Ex Parte BetancourtDownload PDFPatent Trial and Appeal BoardFeb 28, 201712134711 (P.T.A.B. Feb. 28, 2017) Copy Citation 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. 12/134,711 06/06/2008 Ernest Bias Betancourt 007032.00009 2201 71822 7590 03/02/2017 BANNER & WITCOFF, LTD 1100 13th Street NW Suite 1200 Washington, DC 20005 EXAMINER MOONEYHAM, JANICE A ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 03/02/2017 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): PTO-71822 @bannerwitcoff. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERNEST BLAS BETANCOURT Appeal 2015-0029711 Application 12/134,7112 Technology Center 3600 Before ANTON W. FETTING, JAMES A. WORTH, and ROBERT J. SILVERMAN, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—3, 8—13, and 17—30. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We AFFIRM. 1 Our decision refers to the Appellant’s Appeal Brief (“Appeal Br.,” filed Sept. 11, 2014) and Reply Brief (“Reply Br.,” filed Jan. 9, 2015), and the Examiner’s Final Office Action (“Final Act.,” mailed Apr. 16, 2014) and Answer (“Ans.,” mailed Nov. 12, 2014). 2 According to Appellant, the real party in interest is Epona LLC (Appeal Br. 2). Appeal 2015-002971 Application 12/134,711 Introduction Appellant’s application relates to “a method and a system for regulating fuel transactions for commercial vehicles,” and specifically “for limiting the amount of fuel transferred to a vehicle at a particular fueling location.” (Spec. 11). Claims 1,11, and 18 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method for regulating fuel transactions, the method comprising: receiving, by a carrier data system, a first fuel consumption corresponding to a first fueling location of a vehicle; receiving, by the carrier data system, a second fuel consumption corresponding to a second fueling location of the vehicle; determining, by the carrier data system, a difference between the first fuel consumption and the second fuel consumption, the difference being an overall fuel consumption of the vehicle corresponding to a distance travelled between the first fueling location and the second vehicle fueling location; determining, by the carrier data system, that an additional distance will be travelled between the first fueling location and the second fueling location and prior to fueling the vehicle; adjusting the determined overall fuel consumption to include fuel consumption associated with the additional distance to be travelled prior to fueling the vehicle; and sending the adjusted overall fuel consumption amount to a fueling station for use in limiting an amount of fuel to be transferred from the fueling station to the vehicle. (Appeal Br., Claims App.) 2 Appeal 2015-002971 Application 12/134,711 Rejections on Appeal The Examiner maintains, and Appellant appeals, the following rejections: I. Claims 1—3, 8—13, and 17—30 stand rejected under 35 U.S.C. § 101 as being is directed to non-statutory subject matter.3 II. Claims 1—3, 8—13, and 17—30 stand rejected under 35 U.S.C. § 103(a) as being is unpatentable over Kapolka (US 2003/0163249 Al, pub. Aug. 28, 2003), Murphy (US 5,913,917, iss. June 22, 1999), and Terranova (US 6,882,900 Bl, iss. Apr. 19, 2005). ANALYSIS Rejection I (Unpatentable subject matter) Claims 1—3, 8—13, and 17—30 The Examiner determines that the claims are directed to the abstract idea of regulating fuel transactions, and specifically towards calculating an overall fuel consumption between fueling locations that accounts for additional distance traveled (Ans. 3). The Examiner reasons that this is both a fundamental business practice and encompasses simple mathematical relationships/formulae (Ans. 3). The Examiner further determines that the additional elements (e.g., “data system”) amount to no more than: (i) mere instructions to implement the idea on a computer and/or (ii) the recitation of generic computer 3 This rejection is set forth in the Answer pursuant to the procedures for a new ground of rejection in the Answer. 3 Appeal 2015-002971 Application 12/134,711 structure that serves to perform generic computer functions, with well- understood, routine, and conventional activities (Ans. 3—4). As evidence, the Examiner points to the claims, which require only a “carrier data system,” and the Specification, which describes general purpose computing equipment, e.g. a “generic computing device” (id.).4 Although Appellant disputes the Examiner’s determination that the claims are directed to an abstract idea and nothing more, Appellant does not provide any arguments with specificity on these points other than to state disagreement (Reply Br. 2—3). Nevertheless, Appellant more specifically argues that the claims do not preempt the field of endeavor because (1) there are “infinite other applications of ‘regulating fuel transactions’ that would not fall within the scope of the claims,” and (2) “the claims require performance of specific algorithms and steps for limiting an amount of fuel to be transferred from a fuel station to a vehicle based on received information and determined information” (Reply Br. 3—4). Appellant also argues that even if the claims are directed to an abstract idea, the claims add significantly more with specific steps and processes to limit fuel transfer, and address the problem of fuel theft in the situation where the individual filling the tank is not paying for the fuel (Reply Br. 4). The Court in Alice emphasized the use of the two-step framework for analysis of patentability set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012): First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, 4 The Examiner refers to paragraph 2 of the Specification, but it appears from context that the Examiner intended to refer instead to paragraph 20. We regard this is as an inadvertent typographical error. 4 Appeal 2015-002971 Application 12/134,711 “[w]hat else is there in the claims before us?” To answer that question, we 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. Alice Corp. v. CLS Bank Inti, 573 U.S.___ , 134 S. Ct. 2347, 2355 (2014). See also USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74,618, 74,621 (Dec. 16, 2014). We are unpersuaded by Appellant’s argument. As an initial matter, under step one of the Alice test, we agree with the Examiner that the recited calculation of fuel consumption is abstract because it is based on mathematical algorithms (see Spec. Fig. 5). See Alice, 134 S. Ct. at 2355. Further, even as argued by Appellant, it is a fundamental economic principle that a business wants an employee to take only those supplies necessary for the business use, and does not want an employee to take extra supplies and convert them for personal use. We are unpersuaded by Appellant’s arguments under step two of Alice that the other claim elements relating to vehicle fueling transform an abstract idea into something more, or that they closely resemble the facts of Diamond v. Diehr, 450 U.S. 175, 187 (1981). In that case, the Court held that the patent was directed to more than a mathematical formula in its application to the molding of rubber products. Id. Here, we are not persuaded that significantly more than a mathematical algorithm is being claimed. See Diehr, 450 U.S. at 190-93 (discussing Parker v. Flook, 437 U.S. 584 (1978)). Indeed, the additional steps on which Appellant relies are steps which could be performed mentally. Further, all steps relate to the same fundamental economic principle of taking only that which is necessary. 5 Appeal 2015-002971 Application 12/134,711 Independent claims 1 and 18 are method claims, and claim 11 is directed to one or more non-transitory computer readable media storing computer readable instructions. Nevertheless, Appellant does not contest the Examiner’s finding that the claimed computer is anything more than a general purpose computer performing a calculation. As to Appellant’s argument that the claims do not pre-empt all applications of an abstract idea, we determine that this argument is addressed by the above analysis of the Alice test in this case. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015) (“Where a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.”). For these reasons, we sustain the Examiner’s rejection under § 101 of independent claims 1,11, and 18. Having reviewed the additional limitations of the remaining claims, we sustain the Examiner’s rejection under § 101 of claims 2, 3, 8—10, 12, 13, 17, and 19—30, for similar reasons as for independent claims 1,11, and 18. Rejection II (Obviousness) Independent claim 1 and dependent claims 2, 3, and 8—10 We are persuaded by Appellant’s argument that Murphy fails to disclose an “additional distance,” as recited in independent claim 1, i.e., determining, by the carrier data system, that an additional distance will be travelled between the first fueling location and the second fueling location and prior to fueling the vehicle adjusting the determined overall fuel consumption to include fuel consumption associated with the additional distance to be travelled prior to fueling the vehicle 6 Appeal 2015-002971 Application 12/134,711 (App. Br. 8—9). In particular, Appellant argues that the “additional distance” corresponds to a distance between a first and a second fueling location. We agree with Appellant based on the claim language itself. The Examiner relies on the teaching in Murphy (col. 1,1. 67 — col. 2,1. 6) that the estimated fuel consumption of the route, i.e., between two points, LI and L2, can be calculated (Final Act. 2; Ans. 6). However, we agree with Appellant that, although points LI and L2 correspond to the beginning and end of a route, there is no teaching in Murphy that points LI and L2 correspond to fueling locations. Nor do Kapolka and Terranova remedy the deficiency therein. As pointed out by Appellant, the Examiner states that Kapolka does not disclose the element of determining a distance between fueling locations (Final Act. 10). Kapolka refers to refueling (e.g., paragraph 18), but does not refer in this context to the distance between fueling locations. Rather, Kapolka is directed to a tax on consumption of gasoline within a jurisdiction. The Examiner does not rely on Terranova for the “additional distance.” Terranova is relied on for providing instructions at the time of fueling. For these reasons, we do not sustain the Examiner’s rejection under § 103 of independent claim 1 and its dependent claims. Independent claims 11 and 18 and dependent claims 12, 13, 17, and 19—30 Independent claims 11 and 18 contain similar language and requirements as independent claim 1. We do not sustain the Examiner’s rejection under § 103 of independent claims 11 and 18, and their dependent claims, for similar reasons as for independent claim 1. 7 Appeal 2015-002971 Application 12/134,711 DECISION The Examiner’s decision to reject claims 1—3, 8—13, and 17—30 under § 101 is affirmed. The Examiner’s decision to reject claims 1—3, 8—13, and 17—30 under § 103(a) is reversed. 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 8 Copy with citationCopy as parenthetical citation