Ex Parte Shelton et al

Patent Trial and Appeal Board

Jan 29, 2018

13970835 (P.T.A.B. Jan. 29, 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.
13/970,835 08/20/2013 Steven SHELTON 20359P0002US02 2754
25319 7590
Shapiro Cohen LLP
P.O. Box 13002
Kanata, ON K2K 0E2
CANADA
01/29/2018 EXAMINER
DABIPI, DIXON F
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
01/29/2018 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 STEVEN SHELTON, NORMAND PIGEON, and CHE HODGINS
Appeal 2017-008669
Application 13/970,835
Technology Center 2400
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claims 1—12 and 18, which constitute all the
claims pending in this application. Claims 13—17 were cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants’ invention notifies an individual of the presence of another
individual at an event venue. See generally Abstract; Spec. 17. In one
1 Appellants identify the real party of interest as MySeat.com Media Inc.,
which is one of the applicants. Br. 3.; Bibliographic Data Sheet.
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Application 13/970,835
embodiment, upon scanning a ticket relating to an individual using an
electronic device, first event data is searched relating to the individual in an
event data store. Spec. 111. When the first event data is not found, then
first event data relating to the individual is stored in the event data store. Id.
Claims 1 and 18, reproduced below, are illustrative:
1. A method comprising
checking into an event by an individual using an
electronic device associated with the individual, the electronic
device in communication with a communication network;
searching for first event data relating to the individual in
an event data store, the individual determined based on their
association with the electronic device, the event data store in
communication with the communication network;
when the first event data is not found, storing first event
data relating to the individual in the event data store via the
communication network; and
storing location data in the event data store relating to a
location of the individual within a venue via the communication
network.
18. A method comprising
checking into an event by an individual using an
electronic device associated with the individual, the electronic
device in communication with a communication network;
checking into the event by a second individual using a
second electronic device associated with the second individual,
the second electronic device in communication with the
communication network;
searching for first event data relating to the individual,
the individual determined based on their association with the
electronic device, in an event data store, the event data store in
communication with the communication network;
searching for first event data relating to the second
individual, the second individual determined based on their
association with the electronic device, in an event data store, the
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event data store in communication with the communication
network; and
notifying the individual that the second individual has
checked into the event.
THE REJECTIONS2’3
The Examiner rejected claims 1—12 and 18 under 35 U.S.C. § 101
because the claimed subject matter is judicially excepted from patent
eligibility under § 101. Final Act. 4—5.4
The Examiner rejected claims 1—11 and 18 under 35 U.S.C. § 103 as
unpatentable over Thompson et al. (US 8,671,001 Bl; Mar. 11, 2014) and
Callaghan (US 2012/0323612 Al; Dec. 20, 2012). Final Act. 6-23.
2 The Appeal Brief addresses the Examiner’s rejections as objections. See
Br. 5—7. But “[tjhere are significant legal and procedural distinctions
between an ‘objection’ and a ‘rejection’ . . . .” Ex parte C, 27 USPQ2d
1492, 1494 (BPAI 1992).
35 U.S.C. § 134, which provides the right of appeal, refers only
to the appeal of rejections of claims and, accordingly, restricts
the jurisdiction of the Board ... to considering the propriety of
‘rejections.’ The propriety of ‘objections’ and other procedural
requirements is solely within the jurisdiction of the
Commissioner of Patents.
Id. n.3. We treat Appellants’ apparent typographical error as harmless.
3 Because the Examiner unambiguously withdrew the rejection under § 112,
first paragraph of claims 1—12 “because support for the amendment has been
provided” (Ans. 2), we consider the rejection withdrawn and do not address
Appellants’ arguments concerning the § 112, first paragraph rejection (see
Br. 6).
4 Throughout this opinion, we refer to (1) the Final Rejection mailed March
2, 2016 (“Final Act.”); (2) the Appeal Brief filed July 5, 2016 (“Br.”); and
(3) the Examiner’s Answer mailed November 28, 2016 (“Ans.”).
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The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Thompson, Callaghan, and Looney et al. (US
2011/0208418 Al; Aug. 25, 2011). Final Act. 23-24.
THE § 101 REJECTION
The Examiner finds that the claims recite a method of organizing
human activity directed to the practice of checking attendees into an event
and, therefore, are directed to an abstract idea. Final Act. 4; Ans. 2—3, 22—
23. The Examiner further finds the claims do not include additional
elements that amount to significantly more than the abstract idea.
Final Act. 5; Ans. 3, 22—23. Given these findings, the Examiner concludes
the claims are ineligible under § 101. Final Act. 2—3; Ans. 2—3, 21—23.
Appellants argue the recited specific hardware and communication
infrastructure in claim 1 is specified in particular configurations and
operations. Br. 5. Appellants further argue even assuming, arguendo,
Appellants’ claims are directed to an abstract idea, the elements of
Appellants’ claims amount to significantly more than an abstract idea. Id. at
6. According to Appellants, the gathering of data relating to an event when
a user is at the event based on a presence of the user’s mobile device at the
event is more than merely organizing data. Id.
ISSUE
Has the Examiner erred in rejecting claim 1 as directed to ineligible
subj ect matter under §101?
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ANALYSIS
In Mayo Collaborative Services v. Prometheus Laboratories., Inc.,
566 U.S. 66, 71—73 (2012), the Supreme Court established an analytical
framework under § 101 to distinguish patents that claim patent-ineligible
laws of nature, natural phenomena, and abstract ideas—or add too little to
such underlying ineligible subject matter—from those that claim patent-
eligible applications of those concepts. To determine whether claims are
patent eligible under § 101, we apply the Supreme Court’s two-step test
articulated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014).
Alice Step One
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355. “[T]he ‘directed to’ inquiry applies
a stage-one filter to claims, considered in light of the specification, based on
whether ‘their character as a whole is directed to excluded subject matter.’”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)).
The Specification discusses the problem to be solved by the
invention—applying social networking to physical networking and events
where those socializing are physically present. Spec. 1 6. Appellants’
invention solves the problem by proposing various methods relating to
notifying an individual of the physical presence of another individual at a
physical event using a communication network. Id. 7—13.
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Appellants do not rely on a particular claim to argue the patentability
of the pending claims. See generally Br. 5—6. We, therefore, select
independent claim 1 as the representative claim, and the remaining claims 2—
12 and 18 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Here,
claim 1 requires, in essence, checking into an event by an individual,
searching for first event data relating to the individual, storing first event
data relating to the individual when the first event data is not found, and
storing the individual’s location data. Accordingly, in the context of the
Specification discussed above, claim 1 ’s “character as a whole” is directed
to checking an individual into an event using a communication network.
An individual checking into an event is a human activity. The
claimed method for checking the individual into the event—searching for
event data relating to the individual, and if not found, then documenting
event data relating to the individual—is a method of organizing human
activity. Thus, in light of the Specification discussed above, we agree with
the Examiner that claim 1 as a whole is directed to a method of organizing
human activity. See Final Act. 4—5; Ans. 21—23.
Moreover, Appellants’ contention that the claimed invention recites
specific hardware and communication infrastructure for use in checking
users into an event, including a physical mobile electronic device associated
with an individual (Br. 5) is unavailing and not commensurate with the
scope of claim 1, which does not require a mobile electronic device.
Nevertheless, “[a]n abstract idea on ‘an Internet computer network’ or on a
generic computer is still an abstract idea.” BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016).
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Therefore, claim 1 is directed to an abstract idea under the first step of
the analysis.
Alice Step Two
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, we “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.” Alice, 134 S. Ct. at 2355 (quoting Mayo,
566 U.S. at 78). The Supreme Court describes the second step of this
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.” Id. (brackets in original) (internal quotations omitted).
Checking an individual into a physical event is a conventional
business practice known in the art. Appellants contend that the claims
provide more than the conventional business practice known in the art
because the claims are directed to gathering data based on the presence of an
individual’s electronic device at the event. Br. 6. We disagree. Such data
gathering using an “event data store” alone is insignificant extra-solution
activity that is insufficient to render the claim patent-eligible. See In re
Bilski, 545 F.3d 943, 962—63 (Fed. Cir. 2008), affd on other grounds, 561
U.S. 593 (2010). “Purely ‘conventional or obvious’ ‘[pre]-solution activity’
is normally not sufficient to transform an unpatentable law of nature into a
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patent-eligible application of such a law.” Mayo, 132 S. Ct. at 1298
(brackets in original) (citing Parker v. Flook, 437 U.S. 584, 590 (1978)).
That claim 1 adds “using an electronic device ... in communication
with a communication network” for checking the individual into the event
does not change our conclusion. The claimed invention does not improve
the electronic device’s functionality or efficiency, or otherwise change the
way the electronic device functions. Cf. Enfish, 822 F.3datl335. Rather,
claim 1 recites nothing more than using a generic electronic device to assist
a conventional business practice known in the art—checking an individual
into an event. But merely reciting a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention. See Alice,
134 S. Ct. at 2358. In other words, merely reciting an abstract idea while
adding the words “apply it with a computer” does not render an abstract idea
non-abstract: there must be more. Id. at 2358. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
Thus, “the claims at issue amount to ‘nothing significantly more’ than
an instruction to apply the abstract idea . . . using some unspecified, generic
computer.” Alice, 134 S. Ct. at 2360 (citing Mayo, 566 U.S. at 71).
Therefore, we are not persuaded that the Examiner erred in rejecting claim 1,
and claims 2—12 and 18 not argued separately with particularity.
THE OBVIOUSNESS REJECTION OVER THOMPSON AND
CALLAGHAN
Claims 1—11
The Examiner finds that Thompson discloses many recited elements
of independent claim 1 including, among other things, searching a data store
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for first event data relating to an individual checking into an event using an
electronic device. Final Act. 7—8. The Examiner also finds Thompson
discloses that when the first event data is not found, storing first event data
relating to the individual in the event data store. Final Act. 8; Ans. 25—26.
Although the Examiner acknowledges that Thompson does not explicitly
disclose the electronic device associated with the individual, and the
individual determined based on the individual’s association with the
electronic device, the Examiner cites Callaghan for teaching this feature in
concluding that the claim would have been obvious. Final Act. 5—6.
Appellants argue that, because Thompson’s event organizer only
identifies a ticket holder based on existing data and then adds that the ticket
holder is present, Thompson does not teach a situation where event data is
added for the ticket holder who has no existing data relating to an event..
Br. 7.
ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by finding
that Thompson and Callaghan collectively would have taught or suggested,
when first event data is not found, storing first event data relating to an
individual in an event data store via a communication network?
ANALYSIS
To resolve the question of patentability under § 103, we begin by
construing claim 1. During examination, claims are given their broadest
reasonable interpretation consistent with the specification. See In re Am.
Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, the
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disputed limitation of claim 1 recites: “when the first event data is not found,
storing first event data relating to the individual in the event data store via
the communication network.” Br. 11 (Claims App’x) (emphasis added).
In accord with our precedent, the disputed limitation of claim 1 is
conditional and, therefore, need not be satisfied. See Ex Parte Schulhauser,
Appeal 2013-007847, 2016 WL 6277792, at *3-5 (PTAB Apr. 28, 2016)
(precedential) (holding that in a method claim, a step reciting a condition
precedent does not need to be performed if the condition precedent is not
met). Although the limitations at issue in Schulhauser were rendered
conditional by the recitation of “if’ (see id. at 6—8), we discern no
meaningful distinction between the recitation of “if’ and “when” in this
context. Indeed, one dictionary definition of “when” is “in the event that:
IF.” Merriam-Webster’s Collegiate Dictionary 1345^46 (conj. def.
3a) (10th ed. 1993). Accordingly, we construe “when” to be synonymous
with “if’; therefore, the term “when” in the context of claim 1 renders the
disputed limitation conditional.
Turning to the rejection, because the disputed limitation of claim 1
need not be satisfied as discussed above, we find Appellants’ argument that
Thompson does not teach or suggest the disputed limitation of claim 1 (Br.
7) unavailing. But even assuming, without deciding, that the disputed
limitation of claim 1 must be satisfied, which it does not, we agree with the
Examiner (see Ans. 25—26 (citing Thompson col. 7,11. 8—21)) that the
disputed limitation is at least suggested by Thompson. Thompson’s event
organizer accesses an event management system’s event attendee list.
Thompson col. 6,11. 51—60. Thompson’s attendee at an event provides a
ticket to the event organizer. Id. at col. 7,11. 29—38. Thompson’s event
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organizer reviews the event attendee list to identify whether the attendee has
already checked into the event. Id. Thompson’s event attendee list
identifies that the attendee has not checked into the event by default, and the
event organizer updates the attendee’s status to identify the attendee checked
into the event. Id. Thus, Thompson at least suggests that, when the
attendee’s checked-in status (the claimed “first event data”) is not found,
storing this “first event data” relating to the attendee (the claimed
“individual”) in the event management system (the claimed “event data
store”) via a communication network.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2—11 not argued separately with particularity.
Claim 18
The Examiner finds that Thompson discloses many recited elements
of independent claim 18 including, among other things, checking an
individual and a second individual into an event using, respectively, a first
and second electronic device. Final Act. 18—19; Ans. 14—16. The Examiner
also finds Thompson discloses notifying the individual that the second
individual has checked into the event. Final Act. 21; Ans. 17, 30-32.
Although the Examiner acknowledges that Thompson does not
explicitly disclose the electronic device associated with the individual, and
the individual determined based on the individual’s association with the
electronic device, the Examiner cites Callaghan for teaching this feature in
concluding that the claim would have been obvious. Final Act. 5—6;
Ans. 18-19.
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Appellants argue the accessibility of Thompson’s list to an individual
alone is not notifying the individual. Br. 8. According to Appellants,
Thompson’s accessible list, or commonplace log file, does not teach or
suggest notifying as defined in the Specification that provides a distinction
between notifying an individual when a friend arrives and maintaining a list
of friends whom arrived. Id. (citing Spec. 1 51).
ISSUE
Under § 103, has the Examiner erred in rejecting claim 18 by finding
that Thompson and Callaghan collectively would have taught or suggested
notifying an individual that a second individual has checked into an event?
ANALYSIS
A key aspect of the disputed limitation is that it is based on notifying
an individual that a second individual has checked into an event. Although
Appellants refer to the Specification’s paragraph 50 in connection with the
recited notification (Br. 8), Appellants’ Specification does not explicitly
define the term “notifying.” Compare Spec. 1 51 (describing that “instead of
notifying each individual within a group of friends when a friend arrives, a
list is maintained of who is expected and who has arrived.”) with id. 1 55
(describing “another method of notifying” as being a visual seating diagram
that highlights a friend’s seat when the friend has arrived at the event). We,
therefore, construe the term “notifying” according to a plain meaning,
namely “to . . . report the occurrence of .”
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Merriam-Webster’s Collegiate Dictionary 795 (vi. def. 3) (10th ed.
1993).
In the rejection, the Examiner finds that Thompson’s mobile check-in
system notifies an individual that a second individual has checked into an
event. Ans. 31—32. Notably, the Examiner finds that Thompson’s user
accesses an event attendee list that indicates an attendee has arrived at an
event. Id. at 31 (citing Thompson col. 10,11. 45—67). To be sure,
Thompson’s event attendee list identifies the check-in status for each
attendee registered for an event. Thompson col. 10,11. 44-46. Thompson’s
user accesses the event attendee list on a mobile client system, and selects an
attendee from the event attendee list to indicate that an attendee had arrived.
Id. col. 10,11. 56—58. This access by the user, then, at least suggests
reporting to the user the occurrence of the attendee checking into the event
because it is the user who checks the attendee into the event.
Appellants’ arguments regarding Thompson’s alleged shortcomings
(Br. 8) do not squarely address—let alone persuasively rebut—the
Examiner’s findings based on the notification in Thompson’s column 10
noted above. Therefore, we are not persuaded that the Examiner erred in
rejecting claim 18.
THE OTHER OBVIOUSNESS REJECTION
We also sustain the Examiner’s obviousness rejection of claim 12.
Final Act. 23—24. Because this rejection is not argued separately with
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particularity, we are not persuaded of error in this rejection for the reasons
previously discussed.
CONCLUSION
The Examiner did not err in rejecting claims 1—12 and 18 under
§§ 101 and 103.
DECISION
The Examiner’s decision to reject claims 1—12 and 18 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.
§ 41.50(f).
AFFIRMED
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