Choi, Woo-Jun et al.

Patent Trials and Appeals Board

Dec 2, 2019

12187775 - (D) (P.T.A.B. Dec. 2, 2019)

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.
12/187,775 08/07/2008 Woo-Jun Choi 678-3543 (P16422) 3679
66547 7590 12/02/2019
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
ROTARU, OCTAVIAN
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/02/2019 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):
pto@farrelliplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WOO-JUN CHOI, JAE-HO KIM, JEONG-EUN LEE,
YOUNG-SEOP HAN, and DAE-HYUN SIM1
____________

Appeal 2018-008079
Application 12/187,775
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 25–38. We have jurisdiction under 35 U.S.C.
§ 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 Appellant identifies Samsung Electronics Co. Ltd, as the real party in
interest. App. Br. 1.
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THE INVENTION
Appellant states “[t]he present invention relates to a Local Area
Network (LAN), and more particularly to a system and a method for
reporting data in a LAN.” Spec. 1.
Claim 25, reproduced below, is representative of the subject matter on
appeal.
25. A mobile communication device comprising:
a display unit configured to display product advertisement information
on a screen; a communication unit; and
a control unit executed by computer hardware configured to:
automatically receive a first communication signal including first
identification information of each of a first plurality of local communication
terminals from a first communication device in a building through the
communication unit of the mobile communication device located within a
first coverage area of the first communication device, and control the display
unit to display first product advertisement information corresponding to the
first identification information on the screen of the display unit; and
automatically receive a second communication signal including
second identification information of each of a second plurality of local
communication terminals from a second communication device in the
building through the communication unit of the mobile communication
device located within a second coverage area of the second communication
device, and control the display unit to display second product advertisement
information corresponding to the second identification information on the
screen of the display unit,
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wherein each of the first identification information and the second
identification information comprises a value according to a format defined
by a communication scheme used by the first communication device and the
second communication device,
wherein the first communication device broadcasts the first
identification information and the second communication device broadcasts
the second identification information,
wherein the first plurality of local communication terminals is
different from the second plurality of local communication terminals, and
wherein the first identification information of each of the first
plurality of local communication terminals is different from identification
information of the first communication device, and the second identification
information of each of the second plurality of local communication terminals
is different from identification information of the second communication
device.
THE REJECTIONS2
The Examiner relies upon the following as evidence of
unpatentability:

2 The Examiner withdraws the 35 U.S.C. § 112 (a) rejection. (Answer 3).

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Name Reference Date
Se-Do Jang WO 2004/051547 A1 June 17, 2004
Ehud Mendelson US 2007/0001904 A1 January 4, 2007
Venfroff et al. US 2007/0185768 A1 August 9, 2007
Melvin L. Barnes, Jr. US 2003/0220835 A1 November 27, 2003
Treyz et al. US 6,857,835 B1 July 1, 2003
Swartz et al. US 2005/0040230 A1 February 24, 2005
Panayiotis Adamos Michael US 2006/0053057 A1 March 9, 2006
Hind et al. US 2002/0174025 A1 November 21, 2002

The following rejections are before us for review.

Claims 25–38 are rejected under 35 U.S.C. §101 because the claimed
invention is directed to a judicial exception.
Claims 25–27, 29–30, 32–34, 36–37 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Jang in view of Mendelson.
Claims 28 and 35 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jang, Mendelson and Venfroff.
Claims 31 and 38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jang, Mendelson and Barnes.

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FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 5–14 in the
Final Office Action3 and on pages 8–15 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 25–38 under 35 U.S.C. § 101.
The Appellant argues claims 25–38 as a group. (Appeal Br. 9).
We select claim 25 as the representative claim for this group, and so the
remaining claims stand or fall with claim 25. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See id. at 219
(“On their face, the claims before us are drawn to the concept of

3 All references to the Final Office Action refer to the Final Office Action
mailed on November 29, 2017.
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
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commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then 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
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(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.
The U.S. Court of Appeals for the Federal Circuit has explained that
“the ‘directed to’ inquiry applies a stage-one filter to claims, considered in
light of the [S]pecification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance at
53; see also MPEP § 2106.05(a)–(c), (e)–(h).
The Specification states:
the LAN for the shopping center (hereinafter, ‘shopping center
LAN’) provides the users with only product information of the
entire shopping center, but does not provide product
information provided by stores located around a user.
Therefore, the user suffers the inconvenience that they should
separately find the product information provided by the stores
located around them.

Specification 2:10–15.
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Understood in light of the Specification, claim 1, recites, in pertinent
part the ideas of: receiv[ing]… first identification information of each of a
first plurality of local communication terminals…, control the display …[of]
first product advertisement information corresponding to the first
identification information…; receiv[ing]…second identification information
of each of a second plurality of local communication terminals…,
control[ing] the display … [of] second product advertisement information
corresponding to the second identification information…, each of the first
identification information and the second identification information
comprises a value according to a format defined by a communication
scheme…, wherein the first identification information of each of the first
plurality of local communication terminals is different from identification
information of the first communication device, and the second identification
information of each of the second plurality of local communication terminals
is different from identification information of the second communication
device.
Accordingly, the Examiner found that the claims are directed to4
the comparison, obtaining[,] comparing and organizing of
information [such information claimed here in the context of
respective ‘first’ & ‘second’ ‘identifying information,’
respective ‘first’ & ‘second’ ‘product advertisement
information’ etc.] reminding of at least the obtaining and

4 Although the Examiner found plural categories to which the claims are
directed, (Final Act. 19–20) we choose two of those found by the Examiner
since a finding of one judicial exception suffices to meet patent ineligibility.
See Guidance, at 51 note 9. “An abstract idea can generally be described at
different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016).

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comparing/analyzing the data in the abstract ‘FairWarning’,
‘Cybersource’, ‘Electric Power Group’, ‘Int. Ventures v. Cap
One Financial’, when algorithmically limited or correlated to
respective ‘first & second coverage areas’ similar to at least
organizing information through mathematical correlations of
the ineligible ‘Digitech’ etc.
Final Act. 18–19.
We agree with the Examiner that claim 25 is directed to comparison,
obtaining, comparing and organizing of information because claim 25 recites
organizing by identification information, e.g., “the first identification
information of each of the first plurality of local communication terminals is
different from identification information of the first communication device,
and the second identification information of each of the second plurality of
local communication terminals is different from identification information of
the second communication device.” These limitations involve data
collection, analysis, and display which, here, are essentially mental
processes within the abstract-idea category. Elec. Power Grp. v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that “merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas”); see also In re TLI Commc’ns LLC Patent Litig.,
823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093–94 (Fed. Cir. 2016).
In addition, the Examiner finds that the claims are directed to
“transacted adverting marketing and sales activities.” (Final Act. 19). We
agree here as well because claim 25 also recites “display product
advertisement information,” “display first product advertisement
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information,” and “display second product advertisement information.”
Thus, claim 25 sets forth a concept for advertising, marketing or sales
activities which are certain methods of organizing human activities, and
hence covers patent ineligible subject matter. See Guidance at 52, citing
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014).
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “a display unit,” “a communication unit,” “a control
unit,” first and second “communication devices” and first and second
“plurality of local communication terminals.” These components are
described in the specification at a high level of generality. See Spec. 4:29–
30, 5:1–20, Fig. 1. We fail to see how the generic recitations of these most
basic computer components and/or of a system so integrates the judicial
exception as to “impose[] a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance at 53. We also find no indication in the
Specification that the claimed invention effects a transformation or reduction
of a particular article to a different state or thing.
Thus, we find that the claims recite the judicial exceptions of a mental
process/information as such, and a certain method of organizing human
activity, that is not integrated into a practical application.
That the claims do not preempt all forms of the abstraction or may be
limited to targeted advertising, does not make them any less abstract. See
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir.
2015) (“And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
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Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S. at
72–73).
Concerning this step the Examiner found the following:

When viewed either individually or in combination / as a
whole, these additional claim element(s) do not provide
meaningful limitation(s) that raise to the high standards of the
eligible case law standards… to transform the abstract idea(s)
into a patent eligible application of the abstract idea(s) such that
the claim(s) amounts to significantly more than the abstract
idea(s) itself.

Final Act. 21.
We agree with the Examiner. “[T]he relevant question is whether the
claims here do more than simply instruct the practitioner to implement the
abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do
not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, select, and apply decision criteria to data and display
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent
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Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming”). In short, each step does no more than require a generic
computer to perform generic computer functions. The claims do not, for
example, purport to improve the functioning of the computer itself. In
addition, as we stated above, the claims do not affect an improvement in any
other technology or technical field. The Specification spells out different
generic equipment and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of information access under different scenarios (see, e.g., Spec.
4:29–30, 5:1–20, Fig. 1). Thus, the claims at issue amount to nothing
significantly more than instructions to apply the abstract idea using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225–226.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis (receive,
select, and apply decision criteria to data and display the data as a result) and
storing is equally generic and conventional or otherwise held to be abstract.
See Ultramercial, Inc. 772 F.3d at 715 (sequence of receiving, selecting,
offering for exchange, display, allowing access, and receiving payment
recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data
retrieval, analysis, modification, generation, display, and transmission was
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abstract), Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d
1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing,
controlling, and monitoring was abstract). The ordering of the steps is,
therefore, ordinary and conventional.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (App. Br. 9–15 Reply Br. 4–5). We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellant argues:
Appellants have argued that independent Claims 25 and 32
solve the problem of providing product advertisement
information when a plurality of communication devices is
disposed in a building, which is an unsolved problem in the
field, and that in light of the recent Amdoc and Bascom
decisions, Claims 25 and 32 ‘solve a technology-based
problem, even with conventional generic components,
combined in an unconventional manner,’ in the product
advertisement and communication device technologies. It was
further argued that Claims 25-38 are directed to a specific
implementation of a solution to a problem in the field of
providing product advertisement information by
communication terminals, and therefore, that the rejection of
Claims 25-38 as being directed to a judicial exception without
significantly more, is incorrect.

Appeal Br. 9–10.
We disagree with Appellant that the claims before us here are
analogous to those claims in Amdocs (Israel) Limited v. Openet Telecom
Inc., 841 F.3d 1288. (Appeal Br. 15, 17, 28, 33). In Amdocs, the court
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adopted the district court’s interpretation of the claim term “enhance,”
stating, it approved “reading the ‘in a distributed fashion’ and the ‘close to
the source’ of network information requirements into the term ‘enhance.’”
Id. at 1300. The court then went on to find the claim’s “enhancing”
limitation necessarily required that the generic components operate in an
unconventional manner to achieve an improvement in computer
functionality. Id. at 1300–1301.
In this way, the claims of Amdocs are inconsistent with those before
us on appeal here in that in the latter, there are no specific technologic
modifications required to solve a problem or improve the functioning of a
known system generally to produce patent-eligible subject matter. See, e.g.,
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014);
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1315
(Fed. Cir. 2016). No such problem or evidence showing how the claims
solve a stated technical problem has been identified here, and we are not
persuaded that the claims are not directed to an abstract idea.
Appellants’ reliance on Bascom Global Internet v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016) is likewise misplaced. In BASCOM,
the Federal Circuit determined that the claimed installation of a filtering tool
at a specific location, remote from the end-users, with customizable filtering
features specific to each end user provided an inventive concept in that it
gave the filtering tool both the benefits of a filter on a local computer and the
benefits of a filter on the ISP server. BASCOM, 827 F.3d at 1350. The
court, thus, held that the second step of the Mayo/Alice framework was
satisfied because the claimed invention “represents a ‘software-based
invention[ ] that improve[s] the performance of the computer system itself.’”
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Id. at 1351. Here, Appellants do not identify, and we do not find, any
improvement to computer technology analogous to the ordered combination
described in BASCOM or any additional element or elements recited in claim
25 that yield an improvement in the functioning of a computer, or an
improvement to another technology or technical field.
Appellant attempts to distinguish Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138 on page 13 of the Appeal Brief by setting forth device
limitations of claim 25 such as, a display unit, a computer, a communication
unit, a control unit executed by a computer hardware, to show that unlike the
claims in Synopsys, claim 25 calls for some form of computer
implementation. However, the analogy is misplaced. “[T]he mere recitation
of a generic computer cannot transform a patent-ineligible abstract idea into
a patent-eligible invention. Stating an abstract idea ‘while adding the words
“apply it’” is not enough for patent eligibility.” Alice, 573 U.S. at 223
(citation omitted).
The question is whether the claims as a whole “focus on a specific
means or method that improves the relevant technology” or are “directed to
a result or effect that itself is the abstract idea and merely invoke generic
processes and machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, claim 25 as a whole is
focused on comparison, obtaining comparing and organizing of information
to effect targeted advertising. In other words, nothing in claim 25 purports
to improve computer functioning or “effect an improvement in any other
technology or technical field.” Alice, 573 U.S. at 225.
We also disagree with Appellant (Appeal Br. 14) that under the
holding in Enfish our decision would be different. Enfish, LLC v. Microsoft
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Corp., 822 F.3d 1327 (Fed. Cir. 2016). That is, we are unpersuaded by the
Appellant’s argument that its claims are directed to an improvement in
computer technology like that of claim 17 in Enfish and therefore are patent
eligible. In Enfish, the invention at issue was directed at a wholly new type
of logical model for a computer database: a self-referential table that allowed
the computer to store many different types of data in a single table and index
that data by column and row information. Enfish, 822 F.3d at 1330–32. In
finding the claims “not directed to an abstract idea,” but “to a specific
improvement to the way computers operate,” the Federal Circuit noted that
“the claims are not simply directed to any form of storing tabular data, but
instead are specifically directed to a self-referential table for a computer
database.” Id. at 1336–37 (emphasis in original). We find nothing in the
claims before us arising to this level of technical improvement in the
claimed “display unit,” “communication unit,” “control unit,” first and
second “communication devices” and first and second “plurality of local
communication terminals” which arises to the level of technical proficiency
as found in Enfish.
Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. (See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-
related guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”))).
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s prima facie case of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner’s § 101 rejection
of claims 25–38.
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35 U.S.C. § 103(a) REJECTION
Each of independent claims 25 and 32 requires “automatically receive
a first communication signal including first identification information of
each of a first plurality of local communication terminals from a first
communication device in a building through the communication unit of the
mobile communication device located within a first coverage area of the first
communication device.”
The Examiner finds:
To further explain such ‘relay’ of data (Jang at p.16 lines 7-13),
as passing or linkage from the access point AP to ‘location
information transmitters" and further to the shopper's ‘terminal’
(for ease see Jang's Annotated Figs. 2-9 below), Examiner
relied on the multicast address and port mapping disclosed by
Jang at p.14 lines 21 - 22: ‘In the terminal, a mapping table for
recording the multicasting address and port information
corresponding to the identification number of the AP is stored’.
… * Jang uses at p.16 lines 7-13 the APs as data relay (see
supra for details) merely reducing their number (i.e. from
twelve to three: APs 202, 204, and 206) but not completely
eliminates all access points at p.16 lines 2-13.
Answer 5–6 (emphasis omitted).
Appellant argues,
Appellant respectfully asserts, however, that the data relay in
Jang neither teaches nor fairly suggests that one entity transmits
a communication signal comprising identification information
of a plurality of other entities, either alone or as combined with
Mendelson. Instead, Jang et al. teaches in FIG. 2 that one AP
transmits a communication signal comprising its own
identification information and one location information
transmitter (e.g. 224, 226, 228, 230) transmits a communication
signal comprising its own identification information.
Appeal 2018-008079
Application 12/187,775

19

Reply Br. 2.
We disagree with the Examiner that the “multicast address and port
mapping disclosed by Jang at p. 14 lines 21 – 22” meets the claimed
“automatically receive a first communication signal including first
identification information of each of a first plurality of local communication
terminals from a first communication device.” Specifically, Jang discloses
only that “server 100 transmits respective advertising data to the
corresponding multicasting address and port.” Jang, p. 14, ll. 15–16. The
disclosed transmission here is only of the “advertising data” and not
identification information of each of a first plurality of local communication
terminals as would apparently be found in the mapping table. As to how the
mapping table is stored in the terminal, Jang is silent. It is not apparent and
the Examiner does not explain how the contents of the mapping table would
be transmitted to each terminal in such a way as to meet the claim
requirements.
Therefore, we will not sustain the Examiner’s obviousness rejection of
independent claims 35 and 32. The additional references relied on the
Vengroff and Barnes in the rejection of dependent claims 28 and 35, 31 and
38, respectively, do not remedy the deficiency determined above.
Because claims 26–31, and 33–38 depend from claims 25 and 32, and
because we cannot sustain the Examiner’s obviousness rejection of claims
25 and 32, the Examiner’s obviousness rejection of claims 26–31, and 33–38
likewise cannot be sustained.

Appeal 2018-008079
Application 12/187,775

20

CONCLUSION
We conclude the Examiner did not err in rejecting claims 25–38 under
35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 25–38 under 35
U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
25–38 101 Eligibility 25–38

25–38 103 Jang, Mendelson,
Vengroff, Barnes

25–38
Overall
Outcome
25–38

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