims 1--4, 6-9, 11, 12, and 14--23 under
35 U.S.C. § 103(a) is AFFIRMED.
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).
AFFIRMED
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