Ex Parte Wallace

Patent Trial and Appeal Board

Dec 22, 2016

13797303 (P.T.A.B. Dec. 22, 2016)

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.
13/797,303 03/12/2013 Daniel Wallace TRMB-1927.DIV1 4230
112877 7590 12/27/2016
Kilpatrick Townsend & Stockton LLP
Trimble Navigation Limited
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309
EXAMINER
AMSDELL, DANA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
12/27/2016 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):
ipefiling@kilpatricktownsend.com
jlhice@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL WALLACE
Appeal 2015-002202
Application 13/797,3031
Technology Center 3600
Before HUBERT C. LORIN, JAMES A. WORTH, and
BRUCE T. WIEDER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel Wallace (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies Trimble Navigation Limited as the real party in
interest. App. Br. 1.
Appeal 2015-002202
Application 13/797,303
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An asset management system comprising:
a database populated with a first portion of information about
an asset from a first reporting source, wherein said first portion is
received from an electronic device coupled with said asset, and
wherein said information from said first reporting source is received
by a data receiver coupled with said database of said asset
management system, a second portion of information about said asset
from a second reporting source, wherein said second portion is
received from a second electronic device different from said first
reporting source and coupled with said asset, and wherein said
information from said second reporting source is received by said data
receiver, and a third portion of information about an environmental
conditions from a third reporting source, wherein said third portion is
received from a third reporting source, different from said first
reporting source and said second reporting source, and wherein said
information from said third reporting source is received electronically
by said asset manager; and
an asset information report generator configured to
communicatively couple with said database for generating an asset
information report from asset information data provided from said
database, wherein said asset information report comprises asset
information for at least one asset and wherein frequency of said
generating asset information increases with increased operational use
of said asset and decreases with decreased operational use of said
asset.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Rolls US 6,853,894 B1 Feb. 8, 2005
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Appeal 2015-002202
Application 13/797,303
Smith US 2005/0065678 A1 Mar. 24,2005
The following rejections are before us for review:
1. Claims 1—20 are rejected under 35 U.S.C. §101 as being directed to
non-statutory subject matter.
2. Claims 1—16 and 18 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Smith.
3. Claims 17, 19, and 20 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Smith and Kolls.
ISSUES
Did the Examiner err in rejecting claims 1—20 under 35 U.S.C. §101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1—16 and 18 under 35 U.S.C.
§ 102(b) as being anticipated by Smith?
Did the Examiner err in rejecting claims 17, 19, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Smith and Kolls?
ANALYSIS
The rejection of claims 1-20 under 35 U.S.C. §101 as being directed to non-
statutory subject matter.
The Appellant argued these claims as a group. See Reply Br. 2-4.
We select claim 1 as the representative claim for this group, and the
remaining claims 2—20 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Appellant’s challenge is for the most part not germane to the
rejection the Examiner has made.
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Appeal 2015-002202
Application 13/797,303
To begin with, the Appellant mentions claims “64-73.” Reply Br. 2.
But as we understand it, the rejection applies to claims 1—20 only.
The Appellant next reproduces a passage from MPEP 2107.02(IV)
having to do with the procedural considerations related to rejections for lack
of utility. Reply Br. 2. The Appellant “assert[s] that the Examiner has not
made a prima facie showing that the claimed invention lacks utility and has
not provided substantial evidentiary basis relied upon in making a prima
facie showing.” Reply Br. 3. But we do not have before us a question of a
lack utility under 35 USC § 101. The question is one of judicially-excepted
patent-ineligible subject matter under 35 USC § 101.
After a few statements for making the point that 35U.S.C. § 101
should be broadly interpreted, the Appellant concludes that “[cjlaims 1—20
are statutory, are functional, are not an abstract idea, and do produce a
tangible and concrete result, and therefore overcome the rejection under
35 U.S.C. §101.” Reply Br. 4. But that is not an adequate response to the
Examiner’s rejection. The Examiner clearly and cogently 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. 2-4. The Examiner determined thereby that “[t]he
claim [claim 1] as a whole, does not amount to significantly more than the
abstract idea [“management of assets,” Ans. 3] itself.” Ans. 4. We see
nothing in the Appellant’s response that shows error in the analysis and
resulting conclusion.
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Appeal 2015-002202
Application 13/797,303
Accordingly, the rejection is sustained.
The rejection of claims 1—16 and 18 under 35 U.S.C. § 102(b) as being
anticipated by Smith.
The Appellant argues that Smith fails to describe
a database populated with a first portion of information about an asset
from a first reporting source, wherein said first portion is received
from an electronic device coupled with said asset, and wherein said
information from said first reporting source is received by a data
receiver coupled with said database of said asset management system,
a second portion of information about said asset from a second
reporting source, wherein said second portion is received from a
second electronic device different from said first reporting source and
coupled with said asset.
Claim 1.
The Examiner’s position is that the two portions are described in
Smith at paras. 124 and 138. Final Act. 3 and 4. Para. 124 is a discussion of
the functions of VDIS [“vehicle diagnostic and information system”] 306.
Para. 138 mentions “vehicle controllers may be linked to a plurality of
sensors” but otherwise is about onboard electronic systems. There is no
express description of populating a database as claimed. And while it may
be possible to fashion the disclosed system to operate as claimed,
“[ijnherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” Hansgirg v. Kemmer, 102 F.2d 212, 214
(CCPA 1939), quoted in Continental Can Co. USA v. Monsanto Co., 948
F.2d 1264, 1269 (Fed. Cir. 1991).
A prima facie case of anticipation has not been made out in the first
instance by a preponderance of the evidence. Accordingly, the rejection is
not sustained.
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Appeal 2015-002202
Application 13/797,303
The rejection of claims 17, 19, and 20 under 35 U.S.C. §103 (a) as being
unpatentable over Smith and Kolls.
Claims 17, 19 and 20 depend from claim 1. The rejection inherits the
the anticipation position taken with respect to the claim 1 subject matter -
which we have not sustained. Accordingly, a prima facie case of
obviousness for the subject matter of claims 17, 19, and 20 depending from
claim 1 has also not been made out in the first instance by a preponderance
of the evidence. Accordingly, this rejection is also not sustained.
CONCLUSIONS
The rejection of claims 1—20 under 35 U.S.C. §101 as being directed
to non-statutory subject matter is affirmed.
The rejection of claims 1—16 and 18 under 35 U.S.C. § 102(b) as being
anticipated by Smith is reversed.
The rejection of claims 17, 19, and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Smith and Kolls is reversed.
DECISION
The decision of the Examiner to reject claims 1—20 is affirmed.
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Appeal 2015-002202
Application 13/797,303
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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