Ex Parte Prakah-Asante et al

Patent Trial and Appeal Board

Aug 10, 2017

14529704 (P.T.A.B. Aug. 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.
14/529,704 10/31/2014 Kwaku O. Prakah-Asante 83476897 2385
28395 7590 08/14/2017
RROOKS KTTSHMAN P C /FfTET EXAMINER
1000 TOWN CENTER BRUSHABER, FREDERICK M
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
08/14/2017 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):
docketing @brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KWAKU O. PRAKAH-ASANTE,
HSIN-HSIANG YANG, FLING TSENG, and
STEVEN JOSEPH SZWABOWSKI1
(Applicant: Ford Global Technologies, LLC)
Appeal 2017-004300
Application 14/529,704
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—4, 7—12, 15—18, and 20. Appellants have canceled
claims 5, 6, 13, 14, and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Ford Global
Technologies, LLC. App. Br. 2.
Appeal 2017-004300
Application 14/529,704
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "generally
relate to a method and apparatus for predictive driving mode learning and
enablement." Spec. 11.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A system comprising:
a processor configured to:
access driver-specific driving-mode-change data for a
current vehicle location;
determine, based on the accessed data, if a vehicle
driving-mode-change at the vehicle location previously
occurred sufficiently to cross a predefined threshold ratio of
occurrences to number of instances the vehicle was at the
vehicle location; and
if the vehicle driving-mode-change occurred more than
the threshold ratio, automatically change a vehicle driving­
mode to a driving-mode associated with the driving-mode-
change.
2 Our Decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Aug. 22, 2016); Reply Brief ("Reply Br.," filed Jan. 9, 2017); Examiner's
Answer ("Ans.," mailed Nov. 9, 2016); Final Office Action ("Final Act.,"
mailed Apr. 6, 2016); and the original Specification ("Spec.," filed
Oct. 31,2014).
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Application 14/529,704
Rejections on AppeaP
Rl. Claims 1—4, 7—12, 15—18, and 20 stand rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2.
R2. Claims 1—4, 7—12, 15, and 16 stand rejected under 35 U.S.C.
§ 112(b) as being indefinite. Final Act. 3.
ISSUES AND ANALYSIS
We agree with particular arguments advanced by Appellants with
respect to Rejections Rl and R2 of claims 1—4, 7—12, 15—18, and 20 for the
specific reasons discussed below.
1. $ 101 Rejection Rl of Claims 1—4, 7—12, 15—18, and 20
Issue 1
Appellants argue (App. Br. 6—7; Reply Br. 2-4) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being drawn to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under § 101, did the Examiner err in finding the claimed invention is
directed to a judicial exception and is thus patent-ineligible?
3 We note claim 20 depends from canceled claim 19. In the event of further
prosecution, we invite the Examiner's attention to ascertain either an
objection or rejection of claim 20 under 35 U.S.C. § 112(b) as being
indefinite.
3
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Application 14/529,704
Analysis
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo
566 U.S. at 71; Alice, 134 S. Ct. at 2354. Accordingly, laws of nature,
natural phenomena, and abstract ideas are not patent-eligible subject matter.
Id.
The Supreme Court's two-part Mayo!Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Id. at 2355. If so, we "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." Id. at
2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps4 of the Alice
framework are related, the "Supreme Court's formulation makes clear that
the first-stage filter is a meaningful one, sometimes ending the § 101
inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
4 Applying this two-step process to claims challenged under the abstract
idea exception, the courts typically refer to step one as the "abstract idea"
step and step two as the "inventive concept" step. Affinity Labs of Tex., LLC
y. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
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Application 14/529,704
Cir. 2016). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea'" for the purposes of step one.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353—54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Id. (internal citation omitted).
If the concept is directed to a patent-ineligible concept, we proceed to the
"inventive concept" step. For that step we must "look with more specificity
at what the claim elements add, in order to determine 'whether they identity
an "inventive concept" in the application of the ineligible subject matter' to
which the claim is directed." Affinity Labs, 838 F.3d at 1258 (quoting Elec.
Power Grp. 830 F.3d at 1353).
Turning to the claimed invention, claim 1 recites a system comprising:
a processor configured to . . .
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determine, based on the accessed data, if a vehicle
driving-mode-change at the vehicle location previously
occurred sufficiently to cross a predefined threshold ratio of
occurrences to number of instances the vehicle was at the
vehicle location; and
if the vehicle driving-mode-change occurred more than
the threshold ratio, automatically change a vehicle driving­
mode to a driving-mode associated with the driving-mode-
change.
Claim l.5
In the rejection, the Examiner concludes:
Claim(s) 1—4, 7—12, 15—18, and 20 is/are directed to an idea of
itself of mathematical computations which changes a drive
mode this is like comparing new and stored information and
using rules to identity options. The claim(s) does/do not include
additional elements that are sufficient to amount to significantly
more than the judicial exception because. System claims: the
only hardware recited is a processor which appears generic;
changing the drive-mode may be a change in operation
parameters within the processor which is not significantly more
than the judicial exception of comparing new and stored
information and using rules to identity options. Computer-
implemented method: only includes the generic computer in the
preamble which is not significantly more than the judicial
exception of comparing new and stored information and using
rules to identity options.
Final Act. 2.
Under step one, we disagree with the Examiner that the inventions
claimed in claims 1, 9, and 17 are directed to an abstract idea, i.e.,
mathematical computations carried out by using a computer. We disagree
5 Similarly, independent claims 9 and 17 recite a computer-implemented
method and a system, respectively, of commensurate scope in the aspects of
their recitations relevant to our § 101 analysis.
6
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with the Examiner because we conclude the claim limitations use concrete,
tangible criteria to carry out a tangible action.
In particular, the system determines whether a vehicle driving-mode-
change at the vehicle location previously occurred sufficiently to cross a
predefined threshold ratio of occurrences to number of instances the vehicle
was at the vehicle location. We find this to not be abstract in the least
because such a determination is a concrete, factual matter, i.e., whether a
vehicle driving mode changed at a location, and whether the number of
times such a change occurred relative to the number of instances the vehicle
was at the particular location is greater than a threshold ratio of occurrences.
We further find "automatically chang[ing] a vehicle driving-mode to a
driving-mode associated with the [determined] driving-mode-change is
equally concrete, and non-abstract.
Further, the Examiner states "[wjithin the claim Applicant offers no
direction as to what 'a driving-mode' or 'the driving-mode-change' is limited
to." Ans. 3. While we agree the claim lacks such an explicit definition,
claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). "[T]he PTO must give claims their
broadest reasonable [construction] consistent with the [specification]." In re
Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal
quotation marks and citation omitted). Therefore, "we look to the
specification to see if it provides a definition for claim terms, but otherwise
apply a broad interpretation." In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007); see also In re Suitco Surface, Inc., 603 F.3d
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Application 14/529,704
1255, 1259 (Fed. Cir. 2010). "In some cases, the ordinary meaning of claim
language as understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in such cases involves
little more than the application of the widely accepted meaning of commonly
understood words." Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir.
2005).
Appellants provide specific examples of how a vehicle driving mode
may be construed. "The illustrative embodiments provide exemplary
systems and methods for driver choice learning for vehicle mode selection.
This provides driving-mode (e.g., without limitation, sport mode, comfort
mode, snow mode, gravel mode, sandy mode, fuel-eco mode, etc.)
prediction and selection based on previously observed driver behavior."
Spec. 127. Further, "[t]he driver . . . has the ability to change driving modes
at any desired time 207. This can be switching to a traction enhanced mode
in slippery conditions, a sport driving mode for aggressive handling, a
rough-terrain mode for off-roading or gravel/dirt roads, etc." Spec. 132.
We conclude this discussion in the Specification would adequately
apprise a person of ordinary skill in the art as to what is meant by the phrase
"vehicle driving-mode."6
6 "[T]he ordinary and customary meaning of a claim term is the meaning
that the term would have to a person of ordinary skill in the art in question at
the time of the invention, i.e., as of the effective filing date of the
application." Phillips, 415 F.3d at 1313 (en banc) {citing Innova/Pure
Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed.
Cir. 2004).
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Because we conclude the claims are not directed to a judicial
exception, i.e., an abstract idea, we need not proceed to the "inventive
concept" portion of the two-step Alice analysis.
Accordingly, based upon the findings above, on this record, we are
persuaded of error in the Examiner's conclusion that claims 1, 9, and 17 and
claims depending therefrom are directed to patent-ineligible subject matter,
and we do not sustain the § 101 rejection.
2. $ 112(b) Rejection R2 of Claims 1—4, 7—12, 15, and 16
Issue 2
Appellants argue (App. Br. 7—8) the Examiner's rejection of claims 1
and 9 under 35 U.S.C. § 112(b) as being indefinite is in error. These
contentions present us with the following issue:
Did the Examiner err in concluding the phrase "the vehicle location"
recited in claims 1 and 9 lacks sufficient antecedent basis under § 112(b)?
See Final Act. 3; Ans. 4.
Analysis
Appellants contend, "[tjhere is no prohibition against omitting an
adjective, when the meaning of the phrase is clear and unambiguous, as is
the case here." App.Br. 7. "A skilled artisan could reasonably ascertain that
'the vehicle location' referred to 'the current vehicle location' because there is
literally no other recitation of vehicle location in the claim to which 'the
vehicle location' could refer." App. Br. 8 (emphasis omitted).
The test for definiteness under 35 U.S.C. § 112(b) is whether "those
skilled in the art would understand what is claimed when the claim is read in
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light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted).
We have reviewed the claim language and supporting disclosure in the
Specification, and conclude the recited phrase "the vehicle location" refers
to, as its antecedent, "a current vehicle location" (emphasis added), and also
find a person with skill in the art would not be confused by this recitation,
particularly in light of the Specification. See, e.g., Spec. 132 ("Different
mode selection may be made for the same locations/conditions based on
different drivers and their individual preferences.").
Accordingly, based upon the factual findings and conclusions above,
on this record, we are persuaded of error in the Examiner's conclusion that
claims 1 and 9, and claims depending therefrom are indefinite, and we do
not sustain the § 112(b) rejection.
CONCLUSIONS
(1) The Examiner erred with respect to Rejection R1 of claims 1—4,
7—12, 15—18, and 20 under 35 U.S.C. § 101, and we do not sustain the
rejection.
(2) The Examiner erred with respect to Rejection R2 of claims 1—4,
7—12, 15, and 16 under 35 U.S.C. § 112(b), and we do not sustain the
rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1—4, 7—12,
15—18, and 20.
REVERSED
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