Ex Parte Gearhart et al

Patent Trial and Appeal Board

Dec 21, 2016

13238005 (P.T.A.B. Dec. 21, 2016)

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.
13/238,005 09/21/2011 Chris C. Gearhart 83201646 7255
28866 7590 12/23/2016
MACMILLAN, SOBANSKI & TODD, LLC - FORD
ONE MARITIME PLAZA - FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604
EXAMINER
CHEN, GEORGE YUNG CHIEH
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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 @ mstfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS C. GEARHART,
MICHAEL A. TAMOR, and CIRO A. SOTO
Appeal 2014-006090
Application 13/238,0051
Technology Center 3600
Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s
final decision to reject claims 1—24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Ford Global Technologies,
LLC. (Appeal Brief filed January 13, 2014, hereafter “App. Br.,” 1).
Appeal 2014-006090
Application 13/238,005
BACKGROUND
This appeal relates to a benefit analysis system that allows a user to compare
energy consumption between a first electrified vehicle and a second vehicle.
Specification, hereafter “Spec.” Abstract, 3:23—15. In this system, there is a data
collector receiving user driving characteristics, a parameter calculation module,
and an analyzer to determine respective energy consumption for the first and
second vehicles. Id. at 3:27^4:9.
Representative claims 1 and 13 are reproduced from pages 9, 11, and 12 of
the Claims Appendix of the Appeal Brief (Claims App’x) as follows, with
emphasis added to relevant claim limitations:
1. A benefit analysis system in which a user compares energy consumption
between a first electrified vehicle and a second vehicle, comprising:
a data collector receiving user driving characteristics comprised of a
commute distance, a commute repetition, a long-term aggregate driving
distance, and a daily usage rate;
a parameter calculation module receiving the user driving
characteristics, wherein the parameter calculation module determines a peak
parameter, a width parameter, a weigh factor, a scale factor, and a frequency
parameter in response to the user driving characteristics; and
an analyzer responsive to the parameters from the parameter
calculation module to generate respective energy consumption results for the
first and second vehicles, wherein the analyzer represents an individual trip
chain distribution as a composite function including a habitual component
defined by the peak parameter and the width parameter and a non-habitual
component defined by the scale factor, wherein the composite function
combines the habitual component and the non-habitual component
according to the weight factor, and wherein the analyzer determines the
energy consumption results in response to the individual trip chain
distributions.
13. A method of comparing energy consumption between a first electrified
vehicles and a second vehicle in response to characteristics of a driver, comprising
the steps of:
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Application 13/238,005
the driver specifying a commute distance, a commute repetition, a
long-term aggregate driving distance, and a daily usage rate;
determining a peak parameter, a width parameter, a weigh factor, a
scale factor, and a frequency parameter in response to the user driving
characteristics;
representing an individual trip chain distribution for the driver as a
composite function including a habitual component defined by the peak
parameter and the width parameter and a non-habitual component defined
by the scale factor, wherein the composite function is formed by combining
the habitual component and the non-habitual component according to the
weight factor;
determining an energy consumption for each of the first and second
vehicles in response to the individual trip chain distributions; and
presenting the energy consumptions to the driver for evaluating the
relative benefits of driving the first and second vehicles.
The Examiner rejects claims 1—24 under 35 U.S.C. § 101 as unpatentable
because the claims are directed to non-statutory subject matter. Claims 1, 2, 7—10,
12—14, 19-22, and 24 are also rejected under 35 U.S.C. § 103(a) as obvious over
Tamowsky2. Claims 3, 11, 15, and 23 are rejected under 35 U.S.C. § 103(a) as
obvious over Tamowsky and McClellan.3 Final Action mailed October 25, 2013,
hereafter “Final Act.,” 2—10; see also Examiner’s Answer mailed March 24, 2014,
hereinafter “Ans.,” 2—\.
DISCUSSION
The Appellants argue the rejections of claims 1—24 under § 101 on common
issues, using independent claims 1 and 13 as representative. App. Br. 4—5. The
rejection of claims 1—24 under § 103 is also argued on common issues, using
2 US Publication No. 2011/0238257 Al, published September 29, 2011.
3 US Publication No. 2009/0024419 Al, published January 22, 2009.
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Application 13/238,005
claim 1 as representative. Id. at 5—7. We will address the rejections in a similar
manner, and address the basis of the rejections in turn.
35 U.S.C.§ 101
The Examiner finds that claim 1 is directed to a system comprising “a
collector, a module, and an analyzer,” and these items are “mere software
components which receives input and output calculation results” rendering the
claimed system unpatentable. Final Act. 2. The Appellants disagree, arguing that
when the claim 1 is considered as a whole, the claimed system is a machine, and
the machine and transformation features weight towards patent eligibility in light
of guidance under Bilski. Ans. at 3—\\ see Bilski v. Kappos, 130 S. Ct. 3218
(2010).
The Examiner also finds that claim 13 is directed to an abstract idea because
the method is directed to mental steps where “a person [] mentally computes output
parameters and communicates the output parameters to the driver.” Final Act. 3.
The Appellants contend that claim 13 recites steps involving “real data collection
and transformations” that lead to “practical benefit” and, therefore, the factors
under Bilski also weigh towards patent eligibility. App. Br. 4—5. The Appellants
additionally allege that claim 13 ’s step of “representing an individual trip chain
distribution . . . wherein the composite function is formed by combining the
habitual component and the non-habitual component according to the weight
factor” cannot be implemented as a mental step. Id. at 5.
We find no reversible error with the Examiner’s findings. To provide
context, 35 U.S.C. § 101 provides that a new and useful “process, machine,
manufacture, or composition of matter” is eligible for patent protection. The
Supreme Court has made clear that the test for patent eligibility under Section 101
is not amenable to bright-line categorical rules. See Bilski, 130 S. Ct. at 3229-30.
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There are, however, three limited, judicially-created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature; natural
phenomena; and abstract ideas. See Mayo Collaborative Services v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1293 (2012).
In Alice Corporation Pty, Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court reiterated the framework set forth previously in Mayo,
“for distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of these concepts.”
Id. at 2355 (citation omitted). Under Alice, the first step of such analysis is to
“determine whether the claims at issue are directed to one of those patent-ineligible
concepts.” Id. (citation omitted). If determined that the claims are directed to a
patent-ineligible concept, the second step in the analysis is to consider the elements
of the claims “individually and ‘as an ordered combination”’ to determine whether
the additional elements “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (citing Mayo, 132 S. Ct. at 1291, 1297). In other words, the
second step is to “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.’”
Id. (citing Mayo, 132 S. Ct. at 1294).
With this context in mind, we evaluate the Examiner’s rejections of the
claims at issue.
Claim 1 is directed to a “benefits analysis system” that includes a “data
collector module,” “a parameter calculation module,” and “an analyzer” that
generates “respective energy consumption” responsive to “parameters from the
parameter calculation module.” The Appellants argue that software-implemented
inventions can be patent eligible and the claim does not merely recite software, but
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rather the software would have to be coupled with machine hardware. Ans. 3. The
Appellants’ argument misses the point, however, in that the “benefits analysis
system” involves nothing more than collecting data and performing calculations on
that data, which is an abstract idea.
Moreover, looking at claim 1 as a whole, we find that it is directed to a
system for data collection and calculations to determine energy consumption
comparisons—and the Appellants do not provide any evidence that the claimed
data collection and calculations involve anything other than conventionally known
and implemented methods. The Appellants argue that a machine would have to be
used in the system, but do not allege that any special purpose machine or hardware
must be used. Limiting the use of an abstract idea to a general purpose computer
does not, however, transform an idea into a patent-eligible invention. See Alice,
134 S. Ct. at 2358 (“[T]he mere recitation of a generic computer cannot transform
a patent-ineligible abstract idea into a patent-eligible invention.”). Similar
concepts to those at issue for the instant claim have been considered by both the
Supreme Court and our reviewing Court and found to be patent ineligible. See
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776
F.3d 1343, 1347 (Fed. Cir. 2014) (finding claims drawn to the “idea of 1)
collecting data, 2) recognizing certain data within the collected data set, and 3)
storing that recognized data in a memory” directed to an abstract idea);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011)
(“That purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson,
[409 U.S. 63 (1972)].”); Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1367 (Fed. Cir. 2015) (“Here, the patent claims are directed to an
abstract idea: tracking financial transactions to determine whether they exceed a
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pre-set spending limit (i.e., budgeting).”); SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 Fed. Appx. 950, 954—55 (Fed. Cir. 2014) (determining that a claim
directed to “the mental steps of comparing new and stored information and using
rules to identify medical options” was abstract and “involve[d] a mental process
excluded from section 101”).
The Appellants present similar arguments for claim 13 to those presented for
claim 1, adding only that the limitation that “representing an individual trip chain
distribution . . . wherein the composite function is formed by combining the
habitual component and the non-habitual component according to the weight
factor” cannot be implemented as a mental step. See App. Br. 5. On the issue of
whether the claim limitation at issue can be performed as a mental step, the
Examiner responds by finding that claim 13 can be performed by the use of a
spreadsheet. Ans. 3 (citing Spec. 6:6—18). As discussed above, abstract ideas that
may be implemented on a conventional computer, absent more, are not patent
eligible.
We therefore sustain the rejection of representative claims 1 and 13, and
claims 2—12 and 14—24, finding that the claims are unpatentable under § 101.
35 U.S.C.§ 103
The Appellants argue that Tamowsky fails to disclose an individual trip
chain distribution, and the rejection also fails to provide support for teaching of the
claim 1 limitation directed to an analyzer that represents an individual trip chain
distribution as a composite function including a habitual component defined by a
peak parameter and a width parameter and a non-habitual component defined by
the scale factor. App. Br. 5—6.
The Examiner finds that Tamowsky teaches the collection of statistical
driving information specific to a vehicle and driver over a period of time and could
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include a cumulative density function chart showing a percentage of driving where
greater than a threshold distance was achieved over the time period, and a
probability density function chart showing distribution of driving distances over
the specified time period. Final Act. 3^4 (citing Tamowsky ]f]f 20—23). The
Examiner also finds that Tamowsky’s system can be used to provide a customized
reports of the statistical information. Id. at 4 (citing Tamowsky || 23, 29—31).
The Examiner also finds that Tamowsky discloses “collected data that enables
analyzer to identify a driver as having commuting distance less than a threshold
range” and also “characterize[s] a plurality of trips a driver is likely to take over
time.” Ans. 4 (citing Tamowsky H 29—31). The Examiner summarizes that
Tamowsky’s analysis of data ’’concludes a driver can have a history of stop-and-go
operation, driving to work and back each day with commute distance less than a
value, is a form of habitual and non-habitual component which is eventually used
to calculate the fuel consumption of prospective vehicle.” Ans. 4.
Upon consideration of the evidence on this record in light of the arguments
advanced by the Appellants, we find that the Appellants have not identified
reversible error in the Examiner’s determination that representative claim 1 is
obvious. We add the following for emphasis.
As the Examiner finds, Tamowsky teaches a data collector for collecting the
specific times of the day when a car is operated and odometer readings data, and
also teaches capabilities for generating a customized report presenting statistical
information, including comparisons of performance with other vehicles.
Tamowsky ]f]f 20, 30. We find no error with the Examiner’s findings that
Tamowsky teaches characterization of trip chain distributions, which can include
representations as a composite of habitual components and a non-habitual
components.
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Application 13/238,005
We therefore sustain the rejection of representative claim 1, and
claims 2—24.
SUMMARY
The rejection of claims 1—24 under 35 U.S.C. § 101 is affirmed.
The rejection of claims 1—24 under 35 U.S.C. § 103(a) 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).
AFFIRMED
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