Ex Parte Dragescu

Patent Trial and Appeal Board

Jul 28, 2017

13826624 (P.T.A.B. Jul. 28, 2017)

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.
13/826,624 03/14/2013 James Dragescu 83244555 4093
28395 7590 08/01/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER BRADY, MARIE P.
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES DRAGESCU
Appeal 2015-006691
Application 13/826,6241
Technology Center 3600
Before HUBERT C. LORIN, JAMES A. WORTH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—6, 8—13, and 15—20, which constitute all the
claims presently pending. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellant identifies Ford Global Technologies, LLC as the real party
in interest. Appeal Br. 2.
Appeal 2015-006691
Application 13/826,624
ILLUSTRATIVE CLAIM
1. A system comprising:
a processor configured to:
detect the use of a first vehicle feature;
provide digital points, issued by a vehicle manufacturer,
responsive to the use of the first vehicle feature;
store aggregated digital points in a user record;
determine a second vehicle feature to be used, relating to
the first vehicle feature, which will result in provision of
additional digital points; and
recommend usage of the second vehicle feature.
REJECTIONS2
I. Claims 1—6, 8—13, and 15—20 are rejected under 35 U.S.C.
§ 101 as patent-ineligible subject matter.3
II. Claims 1, 2, 4, 8, 9, 11, 15, 16, and 18 are rejected under 35
U.S.C. § 102(e) as being anticipated by Abboud et al. (US 8,498,792 B2, iss.
July 30, 2013) (“Abboud”).
III. Claims 3, 5, 10, 12, 17, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Abboud and Hyde et al. (US 8,595,037 Bl,
iss. Nov. 26, 2013) (“Hyde”).
2 In addition to Rejections I—IV, identified herein, the Final Office Action
(pages 2—3) rejects claims 1, 4, 6, 8, 13, 15, and 20 under 35 U.S.C. § 112(b)
or 35 U.S.C. § 112,12, (pre-AIA) as being indefinite for failing to
particularly point out and distinctly claim the subject matter the Appellant
regards as the invention. This rejection is withdrawn. See Answer 3.
3 We regard the inclusion of canceled claims 7 and 14 in Rejection I (see
Final Action 3—4) as inadvertent.
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Application 13/826,624
IV. Claims 6, 13, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Abboud, Ross et al. (US 2008/0051955 Al, pub. Feb. 28,
2008) (“Ross”), and Bednarek (US 6,965,868 Bl, iss. Nov. 15, 2005).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Patent-Ineligible Subject Matter
According to the Final Office Action, the claims are directed to the
abstract idea of structured incentives, identified therein as a fundamental
economic practice. See Final Action 3. Further, the claimed elements (even
in combination) are said to amount to no more than instructions to
implement the identified abstract idea on a computer, along with reciting
generic computer equipment for performing generic computer functions that
are well-understood, routine, and conventional activities previously known
to the pertinent industry. See Final Action 3^4.
The Appellant argues that the Final Office Action actually identifies
two possible abstract ideas (“providing incentives” and “structured
incentives”) and, in any event, that the claims do not “tie up” these ideas,
because there are “countess ways” to implement them without running afoul
of the claims. Appeal Br. 8.
The Answer responds that the claims do “tie up” the abstract idea of
providing incentives in regard to vehicle features and goes on to say that,
“[bjased on these findings of fact,” the Examiner is not persuaded by the
Appellant ’ s arguments. Answer 4.
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Application 13/826,624
The Reply Brief counters that — with respect to the dual abstract
ideas of “providing incentives in regards to vehicle features” and “providing
and recommending usage of a vehicle feature” — “no claim could tie up
either idea, because to practice the claims one must do both ideas”; “[t]hus, a
person practicing either idea individually would not infringe the claims, due
to the absence of the other abstract idea.” Reply Br. 2. Moreover, according
to the Reply Brief, the Examiner provides “no actual data or analysis” to
support the statement in the Answer about “tying up” an abstract idea. Id.
Because the Appellant argues all the appealed claims together, the
present analysis concerns claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank
International, 134 S. Ct. 2347 (2014), guides the determination of subject-
matter eligibility.
The first step of the Alice analysis inquires as to whether a claim is
directed to excepted subject matter, such as an abstract idea. Alice, 134
S. Ct. at 2355. In the instant Appeal, although the Appellant contends that
claim 1 might involve two abstract ideas (see Appeal Br. 8), the Appellant
does not challenge the Examiner’s determination that claim 1 is directed to
an abstract idea.
The second step of the Alice analysis inquires as to whether the
claimed elements, considered individually and as an ordered combination,
amount to “significantly more than a patent upon the [ineligible concept]
itself.” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)) (internal quotation marks omitted). The Appellant does not address
this issue. Therefore, the Appellant does not persuasively argue that the
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Application 13/826,624
Examiner erred in rejecting claim 1 — hence, any of the other appealed
claims (claims 2—6, 8—13, and 15—20), per 37 C.F.R. § 41.37(c)(l)(iv) —
under 35 U.S.C. § 101.
The Appellant focuses on whether the claims “tie up” either of the
dual abstract ideas. Appeal Br. 6—7; Reply Br. 2. Yet, “the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Accordingly, the Appellant’s position that the Examiner did not provide
evidence to the contrary (see Reply Br. 2) is also beside the point.
Anticipation
The Appellant argues that Abboud does not “determine a second
vehicle feature to be used, . . . which will result in provision of additional
digital points,” as recited in independent claim 1. Appeal Br. 9.
In response, the Answer (page 7) states:
This limitation does not recite that additional points will be
given based on the use of feature. The claim only recites that
the determination will result in provision of additional points.
There is no positive recitation of the use of the second vehicle
feature; just that the feature is “to be used”.
The Answer goes on to cite portions of Abboud, to support the proposition
that Abboud satisfies the identified limitation. See id. (citing Abboud, col. 2,
11.31-32, col. 3,11. 8-11).
Yet, neither the passages of Abboud cited in the Answer {id.), nor
those identified in the Final Office Action {see Final Action 6 (citing
Abboud, col. 3,11. 25—28, 34—37, col. 5,11. 65—67)) refer to “determining]”
any features — let alone, “determining] a second vehicle feature to be
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Application 13/826,624
used, . . . which will result in provision of additional digital points,” as
claimed.
Further, as set forth in the Appellant’s analysis (see Reply Br. 3), the
claim interpretation expressed in the Answer would require “additional
digital points” to be provided, based only upon “determin[ing] a second
vehicle feature to be used” — not the “use” of the “second vehicle feature.”
Such an interpretation conflicts with the Specification, which explains that
the disclosed embodiments “encourag[e] vehicle infotainment system
usage,” “[b]y rewarding occupants for commonly using popular features
and/or for using new or previously un-used features” — explaining that,
with regard to “points for the user to take an additional step related to [an]
accessed feature,” “the system may encourage the user to actuate one of
those [additional] features if doing so will result in points,” thereby
“providing] the user with additional points, while also making the user
aware of the feature which may not have otherwise been used.” Spec. ^fl[ 1,
30, and 32 (emphasis added).
In any event, as the Appellant points out, the limitation would not be
met under the Examiner’s claim construction, because the cited portions of
Abboud do not refer to awarding points based upon any internal
“determin[ations]” about driving features that should be used. Reply Br. 3.
Accordingly, the Appellant’s argument persuades us of error in the
rejection of independent claim 1 — and for like reasons, independent claims 8
and 15 and dependent claims 2, 4, 9, 11, 16, and 18 — under 35 U.S.C.
§ 102(e).
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Obviousness
The Examiner’s decision rejecting dependent claims 3, 5, 6, 10, 12,
13, 17, 19, and 20 is affected by same defect of Abboud discussed in the
previous section. Because this defect is not cured, by reference to the
additional references relied upon, we do not sustain the rejection of claims 3,
5, 6, 10, 12, 13, 17, 19, and 20 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—6, 8—13, and
15-20 under 35 U.S.C. § 101.
We REVERSE the Examiner’s decision rejecting claims 1, 2, 4, 8, 9,
11, 15, 16, and 18 under 35 U.S.C. § 102(e).
We REVERSE the Examiner’s decision rejecting claims 3, 5, 6, 10,
12, 13, 17, 19, and 20 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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