Vnomics Corp.

Patent Trials and Appeals Board

Sep 22, 2021

2021002125 (P.T.A.B. Sep. 22, 2021)

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.
16/057,473 08/07/2018 David C. Chauncey VNO100NA1/111393-60 4201
146446 7590 09/22/2021
Dinsmore & Shohl LLP
801 Pennsylvania Avenue, N.W.
Suite 610
Washington, DC 20004
EXAMINER
SAINT-VIL, EDDY
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
09/22/2021 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):
abby.feldman@dinsmore.com
dcipdocket@dinsmore.com
kimberly.koen@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID C. CHAUNCEY and EDWARD MCCARTHY
Appeal 2021-002125
Application 16/057,473
Technology Center 3700
Before JILL D. HILL, CARL M. DEFRANCO, and ARTHUR M. PESLAK,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Vnomics
Corporation. Appeal Br. 2.
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BACKGROUND
Appellant’s invention relates to a system and method for in-vehicle
operator training. Claims 1 and 9 are independent. Claim 1, reproduced
below, illustrates the claimed subject matter:
1. A method for providing, via an in-vehicle system
comprising sensors, adaptive operator assessment and coaching
for an operator of a vehicle, the method comprising:
determining operational efficiency of the vehicle based on
information from the sensors in a time frame;
determining that one or more of predetermined behavior
categories has occurred or is occurring;
assessing an operator's performance based on the
operational efficiency of the vehicle in the time frame;
incrementally changing an operator feedback threshold
based upon incremental modification of a plurality of
corresponding parameters; and
providing output based on the determined one or more of
predetermined behavior categories, the assessment, and the
operator feedback threshold.
REJECTIONS
I. Claims 1–22 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being anticipated by claims 1–20 of
Chauncey, US 10,062,301 B2, issued Aug. 28, 2018.
II. Claims 1–22 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to an abstract idea without significantly more.
OPINION
Rejection I; Double Patenting
The Examiner finds that the claims, though not identical, are not
patentably distinct from the patented claims of Chauncey, because the
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pending claims are either anticipated by, or would have been obvious over,
the patented claims. Non-Final Act. 2; see also Final Act. 2.
Appellant states that an e-Terminal Disclaimer was filed with the
Reply Brief on February 5, 2021 to address the double patenting rejection.
Reply Br. 2. Because an e-Terminal Disclaimer “is auto-processed,
approved immediately upon submission, and directly loads into the USPTO
databases” (MPEP § 1490(V)(A)), inclusion of the e-Terminal Disclaimer in
the file wrapper of the present application obviates the double patenting
rejection. Accordingly, we reverse the Examiner’s double patenting
rejection.
Rejection II; Ineligible Subject Matter
Appellant argues the claims as a group. We select independent
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2019) (permitting
the Board to select a single claim to decide the appeal as to a single ground
of rejection of a group of claims argued together). Claims 2–22 stand or fall
with claim 1.
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
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patent-eligible applications of those concepts.” Alice, 573 U.S. at 217. The
first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’
to determine whether [there are] additional elements [that] ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78).
The Examiner finds that the claimed invention is directed to an
abstract idea without significantly more. Final Act. 3–4. According to the
Examiner, the claimed abstract idea falls “within the mental processes and
methods of organizing human activity categories of the 2019 Revised Patent
Subject Matter Eligibility Guidance.” Id. at 4 (citing USPTO 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (January 7,
2019), the “2019 Subject Matter Guidance.”).
Appellant argues that the claims are not directed to an abstract idea;
rather, they are “directed to specific applications of computer-implemented
adaptive operator assessment and coaching for an operator of a vehicle via
an in-vehicle sensors.” Appeal Br. 7–8; see also Reply Br. 2. According to
Appellant the claims are not directed to an abstract idea, because similar to
the claims found patent eligible in Enfish, the claims “solve a problem in the
vehicle arts (improving operator behavior by accounting for the complexity
of human behavior, vehicles, loads, and environmental conditions (see
present application at ¶ 0003)) that affect a real world result.” Id. at 8–9
(citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)).
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We have reviewed the eligibility of the pending claims through the
lens of the 2019 Subject Matter Guidance, and we are not persuaded that the
Examiner erred in concluding that the pending claims are directed to a
judicial exception without significantly more.
Under that guidance, in conducting step one of the Alice framework,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental processes);
and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Step 1 -- Statutory Category
Claim 1 recites a method and, therefore, is a process. See Appeal Br.
18 (Claims App.).
Step 2A, Prong 1
The 2019 Subject Matter Guidance identifies three key concepts
identified as abstract ideas: (a) mathematical concepts including
“mathematical relationships, mathematical formulas or equations,
mathematical calculations”; (b) certain methods of organizing human
activity, such as “fundamental economic principles or practices,”
“commercial or legal interactions,” and “managing personal behavior or
relationships or interactions between people”; and (c) mental processes
including “observation, evaluation, judgment, [and] opinion.” 84 Fed. Reg.
at 52.
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Claim 1 recites steps that involve determining operational efficiency,
determining predetermined behavior categories, assessing performance,
changing a feedback threshold, and providing output based on the
determining behavior categories step. In the context of claim 1, this
language amounts to reciting a mental process of evaluating. See In re
BRCA1 & BRCA2-Based Heredity Cancer Test Patent Litig., 774 F.3d 755,
763 (Fed. Cir. 2014); see also 2019 Subject Matter Guidance, 84 Fed. Reg.
at 52 (defining mental processes as “concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)” (footnote
omitted)). Thus, we agree with the Examiner that claim 1 recites a mental
process, which is within one of the three categories of abstract ideas set forth
in the 2019 Subject Matter Guidance.2 Accordingly, the outcome of our
analysis under Step 2A, Prong 1, requires us to proceed to Step 2A, Prong 2.
See 2019 Subject Matter Guidance.
Step 2A, Prong 2
We next consider whether the claimed method includes additional
elements that integrate the judicial exception into a practical application.
The Examiner finds that “none of the limitations integrates the judicial
exception into a practical application” because the claimed sensors are
“generic computer elements performing their generic function of gathering
data, which is insignificant extra-solution activity.” Final Act. 6, 7 (citing
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.

2 Appellant’s assertion that the Examiner fails to cite to case law consistent
with the guidance set forth in the USPTO May 4, 2016 Memo (see Appeal
Br. 10–11; see also Reply Br. 4), is baseless, because that guidance is
superseded by the 2019 Subject Matter Guidance. See 84 Fed. Reg. at 51.
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2011) (reiterating “that mere ‘[data-gathering] step[s] cannot make an
otherwise nonstatutory claim statutory.’” (alterations in original) (quoting In
re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989)))).” The Examiner continues
that the claimed data gathering steps do not recite:
(i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a
“particular machine” to apply or use the judicial exception (see
MPEP § 2106.05(b)); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or
(iv) any other meaningful limitation (see MPEP § 2106.05(e)).
Id. (citing 84 Fed. Reg. at 55) (italics added).
Appellant argues that the claims “are directed to specific applications
of computer-implemented adaptive operator assessment and coaching for an
operator of a vehicle via an in-vehicle sensors.” Appeal Br. 7–8. According
to Appellant, [s]uch computer-implemented methods and media are
inextricably tied to computer technology and distinct from the types of
concepts typically found as abstract.” Id. at 8.
We find no indication in Appellant’s Specification, nor does
Appellant direct us to any indication, that the claimed invention is
implemented using other than generic sensors, processors, and output
devices. Appellant’s assertion that the claims “solve a problem in the
vehicle arts (improving operator behavior by accounting for the complexity
of human behavior, vehicles, loads, and environmental conditions)” (Appeal
Br. 8) is unavailing. Appellant’s Specification discloses various sensors,
which are defined as, “devices that measure or detect real-world conditions
and convert the detected conditions into analog and/or digital information
that may be stored, retrieved and processed.” Spec. ¶ 22. Sensors can be
“vehicle sensors” that include motion/position sensors 152 that “detect
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and/or measure the vehicle’s position, orientation, velocity, acceleration and
changes in the state thereof,” drive train sensors 154 that “determine
operating parameters of the engine and transmission,” load sensors 156 that
“determine or receive information of the weight and/or position of vehicle's
current load,” and environment sensors 158 that “detect or receive
information of the environmental conditions in which the vehicle is
operating.” Id. ¶ 23.
The Specification discloses that audio visual device 130 provides
“information obtained from the vehicle’s sensors [that] may be used to
provide feedback to the operator indicating driving actions that should have
been taken.” Id. ¶ 25. The Specification makes clear, however, that the
inventive concept is in the process performed by audiovisual device 130,
rather than structural aspects of the various “sensors.” The operations
(detecting, measuring, or determining information, and generating visual and
audio output) are generic computer functions of generating and manipulating
data. See TLI Commc'ns LLC v. AV Auto. LLC, 823 F.3d 607, 612–13 (Fed.
Cir. 2016). Thus, unlike the Federal Circuit’s finding in Enfish that “the
self-referential table recited in the claims on appeal is a specific type of data
structure designed to improve the way a computer stores and retrieves data
in memory (Enfish, 822 F. 3d at 1339), the claimed invention does not
improve the functioning of the computer (processor) or memory. “[A]n
improvement to the information stored by a database is not equivalent to an
improvement in the database’s functionality.” BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018).
Contrary to Appellant’s assertion, computer-implemented adaptive
operator assessment is not a technological problem, it is just assessing data
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using conventional techniques. At most, claim 1 limits the abstract idea of
operator assessment to improve how the operator (human) performs, and
does not improve any technology. Such a limitation has been held
insufficient to save a claim in this context. See Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–
48 (Fed. Cir. 2014) (“The concept of data collection, recognition, and
storage is undisputedly well-known.”). Nor does the claimed invention use a
particular, or special, machine. In other words, the claims “are not tied to
any particular novel machine or apparatus” capable of rescuing them from
the realm of an abstract idea. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 716 (Fed. Cir. 2014). In addition, we do not see a “transformation” as
this term is used in patent eligibility determinations. For data, mere
“manipulation of basic mathematical constructs[, i.e.,] the paradigmatic
‘abstract idea,”’ has not been deemed a transformation. CyberSource v.
Retail Decisions, 654 F.3d 1366, 1372 n.2 (Fed. Cir. 2011) (quoting In re
Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir. 1994)).
In summary, we do not find anything of record, short of conclusory
attorney argument, that attributes any improvement in technology and/or
functionality to the claimed invention, or otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the 2019 Subject Matter Guidance, 84 Fed. Reg. at
50, 55.
Step 2B
In Step 2B, we determine whether the claim adds a specific limitation,
beyond the judicial exception, that is not “well-understood, routine,
conventional” in the field. See 2019 Subject Matter Guidance. The portion
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of claim 1 that is directed to additional elements (e.g., an in-vehicle system
comprising sensors), (see Spec. ¶¶ 22–25) are generic devices that do not
perform other than well-known, routine, and conventional activity, as
discussed above.
The Examiner determines that the claims do not include any
“additional elements” that are sufficient to amount to significantly more than
the judicial exception. Final Act. 7. According to the Examiner, the sensors
are recited “at a high level of generality, merely in terms of their functions of
data gathering, without any further elaboration, and suggests that associated
technologies are preexisting, routine tools,” and that a skilled artisan would
consider the additional elements to be well-understood, routine, and
conventional means for gathering data. Id. at 7–8.
Appellant argues that according to the April 19, 2018 “Berkheimer
Memo,” the Examiner must provide evidence that a claim element or
combination of elements is “well-understood, routine, and conventional,”
and the Examiner failed to provide such evidence. Appeal Br. 19; see also
Reply Br. 5.
We find no indication in Appellant’s Specification, nor does
Appellant direct us to any indication, that the claimed invention is
implemented using other than generic sensors, processors, and output
devices performing well-known, routine, and conventional activities of
receiving signals, generating data, acquiring data, extracting components of
the data, making a determination based on the data, and generating output
based on the determination. The Examiner also found that the claimed
sensors are used “in their ordinary, conventional operation of gathering
data.” Ans. 29; see also Final Act. 6 (citing MPEP § 2106.05(g), which
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states that “mere data gathering . . . is considered in Step 2A Prong Two and
Step 2B.” The Examiner similarly found that the Specification discloses
using conventional processors. Final Act. 5 (citing Spec. ¶ 28, “[t]he . . .
processor may be a general purpose processor (e.g., INTEL or IBM).”
(emphasis omitted)). Indeed, the Examiner provided evidence of this from
the Specification finding that the Specification discloses that sensors
“measure or detect real-world conditions [receive signals, acquire data] and
convert the detected conditions into analog and/or digital information
[extract components of the data] that may be stored, retrieved and processed
[generating output].” Final Act. 5 (citing Spec. ¶ 22) (emphasis omitted).
Other than unsubstantiated attorney argument, we find no evidence that
refutes the Examiner’s findings.
Appellant also asserts that because the “claims are non-obvious”, then
“by definition [the claims] are not conventional, and such assertions under
Step 2B are improper.” Reply Br. 6. However, the search for an inventive
concept should not be confused with a novelty or non-obviousness
determination. See Mayo, 566 U.S. at 91 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the better
established inquiry under § 101”). The “‘novelty’ of any element or steps in
a process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Intellectual Ventures I v. Symantec
Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (citation and emphasis
omitted); see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016) (“a claim for a new abstract idea is still an abstract
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idea. The search for a § 101 inventive concept is thus distinct from
demonstrating § 102 novelty.”) (emphasis omitted).
Appellant also argues that claim 1 does not “preempt basic tools of
science or technology.” Appeal Br. 10; see also Reply Br. 3. However, as
our reviewing court has explained, “the principle of preemption is the basis
for the judicial exceptions to patentability” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Id. Moreover, “[w]here a patent’s claims
are deemed only to disclose patent ineligible subject matter under the
[Alice/Mayo] framework . . ., preemption concerns are fully addressed and
made moot.” Id.; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362–63 (Fed. Cir. 2015) (“[T]hat 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.”), cert. denied, 577 U.S. 1050
(2015).
For the above reasons, the recited elements of independent claim 1,
considered individually and as an ordered combination, do not constitute an
“inventive concept” that transforms independent claim 1 into patent-eligible
subject matter. See Alice, 573 U.S. at 217. On this record, we affirm the
Examiner’s § 101 rejection of claim 1. Claims 2–22 fall with claim 1.
CONCLUSION
The Examiner’s double patenting rejection is reversed, and the patent
eligibility rejection is affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–22 Non-Statutory
Double Patenting
1–22
1–22 101 Eligibility 1–22
Overall
Outcome
1–22
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED