Ex Parte McGee et al

Patent Trial and Appeal Board

Mar 8, 2018

13103376 (P.T.A.B. Mar. 8, 2018)

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.
13/103,376 05/09/2011 Ryan Abraham McGee 83175605 9159
28395 7590 03/12/2018
RROOKS KTTSHMAN P C /FfTET
EXAMINER
1000 TOWN CENTER KONG, SZE-HON
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
03/12/2018 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 RYAN ABRAHAM MCGEE, HAI YU,
JOHANNES GEIR KRISTINS SON, FAZAL URRAHMAN SYED,
and DIMITAR PETROV FILEY
Appeal 2017-005486
Application 13/103,376
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ryan Abraham McGee et al. (Appellants) appeal under 35 U.S.C.
§ 134 from the rejection of claims 1—3, 5—9, 21, and 22. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal 2017-005486
Application 13/103,376
CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is representative of the
claimed subject matter:
1. A method comprising:
controlling a vehicle, by a vehicle controller, according to
a distance until charge (DUC) value based only on distances
traveled by a vehicle between (i) prior recharges at the same
location as a current recharge and (ii) subsequent recharges
immediately following the prior recharges, wherein at least two
of the subsequent recharges are at different locations from one
another.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
DeVault US 7,849,944 B2 Dec. 14, 2010
Pandit US 2011/0087390 A1 Apr. 14, 2011
REJECTIONS1
I. Claims 1—3, 5—7, 9, 21, and 22 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Pandit.
II. Claim 1 stands rejected under 35 U.S.C. § 102(b) as anticipated
by DeVault.
III. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Pandit.
1 The rejection of claims 10 and 25 (Final Act. 3) is moot as these claims
have been canceled. See Amendment filed November 17, 2016; Advisory
Action mailed December 13, 2016.
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Application 13/103,376
DISCUSSION
New Ground of Rejection— 35 U.S.C. §101
Claim 1 is rejected under 35 U.S.C. § 101 as being directed to non—
patent-eligible subject matter.
The Supreme Court has 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.” Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1296—1297
(2012)). According to the Supreme Court’s framework, we must first
determine whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we
must secondly “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.” Id.
The Supreme Court characterizes the second step of the 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.’” Id.
(alteration in the original) (quoting Mayo, 132 S. Ct. at 1294).
For the first part of our inquiry, we observe that claim 1 recites “[a]
method comprising: controlling a vehicle, by a vehicle controller, according
to a distance until charge (DUC) value.'1'’ Claims App. 1 (emphasis added).
The claimed value is “based only on distances traveled by a vehicle between
(i) prior recharges at the same location as a current recharge and (ii)
subsequent recharges immediately following the prior recharges, wherein at
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least two of the subsequent recharges are at different locations from one
another.” Id.. Considering claim 1 in its entirety, including the limitations
above, we find that the claimed subject matter is directed to the concept of
gathering data for controlling a vehicle. Similar data gathering and steps
have been held ineligible under § 101. See Content Extraction and
Transmission LLC v. Wells Fargo Bank, National Ass ’n, 776 F.3d 1343,
1347 (Fed. Cir. 2014) (holding the concept of “1) collecting data, 2)
recognizing certain data within the collected data set, and 3) storing that
recognized data in a memory” abstract); see also Intellectual Ventures ILLC
v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(“Intellectual Ventures /”) (concluding that customizing information and
presenting it to users based on particular characteristics is abstract as well);
Electric Power Group, LLC v. Alstom S.A, 830 F.3d 1353—1354 (Fed. Cir.
2016) (explaining that an invention directed to the collection, manipulation,
and display of data is an abstract process). Accordingly, claim 1 is directed
to an abstract idea.
Having determined that claim 1 is directed to an abstract idea, we
must determine whether the additional elements of the claim transforms it
into patent-eligible subject matter. Although claim 1 sets forth that specific
data is collected (e.g., distances traveled by a vehicle between prior
recharges (i) and subsequent recharges (ii), as claimed), it does not specify
how the collection is accomplished nor indicate what use is made of the
result obtained. Even if claim 1 indicates that an algorithm may be used to
collect or manipulate data (e.g., by filtering data), and requires that the
results of the application of this algorithm are to be communicated to the
vehicle, claim 1 at best, merely requires using “mathematical algorithms to
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Application 13/103,376
manipulate existing information to generate additional information.” See
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014). On this record, we do not find that claim 1 is narrowly
directed to application of particular rules for achieving an improved
technological result. Cf. McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1316 (Fed. Cir. 2016). Although claim 1 recites “controlling
a vehicle, by a vehicle controller,” this step is merely a post-solution
activity. See Parker v. Flook, 437 U.S. 584, 590 (1978) (“The notion that
post-solution activity, no matter how conventional or obvious in itself, can
transform an unpatentable principle into a patentable process exalts form
over substance.”). Thus, these limitations of claim 1 do not transform the
abstract idea embodied in the claim. Rather, they simply implement that
idea.
The elements of claim 1, when considered “both individually and ‘as
an ordered combination,’” amount to nothing more than an attempt to patent
the abstract idea embodied in the step of this claim. See Alice, 134 S. Ct. at
2355 (quoting Mayo, 132 S. Ct. at 1298). Accordingly, the limitations of
claim 1 fail to transform the nature of this claim into patent-eligible subject
matter. See id. (citing Mayo, 132 S. Ct. at 1297, 1298).
New Ground of Rejection — 35 U.S.C. § 112, Second Paragraph
Claims 1—3, 5—9, 21, and 22 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
A claim is properly rejected as being indefinite under 35 U.S.C. § 112,
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
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because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310 (Fed Cir. 2014).
The method of claim 1 does not require any particular step other than
“controlling a vehicle, by a vehicle controller, according to” two data sets,
namely a distance until charge (DUC) value based only on distances traveled
by a vehicle between prior recharges (i) and subsequent recharges (ii), as
claimed. Claims App. 1. It is unclear what is meant by “controlling a
vehicle.” Claim 1 does not prescribe how or in what manner the vehicle is
controlled merely by the acquisition of two sets of data, or how the “distance
until charge (DUC) value” would be used to control the vehicle. As such, it
is unclear what method steps are being performed to control the vehicle. We
note that paragraph 24 of the Specification describes use of the controller to
adapt the battery usage as a function of the DUC value to operate the vehicle
in different driving modes and that paragraphs 25—26 describe the use of a
database to estimate the DUC value. See Spec. H 24, 25—26. Figure 7
additionally illustrates a flowchart pertaining to a method for estimating a
DUC value. See Spec. 119. However, the method set forth in claim 1 does
not require any of these steps. Thus, the scope, i.e., the metes and bounds of
claim 1, are unclear. Accordingly, claim 1 and its dependent claims are
indefinite.
Rejections I—III
The Examiner rejected claims 1—3, 5—7, 9, 21, and 22 under 35 U.S.C.
§ 102(e) as anticipated by Pandit (Final Act. 4—7), rejected claim 1 under
35 U.S.C. § 102(b) as anticipated by DeVault {id. at 7—8), and rejected claim
8 under 35 U.S.C. § 103(a) as unpatentable over Pandit (id. at 8—9).
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Having determined that claims 1—3, 5—9, 21, and 22 are indefinite, we
cannot sustain the noted rejections of these claims under 35 U.S.C.
§§ 102(e), 102(b), and 103(a) because to do so would require speculation as
to the scope of the claims. See In reAoyama, 656 F.3d 1293, 1300 (Fed.
Cir. 2011) (holding that the Board erred in affirming an anticipation
rejection of indefinite claims); In re Steele, 305 F.2d 859, 862—63 (CCPA
1962) (holding that the Board erred in affirming a rejection of indefinite
claims under 35 U.S.C. § 103(a)).
DECISION
The Examiner’s rejections of claims 1—3, 5—9, 21, and 22 are
REVERSED.
We enter NEW GROUNDS OF REJECTION for claim 1 under
35 U.S.C. § 101 and for claims 1—3, 5—9, 21, and 22 under 35 U.S.C. § 112,
second paragraph.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
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Application 13/103,376
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
REVERSED; 37 C.F.R, $ 41.50(b)
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