Ex Parte Guioguio

Patent Trials and Appeals Board

Jun 28, 2019

12955099 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/955,099
107681 7590
NCR Corporation
864 Spring Street NW
Atlanta, GA 30308
11/29/2010
07/02/2019
FIRST NAMED INVENTOR
Froilan B. Guioguio JR.
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.
10-193 (1592.148US1) 6856
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FROILAN B. GUIOGUIO JR.
Appeal2017-009332
Application 12/955,099
Technology Center 3600
Before JEAN R. HOMERE, JEREMY J. CURCURI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-3, 5, 7-10, 12, 13, and 15-21. App. Br. 1, Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1-3, 5, 7-10, 12, 13, and 15-21 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more. Final
Act. 3-7.
Claims 1-3, 5, 7, 8, 12, 13, and 15-21 are rejected under pre-AIA 35
U.S.C. § 103(a) as obvious over Huang (US 7,412,405 B2; Aug. 12, 2008)
and Anschutz (US 7,620,026 B2; Nov. 17, 2009). Final Act. 8-29.
Appeal2017-009332
Application 12/955,099
Claims 9 and 10 are rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over Huang, Anschutz, and Dharmaji (US 2009/0070217 Al; Mar.
12, 2009). Final Act. 29-30.
We reverse.
STATEMENT OF THE CASE
Appellant's invention relates to "INFORMATION ACCESS
MANAGEMENT." Spec. Title. Claim 1 is illustrative and reproduced
below:
1. A method comprising:
obtaining an authentication key from a governing body for at least one
of source information or advertising information; and
transmitting, in a single transmission, the source information and the
advertising information from a wireless transmitter corresponding to one of
a building or a sign to a wireless receiver in a mobile device without prior
solicitation by the mobile device, the single transmission including:
the authentication key for the at least one of the source information or
the advertising information from the governing body;
identification of a source corresponding to the advertising information
in the source information; and
an encryption of the advertising information to be stored in the mobile
device when the source information and location information corresponding
to the source information comply with conditions included in a storage
policy of the mobile device that references the governing body, the
conditions specify that the mobile device is to refrain from storing a
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duplicate of the advertising information when another transmission from the
source is received.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential).
ANALYSIS
THE 35 U.S.C. 101 REJECTION OF CLAIMS 1-3, 5, 7-10, 12, 13, AND 15-21
With respect to independent claim 1, the Examiner determines:
[C]laim 1 is analyzed to determine whether it is directed to a
judicial exception. The claim recites the steps obtaining an
authentication key (data), transmitting source and advertising
information (data) including the authentication key,
identification of a source (data) and an encryption of the
advertising information (data) to be refine a duplicate
information that do not comply with condition. In other words,
the claim recites comparing and organizing of information.
This is simply the organization and comparison of data which
can be performed mentally and is an idea of itself. It is similar
to other concepts that have been identified as abstract by the
courts, such as using categories to organize, store and transmit
information in Cyberfone, or comparing new and stored
information and using rules to identify options in SmartGene,
or data recognition and storage ( Content Extraction).
Therefore, the claim is directed to an abstract idea (Step 2A:
YES).
Final Act. 4.
In the Examiner's Answer, the Examiner further determines:
The steps describes the concept of providing information such
as advertising depending on the needs of a particular traveler,
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some of this information is more useful than others which
corresponds to concepts identified as abstract idea by the court
such as collecting and comparing known information ( Glass en),
collecting information, analyzing it, and displ[a]ying certain
results of the collection and analysis (Electric Power Group),
obtaining and comparing intangible data (CyberSoruce)
organizing information through mathematical correlation
(Digitech) data recognition and storage ( Content Extraction)
and delivering user-selected media content to portable device
(Affinity Labs v. Amazon.com). Therefore, the claims directed
to the abstract idea as indicated above.
Ans. 3.
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]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
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. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). 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."); 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.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
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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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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 176; 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.").
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
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concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation 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. ( 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.
Early this year, the PTO published revised guidance on the application
of§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). Under that guidance, we first look
to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h) (9th ed.
2019)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. 56.
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The Examiner generally states that independent claim 1 "is simply the
organization and comparison of data which can be performed mentally and
is an idea of itself' and the Examiner provides citations to multiple Federal
Circuit cases. Final Act. 4; see also Ans. 3. Applying the guidance set forth
in the Memorandum, we disagree. Contrary to the Examiner's
determinations, we determine that the specific claim limitations do not recite
an abstract idea because they do not correspond to a mental process. In
particular, characterizing the claim as simply comparing and organizing (i.e.,
a mental process) is an oversimplification of the actual claim language.
In particular, the claim recites "obtaining an authentication key from a
governing body," "transmitting ... without prior solicitation by the mobile
device," and checking compliance "with conditions included in a storage
policy ... that references the governing body," and this is the same governing
body from with the authentication key was obtained. We disagree with the
Examiner's determinations that these particular activities could be
performed mentally.
Accordingly, we are persuaded by Appellant's arguments that:
Indeed, the actual claim language clearly recites elements
that would be impossible to mentally perform, including
"obtain[ing] an authentication key from a governing body for at
least one of source information or advertising information," and
"transmit[ing], in a single transmission, the source information
and the advertising information from a wireless transmitter
corresponding to one of a building or a sign to a wireless
receiver in a mobile device without prior solicitation by the
mobile device" and "an encryption of the advertising
information to be stored in the mobile device when the source
information and location information corresponding to the
source information comply with conditions included in a
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storage policy of the mobile device that references the
governing body."
Appeal Br. 9; see also Reply Br. 5 ("the claims recite elements that would be
impossible to mentally perform").
The Examiner neither articulates why the claimed concepts are
analogous to the cited Federal Circuit cases, nor otherwise articulates why
the claim concepts fall within the subject matter groupings of abstract ideas
of mathematical concepts, certain methods of organizing human activity, or
mental processes. See 84 Fed. Reg. 56.
In addition, Appellant's Specification discloses
Reception policy conditions can be used to enhance
reliability of the information transmitted, as well as consumer
satisfaction. For example, signs or buildings broadcasting
messages might be approved by a governing body. The source
information and advertising information may be subject to
authentication, so that mobile devices are programmed, perhaps
as part of their storage policy conditions, to store information
only when accompanied by valid authentication keys.
Spec. ,r 1 7. Checking compliance "with conditions included in a storage
policy ... that references the governing body," which is the same governing
body from which the authentication key was obtained, is a specific solution
to the technical problem of enhancing reliability of transmitted information.
Thus, we do not sustain the rejection of independent claim 1 under 35
U.S.C. § 101. Claims 2, 3, 5, 7, and 21 depend from claim 1. We, therefore,
also do not sustain the rejection of these claims under 35 U.S.C. § 101.
Independent claims 8 and 1 7 recite similar language as claim 1. We,
therefore, also do not sustain the rejection of independent claims 8 and 17
under 35 U.S.C. § 101.
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Claims 9, 10, 12, 13, 15, 16, and 18-20 variously depend from claims
8 and 1 7. We, therefore, also do not sustain the rejection of these claims
under 35 U.S.C. § 101.
THE OBVIOUSNESS REJECTION OF CLAIMS 1-3, 5, 7, 8, 12, 13, AND 15-21
OVER HUANG AND ANSCHUTZ
Contentions
The Examiner finds Huang and Anschutz teach all limitations of claim
1. Final Act. 8-13.
In particular, the Examiner finds Huang teaches "an encryption of the
advertising information to be stored" as recited in claim 1. Final Act. 9
(citing Huang col. 5, 11. 44--56).
Regarding the "storage policy of the mobile device that references the
governing body" as recited in claim 1, the Examiner finds Anshutz teaches
this claimed subject matter. Final Act. 12 (citing Anshutz col. 13, 11. 43--48;
col. 17, 11. 44--57; col. 19, 11. 11-23).
Appellant presents the following principal arguments:
1.
This citation [to Huang], however, illustrates that authors of
advertising encrypt the advertisement to upload to the add
network in order to "ensure that it has been submitted from a
legitimate client of the advertising service."[] This clearly has
nothing to do with the distribution of the advertisement to the
mobile device, but rather simply ensures that an advertiser is
subscribed to the advertisement distribution service of Huang.
Appeal Br. 12-13.
11. The references do not teach the "storage policy of the mobile
device that references the governing body" as recited in claim 1. See Appeal
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Br. 13 ("The Examiner failed to provide any reasoning for how the
'controller' [in Anshutz] could be construed as a 'governing body."'); see
also Reply Br. 9-11 ( discussing Anshutz and "governing body").
In response, the Examiner explains "Huang teaches encryption of
advertising information." Ans. 9.
In further response, the Examiner explains "Anschutz [teaches]
advertising information (received information) to be stored in the mobile
device when the source information and location information corresponding
to the source information comply with condition included in a storage policy
of the mobile device that reference the governing body." Ans. 10. The
Examiner additionally explains "a broadest reasonable interpretation in the
light of the specification and interprets 'a governing body' as 'a controller'
that compares [ the condition specify that the received information] updates
with the data store in the navigation system." Ans. 11.
Our Review
Regarding Appellant's argument (i), Huang discloses "[a]d
authentication and encryption module 220 encrypts the input data with the
client key and sends the input data with client key and authenticates the
advertisement request to ensure that it has been submitted from a legitimate
client of the advertising service." Huang col. 5, 11. 42--46. We find Huang
teaches an encryption of advertising information. However, this encrypted
advertising information in Huang is being sent to the advertising service, and
is not described as part of a transmission to the mobile device. That said, we
recognize that Huang does disclose "[a]d propagation module 240 distributes
the certified ad to a selected vehicle population, which is determined by
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targeting information supplied by the advertiser and by geography and
traffic loads." Huang col. 5, 11. 56-59. We do not readily see an explanation
of how or why the distributed ad would have been encrypted. Nonetheless,
even if we assume that a skilled artisan would have considered encryption of
the distributed ad as a predictable alternative, we agree with Appellant's
argument (ii) and determine the Examiner erred in finding Anshutz teaches
"storage policy of the mobile device that references the governing body" as
recited in claim 1.
This appeal hinges on the meaning of "governing body" as recited in
claim 1.
Appellant's Specification discloses "signs or buildings broadcasting
messages might be approved by a governing body." Spec. ,r 17. Appellant's
Specification further discloses "[a] governing body may provide
authentication of the source information and/ or advertising information, and
in some cases, mobile devices may operate to receive and/or store
advertising information only from sources that present valid authentication
keys." Spec. ,r 24.
Turning to the language of claim 1, which recites "obtaining an
authentication key from a governing body." Claim 1 further recites "storage
policy of the mobile device that references the governing body."
Thus, we determine the "governing body" provides the authentication
key that is transmitted from the wireless transmitter, and that this same
"governing body" is referenced by the storage policy (to check the validity
of a presented authentication key). See Claim 1, Spec. ,r 24.
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In making the rejection, the Examiner "interprets 'a governing body'
as 'a controller' that compares [the condition specify that the received
information] updates with the data store in the navigation system." Ans. 11.
Turning to the cited portions of Anshutz, Anshutz discloses "[t]he
controller 340 may be further configured to establish an ad hoc wireless
connection with the detected mobile electronic device using the transceiver
325, and may thereby transmit location-specific data 332 stored in the
memory 330 to the detected mobile electronic device over the ad hoc
wireless connection." Anshutz col. 13, 11. 43--48.
Anshutz discloses
In response to this transmission, the mobile electronic device
400 may receive targeted advertising data from the electronic
billboard that is based on the user and/ or device information
provided by the mobile electronic device 400. For example,
where the mobile electronic device 400 is a cellular phone, the
controller 440 may retrieve information from the memory 430
about the user of the mobile electronic device 400, such as
frequently called numbers, stored music files, and/or other data
that may indicate the user's interests and/or preferences, and
may transmit this information to the electronic billboard via the
ad hoc wireless connection. In addition, the controller 440 may
be configured to transmit information about the mobile
electronic device 400 itself, such as remaining battery life, to
the electronic billboard via the ad hoc wireless connection
established by the transceiver 435.
Anshutz col. 17, 11. 44--57.
Anshutz discloses
In addition, the mobile electronic device 400 may be
configured to update a database stored in the mobile electronic
device 400 with the received location-specific data from the
electronic billboard. For instance, where the mobile electronic
device 400 includes a navigation system, the mobile electronic
device 400 may receive information updates from an electronic
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billboard regarding local road construction and/or local
businesses that may not be currently included in the navigation
system. As such, the controller 440 may compare the received
information updates with the data stored in the navigation
system database, and may thereby update the navigation system
database with the received data from the electronic billboard.
Anshutz col. 19, 11. 11-23.
These cited portions of Anshutz do not teach "storage policy of the
mobile device that references the governing body" as recited in claim 1.
Anshutz at col. 13, 11. 43--48 discuss transmitting location-specific data, and
does not discuss checking for compliance with a storage policy of the mobile
device. Anshutz at col. 17, 11. 44--57 discusses targeted advertising data, and
does not discuss checking for compliance with a storage policy of the mobile
device. Anshutz at col. 19, 11. 11-23 does discuss a controller that, at least in
some sense, implements a storage policy. However, we do not readily see a
"storage policy of the mobile device that references the governing body" as
recited in claim 1 at least because Anshutz's controller does not provide an
authentication key that is transmitted from the wireless transmitter, and
Anshutz's controller is not referenced by a storage policy to check the
validity of a presented authentication key.
We, therefore, do not sustain the Examiner's rejection of claim 1. We
also do not sustain the Examiner's rejection of claims 2, 3, 5, 7, and 21,
which depend from claim 1.
We also do not sustain the Examiner's rejection of independent claim
8, which recites "the advertising application having an authentication key
from a governing body" and "store information only when accompanied by a
valid authentication key by the governing body specified in the storage
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policy." We also do not sustain the Examiner's rejection of claims 12, 13,
15, and 16, which depend from claim 8.
We also do not sustain the Examiner's rejection of independent claim
17, which recites "obtain an authentication key from a governing body" and
"store information only when accompanied by a valid authentication key by
the governing body specified in the storage policy." We also do not sustain
the Examiner's rejection of claims 18-20, which depend from claim 17.
THE OBVIOUSNESS REJECTION OF CLAIMS 9 AND 10 OVER HUANG,
ANSCHUTZ, AND DHARMAil
Claims 9 and 10 depend from independent claim 8. The Examiner
does not find Dharmaji cures the deficiency of Huang and Anschutz
discussed above. See Final Act. 29-30.
We, therefore, do not sustain the Examiner's rejection of claims 9 and
10.
ORDER
The Examiner's decision rejecting claims 1-3, 5, 7-10, 12, 13, and
15-21 is reversed.
REVERSED
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