Ex Parte Piccionelli et al

Patent Trial and Appeal Board

Nov 6, 2018

13317622 (P.T.A.B. Nov. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/317,622 10/24/2011
116438 7590
Apogee Law Group
26895 Aliso Creek Road
Suite 104
Aliso Viejo, CA 92656
11/08/2018
FIRST NAMED INVENTOR
Gregory A. Piccionelli
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.
39003.806US03 5879
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
11/08/2018 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):
jcwilk@goapogee.com
mara@goapogee.com
docketing@goapogee.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY A. PICCIONELLI and MICHAEL M. GERARDI
Appeal2017-005549 1
Application 13/317,6222
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-8, 10-18, 33-35, and 38-55. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
November 15, 2016) and Reply Brief ("Reply Br.," filed February 15, 2017),
and the Examiner's Answer ("Ans.," mailed December 15, 2016) and Final
Office Action ("Final Act.," mailed June 15, 2016).
2 Appellants identify the inventors, Gregory A. Piccionelli and
Michael M. Gerardi, as the real parties in interest. App. Br. 1.
Appeal2017-005549
Application 13/317 ,622
CLAIMED INVENTION
Appellants' claimed invention "relates to a method[,] system[,] and
apparatus for enabling an inquiring individual to contact a target individual
and for the target individual to authorize such contact" (Spec. 1 ).
Claims 1, 33, and 38 are the independent claims on appeal. Claims 1
and 38, reproduced below, are illustrative of the claimed subject matter:
1. A method of establishing personal contact between
an inquiring individual and a target individual, the inquiring and
target individuals being members of an organization, the method
comprising the steps of:
a) identifying a target individual located in a specific
geographic area with a network enabled inquiring device that is
able to communicate over a network and associated with an
inquiring individual in response to the inquiring individual, the
network enabled inquiring device identifying the specific
geographic area of the target individual, where the specific
geographic area is in visual proximity of the network enabled
inquiring device,
b) determining a location of the specific geographic area
and transmitting via the network enabled inquiring device to a
computer of the organization that is accessible by the network,
c) providing to a communication device that is able to
access the network and is associated with the target individual a
message from the computer in response to the receipt of the
location and identifying the communication device associated
with the target individual, wherein the message includes
information that the inquiring individual is interested in
establishing personal contact with the target individual,
d) providing the network enabled inquiring device with
authorization to establish personal contact with the target
individual when the target individual provides a positive
response via the communication device,
e) selecting an on-line video file for co-ordinated on-line
video viewing by the inquiring individual on the network enabled
inquiring device and the target individual on the communication
device, in response to a prompt from the computer, and
2
Appeal2017-005549
Application 13/317 ,622
f) viewing at least a portion of the selected on-line video
file, the viewing being performed simultaneously by the network
enabled inquiring device and the communication device.
38. A method of establishing contact between an
inquiring individual and a target individual, the inquiring and
target individuals being members of an organization, the method
comprising the steps of:
a) accessing a computer of the organization via a network;
b) receiving network enabled inquiring device location
data at the computer from a network enabled inquiring device
associated with an inquiring individual via the network, where a
specific geographic area is determined by the computer after
receipt of network enabled inquiring device location data;
c) receiving communication device location data at the
computer from a communication device associated with a target
individual via the network, where the communication device is
determined to be in the specific geographic area in response to
receipt of communication device location data by the computer;
d) sending an inquire message from the computer to the
communication device that indicates data associated with the
computer from a network enabled inquiring device is sought to
be exchanged with the communication device; and
e) receiving an authorization message at the computer that
enables additional communication regarding the network
enabled inquiring device from the computer.
REJECTIONS
Claims 1-8, 10-18, and 39-55 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out, and
distinctly claim the subject matter that Appellants regard as the invention.
Claims 1-8, 10-18, 33-35, and 38-55 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claim 38 is rejected under 35 U.S.C. § I02(e) as anticipated by
Stevens (US 2004/0014457 Al, pub. Jan. 22, 2004).
3
Appeal2017-005549
Application 13/317 ,622
Claims 1, 4--8, 10-16, 18, and 39--55 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Stevens, Mayer (WO 01/98856 A2,
pub. Dec. 27, 2001), and Jacoby et al. (US 2006/0271960 Al, pub. Nov. 30,
2006) ("Jacoby"). 3
Claim 2 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Stevens, Mayer, Jacoby, and Banbury (US 5,646,783, iss. July 8, 1997).
Claim 3 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Stevens, Mayer, Jacoby, Banbury, and Risemberg (US 5,920,845, iss. July 6,
1999).
Claim 17 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Stevens, Mayer, Jacoby, and Ackerman (US 2003/0200217 Al,
pub. Oct. 23, 2003).
Claims 33-35 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Stevens, Frank Armstrong, "What's love got to do with it?
Everything," Kingston Whig-Standard, Kingston, Ont. (Jan. 19, 2000)
("Armstrong"), and Jacoby.
ANALYSIS
Indefiniteness
Appellants do not present any response to the Examiner's rejection of
claims 1-8, 10-18, and 39--55 under 35 U.S.C. § 112, second paragraph.
Therefore, the Examiner's rejection is summarily sustained.
3 We treat, as inadvertent, the Examiner's omission of claim 18 in
identifying the claims subject to rejection at page 7 of the Final Office
Action in view of the Examiner's discussion of claim 18 at page 10.
4
Appeal2017-005549
Application 13/317 ,622
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, 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 Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth 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 Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
5
Appeal2017-005549
Application 13/317 ,622
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under § 101, the Examiner
determined that claims 1-8, 1 0-18, 3 3-3 5, and 3 9-5 5 are directed to
"identifying a target individual located in a specific geographical area and
establishing contact," which the Examiner concluded is a method of
organizing human activity and, therefore, an abstract idea, and that claim 3 8
is directed to "establishing contact between two people," i.e., to a method of
organizing human activity related to managing transactions between people
(Final Act. 3). The Examiner also determined that the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception (id.).
Appellants argue that the rejection cannot be sustained because the
Examiner has failed to consider the claims as a whole (App. Br. 9). Quoting
limitations c) through f), as recited in claim 1, Appellants assert that "[ n Jo
simple out of the box computer is capable of these functions. It must be
further enabled to communicate to a server that receives and provides
responses as claimed and described in the Application" (id. at 10).
Appellants, thus, maintain "there is an improvement to the functioning
of the computer itself and limitations beyond generally linking the use of an
abstract idea to a particular technological environment" (id.). Yet, we find
no indication in the record, nor do Appellants direct us to any indication, that
the particular operations recited in claim 1 require any specialized computer
hardware or other inventive computer components, invoke any assertedly
inventive programming, or that the claimed invention is implemented using
6
Appeal2017-005549
Application 13/317 ,622
other than generic computer components to perform the claimed method
steps.
Appellants do not purport to have invented enabling communication
to a server from a device. Indeed, as the Examiner observes, generic
processors and computers, predating the claimed invention, are able to
communicate with a server to transmit and receive information (Ans. 3).
Moreover, we find nothing in the Specification that attributes any
improvement in network communication, e.g., enabling a computer to
communicate with a server, to the claimed invention.
We also are not persuaded of Examiner error by Appellants' further
argument that the claims are not directed to organizing human activity but
instead are about devices that are associated with people (App. Br. 10-11).
Appellants' argument, as best understood, is that the claims recite
interactions between devices associated with people as opposed to
interactions between the individuals themselves. But, as the Examiner
observes, the devices are merely the platform on which the organization of
human activity is implemented, i.e., the devices are merely used to convey
information that could be conveyed in a face-to-face manner (Ans. 4).
We are not persuaded, on the present record, that the Examiner erred
in rejecting 1-8, 10-18, 33-35, and 38-55 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection.
Anticipation
Appellants contend that the rejection of claim 38 under 35 U.S.C.
§ 102( e) is improper, and cannot be sustained because Stevens does not
disclose "sending an inquire message from the computer to the
communication device that indicates data associated with the computer from
7
Appeal2017-005549
Application 13/317 ,622
a network enabled inquiring device is sought to be exchanged with the
communication device," as recited in claim 38 (App. Br. 11). Appellants,
thus, argue that what Stevens discloses (in paragraph 64, on which the
Examiner relies) is "users transmitting messages to one another directly
(such as with text or email)," i.e., direct communication, as opposed to the
communication being sent and received by the organization's computer, as
called for in claim 38 (id.).
Responding to Appellants' argument in the Answer, the Examiner
notes that the claim language only pertains to the sending of a message from
a computer to a device, and the Examiner cites paragraphs 48, 52, and 62---63
of Stevens as disclosing that "the system can be implemented via a common
servicer that performs the matching and communicating" and, therefore,
disclosing that the communication is not direct (Ans. 4).
Appellants do not address these portions of Stevens either in their
Appeal Brief or Reply Brief. Nor do Appellants otherwise provide any
argument to demonstrate that the Examiner's findings are unreasonable or
unsupported.
Therefore, we sustain the Examiner's rejection of claim 38 under
35 U.S.C. § 102(e). Cf In re Baxter Travenol Labs., 952 F.2d 388, 391
(Fed. Cir. 1991) ("It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.").
Obviousness
Independent Claim 1 and Dependent Claims 4---8, 10-16, 18, and 39-55
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) at least because
8
Appeal2017-005549
Application 13/317 ,622
Stevens, on which the Examiner relies, does not disclose or suggest that the
inquiring individual initiates identification of a target individual, i.e.,
identifying a target individual located in a specific geographic
area with a network enabled inquiring device that is able to
communicate over a network and associated with an inquiring
individual in response to the inquiring individual, the network
enabled inquiring device identifying the specific geographic area
of the target individual, where the specific geographic area is in
visual proximity of the network enabled inquiring device[,]
as recited in claim 1 (App. Br. 12-13).
The Examiner ostensibly does not contend that the cited references
disclose or suggest that the inquiring individual initiates identifying a target;
instead, the Examiner finds that "claim 1 does not positively claim that the
inquiring individual identifies the target, only that the inquiring individual
performs some act which leads to the identification" (Ans. 5). We disagree.
In our view, a person of ordinary skill in the art, on reviewing the
Specification, would reasonably understand what is claimed in claim 1,
namely that the inquiring individual initiates identifying a target, and in
response to this identification, i.e., "in response to the inquiring individual,"
the specific geographic area of the target individual is identified, where the
geographic area is in visual proximity of the inquiring individual's network
enabled inquiring device.
The Examiner has not established on this record that Stevens, Mayer,
and/or Jacoby, individually or in combination, meet the claim language, as
properly construed. Therefore, we do not sustain the Examiner's rejection of
claim 1 under 35 U.S.C. § 103(a). For the same reason, we also do not
sustain the Examiner's rejection of dependent claims 4--8, 10-16, 18, and
39-55. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent
9
Appeal2017-005549
Application 13/317 ,622
claims are nonobvious if the independent claims from which they depend are
nonobvious").
Dependent Claims 2, 3, and 17
Claims 2, 3, and 17 depend, directly or indirectly, from independent
claim 1. The rejections of these dependent claims does not cure the
deficiency in the rejection of claim 1. Therefore, we do not sustain the
rejections of dependent claims 2, 3, and 17 under 35 U.S.C. § 103(a) for the
same reasons set forth above with respect to independent claim 1.
Independent Claim 33 and Dependent Claims 34 and 35
Independent claim 3 3 includes language substantially similar to the
language of claim 1, and stand rejected based on the same rationale, with
respect to Stevens, applied with respect to claim 1. Therefore, we do not
sustain the Examiner's rejection under 35 U.S.C. § 103(a) of independent
claim 33, and claims 34 and 35, which depend therefrom, for the same
reasons set forth above with respect to independent claim 1.
DECISION
The Examiner's rejection of claims 1-8, 10-18, and 39-55 under
35 U.S.C. § 112, second paragraph, is affirmed.
The Examiner's rejection of claims 1-8, 10-18, 33-35, and 38-55
under 35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claim 38 under 35 U.S.C. § 102( e) is
affirmed.
The Examiner's rejections of claims 1-8, 10-18, 33-35, and 39-55
under 35 U.S.C. § 103(a) are reversed.
10
Appeal2017-005549
Application 13/317 ,622
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
11