Ex Parte CHAUHAN et al

Patent Trial and Appeal Board

Oct 23, 2018

14022741 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/022,741 09/10/2013
21839 7590 10/25/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Rohit CHAUHAN
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.
0076412-000173 2653
EXAMINER
UBER, NATHAN C
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROHIT CHAUHAN and PO HU
Appeal2017-002253
Application 14/022, 7 41 1
Technology Center 3600
Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-26. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' invention "relates to the distribution of optimized offers
to a mobile device, specifically the optimization of offers based on
1 According to Appellants, the real party in interest is MasterCard
International Incorporated. (Appeal Br. 2.)
Appeal2017-002253
Application 14/022, 7 41
identification of an inferred future geographic location based on a current
location and a location history of the mobile device." (Spec. ,r 1.)
Claims 1 and 14 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method for distributing an optimized offer to a mobile
communication device, comprising:
storing, in an offer database, a plurality of offer data
entries, wherein each offer data entry includes data related to an
offer for the purchase of goods or services including at least offer
data and an offer location;
storing, in a consumer database, a consumer profile,
wherein the consumer profile includes data related to a consumer
including at least historical geographic location data of a mobile
communication device associated with the related consumer;
receiving, by a receiving device, a current geographic
location of the associated mobile communication device;
identifying, by a processing device, at least one inferred
future geographic location for the associated mobile
communication device based on the received current geographic
location and the historical geographic location data of the
associated mobile communication device;
identifying, in the offer database, at least one offer data
entry where the included offer location corresponds to one of the
identified at least one inferred future geographic location; and
transmitting, by a transmitting device, the offer data
included in the identified at least one offer data entry to the
associated mobile communication device.
REJECTIONS
Claims 1-26 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1-26 are rejected under 35 U.S.C. § I02(a)(2) as anticipated
by Blackhurst (US 2011/0246306 Al, pub. Oct. 6, 2011).
2
Appeal2017-002253
Application 14/022, 7 41
The § 101 rei ection
ANALYSIS
Appellants argue claims 1-26 together. We select claim 1 as
representative. Claims 2-26 will stand or fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 2357 (citing Mayo, 566 U.S. at 72-73, 79).
3
Appeal2017-002253
Application 14/022, 7 41
With regard to step one of the Alice framework, the Examiner
determines that the claims are "directed toward ... the abstract idea of
distributing offers to mobile devices, based on identification of an inferred
future geographic location." (Final Action 3.) The Examiner further
determines that "the claims are directed toward a fundamental economic
practice." (Id.) More specifically, the Examiner determines that Appellants'
invention simply uses "traditional coupon marketing techniques and
implement[s] the techniques through computers. For example, retaining
historical data on a consumer's location (e.g. home zip code) and sending
the consumer relevant coupons based on the consumer's future location ...
is not a function that requires the use of a computer." (Answer 9.)
Appellants disagree and argue that "Appellant's [sic] claims recite,
with specificity, a method and system dependent upon the receipt of mobile
communication device location data and the implementation of that data
within an electronic process to optimize offer distribution. The pending
claims recite multiple particularly configured databases .... " (Appeal
Br. 8-9.) Appellants further argue that "[t]he 'abstract idea' identified by
the Office ... is not similar to any 'abstract idea' identified by the courts in
the body of precedential case law." (Id. at 9, emphasis omitted.)
Under step one of the Alice framework, we "look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention
4
Appeal2017-002253
Application 14/022, 7 41
"relates to the distribution of optimized offers to a mobile device,
specifically the optimization of offers based on identification of an inferred
future geographic location based on a current location and a location history
of the mobile device." (Spec. ,r 1.) Claim 1 provides additional evidence.
Claim 1 recites "[a] method for distributing an ... offer ... comprising:
storing ... data related to an offer for the purchase of goods or services,"
"storing ... data related to a consumer including ... historical geographic
location data of a mobile ... device," "receiving ... a current geographic
location of the associated mobile ... device," "identifying ... at least one
inferred future geographic location for the associated mobile ... device,"
identifying at least one stored off er that "corresponds to one of the identified
... inferred future geographic location[s]," "and transmitting ... the offer
data ... to the associated mobile ... device." In short, claim 1 is directed to
targeting an offer by sending the offer to a consumer based on the
consumer's location and an inferred future location. More specifically, the
claim recites determining a current and future location of, and sending an
offer to, a consumer's mobile device.
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." Id.
at 1241.
We disagree with Appellants that the abstract idea to which the claims
are directed "is not similar to any 'abstract idea' identified by the courts in
5
Appeal2017-002253
Application 14/022, 7 41
the body of precedential case law." (Appeal Br. 9, emphasis omitted.) The
Federal Circuit
has held that "customizing information based on ... information
known about the user" is an abstract idea. Intellectual Ventures
I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed.
Cir. 2015). The court in the Intellectual Ventures I case
explained that tailoring of content based on information about the
user-such as where the user lives or what time of day the user
views the content-is an abstract idea that is as old as providing
different newspaper inserts for different neighborhoods. Id.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed.
Cir. 2016). In other words, targeted advertising "is a 'fundamental, long-
standing, well-known concept' that is ineligible under Section 101." Morsa
v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014), aff'd, 622
F. App'x 915 (Fed. Cir. 2015).
Moreover, the limitations of claim 1 do not recite implementation
details. Instead, they recite functional results to be achieved. In other
words, claim 1 does not recite "a particular way of programming or
designing the software ... , but instead merely claim[ s] the resulting
systems." Apple, Inc., 842 F.3d at 1241. "Indeed, the claim language here
provides only a result-oriented solution, with insufficient detail for how a
computer accomplishes it. Our law demands more." Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
In view of the above, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step two of the Alice framework has been described "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
6
Appeal2017-002253
Application 14/022, 7 41
more than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct.
at 2355 (alteration in original) (quoting Mayo, 566 U.S. at 72-73).
Appellants seek to analogize their claims to "Example 21 of the July
2015 Examples."2 (Appeal Br. 10.) In particular, Appellants argue that
"when steps of Appellant's [sic] claim 1 are viewed as an ordered
combination, it is apparent that the claims address the mobile
communication-centric challenge of providing relevant and optimized offers
to the mobile device." (Id. at 11.)
As an initial matter, we note that the Update simply presents
hypothetical examples. (See Update Appendix 1.) We also note that claim 2
in Example 21 recites "[a] method of distributing stock quotes over a
network to a remote subscriber computer" including the steps of
transmit[ing] the formatted stock quote alert over a
wireless communication channel to a wireless device associated
with a subscriber based upon the destination address and
transmission schedule,
wherein the alert activates the stock viewer application to
cause the stock quote alert to display on the remote subscriber
computer and to enable connection via the URL to the data
source over the Internet when the wireless device is locally
connected to the remote subscriber computer and the remote
subscriber computer comes online.
(Id. at 3.) The Update Appendix explains that
[t]he claimed invention addresses the Internet-centric challenge
of alerting a subscriber with time sensitive information when the
subscriber's computer is offline. This is addressed by
2 See July 2015 Update: Subject Matter Eligibility (July 2015) (available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf); see also July 2015 Update Appendix 1: Examples (July 2015)
(available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-app 1.pdf) ("Update Appendix").
7
Appeal2017-002253
Application 14/022, 7 41
transmitting the alert over a wireless communication channel to
activate the stock viewer application, which causes the alert to
display and enables the connection of the remote subscriber
computer to the data source over the Internet when the remote
subscriber computer comes online.
(Id. at 4.)
Claim 1 in Example 21 is similar to Claim 2 except that Claim 1 lacks
the stock viewer application; and, thus, does not address "the Internet-centric
challenge of alerting a subscriber ... when the subscriber's computer is
offline" or "enable[] the connection of the remote subscriber computer to the
data source over the Internet when the remote subscriber computer comes
online." Claim 1 in Example 21 is described as patent ineligible. (Id. at 3-
4.) Appellants do not persuasively argue why simply receiving the location
of the consumer, and, based on that location information and historical
location information, inferring a future location, and sending an offer, is
analogous to addressing "the Internet-centric challenge of alerting a
subscriber ... when the subscriber's computer is offline" and, in particular,
"enables the connection of the remote subscriber computer to the data source
over the Internet when the remote subscriber computer comes online." (See
id. at 4.)
Appellants also seek to analogize the present claims to the claims in
DDR Holdings. (See Appeal Br. 12.) We disagree. Unlike Appellants'
claim 1, the claims in DDR Holdings "specify how interactions with the
Internet are manipulated to yield a desired result-a result that overrides the
routine and conventional sequence of events ordinarily triggered by the click
of a hyperlink." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1258 (Fed. Cir. 2014) (emphasis added). In other words, the invention
8
Appeal2017-002253
Application 14/022, 7 41
claimed in DDR Holdings does more than "simply instruct the practitioner to
implement the abstract idea with routine, conventional activity." See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see
also DDR Holdings, 773 F.3d at 1259.
Appellants further argue that "even if Appellant's [sic] claims are
considered to touch upon some 'abstract idea,' they are confined to a
particular and useful technical application of an electronic process by
unconventional steps (i.e., there is no 'brick and mortar' analog to
Appellant's claimed method and system)." (Appeal Br. 12.) We disagree.
As discussed above, Appellants' invention simply uses "traditional coupon
marketing techniques and implement[ s] the techniques through computers.
For example, retaining historical data on a consumer's location (e.g. home
zip code) and sending the consumer relevant coupons based on the
consumer's future location ... is not a function that requires the use of a
computer." (Answer 9.) In other words, we do not find it unconventional
for a store to, e.g., retain the address of a customer who previously visited
the store and to send that customer a coupon for use on a future visit.
To the extent Appellants' argument that the claimed invention is
"confined to a particular and useful technical application" (Appeal Br. 12) is
an argument that the claims do not preempt all solutions for the abstract
idea, we do not find the argument persuasive of error. Preemption is not a
separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
9
Appeal2017-002253
Application 14/022, 7 41
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
"significantly more" to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73].
CLS Bank Int 'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), aff'd, 134 S. Ct. 2347 (2014). Moreover,
"[ w ]here a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, "preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility." Id.
Taking the claim elements separately, the functions performed by the
mobile device and the processor at each step of the process are purely
conventional. Using a mobile device and a processor to store data, transmit
data (including location data), analyze data, and issue instructions/messages
based on the results, are basic computer functions. See, e.g., Alice, 134
S. Ct. at 2359. In other words, each step does no more than require generic
computer components to perform generic computer functions.
Considered as an ordered combination, the mobile device and
processor of Appellants' method add nothing that is not already present
when the steps are considered separately. The claims do not, for example,
purport to improve the functioning of the mobile device or the processor
itself. Nor do they effect an improvement in any other technology or
technical field. Although Appellants argue, e.g., that "the Examiner
10
Appeal2017-002253
Application 14/022, 7 41
overlooks benefits provided by the claims ( e.g., improved location
determination ability)" (Reply Br. 5-6), Appellants do not cite any evidence
to support this argument, nor does claim 1 recite any improved ability to
locate the mobile device. In other words, "these claims in substance [are]
directed to nothing more than the performance of an abstract business
practice ... using a conventional computer. Such claims are not patent-
eligible." DDR Holdings, 773 F.3d at 1256. Thus, the claims at issue
amount to nothing significantly more than an instruction to apply the
abstract idea using some unspecified, generic computer components. That is
not enough to transform an abstract idea into a patent-eligible
invention. Alice, 134 S. Ct. at 2360.
In view of the above, we agree with the Examiner that claim 1 is
directed to a judicial exception without significantly more. Claims 2-26 are
not separately argued and fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
The§ 102(a)(2) reiection
The Examiner finds that paragraph 7 5 of Blackhurst discloses
"identifying, by a processing device, at least one inferred future geographic
location for the associated mobile communication device based on the
received current geographic location and the historical geographic location
data of the associated mobile communication device," as recited in claim 1.
(Final Action 5, emphasis omitted.)
Appellants disagree and argue that
[p]aragraph [0075] of Blackhurst does not describe a step of
identifying a future geographic location based on both a received
current geographic location and the historical geographic
location data of the mobile device. Further, the "past" location
11
Appeal2017-002253
Application 14/022, 7 41
data of Blackhurst is described in paragraph [0069] of that
application and indicates that the Blackhurst system can provide
offers based on routes or locations a customer typically
frequents. Such data would not, for instance, be applicable to
situations involving a new route or location, as it does not
additionally take into account current location information.
(Reply Br. 13; see also Appeal Br. 14.)
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros., Inc. v. Union Oil Co. of Calif., 814 F.2d
628, 631 (Fed. Cir. 1987).
To establish inherency, the extrinsic evidence "must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill." Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268, 20 U.S.P.Q.2d 1746,
1749 (Fed.Cir.1991). "Inherency, however, may not be
established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not
sufficient." Id. at 1269, 948 F.2d 1264, 20 U.S.P.Q.2d at 1749
(quoting In re Oelrich, 666 F.2d 578,581,212 U.S.P.Q. 323,326
(C.C.P.A.1981 )).
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999).
Blackhurst discloses a "merchant offer program application [that]
monitors the location of the customer over time and recognizes patterns in
the routes the customer travels and locations that the customer frequently
visits." (Blackhurst, Abstract.) Paragraph 7 5 of Blackhurst discloses that
the merchant offer program application 10 will not only
determine products related to the content that the customer 6 is
viewing, but can also determine the current location of the
customer or the past or possible future locations of the customer
6 based on patterns of mobile tracking of the customer 6 through
the location-determining device. The merchant offer program
12
Appeal2017-002253
Application 14/022, 7 41
application 10 will use the customer's current, past, or future
locations as well as the content the customer 6 is viewing to
provide the customer 6 with offers for related products located
near the customer's locations.
(Id. ,r 75.) In short, paragraph 75 teaches that the merchant offer program
application will use "the customer's current, past or future locations" in
providing the customer with offers. But paragraph 7 5 does not expressly set
forth how the future locations are determined. Appellants' claim 1,
however, recites a particular way to identify future locations, i.e.,
"identifying ... at least one inferred future ... location ... based on the ...
current ... location and the historical ... location data."
Appellants point to paragraph 69 of Blackhurst as providing
additional insight. In relevant part, paragraph 69 discloses:
In some embodiments explained herein offers that are
provided to the customer 6 are based on the customer's current
location or the customer's home. However, many customers 6
spend the majority of their time at work. . . . The ability to
provide offers based on the routes or locations that a customer 6
often frequents allow the customer 6 to receive the best offers
that may be the most convenient for the customer to take
advantage of at a time when the customer 6 may be near a
location that the customer frequents in the future. For example,
the customer 6 may be interested in receiving offers for TV's.
However, it may be the weekend and the customer may not
receive offers that are relevant to the route the customer 6 takes
to work or that occur near the customer's work because the
customer is at a location near his home. The patterns identify
[sic] by the merchant offer program application 10 based on
tracking the customer's past locations allow the merchant offer
program application 10 to provide better offers for a TV at a
13
Appeal2017-002253
Application 14/022, 7 41
location near the customer's route to work or at a store located
near the customer's work.
(Id. ,r 69.) Paragraph 69 suggests that to the extent the merchant offer
program application infers a future location, it does so by identifying
patterns "based on tracking the customer's past locations," rather than based
on the customer's current and past locations.
In view of the above, we are persuaded of error. The cited portions of
Blackhurst do not expressly or inherently describe "identifying, by a
processing device, at least one inferred future geographic location for the
associated mobile communication device based on the received current
geographic location and the historical geographic location data of the
associated mobile communication device," as recited in claim 1.
Independent claim 14 contains similar language, and for similar reasons we
are persuaded of error.
DECISION
The Examiner's rejection of claims 1-26 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1-26 under 35 U.S.C. § 102(a)(2)
is reversed.
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)(l )(iv).
AFFIRMED
14