Ex Parte Redmann et al

Patent Trial and Appeal Board

Jan 24, 2017

12957348 (P.T.A.B. Jan. 24, 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.
LBT0009-US I960
EXAMINER
CLARK, DAVID J
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
12/957,348 11/30/2010
74642 7590
CLIFFORD H. KRAFT
320 ROBIN HILL DR.
NAPERVTT.TE, IL 60540
William Gibbens Redmann
01/24/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM GIBBENS REDMANN and CHRIS OUTWATER
Appeal 2015-002453
Application 12/957,348
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1—20. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
SUMMARY OF DECISION
We AFFIRM and enter a NEW GROUND OF REJECTION.
Appeal 2015-002453
Application 12/957,348
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method form managing parking, the method comprising:
(a) reading, with an electric vehicle charging control device of
a parking lot, the electric vehicle control device having a first
reader to read an admittance identification presented by a user,
the admittance identification associated with a parking lot entry
event in a storage device; and,
(b) storing automatically, with the electric vehicle charging
control device, a parking lot charging event in association with
the admittance identification on the storage device to which the
electric vehicle charging control device has access.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Handler US 2011/0035261 A1 Feb. 10,2011
Smith US 2011/0068739 A1 Mar. 24,2011
The following rejections are before us for review:
1. Claims 1—20 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 6, 10, 11, 13, and 14 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter that the Appellants regard as the
invention.
3. Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Handler and Smith.
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ISSUES
Did the Examiner err in rejecting claims 1—20 under 35 U.S.C. § 101
as being directed to non-statutory subject matter; claims 6, 10, 11, 13, and 14
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter that the
Appellants regard as the invention; claims 1—20 under 35 U.S.C. § 103(a) as
being unpatentable over Handler and Smith?
ANALYSIS
The rejection of claims 1—20 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
The Appellants’ challenge to the rejection fails to show error in the
rejection.
The Examiner analyzed the claims in accordance with the two-step
framework for determining whether claimed subject matter is judicially-
excepted from patent eligibility under § 101 as articulated in Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). Ans. 2.
In accordance therewith, the Examiner found that (1) the claims are
“directed to the abstract idea of gathering electric vehicle admittance and
charging data and storing it” (Ans. 2) and (2) the additional elements in the
claims amount “to no more than: (i) mere instructions to implement the
idea on a computer, and/or (ii) recitation of generic computer structure that
serves to perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the pertinent
industry.” (Id.). From this, the Examiner determined that the claimed
subject matter runs afoul of35USC§ 101.
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The Appellants argue that the claims recite various “physical, non­
abstract elements]” (Reply Br. 2—7). For example, the Appellants contend
that claim 1 requires “specific . . . physical artifacts” including “‘an
admittance identification’, ‘a first reader’, ‘a storage device’, ‘a parking lot’,
and ‘an electric vehicle charging control device’” {id. at 3). According to
the Appellants, “[t]he recited physical artifacts limit the invention as claimed
to a particular physical embodiment that is non-generic” {id.). The
Appellants conclude that the claims “are demonstrated to be more than an
abstract idea” and “provide meaningful limitations which, in each case,
renders the claimed invention patent eligible” {id. at 7).
We disagree. Although method claim 1 on its face is directed to the
“process” category of patent-eligible subject matter in Section 101, we
conclude that claim 1 is nonetheless nonstatutory because it is directed to
judicially-excepted ineligible subject matter.
Claim 1 recites two steps; (a) reading; and (b) storing. Both steps
involve information. A first type of information is read and a second type of
information is stored in association with the first. This is the essence of
information gathering. Claim 1 as a whole is directed to that: the concept of
information gathering. Information gathering is a fundamental building
block of research, not to mention fundamental to human behavior for, among
many goals, to attain knowledge. We naturally constantly take in
information and associate it with other information. The abstract idea
category of judicially-excepted subject matter broadly covers building
blocks of human ingenuity, like fundamental economic practices {see Alice).
Information gathering is such a building block and thus properly categorized
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as an abstract idea. Thus, we agree with the Examiner that claim 1 is
directed to an abstract idea.
We find the Examiner properly and reasonably found that claim 1 is
directed to “gathering electric vehicle admittance and charging data and
storing it” (Ans. 2) and that that is an abstract idea. We have described it as
“information gathering” (see above) but that is simply a higher level of
abstraction than the Examiner’s articulation of it. Cf. Apple, Inc. v.
Ameranth, Inc., 2016 WL 6958650, *7 (Fed. Cir. 2016) (“An abstract idea
can generally be described at different levels of abstraction. As the Board
has done, the claimed abstract idea could be described as generating menus
on a computer, or generating a second menu from a first menu and sending
the second menu to another location. It could be described in other ways,
including, as indicated in the specification, taking orders from restaurant
customers on a computer.”).
Under the first step of the Alice framework, “[w]e must first determine
whether the claims at issue are directed to a patent-ineligible concept,” such
as an abstract idea. Alice, 134 S. Ct. at 2355. However it is described, we
do not see that the Appellants have adequately shown that claim 1 is not
directed to an abstract idea. That the claims include non-abstract “physical
artifacts” is an insufficient reason to persuasively argue that claim 1 is not
directed to an abstract idea. See Alice, 134 S. Ct. at 2358 (“The fact that a
computer ‘necessarily existfs] in the physical, rather than purely conceptual,
realm’ ... is beside the point.”). We note that the Appellants have put
forward no rebuttal evidence showing claim 1 is not directed to an abstract
idea irrespective of the level of abstraction at which it may be described
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(e.g., “gathering electric vehicle admittance and charging data and storing it”
or “information gathering”).
The second step of the Alice framework is “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.’” Alice, 134 S. Ct. at 2355 (alteration in
original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132
S. Ct. 1289, 1294 (2012)). We have considered the elements of claim 1 both
individually and as an ordered combination, in light of the Appellants’
discussion, to determine whether the additional elements transform the
nature of the claim into a patent-eligible application. We are unpersuaded
that the Examiner erred in finding that they do not. See e.g., Ans. 2.
The Appellants argue that claim 1 requires “‘an admittance
identification’, ‘a first reader’, ‘a storage device’, ‘a parking lot’, and ‘an
electric vehicle charging control device’” and that “[t]he recited physical
artifacts limit the invention as claimed to a particular physical embodiment
that is non-generic.” (Reply Br. 3).
We disagree.
Claim 1 recites four elements: “an electric vehicle charging control
device,” “a first reader,” “admittance identification,” and “a storage device.”
The Specification supports the view that said elements encompass that
which is generic and common in the field at the time of the invention. See
Spec., para. 128 (“processor of an electric vehicle charging control device . .
. can include, but is not limited to a computer ... or any device capable of
executing instructions and/or sending and receiving control signals.”); para.
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24 (“a barcode reader”); para. 23 (“a parking ticket”); para. 125 (“database
can include . . . any device capable of storing information”); see also, Spec.,
para. 6 (“Large parking structures and parking lots frequently use automated
gates with parking ticket dispensers at the entrance(s), and various
mechanisms for managing exits. In modem system, these tickets are
machine-readable”). The evidence on record supports the view that only
conventional elements of a parking lot and generic computer system are
involved. There is insufficient evidence that claim 1 roots the solution in
computer technology. The Appellants’ arguments at pages 2—7 of the Reply
Brief do not address the issue of whether the claims are directed to solving a
technological problem. See DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1257 (Fed. Cir. 2014) (“the claimed solution is necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks.”); see also Amdocs (Israel) Limited v.
Openet Telecom, Inc, 841 F.3d 1288, 1300-01 (Fed. Cir. 2016) (“the claim’s
enhancing limitation necessarily requires that these generic components
operate in an unconventional manner to achieve an improvement in
computer functionality. The enhancing limitation depends not only on the
invention’s distributed architecture, but also depends upon the network
devices and gatherers—even though these may be generic—working
together in a distributed manner.”). In our view, the claims are not directed
to overcoming a technological problem. Rather, conventional elements of a
generic electric vehicle charging control device, reader, and storage device
are employed for their inherent functions to perform as expected; that is,
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charging a vehicle, reading information, and storing information,
respectively.
The Appellants contend that the claimed “events are described in the
specification as being generated in response to particular real-world,
physical events” (Reply Br. 3) (citing paragraph 81 and Figure 6b of
Appellants’ Specification). We agree that the information being processed,
as claimed, is particular (e.g., parking lot entry event, parking lot charging
event), and the particularity gives a contextual and practical application for
gathering information. However, this is insufficient to transform the abstract
idea of gathering information into an inventive concept to ensure that in
practice the method amounts to significantly more than the abstract idea
itself. Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371
(Fed. Cir. 2011) (“The Court [in Parker v. Flook, 437 U.S. 584 (1978)]
rejected the notion that the recitation of a practical application for the
calculation could alone make the invention patentable.”). Cf. Wireless
Media Innovations, LLC v. Maher Terminals, LLC, 100 F. Supp. 3d 405,
416 (D.N.J. 2015), aff’d, 636 F. App’x 1014 (Fed. Cir. 2016) (“Adding
routine steps of recording, identifying, and communicating the ID code of a
particular container, or moving the container from the receiving area to a
vehicle does not transform an otherwise abstract idea into patent-eligible
subject matter.”). We also note the Appellants’ arguments regarding
independent claims 15 and 20, which are directed to a “system” and a
“computer program product,” respectively (see Reply Br. 5—6). Like claim
1, claims 15 and 20 are ostensibly directed to statutory categories; namely a
“machine” and a “manufacture,” respectively. Nevertheless, we conclude
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that claims 15 and 20 are similarly nonstatutory because they are directed to
the judicial exception of abstract ideas. Appellants’ arguments regarding the
dependent claims are unpersuasive for similar reasons. For example,
although we agree with the Appellants that “an entry gate of the parking lot”
in claim 3 is a “physical entity” (Reply Br. 3), that is not relevant to the
question of whether claim 3 is directed to solving a technological problem
for the reasons set forth above. We see nothing in the subject matter claimed
that transforms the abstract idea of information gathering into an inventive
concept. “[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention. Stating an
abstract idea ‘while adding the words ‘apply it” is not enough for patent
eligibility.” Alice, 134 S. Ct. at 2358. For the foregoing reasons, albeit the
words “apply it” are not expressly recited in the claims, that is in effect what
the claimed subject matter would entail in practice.
We have fully considered the Appellants’ arguments. For the
foregoing reasons, they are unpersuasive as to error in the rejection. The
rejection is sustained.
The rejection of claims 6, 10, 11, 13, and 14 under 35 U.S.C. § 112, second
paragraph, as being indefinite or failing to particularly point out and
distinctly claim the subject matter that the Appellants regard as the
invention.
The Appellants have not contested the rejection under 35 U.S.C.
§ 112, second paragraph, for failing to particularly point out and distinctly
claim the subject matter which Appellants regard as the invention (App. Br.
6; Reply Br. 2). Thus, we summarily sustain the rejection.
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The rejection of claims 1—20 under 35 U.S.C. § 103(a) as being
unpatentable over Handler and Smith.
The Examiner finds the claim 1 limitation of “(a) reading” in Smith at
paragraphs 2, 15—18, and 20, and finds the limitation of “(b) storing” in
Handler at paragraphs 17—19 and 42-44 (Final Act. 4; Ans. 2-4). The
Examiner determines that it would have been obvious to combine the
teachings of Smith and Handler (Final Act. 5).
The Appellants argue that Smith does not disclose “reading, with an
electric vehicle charging control device of a parking lot, the electric vehicle
control device having a first reader to read an admittance identification
presented by a user, the admittance identification associated with a parking
lot entry event in a storage device” as required by claim 1 (see Appeal Br.
13; see also Reply Br. 7—9). The Appellants contend that “Smith is
completely silent as to ‘Admittance Identification’” (Appeal Br. 13). The
Appellants assert that the term “admittance identification” is defined at
paragraph 23 of the Appellants’ Specification (Reply Br. 8, 14). According
to the Appellants, “[t]he location of automated ticket dispenser 123 is shown
in FIG. 1 as being adjacent to parking lot entrance 120, absent in Smith”
(id.).
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art,
taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). Paragraph 23 of the
Appellants’ Specification is reproduced below with our emphasis added:
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Herein, the term “admittance identification” or
“admittance ID” refers to either a parking ticket issued by ticket
dispenser 123 or an identification recognized by the automated
ticket dispenser 123 or other device similarly located and able
to read the identification.
We agree with the Appellants that the proper construction of
“admittance identification” is governed by the definition at paragraph 23 of
the Specification. However, this definition expressly includes devices other
than ticket dispenser 123, and we therefore decline Appellants’ invitation to
incorporate ticket dispenser 123 — or the exact arrangement shown in
Figure 1 — into the claim. “The problem is to interpret claims ‘in view of
the specification’ without unnecessarily importing limitations from the
specification into the claims.” E-Pass Techs., Inc. v. 3Com Corp., the pr,
1369 (Fed. Cir. 2003).
Turning to the rejection, we find that Smith discloses the “admittance
identification” of claim 1. Smith discloses at paragraph 8 that “parking
space monitor 12 is positioned adjacent each parking space,” and at
paragraph 17 discloses that parking space monitor 12 is able to recognize an
authentication code using barcode scanner 20. We therefore find, consistent
with the definition in the Specification, that parking space monitor 12 with
barcode scanner 20 is an “other device similarly located and able to read the
identification” and that the authentication code in Smith is an “identification
recognized by” the parking space monitor 12. Spec., para 23; see also id. at
para. 24 (“presented identification and reader may be, for example and not
by way of limitation, a barcode and a barcode reader”).
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We note the Appellants’ argument that “Smith teaches the
authorization code as provided in exchange for pre-payment” (Reply Br. 7).
We take this argument as directed to the claim 1 limitation of
“admittance identification presented by a user.” This argument is not
commensurate with the scope of the claim; nothing in claim 1 excludes pre­
payment for the “admittance identification.” We further note that the
Appellants’ Specification at paragraph 65 describes, by way of example,
presentation of a pre-issued admittance identification (“the patron . . .
presents a pre-issued identification to an identification sensor”).
The Appellants argue that “Smith provides no indication of the
authorization code being associated with a parking lot entrance event in the
database” and “Smith makes no mention of database activity as a result of
the code being entered.” (Reply Br. 8). The Appellants also argue that
“Smith has made no detection of vehicle entry into the parking lot” (id.).
We disagree and find that Smith discloses “the admittance
identification associated with a parking lot entry event in a storage device”
as required by claim 1. Smith discloses that parking space monitors 12 are
in two-way communication with computer system 30 through a network
such as a LAN or the internet (Smith, para. 13). Smith at paragraph 17
discloses that when a user pulls into a parking space, “vehicle detector 14
senses the presence of the vehicle and sends a signal to the computer system
30, which in turn begins an alarm sequence” and in order to disable the
alarm, “an authorization code must be entered within a short time period,”
such as “by having the code scanned by barcode scanner 20.” Smith at
paragraph 11 discloses that “code entry device 20, 22 enables a parker to
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enter the authorization code which in turn is communicated to the computer
system.” One of ordinary skill reviewing this disclosure would be led to
store the received authorization code in association with the corresponding
vehicle detection, e.g., in a database of computer system 30. See Smith,
para. 22 (“computer system 30 is essentially conventional. . . systems
comprising databases ... are known” and “may be readily adapted for use in
carrying out the functions described above by a person of ordinary skill in
the art”).
For the reasons set forth above, we agree with the Examiner that
Smith’s disclosure of reading an authorization code using barcode scanner
20 of parking space monitor 12 meets the claimed “reading” (see Ans. 4).
Claim 1 also requires “(b) storing automatically, with the electric
vehicle charging control device, a parking lot charging event in association
with the admittance identification on the storage device to which the electric
vehicle charging control device has access.” We find that Smith would lead
one of ordinary skill to the above limitation of claim 1. Because we find that
Smith alone would lead one of ordinary skill in the art to what is claimed,
we find it unnecessary to address the Appellants’ arguments regarding
Handler.
Smith discloses at paragraph 20 that “[t]he parking space monitors 12
may also include a power supply 42 for permitting a parker to recharge the
batteries of an electric vehicle” and “power supply 42 can be energized and
controlled by the computer system 30 so that no power is provided unless an
acceptable authorization code has been entered.” Paragraph 20 further
discloses that “any electricity used may be charged to the customer’s
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account at the time the reservation is made and/or paid for.” One of ordinary
skill reviewing this disclosure would be led to communicate the information
about electricity provided by power supply 42 (e.g., “in kilowatt hours or
simply dollars”) from parking space monitor 12 to computer system 30 and
to associate the electricity usage information with the customer’s provided
authorization code, e.g., in the database of computer system 30 as discussed
above. “The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 127 S. Ct. 1727, 1739,
(2007).
For the reasons set forth above, we will affirm the rejection of claim
1. Our reasons in support of the prima facie case of obviousness differ from
that of the Examiner and, accordingly, we denominate our affirmance as a
new ground of rejection.
Independent system claim 15 and computer program product claim 20
are directed to similar functionality as claim 1 (i.e., reading and storing) and
the rejection of claims 15 and 20 is affirmed under the same analysis set
forth above.
Having affirmed the rejection of claims 1—20 as directed to judicially-
excepted subject matter, we do not reach the question of whether the
Examiner’s rejection of dependent claims 2—14 and 16—19 under 35 U.S.C.
§ 103(a) as being unpatentable over Handler and Smith is in error. Cf. Ex
Parte Gutta, 93 USPQ2d 1025 (BPAI 2009) (precedential) (declining to
reach alternate grounds of rejection when affirming a rejection under 35
U.S.C. § 101).
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CONCLUSIONS
The rejection of claims 1—20 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter is sustained.
The rejection of claims 6, 10, 11, 13, and 14 under 35 U.S.C. § 112,
second paragraph, as being indefinite or failing to particularly point out and
distinctly claim the subject matter that the Appellants regard as the invention
is summarily sustained.
The rejection of claims 1, 15, and 20 under 35 U.S.C. § 103(a) is
sustained, but denominated as a new ground of rejection.
We do not reach the rejection of claims 2—14 and 16—19 under 35
U.S.C. § 103(a) as being unpatentable over Handler and Smith.
DECISION
The decision of the Examiner to reject claims 1—20 is affirmed.
NEW GROUND
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 the Appellants, 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 the claims
so rejected, or both, and have the matter reconsidered by the
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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 ....
Should the Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED; 37 C.F.R, $ 41.50(b)
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