Ex Parte Cooke et al

Patent Trial and Appeal Board

May 22, 2017

13299680 (P.T.A.B. May. 22, 2017)

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.
13/299,680 11/18/2011 Alan Cooke 0076412-000037.002 1565
21839 7590 05/24/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
HULKA, JAMES R
ART UNIT PAPER NUMBER
3645
NOTIFICATION DATE DELIVERY MODE
05/24/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAN COOKE, GARRY LYONS, and
ORAN CUMMINS
Appeal 2015-006767
Application 13/299,680
Technology Center 3600
Before EDWARD A. BROWN, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alan Cooke et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1, 3—8, and 10—20.12 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Claims 2 and 9 are cancelled. Appeal Br. 23, 25 (Claims App.).
2 Appellants submit the real party in interest is MasterCard International
Incorporated. Id. at 2.
Appeal 2015-006767
Application 13/299,680
THE CLAIMED SUBJECT MATTER
Appellants’ invention is related “to the distribution of media to mobile
devices, specifically advertisements distributed through the use of acoustic
sounds.” Spec. 12. Claims 1, 5, 8, 12, and 13 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A method for distributing context based data, comprising:
receiving, in a mobile communication device, a high
frequency analog acoustic signal, wherein the high frequency
analog acoustic signal includes a stream of sound that is outside
the audible spectrum of a human, and the high frequency analog
acoustic signal contains encoded data;
converting, in the mobile communication device, the high
frequency analog acoustic signal to a digital acoustic signal;
analyzing, in the mobile communication device, the digital
acoustic signal to obtain the encoded data from the digital
acoustic signal;
decoding, in the mobile communication device, the
encoded data to obtain information; and
displaying the information on the mobile communication
device.
REJECTIONS
1) Claims 1, 3—8, and 10—13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Labaton (US 2007/0232355 Al, published Oct.
4, 2007), Shau (US 2006/0019605 Al, published Jan. 26, 2006),
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and Song (US 2010/0250410 Al, published Sept. 30, 2010).3
Final Act. 2.
2) Claims 14—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Labaton, Shau, Song, and Das (US
2005/0197968 Al, published Sept. 8, 2005). Final Act. 4.
3) Claims 1, 3—8, 10, 11, and 14—18 are rejected under 35 U.S.C.
§ 101 as not directed to patent-eligible subject matter. Ans. 2.
DISCUSSION
Rejection 1
The Examiner finds that Labaton discloses most of the limitations of
independent claims 1, 8, and 13, but does not explicitly teach the limitations
“wherein the high frequency analog signal includes a stream of sound that is
outside the audible spectrum of a human” and “in a mobile communication
device.” Final Act. 2—3 (citing Labaton H 11, 12, 23—25, Abstract). The
Examiner finds that Shau teaches a high frequency analog acoustic signal
outside the audible spectrum of a human. Id. at 2 (citing Shau 38—39).
The Examiner reasons it would have been obvious to modify Labaton with
Shau “to use an ultrasound transmitter/receiver to avoid interference with
audio frequency signals in the human auditory range, and so that the signals
could not be heard by humans.” Id. at 2—3. The Examiner additionally finds
that Song discloses a mobile communication device. Id. at 3 (citing Song ||
5, 38, 40, 41, 119). The Examiner concludes it would have been obvious to
use a mobile phone in Labaton’s system and method “as the acoustic
receiver because mobile phones are small, compact, already contain audio
3 The heading of the rejection incorrectly also lists cancelled claims 2 and 9.
Final Act. 2.
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receiving elements (microphones), have display capabilities,
microprocessors and connectability to the internet to retrieve payment
information.” Id.
Appellants contend that in Labaton, the mobile phone does not receive
an acoustic signal, but rather transmits an acoustic signal to a personal
computer. Appeal Br. 9.4 Appellants next contend that Labaton’s PC,
which receives an analog acoustic signal from Labaton’s mobile phone, does
not convert a received acoustic signal to a digital acoustic signal, but rather
converts it to an analog electrical signal. Id. at 10. Appellants argue that
Labaton’s PC does not analyze a digital acoustic signal to obtain encoded
data and does not decode encoded data to obtain information, but rather the
PC sends the analog electrical signal to a remote computer system where the
electrical signal is decoded to obtain information. Id. Appellants also argue
that because the PC does not decode information from a digital acoustic
signal, the decoded information is not available for display at the PC. Id. at
11.
The Examiner responds that Labaton teaches “encoding and decoding
of wireless acoustic signals, for the purpose of pursuing and completing
financial transactions, and utilizing at least one mobile communication
device to complete the transaction.” Ans. 6. The Examiner acknowledges
that Labaton does not disclose the recited location for decoding the received
acoustic signal but states a “skilled artisan could conceivably use any
number of possibilities as the processor to perform decoding of the received
signal.” Id. The Examiner then notes that Song discloses using “mechanical
4 Appellants raise essentially the same contentions for claims 8 and 13 as for
claim 1. See Appeal Br. 17—19.
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sound waves as signal carriers for establishing wireless connections for a
wide variety of devices . . . including but not limited to cellular phones and
similar mobile communication devices.” Id. at 7.
Labaton discloses encoding an “identification/authentication string,
computed in cellular phone 110 into acoustic waves using the cellular phone
speakers 115, in a way that acoustic waves will carry information encoded in
the string to a microphone 120 external to the cellular phone, such as a PC
microphone.” Labaton 122. When the acoustic waves reach the PC
microphone, “the acoustic message is converted into an electrical signal,
which can be digitized,” and “transmitted ... to a remote computer system
140 which will in turn process the received signal into the original string and
the transaction data can be identified and certified.” Id. 23, 24.
Although not specifically stated by the Examiner, we understand the
Examiner’s proposed combination of Song and Labaton replaces Labaton’s
PC, which is disclosed as receiving an analog acoustic signal, with a mobile
communication device as taught by Song. See Song 1119 (“the pass code . .
. [is] sent to the payer . . . through a mobile phone.”). However, claim 1
requires that the mobile communication device not only receive a high
frequency analog acoustic signal, but also convert the high frequency analog
acoustic signal to a digital acoustic signal, analyze the digital acoustic signal
to obtain encoded data, decode the encoded data to obtain information, and
display the information. Labaton’s PC receives an analog acoustic signal
and converts it to a digital signal. Labaton’s PC then sends the converted
signal to remote computer system 140 where the signal is decoded and
information obtained. We note that the Examiner does not direct us to any
disclosure in Labaton that the information decoded by Labaton’s remote
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computer system 140 is displayed after decoding. Nor has the Examiner
adequately explained why it would have been obvious, based on Song, to
display the decoded information. We, therefore, do not sustain the rejection
of independent claims 1, 8, and 13 under 35 U.S.C. § 103(a) because the
Examiner has not stated an adequate reason supported by a rational
underpinning for the rejection. Claims 3 and 4 depend from claim 1 and
claims 10 and 11 depend from claim 8. Appeal Br. 23—25 (Claims App.).
We do not sustain the rejection of claims 3,4, 10, and 11 for the same
reasons stated for claims 1 and 8.
The Examiner rejects independent claims 5 and 12 based on Labaton,
Shau, and Song with essentially the same findings and reasoning as for
claims 1,8, and 13. Final Act. 2—A. Appellants raise the same contentions
as for claims 1,8, and 13. Appeal Br. 15, 18. Therefore, we do not sustain
the rejection of claims 5 and 12 for the same reasons stated above for claim
1. Claims 6 and 7 depend from claim 5. Id. at 24. We do not sustain the
rejection of claims 6 and 7 for the same reasons stated for claim 5.
Rejection 2
Claims 14—16 depend from claim 1, claims 17 and 18 depend from
claim 8, and claims 19 and 20 depend from claim 13. Appeal Br. 27—28
(Claims App.). The Examiner does not rely on the additional disclosure of
Das to cure the deficiencies in the combination of Labaton, Shau, and Song
as stated above in connection with claims 1, 8, and 13. Final Act. 4—5. We,
therefore, do not sustain the rejection of claims 14—20 under 35 U.S.C. §
103(a) over Labaton, Shau, Song, and Das for the same reasons stated above
for claims 1,8, and 13.
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Rejection 3
Appellants argue claims 1, 3—8, 10, 11, and 14—18 as a group. See
Reply Br. 9-21. We select claim 1 as representative and claims 3—8, 10, 11,
and 14—18 stand or fall with claim 1. 37 C.F.R. § 41.37 (c)(iv).
The Examiner determines that “[b]ased upon an analysis with respect
to the claim as a whole, claim(s) 1, 3—8, 10-11 and 14—18 do not recite
something significantly different than a judicial exception.” Ans. 2. The
Examiner describes Appellants’ invention “as a protocol for receiving an
ultrasonic signal in a mobile communication device that is encoded with
data, and then decoded and displayed on the mobile communication device.”
Id. The Examiner finds that Labaton discloses “that using mobile devices
for e-commerce transactions is well-known” and that “Song teaches that any
processor can be used to decode the received signal.” Id. at 3 (citing
Labaton 111, Song 140). The Examiner then states that the claims use “a
generic mobile communication device, a generic ultrasound transducer
capable of receiving, well-known encoding and decoding practices, and
generic processors capable of controlling the reception, decoding and
display.” Id. The Examiner states “[t]he inventive concept of the invention
claimed ... is that the location of the processing is done in a mobile
communication device.” Id. at 3. The Examiner then concludes that
Appellants’ “invention does not improve other technology or fields . . . [and]
therefore is an abstract idea.” Id. at 4.
Appellants contend that the Examiner has not clearly identified and
explained an abstract idea. Reply Br. 10. Appellants then argue that the
Examiner has not established that the claims are directed to an abstract idea
because the claims state “a very particular way of configuring hardware to
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support or facilitate a narrow form of distribution of context based data to
mobile devices prompted by acoustic based stimuli.” Id. at 11. Appellants
next argue that “[t]he claims are necessarily computer-based and require
particular programming for which human activity simply cannot be
substituted.” Id. at 12, 14—17. Appellants further argue that the claims
provide a technological improvement. Id. at 19. For the following reasons,
these contentions are not persuasive and we sustain the rejection of claim 1.
The title of the Appellants’ application is “Method and System for
Distribution of Advertisements to Mobile Devices Prompted by Aural Sound
Stimulus.” Spec. Title Page. The Specification provides that Appellants’
invention “relates to distribution of media to mobile devices, specifically
advertisements distributed through the use of acoustic sounds.” Id. 12.
Appellants’ summary of the claimed subject matter for claim 1 directs us,
inter alia, to Appellants’ Figure 18. Appeal Br. 4—5. Figure 18 provides a
flow chart with generic steps for receiving and processing an acoustic signal
to obtain information about a product from the signal, and displaying the
product information to a consumer on the mobile communication device.
Spec. Fig. 18. Thus, claim 1 is directed to a method for analyzing and
decoding an acoustic signal and then displaying information obtained from
the signal on a mobile communication device.
The Supreme Court has established a two part test for determining
whether a claim recites patent-eligible subject matter. Alice Corp. Pty, Ltd.
v. CLSBanklnt’l, 134 S. Ct. 2347, 2350 (2014). First, the claims are
examined to determine whether they are directed to a patent ineligible
concept such as an abstract idea. Id. If so, the claim elements are
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considered both individually and as an ordered combination to determine
whether they transform the claim into a patent-eligible application. Id.
We look to legal precedent for guidance in determining whether claim
1 is directed to an abstract idea. The Federal Circuit has determined that
claims directed to subject matter similar to the method of claim 1 are
directed to abstract ideas. See Affinity Labs of Texas, LLC v. Amazon.com
Inc., 838 F.3d 1266, 1268 (Fed. Cir. 2016)(“delivering selectable media
content and subsequently playing selected content on a portable device”);
Affinity Labs of Texas, LLCv. DIRECTV, LLC, 838 F.3d 1253, 1256 (Fed.
Cir. 2016)(claim “directed to a broadcast system in which a cellular
telephone ... (1) requests and receives network-based content from the
broadcaster ... (2) is configured to wirelessly download an application . . .
and (3) contains a display that allows the user to select particular content”).
The Federal Circuit also directs us “at step one [of the Alice analysis] ... ‘to
ask whether the claims are directed to an improvement to computer
functionality versus being directed to an abstract idea.” In re TLI
Communications LLC Patent Litigation, 823 F.3d 607, 612 (Fed. Cir. 2016).
Accordingly, in this case, we determine whether claim 1 is directed to
an improvement in the functionality of the mobile communication device.
Appellants do not provide persuasive argument to show that claim 1 recites a
specific hardware configuration or an improvement to the functionality of a
generic mobile communication device. Appellants argue “the recitations of
the present claims would require specific programming, [and] the resulting
computer would be a specific purpose computer.'” Reply Br. 19. Appellants
do not direct us to any limitation of claim 1 reciting any specific
programming or hardware configuration. Claim 1 merely recites generic
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method steps such as “decoding ... the encoded data to obtain information.”
Claim 1, thus does not recite any specific technical functionality of the
mobile communication device or an improvement to its functionality to
process acoustic signals to obtain information from the signals and to
thereafter display the information to a consumer. That claim 1 uses a mobile
communication device to perform an abstract idea of decoding an acoustic
signal “does not make the claim[s] any less abstract for step 1 analysis.” In
re TLI Communiations, 823 F.3d at 613. We, thus, determine that claim 1 is
directed to an abstract idea.
We now analyze the elements of claim 1 to determine whether the
elements individually, or as an ordered combination, transform the recited
method into patent-eligible subject matter. Mobile communication devices
are not novel but are ubiquitous information receiving devices with
capability to display information. See Ultamercial, Inc. v Hulu, LLC, 772
F.3d 709, 716—17 (Fed. Cir. 2014). Likewise, sending, analyzing, and
decoding acoustic signals on mobile communication devices is not novel.
See Labaton, Abstract, Shau, Abstract. The “mere recitation of concrete,
tangible components is insufficient to confer patent eligibility to an
otherwise abstract idea. Rather, the components must involve more than
performance of ‘well-understood, routine conventional activities]
previously known to the industry.” In re TLI Communiations, 823 F.3d at
613 (citations omitted). Displaying the decoded information on the mobile
communication device does not add significantly more to the abstract idea of
decoding an acoustic signal. Affinity Labs, 838 F.3d at 1263.
Appellants contend that the claims provide a technological
improvement. Reply Br. 19—20. We are not persuaded by this contention
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because, in support, Appellants merely essentially list the elements of claim
1 without any persuasive explanation of how the elements either
individually, or as an ordered combination, amount to an inventive concept
that converts an abstract idea into patent-eligible subject matter. We,
therefore, determine that the elements of claim 1, considered both
individually and as an ordered combination, do not transform claim 1 into
patent-eligible subject matter. We sustain the rejection of claim 1 under 35
U.S.C. § 101. Claims 3—8, 10, 11, and 14—18 fall with claim 1.
DECISION
The Examiner’s decision rejecting claims 1, 3—8, and 10-20 under 35
U.S.C. § 103(a) is reversed.
The Examiner’s decision rejecting claims 1, 3—8, 10, 11, and 14—18
under 35 U.S.C. § 101 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).
AFFIRMED-IN-PART
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