Ex Parte McQuade et al

Patent Trial and Appeal Board

Dec 31, 2018

13157184 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/157, 184 06/09/2011 Charles Michael McQuade
500 7590 01/03/2019
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
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.
990060.402Cl 6634
EXAMINER
FISHER, PAUL R
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
01/03/2019 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES MICHAEL McQUADE and BRETT BRINTON
Appeal2017-009509
Application 13/157, 184
Technology Center 3600
Before MAHSHID D. SAADAT, MARC S. HOFF, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 2-8, 10-14, 16, 17, 19-25, 27, and 28. App. Br. 8. 2 We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 According to Appellants, the real party in interest is Zonar Systems, Inc.
App. Br. 2.
2 Throughout this opinion, we refer to the Final Rejection ("Final Act.")
mailed May 5, 2016; the Appeal Brief ("App. Br.") filed January 4, 2017;
the Examiner's Answer ("Ans.") mailed April 26, 2017; and the Reply Brief
("Reply Br.") filed June 26, 2017.
Appeal2017-009509
Application 13/157,184
THE INVENTION
Appellants' invention monitors operational data and fault code data
while a vehicle is operating to generate service requests and pricing data.
Spec. ,r 51.
Claim 25 is reproduced below:
25. A system for monitoring operational data and fault
code data conveyed from a specific vehicle in real time while
the specific vehicle is operating and generating a vehicle
service request for the specific vehicle and providing pricing
data from one or more vendors able to provide service for the
specific vehicle, comprising:
(a) a memory in which a plurality of machine instructions
are stored;
(b) a data link for receiving the vehicle service request;
( c) a processor coupled to the memory and to the data
link, said processor executing the machine instructions to carry
out a plurality of functions, including:
(i) enabling one or more user defined fault codes to
be defined while the specific vehicle is operating,
wherein at least one user defined fault code is defined by
the processor to acquire additional information for use in
diagnosing a problem with the specific vehicle and
wherein each user defined fault code is different than any
fault code defined by a manufacturer of the specific
vehicle;
(ii) in response to receiving the vehicle service
request, conveying the vehicle service request to a
plurality of vendors, to enable each vendor interested in
responding to the vehicle service request to provide a
price quote for their services; and
(iii) in response to receiving a price quote from a
vendor, conveying the price quote to a third party able to
convey the price quote to an operator of the specific
vehicle, wherein the third party collects and monitors
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vehicle performance data collected from the specific
vehicle on a regular basis, and such monitoring has
detected a problem with the specific vehicle necessitating
the vehicle service request.
THE EVIDENCE
The Examiner relies on the following as evidence:
Walker et al.
Beelitz et al.
Davis
Lowrey et al.
Fiechter et al.
McCauley
Gotts et al.
Picard
us 5,862,223
US 6,182,275 Bl
US 2002/0111897 Al
US 2002/0133273 Al
US 6,609,051 B2
US 2004/0199412 Al
US 2007/0124283 Al
US 2009/0062978 Al
THE REJECTIONS
Jan. 19, 1999
Jan.30,2001
Aug. 15, 2002
Sep. 19,2002
Aug. 19, 2003
Oct. 7, 2004
May 31, 2007
Mar. 5, 2009
Claims 2-8, 10-14, 16, 17, 19-25, 27, and 28 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 2-
5.
Claims 2, 4, 8, 16, 19, 24, 27, and 28 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Picard. Final Act. 5-13.
Claims 3, 22, and 23 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Picard and Fiechter. Final Act. 13-18.
Claim 5 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Picard and Davis. Final Act. 18-19.
Claim 6 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Picard, McCauley, and Beelitz. Final Act. 20.
Claim 7 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Picard and Gotts. Final Act. 23-25.
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Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Picard and Walker. Final Act. 25-27.
Claims 11, 13, 14, and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Picard, Fiechter, and Lowrey. Final Act. 27-34; Ans. 3. 3
Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Picard, Fiechter, Lowrey, McCauley, and Beelitz. Final Act. 34--38.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Picard, Fiechter, Lowrey, McCauley, and Walker. Final Act. 38--40.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Picard, Fiechter, Lowrey, and Davis. Final Act. 40--41.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Picard and McCauley. Final Act. 41--43.
THE REJECTION UNDER 35 U.S.C. § 101
The Supreme Court's two-step framework guides the subject-matter
eligibility analysis under 35 U.S.C. § 101. See Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2355 (2014). According to Alice step one, "[w]e
must first determine whether the claims at issue are directed to a patent-
ineligible concept," such as an abstract idea. Id. If so, Alice step two asks
us to consider the limitations "both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
3 In the Office Action mailed May 5, 2016, the Examiner lists only claim 11
in the rejection's header but addresses claims 13, 14, and 25 in the
substantive portion. See Final Act. 27-34. The Examiner corrects this
omission in the Answer. Ans. 3. Thus, we treat claims 13, 14, and 25 as
rejected under Picard, Fiecher, and Lowrey, as the Examiner does in the
Answer and Appellants do in the Appeal Brief. See id.; Reply Br. 8.
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nature of the claim' into a patent-eligible application." Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)).
The Supreme Court has described step two of the analysis "as a search for an
'inventive concept."' Alice, 134 S. Ct. at 2355.
Under Alice step one, the Examiner determines that the claims are
directed to "diagnosing a vehicle problem and requesting pricing from
vendors to resolve the problem." Final Act. 3. The Examiner characterizes
the claimed functions as "using a computer to monitor and collect vehicle
data, transmitting that data, and receiving prices based on that data." Id.
The Examiner concludes that this is an abstract idea. Id.
According to the Examiner, the claimed concept includes
"fundamental business practices, an idea of itself, and a mathematical
relationship or formula." Id. Specifically, the Examiner explains that the
"fundamental business practice" is "providing price quotes for services." Id.
Also, according to the Examiner, the invention transmits data to vendors,
"who respond with prices they charge to" repair the vehicle, which is an
"idea of itself." Id. In the Examiner's view, the collected data does not
"define the actual problem, but merely outlines problems based on the fault
codes," and the vendor determines the cause and the repair cost. Id. at 3--4.
As to the mathematical relationship, the Examiner finds that Appellants
provide "an algorithm (formula) in the form of a flowchart that dictates the
step by step process steps to perform the claimed invention." Id. at 3.
Appellants argue that the claims solve technical problems with real-
time vehicle monitoring. App. Br. 13. Appellants acknowledge that
recognizing vehicle fault codes, collecting data, and diagnosing vehicle
problems is known. Id. at 19. Appellants argue, however, that the claimed
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invention provides a technical improvement over previously known data
collection, fault code, and problem diagnosis techniques. Id. For example,
Appellants argue that claim 25 improves existing processes by allowing the
user to define fault codes in real time. Id. at 13. According to Appellants,
claim 25 uses the user-defined fault codes to acquire additional information
about the vehicle's problem, and the user-defined fault code is different from
the manufacturer's fault codes. Id. Similarly, Appellants contend that
independent claims 27 and 28 use a specific data link to provide data to
multiple vendors. Id. at 18-19.
According to the Specification, "fault code data addresses the problem
of storing the enormous quantity of operational data generated by vehicles."
Spec. ,r 6. But even when using fault codes, "accurate diagnosis of other
than routine vehicular system failures can be problematical." Id. Also, "the
consumer may understand there is a problem with the vehicle, but may not
know exactly what service is required." Id. ,r 14.
The claimed invention is directed to collecting performance data to
diagnose mechanical or electrical vehicle problems. Id. Specifically,
independent claim 25 recites that a processor enables the definition of a
user-defined fault code, which is used to acquire additional information to
diagnosing a problem. This code is recited as being different from the
manufacturer's fault codes. Independent claims 27 and 28 transmit
electronic vehicle performance data acquired by a user from a data port.
This data is used to diagnose the problem and solicit price quotes. The
claims further recite collecting and monitoring vehicle performance data on
a regular basis.
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We disagree with the Examiner that the claims are directed to a
mathematical formula. Final Act. 3. "The 'directed to' inquiry[] cannot
simply ask whether the claims involve a patent-ineligible concept, because
essentially every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon." Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Although
the claims may use an algorithm or some mathematics in the recited
calculations, the claims recite a system that monitors operational data and
fault code data from a vehicle.
Likewise, the claims involve, at some level, a plan or scheme to repair
the vehicle. But the claims need not recite repairing the vehicle, as the
Examiner suggests. Final Act. 3--4. Here, Appellants do not purport to have
invented an improved method for vehicle repair. Instead, the claims recite a
system for real-time vehicle monitoring and conveying service requests and
price quotes.
The Examiner has not shown that claims 26, 27, and 28 are directed to
collecting information without "requir[ing] a new source or type of
information, or new techniques for analyzing it," like the claims in Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016),
cited in Ans. 16. Nor has the Examiner shown that the claims recite "steps
people go through in their minds" or a mathematical algorithm. Id. at 1354.
Rather, the claimed invention uses the recited information (e.g., user defined
fault codes and performance data) and communicates the information over a
data link to purportedly make vehicle monitoring technology more efficient.
We agree with Appellants that the step of "acquiring additional information
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based on a user-defined fault code, in real time, is not one that humans can
perform." Accord App. Br. 9.
The Examiner determines that the claims are directed to a
fundamental economic practice. The Examiner finds that the practice is
"providing price quotes for services." Final Act. 3. The question in Alice
step one is whether the claim is "directed to" the abstract idea itself. Yet the
Examiner's analysis overlooks the claimed limitations related to vehicle
monitoring and connecting to specific sources of information ( e.g., from
specialized on-vehicle hardware). Accord App. Br. 10. Moreover, the
Examiner has not identified other similar fundamental economic concepts
found to be abstract ideas by the courts.
Assuming the claims are directed to the abstract idea of vehicle
diagnosis and quoting prices, the Examiner has not adequately supported the
required findings under Alice step two, as Appellants have argued.
Reply Br. 4. That is, if the claims are directed to the abstract idea of vehicle
diagnosis and quoting prices (Final Act. 3), we must ask "[ w ]hat else is there
in the claims before us?" See Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566
U.S. at 78).
Here, the Examiner finds that "[ t ]he claims require no more than a
generic computer to perform generic computer functions that are well-
understood, routine and conventional activities previously known to the
industry." Final Act. 4 (citing Spec. ,r,r 74--76). The Examiner finds that the
system "uses known vehicle data to determine possible problems with the
vehicle." Id. at 3. Although a processor (Spec. ,r 74), memory (id. ,r 75),
and input devices (id. ,r 7 6) are known, the Examiner has not shown that the
features recited in addition to price quoting----e.g., enabling user defined
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fault codes or using certain performance data collected from specialized on-
vehicle hardware in the recited manner-were well-understood, routine, and
conventional. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018) ("Whether something is well-understood, routine, and conventional to
a skilled artisan at the time of the patent is a factual determination."). For
example, the Examiner does not cite case law, the Specification, or other
sources to support these findings under Alice step two. See Final Act. 4,
Ans. 17. Yet the claims recite specific limitations to real-time vehicle
monitoring and collecting fault-code data from an operating vehicle in real-
time.
On this record, we are persuaded that the Examiner erred in
concluding that claims 2-8, 10-14, 16, 17, 19-25, 27, and 28 are ineligible
under 35 U.S.C. § 101.
THE ANTICIPATION REJECTION
The Examiner's Findings
The Examiner finds that Picard discloses all limitations in claims 27
and 28, including "instructing an operator of the specific vehicle to acquire
electronic vehicle performance data from a data port on the specific vehicle"
in claim 27 and the similar limitation in claim 28. Final Act. 9, 11 (citing
Picard ,r,r 40, 44). In particular, the Examiner finds that Picard discloses that
data is received from an OBD port and transmitted over a data link. Ans. 33
( citing Picard ,r 40). The Examiner further finds that an OBD port is known
to collect performance data about the vehicle. Id.
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Appellants ' Contentions
Appellants argue that Picard does not instruct an operator to acquire
electronic vehicle performance data from a data port. App. Br. 23.
Appellants argue that Picard transmits data automatically and without human
input. Id. (citing Picard ,r 40). Appellants argue that the Examiner's focus
on an OBD port is misplaced because the claims do not recite this feature.
Reply Br. 7.
Analysis
We are persuaded by Appellants' contentions that the Examiner has
not shown that Picard discloses instructing an operator to acquire electronic
vehicle performance data, as recited in claims 27 and 28.
Specifically, Picard's system provider 106 may communicate with the
vehicle itself. Picard ,r 40, cited in Final Act. 9, 11. The system provider
may do so with an on-board diagnostic (OBD) system. Id. But Picard
discloses this information is "transmitted automatically (such as through
wireless communication), without the need for human input." Id. By
contrast, claims 27 and 28 require instructing the user for this data.
With respect to the vehicle performance data, Picard's system does
prompt a user to enter information. See Picard ,r,r 3 7, 3 9. For example,
Picard's user is prompted for the current vehicle mileage (id. ,r 39) or a
vehicle identification number (id. ,r 37). But claims 27 and 28 require an
instruction "to acquire electronic vehicle performance data from a data port
on the specific vehicle." The Examiner has not shown that Picard's user
acquires a vehicle identification number or the mileage from a data port. See
Final Act. 9, 11 ( citing Picard ,r,r 40, 44 ).
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On this record, we agree that the Examiner erred in rejecting
independent claims 27 and 28, and dependent claims 2, 4, 8, 16, 19, and 24,
for similar reasons.
THE OBVIOUSNESS REJECTION OVER PICARD,
FIECHTER, AND LOWREY
The Examiner's Findings
The Examiner rejects claim 25 as obvious over Picard, Fiechter, and
Lowrey. In this proposed combination, the Examiner finds that Lowrey
teaches the recited user-defined fault codes. Final Act. 32-33 ( citing
Lowrey ,r,r 5, 42, 43, and 82). According to the Examiner, Lowrey's user
defines the gathered data using a schema, and this data is the user-defined
fault code. Ans. 39.
Appellants' Contentions
Appellants argue that Lowrey's schema is not a fault code.
App. Br. 29; Reply Br. 8-9. Appellants argue that Lowrey sends a new
schema in a data packet when more data is required. App. Br. 29.
Appellants argue that a schema is a map. Id. Appellants argue that
Lowrey's schema is not a fault code because it is not a numeric or
alphanumeric value and Lowrey does not teach that the schema is
implemented to use minimal memory resources. Id. Appellants argue that
Lowrey distinguishes schemas from diagnostic trouble codes (DTCs ). Id.
Appellants contend that a manufacturer, not the user, defines
Lowrey's DTCs. Id. at 30. In Appellants' view, the Examiner does not
show where a user defines a new DTC. Reply Br. 8.
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Analysis
The issue here turns on the meaning of a "user defined fault code."
According to Appellants, the Specification states that a "fault code is
generally a numeric or alphanumeric value that can be stored using minimal
memory resources." App. Br. 28 (citing Spec. ,r 6). We emphasize
"generally" here because it indicates that a fault code need not be a numeric
or alphanumeric value. Accord Ans. 39. Moreover, the claims do not recite
a fault code, but rather a "user defined fault code," which the claims
distinguish from "any fault code defined by a manufacturer." See
App. Br. 28. Thus, we disagree with Appellants' narrow construction of this
term. Id. at 28-29.
Of relevance, the Specification explains that "[ f]ault codes can be
retrieved from memory and used to diagnose vehicle problems." Spec. ,r 6.
The Specification further states:
In at least one exemplary embodiment, operational data is
archived whenever a specific user defined operating parameter
condition is detected, i.e., an operating parameter above or
below a predefined limit. In essence, this approach enables a
user to define a custom fault code library (it is recognized that
prior art fault codes are tied to specific operating parameters;
however, prior art fault codes are predefined at the vehicle
manufacturer level, and are not user modifiable or user
defined). This concept is referred to herein as a "user defined
fault code."
Spec. ,r 99. The Specification further states that "user defined fault codes
can include any user defined single operational parameter level, or a
combination of user defined operational parameter levels, that are different
from the fault codes defined at the vehicle manufacturer level." Id.
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( emphasis added). Thus, we understand the recited "user defined fault code"
to at least encompass this embodiment.
We agree with the Examiner that Lowrey teaches a "user defined fault
code." In particular, Lowrey teaches that the schema "describes the data"
collected by the wireless appliance from the vehicle's computer.
Lowrey ,r 42. Lowrey's scheme describes the data's corresponding location
in the computer's memory. Id. The appliance collects diagnostic data
"defined by the schema." Id. (emphasis added). To acquire additional data,
Lowrey's technician can select a new schema. Id. ,r 43.
The Examiner finds that Lowrey's user defines the gathered data
using the schema, and in this way, the schema-defined data is the user-
defined fault code. Ans. 39. We agree.
Consistent with the example described above (Spec. ,r 99), Lowrey's
technician defines operational parameter levels using the schema.
Lowrey ,r 43. For example, Lowrey's appliances use the new schema to
extract a revised data set from the vehicle's computer or send out data at a
revised frequency. Id. Notably, Lowrey uses the new schema to query data
relevant to a DTC or clear a DTC when it is no longer problematic. Id. In
this way, the data defined by Lowrey's schema includes operational
parameter levels.
Also consistent with the example described above (Spec. ,r 99) and
claim 25, Lowrey uses the gathered data to acquire additional information
for diagnosing a problem. Lowrey ,r 43. For example, Lowrey teaches that
the diagnostic method can be repeated with the newly collected data to
diagnose the vehicle's problem. Id.
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Appellants' arguments are unpersuasive because they do not address
the Examiner's specific findings. See App. Br. 29--30; Reply Br. 7-9.
Instead of addressing the data defined by Lowrey' s schema, Appellants
argue that the schema itself is not the same as the recited user-defined codes.
See App. Br. 29--30; Reply Br. 7-9. Appellants make a similar argument
regarding the DTC codes. See App. Br. 29--30; Reply Br. 8. Thus,
Appellants have not persuaded us of error in the rejection of claim 25.
Accordingly, we sustain the Examiner's rejection of claim 25 and the
rejection of claims 11, 13, and 14, which are not separately argued with
particularity (App. Br. 30; Reply Br. 7-9).
THE REMAINING OBVIOUSNESS REJECTIONS
Claims 12 and 20 depend from claim 25. In arguing for the
patentability of claims 12 and 20, Appellants refer to the arguments
presented for independent claim 25. App. Br. 30; Reply Br. 7-9. Thus, for
the reasons discussed in connection with claim 25, we also sustain the
rejections of claims 12 and 20.
Claims 3, 5-7, 10, 17, and 21-23 depend from one of claims 27 and
28. The additional references were not relied upon to teach the limitation
that is missing from Picard. See Final Act. 13-27, 38--40, and 41--43. Thus,
these references do not cure the deficiency discussed above. App. Br. 30.
Accordingly, we do not sustain the Examiner's rejections of dependent
claims 3, 5-7, 10, 17, and 21-23 for the same reasons discussed above in
connection with claims 27 and 28.
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DECISION
We affirm-in-part the Examiner's decision to reject of claims 2-8, 10-
14, 16, 17, 19-25, 27, and 28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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