Ex Parte Prakah-Asante et al

Patent Trial and Appeal Board

Aug 31, 2017

14265796 (P.T.A.B. Aug. 31, 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.
14/265,796 04/30/2014 Kwaku O. Prakah-Asante 83402762 9563
28395 7590 09/05/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER ALSOMIRI, MAJDI A
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3662
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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 2017-004738
Application 14/265,796
Technology Center 3600
Before TREVOR M. JEFFERSON, MICHAEL J. STRAUSS, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-004738
Application 14/265,796
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
The claims are directed to predictive driving demand modeling.
Spec., Title. Claim 1, reproduced below with a disputed limitation
emphasized in italics, is representative of the claimed subject matter:
1. A system comprising:
a processor configured to:
record vehicle inputs during travel over a predefined
distance;
record environmental variables during the travel;
record vehicle state changes during the travel;
compare the recorded inputs, variables and state changes
to predetermined values to determine if a correlation, indicating
driving demand above a threshold, exists', and
record the driving demand as occurring over the
predefined distance if the correlation indicates driving demand
above the threshold.
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Huang et al. US 8,280,601 B2 Oct. 2, 2012
REJECTIONS
The Examiner made the following rejections:
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Application 14/265,796
Claims 1—201 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception (i.e., an abstract idea) without
significantly more. Final Act. 2—3.
Claims 1—20 are rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Huang. Final Act. 3—5.
APPELLANTS’ CONTENTIONS
1) In connection with the rejection under 35 U.S.C. § 101, Appellants
contend
a) The Examiner improperly finds the claims are directed to a “law of
nature in the form of a mathematical algorithm” for failure to
evidence any underlying natural law such as gravity. Br. 6.
b) The rejection is improper because the claims “do[] not seek to tie up
any judicial exception such that others cannot practice it.” Id citing
2014 Interim Guidance on Patent Subject Matter Eligibility, 79 (241)
Federal Register 74618 (Tuesday, December 16, 2014) (the “Interim
Guidance”).
1 Although the first sentence of the Examiner’s statement of the rejection
under 35 U.S.C. § 101 lists only method and Beauregard claims 10—20,
omitting system claims 1—9, (Final Act. 2), the Examiner’s reasoning that
follows this initial sentence addresses and includes all pending claims within
the rejection, including systems claims 1—9 (Final Act. 2—3). The inclusion
of all claims as rejected under 35 U.S.C. § 101 is further reflected in the
Examiner’s Answer (Ans. 2—6) and is consistent with Appellants’ Appeal
Brief listing of the rejected claims (Br. 6). We conclude the omission of
system claims 1—9 from the referenced listing of claims rejected under 35
U.S.C. § 101 to be harmless error and, for purposes of this appeal, treat all
pending claims 1—20 to be so rejected.
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Application 14/265,796
2) In connection with the rejection under 35 U.S.C. § 102, Appellants
contend Huang fails to disclose the disputed limitation of “compar[ing]
the recorded inputs, variables and state changes to predetermined values
to determine if a correlation, indicating driving demand above a
threshold, exists,” as required by claim 1. Br. 8—9.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments the Examiner has erred. In connection with the rejection under
35 U.S.C. § 102(a)(1), we agree with Appellants the Examiner erred.
However, in connection with the rejection under 35 U.S.C. § 101,
Appellants’ arguments are unpersuasive of Examiner error. In connection
with this rejection, we concur with the conclusions reached by the Examiner
and we adopt as our own the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Final Act. 2—3) and the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 2—6). We highlight the following for
emphasis.
Non-Statutory Subject Matter
The Examiner finds the claims are directed to a judicial exception to
the four categories of statutory subject matter, i.e., to the abstract idea of
comparing and organizing information “which is similar to concepts that
have been identified as abstract by the courts, such as using categories to
organize, store and transmit information in Cyberfone.” In Cyberfone, the
Court held that “using categories to organize, store, and transmit information
is well-established,” and “the well-known concept of categorical data
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storage, i.e., the idea of collecting information in classified form, then
separating and transmitting that information according to its classification, is
an abstract idea that is not patent-eligible.” Cyberfone Systems, LLC v. CNN
Interactive Group, Inc., 558 Fed. Appx. 988, 992 (Fed. Cir. 2014). Here, as
in Cyberfone, information is compared and organized. Ans. 2. In addition,
the Examiner finds the claims are similar to those found to be abstract in
Electric Power Group, LLC v. Alstom S.A., (Ans. 2—3) which involved
“receiving” data, “detecting and analyzing” events from that data, and
“displaying” the results. The Federal Circuit affirmed that such claims were
directed to ineligible subject matter under § 101:
Information as such is an intangible. Accordingly, we [the
Federal Circuit] have treated collecting information, including
when limited to particular content (which does not change its
character as information), as within the realm of abstract ideas.
In a similar vein, we have treated analyzing information by steps
people go through in their minds ..., without more, as essentially
mental processes within the abstract-idea category. And we have
recognized that merely presenting the results of abstract
processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract
as an ancillary part of such collection and analysis.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir.
2016) (citations omitted). The Examiner further finds “[t]he claims do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception” because “generically recited computer
elements do not add a meaningful limitation to the abstract idea.” Final Act.
3.
In connection with contention 1 (a) Appellants argue the Examiner has
not provided any basis for a finding the claims are directed to a natural law.
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Br. 6. This contention is unpersuasive because it mischaracterizes the
Examiner’s findings. In particular, the Examiner rejects claims 1—20
“because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more.” Final Act. 2. Thus, rather than finding the claims are directed to a
natural law, the Examiner finds the claims are directed to an abstract idea.
Id.
Appellants’ contention 1(b) is also unpersuasive for the reasons
expressed by the Examiner. Ans. 3—5. Although preemption “might tend to
impede innovation more than it would tend to promote it, ‘thereby thwarting
the primary object of the patent laws’” {Alice Corp., 134 S. Ct. at 2354
(citing Mayo, 132 S. Ct. at 1293)), “the absence of complete preemption
does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). See also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015) (“[Tjhat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
For the reasons discussed supra, Appellants’ contentions of error in
connection with the rejection of claims 1—20 under 35 U.S.C. § 101 are
unpersuasive of Examiner error. Accordingly, we sustain the rejection.
Anticipation
In connection with contention 2 the Examiner finds Huang’s (i)
steering maneuvers discloses the recorded inputs of claim 1, (ii) yaw rate
discloses the recited variables, and (iii) traffic discloses the recited state
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changes. Ans. 7. The Examiner directed attention to Huang’s col. 13,11. 7—
17, col 14,11. 19-58, col 27,11. 58—67, and col. 46,11. 3—60 for disclosing a
thresholding type of comparison of those three criteria. Id. The Examiner
further directs attention to Huang’s use of simple threshold-base logic by
style characterization processor 52 for disclosing comparing the claimed
criteria to predetermined values. Ans. 8. Appellants argue Huang’s
disclosure of “using observed maneuvering to classify a driver’s ability” and
“environmental variables and vehicle state changes to determine if a
condition exists” fail to disclose the disputed limitation of “using all three
inputs and comparing them to predefined values, as claimed, to determine if
a condition exists.” Br. 8—9.
We are persuaded by Appellants’ contention. “[T]o anticipate a claim
under 35 U.S.C. 102, a reference must teach every element of the claim.”
App. Br. 14. Furthermore, [e]very element of the claimed invention must be
literally present, arranged as in the claim.” Richardson v. Suzuki Motor Co.,
Ltd., 868 F.2d 1226, 1236 (Fed. Cir. 1989) (citing Perkin-Elmer Corp. v.
Computervision Corp., 732 F.2d 888, 894 (Fed. Cir. 1984); Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 771-72 (Fed. Cir. 1983)). In
particular, the question of whether it would have been obvious to compare
the specified inputs (i.e., vehicle inputs, road environmental variables, and
vehicle state changes) to predetermined values is not before us. Instead, the
Examiner has rejected claim 1 under 35 U.S.C. § 102(a)(1), requiring an
explicit disclosure of the limitation or a showing that the limitation is
inherent. Although we agree with the Examiner in finding Huang’s use of
simple threshold-base logic by characterization processor 52 discloses
comparing an input value with a predetermined value, the reference does not
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specify which inputs are subject to such comparison processing and the
Examiner does not provide sufficient explanation to support a finding that
the disclosed operation of characterization processor 52 would necessarily
perform any such comparison. Because the Huang reference does not
explicitly disclose the disputed limitation and the Examiner has not found it
to be inherent, we are constrained to reverse the rejection of independent
claim 1 and, for the same reasons, the rejection of independent claims 10 and
19 and dependent claims 2—9, 11—18, and 20 under 35 U.S.C. § 102(a)(1) as
being anticipated by Huang.
DECISION
We affirm the Examiner’s decision to reject claims 1—20 under 35
U.S.C. § 101.
We reverse the Examiner’s decision to reject claims 1—20 under 35
U.S.C. § 102(a)(1).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1—20 is
affirmed. See 37 C.F.R. § 41.50(a)(1).
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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