Ex Parte De et alDownload PDFPatent Trial and Appeal BoardNov 8, 201712198447 (P.T.A.B. Nov. 8, 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. 12/198,447 08/26/2008 Soumen De P002499-RD-JMC 4074 65798 7590 11/09/2017 MILLER IP GROUP, PLC GENERAL MOTORS CORPORATION 42690 WOODWARD AVENUE SUITE 300 BLOOMFIELD HILLS, MI 48304 EXAMINER ARAQUE JR, GERARDO ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 11/09/2017 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 SOUMEN DE and PULAK BANDYOPADHYAY Appeal 2016-004426 Application 12/198,4471 Technology Center 3600 Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and GEORGE R. HOSKINS, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of claims 1, 3—11, and 13—20, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify GM Global Technology Operations LLC, as the real party in interest. Appeal Br. 3. Appeal 2016-004426 Application 12/198,447 SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellants claim methods for determining a vehicle health index and, more particularly, to a method for determining a vehicle health index using accumulated factored miles that are determined based on actual miles driven and the conditions under which the vehicle has been driven. (Spec. 11). Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A method for determining the state of health of a vehicle or group of vehicles, said method comprising: executing, using at least one computing device coupled to a memory, instructions for: collecting data concerning the vehicle or group of vehicles, wherein collecting data includes collecting aggregate data for vehicles of the same model or vehicle type and collecting individual data from a particular vehicle; using the collected data to determine a percent degradation of components and sub-systems on the vehicle or group of vehicles; accumulating the percent degradation of the components and sub-systems on the vehicle or group of vehicles to provide an accumulated percent degradation; computing a factored miles value based on the accumulative percent degradation for the vehicle or group of vehicles; and 2 Appeal 2016-004426 Application 12/198,447 using the factored miles value to determine the state of health of the vehicle or group of vehicles. The following rejection is before us for review. Claims 1, 3—11, and 13—20 under 35 U.S.C. §101 as being drawn to non-statutory subject matter. 35 U.S.C. § 101 REJECTION Claims 1, 3—11, and 13—20 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. We will sustain this rejection. The Appellants argued independent claims 1,11 and 16 as a group. (Appeal Br. 6). We select claim 1 as the representative claim for this group, and the remaining independent claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). Representative independent claim 1 recites in pertinent part: collecting data concerning the vehicle or group of vehicles, wherein collecting data includes collecting aggregate data for vehicles of the same model or vehicle type and collecting individual data from a particular vehicle; using the collected data to determine a percent degradation of components and sub-systems on the vehicle or group of vehicles; accumulating the percent degradation of the components and sub-systems on the vehicle or group of vehicles to provide an accumulated percent degradation; computing a factored miles value based on the accumulative percent degradation for the vehicle or group of vehicles; and 3 Appeal 2016-004426 Application 12/198,447 using the factored miles value to determine the state of health of the vehicle or group of vehicles Appeal Br. 12. The Supreme Court 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. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us?” To answer that question, . . . 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. [The Court] described step two of this analysis as a 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.” Alice Corp., Pty. Ltd. v CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72—73 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. Although the Court in Alice made a direct finding as to what the claims were directed to, we find that this case’s claims themselves and the Specification provide enough information to inform one as to what they are directed to. 4 Appeal 2016-004426 Application 12/198,447 The steps in claim 1 result in using the factored miles value to determine the state of health of the vehicle or group of vehicles. Also, the Specification at paragraph 3 recites: Because vehicle resale costs and insurance premium costs are typically decided only by vehicle mileage and age, and also to some extent on perception, there is no incentive for a vehicle user to follow recommended service cycles, recommended spare parts and following recommended driving habits. Also, there is no parametric way to characterize the perceived value of a used vehicle that has been used by a vehicle user fulfilling the above mentioned criteria. Thus, all this evidence shows that claim 1 is directed to calculating a factored miles value to determine the state of health of a vehicle or group of vehicles. It follows from prior Supreme Court cases, and Gottschalk v. Benson, 409 U.S. 63 (1972) in particular, that the claims at issue here are directed to an abstract idea. Determining the value of a pre-owned vehicle(s) based on its usage is a fundamental economic practice because it addresses the valuation of the item being sold. The patent-ineligible end of the 35 U.S.C. § 101 spectrum includes fundamental economic practices. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2355—57. Thus, calculating a factored miles value to determine the state of health of the vehicle or group of vehicles is an “abstract idea” beyond the scope of § 101. As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction in the level of abstraction between the concept of an intermediated settlement in Alice and the concept 5 Appeal 2016-004426 Application 12/198,447 of calculating a factored miles value to determine the state of health of a vehicle or group of vehicles, at issue here. Both are squarely within the realm of “abstract ideas” as the Court has used that term. That the claims do not preempt all forms of the abstraction or may be limited to vehicle valuations, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015). The introduction of a computer into the claims does not alter the analysis at Mayo step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implement[t]” an abstract idea “on ... a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations omitted). 6 Appeal 2016-004426 Application 12/198,447 “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea ... on a generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to take in data, compute a result, and return the result to a user amounts to electronic data query and retrieval—some of the most basic functions of a computer. All of these computer functions are well- understood, routine, conventional activities previously known to the industry. In short, each step does no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, the computer components of Appellants’ claims add nothing that is not already present when the steps are considered separately. Viewed as a whole, Appellants’ claims simply recite the concept of calculating a factored miles value to determine the state of health of a vehicle or group of vehicles. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than instructions to calculate a factored miles value to determine the state of health of a vehicle or group of vehicles. Under applicable precedent, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360. 7 Appeal 2016-004426 Application 12/198,447 Thus, we find unpersuasive Appellants’ argument that the claims require “a special purpose controller that improves automotive technologies in the marketplace such that Appellants’ claims are patent eligible” (Appeal Br. 10). As to the structural claims, they are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “wam[ed] ... against” interpreting § 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’ Alice Corp. Pty. Ltd., 134 S. Ct. at 2360 (alterations in original). With this understanding, we turn to Appellants’ other arguments. Appellants argue that, the claim 1 language recreated above is a specific application in the automotive technology marketplace. As also stated by the court in Research Corporation Technologies, “[IJnventors with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.” (Appeal Br. 9). We disagree with Appellants. Appellants do not identify any claimed features that would constitute “significantly more” than the abstract idea, in accord with Alice. Further, preemption is not a separate test, but is inherently addressed within the Alice framework. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “While 8 Appeal 2016-004426 Application 12/198,447 preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. Appellants further argue that: Appellants] maintain[] that the claims in the present application are akin to those in DDR Holdings, LLC v. Hotels.com in that a problem is addressed that is necessarily rooted in computer (and communications) technology in a specific way such that the claims are patent eligible. See the Interim Guidelines of December 16, 2014. The Examiner asserts that repair shops, which are run by humans, are known to identity which components are due for servicing. While a mechanic may know to change a vehicle’s oil every 3 months or 3,000 miles, Appellants] submit[] that these mechanics do not compute factored miles as claimed by Appellants] and discussed above. According to Appellants’] claimed invention, the data collected includes aggregate data that is used to determine the accumulative percent degradation that is part of the computed factored miles, which requires computer technology, i.e., is akin to DDR Holdings. (Appeal Br. 10). We disagree with Appellants. In DDR, the claims at issue involved, inter alia, “web pages displays [with] at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants” (claim 1 of US 7,818,399). There is no such web page with an active link in the claims before us here. All that is required by the claims is a “computing device” and a coupled “memory”. The Specification does not even describe the platform used by the computer system, let alone one that is specially programmed to effect a technological advancement. “[T]he mere recitation of a generic computer cannot 9 Appeal 2016-004426 Application 12/198,447 transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea ‘while adding the words “apply it’” is not enough for patent eligibility.” Alice, 134 S. Ct. 2358 (citation omitted). CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1, 3—11, and 13-20 under 35 U.S.C. § 101. DECISION The decision of the Examiner to reject claims 1, 3—11, and 13—20 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED. 10 Copy with citationCopy as parenthetical citation