Spils, Gregory R. et al.Download PDFPatent Trials and Appeals BoardApr 20, 202013300346 - (D) (P.T.A.B. Apr. 20, 2020) Copy Citation 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. Appeal 2019-003696 Application 13/300,346 2 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; Appeal 2019-003696 Application 13/300,346 3 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. Appeal 2019-003696 Application 13/300,346 4 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 Appeal 2019-003696 Application 13/300,346 5 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: Appeal 2019-003696 Application 13/300,346 6 [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 Appeal 2019-003696 Application 13/300,346 7 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 Appeal 2019-003696 Application 13/300,346 8 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 Appeal 2019-003696 Application 13/300,346 9 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. Appeal 2019-003696 Application 13/300,346 10 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 Copy with citationCopy as parenthetical citation