Barnes, Melvin L.

Patent Trials and Appeals Board

Nov 7, 2019

13335354 - (D) (P.T.A.B. Nov. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/335,354 12/22/2011 Melvin L. Barnes JR.
105758 7590 11/19/2019
Laurence & Phillips IP Law
7327 SW Barnes Road #521
Portland, OR 97225-6119
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
44081/0120 8147
EXAMINER
RAVETTI, DANTE
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/19/2019 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):
mphillips@lpiplaw.com
docket@lpiplaw.com
mphillips_patlaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEL VIN L. BARNES JR.
Appeal2018-000642
Application 13/335,354
Technology Center 3600
Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1, 3-17, and 19-23. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on October 15, 2019.
We AFFIRM.
1 We use the term "Appellant" to refer to "applicant" as defined in 3 7 C.F .R.
§ 1.42. Our decision references Appellant's Appeal Brief ("Appeal Br.,"
filed March 30, 2017) and Reply Brief ("Reply Br.," filed October 25,
2017), and the Examiner's Answer ("Ans.," mailed August 25, 2017) and
Final Office Action ("Final Act.," mailed October 28, 2016). Appellant
identifies the real party in interest as Gula Consulting Limited Liability
Company. Appeal Br. 1.
Appeal2018-000642
Application 13/335,354
CLAIMED INVENTION
Appellant describes that the present disclosure "relates, generally, to
the field of mobile communications and computer processing" and, more
particularly, to "a system, method, apparatus, and computer program product
for providing location based services, mobile e-commerce, and other
functions" (Spec. ,-J 2).
Claims 1, 15, and 20 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of transmitting an advertisement to a
client device, the method comprising:
[(a)] selecting, via a processor, an advertisement from a
plurality of available advertisements based on information in a
profile of a user and also based on targeting criteria associated
with the available advertisements;
[(b)] transmitting to the client device via a
communication network the advertisement selected from the
plurality of available advertisements so that the advertisement
can be presented via the client device;
[ ( c)] determining a location of the client device, wherein
selecting the advertisement from the plurality of available
advertisements is further based on the location of the client
device and a location of a vender associated with the available
advertisements;
[ ( d)] receiving from the client device via the
communications network a response to the advertisement; and
[ ( e)] transmitting to the client device via the
communication network a notification of an existing product of
the vender based on the location of the client device and the
response to the advertisement.
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REJECTIONS
Claims 1, 3-17, and 19-23 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 8, 9, and 19 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter that Appellant regards as the invention.
Claims 1, 3-17, and 19-23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jokinen et al. (US 2002/0095333 Al, published July 18,
2002) ("Jokinen") and Nye (US 2002/0156917 Al, published Oct. 24,
2002).
ANALYSIS
Patent Ineligible Subject Matter
Appellant argues the pending claims as a group (Appeal Br. 5-12).
We select independent claim 1 as representative. The remaining claims,
thus, stand or fall with claim 1. See 37 C.F.R. §41.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 573 U.S. at 217.
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The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "individually and 'as an ordered combination"'
to determine whether there are additional elements that "'transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78). This is "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. at 217-18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that claim 1 is directed to "targeting advertisement[ s]," which
the Examiner concluded is an abstract idea similar to other concepts that the
courts have held abstract (Final Act. 4-8). The Examiner also determined
that claim 1 does not include additional elements that are sufficient to
amount to significantly more than the abstract idea (id. at 8-10), and that the
remaining claims are patent ineligible for substantially similar reasons (id.
at 10).
After Appellant's briefs were filed, and the Examiner's Answer
mailed, the U.S. Patent and Trademark Office (the "USPTO") published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the "2019 Revised Guidance"). That guidance revised the
USPTO's examination procedure with respect to the first step of the
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Mayo/Alice framework by (1) "[p ]roviding groupings of subject matter that
[are] ... considered an abstract idea"; and (2) clarifying that a claim is not
"directed to" a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50. The 2019 Revised
Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id. 2
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are "directed to" a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that "integrate the
uudicial] exception into a practical application," i.e., that apply, rely on, or
2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE ("MPEP") § 2106.04(II) and also supersedes all versions of the
USPTO's "Eligibility Quick Reference Sheet Identifying Abstract Ideas."
See 2019 Revised Guidance, 84 Fed. Reg. at 51 ("Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon."). Accordingly,
Appellant's arguments challenging the sufficiency of the Examiner's
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
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use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception ("Step 2A, Prong Two"). Id. at 54-55.
Only if the claim ( 1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
"directed to" the judicial exception, e.g., an abstract idea.
We are not persuaded by Appellant's arguments that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 7-9). The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether 'their character as a whole is directed to excluded subject
matter."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an "abstract idea" for which computers are invoked merely as a
tool. See id. at 1335-36. Here, the Specification (including the claim
language) makes clear that the claims focus on an abstract idea, and not on
any improvement to computer technology and/or functionality.
The Specification is entitled "TRANSMITTING CUSTOM
ADVERTISEMENTS TO A CLIENT DEVICE," and describes, in the
Background section, that although mobile phones and personal digital
assistants (PD As) typically include functionality for providing a
telephone/data communication link, and a set of software applications (e.g.,
a calendar, email client, mini-browser, and word processor), very few of
these devices include image input capabilities, voice recording capabilities,
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significant voice control capabilities, or location determining or location
based capabilities (Spec. ,i 3). In addition, although users often carry
portable devices when traveling through cities, shopping complexes, and
other facilities and geographical areas, the Specification describes that these
devices typically lack Web services capabilities or access and, as a result,
fail to provide substantial mobile e-commerce services, location based
functions, and functions or services available through the use of a wireless
LAN (id. ,i 4). According to the Specification, "to date," venders have not
been able to take advantage of location information associated with
customers and potential customers or obtain information about prospective
customers (id. ,i 5). "Consequently, venders are typically not aware of the
nearby or approaching presence of a past customer, potential customer, or
person seeking a product that the vender offers" (id.). And, even if a vender
had such information, the vendor has no mechanism for presenting
advertisements to the person or otherwise enticing the person to visit the
vender store location or make a purchase (id.). Moreover, even if such a
mechanism were in place, the vender typically has no information about the
person that can be used as a basis for selecting an advertisement to be
presented to the person or for customizing such an advertisement (id.).
The claimed system and method are ostensibly intended to address
these deficiencies by providing, inter alia, "location based services, location
based mobile e-commerce, automated processing, wireless network
communications, [ and] mobile telephone communications" (id. ,i 6).
Claim 1, thus, recites a method for transmitting an advertisement to a client
device comprising: (1) determining the location of the client device, and
selecting an advertisement, from a plurality of available advertisements,
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based on the location of the client device, information concerning a user of
the client device, targeting criteria associated with the available
advertisements, and a location of a vender associated with the available
advertisements, i.e., "selecting, via a processor, an advertisement from a
plurality of available advertisements based on information in a profile of a
user and also based on targeting criteria associated with the available
advertisements" and "determining a location of the client device, wherein
selecting the advertisement from the plurality of available advertisements is
further based on the location of the client device and a location of a vender
associated with the available advertisements" (steps (a) and ( c ));
(2) transmitting the selected advertisement to the client device for
presentation to the device user, i.e., "transmitting to the client device via a
communication network the advertisement selected from the plurality of
available advertisements so that the advertisement can be presented via the
client device" ( step (b) ); (3) "receiving from the client device via the
communications network a response to the advertisement" (step ( d)); and
( 4) "transmitting notification of a vender product based on the location of
the client device and the response to the advertisement, i.e., "transmitting to
the client device via the communication network a notification of an existing
product of the vender based on the location of the client device and the
response to the advertisement" (step ( e )).
These limitations, when given their broadest reasonable interpretation,
recite collecting information, selecting an advertisement based on the
collected information, transmitting the selected advertisement to a user
device, and depending on the user's response to the advertisement,
transmitting additional targeted product information to the user device -
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i.e., targeted advertising, which a method of organizing human activity, and,
therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
The Federal Circuit has held similar concepts abstract. Thus, for
example, the Federal Circuit has held that abstract ideas include the concepts
of collecting data, analyzing the data, and displaying the results of the
collection and analysis, including when limited to particular content. See,
e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying,
and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
analyzing information, without more, as matters within the realm of abstract
ideas); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) ("As many cases make clear, even if a process of collecting
and analyzing information is 'limited to particular content' or a particular
'source,' that limitation does not make the collection and analysis other than
abstract.") (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing
cases)). Targeting customers with particular targeted marketing material
also is a longstanding marketing and advertising practice, and is
substantially similar to other commercial practices that the courts have held
patent ineligible. See, e.g., Affinity Labs of Texas, LLC v. Amazon.com, Inc.,
838 F.3d 1266, 1271 (Fed. Cir. 2016) (customizing a user interface to have
targeted advertising based on user information); Morsa v. Facebook, Inc.,
77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014), ajf'd, 622 F. App'x 915
(Fed. Cir. 2015) ( concluding that targeting advertisements to certain
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consumers is no more than an abstract idea); Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring
information presented to a user based on particular information);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713 (Fed. Cir. 2014)
( offering media content in exchange for viewing an advertisement).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1 ), we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2).
The only additional elements recited in claim 1, beyond the abstract
idea, are the recited "processor," "client device," and "communications
network" - elements that are recited at a high level of generality, i.e., as
generic computer components performing generic computer functions (see,
e.g., Spec. ,-J,-J 27, 31, 40, 43, 412). We find no indication in the
Specification, nor does Appellant direct us to any indication, that the
operations recited in claim 1 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
assertedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.").
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
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improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the claimed invention integrates the abstract
idea into a "practical application," as that phrase is used in the 2019 Revised
Guidance. 3
Appellant asserts that the Examiner has failed to properly address
"determining a location of the client device," as recited in claim 1; that the
Examiner refers to this limitation only as "determining a location," omitting
"of the client device"; and that the Examiner and has, thus, improperly
characterized the claims as directed to an abstract idea (Appeal Br. 8-9).
Appellant, thus, maintains that even if "targeted advertising is a fundamental
economic practice or [a] method of organizing human activity as alleged by
the Examiner, ... targeting advertising to a client device is not" (id. at 8
(noting that a client device "does not decide to make a purchase" and "is not
a human" and arguing that adding the client device to the claim language
"fundamentally changes the meaning of the claim," i.e., "the addition of 'the
client device' is not merely performing the determining by the client
device"; rather, "the addition characterizes what is performed, the
determination of the location of the client device")).
Appellant's argument, as best understood, is that claim 1 is not
directed to an abstract idea, i.e., to targeted advertising, because the claim
3 The 2019 Revised Guidance references MPEP § 2106.05(a)-(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not "directed to" the judicial exception.
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requires physical components, i.e., "non-abstract devices with known
positions and [a] combination of data from signals[,] from satellites[,] or
from the client device, received at the cell towers to determine the position
of the client device" (Reply Br. 1-2). Yet, "not every claim that recites
concrete, tangible components escapes the reach of the abstract-idea
inquiry." In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611-12
(Fed. Cir. 2016). Similar to the situation in In re TL! Communications,
claim 1 is not directed to an improvement in any physical device; the recited
physical components, including the "processor," "client device," and
"communications network," merely provide a generic platform on which to
carry out the abstract idea, i.e., targeted advertising. Indeed, it could not
clearer from the Specification that the sole reason for determining a location
of a client device, and selecting and transmitting an advertisement to the
client device based on the determined physical location, is to facilitate the
presentation of the advertisement to the human user of that client device,
i.e., to take advantage of location information associated with customers and
potential customers as a basis for targeting advertisements to those
customers and potential customers (see, e.g., Spec. ,i 5).
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic
components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223-24 ("[W]holly generic computer implementation is
not generally the sort of 'additional feature [ e]' that provides any 'practical
assurance that the process is more than a drafting effort designed to
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monopolize the [ abstract idea] itself."' ( quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an "inventive concept," i.e., whether the additional elements
amount to "significantly more" than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant asserts that even "[ a Jssuming for the sake of argument that
the claims are directed towards an abstract idea, ... the present claims ...
nonetheless satisfy § 101 because the claims as a whole recite significantly
more than that alleged abstract idea" (Appeal Br. 9). Appellant argues that
"the claim language does not merely take the alleged abstract idea and add
'apply it using a generic computer"' (id.), and summarily asserts that the
claims recite more than a generic computer (id. at 10). Yet, we find no
indication in the Specification, nor does Appellant direct to any indication,
that any of the recited "processor," "client device," and "communications
network" is anything other than a generic computer component. The
Specification, in fact, discloses just the opposite. 4
4 See, e.g., Spec. ,i 27 (explaining that detailed descriptions of well-known
networks, communication systems, computers, terminals, devices,
components, techniques, data and network protocols, formats, software
products and systems, enterprise applications, operating systems, enterprise
technologies, middleware, interfaces, and hardware are "omitted so as not to
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Appellant further asserts that "the addition of 'of the client device' is
not mere data processing by a 'generic computer"' but instead "further
characterizes the particular operation" (App. Br. 10). Appellant, thus,
maintains that "the system must be capable of determining a location of a
client device, not just mere moving data or thinking about a client device"
(id.). Yet, we find nothing in the Specification (including the claim
language) that discloses any specialized hardware or assertedly inventive
programming for determining the location of the client device. Claim 1
merely recites "determining a location of the client device" without any
technical details regarding how the location of the device is determined.
And although Appellant, by its argument, suggests such details exist, those
details are not reflected in the claim. Cf Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) ("The claim
language here provides only a result-oriented solution with insufficient detail
for how a computer accomplishes it. Our law demands more."). It also is
particularly telling that, in describing the various embodiments, the
obscure the description of the various embodiments"); id. 31 ( disclosing that
multi-function communication device 101, i.e., the claimed "client device,"
includes "conventional mobile phone and personal digital assistant (PDA)
capabilities" and one or more functional modules, each "comprised of a
combination of hardware and software and may share (i.e., may be formed
by) hardware and software of other modules as is well known in the art"); id.
,i 40 ("Preferably, the device 101 is configured to operate with a
conventional mobile telephone network or wireless wide area network
(WWAN), and one or more other wireless local area networks (wireless
LAN or WLAN), wireless Metropolitan Area Networks (MAN), and a
wireless personal area networks (PAN) (e.g., a Bluetooth® network)."); id.
,i 43 ("The following descriptions of various networks, standards, formats
and protocols are well-known in the art, [and] are provided as a matter
convenience.").
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Specification states that "any suitable means of determining an absolute or
relative location [ of device 101, i.e., the claimed "client device"] that is
suitable for the embodiment or an application may be used" (Spec. ,i 97).
Appellant's further argument that the claims pose no credible risk of
preemption (Appeal Br. 10-12) is similarly unpersuasive of Examiner error.
Although the Supreme Court has described "the concern that drives [the
exclusion of abstract ideas from patent-eligible subject matter] as one of pre-
emption," Alice Corp., 573 U.S. at 216, characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. "The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability" and "[fJor 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 Corp.,
573 U.S. at 216). "[P]reemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility." Id.
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 1 recites significantly more than an abstract
idea because the claim is allegedly novel and/or non-obvious (Appeal
Br. 12). Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent eligible. Although the second step in the Mayo/Alice framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for "an element or
combination of elements that is 'sufficient to ensure that the patent in
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice Corp., 573 U.S. at217-18 (citation omitted).
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188-89
(1981) ("The 'novelty' of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of claim 1, and claims 3-17 and 19-23,
which fall with claim 1.
Indefiniteness
We are persuaded that the Examiner erred in rejecting claims 8, 9, and
19 under 35 U.S.C. § 112, second paragraph. The Examiner takes the
position that "causing an additional-information indication to be presented
on a display associated with the client device," as recited in claim 8, and
similarly recited in claims 9 and 19, renders the claim unclear in that "one of
ordinary skill [in the art] would not be able to ascertain what the positive
step is since 'causing' represents state rather than action" (Final Act. 10-11).
We disagree.
In our view, a person of ordinary skill in the art would understand
from the Specification (including the claim language) what is being claimed,
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namely that "an additional-information indication" (i.e., an indication that
additional information associated with an advertisement is available) is
presented on a display associated with the client device. Therefore, we do
not sustain the Examiner's rejection of claims 8, 9, and 19 under 35 U.S.C.
§ 112, second paragraph. See Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under
35 U.S.C. § 112, second paragraph, is whether "those skilled in the art
would understand what is claimed when the claim is read in light of the
specification.").
Obviousness
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claims 1, 15, and 20 under 35 U.S.C. § 103(a) at least
because neither Jokinen nor Nye, individually or in combination, discloses
or suggests "transmitting to the client device ... a notification of an existing
product of the vender based on the location of the client device and the
response to the advertisement," as recited in claim 1, and similarly recited in
claims 15 and 20 (Appeal Br. 17-19; Reply Br. 3-4).
In Final Office Action, the Examiner acknowledged that Jokinen does
not teach the argued limitation, and relied on paragraphs 156-170, 172, 196,
208,213, and 221, claims 3-5, and Figures 15 and 16 ofNye to cure the
deficiency of Jokinen (Final Act. 12). The Examiner takes a different
position in the Answer, relying on paragraphs 61, 134, 136, 144, 155, 176,
177, 216 and Figures 3, 15, and 16 ofNye as disclosing the argued limitation
(Ans. 10-12). And, in a further reversal of the position set forth in the Final
Office Action, the Examiner also cites paragraphs 53-58 and 63 of Jokinen
as disclosing the argued feature (id. at 12).
17
Appeal2018-000642
Application 13/335,354
We have carefully reviewed the portions of Nye and Jokinen on which
the Examiner relies. And we agree with Appellant that none of the cited
portions discloses or suggests transmitting a notification of an existing
product to a client device based on the location of the device and the
response to an advertisement (Appeal Br. 17-19; Reply Br. 3-4).
Therefore, we do not sustain the Examiner's rejection of independent
claims 1, 15, and 20 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the rejection of dependent claims 3-14, 16, 17, 19, and
21-23. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent
claims are nonobvious if the independent claims from which they depend are
nonobvious").
CONCLUSION
In summary:
1 3-17 19-
' '
101 Eligibility 1, 3-17,
23 19-23
8,9, 19 112, second Indefiniteness 8,9, 19
paragraph
1 3-17 19-
' '
103(a) Jokinen, Nye 1 3-17 19-
' ' 23 23
Overall 1, 3-17,
Outcome 19-23
18
Appeal2018-000642
Application 13/335,354
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
19