Mark Charlebois et al.

Patent Trials and Appeals Board

Jan 14, 2020

12271638 - (D) (P.T.A.B. Jan. 14, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/271,638 11/14/2008 Mark Charlebois QC072406 4604
12371 7590 01/14/2020
Muncy, Geissler, Olds & Lowe, P.C./QUALCOMM
4000 Legato Road, Suite 310
Fairfax, VA 22033
EXAMINER
OSMAN BILAL AHMED, AFAF
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
01/14/2020 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):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK CHARLEBOIS, DILIP KRISHNASWAMY, JAMES
CARY, YINIAN MAO, and JOHN JOZWIAK
Appeal 2018-006679
Application 12/271,638
Technology Center 3600
Before CAROLYN D. THOMAS, NABEEL U. KHAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–95. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
QUALCOMM Incorporated. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to methods and systems for determining a
geographic user profile to determine suitability of targeted content messages
based on the profile. Spec., Title. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for determining suitability of targeted content
messages to be received by a mobile client, comprising:
tracking, within the mobile client, location history
information associated with a user of the mobile client according
to detected locations associated with the mobile client;
updating, within the mobile client, a user profile stored
within the mobile client based at least in part on the location
history information, wherein the user profile is updated within
the mobile client without exposing the location history
information over a communication network;
performing, within the mobile client, location-based
matching to determine demographic targeting information
associated with the user of the mobile client based at least in part
on the location history information used to update the user profile
stored within the mobile client; and
receiving, at the mobile client, at least one targeted content
message to display or store on the mobile client via the
communication network based at least in part on the
demographic targeting information associated with the user of
the mobile client without exposing personal information
associated with the user over the communication network.
Appeal Br. 27 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner is:
Bell US 7,487,017 B1 Feb. 3, 2009
Demello
Steele
Gronemeyer
US 2001/0036224 A1
US 2002/0046084 A1
US 2006/0195260 A1
Nov. 1, 2001
Apr. 18, 2002
Aug. 31, 2006
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Morse
Horvitz
Logan
Altman
Krumm
US 2006/0277271 A1
US 2007/0005419 A1
US 2007/0037610 A1
US 2008/0133336 A1
US 2010/0010733 A1
Dec. 7, 2006
Jan. 4, 2007
Feb. 15, 2007
June 5, 2008
Jan. 14, 2010

REJECTIONS
Claims 1–95 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter. Final Act. 2–6.
Claims 1, 28, 30, 31, 33, 34, 60, 62, 74, 84, and 93 stand rejected
under 35 U.S.C. § 112, first paragraph for lack of written description. Final
Act. 6–7.2
Claims 1–15, 19–27, 33–38, 42–58, 62–66, 68–72, 74, 76–81, 87, 90–
95 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Steele, Morse, and Demello.3 Final Act. 8–16.

2 The statements of rejection under §§ 101 and 112 are not set forth in the
final Office Action issued on April 20, 2017. The statements of rejection are
set forth in the prior, Non-Final Office Action issued May 10, 2016 (“Non-
Final Act.”). See Non-Final Act. 6–8 (setting forth § 101 rejection) and 8–
10 (§ 112 rejection). However, the Final Office Action makes clear that the
rejections were maintained, and Appellant’s Brief reflects that
understanding.
3 It does not appear that the Examiner rejected claim 49 under 35 U.S.C.
§ 103. Appellant indicates an understanding that all pending claims are
rejected under § 103. App. Br. 18 (“Regarding the Rejections of Claims 1–
95 Under 35 U.S.C. § 103”). Given Appellant’s understanding, and because
claim 49’s limitation is substantively similar to that of claim 2, we treat
claim 49 as being rejected on similar grounds as claim 2.
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Claims 16–18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Steele, Morse, Demello,4 and Gronemeyer. Final
Act. 16–17.
Claims 28–31, 59, 73, 82, 83, and 85 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Steele, Morse, Demello, and Horvitz.
Final Act. 17–18.
Claims 30, 60, 74, and 84 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Steele, Morse, Horvitz, Demello, and Bell. Final
Act. 18–19.
Claims 32, 35, 61, 75, and 86 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Steele, Morse, Demello, Horvitz, and Krumm.
Final Act. 19–20.
Claims 39, 40, 88, and 89 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Steele, Morse, Demello, and Altman. Final
Act. 20–21.
Claim 41 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Steele, Morse, Demello, Altman, and Logan. Final
Act. 21.

4 The Examiner’s statement of rejection does not identify Demello as being
applied to the rejection of claims 16–18. Claims 16–18 depend from claim 1
which was rejected over Demello, so we understand the basis of the rejection
of the dependent claims to also include Demello, and its absence from the
statement of rejection in this and subsequent rejections as a typographical
error by the Examiner.
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REJECTION UNDER 35 U.S.C. § 101
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court instructs us
to “first determine whether the claims at issue are directed to a patent-
ineligible concept,” Id. at 217–18, and, in this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which 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. (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court describes
the second step 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. (quoting Mayo, 566 U.S. at 72–73).
The USPTO has published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (referred to Step 2A, prong 1 in
the Guidance); and
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(referred to Step 2A, prong 2 in the Guidance).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then move to Step
2B of the Guidance. There, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 52.
Examiner’s Findings and Conclusion
The Examiner rejects claim 1 as being directed to a judicial exception
without significantly more under Alice. Non-Final Act. 6–8. In the first step
of the Alice inquiry, the Examiner determines the claim 1 is directed to
“determining suitability of targeted content messages to be received by a
mobile client, comprising tracking within the mobile client location history
information associated with a user of the mobile client according to detected
locations associated with the mobile client,” characterizing the claim as
reciting a fundamental economic practice. Non-Final Act. 7 (emphasis
omitted). The Examiner further determines claim 1 is abstract because its
limitations are “directed toward collecting information, analyzing it, and
displaying certain results of the collection and analysis.” Ans. 3.
Under Alice step 2, the Examiner determines that the claim does not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because:
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Viewing these limitations individually, these limitations merely
represent data description steps as inputs to the abstract idea
and/or insignificant post-solution activity. Moreover, these
limitations do not constitute significantly more because they are
simply an attempt to limit the abstract idea to a particular
technological environment. Viewing these limitations in
combination with the elements that set forth the abstract idea, the
claims merely instruct the practitioner to implement the abstract
idea with high-level, generic technology executing routine
functions. Furthermore, the limitations which set forth the
abstract idea do not appear to be sufficiently supported by the
required algorithm(s) necessary to carry out their claimed
function in a specific, limiting manner, thereby indicating a high
level of preemption.
Non-Final Act. 7.
Appellant’s Contentions
Appellant argues that there are several deficiencies in the rejection.
Appeal Br. 6–10. Appellant argues the Examiner has failed to explain “how
or why ‘determining suitability of targeted content messages to be received
by a mobile client, comprising tracking within the mobile client location
history information associated with a user of the mobile client according to
detected locations associated with the mobile client’ is ‘a fundamental
economic practice,’ [as in Alice].” Appeal Br. 7. Appellant further argues
the Examiner has failed to show how the claim limitations amount only to
abstract data collection, analysis, and output. Id. Appellant asserts claim 1
is not directed to a fundamental economic practice because, if that were so,
“the Examiner would not need to rely on the combination of three separate
references to reject independent claim 1 under § 103.” Appeal Br. 9.
Appellant posits that claim 1 is not directed to an abstract idea, but instead
“is directed to protecting the privacy of the user’s personal information
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despite the mobile client communicating over a communication network to
receive targeted content messages.” Appeal Br. 9.
Appellant also challenges the Examiner’s determination under the
second step of the Alice inquiry. Appellant argues that various features
recited in the claim are not well understood, routine, and convention.
Appeal Br. 11. Appellant asserts that the claims are patentable over the prior
art, and as such, “if a claim recites features that are not known under § 102
and are not obvious under § 103, the claim necessarily recites features that
are not ‘well-understood, routine and conventional’ under § 101.” Appeal
Br. 11.
Appellant further argues claim 1 provides an improvement to another
technology or technical field because it solves problems relating to
maintaining legally-mandated privacy in delivering targeted advertising
messages, and doing so “without exposing potentially sensitive customer
information to the outside world” by “offloading a variety of processes onto
a user’s [mobile device].” Appeal Br. 14.

Revised Guidance, Step 2A, Prong One 5
The Judicial Exception
Applying the Guidance, we are not persuaded the Examiner has erred
in rejecting claim 1 as being directed to patent-ineligible subject matter. The
Guidance instructs us first to determine whether any judicial exception to
patent eligibility is recited in the claim. The Guidance identifies three

5 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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judicially-excepted groupings: (1) mathematical concepts, (2) certain
methods of organizing human activity such as fundamental economic
practices and commercial interactions, and (3) mental processes. We focus
our analysis on the second grouping—certain methods of organizing human
activity such as fundamental economic practices and commercial
interactions.6
Claim 1 recites the following limitations: (1) “method for determining
suitability of targeted content messages,” (2) “tracking . . . location history
information associated with a user . . . according to detected locations,”
(3) “updating . . . a user profile . . . based at least in part on the location
history information,” (4) “performing . . . matching to determine
demographic targeting information associated with the user . . . based at least
in part on the location history information used to update the user profile,”
(5) “receiving . . . at least one targeted content message to display or store
. . . based at least in part on the demographic targeting information
associated with the user.” Appeal Br. 27 (Claims Appendix). These
limitations, under their broadest reasonable interpretation (under which the
recited “content messages” may include advertising messages), recite a
fundamental economic practice and commercial interaction of location-

6 Appellant’s arguments are made to the claims generally.
We treat claim 1 as representative. 37 C.F.R. § 41.37(c)(iv) (“When
multiple claims subject to the same ground of rejection are argued as a group
or subgroup by Appellant, the Board may select a single claim from the
group or subgroup and may decide the appeal as to the ground of rejection
with respect to the group or subgroup on the basis of the selected claim
alone.”).
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based, targeted advertising because the limitations all recite operations that
would typically take place in implementing such a scheme.
For example, determining the suitability of targeted content messages
for a particular recipient as recited in preamble recitation (1) is typical of any
targeted ad placement. Similarly, tracking locations of ad recipients and
updating user profiles based on those locations, as recited in limitations (2)
and (3), is also characteristic of a location-based targeting scheme.
Matching users to demographic targeting information and delivering the
targeted advertisement for viewing by the user, as recited in limitations (4)
and (5), are standard operations in a location-based ad placement
environment. Like the concept of intermediated settlement in Alice, and the
concept of hedging in Bilski (which like the instant claims involves
evaluating and managing risk in a financial transaction), the concept of
location-based, targeted advertising recited in Appellant’s claims “is a
fundamental economic practice long prevalent in our system of
commerce.” Alice, 573 U.S. at 219 (citations and internal quotation marks
omitted). Indeed, it has long been the practice of advertisers to target
specific demographics for ad placements. For example, in television,
advertisers have long placed advertisements on programs having audiences
with a specific demographic profile, and have also placed ads in certain
television markets (i.e., based on the location of the customer), but not in
others television markets. Accordingly, we conclude the location-based,
targeted advertising method set forth in claim 1 recites a judicial exception
of a fundamental economic practice and commercial interaction, which is
certain method of organizing human activity under the Guidance.
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Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Having determined that claim 1 recites a judicial exception, our
analysis under the Memorandum turns now to determining whether there are
“additional elements that integrate the [judicial] exception into a practical
application.” See Guidance, 84 Fed. Reg. at 54–55 (citing MPEP
§ 2106.05(a)–(c), (e)–(h)).
Under the Guidance, limitations that are indicative of “integration into
a practical application” include:
1. Improvements to the functioning of a computer, or to any other
technology or technical field — see MPEP § 2106.05(a);
2. Applying the judicial exception with, or by use of, a particular
machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article to
a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to
monopolize the exception — see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of “integration into a
practical application” include:
1. Adding the words “apply it” (or an equivalent) with the judicial
exception, or merely include instructions to implement an
abstract idea on a computer, or merely uses a computer as a tool
to perform an abstract idea – see MPEP § 2106.05(f);
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2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP 2106.05(h).
See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
Appellant’s claim 1 recites elements additional to those identified
above. These limitations include (a) the recited operations are performed on
or within “a mobile client;” (b) user profile updates are made “without
exposing the location history information over a communication network,”
and (c) the targeted content is received “without exposing personal
information associated with the user over the communication network.”
Appeal Br. 27 (Claims Appendix).
We conclude that these limitations are insufficient to integrate the
recited judicial exception into a practical application. The use of a “mobile
client” is not sufficient to integrate the judicial exception into a practical
application because it is well-established that the use of generic hardware to
implement an abstract idea is insufficient to integrate it into a practical
application.
Similarly, limitations (b) and (c), which recite performing operations
“without exposing the location history information over a communication
network” do not integrate the abstract idea into a practical application.
These limitations are negative limitations which focus on a desired result—
not exposing location history information over a communication network,
and not on any specific means for achieving that result. Our reviewing court
has held that claims which focus on a desired result, rather than the means
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for achieving that result, is not sufficient to remove a claim from the abstract
realm. Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir.
2018) (“In other words, those latter claims failed to recite a practical way of
applying an underlying idea; they instead were drafted in such a result-
oriented way that they amounted to encompassing the ‘principle in the
abstract’ no matter how implemented.”). As written, the claim covers any
means to achieve the desired result, and does not require any specific way of
doing so. Consequently, the additional limitations in Appellant’s claim 1
amount only to mere instructions to apply the judicial exception, and do not
integrate the judicial exception into a practical application. MPEP
§ 2106.05(f)(1) (“The recitation of claim limitations that attempt to cover
any solution to an identified problem with no restriction on how the result is
accomplished and no description of the mechanism for accomplishing the
result, does not provide significantly more because this type of recitation is
equivalent to the words ‘apply it’.”). We conclude claim 1 is directed to a
judicial exception.
The Inventive Concept – Step 2B
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether the claim adds a specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field (see MPEP § 2106.05(d)) or simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. See Guidance at 56.
Our review of the Examiner’s rejection under Step 2B is guided by the
revised examination procedure published online by the USPTO on April 19,
2018, entitled “Changes in Examination Procedure Pertaining to Subject
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Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.)” (“Berkheimer Memorandum”), which imposed a new fact finding
requirement for Examiners, as applicable to rejections under § 101. We
agree with the Examiner that the claim does not add specific limitations
beyond what is well-understood, routine, and conventional.
As noted above, Appellant argues that because claim 1 is patentable
over the prior art, it “necessarily recites features that are not ‘well-
understood, routine and conventional’ under § 101.” Appeal Br. 11. We
disagree. This argument lacks merit because it presupposes that any claim
found to be novel and non-obvious over prior art cannot be an abstract idea
in the Alice/Mayo framework. We are aware of no case supporting this
proposition, nor does Appellant cite to any. Nor would such a rule make
sense, as it would limit the application of 35 U.S.C. § 101 to only those
claims found to be otherwise unpatentable under other sections of the Patent
Act (e.g., 35 U.S.C. §§ 102, 103, 112). Moreover, most of the claim
limitations Appellant asserts are not well-understood, routine, and
conventional are themselves abstract. Appeal Br. 11 (asserting all elements
of claim 1 are not well-understood, routine, and conventional). In Step 2B,
however, our analysis focuses on the additional elements—those beyond
what is abstract.
Nor is Appellant’s argument that claim 1 provides an improvement to
another technology or technical field persuasive. Appellant asserts claim 1
solves problems relating to maintaining legally-mandated privacy in
delivering targeted advertising messages, and doing so “without exposing
potentially sensitive customer information to the outside world” by
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“offloading a variety of processes onto a user’s [mobile device].” Appeal
Br. 14.
We are not persuaded by this argument. The problem of maintaining
legally-mandated privacy is not a technological problem, but a legal
requirement. Moreover, as we discussed above, the allegedly technical
solution recited in claim 1—not exposing information over the network—
amounts to claiming a desired result, but without claiming any means for
achieving that result.
Appellant also challenges the evidentiary basis of the Examiner’s
finding in step 2B of the Guidance (Alice step 2). Reply Br. 3–4. We are
not persuaded of Examiner error. Appellant again asserts that evidence is
required which demonstrates that all claim limitations are well-understood,
routine, and conventional. As we noted above, this analysis applies to the
additional claim elements, and not to those that form the abstract idea itself.
SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)
(“What is needed is an inventive concept in the non-abstract application
realm.”). We find the Examiner’s determination that the additional
limitations in claim 1 are well-understood, routine, and conventional
sufficiently supported in this record. See, e.g., Spec. ¶ 58 (describing the
invention “as being implemented in (or used with) a cellular telephone”),
92–93 (describing the ability to deliver targeted advertising “without
exposing personal information” at a high level of generality); 366–368
(describing that the techniques may be implemented on general purpose
hardware). Accordingly, we do not discern in claim 1 any specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional,” and instead agree with the Examiner that the claims do not
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provide an inventive concept sufficient to transform the judicial exception
into patent-eligible subject matter.
Because the Examiner correctly concluded claim 1 is directed to a
judicial exception, and because Appellant does not identify any error in the
Examiner’s determination under step 2B of the Guidance, we sustain the
rejection of representative claim 1 under 35 U.S.C. § 101, as well as of
claims 2–95, which fall therewith.
REJECTION UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
The Examiner rejects the independent claims for lack of written
description.7 Specifically, the Examiner finds the limitation “without
exposing potentially sensitive customer information to the outside world,” is
a negative limitation lacking support in the Specification.
Appellant argues, and we agree, that the Specification provides
sufficient disclosure to support this limitation. In particular, the
Specification states:
One of the many approaches of this disclosure used to alleviate
privacy issues includes offloading a variety of processes onto a
user's W-AT that may, in tum, be used to generate a set of
information that likely characterizes the user, i.e., it can create a
“user profile” of the user on the W-AT itself. Accordingly,
targeted-content-messages, such as advertisements and other
media, may be directed to the user's W-AT based on the user's
profiles without exposing potentially sensitive customer
information to the outside world.

7 Although the independent claims are rejected for lack of written
description, the Examiner does not reject the dependent claims under the
same reasoning. We need not address this apparent inconsistency because,
as we discuss below, we reverse the rejection of the independent claims.
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Spec. ¶ 93. This passage discloses that the inventor had possession “without
exposing potentially sensitive customer information to the outside world,”
and also describes a reason for doing so. As such, we are persuaded the
Examiner erred in rejecting the independent claims for lack of written
description, and we do not sustain the rejection of the independent claims.
The Examiner also rejects various dependent claims (28, 30, 31, 33,
34, 60, 74, 84) for lack of written description. The Examiner finds these
claims recite “determining steps,” but are insufficient described because
“[n]either the specification nor the drawings disclose in detail the specific
steps or algorithm needed to perform the operation.” Non-Final Act. 8–9;
Final Act. 6–7; see also Ans. 6 (“[T]he specification does not provide the
disclosure of the computer and algorithm in sufficient detail to demonstrate
to one of ordinary skill in the art that the inventor possessed the invention
including how to program the disclosed computer to perform the claimed
function.”).
Appellant argues the Examiner has erred because the claims find
support in paragraphs 353–362 of the Specification, and that “the features
‘have been adequately disclosed’ such that ‘writing computer programming
code for software to perform’ these features is ‘within the skill of the art.’”
Appeal Br. 16. We agree with Appellant.
The rejected claims (28, 30, 31, 33, 34, 60, 74, and 84) generally
recite functions pertaining to how the user profile is updated (claims 28, 33,
and 34) and using the profile to predict future routes and destinations for the
user (claims 30, 31, 60, 74, and 84). The passages cited by Appellant
provide detailed descriptions of the functionality recited in the rejected
claims. For example, paragraph 352 describes:
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Location information captured by a GPS-enabled cellular phone
may be used to generate user profile information enabling
resident software to determine both: (1) the likelihood that a user
will be at a particular location or traveling along a particular path
at a given time frame, e.g., an employee be at a work location at
4:00pm; (2) the likely timeframe that the user will leave a
particular starting location at a given time, e.g., the employee
leave a work location at 5:00pm, and (3) the likely timeframe that
the user will be at a particular second location or use a path (or
set of locations or paths), e.g., the employee use a particular road
at 5:30pm and reach his residence between 6:00pm and 6:30pm.
Spec. ¶ 352. This passage describes the ways a user profile is updated.
Subsequent paragraphs provide detail with respect to how the profile updates
are generated, including specific probabilistic functions and steps (i.e.,
algorithms) for doing so. Spec. ¶ 353–365. Accordingly, we agree with
Appellant that the Examiner has erred in rejecting the dependent claims, and
we do not sustain their rejection under 35 U.S.C. § 112, first paragraph.
REJECTION UNDER 35 U.S.C. § 103
The Examiner rejects claim 1 as being obvious over Steele, Morse,
and Demello. Final Act. 8–10. The key issue on this rejection is whether
the prior art teaches or suggests “updating, within the mobile client, a user
profile stored within the mobile client based at least in part on the location
history information, wherein the user profile is updated within the mobile
client without exposing the location history information over a
communication network.” The Examiner finds this limitation taught by
Morse and Demello. Final Act. 9. More specifically, the Examiner finds
Morse teaches “updating, within the mobile client, a user profile stored
within the mobile client based at least in part on the location history
information,” (citing Morse ¶¶ 44, 49–52) and that Demello teaches
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“without exposing the location history information over a communication
network” (Demello ¶¶ 16–19, 31–34, and 113). Final Act. 9–10.
Appellant argues the combined teachings of the references are
deficient in that none of them teach or suggest storing the user profile within
the mobile client as required by the independent claims. Appeal Br. 19–21.
Specifically, Appellant contends that the user profile described by Morse is
stored on portal 110, which is in the network and remote to the mobile
client. Id.; see also Reply Br. 5–6. We agree.
The user profile 124 depicted in Morse is described exclusively as
being stored within the portal 110. See, e.g., Morse Fig. 4, ¶¶ 37, 38. The
Examiner finds that Morse teaches or suggests a user profile on the mobile
client because it uses the user profile stored on the server to pre-fetch
content which may be cached locally. Ans. 7 (citing Morse ¶ 51). We agree
with Appellant, however, that Morse only teaches that the user profile may
be used to collect data that is stored on the user’s device. There is no
suggestion, however, that the user profile itself is stored on the mobile client.
Demello does not cure this deficiency in Morse, as any user profile-type
information in Demello is stored away from the mobile client either in a
Mediation Server or a Profiling Server in the network. See Demello Fig. 3,
¶¶ 34–39.
Accordingly, we are persuaded the Examiner erred, and we reverse
the rejection of claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also reverse the § 103(a) rejections of independent claims 48, 62, and 93
which recite similar limitations, as well as of the remaining rejected claims
which depend therefrom.
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CONCLUSION
Because we have affirmed at least one ground of rejection for each
claim on appeal, we affirm the Examiner’s decision to reject the claims.
37 C.F.R. § 41.50(a)(1).
More specifically,
We affirm the Examiner’s decision to reject claims 1–95 under
35 U.S.C. § 101.
We reverse the Examiner’s decision to reject claims 1, 28, 30, 31, 33,
34, 60, 62, 74, 84, and 93 under 35 U.S.C. § 112, first paragraph for lack of
written description.
We reverse the Examiner’s decision to reject claims 1–95 under
35 U.S.C. § 103.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–95 101 patent eligibility 1–95
1, 28, 30,
31, 33, 34,
60, 62, 74,
84, and 93
112, first
paragraph
written description 1, 28, 30,
31, 33, 34,
60, 62, 74,
84, and 93
1–95 103 Steele, Morse,
Demello,
Gronemeyer,
Horvitz, Bell,
Krumm, Altman,
Logan
1–95
Overall
Outcome
1–95

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TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED