Ex Parte Prakah-Asante et al

Patent Trial and Appeal Board

Feb 12, 2018

13873966 (P.T.A.B. Feb. 12, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/873,966 04/30/2013 Kwaku O. Prakah-Asante 83357203 5293
28395 7590 02/14/2018
RROOKS KTTSHMAN P C /FfTET
EXAMINER
1000 TOWN CENTER REINHARDT, RICHARD G
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/14/2018 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KWAKU O. PRAKAH-ASANTE and
PERRY ROBINSON MACNEILLE1
Appeal 2016-008398
Application 13/873,966
Technology Center 3600
Before BRADLEY W. BAUMEISTER, ADAM J. PYONIN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1—14 and 16—20. App. Br. 6—9. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants list Ford Global Technologies as the real party in interest.
Appeal Brief filed January 11, 2016 (“App. Br.”) 2.
Appeal 2016-008398
Application 13/873,966
STATEMENT OF THE CASE
Appellants describe the present invention as follows:
An advertising system enabling one or more processors to
determine and select an in-vehicle drip advertisement. The
advertising system may communicate with a vehicle computing
system enabling one or more processors to receive input
representing a current location. The advertising system may
receive input representing a destination and define at least one
navigation route corresponding to the current location and the
destination. The system may select one or more advertisements
based on the at least one navigation route. The system may
output the one or more advertisements on an output device at one
or more predetermined points on the at least one navigation
route. The system may receive an input in response to an
advertisement and determine a related advertisement
corresponding to the response and the one or more navigation
routes. The system may output the related advertisement on the
output device.
Abstract.
Independent claim 11, reproduced below, illustrates the claimed
subject matter on appeal:
11. A method comprising:
generating navigation routes, via a vehicle processor,
corresponding to a current location and a destination;
calculating a driver workload value for each of the
navigation routes based on current driving conditions measured
with vehicle sensors in communication with the vehicle
processor;
outputting one or more advertisements based on the
navigation routes; and
in response to received input to an advertisement,
outputting a related advertisement based on the driver workload
value.
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Application 13/873,966
Claims 1—14 and 16—20 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 2—A.2
Claim 14 stands rejected under 35 U.S.C. § 112(d) or pre-AIA § 112,
14, for failing to include all of the limitations of the claim upon which it
depends. Final Act. 4—5.
Claims 1—8, 11—14, and 16—20 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Kamar (US 2010/0332315 Al; published
Dec. 10, 2010). Final Act. 5—8.
Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kamar and Chutorash (US 2010/0280956 Al; published
Nov. 4, 2010). Final Act. 8—9.
We review the appealed rejections below seriatim. In so doing, we
review the rejections for error based upon the issues identified by
Appellants, and in light of the arguments and evidence produced thereon.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
I.
Findings and Contentions
The Examiner determines that independent claim 11, for example, is
directed to an abstract idea because “[a]ll of the steps of [claim 11] can be
performed by a human given the information and time.” Final Act. 2. The
Examiner further characterizes the invention as “merely receiving,
2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
August 12, 2015 (“Final Act.”); the Examiner’s Answer mailed July 15,
2016 (“Ans.”); and the Reply Brief filed September 8, 2016 (“Reply Br.”).
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Application 13/873,966
determining, and outputting data,” and that “there is nothing in the claim
language as to how the driver workload value is being calculated.” Id. at 2—
3. The Examiner determines that “there are no meaningful limitations in the
claim that transform the exception into a patent eligible application such that
the claim amounts to significantly more than the exception itself.” Id. at 3.
The Examiner additionally determines that claims 1—10 and 17—20 are
patent ineligible for similar reasons as claims 11—14 and 16. Id. More
specifically, the Examiner determines that claims 1—10 set forth a system
that requires no more than a generic computer to perform generic computer
functions that are well-understood, routine and conventional activities
previously known in the industry. Id. The Examiner determines that
claims 17—20 set forth a computer readable medium that describes an
environment in which to carry out the abstract ideas on a generic computer.
Id. at 3^4.
Appellants argue that there is not a singular abstract idea encompassed
by the claims, and therefore, the Examiner instead merely lists all of the
individual limitations and improperly labels them collectively as an abstract
idea. App. Br. 6. Appellants further urge that “[wjhether or not the claims
contain an abstract idea, there is no one single abstract idea embodied in the
claims that it tied up such that others cannot practice it.” Id. at 7.
Principles of Law
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
In determining whether the claims set forth patent eligible subject
matter under 35U.S.C. § 101, we first must determine whether the claims at
issue are directed to laws of nature, natural phenomena, or abstract ideas.
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Application 13/873,966
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014). In
considering whether a claim is directed to an abstract idea, we acknowledge,
as did the Court in Mayo, that “all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or abstract
ideas.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71 (2012). We, therefore, look to whether the claims focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1336 (Fed. Cir. 2016).
If the claims are directed to an abstract idea, we then must consider
whether the claim contains an element or a combination of elements that is
sufficient to transform the nature of the claim into a patent-eligible
application. Ultramercial, 772 F.3d at 714; Alice Corp. Pty. Ltd. v. CLS
Bank Intern., 134 S.Ct. 2347, 2355 (2014).
In applying step two of the Alice analysis, we must
“determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract
idea into patentable subject matter. . . . We look to see whether
there are any “additional features” in the claims that constitute
an “inventive concept,” thereby rendering the claims eligible for
patenting even if they are directed to an abstract idea. .. . Those
“additional features” must be more than “well-understood,
routine, conventional activity.”
Intellectual Ventures I LLC v. Erie Indemnity Company, 850 F.3d 1315,
1328 (Fed. Cir. 2017) (citations omitted).
“[CJlaims [that] merely require generic computer implementation[]
fail to transform [an] abstract idea into a patent-eligible invention.” Id.
(citing Alice, 134 S.Ct. at 2357).
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Analysis
Regarding Appellants’ arguments concerning preemption (App. Br. 7
(contending that the claims do not tie up any particular abstract idea)), we
recognize as a threshold matter that the Supreme Court has described “the
concern that drives this exclusionary principle [i.e., the exclusion of abstract
ideas from patent eligible subject matter] as one of pre-emption.” See Alice
Corp., 134 S. Ct. at 2354. However, characterizing preemption as a driving
concern for patent eligibility is not the same as characterizing preemption as
the sole test for patent eligibility. As our reviewing court has explained:
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). Although “preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Id.
Turning to the remaining argument, we agree with the Examiner that
claim 11 is directed to an abstract idea. Specifically, the claim is directed to
the long known method of organizing human activity that entails a vehicle’s
passenger generating a navigation route for a driver, sensing or ascertaining
whether it is a convenient time to ask the driver a sales question, and
refraining from doing so when it appears that the driver needs to concentrate.
For example, a long established practice for automobile dealerships
has been for the salesperson to ride with a prospective buyer while the buyer
test drives a vehicle. In such cases, it had been a common practice for the
salesperson to instruct the driver on which navigation route to take while test
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driving, especially when the driver is not familiar with the area. It also had
been a common practice for the salesperson to point out the automobile’s
various features to the driver during the test drive. For example, the
salesperson may point out the car’s superior acceleration on a highway or
sensitive handling on a curve. Such explanations reasonably constitute the
salesperson “outputting one or more advertisements based on the navigation
route,” as recited in claim 11.
It also had been a common practice for the salesperson to observe the
surrounding road conditions, as well as the driver’s level of concentration on
the road and responsiveness to the salesperson’s sales conversation (or
“advertisements”). In the parlance of claim 11, the salesperson is
“calculating a driver workload value for each one of the navigation routes
based on current driving conditions measured with [human] vehicle
sensors,” as recited. When the salesperson observes the driver responding to
the conversation, such as by asking questions, nodding, or following
instructions, the salesperson knows to continue providing more information
about the car—or, “outputting a related advertisement based on the driver
workload value,” as recited in claim 11.
For these reasons, claim 11 appears to be directed to a method of
using a computer to perform a well-established abstract idea. Furthermore,
claim 11 does not focus on any specific computing means that improves the
relevant technology. Claim 11, instead, merely appears to be directed to
the result or effect that itself is the abstract idea and merely invokes generic
processes and machinery. See Enfish, LLC, 822 F.3d at 1336.
Turning to step two of the Alice analysis, we find that claim 11
contains no element or combination of elements that is sufficient to
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transform the nature of the claim into a patent-eligible application.
Ultramercial, 772 F.3d at 714. The entirety of claim 11 appears to be
directed to the method of performing the noted abstract idea on a generic
computer according to conventional computing processes.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s rejection of claim 11 under 35 U.S.C. § 101 for being
directed to patent ineligible subject matter. Accordingly, we sustain the
rejection of that claims, as well as claims 1—10, 12—14, and 16—20, which are
not argued separately. See App. Br. 6—7; also 37 C.F.R. § 41.37(c)(l)(iv).
II.
The Examiner rejects dependent claim 14 under 35 U.S.C. § 112(d) or
pre-AIA § 112, 4, for failing to include all of the limitations of claim 12,
upon which claim 14 depends. Final Act. 4. According to the Examiner,
“Claim 14 states the [recited] filtering is based on statistical analysis of a
number of routes for the navigation route to a particular advertisement
destination^ but t]he basis of the filter for claim 14 does not include the
basis for filtering [recited] in claim 12.” Id.
Appellants do not challenge this rejection on Appeal. See generally
App. Br. Accordingly, we summarily affirm this rejection without
substantive consideration. See MPEP § 1205.02 (“If a ground of rejection
stated by the examiner is not addressed in the appellant’s brief, that ground
of rejection will be summarily sustained by the Board.”).
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III.
Findings and Contentions
Regarding the anticipation rejection of claims 1—8, 11—14, and 16—20,
Appellants argue inter alia that Kamar does not disclose that a driving
condition is measured with vehicle sensors, as recited in the independent
claims. App. Br. 6—9.
The Examiner finds that this claim language is taught in paragraph 29
of Kamar, which states that “sensors might detect current traffic patterns and
construction delays.” Ans. 7—8. The Examiner additionally finds that the
recited language—“calculating a workload value” of a driver—is taught by
Kamar’s paragraphs 37—41. The Examiner specifically cites paragraph 39
for teaching that calculations are performed using the clock, ground­
positioning-satellite (GPS) sensors, and weather monitoring device sensors.
Ans. 8. The Examiner cites Kamar’s paragraph 40 for teaching that
advertisement opportunity may be identified by monitoring biometrics of the
user. Ans. 8. The Examiner cites Kamar’s paragraph 41 as disclosing
“respective advertisement opportunities may be identified as positions along
a potential route having a significant probability of an attention availability
of the user at the position.” Ans. 8.
Analysis
The cited passages of Kamar do not reasonably support the
Examiner’s disputed findings. For example, while Kamar’s paragraph 29
does state that “sensors might detect current traffic patterns and construction
delays,” the passage does not specify whether such sensors are, more
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particularly, vehicle sensors. They may well be remote sensors that transmit
the information to the vehicle via GPS signals.
Likewise, Kamar’s paragraph 39 discusses the use of a clock, a GPS
receiver, and a weather monitoring device, but the passage does not say that
any of these sensors more particularly are vehicle sensors. Paragraph 40
discusses biometric sensors—not sensors measuring driving conditions.
Paragraph 41 discusses travel features—not driving conditions.
Because the appealed rejection is an anticipation rejection under
35 U.S.C. § 102, as opposed to an obviousness rejection under 35 U.S.C.
§ 103, we are constrained to determine only whether Kamar discloses a
vehicle sensor for measuring driving conditions. We do not address the
separate question of whether it would have been obvious in light of Kamar
to use a vehicle sensor to measure driving conditions.
For the foregoing reasons, Appellants have persuaded us the Examiner
erred in rejecting claims 1—8, 11—14, and 16—20 as anticipated over Kamar.
Accordingly, we reverse the rejection of these claims under 35 U.S.C.
§ 102(b).
Regarding the obviousness rejection of dependent claims 9 and 10, the
Examiner does not rely on Chutorash to make up for the stated shortcomings
of Kamar’s disclosure. The Examiner instead relies upon Chutorash for
teaching that it was known to use a microphone to provide a verbal input in
response to an advertisement (claim 9) and a smartphone (claim 10). For the
reasons set forth above, then, we likewise reverse the obviousness rejection
of these claims under 35 U.S.C. § 103.
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DECISION
The Examiner’s decision rejecting claims 1—14 and 16—20 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)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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