Ex Parte Welch et al

Patent Trial and Appeal Board

Sep 21, 2018

14139726 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/139,726 12/23/2013
25537 7590 09/25/2018
VERIZON
PA TENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Stephen Christopher Welch
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
20130992 5788
EXAMINER
KNOX, KALERIA
ART UNIT PAPER NUMBER
2857
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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
following e-mail address(es):
patents@verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN CHRISTOPHER WELCH and
JAMES RONALD BARFIELD, JR.
Appeal2017-011210
Application 14/139,726
Technology Center 2800
Before JEFFREY B. ROBERTSON, JENNIFER R. GUPTA, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 6, 8, 9, 11-13, 17, and 19-29, which
1 In this Decision, we refer to the Specification filed December 23, 2013
("Spec."), the Final Office Action dated September 29, 2016 ("Final Act."),
the Appeal Brief filed March 10, 2017 ("Appeal Br."), the Examiner's
Answer dated June 29, 2017 ("Ans."), and the Reply Brief filed August 21,
201 7 ("Reply Br.").
2 Appellant is the Applicant, HTI IP, LLC, listed in the Application Data
Sheet filed January 24, 2014. However, according to the USPTO's
assignment records, as of March 6, 2018, the assignee of the present
application is Verizon Connect, Inc. The Appeal Brief identifies Verizon
Patent & Licensing Inc. as the real party in interest. Appeal Br. 3.
Appeal2017-011210
Application 14/139,726
constitute all the claims pending in this application. 3 We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
The subject matter on appeal relates to a system ( claim 1 ), a device
(claim 9), and a method (claim 12) that use sensors, for example, an
accelerometer, to determine a value of the inclination of a surface beneath a
vehicle, and then determine a compensated acceleration value using this
value to more accurately determine the acceleration of the vehicle by an
operator. Spec. ,r 15. Claim 1, reproduced below from the Claims Appendix
of the Appeal Brief, is illustrative of the claims on appeal.
1. A system comprising:
an accelerometer associated with a vehicle, to:
measure acceleration of the vehicle to obtain measured
acceleration values; and
an analysis device to:
obtain a plurality of GPS values for a route,
the GPS values being received from a GPS sensor;
3 There is a discrepancy in the record with respect to the claims rejected and
presented for review on appeal. The Examiner indicates that "[t]he only
remaining ground of rejection is the rejection of claims 1, 2, 5-13, and 16-
24." Ans. 2. Similarly, in the Appeal Brief, Appellant identifies claims 1, 2,
5-13, and 16-24 as pending for purposes of appeal. We note, however, that
in an Amendment After Final filed November 15, 2016 ("Amendment"),
Appellant indicates that claims 5, 7, 10, 16, and 18 are cancelled and new
claims 25-29 are added, and then identifies claims 1, 2, 6, 8, 9, 11-13, 17,
and 19-29 as pending upon entry of the Amendment. Amendment 10. For
purposes of appeal, the Amendment was entered by the Examiner. Advisory
Action dated December 12, 2016, 1. In addition, although newly added
claims 25-29 are not listed in the statement of rejection (Ans. 2), the
Examiner addresses the newly added claims in the body of the Answer
(Ans. 10-11). Thus, on this record, we determine that claims 1, 2, 6, 8, 9,
11-13, 17, and 19-29 are pending and before us for review on appeal.
2
Appeal2017-011210
Application 14/139,726
determine a plurality of elevation values based on a
plurality of digital elevation model (DEM) tiles corresponding
to the plurality of GPS values;
determine, based on the plurality of elevation values, a
plurality of DEM-based inclination values by calculating an
arctangent of a change in elevation values between consecutive
DEM tiles of the plurality of DEM tiles divided by a distance
between the consecutive DEM tiles;
determine, based on a plurality of recorded sample
acceleration values, a plurality of sample surface inclination
values;
obtain, based on the plurality of DEM-based inclination
values and the plurality of sample surface inclination values, a
plurality of filter coefficients;
determine a plurality of surface inclination values,
the plurality of surface inclination values being
based on the measured acceleration values received from
the accelerometer;
store the plurality of surface inclination values;
determine a particular surface inclination value by
applying the plurality of filter coefficients to the stored plurality
of surface inclination values;
determine, based on the particular surface inclination
value, a first force and a second force;
determine a plurality of compensated acceleration values
based on the first force, the second force, and the measured
acceleration values; and
output the plurality of compensated acceleration values.
Appeal Br. 18-19 (Claims App.)
3
Appeal2017-011210
Application 14/139,726
DISCUSSION
The Examiner rejects, and Appellant appeals, the rejection of
claims 1, 2, 6, 8, 9, 11-13, 17, and 19-29 under 35 U.S.C. § 101 as directed
to patent ineligible subject matter. 4 Ans. 2, 1 O; Amendment 10.
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections")). After considering the
evidence presented in this Appeal and each of Appellant's arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner's rejection for the reasons expressed in the Final Office Action
and the Answer. We add the following.
Appellant argues all the claims pending and on appeal as a group. See
Appeal Br. 8-16. We confine our discussion to claim 1, which we select as
representative. 37 C.F.R. § 4I.37(c)(l)(iv).
A two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101 is set forth
in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79
(2012), and further explained in Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134
S. Ct. 2347 (2014). The first step requires determining whether the claims at
issue are directed to a patent-ineligible concept, such as an abstract idea. See
4 Based on this record, we determine that the Examiner's rejection applies to
claims 1, 2, 6, 8, 9, 11-13, 17, and 19-29, which are all the claims pending
and before us on appeal. See id.
4
Appeal2017-011210
Application 14/139,726
Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 76-77). The second step
requires examining "the elements of the claim to determine whether it
contains an 'inventive concept' sufficient to 'transform' the claimed abstract
idea into a patent-eligible application." Alice, 134 S. Ct. at 2357 (quoting
Mayo, 566 U.S. at 72, 79).
In addressing the first step of Alice, Appellant argues that the
Examiner takes an "overly broad" approach to the "directed to" inquiry, and
"such an overgeneralization of the claims is improper to conclude that the
claims are directed to an abstract idea." Appeal Br. 9. Additionally,
Appellant argues that the Examiner fails to specifically address all of
claim 1 's limitations, such as "an accelerometer associated with a vehicle"
or "an analysis device to: obtain a plurality of GPS values for a route, the
GPS values being received from a GPS sensor." Id. at 10.
We have considered Appellant's arguments, but do not find the
Examiner's approach to the "directed to" inquiry to be "overly broad."
Under step 1 of the Alice analysis, the Examiner determined that claim 1 's
character as a whole is directed to an abstract idea-an algorithm that
includes the limitations "starting with 'determine a plurality of elevation
values ... ' until the end of the claim, except for the limitations 'store the
plurality of surface inclination values' and 'output the particular surface
inclination values."' Final Act. 4; Ans. 2-3. As the Examiner explains, the
algorithm is the "inventive concept" of claim 1. Ans. 4. Thus, we are not
persuaded that the Examiner erred in concluding that under step 1 of the
Alice analysis, claim 1 is "directed to" an abstract idea. In re Grams,
888 F.2d 835, 837 (Fed. Cir. 1989) ("Mathematical algorithms join the list
of non-patentable subject matter not within the scope of section 101."); see
5
Appeal2017-011210
Application 14/139,726
also Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344,
13 51 (Fed. Cir. 2014) ("Without additional limitations, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible."); Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (discussing
how "collecting information" and "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more" are
abstract ideas).
Moreover, contrary to Appellant's argument, the Examiner properly
considered the elements of claim 1 as a whole under the two-step Alice
analysis when the Examiner considered all of these elements, both
individually and in combination, under step 2 of the Alice analysis. Final
Act. 5; Ans. 4--5. In fact, the Examiner has explicitly addressed the very
limitations referenced by Appellant-"an accelerometer associated with a
vehicle" and "an analysis device to: obtain a plurality of GPS values for a
route, the GPS values being received from a GPS sensor"----determining the
accelerator and step of obtaining a plurality of GPS values "are merely well-
understood, routine and conventional elements, recited at a high level of
generality, which gather the data required as input values for performing the
algorithm," and determining the analysis device, storing the plurality of
surface inclination values, and outputting the plurality of compensated
acceleration values are "merely well-understood, routine, and conventional
elements and/or steps using generic computer processing components in a
generic manner to perform calculations, store information in memory, and
output to result as an insignificant extra-solution activity." Ans. 4--5; see
also Alice, 134 S. Ct. at 2360 (Claims directed to, or reciting, systems are
6
Appeal2017-011210
Application 14/139,726
also ineligible under § 101 if the hardware recited by the claims add nothing
significantly more than the underlying abstract idea.).
We are also unpersuaded by Appellant's argument that the claims are
not directed to a patent-ineligible abstract idea (algorithm) because, when
taken as a whole, the claims are directed to a concept "necessarily rooted in
computer technology" to overcome a problem related to the technology of
tracking vehicle movement and acceleration. Appeal Br. 11-12, citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Appellant contends that "[t]he solution provided by the claimed system is
necessarily rooted in computer technology because computer technology
must be used in order to collect data (e.g.[,] acceleration and GPS data),
process the measurements, store the values, and output the final values."
Appeal Br. 12. However, as the Examiner aptly points out, unlike the
claims in DDR Holdings, the present claims use a computer (i.e., "analysis
device") simply as a tool to perform certain mathematical calculations. Ans.
7-8. Performing calculations using a computer does not root the claims in
computer technology. Id.; see Alice, 134 S. Ct. at 2359 (simply
programming a computer to perform what would otherwise be an abstract
idea is not sufficient to impart patent eligibility).
We now tum to step two of Alice, which the Court has described as "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, 566 U.S. at 72-73).
Appellant argues that the claims provide an improvement to the
technology or technical field-providing a more accurate determination of
7
Appeal2017-011210
Application 14/139,726
vehicle acceleration values ( e.g., after compensating for surface inclination),
which can then be used to analyze and improve driver behavior and vehicle
performance. Appeal Br. 14.
We are not persuaded by Appellant's argument of reversible error in
the rejection. Claim 1 does not recite a specific, particular technology which
is being improved, but instead, as the Examiner explains, it seeks to
monopolize a particular mathematical algorithm for converting measured
acceleration values and obtained GPS values into compensated acceleration
values. Ans. 7.
Appellant additionally argues that claim 1 's limitation of "determining
a plurality of DEM-based inclination values by 'calculating an arctangent of
a change in elevation values between consecutive DEM tiles of the plurality
of DEM tiles divided by a distance between the consecutive DEM tiles"' is
not well-understood, routine, and conventional in the field. Appeal Br. 14.
Appellant also argues that the claims recite unconventional steps that
confine the claim to a particular useful application-"to a particular system
for collecting accelerometer data and generating compensated acceleration
values that requires several specifically-identified technological features."
Id. at 14--15.
We have considered Appellant's arguments, but do not find them
persuasive. Claim 1 's specific limitation that Appellant argues as not "well-
understood, routine, and conventional in the field" is, as the Examiner finds,
part of the abstract idea, and thus cannot amount to significantly more than
the abstract idea itself. Ans. 8. In addition, aside from the abstract idea, as
identified by the Examiner, Appellant does not identify what
"unconventional steps" are recited in the claims. Moreover, claim 1 does
8
Appeal2017-011210
Application 14/139,726
not recite an application or further use after generating the output. Thus, the
claims do not recite using the output generated for any improvement or
application beyond its calculation.
We are also not persuaded by Appellant's argument that there is an
absence of preemption because the claims do not preempt alternative
methods of determining compensated acceleration values. Id. at 15. As the
Examiner correctly explains, the relevant question is whether the abstract
idea itself is being preempted. Ans. 9. The fact that alternatives outside the
claims are not preempted does not demonstrate patent eligibility. Our
reviewing court has expressly rejected similar contentions regarding
preemption, stating that a patentee's "attempt to limit the breadth of the
claims by showing alternative uses ... outside of the scope of the claims
does not change the conclusion that the claims are directed to patent
ineligible subject matter." Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015). The court explained that, "[w]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility . . . . Where a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework ... preemption concerns are fully addressed and
made moot." Id. As discussed above, on this record we are not persuaded
of error in the Examiner's finding that Appellant's claim 1 is limited to
patented ineligible subject matter under the Mayo framework.
Further, contrary to Appellant's argument, we are not persuaded that
the claims of the present application are similar to the claims at issue in
Thales Visionix, Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017). Reply Br. 3-6.
Thales ' claims were found to be patent eligible because the claims were
9
Appeal2017-011210
Application 14/139,726
directed to systems and methods that use inertial sensors in a non-
conventional manner to reduce errors in measuring the relative position and
orientation of a moving object on a moving reference frame. Thales,
850 F.3d at 1348--49. Although the claims on appeal include an
accelerometer and a GPS sensor, unlike Thales, the claims of the present
application use the claimed accelerometer and GPS sensor in a conventional
and routine manner to measure acceleration values and generate GPS values.
Appellant argues that the Examiner does not provide an explanation as
to why dependent claims 21, 22, 24, and 26 are unpatentable. Appeal
Br. 15-16. However, the Examiner provides the requisite explanation at
page 10 of the Answer. Appellant has not presented sufficient arguments or
evidence that any of the limitations in the dependent claims transform the
claims into patent-eligible subject matter. See Appeal Br. 15-16; Reply
Br. 11.
For the reasons expressed in the Final Office Action, the Answer, and
above, we sustain the rejection of claims 1, 2, 6, 8, 9, 11-13, 17, and 19-29
under 35 U.S.C. § 101 as directed to patent ineligible subject matter.
DECISION
The rejection of claims 1, 2, 6, 8, 9, 11-13, 17, and 19-29 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)(l)(iv).
AFFIRMED
10