Ex Parte OWEN

Patent Trials and Appeals Board

Apr 23, 2019

13686606 - (D) (P.T.A.B. Apr. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/686,606 11/27/2012
21839 7590 04/25/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Trevor OWEN
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.
0076412-000103 5275
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
04/25/2019 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TREVOR OWEN
Appeal 2018-000018
Application 13/686,606
Technology Center 3600
Before CARL W. WHITEHEAD JR, JEFFREYS. SMITH and
JASON V. MORGAN, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 is appealing the final rejection of claims 1-13, 17-29 and
33-362 under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction
under 35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to "the distribution of offers to a consumer,
1 Appellant identifies The MASTERCARD INTERNATIONAL
INCORPORATED as the real party in interest. Appeal Brief 2.
2 Claims 14-16 and 30-32 are withdrawn. Appeal Brief 2.
Appeal 2018-000018
Application 13/686,606
specifically the distribution of offers to a consumer based on both the
consumer's location and length of time at the location." Specification ,i 1.
Illustrative Claim
1. A method for distributing a time and location based offer to a
consumer, compnsmg:
storing, in a coupon database, a plurality of coupon data entries,
wherein each coupon data entry includes, at least: data related to a coupon, a
location identification associated with a location, and a time threshold,
wherein said time threshold represents an amount of time a mobile
communication device must be at or near the location associated with the
location identification;
storing, in a location database, a plurality of location data entries,
wherein each location data entry includes, at least: data related to a location,
a location identifier, and at least one geographic position;
receiving, by a receiving device, a location notification from the
mobile communication device, wherein the location notification includes at
least a geographic location obtained from the mobile communication device
and an entry time identifying a time the mobile device entered the
geographic location;
identifying, in the location database, a specific location data entry,
wherein one of the at least one geographic position included in the specific
location data entry is in proximity to the geographic location included in the
location notification;
identifying, in the coupon database, at least one coupon data entry,
wherein the location identification of each of the at least one coupon data
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Application 13/686,606
entry corresponds to the location identifier of the specific location data
entry;
calculating an elapsed time based on an amount of time passed since
the entry time included in the received location notification, wherein said
elapsed time identifies an amount of time the mobile communication device
has been at or near the geographic location included in the received location
notification; and
distributing, to a consumer associated with the mobile communication
device, each coupon related to each of the at least one coupon data entry
when the calculated elapsed time meets or exceeds the time threshold
associated with each of the at least one coupon data entry,
wherein the calculating and distributing steps are performed until the
receiving device receives an indication that the mobile communication
device is no longer in proximity of the geographic location.
Re} ections on Appeal3
Claims 1-11, 13 and 17-28 stand rejected under 35 U.S.C. §101
because the claimed invention is directed to patent-ineligible subject matter.
Final Action 3-10.
Claims 1, 3-7, 9, 11-13, 17, 19-23, 25 and27-29 stand rejected
underpre-AIA 35 U.S.C. §102(b) as being anticipated by Seele Jr. (US
Patent Application Publication 2005/0278215 Al; published December 15,
2005). Final Action 10-24.
3 The 35 U.S.C. § 112 (pre-AIA), second paragraph, rejection of claims 9
and 25 has been withdrawn. Answer 3.
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Application 13/686,606
Claims 2, 10, 18 and 26 stand rejected under pre-AIA 35 U.S.C.
§ 103 (a) as being unpatentable over See le Jr and Official Notice. Final
Action 25-26.
Claims 8 and 24 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Seele Jr and Crawford (US Patent Application
Publication 2010/0285818 Al; published November 11, 2010. Final Action
26-28.
Claims 33-36 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Seele Jr and Baker (US Patent 6,505,046 Bl; issued
January 7, 2003). Final Action 28-29.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed May 2, 2017), the Reply Brief (filed
September 27, 2017), the Final Action (mailed December 6, 2016) and the
Answer (mailed July 27, 2017) for the respective details.
35 U.S.C. §101 rejection
The Examiner determines the claims are patent ineligible under 35
U.S. C. § 101 because the claims are directed to an abstract idea that "is
merely an idea 'of itself and mathematical relationships/formulas." Final
Action 4; see also Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S. 208, 217
(2014) (Describing the two-step framework "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts."). We find the claims
are patent ineligible under 35 U.S.C. § 101 because the claims are directed
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Application 13/686,606
to an abstract idea comprising a fundamental economic practice or
organizing human activity, and do not include additional elements that are
sufficient to amount to significantly more than the abstract idea.
After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of§ 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the
Office first looks 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 § 2106.0S(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.0S(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 Memorandum.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Memorandum.
Appellant argues the pending claims are not directed to an abstract
idea because, "The Final Office Action reproduced the entirety of each of
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Application 13/686,606
the independent claims, but instead of providing an inquiry that considers
the claims in light of the specification and that considers core features of the
claims, in each instance the Patent Office only states that the claims describe
'merely an idea 'of itself and mathematical relationships/formulas."'
Appeal Brief 9.
We agree with the Examiner's determination that the claims are
directed to an abstract idea. See Final Rejection 3-10. Claim 1 recites, "A
method for distributing a time and location based offer to a consumer";
"identifying, in the coupon database, at least one coupon data entry, wherein
the location identification of each of the at least one coupon data entry
corresponds to the location identifier of the specific location data entry"; and
"distributing, to a consumer associated with the mobile communication
device, each coupon related to each of the at least one coupon data entry
when the calculated elapsed time meets or exceeds the time threshold
associated with each of the at least one coupon data entry." These steps
comprise fundamental economic principles or practices and/or commercial
or legal interactions; thus, the claim recites the abstract idea of "certain
methods of organizing human activity." Memorandum, Section I
( Groupings of Abstract Ideas); see also Specification ,-J ,-J 1, 6-12, 26 and
Figure 1. Our reviewing court has found claims to be directed to abstract
ideas when they recited similar subject matter. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014) (claims merely reciting
abstract idea of using advertising as currency as applied to particular
technological environment of the Internet not patent eligible). We conclude
the claims recite an abstract idea pursuant to Step 2A, Prong One of the
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guidance. See Memorandum, Section III(A)(l) (Prong One: Evaluate
Whether the Claim Recites a Judicial Exception).
Having determined that the claims recite a judicial exception, our
analysis under the Memorandum turns now to determining whether there are
"additional elements that integrate the judicial exception into a practical
application." See MPEP § 2106.05(a)-(c), (e)-(h).
We do not find Appellant's arguments persuasive because claim 1
uses a conventional mobile communication device with a global positioning
system, as a tool to distribute advertising content. See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). ("[W]e find it
relevant to ask whether the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea ... the focus
of the claims is on the specific asserted improvement in computer
capabilities (i.e., the self-referential table for a computer database) or,
instead, on a process that qualifies as an 'abstract idea' for which computers
are invoked merely as a tool.").
Claim 1 does not recite an additional element or elements that reflect
an improvement in the functioning of a computer, or an improvement to
other technology or technical field. See Final Action 7-10; Alice, 573 U.S.
at 222 ("In holding that the process was patent ineligible, we rejected the
argument that 'implement[ing] a principle in some specific fashion' will
'automatically fal[l] within the patentable subject matter of§ 101. "')
(quoting Parker v. Flook, 437 U.S. 584, 593(1978)).
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the
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Judicial Exception Is Integrated Into a Practical Application). Next, we
determine whether the claim includes additional elements that provide
significantly more than the recited judicial exception, thereby providing an
inventive concept. Alice, 573 U.S. at 217-18 (quoting Mayo, 566 U.S. at
72-73).
Appellant contends:
The claims of this application include significantly more than
any abstract idea or other judicial exception. Claim 1, for
example, recites that "a location notification from the mobile
communication device" is received by the receiving device, and
that "the location notification includes at least a geographic
location obtained from the mobile communication device and an
entry time identifying a time the mobile device entered the
geographic location." Moreover, as discussed below, the
documents cited by the document cited by the Patent Office do
not disclose each and every feature of the claims.
Appeal brief 12.
We do not find Appellant's argument persuasive. We find the claim
does not includes a specific limitation or a combination of elements that
amounts to significantly more than the judicial exception itself. See
Memorandum, Section III(B)(Step 2B: If the Claim Is Directed to a Judicial
Exception, Evaluate Whether the Claim Provides an Inventive Concept); see
for example Specification ,-J 10 ("The receiving device is configured to
receive a location notification from a mobile communication device,
wherein the location notification includes at least an entry time and a
geographic location."); see also Aatrix Software, Inc. v. Green Shades
Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) ("the 'inventive
concept' cannot be the abstract idea itself'). Pertaining to the cited
documents by the Office, it is noted, as the Federal Circuit has explained, a
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"claim for a new abstract idea is still an abstract idea." Synopsis, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Even
assuming the technique claimed was "[g]roundbreaking, innovative, or even
brilliant," that would not be enough for the claimed abstract idea to be patent
eligible. See Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 591 (2013).
Other than the abstract idea itself, the remaining claim elements only
recite generic computer components that are well-understood, routine, and
conventional. See Final Action 7-12; Specification ,i ,i 1, 6-12, 26, Figure
1; Alice, 573 U.S. at 226.
Accordingly, we conclude that claims 1-11, 13 and 17-28, argued
together (see Appeal Brief 9), are directed to a fundamental economic
practice, which is one of certain methods of organizing human activity
identified in the Memorandum and thus an abstract idea, and those claims do
not recite limitations that amount to significantly more than the abstract idea
itself. We sustain the Examiner's § 101 rejection of claims 1-11, 13 and
17-28.
35 U.S.C. §102 rejection
Claims 1, 3-7, 9, 11-13, 17, 19-23, 25 and 27-294
Appellant contends:
Claim 1 describes a method for distributing a time and
location based offer to a consumer that includes, in combination
with other features, that a location database stores a plurality of
location data entries, where each location data entry includes i)
data related to the location, ii) a location identifier, and iii) at
4 Independent Claims 1, 6, 17 and 22.
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Application 13/686,606
least one geographic location. The Patent Office alleges that
paragraph [0039] of Seele shows each and every element in the
claim, and that Seele's disclosure provides the same detail as the
claim. Appellant respectfully disagrees.
Appeal Brief 12.
Seele discloses in paragraph 39 in regard to claim l's limitation,
"storing, in a location database ( relational database), a plurality of location
data entries, wherein each location data entry includes, at least: data related
to a location ((i) position data), a location identifier ((ii) an identifier
associated with an area within the monitored area), and at least one
geographic position ((iii) position may be a set of coordinates)."
Accordingly, we do not find Appellant's argument persuasive and agree with
the Examiner's findings. See Final Action 11-12; Answer 11-13. We
sustain the Examiner's anticipation rejection of independent claims 1, 6, 17
and 22, as well as, dependent claims 3-5, 7, 11-13, 19-21, 22, 23, and 27-
29 not argued separately. See Appeal Brief 12-14.
Appellant argues, "Dependent claims 9 and 25 recite that 'the
aggregated time is reset after a predetermined period of time.' The Patent
Office alleges that portions of Seele disclose this feature. Final Office Action
at 21, 37. This is incorrect." Appeal Brief 14. Appellant contends, "the
Patent Office relied on the same portion of paragraph [0039] of Seele that
it contends discloses aspects of the location database in the independent
claims ... But the Patent Office offered no comment as to what aspect of
Seele purportedly discloses how the aggregated time is reset after a
predetermined period of time, as recited in claims 9 and 25." Appeal Brief
14.
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The Examiner finds, "As per Claims 9 and 25, Seele discloses
wherein the aggregated time is reset after a predetermined period of time
(Paragraphs [0039, 0070]. Also see at least Figures 2 and Paragraphs
[0006, 0017-0018, 0038-0039, 0042-0049])." Final Action 21. The
Examiner further finds in regard to Seele's paragraph 70, "Use in any
situation necessitating a check-in requirement (night watchmen, people
queuing access that is based upon duration of time in line (restaurant,
theater, etc.) [i.e., an aggregate amount of time is reset after the period of
time when the user is no longer standing in line]." Answer 13. The
Examiner further finds:
Seele also discloses in ,-J [0003] "The present invention is
directed to an activity duration reward system ("ADRS") and
the method it embodies. An activity duration reward system is
a system that compensates people for time spent
participating in activities ("activity duration"), in particular,
time spent in activities that the person generally does not
enjoy such as standing in line, providing answers to survey
questions, and viewing and/or listening to advertisements
[i.e., an aggregate amount of time is reset after the period of time
when the user is no longer standing in line]."
Answer 13.
The Examiner cites several paragraphs from Seele and appears to
draw a conclusion in regard to Seele teaching resetting the aggregate amount
of time after a period of time, as required in dependent claims 9 and 25. See
Answer 13. We do not agree with the Examiner's findings because it is not
evident that Seele, in spite of the multiple recited paragraphs, teaches
resetting the aggregated time. "A claim is anticipated only if each and every
element as set forth in the claim is found, either expressly or inherently
described, in a single prior art reference." Verdegaal Bros., Inc. v. Union
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Application 13/686,606
Oil Co. of Cal., 814 F.2d 628,631 (Fed. Cir. 1987). We reverse the
Examiner's anticipation rejection of dependent claims 9 and 25.
35 U.S.C. §103 rejections
Claims 2, 8, 10, 18, 24, 26 and 33-36
Appellant does not argue the merits of the obviousness rejections of
dependent claims 2, 8, 10, 18, 24, 26 and 33-36. See Appeal Brief 6-14.
We sustained the anticipation rejection of independent claims 1, 6, 17 and
22. Accordingly, we sustain the obviousness rejections of dependent claims
2, 8, 10, 18, 24, 26 and 33-36.
DECISION
The Examiner's nonstatutory subject matter rejection of claims 1-11,
13 and 17-28 is affirmed.
The Examiner's anticipation rejection of claims 1, 3-7, 11-13, 1 7,
19-23 and 27-29 is affirmed.
The Examiner's anticipation rejection of claim 9 and 25 is reversed.
The Examiner's obviousness rejections of claims 2, 8, 10, 18, 24, 26
and 3 3-3 6 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l). See 37 C.F.R.
§ l.136(a)(l)(v).
AFFIRMED
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