Rochester Institute of Technology

Patent Trials and Appeals Board

Jul 14, 2020

2019000673 (P.T.A.B. Jul. 14, 2020)

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.
14/720,006 05/22/2015 Michael Thurston 330P279A 9603
111905 7590 07/14/2020
Bond Schoeneck & King, PLLC
350 Linden Oaks
3rd Floor
Rochester, NY 14625
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/14/2020 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):
bskpto@bsk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MICHAEL THURSTON
________________

Appeal 2019-000673
Application 14/720,006
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, JAMES B. ARPIN, and
MIRIAM L. QUINN, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–11 and 13–23, all of the pending claims.1 Appeal
Br. 6–34. We have jurisdiction under 35 U.S.C. § 6(b). The Board conducts
a limited de novo review of the appealed rejections for error based upon the
issues identified by Appellant, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party-in-interest as Vnomics
Corporation. Appeal Brief filed June 27, 2018 (“Appeal Br.”), 2.
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STATEMENT OF THE REJECTIONS
Claims 1–11 and 13–23 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception to patent-eligible subject matter, without
significantly more. Final Act. 7–32. 2,3
Claims 1–11, 13–19, and 23 stand rejected under 35 U.S.C. § 112(a)
for failing to comply with the written description requirement. Final Act. 2–
6.4
Claims 1–9, 13–19, and 23 stand rejected under 35 U.S.C.
§ 102(a)(1)/(a)(2) as anticipated by Chen (US 8,116,971 B2; published
Feb. 14, 2012). Final Act. 32–42.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Chen and Ekdahl
(US 2008/0270519 Al; published Oct. 30, 2008). Final Act. 42–44.
Claims 20–22 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combined teachings of Chen and Armitage (US 2014/0099607 Al;
published Apr. 10, 2014). Final Act. 45–49.

2 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
March 30, 2018 (“Final Act.”); the Revised Examiner’s Answer mailed
October 12, 2018 (“Ans.”); and the Reply Brief filed November 2, 2018
(“Reply Br.”).
3 The heading of the patent-eligibility rejection says claims 1–22 are rejected
(Final Act. 7), but the rejection subsequently states that claim 23 is rejected,
as well. Id. at 14, 30.
4 The heading of the written-description rejection says claims 1–11, 13–19,
and 23 are rejected (Final Act. 2), but the rejection subsequently states
claims 1–19 and 23 are rejected. Id. at 3.
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THE SECTION 101 REJECTION
The Claimed Invention
Independent claim 1 represents of the appealed claims.5 Claim 1 is
reproduced below with paragraph numbering added for clarity and emphasis
added to the claim language that recites an abstract idea:
1. A method for optimizing asset value based on driver
acceleration and braking behavior, comprising:
[(a)] collecting vehicle data;
[(b)] applying a weighting function to the collected data to
generate a value representing the energy or fuel wasted due to
acceleration and braking behavior;
[(c)] tabulating the generated value over the duration of a
driving event to generate a driver performance score;
[(d)] evaluating the driver performance score based on a
business model; and
[(e)] modifying subsequent driver behavior based upon the
evaluation.
Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural

5 Appellant argues the section 101 rejection of all of the appealed claims
together as a group. Appeal Br. 8–28. Accordingly, we select independent
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple
claims subject to the same ground of rejection are argued as a group or
subgroup by appellant, the Board may select a single claim from the group
or subgroup and may decide the appeal as to the ground of rejection with
respect to the group or subgroup on the basis of the selected claim alone.”).
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phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the
claims before us are drawn to the concept of intermediated settlement, i.e.,
the use of a third party to mitigate settlement risk.”); see also Bilski v.
Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
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become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook) (citation omitted); see also, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we must 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.”
Alice, 573 U.S. at 221 (internal quotation marks omitted). “A claim that
recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the U. S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
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(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1.
Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional” in the field (see MPEP
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 56.
Analysis
STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54.
Limitation (a) of claim 1 recites, “collecting vehicle data.” The
limitation does not recite that a computer must be used to collect the data.
As such, the limitation reads on a driving instructor or other passenger
observing vehicle-dashboard data such as dashboard data indicating miles
traveled, speed, acceleration, and deceleration from the odometer,
speedometer, and tachometer. This step of limitation (a) also reads on a
human calculating the vehicle’s gas mileage based on either visually
estimating fuel usage from movement of the dashboard’s gas gauge or
tracking how often the vehicle needs refueling, and then comparing the
estimated fuel usage relative to the elapsed mileage on the vehicle’s
odometer. The act of collecting data, as claimed then, reasonably constitutes
either a mathematical calculation or an observation that can be performed in
the human mind, possibly with the aid of pencil and paper.
The 2019 Guidance recognizes mathematical concepts, including
mathematical calculations, as constituting patent-ineligible abstract ideas.
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2019 Guidance, 84 Fed. Reg. at 52. The 2019 Guidance also recognizes
mental processes, including observations, as constituting patent-ineligible
abstract ideas. Id.
The “mental processes” judicial exception also includes concepts that
can be performed by a human with a pen and paper as well as those that can
be performed entirely in the mind. See October 2019 Guidance Update at 9
(“A claim that encompasses a human performing the step(s) mentally with
the aid of a pen and paper recites a mental process”) (emphasis omitted).
Accordingly, limitation (a) recites a patent-ineligible abstract idea.
Limitation (b) recites, “applying a weighting function to the collected
data to generate a value representing the energy or fuel wasted due to
acceleration and braking behavior.” This step, as broadly claimed, reads on
a driving instructor or other passenger monitoring the vehicle operator’s
driving habits, mentally determining which incidents of the driver’s
jerkiness or excessive acceleration are noteworthy based on observable
traffic conditions, and then rating the operator’s behavior. Spec. ¶ 26.
Applying a weighting function, as claimed then, constitutes performing a
mathematical concept, such as determining a mathematical relationship or
performing a mathematical calculation. This step also constitutes an
evaluation or judgment that can be performed in the human mind.
Accordingly, limitation (b) recites a patent-ineligible abstract idea.
2019 Guidance, 84 Fed. Reg. at 52.
Limitation (c) recites, “tabulating the generated value over the
duration of a driving event to generate a driver performance score.”
Tabulating data entails arranging or organizing data in tabular form. As
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such, this step constitutes a mental evaluation or judgment. Accordingly,
limitation (c) recites a patent-ineligible abstract idea.
Limitation (d) recites, “evaluating the driver performance score based
on a business model.” Like limitation (b)’s step of applying a weight
function, limitation (d) constitutes a mathematical concept or an evaluation
that can be performed in the human mind. Accordingly, limitation (d)
recites a patent-ineligible abstract idea.
Limitation (e) recites, “modifying subsequent driver behavior based
upon the evaluation.” Modifying the driver’s behavior reads on providing
the driver feedback or instruction on how to improve. Limitation (e) then,
recites a certain method of organizing human activity that entails managing
personal behavior between people, including teaching. Accordingly,
limitation (e) recites a patent-ineligible abstract idea.
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance provides
exemplary considerations that are indicative of an additional element or
combination of elements integrating the judicial exception into a practical
application, such as an additional element reflecting an improvement in the
functioning of a computer or an improvement to other technology or
technical field. Id. at 55; MPEP § 2106.05(a).
As noted above in the prong 1 section of the analysis, the entirety of
claim 1 recites abstract ideas. That is, claim 1 does not recite any additional
elements. And step 2A, prong 2, of the analysis is limited to looking at the
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additional claim elements beyond the recited abstract ideas—not the abstract
ideas, themselves. 2019 Guidance, 84 Fed. Reg. at 53–55.
As such, all of Appellant’s arguments regarding claim 1 under
step 2A, prong 2, of the 2019 Guidance (Appeal Br. 10–22) are
unpersuasive. The arguments either are directed to the underlying abstract
idea or are not commensurate in scope with claim 1. For example, Appellant
argues that the claims “are directed to specific methods for ‘improved
metrics of tracking and managing driver behavior’” (Appeal Br. 11), but this
argument is directed to the underlying abstract idea. Appellant argues, “the
claims of the present application solve a problem in the vehicle telematics
arts” (id. at 13), but this argument is directed to features that are not recited
in the claim.
Furthermore, because Appellant argues all of the claims together with
claim 1 in relation to the patent-eligibility rejection (Appeal Br. 8–28), it
would be appropriate to end here our analysis under step 2A, prong 2, and
step 2B of the 2019 Guidance. Frye, 94 USPQ2d at 1075 (The Board
conducts a limited de novo review of the appealed rejections for error based
upon the issues identified by Appellant, and in light of the arguments and
evidence produced thereon.); 37 C.F.R. § 41.37(c)(1)(iv) (“When multiple
claims subject to the same ground of rejection are argued as a group or
subgroup by appellant, the Board may select a single claim from the group
or subgroup and may decide the appeal as to the ground of rejection with
respect to the group or subgroup on the basis of the selected claim alone.”).
For the sake of efficiently advancing prosecution, though, we exercise
our discretion and further analyze independent claim 23. Claim 23, a system
claim, reads as follows with the language reciting abstract ideas emphasized:
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23. An in-vehicle system comprising:
sensors within the vehicle;
memory comprising instructions;
a processor coupled to the memory, whereupon execution
of the instructions, the processor is configured to:
collect vehicle data from the sensors;
apply a weighting function to the collected data to
generate a value representing the energy or fuel wasted
due to acceleration and braking behavior;
tabulate the generated value over the duration of a
driving event to generate a driver performance score;
evaluate the driver performance score based on a
business model; and
modify subsequent driver behavior based upon the
evaluation.
As shown, claim 23 recites the following additional elements beyond
the recited abstract ideas: “sensors within [a] vehicle,” “memory comprising
instructions,” and “a processor coupled to the memory.” As explained above
in relation to claim 1, many of Appellant’s arguments are unpersuasive
because the arguments conflate improvements to the underlying abstract
ideas with alleged technical improvements to these additional elements or
because the arguments are not commensurate in scope with the claims.
For example, Appellant argues that the present “claims are
specifically directed to components and methods, such as measurement
devices and techniques, that would generate new data. Appeal Br. 14. But
nothing in claim 23 reasonably indicates that anything other than generic
computer components are used to carry out the abstract idea. See Alice, 573
U.S. at 226 (determining that the claim limitations “data processing system,”
“communications controller,” and “data storage unit” were generic computer
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components that amounted to mere instructions to implement the abstract
idea on a computer); October 2019 Guidance Update at 11–12 (recitation of
generic computer limitations for implementing the abstract idea “would not
be sufficient to demonstrate integration of a judicial exception into a
practical application”).
Furthermore, the recited “sensors within the vehicle” do not add
significantly more to the abstract idea because claim 23 does not set forth
any structure that would indicate that the claimed sensors possess any
improvement to technology. Rather, the generic recitation of “sensors”
illustrates that the step of collecting vehicle data merely is directed to
insignificant extra-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Similarly, Appellant’s Specification indicates that claim 1’s step of
“modify[ing] subsequent driver behavior based upon the evaluation” also is
performed by generic automobile sensors that provide alerts. Spec. ¶ 8
(“The method also includes alerting the operator of the vehicle as to a
determined penalty for the braking and accelerating behavior by the
operator.”). As such, the modifying step constitutes mere extra-solution
activity. See Trading Techs. Int’l v. IBG LLC, 921 F.3d 1084, 1090 (Fed.
Cir. 2019) (where an “invention makes the trader faster and more efficient,
not the computer . . . [, it] is not a technical solution to a technical
problem.”); see also id. at 1093 (claims are abstract where “they recite a
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purportedly new arrangement of generic information that assists traders in
processing information more quickly”).
Appellant argues that the claims are patent eligible because they do
not preempt the basic tools of science or technology. Appeal Br. 21. This
argument is unpersuasive.
We recognize that the U.S. Supreme Court has described “the concern
that drives this exclusionary principle [i.e., the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption.” Alice, 573 U.S.
at 216. However, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. As our reviewing court has explained, “[t]he Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability” and “[f]or this reason, questions on
preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa, 788 F.3d at 1379.
For these reasons, Appellant does not persuade us that claim 23 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor is claim 23 directed
to a particular machine or transformation. MPEP §§ 2106.05(b), (c). Nor
has Appellant persuasively demonstrated that claim 23 adds any other
meaningful limitations for the purposes of the analysis under Section 101.
MPEP § 2106.05(e). Accordingly, Appellant has not persuaded us that
claim 23 integrates the recited abstract ideas into a practical application
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within the meaning of the 2019 Guidance. See 2019 Guidance, 84 Fed.
Reg. at 52–55.
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 23 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 84 Fed. Reg. at 56;
MPEP § 2106.05(d).
Appellant’s Specification indicates that the claimed vehicle sensors
were well-understood, routine, and conventional. E.g., Appeal Br. ¶ 22
(“Vehicle operation data is collected on a periodic basis from either the
existing vehicle data bus, from sensors added to the vehicle, or from a
combination of both.”) (emphasis added). Similarly, Appellant’s
Specification does not describe the recited memory and processor beyond
setting forth that the system “includes one or more of at least one processor,
[and] at least one memory storage device that stores programmed
instructions for one or more aspects of the present invention.” Id. ¶ 21.
Furthermore, Appellant’s Specification does not indicate that
consideration of these conventional elements as an ordered
combination adds any significance beyond the additional elements, as
considered individually. Rather, Appellant’s Specification indicates
that the invention is directed to an abstract idea that is made more
efficient with generic computer components—evaluating a driver’s
driving behavior using mathematical calculations that include
weighting functions and modifying the driver’s driving behavior by
providing alerts. Spec. ¶ 8.
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For these reasons, we determine that claim 23 does not recite
additional elements that, either individually or as an ordered combination,
amount to significantly more than the judicial exception within the meaning
of the 2019 Guidance. 84 Fed. Reg. at 52–55; MPEP § 2106.05(d).
CONCLUSION:
Accordingly, we sustain the Examiner’s rejection of independent
claims 1 and 23 under 35 U.S.C. § 101 as directed to a judicial exception to
patent-eligible subject matter without reciting significantly more. We,
likewise, sustain the 101 rejection of claims 2 through 11 and 13 through 22,
which Appellant does not argue separately. Appeal Br. 7–32.

THE SECTION 112(a) REJECTION
Examiner’s Determinations and Appellant’s Contentions
The Examiner finds that claims 1–11, 13–19, and 23 fail to comply
with the written-description requirement because the claims contain subject
matter that was not described in the Specification in such a way as to
reasonably convey that Appellant had possession of the claimed invention at
the time of filing. Final Act. 2–3. More specifically, the Examiner
determines that the originally filed Specification “fails to adequately disclose
the business model [that] is being used [in independent claim 1] or what
exactly in the business model is the evaluation being based on.” Id. at 3.
The Examiner also determines that the Specification “fails to disclose what
. . . system identification methods are being used in claim 9. Id. (emphasis
omitted).
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The Examiner reasons,
although one of skill in the art could come up with some type of
business model for which the evaluation is based on, one of skill
in the art would be unable to determine the specific business
model that the appellant was in possession of. The specification
fails to provide sufficient species of the particular business model
the appellant was in possession of so as to grant the appellant
possession of the entire species of all known and unknown
business models that could be used for the claimed invention in
order to evaluate a driver performance score and, in view of the
specification, inform a driver as to how the driver should modify
their behavior.
Ans. 5; see also id. (explaining in relation to claim 9, “The specification
merely states that ‘system identification methods’ are used, but fails to
disclose the methods that the appellant was in possession of in order to allow
one of skill in the art to make and use the invention in the specific manner
intended by the appellant.”).
Appellant argues,
The Examiner . . . assert[s] . . . that Appellant has
attempted to claim a genus, which is alleged to be improper in
view of Appellant’s specification, citing Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1340 (Fed. Cir. 2010). The
Examiner alleged that “[w]hile Ariad relates to chemical
compounds, the legal principles are the same.” However, while
the written description requirement is always applicable, the
standard for written description varies significantly between
technologies. Specifically, the predictable arts (e.g., the instant
application) are subject to a much lower standard for written
description than those in the unpredictable arts (e.g., the chemical
subject matter in Ariad Pharms). For the instant application,
being in the predictable arts, “a lower level of detail is required
to satisfy the written description requirement than for
unpredictable arts.” Hologic v. Smith & Nephew, 884 F.3d 1357,
1361 (Fed. Cir. 2018) (finding a single species in the predictable
arts sufficient to satisfy written description for a claimed genus).
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. . . Consistent with Hologic, Appellant’s specification in ¶¶ 0021
and 0056–65 (and FIGS. 6A–B and 8A–B) provides sufficient
disclosure of the functions of the claimed software, and thus
provides sufficient written description for the predictable arts
applicable here.
Reply Br. 3–4 (citing Final Act. 6).
Analysis
We agree with Appellant that the standard for written description
varies between technologies and that inventions in the predictable arts are
subject to a different standard for written description than those in the
unpredictable, biochemical arts. Reply Br. 3. We also agree that the present
invention, as claimed, reasonably can be characterized as falling within the
predictable arts. Id. at 4. For example, the effects of the parameters
measured in the present invention, such as gravity and friction (see generally
Spec.), are quite predictable. We further agree with Appellant that the
Examiner has explained insufficiently why, under the standard applicable for
predictable arts, one of ordinary skill would understand Appellant not to be
in possession of the full scope of the claimed subject matter. Reply Br. 4.
We, therefore, do not sustain the Examiner’s written-description
rejection of claim 1 under 35 U.S.C. § 112(a) or of claims 2–11, 13–19, and
23, which either depend from or otherwise include the disputed language of
claim 1. We, likewise, do not sustain the written-description rejection of
dependent claim 9 for reasons similar to those set forth in relation to
independent claim 1.

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THE SECTION 102 AND 103 REJECTIONS
Determination and Contentions
The Examiner finds that Chen discloses all of the claim elements of
claims 1–9, 13–19, and 23. Final Act. 33–42. Dispositive to the present
appeal, the Examiner finds that Chen teaches “applying a weighting function
to the collected data to generate a value representing the energy or fuel
wasted due to acceleration and braking behavior,” as recited in claim 1. Id.
at 33 (citing Chen, col. 1, l. 60 – col. 2, l. 17, col. 2, l. 46 – col. 3, l. 15,
col. 4, ll. 32–56, col. 5, ll. 13–22, col. 6, ll. 9–42).
The Examiner further explains the interpretation that is applied to the
claim term “weighting,” as follows:
Chen discloses that the various parameters used in the
analysis are weighted in order to calculate a value that is
representative of the amount of energy of fuel that the
vehicle/driver can waste due to acceleration and braking
behavior and, further still, weighted in a manner to determine if
the goals of the driver will be met, e.g., weighting parameters in
one manner in order to improve fuel-economy and weighting the
parameters differently in order to focus on fuel pricing. As a
more specific example, Chen discloses that current location,
heading, elevation, speed, acceleration, traffic, weather
conditions, grade of the road, sensor data, aerodynamic
coefficient, and etc. are all analyzed in order to provide a
recommendation to a user in order to achieve a desired result,
e.g. decreasing fuel consumption by a certain percentage. As a
result, the system is able to determine what factors are weighted
more than others based on the current condition that a vehicle is
in order to achieve a desired result. More specifically, if the
vehicle is at a higher elevation (less oxygen for fuel combustion),
in traffic, and driving on a particular grade the system would
weigh these options more heavily against the same vehicle, but
driving at a lower elevation, no traffic, and on no grade. In other
words, the same exact parameters that the system is constantly
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monitoring will be weighted differently based on whether the
vehicle is experiencing those values, for example, a vehicle in no
traffic would have the “traffic” parameter have a weight of 0
while a vehicle in traffic would have the “traffic” parameter have
a weight higher than 0, which would result in the system
providing a completely different recommendation to the vehicle
versus the vehicle in no traffic if the driver is interested in saving
fuel (in this case, the vehicle in no traffic would be recommended
to continue driving 55 mph while a vehicle in traffic and
experiencing hard braking would be recommended to drive
slower and avoid needless braking as starting from a hard stop
would consume more fuel).
Ans. 8–9 (emphasis modified).
Appellant argues, inter alia, that the Examiner does not provide any
citation to support the finding that Chen uses any type of weighting function,
and Appellant further argues that Chen does not, in fact, use any weighting
function. Appeal Br. 29. Appellant argues, “Chen briefly mentions
applying ‘fuel-economy-improving principles’ to monitored vehicle driving
parameters, but this simply does not anticipate applying a weighting function
to collected data to generate a value representing the energy or fuel wasted
due to acceleration and braking behavior.” Id. (citing Chen, col. 7, ll. 22–
27).
Analysis
Appellant’s arguments are persuasive. A weighting function gives
weights to data, and more specifically, gives more weight to some elements
in a data set than other elements. Calculus How To, Calculus for the rest of
us!, (available at https://calculushowto.com/weight-function/). One example
of a weighting function is provided by the equation, ∑ ∈ ; where
∑ ∈ is an unweighted function, and is a weight function for
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:A → . Id. That is, when all elements of the data set have an equal
weight = 1, the function constitutes an unweighted function. Id.
As shown above, the Examiner provides an example of measuring
vehicle parameters, such as elevation, traffic, and grade over the course of a
constantly monitored trip. Ans. 9. The Examiner reasons that the
contribution of a measured parameter is zero when that parameter is not
present (e.g., traffic) or does not change (e.g., altitude), and the contribution
of a parameter is non-zero when the parameter is present. Id. Effectively,
the Examiner is taking the position that a mere change to an input parameter
is sufficient to characterize a mathematical function as a weighting
function. The Examiner provides insufficient evidence that this broad
interpretation of a weighting function is reasonable.
Restated, the Examiner explains why Chen discloses measuring
collected vehicle data and applying mathematical functions to calculate or
“generate a value.” But the Examiner does not explain why Chen’s
disclosed mathematical functions reasonably can be characterized, more
specifically, as weighting functions.
Accordingly, we do not sustain the anticipation rejection of
independent claim 1, or of claims 2–9, 13–19, and 23, which either depend
from claim 1 or otherwise recite applying a weighting function.
With respect to the remaining obviousness rejections of dependent
claims 10, 11, and 20–22, the Examiner does not rely on either of Ekdahl or
Armitage to cure the deficiency of the anticipation rejection, explained
above. Final Act. 42–49. Accordingly, we do not sustain the obviousness
rejections of dependent claims 10, 11, and 20–22 for the same reasons set
forth in relation to independent claim 1.
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DECISION SUMMARY
Because we affirm at least one rejection of each pending claim, we
affirm the Examiner’s rejection of the pending claims.
In summary:

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–11, 13–23 101 Eligibility 1–11, 13–23
1–11, 13–19, 23  112(a)  Written
Description 
  1–11, 13–19,
23 
1–9, 13–19, 23 102 Chen 1–9, 13–19,
23
10, 11 103 Chen, Ekdahl 10, 11
20–22 103 Chen, Armitage 20–22
Overall
Outcome
1–11, 13–23