Ex Parte Brown et al

Patent Trial and Appeal Board

Aug 28, 2018

14036322 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/036,322 09/25/2013
28395 7590 08/30/2018
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Elizabeth Profitt Brown
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.
83380344 1082
EXAMINER
DO,TRUCM
ART UNIT PAPER NUMBER
3669
NOTIFICATION DATE DELIVERY MODE
08/30/2018 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELIZABETH PROFITT BROWN,
KELLY LEE ZECHEL, JOSEPH PAUL RORK,
BRIAN PETERSEN, and EDWARD ANDREW PLEET
Appeal2017-009551
Application 14/036,322
Technology Center 3600
Before BRETT C. MARTIN, LYNNE H. BROWNE, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
1, 4--7, 10--13, and 16--18. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal2017-009551
Application 14/036,322
CLAIMED SUBJECT MATTER
Claims 1, 7, and 13 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computer-implemented method, comprising:
determining, via a computer, when a vehicle-charging
state is detected, if a charging point within a predetermined
proximity to a vehicle location exists in a charging-point
database;
asking a user to identify whether the charging point is
commercial; and
conditional on a non-existence of the charging point and a
user identification of the charging point as commercial, adding
the vehicle location to the database as a new charging point.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Uyeki
Oizumi 1
US 2012/0123670 Al May 17, 2012
WO 2010/150665 Al Dec. 29, 2010
REJECTIONS
I. Claims 1, 4--7, 10-13, and 16-18 stand rejected under 3 5
U.S.C. § 101 as being directed to patent-ineligible subject
matter.
II. Claims 1, 4--7, 10-13, and 16-18 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Uyeki and Oizumi.
1 Although the first named inventor is named Kuroda, both the Examiner and
Appellants refer to this reference as "Oizumi." See e.g., Final Act. 4;
Appeal Br. 9. To avoid confusion, we do so as well.
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Application 14/036,322
DISCUSSION
Rejection I: Eligibility of Claims 1, 4-7, 10-13, and 16-18
The Examiner determines that claims 1, 7, and 13 are not directed to
patent-eligible subject matter. Final Act. 3--4. Specifically, the Examiner
finds that these claims are "directed to [the abstract idea of] a computer
implemented method for adding new charging point/station into a database."
Id. The Examiner further determines that "[t]he claim(s) does/do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the recited steps are merely directed to
generic computer functions of data gathering and data processing." Id. at 4.
The Examiner explains that "the claims are [ direct to a] generalized
formulation for a program to implement the idea on a computer, and/or
recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry." Id. In support, the
Examiner finds that the claimed "data gathering and transfer can be carried
out in existing computers long in use or can be performed without a
computer." Id. Based on this finding, the Examiner concludes that "[t] he
present claims have no substantial practical application except in connection
with a digital computer, and thus the claim is ineligible as it would in effect
be a patent on the algorithm itself." Id.
Appellants contend that claims 1, 7, and 13 "are directed to more than
the alleged abstract idea, the claims represent an improvement in charging
point identification technology and, under the streamlined eligibility
analysis, the claims do not tie up the idea of 'adding new charging point into
a database' such that others cannot practice it." See Appeal Br. 6. Noting
that "the claims include at least the step of determining if a charging point
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within a predetermined proximity of the vehicle already exists in the
database," Appellants argue that "the claims not only require a specific
determination with regards to whether an existing charging point not only
exists, but is also within a predetermined proximity to a vehicle location, the
claims also utilize this information in eventually deciding whether or not to
add the location to the database." Id.
In support of these contentions Appellants further argue that
The claims also represent an improvement in the field of
charging point identification, by allowing a user to identify
commercial charging points, and then by checking to see if a
current existing entry exists within some distance from the
vehicle (since the vehicle may be parked near, but not exactly at,
a charging point) before adding the charging point.
Id. at 6-7.
Although Appellants' invention may be directed to an algorithm that
improves charging point identification technology, Appellants provide no
evidence or persuasive argument that such an improvement constitutes an
improvement in computer technology. See Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) ("[s]oftware can make non-abstract
improvements to computer technology just as hardware improvements can,
and sometimes the improvements can be accomplished through either
route"). Further, the limitations directed to the collection of user input and
the use of such input in the algorithm claimed, as well as the limitations
directed to determining a vehicle location, pertain to the method of
collecting data for entry into a database, and thus do not render the subject
matter of the instant claims non-abstract.
Based on Patent Office guidance issued in 2015, and consequentially
admitting that the claims are directed to a judicial exception, Appellants
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argue that "[i]fthe claim does not tie up the identified judicial exception so
that others cannot practice it, then the claim is patent eligible. This result
reveals the self-evident eligibility of a claim." See id. at 7.
We do not understand the Patent Office guidance relied upon by
Appellants to support the proposition that a claim that does not tie up the
identified judicial exception so that others cannot practice it is patent
eligible. Rather, 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., 132 S.
Ct. 1289, 1294 (2012)). In determining whether a claim is directed to patent-
eligible subject matter, we apply the framework set forth in Alice. We are
not aware of any binding precedent that equates failure to tie up the
identified judicial exception with patent-eligibility.
For these reasons, we sustain the Examiner's decision rejecting claims
1, 7, and 13 under 35 U.S.C. § 101. Appellants do not demonstrate that
dependent claims 2---6, 10-12, and 16-18 include limitations that transform
the subject matter of their respective independent claims into patent-eligible
subject matter. Accordingly, we sustain the Examiner's decision rejecting
these claims as well.
Rejection II: Obviousness of Claims 1, 4-7, 10-13, and 16-18
Based on Uyeki and Oizumi
The Examiner finds that Uyeki and Oizumi disclose or suggest all of
the limitations of claims 1, 7, and 13. See Final Act. 4--5. In particular, the
Examiner finds that "Oizumi teaches identify[ing] whether the charging-
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point is commercial; and conditional on a non-existence of the charging
point and a user identification of the charging point as commercial [sic]."
Id. at 5 (citing Oizumi Fig. 6 as "exemplify[ing] a user interface that allows
user to identify specific detail of a charging station such as 'public' or
'private'." ( emphasis omitted)).
Appellants contend that the Examiner's finding quoted supra is
incomplete and that the Examiner does not explain why action is to take
place if the conditions outlined in the finding take place. See Appeal Br. 10.
Appellants point out that "there is no actual action taught to be taken in
Oizumi based on the identification of a charging point as 'public."' Id.
( emphasis omitted). Given this lack of action, Appellants argue that Oizumi
does not suggest "making a decision to add a charging point based on a user
identification of the charging point as commercial." Id. at 11.
Responding to these arguments, the Examiner simply repeats the
finding quoted supra and concludes that "Oizumi illustrate[ s] a user
interface that allows user to identify specific detail of a charging station such
as 'public' or 'private' ... Ozimui's implicit disclosure of a 'commercial'
charging point locations as corresponding to 'public or private'." Ans. 4.
The Examiner's response is no more complete than the initial finding.
Moreover, the Examiner's reasoning that "it would have been obvious ... to
modify Uyek's with the teaching of Oizumi's to allow the user to add new
charging point with specific information to a charging point database to
improve the navigation system data integrity" does not explain why one
skilled in the art would have made such a modification or what improvement
would have been achieved by such modification. Thus, the Examiner's
reasoning lacks rational underpinning.
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For this reason, we do not sustain the Examiner's decision rejecting
claims 1, 7, and 13, and their respective dependent claims 4---6, 10-12, and
16-18, under 35 U.S.C. § 103.
DECISION
The Examiner's rejection of claims 1, 4--7, 10-13, and 16-18 under
35 U.S.C. § 101 is AFFIRMED.
The Examiner's rejection of claims 1, 4--7, 10-13, and 16-18 under
35 U.S.C. § 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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