Ex Parte Liu et al

Patent Trials and Appeals Board

Jun 26, 2019

13799466 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/799,466 03/13/2013
28395 7590 06/28/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
YiminLiu
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.
83353892 5453
EXAMINER
GILLS, KURTIS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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 YIMIN LIU,
PERRY ROBINSON MacNEILLE,
JOE PHILLIP PIERUCCI,
OLEG YURIEVITCH GUSIKHIN,
ERICA KLAMPFL, and
EDWARD K. KRAUSE
Appeal2017-008916
Application 13/799 ,466 1
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Yimin Liu, et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the final rejection of claims 3, 11, and 18. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
1 The Appellants identify Ford Global Technologies, LLC as the real party in
interest. App. Br. 2.
2 Claims 1, 2 and 5 have been cancelled via Amendment filed with Appeal
Brief. Claims 4, 6--10, and 12-17 have also been cancelled.
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SUMMARY OF DECISION
We AFFIRM-IN-PART.
THE INVENTION
Claim 11, reproduced below, is illustrative of the subject matter on
appeal.
11. A method comprising:
receiving a survey, via a vehicle processor, from a business in
proximity to a current vehicle location;
tailoring the survey based on an identified vehicle occupant
falling within a predefined consumer group;
in response to a determination by the processor that a driver
workload value has fallen below a predetermined threshold, wirelessly
transmitting the tailored survey to a smart phone, including instructing
the smart phone to handle survey output and input.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Schubert
Basir
US 2011/0265003 Al
US 2011/0301951 Al
The following rejections are before us for review:
Oct. 27, 2011
Dec. 8, 2011
Claims 3, 11, and 18 are rejected under 35 U.S.C. § 101 for claiming
patent-ineligible subject matter.
Claims 3, 11, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Basir and Schubert.
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ISSUES
Did the Examiner err in rejecting claims 3, 11, and 18 under 35 U.S.C.
§ 101 for claiming patent-ineligible subject matter?
Did the Examiner err in rejecting claims 3, 11, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Basir and Schubert?
ANALYSIS
The rejection of claims 3, 11, and 18 under 35 USC§ 101 for claiming
patent-ineligible subject matter.
The Appellants argued these claims as a group, focusing their
attention on claim 3. See App. Br. 6-10. For the reasons that follow, we
agree with the Appellants' arguments with respect to claim 3. But we do not
agree with respect to claims 11 and 18.
Preliminary comment
In their Briefs, the Appellants refer to prior USPTO guidance. But the
prior guidance has been superseded by the 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter
"2019 Revised 101 Guidance"). 2019 Revised 101 Guidance 51
("Eligibility-related guidance issued prior to the Ninth Edition, R---08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.").
Accordingly, our analysis will not address the sufficiency of the
Examiner's rejection against the prior guidance. Rather, our analysis will
comport with the 2019 Revised 101 Guidance.
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Introduction
35 U.S.C. § 101 provides that "[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor."
In that regard, claim 3 covers a "machine," claim 11 covers a
"process", and claim 18 covers a "manufacture." They are, thus, statutory
subject matter for which a patent may be obtained. 3 This is not in dispute.
However, the§ 101 provision "'contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014)
(quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claims 3, 11, and 18 cover statutory
subject matter, the Examiner has raised a question of patent-eligibility on
the ground that these claims are directed to an abstract idea. Eligibility is a
question of law based on underlying facts. SAP Am. v. Investpic, LLC, 890
F.3d 1016, 1020 (Fed. Cir. 2018).
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
3 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether a "claim is to a statutory category." 2019
Revised 101 Guidance 53; see also id. at 53-54 ("[C]onsider[] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. [§] 101 .... ").
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Alice step one - the "directed to" inquiry
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept." Id. at 218
( emphasis added).
The "directed to" inquiry [ ] cannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and actions
involves a law of nature and/or natural phenomenon-after all, they
take place in the physical world. See Mayo, 132 S. Ct. at 1293 ("For
all inventions at some level embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.") Rather, the
"directed to" inquiry applies a stage-one filter to claims, considered in
light of the specification, based on whether "their character as a whole
is directed to excluded subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375, 2016 WL
1393573, at *5 (Fed. Cir. 2016) (inquiring into "the focus of the
claimed advance over the prior art").
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
With respect to computer-enabled claimed subject matter, it can be
helpful to determine whether "the claims at issue in [ ] can readily be
understood as simply adding conventional computer components to well-
known business practices" or not. Id. at 1338. See also Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
In Enfzsh, for example, the court noted that "[ s ]oftware can make non-
abstract improvements to computer technology just as hardware
improvements can[.]" Id. The court put the question as being "whether the
focus of the claims is on [a] specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool." Enfzsh at 1335-1336.
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In Enfzsh, the court found that the "plain focus of the claims" there was on
"an improvement to computer functionality itself, not on economic or other
tasks for which a computer is used in its ordinary capacity." Id. at 1336.
"In determining the eligibility of respondents' claimed process for
patent protection under § 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
The Examiner determined that the claims "are directed to an abstract
idea of 'an idea of itself' (vide infra, Cyberfone and Ultramercial) and/ or
'certain methods of organizing human activity' (vide infra, Ultramercial)
involving conducting surveys inside vehicles." Final Act. 4. "In this case,
claims [3], 11 and 18 are directed to a judicial exception (i.e., law of nature,
natural phenomenon, or abstract idea), specifically the abstract idea
involving conducting surveys." Final Act. 5.
Id.
[T]he present claims have data-gathering steps of receiving a survey
via a generic vehicle processor device and generically recited human-
machine interface, pre-solution activity of identifying a predefined
consumer group, and narrowing the idea to said vehicle and/or
transforming the human-machine inteiface (HMI) to receive input
attempting to limit the use of the abstract idea to a particular
technological environment (HMI per se is generically recited and by
literal definition connects humans to machines to receive/export
inputs/ outputs).
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The Appellants argue, inter alia, that "The Claims Represent a
Technological Improvement" (App. Br. 6). "The claims in the instant matter
represent an improvement in the methodologies involved in successfully
presenting a survey in a manner likely to improve completion of the survey."
Id.
These particular claims are distinguishable from
"generic" computing functions further in that they specifically
recite when and how to present the desired information in a
specific manner that improves the likelihood of the user
completing the survey. This when and how is completely
ignored in the Examiner's analogies, which instead focus on
what information is being presented. And the when and how
here is not, "when appropriate" "use a computer." Which
computers are used, and when they are used, matters to the
outcome ( completing the survey) and this represents an
improvement in the functionality of presentation and likelihood
of successful outcome.
App. Br. 7.
Accordingly, there is a dispute over what the claims are directed to.
Are they directed to "conducting surveys" (Final Act. 5) or "an improvement
in the methodologies involved in successfully presenting a survey in a
manner likely to improve completion of the survey" (App. Br. 6)?
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Claim Construction4
We consider the claims as a whole5 giving them the broadest
reasonable construction6 as one of ordinary skill in the art would have
interpreted it in light of the Specification 7 at the time of filing.
Claim 3 calls for a system comprising five elements: (a) "a mobile
device;" (b) "a mobile-device processor;" ( c) "a vehicle computing system
(VCS);" (d) "vehicle inputs;" and, (e) "a vehicle output," the "mobile device
[being] communicably connected to [the] [VCS]."
4 "[T]he important inquiry for a § 101 analysis is to look to the claim."
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). "In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
'claim construction is not an inviolable prerequisite to a validity
determination under § 101.' However, the threshold of§ 101 must be
crossed; an event often dependent on the scope and meaning of the claims."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347--48
(Fed. Cir. 2015).
5 "In determining the eligibility of respondents' claimed process for patent
protection under § 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
6 2019 Revised 101 Guidance 5 3 n.14 (If a claim, "under its broadest
reasonable interpretation . .. "(emphasis added).).
7 "First, it is always important to look at the actual language of the claims ...
. Second, in considering the roles played by individual limitations, it is
important to read the claims 'in light of the specification.'" Smart Sys.
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed.
Cir. 2017) (J. Linn, dissenting in part and concurring in part), citing Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among
others.
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Claim 3 provides no express structural details that would distinguish
the individual elements from those that were well known at the time the
application was filed. See pages 4--7 of the Specification for examples of
conventional components/devices covered by said elements. However, a
structural distinction is suggested for the claimed system as a whole given
how it is functionally described.
That is, according to claim 3, the "mobile-device processor" is
configured to perform five functions. (1) It "receive[s] a survey on [the]
mobile device." (2) It "instruct[s] the VCS to output the survey using [the]
vehicle output." (3) It "receive[s] survey answers from the VCS [] using
[the] vehicle inputs." (4) It "terminate[s] the survey before completion
based on a determination that a driver attention requirement required for
driving has risen above a predetermined threshold." And, (5) it "provide[s]
an uncompleted remainder of the survey, for completion, on the mobile
device."
The "terminat[ing]" step is notable. According to the Specification
[b ]ecause there is a possibility that an occupant may be driving the
vehicle and may need to focus on driving, the survey can be
temporarily suspended, or even cancelled if needed. Although not
shown, the driver could be given a physical or verbal control that
allowed pausing or cancelling the survey or taking the survey later.
Also, in this embodiment, the process itself checks ongoing driver
distraction monitoring and/or occupant workload at step 203.
Monitoring driver distraction may track, among other things, speed
changes, steering wheel reversals, cellphone use, traffic patterns,
erratic driving behavior and other indicators that a driver may need to
focus more carefully on the road and that focusing on a survey may
not be completely safe.
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Spec. ,r 37. The Specification goes on to explain how the system can
monitor driver distraction and, if above a threshold, terminate the survey for
later completion.
Determining an occupant workload may include, but is not limited to,
monitoring occupant's use of features and system within the vehicle
passenger compartment. The monitoring may include, but is not
limited to, the use of the climate control system, entertainment
system, and/or navigation system. The system may have a
predetermined workload threshold value to decide whether or not a
survey may be presented to an occupant. The predetermined
workload threshold may be set using factory settings, or defined based
on a certain user (i.e. a teenage driver may have a lower threshold).
For example, the VCS may delay and/or postpone the output of a
survey if the occupant is recognized as the vehicle owner's teenage
daughter and the occupant is currently adjusting the climate or radio
controls. Another example, the VCS may delay the output of a survey
to an occupant if the occupant is currently listening to navigation
instructions. These are just a few examples of how workload may be
determined by the VCS.
Spec. ,r 38. In light of the Specification, in order for the processor to
perform the terminating function as claimed, it must be capable of
monitoring a certain activity associated with driving a vehicle and detecting
whether that activity reaches a certain threshold. When that is reached, the
survey is terminated.
Based on the record before us, the system as claimed goes beyond
common information-processing functions, such as conducting a survey.
Computer-based instructions can be patentably significant (see Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) andAncora
Technologies, Inc. v. HTC America, Inc., 908 F.3d 1343 (Fed. Cir. 2018)).
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Here, the instant record sufficiently supports the view that the system as a
whole yields a non-conventional effect.
Accordingly, we reasonably broadly construe claim 3 as being
directed to a system capable of conducting a survey but terminating the
survey for future completion if upon monitoring certain activity associated
with driving a vehicle said activity reaches a certain threshold.
Claims 11 and 18 parallel each other. They do not parallel claim 3.
Claim 11 recites a method comprising three steps, in no particular
order. (Emphasis added).
11. A method comprising:
receiving a survey, via a vehicle processor, from a business in
proximity to a current vehicle location;
tailoring the survey based on an identified vehicle occupant
falling within a predefined consumer group;
in response to a determination by the processor that a driver
workload value has fallen below a predetermined threshold,
wirelessly transmitting the tailored survey to a smart phone, including
instructing the smart phone to handle survey output and input.
The first step recites "receiving a survey, via a vehicle processor, from
a business in proximity to a current vehicle location." While the
Specification does not provide an express definition for "vehicle processor,"
it is reasonably broadly construed to cover a conventional vehicle based
computing system, such as laptop situated in a car. Moreover, the
Specification indicates that vehicle based computing systems were known at
the time of filing. See Spec. ,r 15:
Figure 1 illustrates an example block topology for a vehicle
based computing system 1 (VCS) for a vehicle 31. An example of
such a vehicle-based computing system 1 is the SYNC system
manufactured by THE FORD MOTOR COMP ANY. The vehicle-
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based computing system 1 may include other types of human machine
interface systems embedded in a vehicle, and/or on a mobile device
communicating with the vehicle-based computing system.
Thus, according to the first step, a survey "from a business in
proximity to a current vehicle location" is received by a conventional
"vehicle processor."
The second step recites "tailoring the survey based on an identified
vehicle occupant falling within a predefined consumer group." This step
does not require a computer or even the conventional vehicle based
computing system that receives the survey according to the first step. It
could be practiced by hand, for example.
Thus, according to the second step, the survey ("from [the] business in
proximity to [the] current vehicle location") is tailored "based on an
identified vehicle occupant falling within a predefined consumer group"
(e.g., by hand).
The last step recites "wirelessly transmitting the tailored survey to a
smart phone, including instructing the smart phone to handle survey output
and input" "in response to a determination by the processor that a driver
workload value has fallen below a predetermined threshold." This step
provides no insight into who or what wirelessly transmits the tailored
survey. There is no requirement that the conventional vehicle based
computing system that receives the survey according to the first step does
the wireless transmitting. All this step requires is that certain information
(i.e., the tailored survey of the second step which tailoring could be
accomplished by hand) be wirelessly transmitted to "a smart phone,
including instructing the smart phone to handle survey output and input."
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This last step does, however, require said wireless transmitting be "in
response to a determination by the processor that a driver workload value
has fallen below a predetermined threshold." But this step covers detecting
any characteristic satisfying any criteria. The step broadly covers any input
and then the survey is wirelessly transmitted, by any means. Unlike claim 3,
here the processor does no more than what a conventional processor is
known to be capable of doing, e.g., gathering information. It does not, as in
claim 3, require the processor to perform an ongoing survey and terminate
that survey for future completion upon detecting a threshold has been
reached for a particular activity.
It is reasonable to characterize claims 11 and 18 as a whole as being
directed to detecting an activity and upon detecting a threshold has been
reached for said activity, perform a wireless transmission of a tailored
survey.
The Abstract Idea8
8 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines "whether a claim is 'directed to' a judicial exception," such as an
abstract idea. 2019 Revised 101 Guidance 53. Step 2A is a two prong
mqmry.
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Above, where we reproduce claim 11, we identify in italics the
limitations we believe recite an abstract idea. 9 Based on our claim
construction analysis (above), we determine that the identified limitations
describe a type of commercial interaction, more particularly a scheme for
delivering a tailored survey. Since this is a method of organizing human
activity, it is an abstract idea. 10 The remaining (i.e., not italicized)
limitations do no more than require computer elements to be used as a tool
to perform this abstract idea. We reach the same determination for claim 18.
As for claim 3, which we determined to be directed to a system
capable of conducting a survey but terminating the survey for future
9 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. "To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the claim
under examination (individually or in combination) that the Examiner
believes recites an abstract idea .... " 2019 Revised 101 Guidance 54.
10 This corresponds to Prong One ("Evaluate Whether the Claim Recites a
Judicial Exception") (b) of Step 2A of the 2019 Revised 101 Guidance. "To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: ... (b) determine whether the identified limitation( s) falls within
the subject matter groupings of abstract ideas enumerated in Section I of the
[2019 Revised 101 Guidance]." 2019 Revised 101 Guidance 54. This case
implicates subject matter grouping "(b )": (b) Certain methods of organizing
human activity-fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions between people
(including social activities, teaching, and following rules or instructions).
Id. at 52.
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completion if upon monitoring certain activity associated with driving a
vehicle reaches a certain threshold, we do not find that it falls in any of the
subject matter groupings of abstract ideas enumerated in Section I of the
2019 Revised 101 Guidance.
Improvement in the Functioning of a Computer 11 (Appellants'
Argument)
The Examiner's characterization of what the claim 3 is directed to
("conducting a survey") is not an accurate characterization of what claim 3
is directed to. It is the Appellants' characterization that is more accurate.
We have reviewed the record and are persuaded as to error the
Examiner's characterization of what claim 3 is directed to.
However, we are not persuaded as to error the Examiner's
characterization of what claims 11 and 18 are directed to. The Examiner's
characterization of what claims 11 and 18 are directed to ("conducting a
survey") is similar to our own ( detecting an activity and upon detecting a
11 This corresponds to Prong Two ("If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application") of Step 2A of the 2019 Revised 101 Guidance. 2019
Revised 101 Guidance 54. "A claim that integrates a judicial exception into
a practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception." Id. One consideration, implicated here, that is "indicative that
an additional element (or combination of elements)[] may have integrated
the exception into a practical application" (id. at 55) is if "[a]n additional
element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field" (id.).
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threshold has been reached for said activity, perform a wireless transmission
of a tailored survey), albeit our characterization is described at a lower level
of abstraction. Cf Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41
(Fed. Cir. 2016) ("An abstract idea can generally be described at different
levels of abstraction. As the Board has done, the claimed abstract idea could
be described as generating menus on a computer, or generating a second
menu from a first menu and sending the second menu to another location. It
could be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.")
The Appellants dispute the Examiner's characterization. Presumably,
the Appellants would equally dispute our characterization.
But the Appellants do not explain in what way detecting an activity
and upon detecting a threshold has been reached for said activity, wirelessly
transmitting a tailored survey yields an improvement in computer
functionality.
According, to the Appellants,
Claim 11 recites, inter alia, "in response to a determination, by the
processor, that a driver workload value has fallen below a
predetermined threshold, wirelessly delivering the tailored survey to a
smart phone." Thus, any delivery of survey data to a device that is not
contingent on "a determination, by the processor, that a driver
workload value has fallen below a predetermined threshold" is not
precluded from being practiced by the claims. Data can simply
be delivered, or can be delivered contingent to any other
consideration, without being "tied up by the claims such that others
cannot practice it." Claim 18 contains a similar limitation.
App. Br. 9. But the question under step one of Alice is whether the claims
are directed to an abstract idea. This is an argument addressing a potential
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pre-emption concern. It does not explain in what way detecting an activity
and upon detecting a threshold has been reached for said activity, perform a
wirelessly transmitting a tailored survey yields an improvement in computer
functionality. Be that as it may, nevertheless, the pre-emption argument
confuses the pre-emption concern with the level of abstraction describing the
abstract idea. With respect to the pre-emption concern, "[ w ]hat matters is
whether a claim threatens to subsume the full scope of a fundamental
concept, and when those concerns arise, we must look for meaningful
limitations that prevent the claim as a whole from covering the concept's
every practical application." CLS Bank Intern. v. Alice Corp., 717 F.3d
1269, 1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here, said relied-on
claim limitation simply narrows the wagering abstract idea so that it is
described at a lower level of abstraction. It does not render the abstract idea
to which the claim is directed to any less an abstract idea. Pre-emption is
not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time,
from practicing the claimed invention. See 35 U.S.C. § 154.
Rather, the animating concern is that claims should not be
coextensive with a natural law, natural phenomenon, or abstract
idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add 'significantly more' to the basic principle, with the result
that the claim covers significantly less. See Mayo 132 S. Ct. at
1294. Thus, broad claims do not necessarily raise§ 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
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Id. See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
13 79 (Fed. Cir. 2015) ("[ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. "Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, ... [] preemption
concerns are fully addressed and made moot." Id. at 1379.
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter."' Affinity Labs
of Texas v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfzsh, 822 F.3d at 1335, quoted in Apple, 842 F.3d at
1241; see also Ancora, 908 F.3d at 1347:
We examine the patent's "'claimed advance' to determine whether the
claims are directed to an abstract idea." Finjan, Inc. v. Blue Coat Sys.,
Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018).") "In cases involving
software innovations, this inquiry often turns on whether the claims
focus on 'the specific asserted improvement in computer capabilities .
. . or, instead, on a process that qualifies as an "abstract idea" for which
computers are invoked merely as a tool."' Id. ( quoting Enfzsh, 822
F.3d at 1335-36); see BSG Tech LLC v. Buyseasons, Inc., 899 F.3d
1281, 1285-86 (Fed. Cir. 2018). Computers are improved not only
through changes in hardware; "[ s ]oftware can make non-abstract
improvements to computer technology .... " Enfish, 822 F.3d at 1335.
See Finjan, 879 F.3d at 1304. We have several times held claims to pass
muster under Alice step one when sufficiently focused on such
improvements.
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Specific asserted improvements in computer capabilities, when
claimed, can render claimed subject matter not directed to an abstract idea.
Cf McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299, 1316 (Fed.
Cir. 2016) ("When looked at as a whole, claim 1 is directed to a patentable,
technological improvement over the existing, manual 3-D animation
techniques."). However, there is insufficient evidence in the record before
us that the subject matter of claims 11 and 18 reflect any specific asserted
improvement in computer capabilities. The heart of the invention as claimed
lies in detecting an activity and upon detecting a threshold has been reached
for said activity, wireless transmitting a tailored survey using
components/ devices that the Specification discloses are merely generic. Cf
Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1328
(Fed. Cir. 2017) ("[T]he heart of the claimed invention lies in creating and
using an index to search for and retrieve data ... an abstract concept.").
We have carefully reviewed the Specification, but can find no
disclosure of an improvement to computer functionality associated with the
subject matter as claimed.
Rather than being directed to any specific asserted improvement in
computer capabilities, the record supports the view that the claimed subject
matter is directed to an abstract idea. 12
12 See the 2019 Revised 101 Guidance 55 ("The courts have also identified
examples in which a judicial exception has not been integrated into a
practical application: []An additional element merely recites the words
'apply it' (or an equivalent) with the judicial exception, or merely includes
instructions to implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea.").
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We have considered all the Appellants' arguments challenging the
Examiner's determination as to claims 11 and 18 under step one of the Alice
framework and find them unpersuasive. For the foregoing reasons, the
record supports the Examiner's determination that claims 11 and 18 is
directed to an abstract idea.
We reach the opposite conclusion as to claim 3. Accordingly, as to
claim 3 we do not reach the determination under step two of the Alice
framework.
Alice step two-Does the Claim Provide an Inventive Concept? 13
Step two is "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, 573 U.S. at217-18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined the following:
Taken as an ordered combination, the limitations are directed to
limitations referenced in Alice Corp. that are not enough to
qualify as significantly more when recited in a claim with an
abstract idea include, as a non-limiting or non-exclusive
example: requiring no more than a generic computer to perform
generic computer functions that are well-understood, routine
and conventional activities previously known to the industry ...
13 This corresponds to Step 2B of the 2019 Revised 101 Guidance page 56
("[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).").
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. Since there are no elements or ordered combination of
elements that amount to significantly more than the judicial
exception, the claims are not eligible subject matter under 35
USC § 101. For further support, the specification at ,r,r 0016-
0017 describes a generic processor. Thus, viewed as a whole,
these additional claim element( s) do not provide meaningful
limitation( s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim(s) amounts
to significantly more than the abstract idea itself.
Final Act. 6.
We agree with the Examiner's analysis and determination as it
pertains to claims 11 and 18.
The Appellants' arguments focus on claim 3, not on claims 11 and 18.
As discussed above, the Specification evidences the conventionality
of the claimed elements, structurally and functionally, individually and in
combination. See Spec. 4--7. Much like the "data storage unit" and
"computer, coupled to said storage unit" in the claims of Alice (US Patent
7,149,720, claim 1), "the claims here do [not do] more than simply instruct
the practitioner to implement the abstract idea[ ... ] on a generic computer."
Alice, 573 U.S. at 225. For the reasons discussed above, we are unpersuaded
that the record supports interpreting the recited steps in the claims as
yielding any improvement in technology.
We cited the Specification above as intrinsic evidence that the claimed
elements are conventional. In doing so, we have followed "Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP Inc.[, 881 F.3d 1360
(Fed. Cir. 2018)]," USPTO Memorandum, Robert W. Bahr, Deputy
Commissioner For Patent Examination Policy, April 19, 2018 (the
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"Berkheimer Memo")). The court in Berkheimer held that "[t]he patent
eligibility inquiry may contain underlying issues of fact." Berkheimer, 881
F.3d at 1365 (quoting Mortgage Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) ("The§ 101 inquiry 'may contain
underlying factual issues."')). (Emphasis added). But the court also held
that "[ w ]hen there is no genuine issue of material fact regarding whether the
claim element or claimed combination is well-understood, routine, [and]
conventional to a skilled artisan in the relevant field, this issue can be
decided on summary judgment as a matter of law." Id. at 1368 (emphasis
added). This qualification has been subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires
that summary judgment be denied. In Berkheimer, there was
such a genuine dispute for claims 4--7, but not for claims 1-3
and 9 . . . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371-74 (Fed. Cir. 2018) (Order, On
Petition for rehearing en bane, May 31, 2018); see also Aatrix Software, Inc.
v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018)
(Order, On Petition for rehearing en bane, May 31, 2018) ("A factual
allegation or dispute should not automatically take the determination out of
the court's hands; rather, there needs to be justification for why additional
evidence must be considered-the default being a legal determination.").
Accordingly, no genuine issue of material fact exists as to the well-
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understood, routine, or conventional nature of the claimed elements,
individually or in the combination as claimed.
No persuasive arguments having been presented, we conclude that no
error has been committed in the determination under Alice step two that
claims 11 and 18 do not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellants' remaining arguments
(including those made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that claims 11 and 18 are directed to an abstract idea and do
not present an "inventive concept," we sustain the Examiner's conclusion
that they are directed to patent-ineligible subject matter for beingjudicially-
excepted from 35 U.S.C. § 101. Cf LendingTree, LLC v. Zillow, Inc., 656
Fed. App'x 991, 997 (Fed. Cir. 2016) ("We have considered all of
LendingTree's remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an 'inventive concept,' we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101."); see, e.g.,
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016).
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The rejection of claims 3, 11, and 18 under 35 USC§ 103(a) as being
unpatentable over Basir and Schubert.
For the reasons explained in the Appeal Brief (pages 11-12), the
rejection is not sustained for failing to present a prima facie case of
obviousness in the first instance.
The Examiner cited ,r 107 of Schubert as disclosing a processor that
"terminate the survey based on a determination that a driver attention
requirement required for driving has risen above a predetermined
threshold." Final Act. 9 (regarding claim 3). But as the Appellants explain,
The actual teaching says to enable video when the vehicle speed is
above the threshold, and disable video when the vehicle speed is
below the threshold. The logic behind this, of course, would be to
only provide the video option on the remote device ( with control
input, for example) when the vehicle is moving.
More importantly, the above teaching has nothing to do with a
driver attention requirement. Assuming, for the sake of argument,
that this teaching does have to do with driver attention (with vehicle
movement being a proxy for a demand on driver attention), then what
the above teaches is "enabling video" when a vehicle is moving. How
this corresponds to termination of a survey based on a driver attention
requirement rising above a threshold is unclear, as no actual
explanation as to the correspondence is provided, the cite is merely
provided as though any correlation were self-evident.
The combination presented by the Examiner would push a
vehicle interface to a mobile device when the vehicle is moving. The
claims recite the mobile device instructing the vehicle to terminate the
survey if the driver attention demand is too high. Even if "basic
driving" were equated to a too-high demand, then for the sake of
argument the claims recite the mobile device instructing the vehicle to
terminate the survey when the vehicle is moving, and the prior art
combination teaches pushing a survey from the vehicle to a phone
when the vehicle is moving. Other than the fact that both involve a
vehicle, a phone and an interface, the two concepts are otherwise
simply unrelated.
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App. Br. 11-12.
The Examiner also cited ,r 107 of Schubert with respect to claims 11
and 18. Final Act. 13-14. For the same reasons, the rejection is not
sustained for failing to present a prima facie case of obviousness in the first
instance.
CONCLUSIONS
The rejection of claim 3 under 35 U.S.C. § 101 for claiming patent-
ineligible subject matter is reversed.
The rejection of claims 11 and 18 under 35 U.S.C. § 101 for claiming
patent-ineligible subject matter is affirmed.
The rejection of claims 3, 11, and 18 under 35 U.S.C. § 103(a) as
being unpatentable over Basir and Schubert is reversed.
DECISION
The decision of the Examiner to reject claim 3 is reversed.
The decision of the Examiner to reject claims 11 and 18 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)(l )(iv).
AFFIRMED-IN-PART
25