Ex Parte Post et alDownload PDFPatent Trial and Appeal BoardJan 26, 201712139390 (P.T.A.B. Jan. 26, 2017) Copy Citation 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. 12/139,390 06/13/2008 William Nicholas Post 26454-0035 1336 101373 7590 01/30/2017 SnfTierlanH / PF.T EXAMINER 999 Peachtree Street OYEBISI, OJO O Suite 2300 Atlanta, GA 30309 ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 01/30/2017 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): patent, docket @ sutherland.com pair_sutherland @ firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM NICHOLAS POST and JOHN WELLS MORRISON JR. Appeal 2015-0038751 Application 12/139,3902 Technology Center 3600 Before KENNETH G. SCHOPFER, SHEILA F. McSHANE, and MATTHEW S. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 6, 7, 9-11, 13—16, 18—23, and 33. We have jurisdiction under 35 U.S.C. § 6(b). 1 Our Decision references Appellants’ Appeal Brief (“Appeal Br.,” filed July 23, 2014) and Reply Brief (“Reply Br.,” filed February 17 2015), and the Examiner’s Answer (“Ans.,” mailed December 17, 2014) and Final Office Action (“Final Act.,” mailed March 24, 2014). 2 Appellants identify CDMdata, LLC as the real party in interest (Appeal Br. 1). Appeal 2015-003875 Application 12/139,390 We AFFIRM. CLAIMED INVENTION Appellants’ claimed invention relates generally “to systems and methods that are useful in connection with marketing vehicles from dealership lots” (Spec. 11). Claims 1, 23, and 33 are the independent claims on appeal. Claim 1, reproduced below, with added bracketed notations and paragraphing, is illustrative of the subject matter on appeal: 1. A method of marketing vehicles on a dealership lot, said method comprising: [a] presenting said vehicles on said dealership lot; [b] providing a first computer having a display, a user input device, and a radio frequency (RF) network interface, said first computer being located at one of said vehicles, and said display being viewable from outside said one vehicle; [c] displaying, by said display of said first computer, promotion presentation data for said one vehicle; [d] receiving, by said user input device of said first computer, user response data comprising a salesperson request; [e] routing said user response data through said RF network interface of said first computer to a second computer; and [f] controlling said second computer, said second computer being in real time data communication with said first computer through said RF network interface, wherein said second computer is located at a location on said dealership lot. 2 Appeal 2015-003875 Application 12/139,390 REJECTION Claims 1, 6, 7, 9-11, 13—16, 18—23, and 33 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Claims 1, 6, 7, 9-11, 13—16, 18—23, and 33 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gold (US 2008/0195489 Al, pub. Aug. 14, 2008) and Resser (US 2006/0212300 Al, pub. Sept. 21, 2006). ANALYSIS Non-statutory Subject Matter Appellants argue claims 1, 6, 7, 9—11, 13—16, 18—23, and 33 as a group (see Reply Br. 2—7). We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). Under 35 U.S.C. § 101, 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 an implicit exception: “[ljaws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of [these] concepts.” Alice Corp., 134 S. Ct. at 2355. The first step in that analysis is to “determine whether the 3 Appeal 2015-003875 Application 12/139,390 claims at issue are directed to one of those patent-ineligible concepts,” id. (e.g., to an abstract idea). If the claims are not directed to an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination”’ to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297). The Court acknowledged in Mayo, that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293. 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. Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner finds exemplary independent claim 1 “is directed to marketing vehicles on a dealership lot which is considered to be an abstract idea inasmuch as such activity is considered both a fundamental economic practice and a method of organizing human activity by providing an opportunity for parties to enter into a specified agreement” (Ans. 3). The Examiner also finds that “the elements involved in the recited process undertake their roles in performance of their activities according to their generic functionalities which are well- understood, routine and conventional” {id. at 3—4). The Examiner “concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself’ {id. at 4). 4 Appeal 2015-003875 Application 12/139,390 In response, Appellants argue “the claims of the present application are not directed to the alleged abstract idea of ‘marketing vehicles on a dealership lot’” because “they recite specific combinations of features that constitute meaningful limitations that go far beyond the alleged abstract idea of ‘marketing vehicles on a dealership lot’” (Reply Br. 2). However, there is no indication in independent claim 1 that any specialized hardware is required. And, “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent- eligible. The bare fact that a computer exists in the physical rather than purely conceptual realm ‘is beside the point.’” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (citation omitted). Appellants also argue that the Examiner “fails to provide any substantive analysis or present any evidence as to why the claimed invention is directed to an abstract idea” by merely “asserting that the claims are directed to coordinating human activity and the fundamental business practice of marketing vehicles” (Reply Br. 3). However, Appellants present no evidence to establish otherwise. And to the extent Appellants contend that the Examiner is required to provide such evidence, the law is clear that there is no such requirement. See, e.g., In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (holding that the PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the notice requirement of 35 U.S.C. § 132). Appellants further argue that exemplary independent claim 1 is patent-eligible because “the combination of features of independent claim 1 (and the similar features of independent claims 23 and 33) constitutes meaningful limitations that go beyond generally linking the alleged abstract 5 Appeal 2015-003875 Application 12/139,390 concept to a generic computer” (Reply Br. 5). However, we conclude that it does not. Independent claim 1 is directed to “[a] method of marketing vehicles on a dealership lot,” and recites that the method comprises “presenting said vehicles on said dealership lot;” “providing a first computer having a display, a user input device, and a radio frequency (RF) network interface, said first computer being located at one of said vehicles, and said display being viewable from outside said one vehicle;” “displaying, by said display of said first computer, promotion presentation data for said one vehicle;” “receiving, by said user input device of said first computer, user response data comprising a salesperson request;” “routing said user response data through said RF network interface of said first computer to a second computer;” and “controlling said second computer, said second computer being in real time data communication with said first computer through said RF network interface, wherein said second computer is located at a location on said dealership lot.” Here, considering each of the claim elements in turn, we find them all to be directed to well-understood, routine, conventional activities previously known to the industry. And, when viewed as a whole, the computer components (e.g., “first computer,” “second computer,” “RF network interface”) of Appellants’ method add nothing that is not already present when the steps are considered separately. Appellants also assert that the present claims are like those in DDR Holdings (Reply Br. 4—7). In DDR Holdings, the Federal Circuit determined that, although the patent claims at issue involved conventional computers and the Internet, the claims addressed the problem of retaining website visitors who, if adhering to the routine, conventional functioning of Internet 6 Appeal 2015-003875 Application 12/139,390 hyperlink protocol, would be transported instantly away from a hosts website after “clicking” on an advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal Circuit, thus, held that the claims were directed to statutory subject matter because they claimed a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Id. We are not persuaded that Appellants’ claims are like those at issue in DDR Holdings. Here, Appellants argue that their claims provide a network-based solution to a specific network-centric problem (e.g., providing a potential buyer with dynamic marketing material at a vehicle while enabling the potential buyer to request additional information (such as a salesperson request, printed information, and/or location information), which may be provided to a salesman to facilitate a sale) (Reply Br. 7). However, we agree with the Examiner that exemplary independent claim 1 uses a conventional, general purpose computer to “provid[e] a network for routing data from one computer to another; provid[e] a computer with an input interface for the user to input specific data, and a display unit for displaying, in response to the user’s input, one or more products of the product type” (see Ans. 3). Appellants also argue that “[njothing in the claims prevents or preempts marketing vehicles in general. In addition, nothing in the claims prevents the numerous other ways to market a vehicle, such as online, via advertisements, etc.” (Reply Br. 5—6). However, [t]he Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability. Alice, 134 S. Ct. at 2354 (‘We have described the concern that drives this exclusionary principle as one of pre- 7 Appeal 2015-003875 Application 12/139,390 emption[.]’). For this reason, questions on preemption are inherent in and resolved by the § 101 analysis. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Preemption concerns are, thus, fully addressed and rendered moot where a claim is determined to disclose patent ineligible subject matter under the two-part framework described in Mayo and Alice. Although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. We are not persuaded for the reasons set forth above that the Examiner erred in rejecting independent claim 1 as directed to non-statutory subject matter. Therefore, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 101. We also sustain the rejection of claims 6, 7, 9-11, 13—16, 18—23, and 33, which fall with claim 1. Obviousness Independent claim 1 and dependent claims 6, 7, 9—11, 13—16, and 18—22 We are not persuaded by Appellants’ argument that the Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because the combination of Gold and Resser fails to disclose or suggest “receiving, by said user input device of said first computer, user response data comprising a salesperson request,” as recited by limitation [d] in independent claim 1 (see Appeal Br. 7—\\ see also Reply Br. 7—8). Instead, we agree with the Examiner that the combination of Gold and Resser discloses the argued limitation (see Final Act. 3 (citing Gold 113); see also Ans. 5—6 (citing Resser, Abstract)). 8 Appeal 2015-003875 Application 12/139,390 Gold is directed to [a] system and method [which] allows for the quick and easy update and display of information regarding vehicles in a dealership lot. Since each vehicle is unique in its price, mileage and features, the system allows the information for each vehicle to be stored in a database and transmitted to a display associated with the vehicle. (Gold 19). More particularly, Gold discloses “computer 120 connected to a radio transceiver 130 and having access to a database 100 of vehicle pricing information. The transceiver has antennae 140 allowing communication of data to radio receiving units 210” {id. 113). Gold further discloses that display unit 220 “may be placed in any window and multiple displays may be used in a single vehicle” {id. 115). Resser is directed to a system for “providing vehicle sales information to a customer in the market for a vehicle via a telematics unit” (Resser 11). More particularly, Resser discloses “providing] a method of receiving vehicle sales information at a telematics unit in a vehicle via a wireless connection from a control node, receiving a trigger input at the telematics unit and providing the vehicle sales information to a local customer responsive to the received trigger input” {id. 1 8; see also id. ]Hf 55, 58). In this regard, Resser discloses that “communication services advisor 178 is implemented as a real advisor. In an example, a real advisor is a human being in verbal communication with a user or subscriber (e.g.[,] a client) in [mobile vehicle communication unit] MVCU 110 via telematics unit 120” {id. 137). Resser discloses “[t]he telematics unit 120 in the MVCU 110 establishes a local wireless link to a local wireless network. The local wireless network includes one or more local wireless network nodes 240, MVCU 110 and one or more local vehicles 210 in a dealership lot 245” {id. 9 Appeal 2015-003875 Application 12/139,390 145). Resser further discloses that its “control node 250 provides vehicle sales information to the telematics unit 120 in MVCU 110 and telematics unit 220 in local-MVCU 210” and the control node 250 can be “the vehicle dealership where the MVCU 110 and local-MVCU 210 are located” (id. 147). Resser also discloses “during stage S312, the telematics unit 120 transmits the customer input received from the local customer during stage S310 to the call center (CC) 170” and based on the local customer input can send brochures to the home of the local customer (id. | 69). We are not persuaded by Appellants’ argument that “Resser fails to teach or suggest providing the potential buyer with the ability to request a salesperson at the vehicle” because “Resser teaches providing the potential buyer with information without a salesperson being present” (Appeal Br. 4; see also Reply Br. 7—8). However, independent claim 1 does not recite having “a salesperson being present,” and as such, does not require a salesperson to be physically present at the vehicle. Instead, limitation [d] of independent claim 1 more broadly recites “receiving ... a salesperson request,” which Appellants’ Specification describes generally as talking to a salesperson, i.e., “a customer should press this button if the customer wishes to talk to a salesperson” (Spec. 1 66). Here, Resser’s system “provides] vehicle sales information to a customer in the market for a vehicle via a telematics unit” (Resser 11) upon “receiving a trigger input at the telematics unit and providing the vehicle sales information to a local customer responsive to the received trigger input” (id. 1 8; see also id. Tflf 55, 58, Abstract). Resser allows a potential buyer to “talk” to a real advisor in one of its mobile vehicle communication units via telematics unit (id. 137). Thus, we agree with the Examiner (see 10 Appeal 2015-003875 Application 12/139,390 Ans. 5—6) that Resser’s disclosure regarding “providing the vehicle sales information to a local customer responsive to the received trigger input” (Resser, Abstract) constitutes “receiving, by said user input device of said first computer, user response data comprising a salesperson request,” within the meaning of independent claim 1 under a broad, but reasonable, interpretation. Appellants also argue that “Resser teaches away from providing ‘a sales person request’” because Resser discloses that “[i]t is desirable ... to provide a potential customer with vehicle details . . . without a vehicle salesperson being present'’ (Appeal Br. 4 (alterations in original) (citing Resser 17)). However, as discussed above, independent claim 1 does not require a salesperson to be physically present at the vehicle, and as such, Appellants’ argument is not persuasive to show error in the Examiner’s rejection. In view of the foregoing, we sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103(a). We also sustain the Examiner’s rejection of dependent claims 6, 7, 9-11, 13—16, and 18—22, which are not argued separately. Independent claim 23 We are persuaded by Appellants’ argument that the Examiner erred in rejecting independent claim 23 under 35 U.S.C. § 103(a) because the combination of Gold and Resser fails to disclose or suggest an interface for sending promotion presentation data to a printer located at a common location inside a dealership building, wherein when a customer selects the print selection via the input device, the promotion presentation data from the first computer 11 Appeal 2015-003875 Application 12/139,390 is printed at the printer and the dealership is notified that the consumer is interested in one of said vehicles. (Appeal Br. 4—6). In rejecting independent claim 23, the Examiner finds [cjlaim 23 recites similar limitations to claim 1, and thus rejected using the art and rejection as in claim 1 supra except for an interface for sending promotion presentation data to a printer located at a common location inside a dealership building, wherein when a customer selects the print selection via the input device, the promotion presentation data from the first computer is printed at the printer and the dealership is notified that the consumer is interested in one of said vehicles. (Final Act. 7). The Examiner takes the position that “Gold discloses a computer system” {id.), and concludes that computer systems are well-known in the art to have printer interfaces through which the computer user can send information to the printer. The examiner takes official notice that printing is old and well[-known] in an electronic art. So it would have been obvious to one of ordinary skill in the art at the time of the invention to incorporate the well[-]known printing scheme into the system of Gold since doing so could be performed readily and easily by any person of ordinary skill in the art, with neither undue experimentation, nor risk of unexpected results. (Final Act. 7; see also Ans. 6). However, the Supreme Court has made clear that ‘“[r]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”’ See KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Here, the Examiner takes Official Notice “that printing is old and well[-known] in an electronic art” (Final Act. 7; see Ans. 6), and summarily concludes that it would have been obvious “to incorporate the well-known 12 Appeal 2015-003875 Application 12/139,390 printing scheme into the system of Gold since doing so could be performed readily and easily by any person of ordinary skill in the art” (Final Act. 7; see also Ans. 6). However, even if printing is old and well-known in the art, the Examiner does not explain why or how the modification necessarily follows from this allegedly well-known fact and, therefore, does not provide the articulated reasoning with rational underpinnings required to support the obviousness determination. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claim 23 under 35 U.S.C. § 103(a). Independent claim 33 We are persuaded by Appellants’ argument that the Examiner erred in rejecting independent claim 33 under 35 U.S.C. § 103(a) because the combination of Gold and Resser fails to disclose or suggest “displaying, at said second computer, said interest-in-vehicle indicator on a map of said dealership lot to indicate a location of at least one of said vehicle on said dealership lot indicating receipt of said interest-in-vehicle indicator,” as recited by independent claim 33 (see Appeal Br. 6—7; see also Reply Br. 9). The Examiner maintains that the rejection is proper, and cites paragraph 23 of Resser as disclosing the argued limitation (see Final Act. 7— 8; see also Ans. 6—7). More particularly, the Examiner finds that “Resser discloses GPS and GPS satellite broadcast system to provide latitude and longitude coordinates (see para[] 0023). Thus, Resser’s GPS satellite broadcast system can be adapted to indicate a location of at least one of said vehicle on said dealership lot” (Ans. 6—7). 13 Appeal 2015-003875 Application 12/139,390 We have reviewed the cited portion of Resser and agree with Appellants that the combination of Gold and Resser fails to disclose or suggest the argued limitation. More particularly, we agree with Appellants that “[t]he map in Resser directs customers via longitude/latitude coordinates to other vehicles on the dealership lot so that a consumer can find other vehicles they may be interested in” (Reply Br. 9), and as such, does not “display[], at said second computer, said interest-in-vehicle indicator on a map of said dealership lot to indicate a location of at least one of said vehicle on said dealership lot indicating receipt of said interest-in-vehicle indicator,” as recited by independent claim 33. In view of the foregoing, we reverse the Examiner’s rejection of independent claim 33. DECISION The Examiner’s rejection of claims 1, 6, 7, 9—11, 13—16, 18—23, and 33 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejection of claims 1, 6, 7, 9-11, 13—16, and 18—22 under 35 U.S.C. § 103(a) is affirmed. The Examiner’s rejection of claims 23 and 33 is reversed. 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 14 Copy with citationCopy as parenthetical citation