Ex Parte Murto et al

Patent Trial and Appeal Board

Feb 9, 2017

11695255 (P.T.A.B. Feb. 9, 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.
11/695,255 04/02/2007 Juhani MURTO P3702US00 2337
11764 7590
Ditthavong & Steiner, P.C.
44 Canal Center Plaza
Suite 322
Alexandria, VA 22314
EXAMINER
BROWN, ALVIN L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/13/2017 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):
docket@dcpatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUHANI MURTO and PETRI NYKANEN
Appeal 2015-002360
Application 11/695,2551
Technology Center 3600
Before MICHAEL W. KIM, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—30. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 The Appellants identify Nokia Corporation as the real party in interest.
Appeal Br. 1.
Appeal 2015-002360
Application 11/695,255
ILLUSTRATIVE CLAIM
1. An apparatus comprising:
at least one processor; and
at least one memory including computer program code for
one or more programs, the at least one memory and the computer
program code configured to, with the at least one processor,
cause the apparatus to perform at least the following,
accumulate, over a period of time, user-defined presence
data associated with a user of at least one computing device,
wherein the user-defined presence data identifies one or more
characteristics of the user, and is provided by the user for
distributing to one or more other users authorized to access the
user-defined presence data;
create a user profile for the user based, at least in part, on
the accumulated user-defined presence data;
define at least one advertising package based at least in
part on the user profile; and
direct delivery of at least one advertisement object
according to the advertising package.
CITED REFERENCES
The Examiner relies upon the following references:
Marcus
Herz et al.
(hereinafter “Herz”)
Homer et al.
(hereinafter “Homer”)
Agrawal
US 2002/0092019 Al July 11, 2002
US 2006/0031301 Al Feb. 9, 2006
US 2007/0094304 Al Apr. 26, 2007
US 2008/0040728 Al Feb. 14, 2008
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Appeal 2015-002360
Application 11/695,255
REJECTIONS
I. Claims 1—30 are rejected under 35U.S.C. § 101 because the
claimed subject matter constitutes non-statutory subject matter.2
II. Claims 1—22 and 24—30 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Marcus, Agrawal, and Herz.
III. Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Marcus, Agrawal, Herz, and Homer.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Patent-Eligible Subject Matter
Following the two-part analysis set forth in Alice Corp. Pty. Ltd. v.
CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014), the Answer states that
independent claim 7 “includes an abstract idea” — specifically, “[delivering
an advertisement based on a user’s profile to a device associated with the
user,” which according to the Answer “is a fundamental economic practice.”
Answer 7. The Answer goes on to say that, per the second step of the Alice
analytical framework, claim 7 contains no meaningful limitations that
transform it into a patent-eligible application of the abstract idea. Id.
Further, applying the same rationale to the other independent claims and all
the respective dependent claims on appeal, the Answer determines that none
of the other claims on appeal constitute patent-eligible subject matter. Id.
at 8.
2 The rejection under 35 U.S.C. § 101 was added as a New Ground of
Rejection in the Answer (pages 3—8).
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Appeal 2015-002360
Application 11/695,255
In response, the Appellants argue that the Examiner’s characterization
of the claimed subject matter, as “delivering an advertisement based on a
user’s profile to a device associated with the user,” oversimplifies and
unreasonably generalizes the claims in a manner that fails to account for the
role of “presence” technology or the claimed accumulation of data. Reply
Br. 9—10. Moreover, the Appellants dispute the Examiner’s assessment that
even the allegedly oversimplified characterization of the claims constitutes a
“fundamental economic practice” species of abstract idea. Id. at 8—9.
Indeed, to the contrary, the Appellants allege that features of the claimed
subject matter are “very recent concepts in our society,” which defy its
description as a “fundamental economic practice.” Id. at 9.
The Appellants persuasively argue that the Examiner has not
sufficiently demonstrated that the claims are directed to an abstract idea,
under the first step of the Alice analysis. As the Appellants point out, the
Examiner’s characterization of the claimed subject matter fails to encompass
key aspects of what is being claimed — especially the essential use of
“presence data.” See Reply Br. 9—10. In addition, the Examiner’s
description of the claimed subject matter as a “fundamental economic
practice” (Answer 7) conflicts with the recent coinage of several features
involved in the claims, such as delivering targeted advertising to a user’s
“device” based upon a “user profile” (see Reply Br. at 9).
Accordingly, the rejection of claims 1—30 under 35 U.S.C. § 101 is
not sustained.
Obviousness
The Appellants contend that the Examiner erred in finding that
Marcus teaches the “presence data” of claim 1. Appeal Br. 7—11.
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Appeal 2015-002360
Application 11/695,255
According to the Examiner (Answer 9), the Specification (at 143)
defines “presence data” as:
data describing certain characteristics of the user such as the
user’s mood, activities, status (on-line or off-line), notes to other
users able to view this information, and other user-defined
presence data.
The Examiner finds such “presence data” in Marcus’ data indicative of a
user’s mood, activities (such as driving, eating, or tired), or preferences
(such as a preference for a certain type of music). Answer 9 (citing Marcus
195).
The Appellants contend that the Examiner’s interpretation of the
“presence data” claim term conflicts with the understanding of that phrase in
the art and in the Specification. Appeal Br. 8—11; Reply Br. 3—6. In
particular, the Appellants (Appeal Br. 8—11; Reply Br. 3—6) point to
paragraph 4 of the Specification as more appropriate for demonstrating the
meaning of “presence data,” which states:
“Presence” is a term used to describe a technology that enables
the user of a telecommunications network to convey his status,
for example his ability and willingness to communicate, to a
potential communication partner. . . . The user may update her
presence data as often or as infrequently as she prefers and may
include as much or as little information as she desires. In this
way, each published presence state provides a picture of the
needs and concerns of the user at a particular point in time.
Spec. 14. The Appellants also point out that the Examiner’s citation to
paragraph 43 of the Specification is incomplete and is taken out-of-context.
Appeal Br. 8—9; Reply Br. 4. Properly construed, the Appellants contend,
the claimed “presence data” is not taught by Marcus. Appeal Br. 8—10;
Reply Br. 4—6.
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Appeal 2015-002360
Application 11/695,255
The Appellants’ argument is persuasive. The salient feature of
presence technology and the claimed “presence data,” understood in the
context of the Specification, is that it indicates whether a user is receptive to
electronic communication at a particular point in time. The Appellants show
that paragraph 4 of the Specification illustrates this meaning. Appeal Br. 9—
11; Reply Br. 4—5. By contrast, the portion of the Specification (| 43) upon
which the Examiner relies (see Answer 9) concerns the content of “presence
notification messages,” which are said to “include presence data,” but may
have other attributes, as well:
[0043] Presence notification messages include presence
data, which may be data describing certain characteristics of the
user such as the user’s mood, activities, status (on-line or off­
line), notes to other users able to view this information, and other
user-defined presence data.
The Examiner does not rely upon the most salient portion of paragraph 43
(in regard to the meaning of “presence data”) — “data describing ... the
user’s . . . status (on-line or off-line)” — but instead focuses on the reference
to the user’s “mood” and “activities” (see Answer 9), which do not bear
upon the user’s present receptiveness to electronic communication. The
same deficiency exists in paragraph 95 of Marcus, which the Examiner
identifies as teaching the claimed “presence data” (see Answer 9).
In addition to claim 1, the “presence data” limitation appears in the
remaining independent claims 7, 14, 21, and 22. Accordingly, there being
no other stated position of the Examiner to obviate the deficiency of Marcus
discussed above, the rejection of claims 1—30 under 35 U.S.C. § 103(a) is
not sustained.
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Appeal 2015-002360
Application 11/695,255
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—30 under
35 U.S.C. § 101.
We REVERSE the Examiner’s decision rejecting claims 1—30 under
35 U.S.C. § 103(a).
REVERSED
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