Ex Parte Hafner et al

Patent Trial and Appeal Board

Jan 27, 2017

12139565 (P.T.A.B. Jan. 27, 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.
12/139,565 06/16/2008 James Lee Hafner AUS920080184US1 1776
39698 7590 01/31/2017
DTTKFW YFF EXAMINER
YEE & ASSOCIATES, P.C. BORISSOV, IGORN
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
01/31/2017 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES LEE HAFNER,
MALISSA WILTSEY O’MARA, and
PAUL STUART WILLIAMSON
Appeal 2015-002200
Application 12/139,5651
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
James Lee Hafiier, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1—25. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
1 The Appellants identify International Business Machines Corporation as
the real party in interest. App. Br. 2.
Appeal 2015-002200
Application 12/139,565
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer implemented method of generating an energy
transaction plan for controlling aspects of an electric vehicle charging
transaction, the computer implemented method comprising:
identifying, by a processor in the computer, an electric vehicle
associated with a charging station and a set of principals associated
with a charging transaction for the electric vehicle, wherein a
principal in the set of principals is an entity having an interest in the
charging transaction for the electric vehicle including an owner and an
operator [sic] the electric vehicle and wherein the charging transaction
is a transaction associated with at least one of charging the electric
vehicle, storing electric power in an electric storage mechanism
associated with the electric vehicle, and de-charging the electric
vehicle;
receiving charging transaction information, by the processor in
the computer, wherein the charging transaction information comprises
requirements, constraints, and preferences applicable to the charging
transaction, wherein the preferences comprise at least one user-
selected preference having a type specified as one of static, effective
until an associated preference changes; dynamic, requiring user input
of a value in real time; and temporary, effective for a predetermined
period of time, with the preferences used to manage, govern, and
control one or more aspects of the electric vehicle charging
transaction so as to minimize, maximize, or optimize the aspects, and
further the preferences are maintained in a vehicle preference service
comprised of a software component for creating, managing, storing,
requesting, updating, deleting, and retrieving the preferences
according to the energy transaction plan;
identifying, by the processor in the computer, a weighting value
associated with each preference, wherein the weighting value
indicates a priority of each preference relative to other preferences and
determines an extent to which an associated preference is minimized,
maximized, or optimized;
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Appeal 2015-002200
Application 12/139,565
generating, by the processor in the computer, an energy
transaction plan to control all aspects of the charging, discharging, and
storing operations with the electric vehicle based on the charging
transaction information, wherein the energy transaction plan
comprises an identification of the electric vehicle, an identification of
a principal in the set of principals to pay for the charging transaction,
an identification of at least one electric power provider associated
with the charging transaction, an owner of the charging station,
charging transaction time driven event sequences that indicate the
electric flow direction relative to the electric vehicle and rate of flow
at each of a time mark and that specifies start and end times for the
charging transaction and controls each of charging, discharging, and
storing operations with the electric vehicle, and includes terms of the
charging transaction to account for each of charging, discharging, and
storing electric power, and further the energy transaction plan
maximizes, minimizes, or optimizes each preference in accordance
with the weighting value assigned to each preference, to control
charging, discharging, and storing electric power; and
starting, conducting, and ending charging of the electric vehicle
charging transaction using the processor in the computer configured to
execute the generated energy transaction plan to control all aspects of
the charging, discharging, and storing operations with the electric
vehicle.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Pollack US 2008/0039989 A1 Feb. 14,2008
The following rejections are before us for review:
1. Claims 1—25 are rejected under 35 U.S.C. §101 as being directed to
non-statutory subject matter.
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Application 12/139,565
2. Claims 1—25 are rejected under 35 U.S.C. § 102(e) as being anticipated
by Pollack.
ISSUES
Did the Examiner err in rejecting claims 1—25 under 35 U.S.C. §101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1—25 under 35 U.S.C.
§ 102(e) as being anticipated by Pollack?
ANALYSIS
The rejection of claims 1—25 under 35 U.S.C. §101 as being directed to
non-statutory subject matter.
As a preliminary matter, we observe that the statement of the rejection
indicates that only claims 8—25 are being rejected. See Ans. 2. However,
the body of the rejection mentions all the claims. Ans. 3. We assume the
Examiner means to reject all the claims — a view the Appellants have also
taken.
As a second matter, we do not consider the analysis put forward by
the Examiner in the first instance as placing the Board in a position to
perform a meaningful review of the rejection.
The Examiner determined that claims 1—25 are “deemed to claim an
abstract idea (generating a plan).” Ans. 3. According to the Examiner,
“generating an energy transaction plan based upon various attributes,
including requirements, constraint and preferences, is a basic economic or
administrative practice.” Ans. 3. Apparently, because generating an energy
transaction plan is a “basic” economic or administrative practice, it has been
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Appeal 2015-002200
Application 12/139,565
“deemed” an abstract idea. That is not the law. The abstract idea judicially-
excepted category of patent-ineligible subject matter applies to building
blocks of human ingenuity, like fundamental economic practices, not “basic
practice.” “[I]n applying the §101 exception [laws of nature, natural
phenomena, and abstract ideas], we must distinguish between patents that
claim the “‘buildin[g] block[s]’” of human ingenuity and those that integrate
the building blocks into something more [Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S.Ct. 1289 (2012)], thereby “transforming]”
them into a patent-eligible invention [Mayo].” Alice Corp. Pty. Ltd. v. CLS
Bank International, 134 S. Ct. 2347, 2354-55 (2014). For the rest, the
Examiner states: “There are no meaningful limitations that transform the
exception into a patent eligible application. The claims only manipulate
abstract data elements. The generic computing elements recited are known
and conventional.” Ans. 3. There is no further analysis.
The Examiner’s Answer, wherein the § 101 rejection was first
presented, was mailed on Oct. 8, 2014. At that time, Examiners were
instructed to formulate a rejection pursuant the “Preliminary Examination
Instructions in view of the Supreme Court Decision in Alice Corporation
Ply. Ltd. v. CLS Bank International, et al.” Memorandum, Andrew
Hirshfeld, Deputy Commissioner for Patent Examination Policy, June 25,
2014. According to said memo, Examiners were to “[cjonsider the claim as
a whole by considering all claim elements, both individually and in
combination.” That was not done here. Claim 1, for example, is replete
with limitations, none of which are specifically treated. The Examiner’s
characterization of the claimed subject matter as “only manipulating]
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Application 12/139,565
abstract data elements” (Ans. 3) is not a fair reading of what is claimed.
Claim 1, for example, calls for
starting, conducting, and ending charging of the electric vehicle
charging transaction using the processor in the computer configured to
execute the generated energy transaction plan to control all aspects of
the charging, discharging, and storing operations with the electric
vehicle.
This limitation expressly requires the “starting, conducting, and ending
charging of the electric vehicle charging transaction” and the generated
energy transaction plan is the software which the processor in the computer
executes in order “to control all aspects of the charging, discharging, and
storing operations with the electric vehicle.” The characterization that the
claim “only manipulates abstract data elements” (Ans. 3) fails to “[cjonsider
the claim as a whole by considering all claim elements, both individually
and in combination” as said then-existing guidance memo required
Examiners to do. Nor does the analysis put forward by the Examiner in the
first instance follow more recent guidance. More recent guidance has not
changed the requirement to “[cjonsider the claim as a whole by considering
all claim elements, both individually and in combination” See 2014 Interim
Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance),
79 FR 241 (Dec. 16, 2014) 74618-74633, 74624.
The Appellants argue that the rejection of claims 1—25 is improper
because, inter alia, the invention provides a technical solution. (Reply Br.
7). In contrast to the paucity of explanation in support of the rejection, the
Appellants have put forward a position that is comprehensive in explaining
how claim limitations root the solution to the problem being solved in
technology and thereby render the claim limitations as meaningful
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Application 12/139,565
limitations beyond simply employing a generic computer. Consistent with
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
the Appellants explain how “[t]he improvement over existing solutions in
the field of electric vehicle charging is in the form of an energy transaction
plan which is explicitly used to control aspects of the electric vehicle
charging transaction.” (Reply Br. 4); that is,
[t]he energy transaction plan is a particular object which did not exist
previously but is created by an implementation of the claimed method.
The energy transaction plan is a synthesized object comprising
particular elements including an identification of the electric vehicle,
an identification of a principal in the set of principals to pay for the
charging transaction, an identification of at least one electric power
provider associated with the charging transaction, an owner of the
charging station, charging transaction time driven event sequences
that indicate the electric flow direction relative to the electric vehicle
and rate of flow at each of a time mark and that specifies start and end
times for the charging transaction. The energy transaction plan is
accordingly a "logical controller" used to control each of charging,
discharging, and storing operations with the electric vehicle, and
includes terms of the charging transaction to account for each of
charging, discharging, and storing electric power. The "controller"
aspect of the energy transaction plan is accordingly used to maximize,
minimize, or optimize each preference in accordance with the
weighting value assigned to each preference, to control charging,
discharging, and storing electric power. An implementation of the
claimed method to produce the energy transaction plan effectively
transforms the computer on which the method is implemented and the
plan materialized into an electric power charging, discharging, and
storing controller.
Reply Br. 6. The software-related language in the claims, as we have
already pointed out for claim 1, reflects what the Appellants are arguing.
See Trading Technologies International v. CQG Inc. (Fed. Cir., 2016-1616,
1/18/2017).
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Application 12/139,565
For some computer-implemented methods, software may
be essential to conduct the contemplated improvements. [Enfish
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir.
2016)](“Much of the advancement made in computer
technology consists of improvements to software that, by their
very nature, may not be defined by particular physical features
but rather by logical structures and processes.”). Abstraction is
avoided or overcome when a proposed new application or
computer-implemented function is not simply the generalized
use of a computer as a tool to conduct a known or obvious
process, but instead is an improvement to the capability of the
system as a whole.
Id. at 1336.
We find the Appellants’ arguments persuasive as to error in the
rejection and accordingly the rejection is reversed.
For the foregoing reasons, the rejection is not sustained.
The rejection of claims 1—25 under 35 U.S.C. § 102(e) as being anticipated
by Pollack.
As the Appellants point out, claim 1 requires
identifying, by a processor in the computer, an electric vehicle
associated with a charging station and a set of principals associated
with a charging transaction for the electric vehicle, wherein a
principal in the set of principals is an entity having an interest in the
charging transaction for the electric vehicle including an owner and an
operator [sic] the electric vehicle and wherein the charging transaction
is a transaction associated with at least one of charging the electric
vehicle, storing electric power in an electric storage mechanism
associated with the electric vehicle, and de-charging the electric
vehicle.
App. Br. 25.
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Application 12/139,565
The Examiner relies on paras. 52—60, 169, and 180 of Pollack as
evidence that said limitations are expressly described in the prior art. See
Ans. 4-5.
We have reviewed said Pollack disclosures. We agree with the
Appellants that said claim limitation are not expressly described there. We
do not see there any mention of “identifying [(a)] an electric vehicle
associated with a charging station and [(b)] a set of principals associated
with a charging transaction for the electric vehicle, wherein a principal in the
set of principals is an entity having an interest in the charging transaction for
the electric vehicle including an owner and an operator Tofl the electric
vehicle.” Claim 1 (emphasis added). There is a mention of certain data
sources and components that gather various types of information. See
Pollack, paras.
61—62. But there is no mention of identifying an owner or an operator of the
electric vehicle and therefore Pollack does not describe “a set of principals
associated with a charging transaction for the electric vehicle, wherein a
principal in the set of principals is an entity having an interest in the
charging transaction for the electric vehicle including an owner and an
operator [of] the electric vehicle” as claimed.
Said claim limitation is also not inherently described. While it is
possible that Pollack could be made to identify the particular information
claimed, “[i]nherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” Hansgirg v. Kemmer, 102 F.2d 212, 214
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Application 12/139,565
(CCPA 1939), quoted in Continental Can Co. USA v. Monsanto Co., 948
F.2d 1264, 1269 (Fed. Cir. 1991).
For the foregoing reasons, the §102 rejection of claim 1 and the
claims dependent thereon is not sustained.
Said claim limitation discussed above is also present in the other
independent claims — claims 8, 15, 18, and 22. Accordingly, the §102
rejection of these claims and the claims dependent thereon is also not
sustained.
CONCLUSIONS
The rejection of claims 1—25 under 35 U.S.C. §101 as being directed
to non-statutory subject matter is reversed.
The rejection of claims 1—25 under 35 U.S.C. § 102(e) as being
anticipated by Pollack is reversed.
DECISION
The decision of the Examiner to reject claims 1—25 is reversed.
REVERSED
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