Ex Parte McGinn et al

Patent Trial and Appeal Board

May 18, 2017

13660275 (P.T.A.B. May. 18, 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.
13/660,275 10/25/2012 John Dennis McGinn 85870.0001 5598
29693 7590
WILEY REIN LLP
1776 K STREET N.W.
WASHINGTON, DC 20006
05/22/2017 EXAMINER
TORRICO-LOPEZ, ALAN
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
05/22/2017 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):
ptodocket @ wileyrein. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN DENNIS MCGINN and LOWELL SCHNEIDER
Appeal 2015-0082421
Application 13/660,2752
Technology Center 3600
Before MURRIEL E. CRAWFORD, MATTHEW S. MEYERS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
9. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision considers Appellants’ Appeal Brief (“Br.,” filed Feb. 11,
2015), as well as the Examiner’s Final Office Action (“Final Act.,” mailed
Sept. 11, 2014) and Answer (“Ans.,” mailed July 17, 2015).
2 Appellants identify Rapid Recon Inc. as the real party in interest. Br. 2.
Appeal 2015-008242
Application 13/660,275
CLAIMED SUBJECT MATTER
The claimed invention “relates to preparation of commodities, such as
vehicles, for sale and/or resale.” Claims 1 and 7 are the independent claims
on appeal. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of optimizing a process of preparing vehicles
for sale or resale, comprising:
defining a plurality of steps in a process of preparing
vehicles for sale or resale, the plurality of steps including at least
two vehicle preparation steps that are not required to be
performed in serialized fashion;
establishing an electronic database having a plurality of
records, wherein each record comprises vehicle identification
data and data regarding progress of the respective vehicle
through the plurality of steps;
receiving a vehicle;
inspecting the vehicle and generating a condition report
for the vehicle;
approving the at least two vehicle preparation steps to be
performed upon the vehicle based upon the condition report for
the vehicle;
moving the vehicle to a first vehicle preparation step of the
at least two vehicle preparation steps based upon one or more of
customer demand for the vehicle, supply, and resources available
to execute each of the at least two vehicle preparation steps;
performing the first vehicle preparation step of the at least
two vehicle preparation steps; and
while performing the first vehicle preparation step of the
at least two vehicle preparation steps:
tracking a time elapsed in performing the first
vehicle preparation step of the at least two vehicle
preparation steps; and
outputting the time elapsed in performing the first
vehicle preparation step of the at least two vehicle
preparation steps.
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Application 13/660,275
REJECTIONS
Claims 1—9 are rejected under 35U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—5 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burk (US 3,381,393, iss. May 7, 1968),3 Reichwein
(US 2001/0053983 Al, pub. Dec. 20, 2001), and Troyer (US 2005/0049912
Al, pub. Mar. 3, 2005).
Claims 6, 7, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burk, Reichwein, Troyer, and McGinn (US 2007/0273534
Al, pub. Nov. 29, 2007).
ANALYSIS
Non-Statutory Subject Matter
To determine whether a claim is eligible under 35 U.S.C. § 101, we
apply the two-step framework set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296—97 (2012) and
reiterated in Alice Corporation Pty. Ltd. v. CLS Bank International, 134
S. Ct. 2347, 2355 (2014), which considers, in the first step, whether the
claims are directed to a patent-ineligible concept, e.g., an abstract idea, and
then, in a second step, whether there is an inventive concept—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea. Pursuant to this framework,
3 The Examiner refers to this reference as “Burke,” as opposed to “Burk.”
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Application 13/660,275
Appellants have persuaded us that the Examiner erred in determining that
the claims are ineligible under § 101. Br. 9.
In regard to the first step, where we consider whether the claims are
directed to a patent-ineligible concept, such as an abstract idea, the inquiry is
not merely whether the claims embody an abstract idea. McRO, Inc. v.
Bandai Namco Games America, Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1293 (2012) (“[A]ll inventions at some level embody, use, reflect, rest
upon, or apply laws of nature, natural phenomena, or abstract ideas.”).
Rather, the Federal Circuit has instructed that “the claims are considered in
their entirety to ascertain whether their character as a whole is directed to
excluded subject matter.” Id. (quoting Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015) (emphasis added).
Here, each of independent claims 1 and 7 recites steps for preparing a
vehicle for sale or resale. For example, independent claim 1 recites the steps
of receiving a vehicle, inspecting the vehicle, approving at least two vehicle
preparation steps, and preforming a first vehicle preparation step on the
vehicle, and independent claim 7 similarly recites a vehicle receipt step, a
vehicle inspection step, a work order approval step, a plurality of vehicle
conditioning or reconditioning steps, and a vehicle sale or resale step. We
agree with Appellants that the Examiner’s characterization of the claims as
directed to “process optimization” does not account for these steps, and,
therefore does not reflect the character of the claims as a whole.
In view of the foregoing, we do not sustain the rejection of claims 1—9
under 35 U.S.C. § 101.
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Application 13/660,275
Obviousness
Appellants argue that Troyer fails to disclose the steps of “tracking a
time elapsed in performing the first vehicle preparation step of the at least
two vehicle preparation steps” and “outputting the time elapsed in
performing the first vehicle preparation step of the at least two vehicle
preparation steps,” as recited in independent claim 1. Br. 10. According to
Appellants, Troyer discloses keeping records of quality problems that occur
during a vehicle repair process, and Troyer’s discussion of time relates to
overall repair time, not the time for a specific step of the process. Id. (citing
Troyer || 22—33). We disagree. As the Examiner finds, Troyer teaches
breaking down the repair cycle time for each step of the repair process.
Ans. 2—3 (citing Troyer 137).
Appellants also argue that an ordinary artisan would not be motivated
to combine the teachings of Burk and Troyer. Br. 10. In particular,
Appellants assert that it is only in view of Appellants’ own disclosure that
the ordinary artisan would consider combining the teachings of Burk and
Troyer because Burk and Troyer having fundamentally different approaches,
namely Burk’s non-serialized work and Troyer’s serialized process. Id. We
do not find Appellants’ arguments persuasive.
We fail to see why a person of ordinary skill considering optimizing a
process for preparing vehicles for sale or resale would be limited to the
teachings associated with a non-serialized process and not consider other
types of vehicle preparation processes. See KSR Int 7 Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1742 (2007) (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”). To the contrary, a person of
ordinary skill would appreciate that Troyer’s disclosure of tracking and
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outputting the time elapsed in performing a vehicle preparation step in a
serialized process would similarly improve Burk’s non-serialized process in
the same way, namely, by providing more acute, i.e., step-specific, data. See
id. at 1740 (“[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”). Said differently, the
Examiner’s reason for combining the teachings of Burk and Troyer is not
based on hindsight, but rather on the application of a know technique to
improve a similar system in the same way. Final Act. 8.
In view of the foregoing, Appellants have not persuaded us that the
Examiner erred in determining that the subject matter of independent claim 1
is obvious, and we sustain the rejection of independent claim 1 under 35
U.S.C. § 103(a). Appellants do not present arguments for independent
claim 7 or dependent claims 2—6, 8, and 9 apart from the arguments for
independent claim 1 (Br. 11), and we sustain the rejections of these claims
for the same reasons as independent claim 1.
DECISION
The Examiner’s decision to reject claims 1—9 under 35 U.S.C. § 101 is
reversed.
The Examiner’s decision to reject claims 1—9 under 35 U.S.C.
§ 103(a) is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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