Ex Parte Denis

Patent Trial and Appeal Board

Jun 18, 2018

15369487 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/369,487 12/05/2016
145261 7590 06/18/2018
Crawford Intellectual Property Law LLC
1250 South Grove Avenue, Suite 308
Barrington, IL 60010
FIRST NAMED INVENTOR
David R. Denis
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.
1620.0078 2779
EXAMINER
ROLAND, GRISELLE CORBO
ART UNIT PAPER NUMBER
2158
MAIL DATE DELIVERY MODE
06/18/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID R. DENIS
Appeal2018-006235
Application 15/369,487
Technology Center 2100
Before ALLEN R. MacDONALD, MICHAEL J. STRAUSS, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1 7-19, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to "collecting and correlating information
regarding physical addresses in a database and using that database to target
communications to occupants of those addresses." Spec. 1.
Illustrative Claim
Claim 17 is illustrative and reproduced below with certain limitations
at issue emphasized:
Appeal2018-006235
Application 15/369,487
17. A method for using a database keyed to physical addresses
compnsmg:
a) Creating an address database capable of storing a
plurality of address records, each address record having a
plurality of address record fields, one of the plurality of address
record fields being a unique physical location field able to store
a unique physical address location;
b) Obtaining a plurality of address record data items, each
address record data item comprising at least two facts, the at
least two facts including a unique physical address identifier
corresponding to a unique physical address and a second fact
describing a non-physical location property of the unique
physical address, wherein none of the at least two facts comprise
a name or a unique identifier corresponding to a particular
individual person;
c) Storing the plurality of address record data items in the
address database such that, the at least two facts are stored in the
plurality of address record fields, with the unique physical
address identifier of the address record data item being stored in
the unique physical location field and the second fact being
stored in any of the other of the plurality of address record fields;
d) Selecting a first subset of the plurality of address
records by evaluating at least one of the address record fields
which is not the unique physical location field to see if the at least
one address record field which is not the unique physical location
field matches a specified condition;
e) Creating a targeted communication having a locational
relevance such that the targeted communication will be of a
higher level of locational relevance to a plurality of recipients at
a relative locational relevance level determined by whether the
recipient occupies one of the unique physical addresses
corresponding to one of the unique physical address identifiers
stored within one of the first subset of the plurality of address
records; and,
f) Sending the targeted communication to all of the unique
physical addresses corresponding to the unique physical address
identifiers stored in the first subset within the plurality of address
records.
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Application 15/369,487
Rejections
Claims 17-19 stand rejected under 35 U.S.C. § 102(a)(l) as
anticipated by Abhyanker (US 2014/0237062 Al; Aug. 21, 2014). Final
Act. 7-19.
Claims 17-19 stand rejected under 35 U.S.C. § 101 as being directed
to ineligible subject matter. Final Act. 5-6. 1
ISSUES
1. Did the Examiner err in finding Abhyanker discloses "none of
the at least two facts comprise a name or a unique identifier corresponding to
a particular individual person," as recited in claim 17?
2. Did the Examiner err in concluding that claim 17 was
unpatentable under § 101?
ANALYSIS
§ 102
Appellant argues that "Abhyanker teaches, as does all other known
prior art, that data used for targeting communications should be correlated
with the person, not the address independent of the person." App. Br. 20.
We agree with the Examiner, however, that "the claims do not recite
this limitation." Ans. 7. Instead, claim 17 recites "each address record data
item comprising at least two facts, ... wherein none of the at least two facts
comprise a name or a unique identifier corresponding to a particular
individual person." We agree with the Examiner that this limitation only
requires "the at least two facts" to not correspond to a particular person but
does not preclude the address record data item from containing other record
1 The rejection under 35 U.S.C. § 112(a) was withdrawn. Ans. 2.
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Application 15/369,487
fields that "may include information about a particular person." Ans. 8; see,
e.g., Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)
("the open-ended term 'comprising' .... means that the named elements are
essential, but other elements may be added and still form a construct within
the scope of the claim").
The same logic applies to "a plurality of address record fields" in
claim 19. As presently written, this does not preclude other record fields
that are correlated to a particular individual.
Dependent claim 18 narrows only "the second fact," not the potential
for other facts in other fields.
Accordingly, we sustain the Examiner's rejection of claims 17-19.
§ 101
To determine patentable subject matter under§ 101, the Supreme
Court has set forth a two part test. "First, we determine whether the claims
at issue are directed to one of those patent-ineligible concepts" of "laws of
nature, natural phenomena, and abstract ideas." Alice Corp. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355 (2014). If so, then in the second step, we
"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." Id. (quotations
omitted). The Supreme Court has "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 itself." Id.
( quotation omitted).
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Appeal2018-006235
Application 15/369,487
Here, we agree with the Examiner that " [ c] laims 1 7 -19 are directed to
an abstract idea of sending targeted communications to a subset of users."
Final Act. 5. For example, in claim 17, the claimed steps are "directed to
receiving and distributing data based on certain characteristics of the data,
which the courts have identified as an abstract idea such as in Intellectual
Ventures I LLC v. Capital One Bank (USA) [792 F.3d 1363 (Fed. Cir.
2015)]." Final Act. 5. In Intellectual Ventures, the Federal Circuit held that
"tailoring content based on the viewer's location or address" and similar
"information tailoring" was "a fundamental practice long prevalent in our
system" and "is an abstract idea." 792 F.3d at 1369 (quotation omitted).
The Examiner further determines that "[ c ]laim 17 is also directed to
filtering of data which has been identified by the courts to be an abstract idea
[in] Bascom Global Internet Services. Inc. v. AT&T Mobility LLC. 827 F.3d
1341 ... (Fed. Cir. 2016)." Final Act. 5. In BASCOM, the Federal Circuit
held that "filtering content is an abstract idea because it is a longstanding,
well-known method of organizing human behavior, similar to concepts
previously found to be abstract." 827 F.3d at 1348.
For all of the claims, Appellant argues:
Here, the claimed invention allows targeted communication with
consumers located at physical addresses under circumstances
wherein, absent the teaching of the invention, a person of
ordinary skill in the art would determine such communication
could not be made, because the invention teaches a method for
using databases which do not include information about the
consumers residing at those physical addresses.
App. Br. 18.
First, Appellant's argument is directed at the novelty of the claims.
Yet the Supreme Court has held that "[t]he 'novelty' of any element or steps
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Application 15/369,487
in a process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-
89 (1981); see also SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1018
(Fed. Cir. 2018) ("Nor is it enough for subject-matter eligibility that claimed
techniques be novel and nonobvious in light of prior art, passing muster
under 35 U.S.C. §§ 102 and 103."). Thus, Appellant has not sufficiently
explained how this argument applies to the rejection under§ 101 rather than
the issues of novelty and obviousness under § § 102 or 103.
Second, as discussed for the anticipation rejection, Appellant's
argument (i.e., that the "databases ... do not include information about the
consumers residing at those physical addresses") is not commensurate with
the scope of the claims as presently written.
Appellant further argues:
The concept of overcoming the lack of information, or the
misleading or incorrect information, stored in the consumer
database by using a database which is unrelated to information
about that consumer except insofar as it relates to the seldom or
never-changing qualities of a physical address is the sort of
'additional feature' which the Alice test addresses ....
App. Br. 19. Although this argument is tied to the§ 101 test, we note again
that "a database which is unrelated to information about that consumer" is
not required by the claims as presently written.
Accordingly, we sustain the rejection of independent claims 17 and
19, and dependent claim 18, which Appellant argues is patentable for similar
reasons. See App. Br. 2-5; 37 C.F.R. § 4I.37(c)(l)(iv).
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DECISION
For the reasons above, we affirm the decision rejecting claims 17-19.
No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(±).
AFFIRMED
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