Ex Parte Moshfeghi

Patent Trial and Appeal Board

Aug 8, 2018

13484259 (P.T.A.B. Aug. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/484,259
153575 7590
Makoui Law, PC
3336 Alginet Dr.
Encino, CA 91436
FILING DATE FIRST NAMED INVENTOR
05/30/2012 Mehran Moshfeghi
08/10/2018
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.
GLBA.P0020 1343
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
08/10/2018 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):
docket@makouilaw.com
ali@makouilaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEHRAN MOSHFEGHI 1
Appeal2017-001277
Application 13/484,259
Technology Center 3600
Before BRADLEY W. BAUMEISTER, JOSEPH P. LENTIVECH, and
AMBER L. HAGY, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 15, 16, 18-25, 30, 31, and 33--40. App. Br. 1. We
have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies Golba LLC as the real party in interest. Appeal Brief 2
filed October 27, 2015 ("App. Br.").
Appeal2017-001277
Application 13/484,259
THE INVENTION
Appellant describes the present invention as follows:
A system and method is described where an advertising
server targets store coupon advertisements to people carrying
wireless devices. In some embodiments the advertisement server
tracks the position of several of its subscribed members in an
area. The server then computes statistical measures, dynamically
generates nearby store discount deals that match subgroups of the
members or uses pre-existing deals from nearby stores, and
forwards the deal advertisements to the wireless devices of the
members. The advertised deals involve one or more items from
the same store or multiple items from different stores. The
members then use ad-hoc networking to build spontaneous social
networks, advertise the deals to nearby shoppers, and get referral
rewards. The advertising server also provides a portal shopping
network web site where shoppers can search for deals, post their
shopping/wish lists and deal referrals, and use forums to discuss
products and stores.
Abstract.
Independent claim 15, reproduced below, illustrates the claimed
invention:
15. A non-transitory machine readable medium storing a
program for deal advertising, the program executable by at least
one processing unit, the program comprising sets of instructions
for:
estimating locations of a plurality of mobile devices;
grouping the plurality of mobile devices into groups of
mobile devices based on the estimated locations and a shopping
history of the users of the mobile devices in each group;
identifying a deal from a set of stores that are within a
particular distance from each mobile device in a particular group
of mobile devices, wherein the deal comprises a set of products,
wherein the deal requires a minimum amount of money for
purchasing the set of products, wherein the deal includes one or
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more products selected based on the shopping history of the users
of the mobile devices in the particular group;
determining, based on a prior history of referrals made by
users of the mobile devices in the particular group, an estimated
number of referrals that the users of the mobile devices in the
particular group are going to make for the identified deal;
determining an estimated amount of money that a set of
referrals that result in a sale are going to spend for the identified
deal based on the estimated number of referrals that the users of
the mobile devices in the particular group are going to make for
the identified deal; and
sending the deal to the mobile devices in the particular
group when a sum of an estimated amount of money that the
users of the mobile devices in the plurality of mobile device are
going to spend for the identified deal and the estimated amount
of money that the set of referrals that result in a sale are going to
spend for the identified deal is equal to or exceeding the
minimum amount of money required by the deal.
THE REJECTION
Claims 15, 16, 18-25, 30, 31, and 33--40 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2-3. 2 The Examiner concludes that the claims are directed to an
abstract idea. Id. at 2. The Examiner characterizes the abstract idea as
entailing an idea of itself and mathematical relationships or formulas.
Ans. 4. The Examiner further determines that the claims do not include
additional elements that are sufficient to amount to significantly more than
2 Rather than repeat the Examiner's positions and Appellant's arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
March 27, 2015 ("Final Act."); the Examiner's Answer mailed August 25,
2016 ("Ans."); and the Reply Brief filed October 25, 2016 ("Reply Br.").
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the judicial exception because the steps require no more than a generic
computer. Final Act. 2. The Examiner further reasons that "the claimed
functions of the generic computer represent insignificant data-gathering
steps and thus add nothing of practical significance to the abstract idea." Id.
at 2-3.
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, 1075 (BPAI 2010) (precedential).
Regarding the question patent eligibility under 35 U.S.C. § 101, the
Supreme Court has set forth an analytical "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
Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-73 (2012)).
In the first step of the analysis, we determine whether the claims at issue are
"directed to" a judicial exception, such as an abstract idea. Id. at 2355. If
not, the inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343, 1346
(Fed. Cir. 2017); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed.
Cir. 2016). If the claims are determined to be directed to an abstract idea,
then we consider under step two whether the claims contain an "inventive
concept" sufficient to "transform the nature of the claim into a patent-
eligible application." Alice, 134 S. Ct. at 2355 (quotations and citation
omitted).
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In considering whether a claim is directed to an abstract idea, we
acknowledge, as did the Supreme Court, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, 822 F.3d at 1336.
If the claims are directed to an abstract idea, we then must consider
whether the claim contains an element or a combination of elements that is
sufficient to transform the nature of the claim into a patent-eligible
application. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed.
Cir. 2014); Alice, 134 S. Ct. at 2355.
In applying step two of the Alice analysis, we must
"determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract
idea into patentable subject matter. We look to see whether there
are any "additional features" in the claims that constitute an
"inventive concept," thereby rendering the claims eligible for
patenting even if they are directed to an abstract idea. Those
"additional features" must be more than "well-understood,
routine, conventional activity."
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) ( citations omitted).
Claims that "merely require generic computer implementation[] fail to
transform [an] abstract idea into a patent-eligible invention." Alice, 134
S. Ct. at 2357.
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CONTENTIONS AND ANALYSIS
Claims 15, 16, 18-20, 22, 24, 30, 31, and 33-40
Appellant argues most of the claims together as a group. See App.
Br. 9-15. Accordingly, we select independent claim 15 as representative.
See 37 C.F.R. § 4I.37(c)(l)(iv). We separately address Appellant's
additional arguments that are directed to dependent claims 23 and 25. See
App. Br. 15-16.
I.
Focusing primarily on claim 15, Appellant argues that the claimed
invention is not directed to an abstract idea. Id. at 13-14. According to
Appellant,
[a] typical prior art deal advertising that requires a
minimum amount of money for purchasing is satisfied when the
identified user satisfy [sic] the minimum purchase requirement.
In contrast, the claimed invention not only considers the amount
of money that the users of the mobile devices are going to
spend[,] but also estimates the number of referrals that these
users may refer and an estimated amount of money that these
referrals are going to spend in order to determine whether the
minimum purchase requirement for a deal is going to be satisfied.
Id. at 13. Appellant then argues that the claims are not directed to an
abstract idea because "[ n Jone of these [estimations] ha[ s] been shown in the
Office Action to be done by anyone before." Id.
This argument is unpersuasive. Appellant improperly conflates
novelty with patent eligibility. "The 'novelty' of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-
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89 (1981 ). A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
Accordingly, we agree with the Examiner that the claims are directed
to an abstract idea.
II.
Appellant argues that even if the claims are directed to an abstract
idea, "when looking at the additional limitations as an ordered combination,
the invention as a whole amounts to significantly more than simply
organizing and comparing data." App. Br. 10. Appellant urges that "the
claimed invention improves the technical field of deal advertising." Id. To
support this assertion, Appellant restates a majority of the claim language
and argues that "[ n Jone of these improvements to the technical field of deal
advertising is well-understood, routine or conventional." Id.
This argument is unpersuasive. Appellant provides insufficient
evidence or rationale to support the characterization of deal advertising as
being a technical field. In fact, advertising is a quintessentially abstract idea.
See, e.g., MPEP § 2106.04(a)(2) "Examples of Concepts The Courts Have
Identified As Abstract Ideas," Part (II) "Certain Methods of Organizing
Human Activity" subsection B, "Concepts relating to advertising, marketing,
and sales activities or behaviors" ( emphasis added). And the claim
limitations Appellant alleges to constitute the improvements to the so-called
technological field----e.g., determining estimates of referrals and result sales
(App. Br. 10}-are improvements to the abstract method of advertising.
"[R ]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible." OIP Techs. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
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III.
Appellant argues that the invention does not merely implement an
abstract idea on a generic computer to perform well understood computer
functions. App. Br. 14. Appellant contends
Id.
the claimed invention ... require[ s] specialized mobile devices.
These mobile devices have specialized hardware and software
that enables their current locations to be determined, the prior
history of referrals by the users of these mobile devices can be
identified, and the deals can be sent to these mobile devices while
the users are within a particular distance of a set of stores. These
limitations do not merely represent insignificant data-gathering
steps performed by a generic computer. [To] the contrary, the
claimed invention requires the use of specialized computing
mobile devices.
This argument is unpersuasive. Previous cases have found that
similar activities constitute conventional computer activities or routine data-
gathering steps. See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) ("Nothing in the claims, understood in light of
the specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information."); OIP Techs., 788 F.3d at 1363 (claims
reciting, inter alia, sending messages over a network, gathering statistics,
using a computerized system to automatically determine an estimated
outcome, and presenting offers to potential customers found to merely recite
"well-understood, routine conventional activit[ies ]" by either requiring
conventional computer activities or routine data-gathering steps); see also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That
a computer receives and sends the information over a network-with no
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further specification-is not even arguably inventive."); Bancorp Servs.,
L.L.C. v. Sun Life Assur. Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("The
computer required by some of Bancorp' s claims is employed only for its
most basic function, the performance of repetitive calculations, and as such
does not impose meaningful limits on the scope of those claims.").
Indisputably, devices that send and receive information through well
understood, routine, and conventional communication means in order to
carry out a new abstract idea must be "specialized" in the sense that the
devices are specifically programmed so as to communicate the requisite
information. This fact alone does not mean the devices are specialized in a
manner that adds "significantly more" to the abstract idea so as to convert
the abstract idea into a patent-eligible invention.
IV.
Appellant argues that the claims are directed to patent eligible subject
matter because the "[ c ]laims do not [p ]reempt all [ u ]ses of a Li Judicial
[e]xception" (emphasis omitted). App. Br. 11; see generally id. at 11-13.
This argument is unpersuasive.
We recognize that the Supreme Court has described "the concern that
drives this exclusionary principle [i.e., the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption." See Alice Corp., 134
S. Ct. at 2354. However, characterizing preemption as a driving concern for
patent eligibility is not the same as characterizing preemption as the sole test
for patent eligibility. As our reviewing court has explained: "The Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability" and "[ f]or this reason, questions on
preemption are inherent in and resolved by the§ 101 analysis." Ariosa
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Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice Corp., 134 S. Ct. at 2354). Although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Id.
For the stated reasons, Appellant has not demonstrated the Examiner
erred in determining that claim 15 is directed to patent-ineligible subject
matter. We, therefore, affirm the rejection under 35 U.S.C. § 101 of
independent claim 15. We, likewise, affirm the rejection of claims 16, 18-
20, 22, 24, 30, 31, and 33--40, which Appellant does not argue separately.
V.
Claim 23, as well as claim 21 from which claim 23 depends, reads as
follows:
21. The non-transitory machine readable medium of claim 15,
wherein the program further comprises sets of instructions for
sending a graphical map to each mobile device in the particular
group, the graphical map identifying (i) a location of each store
in the set of stores and (ii) at least one product in the deal.
23. The non-transitory machine readable medium of claim 21,
wherein the program further comprises sets of instructions for
periodically updating the graphical map sent to each mobile
device based on a change in the deal.
Appellant argues the following in relation to claim 23:
Claim 23 recites that the program sends a graphical map
to each mobile device. The graphical map identifies the location
of each store, identifies at least one product in the deal, and is
periodically updated based on a change in the deal. Specifically,
the claimed invention addresses the mobile-device centric
challenge of altering a mobile device with time sensitive
information regarding a deal.
App. Br. 15.
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Appellant's argument is unpersuasive. Updating the maps
merely entails sending superseding information for the mobile devices
to display. As noted above, gathering, sending, and presenting desired
information constitutes conventional computer, network, and display
technology. See, e.g., Elec. Power Grp., 830 F.3d at 1355. Appellant
points to no persuasive evidence that the periodic updates of the
present invention entail anything beyond conventional technology.
VI.
Claim 25 reads as follows:
25. The non-transitory machine readable medium of claim 21,
the graphical map sent to each particular mobile device is further
for a user of the particular mobile device to navigate the map by
providing address, zooming and scrolling when location tracking
is disabled by the user of the particular mobile device.
Appellant argues
[t]he graphical map [sent to each mobile device] identifies the
location of each store, identifies at least one product in the deal,
and allows a user of the mobile device to navigate the map by
providing address, zooming, and scrolling when location
tracking is disabled by the user of the mobile device.
Specifically, the claimed invention addresses the mobile-device
centric challenge of presenting information regarding a deal to a
mobile device user and allow navigating the map while the
location tracking is disabled.
App. Br. 15-16.
Appellant's argument is unpersuasive. Claim 25 recites the purpose
of the map data that is sent to the mobile device, but the claim does not
affirmatively recite the mobile device that performs the referenced
navigation actions. Restated, claim 25, like claim 21, merely is directed to a
set of instructions for sending information over the internet. Sending
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information over the internet has been determined to be a conventional use
of a generic computer. See, e.g., Elec. Power Grp., 830 F.3d at 1355.
DECISION
The Examiner's decision rejecting claims 15, 16, 18-25, 30, 31, and
3 3--40 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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