Ex Parte Aaron et al

Patent Trial and Appeal Board

Nov 23, 2018

14348018 (P.T.A.B. Nov. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/348,018 03/27/2014
26875 7590 11/27/2018
WOOD, HERRON & EV ANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Francis Aaron
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.
PALL-20 9761
EXAMINER
EPSTEIN, BRIAN M
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
11/27/2018 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS AARON, CLEMENT LAMBRINOS,
YOUSRA CHEBBI, A YMERIC AUGUSTIN, RAPHAEL BARROIS,
SYLVAIN GERON, and ANTOINE GERON
Appeal2017-009149
Application 14/348,018
Technology Center 3600
Before ST. JOHN COURTENAY III, BETH Z. SHAW, and
MATTHEW McNEILL, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-13, 15, and 18-28, which constitute all the
claims pending in this application. Claims 14, 16, and 17 are cancelled. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Bluecarsharing of
Puteaux, France. App. Br. 3.
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STATEMENT OF THE CASE
Introduction
Embodiments of Appellants' invention generally relate to "a method
for the remote reservation of a parking space." Spec. 1, 11. 4--5.
Exemplary Claim
1. A method of reserving a parking space for an electric
vehicle in a remote site, called a rental site, within a context of
an automated rental of vehicles, said method comprising a phase,
called a reservation phase, comprising the following steps:
determining from one or more rental sites an available
rental site in which a parking space having a charging terminal
for charging an electric vehicle is available, said determining step
comprising, for at least one parking space of the one or more
rental sites, detecting with a detector element an absence of an
electrical connection of an electric vehicle to a charging
terminal associated with said at least one parking space, the
charging terminal controlled by a control element in
communication with the detector element, and in response to
said detecting of an absence of an electrical connection
associated with said at least one parking space, identifying the at
least one parking space as an available parking space and the
corresponding rental site as an available rental site;
transmitting, via a communication network, a request for
the reservation of the available parking space in said available
rental site, said reservation request comprising an item of
identification data, called an identifier;
storing, in a memory, said identifier in association with the
available parking space;
changing a status of said available parking space to render
the available parking space reserved; and
permitting an electrical connection of a rented electric
vehicle associated with said identifier to said charging terminal
associated with said reserved parking space so as to terminate a
rental of the rented electric vehicle.
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App. Br. 22-23 (Claims Appendix) (Contested limitations emphasized).
Rejections
A. Claims 1-13, 15, and 18-28 are rejected under 35 U.S.C. § 101, as
being directed to a judicial exception, without significantly more.
Final Act. 4.
B. Claims 1-3, 5, 7-9, 11, 13, 15, 18-21, and 25-28 are rejected
under pre-AIA § I03(a) as being obvious over the combined
teachings and suggestions of Tillotson et al. (US 2006/0250278
Al; Nov. 9, 2006), Redmann et al. (US 2011/0131083 Al; June 2,
2011), and further in view ofMorgal et al. (US 2010/0228405 Al;
Sept. 9, 2010). Final Act. 7.
C. Claim 4 and 6 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being obvious over the combined teachings and suggestions of
Tillotson, Redmann, and Morgal, and further in view of Lowenthal
et al. (US 2012/0169283 Al; July 5, 2012). Final Act. 15.
D. Claim 10 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
obvious over the combined teachings and suggestions of Tillotson,
Redmann, Morgal, Cahill et al. (US 2002/0099574 Al; July 25,
2002). Final Act. 16.
E. Claim 12 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
obvious over the combined teachings and suggestions of Tillotson,
Redmann, Morgal, Cahill, and Stefik et al. (US 2012/0095791 Al;
Apr. 19, 2012), and further in view of Peskin et al. (US
2003/0046304; Mar. 6, 2003). Final Act. 17.
F. Claims 22 and 23 are rejected under pre-AIA 35 U.S.C. § I03(a) as
being obvious over the combined teachings and suggestions of
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Tillotson, Redmann, Morgal, and further in view of Stefik. Final
Act. 19.
G. Claim 24 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
obvious over the combined teachings and suggestions of Tillotson,
Redmann, Morgal, Stefik, and further in view of Peskin et al. (US
2003/0046304 Al; Mar. 6, 2003). Final Act. 20.
Related Appeals
Appellants indicate that "this appeal is related to the appeal filed in
U.S. Application Serial No. 14/348,016" (corresponding to PTAB Appeal
2017-009148). App. Br. 3. PTAB Appeal 2017-009148 was decided on
Nov. 20, 2018. The Examiner's rejections under 35 U.S.C. § 101, and 35
U.S.C. § I03(a) were affirmed.
Issues on Appeal
Did the Examiner err in rejecting claims 1-13, 15, and 18-28 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
Did the Examiner err in rejecting claims 1-13, 15, and 18-28 under
pre-AIA 35 U.S.C. § I03(a), as being obvious over the cited combinations of
references?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
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Rejection A under 35 US.C. § 101
Mayo/Alice Analysis
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the "acts" of a claimed process manipulate only numbers, abstract
concepts or ideas, or signals representing any of the foregoing, the acts are
not being applied to appropriate subject matter. See Gottschalk v. Benson,
409 U.S. 63, 71-72 (1972). "'Phenomena of nature, thoughjust discovered,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work."' In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (quoting Gottschalk, 409
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U.S. at 67). Moreover, if a method can be performed by human thought
alone, or by a human using pen and paper, it is merely an abstract idea and is
not patent eligible under§ 101. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372-73 (Fed. Cir. 2011).
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two, whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Id.
The Examiner's Rejection A under 35 USC§ 101
Regarding the first step of the Alice/Mayo analysis, the Examiner
concludes that claims 1-13, 15, and 18-28 are directed to a judicial
exception, i.e., an abstract idea:
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Claims 1-13, 15, and 18-28 are directed to the abstract idea of
reserving parking spaces. While independent claims 1, 13, and
20 do not explicitly recite "reserving parking spaces," the
concept of "reserving parking spaces" is described by the
"receiving," "detecting," "determining," and "determining"
steps/functions of claims 1, 13, and 2 0. "Reserving parking
spaces" is a concept relating to the economy and commerce
("fundamental economic practices") similar to the hedging of
Bilski and the creation of contractual relationships of buySAFE.
Final Act. 4 ( emphasis added). 2
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims do not include additional elements that amount to
significantly more than the judicial exception, because:
the detector/sensor, charging terminal including a control
element, electric vehicle, memory, and communication network
as recited in each of independent claims 1, 13, and 20 are generic
computer components that perform functions (i.e.
determining/detecting availability data, transmitting reservations
requests, storing identifiers, changing parking statuses, and
permitting electrical connection) that are generic functions (i.e.
electronically extracting data, receiving, processing, and storing
data, and receiving and transmitting data over a network) that are
well-understood, routine, and conventional activities previously
known to the industry, see Alice Corp, buySAFE, Cyberfone,
Content Extraction and the US PTO July 2015 Update on Subject
Matter Eligibility, page 7.
None of the steps/functions of independent claims 1, 13,
and 20 whether taken alone or in an ordered combination amount
to significantly more than the abstract idea identified above. For
example, nothing in independent claims 1, 13, and 20 improve
another technology or technical field, improve the functioning of
2 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed.
Cir. 2013).
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any claimed computer itself, applies the abstract idea with a
particular machine, or include any elements that may otherwise
be considered to amount to significantly more than the abstract
idea.
Accordingly, independent claims 1, 13, and 20 are
ineligible. None of the dependent claims when separately
considered in combination with each dependent claims parent
claim(s) overcome the above analysis and are therefore similarly
rejected.
Final Act. 4--5 ( emphasis added). 3
For the aforementioned reasons, the Examiner concludes that all
claims 1-13, 15, and 18-28 on appeal are not patent eligible under 35 U.S.C.
§ 101.
Mayol Alice Analysis - Step 1
Regarding Alice Step 1, Appellant contends:
the Examiner has failed to provide specific evidence in support
of the position that each of claims 1, 13, and 20, as a whole, is
directed to an abstract idea. At page 4 of Final Office Action, the
Examiner alleges that each of these claims is directed to the
abstract idea of "reserving parking spaces," and, more broadly,
to a fundamental economic practice. However, the Examiner
discounts meaningful limitations of the claims, evidencing a
failure to consider the claims as a whole.
Moreover, the brief analysis stated in the Office Action is overly
conclusive and fails to satisfy the Examiner's burden of
articulating a reasoned rationale in support of his finding. To that
3 The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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end, Appellant asserts that claims 1, 13, and 20 recite
technological methods and a system that are not sufficiently
similar to any of the concepts that the courts have identified as
abstract ideas, including "fundamental economic principles,"
"certain methods of organizing human activity," "an idea of
itself," and "mathematical relationships/formulas."
App. Br. 12-13.
In the Answer, the Examiner disagrees, and responds that the prima
facie burden was met "by citing to the limitations that describe the identified
abstract idea and then comparing the identified abstract idea to a plurality of
[ c ]ourt decisions." Ans. 3 ( emphasis added).
In determining whether claims are patent-eligible under Section 101,
our reviewing court guides: "the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were decided."
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir.
2016). The Federal Circuit also guides that "[E]xaminers are to continue to
determine if the claim recites (i.e., sets forth or describes) a concept that is
similar to concepts previously found abstract by the courts." Id. at 1294 n.2.
Here, we note under Alice, step one, the Examiner cites to court
decisions to support the conclusion that Appellants' claims are directed to an
abstract idea:
Claims 1-13, 15, and 18-28 are directed to the abstract idea of
reserving parking spaces. While independent claims 1, 13, and
20 do not explicitly recite "reserving parking spaces," the
concept of "reserving parking spaces" is described by the
"receiving," "detecting," "determining," and "determining"
steps/functions of claims 1, 13, and 2 0. "Reserving parking
spaces" is a concept relating to the economy and commerce
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("fundamental economic practices") similar to the hedging of
Bilski and the creation of contractual relationships of buySAFE.
Final Act. 4.
The Examiner further explains the basis for the rejection:
Appellants next argue that the Examiner discounted meaningful
limitations of the claims which evidences a failure to consider
the claims as a whole (Page 12 of Appeal Brief). Importantly
however, Appellant does not suggest which limitations were not
considered by Examiner. Nevertheless, Examiner argues each
limitation was considered, as noted on Page 4 of the July 25,
2016 Final Office Action.
Ans. 2-3.
On this record, we find Appellants fail to traverse the Examiner's
legal conclusion that the claims on appeal are directed to a patent-ineligible
abstract idea, without more, by substantively distinguishing the claims on
appeal from the subject claims and the courts' analyses in the two
aforementioned cases cited by the Examiner (Bilski4 and BuySAFE 5).
Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Therefore, we are not persuaded the Examiner erred in concluding that
claims 1-13, 15, and 18-28 are directed to an abstract idea.
4 The Examiner is referring to Bilski v. Kappas, 561 U.S. 593 (2010)
(involved a method of entering into contracts to hedge risk in commodity
prices that the court held was directed to an abstract idea because the
contractual relations at issue constituted "a fundamental economic practice
long prevalent in our system of commerce." Id. at 611.
5 The Examiner is referring to buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1354--55 (Fed. Cir. 2014)(e.g., "The claims in this case do not push or even
test the boundaries of the Supreme Court precedents under section 101. The
claims are squarely about creating a contractual relationship---- a "transaction
performance guaranty"-that is beyond question of ancient lineage ....
The claims thus are directed to an abstract idea.").
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Mayo/Alice Analysis - Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Final Act. 3--4;
Ans. 3), we tum to the second part of the Alice/Mayo analysis. We analyze
the claims to determine if there are additional limitations that individually,
or as an ordered combination, ensure the claims amount to "significantly
more" than the abstract idea. Alice, 134 S. Ct. at 2357 (internal quotations
and citation omitted).
Regarding Alice Step 2, Appellants address the purported inventive
concept of the claims. Appellants urge:
Nevertheless, even if claims 1, 13, and 20 are determined to
recite abstract ideas, these claims readily satisfy Step 2B of the
subject matter eligibility test, because each claim as a whole
recites "significantly more" than an abstract idea.
App. Br. 13.
In support Appellants cite to Diamond v. Diehr, 450 U.S. 175 (1981)
App. Br. 13-14. Appellants urge:
Similar to the claims in Diamond, Appellant's claims 1, 13, and
20 recite meaningful limitations that improve existing processes
and systems for reserving parking spaces and returning rented
electric vehicles. For example, each claim positively recites
detecting with a detector element ( or detecting means) an
absence of an electrical connection between an electric vehicle
and a charging terminal associated with a parking space, the
charging terminal controlled by a control element that
communicates with the detector element. Each claim further
recites that detection of the absence of an electrical connection
yields an identification of the corresponding parking space as an
available parking space.
App. Br. 13-14.
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We are not persuaded by Appellants' analogy of the claimed invention
on appeal to the invention claimed in Diehr (Respondents). Id.
We find Appellants' "method of reserving a parking space for an
electric vehicle in a remote site, called a rental site, within a context of an
automated rental of vehicles, said method comprising a phase, called a
reservation phase" is not at all similar to the Diehr chemical process for
molding precision synthetic rubber products that involved the
transformation of an article (raw, uncured synthetic rubber), into a different
state or thing. See e.g., Diehr at 184:
Analyzing respondents' claims according to the above statements
from our cases, we think that a physical and chemical process for
molding precision synthetic rubber products falls within the §
101 categories of possibly patentable subject matter. That
respondents' claims involve the transformation of an article, in
this case raw, uncured synthetic rubber, into a different state or
thing cannot be disputed.
Appellants note: "[t]he Court [in Diehr] found that the measurement
step amounted to a meaningful limitation that improved an existing
technological process, thereby establishing 'significantly more' than the
formula and rendering the claims patent eligible." App. Br. 13. We find
Appellants' arguments regarding Diehr are unavailing, because Appellants
fail to establish any comparable transformation of an article into a different
state or thing.
Appellants also contend: "As discussed below, the prior art fails to
render obvious claims 1, 13, and 20 [] in view of at least these limitations,
and thus the limitations add meaningful value to the claims. Accordingly,
these limitations establish 'significantly more' than an abstract idea so as to
satisfy Step 2B of the subject matter eligibility test." (App. Br. 13).
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However, we disagree with Appellants that "the prior art fails to
render obvious claims 1, 13, and 20" (id.), first, because we affirm the
Examiner's rejections under 35 U.S.C. § 103(a), infra. Moreover, the
Supreme Court guides: "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." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981)
( emphasis added). Our reviewing court further emphasizes that "[ e ]ligibility
and novelty are separate inquiries." Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016)
(holding that "even assuming" that a particular claimed feature was novel
does not "avoid the problem of abstractness").
In reviewing the record, we find the claims on appeal are silent
regarding specific limitations directed to an improved computer system,
processor, memory, network, database, or Internet. Therefore, we find
Appellants' claimed invention does not provide a solution "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks," such as considered by the court
in DDR Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014) (emphasis added).
Further regarding the use of the recited generic communication
network and memory ( claim 1 ), system, communication network and
memory (claim 13), and memory (claim 20), the Supreme Court has held
"the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at
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2358; see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract idea on 'an Internet
computer network' or on a generic computer is still an abstract idea."). On
this record, we are of the view that Appellants' claims do not operate the
recited generic computer components in an unconventional manner to
achieve an improvement in computer functionality.
Our reviewing court provides additional guidance: See FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use
of generic computer elements like a microprocessor or user interface do not
alone transform an otherwise abstract idea into patent-eligible subject
matter."); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) (claims reciting, inter alia, sending messages over a
network, gathering statistics, using a computerized system to automatically
determine an estimated outcome, and presenting offers to potential
customers found to merely recite "'well-understood, routine conventional
activities"' by either requiring conventional computer activities or routine
data-gathering steps (internal citation omitted)); see also Elec. Power Grp.,
830 F.3d at 1355 ("We have repeatedly held that such invocations of
computers and networks that are not even arguably inventive are
'insufficient to pass the test of an inventive concept in the application' of an
abstract idea." (quoting buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353,
1355 (Fed. Cir. 2014))); Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Rather, the claims recite both
a generic computer element-a processor-and a series of generic computer
'components' that merely restate their individual functions .... That is to
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say, they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two.").
The Supreme Court additionally guides that the "prohibition against
patenting abstract ideas 'cannot be circumvented by attempting to limit the
use of the formula to a particular technological environment' or [by] adding
'insignificant postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting
Diehr, 450 U.S. at 191-92).
On this record, we find Appellants have not persuasively established
that Diehr is applicable to claims 1-13, 15, and 18-28. Nor have Appellants
established that claims 1-13, 15, and 18-28 are directed to an improvement
in the recited generic computer components (e.g., system, and/or
communication network and/or memory). Therefore, we conclude that none
of the claim limitations, viewed both individually and as an ordered
combination, amount to significantly more than the judicial exception in
order to sufficiently transform the nature of the claims into patent-eligible
subject matter.
In light of the foregoing, we conclude, under the Mayo/Alice analysis,
that each of Appellants' claims 1-13, 15, and 18-28, considered as a whole,
is directed to a patent-ineligible abstract idea (under step one), and under
step two, does not recite something significantly more to transform the
nature of the claim into a patent-eligible application.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection A under 35 U.S.C. § 101 of claims 1-13, 15, and
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18-28, as being directed to a judicial exception, without significantly more. 6
Rejection B of Independent Claim 1 under 3 5 US. C. § 103 (a)
Issues: Under pre-AIA 35 U.S.C. § I03(a), did the Examiner err by
finding the cited combination of Tillotson, Redmann, and Morgal would
have taught or suggested the contested limitations LI, L2, and L3:
detecting . . . an absence of an electrical connection of an
electric vehicle to a charging terminal . . . and in response to
said detecting ... identifying the at least one parking space as an
available parking space[,]
within the meaning of representative claim 1? 7 ( emphasis added).
Contested Limitations (Claim 1)
detecting . . . an absence of an electrical connection of
an electric vehicle to a charging terminal . . . and in response
to said detecting ... identifying the at least one parking space
as an available parking space ....
The Examiner finds Redmann (in combination with Tillotson and
Morgal) teaches or suggests the contested limitations at paragraphs 40-52,
80, 81, 93, 95-96, and Figure 6B. See Final Act. 8-9.
6 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
7 We give the contested claim limitations the broadest reasonable
interpretation ("BRI") consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997); see, e.g., Spec. 11, 11. 18-19 ("It is
understood that the embodiments which will be described below are in no
way !imitative.").
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Appellants disagree, and contend:
Paragraph 0096 of Redmann '083 only states that " [ f]ollowing
the cessation of charging . . . telltale indicator 450 may be
updated . . . . For instance, if charging of a vehicle has just [been]
manually interrupted ... then the indicator may be set to green,
indicating a charging parking space 150 is imminently opening
up." (Emphasis added.) Accordingly, Redmann '083 recognizes
that the mere cessation of charging does not mean that the
parking space is available.
App. Br. 17.
Appellants further contend that an artisan would not have been
motivated to modify the system of Tillotson to use Redmann's less accurate
method of detecting the presence of a vehicle in a parking space. App. Br.
17. As emphasized by Appellants (id.), "Tillotson '278 already utilizes
sensors (such as cameras, optic sensors, magnetic or ultrasonic sensors, etc.)
to detect the physical presence of a vehicle in a parking space." App. Br. 17.
Appellants urge that "Redmann '083 recognizes that the absence of an
electrical connection does not detect the availability of a parking space in the
context of general parking of vehicles." App. Br. 18.
In response, the Examiner further explains the basis for the rejection,
and concludes, as an initial matter of claim construction, that the availability
of a parking space is based on an absence of an electrical connection, as
defined in the claims:
claims 1, 13, and 20 explicitly define availability of a parking
space based on "an absence of an electrical connection."
Therefore any Appellant suggested weakness in the data of
Redmann including that a vehicle may remain in a parking space
even if disconnected is equally applicable to Appellants claims
themselves. That is, Appellant has explicitly defined availability
in claims 1, 13, and 20 to be based on absence of an electrical
connection and therefore Appellants arguments that a PHO SIT A
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may recogmze a weakness m usmg that data cannot be
persuasive.
Ans. 6 ( emphasis added).
We agree with the Examiner's claim interpretation. A claim meaning
is reasonable if one of ordinary skill in the art would understand the claim,
when read in light of the specification, to encompass the meaning. See In re
American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir.
2004).
We also emphasize that the Examiner ultimate legal conclusion of
obviousness is based upon the combined teachings of the cited references.
Moreover, "'the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made."' Merck & Co.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). (Emphasis added); see also
MPEP § 2123.
Turning to the evidence cited by the Examiner, we note Tillotson ,r 33
describes the use of:
an input device [that] transmits data indicating the occupancy
status of one or more parking spaces in a parking area 250. That
data is received by the database interface 204, as shown in block
404. The data may be transmitted/received over an Internet
connection, dedicated telephone line, or wireless transmission.
Tillotson ,r 33 ( emphasis added).
Tillotson further discloses the input device can take a
variety of forms. In one embodiment, the input device is a sensor
258 disposed at or adjacent to each parking space 304, or the
parking area 250. The PSIRS 200 uses a common interface
between the parking database 206 and the sensors 258, so data
from a wide range of sensor 258 types can be used without
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special modification. Likely sensors 258 include optical sensors
such as cameras, magnetic or ferrous sensors embedded in the
parking surface (such as ferrous loops 414), ultrasonic sensors,
radio detection and ranging (RADAR) sensors, light detection
and ranging (LID AR) sensors, and ( where access is controlled by
gates) sensors that count of vehicles entering and exiting the
parking area 250.
Tillotson ,r 34 ( emphasis added).
As pointed out by Appellants, Tillotson '278 fails to teach or suggest:
reserving parking spaces or returning a vehicle in the context
of rented electric vehicles. Rather, Tillotson '278 is only
directed to a system for managing the access and reservation of
parking spaces in a lot accessible by any vehicle. The parking
area monitors may be any suitable vehicle detection system
such as optical recognition, motion sensing, and proximity
detection. Each parking space may have a dedicated monitor as
shown in FIG. 1, or a single monitor may monitor multiple
spaces.
App. Br. 16 (emphasis added).
After reviewing the evidence, we agree that Tillotson is silent
regarding any mention of electric vehicles. Therefore, we find the
availability of a parking space with a charging capability would have been
the nature of the problem considered by an owner of an electric vehicle (i.e.,
an artisan), and this solution is not provided by Tillotson considered alone.
As explained by the Examiner:
Tillotson is silent with regards to electrical vehicles but Redmann
discloses both "ordinary parking spaces" and "EV charging
enabled parking spaces" (Paragraph 0040 of Redmann) ... since
Tillotson is silent with regards to electric vehicles and electric
vehicle recharging kiosks, Tillotson cannot discloses occupancy
sensors for parking spaces having recharging kiosks. Redmann
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was cited to cure this deficiency and it would be obvious to a
PHO SIT A to incorporate the occupancy decision making
approach of Redmann to the method and system of Tillotson in
order to provide accurate occupancy information for EV parking
spaces.
Ans. 8.
The Supreme Court guides: "[A] combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
401 (2007)
Applying this reasoning here, we find the Examiner's proffered
rationale for the combination is supported by a preponderance of the
evidence. We find an artisan would have been motivated to look to the
teachings of Redmann, in combination with Tillotson, to determine whether
a parking space with a charging capability is available at a particular
parking lot or parking garage, because Redmann ,r 81 expressly teaches:
"charging kiosk 154 may provide an indicator 450, which may be on the
body of kiosk 154, or may be several feet above and/or away from it, to
indicate which charging kiosks are available (i.e., not occupied, signaled by
indicator 450 lighting up green)."
Moreover, we agree with the Examiner that the proffered combination
of Tillotson, Redmann, and Morgal would have merely realized predictable
results from familiar elements. See Ans. 8-9: "a PHO SIT A would have
recognized the results were predictable (Pages 9 and 11-12 of the July 25,
2016 Final Office Action)." See KSR, 550 U.S. at 401.
In the Reply Brief (4), Appellants assert the Examiner has relied upon
impermissible hindsight in formulating the rejection. However, no evidence
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is provided in support. 8 In particular, Appellants have not provided
objective evidence of secondary considerations ( e.g., unexpected results,
long-felt but unmet need, commercial success), which "operates as a
beneficial check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013). Nor do Appellants
provide any evidence that the elements taught by the cited references are
anything other than elements which would have been familiar to artisans of
ordinary skill at the time of the invention. 9
On this record, Appellants have not provided persuasive reasoning or
evidence that combining the respective teachings of Tillotson, Redmann,
Morgal ( as proffered by the Examiner - Final Act. 9-1 O; Ans. 7-9) would
have been "uniquely challenging or difficult for one of ordinary skill in the
art," or that such a combination would have "represented an unobvious step
over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d
1157, 1162 (Fed. Cir. 2007). Appellants have not identified any knowledge
8 It is well settled that mere attorney arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence). Thus, counsel's arguments cannot take the place of factually
supported objective evidence. See In re Huang, 100 F.3d 135, 139-40 (Fed.
Cir. 1996). See also Manual of Patent Examining Procedure (MPEP) § 2145
(9th ed. Nov. 2015) ("Attorney argument is not evidence unless it is an
admission, in which case, an examiner may use the admission in making a
rejection.").
9 "The person of ordinary skill in the art ['PHOSITA'] is a hypothetical
person who is presumed to know the relevant prior art." In re GPAC, 57
F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Inc. v. Jeffrey-
Allan Indus., Inc., 807 F.2d 955, 962 (Fed. Cir. 1986)).
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gleaned only from the present application that was not within the level of
ordinary skill at the time the claimed invention was made. See In re
McLaughlin, 443 F.2d 1392 (CCPA 1971).
Applying the guidance from our reviewing courts here, and based
upon our review of the record, we find the Examiner sets forth sufficient
articulated reasoning having a rational underpinning to support the proffered
combination of Tillotson, Redmann, and Morgal. See Final Act. 9--10, Ans.
7-9. Further, we find the Examiner provided sufficient evidence of a
predictable result from combining the familiar elements of Tillotson,
Redmann, and Morgal, which we find outweighs any purported indicia of
impermissible hindsight.
Further regarding the contested limitations, Appellant notes: "The
Examiner looks to Redmann '083 in an effort to cure the deficiencies of
Tillotson '278, and alleges that Redmann '083 teaches 'detecting ... a
presence or absence of an electrical connection to a charging terminal ...
and, in response to said detecting ... identifying the parking space as an
available space.' (Final Office Action at pp. 8-9.)(Emphasis added.)" App.
Br. 17.
Appellants disagree with the Examiner's findings, and contend:
Redmann '083 discusses a charging kiosk 154 having an
indicator 450 disposed on the body of the kiosk or adjacent the
kiosk for providing a visual indication regarding the status of
charging to persons within sight of the kiosk. (See, Redmann
'083 at paragraph 0081 and FIG. 4.) Paragraph 0096 of
Redmann '083 only states that 11 [ f]ollowing the cessation of
charging ... telltale indicator 450 may be updated . . . . For
instance, if charging of a vehicle has just [been] manually
interrupted ... then the indicator may be set to green, indicating
a charging parking space 150 is imminently opening up. 11
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(Emphasis added.) Accordingly, Redmann '083 recognizes that
the mere cessation of charging does not mean that the space is
available. Indeed, persons skilled in the art would recognize that
charging may be complete and the vehicle may remain parked in
the space for an indeterminate amount
App. Br. 17.
However, Appellants' singular focus on Redmann fails to consider the
combined teachings and suggestions of the references cited by the Examiner.
Even if Appellants are correct that "Redmann '083 recognizes that the mere
cessation of charging does not mean that the space is available" (id.), we
find the use of Tillotson's sensors, as described at paragraph 34, would have
cured any such deficiency with Redmann. Therefore, on this record, we find
a preponderance of the evidence supports the Examiner's underlying factual
findings and ultimate legal conclusion of obviousness regarding the
contested limitations of representative claim 1.
Accordingly, for at least the aforementioned reasons, we sustain the
Examiner's rejection B under§ 103(a) of representative independent
claim 1.
Claims 2, 3, 5, 7-9, 11, 13, 15, 18-21, and 25-28
Rejected under§ 103 Rejection B
The remaining claims not argued separately (i.e., grouped claims 2, 3,
5, 7-9, 11, 13, 15, 18-21, and 25-28), and also rejected under rejection B,
fall with representative claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv) (2015).
Remaining Dependent Claims 4, 10, 12, and 22-24
Rejected under§ 103 Rejections C, D, E, F, and G
Appellants provide a separate heading in the Appeal Brief (18) and
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advance nominal arguments pertaining to remaining dependent claims 4, 10,
12, and 22-24, that were rejected under§ 103 rejections C, D, E, F, and G.
However, we find Appellants' arguments urging patentability are
grounded on an erroneous premise that the additional secondary references
the Examiner cited in support of rejections C, D, E, F, and G, do not cure the
purported deficiencies with the base combination of Tillotson, Redmann,
and Morgal, as relied upon by the Examiner as evidence in support of
rejection B of representative claim 1.
For the reasons discussed above regarding rejection B of claim 1, we
find no such deficiencies regarding the base combination of Tillotson,
Redmann, and Morgal. Therefore, we sustain rejections C, D, E, F, and G of
claims 4, 10, 12, and 22-24.
Accordingly, on this record, we find a preponderance of the evidence
supports the Examiner's underlying factual findings and ultimate legal
conclusion of obviousness under§ 103 for all claims 1-13, 15, and 18-28
on appeal.
Reply Brief
To the extent Appellants may advance new arguments in the Reply
Brief not in response to a shift in the Examiner's position in the Answer, we
note arguments raised in a Reply Brief that were not raised in the Appeal
Brief or are not responsive to arguments raised in the Examiner's Answer
will not be considered except for good cause. See 37 C.F.R. § 4I.41(b)(2).
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CONCLUSIONS
The Examiner did not err in rejecting claims 1-13, 15, and 18-28
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
The Examiner did not err in rejecting claims 1-13, 15, and 18-28
under 35 U.S.C. § 103(a), as being obvious over the cited combinations of
references.
DECISION
We affirm the Examiner's decision rejecting claims 1-13, 15, and 18-
28 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-13, 15, and 18-
28 under pre-AIA 35 U.S.C. § 103(a).
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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