Ex Parte Vo et al

Patent Trial and Appeal Board

Sep 14, 2018

12124834 (P.T.A.B. Sep. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/124,834 05/21/2008
12371 7590 09/18/2018
Muncy, Geissler, Olds & Lowe, P.C./QUALCOMM
4000 Legato Road, Suite 310
Fairfax, VA 22033
Dang Minh Vo
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.
QC071599 3394
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/18/2018 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):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANG MINH VO, RAJEEV D. RAJAN,
JOSE RICARDO DOS SANTOS, KAMRAN MOALLEMI,
MANUEL E. JAIME, and MICHAEL JAMES KOENIG
Appeal 2016-007250 1
Application 12/124,8342
Technology Center 3600
Before HUBERT C. LORIN, MATTHEWS. MEYERS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 1--48, 80, 81, and 83. We have
jurisdiction under § 6(b ). We AFFIRM.
1 Our Decision references Appellants' Specification filed May 21, 2008
("Spec."), Appeal Brief filed November 19, 2015 ("Appeal Br."), and
Reply Brief filed July 19, 2016 ("Reply Br."), as well as the Examiner's
Answer mailed May 25, 2016 ("Ans.") and Final Office Action mailed
June 22, 2015 ("Final Act.").
2 Appellants identify QUALCOMM Incorporated as the real party in
interest. Appeal Br. 3.
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Application 12/124,834
SUBJECT MATTER ON APPEAL
The invention "relates generally to a mobile operating environment,
and more particularly to providing mobile coupons to a mobile device based
on peer to peer ranging techniques." Spec. ,r 3. Claims 1, 21, 41, 42, and 48
are the independent claims on appeal. Independent claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method of wireless communication, comprising:
establishing, with a wireless communications
interface component of a first device, a wireless
peer-to-peer connection between the first device and a
mobile device;
determining a distance between the first device and
the mobile device based upon wireless signals exchanged
by the wireless communications interface component
between the first device and the mobile device over the
wireless peer-to-peer connection;
determining whether the distance is equal to or less
than at least one distance threshold, wherein the at least
one distance threshold is a defined distance value that is
shorter than an effective communication range of the
wireless peer-to-peer connection; and
associating a dynamic mobile coupon (DMC) with
the mobile device based at least in part on the at least one
distance threshold determination.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Lerat US 2002/0010627 Al Jan. 24, 2002
Leung et al. US 2003/0093314 Al May 15, 2003 ("Leung")
Chithambaram US 2004/0156326 Al Aug. 12, 2004
Fajkowski US 2005/0230473 Al Oct. 20, 2005
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Mgrdechian et al. US 2009/0164309 Al June 25, 2009 ("Mgrdechian")
Lutnick et al. US 2013/0006773 Al Jan. 3, 2013 ("Lutnick")
REJECTIONS
The Examiner rejects the claims on appeal as follows:
I. claims 1--48, 80, 81, and 83 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement;
II. claims 1--48, 80, 81, and 83 under 35 U.S.C. § 101 as directed to
non-statutory subject matter;
III. claims 1-8, 10, 12-28, 30, 32--48, 80, and 81 under 35 U.S.C.
§ I03(a) as unpatentable over Mgrdechian, Lutnick, and Leung; 3
IV. claims 9, 11, 29, and 31 under 35 U.S.C. § I03(a) as unpatentable
over Mgrdechian, Lutnick, Leung, and Official Notice as evidenced
by Lerat and Fajkowski; and
V. claim 83 under 35 U.S.C. § I03(a) as unpatentable over Mgrdechian,
Lutnick, Leung, and Chithambaram.
ANALYSIS
Rejection I
In rejecting the claims under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement, the Examiner
finds the disclosure does not provide support for the limitation reciting
3 The heading of this rejection does not reference claims 80 and 81
(Final Act. 4), but the body of the rejection includes an analysis of these
claims (id. at 10). As such, we understand that the rejection includes
claims 80 and 81, and that the omission of these claims from the heading is
an oversight.
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"wherein the at least one distance threshold is a defined distance value that is
shorter than an effective communication range of the wireless peer-to-peer
connection," as recited in each of independent claims 1, 21, 41, 42, and 48.
Final Act. 2-3. In contrast, Appellants argue that the Specification's
description of a tiered set of distance thresholds provides support for this
limitation. Appeal Br. 6-8 (citing Spec. ,r,r 39, 70). In particular, Appellants
assert:
Hence, in the example where the discounts include a "50 cent
discount when within 10 meters, 25 cent discount when within
20 meters, 10 cent discount when within 30 meters" [(Spec.
,r 39)], the effective communication range of associated P2P
connections is, by implication, at least 30 meters. So, at least the
distance thresholds of 10 meters and 20 meters can be considered
to be "shorter than an effective communication range of the
wireless peer-to-peer connection."
Id. at 7. Appellants' argument is not persuasive.
The test for sufficiency of the written description requirement is
"whether the disclosure of the application relied upon reasonably conveys to
those skiUed in the art that the inventor had possession of the claiJned
subject ,natter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (emphasis added) (citations
omitted). As such, claim construction is important to the written description
analysis. In re Katz Interative Cell Processing Patent Litig., 639 F.3d 1303,
1319 (Fed. Cir. 2011 ).
Here, the limitation at issue specifically describes the distance
threshold. Namely, the limitation requires the distance threshold is a defined
value that is shorter than an effective communication range of the wireless
peer-to-peer connection. Although paragraphs 39 and 70 describe a distance
threshold as a defined value, e.g., 10 meters, 20 meters, or 30 meters, there is
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no description of these values relative to the effective communication range
of the wireless peer-to-peer connection. Furthermore, we disagree with
Appellants that a person of ordinary skill would imply that all of the tiered
distance thresholds are distance values within the effective communication
range of the wireless peer-to-peer connection because the cited portions of
the Specification do not describe the effective communication range of the
connection. See also Ans. 2-3 ("[T]he [S]pecification does not disclose or
teach ... determining that the effective range of associated P2P connections
is 30 meters. The effective communication range depends on signal strength
which could vary and may depend on whether the devices are located in the
high/low interference area."). Consequently, the cited portions of the
Specification do not reasonably convey to those skilled in the art that, as of
the filing date, the inventors had possession of the claimed subject matter,
including a distance threshold being a defined value that is shorter than an
effective communication range of the wireless peer-to-peer connection, as
recited in the limitation at issue.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner's finding that the limitation at issue lacks support in the
disclosure. We, therefore, sustain the rejection of claims 1--48, 80, 81, and
83 under 35 U.S.C. § 112, first paragraph.
Rejection II
An invention is patent eligible if it is 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: "[l]aws of nature, natural phenomena, and abstract ideas are not
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patentable." See, e.g., Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013)).
To "distinguish[] patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts," the Supreme Court, in Alice, reaffirmed the
two-step analysis previously set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66 (2012). Alice, 134 S. Ct. at
2355. The first step of this analysis considers whether a claim is directed to
a patent-ineligible concept, e.g., an abstract idea. Id. (citing Mayo, 566 U.S.
at 77). If so, the second step considers whether the claim recites an
inventive concept-an element or combination of elements sufficient to
ensure the claim amounts to significantly more than the abstract idea and
transform the nature of the claim into a patent-eligible application. Id.
(citing Mayo, 566 U.S. at 72-73, 78, 79).
In rejecting the claims under 35 U.S.C. § 101 as directed to
non-statutory subject matter, i.e., patent ineligible, the Examiner analyzes
the claims using this two-step framework. Final Act. 3--4. Pursuant to the
first step, the Examiner determines the claims are directed to the abstract
idea of "targeting advertisement based on location parameters," which is a
fundamental economic practice and, therefore, an abstract idea. Id. at 3.
The Examiner also determines a dynamic mobile coupon is an advertisement
(id. at 13) such that the claims are similarly directed to the abstract idea of
"associating a coupon based on one distance threshold determination,"
which is a commercial arrangement involving contractual relations similar to
the fundamental economic practices the courts have held to be abstract ideas,
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such as hedging in Bilski4 and mitigating settlement risks in Alice (id. at 14).
Under the second step, the Examiner determines the claims do not recite
significantly more than the abstract idea because the additional elements of
the claims, alone or in combination, amount to no more than mere
instructions to implement the abstract idea on a computer and recitations of
generic computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional activities.
Final Act. 3--4.
Appellants argue claims 1--48, 80, 81, and 83 as a group.
Appeal Br. 9-17; Reply Br. 4-6. \Ve select independent claim l as
representative, and the remaining claims of the group stand or fall with
independent claim L 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants argue the Examiner erred in determining what independent
claim 1 is directed to under the first step of the Alice analysis. Appeal Br. 9-
10, 16; Reply Br. 4---6. In particular, Appellants assert "targeting
advertisement based on location parameters" and "associating a coupon
based on one distance threshold determination" ignore the majority of the
claim language and overgeneralize the claim. Appeal Br. 9-10, 16;
Reply Br. 4---6. Appellants' arguments are not convincing.
In determining whether a claim is directed to excluded subject matter,
e.g., an abstract idea, the Federal Circuit has explained that "the '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."' E'njzsh_. LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network,
4 Bilski v. Kappas, 545 F.3d 943 (Fed. Cir. 2008).
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Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). For computer-implemented
inventions in particular, such as the present invention, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Id. at 1335-36.
Here, independent claim 1 recites steps that enable a dynamic mobile
coupon (DMC) to be associated with a mobile device based on a
determination that the distance between a first device and the mobile device
is equal to or less than a distance threshold that is a defined distance value
shorter than an effective communication range of a wireless peer-to-peer
connection between the mobile device and the first device. More simply
put, the claimed invention provides coupons based on distance.
The Specification similarly describes that the claimed invention
improves couponing by issuing coupons for nearby retailers to increase the
coupons' appeal. Namely, the Specification describes:
[S]ending a coupon to be redeemed at a particular store can be of
low contemporaneous value if no such store is near to a recipient
device. Accordingly, having particular dynamic information
associated with consumer mobile devices can be helpful in
influencing buying decisions and/ or providing additional value
to the consumer.
Spec. ,r 6.
Independent claim 1 also recites a method of wireless communication
involving a first device, a mobile device, a wireless communications
interface component of a first device, and a wireless peer-to-peer
communication between the first device and the mobile device. The
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Specification, however, does not describe an improvement to the wireless
communication technology.
Accordingly, the claimed invention implements a process for
providing targeted coupons based on distance in a wireless communications
environment. The focus of the claimed invention is not on the wireless
communications environment or the computing components associated
therewith, but rather on a process for providing targeted coupons, for which
the computing components of the wireless communications environment are
invoked merely as tools to implement the process. The character of
independent claim 1 as a whole is directed to providing targeted coupons
based on distance, which is a fundamental economic practice similar to the
concept of tailoring content based on a user's location in Intellectual
Ventures I, LLC v. Capital One Bank (USA), N.A., 792 F.3d. 1363, 1369--70
(Fed. Cir. 2015), and, therefore, an abstract idea.
Turning to Appellants' arguments under the second step of the Alice
analysis, Appellants submit that independent claim 1 is patent eligible in
accordance with the Office's streamlined eligibility analysis procedure
because it is self-evident that the claim does not tie up the use of the abstract
idea. Appeal Br. 10-11 (citing 2014 Interim Guidance on Patent Subject
Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014); July 2015 Update:
Subject Matter Eligibility, https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf), 15. Appellants' argument is not
persuasive of error.
As set forth in the Office's guidance, "a streamlined eligibility
analysis can be used for a claim that may or may not recite a judicial
exception but, when viewed as a whole, clearly does not seek to tie up any
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judicial exception such that others cannot practice it." 2014 Interim
Guidance, 79 Fed. Reg. at 74625 (emphasis added). The Office's guidance,
therefore, does not require a streamlined eligibility analysis for a claim that
recites a judicial exception. Jv1oreover, although preemption may be the
concern driving the exclusion of abstract ideas from patent-eligible subject
matter, preemption is not the test for eligibility. "The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability. 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) (citation omitted); see
also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir.), cert. denied, 136 S. Ct. 701 (2015) ("And 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.").
Appellants also argue that certain claim limitations are not
well-understood, routine, and conventional activities. Appeal Br. 12-13, 16.
In particular, Appellants assert
the Examiner has not established that the claim features of
"determining a distance between the first device and the mobile
device based upon wireless signals exchanged by the wireless
communications interface component between the first device
and the mobile device over the wireless peer-to-peer
connection", "determining whether the distance is equal to or less
than at least one distance threshold, wherein the at least one
distance threshold is a defined distance value that is shorter than
an effective communication range of the wireless peer-to-peer
connection" and "associating a dynamic mobile coupon (DMC)
with the mobile device based at least in part on the at least one
distance threshold determination" as recited in independent
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claim 1 ... are "well-understood, routine and conventional" that
could be performed by a "generic computer."
Id. at 13. Appellants' argument is not convincing for the reasons the
Examiner provides in the Answer. Ans. 9--10.
Namely, Appellants conflate the conventionality of the steps being
performed by computing components and the conventionality of the
computer functions required to implement the steps. With respect to the
latter, the Examiner determines, and we agree, that the implementation
requires nothing more than generic computer components performing
generic computer functions that are well-understood, routine, and
conventional activities, such as receiving, analyzing, and transmitting data.
Final Act. 3; Ans. 9-10; see also Spec. ,r 47 ("[T]he various illustrative
logics, logical blocks, modules, and circuits described in connection with the
aspects disclosed herein can be implemented or performed with a general
purpose processor.").
Appellants further argue that, similar to the patent-eligible claims in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
the claimed invention solves the Internet-centric problem of wirelessly
transmitting coupons to nearby consumers. Appeal Br. 14. Appellants'
argument does not apprise us of error.
In DDR Holdings, the court contrasted the claims from those in
Ultramerical, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), which are
directed to a method of advertising and distributing content over the Internet.
773 F.3d at 1258-59. In doing so, the court explained that "[u]nlike the
claims in Ultraniercial, the claims at issue here specify how interactions
with the Inten1et are manipulated to yield a desired result-------a result that
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oveITides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink." id. at 1258.
Here, independent claim 1 does not specify how the wireless
peer-to-peer communication is manipulated to provide coupons based on
distance such that the claimed invention departs from conventional wireless
peer-to-peer communications. Consequently, although the claimed
invention involves a wireless communication environment, the claimed
invention does not address a challenge unique to wireless communications.
Rather, in contrast to the claims in DDR Holdings, the claimed invention
solves the business challenge of how to increase the effectiveness of
coupons and applies the solution in a wireless communications environment,
which is not sufficient for patent eligibility. See DDR Holdings, 773 F.3d at
1256 ("[T]hese claims [of prior cases] in substance were directed to nothing
more than the performance of an abstract business practice on the Internet or
using a conventional computer. Such claims are not patent-eligible."); see
also Alice, 134 S. Ct. at 23 5 8 ( explaining that limiting the use of an abstract
idea to a particular technological environment is not sufficient for patent
eligibility).
In view of the foregoing, Appellants do not apprise us of error in the
Examiner's determination that independent claim 1 is patent-ineligible.
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 101, with claims 2--48, 80, 81, and 83 falling therewith.
Rejection III
In rejecting independent claim 1 under 35 U.S.C. § 103(a), the
Examiner finds Mgrdechian discloses the invention substantially as claimed,
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except for the steps of "determining whether the distance is equal to or less
than at least one distance threshold, wherein the at least one distance
threshold is a defined distance value that is shorter than an effective
communication range of the wireless peer-to-peer connection" and
"associating a dynamic mobile coupon (DMC) with the mobile device based
at least in part on the at least one distance threshold determination."
Final Act. 4--5. For the former step, the Examiner relies on Lutnick, and for
the latter, the Examiner relies on Leung. Id. at 5---6. The Examiner makes a
similar rejection of independent claims 21, 41, 42, and 48. Id. at 11.
Appellants argue that Mgrdechian's device-to-device in-range
detection set forth in paragraphs 43 and 72 does not disclose "determining a
distance between the first device and the mobile device based upon wireless
signals exchanged by the wireless communications interface component
between the first device and the mobile device over the wireless peer-to-peer
connection" as recited in independent claim 1 and similarly recited in
independent claims 21, 41, 42, and 48, because range is not distance.
Appeal Br. 17-19; Reply Br. 6-8. Although paragraphs 43 and 72 may
disclose device-to-device in-range detection, paragraph 43 also discloses
"the general case where relative positions, ranges or distances of mobile
devices are established via direct or peer-to-peer communications, uploaded
to a central server via a cellular or other network and used to facilitate
communications or provide other data to be used in any way whatsoever"
( emphasis added). Consequently, Appellants do not apprise us of error in
the Examiner's finding that Mgrdechian discloses this limitation of the
independent claims.
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We are similarly unpersuaded by Appellants' argument that
Mgrdechian's in-range detection is not applicable to Lutnick's
distance-based calculation methodologies such that the combined teachings
of Mgrdechian and Lutnick would not result in "determining whether the
distance is equal to or less than at least one distance threshold, wherein the at
least one distance threshold is a defined distance value that is shorter than an
effective communication range of the wireless peer-to-peer connection," as
recited in independent claim 1 and similarly recited in independent
claims 21, 41, 42, and 48. Appeal Br. 19-22; Reply Br. 8-9. As set forth
above, Mgrdechian expressly discloses establishing the relative positions,
ranges, or distances of mobile devices and uploading them to a central
server. Mgrdechian ,r 43. Appellants' argument focuses on Mgrdechian's
in-range detection and does not address this disclosure of determining a
distance between mobile devices. Consequently, Appellants do not apprise
us of error in the Examiner's determination that the combined teachings of
Mgrdechian and Lutnick would result in this limitation of the independent
claims.
Appellants also assert that Leung fails to cure the deficiencies of
Mgrdechian and/or Lutnick. Appeal Br. 22-24. As set forth above,
however, Appellants do not apprise us of any deficiency, so Appellants'
argument is inapposite.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner's rejection of independent claims 1, 21, 41, 42, and 48.
Appellants do not present arguments for dependent claims 2-8, 10, 12-20,
22-28, 30, 32--40, 43--47, 80, and 81 apart from the independent claims.
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Appeal Br. 24. We, therefore, sustain the rejections of claims 1-8, 10, 12-
28, 30, 32--48, 80, and 81 under 35 U.S.C. § 103(a).
Rejections IV and V
With respect to the rejections of dependent claims 9, 11, 29, 31, and
83, Appellants argue that none of Lerat, Fajkowski, and Chithambaram cures
the deficiency in the rejection of the independent claims. Appeal Br. 24--25.
As set forth above, Appellants do not apprise us of any deficiency, so
Appellants' argument is inapposite. Accordingly, we sustain the rejections
of claims 9, 11, 29, 31, and 83 under 35 U.S.C. § 103(a).
DECISION
The Examiner's decision to reject claims 1--48, 80, 81, and 83 under
35 U.S.C. § 112, first paragraph, is affirmed.
The Examiner's decision to reject claims 1--48, 80, 81, and 83 under
35 U.S.C. § 101 is affirmed.
The Examiner's decision to reject claims 1--48, 80, 81, and 83 under
35 U.S.C. § 103(a) 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). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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