Ex Parte Patel

Patent Trial and Appeal Board

Apr 12, 2017

13855672 (P.T.A.B. Apr. 12, 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.
13/855,672 04/02/2013 Kyle Patel 2047
7590
Kyle Patel
6272 Blackheath Circle
Mason, OH 45040
EXAMINER
SUMMERS, KIERSTEN V
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
04/13/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYLE PATEL
Appeal 2015-0069431
Application 13/855,672
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the Examiner’s Final rejection of claims 1 and
11. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to in-store location services and
downloading of advertising while shopping. Spec. 1,11. 4—6.
Claim 1 is illustrative:
1. A brick and mortar retail establishment having a computer-
implemented system for a shopper comprising:
1 The Appellant identifies the inventor, Kyle Patel, as the real party in
interest. Appeal Br. 1.
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Application 13/855,672
a) a computer server containing a product database having
products, store location for said products, promotional and
information for said products;
said computer server capable of receiving and sending
information to mobile computing devices and locating said
mobile computing devices within said brick and mortar
establishment; and
b) a microprocessor programmed to facilitate receiving
location information of a mobile computing device owned by
said shopper and selection of products desired for purchase;
said microprocessor wirelessly identifies said products on
said server along with said products’ location, promotional and
information and sends it wirelessly to said mobile computing
device in a way which allows said shopper to navigate directly to
said products via directions displayed on said mobile computing
device using an enhanced Indoor Positioning System to facilitate
said mobile computing device and said products locations within
said brick and mortar establishment for accurate location of said
products, and to see said promotional and information once
reaching said products' location in said brick and mortar
establishment;
wherein said microprocessor takes said promotional and
information including product price and manipulates the order in
which it is downloaded to said mobile computing device such
that advertisers are charged more for having said promotional
and information made available higher in a list displayed on said
mobile computing device;
wherein advertisers are charged more for the type,
frequency and timing of said promotional and information sent
by said microprocessor to said mobile computing device;
said microprocessor remains in communication with said
mobile computing device until said shopper completes locating
all of said products desired by said shopper.
Claims 1 and 11 are rejected under 35U.S.C. § 101 as reciting
ineligible subject matter in the form of an abstract idea.
Claims 1 and 11 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
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Claims 1 and 11 are rejected under 35U.S.C. § 112, second
paragraph, as indefinite.
Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Siotia et al. (US 2010/0070365 Al, pub. Mar. 18, 2010, “Siotia”) and Grouf
et al. (US 2007/0073583 Al, pub. Mar. 29, 2007, “Grouf’).
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Siotia, Grouf, and Thomas et al. (US 2011/0288925 Al, pub. Nov. 24, 2011,
“Thomas”).
We AFFIRM.
ANALYSIS
Rejection under 35 U.S.C. f101
We are persuaded by the Appellant’s argument that claims 1 and 11,
which are “directed to a ‘retail establishment,”’ utilize information and
location flow among a server, mobile devices, “indoor positioning system,”
and advertisers interacting together, and are, thus, not abstract ideas. Appeal
Br. 3-5.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[ljaws of nature, natural phenomena, and abstract ideas are not
patentable.” See Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S.Ct. 2347,
2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Alice 134 S.Ct. at 2355 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1296—
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97 (2012)). In accordance with that framework, we first determine whether
the claim is “directed to” a patent-ineligible abstract idea. See Alice, 134
S.Ct. at 2356 (“On their face, the claims before us are drawn to the concept
of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1
and 4 in petitioners’ application explain the basic concept of hedging, or
protecting against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981)
(“Analyzing respondents’ claims according to the above statements from our
cases, we think that a physical and chemical process for molding precision
synthetic rubber products falls within the § 101 categories of possibly
patentable subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S.Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
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of the claim into a patent-eligible application of the abstract idea. Alice, 134
S.Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
Claim 1 is directed to a computer server that receives a product
selection and shopper location from a shopper’s portable device within a
physical establishment, and provides product location information, and
directions to the product, to the shopper’s portable device, along with
advertising information whose download order is based on the price
advertisers are willing to pay for the type, frequency, and timing of
advertising placements.
The Examiner finds claims 1 and 11 “are directed to the abstract idea:
(i) a fundamental economic practice.” Answer 2.
The Examiner’s rejection is conclusory, because the Examiner has
arrived at asserting that the claims are directed to a particular abstract idea,
without identifying what the specific claimed invention is directed to, or
how that corresponds to the asserted type of abstract idea. More
specifically, the Examiner has not established what the claimed invention is
directed to in a manner sufficient for us to evaluate whether that represents a
practice long prevalent in our system of commerce, such that the assertion of
being a fundamental economic practice is sufficiently supported.
Because the Examiner has not sufficiently established that the claimed
invention in each of claims 1 and 11 is directed to an abstract idea, we do not
sustain the rejection of claims 1 and 11 under 35 U.S.C. § 101.
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Rejection under 35 U.S.C. £ 112, First Paragraph
The Examiner rejects claims 1 and 11 as failing the written
description requirement based on an asserted lack of original support for the
claim language “type, frequency and timing.” Answer 3—6. The Examiner
cites, from the Appellant’s originally-filed Specification, the sentence
“[t]ype, frequency or velocity and timing may be determined based on
advertiser payment,” and interprets this to indicate that the Specification
only describes “timing” paired with one of“type, frequency, or velocity,”
but not paired two of the three terms, as claimed. Answer 4 (citing Spec. 6,
11. 3—4). The Examiner, thus, is asserting that the meaning of “type,
frequency or velocity, and timing” leads to one of only three possible pairs
of terms—type/timing, frequency/timing, or velocity/timing—and that the
claim does not recite one of those pairs. See Answer 27.
We are persuaded by the Appellant’s argument that the Examiner’s
reading of the claim language, while perhaps a plausible reading, is not the
only plausible reading, and further, that the ordinary artisan would not read
the Specification’s language in the narrow manner asserted by the Examiner.
Appeal Br. 5—7.
We find that the most reasonably clear interpretation of the
aforementioned sentence, in light of the entire Specification, is that it
discloses either type, frequency, and timing (as claimed) or type, velocity,
and timing. As we find the most reasonably clear reading of the
Specification encompasses the claim language, we do not sustain the
rejection of claims 1 and 11 under 35 U.S.C. § 112, first paragraph.
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Rejections under 35 U.S.C. £ 112, Second Par agrayh
We are persuaded by the Appellant’s argument that the claim term
“type” would be recognized by the ordinary artisan, from the several
examples in the Specification, as encompassing a broad array of categories
that need not be more specifically articulated to establish the metes and
bounds of admittedly broad, but not indefinite claim language. Appeal Br.
7—9. The Specification, for example, describes “product, price and
promotional information” targeted to specific shoppers (Spec. 2,11. 2—3) and
“instant coupons” {Id. at, 11. 9—12).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the [Specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). The Examiner has, thus, confused claim breadth and definiteness.
For this reason we do not sustain the rejection of claims 1 and 11 under 35
U.S.C. § 112, second paragraph.
Rejection of Claim 1 under 35 U.S.C. £ 103(a) over Siotia and Grouf
We are not persuaded by the Appellant’s argument that the Examiner
has failed to establish a proper rationale to modify Siotia in view of Grouf.
Appeal Br. 9-10, 11—12.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR International Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The Court
further stated that “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
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actual application is beyond his or her skill.” KSR 550 U.S. 398 at 417.
When considering obviousness of a combination of known elements, the
operative question is, thus, “whether the improvement is more than the
predictable use of prior-art elements according to their established
functions.” KSR 550 U.S. 398 at 417.
Concerning a proper rationale to modify Siotia in view of Grouf, the
Examiner states “the technical ability exists to combine the elements as
claimed and the results of the combination are predictable when combined
the elements perform the same function as they did separately (i.e. charging
advertisers different prices for different types of advertisements to be sent to
the user).” Answer 14. We are unpersuaded that the aforementioned
rationale is improper.
We also are unpersuaded by the Appellant’s arguments that if Siotia
and Grouf were combined, “one would get an odd combination of a media
planning and buying planning system (Grout) and planogram guided
shopping system for a shopper in a particular store.” Appeal Br. 10. “[I]t is
not necessary that the inventions of the references be physically combinable
to render obvious the invention under review.” In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F.2d
413, 425 (CCPA 1981). “Combining the teachings of references does not
involve an ability to combine their specific structures.” In re Nievelt, 482
F.2d 965, 968 (CCPA 1973). The Examiner relies on Grouf primarily for its
teachings about advertising placement and prices, not for its entire “media
planning and buying planning system,” as asserted.
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The Appellant argues that Grouf fails to disclose sending
advertisement information to a mobile device. Appeal Br. 11. We are
unpersuaded by this argument, because the Examiner relies on Siotia for
sending information to a mobile device. Answer 10. This argument is
attacking one reference individually, when the rejection is instead based on a
combination of references.
The Appellant also argues that Siotia fails to disclose manipulating the
order of downloading promotional information. Appeal Br. 12. We are
unpersuaded by this argument, because the Examiner relies on Grouf for this
language. Answer 12.
The Appellant also argues that the cited art does not disclose an
“enhanced Indoor Positioning System,” as claimed. Appeal Br. 11. This
term is not defined by the Appellant’s Specification, which solely describes
one example of an “indoor positioning system,” but does not further define
or describe any “enhanced” characteristics. See, generally, Spec. 4.
Therefore, we construe the term broadly, and are unpersuaded that the
following disclosure of Siotia does not correspond properly to the recited
“enhanced Indoor Positioning System:” “the user’s location derived in this
manner is generally preferable to estimating the user’s position using GPS
systems, which are frequently unreliable or non-operational in stores
because of metal roofs and structures that attenuate the signals necessary for
precise location using GPS systems.” Siotia 125. In particular, Siotia’s
location system addresses problems with using GPS indoors, and, therefore,
is interpreted as being an “enhanced Indoor Positioning System.”
Finally, we are not persuaded by the Appellant’s argument that neither
Siotia nor Grouf disclose downloading price information about a product to
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a mobile device. Appeal Br. 12. The ordinary artisan would understand that
downloaded product and promotional information would include price as
either standard information about a product, or promotional information if
the price was a special price, such as associated with a coupon. See Siotia
1127, 48.
For these reasons, we sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a).
Rejection of Claim 11 under 35 U.S.C. § 103(a) over Siotia, Grout
and Thomas
We are not persuaded by the Appellant’s argument that Thomas
teaches away from remaining in constant communication with a shopper,
because, according to Appellant, Thomas teaches a shopper must “check in”
when entering a store. Appeal Br. 14. The Examiner relies on Thomas only
to disclose downloading price information (Answer 20), which we pointed
out above would be recognized by the ordinary artisan in Siotia and Grouf as
standard product information or standard promotional information to provide
a shopper.2 We are unpersuaded that providing price to a customer (Thomas
Fig. 30B) teaches away from a “microprocessor [that] remains in
communication with the shopper's mobile computing device,” as claimed.
We are also not persuaded by the Appellant’s argument that “nowhere
in Siotia, Grouf or Thomas is there any hint or suggestion for combining the
references.” Appeal Br. 14—15. To the extent the Appellant seeks an
explicit suggestion or motivation in the reference itself, this is no longer the
law in view of the Supreme Court’s recent holding in KSR Int’l Co. v.
2 The disclosure of price information in Thomas is therefore cumulative to
what the ordinary artisan would infer from Siotia and Grouf about price.
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Teleflex Inc., 550 U.S. 398, 419 (2007). Moreover, the Examiner has set
forth those rationales on pages 13—14 and 19—20 of the Answer.
The Appellant next argues “Thomas discloses promotional
information including prices of products, it does so in an entirely different
context” that is “completely different” from the claimed invention. Appeal
Br. 16. We are not persuaded by this argument, because Thomas, which is
relied upon as disclosing downloading price information to a consumer
(Answer 20), does not require the bodily incorporation of all of Thomas’
system into the combination proposed by the Examiner.
We are not persuaded by the Appellant’s argument that, in Grouf,
there is “disclosure of charging advertisers more for information displayed
higher in the list on a mobile device or for the type, frequency and timing of
promotional information.” Appeal Br. 17. Grouf discloses a “rate per ad
based on the type of ad (e.g., rich media, banner ad, e-mail, streaming clip
on a third party website, pop-up ad, click-through ad).” Grouf 122. Grouf
also discloses ads for print publications sold “based on placement within the
magazine or paper.” Id. at 125. The ordinary artisan would recognize that
the various types of ads (rich media, banner, streaming clip, pop-up) are
placed in different portions of a web page, and are charged different rates,
just as with placement within a print publication. This is analogous to
placement within a download list for the consumer in the store, as claimed.
We are unpersuaded by the remainder of the Appellant’s arguments
for the same reasons we set out above at claim 1. See Appeal Br. 13—19.
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DECISION
We REVERSE the rejection of claims 1 and 11 under 35 U.S.C.
§101.
We REVERSE the rejection of claims 1 and 11 under 35 U.S.C.
§112, first paragraph.
We REVERSE the rejection of claims 1 and 11 under 35 U.S.C.
§112, second paragraph.
We AFFIRM the rejection of claims 1 and 11 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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