Ex Parte Yoo

Patent Trials and Appeals Board

Jun 10, 2019

13094476 - (D) (P.T.A.B. Jun. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/094,476
17169 7590
Stephen M. De Klerk
MatterLight IP
2033 Gateway Place
5th Floor
San Jose, CA 95110
04/26/2011
06/12/2019
FIRST NAMED INVENTOR
David Yoo
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.
BOKU-P040 1720
EXAMINER
VETTER, DANIEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/12/2019 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):
ariana@matterlightip.com
s tephen @matterlightip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID Y00 1
Appeal2017-011506
Application 13/094,476
Technology Center 3600
Before CARL W. WHITEHEAD JR., JASON V. MORGAN and
ADAM J. PYONIN, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1, 2 and 6-15
under 35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under
35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Boku, Inc. See Appeal
Brief 3.
Appeal2017-011506
Application 13/094,476
Introduction
The invention is directed to "automat[ing] certain social networking
activities in response to payments processed via mobile communications."
Specification ,r 11.
Illustrative Claim
1. A computer-implemented method, comprising:
storing a location database that includes locations of retail
terminals;
receiving, in a computing device, a charge request from a retail
terminal of a merchant, the charge request being a request to make a
payment and includes a phone number of a user;
communicating, by the computing device, with a mobile phone
at the phone number to confirm the payment;
processing, by the computing device, the payment using funds
identified using the phone number by paying the merchant;
determining, by the computing device in response to receiving
the charge request from the retail terminal, a location of the retail
terminal that transmits the charge request and the merchant at the
location from the location database based on the charge request;
determining, by the computing device, at least one merchant,
other than the merchant associated with the payment, in the location
database that is in a vicinity of the merchant associated with the
payment, wherein the computing device is a digital data processing
system that determines the at least one merchant other than the
merchant associated with the payment by digitally determining
merchants that are in the vicinity of the merchant associated with the
payment as opposed to merchants that are not in the
vicinity of the merchant associated with the payment; and
communicating, by the computing device with a third party
social networking site, on behalf of the user based on the payment
by checking the user into the at least one merchant, other than the
merchant associated with the payment, identified in the social network
site that is in the vicinity of the location, wherein the checking into the
one or more merchants is in response to the processing of the
payment.
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Appeal2017-011506
Application 13/094,476
Rejections on Appeal
Claims 1, 2 and 6-15 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement because the
claims contains subject matter which was not described in the specification
in such a way as to reasonably convey to one skilled in the relevant art that
the inventor, at the time the application was filed, had possession of the
claimed invention. Final Action 3--4; Answer 2.
Claims 1, 2 and 6-15 stand rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the applicant regards as the invention. Final Action 4; Answer
2.
Claims 1, 2 and 7-15 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kapur (U.S. Patent Application Publication 2010/0057623
Al, published March 4, 2010), Gillenson (U.S. Patent Application
Publication 2010/0250359 Al; published September 30, 2010), Blank (U.S.
Patent 8,554,670 Bl; issued October 8, 2013) and Tom Easton, Hacking
Your Location With Facebook Places, SecureState 1--4, archived at
https://web.archive.org/web/20150418141923/http://blog.securestate.com/
hacking-your-location-with-facebook-places/ (2010) ("Easton"). Final
Action 5-9; Answer 2.
Claim 6 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kapur, Gillenson, Blank, Eston and Smith (International
Publication WO 2010/110966; published September 30, 2010). Final Action
9; Answer 2.
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Appeal2017-011506
Application 13/094,476
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed March 29, 2017), the Final Action
(mailed November 1, 2016) and the Answer (filed June 20, 2017), for the
respective details.
35 U.S.C. § 112(a) rejection
The Examiner determines, "There is no written support for 'digitally
determining merchants that are in the vicinity of the merchant associated
with the payment as opposed to merchants that are not in the vicinity of the
merchant associated with the payment.'" Answer 3 ( emphasis omitted).
Appellant provides a comparison between the disputed limitation and an
excerpt from paragraph 285 of the Specification. 2 Appeal Brief 7. Upon
review of paragraph 285, the Examiner finds "there is no support for the
computer specifically taking into consideration 'merchants that are not in the
vicinity of the merchant associated with the payment' as part of the
determination under§ 112(a) (as required by the claim), and the rejection
was not in error." Answer 3. Based upon Appellant's comparison (Appeal
Brief 7), the other portions of the Specification Appellant cites to as
supporting the disputed recitation (Appeal Brief 7 (further citing
Specification ,r,r 249, 287, Figure 26)), and the claims as originally filed
2 "Routines executed to implement the embodiments may be implemented as
part of an operating system or a specific application, component, program,
object, module or sequence of instructions referred to as 'computer
programs.' The computer programs typically include one or more
instructions set at various times in various memory and storage devices in a
computer, and that, when read and executed by one or more processors in a
computer, cause the computer to perform operations necessary to execute
elements involving the various aspects." Specification ,r 285.
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Appeal2017-011506
Application 13/094,476
(Specification 51-54), we agree with the Examiner's findings that there is no
support for the disputed claim limitation. See Answer 3; see also Examining
Computer-Implemented Functional Claim Limitations for Compliance with
35 U.S.C. 112, 84 Fed. Reg. 57, 61 (Jan. 7, 2019) ("the specification must
provide a sufficient description of an invention, not an indication of a result
that one might achieve"). The Examiner's findings in the Answer are not
disputed because a Reply Brief was not filed. Accordingly, we sustain the
35 U.S.C. § 112(a) rejection of claims 1, 2 and 6-15.
35 U.S.C. § 112(b) rejection
The Examiner finds:
The claims require "digitally determining merchants that
are in the vicinity of the merchant." What constitutes the
"vicinity" is not defined by the disclosure, which in the only
relevant passage goes into no greater detail of this element than
the claims themselves (see ,r 0249). The plain and ordinary
meaning of "vicinity" is the nearby area. As it is not sufficiently
clear how nearby the merchant must be to meet the language of
the claim, the scope is unclear.
Answer 3.
Appellant contends, "[t]he Examiner's argument that 'vicinity' is a
relative term that could render a claim indefinite can hold credence in the
real world," however with computers, "[s]omething is in or it is out.
Computers do not have the ability to say that something is far on one day
and the next day change their mind to say that something is near." Appeal
Brief 7-8. Appellant further contends, "In the present example, a computer
will decide whether a merchant location is in or out of a vicinity. Such a
decision may be made using various factors that are beyond the scope of the
discussion for this patent application" and"[ u ]ltimately, certain merchants
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Appeal2017-011506
Application 13/094,476
will be categorized as in the vicinity and other merchants will be categorized
as not in the vicinity." Appeal Brief 8.
We do not find Appellant's argument persuasive and agree with the
Examiner's findings. The claim is indefinite because it is not clear what
constitutes in the vicinity and Appellant's position that it is the computer that
determines the boundaries of what constitutes in the vicinity does not address
the issue of the claims indefiniteness. See M.P .E.P. § 2173 ("It is of utmost
importance that patents issue with definite claims that clearly and precisely
inform persons skilled in the art of the boundaries of protected subject
matter. Therefore, claims that do not meet this standard must be rejected
under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph as
indefinite."). Accordingly, we sustain the 35 U.S.C. § 112(b) rejection of
claims 1, 2 and 6-15.
35 U.S.C. § 103(a) rejections
Appellant contends that "Eston does not disclose checking in to
multiple merchants as claimed." Appeal Brief 10. Appellant further
contends:
Eston, in the sections referred to by the Examiner,
describes a user who attempts to check into two merchants that
are geographically too far away for the person to realistically
travel from one of the merchants to the other within a given
amount of time. Claim 1 includes the use of a computing device
to check the user in to multiple merchants. At no point does
Eston disclose such a computing device as claimed because
Eston only discloses the checking in by a user using their mobile
device.
Appeal Brief 10 ( emphasis added).
The Examiner finds:
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Appeal2017-011506
Application 13/094,476
Eston discloses checking the user into multiple nearby merchants
in a vicinity of one another other than where the user is currently
located as opposed to merchants that are not in the vicinity of one
another (pgs. 2-3). It would have been prima facie obvious to
one having ordinary skill in the art to incorporate this feature for
the same reason it is useful in Eston-namely, to take advantage
of merchant promotions for checking in (pg. 1) without having
to physically visit the location, and because checking in can be
limited by the distance of the user's other recent location
check-ins (pg. 3).
Final Action 7.
The disputed claim 1 limitation is reproduced below:
determining, by the computing device, at least one
merchant, other than the merchant associated with the payment,
in the location database that is in a vicinity of the merchant
associated with the payment, wherein the computing device is a
digital data processing system that determines the at least one
merchant other than the merchant associated with the payment
by digitally determining merchants that are in the vicinity of the
merchant associated with the payment as opposed to merchants
that are not in the vicinity of the merchant associated with the
payment.
The disputed limitation does not require checking in with multiple
merchants as Appellant contends. See Appeal Brief 10.
Claim 1 's subsequent limitation recites:
communicating, by the computing device with a third
party social networking site, on behalf of the user based on the
payment by checking the user into the at least one merchant,
other than the merchant associated with the payment, identified
in the social network site that is in the vicinity of the location,
wherein the checking into the one or more merchants is in
response to the processing of the payment.
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Application 13/094,476
Upon review, we find that the subsequent limitation also does not
require checking the user into multiple merchants because the computing
device checks the user into one or more merchants. Accordingly, the
subsequent limitation would read upon checking a user into one merchant
other than the merchant associated with the payment. Consequently, we do
not find Appellant's argument persuasive because it is not commensurate
with the scope of the claim 1 because the claim does not require checking
into multiple merchants as Appellant contends. We sustain the obviousness
rejection of claim 1, as well as claims 2 and 6-15 not separately argued with
distinction. See Appeal Brief 10-11.
DECISION
The 35 U.S.C. § 112(a) rejection of claims 1, 2 and 6-15 is sustained.
The 35 U.S.C. § 112(b) rejection of claims 1, 2 and 6-15 is sustained.
The 35 U.S.C. § 103(a) rejections of claims 1, 2 and 7-15 are
sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
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