Ex Parte KEEN et al

Patent Trial and Appeal Board

Feb 21, 2017

12820383 (P.T.A.B. Feb. 21, 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.
12/820,383 06/22/2010 R. MICHAEL KEEN 59079 2051
27975 7590
ADDMG - 27975
1401 CITRUS CENTER 255 SOUTH ORANGE AVENUE
P.O. BOX 3791
ORLANDO, EL 32802-3791
EXAMINER
REFAI, SAM M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
creganoa@addmg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte R. MICHAEL KEEN and JEFFREY A. FRISCO
Appeal 2015-004536
Application 12/820,383
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1—29. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed Aug.
27, 2014), and Reply Brief (“Reply Br.,” filed Mar. 13, 2015), the
Examiner’s Answer (“Ans.,” mailed Jan. 15, 2015), and Final Office Action
(“Final Act.,” mailed Feb. 14, 2014).
2 Appellants identify “LIVETV, LLC” as the real party in interest (Appeal
Br. 3).
Appeal 2015-004536
Application 12/820,383
CLAIMED INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A communications system for an aircraft comprising:
an aircraft in-flight entertainment (IFE) system comprising
at least one IFE video entertainment source,
at least one IFE advertisement source,
a plurality of IFE passenger seat displays, and
at least one IFE controller for
selectively displaying advertisements from said at least
one IFE advertisement source on said plurality of IFE passenger
seat displays, each advertisement being displayed having a
respective advertisement token image associated therewith, and
selectively displaying video from said at least one IFE
video entertainment source on said plurality of IFE passenger
seat displays; and
at least one personal electronic device (PED) carried by
an aircraft passenger and comprising
a PED optical sensor for sensing a selected advertisement
token image,
a PED wireless transceiver, and
a PED controller for communicating via said PED
wireless transceiver to initiate purchase of the advertisement
associated with the selected advertisement token image, and for
remotely operating said at least one IFE video entertainment
source.
REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Muni US 2005/0125301 Al June 9, 2005
Williams US 2008/0065509 Al Mar. 13, 2008
Frisco et al.
(hereinafter
US 2009/0100476 Al
“Frisco”)
Apr. 16, 2009
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Application 12/820,383
Havlovick et al. US 2009/0288123 A1 Nov. 19, 2009
(hereinafter “Havlovick”)
Dobosz US 2010/0233957 Al Sept. 16, 2010
Brown et al. US 2011/0210171 Al Sept. 1,2011
(Hereinafter “Brown”)
The following rejections are before us for review:
1. Claims 1—29 stand rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter.
2. Claims 1-5, 7, 9-12, 14-15, 17-19, 21-23, 25-27, and 29 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Frisco, Muni, and
Havlovick.
3. Claim 6 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Frisco, Muni, Havlovick, and Williams.
4. Claims 8, 16, 20, 24, and 28 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Frisco, Muni, Havlovick, and Brown.
5. Claim 13 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Frisco, Muni, Havlovick, and Dobosz.
ANALYSIS
Non-statutory Subject Matter
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice,
134 S. Ct. 2347, 2355 (2014) (citing Mayo, 132 S. Ct. 1289, 1296-97
(2012)). According to the Supreme Court’s framework, it must first be
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Application 12/820,383
determined whether the claims at issue are directed to one of those concepts
(i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, a
second determination must be made to consider 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. Id. (quoting Mayo, 132 S. Ct. at 1298, 1297).
To that end, with regard to the first part of the Alice inquiry, the
Examiner finds that the claims are directed to “the abstract idea of initiating
a purchase by scanning a barcode” and therefore ineligible subject matter
under 35 U.S.C. § 101 (Ans. 2). With regard to the second part of the Alice
inquiry, the Examiner determines that the additional elements in the claims
amount to no more than “mere instructions to implement the idea on a
computer, and/or recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.” {id. at
3). The Examiner has applied this analysis to all the claims in the rejection.
Appellants argue that the independent claims are not directed to an
abstract idea (Reply Br. 2-A).
We agree with Appellants.
We select independent claim 1 as representative. We find that claim 1
as a whole is rooted in technology and does not pre-empt all uses of an
abstract idea. “The ‘abstract idea’ step of the inquiry calls upon us to look at
the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.’”
Affinity Labs of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir.
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Application 12/820,383
2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016). Here, the character of claim 1 as a whole is directed to
cooperation between two separate computer systems, namely “an aircraft in­
flight entertainment (IFE) system” and “at least one personal electronic
device (PED) carried by an aircraft passenger.” Claim 1 does not pre-empt
all uses of barcodes to initiate purchases. Claim 1 requires specific steps of
the PED selecting an advertisement token image and communicating the
selected advertisement to the IFE and also remotely operating the IFE. In
other words, claim 1 requires the PED and IFE - even though these may be
generic - working together to achieve the solution. Cf. DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (“the claimed
solution is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.”); see also
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1300-01
(Fed. Cir. 2016) (“the claim’s enhancing limitation necessarily requires that
these generic components operate in an unconventional manner to achieve
an improvement in computer functionality. The enhancing limitation
depends not only on the invention’s distributed architecture, but also
depends upon the network devices and gatherers-even though these may be
generic-working together in a distributed manner.”). Abstraction is avoided
or overcome when a proposed new application or computer-implemented
function is not simply the generalized use of a computer as a tool to conduct
a known or obvious process, but instead is an improvement to the capability
of the system as a whole. See Enfish LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
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For the foregoing reasons, we find that claim 1 covers subject matter
that is not directed to a judicial exclusion. The remaining independent
claims, system claims 14 and 18 and process claims 22 and 26 parallel
independent claim 1 and similarly cover subject matter that is not judicially-
excepted from patent eligibility under § 101.
Accordingly, the rejection under 35 U.S.C. § 101 is not sustained.
Obviousness
Appellants argue the five independent claims (1, 14, 18, 22, and 26) as
a group (see Appeal Br. 16). We select claim 1 as the representative claim
for this group. Thus, independent claims 14, 18, 22, and 26 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Regarding independent claim 1, the Examiner has determined that it
would have been obvious “to modify the advertisement purchases of Frisco
by combining the barcode advertising scanning method of Muni, because
doing so would enable users to easily interact and purchase the advertised
product or service” (Final Act. 4). The Examiner also determined that it
would have been obvious “to modify the PED of Frisco by combining the
remote control feature of Havlovick, because doing so would enable users to
navigate the video program being displayed” {id. at 5).
Appellants argue that “the wireless remote control in Havlovick et al.
is within the arm rest of the passenger seat or seat-back of the forward seat,
and always stays within the aircraft and is not to be removed or carried away
by the passenger” (Appeal Br. 18—19). Appellants also contend that it would
not have been obvious to modify Frisco based on teachings in Muni because
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Application 12/820,383
“Muni fails to make any reference to an aircraft” (id. at 19) and “Muni is
directed to home shopping” (id. at 20). According to Appellants, “one
skilled in the art would not look to a home ordering process when dealing
with an aircraft communications system, as in the claimed invention,” and
“the Examiner is using hindsight reconstruction” (id. at 21).
We are not persuaded of reversible error by Appellants’ arguments.
The fact that none of the references alone discloses every limitation of claim
1 does not apprise us of error in the obviousness rejection. See In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”). Appellants’ argument
regarding Havlovick does not apprise us of error in the rejection because the
Examiner finds the claim limitation of a “personal electronic device (PED)
carried by an aircraft passenger” in Frisco at paragraph 15 (Final Act. 5; see
also Ans. 6—7). Appellants’ argument that Havlovick does not disclose a
PED carried by the passenger is therefore inapposite to the rejection before
us.
Appellants’ arguments regarding the combination of Muni and Frisco
are also unpersuasive. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). The operative question is thus “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id. at 415, 417. Here, the use of the in-flight entertainment
(IFE) display screens disclosed in Frisco to display a barcode so that the user
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Application 12/820,383
can use a camera-equipped mobile device to scan the on-screen barcode as
taught by Muni is a predictable use of prior art elements according to their
established function. We are not persuaded otherwise, because on the record
before us, the preponderance of the evidence supports the Examiner’s
position. Appellants provide no evidence suggesting any unpredictability in
combining the disclosures of Frisco and Muni. Nor have Appellants
provided any evidence that using an IFE display screen of an aircraft to
display a barcode is beyond the ordinary skill in the art. In the absence of
any such evidence, there would be at least a reasonable expectation that the
ordinary artisan would have been able to incorporate the barcode-shopping
functionality of Muni with the IFE system disclosed in Frisco.
Moreover, Muni enables users to instantly purchase desired items with
their mobile device by scanning the on-screen barcode (Muni, Abstract). As
such, Muni is not limited to in-home use as argued by Appellants, because
an on-screen barcode can be scanned anywhere with a camera equipped
mobile device. As the Examiner points out, paragraph 9 of Muni discloses
that “[i]t should be obvious to one skilled in the art that the screen may be
any screen capable of being scanned” (Ans. 7—8). Therefore, we determine
that the Examiner properly found that one of ordinary skill in the art would
indeed have recognized that the barcode-based shopping of Muni could be
applied to the aircraft IFE system of Frisco, and did not rely on
impermissible hindsight as alleged by Appellants.
For the reasons above, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a) as unpatentable over Frisco, Muni, and
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Application 12/820,383
Havlovick. We also sustain the rejection of claims 14, 18, 22, and 26, which
fall with claim 1.
Appellants rely on the same arguments presented with respect to the
independent claims in contesting the remaining rejections (Appeal Br. 21—
23). As such, we sustain the rejection of the remaining claims for the same
reasons.
DECISION
The Examiner’s decision to reject claims 1—29 under 35 U.S.C. § 101
is reversed.
The Examiner’s decision to reject claims 1—29 under 35 U.S.C. § 103
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
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