Spils, Gregory R. et al.

Patent Trials and Appeals Board

Apr 20, 2020

13300346 - (D) (P.T.A.B. Apr. 20, 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.
13/300,346 11/18/2011 Gregory R. Spils AM2-0712US 1110
136607 7590 04/20/2020
Lee & Hayes P.C.
601 West Riverside Avenue
Suite 1400
Spokane, WA 99201
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
04/20/2020 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGORY R. SPILS, BRIAN J. SALTZMAN, and
PAUL SPRINGER

Appeal 2019-003696
Application 13/300,346
Technology Center 3600

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8–17, 19, 22, 24, and 26–36,
which are all of the pending claims. Appeal Br. 6, 14. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as: “Amazon
Technologies, Inc.” Appeal Br. 4.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to “a crowd-sourced price program that
incentivizes customers to provide the host with commercial information of a
competitor[, e.g.,] a purchase price for . . . goods, services, or both, being
offered by the competitor.” Spec. ¶ 13. Claim 1, reproduced below with
emphasis, is illustrative of the claimed subject matter.
1. A method of conducting a crowd-sourced price program
sponsored by a host, the method comprising:
providing a crowd-source price application to a participant of
the crowd-sourced price program for installation on a
client-device associated with the participant, the crowd-source
price application to enable the participant to initiate a
time-limited offer from a second merchant by providing the
host with commercial information associated with a first
merchant while at a physical facility of the first merchant;
receiving, from the client-device via the crowd-source price
application, the commercial information including at least: a
purchase price for at least one of first goods or first services
offered by the first merchant, an identifier for the at least one of
the first goods or the first services, and geographical location
data indicating where the purchase price and the identifier were
acquired by the client-device, the geographical location data
determined via a global positioning system (GPS) of the
client-device;
determining, based on the geographical location data, that the
purchase price and the identifier were acquired by the
client-device while at the physical facility of the first merchant;
retrieving a validated price for the at least one of the first goods
or the first services from a database based at least in part on the
identifier;
validating the commercial information based at least in part on
a relative price difference between the purchase price and the
validated price;
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based on the relative price difference being below a threshold
for validity, generating, for the participant of the crowd-sourced
price program, the time-limited offer from the second merchant
to sell at least one of second goods or second services from the
second merchant via the host, the time-limited offer based at
least in part on the commercial information;
contemporaneously to the client-device being at the physical
facility, transmitting to the client-device a message that
includes the time-limited offer to sell the at least one of the
second goods or the second services from the second merchant
via the host;
causing, by the message, the crowd-source price application to
display a buy-now command as part of a user interface on the
client-device, the buy-now command to enable the participant
to accept the time-limited offer and to enable the host to
determine whether the participant accepted the time-limited
offer while the client-device is determined to be at the physical
facility:
maintaining display of the user interface, including the
buy-now command, on the client-device for the duration of
time the client-device is determined to be at the physical
facility via additional geographical location data; and
ceasing display of the user interface, including the buy-now
command, upon the client-device exiting the physical facility.
Appeal Br. 38–39, Claims Appendix.
Rejections
Claims 1–4, 19, 22, 24, and 26–34 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Karypis (US 2010/0318412
A1; Dec. 16, 2010), Reisman (US 2011/0295722 A1; Dec. 1, 2011),
Michaelis (US 2008/0262928 A1; Oct. 23, 2008), Graylin
(US 2010/0299212 A1; Nov. 25, 2010), Wagda (US 2011/0223895 A1;
Sept. 15, 2011), and Lapidous (US 2009/0113532 A1; Apr. 30, 2009).
Final Act. 2–23.
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Claims 5, 6, 8–17, 35, and 36 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Karypis, Reisman, Michaelis, Graylin, Wagda,
Lapidous, and Wong (US 2006/0294151 A1; Dec. 28, 2006). Final Act. 23–
35.
OPINION
Appellant does not present respective patentability arguments for the
claims, but rather presents arguments for claim 1 (Appeal Br. 17–24) and
then repeats those arguments for the following sets of claims: (i) 2–4 and
34; (ii) 19; (iii) 22, 24, and 26; (iv) 27; (v) 28–33; (vi) 5; (vii) 6, 8–17, 35,
and 36 (id. at 24–35). We address the arguments with reference to claim 1.
For the following reasons, we are unpersuaded of error and accordingly
sustain all rejections.
The only disputed claim limitation recites: “‘maintaining display of
the user interface, including the buy-now command, on the client-device for
the duration of time the client device is determined to be at the physical
facility via additional geographical location data’ and ‘ceasing display of the
user interface, including the buy-now command, upon the client device-
exiting the physical facility.’” Appeal Br. 20.
To reach the disputed claim limitation, the Examiner finds Karypis
teaches “providing an interface that includes product and promotional offers
based on the customer’s location and to encourage the customer to remain at
the retail location.” Ans. 3 (citing Karypis ¶¶ 21, 22, 43). The Examiner
finds Graylin teaches “to include a link that is a ‘buy-now’ button on an
interface for product offers.” Id. at 4 (citing Graylin ¶ 16). The Examiner
finds Lapidous teaches “to provide a user with access to the benefits of a
location[-]based advertisement for a product after the user enters the target
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location and to disable access to the advertised benefit after the user leaves
the targeted location.” Id. (citing Lapidous ¶¶ 65, 66, 69, 70, 137, 138).
We agree with the Examiner’s findings. Further, we agree claim 1
reads on the combination of the above prior art teachings. In view of
Karypis, a mobile device (claimed “client device”) displays a store-specific
promotional offer while the customer is proximate to the store (claimed
“maintaining display of the user interface, . . . , on the client-device for the
duration [it] is determined to be at the physical facility”). Final Act. 3. In
view of Graylin, the promotional offer is a buy-now offer for a product of
the store (claimed “the user interface . . . including the buy-now command”).
Id. at 6. In view of Lapidous, these offered benefits cease when the mobile
device leaves the respective area (claimed “ceasing display . . . upon the
client-device exiting the physical facility”), which is determined by whether
the device is in range of WiFi® access point/s provided by the store
(claimed “determined to be at the physical facility via additional
geographical location data”). Id. at 5, 8.
Appellant contends the Examiner errs by finding Lapidous teaches
providing access to an advertised benefit while the user is at a target location
and deny access to the advertised benefit when the user leaves the location.
Appeal Br. 21 (addressing Final Act. 8). According to Appellant:
Lapidous merely describes access to the internet at “targeted
locations” and that “[w]hen a user accesses the Internet from a
supported location, he’ll be able to use premium or exclusive
online services.” Lapidous, ¶ [0031]. Merely providing a user
access while in a location, or disabling access when not at the
location unless the user provides additional information (logs
in), is not what is claimed.
Id. In the Reply Brief, Appellant adds:
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[Lapidous] does not teach or suggest “exiting the physical
facility” as the basis for “ceasing display” of the UI and
buy-now command, as claim 1 recites. . . . Lapidous describes
. . . that when a user goes outside of a particular wireless range,
their access changes. . . . [T]he UI remains the same upon a
change in location.
Reply Br. 4. We are unpersuaded for each of two reasons.
First, the arguments are not commensurate with the claim scope. The
arguments imply the claimed “ceasing display . . . upon . . . exiting” means
ceasing immediately after exiting. However, the adverb “upon” does not
always specify an exact moment of action. “Upon” can merely mean a
proceeding event results from a preceding event. For example, “upon”
occurs once (and only once) in the Specification—“the user 104 may be
eligible for a refund upon being notified of . . . a lower price” (Spec. ¶ 62
(emphasis added))—and merely conveys that a proceeding event (eligibility
for a refund) occurs as a result of a preceding event (awareness of a lower
price). See also e.g., Merriam Webster Online Dictionary (available at
https://www.merriam-webster.com/dictionary/upon) (last visited March 23,
2020).
Second, even assuming (arguendo) the claimed “ceasing display . . .
upon . . . exiting” means ceasing immediately after exiting, the arguments
still fail to address the proposed combination. The Examiner does not—and
need not—propose a combination whereby features of Lapidous are bodily
added features of Karypis and Graylin. Final Act. 7–8; see also In re
Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“[A] determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.”). Rather, in view of Lapidous’
preference to cease a location-based benefit (e.g., streaming) when the
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receiving mobile device exits the location, the Examiner proposes to
likewise cease display of the combination’s location-based offer when the
receiving mobile device exits the location. Final Act. 7–8; Advisory Act.,
Cont’n Sheet (citing Lapidous ¶¶ 137–38); see also Lapidous ¶ 133 (“[A]n
advertisement offers . . . a discount price, but only while the user is at
specified location.”). Appellant does not dispute that Lapidous teaches such
a preference.
Appellant also contends Lapidous and Graylin are not analogous art to
the claimed invention. Appeal Br. 22–24. We are unpersuaded for the
reasons below.
There are two considerations for whether a prior art reference is
analogous art to a claimed invention: (1) the reference is from the same
field of endeavor as the claimed invention (even if it addresses a different
problem); or (2) the reference is reasonably pertinent to the problem faced
by the inventor (even if it is not in the same field of endeavor as the claimed
invention). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “[T]he
purposes of both the invention and the prior art are important in determining
whether the reference is reasonably pertinent to the problem the invention
attempts to solve.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
The Examiner finds the claimed invention and Lapidous both concern
“real-time location[-]based product and service information delivery
including incentives/discounts.” Ans. 6; accord Lapidous ¶¶ 44–46, 65–66,
69–70, 131–38). The Examiner also finds that Lapidous is directed to, and
claim 1 recites, geographically limiting transmission of a location-based
benefit to a mobile device. Final Act. 8. Per these findings, the Examiner
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presents a prima facie case that the claimed invention and Lapidous are
analogous art.
The Examiner finds the claimed invention and Graylin both concern
“product and service offers to client devices.” Ans. 6–7; accord Graylin
¶ 16. The Examiner also finds that Graylin is directed to, and claim 1
recites, a time-sensitive buy-now means for a mobile device. Final Act. 6–7;
accord Graylin ¶¶ 14 (first summary description of the invention’s features
focusing on “Buy Now” feature), 19–21 (invention’s described advantages
focus on “Buy Now” feature). Per these findings, the Examiner presents a
prima facie case the claimed invention and Graylin are analogous art.
Appellant’s rebuttals are unpersuasive. Appellant contends “[t]he
problem that the inventor of claim 1 sought to solve was how to validate a
participant-reported price from a brick-and-mortar store, and then how to
verify that the participant was still at the merchant from which they reported
the prices before sending them an offer for comparable goods/services from
a second merchant.” Appeal Br. 23 (citing Spec. ¶¶ 16, 17, 44). The
argument is illogical. If the inventors only sought to geographically limit the
mobile device’s price-reporting, as is argued, the Specification and claims
would not present a feature lacking this purpose. The claimed “buy-now”
feature lacks this purpose. It geographically limits only the acceptance of an
offered reward for price-reporting (i.e., to the moment and thus location of
the reward’s receipt).
We find the claimed “buy-now” feature is added to impart its
different, ordinary purpose to the invention—namely to provide a
convenient means of the mobile device user to accept the offer. This
ordinary purpose is evidenced by the Specification simply and solely
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describing the “buy-now command 304 [as a means] to enable the user 104
to accept the offer from the host 102.” Spec. ¶ 52. This ordinary purpose is
further evidenced by Graylin stating its buy-now feature “allows the
purchase transaction to be completed instantly on the spot . . . for convenient
remote commerce.” Graylin ¶ 20; see also id. ¶ 19 (“to complete the
transaction on behalf of the merchant and the consumer on a mobile
device”).
Appellant also contends Lapidous “does not teach or suggest using
geographical location data as the basis for the display.” Reply Br. 4. We are
unpersuaded because Appellant presents no reason why a confirmed
connection to a WiFi access point of known location, as in Lapidous’ cited
disclosures (see, e.g., Lapidous ¶¶ 32, 53, 76), is not “geographical location
data as the basis” (Reply Br. 4) for the location-based benefit and thus its
display. See, e.g., In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(affirming the rejection because appellant “merely argued that the
claims differed from [the prior art], and chose not to proffer a serious
explanation of this difference.”).
OVERALL CONCLUSION
We affirm the Examiner’s decision to reject claims 1–6, 8–17, 19, 22,
24, and 26–36.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 19,
22, 24, 26–
34
103(a) Karypis, Reisman,
Michaelis, Graylin,
Wagda, Lapidous
1–4, 19,
22, 24, 26–
34

5, 6, 8–17,
35, 36
103(a) Karypis, Reisman,
Michaelis, Graylin,
Wagda, Lapidous, Wong
5, 6, 8–17,
35, 36

Overall
Outcome
1–6, 8–17,
19, 22, 24,
26–36

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