Ex Parte Wong

Patent Trial and Appeal Board

Nov 21, 2016

13033290 (P.T.A.B. Nov. 21, 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.
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).
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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).
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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.
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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.
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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
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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)
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