Rochester Institute of TechnologyDownload PDFPatent Trials and Appeals BoardJul 14, 20202019000673 (P.T.A.B. Jul. 14, 2020) Copy Citation 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. Appeal 2019-000673 Application 14/720,006 2 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. Appeal 2019-000673 Application 14/720,006 3 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.”). Appeal 2019-000673 Application 14/720,006 4 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 Appeal 2019-000673 Application 14/720,006 5 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 Appeal 2019-000673 Application 14/720,006 6 (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 Appeal 2019-000673 Application 14/720,006 7 (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. Appeal 2019-000673 Application 14/720,006 8 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 Appeal 2019-000673 Application 14/720,006 9 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 Appeal 2019-000673 Application 14/720,006 10 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: Appeal 2019-000673 Application 14/720,006 11 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 Appeal 2019-000673 Application 14/720,006 12 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 Appeal 2019-000673 Application 14/720,006 13 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 Appeal 2019-000673 Application 14/720,006 14 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. Appeal 2019-000673 Application 14/720,006 15 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). Appeal 2019-000673 Application 14/720,006 16 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). Appeal 2019-000673 Application 14/720,006 17 . . . 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. Appeal 2019-000673 Application 14/720,006 18 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 Appeal 2019-000673 Application 14/720,006 19 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 Appeal 2019-000673 Application 14/720,006 20 :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. Appeal 2019-000673 Application 14/720,006 21 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 Copy with citationCopy as parenthetical citation