Ex Parte Morgan et al

Patent Trial and Appeal BoardOct 10, 2017

14290588 (P.T.A.B. Oct. 10, 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. 14/290,588 05/29/2014 Gerald A. MORGAN 7065-04401 4111 23505 7590 CONLEY ROSE, P.C. 575 N. Dairy Ashford Road Suite 1102 HOUSTON, TX 77079 EXAMINER SHAAWAT, MUSSA A ART UNIT PAPER NUMBER 3665 NOTIFICATION DATE DELIVERY MODE 10/12/2017 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): pathou @conleyrose.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GERALD A. MORGAN, CHRISTOPHER M. MACHECA, and STANLEY G. SCHWARZ Appeal 2016-0007121 Application 14/290,5 8 82 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—14. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed March 24, 2015) and Reply Brief (“Reply Br.,” filed October 5, 2015), and the Examiner’s Answer (“Ans.,” mailed August 6, 2015) and Final Office Action (“Final Act.,” mailed February 6, 2015). 2 Appellants identify Gordon Howard Associates, Inc. of Littleton, Colorado as the real party in interest. App. Br. 3. Appeal 2016-000712 Application 14/290,588 CLAIMED INVENTION Appellants’ claimed invention relates to “systems and methods of associating a tracking device with a specific asset, such as a vehicle, and subsequently tracking [the] location of the asset” (Spec. 121). Claims 1 and 7 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: coupling a tracking device to a vehicle being part of a dealer inventory, the vehicle having an identification number; associating the identification number with the tracking device; creating a geo-fence boundary containing a location of the vehicle; and sending a first message to a lien-holder indicating the vehicle has crossed the geo-fence boundary. REJECTIONS Claims 1—14 are rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 1—14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Doyle (US 2007/0176771 Al, pub. Aug. 2, 2007) and Smith et al. (US 6,611,686 Bl, iss. Aug. 26, 2003) (hereinafter “Smith”). ANALYSIS Non-Statutory Subject Matter Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and 2 Appeal 2016-000712 Application 14/290,588 abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Banklnt’l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 134 S. Ct. at 2355. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297). The Examiner finds here that the claims are directed to tracking vehicles using a geo-fence boundary and, therefore, to an abstract idea (Final Act. 2—3). But the Examiner does not explain how, and we fail to see how, coupling a tracking device, i.e., a physical device, to a vehicle in a dealer inventory, i.e., another physical object, constitutes an abstract idea. Independent claims 1 and 7 are admittedly broad, and, if issued, could have broad exclusionary effect. But the mere fact that the claims are broad does not mean that the claims are directed to an abstract idea. The Examiner’s characterization of the claims does not account for the step of “coupling a tracking device to a vehicle,” as recited in claims 1 3 Appeal 2016-000712 Application 14/290,588 and 7, and does not reflect the character of the claims as a whole. Therefore, we do not sustain the Examiner’s rejection of claims 1—14 under 35 U.S.C. §101. Obviousness Independent Claim 1 and Dependent Claims 1—6 First, by way of background, Doyle is directed to a method and apparatus for asset geo-fencing, and discloses that an asset tracking unit, associated with an asset, determines that the asset is located at a site and establishes a geo-fence (Doyle, Abstract). The tracking unit monitors the location of the asset and transmits an alert to a central dispatch if the asset moves beyond the geo-fence boundary (id.; see also id. 1 19). More specifically, Doyle discloses that the tracking unit is coupled to the asset, i.e., physically affixed to the asset or built into the asset, and includes position sensing receivers capable of providing the location of the tracking unit and, thus, also providing the position of the asset (id. 118). The tracking unit also includes a unique identification number that is associated with the asset to which the tracking unit is coupled (id. 119). In rejecting independent claim 1 under § 103(a), the Examiner notes that although Doyle discloses associating a tracking device to a particular asset to be tracked and sending data from the tracking device to a remote server, Doyle does not expressly teach “the vehicle having an identification number”; “associating the identification number with the tracking device”; or “sending a first message to a lien-holder indicating the vehicle has crossed the geo-fence boundary,” as called for in claim 1 (Final Act. 4). The Examiner cites Smith to cure the deficiencies of Doyle (id.). And the Examiner concludes that it would have been obvious to a person of ordinary 4 Appeal 2016-000712 Application 14/290,588 skill in the art at the time of Appellants’ invention to “incorporate the teachings of Smith into the disclosure of Doyle in order to allow the user to more accurately and efficiently track a vehicle and notify the appropriate personal [sic] of the vehicle being tracked” {id. at 4—5 (citing Doyle, col. 7, 1. 64-col. 8,1. 38; col. 13,11. 10-60)). Appellants argue that the rejection cannot be sustained because rather than being associated with the vehicle and used to associate the tracking device with the vehicle, “[i]n Smith, the identification number/pin number is a number associated with the tracking device, and the identification numbers are used to identify the tracking device” (App. Br. 12; see also Reply Br. 5— 6 (charging the Examiner with misrepresenting the cited portion of Smith)). We have carefully reviewed the cited portion of Smith, on which the Examiner relies. And we agree with the Examiner that Smith discloses “associating the [vehicle] identification number with the tracking device,” as called for in claim 1. In particular, Smith discloses that when, for example, a client, who has four vehicles that are being monitored, wishes to know the whereabouts of each vehicle, the client logs onto the system (or simply calls an operator) and supplies “the appropriate identification number,” i.e., the identification number for the vehicle being tracked {see Smith, col. 13,11. 20—23). The client request is received by server 104 (Fig. 2) and server 104 contacts database 106, which places the message on a table of outgoing messages {id., col. 13,11. 23—28). A server program takes the message from the table and sends the message to a transmitter with “the correct pin numbers for identification of the particular four monitoring units to be contacted”; “[t]he message [i.e., the client request that includes the client-supplied 5 Appeal 2016-000712 Application 14/290,588 identification number] is then sent out, and due to the identification numbers, the appropriate four monitoring units 10 respond to the request” {id., col. 13,11. 31—38). In other words, the monitoring units to be contacted and their respective pin numbers are determined “due to the identification numbers,” i.e., the client-provided identification numbers for the vehicles with which the tracking devices are associated. In view of the foregoing, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a). We also sustain the rejection of dependent claims 2—6, which are not argued separately. Independent Claim 7 and Dependent Claims 8—14 Appellants argue that independent claim 7 is allowable for the same reasons set forth with respect to claim 1 (App. Br. 13). We are not persuaded for the reasons set forth above that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a). Therefore, we sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent clam 7, and claims 8—14, which depend therefrom. DECISION The Examiner’s rejection of claims 1—14 under 35 U.S.C. § 101 is reversed. The Examiner’s rejection of claims 1—14 under 35 U.S.C. § 103(a) is affirmed. 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 6