John Newman. Faith et al.Download PDFPatent Trials and Appeals BoardOct 21, 201913928833 - (D) (P.T.A.B. Oct. 21, 2019) 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. 13/928,833 06/27/2013 John Newman Faith 034250-0437063 9384 909 7590 10/21/2019 Pillsbury Winthrop Shaw Pittman, LLP PO Box 10500 McLean, VA 22102 EXAMINER JOHNSON, ROBERT C ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 10/21/2019 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): docket_ip@pillsburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOHN NEWMAN FAITH, EITHAN ZILKHA, and CHRISTOPHER MATTHEW DUTY ____________ Appeal 2018-000295 Application 13/928,833 Technology Center 3600 ____________ Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–29. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies RetailMeNot, Inc. as the real party in interest. Appeal Br. 2. Appeal 2018-000295 Application 13/928,833 2 ILLUSTRATIVE CLAIM 1. A computer-implemented method for determining relevant offers for a geofenced geographic area with a server system while conserving battery power in a mobile user device with which the server system communicates, the method comprising: receiving, via a network, with the server system, from a native application executing on the mobile user device, a request for geofences in an area of the mobile user device, the request comprising a geolocation of the mobile user device determined based on wireless signals received by the mobile user device; selecting a plurality of local geofences, via a processor, from a database of geofences, based on proximity between the geofences and the geolocation of the mobile user device; sending, via the network, the plurality of local geofences to the native application executing on the mobile user device; receiving, via the network, from the native application executing on the mobile user device, a request for offers, the request comprising a geofence identifier associated with a geofence among the plurality of local geofences previously sent to the mobile user device, the geofence defining a perimeter corresponding to one or more retail stores, the request arising from a program different from the native mobile application executing on the mobile user device detecting traversal of the geofence by the mobile user device; identifying, via a processor, one or more merchants based on an association of the one or more merchants with the geofence; identifying, via a processor, a plurality of candidate offers associated with the one or more merchants; selecting, via a processor, one or more offers based on ranking the plurality of candidate offers; and sending, via the network, the one or more selected offers to the mobile user device. Appeal 2018-000295 Application 13/928,833 3 REFERENCES The Examiner relies upon the following references: Roberts et al. US 2006/0004631 A1 Jan. 5, 2006 (hereinafter “Roberts”) Ramer et al. US 2009/0222329 A1 Sept. 3, 2009 (hereinafter “Ramer”) Chipman et al. US 2010/0121710 A1 May 13, 2010 (hereinafter “Chipman”) Guday et al. US 2011/0093318 A1 April 21, 2011 (hereinafter “Guday”) REJECTIONS I. Claims 1–4, 6–11, 13–19, 21–27, and 29 are rejected under 35 U.S.C. § 102(b) as anticipated by Chipman. II. Claims 5 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Chipman, Ramer, and Roberts. III. Claims 20 and 28 are rejected under 35 U.S.C. § 103(a) as unpatentable over Chipman and Guday. RELATED CASES At the time the Appeal Brief was filed in the present case, Notices of Appeal had been filed in at least the following related cases: Application 13/836,808 (Appeal 2017-006744) and Application 13/836,110 (Appeal 2017-002791). The Appellant failed to cite these related Appeals as required by 37 C.F.R. § 41.37(c)(ii). See Appeal Br. 2. We remind the Appellant and counsel to review prior and pending proceedings before the Board, as well as any other qualifying matters, so as to ensure that all related cases are identified. Representations to the Office are subject to requirements of, e.g., 37 C.F.R. §§ 1.56, 11.18, and 11.303. Appeal 2018-000295 Application 13/928,833 4 FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Among the arguments presented, the Appellant contends that independent claim 1 was rejected in error, because Chipman does not teach the following recited features: selecting a plurality of local geofences, via a processor, from a database of geofences, based on proximity between the geofences and the geolocation of the mobile user device; [and] sending, via the network, the plurality of local geofences to the native application executing on the mobile user device. See Appeal Br. 8–9, Reply Br. 5. The Specification defines “geofence,” stating: “the term ‘geofence’ refers to a virtual perimeter for a real-world geographic area.” Spec. ¶ 74. According to the Examiner, Chipman teaches the claim features, identified above, in ¶¶ 28, 36–38, 41, 43, and 48. Final Act. 3; Answer 5–6. Yet, the identified portions of Chipman do not disclose the “selecting” and “sending” of a “plurality of local geofences” to a “mobile user device,” as recited in claim 1. Rather, the cited portions of Chipman show the selection of individual vendors (according to particular requirements) — but not the claimed “selecting a plurality of local geofences . . . from a database of geofences” or “sending . . . the plurality of local geofences to . . . the mobile user device.” For example, Chipman’s paragraph 28 states, in part: [D]ata is received from a user via an electronic communication device . . . [that] designates a product or service of interest to the user, and a desired geographic area. At step 204, one or more vendors are selected as possibly being able to provide the Appeal 2018-000295 Application 13/928,833 5 designated product or service, and as being located in the desired geographic area. Chipman ¶ 28. See also id. ¶ 41 (“Upon receiving this information from the user’s communication device, at step 204 the server searches the database of vendors which have registered and selects those who most closely match the user’s request and which are located within the designated geographic area.”) As the Appellant explains: Chipman does mention “geographic areas” (e.g., Chipman, para. 28), but the areas are not geofences sent to a mobile computing device. The claims specify that the geofences are areas for which the mobile device detects traversal. In contrast, Chipman’s server (not the mobile device) compares geographic areas to the mobile device geolocation. Chipman, para. 28. As such, there is no need to send the “geographic areas” of Chipman to the mobile user device, let alone a plurality of such areas, or use those areas as geofences for which the mobile user device detects traversals. Appeal Br. 9. The Appellant’s position persuades us of error in the rejection of claim 1. The foregoing analysis also applies to independent claim 8, which has the identical claim language discussed above, and which the Examiner addresses identically. See Final Act. 6. The foregoing analysis also applies to independent claims 14 and 22, which, according to the Appellant, recite “similar features” to those identified in claim 1 — although “recited . . . from the perspective of a mobile computing device.” Appeal Br. 7 n.1. This corresponding claim language, of independent claims 14 and 22, recites: Appeal 2018-000295 Application 13/928,833 6 receiving, with the native application of the mobile user device, a plurality of responsive geofences from a remote server and storing the plurality of geofences in memory of the mobile user device, the plurality of geofences being selected from a database of geofences accessible to the remote server. The Final Office Action indicates that paragraph 87 of Chipman teaches these features of claims 14 and 22. Final Act. 9, 13. Chipman’s paragraph 87 states: Many other features may be added using the above described capabilities of the present invention. One such feature that uses the GPS capability of some user communication devices is proximity alerts allowing for the localized presentation of advertisements. This feature allows users to register their interest in desired categories by registering with the system. The system may then determine the location of registered users either on a continuous basis, timed interval, or upon an on-demand request from a user to deliver advertisements in either a server “push” or a server “pull” manner. Similarly, vendors may register their desire to present offers to users in their area. When the system determines the location of a specific user, it then checks to see if any vendors in that area have registered offers that they wish presented, and, if so, whether the offers are in any of the categories in which the user has expressed interest. If all of these conditions are met, the user will then receive offers from vendors in their vicinity in the designated categories. In this manner, vendors may send offers to users who have agreed to receive them, rather than having to wait for a user to submit a request as described above. Chipman ¶ 87. Although Chipman’s system, as described in paragraph 87, determines that a user is “in the[ ] area” of a vendor (id.), this portion of Chipman does not disclose techniques corresponding to either the claimed “plurality of geofences being selected from a database of geofences” or the claimed “receiving, with the native application of the mobile user device, a plurality Appeal 2018-000295 Application 13/928,833 7 of responsive geofences from a remote server,” as recited in claims 14 and 22. The Examiner’s Answer does not explain the basis for mapping the identified claim language of claims 14 and 22 to paragraph 87 of Chipman, or any other portion thereof. The rejections of the dependent claims rely upon the Examiner’s position that Chipman teaches the claim features discussed above. See Final Act. 2–19. Therefore, we do not sustain the rejection of claims 1–4, 6–11, 13–19, 21–27, and 29 under 35 U.S.C. § 102(b). In addition, we do not sustain the rejection of claims 5, 12, 20, and 28 under 35 U.S.C. § 103(a). CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–4, 6–11, 13–19, 21– 27, 29 102(b) Chipman 1–4, 6–11, 13–19, 21– 27, 29 5, 12 103(a) Chipman, Ramer, and Roberts 5, 12 20, 28 103(a) Chipman and Guday 20, 28 Overall Outcome 1–29 REVERSED Copy with citationCopy as parenthetical citation