Ex Parte Reardon et al

Patent Trial and Appeal Board

May 22, 2018

13309286 (P.T.A.B. May. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/309,286
71741 7590
DAVID REARDON
645 Autumn Oaks Dr
St. Peters, MO 63376
12/01/2011
05/22/2018
FIRST NAMED INVENTOR
David C. Reardon
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.
mobile2 9292
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
MAILDATE DELIVERY MODE
05/22/2018 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 DAVID C. REARDON and MARK YOW
Appeal2016--005889
Application 13/309,286
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
David C. Reardon and Mark Yow (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-20, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed October 17, 2014) and Reply Brief ("Reply Br.," filed May 26,
2015), and the Examiner's Answer ("Ans.," mailed March 26, 2015), and
Final Action ("Final Act.," mailed June 10, 2014).
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Application 13/309,286
The Appellants invented a way of initiating financial transactions from a
mobile electronic device. Specification 1 :Background.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[ 1] providing at least one memory storing at least one database
configured to store user account information associated with at
least one receiver and at least one sender,
[2] wherein each of the receiver and sender user accounts is
associated with
(a) an electronic messaging system configured to permit
communication between the sender and the receiver and
(b) an accounting of debits and credits associated with
each user account;
[3] wherein the receiver's user account information comprises
at least one identifier associated with an electronic
device,
and
at least one receipt criteria;
[ 4] wherein the sender's user account information comprises
at least one sender's message
and
sending criteria comprising location range data;
[5] providing a server system, including at least one server,
with access to the memory
[ 6] wherein the server system
is configured to receive location information associated
with the electronic device associated with the receiver
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and
is configured to
compare the receipt criteria and location
information to the sending criteria and location
range
and
dispose of at least one sender's message by at least
one of a first and second disposition mode,
the first disposition mode comprising transfer of
the message to the electronic device associated
with the receiver
when the receipt criteria and sending criteria
are satisfied and the location information is
within the location range,
the second disposition mode comprising blocking
delivery of the message
when either the receipt criteria or sending
criteria are not satisfied.
The Examiner relies upon the following prior art:
Shivaram US 7,548,754 B2 Jun. 16,2009
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1--4, 7 and 17-19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shivaram.
Claims 5, 6, 8-16, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Shivaram and Official Notice.
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ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of obviousness tum primarily on whether Shivaram describes
a server that transfers a message when sending criteria including location
range data is satisfied and blocking the message when the criteria is not
satisfied.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Shivaram
01. Shivaram is directed to delivery of any SMS text after a call is
ended and authenticating the source of the delivered text message
with a logo or other graphic not forwardable by mobile phone
subscribers. Shivaram 1: 8-13.
02. Shivaram starts in a SUBSCRIBER INITIATES SPONSORED
CALL step, where a mobile phone subscriber initiates a call and
selects the Sponsor Call service. Such Sponsor Call service
provides a subsidy by a sponsor in return for accepting an
advertisement message from the sponsor. The call is received by
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the Call Media Server, which queries the Ad Delivery System to
select pre-recorded audio advertisement messages based on the
subscriber's profile. Such messages are targeted to the
preferences of the particular subscribers. Subscriber preferences
and areas of interest are stored in a database in the Ad Delivery
System , e.g., a subscriber database. A process in the Ad Delivery
system matches the subscriber to a corresponding subscriber
profile in the subscriber database and accesses the database
contents. The subscriber is identified by a Subscriber Identity
Module (SIM). Audio advertising messages are selected and SMS
messages are pre-associated with each audio message. The
purpose in selecting advertisements based on a subscriber's profile
is to increase the effectiveness of the advertising. An example of
a subscriber's profile may be a location-based factor. A location
server may be integrated with the OpenCall Media Platform so
that the location of the subscriber at the time of initiating the call
can be one determinant in selecting appropriate audio
advertisement messages. The current location of the subscriber
may be determined using GSM technology, Global Positioning
System (GPS) technology, etc. Shivaram 3:18-53.
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ANALYSIS
Claims 1-20 rejected under 35 U.S.C. § 101 as directed to non-statutory
subject matter
Method claim 1 recites providing a memory to store user account
information and providing a server configured to receive location
information and use that information to either send or block a message.
Thus, claim 1 recites receiving, analyzing, and transmitting data. None of
the limitations recite implementation details for any of these steps, but
instead recite functional results to be achieved by any and all possible
means. Data reception, analysis, and transmission are all generic,
conventional data processing operations to the point they are themselves
concepts awaiting implementation details. The sequence of data reception-
analysis-transmission is equally generic and conventional. The ordering of
the steps is therefore ordinary and conventional. The remaining claims
merely describe parameters and performing generic accounting, with no
implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
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analysis as a search for an "'inventive concept'"-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S.Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to electronic communication when certain defined parameters are
met. Ans. 2.
Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in sending or blocking a message. The Specification
at 1 :Background recites that the invention relates to initiation of financial
transactions from a mobile electronic device. Thus, all this evidence shows
that claim 1 is directed to sending and receiving data.
Claims involving data collection, analysis, and display without more are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
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Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
transmission, and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 1 is directed to the abstract idea of receiving, analyzing, and
transmitting data.
The remaining claims merely describe parameters and performing
generic accounting. We conclude that the claims at issue are directed to a
patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it'" is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
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implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, analyze, and transmit data amounts to electronic data
query and retrieval---one of the most basic functions of a computer. The
limitation of an accounting of debits and credits associated with each user
account is not a step, and is not functionally related to the remainder of the
claim. All of these computer functions are well understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants' method claims
simply recite the concept of data processing as performed by a generic
computer. To be sure, the claims recite doing so by advising one to rely on
criteria including location data in deciding whether to forward or block a
message. But this is no more than abstract conceptual advice on the
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parameters for such data processing and the generic computer processes
necessary to process those parameters, and do not recite any particular
implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The Specification spells out
different generic equipment and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of data processing under different scenarios. They do
not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of data processing using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art.'
Alice Corp. Pty. Ltd. at 2360.
Appellants argue that the asserted claims are akin to the claims
found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P. 773
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F.3d 1245 (Fed. Cir. 2014). Reply Br. 3-4. In DDR Holdings, the Court
evaluated the eligibility of claims "address[ing] the problem of retaining
website visitors that, if adhering to the routine, conventional functioning
of Internet hyperlink protocol, would be instantly transported away from
a host's website after 'clicking' on an advertisement and activating a
hyperlink." Id. at 1257. There, the Court found that the claims were patent
eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no "pre-Internet
analog." Id. at 1258. The Court cautioned, however, "that not all claims
purporting to address Internet-centric challenges are eligible for patent."
Id. For example, in DDR Holdings the Court distinguished the patent
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258-59 (citing Ultramercial, 772 F.3d at 715-
16). As noted there, the Ultramercial claims were "directed to a specific
method of advertising and content distribution that was previously
unknown and never employed on the Internet before." Id. at 1258
(quoting Ultramercial, 772 F.3d at 715-16). Nevertheless, those claims
were patent ineligible because they "merely recite[ d] the abstract idea of
'offering media content in exchange for viewing an advertisement,' along
with 'routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet."' Id.
Appellants' asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
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for sale at an Internet website;" "restricting general public access to said
media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellants' asserted claims recite
reading, receiving, analyzing, and transmitting data. This is precisely the
type of Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellants' argument that "[t]he claims
describe a physical transformation of the electronic devices, stored data, and
assets owned by two or more individuals in a manner that is 'significantly
more' than an abstract idea of a fundamental economic practice." Reply Br.
5-7, (emphasis omitted). Appellants first contend that the claims transform
a potential transaction into a completed transaction. Id. First, the
independent claims do not recite a transaction, so they do not recite
transforming a potential transaction into a completed transaction. Second,
this contention is no more than to say a process was performed, so the state
was transformed from pre-process to post-process. This is an abstraction of
the nature of processes in general. Finally, a transaction is itself an
abstraction. It is what a transaction affects that may be more than that.
Appellants go on to contend that the transformation is in the electrical
characteristics of memory. Id. Any such alteration, however, is the generic
alteration inherent in the operation of general purpose computers.
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Claims 1--4, 7 and 17-19 rejected under 35 U.S.C. § 103(a) as unpatentable
over Shivaram
We are persuaded by Appellants' argument that Shivaram fails to
describe a server that transfers a message when sending criteria including
location range data is satisfied and blocking the message when the criteria is
not satisfied. App. Br. 12. The Examiner cites Shivaram's use of location
data for this limitation. Ans. 4. Shivaram only uses location data to select
an advertisement, not to determine whether to forward or block a message.
Claims 5, 6, 8-16, and 20 rejected under 35 U.S.C. § 103(a) as unpatentable
over Shivaram and Official Notice
These claims depend from those in the rejection supra.
CONCLUSIONS OF LAW
The rejection of claims 1-20 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 1--4, 7, and 17-19 under 35 U.S.C. § 103(a) as
unpatentable over Shivaram is improper.
The rejection of claims 5, 6, 8-16, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Shivaram and Official Notice is improper.
DECISION
The rejection of claims 1-20 is affirmed.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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