Ex Parte Eckhoff et al

Patent Trial and Appeal Board

May 25, 2017

12462933 (P.T.A.B. May. 25, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/462,933 08/11/2009 Philip A. Eckhoff 1108-035-012-000000 4973
138951 7590 05/30/2017
Advent, LLP/INTELLECTUAL VENTURES
The Advent Building
17838 Burke Street
Suite 200
Omaha, NE 68118
EXAMINER
NGUYEN, CUONG H
ART UNIT PAPER NUMBER
3663
NOTIFICATION DATE DELIVERY MODE
05/30/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP A. ECKHOFF, WILLIAM H. GATES III,
PETER L. HAGELSTEIN, RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, JORDIN T. KARE, ROBERT LANGER,
ERIC C. LEUTHARDT, EREZ LIEBERMAN, STEPHEN L. MALASKA,
NATHAN P. MYHRVOLD, MICHAEL SCHNALL-LEVIN,
CLARENCE T. TEGREENE, and LOWELL L. WOOD, JR.
Appeal 2014-008920
Application 12/462,933
Technology Center 3600
Before GEORGE R. HOSKINS, AMANDA F. WIEKER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
MARSCHALL, Administrative Patent Judge.
DECISION ON APPEAL
Philip A. Eckhoff et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Examiner’s decision rejecting claims 399, 400, 402, 404,
406, 408—413, 417, 418, 421, 422, 429, 431, 433, 434, 444, 445, 452, 454,
458, and 469-477. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2014-008920
Application 12/462,933
THE CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “Awarding Standings to
a Vehicle Based Upon One or More Fuel Utilization Characteristics.” Spec.
1:1—2. Claim 399, reproduced below, is the only independent claim and is
representative of the claimed subject matter.
399. A computer program product tangibly embodied in a
computer readable medium, comprising:
a non-transitory signal bearing medium bearing
computer usable code configured for receiving a status
indicative of combustible fuel utilization in comparison
to electricity utilization for a vehicle; and
computer usable code configured for allocating a
standing based upon the status indicative of combustible
fuel utilization in comparison to electricity utilization for
the vehicle, wherein the standing is allocated upon
receipt of the status.
Appeal Br. 46 (Claims App.).
THE EVIDENCE
The Examiner relied upon the following prior art references in
rejecting the claims on appeal:
McArthur US 7,141,321 B2 Nov. 28, 2006
Perlman US 2010/0044123 A1 Feb. 25,2010
Crowe US 2010/0052888 A1 Mar. 4, 2010
Brigham US 7,717,202 B2 May 18,2010
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Application 12/462,933
THE REJECTIONS
Appellants seek review of the following rejections:
1. Claim 399 under 35 U.S.C. § 101 for (provisional) statutory type
double patenting based on claim 167 of Application No.
12/798,907.
2. Claims 399, 402, 404, 406, 408-413, 431, 433, 434, and 469-474
under 35 U.S.C. § 103(a) as unpatentable over Crowe and
Brigham.
3. Claims 400, 421, 422, 429, 444, 445, 452, 454, 458, and 475^177
under 35 U.S.C. § 103(a) as unpatentable over Crowe, Brigham,
and Perlman.
4. Claims 417 and 418 under 35 U.S.C. § 103(a) as unpatentable over
Crowe, Brigham, and McArthur.
ANALYSIS
Double Patenting
The Examiner rejected claim 399 for statutory type double patenting
because “similar claimed scope is obviously presented” in claim 167 of
Application No. 12/798,907. Final Act. 2; see also Ans. 14 (finding that the
two pending claims “can be rejected with similar references because they
comprise similar claimed limitations”). Appellants argue that the
Examiner’s finding of “similar claimed scope” “failed to establish evidence
that independent claim 399 of the instant application is directed to identical
subject matter as claim 167,” which is a prerequisite for statutory type
double patenting rejections. Appeal Br. 43; see also Reply Br. 26—27.
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Application 12/462,933
The Examiner based the double patenting rejection on a claim in a
pending application, and the rejection was therefore provisional in nature.
See Final Act. 2—3. The Examiner mailed the Final Office Action on July
29, 2013 and mailed the Examiner’s Answer maintaining the double
patenting rejection on June 17, 2014. See Final Act. (cover page); Answer 1,
14. On October 30, 2014, the pending application that included claim 167,
and which formed the basis for the provisional rejection at issue in this
appeal, was abandoned. See Application No. 12/798,907, Notice of
Abandonment at 2 (mailed Oct. 30, 2014). Under these circumstances, we
do not reach the double patenting rejection.
Obviousness
Claim 399 requires “computer usable code configured for receiving a
status indicative of combustible fuel utilization in comparison to electricity
utilization for a vehicle” and “allocating a standing based upon the status
indicative.” Appeal Br. 46 (Claims App.). The Examiner found that
Crowe’s textual indicator 340 discloses the claimed “status indicative,”
which indicates whether the vehicle is powered by electricity, a fuel-
supplied engine, or a combination of both. Final Act. 4; Ans. 4; Crowe Figs.
3A, 3B, || 49-50. The Examiner found that Crowe’s figures depicting the
vehicle’s throttle position and relative fuel efficiency in miles per gallon
(“MPG”) using illuminated bars discloses the claimed “standing.” Final
Act. 4; Ans. 4 (relying on “BEST” label and number of illuminated bars
shown in Figures 3 A and 3B for MPG). The Examiner also found that
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Application 12/462,933
Brigham discloses “further allocating a standing/ranking of energy sources
based upon received status.” Final Act. 4—5 (relying on Brigham claim 18).1
Appellants argue that the Examiner failed to establish that “one of
ordinary skill in the art would interpret Crowe’s disclosure of ‘current
throttle position’ or ‘BEST range’ of fuel efficiency as disclosing or
suggesting” the standing requirement of claim 399. Appeal Br. 18.
Appellants contend that the Examiner failed to construe properly “allocating
a standing” in light of the specification, which refers to rewards, privileges,
and penalties as standings. Appeal Br. 19. Appellants also argue that the
Examiner failed to establish that one would interpret Crowe’s “display of a
current throttle position or a range of fuel efficiency” as disclosing
“allocating a standing” when that term is read consistent with the relevant
passage from the specification. Id. Finally, Appellants argue that the
Examiner’s reliance on Brigham’s claim 18 failed to establish that the
“quantification and/or ranking of different energy sources” Brigham
discloses would amount to “allocating a standing” as that term is used in the
specification. Id. at 20.
We agree with Appellants that the Examiner failed to construe the
term “standing” in light of the specification. See In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000) (“[DJuring examination proceedings, claims are given
their broadest reasonable interpretation consistent with the specification.”).
Neither the Examiner nor Appellants suggest that the term has a well-
understood meaning in the art, and we are left with the usage of the term in
1 The Examiner did not repeat this finding regarding Brigham in the Answer,
and instead relied on Brigham as disclosing selection of a fuel source. See
Ans. 4—5.
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Appeal 2014-008920
Application 12/462,933
the specification as the best guide to determine its scope. The specification
states the following:
Within the context of the present disclosure, rewards,
privileges, penalties, and the like are broadly defined as
“standings,” a term encompassing positive, negative, and
possible neutral status.
Spec. 18:16—19.2 This language is akin to a definition of the term in the
context of the claimed invention, and we adopt it as the construction for
“standing” in claim 399—i.e., “standing” means rewards, privileges,
penalties, and the like, including positive, negative, and possibly neutral
status.
With this construction as a backdrop, the Examiner’s findings fail to
explain adequately how Crowe or Brigham discloses the claimed standing.
The Examiner’s findings do not link the alleged disclosures of standings in
the prior art to the term as properly construed. See Final Act. 4; Ans. 4.
Further, the throttle position and fuel efficiency indications shown in
Crowe’s display and Brigham’s ranking of different energy sources, relied
on by the Examiner, do not appear to have any connection to rewards,
privileges, penalties, or anything similar. See id.
Moreover, claim 399 further requires allocating a standing “based
upon” the status indicative of a comparison between electrical and fuel
utilization. Appeal Br. 46 (Claims App.). According to the Examiner’s
findings, Crowe’s textual indicator 340 discloses the claimed “status
indicative.” Final Act. 4; Ans. 4. The Examiner’s findings do not
adequately explain, however, the manner in which Crowe’s throttle position
2 Appellants repeatedly referred to this passage when distinguishing the prior
art from the claimed “standing.” See Appeal Br. 19, 20.
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Application 12/462,933
and fuel efficiency indication, or Brigham’s ranking of energy sources, are
“based upon” Crowe’s textual indicator. See Final Act. 4; Ans. 4; Crowe
145 (describing processing and display of throttle position and fuel
efficiency based upon hybrid powertrain data, not textual indicator 340).
Based on the foregoing, we do not sustain the rejection of independent
claim 399. All of the remaining claims depend from claim 399, and the
rejections of those claims do not rely on other prior art references in a
manner that would remedy the deficiencies in the rejection of claim 399.
See Final Act. 6—13. We therefore do not sustain the rejection of those
claims for the same reason.
DECISION
We do not reach the double patenting rejection of claim 399. We
reverse the decision of the Examiner to reject claims 399, 400, 402, 404,
406, 408-413, 417, 418, 421, 422, 429, 431, 433, 434, 444, 445, 452, 454,
458, and 469-477 under 35 U.S.C. § 103(a).
REVERSED
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