Ex Parte Gilman et alDownload PDFPatent Trial and Appeal BoardMay 25, 201712985719 (P.T.A.B. May. 25, 2017) Copy Citation 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 2 Appeal 2016-001103 Application 12/985,719 [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. 3 Appeal 2016-001103 Application 12/985,719 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, 4 Appeal 2016-001103 Application 12/985,719 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. 5 Appeal 2016-001103 Application 12/985,719 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. 6 Appeal 2016-001103 Application 12/985,719 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. 7 Appeal 2016-001103 Application 12/985,719 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 8 Appeal 2016-001103 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)). 9 Appeal 2016-001103 Application 12/985,719 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 10 Appeal 2016-001103 Application 12/985,719 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 11 Appeal 2016-001103 Application 12/985,719 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) 12 Copy with citationCopy as parenthetical citation