FORD GLOBAL TECHNOLOGIES, LLC

Patent Trials and Appeals BoardMar 31, 2021

2020003064 (P.T.A.B. Mar. 31, 2021)

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. 15/654,155 07/19/2017 Steven Yellin Schondorf 83851777 9620 28395 7590 03/31/2021 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER KISWANTO, NICHOLAS ART UNIT PAPER NUMBER 3664 NOTIFICATION DATE DELIVERY MODE 03/31/2021 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 STEVEN YELLIN SCHONDORF, ROBERT BRUCE KLEVE, JOHN ROBERT VAN WIEMEERSCH, DILIP B. PATEL, BRIAN BENNIE, and GREGORY SWADLING ____________ Appeal 2020-003064 Application 15/654,155 Technology Center 3600 ____________ Before KENNETH G. SCHOPFER, TARA L. HUTCHINGS, and ROBERT J. SILVERMAN, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Specification (“Spec.,” filed July 19, 2017), Appeal Brief (“Appeal Br.,” filed Nov. 5, 2019), and Reply Brief (“Reply Br.,” filed Mar. 17, 2019), and the Examiner’s Final Office Action (“Final Act.,” mailed June 13, 2019), and Answer (“Ans.,” mailed Jan. 23, 2020). Appellant identifies Ford Global Technologies, LLC as the real party in interest. Appeal Br. 2. Appeal 2020-003064 Application 15/654,155 2 CLAIMED INVENTION Claims 1, 12, and 20 are the independent claims on appeal. Claim 12, reproduced below, is illustrative of the claimed subject matter: 12. A computer-implemented method, comprising: executing a predefined diagnostic test of a user-specified vehicle component responsive to a user instruction to perform a diagnosis of the component, and reporting test results to the user. REJECTIONS Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 1–5, 8–10, 12, 13, and 15–20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Cowelchuk (US 7,170,400 B2, iss. Jan. 30, 2007). Claims 6 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable over Cowelchuk and Schuyler (US 6,429,773 B1, iss. Aug. 6, 2002). Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Cowelchuk and Downton (US 2011/0031015 A1, pub. Feb. 10, 2011). Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over Cowelchuk and Iggulden (US 7,379,541 B2, pub. May 27, 2008). ANALYSIS Patent-Ineligible Subject Matter Principles of Law 35 U.S.C. § 101 An invention is patent eligible if it is a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. Appeal 2020-003064 Application 15/654,155 3 However, the Supreme Court has long interpreted § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-part framework, described in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice, “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Id. According to Supreme Court precedent, concepts determined to be abstract ideas include certain methods of organizing human activity, such as fundamental economic practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). 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, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an element or Appeal 2020-003064 Application 15/654,155 4 combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217–18 (alteration in original). USPTO Guidance We are also guided by U.S. Patent and Trademark Office (“USPTO”) guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), which has been incorporated into the MPEP §§ 2104–06. “The guidance sets out agency policy with respect to the USPTO’s interpretation of the subject matter eligibility requirements of 35 U.S.C. § 101 in view of decisions by the Supreme Court and the [U.S. Court of Appeals for the] Federal Circuit.” Guidance, 84 Fed. Reg. at 51. However, the “guidance . . . does not create any right or benefit, substantive or procedural, enforceable by any party against the USPTO” and “[r]ejections will continue to be based upon the substantive law.” Id. Under the Guidance, the first step of the Mayo/Alice framework is a two-prong inquiry. MPEP § 2106.04(II)(A); see also Guidance, 84 Fed. Reg. at 54 (“Step 2A of the 2019 Revised Patent Subject Matter Eligibility Guidance is a two-prong inquiry.”). “Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon?” MPEP § 2106.04(II)(A)(1); see also Guidance, 84 Fed. Reg. at 54. For determining whether a claim recites an abstract idea, the guidance defines enumerated groupings of abstract ideas, distilled from precedent. MPEP § 2106.04(a); see also id. § 2106.04(a)(2) (defining abstract idea groupings); Guidance, 84 Fed. Reg. at 52. If the claim recites a judicial exception, then the claim requires further analysis at Prong Two. MPEP § 2106.04(II)(A)(1); Appeal 2020-003064 Application 15/654,155 5 Guidance, 84 Fed. Reg. at 54. “Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application?” MPEP § 2106.04(II)(A)(2); see also id. § 2106.04(d), Guidance, 84 Fed. Reg. at 54–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the additional elements, individually or in combination, provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An inventive concept ‘cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.’” Id. § 2106.05(I) (quoting Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)). Among the considerations in determining whether the additional elements, individually or in combination, amount to significantly more than the exception itself, we look to whether they add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56. Rejection The Examiner determined that independent claims 1, 12, and 20 recite the concept of executing a predefined diagnostic test on a user-specified component, which could be performed in the mind, and thus, covers a mental process, i.e., an abstract idea. Final Act. 2. The Examiner further determined that claims 1, 12, and 20 do not recite additional elements that integrate the abstract idea into a practical application or that amount to significantly more than the abstract idea. Id. The Examiner also determined Appeal 2020-003064 Application 15/654,155 6 that the dependent claims do not recite any additional elements that integrate the abstract idea into a practical application or amount to significantly more than the abstract idea. Id. Step One of the Mayo/Alice Framework (Guidance, Step 2A) Appellant argues claims 1–20 as a group. Appeal Br. 4–5; see also Reply Br. 2. We select claim 12 as representative. Consequently, claims 1– 11 and 13–20 stand or fall with claim 12. See 37 C.F.R. §41.37(c)(1)(iv). The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the Specification (including the claim language) that claim 12 focuses on a process that itself qualifies as an abstract idea, and not on any improvement to technology and/or a technical field. The Specification is titled “METHODS AND SYSTEMS FOR MONITORING THE CONDITION OF VEHICLE COMPONENTS FROM A NOMADIC WIRELESS DEVICE OR COMPUTER,” and describes, in the Background section, that mechanical and electrical problems with a vehicle can arise at any time. Spec. ¶ 3. A vehicle owner can take a vehicle to a specialist to examine a vehicle for potential problems, but doing so can be time consuming and expensive. Id. Paragraphs 4 through 6 describe Appeal 2020-003064 Application 15/654,155 7 known alternatives for taking the vehicle to a specialist. Appellant acknowledges that these alternatives provide certain benefits, but contends that “what is needed is a method and system for monitoring the condition of vehicle components from a remote nomadic wireless device or computer.” Id. ¶ 7. Consistent with this disclosure, claim 12 recites a computer- implemented method comprising: “executing a predefined diagnostic test . . . responsive to a user instruction to perform a diagnosis;” and “reporting test results to the user.” We agree with the Examiner that these limitations, when given their broadest reasonable interpretation, recite a method for executing a predefined diagnostic test. See Final Act. 2. This concept could be performed in the human mind (including an observation, evaluation, judgment, opinion), which falls into the “mental processes” grouping of abstract ideas. See MPEP § 2106.04(a); Guidance, 84 Fed. Reg. at 52. For example, a customer can take a vehicle to a vehicle specialist and indicate a vehicle component has a problem. The vehicle specialist could execute a predefined diagnostic test for the vehicle component, which may include observing the vehicle component, evaluating parameters associated with the vehicle component, and forming a judgment or opinion concerning the vehicle component based on the observation and evaluation. The vehicle specialist then could communicate the test results to the customer verbally or with pen and paper. Appellant argues that the claim 12 “debatably do[es] not even claim an abstract idea.” Appeal Br. 4. Specifically, Appellant asserts that “running a diagnostic test on a vehicle component is not a mental process, as the diagnostic test actually has to be run.” Id. To the extent Appellant Appeal 2020-003064 Application 15/654,155 8 contends that the claim cannot be completed mentally because it requires running a diagnostic test on a computer, not in the human mind, using a computer to perform a mental process does not render the abstract idea patent eligible. See MPEP § 2106.04(d)(I) (explaining that using a computer to perform an abstract idea is not sufficient to integrate an abstract idea into a practical application); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.”). Here, with the exception of the preamble requiring the method steps to be “computer-implemented,” there is nothing in claim 12 itself that forecloses the claim from being performed mentally or with pen and paper. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016); see also Versata Development Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent- ineligible invention could be performed via pen and paper or in a person’s mind.”). Accordingly, Appellant does not persuaded us that the Examiner erred in determining that claim 12 recites an abstract idea. We also are not persuaded by Appellant’s argument that claim 12 is not “directed to” an abstract idea because it integrates the recited abstract idea into a practical application (Step 2A, Prong Two). Appeal Br. 4. In this regard, Appellant argues that claim 12 is a “practical application allowing a user to instruct a vehicle to run a diagnostic test on one of the vehicle’s components, a feature which was not remotely common in vehicles when this claim was filed.” Id. However, the relevant question under Step 2A, Appeal 2020-003064 Application 15/654,155 9 Prong 2 is not whether the claimed invention itself is a practical application. Instead, the question is whether the claim includes additional elements beyond the judicial exception that integrate the judicial exception into a practical application. Here, claim 12 additionally recites that the method is “computer- implemented” and involves a “user-specified vehicle component.” However, these aspects of the claim are described at a high-level of generality. See, e.g., Spec. ¶¶ 17–18, 53. We find no indication in the Specification that the steps recited in claim 12 require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any allegedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). Appellant argues that “running [a] diagnostic test based on user input to the vehicle requesting the tests,” as required by the claim language, reflects a “marked improvement in the technical field of vehicle fault diagnosis” by allowing vehicles to self-diagnose problems. Appeal Br. 4. Appellant’s argument is not persuasive at least because it is not commensurate in scope with claim 12. Claim 12 does not require a vehicle to self-diagnose a problem. Instead, claim 12 recites “executing a predefined diagnostic test of a user-specified vehicle component responsive to a user instruction.” A service center could receive a user instruction to Appeal 2020-003064 Application 15/654,155 10 perform a test of a user-specified vehicle component under a broad, but reasonable, interpretation of the claim language. Here, Appellant does not persuasively argue why the vehicle running the diagnostic test, as opposed to another entity, constitutes a technological invention. It is well established that “[t]he ‘novelty’ of any element or steps in a process, [i.e., the entity executing the test], or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981). Moreover, the limitations of claim 12 do not recite technological implementation details on how to execute the claimed predefined test to perform a diagnosis of the component. Instead, claim 12 recites a computer-implemented method that includes steps for “executing” and “reporting” that are capable of being achieved by any means. Put simply, claim 12 “provides only a result-oriented solution, with insufficient detail for how [it is accomplished]. Our law demands more.” Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017). In cases involving software innovations, such as we have here, the inquiry as to whether the claims are directed to an abstract idea “often turns on whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, LLC, 822 F.3d at 1335–36). Here, we are not persuaded that running a diagnostic test of a user-specified vehicle component reflects a technological improvement so much as an improvement in the abstract Appeal 2020-003064 Application 15/654,155 11 idea. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does not protect such claims[, i.e., claims to an asserted advance in the realm of abstract ideas], without more, no matter how groundbreaking the advance.”); see also MPEP §§ 2106(d)(1); 2016.05(a). We conclude, for the reasons outlined above, that claim 12 recites a mental process, i.e., an abstract idea, and that the additional elements recited in the claim beyond the abstract idea are no more than generic computer components used as tools to perform the recited abstract idea. As such, they do not integrate the abstract idea into a practical application. See Alice, 573 U.S. at 223–24 (“[W]holly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 12 is directed to an abstract idea. Step Two of the Mayo/Alice Framework (Guidance, Step 2B) Having determined under step one of the Mayo/Alice framework that claim 12 is directed to an abstract idea, we next consider under Step 2B of the Guidance, the second step of the Mayo/Alice framework, whether claim 12 includes additional elements or a combination of elements that provides an “inventive concept,” i.e., whether the additional elements amount to “significantly more” than the judicial exception itself. MPEP § 2106.05(I); Guidance, 84 Fed. Reg. at 56. We agree with the Examiner that it does not. See Final Act. 4. Appellant argues that claim 12 is “restricted to the limited field of vehicle-self-diagnosis, which was a novel concept at the time this Appeal 2020-003064 Application 15/654,155 12 [application] was field.” Appeal Br. 4. To the extent that Appellant contends that claim 12 is patent-eligible, i.e., that the claim includes an “inventive concept,” because it is novel in view of the cited art, Appellant misapprehends the controlling precedent. Neither a finding of novelty nor a non-obviousness determination automatically leads to the conclusion that the claimed subject matter is patent eligible. Although the second step in the Mayo/Alice framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for “an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.”’ Alice, 573 U.S. at 217–18 (citation omitted). “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Myriad, 569 U.S. at 591. A novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90. Accordingly, we are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 12 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of claim 12 and claims 1–11 and 13–20, which fall with claim 12. Obviousness We are persuaded by Appellant’s argument that the Examiner erred in rejecting independent claims 1, 12, and 20 under 35 U.S.C. § 103(a) because Cowelchuk does not teach or suggest “execut[ing] a predefined diagnostic test on the user-specified component,” as recited in claim 1, and similarly recited in claims 12 and 20. The Examiner relies on column 3, line 13 to line 23 and column 8, line 37 to line 39, as disclosing the argued limitation. Appeal 2020-003064 Application 15/654,155 13 However, these portions of Cowelchuk describe a vehicle settings control unit interface in a vehicle passenger compartment that is used in conjunction with the control unit to “control, set, monitor, or modify the settings of one or more . . . parameters.” Cowelchuk 3:13–19. For example, the vehicle settings control unit interface is used to store positions of vehicle seat positions, mirror positions, and device positions. Id. at 8:12–16. The control unit can be used to check and modify any of these settings. Id. at 8:16–17. The Examiner takes the position that a diagnostic test includes checking or monitoring a vehicle parameter under the broadest, reasonable interpretation. Final Act. 3. However, we agree with Appellant that the claimed diagnostic test is a procedure for diagnosing a problem or issue with the user-specified component. See Appeal Br. 7 (“A diagnostic test is supposed to diagnose something.”). While a diagnostic test may include monitoring a vehicle parameter, we agree with Appellant that it must be performed “in the context of detecting issues and failures (i.e., diagnosis).” Id. Cowelchuk’s monitoring of user settings does not teach or suggest a procedure to diagnose a problem with a vehicle component. Accordingly, we do not sustain the Examiner’s rejection of independent claims 1, 12, and 20 under 35 U.S.C. § 103(a) as unpatentable over Cowelchuk. The rejections of dependent claims 2–11 and 13–19 do not cure the deficiencies in independent claims 1 and 12. Therefore, we also do not sustain the rejections of claims 2–11 and 13–19 for the same reasons set forth with respect to independent claims 1 and 12. Appeal 2020-003064 Application 15/654,155 14 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 1–5, 8–10, 12, 13, 15–20 103(a) Cowelchuk 1–5, 8– 10, 12, 13, 15–20 6, 14 103(a) Cowelchuk, Schuyler 6, 14 7 103(a) Cowelchuk, Downton 7 11 103(a) Cowelchuk, Iggulden 11 Overall Outcome 1–20 Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED