Ex Parte Griffith et al

Patent Trial and Appeal Board

Aug 10, 2018

12435926 (P.T.A.B. Aug. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/435,926 05/05/2009 Lawrence Griffith
7590 08/10/2018
Wood Herron & Evans LLP
2700 Carew Tower
441 Vine Street
Cincinnati, OH 45202-2917
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.
GRLA03US 4370
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
08/10/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE GRIFFITH, WALID JOHNSON,
CARLOS M. TARAZONA, CAMERON WILSON,
and THOMAS W. HUMPHREY
Appeal2017-005448
Application 12/435,926
Technology Center 3600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 10-14, which constitute all the claims
pending in this application. Claims 1-9 were cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as Digital Factory, Inc. App.
Br. 2.
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Application 12/435,926
STATEMENT OF THE CASE
Appellants' invention generates consumer interest in a product using
product coupons. Spec. ,r 2. According to the Specification, a consumer
registers with a service. Spec. ,r 44. Once registered, the service begins
tracking the consumer's mobile device to receive location-based
advertisements. Spec. ,r 59. In one embodiment, to begin tracking the
consumer's mobile phone, the consumer is instructed to install an applet on
the mobile device. Spec. ,r 60. The installed applet, in tum, provides global
positioning system (GPS)2 coordinates back to the service. Spec. ,r 60.
Claim 10, reproduced below, is illustrative:
10. A method of delivering product advertisements,
coupons or samples to a customer via the customer's wireless
cellular mobile device, comprising
storing subscription information for a customer
possessing a wireless cellular mobile device, the wireless
cellular mobile device at least including location circuitry,
cellular mobile circuitry for establishing a data connection via a
wireless service provider, and an operating system capable of
receiving and installing software applets for operating the
wireless cellular mobile device,
delivering a software applet to the customer's wireless
cellular mobile device via a wireless cellular service provider to
which the wireless cellular mobile device is subscribed, the
applet including software enabling location circuitry within the
mobile device and enabling communication with the mobile
device,
receiving a location of the mobile device generated by
the location circuitry in the customer's wireless cellular mobile
device, the location having been obtained by the software
applet, and transmitted via the wireless cellular service
provider,
2 "GPS n. Acronym for Global Positioning System." MICROSOFT
COMPUTER DICTIONARY 237 (5th ed. 2002).
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at the remote server, comparing a location of the mobile
device to a predefined radius of a retail location,
originating at the remote server a text notification
regarding a particular product, and delivering the text
notification to the mobile device via the wireless cellular
service provider, so that the customer may request further
information,
responding to the customer's request for further
information by delivering from the remote server to the wireless
cellular mobile device via the cellular service provider an
advertisement, coupon or sample regarding the particular
product.
THE REJECTIONS
The Examiner rejected claims 10-14 under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Final Act. 2--4. 3
The Examiner rejected claims 10-14 under 35 U.S.C. § I02(e) as
being anticipated by Burazin et al., (US 2009/0157472 Al, published June
18, 2009; hereinafter "Burazin"). Final Act. 5-8.
THE INELIGIBILITY REJECTION
The Examiner concludes that the claims are directed to the abstract
idea of providing a coupon or text message, which is said to be a
fundamental economic practice. Final Act. 3. According to the Examiner,
the claims are directed to a business model for advertising to consumers.
3 Throughout this opinion, we refer to (1) the Non-Final Rejection mailed
Nov. 5, 2015 ("Non-Final Act."); (2) the Final Rejection mailed Mar. 21,
2016 ("Final Act."); (3) the Appeal Brief filed Sept. 21, 2016 ("App. Br.");
(4) the Examiner's Answer mailed Dec. 12, 2016 ("Ans."); and (5) the Reply
Brief filed Feb. 13, 2017.
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Final Act. 9; Ans. 2. The Examiner adds that the claims do not add
significantly more to the abstract idea because they merely recite generic
computer elements that implement generic functions that are well-
understood, routine, and conventional in the industry. Final Act. 9; Ans. 2.
As such, the claims are said to not transform the abstract idea into a patent-
eligible application of the abstract idea. Final Act. 4.
Appellants argue that the claims are not directed to an abstract idea
because a mobile wireless cellular device programmable with a
downloadable application to provide a location service was unknown at the
time of the instant application's priority date. App. Br. 4--5. According to
Appellants, the claims are rooted in technology, and recite a novel method
that uses new technology to gather information that is used to identify a
location and a retail location, and deliver a notification. Id. at 7 (citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)).
ISSUE
Has the Examiner erred in rejecting claims 10-14 by concluding that
they are directed to ineligible subject matter under § 101. This issue turns
on whether the claimed invention is directed to a patent-ineligible abstract
idea and, if so, whether the claim's elements----considered individually and
as an ordered combination-transform the nature of the claim into a patent-
eligible application of that abstract idea.
ANALYSIS
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
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v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of nature,
natural phenomena, and abstract ideas. Id. at 2354--55. If so, we then
proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
Alice Step One
Appellants argue the claims as a group. See App. Br. 4--7. We select
independent claim 10 as representative of this group, and remaining claims
11-14 stand or fall with claim 10. 37 C.F.R. § 4I.37(c)(l)(iv).
Applying Alice step one, we are not persuaded of error in the
Examiner's finding that claim 10 is directed to an abstract idea, namely
advertising to consumers by providing a coupon or text message (Final
Act. 3, 9; Ans. 2}-an abstract idea that Appellants do not contest. See
generally App. Br. 4--7; Reply Br. 1-2. Appellants instead quote the
Examiner's finding from a prior Non-Final Action that the claimed invention
is "directed to organizing advertising data for display on a generic computer
device." Compare App. Br. 4, with Non-Final Act. 3. Appellants' appeal,
however, is from the Examiner's decision to reject claim 10 in the Final
Action. See 35 U.S.C. § 134(a).
But even if Appellants disputed the Examiner's findings regarding
Alice step one from the Final Action, which they do not, namely that the
claimed invention is directed to the abstract idea of advertising to
consumers, we still remain unpersuaded of error. Independent claim 10
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recites five key steps-(A) storing subscription information for a customer
possessing a mobile device, (B) delivering a software applet to the
customer's mobile device, (C) comparing the mobile device's location to a
predefined radius of a retail location using the software applet,
(D) delivering a text notification to the mobile device regarding a particular
product, and (E) delivering an advertisement, coupon, or sample regarding
the particular product when the customer requests further information. At a
high level of abstraction, claim 10 as a whole is directed to targeted
advertising to consumers, albeit described more narrowly by limiting its
practical application to delivering an advertisement based on a location of a
consumer's mobile phone. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1240-41 (Fed. Cir. 2016) (finding "[a]n abstract idea can generally be
described at different levels of abstraction").
There is no definitive rule to determine what constitutes an "abstract
idea." Rather, we need only look to other decisions where similar concepts
were previously found abstract by the courts. See Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) ("Instead of a
definition [for what an 'abstract idea' encompasses], then, the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided."); see also Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1334--35 (Fed. Cir. 2016).
In that regard, targeted advertising to consumers is a well-known
economic practice, and as such, an abstract idea. See Morsa v. Facebook,
Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014), aff'd, 622 F. App'x 915
(Fed. Cir. 2015) (concluding that claims directed to "targeting
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advertisements to certain consumers" were no more than an abstract idea).
As noted by the court in Morsa, "targeted advertising is [a well-known]
concept, insofar as matching consumers with a given product or service 'has
been practiced as long as markets have been in operation."' Morsa, 77 F.
Supp. 3d at 1014 (quoting Tuxis Techs., LLC v. Amazon.com, Inc., No. CV
13-1771-RGA, 2014 WL 4382446, at *5 (D. Del. 2014)). In other words,
"[ t ]he concept of gathering information about one's intended market and
attempting to customize the information then provided is as old as the
saying, 'know your audience."' Id. at 1013 (quoting OpenTV, Inc. v. Neiflix
Inc., 76 F. Supp. 3d 886, 893 (N.D. Cal. 2014)). See also Affinity Labs of
Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016)
("tailoring of content based on information about the user-such as where
the user lives or what time of day the user views the content-is an abstract
idea that is as old as providing different newspaper inserts for different
neighborhoods.") (citing Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)).
We, therefore, agree with the Examiner that the claims are directed to
an abstract idea.
Alice Step Two
Turning to step two of the Alice analysis, "[ fJor the role of a computer
in a computer-implemented invention to be deemed meaningful in the
context of this analysis, it must involve more than performance of 'well-
understood, routine, [and] conventional activities previously known to the
industry."' Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (quoting Alice, 134 S.
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Ct. at 2359 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 73 (2012) (internal quotation marks and brackets omitted))).
The Examiner finds claim 10 merely recites generic computer
elements that implement generic functions that are well-understood, routine,
and conventional in the industry. Final Act. 9; Ans. 2. Appellants contend,
however, that the recited mobile wireless cellular device is a unique
combination of features that did not exist at the time of the application's
priority date. App. Br. 4--5. According to Appellants, a mobile wireless
cellular device programmed with an applet to provide a location service was
unknown at that time. Id. at 5. That is, the mobile wireless cellular device
programmed with the applet to provide the location service was not a well-
understood, routine, and conventional activity previously known to the
industry.
"The question of whether a claim element or combination of elements
is well-understood, routine and conventional to a skilled artisan in the
relevant field is a question of fact." Berkheimer v. HP Inc., 881 F.3d 1360,
1368 (Fed. Cir. 2018). Our reviewing court holds "[w]hether something is
well-understood, routine, and conventional to a skilled artisan [is] at the time
of the patent." Id. at 1369 (emphasis added); see also Exergen Corp. v. Kaz
USA, Inc., 725 F. App'x. 959,963 (Fed. Cir. 2018) (finding a combination
of elements "well-understood, routine and conventional at the time of
invention.") ( emphasis added). Thus, what was well-understood, routine,
and conventional at the time of the invention-May 5, 2009-is a
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fundamental aspect of the Examiner's factual determination underpinning
the eligibility rejection. 4
The Examiner cites Burazin, a United States patent application
publication, as evidence to support a finding that the claimed subject matter
is well-understood, routine, and conventional to a skilled artisan in the
relevant field. Ans. 3. Burazin's filing date of December 14, 2007, is before
the filing date of the present application and its corresponding provisional
application. But Burazin's application published on June 18, 2009.
Notably, Burazin was not published and publicly available until after the
present application's filing date of May 5, 2009. See 35 U.S.C. § 122(b)
(requiring patent applications to be kept in confidence at the USPTO except
for published applications). Therefore, the Examiner's reliance on Burazin
for showing what was ostensibly well-known, routine, and conventional at
the time of Appellants' invention is problematic for that reason alone.
But even if Burazin published before the time of Appellants'
invention-a fact that that has not been shown on this record-"[ w ]hether a
particular technology is well-understood, routine, and conventional goes
beyond what was simply known in the prior art. The mere fact that
something is disclosed in a piece of prior art, for example, does not mean it
4 Although the present application is based on a provisional application that
was filed on May 5, 2008, we have no basis to presume that Appellants are
entitled to their provisional application's filing date because the USPTO
does not examine priority claims unless absolutely necessary-a priority
examination that did not occur here. See Dynamic Drinkware, LLC v. Nat 'l
Graphics, Inc., 800 F.3d 1375, 1380 (Fed. Cir. 2015). Nevertheless, Burazin
is problematic to show what was well-known, routine, and conventional at
the time of Appellants' invention because Burazin also was published after
the present application's filing date of May 5, 2009.
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was well-understood, routine, and conventional." Berkheimer, 881 F.3d at
1369. For the above reasons, the Examiner's findings are insufficient to
show that the purported facts were well-understood, routine, and
conventional at the time of the invention.
In DDR Holdings, the Federal Circuit held eligible claims addressing
the problem of retaining website visitors who, if adhering to the well-
understood, routine, and conventional functioning of Internet hyperlink
protocol, would be transported instantly away from a host's website after
clicking on an advertisement and activating a hyperlink. DDR Holdings,
773 F.3d at 1257. In reaching this determination, the court noted that the
claims "specify how interactions with the Internet are manipulated to yield a
desired result-a result that overrides the routine and conventional sequence
of events ordinarily triggered by the click of a hyperlink." Id. at 1258. The
court held that claims were eligible because they recited a solution
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." Id. at 1257.
Given this holding, we agree with Appellants (App. Br. 7) that the
claimed steps of receiving a wireless cellular mobile device's location
obtained by a software applet delivered to the wireless cellular mobile
device, comparing the location to a retail location, and delivering a
notification-steps (C) and (D) of claim 10 discussed above-is a challenge
that is particular to wireless cellular mobile device technology. Notably,
Appellants' Specification discusses the problem to be solved by the
invention, namely tracking a consumer's location to provide targeted
information relevant to the consumer's location. Spec. ,r,r 3--4. According
to the Specification, information, such as coupons or samples, was delivered
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manually, via mail, in populated public places or retail locations. Id. at ,r 4.
But such methods were not targeted easily to a particular consumer group,
nor could consumer response to a product be easily tracked. Id. Moreover,
consumers were hesitant to provide GPS tracking information voluntarily
from their mobile devices. See id. at ,r 58. The inventors solve the problem
by tracking a consumer by installing a software applet on the consumer's
mobile device. Id. at ,r 60. That is, once the consumer registers with a
service and installs the software applet on their mobile device, the applet, in
tum, provides GPS coordinates back to the service that will provide the
targeted information relevant to the consumer's location. Id.
The claimed invention addresses the problem of tracking a
consumer's location that runs counter to the routine and conventional mobile
device functions at the time of the invention, namely that the mobile device
did not otherwise receive targeted information relevant to the consumer's
location via an installed applet. That is, Appellants' claims recite an
installed software applet that tracks the consumer's location to provide the
consumer targeted information relevant to the consumer's location. Cf
DDR Holdings, 773 F.3d at 1257. Thus, the claimed invention specifies
how interactions with a consumer's mobile device are manipulated to yield a
result that overrides the then-routine and conventional sequence of events
involving (1) mailing information to the general public, and (2) consumers'
hesitancy to provide GPS tracking information voluntarily from their mobile
devices.
Therefore, the claimed invention is rooted in wireless cellular mobile
device technology at least to the extent that it overcomes a problem
specifically arising in that technology at the time of the invention, namely by
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using the mobile device itself to track the consumer's location via an
installed applet to provide targeted information to the consumer relevant to
the consumer's location. For the foregoing reasons, then, the recited
elements----considered both individually and as an ordered combination-
contain an "inventive concept" sufficient to transform the recited abstract
idea into a patent-eligible application. Therefore, we are persuaded that the
Examiner erred in rejecting claims 10-14 under§ 101.
THE ANTICIPATION REJECTION
The Examiner finds that Burazin discloses every recited element of
independent claim 10 including, among other things, delivering a software
applet to a customer's wireless cellular mobile device via a wireless cellular
service provider to which the wireless cellular mobile device is subscribed.
Final Act. 5-6. In particular, the Examiner finds Burazin discloses sending a
map to a shopper's computing device. Ans. 4. According to the Examiner,
"[t]he map is software that is downloaded for display to [a] customer." Final
Act. 10; Ans. 4.
Appellants contend Burazin does not disclose delivering a software
applet to a customer's wireless cellular mobile device because a map is not a
software applet. App. Br. 8-9.
ISSUE
Under § 102, has the Examiner erred in rejecting claim 10 by finding
that Burazin delivers a software applet to a customer's wireless cellular
mobile device via a wireless cellular service provider to which the wireless
cellular mobile device is subscribed?
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ANALYSIS
A key aspect of claim 10 is that a software applet is delivered to
customer's wireless cellular mobile device via a wireless cellular service
provider to which the wireless cellular mobile device is subscribed. The
Examiner finds Burazin's map sent to a computing device discloses this
claimed delivered software applet. Final Act. 6 ( citing Burazin ,r,r 22, 42);
Ans. 4.
We begin by construing the term "applet." To this end, we give
claims their broadest reasonable interpretation consistent with the
Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). The meaning of a claim term may be determined by
reviewing a variety of sources including the claims themselves, dictionaries
and treatises, and the written description, the drawings, and the prosecution
history. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294,
1298 (Fed. Cir. 2003).
Appellants' Specification does not define the term "applet," but does
note an applet is one of two options to allow tracking of a mobile device.
Spec. ,r 60. According to the Specification, a consumer is instructed to
install an applet on their mobile device, and the installed applet, in tum,
provides the mobile device's GPS coordinates. Id. We emphasize the
Specification's use of the term "install" as at least suggesting the applet is a
computer program. See MICROSOFT COMPUTER DICTIONARY 276 (defining
the term "install" as being "[t Jo set in place and prepare for operation.").
Moreover, technical dictionaries published before the present
application's filing date define the term "applet" to mean a computer
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program. See id. at 31 ( defining the term "applet" as "[a] program that can
be ... executed on the recipient's machine."); Steven M. Kaplan, WILEY
ELECTRICAL & ELECTRONICS ENGINEERING DICTIONARY 33 (2004) (defining
the term "applet" as "[a] small application designed to run within another
program."); Dan Gookin & Sandra Harkin Gookin, ILLUSTRATED COMPUTER
DICTIONARY FOR DUMMIES 30 ( 4th ed. 2000) ( defining the term "applet" as
"[a]ny small program designed to do a specific task (hence applet as
opposed to application)."); Bryan Pfaffenberg & David Wall, QUE'S
COMPUTER & INTERNET DICTIONARY 25 ( 6th ed. 1995) ( defining the term
"applet" as "[a] small, often free, application program that performs a simple
task."); Harry Newton, NEWTON'S TELECOM DICTIONARY 111 (22d ed.
2006) ( defining the term "applet" as "[ m ]ini-programs that can be
downloaded quickly and used by any computer equipped with a Java-
capable browser."). Thus, under its broadest reasonable interpretation
consistent with Appellants' Specification and the ordinary and customary
meaning of "applet" in the art as evidenced by these definitions, we interpret
the term "applet" as a computer program.
With this construction, we find the Examiner's rejection problematic.
Burazin's personalized shopping system provides relevant information that
is responsive to shoppers' needs. Burazin, Abstract. Burazin's Figure 1
illustrates components of the personalized shopping system at a retail
location. Id. ,r 25. In one embodiment, Burazin's personalized shopping
system accesses data that identifies items that a shopper desires, and
determines those items' positions in the retail location. Id. ,r 22. Burazin's
personalized shopping system sends a map of the identified items to the
shopper's computing device. Id.
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Given this functionality, we agree with Appellants that a map is
data-not software, i.e., not a computer program. App. Br. 9. As
Appellants indicate, software includes executable instructions, which can
enable or disable particular circuits, such as the location or communication
circuits of a mobile device. Id. Simply put, data, such as a map, does not do
this: it is simply arranged and displayed. Id. That Burazin's exemplary map
in Figure 7 may be printed for the shopper at home or at a retail location as
noted in Burazin's paragraph 113 only further suggests that the delivered
map is mere data and not a computer program, let alone a computer program
delivered via a wireless cellular service provider to which the wireless
cellular mobile device is subscribed.
Constrained by this record, Appellants have persuaded us the
Examiner erred in rejecting independent claim 10 and dependent claims 11-
14 for similar reasons. Because this issue is dispositive regarding our
reversing the rejection of these claims, we need not address Appellants'
other arguments.
CONCLUSION
The Examiner erred in rejecting claims 10-14 under 35 U.S.C. §§ 101
and 102(e).
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DECISION
The Examiner's decision to reject claims 10-14 is reversed.
REVERSED
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