Ex Parte Ruckart

Patent Trial and Appeal Board

Dec 16, 2016

11271582 (P.T.A.B. Dec. 16, 2016)

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.
11/271,582 11/10/2005 John Ruckart 01253CIP (00455) 1050
82744 7590 12/16/2016
AT&T Legal Department - JW
Attn: Patent Docketing
Room 2A-207
One AT&T Way
Bedminster, NJ 07921
EXAMINER
CHAMPAGNE, LUNA
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
12/16/2016 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 JOHN RUCKART
____________

Appeal 2015-0004971
Application 11/271,5822
Technology Center 3600
____________

Before NINA L. MEDLOCK, BRADLEY B. BAYAT, and
MATTHEW S. MEYERS, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 2–4, 7, 10–14, and 21–25. We have jurisdiction under
35 U.S.C. § 6(b).
STATEMENT OF THE DECISION
We AFFIRM.

1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
June 10, 2014), Reply Brief (“Reply Br.,” filed Oct. 7, 2014), the
Examiner’s Answer (“Ans.,” mailed July 30, 2014) and Final Office Action
(“Final Act.,” mailed Nov. 7, 2013).
2 Appellant identifies “AT&T Intellectual Property I, L.P.” as the real party
in interest. Appeal Br. 2.
Appeal 2015-000497
Application 11/271,582

2
CLAIMED INVENTION
Appellant’s claimed invention “relates in general to methods and
systems for communicating with customers” Spec. ¶ 2. Claims 21 and 22
are the pending independent claims. Claim 21, reproduced below, is
illustrative of the subject matter on appeal:
21. A method of providing targeted offers, the method
comprising:
receiving a proximity signal indicating a customer being
in proximity to a first store, wherein the proximity signal is
indicative of an identity of the customer;
receiving a selection indication indicative of the customer
selecting a selected item at a first store, the selection indication
being received contemporaneously with the customer being in
proximity to the first store;
identifying an additional item based upon:
the selected item; and
an information table including items of possible
interest to the customer;
conveying an offer for the additional item to the customer
at a point of sale, wherein the additional item is offered by a
first merchant associated with the first store;
determining at the point of sale, by a point of sale
terminal, whether the customer accepted the offer; and
responsive to determining that the customer accepted the
offer, updating a first customer table and a second customer
table included in a database to reflect an acceptance by the
customer of the offer;
wherein updating the first customer table includes
updating classification fields, associated with the customer and
used to identify additional items to convey to a customer, based
on the offer;
wherein updating the second customer table includes
updating purchase information about the offer.

Appeal Br. 13–14, Claims App.
Appeal 2015-000497
Application 11/271,582

3
REJECTIONS
I. Claims 2–4, 7, 10–14, and 21–25 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.3
II. Claims 2, 7, 10, 11, 21, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sloane (US 5,918,211, iss. June 29,
1999) and Deaton (US 5,687,322, iss. Nov. 11, 1997).
III. Claims 3, 4, 23, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sloane, Deaton, and Gupta (US 6,820,062 B1,
iss. Nov. 16, 2004).
IV. Claims 12–14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sloane, Deaton, and Official Notice (as
evidenced by Moore, US 7,200,566 B1, iss. Apr. 3, 2007).

ANALYSIS
Rejection I
We are not persuaded by Appellant’s contentions against the
Examiner’s rejection under 35 U.S.C. § 101. Reply Br. 5–8.
Taking claim 21 as representative of the claims on appeal, the
Examiner finds that claim 21 is directed to “the abstract idea of providing
information to customers (upselling) at a point of sale.” Ans. 2. Appellant’s
Specification describes the claimed invention as “relate[d] to communicating
with customers in proximity to a point of sale.” Spec. ¶ 2. Claim 21 is
directed to “[a] method of providing targeted offers” comprising six steps:
(a) receiving a proximity signal, (b) receiving a selection indication of an
item, (c) identifying an additional item based on the selected item and other

3 New grounds of rejection approved by the Director. Ans. 2.
Appeal 2015-000497
Application 11/271,582

4
information, (d) conveying an offer for the additional item, (e) determining
whether the customer accepted the offer, and (f) updating customer data to
reflect the acceptance by the customer. Consistent with the Examiner’s
finding, we find the subject matter of claim 1 is reasonably broadly
construed as drawn to a process for providing targeted advertisements or
offers.
The practice of targeted advertising has long been employed using a
variety of methods in field of advertising, is not tied to any particular
technology, and can be implemented by conventional technology. The
claims are directed not to an improvement in POS terminals but simply to
the use of POS terminals as tools in the aid of a process focused on an
abstract idea. The idea underlying the invention in this case is akin to the
similar ideas underlying the claims in recent court decisions such TLI
Communications (abstract idea of “classifying and storing digital images in
an organized manner.”),4 Affinity Labs (abstract idea of “providing out-of-
region access to regional broadcast content.”),5 Bascom (abstract idea
of “filtering content on the internet.”),6 and Morsa (abstract idea of
“targeting advertisements to certain consumers, and using a bidding system
to determine when and how advertisements will be displayed.”).7 As such,
we find that claim 21 is directed to the concept of targeted advertising, a

4 In re TLI Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir.
2016).
5 Affinity Labs of TX LLC v. DirecTV, LLC, 120 USPQ2d 1201 (Fed. Cir.
2016).
6 BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
7 Morsa v. Facebook, Inc., 622 F.App’x 915 (Fed. Cir. 2015).
Appeal 2015-000497
Application 11/271,582

5
patent-ineligible abstract idea which has been around as long as advertising
itself.
Turning to the second step in Alice, we consider whether there is an
inventive concept, defined by an element or combination of elements in
claim 21, which is significantly more than the abstract idea of targeted
advertising. We conclude here that there is no such inventive concept.
In this instance, claim 21 does not transform the abstract idea, because
it merely puts into application routine steps comprising conventional activity
well-known in the art. The functions performed by each steps of claim 21––
receiving indications (e.g., RFID signal), identifying items based upon data
(matching), conveying an offer (displaying), determining acceptance of the
offer (transaction processing), and updating customer data (storing data) to
reflect acceptance of the offer are well understood, routine, and conventional
activities. The claim merely recites the use of generic features of POS
terminals, such as transaction processing and storage, as well as other
routine functions, such as transmitting and receiving signals to implement
the underlying idea. The updating step and wherein clauses of claim 21
represent routine and insignificant post-solution activity. The claim when
viewed as whole is nothing more than performing conventional processing
functions that courts have routinely found insufficient to transform an
abstract idea into a patent-eligible invention.
Consequently, we sustain the rejection of independent claim 21, and
claim 22, which recites substantially similar subject matter and is argued
together. We also sustain the rejection of the claims dependent thereon,
which are not separately argued.
Appeal 2015-000497
Application 11/271,582

6
Rejections II–IV
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claims 21 and 22 under 35 U.S.C. § 103(a) at least because the
cited passages in Deaton do not disclose or suggest “updating the first
customer table includes updating classification fields, associated with the
customer and used to identify additional items to convey to a customer,
based on the offer,” as recited in claim 21. Final Act. 5 (citing Deaton
70:63–67, 71:1–2, 71:32–39, 71:56–60).
Deaton is directed to a method and system for selective incentive POS
marketing in response to customer shopping histories. Deaton, Title.
Column 70, line 63 to column 71, line 2 of Deaton describes recording
shopping events and dollars spent in order to build a shopping history for
each customer record, and updating the customer’s record with the scanned
check information. This passage at most describes storing and updating of
data. Column 71, lines 32 to 39 of Deaton describes analyzing preselected
criteria such as shopping volume and demographics against the customer’s
record to determine a corresponding coupon value. Finally, column 71,
lines 56 to 60 of Deaton describes determining which coupons to disperse
based on the customer’s previous 30 day spending total. Therefore, we fail
to see and the Examiner does not adequately explain how or why the relied
upon passages in Deaton disclose “updating the first customer table includes
updating classification fields, associated with the customer and used to
identify additional items to convey to a customer, based on the offer,” as
required by independent claims 21 and 22.
Therefore, we do not sustain the Examiner’s rejection of independent
claims 21 and 22 under 35 U.S.C. § 103(a). For the same reasons, we also
Appeal 2015-000497
Application 11/271,582

7
do not sustain the Examiner’s rejection of dependent claims 2–4, 7, 10–14,
and 23–25. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“dependent claims are nonobvious if the independent claims from which
they depend are nonobvious”).

DECISION
The Examiner’s decision to reject claims 2–4, 7, 10–14, and 21–25 is
affirmed.
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)(1)(iv).
AFFIRMED