Ex Parte WongDownload PDFPatent Trial and Appeal BoardNov 21, 201613033290 (P.T.A.B. Nov. 21, 2016) Copy Citation 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. 13/033,290 02/23/2011 Yoon Kean Wong 82594700 8554 15757 7590 11/23/2016 Qualcomm /Norton Rose Fulbright US LLP 2200 Ross Avenue Suite 3600 Dallas, TX 75201-7932 EXAMINER CROSS, MICHAEL J ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 11/23/2016 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): ocpat_uspto@qualcomm.com doipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOON KEAN WONG Appeal 2014-005553 Application 13/033,290 Technology Center 3600 Before BIBHU R. MOHANTY, JAMES A. WORTH, and BRADLEY B. BAYAT, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1—20, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE and ENTER A NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b). Appeal 2014-005553 Application 13/033,290 THE INVENTION The Appellant’s claimed invention is directed to an advertisement service that can access information to select custom advertisements for a user (Spec., para. 1). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for receiving an advertisement comprising: detecting a contextual usage of an application by a user of a device that is executing the application, wherein data of the contextual usage comprises user activity in the application and a genre or metadata of the application; with the device, transmitting the data of the contextual usage to a second device; and receiving, with the device, an advertisement based on the data of contextual usage from the second device and outputting the advertisement on an output component of the device. THE REJECTIONS The following rejections are before us for review: 1. Claims 1—9 are rejected under 35 U.S.C. § 101 as being drawn to non-statutory subject matter. 2. Claims 1, 2, 4—7, 9-11, 13—15, 17, and 18 are rejected under 35 U.S.C. § 102(b) as anticipated by Tsui (US 2008/0249969 Al; pub. Oct. 9, 2008). 3. Claims 3, 8, 12, and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Tsui and Ramer (US 2009/0240586 Al; pub. Sept. 24, 2009). 4. Claims 19 and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Tsui and Rabbitt (US 2009/0307081; pub. Dec. 10, 2009). 2 Appeal 2014-005553 Application 13/033,290 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.1 ANALYSIS Rejection under 35 U.S.C. § 101 The rejection of record under 35 U.S.C. § 101 applies essentially only the machine-or-transformation test (Ans. 2, 3). In Bilski v. Kappos, 561 U.S. 593 (2010) it was held that the machine-or-transformation test is not the sole test for determining patent eligibility. As an incomplete analysis has been performed in this regard, this rejection is not sustained. However, we enter a NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b) under 35 U.S.C. § 101 below. Rejection under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a) The Appellant argues that the rejection of claim 1 is improper because the prior art does not disclose the claim limitation requiring wherein the data of the contextual usage comprises “user activity in the application and a genre or metadata of the application” (App. Br. 10-12). In contrast, the Examiner has determined that the cited claim limitation is shown by Tsui in the Abstract, and paragraphs 49 and 104—106 (Ans. 4, 14). 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal 2014-005553 Application 13/033,290 We agree with the Appellant. Here the argued claim limitation requires wherein the data of the contextual usage comprises “user activity in the application and a genre or metadata of the application.'1'’ The above citations to Tsui fail to disclose this claim limitation. For example, while Tsui at paragraph 49 does disclose contextual usage in the user activity of purchasing coffee, there is no specific disclosure that this was done in an application and there is no specific disclosure of the claimed “genre or metadata” of that application being provided as well. For this reason, the rejection of claim 1 and its dependent claims is not sustained. Claim 18 contains a similar limitation, and the rejection of this claim and its dependent claims is not sustained for the same reasons given above. With regards to claim 10, the Appellant argues that the prior art fails to disclose the claim limitations for “an input controller to detect a user accessing an application of the device; [and] a controller to identify data of a contextual usage of the application by the user.” In contrast, the Examiner has cited to the same portions of Tsui to disclose this. We agree with the Appellant. Here, the above cited portions of Tsui fail to specifically disclose a separate “input controller to detect a user accessing an application of the device.” For example, in paragraph 4 of Tsui, the user could access a system to purchase coffee and not make a purchase, and there is no specific disclosure of a controller to detect the user accessing that application. For this reason, the rejection of claim 10 and its dependent claims is not sustained. 4 Appeal 2014-005553 Application 13/033,290 NEW GROUND OF REJECTION Under 35 U.S.C. § 101, an invention is patent-eligible if it claims 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: “laws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS BankInt7, 134 S. Ct. 2347, 2354 (2014). In judging whether claim 1 falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court’s two- step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). In accordance with that framework, we first determine whether the claim is “directed to” a patent-ineligible abstract idea. If so, we then consider 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 of the abstract idea. Id. This is a search for an “inventive concept,” an element, or combination of elements sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. Id. The Court also stated that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Id. at 2358. Here, we determine that the claim is directed to the concept of determining targeted advertising based on an individual user. This is a fundamental economic practice long prevalent in our system of commerce and is an abstract idea beyond the scope of § 101. 5 Appeal 2014-005553 Application 13/033,290 We next consider whether additional elements transform the nature of the claim into a patent-eligible application of the abstract idea, e.g., whether the claim does more than simply instruct the practitioner to implement the abstract idea using generic computer components. We conclude that it does not. Each step of the claimed method does no more than require a generic computer component to perform a generic computer function. For this reason, claims 1—10 do not pass 35 U.S.C. § 101. The other claims similarly cover claimed subject matter that is judicially-excepted from patent eligibility under § 101. Therefore, we enter a new ground of rejection of claims 1—20 under 35 U.S.C. § 101. CONCLUSIONS OF LAW We conclude that the Appellant has shown that the Examiner erred in rejecting the claims as listed in the Rejections section above. DECISION The Examiner’s rejections of claims 1—20 are reversed. A new ground of rejection of claims 1—20 is applied. NEW GROUND This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise 6 Appeal 2014-005553 Application 13/033,290 one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner.... (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record .... Should Appellant elect to prosecute further before the Examiner pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, the effective date of the affirmance is deferred until conclusion of the prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellant elects prosecution before the Examiner and this does not result in allowance of the application, abandonment or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED: 37 C.F.R, $ 41.50(b) 7 Copy with citationCopy as parenthetical citation