Ex Parte Gokyu et al

Patent Trial and Appeal BoardOct 28, 2016

14018049 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/018,049 09/04/2013 23373 7590 11/01/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Syunsuke GOKYU 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. Q206086 4278 EXAMINER LEVINE, ADAM L ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 11/01/2016 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SYUNSUKE GOKYU, TAKASHI TOMOMOTO, and KENJIRO YANAI Appeal2016-007563 Application 14/018,0491 Technology Center 3600 Before, JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and BRADLEY B. BAY AT, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134 of the Examiner's final rejection of claims 1-9. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Claim 1 reproduced below, is representative of the subject matter on appeal. 1 Appellants identify Bridgestone Corporation as the real party in interest. Br. 2. Appeal2016-007563 Application 14/018,049 1. A method for tread selection to select a tread to attach to a tread side of a tire casing in a tire, comprising: a) measuring at least one characteristic value indicating at least a tire pressure with a tire condition measurement unit, the tire condition measurement unit having at least a TPMS for measuring the tire pressure, and transmitting the at least one characteristic value to a casing life prediction unit via radio wave; b) receiving the at least one characteristic value, estimating internal pressure application time equivalent to the amount of time internal pressure is applied based on the at least one characteristic value measured in step a); and predicting a remaining life of the tire casing based on the internal pressure application time using the casing life prediction; c) selecting, by a tread selection unit, at least one recommended tread in accordance with the remaining life of the tire casing predicted in step b) from among a plurality of treads attachable to the tire casing, using wear life information calculated in advance for each of the treads and stored in database; and d) transforming a display screen of a terminal to display the at least one recommended tread selected in step c ). THE REJECTION The following rejection is before us for review. Claims 1-9 are rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. 2 Appeal2016-007563 Application 14/018,049 35 U.S.C. Â§ 101 REJECTION ANALYSIS The Examiner rejected claims 1-9 as patent ineligible under Â§ 101 as directed to non-statutory subject matter. In so doing, the Examiner found that: It is unclear what the specific structure is to which applicants refer. The claim recites, "the tire condition measurement unit having at least a TPMS for measuring the tire pressure, and transmitting the at least one characteristic value to a casing life prediction unit via radio wave." This is not a recitation of structure, but is merely a recitation of the intended use of the TPMS. (Final 2). We disagree with the Examiner and find instead that the claims specify a process which is specifically designed to achieve an improved technological result in conventional industry practice. See Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S.Ct. 2347, 2358 (2014) (citing Diehr, 450 U.S. 175, 177). The Supreme Court 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. First, [] determine whether the claims at issue are directed to one of those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat else is there in the claims before us? [] To answer that question, [] 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. [The Court] described step two of this analysis as a search for an "'inventive concept'"-i.e., an 3 Appeal2016-007563 Application 14/018,049 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 (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. We therefore look to whether the claims before us focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). The Federal Circuit has further instructed that claims are to be considered in their entirety to determine "whether their character as a whole is directed to excluded subject matter." McRO, Inc. v. Bandai Namco Games America, Inc., 2016 WL 4896481, *6 (Fed. Cir. September 13, 2016) (quoting Internet Patents Corp. v. Active lvetwork, Inc.; 790 F.3d 1343; 1346 (Fed. Cir. 2015)). Here, the claimed invention relates to "a method for tread selection to select a tread to attach to a tread side of a tire casing. . . [by at least] measuring at least one characteristic value indicating at least a tire pressure with a tire condition measurement unit .... " We find that claim 1 limits the scope of the claims to the use of specific devices, namely, a TPMS, radio wave transmission, a casing life prediction unit, a tread selection unit, and a display screen. As such, we find that claim 1 prevents preemption of all relationships between tire pressure and retread selection because the claims are narrowly tailored to require, i.e., the use of a TPMS and a tire condition measuring unit and the sending of the TPMS data to a tire condition 4 Appeal2016-007563 Application 14/018,049 measuring unit using radio wave transmission. 2 We find that the specific components required by the claimed process and the claimed specified manner in which the data is required to be transmitted would prevent preemption of all relationships between a recommended tread and ascertaining remaining life of a tire. The Federal Circuit noted in McRO that the abstract idea exception has been applied to prevent patenting of claims that abstractly cover results where "it matters not by what process or machinery the result is accomplished" (McRO, 2016 WL 4896481 at *8 (quoting O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1854))). In the case before us, it is clear that the claims require a specific claimed means that improves "the relevant technology" of tire tread selection. Id. For the same reasons given above for claim 1, we will not sustain the rejection of independent claim 9 under 35 U.S.C. Â§ 101 because this claim is correspondingly similarly directed to a tread selection system with the same components and associated functions as recited in claim 1. We therefore find that the claims are not directed to an abstract idea. CONCLUSIONS OF LAW We conclude the Examiner did err in rejecting claims 1-9 under 35 U.S.C. Â§ 101. DECISION 2 Claim 1 recites in pertinent part, "measuring at least one characteristic value indicating at least a tire pressure with a tire condition measurement unit, the tire condition measurement unit having at least a TPMSfor measuring the tire pressure, and transmitting the at least one characteristic value to a casing life prediction unit via radio wave .. .. " 5 Appeal2016-007563 Application 14/018,049 The decision of the Examiner to reject claims 1-9 is reversed. REVERSED. 6