Ex Parte CHAUHAN

Patent Trials and Appeals Board

Jun 24, 2019

14048774 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/048,774 10/08/2013
21839 7590 06/26/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Rohit CHAUHAN
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.
0076412-000177 8344
EXAMINER
KNIGHT, LETORIA G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/26/2019 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROHIT CHAUHAN
Appeal 2018-004906
Application 14/048,774
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY HUME, and
PHILLIP BENNETT, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-7, 9-13, 15-19, and 21-24, which constitute
all the claims pending in this application. Claims 2, 8, 14, and 20 are
cancelled. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Mastercard
International, Inc. App. Br. 2.
Appeal 2018-004906
Application 14/048,774
STATEMENT OF THE CASE2
Disclosed embodiments of Appellant's invention relate to "measuring
consumer traffic at a merchant location." Spec. ,-J 1.
Illustrative Claim
1. A method for measuring consumer traffic at a merchant
location, comprising:
electronically storing, in a database of a processing
server, a consumer profile,
wherein the consumer profile includes data related to a
consumer including at least a device identifier corresponding to
a mobile communication device associated with the related
consumer, and the consumer profile does not contain
personally identifiable information;
receiving, by a receiving device of the processing server
from a mobile network operator, a plurality of location data
entries configured to identify the geographic location of the
mobile communication device associated with the related
consumer,
wherein each location data entry includes at least a time
and date at which the associated mobile communication device
is identified as being located at a merchant location of one
merchant of a plurality of merchants and an indication of the
mobile communication device entered or left the merchant
location associated with the merchant of the plurality of
merchants, and
wherein location data entries are received for each of the
plurality of merchants;
2 We herein refer to the Final Office Action, mailed October 31, 2017
("Final Act."); Appeal Brief, filed Jan. 5, 2018 ("App. Br."); Examiner's
Answer, mailed Feb. 9, 2018 ("Ans."); and the Reply Brief, filed April 9,
2018 ("Reply Br.").
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calculating, by a processing device of the processing
server, at least one traffic metric for the consumer for each
merchant location for each of the plurality of merchants based
on the time and date included in each of the received plurality
of location data entries received from the mobile network
operator;
associating, in a database of the processing server, the
consumer profile with the received plurality of location data
entries and the calculated traffic metrics;
receiving, by the receiving device of the processing
server, a request for traffic metrics, wherein the request for
traffic metrics includes an identifier associated with the
consumer and one of the plurality of merchants; and
transmitting, by a transmitting device of the processing
server to a merchant computer associated with the one of the
plurality of merchants, the calculated at least one traffic metric
for the one of the plurality of merchants in response to the
received request for traffic metrics,
wherein no personally identifiable information
associated with the consumer is transmitted to the merchant
computer.
App. Br. Claims Appendix (Emphasis added regarding limitations disputed
under 35 U.S.C. § 103).
Rejections
A. Claims 1, 3-7, 9-13, 15-19, and 21-24 are rejected under
35 U.S.C. § 101 as being directed to a judicial exception, without
significantly more. Final Act. 4.
B. Claims 1, 3, 5-7, 9, 11-13, 15, 17-19, 21, 23, and24 are rejected
under 35 U.S.C. § 103 as being obvious over the combined teachings and
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suggestions of Jagannathan et al. (US 2011/0246209 Al; pub. Oct. 6, 2011
("Jagannathan")) and Margolin et al. (US 2014/0188568 Al; pub. July 3,
2014; filed Dec. 28, 2012 ("Margolin")). Final Act. 12. 3
C. Claims 4, 16, and 22 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Jagannathan,
Margolin, and Uilecan et al. (US 9,113,309 B2, issued Aug. 18, 2015; filed
Aug. 2, 2013) ("Uilecan"). Final Act. 22.
D. Claim 10 is rejected under 35 U.S.C. § 103 as being obvious over
the combined teachings and suggestions of Jagannathan, Margolin, and
Busch (US 2008/0248815 Al, pub. Oct. 9, 2008). Final Act. 24.
Issues on Appeal
1. Did the Examiner err in rejecting claims 1, 3-7, 9-13, 15-19, and
21-24 under 35 U.S.C. § 101 as being directed to a judicial exception,
without significantly more?
2. Did the Examiner err in rejecting claims 1, 3-7, 9-13, 15-19, and
21-24 under 35 U.S.C. § 103 as being obvious over the cited
combinations of prior art?
ANALYSIS
We have considered all of Appellant's arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
3 The Examiner omitted claim 13 from the Rejection B heading. See Final
Act. 12. However, the Examiner provided a detailed statement of rejection
for claim 13 under the Rejection B heading. See Final Act. 21. We have
made appropriate correction above to Rejection B.
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arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
We have reviewed Appellant's arguments in the Briefs, the
Examiner's rejections, and the Examiner's responses to Appellant's
arguments. For at least the reasons discussed below, we are not persuaded
the Examiner erred. In our analysis below, we highlight and address
specific findings and arguments for emphasis.
Principles of Law-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.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[L Jaws of nature, natural phenomena, and abstract
ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (citingDiamondv. Diehr, 450 U.S. 175, 185
(1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
( citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk." ( emphasis omitted)); see also Bilski v. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk.").
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diehr, 450 U.S. at 193); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267-68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 ( citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
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If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
Subject Matter Eligibility- 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). This
new guidance is applied in this opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people); and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure ("MPEP") §§ 2106.05(a)-(c), (e)-(h)).4
See 2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55.
4 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance at 56; Alice, 573 U.S. at 217-18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional"
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
1. Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
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Application 14/048,774
2. Mental processes- concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, "[ c ]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
( abstract idea), and thus are patent eligible, if "the claim as a whole
integrates the recited judicial exception into a practical application of that
exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of "integration into a
practical application" include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field - see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine - see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing - see MPEP
§ 2106.05(c); and
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4. Applying or using 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 -
see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
1. Adding the words "apply it" ( or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses
a computer as a tool to perform an abstract idea - see
MPEP § 2106.05(±);
2. Adding insignificant extra-solution activity to the judicial
exception- see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use - see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54-55 ("Prong Two").
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2019 Revised Guidance, Step 2A, Prong One 5
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and ( c) certain methods of organizing human activities.
Turning to independent claim 1, we observe the preamble recites: "A
method for measuring consumer traffic at a merchant location." ( emphasis
added). Thus, we conclude the preamble of claim 1 recites an abstract idea,
i.e., a fundamental economic practice: a location-based consumer traffic
measuring method that falls into the abstract idea subcategories of sales
activities and commercial interactions. See 2019 Revised Guidance, 84 Fed.
Reg. at 52.
Moreover, we conclude that all of the "storing," "receiving,"
"associating," "calculating" and "transmitting" functions of claim 1 recite
consumer traffic-related measurement features, such as receiving location
information, calculating traffic metrics for consumers at each merchant
location, and transmitting the calculated traffic metric for the merchants.
Claim 1. We note the "calculating" recited function of claim 1 is also an
abstract idea because it is a "mathematical concept." 6 The transmitting of
5 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
6 Merely combining several abstract ideas does not render the combination
any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327
(Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea
... does not render the claim non-abstract."); see also FairWarning IP, LLC
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consumer traffic metrics upon receiving a request from a merchant computer
falls into the abstract idea subcategories of sales activities and commercial
interactions.
We conclude the function of "associating, in a database of the
processing server, the consumer profile with the received plurality of
location data entries and the calculated traffic metrics" also recites language
that is pertinent to sales activities and commercial interactions. Claim 1.
The intended purpose appears to be that merchants value this consumer
traffic data at physical locations in selecting advertising and merchandise
offerings. See e.g., Spec. ,-J 2.
Thus, we conclude the aforementioned limitations of claim 1 recite an
abstract idea - a fundamental economic practice, specifically the
subcategories of sales activities and commercial interactions. Claim 1.
The exceptions are the claimed consumer, the merchant, and mobile
network operator (who are persons), and the additional limitations of generic
computer elements: "a database of a processing server," "a mobile
communication device," "a receiving device of the processing server," "a
processing device," and "a merchant computer." See 2019 Revised
Guidance, 84 Fed. Reg. at 52.
We note remaining independent claims 7, 13, and 19 also recite
similar language of commensurate scope that we conclude also falls into the
abstract idea category of a fundamental economic practice, including the
v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (determining
the pending claims were directed to a combination of abstract ideas).
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abstract idea subcategories of sales activities and commercial interactions.
Id.
Because we conclude all claims on appeal recite an abstract idea, as
identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong
Two.
2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Revised Guidance, we consider whether there
are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Revised Guidance, 84 Fed.
Reg. at 54-55. We have identified supra the additional non-abstract
elements recited in independent claim 1 as the generic "a database of a
processing server," "a mobile communication device," "a receiving device
of the processing server," "a processing device," and "a merchant
computer."
Under MPEP § 2106.05(a) ("Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field"), Appellant
contends the claims amount to significantly more than an abstract idea.
App. Br. 12-13. In support, Appellant contends the claims:
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Id.
[D]o more than merely gather and analyze information and
display the results, as the claims recite significantly more than
these generalized steps, particularly in the analysis being
performed for a plurality of different merchants with metrics
being made available only for specific merchants entitled to
such information, and where the system contains limitations to
ensure that PII [(Personally Identifiable Information)] is not
stored or obtained throughout the process and to further ensure
that PII is not transmitted to the merchant along with the
metrics."
However, we conclude Appellant's claims merely obtain and process
consumer geographic location information using the additional elements of
generic computer hardware, including a "database of a processing server,"
"a mobile communication device," "a receiving device of the processing
server," "a processing device," and "a merchant computer." ( claim 1 ). For
example, we find these generic devices expressly described in Appellant's
Specification, at paragraphs 20, 28, and 43.
Given the extensive description of the use of generic computer
elements in the Specification (id.), we agree with the Examiner that, without
more,
Generic computers performing generic computer functions,
alone, do not amount to significantly more than the abstract
idea. Moreover, when viewed as a whole with such additional
elements considered as an ordered combination, the claim
modified by adding a generic computer would be nothing more
than a purely conventional computerized implementation of
applicant's location comparison algorithm in the general field
of business quality data analysis and would not provide
significantly more than the judicial exception itself.
Final Act. 7.
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We note McRo, Inc. v. Bandai Namco Games America Inc. (837 F.3d
1299 (Fed. Cir. 2016)), guides: "[t]he abstract idea exception prevents
patenting a result where 'it matters not by what process or machinery the
result is accomplished."' 837 F.3d at 1312 (quoting O'Reilly v. Morse, 56
U.S. 62, 113 (1854)) ( emphasis added).
MPEP § 2106.05(b) Particular Machine
MPEP § 2106.05(c) Particular Transformation
Appellant advances no arguments applying the Bilski machine-or-
transformation test to any claims on appeal. Nor on this record has
Appellant established that any of the recited generic components are
"particular" machines under MPEP § 2106.05(b ). Arguments not made are
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
MPEP § 2106.05(e) "Other Meaningful Limitations."
Appellant advances no arguments in the Appeal Brief pertaining to
any specific claim limitations that purportedly provide a meaningful
limitation beyond generally linking the use of the judicial exception to a
particular technological environment. Arguments not made are waived. See
37 C.F.R. § 41.37(c)(l)(iv).
As emphasized above, we conclude Appellant's additional elements
are merely generic computer components.
Nor do the claims present any other issues as set forth in the 2019
Revised Guidance regarding a determination of whether the additional
generic elements integrate the judicial exception into a practical application.
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See Revised Guidance, 84 Fed. Reg. at 55. Rather, we conclude the claims
on appeal merely use instructions to implement an abstract idea on a
computer, or merely use a computer as a tool to perform an abstract idea. Id.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)-(c) and (e)-
(h)), we conclude claims 1, 3-7, 9-13, 15-19, and 21-24 do not integrate
the judicial exception into a practical application. Therefore, we proceed
to Step 2B, The Inventive Concept.
The Inventive Concept - Step 2B
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
We note Berkheimer was decided by the Federal Circuit on
February 8, 2018. The Examiner's Answer was mailed on February 9, 2018
and Appellant filed a Reply Brief on April 9, 2018, two months after
Berkheimer was decided. On April 19, 2018, the PTO issued the
Memorandum titled: "Changes in Examination Procedure Pertaining to
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Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer Memorandum"). 7
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements ( or a
combination of elements) are well-understood, routine, or conventional. In
reviewing the Reply Brief, we note Appellant advances no arguments based
upon the change in the law effected by Berkheimer. Arguments not made
are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
Further, regarding the use of the generic (known, conventional)
recited "a database of a processing server," "a mobile communication
device," "a receiving device of the processing server," "processing device,"
and "a merchant computer" ( claim 1 ), the Supreme Court has held "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Alice, 573 U.S. 208, 223.
Our reviewing court provides additional guidance, including in
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) ("the use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter"), and OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (claims reciting, inter alia, sending messages
over a network, gathering statistics, using a computerized system to
automatically determine an estimated outcome, and presenting offers to
potential customers found to merely recite "'well-understood, routine
conventional activit[ies ]'" by either requiring conventional computer
7 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419 .PDF.
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activities or routine data-gathering steps (alteration in original, internal
citation omitted)).
This guidance is applicable here. Therefore, we agree with the
Examiner that, without more, "Generic computers performing generic
computer functions, alone, do not amount to significantly more than the
abstract idea." Final Act. 7.
Accordingly, on the record before us, we are not persuaded that
claims 1, 3-7, 9-13, 15-19, and 21-24 add a specific limitation, beyond the
judicial exception, that is more than what was "well-understood, routine, and
conventional" in the field (see MPEP § 2106.05(d)).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellant's claims 1, 3-7, 9-13, 15-19, and 21-24,
considered as a whole, is directed to a patent-ineligible abstract idea that is
not integrated into a practical application and does not include an inventive
concept. Accordingly, for the reasons discussed above, we sustain the
Examiner's Rejection A under 35 U.S.C. § 101 of claims 1, 3-7, 9-13,
15-19, and 21-24.8
8 To the extent that Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
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Rejection B of Independent Claim 1 under 35 U.S.C. § 103
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding
Jagannathan and Margolin, collectively teach or suggest the disputed
negative limitation:
and the consumer profile does not contain personally
identifiable information;
within the meaning of representative claim 1? (Emphasis added). See supra
n.5 ("we give the claim limitations the broadest reasonable interpretation
consistent with the Specification. See Morris, 127 F.3d at 1048).
Disputed Limitation of Representative Independent Claim 1
Under Section 103 Rejection B
The Examiner finds Margolin (,-J 4 7) teaches or suggests "the
consumer profile does not contain personally identifiable information," as
recited in claim 1. Final Act. 13-14. We note Margolin describes:
In addition, certain data may be treated in one or more ways
before it is stored or used, so that personally identifiable
information is removed. For example, a user's identity may be
treated so that no personally identifiable information can be
determined for the user.
See e.g., Margolin ,-J 47 (emphasis added).
Contentions by the Appellant
Appellant contends Margolin fails to disclose the aforementioned
negative limitation of claim 1. App. Br. 14-15. Specifically, Appellant
contends:
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[P]aragraph [0047] discloses that the user can control what
programs collect user information and how content may be
received from the content server, but not control if the server is
able to collect information. Thus, the content server initially
possesses personally identifiable information, while the user
merely decides how programs will interact with the server or
how that user information will be used. This is significantly
different from the appealed claims where consumer profiles
store no personally identifiable information. In jurisdictions
where laws and regulations govern the collection of personally
identifiable information, even the mere storage of such data
may have significant repercussions. As such, the system in
Margolin is significantly different from the presently claimed
invention.
App. Br. 14-15.
The Examiner's Answer
In response, the Examiner further explains the basis for the rejection:
Margolin discloses a method for estimating potential customer
traffic in relation to the location of the merchant as a function of
the obtained locations, wherein the consumer profile does not
contain personally identifiable information ... In example
embodiments, the location of each of a plurality of mobile
computing devices within a plurality of areas referenced to a
location of a merchant can be obtained. Margolin, [para. 0003-
0008, 0019-0023, 0033-0036; Fig. 1-3] ... In situations in
which the technology discussed here collects personal
information about users, or may make use of personal
information, the users may be provided with an opportunity to
control whether programs or features collect user information
(e.g., information about a user's social network, social actions
or activities, profession, a user's preferences, or a user's current
location), or to control whether and/or how to receive content
from the content server that may be more relevant to the user.
In addition, certain data may be treated in one or more
ways before it is stored or used, so that personally
identifiable information is removed. Margolin, [para. 004 7]).
20
Appeal 2018-004906
Application 14/048,774
Ans. 12-13.
In reviewing the record, we find at least paragraph 47 of Margolin
teaches or suggests that users' personally identifiable information may be
removed before it is stored or used. Therefore, we find a preponderance of
the evidence supports the Examiner's legal conclusion of obviousness for
Rejection B of independent claim 1. See Ans. 8-13.
We emphasize that our reviewing court guides: "'the question under
35 USC 103 is not merely what the references expressly teach but what they
would have suggested to one of ordinary skill in the art at the time the
invention was made."' Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976)). (Emphasis added); see also MPEP § 2123.
This reasoning is applicable here. For at least the aforementioned
reasons, on this record, we find a preponderance of the evidence supports the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness regarding representative independent claim 1, as rejected under
§ 103 Rejection B. Grouped claims 3, 5-7, 9, 11-13, 15, 17-19, 21, 23, and
24, also rejected under Rejection B (and not argued separately) fall with
representative independent claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Accordingly, we sustain the Examiner's Rejection B under § 103 of claims
1, 3, 5-7, 9, 11-13, 15, 17-19, 21, 23, and 24.
21
Appeal 2018-004906
Application 14/048,774
Rejection C of Dependent Claims 4, 16, and 22 and
Rejection D of Dependent Claim 10
Appellant advances no separate, substantive arguments for dependent
claims 4, 10, 16, and 22. Although Appellant urges these claims each fail to
disclose or suggest the recitations of the base claims (App. Br. 16), we find
no deficiencies with the Examiner's Rejection B of claims 1, 3, 5-7, 9,
11-13, 15, 17-19, 21, 23, and 24, for the reasons discussed supra.
Accordingly, we sustain the Examiner's Rejection C of dependent
claims 4, 16, and 22, and Rejection D of dependent claim 10.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3-7, 9-13,
15-19, and 21-24 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1, 3-7, 9-13,
15-19, and 21-24 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
22