Ex Parte Hurewitz et al

Patent Trials and Appeals Board

Jun 25, 2019

14610605 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/610,605 01/30/2015 Matthew Hurewitz
21186 7590 06/27/2019
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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.
1060.041US1 7829
EXAMINER
ANDREI, RADU
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW HUREWITZ and
WILLIAM DON WORTLEY 1
Appeal2018-002675
Application 14/610,605
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3-11, and 13-24, which are all claims pending in the
application. Appellants have canceled claims 2 and 12. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as "BBY Solutions, Inc.,
which is a direct, wholly-owned subsidiary of Best Buy Enterprise Services,
Inc., which is a direct, wholly-owned subsidiary of Best Buy Co., Inc."
Appeal Br. 2.
Appeal2018-002675
Application 14/610,605
BACKGROUND2
This application relates to "a beacon-based media network." Spec.
Title. Claim 1, reproduced below, is illustrative of the subject matter on
appeal):
1. A method for obtaining location-selected content for a
user from a media content network, the method performed by a
mobile computing device, and the method comprising:
[ ( 1)] transmitting, from a first software application of
the mobile computing device to a device tracking system,
an identifier unique to the mobile computing device,
wherein the device tracking system collects location data
for the mobile computing device at a time that the mobile
computing device is located within a tracked physical
environment;
[(2)] transmitting, from a second software application of
the mobile computing device to a media content network
system, the identifier unique to the mobile computing
device, wherein the identifier is transmitted to the media
content network system at a subsequent time that the
mobile computing device is located outside of the tracked
physical environment;
[(3)] receiving, with the second software application of
the mobile computing device from the media content
network system, media content selected for the mobile
computing device, wherein the media content network
system selects the media content for the mobile
computing device based on the identifier unique to the
mobile computing device, wherein the media content
network system further selects the media content for the
2 Throughout this Decision we have considered the Specification filed
January 30, 2015 ("Spec."), the Final Rejection mailed April 20, 2017
("Final Act."), the Appeal Brief filed October 19, 2017 ("Appeal Br."), the
Examiner's Answer mailed November 29, 2017 ("Ans."), and the Reply
Brief filed January 15, 2018 ("Reply Br.").
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mobile computing device based on activity information
of the user determined from the tracked physical
environment by the device tracking system; and
[ ( 4)] displaying the media content selected for the
mobile computing device in the second software
application, wherein the displaying of the media content
in the second software application occurs at the
subsequent time that the mobile computing device is
located outside of the tracked physical environment;
[(5)] wherein the activity information of the user in the
tracked physical environment is communicated from the
device tracking system to the media content network
system independently of the mobile computing device,
and wherein the activity information of the user in the
tracked physical environment is determined by the device
tracking system based on the location data.
Appeal Br. 26 (Claims App'x) (limitation numbering added in brackets).
REJECTIONS
Claims 1, 3-11, and 13-24 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 3-9.
Claims 1, 3-11, and 13-24 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of US 9,204,251 B 1, issued
December 1, 2015 ("Mendelson") and US 2014/0274135 Al, published
September 18, 2014 ("Edge"). Final Act. 9-25.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential). To the extent Appellants have not advanced separate,
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substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection of Claims 1, 3-11, and 13-24 under 35 U.S.C. § 103
The Examiner rejects claims 1, 3-11, and 13-24 under 35 U.S.C.
§ 103 as obvious over a combination of Mendelson and Edge. Final Act. 9-
25. Based on Appellants' arguments (Appeal Br. 20-24; Reply Br. 6-7) and
our discretion under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of this
rejection on the basis of representative claim 1.
Appellants argue "[t]he Examiner has not established the obviousness
of two separate software applications operating on a mobile computing
device" as claimed. Appeal Br. 22. According to Appellants, the Examiner
points to the same cited material as disclosing both the "first software
application" limitation 3 and the "transmitting, from a second software
application" limitation4, but does not explain how Mendelson supports two
separate software applications. Id. at 21 ( citing Final Act. 9-10 ( citing
Mendelson 32:3-15)). Appellants add that the Examiner's explanation that
Mendelson does not disclose transmitting from a second software
application, but "[i]t would have been obvious to one having ordinary skill
3 "transmitting, from a first software application of the mobile computing
device to a device tracking system, an identifier unique to the mobile
computing device ... "
4 "transmitting, from a second software application of the mobile computing
device to a media content network system, the identifier unique to the
mobile computing device ... "
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in the art at the time of filing to transmit the mobile device ID not only
[from] the first, but also from the second application, since it has been held
that mere duplication of the essential steps of a process involves only routine
skill in the art," shows that "the Examiner does not understand that there is a
difference" between the two claimed software applications. Id. ( quoting
Final Act. 16). In fact, Appellants contend that "[t]he specific transmission
sequence of the identifier is not a 'mere duplication,' it is integral to the
operation of the recited technique and is not shown by any of the cited
references." Id.
The Examiner responds that "Mendelson discloses one software
application operating on a mobile computing device used for both tracking
and media content" and a person of ordinary skill would have found it
obvious to have that functionality in two separate applications on the mobile
device because "constructing a formerly integral structure in various
elements involves only routine skill in the art." Ans. 11.
Based on the record before us, we agree with Appellants that the
Examiner has not adequately explained how the cited portions of Mendelson
teach or suggest the transmitting from a second software application
limitation. The Examiner's conclusory statement that "mere duplication of
the essential steps of a process involves only routine skill in the art," (Final
Act. 16) does not take into consideration the differences between the two
recited software applications. For example, the claim language makes clear
that the identifier is sent by the second software application "at a subsequent
time that the mobile computing device is located outside of the tracked
physical environment." Final Act. 22. For this portion of the limitation, the
Examiner explains that Mendelson discusses "deliver[ing] more content
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( advertising) to the user when he approaches the store ( reads on outside the
mapped area)." Final Act. 10. There are several deficiencies in this
explanation. In particular, the cited portions of Mendelson do not teach or
suggest (1) an identifier is sent as the user approaches the store, (2) a second
software application is involved at any point, and (3) the content is delivered
at a subsequent time to the location tracking. The Examiner does not
sufficiently explain why or how a person of ordinary skill in the art would
find obvious these differences between Mendelson's disclosure and the
claimed language. See Final Act. 9-25; Ans. 11-14.
Moreover, the authorities the Examiner relies upon for the conclusion
that it would have been obvious to use two software applications instead of
one are not applicable here. Final Act. 16 ( citing St. Regis Paper Co. v.
Bemis Co., 549 F.2d 833 (7th Cir. 1977) (holding obvious claims reciting the
feature of adding multiple layers to a bag consisting of known elements); In
re Harza, 274 F.2d 669 (CCPA 1960) (finding obvious claims to a structure
who's "only distinction to be found [over the prior art] is in the recitation ...
of a plurality of ribs" where the prior art showed one rib); Ans. 11 ( citing In
re Dulberg, 289 F.2d 522,523 (CCPA 1961) (holding claims to a lipstick
holder unpatentable because "[i]f it were considered desirable for any reason
to obtain access to the end of [the prior art's] holder to which the cap is
applied, it would be obvious to make the cap removable for that purpose'1);
Nerwin v. Erlichman 168 USPQ 177 (BPAI 1969) (finding claims reciting
"a non-camera photographic apparatus and also a camera" obvious even
though a divider structure was made of two, as opposed to one, elements);
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MPEP 5 § 2144.04 V.C.) (titled "Making Separable" and quoting In re
Dulberg).
More relevant to this situation are the cases that make clear "[t]he
separate naming of two structures in the claim strongly implies that the
named entities are not one and the same structure." HTC Corp. v. Cellular
Commc'ns Equip. LLC, 701 Fed. App'x 978,982 (Fed. Cir. 2017) (citing
Becton, Dickinson & Co. v. Tyco Healthcare Grp., LP, 616 F.3d 1249, 1254
(Fed. Cir. 2010); Gaus v. Conair Corp., 363 F.3d 1284, 1288 (Fed. Cir.
2004)). Here, the claims plainly recite two different structures: a first
software application and a second software application. The implication,
therefore, is that the two applications are separate. The Specification
reinforces this inference by describing several embodiments, one of which
explicitly incorporates "multiple mobile software applications." Spec. Fig.
4B, ,r,r 9, 20, 51-54. Because other embodiments are described without the
use of multiple software applications, the applicant was clearly aware of the
difference and intended to emphasize the use of multiple software
applications in the claimed subject matter. See Spec. Figs. 3, 4A, ,r,r 42-50.
Based on the Specification's explicit description of an embodiment using
multiple software applications and the claim's clear language including the
same, the invention requires two separate software applications. As
explained above, the Examiner's bare conclusion that it would be obvious to
modify Mendelson to include a second software application is not sufficient
to demonstrate obviousness of the second software application required by
the claim. Accordingly, we do not sustain the Examiner's§ 103 rejection of
claim 1, or grouped claims 3-11 and 13-24, which stand therewith.
5 Manual of Patent Examining Procedure.
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Because this determination resolves the § 103 rejection for all pending
claims, we need not address Appellants' other arguments regarding
Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423
(Fed. Cir. 1984) (explaining that an administrative agency may render a
decision based on "a single dispositive issue").
Rejection of Claims 1, 3-11, and 13-24 under 35 U.S.C. § 101
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 3 5 U.S. C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
"'Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014)
(quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is "directed to one
of those patent-ineligible concepts." Alice, 573 U.S. at 217. If so, we then
examine "the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 573 U.S.
at 217 ( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an "inventive
concept," "an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Alice, 573 U.S. at217-18 (alteration
in original) (quoting Mayo, 566 U.S. at 72-73).
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The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under the Revised
Guidance, to decide whether a claim is "directed to" an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is "directed to" an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add "a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field" or "simply append[]
well-understood, routine, conventional activities previously known to the
industry." Revised Guidance, 84 Fed. Reg. at 56.
For purposes of the§ 101 rejection, Appellants argue claims 1, 3-11,
and 13-24 together as a group. See Appeal Br. 11-18; Reply Br. 2---6.
Therefore, consistent with the provisions of 37 C.F.R. § 4I.37(c)(l)(iv), we
limit our discussion to independent claim 1.
The Judicial Exception-Abstract Idea
The Examiner determined the claims are directed towards the abstract
idea of "a beacon-based media network." Final Act. 3--4; 27. For the
reasons explained below, we agree that the claims recite an abstract idea.
As quoted and enumerated above, claim 1 includes four main
limitations. These limitations recite, in part, the following steps:
transmitting an identifier to a tracking system and to a media content system
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(limitations (1) and (2)) in order to choose media content based on the user's
activity (limitations (3) ("media content selected") and ( 4) ("activity
information of the user in the tracked physical environment is communicated
... [and] determined")). Appeal Brief 26 (Claims App'x); see also Spec.
,r 16 ("These customer activities are tracked and identified for correlation
with subsequent content delivery from a media delivery system.").
According to the Specification, the invention overcomes various
problems of "retailers of goods and services" such as the prior art's failure
"to track or measure the interactions and type of activity that [tracked]
customers have within particular sections of the store, or the specific items,
brands, or types of products that a particular customer is interested in." Id.
,r,r 3--4. "[T]he described techniques enable a commercial entity ( e.g., a
retailer) to collect and process useful commerce information from the
activity of individual users that occurs in a store or other retail environment"
and that information may be used "for the retrieval and delivery of other
information, such as advertisements and other media content, which are
selected on the basis of certain types of real-world customer activities." Id.
,r 16. Tracking user activity within a retail store and using that information
to deliver certain media content fall within "advertising, marketing, or sales
activities." Revised Guidance, 84 Fed. Reg. at 52.
Limitations (1}-(4) together recite a business or commercial practice
that is not meaningfully different from business and commercial practices
that courts have determined are abstract ideas. See, e.g., In re Salwan, 681
F. App'x 938, 941 (Fed. Cir. 2017) (billing insurance companies and
organizing patient health information); Audatex N Am., Inc. v. Mitchell Int 'l,
Inc., 703 F. App'x 986, 989 (Fed. Cir. 2017) (providing an automobile
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insurance claim valuation through the collection and use of vehicle
information); Accenture, 728 F.3d at 1344 (generating tasks to be performed
in an insurance organization based on rules to be completed upon the
occurrence of an event); Bancorp Servs., L.L. C. v. Sun Life Assur. Co. of
Canada (U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012) (managing a stable
value protected life insurance policy by performing calculations and
manipulating the results).
Accordingly, we conclude the claims recite a certain method of
organizing human activity identified in the Revised Guidance (i.e., a
commercial interaction), and thus, an abstract idea. 6 Revised Guidance, 84
Fed. Reg. at 52, 53 (listing "[c]ertain methods of organizing human activity
... commercial or legal interactions" as one of the "enumerated groupings
of abstract ideas").
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
6 Our reviewing court recognizes that "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241. Further, "[a]n abstract
idea can generally be described at different levels of abstraction. . . . The
Board's slight revision of its abstract idea analysis does not impact the
patentability analysis." Id. Moreover, 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 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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exception by (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception( s ); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements of "first" and "second
software application[s]," "the device tracking system collects location data
for the mobile computing device at a time that the mobile computing device
is located within a tracked physical environment," "wherein the identifier is
transmitted to the media content network system at a subsequent time that
the mobile computing device is located outside of the tracked physical
environment." Appeal Br. 26 (Claims App'x).
For the reasons discussed below, we conclude these additional
limitations integrate the abstract idea into a practical application as
determined under at least one of the relevant MPEP sections. 7 Specifically,
these limitations recite that the device tracking system collects location data
of a mobile computing device and, when that device has left the tracked
physical environment, sends an identifier to a content media system.
These limitations contribute to the claims such that they are analogous
to the claims found to encompass patentable subject matter in Diamond v.
Diehr, 450 U.S. 175, 185 (1981), and Classen Immunotherapies, Inc. v.
7 See MPEP § 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while sections 2106.05([), (g), and
(h) relate to limitations that are not indicative of integration into a practical
application.
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Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) (decision on remand from the
Supreme Court, which had vacated the lower court's prior holding of
ineligibility in view of Bilski v. Kappas). In Diehr, the Court evaluated the
additional non-abstract limitations, and found them to be meaningful,
because they sufficiently limited the use of the (abstract idea) mathematical
equation to the practical application of molding rubber products. MPEP
§ 2106.05(e) (citing Diehr, 450 U.S. at 184, 187). In Classen, the Court
held that, although the analysis step was an abstract mental process that
collected and compared known information, the (practical application)
immunization step was meaningful because it integrated the results of the
analysis into a specific and tangible method that resulted in the method
"moving from abstract scientific principle to specific application." MPEP
§ 2106.05(e) (citing Classen, 659 F.3d at 1066-68).
Similarly, we find that the limitations discussed above, that require the
physical tracking of the location of a device, sufficiently limit the use of the
abstract idea encompassed by the other limitations to the specific and
tangible application of tracking a mobile device although physically located
in a particular area, such as a retail store, and notifying another entity after
the device has left that particular area. Accordingly, we conclude, when the
claim is considered as a whole, the recited judicial exception is integrated
into a practical application as determined under MPEP § 2106.05(e) cited
above, such that the claim is patent-eligible, thus concluding the eligibility
analysis.
Accordingly, based upon the findings and legal conclusions above, on
this record and in consideration of the Revised Guidance, we are persuaded
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the claims are directed to patent-eligible subject matter, such that we do not
sustain the § 101 rejection of claim 1, 3-11, and 13-24.
DECISION
We conclude Appellants have demonstrated the Examiner erred in
rejecting claims 1, 3-11, and 13-24.
REVERSED
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