Ex Parte Seergy

Patent Trials and Appeals Board

Jun 13, 2019

13252936 - (D) (P.T.A.B. Jun. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/252,936 10/04/2011 MichaelJ. Seergy
545 7590 06/17/2019
K&L GATES LLP-New York
599 Lexington A venue
33rd Floor
New York, NY 10022-6030
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.
0815637 .00005 8187
EXAMINER
ZIMMERMAN, MATTHEW E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
06/17/2019 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. SEERGY 1
Appeal 2018-001164
Application 13/252,936
Technology Center 3600
Before KAL YANK. DESHPANDE, CARLL. SILVERMAN, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 24--44, which are all claims pending in the application.
Appellant has canceled claims 1-23. See Final Act. 2. We have jurisdiction
under 35 U.S.C. § 6(b ). We affirm.
1 According to Appellant, the real party in interest is Sidekick
Technology LLC. App. Br. 2.
Appeal 2018-001164
Application 13/252,936
STATEMENT OF THE CASE
The Invention
Appellant's disclosed embodiments and claimed invention relate to
geolocation based live bidding. Spec. ,r 3.
Exemplary Claim
Claim 24, reproduced below, is representative of the subject matter on
appeal:
24. A method comprising:
capturing, by a user mobile device located at a first retail
store at a first location, image data including machine readable
data, wherein the machine readable data includes a first
identifier of a retail item at the first retail store at the first
location, and the captured image data is indicative of an intent
of a consumer associated with the user mobile device to
purchase the retail item at a moment in time when the image
data is captured;
determining, by the user mobile device, geolocation data
based on the user mobile device's geolocation at the moment in
time when the image data is captured;
transmitting via a wireless communication channel, from
the user mobile device, a first request, the first request
including the first identifier of the retail item, a second
identifier of the consumer associated with the user mobile
device, and geolocation data of the mobile device;
determining, by a processor, based on the geolocation
data transmitted from the user mobile device, that the user
mobile device is located at the first retail store at the first
location;
determining, by the processor, based on the first location,
at least one retail store within a predetermined range of the first
location to request a bid to sell the retail item;
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retrieving, from a database system, an in-store inventory
level of the at least one retail store at the moment in time when
the image data was captured;
determining, by the processor, using the in-store
inventory level of the at least one retail store at the moment in
time when the image data was captured, at least one qualifying
retail store which qualifies to provide a bid to sell the retail
item;
retrieving, from the database system, based on the second
identifier of the consumer associated with the user mobile
device, a consumer purchase history at the at least one
qualifying retail store;
retrieving, from the database system, based on the first
identifier of the retail item, a turnover rate of the retail item and
sales data from a plurality of retailers of the retail item;
determining, by the processor, a recommended bid price
based on the in-store inventory level of the at least one
qualifying retail store, the turnover rate of the retail item, the
sales data from the plurality of retailers of the retail item, and
the consumer purchase history at the at least one qualifying
retail store;
transmitting, to the at least one qualifying retail store, the
recommended bid price and a request to provide the bid to sell
the retail item;
receiving, from the at least one qualifying retail store, at
least one bid including the recommended bid price and an
indication of availability of the retail item based on the first
request, the geolocation data, and the intent of the consumer
associated with the user mobile device to purchase the retail
item at the moment in time when the image data was captured;
and
transmitting via a wireless communication channel, to the
user mobile device, a response to the first request, the response
including the at least one bid, the at least one bid being binding
on the at least one qualifying retail store at least for a period of
time after the moment in time when the image data was
captured according to predetermined terms which are agreed
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upon by the consumer and the at least one qualifying retail store
to enforce the recommended bid price and the availability of the
retail item as provided in the response.
Rejection on Appeal
Claims 24--44 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 2---6.
ANALYSIS
Appellant argues the Examiner's rejection of claim 24 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error.
See App. Br. 16-26; Reply Br. 1---6. Appellant argues claims 24--44 as a
group. See App. Br. 28. We select claim 24 as representative. See
37 C.F.R. § 4I.37(c)(l)(iv).
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
"' ... Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208,216
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is "directed to one
of those patent-ineligible concepts." Alice, 573 U.S. at 217. If so, we then
examine "the elements of [the] 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." Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
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66, 79, 78 (2012)). That is, we examine the claim for an "inventive
concept," "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, 573 U.S. at 217-18 (alteration
in original) (quoting Mayo, 566 U.S. at 72-73).
The Patent Office recently revised its guidance about this framework.
See 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under
the Revised Guidance, to decide whether a claim is directed to an abstract
idea, we evaluate whether the claim (1) recites subject matter that falls
within one of the abstract idea groupings identified in the Revised Guidance
and (2) fails to integrate the recited abstract idea into a practical application.
See Revised Guidance, 84 Fed. Reg. at 51, 54. If the claim is directed to an
abstract idea, as noted above, we then determine whether the claim has an
inventive concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add "a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field" or "simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality." Revised Guidance, 84 Fed.
Reg. at 56.
Step 1
Claim 24, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether the claim is directed to a judicial exception without
significantly more.
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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to certain methods
of organizing human activities and mental processes that can be performed
by pen and paper. See Final Act. 3.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that the invention
"provides a new and innovative system, methods, and apparatus for
geolocation based live bidding." Spec. ,r 3; see also Abstract.
Claim 24 recites, in pertinent part, the steps of:
determining ... geolocation data based on the user
mobile device's geolocation at the moment in time when the
image data is captured;
determining ... , based on the geolocation data
transmitted from the user mobile device, that the user mobile
device is located at the first retail store at the first location;
determining ... based on the first location, at least one
retail store within a predetermined range of the first location to
request a bid to sell the retail item;
retrieving ... an in-store inventory level of the at least
one retail store at the moment in time when the image data was
captured;
determining ... , using the in-store inventory level of the
at least one retail store at the moment in time when the image
data was captured, at least one qualifying retail store which
qualifies to provide a bid to sell the retail item;
retrieving ... , based on the second identifier of the
consumer associated with the user mobile device, a consumer
purchase history at the at least one qualifying retail store;
retrieving ... , based on the first identifier of the retail
item, a turnover rate of the retail item and sales data from a
plurality of retailers of the retail item;
determining ... a recommended bid price based on the
in-store inventory level of the at least one qualifying retail
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store, the turnover rate of the retail item, the sales data from the
plurality of retailers of the retail item, and the consumer
purchase history at the at least one qualifying retail store;
Claims App.
We agree with the Examiner that claim 24 recites mental processes.
See Final Act. 3. For example, the "determining" and "retrieving" steps
reproduced above recite mental processes that may be performed in the
human mind or by pen and paper. This type of activity, i.e., determining a
user's location, retrieving an inventory level, determining an inventory
level, retrieving a customer history, retrieving a turnover rate, and
determining a recommended bid price includes conduct that existed well
before the advent of computers and the Internet, and could be carried out by
a human with pen and paper. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
In particular, under the Revised Guidance, mental processes include
concepts performed in the human mind or practically with pen and paper.
See Revised Guidance. Mental processes include observations, evaluations,
judgments, and opinions. Here, the "determining" steps recite at a high level
what is determined, but do not recite how the determinations are made.
Thus, the "determining" steps are broad enough to encompass mental
processes such as observations, evaluations, judgments, and opinions.
Similarly, the "retrieving" steps recite at a high level what is retrieved, but
do not describe how the retrievals are made. Thus, the "retrieving" steps are
broad enough to encompass retrieving from the human mind or from paper.
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For these reasons, under Step 2A(i), we conclude claim 24 recites a
judicial exception of mental processes, which is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
The additional elements recited in claim 24 include the "capturing"
step, the "transmitting" steps, the "receiving" steps, "a user mobile device,"
"a wireless communication channel," "a processor," and "a database
system." None of the additional elements integrates the recited mental
processes into a practical application as determined under one or more of
Manual of Patent Examining Procedure sections 2106.05 [a]-[c] and [e].
The recited "capturing" step does not integrate the recited mental
processes into a practical application because it amounts to insignificant
extra-solution activity. See MPEP § 2106.05(g). In particular, capturing
image data with a user mobile device in a retail store amounts to mere data
gathering because it merely provides input for the recited process. Tying a
claimed mental process to specific data cannot tum an abstract idea into
patent-eligible subject matter because "mere '[data-gathering] step[s] cannot
make an otherwise nonstatutory claim statutory."'; CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (internal
citations omitted); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
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13 63 (Fed. Cir. 2015) ( collecting and analyzing data amounted to mere data
gathering).
Similarly, the recited "transmitting" and "receiving" steps amount to
insignificant extra-solution activity that is insufficient to integrate the mental
processes into a practical application. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (finding that sending and receiving information over
networks is insufficient to add significantly more to the claimed abstract
idea).
Appellant contends that "the present claims do improve a computer-
related technology, namely, computer-based customer acquisition .... "
App. Br. 17. In particular, Appellant argues that "[t]he present application
addresses the problem of bombarding consumers with ads using technology
performing a specific rules based process." App. Br. 20. Appellant further
argues "a person of skill would understand [] that the effect of performing
the present claims is a reduction in ads, and therefore, a reduction in
bandwidth used, a reduction in page load times as less ads are sent, etc." Id.
at 23. Appellant analogizes the recited limitations to the "rules" in McRO,
Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016),
arguing that, because of the claim limitations, "the retailer may stop sending
traditional computer-based advertisements (i.e., reduce the traditional
advertising budget to $0 for zero ads) and replace existing communication
channels with the presently disclosed geolocation based bids to the right
consumers, at the right place and at the ri2ht time." Reply Br. 6 ( emphasis
in original).
Appellant's arguments are not persuasive. In McRO, the claimed
process used a combined order of specific rules that rendered information in
a specific format that was applied to create a sequence of synchronized,
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animated characters. McRO, 837 F.3d at 1315. Notably, the recited process
automatically animated characters using particular information and
techniques-an improvement over manual three-dimensional animation
techniques that was not directed to an abstract idea. Id. at 1316.
We agree with the Examiner that, unlike in McRO, the recited method
of claim 24 is not a rule-based improvement of a technological process. See
Ans. 3-5. The McRO court determined that McRO 's claim was not directed
to an abstract idea because it "uses the limited rules in a process specifically
designed to achieve an improved technological result" over "existing,
manual 3-D animation techniques." McRO, 837 F.3d at 1316.
In contrast, Appellant's claim addresses identifying a business and
marketing opportunity and providing geolocation based live bidding. See
Spec. 3. Additionally, the claims in McRO were drawn to improvements in
the operation of a computer at a task, rather than applying a computer
system to perform generic data manipulation steps, as in Appellant's claim
24. See McRO, 837 F.3d at 1314.
Appellant's analogy to BASCOM Global Internet Services v. AT&T
Mobility, LLC, 827 F.3d 1341 (Fed. Cir. 2016), is similarly unavailing. See
App. Br. 24. Appellant urges that "the present case relates to customer
acquisition technology using a new channel that filters the retailers that may
use the new channel to provide a response to the user, and similarly, the
present application disparages the prior approaches of computer-based
customer acquisition (i.e., the bombardment of ads)."
We are not persuaded by Appellant's contention, which is conclusory
and not supported by persuasive argument or objective evidence. The
Federal Circuit held in BASCOM that the claimed Internet content filtering,
which featured an implementation "versatile enough that it could be adapted
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to many different users' preferences while also installed remotely in a single
location," expressed an inventive concept in "the non-conventional and non-
generic arrangement of known, conventional pieces." BASCOM, 827 F.3d at
1346, 1350.
Here, Appellant has not shown a non-conventional, non-generic
arrangement regarding the generic (known, conventional) additional
elements recited in claim 1. Therefore, we agree with the Examiner that
Appellant's claims do not involve improvements to another technology or
technical field, or improvements to the functioning of the computer itself as
was seen in BASCOM. See Ans. 4.
Claim 24, as a whole, merely uses instructions to implement the
abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
shown under the guidance ofMPEP section 2106.05(a) ("Improvements to
the Functioning of a Computer or to Any Other Technology or Technical
Field") or section 2106.05(e)("Other Meaningful Limitations"). Nor does
Appellant advance any arguments in the Brief(s) that are directed to the
Bilski machine-or-transformation test. See MPEP §§ 2106.05(b) (Particular
Machine) and 2106.05(c) (Particular Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus claim 24 is directed to the judicial exception.
Step 2B - "Inventive Concept" or "Significantly More"
If a claim is directed to a patent-ineligible concept, as we conclude
above, we proceed to the "inventive concept" step. For Step 2B, we must
"look with more specificity at what the claim elements add, in order to
determine 'whether they identify an 'inventive concept' in the application of
the ineligible subject matter' to which the claim is directed." Affinity Labs
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of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353).
Claim 24 simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. For example, courts have recognized
receiving or transmitting data over a network as well-understood, routine,
and conventional functions when they are claimed in a merely generic
manner or as insignificant extra-solution activity. Intellectual Ventures I
LLC v. Symantec, 838 F.3d 1307 (Fed. Cir. 2016) (utilizing an intermediary
computer to forward information); TL! Communications LLC v. AV Auto.
LLC, 823 F.3d 607, 610 (Fed. Cir. 2016) (using a telephone for image
transmission); OIP Techs., 788 F.3d at 1363 (sending messages over a
network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (computer receives and sends information over a network); MPEP
2106.05(d).
Moreover, as evidence of the conventional nature of the recited "user
mobile device" and "wireless communication channel" in method claim 24,
the Specification discloses:
A client device 102 may be a mobile device 103, which may be
a cellular phone, a personal digital assistant, a laptop computer,
a tablet computer, etc. The client devices 102 may
communicate with the host device 104 via a connection to one
or more communications channels 106 such as the Internet or
some other data network, including, but not limited to, any
suitable wide area network or local area network.
Spec. ,r 12. The Specification further describes the "processor" recited in
claim 24 as "any suitable processor, such as a microprocessor from the
INTEL PENTIUM® family of microprocessors." Spec. ,r 15. The
Specification also describes that "database system 310 may include a wide
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variety of data used by the geolocation based bidding information processing
system 302, including sales identification data, geolocation data, seller data,
consumer data, and the like, which may generally be referred to as sales
data, or in the retail context, retail data." Id. at ,r 22.
With respect to this step of the analysis, Appellant has not presented
arguments that any of these elements are not well-understood, routine, and
conventional. See App Br. 23. The Specification indicates that that the
additional elements are sufficiently well-known such that the Specification
does not need to describe the particulars of such additional element to satisfy
35 U.S.C. § 112(a). See USPTO Berkheimer Memo§ III.A.1. 2 Because the
Specification describes the recited additional elements in general terms,
without describing the particulars, we conclude the claim limitations may be
broadly but reasonably construed as reciting conventional computer
components and techniques, particularly in light of Appellant's
Specification, as cited above. 3
Having evaluated representative claim 24 under step 2B of the
Revised Guidance, we conclude the claim lacks an inventive concept that
transforms the abstract idea of mental processes into a patent-eligible
application of that abstract idea.
2 USPTO Memorandum of April 19, 2018, "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)" (Apr. 19, 2018), available at
https ://www. uspto. gov/ sites/ default/files/ documents/memo-berkheimer-
20180419 .PDF [hereinafter "USPTO Berkheimer Memo"].
3 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. See In re
Translogic Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007).
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Other Arguments
Appellant contends that claim 24 is patent-eligible because its practice
does not preempt practice by others. App. Br. 25.
Appellant's preemption argument is not persuasive. "While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility .... Where a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs, 788 F.3d at
13 62---63 ("that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract").
Appellant also argues that the Examiner erred because "the rejection
fails to include a prima facie rejection of dependent Claim 41." App. Br. 27.
We disagree. The Examiner has met the notice requirement for a
primafacie case, pursuant to 35 U.S.C. § 132(a). As the statute itself
instructs, the Examiner must "notify the applicant," "stating the reasons for
such rejection," "together with such information and references as may be
useful in judging the propriety of continuing prosecution of his application."
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
The Final Office Action adequately explains the§ 101 rejection. See
Final Act. 2-5. The Examiner applies the Alice analytical framework and
apprises Appellant of the reasons for the§ 101 rejection under that
framework. Id. ("In regards to the dependent claims, they also do not
contain significantly more and are mainly directed to expounding upon the
data acted on in the limitations directed to the abstract idea in claim 24.").
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Indeed, claim 41 further describes what information the "geolocation data"
of independent claim 24 includes. App. Br. 33. Moreover, Appellant has
not responded by alleging a failure to understand the rejection. To the
contrary, Appellant clearly identifies the abstract idea identified by the
Examiner. See, e.g., App. Br. 18. Accordingly, we are not persuaded that
the Examiner has failed to set forth a prima facie case of patent ineligibility
for dependent claim 41.
For the above reasons, we sustain the Examiner's§ 101 rejection of
independent claim 24 and grouped claims 25--44, not argued separately, and
which fall therewith.
DECISION
We affirm the Examiner's decision rejecting claims 24--44.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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