Ex Parte Bowen et al

Patent Trial and Appeal Board

May 22, 2018

12628302 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/628,302 12/01/2009
83811 7590 05/23/2018
AT & T LEGAL DEPARTMENT-TREK
PA TENT DOCKETING
ROOM 2A-212, ONE AT&T WAY
BEDMINSTER, NJ 07921
FIRST NAMED INVENTOR
DONALD J. BOWEN
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.
2008-1086 5672
EXAMINER
DUNN, DARRIN D
ART UNIT PAPER NUMBER
2126
MAILDATE DELIVERY MODE
05/23/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD J. BOWEN, PATRICIA E. BOWEN,
PAUL D. HEITMANN, and ROBERT R. MILLER II
Appeal 2017-011020
Application 12/628,302 1
Technology Center 2100
Before JUSTIN BUSCH, JAMES W. DEJMEK, and
JOHN D. HAMANN, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3, 5-14, and 17-24. Appellants have canceled claims 2, 4, 15, and
16. App. Br. 32-35. We have jurisdiction over the remaining pending
claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify AT&T Intellectual Property I, L.P. as the real party in
interest. App. Br. 3.
Appeal 2017-011020
Application 12/628,302
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
"mobile energy storage devices, and more particularly, to a method and
system for managing the provisioning of energy to or from the mobile
energy storage devices." Spec. i-f 1. In a disclosed embodiment, the mobile
energy storage device provides power to an electric vehicle. Spec. i-fi-110, 12.
Claim 1 is representative of the subject matter on appeal and is
reproduced below:
1. A method, comprising:
receiving, by a processor of an application server deployed
in a communication network operated by a service provider and
over the communication network, information pertaining to a
current intended energy use for a mobile energy storage device
associated with a user, wherein the mobile energy storage device
comprises a vehicle;
analyzing, by the processor, whether the current intended
energy use is achievable based upon a current energy state of the
mobile energy storage device, wherein the current intended
energy use comprises a current location of the mobile energy
storage device and an intended destination, wherein the
analyzing applies energy repository information comprising a
charging location, a charging type information pertaining to the
charging location, and an opportunity to sell charge that is stored
in the mobile energy storage device to generate a first
recommendation, wherein the charging type information
indicates an availability of a fast charging resource or an
availability of a slow charging resource at the charging location,
wherein the charging type information further comprises an
energy availability of the charging location, wherein the
opportunity to sell charge comprises an opportunity to sell charge
to another user; and
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Application 12/628,302
providing, by the processor over the communication
network, the first recommendation to a mobile phone associated
with the user in response to the current intended energy use,
wherein the first recommendation is to be displayed on a display
of the mobile phone.
The Examiner's Rejection
Claims 1, 3, 5-14, and 17-24 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 4--8.
ANALYSIS 2
Appellants dispute the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter under 35 U.S.C. § 101. App.
Br. 15-31; Reply Br. 2-9. In particular, Appellants argue the Examiner
erred in characterizing the claims as being directed to the "'determination,
via a processor, of whether a destination is reachable based on charge
levels"' and that the Examiner failed to consider "substantial features"
recited in the pending claims. App. Br. 18-21; Reply Br. 5. Additionally,
Appellants assert that by reciting using an application server to generate and
provide a recommendation to a mobile device, the claims "clearly describe[]
an improvement to a communications network" by allowing for more
lightweight mobile devices and/or mobile energy storage devices. App.
Br. 21-22, 27-28. Further, Appellants contend the claims recite steps that
cannot be performed by a human (i.e., not mere mental steps) and that the
2 Throughout this Decision, we have considered the Appeal Brief, filed
May 8, 2017 ("App. Br."); the Reply Brief, filed August 23, 2017 ("Reply
Br."); the Examiner's Answer, mailed June 23, 2017 ("Ans."); and the Final
Office Action, mailed December 5, 2016 ("Final Act."), from which this
Appeal is taken.
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"claims recite features that are not practices that are well understood or
routine." App. Br. 23; Reply Br. 4.
The Supreme Court's two-step framework guides our analysis. Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). Ifa claim
falls within one of the statutory categories of patent eligibility (i.e., a
process, machine, manufacture, or composition of matter) then the first
inquiry is whether the claim is directed to one of the judicially recognized
exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Alice, 134 S. Ct. at 2355. If so, the second step is to determine whether any
element, or combination of elements, amounts to significantly more than the
judicial exception. Alice, 134 S. Ct. at 2355.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Final Act. 5-6. In
particular, the Examiner concludes the claims are directed to "using a
processor of an application server to determine whether a current intended
use is achievable based upon a current energy state ... to generate a
recommendation." Final Act. 5; Ans. 3--4. Additionally, the Examiner
concludes the determination of whether a destination is reachable is
representative of a mathematical determination and the generation of a
recommendation based upon the determination are similar to other concepts
that courts have deemed to be abstract. Final Act. 5; Ans. 4.
Instead of using a definition of an abstract idea, "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.,
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841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accord United
States Patent and Trademark Office, July 2015 Update: Subject Matter
Eligibility (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (instructing Examiners that "a claimed
concept is not identified as an abstract idea unless it is similar to at least one
concept that the courts have identified as an abstract idea."). As part of this
inquiry, we must "look at the 'focus of the claimed advance over the prior
art' to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257 (Fed. Cir. 2016).
Here, Appellants' claims generally relate to receiving information
regarding a current intended energy use for a mobile energy storage device,
such as a vehicle. Based upon the current energy state of the mobile energy
storage device, the current location, and the intended destination of the
mobile energy storage device (i.e., vehicle), an analysis-including energy
repository information-is performed to determine whether the current
intended energy use is achievable. The results of the analysis are presented
as a recommendation to a user for display on the user's mobile phone.
Appellants characterize the claims as reciting "a new and non-conventional
process for generating and providing a recommendation to a mobile device
from an application server in a communication network as to whether a
current intended energy use of a mobile energy storage device/vehicle is
achievable." Reply Br. 4.
Our reviewing court has concluded that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
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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); see
also Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection,
storage, and recognition of data are directed to an abstract idea").
Additionally, the collection of information and analysis of information (e.g.,
recognizing certain data within the dataset) are also abstract ideas. Elec.
Power, 830 F.3d at 1353. Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017); see also SAP
Am., Inc. v. InvestPic, LLC, No. 2017-2081, slip op. at 8-9 (Fed. Cir. May
15, 2018) ("merely presenting the results of abstract processes of collecting
and analyzing information ... is abstract as an ancillary part of such
collection and analysis") (quotations omitted). Moreover, our reviewing
court recently has concluded that acts of parsing, comparing, storing, and
editing data are abstract ideas. Berkheimer v. HP Inc., 881F.3d1360, 1366
(Fed. Cir. 2018).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co. Ltd., 855
F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to
another abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
Here, the claims are directed to determining whether a current
intended energy use for a mobile energy storage device is achievable based
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on the current location of the mobile energy storage device, an intended
destination, and energy repository information. The results of the
determination are presented to a user in the form of a "first recommendation
to a mobile phone associated with the user." The claims recite a processor
receives information, and analyzes the received information along with
additional information (i.e., energy repository information) to generate a
recommendation (i.e., a determination whether the intended use is
achievable) to be displayed to a user. Contrary to Appellants' assertions
(see, e.g., App. Br. 21-22), the claims are not directed to an improvement to
a communications network, but rather use a communication network as part
of performing the abstract idea. We agree with the Examiner that the claims,
as a whole, are directed to a combination of abstract concepts.
In particular, the steps of receiving and providing information (e.g.,
current intended energy use and a recommendation based on an analysis of
information) over a communication network are similar to ideas that our
reviewing court previously concluded were abstract. See, e.g., Affinity Labs,
(holding that claims were directed to an abstract idea where they claimed
"the function of wirelessly communicating regional broadcast content to an
out-of-region recipient, not a particular way of performing that function");
see also Elec. Power, 830 F.3d at 1353 (concluding "collecting information,
analyzing it, and displaying certain results of the collection and analysis" is
abstract). Further, analyzing information either by steps that one may
perform in their mind or by mathematical algorithm has also been
determined to be abstract. Elec. Power, 830 F.3d at 1354.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
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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 2355 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294, 1297-98 (2012)).
The implementation of the abstract idea involved must be "more than [the]
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (quoting Alice, 134 S. Ct. at 2359) (alteration in original). "Whether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination." Berkheimer, 8 81 F. 3 d at
1369.
Here, we agree with the Examiner that the additional limitations,
separately, or as an ordered combination, do not provide meaningful
limitations (i.e., do not add significantly more) sufficient to transform the
abstract idea into a patent eligible application. Final Act. 6-7; Ans. 4---6.
The Examiner finds, and we agree, reciting a processor as part of the
communication network operated by a service provider represents
conventional and routine use of an application server and, further, that
providing a recommendation from the processor to a mobile phone is merely
outputting a result using conventional data transmission methods. Final
Act. 7. The Examiner cites several patents and published applications in
support of this finding. Final Act. 7.
Appellants dispute that the claims "recite generic computer
components that are performing activities that are routine, conventional, or
previously known in the pertinent industry," but do not provide persuasive
evidence or argument to support this position. App. Br. 29-30; Reply Br. 6-
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9. Further, we note the Specification discloses the use of a "general-purpose
computer" for performing the claimed functions. Spec. i-f 49, Fig. 3; see also
Spec. i-fi-127-28. Additionally, we disagree with Appellants that the claims
recite significantly more under step two of Alice. Appellants recite the claim
language (see App. Br. 27-28), but do not provide sufficient persuasive
evidence or argument regarding how the recited claim language (e.g.,
describing the energy repository information) allegedly transforms the
abstract idea into a patent-eligible application of that idea. See also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That
a computer receives and sends the information over a network-with no
further specification-is not even arguably inventive.")
To the extent Appellants are asserting a lack of rejection under
Sections 102 and/or 103 suggests the instant claims are not "a well-
established 'basic concept"' and/or do not recite well understood, routine, or
conventional activities (see App. Br. 24--25), we are not persuaded. Subject-
matter eligibility under 35 U.S.C. § 101 is a requirement separate from other
patentability inquiries. See Mayo, 566 U.S. at 90 (recognizing that the§ 101
inquiry and other patentability inquiries "might sometimes overlap," but that
"shift[ing] the patent-eligibility inquiry entirely to these [other] sections
risks creating significantly greater legal uncertainty, while assuming that
those sections can do work that they are not equipped to do"); see also
Diamondv. Diehr, 450 U.S. 175, 188-89 (1981) ("[t]he '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"); Two-Way Media Ltd. v.
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Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017)
("[ e ]ligibility and novelty are separate inquiries").
Appellants also argue the claims "do not seek to tie up every process"
for determining whether a destination is reachable based on charge levels.
App. Br. 29; Reply Br. 9.
"' [W]hile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."'
FairWarning IP, 839 F.3d at 1098 (quotingAriosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). Further,"[ w ]here 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." Ariosa,
788 F.3d at 1379.
For the reasons discussed supra, we are unpersuaded of Examiner
error. Accordingly, we sustain the Examiner's rejection of independent
claims 1, 14, and 20 under 35 U.S.C. § 101. Additionally, we sustain the
Examiner's rejection of claims 3, 5-13, 17-19, and 21-24, which depend
directly or indirectly therefrom and were not argued separately. See App.
Br. 18-31; 37 C.F.R. § 41.37(c)(l)(iv)(2016).
DECISION
We affirm the Examiner's decision rejecting claims 1, 3, 5-14, and
17-24 under 35 U.S.C. § 101.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED
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