Ex Parte Baughman et al

Patent Trial and Appeal Board

Aug 24, 2017

13588334 (P.T.A.B. Aug. 24, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/588,334 08/17/2012 Aaron K. BAUGHMAN END920100120US2 1024
46583 7590
Roberts Mlotkowski Safran Cole & Calderon, P.C.
Intellectual Property Department
P.O. Box 10064
MCLEAN, VA 22102-8064
EXAMINER
ORTIZ ROMAN, DENISSE Y
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
08/28/2017 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@rmsc2.com
lgallaugher@rmsc2.com
dbeltran @ rmsc2. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON K. BAUGHMAN, BARRY M. GRAHAM, RICK A.
HAMILTON II, and BRIAN M. O’CONNELL
Appeal 2016-007697
Application 13/588,3341
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Aaron K. Baughman et al. (“Appellants”) seek our review under
35 U.S.C. § 134 from the final rejection of claims 1—20. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify International Business Machines Corporation as
the real party in interest (App. Br. 2).
Appeal 2016-007697
Application 13/588,334
THE INVENTION
The invention “relates to parking management” (Spec., para. 2).
Claim 1 is illustrative, and is reproduced below with line breaks and
bracketed matter added:
1. A method of deploying a system for parking management,
comprising:
[1] providing a computer infrastructure, that operates to:
[2] associate a user with a vehicle;
[3] receive a message from a mobile user computing device
via wireless transmission, the transmission including
an identification of a user,
a current location of the vehicle, and
a request for a parking recommendation;
[4] determine available parking spots within a predefined
area around the current location of the vehicle; and
[5] transmit a message to the mobile user computing device
via wireless transmission,
the message indicating the available parking spots within
the predefined area.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Chagoly et al.
(“Chagoly”)
Pohutsky et al.
(“Pohutsky”)
Pearl
US 2005/0096974 Al May 5, 2005
US 7,899,473 B2
US 7,956,769 B1
US 2011/0133957 Al
Mar. 1,2011
June 7, 2011
June 9, 2011Harbach et al.
(“Harbach”)
2
Appeal 2016-007697
Application 13/588,334
The following rejections are before us for review2:
1. Claims 1—20 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
2. Claims 1—17 and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chagoly, Pohutsky, and Pearl.
3. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chagoly, Pohutsky, Pearl, and Harbach.
ISSUES
Did the Examiner err in rejecting claims 1—20 under 35 U.S.C. § 101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1—17 and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Chagoly, Pohutsky, and Pearl?
Did the Examiner err in rejecting claims 18 and 19 under 35 U.S.C.
§ 103(a) as being unpatentable over Chagoly, Pohutsky, Pearl, and Harbach?
ANALYSIS
The rejection of claims 1—20 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
We are not persuaded that the Appellants have shown error in the
rejection.
2 In the Answer, the Examiner withdrew all previous rejections under
35 U.S.C. § 103 and entered the two new grounds of rejection under
35 U.S.C. § 103 listed above (Ans. 4).
3
Appeal 2016-007697
Application 13/588,334
Alice Corp. Pty. Ltd. v. CLS Bank International, 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 found that “[t]he claims are directed to
parking management which is considered to be an abstract idea inasmuch as
such activity is considered an idea itself’ (Final Act. 6). In rejecting the
claims, the Examiner considered each of the functions of the claimed
“computer infrastructure” of claim 1:
The elements of the process in claims 1-20 are: associate a user
with a vehicle, receive an identification of a user, a current
location of the vehicle and a request for a parking
recommendation. Determine available parking spots within a
predefined area and transmit a message indicating the available
parking spots within the predefined area.
(Final Act. 6.) The Examiner concluded that “[t]he claim merely amounts to
the application or instructions to apply the abstract idea (parking
management) on a computer” {id. at 7; see also Ans. 2).
The Appellants argue that “the claimed invention is not directed to
fundamental economic practices, or certain methods of organizing human
activity, or an idea ‘of itself, or mathematical relationships/formulas” (App.
Br. 5; see also Reply Br. 2—7). At pages 4—13 of the Appeal Brief,
Appellants contend that the claimed invention does not fit within any of the
examples of claims directed to abstract ideas set forth in the examples
provided by the USPTO in the 2014 Interim Guidance on Patent Subject
Matter Eligibility dated December 16, 2014 and updated July 30, 2015.
4
Appeal 2016-007697
Application 13/588,334
According to the Appellants,
Appellants’ claimed invention is directed to a method of
deploying a system for parking management, the method
includes providing a computer infrastructure that operates to
associate a user with a vehicle, and receive a message from a
mobile user computing device via wireless transmission, where
the transmission includes an identification of a user, a current
location of the vehicle, and a request for a parking
recommendation. Additionally, the computer infrastructure
operates to determine available parking spots within a
predefined area around the current location of the vehicle, and
to transmit a message to the mobile user computing device via
wireless transmission, where the message indicates the
available parking spots within the predefined area.
(App. Br. 6, 8, 10, 11.)
The question as to whether claims are “directed to” an abstract idea is
not an inquiry into whether, for example, claims match a concept that the
USPTO has previously indicated to be an abstract idea.
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S. Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”) Rather, the “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. MerialL.L.C., [2016 WL
1393573, at *5 (Fed. Cir. 2016)] (inquiring into “the focus of
the claimed advance over the prior art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
5
Appeal 2016-007697
Application 13/588,334
“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. DirectTV, 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)); see also Enfish, 822 F.3d at 1335 (quoted in Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016)). With respect to computer-
enabled claimed subject matter, it can be helpful to determine whether “the
claims at issue . . . can readily be understood as simply adding conventional
computer components to well-known business practices” or not. Id. at 1338.
See also Affinity Labs, 838 F.3d at 1257. “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). The question is whether the claims as a whole “focus on a specific
means or method that improves the relevant technology” or are “directed to
a result or effect that itself is the abstract idea and merely invoke generic
processes and machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016).
In this case, the claims as a whole are focused not on, for example, an
improvement in computer technology but on gathering and disseminating a
particular kind of information, namely information about available parking
spots. That the claims involve “a computer infrastructure,” “a mobile user
computing device,” and receiving and transmitting messages “via wireless
transmission,” may limit the abstract idea to a particular environment, but
that does not make the claims any less abstract. Cf. In re TLI Commc ’ns
LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) (“although the claims
6
Appeal 2016-007697
Application 13/588,334
limit the abstract idea to a particular environment—a mobile telephone
system—that does not make the claims any less abstract for the step 1
analysis”). That the content of the messages relates to a vehicle and parking
spots that exist in the real world also does nothing to make the claims less
abstract. Cf. Open Parking, LLC v. ParkMe, Inc., No. 2:15-CV-976, 2016
WL 3547957, at *8 (W.D. Pa. June 30, 2016), aff d, No. 2016-2370, 2017
WL 1279363 (Fed. Cir. Apr. 6, 2017) (wireless computer system for
“moving data (open parking spots or not, and maybe where they are) from
one place (the parking lot) to another (the driver’s location)” held to be an
abstract idea).
The Appellants further argue that “the claimed invention as a whole
could not be done by a human analog, such as by hand or by merely
thinking. Instead, the claimed invention is performed by a computer
infrastructure, which is deeply rooted in technology” (App. Br. 13). See also
Reply Br. 3—5 (“it is not feasible for a human to reach a solution using only
paper and pencil”).
The Appellants appear to be arguing that any invention that cannot be
performed mentally or by hand, because the claim recites a computer is,
therefore, “rooted in technology” and not abstract. This argument was
expressly rejected by the Court in Alice. See Alice, 134 S. Ct. at 2358 (“the
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention”). Whether it would be
“feasible” to perform the method using “paper and pencil” is beside the
point. “[R] dying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.” OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d at 1363 (Fed. Cir. 2015), cert.
7
Appeal 2016-007697
Application 13/588,334
denied, 136 S. Ct. 701 (2015) (citing Alice, 134 S. Ct. at 2359 (“use of a
computer to create electronic records, track multiple transactions, and issue
simultaneous instructions” is not an inventive concept)). Moreover, we are
not convinced that there is no human analog for the invention. As explained
by the court in Open Parking:
the “occupancy condition” of a parking lot, i.e. data about
whether there are any open spots, could be rendered by humans
using a pen and paper. Perhaps there is an attendant at the gate
who looks around the lot and writes the number of open spaces
on a chalkboard for passersby to see. Or there could be a
simple “vacancy/no vacancy” sign outside of a lot, or a “real
time” electronic sign showing the then-existing number of open
spaces, based on the entry/exit of cars. These examples are
means to the same end: transmitting to commuters whether
there are any open spots in a parking lot, via a graphical display
and in substantially real time.
Open Parking, 2016 WL 3547957, at *7.
The Appellants further argue that the Examiner has not done what was
required in making a rejection under 35 U.S.C. § 101. According to the
Appellants, “the Examiner has not indicated which enumerated category
Appellants’ claimed invention falls under” (App. Br. 5) and has not
addressed various limitations of claim 1.
We disagree.
A plain reading of the rejection shows the Examiner reviewed the
claim as a whole with all its limitations and indicated that the claim is
directed to an idea of itself (Final Act. 6; see also Ans. 2). In fact, nearly the
entire claim is reproduced.
Our articulation of what the claims are directed to (“information
gathering and dissemination”) comports with that of the Examiner (“parking
management” (Final Act. 6; Ans. 2)). The Examiner’s characterization is
8
Appeal 2016-007697
Application 13/588,334
simply at a lower level of abstraction. See Apple, Inc., 842 F.3d at 1240-41
(“An abstract idea can generally be described at different levels of
abstraction. As the Board has done, the claimed abstract idea could be
described as generating menus on a computer, or generating a second menu
from a first menu and sending the second menu to another location. It could
be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.”).
For the foregoing reasons, the Appellants’ arguments do not persuade
us as to error in the Examiner’s determination under Alice step 1 that the
claims are directed to an abstract idea.
The second step of the Alice framework 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)). We have considered the elements of claim 1 both
individually and as an ordered combination, in light of the Appellants’
discussion, to determine whether the additional elements transform the
nature of the claim into a patent-eligible application. We are unpersuaded
that the Examiner erred in finding that they do not (see Final Act. 6—7; Ans.
2).
Claim 1 recites conventional elements of a generic “computer
infrastructure,” “vehicle,” and “mobile user computing device” employed
for their inherent functions to perform as expected. The Specification
supports that view. The Specification does not disclose a new computer
infrastructure, vehicle, or mobile user computing device. (See Spec., para.
9
Appeal 2016-007697
Application 13/588,334
36 (“computing device 14 can comprise any general purpose computing
article of manufacture capable of executing computer program code installed
thereon (e.g., a personal computer, server, etc.).”); para. 33 (“user computing
device 52 may be a smart phone, personal digital assistant (PDA), laptop
computer, notebook or netbook computer, tablet computer, vehicle
navigation computer, or any other personal wireless computing device.”).)
The claimed “vehicle” can be any conventional vehicle and its involvement
in the method of claim 1 merely requires that the vehicle exists at “a current
location.” Here, as in Alice, the claims “do not, for example, purport to
improve the functioning of the computer itself or effect an improvement in
any other technology or technical field.” Alice, 134 S. Ct. at 2351. Thus,
“the claims at issue amount to ‘nothing significantly more’ than an
instruction to apply the abstract idea . . . using some unspecified, generic
computer.” Id. at 2360 (citing Mayo, 132 S. Ct. at 1298).
The Appellants argue that the subject matter of claim 1 is similar to
the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014) because “the present claims, like the claims in the
DDR case, are ‘necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer
networks’” (App. Br. 14). The Appellants also argue that the claimed
“processes [are] designed to solve a technological problem not in
‘conventional industry practice’, e.g., allowing a user to be notified of
available parking spots within an area of the user’s current vehicle location”
(id. at 14—15).
We are not persuaded by the Appellants’ arguments. In DDR, the
court found that the claims addressed “a challenge particular to the Internet”
10
Appeal 2016-007697
Application 13/588,334
(DDR, 773 F.3d at 1257) and in the claimed system the computer network
did not “operat[e] in its normal, expected manner” because the “the routine
and conventional sequence of events” was overridden (DDR, 773 F.3d at
1258). The problem of finding available parking spots predates modem
computing and the internet, and the claimed invention simply uses now-
standard computing and communication equipment and procedures to
implement the abstract idea. Here, the claimed “computer infrastructure”
and “mobile user computing device” operate precisely in the expected
manner of storing data in association with other data, and sending and
receiving messages via conventional wireless networks. (See Spec., para. 37
(“The communications link can comprise any combination of wired and/or
wireless links; any combination of one or more types of networks (e.g., the
Internet, a wide area network, a local area network, a virtual private
network, etc.); and/or utilize any combination of transmission techniques
and protocols.”).) Cf. buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (“That a computer receives and sends the information over
a network—with no further specification—is not even arguably inventive”).
Contrary to the Appellants’ arguments (App. Br. 15—19), the Appellants’
invention does not address a technological problem in wireless
communication with the “mobile user computing device,” such as the “weak
signal” problem addressed by the invention at issue in SiRF Tech., Inc. v.
Int’l Trade Comm ’n, 601 F.3d 1319 (Fed. Cir. 2010). Instead, the
Specification discloses that a current location is determined using entirely
conventional GPS technology or manually entered and transmitted using
conventional wireless networks:
11
Appeal 2016-007697
Application 13/588,334
The current location may be transmitted using any conventional
or later-developed technique, such as mobile telephony
communication (e.g., 2G, 3G, etc.), wireless broadband, etc. In
implementations, the current user location is determined using a
global positioning system (GPS) component of the user
computing device. Alternatively, the user may manually enter
their current location in the user computing device, e.g., by
typing the current address into the user computing device.
Spec., para. 88.
Accordingly, the Appellants arguments do not apprise us of error in
the rejection of claim 1.
The Appellants argue separately against the rejection of dependent
claims 5, 9, and 15 (App. Br. 19—20).
Dependent claim 5 recites receiving a message having a specified
content, and making a parking reservation by updating a database. Claim 9
similarly recites receiving a message, updating the database, and charging a
payment source. Claim 15 recites transmitting prices to the mobile user
computing device. As discussed above, using conventional wireless
technologies to send and receive messages having a specified information
content does not provide an “inventive concept” that transforms the abstract
idea or roots the invention in technology. Updating a conventional database
(see Spec., para. 46) with specified information content and charging a
payment source, such as a conventional credit card (see id. at para. 15)
“amounts to electronic recordkeeping—one of the most basic functions of a
computer.” Alice, 134 S. Ct. 2347 at 2359.
We have fully considered the Appellants’ arguments. For the
foregoing reasons, they are unpersuasive as to error in the rejection. The
rejection is sustained.
12
Appeal 2016-007697
Application 13/588,334
The rejection of claims 1—17 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Chagoly, Pohutsky, and Pearl.
The rejection of claims 18 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Chagoly, Pohutsky, Pearl, and Harbach.
Claim 1 requires, in limitation [3], the step of the computer
infrastructure operates to “receive a message from a mobile user computing
device via wireless transmission, the transmission including ... a current
location ...” (App. Br. 46, Claims Appendix).
The Examiner finds the above limitation in Pohutsky, in the abstract
and at column 1, lines 45—65 (Ans. 4).
The Appellants argue that “Pohutsky does not teach or suggest
Appellants’] features of a transmission including an identification of a user
and a current location of the vehicle” (Reply Br. 12).
Pohutsky discloses that “[a] location-based wireless service is used to
obtain a location of the subscriber” (Pohutsky, col. 1,11. 52—53) and provide
the mobile user with “current information relating to the geographic area,
e.g., different services in their current location, stores, libraries, gas stations,
etc.” {id. at col. 2,11. 12—15). The user dials “4-1-1” from a wireless device,
and the requested location-specific information is then delivered to the
wireless device via SMS message {id. at col. 2,11. 15—23). Regarding
location determination, Pohutsky discloses:
The location system 104 described above relies on various
methods to determine a location of a mobile user such as: using
an angle of arrival of a wireless signal from a subscriber, using
a network generated location based on a centroid of a cell site
sector’s radio frequency (RF) polygon, using a time difference
of arrival of wireless signals from said subscriber, using time of
arrival of a wireless signal from said subscriber, using a known
location of a cell/sector servicing said subscriber, etc.
13
Appeal 2016-007697
Application 13/588,334
(Id. at col. 4,11. 59—67). In other words, the wireless device sends a wireless
signal to a cellular network, and the network determines the location of the
wireless device based on physical properties of the wireless signal or a
known location of the cell/sector servicing the subscriber’s device. We do
not see how, and the Examiner does not explain how, Pohutsky discloses
that a wireless device sends a “transmission including ... a current location”
as required by claim 1. Although the wireless device, naturally, must send
its transmission from its current location, Pohutsky does not disclose that the
transmission itself includes any location information. Instead, device
location is determined by the network upon receipt of the signal in
conjunction with additional information, such as cell site location
information.
A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence. Accordingly, we reverse the
rejection of independent claim 1. For the same reasons, we also do not
sustain the rejection of dependent claims 2—20. Cf. In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the
independent claims from which they depend are nonobvious”).
CONCFUSIONS
The Appellants have not shown that the Examiner erred in rejecting
claims 1—20 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
The Appellants have shown that the Examiner erred in rejecting
claims 1—20 under 35 U.S.C. § 103(a).
14
Appeal 2016-007697
Application 13/588,334
DECISION
The decision of the Examiner to reject claims 1—20 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).
AFFIRMED
15