Ex Parte Wu et al

Patent Trial and Appeal Board

Aug 7, 2018

13298949 (P.T.A.B. Aug. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/298,949 11/17/2011 WenchengWu
144570 7590 08/09/2018
Conduent/Ortiz & Lopez, PLLC
P.O. Box 4484
Albuquerque, NM 87196
UNITED ST A TES OF AMERICA
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.
20110220-US-NP 4658
EXAMINER
EPSTEIN, BRIAN M
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
08/09/2018 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):
docketing@olpatentlaw.com
eofficeaction@appcoll.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENCHENG WU and EDUL N. DALAL
Appeal2017-003083
Application 13/298,949
Technology Center 3600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and JOHN P. PINKERTON,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE 1
Introduction
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4, 6-12, and 14--20. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
1 According to Appellants, Xerox Corporation is the real party in interest.
App. Br. 2.
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Application 13/298,949
Invention and Exemplary Claims
The invention is directed to a method and system for a smart toll
network system for "network-based" analysis of vehicle identification and
toll computation for a vehicle travelling on the toll road. Abstract.
Specifically, the disclosed method and system utilize an automated license
plate recognition (ALPR) system to perform absolute vehicle identification
by identifying vehicle license plates entering or exiting said toll roads,
wherein not all the absolute vehicle identifications may be successful. Spec.
Jrlr 41, 44, 4 7. Furthermore, the disclosed method and system group together
the unsuccessful identification of vehicles entering the toll road, group
together the unsuccessful identification of vehicles exiting the toll road, and
pair together the successful absolute vehicle identifications of vehicles
entering and exiting the toll road. Spec. Jrlr 44--4 7. A first set of unpaired
identifications is then created when the vehicle has a successful
identification while entering the toll road without a successful identification
whilst exiting the toll road, and a second unpaired set is created when there
is an unsuccessful entrance identification with a successful exit
identification. Spec. Jrlr 46, 48. By comparing the group of unsuccessful
entrance identifications with the second set of unpaired identifications, and
comparing the group of unsuccessful exit identifications with the first set of
unpaired identifications, the method and system create successful pairs of
entrance and exit identifications by which a toll can be computed. Spec. Jrlr
45, 49 and Fig. 7. Independent claim 1 is exemplary of the disclosed
invention, and reads as follows:
1. A method for vehicle identification and toll
computation for a vehicle having travelled on a toll road,
compnsmg:
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Application 13/298,949
performing absolute vehicle identifications of vehicles
entering said toll road utilizing an automated license plate
recognition system wherein said absolute vehicle identifications
of each of said vehicles entering said toll road may not be
successful and wherein vehicle identification of vehicles that
were not successful are grouped into a first set of unsuccessful
absolute vehicle identifications (Bi);
performing absolute vehicle identifications of vehicles
exiting said toll road utilizing said automated license plate
recognition system wherein said absolute vehicle identifications
of each of said vehicles exiting said toll road may not be
successful and wherein vehicle identification of vehicles that
were not successful are grouped into a second set of unsuccessful
absolute vehicle identifications (Bo);
pairing successful said absolute vehicle identifications of
said vehicles entering said toll road and successful said absolute
vehicle identifications of said vehicles exiting said toll road;
creating a first (Ci) set of unpaired vehicle identifications
wherein each unpaired vehicle identification is a successful
absolute vehicle identification at an entrance of said toll road
without a corresponding successful absolute vehicle
identification at an exit of said toll road;
creating a second (Co) set of unpaired vehicle
identifications wherein each unpaired vehicle identification is a
successful absolute vehicle identification at said exit of said toll
road without a corresponding successful absolute vehicle
identification at said entrance of said toll road;
comparing said first set of unpaired · vehicle
identifications (Ci) to said second set of unsuccessful absolute
vehicle identifications (Bo) utilizing signature matching to
identify matching vehicle identifications;
comparing said second set of unpaired vehicle
identifications (Co) to said first set of unsuccessful absolute
vehicle identifications (Bi) utilizing signature matching to
identify matching vehicle identifications; and
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Application 13/298,949
assigning absolute vehicle identifications to said
unsuccessful absolute vehicle identifications if matched with one
of said unpaired vehicle identifications and computing tolls on a
basis of said parings.
Examiner's Rejection
The Examiner rejected claims 1--4, 6-12, and 14--20 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. Final Act. 4; Ans. 2.
Principal Issue on Appeal
Based on Appellants' arguments in the Appeal Brief (App. Br. 4--10)
and the Reply Brief (Reply Br. 2-8), the following issue is presented on
appeal:
Did the Examiner err in rejecting claims 1--4, 6-12, and 14--20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter because the
claims recite the categorization of images for comparison?2
ANALYSIS
We have reviewed the Examiner's rejections (Final Act. 4--24) in light
of Appellants' arguments in the Appeal and Reply Briefs that the Examiner
has erred (App. Br. 9-16; Reply Br. 2-10), as well as the Examiner's
response to Appellants' arguments in the Appeal Brief (Ans. 2-5). We
disagree with the Appellants' conclusions that claims 1--4, 6-12, and 14--20
are directed to statutory subject matter. We adopt as our own (1) the
findings and reasons set forth by the Examiner in the action from which this
2 Separate patentability is not argued for claims 2--4, 6-12, and 14--20
grouped therewith (see App. Br. 9-16; Reply Br. 2-10).
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Application 13/298,949
appeal is taken (Final Act. 3--4), and (2) the reasons set forth by the
Examiner in the Examiner's Answer in response to the Appellants' Appeal
Brief (Ans. 2-5). We highlight and amplify certain teachings and
suggestions of the references as follows.
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101. According
to Alice step one, "[ 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. In that regard, the Examiner determined that the claims are
directed to "the concept of 'tolling based on received vehicle information via
vehicle information matching' [which] is described by 'pairing,' 'creating,'
'comparing,' and 'assigning' steps/functions" and therefore concluded that
the subject matter of the claims is directed to the judicial exception of
abstract ideas. Final Act. 3; Ans. 2-5.
Appellants contend (App. Br. 9-16; Reply Br. 2-10) claims 1--4, 6-
12, and 14--20 are statutory, because (i) the preambles of the claims recite
that the claims are part of the established patentable subject matter (i.e.,
machine, process, process of use); (ii) the invention's utilization of the
ALPR system tied to the claims; (iii) claims solve an underlying
technological problem; (iv) and the utilization of the ALPR system adds
significantly more to the abstract idea.
For example, the fact that the preambles of the claims recite either a
machine, process, process of use that indicate they are drafted for vehicle
identification and toll computation for a vehicle having travelled on a toll
road is not dispositive. The question is what are the claims "directed to."
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[T]he "directed to" inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether "their
character as a whole is directed to excluded subject matter."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. V. Merial L.L.C.,
818 F.3d 1369, 1375, 2016 WL 1393573, at *5 (Fed. Cir. 2016)
(Inquiring into "the focus of the claimed advance over the prior
art").
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). "The
'abstract idea' step of the inquiry calls upon us to look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas v.
DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). "In
determining the eligibility of respondents' claimed process for patent
protection under § 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
Appellants' contentions regarding the claimed limitations and their
ties to the ALPR system are not persuasive because we conclude the
proposed claims are directed to the abstract idea of collecting, grouping, and
comparing data to determine a toll valuation. Here, the proposed claims
recite nothing more than the collection of information to generate a toll
value with the aid of well-known technology (e.g., the ALPR system). They
are neither directed to an improvement in computer functionality, nor
provide a specific improvement in the way computers operate. Cf Enfzsh,
822 F.3d at 1336-37. Rather, they embody an abstract idea that merely uses
a computer and generic components as tools to collect the data and generate
the toll valuation. This is insufficient under step one of Alice Corp. Pty. Ltd.
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v. CLS Bank International, 134 S. Ct. 2347 (2014). See Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (stating
that claims "directed to the use of conventional or generic technology in a
nascent but well-known environment" are not eligible under step one).
Specifically, the current claims relate to tracking and organizing
information, namely, taking images of vehicle license plates, organizing
them into groups, and comparing the groups to come up with pairings. This
is similar to the content of the claims in In re TL! Communications LLC
Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016), in which the concept of
classifying an image, and storing the image based on its classification, was
found to be patent ineligible subject matter. In addition, the collection of
information, analyzing it, and displaying certain results of the collection and
analysis has been found to be patent ineligible subject matter. See Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed Cir. 2016)
(which recited that "[t]he advance they purport to make is a process of
gathering and analyzing information of a specified content, then displaying
the results, and not any particular assertedly inventive technology for
performing those functions.").
Step two 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., 566 U.S. 66, 72-73
(2012)). In order, to determine if the claims demonstrate "significantly
more," we need to answer the question of whether of "a claim element ... is
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well-understood, routine and conventional." See Berkheimer v. HP, Inc.,
881 F.3d 1360 (Fed. Cir. 2018) (which recites that step two of Alice involves
factual determination). The Examiner determines that the use of the ALPR
system recited in the claims does not amount to significantly more. Final
Act. 3--4; Ans. 2-5. Specifically, the Examiner has previously demonstrated
that the ALPR system is well-known, routine, and conventional in the art of
toll roads. Appellants were made aware that the ALPR system is well-
known in the art in the Final Action mailed on August 12, 2014, which
rejected the claims utilizing Dwyer et al. (U.S. Patent 6,140,941; granted
Oct. 31, 2000; hereinafter "Dwyer"). Dwyer at column 4, lines 27 through
32 ( emphasis added) recites:
[ v ]ehicles 17 are detected to determine the time of entry into
and exit from ( the transaction time) the toll road 19. If no
transponder 18 is detected, the system 10 uses license plate
cameras 24 to capture images of the license plates 29 of the
vehicles 17 (as will be described with reference to FIGS. 2a and
2b ). The images of the license plates 29 are processed using
optical character recognition processing to identify the owner of
the vehicle.
In addition, Appellants, in the Specification at paragraph [0041 ],
describe the ALPR system utilized in their claims as technology that uses a
camera and processing algorithms in conjunction with human inspection to
identify vehicles, and describes the use of the ALPR system in current
known systems, which are referred to as "point-based" analysis systems.
Appellants also recite that their intended method is meant to extend current
known "point-based" analysis systems that utilize these ALPR systems to a
"network-based" analysis systems. Spec. Jr4 l. This demonstrates that the
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use of an ALPR system was known by the Appellants to be well-known,
routine, and conventional in the art.
Therefore, the addition of the ALPR system cannot be said to be
significantly more than the abstract idea claimed since ALPR is described in
the prior art as being routinely used to gather vehicle data for comparison of
entry/exit tolls, and does not add to the gathering and organization of
information limitations recited in Appellants' claims. Further, the proposed
claims are determined to merely recite a host of generic computer
components. Audatex North America, Inc. v. Mitchell International, Inc.,
2017 WL 3188451 (Fed. Cir. 2017). In addition, when viewed as an ordered
combination, the proposed claims recite no more than the sort of "perfectly
conventional" generic computer components employed in a customary
manner that we have held insufficient to transform the abstract idea into a
patent-eligible invention. Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1321 (Fed. Cir. 2016). We thus conclude that the proposed
claims fail step two as well.
CONCLUSION
The Examiner did not err in rejecting claims 1--4, 6-12, and 14--20, as
being directed to non-statutory subject matter.
DECISION
The Examiner's rejection of claims 1--4, 6-12, and 14--20 under
35 U.S.C. § 101 as being directed to non-statutory subject matter is affirmed.
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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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