Ex Parte ETCHEGOYEN

Patent Trial and Appeal Board

Mar 3, 2016

13743133 (P.T.A.B. Mar. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/743, 133
96051 7590
Uniloc USA Inc.
Legacy Town Center
7160 Dallas Parkway
Suite 380
Plano, TX 75024
01/16/2013
03/07/2016
FIRST NAMED INVENTOR
Craig S. ETCHEGOYEN
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.
UN-NP-AD-084 1044
EXAMINER
LONG, MEREDITH A
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
03/07/2016 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):
sean. burdick@unilocusa.com
tkiatkulpiboone@unilocusa.com
kris.pangan@unilocusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UNILOC LUXEMBOURG S.A.
Appellant
Appeal2016--002834
Application 13/743,133
Technology Center 3600
Before ANTON W. PETTING, ROBERT L. KINDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Uniloc Luxembourg S.A. (Appellant) seeks review under
35 U.S.C. § 134 of a non-final rejection of claims 1-7, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b ).
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed June 15, 2015) and Reply Brief ("Reply Br.," filed January 5,
2016), and the Examiner's Answer ("Ans.," mailed November 5, 2015), and
Non-Final Action ("Non-Final Act.," mailed February 13, 2015).
Appeal 2016-002834
Application 13/743, 133
The Appellant describes delivering advertisements through portable,
personal, computing devices that are in relatively close physical proximity to
advertisers. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for disseminating local area point-of-sale
advertising to a computing device, the method comprising the
following steps executed at a local area advertising server:
[ 1] receiving a data record from [a] point-of-sale computing
system, the data record
including a point-of-sale advertisement
and
identifying an associated local area network through
which the point-of-sale advertisement is to be delivered;
receiving a request for point-of-sale advertisements from the
computing device through a computer netvvork, vvherein the
request identifies the local area network to which the computing
device is connected;
identifying, responsive to the request, the point-of-sale
advertisement that is associated with the local area network;
and
sending the point-of-sale advertisement to the computing
device via the associated local area network.
The Examiner relies upon the following prior art:
Hatch US 2006/0184640 Al
Amjadi US 2008/0140509 Al
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Aug. 17, 2006
June 12, 2008
Appeal 2016-002834
Application 13/743, 133
Claims 1----7 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
Hatch and Amjadi.
ISSUES
The issues of statutory subject matter tum primarily on whether the
claims recite more than a way of distributing ads on generic computers. The
issues of obviousness tum primarily on whether the claims require an
identifier field to perform the recited identifying, and if so whether the art
suggest such a field.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Hatch
01. Hatch is directed to processing website requests in order to
provide local geographical management of web page content.
Hatch para. 1.
02. Hatch describes doing so by interposing a network device
between a LAN that a client device is on and a web site server.
This device can modify the web pages sent from the server to the
client device. Hatch para. 4.
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Application 13/743, 133
03. Hatch describes content provided by a network device including
an advertisement associated with the approximate geographic area
having access to a LAN. The network device is configured to
modify web pages received from a server to include
advertisements targeted to users of the LAN. Hatch para. 40.
Amjadi
04. Amjadi is directed to distributing secure electronic incentives,
such as money-saving discount coupons or other marketing
incentives. Amjadi para. 2.
05. Amjadi describes generating and distributing customized
product redemption incentives to users based on a wireless access
point (WAP). This is done with a repository, such as a database,
which stores electronic incentive data. A marketing/targeting
module may correlate incentive data with user demographic data
and/or WAP demographic data to deliver customized incentive
packages to users. A user may connect to a W AP to access a
network. The network connection may be configured to route
through a proxy, enabling monitoring of user activity to deliver
more relevant incentives, and facilitating electronic transactions.
The W AP may be configured to route traffic through the proxy,
and the user may download a client application to establish the
connection with the proxy, or the user may connect directly to the
server. Amjadi para. 6.
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Application 13/743, 133
06. Amjadi describes creating a unique identifier for the W AP, such
as an IP address or a service set identifier (SSID). Amjadi para.
25.
07. Amjadi describes delivering incentives targeted to users based
on a wireless access point. A server receives a W AP identifier
that identifies a W AP to which the user has connected. The server
may look up the identifiers to retrieve demographic information
related to the W AP. This information may be analyzed and used
to deliver incentives to a user. Amjadi para. 30.
ANALYSIS
Claims 1-7 rejected under 35 US.C. § 101 as directed to non-statutory
subject matter
Although the Examiner did not cite Alice (Alice Corp., Pty. Ltd. v CLS
Bank Intl, 134 S.Ct. 2347 (2014)), the Examiner applies the Alice two part
test. The Examiner finds that the claims are directed to advertising
distribution, a disembodied concept. The Examiner then finds that the
claims do not add anything more than directing one to implement an abstract
idea of how to distribute advertising on a generic computer system. Ans. 4.
We agree with the Examiner's findings and adopt them.
We are not persuaded by Appellants' argument that the claims do not
preempt all forms of advertising distribution. Appeal Br. 8-9. That the
claims do not preempt all forms of the abstraction or may be limited to the
abstract idea in the e-commerce setting do not make them any less abstract.
See OIP Tech., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir.
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Appeal 2016-002834
Application 13/743, 133
2015). Beyond the abstract idea of advertising distribution, the claims
merely recite well-understood, routine conventional activities, either by
requiring conventional computer activities or routine data-gathering steps.
Considered individually or taken together as an ordered combination, the
claim elements fail to transform the claimed abstract idea into a patent
eligible application. Id. at 1363. Because the claims are directed to an
abstract idea, the claims must include an "inventive concept" in order to be
patent-eligible. No such inventive concept is present here. Instead, the
claims "add" only generic computer components such as a "system,"
"network," and "server." These generic computer components do not satisfy
the inventive concept requirement. See Mortgage Grader, Inc. v. First
Choice Loan Services Inc., --- F.3d ----, 2016 WL 362415 (Fed. Cir. 2016).
We are not persuaded by Appellant's argument that the claim describes
delivery to a point of sale to which the local area network is not connected.
Reply Br. 5. This argument is not commensurate with the scope of the claim
which has no such limitation. Appellant cites Specification para. 28, but we
do not import limitations from the Specification into the claims.
Though understanding the claim language may be aided by
explanations contained in the written description, it is important
not to import into a claim limitations that are not part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed.
Cir. 2004).
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Appeal 2016-002834
Application 13/743, 133
We are not persuaded by Appellant's argument that
the "something more" of the present claims is the ordered
combination of steps which require that specialized content (i.e.
data identifying a local area network) accompany data
transmissions that have a technical effect on the interaction of
devices. In the present case, the specialized content must be
transmitted, e.g. over a wireless communication channel, from
both the point-of-sale computing system and the mobile
computing device, to the local area advertising server to allow
the dissemination of targeted data to the mobile device. It is this
ordered combination that provides meaningful limitations that
allow the technical effect to be achieved.
Reply Br. 8-9. Generic data movement in a general purpose computer
has a technical effect. It is just that this effect is itself generic and
commonplace. Moving a pencil on a piece of paper to leave a visible trail
has similar technical effect, which has been consistently found insufficient to
show patentable subject matter. The argument is that requiring two
movements of data as a criteria for something is sufficient to impart
eligibility of subject matter. The problem with this argument is that such a
requirement is a mere abstract idea, no more than conceptual advice akin to
advising one to require two signatures on a check. Simply executing it on a
generic computer is not enough to render eligibility. See Alice.
Claims 1-7 rejected under 35 US. C. § 103 (a) as unpatentable over Hatch
andAmjadi
We initially make certain findings regarding claim construction.
Limitation [ 1] recites "receiving a data record from point-of-sale computing
system." There is no indication of which point-of-sale computing system is
referred to as there is no adjectival article modifying the point-of-sale
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computing system (there is a missing "a" or "the). It would appear this
refers to some point-of-sale computing system that has not previously been
described in the claim.
This limitation also recites "identifying an associated local area
network." No implementation for such identifying is recited or narrowed.
In particular there is no recitation that the record in limitation [ 1] carries an
identifier for such identifying. There is also no implementation recited for
where any data used in such identifying came from because there is no
implementation recited for the identifying.
Each of limitation [ 1] and [2] recite a local area network. Neither
limitation recites that its local area network is the same as that of the other
limitation. Limitation [3] recites the point-of-sale advertisement that is
associated with the local area network. This limitation does not specify
which of the point-of-sale advertisement that is associated with the local
area networks in limitations [1] and [2] is referred to. Thus the limitation is
within the scope of any art that describes either.
The claims do not impose any particular sequence upon the steps.
Having laid out these claim construction findings, the only issue is
whether the art describes the first limitation, or at least whether that
limitation is predictable in light of the art. That limitation is "receiving a
data record from point-of-sale computing system, the data record including a
point-of-sale advertisement and identifying an associated local area network
through which the point-of-sale advertisement is to be delivered." The
Examiner finds that both references suggest this. Ans. 5-10. Hatch
describes adding an advertisement to a web page once the web page is
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associated with a LAN. Thus Hatch describes a web page record having an
advertisement, and the record identifying a LAN by virtue of its physical
location. Amjadi describes generating product incentives (i.e. advertising
and promotion) based on a wireless access point (WAP). To do so Amjadi
creates a unique identifier for the W AP and sends the promotion to the user
at that W AP. This implies that both the promotion information and W AP
identifier are in the same record. Both references describe internet
transmission which necessarily identifies the client device in its packets, for
otherwise the packets could not reach the client device. This identification is
yet another form of identifying the LAN to which the client device is
attached.
We are also not persuaded by Appellant's argument that the Examiner
cites no teaching of any association of any identifier of a local area network
with an advertisement. Appellant contends that such an identifier would be
superfluous in Hatch because there is only a single LAN. Appellant
contends it finds no teaching or suggestion in Amjadi that any LAN
identifier can be associated with an advertisement to specify a particular
LAN through which the advertisement is to be delivered. Appeal Br. 9--11.
As we found supra, this argument is not commensurate with the scope of the
claim which does not recite such an identifier.
Appellant then contends that under the broadest reasonable
interpretation, the recited identifying requires an identifier because an
identifier is recited in Specification paras. 27-28. Reply Br. 9-12. Those
paragraphs describe "one way in which that particular LAN can be
identified," i.e. an example of an implementation. As we said under the non-
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statutory subject matter rejection, supra, we do not import limitations from
the Specification into the claims.
Further, as we also found supra, both references rely on the Internet
which necessarily carries an identifier to the LAN of the client device in
every record and Amjadi creates a unique identifier for the WAP and sends
the promotion to the user at that W AP. This implies that both the promotion
information and W AP identifier are in the same record, or at least made it
predictable to one of ordinary skill to do so.
CONCLUSIONS OF LAW
The rejection of claims 1-7 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 1-7 under 35 U.S.C. § 103(a) as unpatentable
over Hatch and Amjadi is proper.
DECISION
The rejection of claims 1-7 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)(l)(iv) (2011).
AFFIRMED
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