Ex Parte Morgan et al

Patent Trial and Appeal Board

Oct 10, 2017

14290588 (P.T.A.B. Oct. 10, 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.
14/290,588 05/29/2014 Gerald A. MORGAN 7065-04401 4111
23505 7590
CONLEY ROSE, P.C.
575 N. Dairy Ashford Road
Suite 1102
HOUSTON, TX 77079
EXAMINER
SHAAWAT, MUSSA A
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
10/12/2017 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):
pathou @conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD A. MORGAN, CHRISTOPHER M. MACHECA,
and STANLEY G. SCHWARZ
Appeal 2016-0007121
Application 14/290,5 8 82
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
March 24, 2015) and Reply Brief (“Reply Br.,” filed October 5, 2015), and
the Examiner’s Answer (“Ans.,” mailed August 6, 2015) and Final Office
Action (“Final Act.,” mailed February 6, 2015).
2 Appellants identify Gordon Howard Associates, Inc. of Littleton, Colorado
as the real party in interest. App. Br. 3.
Appeal 2016-000712
Application 14/290,588
CLAIMED INVENTION
Appellants’ claimed invention relates to “systems and methods of
associating a tracking device with a specific asset, such as a vehicle, and
subsequently tracking [the] location of the asset” (Spec. 121).
Claims 1 and 7 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
coupling a tracking device to a vehicle being part of a
dealer inventory, the vehicle having an identification number;
associating the identification number with the tracking
device;
creating a geo-fence boundary containing a location of the
vehicle; and
sending a first message to a lien-holder indicating the
vehicle has crossed the geo-fence boundary.
REJECTIONS
Claims 1—14 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Doyle (US 2007/0176771 Al, pub. Aug. 2, 2007) and Smith et al.
(US 6,611,686 Bl, iss. Aug. 26, 2003) (hereinafter “Smith”).
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
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Application 14/290,588
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “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.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct.
at 1297).
The Examiner finds here that the claims are directed to tracking
vehicles using a geo-fence boundary and, therefore, to an abstract idea (Final
Act. 2—3). But the Examiner does not explain how, and we fail to see how,
coupling a tracking device, i.e., a physical device, to a vehicle in a dealer
inventory, i.e., another physical object, constitutes an abstract idea.
Independent claims 1 and 7 are admittedly broad, and, if issued, could
have broad exclusionary effect. But the mere fact that the claims are broad
does not mean that the claims are directed to an abstract idea.
The Examiner’s characterization of the claims does not account for
the step of “coupling a tracking device to a vehicle,” as recited in claims 1
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Application 14/290,588
and 7, and does not reflect the character of the claims as a whole. Therefore,
we do not sustain the Examiner’s rejection of claims 1—14 under 35 U.S.C.
§101.
Obviousness
Independent Claim 1 and Dependent Claims 1—6
First, by way of background, Doyle is directed to a method and
apparatus for asset geo-fencing, and discloses that an asset tracking unit,
associated with an asset, determines that the asset is located at a site and
establishes a geo-fence (Doyle, Abstract). The tracking unit monitors the
location of the asset and transmits an alert to a central dispatch if the asset
moves beyond the geo-fence boundary (id.; see also id. 1 19). More
specifically, Doyle discloses that the tracking unit is coupled to the asset,
i.e., physically affixed to the asset or built into the asset, and includes
position sensing receivers capable of providing the location of the tracking
unit and, thus, also providing the position of the asset (id. 118). The
tracking unit also includes a unique identification number that is associated
with the asset to which the tracking unit is coupled (id. 119).
In rejecting independent claim 1 under § 103(a), the Examiner notes
that although Doyle discloses associating a tracking device to a particular
asset to be tracked and sending data from the tracking device to a remote
server, Doyle does not expressly teach “the vehicle having an identification
number”; “associating the identification number with the tracking device”;
or “sending a first message to a lien-holder indicating the vehicle has
crossed the geo-fence boundary,” as called for in claim 1 (Final Act. 4). The
Examiner cites Smith to cure the deficiencies of Doyle (id.). And the
Examiner concludes that it would have been obvious to a person of ordinary
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Application 14/290,588
skill in the art at the time of Appellants’ invention to “incorporate the
teachings of Smith into the disclosure of Doyle in order to allow the user to
more accurately and efficiently track a vehicle and notify the appropriate
personal [sic] of the vehicle being tracked” {id. at 4—5 (citing Doyle, col. 7,
1. 64-col. 8,1. 38; col. 13,11. 10-60)).
Appellants argue that the rejection cannot be sustained because rather
than being associated with the vehicle and used to associate the tracking
device with the vehicle, “[i]n Smith, the identification number/pin number is
a number associated with the tracking device, and the identification numbers
are used to identify the tracking device” (App. Br. 12; see also Reply Br. 5—
6 (charging the Examiner with misrepresenting the cited portion of Smith)).
We have carefully reviewed the cited portion of Smith, on which the
Examiner relies. And we agree with the Examiner that Smith discloses
“associating the [vehicle] identification number with the tracking device,” as
called for in claim 1.
In particular, Smith discloses that when, for example, a client, who
has four vehicles that are being monitored, wishes to know the whereabouts
of each vehicle, the client logs onto the system (or simply calls an operator)
and supplies “the appropriate identification number,” i.e., the identification
number for the vehicle being tracked {see Smith, col. 13,11. 20—23). The
client request is received by server 104 (Fig. 2) and server 104 contacts
database 106, which places the message on a table of outgoing messages
{id., col. 13,11. 23—28). A server program takes the message from the table
and sends the message to a transmitter with “the correct pin numbers for
identification of the particular four monitoring units to be contacted”; “[t]he
message [i.e., the client request that includes the client-supplied
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identification number] is then sent out, and due to the identification
numbers, the appropriate four monitoring units 10 respond to the request”
{id., col. 13,11. 31—38). In other words, the monitoring units to be contacted
and their respective pin numbers are determined “due to the identification
numbers,” i.e., the client-provided identification numbers for the vehicles
with which the tracking devices are associated.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a). We also sustain the rejection
of dependent claims 2—6, which are not argued separately.
Independent Claim 7 and Dependent Claims 8—14
Appellants argue that independent claim 7 is allowable for the same
reasons set forth with respect to claim 1 (App. Br. 13). We are not
persuaded for the reasons set forth above that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a). Therefore, we sustain the Examiner’s
rejection under 35 U.S.C. § 103(a) of independent clam 7, and claims 8—14,
which depend therefrom.
DECISION
The Examiner’s rejection of claims 1—14 under 35 U.S.C. § 101 is
reversed.
The Examiner’s rejection of claims 1—14 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)(l)(iv).
AFFIRMED
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