Ex Parte Gilman et al

Patent Trial and Appeal Board

May 25, 2017

12985719 (P.T.A.B. May. 25, 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.
12/985,719 01/06/2011 Dale Gilman 83178079 4879
28395 7590 05/30/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER SHAAWAT, MUSSA A
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
05/30/2017 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 @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALE GILMAN and PAUL ALDIGHIERI
Appeal 2016-001103
Application 12/985,719
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Dale Gilman and Paul Aldighieri (Appellants) appeal under 35 U.S.C.
§ 134 from the rejection of claims 1, 4—11, 13—17, 19, and 20 under 35
U.S.C. § 101, as being directed to non-statutory subject matter. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part and designate our affirmance of claims 17, 19, and
20 as a NEW GROUND OF REJECTION. We further enter a NEW
GROUND OF REJECTION for claims 1, 4-11, and 13-16.
Appeal 2016-001103
Application 12/985,719
CLAIMED SUBJECT MATTER
Claims 1,11, and 17 are independent. Claims 1 and 17, reproduced
below, illustrate the claimed subject matter:
1. An information display for a vehicle comprising:
a display screen including:
an emotive display element, and
a plurality of surplus indicators associated with the
emotive display element, the surplus indicators corresponding to
an energy surplus value indicative of an estimated amount of
additional energy in an energy storage device relative to a target;
wherein the energy surplus value is equal to a distance-to-
empty (DTE) value minus a distance-to-target (DTT) value.
17. A display method for use by a vehicle information display
system comprising:
calculating, using a controller, a distance from a vehicle to
a target (DTT);
estimating, using the controller, a range of the vehicle;
subtracting the calculated DTT from the estimated vehicle
range to obtain an energy surplus value; and
displaying, on a vehicle information display, a number of
surplus indicators based upon the energy surplus value.
DISCUSSION
Rejection of claims 1, 4—11, 13—17, 19, and 20 under 35 U.S.C. § 101
Claims 17, 19, and 20
Appellants argue claims 17, 19, and 20 together. See Appeal Br. 2—6.
We select claim 17 as the representative claim, and claims 19 and 20 stand
or fall with claim 17.
The Examiner determines that
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[i]n this case, the claim(s) is/are directed to the abstract
idea of an information display system on a vehicle
displaying surplus energy value which falls under one or
more of the following examples of an abstract idea[:] (i) a
fundamental economic practice (e.g., hedging, insurance,
financial transactions marketing, etc.), (ii) a method of
organizing human activities, (iii) an idea of itself, or (iv) a
mathematical relationship or formula (e.g. algorithms,
spatial relationships, geometry), ([iv]) basic legal theories
(e.g. contracts, dispute resolution, rules of law), (v) mental
activity (e.g. forming a judgment, observation, evaluation,
or opinion), [and] (vi) instructing “how business should be
conducted”.
Final Act. 2—3.
The Examiner also determines that the additional elements in the
claims amount to no more than mere instructions to implement the idea on a
computer, and/or recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry. Id. at 3.
The Examiner further determines that viewed as a whole, these additional
claim elements do not provide meaningful limitations to transform the
abstract idea into a patent eligible application of the abstract idea such that
the claims amount to significantly more than the abstract idea itself. Id.
Appellants contend that “[a] statement that ‘the claims(s) is/are
directed to the abstract idea of an information display system on a vehicle
displaying surplus energy value which falls under one or more of the
following examples of an abstract idea . . . ’ is wholly conclusory and
entirely non-informative.” Appeal Br. 4 (emphasis omitted). Appellants are
correct. As Appellants explain, the Examiner has not provided any
explanation or evidence to support such statements. See id.
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The Examiner responds in the Answer that the use of an energy
surplus value in relation to a distance-to-empty value is an example of
organizing information through mathematical correlation, and is an abstract
idea. Ans. 3 (citing Digitech Image Tech., LLC v. Electronics for Imaging,
Inc., 758 F.3d 1344 (Fed. Cir. 2014)).
The Supreme Court has set forth “a framework 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 (citing Mayo Collaborative Servs. v. Prometheus Labs,
Inc., 132 S. Ct. 1289, 1294 (2012). According to the Supreme Court’s
framework, we must first determine whether the claims at issue are directed
to one of those concepts (i.e., laws of nature, natural phenomena, and
abstract ideas). Id. If so, we must secondly “consider the elements of each
claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. The Supreme Court characterizes the
second step of the analysis as “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id.
However, even assuming that claim 17 is drawn to an abstract idea as
indicated in the Answer, the Examiner still has not sufficiently explained
why the elements of claim 17, considered individually and as a whole, do
not amount to significantly more than an ineligible concept or transform the
nature of the claim into a patent-eligible application, as set forth in the
second part of the test under Alice, and further discussed infra. Accordingly,
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the Examiner has not made out a prima facie case of patent ineligibility.
Nonetheless, we agree with the Examiner that claim 17 is directed to non-
statutory subject matter, but for different reasons.
Appellants contend that, because “[t]he claims are directed to a
vehicle display, a vehicle display system, or a method for use by a vehicle
display system to convey practical vehicle information on a vehicle display,”
they are not abstract ideas. Appeal Br. 5; see also Reply Br. 2—6.
Specifically, Appellants argue that “[t]hey are practical applications and
implementations of real-time vehicle metrics. The display system and
display method keep drivers informed of battery energy availability with
respect to a target destination using a vehicle display to address range
anxiety in a battery electric vehicle.” Appeal Br. 5.
Appellants’ argument that claim 17 is not directed to an abstract idea
is unconvincing. Claim 17 is drawn to “[a] display method for use by a
vehicle information display system” comprising, inter alia, the steps of
“calculating, using a controller, a distance from a vehicle to a target (DTT),”
“estimating, using the controller, a range of the vehicle,” and “subtracting
the calculated DTT from the estimated vehicle range to obtain an energy
surplus value.'1'’ Claims App. 3 (emphases added). Because claim 17 is
drawn to a method that essentially merely requires calculating, estimating,
subtracting, and obtaining values or data, we find that claim 17 is directed to
the abstract idea of gathering and displaying data. See Electric Power
Group, LLCv. Alstom S.A, 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)
(explaining that an invention directed to the collection, manipulation, and
display of data was an abstract process). This finding fulfills the first step of
the Alice framework.
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Next, we consider the elements of the claim both individually and in
combination and, in doing so, determine that the claims do not amount to
significantly more than the abstract idea of applying the gathered data to
display the data. In support of this determination, we note that the elements
in the claim other than the data gathering, such as the “displaying, on a
vehicle information display, a number of surplus indicators based upon the
energy surplus value” do not transform the abstract idea into patent-eligible
subject matter. Accordingly, claim 17 merely sets forth instructions for
gathering data and then displaying the data, which do not amount to
significantly more than the abstract idea or transform the abstract idea to an
eligible application. See Electric Power Group, LLC v. Alstom S.A, 830
F.3d 1350, 1353—54 (Fed. Cir. 2016) (explaining that an invention directed
to the collection, manipulation, and display of data was an abstract process).
For these reasons, we sustain the Examiner’s decision rejecting claim
17. as being directed to non-statutory subject matter. Claims 19 and 20 do
not add subject matter that transforms the abstract idea embodied by these
claims into patent eligible subject matter for similar reasons. According, we
also sustain the Examiner’s decision rejecting claims 19 and 20 as being
direct to non-statutory subject matter. As our reasoning differs from or
supplements the Examiner’s, we designate our affirmance as a new ground
of rejection under 37 C.F.R. § 41.50(b).
Claims E 4—11, and 13—16
The Examiner’s rejection of apparatus claims 1 and 11 is substantially
the same as the rejection of method claim 17. See Final Act. 2—A.
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Appellants argue that claims 1 and 11 “are not directed to an abstract
idea and the Examiner has not made out a prima facie case of patent
ineligibility.” Appeal Br. 2. For the reasons discussed infra, Appellants’
argument is persuasive.
Under § 101, there are four categories of subject matter that are
eligible for patent protection: (1) processes; (2) machines; (3) manufactures;
and (4) compositions of matter. 35 U.S.C. § 101. While “Congress plainly
contemplated that the patent laws would be given wide scope,” Bilski v.
Kappos, 130 S. Ct. 3218, 3225 (2010) (quoting Diamond v. Chakrabarty,
447 U.S. 303, 308 (1980)), “[t]he Court’s precedents provide three specific
exceptions to § 101 ’s broad patent-eligibility principles: ‘laws of nature,
physical phenomena, and abstract ideas.’” Id. (quoting Diamond, 447 U.S.
at 309).
Here, claims 1 and 11 are drawn to “[a]n information display’ and
“[a]n information display system” for a vehicle” comprising “a display
screen.” Claims App. 1—2 (emphasis added)). Thus, these claims are
specifically drawn to the second category under 35 U.S.C. § 101,i.e.,a
machine. The fact that the display screen claimed in claims 1 and 11 is used
to display data that has been provided to the display screen by functioning
of the machine, which functioning may embody an abstract idea, does not
result in the subject matter of claims 1 and 11 being transformed into an
abstract idea. Rather, these claims pass the first test for eligible subject
matter set forth in Alice, in that they are directed to a machine and not an
abstract idea.
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Accordingly, we do not sustain the rejection of claims 1 and 11, and
claims 4—10 and 13—16 which depend therefrom, as being directed to non-
statutory subject matter.
New Ground of Rejection
Claims 1, 4—11, and 13—16 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Takahira (US 5,539,399, iss. July 23, 1996).
As noted above, claim 1 recites “[a]n information display for a
vehicle” having “a display screen” and claim 11 recites “[a]n information
display system for a vehicle.” Claim 11 further recites “a controller in
communication with the vehicle display.” Claims 1 and 11 also recite “an
emotive element” or “an emotive display element,” and “surplus indicators.”
Claims App. 1—2.
Appellants’ Specification discloses that “[t]he emotive display
element 66 may be a display theme, concept or background supporting the
emotional motivation of drivers to drive an energy efficient vehicle, such as
the vehicle 10.” Spec. 133. The Specification also discloses that “[t]he
surplus indicators may correspond to an energy surplus value indicative of
an estimated amount of additional energy in an energy storage device
relative to a target.” Id. at 4.
Takahira discloses
[a] display device for an electric vehicle, which display device is
capable of displaying a possible running range from a current
location of a vehicle with a detected residual battery charge on a
road map indicated on the display device screen, considering the
climbing power of the vehicle with that detected residual battery
charge. The display device operates to indicate a current location
of the vehicle on the road map shown on the display screen
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Application 12/985,719
according to map information read from a storage medium
according to a detected current location of the vehicle, to
determine a possible running distance of the vehicle with a
detected residual battery charge on the basis of electric energy
consumption rate for each road on the road map in consideration
of topographic features of each road, and then to display a
possible running range of the vehicle starting from the current
location of the vehicle on the road map.
Takahira, Abstract. Takahira also discloses that “command signals for
selecting a road map and a displaying scale of the map are entered from the
control unit 6 into the signal processing unit. . . and displayed at the
specified scale on the screen of the display.” Id. at 3:3—9; see also id. at Fig.
1. Takahira further discloses “means for determining a possible remaining
running distance of said vehicle on the basis of predicted consumption of
vehicle-driving battery electric energy by said vehicle running on said
detected residual charge of said vehicle-driving battery on a selected road
extending from said current location.” Id. at 6:37-43. Thus, we find that
Takahira discloses “[a]n information display” and “[a]n information display
system” “for a vehicle” having “a display screen” and “a controller in
communication with the vehicle display” as required for claims 1 and 11.
Takahira does not explicitly disclose “an emotive element” or “an emotive
display element,” and “surplus indicators” as claimed. We note, however,
that because Takahira discloses “displaying a possible running range from a
current location of a vehicle with a detected residual battery charge on a road
map indicated on the display device screen” {id. at Abstract), Takahira
therefore discloses “an emotive element” based on Appellants’ description
that such element may be “a display theme, concept or background
supporting the emotional motivation of drivers to drive an energy efficient
vehicle” (Spec. 133 (emphasis added)).
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Moreover, we note that “[wjhere . . . printed matter is not functionally
related to the substrate, the printed matter will not distinguish the invention
from the prior art in terms of patentability.” Gulack, 703 F.2d at 1385
(footnote and citation omitted). “[T]he critical question is whether there
exists any new and unobvious functional relationship between the printed
matter and the substrate.” Id. at 1386 (footnote and citation omitted).
Here, we construe “an emotive element” or “an emotive display
element,” and “surplus indicators,” as printed matter as they relate to data
(see Spec. ]Hf 4, 33) that is generic or unspecific to the display screen. That
is, the recited data is not functionally related to the substrate, which is the
display screen. In other words, the display of the data on the display screen
is not dependent on Appellants’ emotive display element or surplus
indicators. Accordingly, we conclude that making Takahira’s device display
particular printed matter or data, such as an emotive element and surplus
indicators, would have been obvious and merely involves a change in the
non-functional descriptive material that would not distinguish the claimed
information display from Takahira’s information display.
Dependent claims 4—10 and 13—16 recite features pertaining to the
target and the surplus indicator, i.e., data that relate to printed matter. Thus,
because claims 4—10 and 13—16 set forth limitations that merely relate to
printed matter, these claims are also obvious over Takahira for the reasons
discussed above.
DECISION
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The Examiner’s rejection of claims 17, 19, and 20 under 35 U.S.C.
§ 101, as being directed to non-statutory subject matter is affirmed and
designated as a NEW GROUND OF REJECTION.
The Examiner’s rejection of claims 1, 4—11, and 13—16 under 35
U.S.C. § 101, as being directed to non-statutory subject matter is reversed.
We enter a NEW GROUND OF REJECTION of claims 1, 4-11, and
13—16 under 35 U.S.C. § 103(a) as being unpatentable over Takahira.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
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misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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