John Ryan. Caldwell

Patent Trials and Appeals Board

Sep 9, 2019

14936677 - (D) (P.T.A.B. Sep. 9, 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.
14/936,677 11/09/2015 John Ryan Caldwell 3552.2.13US2 1069
136265 7590 09/09/2019
Kunzler, PC. - MX
50 West Broadway
10th Floor
Salt Lake City, UT 84101
EXAMINER
BRADY, MARIE P.
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/09/2019 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@kunzlerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JOHN RYAN CALDWELL
________________

Appeal 2018-003473
Application 14/936,677
Technology Center 3600
________________

Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and
JAMES B. ARPIN, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–13, 18–22, and 24–30.1 App. Br. 1. These
claims stand rejected under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter. Final Action mailed June 6, 2017 (“Final Act.”) 4–
6. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies MX Technologies, Inc. as the real party in interest.
Appeal Brief filed November 6, 2017 (“App. Br.”) 2.
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CLAIMED SUBJECT MATTER
Appellant describes the subject matter of the rejected claims as
follows:
Apparatuses, system, methods, and computer program
products are presented for presenting content based on
transaction data. A selection module selects a user for an offer
in response to the user’s financial transaction data satisfying a
transaction metric associated with the offer. A location module
determines a target location for an offer based on a user’s
financial transaction data. A location module monitors location
data from one or more sensors for a user relative to a target
location. An offer module dynamically provides an offer to a
user in response to monitored location data from one or more
sensors satisfying a target location.
Abstract.
Independent claim 1 represents the appealed claims.2 It is reproduced
below with formatting modified for clarity and with emphasis added to the
language that recites an abstract idea:
1. An apparatus comprising:
[i] a processor;
[ii] one or more sensors;
[iii] an electronic display; and
[iv] a non-transitory computer readable storage medium
storing computer readable code executable by the processor to
perform operations, the operations comprising:
[a] accessing financial transaction data from a data
source over the Internet for each user of a plurality of
users, wherein each financial transaction in a user’s
financial transaction data is associated with location

2 Appellant argues the claims together as a group. See App. Br. 5–11.
Accordingly, we select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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information indicating a location where the financial
transaction occurred;
[b] determining, for each user of the plurality of users,
a total spend probability, the total spend probability
indicating a likelihood that each user’s financial
transaction data includes each of the user’s financial
transactions aggregated from multiple entities, each
user’s total spend probability determined as a function of
a presence of financial transactions of a defined
transaction type pair, a transaction type pair comprising
at least two types of transactions that are correlated with
each other within a predefined period, and a presence of
financial transactions defined as key transactions, a key
transaction comprising a transaction that is expected to
occur for each user within a predefined period, wherein:
the total spend probability is decreased in
response to one or more of determining that a
transaction of a defined transaction type pair is
missing and an expected key transaction is
missing; and
the total spend probability is increased in
response to one or more of determining that each
transaction of a defined transaction type pair is
present and an expected key transaction is present;
[c] determining a user of the plurality of users that
has a total spend probability that satisfies a total spend
probability threshold associated with an offer;
[d] selecting the user of the plurality of users that has
a total spend probability that satisfies the total spend
probability threshold for the offer;
[e] determining a target location for the offer based
on the location information associated with each
financial transaction of the user's financial transaction
data;
[f] polling the one or more sensors at periodic
intervals to monitor the user’s location relative to the
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target location based on location data received from the
one or more sensors;
[g] determining that the user’s location satisfies the
target location; and
[h] presenting the offer to the user on the electronic
display responsive to the user’s location satisfying the
target location.

PRINCIPLES OF LAW
A. SECTION 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.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561
U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
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economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citing Benson and
Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
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eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE
The United States Patent and Trademark Office (“USPTO”) recently
published revised guidance on the application of 35 U.S.C. § 101. USPTO,
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”). Under the 2019 Guidance, we first look
to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. 56.

ANALYSIS
Step 2A, Prong 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 84 Fed. Reg. 52–55.
Limitation [iv.b] recites, inter alia, determining a total spend
probability. Limitation [iv.c] recites “determining a user of the plurality of
users that has a total spend probability that satisfies a total spend probability
threshold associated with an offer.” Limitation [iv.d] recites “selecting the
user . . . that has a total spend probability that satisfies the total spend
probability threshold for the offer.” Limitation [iv.e] recites “determining a
target location for the offer based on the location information associated
with each financial transaction of the user’s financial transaction data.”
Limitation [iv.g] recites “determining that the user’s location satisfies the
target location.”
These limitations reasonably can be characterized as reciting mental
processes that can be performed in the human mind or with the aid of pencil
and paper. More specifically, these steps reasonably can be characterized as
mental observations, evaluations, judgments, or opinions. The
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2019 Guidance expressly recognizes mental observations, evaluations,
judgments, and opinions as patent-ineligible abstract ideas. Accordingly,
each of limitations [iv.b], [iv.c], and [iv.g] reasonably can be characterized
as reciting patent-ineligible subject matter.
Limitation [iv.h] recites “presenting the offer to the user on the
electronic display responsive to the user’s location satisfying the target
location.” Presenting an offer to a person reasonably can be characterized as
a commercial or legal interaction, including a proposal for an agreement in
the form of a contract, legal obligation, advertising, marketing or sales
activity. The 2019 Guidance expressly recognizes these forms of
commercial and legal interactions as certain methods of organizing human
activity that constitute abstract ideas. Accordingly, limitation [iv.h]
reasonably can be characterized as reciting patent-ineligible subject matter.
For these reasons, each of limitations [iv.b], [iv.c], [iv.g], and [iv.h]
reasonably is characterized as reciting patent-ineligible subject matter.
Step 2A, Prong 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that integrate the judicial
exception into a practical application. 84 Fed. Reg. 52–55.
Appellant argues that “the claims at issue recite a technological
solution that improves the technological process of providing targeted
content to users.” App. Br. 8. According to Appellant,
[i]n particular, the elements of the claims at issue describe
an improvement to the technological process of providing
targeted content to users by accessing transaction data for the
user over a computer network, determining that the likelihood
that the transaction data includes each of the users transactions
that are aggregated from multiple different sources satisfies a
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threshold value, determining content to provide to the user and a
target location for providing the content, monitoring the user’s
location on a periodic basis, and providing the content to the user
in response to the user’s location satisfying the target location.
In this manner, the claims at issue provide content, e.g., offers to
a user that the user is likely to use, and in a location where a user
is likely to use the content, which is not an abstract idea.
App. Br. 9.
This argument is unpersuasive. As noted above in the preceding
section of this Analysis, the claim steps of making determinations, as well as
the step of presenting the offer to the user, constitute recitations of abstract
ideas. “It has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”
BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018);
see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”);
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)
(“What is needed is an inventive concept in the non-abstract application
realm.”).
Furthermore, limitation [iv.a] recites a step of accessing financial
transaction data from a data source over the Internet, and limitation [iv.f]
recites a step of polling one or more sensors at periodic intervals to monitor
the user’s location. Both of these steps reasonably can be characterized as
merely constituting insignificant pre-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
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information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor is claim 1 directed
to a particular machine or transformation. MPEP §§ 2106.05(b), (c). Nor
has Appellant persuasively demonstrated that claim 1 adds any other
meaningful limitations. MPEP § 2106.05(e). Accordingly, Appellant has
not persuaded us that claim 1 integrates the recited abstract ideas into a
practical application within the meaning of the 2019 Guidance. 84 Fed.
Reg. 52–55.
Step 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 2 adds any specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field. 84 Fed. Reg. 56;
MPEP § 2106.05(d).
The Examiner finds that the claimed hardware components “are
generic computing elements performing generic computing functions . . . in
a routine and conventional manner that was well-known in the art at the time
of the invention.” Final Act. 5 (citing Spec. ¶¶ 21, 33). Appellant disputes
this determination. App. Br. 9–11.
“[Appellant] asserts that the recited one or more location sensors,
which are polled at periodic intervals to monitor the user’s location, are
specialized computer hardware elements and are not merely generic
computing elements that are used to facilitate performance of the abstract
idea.” Id. at 9. Appellant further asserts, for example, that “the claims at
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issue are directed to utilizing specialized location sensors that are configured
to collect location data at specified intervals to monitor a user’s location.
The location sensors are more than mere generic computing hardware that is
configured to perform generic computing functions.” Id.
These arguments are unpersuasive. The fact that sensors are
configured to collect location data at specified intervals does not necessarily
mean that the sensors are specialized or more than off-the-shelf components.
Appellant provides no persuasive evidence that generic sensors would be
unsuitable or incapable of being polled at specified intervals to collect
location data. To the contrary, Appellant’s Specification indicates that the
generic sensors may be used:
The one or more sensors may include GPS sensors, proximity
sensors, wireless beacons, network adapters, and/or other sensors
configured to determine location data for a user. The one or more
sensors may comprise part of an information handling device 102
of the user, such as a smart phone, tablet computer, laptop
computer, smart watch, or the like. In a further embodiment, a
sensor may comprise a beacon in communication with the user’s
information handling device 102 such that when the user comes
within a communication proximity of the beacon, the beacon
sends the location data of the beacon and/or the user’s
information handling device 102 to the location module 204.
Spec. ¶ 73.
Appellant, likewise, does not provide persuasive evidence that there is
anything specialized about the claimed “processor,” “electronic display,” or
“non-transitory computer readable storage medium.” See Spec. ¶ 21
(describing known computer readable storage medium), ¶ 23 (“conventional
procedural programming languages”), ¶ 25 (“These computer readable
program instructions may be provided to a processor of a general purpose
computer”), ¶ 33 (describing known displays). Thus, we agree with the
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Examiner’s determination that “[n]o specialized computing element is
required.” Final Act. 9. And for these reasons, we determine that claim 1
does not recite additional elements that amount to significantly more than
the judicial exception within the meaning of the 2019 Guidance. 84 Fed.
Reg. 52–55; MPEP § 2106.05(d).
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. We,
likewise, sustain the 101 rejection of claims 2–13, 18–22, and 24–30, which
Appellant does not argue separately. App. Br. 5–11.

DECISION
The Examiner’s decision rejecting claims 1–13, 18–22, and 24–30 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED