Ex Parte Prakah-Asante et al

Patent Trial and Appeal Board

Sep 22, 2017

14253340 (P.T.A.B. Sep. 22, 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.
14/253,340 04/15/2014 Kwaku O. PRAKAH-ASANTE 83419019 6172
28395 7590 09/26/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER PATEL, SHARDUL D
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
09/26/2017 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):
docketing @brookskushman.com
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 HSIN-HSIANG YANG
Appeal 2017-004718
Application 14/253,340
Technology Center 3600
Before MICHAEL J. STRAUSS, WILLIAM M. FINK, and
AARON W. MOORE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-004718
Application 14/253,340
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—9 and 11—20. Claim 10 is indicated to be allowable. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
THE INVENTION
The claims are directed to driving scenario prediction and automatic
vehicle setting adjustment. Spec., Title. Claim 1, reproduced below with a
disputed limitation emphasized in italics, is illustrative of the claimed
subject matter:
1. A system comprising:
a vehicle processor configured to:
track vehicle input during vehicle traversal of a travel path
within a location region,
match the vehicle input against a condition of a rule, such
that when the vehicle input matches the condition, a driving
scenario indication of a type corresponding to the rule is
associated with the location region, and
update a location demand identifier associated with the
location region based on the driving scenario indication.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ishikura US 2007/0100551 A1 May 3, 2007
REJECTION
The Examiner rejected claims 1—9 and 11—20 under 35 U.S.C.
§ 102(a)(1) as being unpatentable over Ishikura. Final Act. 4—18.
2
Appeal 2017-004718
Application 14/253,340
ANALYSIS
§ 102 — Anticipation
Appellants contend the Examiner’s rejection of independent claim 1 is
in error because Ishikura fails to disclose the disputed limitation of updating
a location demand identifier associated with a location region based on a
driving scenario indication. App. Br. 8. In particular, in addressing the
Examiner’s application of Isikura to claim 1, Appellants argue Ishikura’s
shape and speed parameters are not disclosed as equivalent to the claimed
location demand. Id. The Examiner responds by finding Ishikura’s lane
deviation prediction judgment means discloses the disputed location demand
identifier. Ans. 3.
We agree with Appellants that Ishikura fails to disclose the disputed
limitation. During examination of a patent application, pending claims are
given their broadest reasonable construction consistent with the
specification. In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004); In re Prater, 415 F.2d 1393, 140A-05 (CCPA 1969). Under a
broadest reasonable interpretation, the words of the claim are given their
plain meaning unless the plain meaning is inconsistent with the
Specification. Chef America, Inc. v. Lamb-Weston, Inc., 358 F. 3d 1371,
1372 (Fed. Cir. 2004); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). The
plain meaning of a term means the ordinary and customary meaning given to
the term by those of ordinary skill in the art at the time of the invention. In
re Suitco Surface, Inc., 603 F.3d 1255, 1259—60 (Fed. Cir. 2010). The
presumption that a term is given its ordinary and customary meaning may be
rebutted by the applicant clearly setting forth a different definition of the
3
Appeal 2017-004718
Application 14/253,340
term in the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
Although technical treatises and dictionaries fall within the category
of extrinsic evidence, as they do not form a part of an integrated patent
document, they are worthy of special note. Judges may rely on dictionary
definitions when construing claim terms, so long as the dictionary definition
does not contradict any definition found in or ascertained by a reading of the
patent documents. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584
n.6 (Fed. Cir. 1996). Furthermore, although we agree claims are to be given
their broadest reasonable interpretation consistent with the specification (see
In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)), this does not give license to
ignore the plain meaning of the words of the claim {In re Zletz, 893 F.2d at
321). Although we are cautioned by our reviewing court not to import
limitations from the Specification into the claims, our reviewing court guides
that our claim construction must not be overly broad, unreasonable, or
inconsistent with Appellants’ Specification.1
Appellants’ Specification does not provide a particular definition of a
location demand identifier. However, the plain meaning of identify is “[t]o
establish the identity of.”2 This definition, standing alone, does not exclude
Ishikura’s lane deviation prediction judgment means, which determines a
1 [Ujnder the broadest reasonable interpretation, the Board’s construction
“cannot be divorced from the specification and the record evidence,” In re
NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011), and “must be consistent
with the one that those skilled in the art would reach,” In re Cortright, 165
F.3d 1353, 1358 (Fed. Cir. 1999). A construction that is “unreasonably
broad” and which does not “reasonably reflect the plain language and
disclosure will not pass muster.” Microsoft Corp. v. Proxyconn, Inc., 789
F.3d 1292, 1298 (Fed. Cir. 2015).
2 The American Heritage Dictionary of the English Language 654 (1981).
4
Appeal 2017-004718
Application 14/253,340
vehicle’s position within a traffic lane, from disclosing something that
identifies a location. However, referring to the Specification, Appellants
disclose “self-tuning predictive driving demand module 222 [is] configured
to receive the location demand identifiers 218 from the likelihood learning
module 216, and utilize sensitivity levels 220 to determine upcoming high
demand locations.” Spec. 135 (emphasis added). Thus, the disputed
location demand identifier is information or data rather than an apparatus for
identifying a location. This interpretation is further supported by the
Specification at paragraphs 383, 444, and 475. Thus, consistent with
Appellants’ Specification, we interpret a location demand identifier to be
information associated with a geographic location, not a device for
determining a position as does Ishikura’s lane deviation prediction judgment
means. That is, although Ishikura’s lane deviation prediction judgment
means provides a deviation based on a position relative to a traffic lane
(Ishikura ^fl[ 9, 3 8), it does not provide a location much less a geographic
location as per Appellants’ Specification. Because the Examiner’s
interpretation of Ishikura’s lane deviation prediction judgment means as
encompassing the disputed location demand identifier is unreasonably broad,
we do not sustain the rejection of claim 1 under 35 U.S.C. § 102(a)(1) or that
3 Describing a location region as a region “bounded by the latitude range 306
and the longitude range 308.”
4 “[LJikelihood learning module 216 may be configured to . . . determine
location demand identifiers 218 for the driving scenario indications 214 by
performing a likelihood adjustment based on frequency of occurrence.”
5 Likelihood learning module 216 may be configured to “[associate] a
location demand identifier 218 with the location region 304” and “may
remove any driving scenario indication 214 association with the location
region 304 [that has dropped below a minimum threshold value] to save
memory storage and remove unnecessary location demand identifiers 218.”
5
Appeal 2017-004718
Application 14/253,340
of dependent claims 2—7. For similar reasons, we do not sustain the
rejection of independent claims 8 and 15, which contain similar language, or
the rejection of their dependent claims 9, 11—14 and 16—20. We note
Appellants raise additional contentions of error but we do not reach them as
our resolution of this contention is dispositive of the appealed rejections
under 35 U.S.C. § 102(a)(1).
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
claims 1—9 and 11—20 under 35 U.S.C. § 101 as being directed to non-
statutory subject matter. We find the claims ineligible for patent protection
because they are directed to a non-statutory abstract idea.
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)). The Court has thus made clear that “[pjhenomena of nature, though
just discovered, mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work.”
Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
Following the Supreme Court, the Federal Circuit has similarly held
that mental processes are not patent-eligible subject matter. Therefore, the
court has held that methods which can be performed entirely in the human
6
Appeal 2017-004718
Application 14/253,340
mind are unpatentable not because “there is anything wrong with claiming
mental method steps as part of a process containing non-mental steps,” but
rather because “methods which can be performed entirely in the human mind
are the types of methods that embody the ‘basic tools of scientific and
technological work’ that are free to all men and reserved exclusively to
none.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373
(Fed. Cir. 2011) (citation omitted).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., 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, 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 so, the second step 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 1298). 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. (alteration in original)
(citing Mayo, 132 S. Ct. at 1294). The Court acknowledged in Mayo that
“all inventions at some level embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293.
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
7
Appeal 2017-004718
Application 14/253,340
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).
Under the first step of the analysis, the claimed subject matter of
claims 1—9 and 11—20 is directed to processing data. See Appeal Br. Al—A5
(Claims App.). In particular, according to the Specification, the invention
relates to “predicting driving scenarios across vehicle travel paths.”6 Spec.
11. In that context, the claims are directed to processing data to determine
if a vehicle’s position is within a region associated with a particular driving
scenario (e.g., likely to require high acceleration or braking, particular types
of maneuvers, or particular road conditions (see Spec, Table 1)). That is, the
claims are directed to a mathematical algorithm for organizing human
activity—an abstract idea similar to those of Parker v. Flook, 437 U.S. 584
(1978) (mathematical algorithm used for adjusting an alarm limit); Digitech
Image Techs., LLCv. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350 (Fed.
Cir. 2014 (employing a mathematical algorithm to generate a device profile);
6 Although the Specification further explains the disclosure relates to “the
automatic application of anticipatory changes to vehicle settings according
to the predicted driving scenarios” (Spec. 11), the claims on appeal recite
only updating a vehicle setting to improve or modify maneuverability
(claims 5,8, and 15) without reciting steps or structure for achieving such
intended results. Therefore, the additional limitations of claims 5, 8, and 15
merely require updating of data (i.e., settings) using conventional data
processing techniques rather than effectuating a physical change to the
vehicle affecting maneuverability. Even if otherwise, any updating of
settings constitutes, at most, insignificant post-solution activity. See, e.g.,
Bilski v. Kappos, 561 U.S. 593, 610—11 (2010); see also Alice, 134 S. Ct. at
2357 (“‘Simply appending conventional steps, specified at a high level of
generality,’ was not ‘enough ’ [in Mayo] to supply an ‘inventive concept.’”)
(quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
8
Appeal 2017-004718
Application 14/253,340
Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)
(collecting information and “analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category”); and In re
Meyer, 688 F.2d 789, 795—6 (CCPA 1982) (identifying probable locations of
malfunctions is a “mathematical algorithm representing a mental process
that has not been applied to physical elements or process steps”). Here, the
claims involve generically processing data to associate a location with a
demand placed on a vehicle transiting the location (i.e., a driving scenario
such as a region having a downhill travel path requiring vehicle braking),
without any particular inventive technology, i.e., an abstract idea. See Elec.
Power Grp., 830 F.3d at 1354.
Under the second step of the analysis, we find neither independent
claims 1, 8, and 15 nor dependent claims 2—7, 9, 11—14, and 16—20 have any
additional elements, alone or in combination, that amount to significantly
more to transform the abstract idea of processing data to associate a location
with a driving scenario into a patent-eligible invention. Independent claim 1
recites a vehicle processor to (i) track a vehicle input (i.e., collect data
representing driver activity, vehicle state or environment, or location (App.
Br. 5, citing Spec. ^fl[ 38, 62)); (ii) apply a rule to the inputs to associate a
driving scenario with a location (i.e., analyze the data associated with a
region {id., citing Spec. ^fl[ 39-42, 63—64)); and (iii) update a location
demand identifier based on the scenario (i.e., “label or otherwise associate
the matched driving scenario indications 214 with location information 208
indicative of the current vehicle 31 location” (Spec. 143; see also App. Br.
5, further citing Spec. ^fl[ 44-47, 65)). Dependent claims 2—7 further define
9
Appeal 2017-004718
Application 14/253,340
the data, information, or processing thereof. See App. Br. A-l—A-2.
Similarly, independent claim 8 and dependent claims 9 and 11—14 recite an
apparatus comprising a generic processor and memory for “onboard
processing of commands and routines.” Spec. Tflf 21—22, 35. In the absence
of evidence to the contrary, any general purpose processor or computer
available at the time the application was filed would have been able to
perform these functions. The introduction of a computer or processor to
implement an abstract idea is not a patentable application of the abstract
idea. Alice, 134 S. Ct. at 2357—58. The computer implementation here is
purely conventional and performs basic functions. See id. at 2359-60. The
claims do not purport to improve the functioning of the computer itself, nor
do they effect an improvement in any other technology or technical field.
See id. at 2359. Similarly, independent method claim 15 and its dependent
claims 16—20 fail to include additional elements that transform the nature of
the claim into a patent-eligible application. Alice, 134 S. Ct. at 2355
(quoting Mayo, 566 U.S. at 78).
Thus, under the two-part analysis, we find that claims 1—9 and 11—20
cover claimed subject matter that is judicially-excepted from patent
eligibility under § 101. Therefore, we enter a new ground of rejection of
claims 1—9 and 11—20 under 35 U.S.C. § 101.
10
Appeal 2017-004718
Application 14/253,340
DECISION
We reverse the Examiner’s rejection of claims 1—9 and 11—20 under
35 U.S.C. § 102(a)(1).
We enter a NEW GROUND OF REJECTION for claims
1—9 and 11—20 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
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).
REVERSED: 37 C.F.R, $ 41.50(b)
11