Ex Parte ROCKWELL et al

Patent Trial and Appeal Board

Jan 14, 2019

14282015 (P.T.A.B. Jan. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/282,015 05/20/2014
28395 7590 01/16/2019
BROOKS KUSHMAN P.C./FG1L
1000 TOWN CENTER
22NDFLOOR
SOUTHFIELD, MI 48075-1238
FIRST NAMED INVENTOR
Mark Anthony ROCKWELL
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.
83430677 4939
EXAMINER
INGRAM, THOMAS P
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
01/16/2019 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 MARK ANTHONY ROCKWELL and
DOUGLAS RAYMOND MARTIN
Appeal2018-004973
Application 14/282,015
Technology Center 3600
Before JAMES P. CALVE, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.
FITZPATRICK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1--4, 6-10, 12-20. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The real party in interest is identified as Ford Global Technologies, LLC.
Appeal Br. 1.
Appeal2018-004973
Application 14/282,015
STATEMENT OF THE CASE
The Specification
According to the specification, the "disclosure generally relates to a
module interface for facilitating software updates to modules of a receiving
vehicle." Spec. ,II. The specification explains that, in the prior art, "[ t Jo
update a software version of a component of a vehicle, the vehicle may be
driven to a dealership and serviced by a technician." Id. ,I2.
In contrast, the specification discloses a system in which "a processor
of a vehicle [is] configured to communicate [ wirelessly] with an update
server hosting software updates." Id. ,I3. Of particular significance is the
specification's description of an embodiment comprising the following:
a computing system of a vehicle configured to request consent
from a user to install a software update, when consent is received,
install the software updates using a software update management
module configured to invoke software update mode for a vehicle
module identified by the software update, and apply the software
update to the vehicle module, and when consent is not received,
display an indication that software updates are available.
Id. ,I4. The indication "may be included as an icon within a gauge cluster of
the vehicle 31 or "be displayed on the display 4 of the VCS 1 within a user
interface 304 of the VCS 1."
The Rejected Claims
Claims 1--4, 6-10, and 12-20 stand rejected. Final Act. 1. Claims 5
and 11 are cancelled. Appeal Br. Claims App 'x. 2-3. Independent claims 1,
8, and 16 are representative and reproduced below.
1. A system comprising:
a processor of a vehicle configured to communicate with
an update server hosting software updates; and
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a software update management module connected to the
processor and vehicle modules over a vehicle bus and
configured to
determine that a software update is an optional
software update based on a data indicator associated with
the software update, wherein the software update is
configured to at least one of add an additional feature to a
vehicle module or adjust a configuration of an existing
feature of a vehicle module,
provide, in a head unit display of the vehicle, an
indication of an optional status of the software update
and a request for consent from a user to install the
optional software update,
invoke a software update mode responsive to
receipt of a message indicating user consent to install the
software update,
send an update command over the vehicle bus to
invoke the software update mode for the vehicle module
identified by the software update,
apply the software update to the vehicle module by
installing the update to a memory of the vehicle module,
and
display an indication as an icon within a gauge
cluster of the vehicle responsive to lack of receipt of the
user consent.
8. A system comprising:
a gauge cluster of a vehicle, and
a computing system of the vehicle programmed to
request consent to install a software update
indicated as being an optional software update to add an
additional feature to the vehicle or adjust a configuration
of an existing feature of the vehicle, and
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Application 14/282,015
when consent is not received, display an indication
in the gauge cluster that the optional software update is
available.
16. A method comprising:
displaying, as an icon in a user interface of a vehicle, an
indication that an optional software update configured to at
least one of add an additional feature to a vehicle or adjust a
configuration of an existing feature of the vehicle is available
for installation; and
installing the software update by a computing system of
the vehicle responsive to receipt of user consent to install the
software update.
Appeal Br. Claims App'x 1-3.
The Appealed Rejections
The following rejections are before us for review:
1. claims 1--4, 6-10, 12-20 under a judicial exception to 35 U.S.C.
§ 101 (Final Act. 4);
2. claims 1 and 3 under 35 U.S.C. § 103 as unpatentable over Pal,2
Gudell, 3 and Roy4 (id. at 6);
3. claims 2 and 7 under 35 U.S.C. § 103 as unpatentable over Pal,
Gudell, Roy, and Petroski 5 (id. at 9);
2 US 2014/0380296 Al, published Dec. 25, 2014 ("Pal").
3 US 2015/0100623 Al, published Apr. 9, 2015 ("Gudell").
4 US 2015/0191122 Al, published July 9, 2015 ("Roy").
5 US 2014/0297225 Al, published Oct. 2, 2014 ("Petroski").
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Application 14/282,015
4. claims 4 and 5 under 35 U.S.C. § 103 as unpatentable over Pal,
Gudell, Roy, and Jang6 (id. at 1 O);
5. claim 6 under 35 U.S.C. § 103 as unpatentable over Pal, Gudell,
Roy, Jang, and Drope 7 (id. at 12);
6. claims 8, 10, 12, 13, 16, and 18-20 under 35 U.S.C. § 103 as
unpatentable over Pal, Gudell, Jang, Roy, and Hoffman8 (id. at 13 9);
7. claims 9 and 17 under 35 U.S.C. § 103 as unpatentable over
Pal, Gudell, Jang, Hoffman and Official Notice (id. at 18);
8. claim 14 under 35 U.S.C. § 103 as unpatentable over Pal,
Gudell, Roy, Jang, Hoffman, and Drope (id. at 19); and
9. claim 15 under 35 U.S.C. § 103 as unpatentable over Pal,
Gudell, Jang, Hoffman, and Petroski (id. at 20).
DISCUSSION
Rejection 1
The Examiner rejected claims 1--4, 6-10, and 12-20 under the judicial
exception to 35 U.S.C. § 101. Final Act. 4; see, e.g., Alice Corp. Pty. Ltd. v.
CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) ("We have long held that this
provision [35 U.S.C. § 101] contains an important implicit exception: Laws
of nature, natural phenomena, and abstract ideas are not patentable.").
6 US 2014/0325500 Al, published Oct. 30, 2014 ("Jang").
7 US 2011/0113122 Al, published May 12, 2011 ("Drope").
8 US 2014/0109075 Al, published Apr. 17, 2014 ("Hoffman").
9 The Examiner omits claim 19 from his heading on page 13 of the Final
Action, but goes on to reject it on page 17 of the Final Action. Final Act. 13,
17.
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In analyzing patent-eligibility questions under the judicial exception
to 35 U.S.C. § 101, we "first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355. If the
claims are determined to be directed to an ineligible concept, then we
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 97 (2012)).
On January 7, 2019, the Director issued "2019 Revised Patent Subject
Matter Eligibility Guidance," which explains how we must analyze patent-
eligibility questions under the judicial exception to 35 U.S.C. § 101. 84 Fed.
Reg. 50-57 ("Revised Guidance").
Per the Revised Guidance, the first step of Alice (i.e., Office Step 2A)
consists of two prongs. In Prong One, we must determine whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon. 84 Fed. Reg. at 54 (Section III.A. I.). If it does not, the claim
is patent eligible. Id. With respect to the abstract idea category of judicial
exceptions, an abstract idea must fall within one of the enumerated grouping
of abstract ideas in the Revised Guidance or be a "tentative abstract idea,"
with the latter situation predicted to be rare. Id. at 51-52 (Section I,
enumerating three groupings of abstract ideas), 54 (Section III.A. I.,
describing Step 2A Prong One), 56-57 (Section III.D., explaining the
identification of claims directed to a tentative abstract idea).
If a claim does recite a judicial exception, we proceed to Step 2A
Prong Two, in which we must determine if the "claim as a whole integrates
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the recited judicial exception into a practical application of the exception."
Id. at 54 (Section II.A.2.) If it does, the claim is patent eligible. Id.
If a claim recites a judicial exception but fails to integrate it into a
practical application, we then proceed to the second step of Alice (i.e., Office
Step 2B). In that step, we then evaluate the additional limitations of the
claim, both individually and as an ordered combination, to determine
whether they provide an inventive concept. Id. at 56 (Section III.B.). In
particular, we look to whether the claim:
Id.
• Adds a specific limitation or combination of limitations
that are not well-understood, routine, conventional in the
field, which is indicative that an inventive concept may be
present; or
• simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.
Here, the Examiner determined that the "claims are directed to an
abstract idea of itself of updating software, which includes the nominal steps
of gathering data, processing data, and storing data." Final Act. 4--5
(parentheticals omitted). "Alternatively, [the Examiner determined,] the
claims are also directed towards a certain method of organizing human
activity." Ans. 4. The Examiner explained the latter as follows:
Id.
Analogously in a hypothetical scenario, a service provider can
approach a user to request an optional service, that user would
then decide to accept or decline the optional service. Upon user
consent to perform the service, the service provider would then
perform the agreed upon service.
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As such, the Examiner has not determined that the claims recite an
abstract idea that falls within one of the enumerated grouping of abstract
ideas in the Revised Guidance. See 84 Fed. Reg. at 52. Additionally, and
even if one of the Examiner-asserted abstract ideas were a "tentative abstract
idea," the claims nonetheless would not be "directed to" an abstract idea
under the Revised Guidance. That is because the claims as a whole integrate
the asserted abstract ideas (i.e., updating software and organizing human
activity) into specific practical applications of those ideas. For example,
claim 1 is directed to a practical application of updating software specifically
for a vehicle module, in which user consent is required and in which lack of
receipt of user consent is communicated to a user via an icon within the
gauge cluster of a vehicle. Claim 1 also is directed to providing in a head
unit display of the vehicle an indication of an optional status of the software
update and a request for consent to install the optional update and upon
receipt of user consent sends an update command over the vehicle bus and
installs the update to a memory of the vehicle module.
For the foregoing reasons, we reverse the Examiner's rejection of
claims 1--4, 6-10, and 12-20 under the judicial exception to 35 U.S.C.
§ 101.
Rejection 2
The Examiner rejected claims 1 and 3 under 35 U.S.C. § 103 as
unpatentable over Pal, Gudell, and Roy. Final Act. 6.
Claim 1 recites "display an indication as an icon within a gauge
cluster of the vehicle responsive to lack of receipt of the user consent."
Appeal Br. Claims App'x 1. For this limitation, the Examiner relied
exclusively on Roy, stating:
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Pal fails to explicitly disclose wherein the user interface is a head
unit display and displaying an indication as an icon within a
gauge cluster of the vehicle responsive to lack of receipt of the
user consent. However, Roy teaches wherein the user interface
is a head unit display and displaying an indication as an icon
within a gauge cluster of the vehicle responsive to lack of receipt
of the user consent (see at least Fig 1; i-f20-22; touch screen 108
of an in-vehicle computing system 109 (e.g., an infotainment
system . . . instrument cluster 110 . . . claim2: wherein the
notification includes one or more of available software updates
for the in -vehicle computing system).
Final Act. 8.
We agree that Roy's "in-vehicle computing system 109" and
"instrument cluster 11 O" correspond respectively with claim 1 's "head unit
display" and "gauge cluster." Compare Roy Fig. 1, ref. 109, 110, with Spec.
Fig. 3, ref. 302, 304. However, we do not adopt the Examiner's finding that
"Roy teaches ... displaying an indication as an icon within a gauge cluster
of the vehicle responsive to lack of receipt of the user consent." See Final
Act. 8. Instead, we agree with Appellant that Roy fails to this feature of
claim 1. See Appeal Br. 11.
Roy does teach providing notifications-including notifications about
software updates (see Roy claim 2}-but its notifications are presented "via
an in-vehicle computing system" (i.e., the asserted head unit) and not via the
instrument/gauge cluster. Id. ,I4; see also id. ,I22 (stating that "[i]nstrument
cluster 110 may include various gauges such as a fuel gauge, tachometer,
speedometer, and odometer, as well as indicators and warning lights" but not
mentioning software update notifications); see also Appeal Br. 11 ( arguing
the same).
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In the Answer, the Examiner states that "Roy teaches that there exist
instrument clusters within vehicle on which indicators and notifications can
be displayed." Ans. 5 (citing Roy i-f22). We agree, but this finding is too
general and not commensurate with the scope of the claim. Not every
indication or notification within a gauge cluster meets the limitation at issue.
That limitation recites "an indication as an icon within a gauge cluster of the
vehicle responsive to lack of receipt of the user consent." Appeal Br. Claims
App 'x 1. The only indications/notifications taught by Roy within the
instrument/ gauge cluster are conventional ones "such as a fuel gauge,
tachometer, speedometer, and odometer, as well as indicators and warning
lights." Roy i-f22.
For the foregoing reasons, we reverse the Examiner's rejection of
claims 1 and 3 under 35 U.S.C. § 103 as unpatentable over Pal, Gudell, and
Roy.
Rejections 3-5
The Examiner rejected, under 35 U.S.C. § 103, claims 2 and 7 as
unpatentable over Pal, Gudell, Roy; Petroski and claims 4 and 5 under as
unpatentable over Pal, Gudell, Roy, and Jang; and claim 6 as unpatentable
over Pal, Gudell, Roy, Jang, and Drope. Final Act. 9-10, 12.
All of these claims depend from claim 1. In rejecting these dependent
claims, the Examiner did not rely on any other reference to cure the
deficiency of Roy as applied to claim 1. Accordingly, we likewise reverse
the prior art rejections of these claims, claims 2 and 4--7. See In re Fine, 837
F.2d 1071, 1076 (Fed. Cir. 1988) ("Dependent claims are nonobvious under
section 103 if the independent claims from which they depend are
nonobvious.").
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Rejection 6
The Examiner rejected claims 8, 10, 12, 13, 16, and 18-20 under
35 U.S.C. § 103 as unpatentable over Pal, Gudell, Jang, Roy, and Hoffman.
Final Act. 13.
Independent claim 8 recites "display an indication in the gauge cluster
that the optional software update is available." Appeal Br. Claims App 'x 2.
Claims 10, 12, and 13 incorporate this limitation because they depend from
claim 8. Id. at 3.
For this limitation, the Examiner relied exclusively on Roy in the
same manner as with respect to the similar of claim 1. Compare Final
Act. 15, with id. at 8. Thus, for the same reasons with respect to the prior art
rejection of claim 1, we reverse the Examiner's rejection of claim 8, 10, 12,
and 13 under 35 U.S.C. § 103 as unpatentable over Pal, Gudell, Jang, Roy,
and Hoffman.
Independent claim 16 recites "displaying, as an icon in a user
interface of a vehicle, an indication that an optional software update
configured to at least one of add an additional feature to a vehicle or adjust a
configuration of an existing feature of the vehicle is available for
installation." Appeal Br. Claims App'x 3 (emphasis added). Notably,
claim 16 does not recite displaying an indication in a gauge cluster.
Yet, Appellant's argument in opposition to the rejection of claim 16
refers back to, and relies on, its argument for claims 1 and 8 that Roy fails to
teach an indicator in a gauge cluster. Appeal Br. 13. That argument is not
commensurate with the scope of claim 16. Accordingly, Appellant has
failed to apprise us of error in the Examiner's prior art rejection of claim 16.
Appellant does not provide any additional argument for claims 18-20, which
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depend from claim 16. Thus, for the foregoing reasons, we affirm the
Examiner's rejection of claim 16 and 18-20 under 35 U.S.C. § 103 as
unpatentable over Pal, Gudell, Jang, Roy, and Hoffman.
Rejection 7
The Examiner rejected claims 9 and 17 under 35 U.S.C. § 103 as
unpatentable over Pal, Gudell, Jang, and Hoffman. Final Act. 18. Appellant
does not provide any additional argument for these claims, which depend
respectively from claims 8 and 16.
Thus, we reverse the rejection of claim 9, which depends from claim
8, and we affirm the rejection of claim 17, which depends from claim 16.
See In re Fine, 837 F.2d at 1076.
Rejections 8 and 9
The Examiner rejected, under 35 U.S.C. § 103, claim 14 as
unpatentable over Pal, Gudell, Roy, Jang, Hoffman, and Drope; and claim
15 as unpatentable over Pal, Gudell, Jang, Hoffman, and Petroski. Final
Act. 19-20. Appellant does not argue these rejections. See generally
Appeal Br. Accordingly, we summarily affirm the prior art rejections of
claims 14 and 15.
CONCLUSION
The Examiner's rejection of claims 1--4, 6-10, and 12-20 under the
judicial exception to 35 U.S.C. § 101 is reversed.
The Examiner's prior art rejections of claims 1-10, 12, and 13 are
reversed.
The Examiner's prior art rejections of claims 14--20 are affirmed.
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TIME PERIOD
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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