Aed M. Dudar et al.

Patent Trials and Appeals Board

Nov 4, 2019

14684999 - (D) (P.T.A.B. Nov. 4, 2019)

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.
14/684,999 04/13/2015 Aed M. Dudar 83501797 9071
28395 7590 11/04/2019
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
FEI, JORDAN S
ART UNIT PAPER NUMBER
3665
NOTIFICATION DATE DELIVERY MODE
11/04/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AED M. DUDAR, ROBERT ROY JENTZ, IMAD HASSAN
MAKKI, AND FLING TSENG
Appeal 2018-001751
Application 14/684,999
Technology Center 3600
Before BRETT C. MARTIN, JEREMY M. PLENZLER, AND
BRENT M. DOUGAL, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Ford Global
Technologies, LLC, appeals from the Examiner’s decision to reject claims
1−20. Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ford
Global Technologies, LLC. Appeal Br. 1.
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Application 14/684,999
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CLAIMED SUBJECT MATTER
The claims are directed to systems and methods for providing fuel
economy data analysis. Claim 11, reproduced below, is illustrative of the
claimed subject matter:
11. A method for analyzing fuel economy data comprising:
in response to receiving signals indicative of a refueling event
notification and an estimated fuel economy from a vehicle, and
the estimated fuel economy being less than a benchmark fuel
economy provided by a manufacturer of the vehicle, outputting
by a controller signals indicative of an alert for the vehicle and
the manufacturer indicating that the estimated fuel economy is
less than the benchmark.
REFERENCES
The prior art relied upon by the Examiner is:
Graessley
Leggett et al.
Lee
Pallas et al.
Soni
US 2009/0157289 A1
US 2014/0005917 A1
US 2015/0130603 A1
US 2015/0242969 A1
US 2016/0245664 A1
June 18, 2009
Jan. 2, 2014
May 14, 2015
Aug. 27, 2015
Aug. 25, 2016
REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101. Ans. 2−3.
Claims 1, 5, 7–11, 15, and 17–20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Lee, Leggett, and Soni. Ans. 4.
Claims 2–4 and 12–14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lee, Leggett, Soni, and Pallas. Ans. 6.
Claims 6 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Lee, Leggett, Soni, and Graessley. Ans. 7.

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OPINION
Patent-Eligible Subject Matter
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept,” id. at 216–18, and, in this case, the inquiry
centers on whether the claims are directed to an abstract idea. If the initial
threshold is met, we then move to the second step, in which we “consider the
elements of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Id. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step as a search for “an ‘inventive
concept’ i.e., 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.’” Id. (quoting Mayo, 566 U.S. at 72–
73).
The USPTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or
mental processes); and
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
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, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
ANALYSIS
Claim Grouping
Appellant argues claims 1‒20 as a group. Appeal Br. 7‒11. We
select claim 11 as representative of the group, and claims 1–10 and 12‒20
stand or fall with claim 11. See 37 C.F.R. § 41.37(c)(1)(iv).
Patent Eligibility
The Examiner rejects claims 1–20 as not directed to patentable subject
matter and identifies the alleged abstract idea as “a system for analysis and
transmission of fuel economy signals.” Ans. 2. The Examiner then
concludes that “[t]the claims do not include additional elements that are
sufficient to amount to significantly more than the judicial exception.” Id.
The Examiner goes on to state that “[t]hese computer functions are recited at
a high level of generality and add no more to the claimed invention than the
components that perform basic mathematical calculation functions routinely
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provided by a general purpose computer.” Id. Appellant disagrees. Appeal
Br. 7–11.
For the reasons set forth below, we agree with the Examiner’s
determination that the claims are ineligible under § 101.
Analysis According to the Guidelines
Step One: Does Claim 11 Fall within a Statutory Category of § 101?
We first examine whether the claim recites one of the enumerated
statutory classes of subject matter, i.e., process, machine, manufacture, or
composition of matter, eligible for patenting under 35 U.S.C. § 101. Claim
11 is directed to a method, which is one of the statutory classes (i.e., a
process) under 35 U.S.C. § 101.
Step 2A, Prong One: Does Claim 11 Recite a Judicial Exception?
We next look to whether the claim recites any judicial exceptions,
including certain groupings of abstract ideas, i.e., mathematical concepts,
certain methods of organizing human activity such as a fundamental
economic practice, or mental processes.
In this instance, claim 11, for example, recites the steps receiving
data, comparison of the data to a benchmark, and outputting of an alert.
Specifically, claim 11 states:
receiving signals indicative of a refueling event
notification and an estimated fuel economy from a vehicle, and
the estimated fuel economy being less than a benchmark fuel
economy provided by a manufacturer of the vehicle
and
outputting by a controller signals indicative of an alert for
the vehicle and the manufacturer indicating that the estimated
fuel economy is less than the benchmark.
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Although these steps are claimed as being done by a processor or controller,
the activities themselves are merely data acquisition, data analysis, and
output of the data, and as such each step of receiving and outputting in the
claim falls into the abstract ideas of mental processes, embodied by data
collection, comparison to a benchmark, and data output. See, e.g.,
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.”). We therefore determine that claim 11 recites the
abstract idea of mental processes which is a judicial exception to patent-
eligible subject matter.
Step 2A, Prong Two: Does Claim 11 Recite Additional Elements that
Integrate the Judicial Exceptions into a Practical Application?
Following our Office guidance, having found that claim 11 recites a
judicial exception, we next determine whether the claim recites “additional
elements that integrate the exception into a practical application” (see MPEP
§§ 2106.05(a)–(c), (e)–(h)). See Revised Guidance, 84 Fed. Reg. at 54. As
noted above, each of the claimed steps is merely recited as being performed
by a computer processor or controller. As used in the claim, the controller is
merely a generic component of a computer system that does not result in an
improvement in the functioning of a computer or other technology or
technological field. See Spec. ¶ 46 (“The processes, methods, or algorithms
disclosed herein may be deliverable to or implemented by a processing
device, controller, or computer, which may include any existing
programmable electronic control unit or dedicated electronic control unit.”).
The recitations of the generic structures with which the recited steps are
performed are merely instructions to use a computer system as a tool to
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perform the abstract idea. Thus, the claim does not apply, rely on, or use the
mental process in a manner that imposes a meaningful limit on those steps.
Rather, the claim is simply a drafting effort designed to monopolize the
mental process of claim 11.
The additional elements do not add meaningful limits to the mental
process steps recited in claim 11. Instead, the generic computer system
limitations are no more than instructions to apply the judicial exception (i.e.,
a mental process) using generic computer elements. See MPEP § 2106.05(f)
(“Use of a computer or other machinery in its ordinary capacity for . . . tasks
(e.g., to receive, store, or transmit data) or simply adding a general purpose
computer or computer components after the fact to an abstract idea . . . does
not provide significantly more.”).
In short, the additional elements discussed above: (1) do not improve
the functioning of a computer or other technology; (2) are not applied with
any particular machine; (3) do not effect a transformation of a particular
article to a different state; and (4) are not applied in any meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Consequently, the claimed invention does not integrate the abstract idea into
a “practical application.”
For these reasons, the additional elements of claim 11 do not integrate
the judicial exception into a practical application. Thus, claim 11 is directed
to an abstract idea, which is a judicial exception to patent eligible subject
matter under 35 U.S.C. § 101.
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Step 2B: Does Claim 11 Recite an Inventive Concept?
We next consider whether claim 11 recites any elements, individually
or as an ordered combination, that transform the abstract idea into a patent-
eligible application, e.g., by providing an inventive concept. Alice, 573 U.S.
at 217–18. As noted above, the only additional element is a controller used
for routine computer functionality to enact the method steps. This additional
element does not provide, either individually or as a combination,
improvements to another technology or technical field or the functioning of
the computer itself.
According to guidance, under Step 2B, “examiners should . . .
evaluate the additional elements individually and in combination . . . to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
See Guidance 84 Fed. Reg. at 56 (emphasis added). Thus, the second step of
the inquiry (Step 2B) looks at the additional elements in combination. See,
e.g., Examples accompanying Guidance (Example 37 (claim 3 analysis) and
Example 40 (claim 2 analysis)). See also BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice
that a claimed invention’s use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention ‘significantly
more’ than that ineligible concept.”)
As noted above, the processor is invoked as a conventional tool.
Apart from being used to perform the abstract idea itself, these generic
computer system components only serve to perform well-understood
functions (e.g., storing, selecting, analyzing, and outputting data). See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (“the use of generic computer elements like a microprocessor or user
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interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter”). In our view, claim 11 fails to add a specific
limitation beyond the judicial exception that is not ‘well-understood, routine,
conventional” in the field, but instead “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception.” See Guidance, 84
Fed. Reg. at 56. That is, we are not persuaded that claim 11 is directed to a
specific application designed to achieve an improved technological result, as
opposed to being directed to merely ordinary functionality of the above-
recited additional elements to apply an abstract idea. For the reasons
discussed above, we find no element or combination of elements recited in
claim 11 that contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. See Alice, 573 U.S. at 221.
Appellant’s Contentions
Appellant first argues that the Examiner “failed to provide any
explanation how the alleged abstract idea….corresponds to any established
judicial exception.” The Examiner responds that his “analysis that
appellant’s invention is drawn to the abstract idea of data collection, analysis
and presentation was not inaccurate or unreasonable.” Ans. 9. Appellant
further argues that certain aspects of the claim “are entirely absent from the
abstract idea to which the claims are allegedly directed,” namely output
signals indicative of an alert. App. Br. 8. This alert, however, is nothing
more than further transmission of data that could be used to initiation
displaying the results of the calculation and analysis performed. We agree
with the Examiner that this limitation “is entirely encompassed within the
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displaying of the analyzed data and provides nothing more to transform the
current claims into significantly more than an abstract idea.” Ans. 9.
Appellant next argues that the claims represent an improvement in
computer-related technology and “embodies improvement over the prior art
that are further evidence that the claims do not, in fact, recite an abstract
idea.” App. Br. 8. The Examiner is correct, however, that the claims “do
not contain any steps, feature or limitation which would improve the
processing or displaying system beyond their regular generic use.” Ans. 10.
As seems to be common with § 101 rejections, Appellant appears to confuse
an alleged improvement over the prior art with an improvement in computer-
related technology. The improvement necessary to amount to an
improvement in computer-technology must be related to the system itself,
not simply an improved method implemented by a computer. Here,
Appellant’s claim would be implemented in a traditional manner by a
generic computer system and does not represent an improvement in the
actual computer-related technology.
Lastly, Appellant argues that the claimed output signals “are
significantly more than mere recitation of what is routine and conventional
in the field.” App. Br. 11. As noted above, the mere displaying of the
results of the abstract idea is insufficient to amount to significantly more
than the abstract idea. Here, the claims do not actually call for the
displaying of the data, but merely transmit additional data to indicate that
results could be displayed. Further, the Examiner is correct that “[t]he only
additional elements cited is the processor…,[which] is simply performing
generic computer function.” Ans. 12 (emphasis omitted). Accordingly, for
the reasons stated above, we are not persuaded of error in the Examiner’s
rejection.
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Obviousness
With respect to the Examiner’s rejection of claim 1, Appellant argues
that Leggett fails to cure certain alleged deficiencies in Lee. App. Br. 11;
see also Reply Br. 2. Appellant first points out that Leggett fails to disclose
comparing fuel economies to a benchmark provided by the manufacturer.
Id. The Examiner points out, however, that Lee is used for the benchmark
aspect and because Lee does not specifically mention a manufacturer
benchmark, Soni is brought in to teach that benchmarks are often provided
by manufacturers. Ans. 14–15. Thus, Appellant is attacking Leggett for
failing to disclose aspects of the claim upon which the Examiner relied on
other references.
Appellant further argues that while Soni does teach a manufacturer
benchmark, Soni fails to teach that such benchmarks are the kind to which
the claimed comparison would be made. App. Br. 12; see also Reply Br. 2.
Again, Appellant attacks the Soni for aspects for which it was not used by
the Examiner. The Examiner utilizes Lee for the benchmark and
comparison aspects of the claim and only adds Soni to specifically teach that
the benchmark could be one set by the manufacturer. We see no error in this
combination of Lee and Soni to arrive at Appellant’s claimed manufacturer
benchmark.
Regarding Diab, Appellant asserts that Diab fails to disclose
“outputting by a controller signals indicative of an alert for the vehicle and
the manufacturer indicating that the estimated fuel economy is less than the
benchmark,” because Diab does not disclose doing so in relation to a
benchmark App. Br. 12. The Examiner, however, is not using Diab for the
comparison to the benchmark, but is merely using Diab to show that in
addition to a user, fuel economy data could be transmitted to the
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manufacturer as well. The Examiner uses Lee for the benchmark
comparison and Diab is only added for the additional teaching of sending the
data to the manufacturer as well as the user. Accordingly, Appellant’s
arguments are directed at an aspect of the claims for which Diab was not
used.
Further regarding claims 10, 11, and 19, Appellant merely recites
claim language and asserts without explanation that such recitations “are not
taught or suggested by the alleged combination of references.” App. Br. 13,
16. Appellants do not meaningfully explain why the variously recited
elements are not met by the Examiner’s combination. Merely reciting the
language of the claims and asserting that the prior art reference or
combination does not disclose or teach each claim limitation is insufficient.
See 37 C.F.R. § 41.37(c)(vii) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”). Accordingly, we are not persuaded of error.
Regarding claims 7 and 17, Appellant asserts that the Examiner erred
because the Examiner has equated the benchmark and the historic fuel
economy as the same thing whereas “[t]he benchmark fuel economy and the
historic fuel economy are unrelated measures.” App. Br. 14. Although this
may be true, the Examiner properly explains that in operation, the system
does not output a signal if the fuel economy is above the benchmark.
Therefore, when the fuel economy drops below the benchmark, it is also
dropping below the previous fuel economy that was above the benchmark.
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Ans. 17. In this manner, the Examiner is correct that the two can be
separate, but that it is inherent that dropping below a benchmark also means
dropping below a historic fuel economy that was above the benchmark. As
such, we are not persuaded of error.
As to claims 9 and 18, we agree with the Examiner that the average
fuel economy being based on fuel economies of comparable vehicles is
inherent in the combination. Ans. 18. As the Examiner states, the average
of the combination “is clearly based on the average fuel economy of the
vehicle” in that “[a]ll comparable vehicles and comparable vehicles of the
same class should have the same/comparable ‘average fuel economies.’” Id.
We agree with the Examiner that it would not make sense to create a
benchmark that includes disparate vehicles and that it is known in the art that
a manufacturer benchmark of fuel economy is based upon an average fuel
economy of comparable vehicles. Though the Specification implies that the
fuel economies of comparable vehicles is a dynamic, real time comparison
to other vehicles on the road, the claims are not so limited. See, e.g., Spec. ¶
32. Further, we see no reason why the “comparable vehicles” cannot be the
same make and model as the subject vehicle, which supports the Examiner’s
position of inherency.
For the above reasons, we are not persuaded of error in the
Examiner’s prior art rejections.
DECISION
The Examiner’s rejections are AFFIRMED.
Claims
Rejected
Basis  Affirmed Reversed
1–20 § 101  1–20
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Claims
Rejected
Basis  Affirmed Reversed
1, 5, 7–11, 15,
and 17–20
§ 103 over Lee,
Leggett, and Soni 
1, 5, 7–11,
15, and
17–20

2–4 and 12–14 § 103 over Lee,
Leggett, Soni and
Pallas
2–4 and
12–14

6 and 16 § 103 over Lee,
Leggett, Soni,
and Graessly
6 and 16
Outcome 1−20

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).