Carlos Munoz

Patent Trials and Appeals Board

Sep 30, 2021

2020001031 (P.T.A.B. Sep. 30, 2021)

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.
14/885,989 10/16/2015 Carlos A. Munoz Mun_DatLoc_091815 6675
7590 09/30/2021
ROBERT L. KNECHTEL
6231 E. MARK WAY
NUMBER 14
CAVE CREEK, AZ 85331
EXAMINER
ALMANI, MOHSEN
ART UNIT PAPER NUMBER
2159
MAIL DATE DELIVERY MODE
09/30/2021 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte CARLOS A. MUNOZ
________________

Appeal 2020-001031
Application 14/885,989
Technology Center 2100
________________

Before JOSEPH L. DIXON, JASON V. MORGAN, and LARRY J. HUME,
Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–10, 16–25, and 27.1 Claims 11–15,
26, and 28–30 are canceled. Supp. Appeal Br. 4, 7–8 (June 10, 2019). We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the inventor as the real party in interest. Appeal Br. 3. Herein,
unless otherwise noted, we cite to the Final Action filed July 6, 2018, the
Appeal Brief filed March 7, 2019, the Answer filed October 10, 2019, and
the Reply Brief filed November 12, 2019.
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SUMMARY OF THE DISCLOSURE
Appellant’s claimed subject matter relates to “a web-based and mobile
device application service that enables customizable product or service
information retrieval from the Internet through the input of a unique product
or service identifier and a location parameter.” Abstract.
REFERENCES
The Examiner relies on the following references (only the first named
inventor or author of each reference is listed):
Name Reference Date
Goodrich US 2007/0043770 A1 Feb. 22, 2007
Kiaman US 2014/0365387 A1 Dec. 11, 2014
Shinaro Okazaki et al., Benchmarking the Use of QR Code in Mobile
Promotion: Three Studies in Japan, J. of Advert. Res. 52(1), 102–17
(2012) (“Okazaki”)
REJECTIONS
The Examiner rejects claims 1–10, 16–25, and 27 as follows:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Citation
1–10, 16–25, 27 101 Eligibility Final Act. 3–4; Ans. 4–5
10, 25 112(b)2 Indefiniteness Final Act. 5
1, 2, 4–6, 9, 16,
17, 19–21, 24
102(a)(2) Kiaman Final Act. 6–11
3, 10, 18, 25, 27 103 Kiaman, Okazaki Final Act. 11–13
7, 8, 22, 23 103 Kiaman, Goodrich Final Act. 14–15

2 We summarily affirm the examiner’s 35 U.S.C. § 112(b) rejection of
claims 10 and 25, which, as the Examiner notes, Appellant does not address.
Ans. 3.
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PRINCIPLES OF LAW
To constitute patent-eligible subject matter, an invention must be a
“new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in 35 U.S.C. § 101, including: (1) laws of nature; (2) natural phenomena;
and (3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). The U.S. Supreme Court has set forth a framework for
distinguishing patents with claims directed to these implicit exceptions
“from those that claim patent-eligible applications of those concepts.” Id. at
217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66 (2012)). The evaluation follows a two-part framework: (1) determine
whether the claim is directed to a patent-ineligible concept, e.g., an abstract
idea; and (2) if so, then determine whether any element, or combination of
elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the patent-ineligible concept itself. See id. at 217–18.
Under U.S. Patent and Trademark Office (“USPTO”) 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) (MPEP § 2106.04(a)(2) (9th Ed.,
Rev. 10.2019, June 2020); USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan.
7, 2019) (“2019 Revised Guidance”) (step 2A, prong one);
USPTO, October 2019 Update: Subject Matter Eligibility, 3–9,
available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf (Oct. 17, 2019) (“Oct.
2019 Update”); and
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(2) additional elements that integrate the judicial
exception into a practical application (MPEP §§ 2106.04(d),
2106.05(a)–(c), (e)–(h); 2019 Revised Guidance, 84 Fed. Reg.
at 54–55; Oct. 2019 Update at 10–14).
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; 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.
MPEP § 2106.05(d); 2019 Revised Guidance, 84 Fed. Reg. at 56; Oct. 2019
Update at 16.
ANALYSIS
Claim 1, which is exemplary with respect to claims 1–10 and 16–24,
is reproduced below (disputed limitations emphasized).
1. A method of retrieving product or service information from
the Internet using a computing device including:
(a) accessing the Internet;
(b) contacting a specific remote, centralized web-based search
function;
(c) [inputting] search criteria in the form of a unique product or
service code and a location identifier into the remote,
centralized web-based search function;
(d) activating the search function; and,
(e) retrieving search results based upon the search criteria that
indicate the location of products or services based upon a
unique product or service code.
Supp. Appeal Br. 2 (June 10, 2019).
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35 U.S.C. § 101 (Claim 1)
Step 1
In determining whether claim 1 is patent-eligible, the Examiner notes
that the method of claim 1 “is directed to one of the statutory categories of
invention (a process, machine, manufacture or composition of matter).”
Final Act. 3. Independent method claim 16, and dependent claims 2–10 and
15–24, are each similarly directed to a statutory category of patent-eligible
subject matter. Thus, the next step is determining whether claim 1 falls
within one of the implicit exceptions to the categories of patentable subject
matter.
Step 2A—prong one
The Examiner determines that claim 1 recites an abstract idea in the
form of certain methods of organizing human activity such as sales activities
or behavior. Ans. 4, 6. Specifically, the Examiner determines that claim 1
allows “for searching for a product or service using a generic computing
device.” Id.
Appellant contends the Examiner erred because the claimed invention
is not restricted to use in organizing human activities such as sales activities
or behavior. Reply Br. 7. But even if claim 1 encompasses embodiments that
are not abstract, a claim that covers both statutory and non-statutory
embodiments is patent-ineligible. See Mentor Graphics Corp. v. EVE-USA,
Inc., 851 F.3d 1275, 1295 (Fed. Cir. 2017) (citing as instructive MPEP
§ 2106 (9th ed. Mar. 2014)).
Claim 1 recites inputting a “search criteria in the form of a unique
product or service code and a location identifier,” activing a “search
function” (i.e., perform a search), and “retrieving search results based upon
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the search criteria that indicates the location of products or services based.”
Similarly, the Specification discloses sellers of goods or services providing
searchable data (Spec. 3:3–11) that users retrieve (through an activated
search function) to identify the best location to acquire a good or service (id.
at 10:20–22) and “[a]lternatively, a user may be in a store and wants to see
whether that store has the best price for a certain product” (id. at 11:1–2).
Thus, even if other types of data could be retrieved using the claimed
method, claim 1 recites steps that encompass providing a user with
information for identifying the best location to acquire a good or service.
Therefore, claim 1 recites an abstract idea in the form of certain methods of
organizing human activity (i.e., sales activities or behavior). Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (“claims directed to the mere formation and
manipulation of economic relations may involve an abstract idea”); In re
Elbaum, No. 2021-1719, 2021 WL 3923280, at *2 (Fed. Cir. Sept. 2, 2021)
(“a method of providing information and allowing customers to utilize that
information to engage in a commercial transaction” was directed to an
abstract idea).
Step 2A—prong two
The Examiner further determines that the judicial exception of claim 1
is not integrated into a practical application because claim 1 recites “using ‘a
computing device’ for accessing, contacting, [inputting], activating and
retrieving at a high-level of generality . . . such that it amounts [to] no more
than mere instructions to apply the exception using generic computer
components.” Ans. 4; Final Act. 17.
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Appellant contends the Examiner erred because “[t]he Examiner
merely recites to a generic computing device and attempts to justify this by
reciting various facets of the invention, including the lumping in of the
relevant claim limitation, unique product or service code and location
identifier, into the listing.” Reply Br. 7–8. Appellant further argues the
claimed invention “yields a heretofore unknown result through the entry of
both a product or service code and a location identifier.” Id. at 8. That is,
Appellant argues “the claimed invention effects a specific improvement in
the performance of this technology by the additional requirement of the code
and identifier.” Id.
Appellant’s arguments are not persuasive. In addition to the
recitations discussed above directed to certain methods of organizing human
activity, claim 1 recites “accessing the Internet,” “contacting a specific
remote, centralized web-based search function,” inputting search criteria into
a “remote, centralized web-based search function,” “activating the search
function,” and “retrieving search results based upon the search criteria.”
These recitations limit the field of the claimed invention to the field of
computer and internet-based technologies. But this is not enough to
transform the recited abstract idea into a patentable practical application.
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097 (Fed. Cir.
2016) (“limiting the claims to the computer field does not alone transform
them into a patent-eligible application”); Intell. Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1319–20 (Fed. Cir. 2016) (using a technological
environment such as the internet or telephone networks does not make an
abstract idea patent-eligible).
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Importantly, nothing in claim 1 improves the recited computer and
networking (i.e., internet) technologies. TecSec, Inc. v. Adobe Inc., 978 F.3d
1278, 1293 (Fed. Cir. 2020). Rather, the computer and networking
technologies are merely invoked as tools. Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1336 (Fed. Cir. 2016). Even the sweepingly broad recitation
of a “unique product or service code” lacks specificity or any technical
details that might represent an improvement in computer or network
functionality. Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d
905, 910 (Fed. Cir. 2017) (a claim reciting use of a barcode as part of the
process for mailing—wherein the barcode did not have a new format and
was neither generated nor scanned in an improved way—was abstract).
Furthermore, the recited technologies are invoked to solve a problem
not specifically arising in the realms of computer and networking
technologies. The claimed solution (searching for products or services in a
particular location) also is not necessarily rooted in such technologies. DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
For example, we find that catalogs of business, identified by the types of
goods and services they provide and limited to businesses within a particular
location, have long been published and distributed. Even if such catalogs did
not identify every good or service offered by such business in particular
detail, it would have been known that consumers could use such catalogs to
contact businesses likely to carry a particular good or particular service to
inquire as to the availability and cost of the good or service (possibly
identifying a good by a unique identifier such as a part number).
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For these reasons, we agree with the Examiner that claim 1 does not
include additional recitations that integrate the underlying abstract idea into
a patent-eligible invention.
Step 2B
With respect to step 2B, the Examiner determines the claim 1
recitations “of accessing, contacting, [inputting], activating and retrieving
using a computer device amounts to no more than mere instructions to apply
the exception using generic computer components.” Ans. 4. Thus, the
Examiner determines that claim 1 “does not include additional elements that
are sufficient to amount to significantly more than the judicial exception.”
Id.
Appellant contends the Examiner “particular, the claims require the
claim limitation of including a product or service code and location
identifier. Nowhere does the Examiner address these elements in
combination as required under Alice.” Reply Br. 9.
Appellant’s arguments are not persuasive. The recitation of a “unique
product or service code” encompasses “any identifier that will retrieve the
desired product or service, such as a universal pricing code (UPC), a stock
keeping unit (SKU), multiple listing service number (MLS), or any other
standardized coding system.” Spec. 2:21–23. “A location identifier can be a
zip code, address, global positioning system coordinate (GPS), town, city,
street, state, country, address name (e.g., distribution warehouse, bank), or
other location identifying system.” Id. at 3:1–3. Combining these well-
known identifiers does not result in an improvement in the computer and
network technologies claimed. BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016). Rather, combining
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these identifiers in the claimed manner represents applying the well-known
idea of performing a search for a product or service, limited to a particular
location (e.g., through the use of location-specific business catalogs), and
applying it to computer and networking technologies. Id.
Appellant further argues the Examiner “does not specifically address
that the claims also require accessing a ‘web-based search function.’”
Appeal Br. 18. The Specification, however, acknowledges that keyword
searching was a known technology. Spec. 1:21–22. The Specification also
identifies a number of search engines that were commercially available and
that could provide the “web-based search function.” E.g., id. Fig. 3
(“SEARCH ENGINES SUCH AS GOOGLE, YAHOO, OR BING . . . OR
FACEBOOK OR TWITTER WILL INDEX AND CRAWL PRODUCT
DATABASE OR INTERNET . . . TO GENERATE SEARCH RESULTS”).
Placing the identifiers in searchable data (including the well-known
identifiers of product or service codes and locations) would have allowed the
disclosed commercially available search engines to index the searchable data
with the identifiers serving as searchable keywords. The Specification
further identifies that “the flowcharts referenced to herein are for illustration
purposes only. They are meant to serve as an aid in describing the
embodiments of the present invention, but are not meant to constrain
implementation thereof to any particular hardware or software embodiments.
Spec. 6:3–6. Thus, the web-based search function was also well-understood,
routine, and conventional. See generally Spec. 11–15.
For these reasons, we agree with the Examiner that claim 1 does not
include additional elements that transform the abstract idea of claim 1 into a
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patent-eligible invention. Accordingly, we sustain the Examiner’s 35 U.S.C.
§ 101 rejection of claim 1.
35 U.S.C. § 101 (Claims 2–10 and 16–24)
Appellant submits that in rejecting the remaining claims under 35
U.S.C. § 101, “[n]o discussion of independent claim 16 or any dependent
claim is provided.” Appeal Br. 17. The Examiner, however, persuasively
addresses the distinctions between the remaining claims and exemplary
claim 1. Ans. 5. Appellant does not address the Examiner’s findings and
conclusions with respect to the 35 U.S.C. § 101 rejection of the remaining
claims. As a result, we exercise our authority and group independent claims
and dependent claims with claim 1 as the representative claim for the group.
37 C.F.R. § 41.37(c)(1)(iv). Therefore, we also sustain the Examiner’s 35
U.S.C. § 101 rejection of claims 2–10 and 16–24. Arguments which
Appellant could have made but did not make in the Brief are deemed to be
waived. Id.
35 U.S.C. § 102(a)(2) (Claims 1, 2, 4–6, 9, 16, 17, 19–21, 24)
In rejecting claim 1 as anticipated, the Examiner finds that Kiaman’s
search fields—which include both (1) location fields such as address, zip
code, city, and state and (2) a unique product or service code (specifically,
an MLS number)—discloses inputting “search criteria in the form of a
unique product or service code and a location identifier into the remote,
centralized web-based search function.” Final Act. 6–7 (citing Kiaman ¶ 28).
In particular, the Examiner notes that Kiaman discloses a search interface
where both types of search criteria can be entered in a single form. Ans. 8–9
(further citing Kiaman ¶¶ 26, 34, Figs. 4-1 of 4A, 5-1 of 5A, 6-1 of 6A).
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Appellant contends the Examiner erred because an “MLS listing
refers to a very specific piece of property.” Appeal Br. 24. That is, Appellant
argues that searching for an MLS listing does not also require use of a
geographic range or location. Id.
The Examiner correctly notes that the Specification discloses that an
MLS number is an example of a unique product or service code. Ans. 8
(citing Spec. 2–3). Nonetheless, we agree with Appellant that Kiaman falls
short of disclosing submitting a search for both an MLS number and a
location.
The cited figures of Kiaman show a homepage a buyer may log into
that includes both location and unique product or service code fields. E.g.,
Kiaman ¶ 36, Fig. 4-1 of 4A. The buyer uses these fields to “look[] up or
access[] properties or listings.” Id. ¶ 36 (emphasis added). That is, the buyer
can use the MLS number field to look up particular properties or the buyer
can access listings (a general list of available properties) in a particular
location. But Kiaman does not disclose searching for particular properties in
a particular location (i.e., inputting both a unique product or service code
and a location identifier as search criteria). Therefore, we agree with
Appellant that the Examiner’s findings do not show that Kiaman discloses
the disputed recitation of claim 1.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 102(a)(2)
rejection of claim 1, and independent claim 16 and dependent claims 2, 4–6,
9, 17, 19–21, and 24, which contain similar recitations and are similarly
rejected.
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35 U.S.C. § 103 (Claims 3, 7, 8, 10, 18, 22, 23, 25, and 27)
The Examiner does not present additional findings or analysis
showing that the disputed recitation of exemplary claim 1, would have been
obvious in light of the teachings and suggestions of Kiaman. Nor does the
Examiner show that Okazaki or Goodrich cure the noted deficiency of
Kiaman. Accordingly, we also do not sustain the Examiner’s 35 U.S.C.
§ 103 rejection of claims 3, 7, 8, 10, 22, 23, 25, and 27.
CONCLUSION
We affirm the Examiner’s decision to reject claims 1–10, 16–25,
and 27.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10,
16–24
101 Eligibility 1–10, 16–25, 27
10, 25 112(b) Indefiniteness 10, 25
1, 2, 4–6, 9,
16, 17,
19–21, 24
102(a)(2) Kiaman 1, 2, 4–6,
9, 16, 17,
19–21, 24
3, 10, 18,
25, 27
103 Kiaman, Okazaki 3, 10, 18,
25, 27
7, 8, 22, 23 103 Kiaman, Goodrich 7, 8, 22, 23
Overall
Outcome
1–10, 16–25, 27
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TIME PERIOD FOR RESPONSE
No time period for taking 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).
AFFIRMED