Ex Parte Wooden et alDownload PDFPatent Trial and Appeal BoardFeb 6, 201713609825 (P.T.A.B. Feb. 6, 2017) 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. 13/609,825 09/11/2012 Richard D. Wooden 264-DDG-09-2009 1488 86548 7590 Garlick & Markison (IH) ATTN: MET .ANTE MURDOCK P.O. Box 160727 Austin, TX 78716-0727 EXAMINER BEKERMAN, MICHAEL ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 02/08/2017 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): MMurdock@ TEX ASPATENTS .COM ghmptocor@texaspatents.com bpierotti @ texaspatents .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD D. WOODEN, THEODORE N. MYERS, and JEFFREY D. ZIGLER Appeal 2015-003261 Application 13/609,8251 Technology Center 3600 Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and SHEILA F. McSHANE, Administrative Patent Judges. McSHANE, Administrative Patent Judge. DECISION ON APPEAL The Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’ final decision to reject claims 1—12 and 14—19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 According to the Appellants, the real party in interest is iHeartMedia Management Services, Inc. Appeal Brief filed October 15, 2014, hereafter “App. Br.,”3. Appeal 2015-003261 Application 13/609,825 BACKGROUND The invention relates to geolocation of a geocache, including the placement of a promotional item at or near the geolocation. Specification, hereafter “Spec.” | 6. The invention includes tracking of the promotional items to determine the effectiveness of the geocaching promotional advertising. Id. Representative claim 1 is reproduced from page 13 of the Claims Appendix of the Appeal Brief (Claims App.) as follows, with emphasis added to relevant claim limitations: 1. A method comprising: placing a promotional good in a geocache at a geolocation; broadcasting information associated with the geolocation of the geocache via a radio station; collecting, in a database, information related to movement of the promotional good after the promotional good has been removed from the geocache; determining, using a processor coupled to the database, an effectiveness of a marketing campaign based on the information related to movement of the promotional good after the promotional good has been removed from the geocache; and wherein the determining includes using the information related to movement ofpromotional items removed from the geocache to generate an estimate of a number of geocachers, within a geographic area associated with a sponsor, who listen to the radio broadcast station. In a Final Rejection, the Examiner rejects claims 1—12 and 14—19 under 35 U.S.C. § 103(a) as unpatentable over eHow 2, Sprogis3, and Anand4. Final 2“How to Attract Geocache Tourists,” https://web.archive.Org/web/20080115041630/http://www.ehow.com/how_ 2053556 attractgeocache-tourists-business.html, 01/15/2008, eHow, last visited December 8, 2013. 3 US Publication 2007/0167224 Al, published July 19, 2007. 4 US Patent 7,996,256 Bl, issued August 9, 2011. 2 Appeal 2015-003261 Application 13/609,825 Action, hereafter “Final Act.,” 2—5, mailed April 7, 2014; Answer, hereafter “Ans.,” 2, mailed November 10, 2014. In the Answer, the Examiner enters a new ground of rejection for claims 1—12 and 14—19 under 35 U.S.C. § 101 on the basis that the claimed invention is directed to non-statutory subject matter. Ans. 2—3. The Appellants exercise the option to maintain the appeal with the filing of a Reply Brief, with the Reply Brief addressing each ground of rejection under 37 C.F.R. § 41.39(b)(2). Reply Brief, hereafter “Reply Br.,” 3—5, filed January 6, 2015. DISCUSSION The Appellants argue the rejections of claims 1—12 and 14—19 under § 101 on common issues. See Reply Br. 3—5. The rejections of claims 1—12 and 14—19 under § 103 are argued on common issues, with additional arguments presented for claims 7 and 14. App. Br. 5—12. We will address the issues in a similar way, using claim 1 as representative of the groups, and address the additional arguments for claims 7 and 14 separately. 35 U.S.C. §101 The Examiner finds that claims 1—12 and 14—19 are directed towards marketing and determining effectiveness of marketing, which are fundamental economic practices and/or methods of organizing human activity. See Ans. 3. The Examiner finds that the limitations of the claims do not amount to “significantly more” than an abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. See id. The Examiner additionally finds that the limitations are directed to instructions to implement an abstract idea on a computer, and require no more than a generic computer to 3 Appeal 2015-003261 Application 13/609,825 perform generic computer functions that are well-understood, routine, and conventional activities previously known to the industry. Id. The Appellants allege that the claims do not recite, and are not directed to, “marketing and determining effectiveness of marketing,” as the Examiner found. Reply Br. 3^4. The Appellants argue that, even if it is determined that the claims are directed to an abstract concept, the claims as a whole represent significantly more than the exception. Id. at 4. The Appellants point to the specific steps of the claims as representing more than marketing, and allege that the claims do not preclude others from utilizing different ways to market and making determinations of the effectiveness of marketing. Id. Additionally, the Appellants argue that the claims do not generically recite the use of the Internet, and require the use of radio broadcasting equipment and not a general purpose computer. Id. at 4—5. We find no reversible error with the Examiner’s findings. To provide context, 35 U.S.C. § 101 provides that a new and useful “process, machine, manufacture, or composition of matter” is eligible for patent protection. The Supreme Court has made clear that the test for patent eligibility under Section 101 is not amenable to bright-line categorical rules. See Bilski v. Kappos, 130 S. Ct. 3218, 3229 (2010). There are, however, three limited, judicially-created exceptions to the broad categories of patent-eligible subject matter in § 101: laws of nature; natural phenomena; and abstract ideas. See Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012). In Alice Corporation Pty, Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) {"Alice”), the Supreme Court reiterated the framework set forth previously in Mayo, “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355 (citation omitted). Under Alice, the first step of such analysis is to “determine whether the claims at issue are directed to one of 4 Appeal 2015-003261 Application 13/609,825 those patent-ineligible concepts.” Id. (citation omitted). If it is determined that the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination”’ to determine whether the additional elements ‘“transform the nature of the claim’ into a patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 1291, 1297). In other words, the second step is to “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. (citingMayo, 132 S. Ct. at 1294). With this context in mind, we evaluate the Examiner’s rejection of representative claim 1. Claim 1 requires the placement of a promotional good and determining the effectiveness of a marketing campaign, where the determination of the effectiveness of the marketing campaign may be accomplished by tracking the movement of the promotional good, which are steps that are clearly directed to marketing and the determination of the effectiveness of that marketing. See Claims App. 13; Spec. 111. We therefore find no reversible error with the Examiner’s findings that the claims are directed to marketing and determining effectiveness of marketing, which are fundamental economic practices and/or methods of organizing human activity and are, therefore, an abstract idea. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014). As to the second step of the Alice analysis, we are not persuaded by the Appellants’ arguments that the claims represent “significantly more” than the abstract idea exception. The Appellants point to the specific steps of the claims and the use of radio broadcasting equipment, but discuss them in a conclusory manner, failing to provide any additional explanation as to why they impart patentability such as unconventionality. Additionally, we are not persuaded by the 5 Appeal 2015-003261 Application 13/609,825 Appellants’ argument that the claims will not preempt the other effective techniques for different ways to market and determine the effectiveness of marketing. Although it may be true that there are other marketing methods that may be practiced, that issue is not dispositive as to whether the claims are patent eligible. SeeAriosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.”). Additionally, the Appellants’ argument that the use of radio broadcasting equipment, rather than a generic computer, imparts patentability is not persuasive because the Appellants fail to provide any support that the claimed radio is used in a way that differs from other known methods of transmission. We therefore sustain the Examiner’s rejection of claims 1—12 and 14—19 under § 101. 35U.S.C.§ 103 Claims 1—6, 8—12, and 15—19. The Appellants contend that the Examiner fails to provide prior art teaching of the claim limitation of “broadcasting information associated with the geolocation of the geocache via a radio station.” App. Br. 9. The Appellants also allege that the prior art fails to disclose the claim limitation “using the information related to movement of promotional items removed from the geocache to generate an estimate of a number of geocachers, within a geographic area associated with a sponsor, who listen to the radio broadcast station.” Id. at 9—11. More specifically, the Appellants allege that Sprogis teaches the use of RFID tags, but does not teach the “generation of an estimate” of listenership. Id. at 10 (citing Sprogis Tflf 4, 7, 32). The Appellants further allege that Anand also fails to disclose listenership of a radio station, and, moreover, the combination of all the prior art fails to disclose this limitation because there is no disclosure that the listenership is determined by information 6 Appeal 2015-003261 Application 13/609,825 collected by the RFID tags that may be returned to a store as a result of the interaction with a web page. Id. (citing Anand, 4:62—66, 5:28-42, 11:39-48). The Appellants assert that “[a] necessary premise of the [EJxaminer’s argument is that tracking the number of consumers at a retailer through the user of RFID teaches estimating a number of listeners to a radio broadcast station,” but that there is no link between the listeners to a radio station and the number of customers at a retailer. Id. at 10—11. We agree with the Examiner’s finding, which the Appellants also acknowledge, that distributing information via radio was well known. Ans. 4; Reply Br. 5. We also determine that Examiner’s finding that eHow discloses “broadcasting” geocache information on a website is reasonable, and also that it would have been obvious to one of ordinary skill in the art to use another type of distribution, such as radio. Final Act. 3^4; Ans. 4—5. Turning to the issue of the claim limitation, “using the information related to movement of promotional items removed from the geocache to generate an estimate of a number of geocachers,. . . who listen to the radio broadcast station,” the Specification explains that the determination of an “estimate” of who “listen[s] to a radio station,” is by the use of a tracking device on the consumer good associated with a promotion to “determine the number of geocachers in their respective geographic area who listen to the particular radio station or website, enabling the new restaurant to more effectively target their advertising budget.” Spec. 147. This is reinforced by claim 1 ’s recital that the “determining includes using the information related to the movement of promotional item[],” as well by the claim’s previous limitation that claims “determining” “effectiveness of a marketing campaign based on the information related to movement of the promotional good.” Claims App. 13. Both the claim language itself and the Specification support that, as claimed, the “determin[ation]” of an “estimate” of 7 Appeal 2015-003261 Application 13/609,825 “who listen[s]” is made by using the information related to the movement or the tracking of the location of the promotional item itself. The Examiner finds that Sprogis teaches attaching RFID tags to products for tracking purposes, which uses GPS technology for locating items, and, similarly, the Specification discloses the use of RFID as a tracking device for promotional goods. See Final Act. 3^4 (citing Sprogis 4, 7, 32); Spec. 148. The Examiner also finds that Anand discloses tracking the number of consumers at a retailer using an RFID sensor, and measuring the effectiveness of advertising. Id. at 4 (citing Anand, 4:62—66, 5:28-42, 11:39-48). The Appellants argue limitations not appearing in the claims by alleging that there needs to be a link established between the listeners to a radio station and the number of customers at a retailer. In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“appellant’s arguments fail from the outset because . . . they are not based on limitations appearing in the claims.”). However, as discussed, estimating “who listens” requires only the use of information related to movement of promotional items, which the prior art discloses. The Appellants additionally contend that the eHow reference is not prior art because its date, based on a URF from the Wayback Machine archival website, is not reliable or accurate based on the Terms of Use of the website. App. Br. 11-12. “Whether [a] . . . document qualifies as a ‘printed publication’ ... is a legal conclusion based on underlying factual determinations.” Cooper Cameron Corp. v. Kvaerner Oilfield Prods., Inc., 291 F.3d 1317, 1321 (Fed. Cir. 2002). Here, MPEP § 2128 provides guidance that “[pjrior art disclosures on the Internet or on an on-line database are considered to be publicly available as of the date the item was publicly posted.” The Appellants do not argue that the archive date of the eHow reference was generated other than in the normal course of operation of this 8 Appeal 2015-003261 Application 13/609,825 site. Further, there is no indication that this date was arbitrarily assigned or that the origin of the document itself is suspect, and, therefore, we do not find the Appellants’ argument on the issue of the eHow reference date to be persuasive. Thus, we sustain the obviousness rejection of claims 1—6, 8—12, and 15—19. Claims 7 and 14. The Appellants argue that the prior art does not disclose the “circle of influence” limitation of claims 7 and 14, which more fully recites, “limiting an area in which the information is broadcast by utilizing circle of influence information to match a geocacher’s location with a general area of the marketing campaign.” App. Br. 11; Claims App. 14. We find no error with the Examiner’s findings that Anand’s teachings of optimizing advertisement delivery for different areas with the use of traffic data equates to the claim limitation, in light of the Specification’s disclosure that a “circle of influence” refers to specific geographic areas. Ans. 7 (citing Anand 4:62—66, 5:28-42, 11:39-48); Spec. | 51. We therefore sustain the obviousness rejection of claims 7 and 14. SUMMARY We affirm the Examiner's rejection of claims 1—12 and 14—19 under 35U.S.C. § 101. We affirm the Examiner's rejection of claims 1—12 and 14—19 under 35U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 Copy with citationCopy as parenthetical citation