Ex Parte Hatton et al

Patent Trials and Appeals Board

Jun 27, 2019

14471419 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/471,419 08/28/2014
28395 7590 07/01/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
David Anthony Hatton
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.
83453402 1030
EXAMINER
MARTINEZ BORRERO, LUIS A
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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 DAVID ANTHONY HATTON,
HUSSEIN F. NASRALLAH, ABRAHAM G. PHILIP, and
CLARA BENNIE 1
Appeal2018-005646
Application 14/471,419
Technology Center 3600
Before JENNIFER D. BAHR, EDWARD A. BROWN, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Ford Global Technologies, LLC (Appellant) is the applicant as provided in
37 C.F.R. § 1.46 and is identified as the real party in interest. Appeal Br. 1.
Appeal2018-005646
Application 14/471,419
THE CLAIMED SUBJECT MATTER
Claims 1, 14, and 20 are independent. Claims App. 1-3. Claim 14,
reproduced below, is illustrative of the claimed subject matter.
14. A vehicle computer system comprising:
a wireless transceiver configured to communicate with a
mobile device;
a processor configured to:
1.) determine an emergency event has occurred
utilizing vehicle data collected by vehicle sensors;
2.) receive an encoded event data record (EEDR)
from a restraint control module that includes data related
to the emergency event;
3.) send the EEDR to the mobile device; and
4.) instruct the mobile device to contact and send
the EEDR to an emergency service provider.
REJECTIONS
I. Claims 1-20 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more.
II. Claims 1-20 stand rejected under 35 U.S.C. § I02(a)(2) as being
anticipated by Marumoto et al. (US 2011/0254676 Al, issued Oct.
20, 2011, hereinafter "Marumoto").
2
Appeal2018-005646
Application 14/471,419
DISCUSSION
Rejection I-Patent Eligibility
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
3
Appeal2018-005646
Application 14/471,419
(1981) ); "tanning, dyeing, making waterproof-cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
4
Appeal2018-005646
Application 14/471,419
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The United States Patent and Trademark Office (hereinafter "USPTO"
or "Office") published revised guidance on the application of§ 101.
USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance ("2019 Eligibility Guidance") ( available at
https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf).
Under that guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity, such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Eligibility Guidance.
Analysis
Appellant presents arguments primarily for independent claim 20, as
well as an argument specifically directed to independent claims 1 and 14.
5
Appeal2018-005646
Application 14/471,419
Appeal Br. 3-6. Appellant does not present any separate arguments for the
dependent claims. Thus, we decide the appeal of the rejection under
35 U.S.C. § 101 on the basis of independent claims 1, 14, and 20, with each
of the dependent claims standing or falling with the independent claim from
which it depends. See 37 C.F.R. § 41.37(c)(l)(iv) (permitting the Board to
select a single claim to decide the appeal as to a single ground of rejection of
a group of claims argued together).
(1) Do the claims recite ajudicial exception?
Claim 1 recites a processor configured to "determine an emergency
vehicle event based upon the vehicle data and a pre-defined threshold."
Claims App. 1. Claim 14 recites a processor configured to "determine an
emergency event has occurred utilizing vehicle data collected by vehicle
sensors." Id. at 3. Claim 20 recites "in response to detecting an emergency
event utilizing vehicle data collected from vehicle sensors." Id. at 4--5.
Making this determination, or detecting an emergency event, entails
evaluating the outputs from the sensors and determining whether the event
indicated by the sensors exceeds threshold criteria and, as such, is a mental
process that can be performed in the human mind, or using pen and paper.
See Spec. ,r 58. Thus, claims 1, 14, and 20 recite mental processes ( concepts
performed in the human mind), which is one of the groupings of abstract
ideas identified in the 2019 Eligibility Guidance.
Additionally, claim 1 recites the processor is configured to "record an
encoded event data record (EEDR) including decipherable data" and "send
the encoded event data record" to a mobile device; claim 14 recites the
processor is configured to "receive an encoded event data record (EEDR)
from a restraint control module" and send it to a mobile device; and claim 20
6
Appeal2018-005646
Application 14/471,419
recites "recording, utilizing a vehicle processor, an encoded event record
(EER) including decipherable emergency event data" and sending the
encoded event record "and a data identifier decoder" to a mobile device.
Claims App. 1, 3-5. Encoding and decoding are processes that can, and
have been, performed in the human mind. See RecogniCorp., LLC v.
Nintendo Co., Ltd., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (stating, "Morse
code, ordering food at a fast food restaurant via a numbering system, and
Paul Revere's 'one ifby land, two ifby sea' signaling system all exemplify
encoding at one end and decoding at the other end."); id. (stating that
"standard encoding and decoding [is] an abstract concept long utilized to
transmit information"). Thus, recording, receiving, and sending encoded
records, as recited in claims 1, 14, and 20, are mental processes, that is,
concepts performed in the human mind, which is an abstract idea.
Appellant argues that the aforementioned "limitations cannot be
performed mentally, in a human's head, or using pen and paper" because
"the claims articulate specific vehicle hardware utilized to conduct several
limitations." Appeal Br. 3--4. Aside from pointing out that the claims recite
performing these functions using hardware (i.e., a processor), Appellant does
not explain why determining, based on vehicle data, the occurrence of an
emergency event, and recording or receiving encoded data cannot be
performed in the human mind, or using pen and paper.
For the above reasons, the Examiner correctly determined that claims
1, 14, and 20 recite a judicial exception, namely, mental processes, which
are abstract ideas.
7
Appeal2018-005646
Application 14/471,419
(2) Do the claims recite additional elements that integrate the judicial
exception into a practical application?
Following our Office guidance, having found that claims 1, 14, and 20
recite a judicial exception, namely, mental processes, we are instructed next
to determine whether the claims recite "additional elements that integrate the
judicial exception into a practical application (see MPEP § 2106.0S(a}-(c),
(e}-(h))." See 2019 Eligibility Guidance. This evaluation requires us to
determine whether an additional element or a combination of additional
elements in the claims applies, relies on, or uses the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claims are more than a drafting effort designed to monopolize the
exception. Id. If the recited judicial exception is integrated into a practical
application, the claims are not "directed to" the judicial exception. Id.
The additional limitations in claim 1 are a transceiver in
communication with a vehicle computer system, and a processor configured
to perform the aforementioned recording, receiving, sending, and
determining steps, as well as steps of receiving vehicle data from vehicle
sensors, and "instruct[ing] the mobile device to send the encoded event data
record to an emergency-service provider." Claims App. 1. The additional
limitations in claim 14 are "a wireless transceiver configured to
communicate with a mobile device" and a processor configured to perform
the aforementioned determining, receiving, and sending steps, as well as
"instruct[ing] the mobile device to contact and send the EEDR to an
emergency service provider." Id. at 3. The additional limitations in claim
20 are "utilizing a vehicle processor" to perform the aforementioned
8
Appeal2018-005646
Application 14/471,419
recording step, and a step of "instructing the mobile device to dial an
operator and send the EER and data identifier decoder." Id. at 4--5.
The vehicle processor, transceiver, and vehicle computer system are
claimed only generically and, thus, do not integrate the abstract idea into a
practical application. Appellant argues that "claim 20 utilizes structure not
found in a general-purpose computer, such as 'a vehicle processor,' a
'wireless transceiver' that communicates with a 'mobile device,' and a
'vehicle sensor."' Appeal Br. 5. Appellant also argues that claims 1 and 14
"are directed to specific apparatuses known in the art, a restraint control
module and vehicle computer system." Id. at 4. However, we find no
indication in the Specification, nor does Appellant direct us to any
indication, that the operations recited in the claims invoke any assertedly
inventive programming, require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions and a generic transceiver
to send and receive data from and to the generic computer components. See,
e.g., Spec. ,r 17 ( describing a "BLUE TOOTH transceiver"). Merely that the
processor and computer are labeled as a "vehicle" processor or computer
does not integrate the abstract idea into a practical application, as these
labels, at most, limit the abstract idea to one field of use (vehicles). See
Bilski v. Kappas, 561 U.S. 593, 612 (2010) (stating that "limiting an abstract
idea to one field of use ... did not make the concept patentable").
The function of "receiv[ing] vehicle data from one or more vehicle
sensors" recited in claim 1 is simply a generic step of data collection, which
is insignificant extra-solution activity. See, e.g., CyberSource, 654 F.3d at
9
Appeal2018-005646
Application 14/471,419
1370 (reiterating "that mere '[data-gathering] step[s] cannot make an
otherwise nonstatutory claim statutory."' (alterations in original) ( quoting In
re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989))); see also 2019 Eligibility
Guidance (identifying "add[ing] insignificant extra-solution activity to the"
abstract idea as an example of when an abstract idea has not been integrated
into a practical application).
Appellant's Specification does not specify any particular form or
embodiment of the instruction sent to the mobile phone, nor do the claims
recite any further limitations of the instruction. See, e.g. Spec. ,r 63 (merely
broadly referring to "instructions"); Claims App. 1, 3, 4--5. Given this
breadth of disclosure and claiming, the instructing step is simply
insignificant post-solution activity, namely, outputting a result of the abstract
idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) (pointing out "that merely presenting the results of abstract processes
of collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis").
Further, we find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a "practical application,"
as that phrase is used in the 2019 Eligibility Guidance.
Appellant argues that the claims "are directed to a specific way a
vehicle processor operates with specific types of hardware" and that "the
10
Appeal2018-005646
Application 14/471,419
[S]pecification of the present application clearly focuses on vehicle-related
improvements that do not attempt to cast a broad net on abstract ideas."
Appeal Br. 4.
Appellant misapprehends the controlling precedent to the extent
Appellant maintains that the claims are patent-eligible because there is no
risk of preemption. The Supreme Court has described "the concern that
drives [the exclusion of abstract ideas from patent eligible subject matter] as
one of pre-emption." Alice, 573 U.S. at 216 (characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility). However, "[t]he Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability," and "[fJor this reason, questions on
preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility." Id.
Appellant also argues that "claim 20 is directed to a specific method
for improving technology on vehicle-based computer hardware." Appeal Br.
4. However, Appellant does not explain, nor direct our attention to
disclosure in the Specification explaining, how the method recited in claim
20 improves the way the computer hardware functions. Rather, the vehicle-
based computer hardware appears to be generic computer hardware
performing generic computer operations of receiving, recording, analyzing,
and transmitting data. See Ans. 5 (pointing out that "there is not a single
statement in the [S]pecification that demonstrates that an improvement to
11
Appeal2018-005646
Application 14/471,419
hardware is taking place"). Appellant argues that "[i]t is not a requirement
that the [S]pecification explain how the claimed invention improves a
computer or other technology," but cites paragraph 51 of the Specification as
purportedly demonstrating such an improvement. Appeal Br. 5.
The portion of the Specification cited by Appellant as demonstrating
an improvement in technology on the vehicle computer hardware relates to
sending a report to a hospital or doctor to potentially facilitate treatment of
the patient. Appeal Br. 5; Spec. ,r 51. This disclosure does not relate to any
improvement in the operation of the vehicle-based computer hardware itself.
As to Appellant's insistence that a statement in the Specification
explaining how the claimed invention improves a computer or other
technology is not required, Appellant asserts claim 20 is directed to
significantly more than the abstract idea because, according to Appellant,
claim 20 is directed to a method for improving technology on vehicle-based
computer hardware. Appeal Br. 4. In order for this assertion to be accorded
any weight, Appellant must support the assertion with technical reasoning or
evidence, whether from the Specification or elsewhere in the record, to
demonstrate an improvement in the computer hardware. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997). As discussed above, Appellant has
not provided such support, and we find no evidence or indication of such an
improvement in the record before us.
For the above reasons, we determine that no additional element or
combination of additional elements in claim 1, claim 14, or claim 20 applies,
relies on, or uses the judicial exception (mental processes) in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
12
Appeal2018-005646
Application 14/471,419
more than a drafting effort designed to monopolize the exception. In other
words, claims 1, 14, and 20 are "directed to" an abstract idea.
(3) Do the claims add any specific limitations beyond the judicial
exception that are not "well-understood, routine, and conventional"
in the field?
Because we determine that claims 1, 14, and 20 fail to recite
additional elements that integrate the judicial exception into a practical
application, in accordance with the 2019 Eligibility Guidance, we next
consider whether the claim adds a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional" in the field or
instead "simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception." See 2019 Eligibility Guidance.
As for the hardware, as discussed above, the claims merely recite a
generic computer, processor, and transceiver. Appellant cannot reasonably
contend that there is a genuine issue of material fact regarding whether
operation of these components is well-understood, routine, or conventional,
where, as here, there is nothing in the Specification to indicate that the
operations recited in the claims require any specialized hardware or
inventive computer components or that the claimed invention is
implemented using other than generic components operating in their normal,
routine, and ordinary capacity.
Appellant argues that "the claimed invention is not directed to a 'well-
understood, routine, conventional activity,'" and, for the first time in the
Reply Brief, insists that the Examiner must "'prove' that a series of steps is
'routeine and convention [sic]."' Reply Br. 2 ( quoting Berkheimer v. HP,
Inc., 881 F.3d 1360 (Fed. Cir. 2018)). As for the steps recited in claims 1,
13
Appeal2018-005646
Application 14/471,419
14, and 20, the functions of receiving data, recording data, and sending data
(instruction) are some of the most basic functions of a computer. See Alice,
573 U.S. at 225 ( describing "electronic recordkeeping" as "one of the most
basic functions of a computer" and stating that electronic recordkeeping,
receiving data (i.e., operating on new data), and issuing automated
instructions "are 'well-understood, routine, conventional activit[ies]'
previously known in the industry").
As for the remaining steps, determining an emergency event and
encoding/ decoding, as discussed above, these are mental processes, which is
the abstract idea itself. Addressing step two of the Mayo/Alice framework in
Berkheimer, the Federal Circuit held that the question of whether a claim
element or combination of elements is well-understood, routine, and
conventional to a skilled artisan in the relevant field is a question of fact.
Berkheimer, 881 F.3d at 1368. However, it could not be clearer from Alice,
that under step two of the Mayo/Alice framework, the elements of each claim
are considered both individually and "as an ordered combination" to
determine whether the additional elements, i.e., the elements other than the
abstract idea itself, "transform the nature of the claim" into a patent-eligible
application. Alice, 573 U.S. at 217. See Mayo, 566 U.S. at 72-73 (requiring
that "a process that focuses upon the use of a natural law also contain other
elements or a combination of elements, sometimes referred to as an
'inventive concept,' sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the natural law itself' ( emphasis
added)). In other words, the inventive concept under step two of the
Mayo/Alice test cannot be the abstract idea itself:
14
Appeal2018-005646
Application 14/471,419
It is clear from Mayo that the "inventive concept" cannot be the
abstract idea itself, and Berkheimer . .. leave[s] untouched the
numerous cases from this court which have held claims
ineligible because the only alleged "inventive concept" is the
abstract idea.
Berkheimer, 890 F.3d at 1374 (Moore, J., concurring). See also BSG Tech.
LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290-91 (Fed. Cir. 2018) ("Our
precedent has consistently employed this same approach. If a claim's only
'inventive concept' is the application of an abstract idea using conventional
and well-understood techniques, the claim has not been transformed into a
patent-eligible application of an abstract idea.").
For the reasons discussed above, we find no element or combination
of elements recited in claim 1, claim 14, or claim 20 beyond the judicial
exception that is not "well-understood, routine, conventional" in the field or
that contains any "inventive concept" or adds anything "significantly more"
to transform the abstract concept into a patent-eligible application. Alice,
573 U.S. at 221. Accordingly, we sustain the rejection of claims 1, 14, and
20, as well as claims 2-13, which fall with claim 1, and claims 15-19, which
fall with claim 14, under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
Rejection II-Anticipation
Principles of Law
When claim terminology is construed in the USPTO, claims are to be
given their broadest reasonable interpretation consistent with the
specification, reading claim language in light of the specification as it would
be interpreted by one of ordinary skill in the art. In re Am. A cad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
15
Appeal2018-005646
Application 14/471,419
The Federal Circuit has described the correct inquiry for determining
the broadest reasonable construction as follows:
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the specification is not
whether the specification proscribes or precludes some broad
reading of the claim term adopted by the examiner. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
specification, i.e., an interpretation that is "consistent with the
specification."
In re Smith Int'!, Inc., 871 F.3d 1375, 1382-1383 (Fed. Cir. Sept. 26, 2017).
To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either expressly or inherently. Blue
Calypso, LLCv. Groupon, Inc., 815 F.3d 1331, 1341 (Fed. Cir. 2016).
Analysis
Appellant groups independent claims 1 and 14 together in contesting
the anticipation rejection. Appeal Br. 6-7. Appellant presents a separate
argument for independent claim 20 and dependent claims 3 and 15. Appeal
Br. 7-8. Appellant does not present any separate arguments for dependent
claims 2, 4--13, and 16-19 apart from their dependence on either claim 1 or
claim 14. See id. at 7. We select claim 14 to decide this appeal as to claims
1, 2, 4--14, and 16-19. See 37 C.F.R. § 4I.37(c)(l)(iv). We address the
rejection of claims 3, 15, and 20 separately.
Claims 1, 2, 4-14, and 16--19
The Examiner found that Marumoto discloses all the limitations of
claim 14. See Final Act. 18-20. The only argument that Appellant presents
in the Appeal Brief contesting the rejection of claim 14 is that the Examiner
"has not established that the 'encoded event data record' is disclosed in
16
Appeal2018-005646
Application 14/471,419
Marumoto." Appeal Br. 6-7. 2 Appellant argues that, in reading the
"encoded event data record" on the image data converted from analog to
digital, the Examiner applies "an unreasonably broad interpretation of the
term 'encoding' [that] is inconsistent with the claim language and
[S]pecification." Id. at 7. Appellant urges that, consistent with the claims
and Specification, encoding should be construed as a "process of applying a
specific code, such as letters, symbols and numbers, to data for conversion
into an equivalent cipher." Id. (citing an online definition, applicable to
computer technology). Appellant contends that the Specification shows that
"the encoded event data record may be difficult to decipher without the
decoder and may be different across vehicle platforms or various suppliers."
Id.
Appellant's Specification describes an event data record comprising
many bits and bytes of information stored and transmitted in a particular
specification version, or format. Spec. ,r,r 33--41. Computers must store all
digital data using some type of encoding, as encoding is the format in which
data is stored and transmitted. Appellant's encoding is not a secret encoding
intended to be unreadable to unauthorized users for security reasons. The
"data may be presented in a format that may be difficult to decipher without
a DID encoder, as only various bits and bytes may be presented without a
standardized format." Id. ,r 34. Appellant's processor supplies a decoder to
2 Appellant presents new arguments on page 3 of the Reply Brief. These
arguments are untimely, and Appellant does not present any evidence or
explanation to show good cause why it should be considered by the Board at
this time. See 37 C.F.R. § 4I.41(b)(2) ("Any argument raised in the reply
brief which was not raised in the appeal brief, or is not responsive to an
argument raised in the examiner's answer ... will not be considered by the
Board for purposes of the present appeal, unless good cause is shown.").
17
Appeal2018-005646
Application 14/471,419
make sure the recipient can read and understand the format in which the data
is stored. See id. ,r 35. Accordingly, consistent with Appellant's
Specification, all digital data is stored and transmitted as encoded data,
whether the encoding happens to be a standardized format or a non-
standardized format.
Marumoto stores, processes, and transmits data from many sensors,
including imaging data, which is converted from analog to digital data, as
part of the driving condition data. See, e.g., Marumoto ,r,r 3, 36, 39, 45, 69,
75, 88, 151, 162. Thus, Marumoto's driving condition data is "encoded"
data, consistent with Appellant's Specification.
For the above reasons, Appellant does not apprise us of error in the
Examiner's finding that Marumoto' s driving condition data, including the
digital imaging data, is an "encoded event data record" as recited in claim
14. Accordingly, we sustain the rejection of claim 14, as well as claims 1, 2,
4--13, and 16-19, which fall with claim 14, as anticipated by Marumoto.
Claims 3, 15, and 20
Claims 3 and 15 expressly recite a processor configured to send a data
decoder, and claim 20 recites steps of "sending the EER and a data
identifier decoder utilized to decipher the record" and "instructing the
mobile device to ... send the EER and data identifier decoder." Claims
App. 1, 4--5 (emphases added). In addressing the decoder limitations, the
Examiner cites the disclosure in paragraph 98 of Marumoto directed to
server 6 being formed to work in cooperation with traffic center, police, and
insurance company servers to share information, as well as the disclosure in
paragraphs 41, 63, and 66 of Marumoto directed to communicating with the
18
Appeal2018-005646
Application 14/471,419
police station or insurance via the mobile telephone terminal and line. See
Final Act. 12, 21, 25-26.
We agree with Appellant that the Examiner fails to identify with
sufficient specificity where in these paragraphs Marumoto discloses a data
decoder to establish anticipation. See Appeal Br. 8-9. Accordingly, we do
not sustain the rejection of claims 3, 15, and 20 as anticipated by Marumoto.
DECISION
The Examiner's decision rejecting claims 1-20 under 35 U.S.C. § 101
is AFFIRMED.
The Examiner's decision rejecting claims 1, 2, 4--14, and 16-19 under
35 U.S.C. § 102(a)(2) is AFFIRMED.
The Examiner's decision rejecting claims 3, 15, and 20 under
35 U.S.C. § 102(a)(2) is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
19