Ex Parte Carr et al

Patent Trials and Appeals Board

Jul 8, 2019

12894287 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/894,287 09/30/2010
107508 7590 07/10/2019
Kilpatrick Townsend & Stockton LLP/ Amazon, Inc
Mailstop: IP Docketing 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Michael Carr
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.
090204-0961863
(Rl08105)
5722
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
ipefiling@kilpatricktownsend.com
A TI-Patents@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL CARR and BHA VNISH H. LATHIA
Appeal2018-001540
Application 12/894,287 1
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Amazon Technologies,
Inc. App. Br. 1.
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Application 12/894,287
STATEMENT OF THE CASE2
Michael Carr and Bhavnish H. Lathia (Appellants) seek review under
35 U.S.C. § 134 ofa final rejection of claims 1, 3, 7, 8, 24--27, 29, 39-43,
45, 48, 50, and 51, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
The Appellants invented a way of facilitating transactions based on
geolocation and unique user identification. Specification para. 26.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method under control of one or
more computer systems configured with executable
instructions, the method comprising:
[1] receiving, from a mobile device, a request for one or more
coupons that are relevant to a geolocation of the mobile device;
[2] receiving location data of the mobile device to determine the
geolocation of the mobile device,
wherein the location data is received based at least in part
on a location sensor associated with the mobile device;
[3] accessing, from a database, a user profile of a user of the
mobile device,
wherein the user profile comprises a list of items of
interest to the user, and wherein the list of items of
interest comprises at least one of a wish list or a shopping
cart;
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed June 26, 2017) and Reply Brief ("Reply Br.," filed November 27,
2017), and the Examiner's Answer ("Ans.," mailed October 2, 2017), and
Final Action ("Final Act.," mailed February 3, 2017).
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[ 4] receiving a plurality of bids from a merchant device to send
coupons to the mobile device,
wherein the merchant device is associated with a
merchant offering at least one item from the list of items
of interest;
[ 5] storing information about the bids and the coupons in the
database,
the information comprising respective time periods
during which the coupons are valid;
[6] determining a travel speed of the mobile device based at
least in part on the location data of the mobile device;
[7] selecting, based at least in part on the information stored in
the database, a coupon corresponding to a bid of the plurality of
bids and relevant to the geolocation of the mobile device,
the coupon associated with a time period during which
the coupon is valid,
the coupon being selected from the coupons based at
least in part on a determination that the travel speed of
the mobile device allows the mobile device to arrive at a
location of the merchant device within the time period
during which the coupon is valid;
[8] authenticating the user based at least in part on a handshake
with an authentication module of the mobile device,
the handshake based at least in part on a unique identifier
of the user and on a history of interactions between the
one or more computer systems and the mobile device;
[9] sending the coupon to the mobile device
and
based at least in part on the user being authenticated,
wherein the sending activates the mobile device to
present the coupon at a predetermined distance from the
location of the merchant device, the predetermined
distance based at least in part on the travel speed of the
mobile device;
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[10] updating the information stored in the database such that
the coupon is expired based at least in part on a second
determination that the mobile device has traveled away from
the location of the merchant device by a distance that exceeds a
distance threshold.
Claims 1, 3, 7, 8, 24--27, 29, 39-43, 45, 48, 50, and 51 stand rejected
under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
Claims 1, 3, 7, 8, 24--27, 29, 39-43, 45, 48, 50, and 51 stand rejected
under 35 U.S.C. § 112(a) as lacking a supporting written description within
the original disclosure.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of written description matter tum primarily on whether the
Specification supports limitation 10 of claim 1.
ANALYSIS
Claims 1, 3, 7, 8, 24-27, 29, 39-43, 45, 48, 50, and 51 rejected under 35
US.C. § 101 as directed to a judicial exception without significantly more
STEP 12
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) ("Revised Guidance").
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STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat
else is there in the claims before us? To answer that question,
... 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. [The Court] described step two of
this analysis 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."
Alice Corp. v CLS Banklnt'l, 573 U.S. 208, 217-18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions ( a law of nature, a natural phenomenon, or an
abstract idea). Then, if claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims "apply, rely on, or 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." Revised Guidance at 54. If the
claims are directed to a judicial exception, then finally determining whether
the claims provide an inventive concept because the additional elements
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recited in the claims provide significantly more than the recited judicial
exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites receiving a request and location data, accessing a user profile,
receiving and storing bid data, determining a travel speed, selecting coupon
data, authenticating based on handshake data, sending coupon data, and
updating coupon data. Accessing a profile is receiving data from the profile.
Determining a speed, selecting a coupon, and authenticating based on
handshake data are further data reception followed by generic analysis of the
data. Thus, claim 1 recites receiving, storing, analyzing, transmitting, and
updating data. None of the limitations recite technological implementation
details for any of these steps, but instead recite only results desired by any
and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods
4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Tel. Co. v. Radio Corp.
of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
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of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 1 recites the concept of
marketing promotion. Specifically, claim 1 recites operations that would
ordinarily take place in advising one to send or mark as expired selected
coupon data based on an authenticated user and location data, the selection
based on user, location, and bid data. The advice to send or mark as expired
selected coupon data based on an authenticated user and location data, the
selection based on user, location, and bid data involves issuing promotional
coupons, which is an economic act, and selecting coupons, which is an act
ordinarily performed in the stream of commerce. For example, claim 1
recites "sending the coupon," which is an activity that would take place
whenever one is issuing promotional coupons. Similarly, claim 1 recites
"selecting ... a coupon" and "authenticating the user," which are also
characteristics of marketing promotional campaigns.
The Examiner determines the claims to be directed to selecting based
at least in part on the information stored, a coupon corresponding to a bid of
the plurality of bids and relevant to the geolocation. Final Act. 4.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in sending and updating coupon data absent any
technological mechanism other than a conventional computer for doing so.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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As to the specific limitations, limitations 1-5 recite generic receiving
and storing of data. Limitations 7, 9, and 10 recite selecting data, sending
data, and marking data, which are rudimentary generic computer operations.
At best, these limitation recite criteria for which data the operations apply to,
which is in tum generic data processing. Limitations 6 and 8 recite
determining a speed and authenticating a user, but by advising one to apply
generic functions to get to these results. Each of these limitations is broad
enough to encompass simply reading data from some source outside the
scope of the claim. The limitations thus recite advice for sending or marking
as expired selected coupon data based on an authenticated user and location
data, the selection based on user, location, and bid data. To advocate
sending or marking as expired selected coupon data based on an
authenticated user and location data, the selection based on user, location,
and bid data is conceptual advice for results desired and not technological
operations.
The Specification at paragraph 26 describes the invention as relating
to facilitating transactions based on geolocation and unique user
identification. Thus, all this intrinsic evidence shows that claim 1 is directed
to using coupons based on user and location to promote sales, i.e. marketing
promotion. This is consistent with the Examiner's determination.
This in tum is an example of fundamental economic practices,
commercial or legal interactions, and managing personal behavior or
relationships or interactions between people as a certain method of
organizing human activity because marketing promotion is itself a
fundamental economic practice, as evidenced by its history and
pervasiveness; marketing promotion is itself the commercial interaction
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between organization and potential customers to persuade a customer to
make a purchase; and marketing promotion is the creation of relationships
and interactions between organization and potential customers to promote
sales. The concept of marketing promotion by sending or marking as
expired selected coupon data based on an authenticated user and location
data, the selection based on user, location, and bid data is one idea for
creating a coupon promotion. The steps recited in claim 1 are a part of how
this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. See Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (using advertising).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, storing, analyzing,
transmitting, and updating data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data reception, storage,
analysis, transmission, and update, and does not recite an improvement to a
particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation"). As such, claim 1 is directed to receiving, storing,
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analyzing, transmitting, and updating data, and not a technological
implementation or application of that idea.
From this we conclude that, at least to this degree, claim 1 is directed
to marketing promotion by sending or marking as expired selected coupon
data based on an authenticated user and location data, the selection based on
user, location, and bid data, which is a commercial and legal interaction, one
of certain methods of organizing human activity identified in the Revised
Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself, or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. "[ A Jpplication[ s ]" of such
concepts " 'to a new and useful end,' " we have said, remain
eligible for patent protection.
Accordingly, in applying the § 101 exception, we must
distinguish between patents that claim the " 'buildin[g]
block[ s]' " of human ingenuity and those that integrate the
building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted) (alterations in original).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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devoid of implementation details. Steps 1-5 are pure data gathering steps.
Limitations describing the nature of the data do not alter this. Steps 9 and 10
are insignificant post solution activity, such as storing, transmitting, or
displaying the results. Steps 6-8 recite generic computer processing
expressed in terms of results desired by any and all possible means and so
present no more than conceptual advice. All purported inventive aspects
reside in how the data is interpreted and the results desired, and not in how
the process physically enforces such a data interpretation or in how the
processing technologically achieves those results.
Viewed as a whole, Appellants' claim 1 simply recites the concept of
marketing promotion by sending or marking as expired selected coupon data
based on an authenticated user and location data, the selection based on user,
location, and bid data as performed by a generic computer. This is no more
than conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and does not
recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment8 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of marketing promotion by sending or marking as expired selected
coupon data based on an authenticated user and location data, the selection
8 The Specification describes a mobile phone, a personal digital assistant
(PDA), a laptop computer, or a net book. Spec. para. 31. The Specification
describes the server as a single computing device, among other forms. Id. at
para. 44.
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based on user, location, and bid data under different scenarios. It does not
describe any particular improvement in the manner a computer functions.
Instead, claim 1 at issue amounts to nothing significantly more than an
instruction to apply marketing promotion by sending or marking as expired
selected coupon data based on an authenticated user and location data, the
selection based on user, location, and bid data using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of
marketing promotion by advising one to send or mark as expired selected
coupon data based on an authenticated user and location data, the selection
based on user, location, and bid data, as distinguished from a technological
improvement for achieving or applying that result. This amounts to
commercial or legal interactions, which fall within certain methods of
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organizing human activity that constitute abstract ideas. The claim does not
integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea " 'to a particular technological environment.' "
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[ t ]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 (citations omitted) (alterations in original).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, storing, analyzing, transmitting, and updating data
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amounts to electronic data query and retrieval----one of the most basic
functions of a computer. All of these computer functions are generic,
routine, conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,'
... those functions can be achieved by any general purpose computer
without special programming"). None of these activities are used in some
unconventional manner nor do any produce some unexpected result.
Appellants do not contend they invented any of these activities. In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "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." SAP Am., 898 F.3d at 1168a.
Considered as an ordered combination, the computer components of
Appellants' claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-storage-analysis-
transmission-update is equally generic and conventional. See Ultramercial,
772 F.3d at 715 (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction),
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (sequence of data retrieval, analysis, modification,
generation, display, and transmission), Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of
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processing, routing, controlling, and monitoring). The ordering of the steps
is therefore ordinary and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The other independent method claim 3 is
substantially similar at least as regards this analysis. The remaining method
claims merely describe process parameters. We conclude that the method
claims at issue are directed to a patent-ineligible concept itself, and not to
the practical application of that concept.
There are no structural claims. As a corollary, the claims are not
directed to any particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of marketing promotion by advising one to sending or
marking as expired selected coupon data based on an authenticated user and
location data, the selection based on user, location, and bid data, without
significantly more.
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APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 4--10 and Answer 4--11 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that no prima facie
case is made. Reply Br. 3--4. A prima facie case is presented supra.
We are not persuaded by Appellants' argument that "the present
application [is] related to securing and reducing frictions of geolocation-
based interactions." Reply Br. 5. None of the claims recite or otherwise
mention friction and security. At best, the claims recite authenticating a
user, which is a generic computer operation, and the claims recite no
technological implementation details. To the extent Appellants use the word
"friction" as a metaphor for computer processing burden searching data,
reducing such a burden by simply applying decision criteria to reduce the
data domain as in the claims is generic data processing. The whole, now
ancient, concept of indexing and searching based on data as scope criteria is
premised on this and is itself the generic source of such "friction" reduction.
Simply identifying a better set of data to use as criteria remains no more than
data selection, and not technological implementation.
We are not persuaded by Appellants' argument that
the specification describes and the claims recite a concrete
implementation to achieve a desired outcome, rather than
merely claiming that desired outcome in a functional manner.
As demonstrated in the Appeal Brief, the specification and the
claims related to the technological process of secure,
geolocation-based mobile interactions between a mobile device
and a computing system, where the friction of these interactions
is reduced.
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Reply Br. 6. As we determine supra, there are no technological
implementation details recited in the claims. Appellants do not cite where
the Specification might provide such details unrecited in the claims. Even if
they did provide such citations, this would be to no avail as there are no such
details in the claims.
We are not persuaded by Appellants' argument that
[ u ]nique user identification provides a thread that ties together
information about a particular user (e.g., credit card data), a link
between that user and a given mobile computing device, and the
relationship that user wishes to have with a given merchant
( e.g., opt in to zero-click purchasing).[] In addition, "[g]iven
the ability of the mobile device 104 to serve as a platform for
zero-click purchases, there is a need to provide security in order
to prevent unauthorized charges. The security module 214
addresses this need by limiting functionality of the mobile
device 104 and initiating security events in appropriate
circumstances. The security module 214 may process login
information, such as passwords and/or biometric information to
authenticate the user 102 and prevent other people from using
the mobile device 104. The security module 214 may also
analyze behavior such as purchasing patterns and/or movement
patterns and infer that irregular behavior may indicate
fraudulent or unauthorized activity and limit device
functionality .... "
Reply Br. 7. Unique user identification per se is no more than some
arbitrary data string. The claims do not recite more than merely using such
identification, and even then, only somehow "based on" such identification
without further implementation details. Claim 1, Limitation 8. Appellants
do not claim to have invented the very idea of a unique user identifier, which
is a concept dating back at least as far as multi-user systems. Appellants'
arguments regarding the security module are unpersuasive if only because
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the claims in this particular application do not recite and appear not to
describe operation of a security module.
We are not persuaded by Appellants' argument that
[b ]y using user authentication, a location of a mobile device to
derive the mobile device's geolocation and travel speed, and
location data to automatically select a coupon, and by timing
the presentation of the coupon on the mobile device and
expiring the coupon given the location data, it becomes possible
to reduce the friction and secure the interaction ( e.g.,
automating the transmission of a relevant coupon to a user,
while making sure that the transmission is desired by the user
and reaches the right user).
Reply Br. 11. Appellants again argue that their particular selection of data to
use as selection criteria improve processing by reducing the amount of data
to process. And again, merely applying decision criteria to reduce the scope
of data to be searched is generic data processing and not a technological
implementation. This is demonstrable by simply showing that it translates to
paper and pencil. Even prior to computer, reducing the amount of data that
had to be considered, reduced the burden on the person using paper, pencil,
and the mind to process the problem. Automation per se is not a
technological implementation.
At best, the claims describe the automation of the
fundamental economic concept of offer-based price
optimization through the use of generic-computer functions.
Both the prosecution history and the specification emphasize
that the key distinguishing feature of the claims is the ability
to automate or otherwise make more efficient traditional
price-optimization methods. . . . But relying on a computer
to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (2015).
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We are not persuaded by Appellants' argument that "the claims are
not merely focused on the collection and analysis of power-related data.
Instead, the claims recite a particular inventive process for securing and
reducing the friction of geolocation-based interactions between computing
devices." Reply Br. 13. This repetition of an earlier argument is equally
unpersuasive here.
Appellants also attempt to analogize the claims to those involved in
McRO, 837 F.3d 1299. Reply Br. 1 7-18. In McRO, the court held that,
although the processes were previously performed by humans, "the
traditional process and newly claimed method ... produced ... results in
fundamentally different ways." FairWarning, 839 F.3d at 1094
( differentiating the claims at issue from those in McRO). In McRO, "it
[was] the incorporation of the claimed rules not the use of the computer,
that improved the existing technological process," because the prior
process performed by humans "was driven by subjective determinations
rather than specific, limited mathematical rules." 837 F.3d at 1314
(internal quotation marks, citation, and alterations omitted). In contrast,
the claims of the instant application merely implement an old practice of
using decision criteria in making sales decisions in a new environment.
Appellants have not argued that the claimed processes of selecting
products apply rules of selection in a manner technologically different
from those which humans used, albeit with less efficiency, before the
invention was claimed. Merely pigeon holing the objects of decision making
in tiers to aid decision making is both old and itself abstract.
The claims in McRO were not directed to an abstract idea, but
instead were directed to "a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
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Application 12/894,287
particular type." We explained that "the claimed improvement
[was] allowing computers to produce 'accurate and realistic lip
synchronization and facial expressions in animated characters'
that previously could only be produced by human animators."
The claimed rules in McRO transformed a traditionally
subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (citations omitted).
Appellants appear to have anticipated this, and add that "[s]uch
features are not a concept that is well-understood and that predates the
Internet world." Reply Br. 1 7. But novelty is not at issue here. "A claim
for a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102 novelty."
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016).
We are not persuaded by Appellants' argument that
guidance of the Federal Circuit compels a finding that the
claims are not abstract because the claims are not a mere
implementation of an old practice in a new environment.
Although sending coupons is a well-understood practice,
the claims do not merely recite sending coupons by using
computers. Instead, the claims recite features that amount to a
specific set of rules and that rely on specific technological
capabilities for providing secure and reduced friction
interactions between a mobile device and a computer system.
Secure and reduced friction geolocation-based interactions are
not an old practice. As explained herein above, this practice
only became possible with the advancement in the mobile
technology such that mobile devices became capable of
providing location data, handshake-based user authentication,
and real-time presentation of content.
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Reply Br. 18. This is not an argument regarding the advent of new
technology, but instead the introduction of a new context for existing
technology.
To be sure, the '379 patent claims the wireless delivery
of regional broadcast content only to cellphones. In that sense,
the claims are not as broad as the abstract idea underlying them,
which could apply to the delivery of out-of-region content to
any electronic device. That restriction, however, does not alter
the result. All that limitation does is to confine the abstract idea
to a particular technological environment-in this case, cellular
telephones. The Supreme Court and this court have repeatedly
made clear that merely limiting the field of use of the abstract
idea to a particular existing technological environment does not
render the claims any less abstract.
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed.
Cir. 2016).
We are not persuaded by Appellants' argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
(BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016)). Reply Br. 19--20. Initially, we remind Appellants that
BASCOM did not find claims eligible on the substance, but rather that the
Appellees did not provide sufficient evidence to support a 12(b )( 6) motion to
dismiss in which facts are presumed in the non-movant's favor.
The key fact in BASCOM was the presence of a structural change in
"installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server." BASCOM, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
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Appeal2018-001540
Application 12/894,287
Claims 1, 3, 7, 8, 24-27, 29, 39-43, 45, 48, 50, and 51 rejected under 35
US. C. § 112 (a) as lacking a supporting written description within the
original disclosure
The Examiner determines that claim 1 limitation 10 is unsupported.
Final Act. 2-3. The other independent claim 3 has a similar limitation.
Appellants respond that this limitation is supported by Specification paras.
54, 114, 115, 129, 150, and 152. App. Br. 6-7. The problem for Appellants
is that their arguments use the word "can" and not "would," much less "are"
to combine the paragraphs. This is a classic example of a failed obviousness
case. And even obviousness of the claims based on the Specification is
insufficient to show possession. The Specification must show possession,
not obviousness, of the claimed subject matter.
[The written description] test requires an objective inquiry into
the four comers of the specification from the perspective of a
person of ordinary skill in the art. Based on that inquiry, the
specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the
invention claimed.
Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F. 3d 1336, 1351 (Fed. Cir.
2010) (en bane).
One shows that one is "in possession" of the invention by
describing the invention, with all its claimed limitations, not
that which makes it obvious. One does that by such
descriptive means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed invention.
Although the exact terms need not be used in haec verba, . . . ,
the specification must contain an equivalent description of the
claimed subject matter.
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
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Application 12/894,287
CONCLUSIONS OF LAW
The rejection of claims 1, 3, 7, 8, 24--27, 29, 39--43, 45, 48, 50, and 51
under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more is proper.
The rejection of claims 1, 3, 7, 8, 24--27, 29, 39--43, 45, 48, 50, and 51
under 35 U.S.C. § 112(a) as lacking a supporting written description within
the original disclosure is proper.
DECISION
The rejection of claims 1, 3, 7, 8, 24--27, 29, 39--43, 45, 48, 50, and 51
is affirmed.
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)(l)(iv) (2011).
AFFIRMED
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