PAB Applies Amazon.com, Finds Method for Updating Navigation Systems Installed in Vehicles Is Patentable Subject Matter

PAB Applies Amazon.com, Finds Method for Updating Navigation Systems Installed in Vehicles Is Patentable Subject Matter

CD 1332,
Re. Patent Application No. 2,195,252 entitled "System and Method for
Distributing Information for Storage Media"

This decision deals with a review by the Commissioner of Patents of the
Examiner's rejection in a Final Action of patent application no. 2,195,252
entitled "System and Method for Distributing Information for Storage
Media". The application relates to a system and method for updating
navigation systems installed in vehicles. The grounds of rejection were
obviousness, lack of statutory subject matter, lack of support in the description,
and indefiniteness.

All of the claims, 1-30, are obvious and do not comply with s. 28.3 of
the Patent Act. All of the claims are drawn to statutory subject matter.
Finally, the Examiner’s objections based on lack of support in the description
and indefiniteness are also rejected.

OBVIOUSNESS

The Board applied the Sanofi obviousness analysis, and ultimately
found all the claims to be obvious.

In the second step of the Sanofi test, when determining the
inventive concept of the claims, the Board stated that before considering the
inventive concept of the individual claims, it is helpful to focus the exercise
by first considering the problem(s) to be overcome and the solution provided by
the application.

Claim 1 reads as follows:

1. A system for updating navigation systems installed in vehicles, said
system being for use by owners of said vehicles and for use with available
subscription information, said system comprising:

a plurality of local repositories accessible to owners of said vehicles
and located in a geographical area, wherein each of said plurality of local
repositories includes updated versions of navigation data for said navigation
systems;

a program and data processing means for executing said program in each
of said plurality of local repositories, said program for determining
entitlement to said updated versions of navigation data based on said
subscription information available to the local repositories and version
information included in said navigation systems; and

updating means for copying said updated versions of navigation data to
storage devices in said navigation systems.

The Board found that while the application relates to in-vehicle
navigation systems, neither the description nor the claims pertain to the
technology behind how such navigation systems function. Rather, the description
and claims (except claim 30) focus on systems and methods for providing updated
data to such systems.

Then the Board went on to determine the inventive concept of individual
claims, and to characterize the differences between the inventive concepts and
the “state of the art”. Based on these differences, the Board concluded that
claims 1-30 would have been obvious to the skilled worker on the claim date.

STATUTORY SUBJECT MATTER

All of the claims are drawn to statutory subject matter.

The Board found that the human steps set out (expressly or implicitly)
in the claims do not render the subject matter of the claims non-patentable.
The claims do not purport to fence off an exclusive right over an area for
which professional skill or judgment is expected to be exercised, and thus they
are not objectionable on the basis of professional skills.

However, in order to make a final determination with respect to the
section 2 question, the Board also considered Canada (Attorney General) v
Amazon.com Inc
, 2011 FCA 328, concerning patentable subject matter in the
area of computer-implemented inventions.

After purposively construing the claims, the Board found that system
claims 1-12 and 24-29, and method claims 13-23, comprise "a number of
essential elements in a novel combination": Amazon.com [FCA] at
para. 63. The elements comprise technical features and physical steps sequenced
to achieve the practical result of providing updated data to in-vehicle
navigation systems. The computer limitations of the elements are essential, i.e.
they cannot be omitted, or substituted for mental means, without having a material
effect on the operation of the invention. Upon such a purposive construction,
the claimed subject matter is not excluded for being abstract, since it
comprises a physical embodiment, a mode of practical application. And it does
not relate to subject matter that is excluded from patentability as not
relating to the useful arts. Accordingly, claims 1-29 are directed to statutory
subject matter.

Claim 30 is an independent claim setting forth a storage medium
comprising a hard drive and an EPROM, the hard drive containing data and the
EPROM containing information indicating entitlement to receiving updated data.

Claim 30, as presented, purports to define a "system for updating
data stored on a storage medium." However, the only elements set forth in
the claim are those that define the storage medium. As drafted, the claim
contains insufficient elements to deliver the promised result of a system for
updating data stored on a storage medium..

If it is presumed that the purposively construed claim comprises "a
number of essential elements in a novel combination", the claim is
directed to statutory subject matter. For the purposes of this recommendation,
given the conclusion reached with respect to this claim on the question of
obviousness, the Board so presumed, and concluded.

LACK OF SUPPORT FOR CLAIMS IN THE DESCRIPTION

There is adequate support for the claims in the description.

The Board found that “communication link” is adequately supported by the
description. In the Board's view, the description of the particular feature is
sufficient to enable the POSITA to successfully carry out the invention as
contemplated by the inventor. No inventive effort would be required on the part
of the POSITA to put the invention into effect using the teaching of the
description.

INDEFINITENESS

Contrary to the Examiner’s objection, claims 1, 13 and 15 are definite
and comply with subsection 27(4) of the Patent Act.

Regarding claim 1, the Board saw nothing indefinite in the expression,
"updating means for copying said updated versions of navigation data to
storage devices in said navigation systems." The language is broad, as the
Applicant wants the claim to be of sufficient breadth. But broad language does
not equate to indefinite language. It seems that the meaning is clear enough
for the skilled person to ascertain the scope of protection being sought.

Concerning claim 13, and the expressions, "removing one of said
storage media from a vehicle" and "placing said one storage medium
into said device", once again, the meaning seems clear enough.

As for claim 15, the expression, "testing the
storage medium", despite its breadth, does not appear to lack clarity. The
claim is not restricted to a preferred embodiment, a particular manner of
testing the storage medium, but subsection 27(4) does not impose such a
requirement. As with claims 1 and 13, it is clear to the reader where the
Applicant wishes the fences surrounding the invention to be placed.