Gurvinder Singh

Patent Trials and Appeals Board

Aug 27, 2019

11977001 - (D) (P.T.A.B. Aug. 27, 2019)

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.
11/977,001 10/22/2007 Gurvinder Singh SAMS05-18945 2190
135249 7590 08/27/2019
Docket Clerk - SEC
P.O. Drawer 800889
Dallas, TX 75380
EXAMINER
CARVALHO, ERROL A
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/27/2019 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):
USPTO@dockettrak.com
munckwilson@gmail.com
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GURVINDER SINGH
____________

Appeal 2018-007114
Application 11/977,001
Technology Center 3600
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
GARTH D. BAER, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 68–73, 75–85, and 87, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 Appellant identifies Samsung Electronics Co., Ltd. as the real party in
interest (App. Br. 4).
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THE INVENTION
Appellant’s claimed invention is directed to providing “non-
spamming dissemination of environment and proximity aware information
and advertisements to a user of a mobile device” (Abstract).
Independent claim 68, reproduced below, is representative of the
subject matter on appeal:
68. A method of non-spamming dissemination of proximity
aware information to a user of a portable device, comprising:

requesting, by a portable device, solicitations associated
with services or products provided by a plurality of vendors in a
vicinity of a plurality of base station devices from the plurality
of base station devices by using a Bluetooth wireless protocol;

receiving, by the portable device, the solicitations
associated with services or products provided by the plurality of
vendors in the vicinity of the plurality of base station devices
from the plurality of base station device, wherein the portable
device receives an uncategorized solicitation including a uniform
resource locator from each of the plurality of base station devices
through the Bluetooth wireless protocol;

filtering, by the portable device, the solicitations
associated with services or products provided by the plurality of
vendors in the vicinity of the plurality of base station devices and
received from the plurality of base station devices according to
filtering criteria configured in the portable device;

categorizing, by using a client application on the portable
device, the filtered solicitations into multiple categories;

displaying, by the portable device, the filtered solicitations
on a screen formed in the portable device, wherein the filtered
solicitations for the services or products provided by the plurality
of vendors in the vicinity of the plurality of base station devices
are displayed as categorized into the multiple categories by using
the client application on the portable device;
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receiving, by the portable device, an input for selecting a
solicitation from the filtered solicitations displayed on the screen
formed in the portable device;

receiving, by the portable device, additional detailed
advertising information corresponding to the selected solicitation
from a data server through a wireless internet service by using
the uniform resource locator included in the selected solicitation,
wherein the additional detailed advertising information received
from the data server through the wireless internet service
corresponds to one of the solicitations received from the plurality
of base station devices through the Bluetooth wireless protocol;
and

displaying, by the portable device, the additional detailed
advertising information corresponding to the selected solicitation
on the screen formed in the portable device.

THE REJECTIONS
The Examiner made the following rejections:
Claims 68–73, 75–85, and 87 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. Final Act. 3.
Claims 68–73, 75–85, and 87 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more. Final Act. 4.
Claims 68–70, 73, 76, 83–85, and 87 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lehikoinen (US 2005/0096013 A1; May
5, 2005) and Chu (US 7,822,661 B1; Oct. 26, 2010). Final Act. 7.
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Claims 71, 77, and 80 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lehikoinen, Chu, and Anupam (US 7,756,534 B2;
July 13, 2010). Final Act. 11.
Claims 72, 75, 78, 81, and 82 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lehikoinen, Chu, Anupam, and Tingo (US
2007/0105536 A1; May 10, 2007). Final Act. 11.

ISSUES
The issues are whether the Examiner erred in finding that:
1. claims 68–73, 75–85, and 87 fail to comply with the written
description requirement;
2. claims 68–73, 75–85, and 87 are directed to ineligible subject matter;
and
3. the combination of Lehikoinen and Chu teaches or suggests the
limitation of “categorizing, by using a client application on the portable
device, the filtered by solicitations into multiple categories” as recited in
independent claim 68, and similarly recited in independent claims 79 and 87.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make are deemed waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).

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Written Description
Independent claim 68 requires that (a) “the portable device receives
an uncategorized solicitation including a uniform resource locator from
each of the plurality of base station devices through the Bluetooth wireless
protocol” and (b) “receiving, by the portable device, additional detailed
advertising information corresponding to the selected solicitation from a data
server through a wireless internet service by using the uniform resource
locator included in the selected solicitation” (emphasis added).
Regarding limitation (a), the Examiner finds no support for the
“uniform resource locator” in the portion of the disclosure which states that
[t]he mobile device user 701 may then have the option to
ignore, deny, or investigate the provided information and
advertisements. The investigation entails downloading a series
of media files such as video files, audio files, image files, etc.
from the stand-alone base station devices 703, or looking up a
uniform resource locator (URL) on the internet.
(Ans. 4, quoting Spec. 18:4–8), because
[t]he cited paragraph discloses that a user of the invention
wanting more information may be able to retrieve the
information by looking up a URL on the internet, not that an
uncategorized solicitation including a uniform resource locator
from each of the plurality of base station devices is received
through Bluetooth wireless protocol by the portable device.

(Ans. 4). The Examiner further finds that no support for the “uncategorized
information” in the portion of the disclosure stating that
[t]he client application categorizes the transferred information
into multiple categories. The categories are listed and displayed
on a graphical user interface of the client application. The
mobile device user selects one or more of the categories in the
client application. The client application then communicates
with the base station sensor devices to receive business
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information and advertisements of the vendors based on the
selected categories.

(Ans. 4–5, quoting Spec. 3:1–7 (emphasis added by the Examiner)), as the
Examiner finds this portion of the disclosure “clearly shows that information
and advertisements are selected based on being categorized prior to being
received on the portable device” (Ans. 5).
Appellant first argues that the paragraph containing the portion of the
disclosure immediately quoted above, and in particular the portion stating
“[t]he client application categorizes the transferred information into multiple
categories” (Spec. 3:1–2), “clearly states that a client application on a mobile
device ‘categorizes the transferred information into multiple categories,’
clearly implying that the information as received is not ‘categorized’”
(Reply Br. 3–4, quoting Spec. 3:1–11).
We agree with Appellant. The portion of the disclosure at issue and
quoted above establishes the client application first receives uncategorized
information that is categorized by the client application.
Regarding the Examiner’s finding that no “uniform resource locator”
is received by the portable device in the uncategorized information,
Appellant contends
[t]he phrase “looking up a uniform resource locator” comprises
part of a sentence elaborating on the concept of “investigation”
introduced in the previous sentence. Further, the previous
sentence states that a user can “investigate” “information and
advertisements” provide[d] to a “mobile device”

(Reply Br. 5) and one of ordinary skill would read the paragraph of the
disclosure and “reasonably conclude from the context that a ‘URL’ was a
type of ‘information and advertisements’ received at a mobile device which
a user could ‘investigate’” (Reply Br. 5–6, citing Spec. 3:1–11).
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We agree with Appellant. The portion of the disclosure Appellant
cites as supporting the claimed URL (see App. Br. 8, fn. 7, citing Spec.
Spec. 15:1–11, 18:1–14, and 30:28–31:4) explicitly states that a “flyer” may
be used to “present content to the mobile device user” (Spec. 30:17), that
“[t]he flyer may also include uniform resource locators (URLs)” (Spec.
30:28), and that “the base station sensor device” may “provide WAP based
URLs in Bluetooth messages” (Spec. 31:3–4). Thus, upon reading the
complete disclosure, one skilled in the art would reasonably conclude that
the inventor had possession of the limitation “the portable device receives an
uncategorized solicitation including a uniform resource locator from each of
the plurality of base station devices through the Bluetooth wireless
protocol,” because the description of the flyer, when read in conjunction
with the portions of the disclosure extensively quoted above, describe an
example of an initial uncategorized solicitation received by the mobile
device and containing a URL that the user may “look up” or activate.
Regarding limitation (b), the Examiner’s finding of no written
description support is based on the Examiner’s finding that
[o]ne of ordinary skill in the art knows that looking up a URL is
indicative of searching or entering/typing an internet address in
order to navigate to a web site. Thus, if a URL is already
provided in the data/solicitation one does not have to look it up.

(Ans. 5). As shown above, one skilled in the art would reasonably conclude
that the inventor had possession of an uncategorized solicitation containing
an URL, thus contradicting the Examiner’s finding used to make the
rejection based on limitation (b).
Accordingly, we are constrained by the record to reverse the
Examiner’s written description rejection of independent claim 68, as well as
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independent claims 79 and 87 commensurate in scope, and dependent claims
69–73, 75–78, and 80–85.
Patent Eligibility
The Examiner determines claim 68 is patent ineligible under 35
U.S.C. § 101, because “the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more.” Final Act. 4; see also Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014) (describing the two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts”).
After the docketing of this appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Memorandum”). Pursuant to the Guidance “Step 2A,” the office
first looks to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice,
or mental processes); and
(2) Prong Two: additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then (pursuant to the
Guidance “Step 2B”) look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
Appellant argues that independent claim 68 recites a “communication
method” that “leverages the use of multiple wireless communication
protocols” (App. Br. 27) because the portable device first “initiates
communications” by using “a Bluetooth wireless protocol” (App. Br. 26
(comment to claim 68)), then the portable device “receives a communication
. . . through the Bluetooth protocol” (App. Br. 26 (comment to claim 68))
and then receives “a further communication” from “a data server through a
wireless internet service” (App. Br. 27, citing claim 68).
Pursuant to Step 2A, Prong One of the Guidance, the Office first looks
to “evaluate whether the claim recites a judicial exception, i.e., an abstract
idea” (Memorandum at 54). Here, claim 68 recites
receiving, by the portable device, the solicitations
associated with services or products provided by the plurality
of vendors in the vicinity of the plurality of base station devices
from the plurality of base station device, wherein the portable
device receives an uncategorized solicitation including a
uniform resource locator,
. . . . receiving, by the portable device, additional detailed
advertising information corresponding to the selected
solicitation from a data server through a wireless internet
service by using the uniform resource locator included in the
selected solicitation . . . .
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(Emphasis added). These limitations recite steps of “marketing or sales
activities or behaviors,” and the Guidance provides such steps are examples
of the abstract concept of “[c]ertain methods of organizing human activity”
(Memorandum at 52).
Pursuant to Step 2A, Prong One of the Guidance, the Office first looks
to “evaluate whether the claim recites a judicial exception, i.e., an abstract
idea” (Memorandum at 54). Accordingly, claim 1 “recites a judicial
exception . . . [and] requires further analysis in Prong Two” of the Guidance.
Id. at 54.
Pursuant to Step 2A, Prong Two, we are persuaded by Appellant that
claim 68 is not directed to an abstract idea. See App. Br. 26–27. That is, we
determine claim 68 integrates the recited judicial exception into a practical
application. See Memorandum at 54. Claim 68 additionally recites
the portable device receives an uncategorized solicitation
including a uniform resource locator from each of the plurality
of base station devices through the Bluetooth wireless protocol,
. . . .
receiving, by the portable device, additional detailed
advertising information corresponding to the selected
solicitation from a data server through a wireless internet
service by using the uniform resource locator included in the
selected solicitation, wherein the additional detailed advertising
information received from the data server through the wireless
internet service corresponds to one of the solicitations received
from the plurality of base station devices through the Bluetooth
wireless protocol . . . .

(Emphasis added). Thus the claim additionally recites that information is
provided to the user through two communication protocols, thereby
integrating the exception into a practical application of the exception. By
using two protocols, information can be stored at a data server that could not
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otherwise be stored at the base station sensor device, because the base
station sensor device has “minimal or no flash memory” (Spec. 31:2–4).
These additional elements use the judicial exception in a meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception.
Accordingly, we are persuaded that “the exception is so integrated, [so
that] the claim is not directed to a judicial exception (Step 2A: NO) and is
eligible” (Memorandum at 54). We do not sustain the Examiner’s patent
eligibility rejection of independent claim 68, independent claims 79 and 87
which recite similar limitations, or dependent claims 69–73, 75–78, and 80–
85.
Obviousness
Appellant argues both Lehikoinen and Chu fail to disclose or suggest
“categorizing, by using a client application on the portable device, the
filtered solicitations into multiple categories” (App. Br. 36, 38).
Particularly, Appellant contends “Lehikoinen describes a ‘beacon’ as the
actor that transmits ‘categories of information’ to a mobile station (MS) in
response to a query from the MS” (App. Br. 37, citing Lehikoinen ¶ 36), and
Chu’s “administrative rules” are not “performed at a portable device” (App.
Br. 39, citing Chu 20:27–33, 38:13–23).
We agree with Appellant. The Examiner first finds that “[u]nder the
broadest reasonable interpretation the disclosure of using functionality on
the MS, to select the category of desired information [as in Lehikoinen]
reads on categorizing, by using a client application on the portable device”
(Ans. 9, citing Lehikoinen ¶ 36). The Examiner further finds that
“[a]lternatively, Chu discloses filtering displayed information,” that “the
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requests for information submitted by users can invoke the system to
dynamically create one or more groups of listings,” and “a user interface can
be used . . . so that the user can make category selections” (Ans. 9, citing
Chu 23:64–67, 14:43–47).
However, the cited portion of Lehikoinen expressly states that “the
user will select, using functionality on the MS, the category of desired
information” (Lehikoinen ¶ 36), implying the category has already been
determined by the beacon, affording the user no choice in editing a category
already determined. In the Examiner’s alternate construction in which Chu
teaches or suggests the claimed categorizing, Chu clearly demonstrates that
administrative rules and category decisions are made at the system level by
system 100 and reside on a server (and thus not made by the user, who “can
make category selections”) (Chu 26:43–44; see also Chu 20:23–25, 26:39–
41, and Fig. 2).
Accordingly, we are constrained by the record to reverse the
Examiner’s obviousness rejections of independent claim 68 and independent
claims 79 and 87, as well as dependent claims 69–73, 75–78, and 80–85.

CONCLUSION
The Examiner erred in finding that:
1. claims 68–73, 75–85, and 87 fail to comply with the written description
requirement;
2. claims 68–73, 75–85, and 87 are directed to ineligible subject matter; and
3. the combination of Lehikoinen and Chu teaches or suggests the limitation
of “categorizing, by using a client application on the portable device, the
filtered by solicitations into multiple categories” as recited in
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independent claim 68, and similarly recited in independent claims 79 and
87.

DECISION
The Examiner’s decision rejecting claims 68–73, 75–85, and 87 as
failing to comply with the written description requirement is reversed.
The Examiner’s decision rejecting claims 68–73, 75–85, and 87 as
directed to non-statutory subject matter is reversed.
The Examiner’s decision rejecting claims 68–73, 75–85, and 87 as
obvious is reversed.

REVERSED