Ex Parte Pedro et al

Patent Trial and Appeal Board

Jan 16, 2018

13249670 (P.T.A.B. Jan. 16, 2018)

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.
2010-1419 2628
EXAMINER
STROUD, CHRISTOPHER
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
13/249,670 09/30/2011
84326 7590 01/16/2018
AT & T LEGAL DEPARTMENT - Toler
ATTN: PATENT DOCKETING
ROOM 2A-207
ONE AT & T WAY
BEDMINSTER, NJ 07921
Jeff Pedro
01/16/2018 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 JEFF PEDRO, CAMERON SCOTT BLANDFORD,
and MARK FOLADARE
Appeal 2016-000498
Application 13/249,6701
Technology Center 3600
Before MURRIEL L. CRAWFORD, NINA L. MEDLOCK, 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, 2, 4—7, 9-15, 17—20, and 22—24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify AT&T Mobility II, LLC and AT&T Intellectual
Property I, LP as the real parties in interest. Appeal Br. 1.
Appeal 2016-000498
Application 13/249,670
ILLUSTRATIVE CLAIM
1. A system comprising:
a processor; and
a memory accessible to the processor, the memory
comprising instructions executable by the processor to perform
operations comprising:
receiving user identification information for a user
of a media device, wherein the media device is associated
with a first device, wherein the user is associated with a
mobile device distinct from the first device, and wherein
the user identification information is received responsive
to a determination that the mobile device is proximate to
the media device;
retrieving user history information from a user
history database based on the user identification
information;
retrieving, from a media content items database, a
list of items depicted in media content sent by the media
device to a display device coupled to the media device;
determining a particular item from the list of items
based on the user history information; and
in response to determining the particular item:
generating a link to the particular item; and
sending a selectable option to the mobile
device, wherein the selectable option identifies an
option to send the link to the mobile device, to a
second device, or to both.
REJECTIONS
I. Claims 1, 2, 4—7, 9-15, 17—20, and 22—24 are rejected under
35U.S.C. § 101 as ineligible subject matter.
II. Claims 1, 2, 6, 7, 9, 11—15, and 17—20 are rejected under
35 U.S.C. § 103(a) as unpatentable over Kouhi et al. (US 2009/0150927 Al,
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Application 13/249,670
pub. June 11, 2009) (“Kouhi”), Ullah (US 2011/0153429 Al, pub. June 23,
2011) (“Ullah ’429”), and Kanefsky et al. (US 2010/0094976 Al, pub.
Apr. 15, 2010) (“Kanefsky”).
III. Claims 4, 5, 10, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kouhi, Ullah ’429, Kanefsky, and Kent et al.
(US 2012/0214416 Al, pub. Aug. 23, 2012) (“Kent”).
IV. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kouhi, Ullah ’429, and Ofek et al. (US 2010/0241514 Al, pub.
Sept. 23, 2010) (“Ofek”).
V. Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kouhi, Ullah, Kanefsky, and Ullah (US 2009/0298514 Al, pub. Dec. 3,
2009) (“Ullah ’514”).
VI. Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Kouhi, Ullah ’429, Kanefsky, and Doi et al. (US 2001/0014911 Al,
pub. Aug. 16, 2001) (“Doi”).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
1. Issues Pertaining to Claims 1, 2, 4-7, 9—15, 17—20,
and 22—24
Applying the first step of the methodology delineated in Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), the
rejection states that all the appealed claims amount to receiving media
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Application 13/249,670
content, retrieving a list of items, receiving user identification, retrieving
user history, and sending a notification to a user, which the Examiner
considers to be targeted advertising — an abstract idea that constitutes both
a fundamental economic concept and a method of organizing human
activities. Final Action 4. Under the second Alice step, the Examiner
determines that the claimed features do not involve significantly more than
the abstract idea, because they require no more than a generic computer
performing generic computer functions. Id.
According to the Appellants, the Examiner’s determination under the
first Alice step is deficient, because the rejection did not provide references
or other support for the position that the claims are directed to an abstract
idea. Appeal Br. 6. This argument is not persuasive of error, because, as
stated in the Answer (at page 3), subject-matter eligibility determinations do
not necessarily require factual determinations. See Mortgage Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1325—26 (Fed. Cir. 2016).
The Appellants dispute the Examiner’s determination that the
appealed claims are directed to an abstract idea; according to the Appellants,
the claims are not similar to activities that courts have identified as abstract
ideas — such as creating a contractual relationship, hedging, or mitigating
settlement risk. Reply Br. 4. To the contrary, however, targeted advertising
has been determined to be an abstract idea that is not eligible for patenting.
See Mors a v. Facebook, Inc., 77 F. Supp. 3d 1007, 1014 (C.D. Cal. 2014),
aff’d, 622 F. App’x 915 (Fed. Cir. 2015).
The Appellants also contend that the appealed claims were rejected
erroneously, because the claims do not “tie up” or “preempt” a judicial
exception. Appeal Br. 7—8. However, as the Examiner explains, the absence
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of complete preemption does not establish subject-matter eligibility. See
Answer 4; see also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”)
In addition, as to the second step of the Alice analysis, the Appellants
argue that independent claim 1 is patent-eligible, because it recites non­
routine and unconventional features — specifically “sending a selectable
option to the mobile device,” in order to have targeted advertising delivered
to “the mobile device, to a second device, or to both.” See Appeal Br. 8—9.
“Advantageously,” the Appellants argue, this feature “enables the media
device to continue to send media content that resulted in the generation of
the selectable option to the display device without interruption to one or
more viewers watching the display device.” Id. Moreover, according to the
Appellants, the “selectable option” is not advertising but is merely an offer
to receive advertising for an item during presentation of the media content.
Id. at 9. Therefore, the Appellants contend, users not interested in seeing the
advertising can reject or ignore it, whereas a user that elects to receive the
advertising is more likely to view it favorably. Id.
Yet, the features that the Appellants rely upon (id. at 8—9), for
establishing the alleged unconventional character of the subject matter (i.e.,
not interrupting the display of content and the capacity to reject or ignore the
“selectable option”), are not set forth in claim 1. Accordingly, the
Appellants do not persuasively argue that claim 1 recites subject matter
beyond the identified abstract idea that is not merely generic and/or
conventional.
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The Appellants argue that independent claims 11 and 19, along with
all the dependent claims in the Appeal, are patent-eligible, based upon the
same reasons presented for claim 1. See id. at 9. Therefore, we sustain the
rejection of claims 1, 2, 4—7, 9—15, 17—20, and 22—24 under 35 U.S.C.
§101.
2. Additional Basis for Subject-Matter Eligibility
of Claims 19 and 20
In addition to the issues addressed above, independent claim 19 and
claim 20, depending therefrom, stand rejected as constituting ineligible
subject matter because claim 19 encompasses transitory forms of signal
transmission, by its recitation of “[a] computer readable storage device
storing instructions.” See Final Action 5; see also Answer 5—6.
The Appellants argue that the identified language does not render
claim 19 ineligible, because it uses the word “device,” which connotes a
patent-eligible machine and/or manufacture. Appeal Br. 9; Reply Br. 8. The
Appellants also argue that the Specification indicates that the claims do not
cover a signal, by stating that “the tangible computer-readable storage
medium may include a magneto-optical or optical medium, such as a disk or
tapes or other storage device.” Appeal Br. 9 (quoting Spec. 1 74).
Our reviewing Court has held that transitory propagating signals are
not statutory subject matter. In reNuijten, 500 F.3d 1346, 1357 (Fed. Cir.
2007). Further, the Board has concluded that claim language reciting
machine-readable storage media would be understood to encompass such
transitory signals, unless the claim is construed so as to exclude them, in
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view of, e.g., the Specification. Ex parte Mewherter, 2013 WL 4477509, *3
& n.5 (PTAB 2013) (precedential).
Although the Appellants contend (Appeal Br. 9) that paragraph 74 of
the Specification indicates that the claimed subject matter excludes
transitory signals, the Examiner points out that paragraph 74 also states that
its description of an “exemplary embodiment” is “non-limiting” and further
states that “the disclosure is considered to include any one or more of a
tangible computer-readable storage medium and other equivalents and
successor media, in which data or instructions may be stored.” Answer 5—6
(quoting Spec. 174). In view of such an expansive statement in the
Specification, and without any language explicitly limiting the claim scope
to non-transitory embodiments, the broadest reasonable interpretation of
claim 19 would encompass transitory signals.
Therefore, we sustain the rejection of independent claim 19 and
dependent claim 20 under 35 U.S.C. § 101, for this additional reason.
Obviousness
1. Claims 1, 4, 5, 7, 9—15, 17—20, and 22—24
The Appellants argue that independent claim 1 was reversed
erroneously because none of the cited references — Kouhi, Ullah ’429, and
Kanefsky — teaches the following recited features:
retrieving ... a list of items depicted in media content
sent by the media device to a display device coupled to the
media device;
determining a particular item from the list of items based
on the user history information; and
in response to determining the particular item: . . .
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sending a selectable option to the mobile device,
wherein the selectable option identifies an option to send
the link to the mobile device, to a second device, or to
both.
See Appeal Br. 10-13; Reply Br. 9—10.
Yet, as to these identified features of claim 1, the Appeal Brief
addresses each of the references individually (see Appeal Br. 10-13),
whereas the rejection relies upon a combination thereof (see Final Action 6—
8). The Appellants’ approach is flawed because “one cannot show non­
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references.” In re Keller, 642 F.2d
413,426 (CCPA1981).
The Reply Brief refines the Appellants’ position, stating that
Kanefsky does not disclose claim 1 ’s “sending a selectable option to the
mobile device, wherein the selectable option identifies an option to send the
link to the mobile device, to a second device, or to both.” See Reply Br. 9,
10. According to the Examiner, it would have been obvious to modify the
teachings of Kouhi and Ullah ’429, in view of Kanefsky, so as to achieve
this limitation, “in order to share the link regarding items of interest with
friends or a different device better suited to viewing content, such as
something with a larger screen.” Answer 7 (citing Kanefsky || 48—50, 52,
53). Indeed, Kanefsky teaches sending a URL to another device, so that the
related content may be accessed. See Kanefsky || 48—50, 52, 53.
Accordingly, the Appellants’ argument is not persuasive of error in
the rejection of claim 1. The Appellants rely upon the foregoing arguments,
as to independent claims 11 and 19, as well as claims 4, 5, 7, 9, 10, and 22—
24 (depending from claim 1), claims 12—15, 17, and 18 (depending from
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claim 11), and claim 20 (depending from claim 19). See Appeal Br. 10, 13—
14, 17—20. Therefore, we sustain the rejections of claims 1, 4, 5, 7, 9-15,
17-20, and 22-24 under 35 U.S.C. § 103(a).
2. Claim 2
The Appellants contend that claim 2, which depends from claim 1,
was erroneously rejected, because the cited references do not disclose the
recited feature of “receiving a request for the link in response to sending the
selectable option to the mobile device.” See Appeal Br. 15—16; Reply Br.
11. Per the rejection, paragraphs 48—50, 52, and 53 of Kanefsky teach the
identified feature. Final Action 8; Answer 8.
The Appellants argue that Kanefsky does not disclose “receiving a
request for the link” and, therefore, does not teach the feature in question.
See Appeal Br. 16. This argument is unpersuasive, because, as the Answer
explains, Kanefsky teaches a user submitting a request to send the link to
another device, such that, upon receiving the link, the user of the second
device can activate the link and display the associated content. Answer 8
(citing Kanefsky || 48—50, 52, and 53).
The Appellants also argue that, because the identified prior art
references allegedly do not teach claim l’s “sending a selectable option to
the mobile device,” there can be no teaching of claim 2’s “receiving a
request for the link in response to sending the selectable option to the mobile
device.” See Appeal Br. 15—16; Reply Br. 11. As discussed above, the
Appellants’ argument for claim 1 is not persuasive of error. Because it
depends upon the argument presented for claim 1, this argument for claim 2
must also be unpersuasive.
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Therefore, we sustain the rejection of claim 2 under 35 U.S.C.
§ 103(a).
3. Claim 6
The Appellants contend that claim 6, which depends from claim 1,
was erroneously rejected, because the cited references do not disclose the
claim recitation “wherein the user identification information is associated
with a data service, a television service, and a mobile communication
service.” Appeal Br. 16—17. According to the rejection, Khoui’s paragraphs
24, 48, and 55 teach this feature. Final Action 8; Answer 8.
The Appellants state that Kouhi discloses a user adding items of
interest to a follow-up list, which may later be accessed (e.g., to make a
purchase) through a website, a television-based subscriber service, a
personal digital assistant, or a mobile telephone. Reply Br. 11—12 (citing
Kouhi 155). Nevertheless, the Appellants argue that Kouhi does not teach
the identified limitation, because the television service and the mobile
telephone service “may use different identifiers associated with different
accounts of the user.” Id. at 12. The Appellants, thus, presume that claim 6
requires a single item of “user identification information” that “is associated
with a data service, a television service, and a mobile communication
service,” whereas Kouhi teaches a distinct identifier for each of the three
recited communication services. Yet, the Appellants do not explain why the
claim language at issue — which recites “user identification information”
“associated with” various services — must consist only of a single identifier,
as the Appellants suppose. Nor do the Appellants point to any portion of
Kouhi that would require “different identifiers,” as the Appellants propose.
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Accordingly, the Appellants’ argument as to claim 6 is unpersuasive of error
in the rejection.
Therefore, we sustain the rejection of claim 6 under 35 U.S.C.
§ 103(a).
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1, 2, 4—7, 9—
15, 17-20, and 22-24 under 35 U.S.C. § 101.
We AFFIRM the Examiner’s decision rejecting claims 1, 2, 4—7, 9—
15, 17-20, and 22-24 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).
AFFIRMED
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