Yimin Liu et al.

Patent Trials and Appeals Board

May 1, 2020

13300892 - (D) (P.T.A.B. May. 1, 2020)

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.
13/300,892 11/21/2011 Yimin Liu 83209050 2836
28395 7590 05/01/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
NGUYEN, THUY N
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
05/01/2020 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):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YIMIN LIU, PERRY ROBINSON MACNEILLE, OLEG
YURIEVITCH GUSIKHIN, SCOTT MICHAEL KELLY, and
MARK SCHUNDER,
____________

Appeal 2018-008857
Application 13/300,892
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1−14 and 17−19. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Ford Global
Technologies, LLC. (Appeal Br. 2).
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THE INVENTION
Appellant claims a method of selecting an advertisement for delivery
based at least in part on data retrieved respective to identified occupants and
data relating to the vehicle environment. (Spec. ¶ 4).
Claim 1 is representative of the subject matter on appeal.
1. A computer-implemented method comprising:
obtaining an identity of a vehicle occupant;
obtaining data relating to a current vehicle environment;
selecting an advertisement based on data retrieved
respective to the identified occupant, data relating to the vehicle
environment, and a driver cognitive load;
tailoring a coupon to correspond to a type of discount the
identified occupant has historically accepted;
and
transmitting the selected advertisement and tailored
coupon to a vehicle.

THE REJECTION
Claims 1−14 and 17−19 are 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.
Claims 1, 7–11, 17, and 18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Weber (US 2005/0024189 A1; published Feb. 3,
2005), in view of Massey et al. (US 7,365,651 B2; issued Apr. 29, 2008),
and further in view of Grigg et al. (US 2013/0046626 A1; published Feb. 21,
2013).
Claims 2–4, 6, and 14 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weber, in view of Massey, in view of Grigg, and further
in view of Divine et al. (US 2013/0030645 A1; published Jan. 31, 2013).
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Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Weber, in view of Massey, in view of Grigg, in view of Divine, and
further in view of Torkkola et al. (US 7,292,152 B2; issued Nov. 6, 2007).
Claims 12 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Weber, in view of Massey, in view of Grigg, and further
in view of Schwarz et al. (US 2013/0066720 A1; published Mar. 14, 2013).
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Weber, in view of Massey, in view of Grigg, in view of Schwarz, and
further in view of Conner (US 2013/0054132 A1; published Feb. 28, 2013).

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–14 and 17−19 under 35
U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then
ask, “[w]hat else is there in the claims before us?” .
. . To answer that question, . . . consider the elements
of each claim both individually and “as an ordered
combination” to determine whether the additional
elements “transform the nature of the claim” into a
patent-eligible application. . . . [The Court]
described step two of this analysis as a 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]
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itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50–57 (Jan. 7, 2019).
The Examiner determines that the claims are directed to multiple
abstract ideas including organizing human activity related to advertising and
collecting and comparing known information. (Final Act. 3−4). The
Examiner finds the additional elements in claim 1 are recited at a high level
of generality and/or is recited as performing generic computer functions
routinely used in computer applications thus they are not significantly more
than the identified abstract ideas. The generic computer components recited
as performing generic computer functions that are well-understood, routine
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and convention activity amounts to no more than implementing the abstract
idea with computerized system. (Final Act. 4).
The Specification states that advanced vehicle computer systems,
including modern infotainment systems, have the capability to deliver
“tailored” content to one or more users based on input or observed user
preferences. The delivery of this content is hampered because it uses fixed
sets of preferences which lack real-time information on user preferences.
(Spec. ¶ 2). The content may be advertising which is often too generalized
at a high level. As such, it is desired to obtain additional information. The
method of the invention includes obtaining data relating to a current vehicle
environment and selecting advertisement for delivery based at least in part of
data retrieved respective to identified occupants and data relating to the
vehicle environment. (Spec. ¶ 4).
Consistent with this disclosure, claim 1 recites “obtaining an identity
of a vehicle occupant,” “ obtaining data relating to current vehicle
environment,” “selecting an advertisement based on data retrieved,”
“tailoring a coupon to correspond to a type of coupon,” “transmitting the
selected advertisement.”
We thus agree with the Examiner’s findings that the claims are
directed to advertising. Advertising is a fundamental economic practice
which is the judicial exception of a certain method of organizing human
activity. Guidance, 84 Fed. Reg. at 52.
Also, we agree with the Examiner that claim 1 is directed collecting
and comparing known information and find the steps of “obtaining an
identity of the vehicle occupant,” “obtaining data relating to a current
vehicle environment,” “selecting an advertisement,” “transmitting the
selected advertisement” constitute “analyzing information by steps people
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go through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims
directed to certain arrangements involving contractual relations are directed
to abstract ideas). Thus, we find that the claims recite the judicial exceptions
of a method of organizing human activity and in the alternative a mental
process.
Turning to the second prong of the “directed to test”, claim 1 requires
a “computer” The recitation of the word “computer” does not impose “a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance,
84 Fed. Reg. at 54. We find no indication in the Specification, nor does
Appellant direct us to any indication, that the operations recited in
independent claim 1 invoke any inventive programming, require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
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claimed invention integrates the judicial exception into a “practical
application,” as that phrase is used in the revised Guidance. Guidance, 84
Fed. Reg. at 55.
In this regard, the recitation does not effect an improvement in the
functioning of a computer or other technology, does not recite a particular
machine or manufacture that is integral to the claims, and does not transform
or reduce a particular article to a different state or thing. Id.
We view the recitation of “a vehicle” to be a recitation of post
solution activity or technological environment. The prohibition against
patenting an abstract idea ‘“cannot be circumvented by attempting to limit
the use of the formula to a particular technological environment’[ ]or adding
‘insignificant post-solution activity.”’ Bilski v. Kappos, 561 U.S. 593, 610-
11 (2010) (internal citation and quotation marks omitted). Additional
elements that merely add insignificant extra-solution activity to an abstract
idea fail to integrate the abstract idea into a patent-eligible practical
application. Guidance 84 Fed. Reg. at 55.
Thus, claim 1 is directed to judicial exceptions that are not integrated
into a practical application and therefore claim 1 is directed to an “abstract
ideas.”
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas, the claims must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
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The introduction of a computer into the claims does not alter the
analysis at Alice step two:
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer” simply
combines those two steps, with the same deficient
result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an
abstract idea “on . . . a computer,” that addition
cannot impart patent eligibility. This conclusion
accords with the preemption concern that
undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of
“additional featur[e]” that provides any “practical
assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea]
itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
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trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the computer itself. As we stated above, the claims do not affect an
improvement in any other technology or technical field. The Specification
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spells out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of information access under different
scenarios. (Spec. ¶ 33). Thus, the claims at issue amount to nothing
significantly more than instructions to apply the abstract idea of information
access using some unspecified, generic computer. Under our precedents,
that is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 5−8; Reply Br. 2−4)
Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner failed to provide any evidence that
the whole claim represents a routine or common approach, which fails the
instructions set forth by the Federal Circuit in Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018) (hereinafter “Berkheimer”).
Addressing step two of the Mayo/Alice framework in Berkheimer, the
Federal Circuit held that the question of whether a claim element or
combination of elements is well-understood, routine, and conventional to a
skilled artisan in the relevant field is a question of fact. Berkheimer,
881 F.3d at 1368. Yet, the law is clear that the claim elements to be
considered (when determining whether the claims include additional
elements or a combination of elements that amount to “significantly more”
that the judicial exception) cannot be the abstract idea itself. See Mayo,
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566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added)); see also BSG Tech. LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“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.”). “[A]nd Berkheimer . . .
leave[s] untouched the numerous cases from [the Federal Circuit] which
have held claims ineligible because the only alleged ‘inventive concept’ is
the abstract idea.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir.
2018) (Moore, J., concurring); see also BSG Tech., 899 F.3d at 1290 (“Our
precedent has consistently employed this same approach. If a claim’s only
‘inventive concept’ is the application of an abstract idea using conventional
and well-understood techniques, the claim has not been transformed into a
patent-eligible application of an abstract idea.”). Thus, in Berkheimer,
where certain of the claims at issue recited features of a digital asset
management system that the Specification described as unconventional
improvements over conventional systems, the Federal Circuit determined
that there was a genuine issue of material fact, making summary judgment
inappropriate. Berkheimer, 881 F.3d at 1370.
Here, the Appellant argues that even though the steps recited in the
claims use well known components, the steps perform identity verification in
a non-conventional and non-generic way. (Appeal Br. 6-7). However, as
we discussed above, the Berkheimer decision relates to whether the elements
in addition to the abstract idea are well-known, routine and conventional.
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The only recitation in claim 1 that is not part of the abstract ideas of
advertising and collecting and comparing known information is the
recitation of a “computer implemented method” and “a vehicle.” Therefore,
the Appellant is not correct that the proper inquiry is whether the whole
solution represented by the claims in “conventional” or “typical.” (Appeal
Br. 7). As we find above, the recitation of a “computer” and a “vehicle”
does not affect an improvement to the computer or vehicle of any other
technology and thus these recitations do not integrate the abstract ideas into
a practical application or amount to significantly more than the abstract
ideas.
We find untimely Appellant’s argument in the Reply Brief for the
eligibility of the claims based on Core Wireless Licensing v. LG Electronics,
Inc., 880 F.3d 1356, 2018 WL 542672; Nos. 2016-2684, 20171922 (Fed.
Cir. Jan. 25, 2018). (Reply Br. 3–4). We note that these new arguments
were raised by Appellant for the first time in the Reply Brief, and they are
not in response to a new issue brought up by the Examiner in the Answer.
We also note that Core Wireless came out prior to Appellant’s Appeal Brief
filing, and was therefore not an intervening opinion. Appellant are reminded
that:
[T]he purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
new grounds of rejection the Examiner may have raised in the
answer, or to address changes or developments in the law that
may have occurred after the principal brief was filed. The reply
brief is not an opportunity to make arguments that could have
been made during prosecution, but were not. Nor is the reply
brief an opportunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's
rejections, but were not.
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Giving cognizance to belated arguments in a reply would
vitiate the force of the requirement in Board Rule 37(c)(1)(vii)
that “[a]ny arguments or authorities not included in the brief...
will be refused consideration by the Board, unless good cause is
shown.” The reference in that section to the “reply brief filed
pursuant to § 41.41” does not create a right for the Appellant to
raise an argument in the reply brief that could have been raised
in the principal brief but was not. Rather, that reference merely
puts Appellants on notice that arguments that could be made in
the reply brief, but are not, are waived.
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative).
We therefore consider this argument raised for the first time in the
Reply Brief to be waived. As to Appellant’s argument that “the Examiner
still must show that ‘tailoring a coupon to correspond to a type of discount
the identified occupant has historically accepted’ is not routine, because it
certainly is not abstract,” Reply Brief 3, this is a conclusory argument. In
any event, tailoring data is modifying data, an operation so conventional it
existed when programs were toggled in with switches on the processor front
plate. Appellant presumably refers to the data being so modified, but the
origin and label of data cannot confer eligibility. SAP America, Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Accordingly, we sustain the rejection of independent claim 1 under 35
U.S.C. § 101. We will also sustain this rejection as it is directed to the
remaining claims because Appellant has not argued the separate eligibility of
these claims.
OBVIOUSNESS REJECTIONS
We will affirm these rejections. Appellant argues that the prior art
does not disclose “tailoring a coupon to correspond to a type of discount the
identified occupants has historically accepted.” The Examiner relies on
Grigg for teaching this subject matter. However, Appellant argues that
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Grigg teaches that an offer can be tailored to a type of product not a type of
discount. Appellant relies on paragraph 64 of the Specification for teaching
a type of discount. Paragraph 64 discloses:
if a user is known to positively react to food-based
coupons, and is further 50% more likely to react to any deal
providing, for example, a buy one get one deal on fast food, the
server may allow a custom coupon to be built for that user
based on observed behavior. Other suitable coupons may also
be assembled or found 505 based on previously observed
behavior.

We agree with the Examiner’s response to this rejection found
on pages 14−17 of the Answer and adopt it as our own. In this
respect, the language of claim 1 is broad enough to include tailoring a
coupon to correspond to the type of product discounts the identified
occupant has historically accepted.
In view of the foregoing, we will affirm the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a). We will also affirm the
35 U.S.C. § 103(a) rejections of the remaining claims for the same
reason.
CONCLUSIONS OF LAW
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1−14,
17−19
101 Eligibility 1−14,
17−19

1, 7–11, 17,
18
103 Weber, Massey,
Grigg
1, 7–11, 17,
18

2–4, 6, 14 103 Weber, Massey,
Grigg, Divine
2–4, 6, 14
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5 103 Weber, Massey,
Grigg, Divine,
Torkkola
5
12, 19 103 Weber, Massey,
Grigg, Schwarz
12, 19
13 103 Weber, Massey,
Grigg, Schwarz,
Conner
13
Overall
Outcome
1–14, 17–19

DECISION
The decision of the Examiner to reject claims 1−14 and 17−19 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED