Ex Parte Fugman et al

Patent Trial and Appeal Board

Jun 28, 2018

13476756 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/476,756 05/21/2012 Corey Fugman
65656 7590 07/02/2018
KILPATRICK TOWNSEND & STOCKTONLLP/Apple
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
090911-Pl l 465US 1-0807431 1440
EXAMINER
SEIBERT, CHRISTOPHERB
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COREY FUGMAN, JASON RASKIN, DAVID DEN BOER, and
JOEL LEVIN
Appeal2017-000763
Application 13/476,756
Technology Center 3600
Before MURRIEL E. CRAWFORD, KENNETH G. SCHOPPER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1, 3-13, 15 and 31-36. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
BACKGROUND
Appellants' invention is directed to a dynamic, location-based signage
system and methods. Spec. 1
Appeal2017-000763
Application 13/476,756
Claim 1 is illustrative:
1. A method for providing information about a product, the
method comprising:
determining, by a dynamic signage device, coordinates based at
least in part on a signal received by a Global Positioning
System (GPS) receiver in the dynamic signage device;
sending, to a server, location information comprising at least
the coordinates, wherein the server uses the location
information to identify a product associated with the
dynamic signage device;
obtaining, by the dynamic signage device, product information
for a product associated with the dynamic signage device from
the server;
displaying, by the dynamic signage device, a first screen of
product information for a customer;
receiving, by the dynamic signage device, input from the
customer in response to the first screen;
modifying, by the dynamic signage device, the displayed screen
based on the received input; and
dynamically obtaining, by the dynamic signage device, updated
product information from the server.
Appellants appeal the following rejection( s):
Claims 1, 3-13, 15, and 31-36 under 35 U.S.C. § lOl(b) as being
directed to patent ineligible subject matter.
Claims 1, 3-13, 15, and 31-36 under 35 U.S.C. § 103(a) as
unpatentable over Zai et al., (US 2008/0284566 Al, published Nov. 20,
2008) in view of Franco et al. (US 2009/0012704 Al, published Jan. 8,
2009) and further view of McGill (US 2005/0284933 Al, published Dec. 29,
2005).
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
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Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct.
2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("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."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594-595 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594-95; and basic tools of
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scientific and technological work, Gottschalk, 409 U.S. at 67. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. Cy her Source
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display, without more,
are directed to an abstract idea. Elec. Power Grp. LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "'collecting information,
analyzing it, and displaying certain results of the collection and analysis" are
'"a familiar class of claims "directed to' a patent ineligible concept"); see
also In re TL! Comma 'ns LLC Patent Litig.,, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'!
Ass'n, 776 F.3d 1343, 1345 (Fed. Cir. 2014). Claims that use generic
computer technology to perform data collection, analysis, and display and do
not recite an improvement to a particular computer technology are also
directed to an abstract idea. See, e.g., McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims not
abstract because they "focused on a specific asserted improvernent in
computer animation").
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If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
ANALYSIS
Rejection under 35 U.S. C. §1 OJ
The Examiner determines that the claims are directed to displaying
information and are similar to the claims found abstract in Content
E'xtraction, which were directed to collecting data, recognizing certain data
within the collected data set, and storing that recognized data in a memory.
See Content Extraction, 116 F.3d at 1345 (Fed. Cir. 2014). Final. Act. 2.
The Examiner finds that the other elements in addition to the abstract
idea undertake their roles in performance of their activities according to their
generic functionalities which are well-understood, routine and conventional
and thus do not amount to significantly more than the abstract idea. Final
Act. 3.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the Examiner oversimplified the claims.
Appellants argue that the claims are directed to a detailed set of actions
whereby the product information that is displayed is identified based on an
analysis of determining where a dynamic signage device is located and
identifying a product based on the location. However, these steps that the
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Appellants argue relate to a detailed set of actions are nonetheless steps
involving the collection, analysis, and display of data and as such are part of
the abstract idea identified by the Examiner.
We are also not persuaded of error on the part of the Examiner by
Appellants argument that the Examiner has not pointed to any case where a
similar concept has been found to be an abstract idea because, as we stated
above, the Examiner did point to Content as including similar concepts.
Appellants argument that the claims are similar to those in cases in
which the claims were found patent eligible because the claims address a
technical problem of how to enable a physical signage device to display
information about nearby products is not persuasive because claim 1 does
not relate to the technical mechanism a physical signage device uses to
display information. In this regard, while claim 1 recites that the dynamic
signage device displays a first screen of product information, nothing is
recited related to how this display is performed.
We are not persuaded of error on the part of the Examiner by
Appellants argument that the recited claim elements add unconventional
steps that confine the claim to a particular useful application. The fact that
the claims have a useful or practical application is not enough to transform
the collection, analysis, and display abstract idea to which clairn 1 is directed
into a patent-eligible inventive concept. Cf CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) ("T'lie Court [ in
Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation
of a practical application for the calculation could alone make the invention
patentable.").
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To the extent Appellants are arguing that the limitations of claim l
necessarilv amount to "significantly more" than an abstract idea because the
~ ~, ~
claimed apparatus is unconventional and therefore patentable over the prior
art, Appellants misapprehend the controlling precedent Although the
second step in the Alice!kf ayo framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for '""an efoment or combination of
elements that is sufficient to ensure that the patent in practice arnounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice,
134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely
abstract idea is~ nonetheless, patent-ineligible. See Mayo, 566 U.S. 89-91
(2012).
Appellants' argument that the claims provide an improvement to a
technical field and to the functioning of the device itself are unpersuasive
because the improvements touted by the Appellants of identifying and
communicating correct information do not relate to how the various devices
used in the method are improved but rather relate to the collection, analysis,
and display of data which is part of the abstract idea itself. In this regard,
the Appellants do not establish that the signage device or server is improved
in any way. The same can be said for the related argument that the
communication of GPS signals and a server enables the signage device to
display product information, i.e. this argument is not related to an
improvement in the signage device or its connection to the server or use of
GPS signals.
In regard to claims 8, and 31-36, the Appellants argue that the
Examiner failed to assert that the claim features that a server is queried to
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determine whether update product information is displayed when an
effective time arrives are abstract. The Examiner included claims 8 and 3 1-
36 in the discussion of the rejection of claim 1. Final Act. 2. Claim 8, for
example, recites the steps of querying a server, receiving a reply from the
server, and based on the reply, retrieving data from the server and analyzing
the data to determine an effective time and displaying data. As such, like
claim 1, claim 8 is directed to the collection, analysis, and display of data
and is covered by the analysis of the Examiner found on pages 2-4 of the
Final Action. Claims 31-36 are also directed to the collection, analysis, and
display of data.
\Ve find untimely Appellants' argument in the Reply Brief which
were raised by Appellants for the first time in the Reply Brief: and are not in
resrmnse to a new issue brought ur) bv the Examiner in the Answer. t '--' t .,I
Appellants are reminded that:
[T']he purpose of a reply brief is to ensure the A ppeUant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
nevv grounds of rejection the Examiner may have raised in the
answer, or to address changes or developments in the law that
may have occmi-ed after the principal brief was filed. The reply
brief is not an opportunity to n1ake 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.
Giving cognizance to belated arguments in a reply would vitiate
the frwce of the requirement in Board Rule 37(c )(1 )(vii) that
"'[a]ny argmnents or authorities not included in the brief.. wrn
be refosed consideration bv the Board, unless good cause is
J . ~
shown." The reference in that section to the '"reply brief filed
pursuant to § 41 Al" does not create a right for the Appe11ant to
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raise an argument in the reply brief that could have been raised
in the principal brief but was not Rather, that reforence rnerely
puts Appellants on notice that arguments that could be made in
the reply brief: but are not, are \vaived.
Exparte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010). \Ve therefore
consider Appellants' argument raised in the Reply Brief to be waived.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1 and claims 3-11 dependent therefrom. We will also sustain the
rejection as it is directed to claims 31-3 6. We will also sustain the rejection
as it is directed to claims 12, 13 and 15 because the Appellants have not
argued the separate patent eligibility of these claims.
Obviousness
We are not persuaded of error on the part of the Examiner by
Appellants' argument that Zai does not disclose determining location based
on a signal received by a GPS receiver because this argument is directed to
the teachings of Zai alone. The rejection is not based on Zai alone but on the
combined teachings of Zai, Franco and McGill. Nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co. Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986). In this
regard, Franco is relied on for teaching determining coordinates based at
least in part of a signal received by a GPS.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 1 and claims 5-11 dependent therefrom. We will also sustain the
rejection as it is directed to claims 12, 13, and 15 because the Appellants
have not argued the separate patentability of these claims.
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We will not sustain the rejection as it is directed to claims 3, 4, 15,
and 31-36 because we agree with the Appellants that the Examiner has not
established that Zai discloses receiving by the dynamic storage device, input
from the employee indicating a location of the dynamic signage device
within the environment. The Examiner relies on paragraphs 42, 53, and 68
of Zai for teaching this subject matter. We find that although these portions
of Zai do disclose that the location of the dynamic signage device can be
seen on the interface of the dynamic signage device, the Examiner has not
directed our attention to a portion of the Zai reference that discloses that the
location is received by the device from the input of the employee.
DECISION
We affirm the Examiner's § 101 rejection.
We also affirm the Examiner's§ 103 rejection of claims 1, 5-11, 12,
13, and 15.
We will not affirm the Examiner's §103 rejection of claims 3, 4, 15,
and 31-36.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l) (2009).
ORDER
AFFIRMED
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