Delaney, John et al.

Patent Trials and Appeals Board

Sep 22, 2020

2019002045 (P.T.A.B. Sep. 22, 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.
14/303,064 06/12/2014 John Delaney ESGPT01 5802
49691 7590 09/22/2020
IP Strategies
P.O. Box 6446
Asheville, NC 28816
EXAMINER
HOFFLER, RAHEEM
ART UNIT PAPER NUMBER
2156
NOTIFICATION DATE DELIVERY MODE
09/22/2020 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):
thomas.champagne@ipstrategiespc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN DELANEY, REED SMITH, and MICHAEL MARINO
Appeal 2019-002045
Application 14/303,064
Technology Center 2100
Before JEFFREY S. SMITH, DAVID J. CUTITTA II, and
PHILLIP A. BENNETT, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge BENNETT.

Opinion Dissenting-in-Part filed by Administrative Patent Judge SMITH.
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 1–46. We have jurisdiction under
35 U.S.C. § 6(b).

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 ESGI,
LLC. Appeal Br. 2.
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We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a tracking system and method. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method of tracking a tracked
entity, comprising:
obtaining identifying image feature data from the tracked
entity;
generating, by a tracking entity, characteristic data
relevant to the tracked entity at a first location, wherein the
characteristic data includes the identifying image feature data;
storing the characteristic data at a server; and
accessing, by at least one of the tracking entity and another
tracking entity, at least a portion of the stored characteristic data
at at least one of the first location and another location in order
to track a current physical location and condition of the tracked
entity.
Appeal Br. 155 (Appendix A).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Daniel US 2003/0228033 A1 Dec. 11, 2003
Kenedy US 2010/0169340 A1 July 1, 2010
Shaw US 2010/0198650 A1 Aug. 5, 2010

REJECTIONS
The Examiner rejects claims 1–46 under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Non-Final Act. 2–5.
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The Examiner rejects claims 1–23 and 30–46 under 35 U.S.C. § 103
as being unpatentable over Kenedy and Daniel. Non-Final Act. 6–22.
The Examiner rejects claims 24–29 under 35 U.S.C. § 103 as being
unpatentable over Kenedy, Daniel, and Shaw. Non-Final Act. 6–22.
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 218, 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. at 217–18 (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”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
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default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”).
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
(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).
See Guidance, 84 Fed. Reg. at 52–55. 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 56.
Examiner’s Findings and Conclusions2
The Examiner rejects claim 1 as being directed to a judicial exception
without significantly more under Alice. Non-Final Act. 2–5; Ans. 4–7.
Under the first step of the Alice inquiry, the Examiner determines claim 1 is

2 Each of the relevant documents in this appeal was filed or mailed prior to
the issuance of the Guidance. As such, they each applied the case law-based
approach from previous eligibility guidance in rejecting the claims under §
101. Our analysis of the § 101 rejection is made under the Guidance.
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directed to a judicial exception. Non-Final Act. 2–3. Specifically, the
Examiner determines that the recited “generating,” and “accessing” steps of
claim 1 recite an abstract idea because “[t]his process is simply the mere
aggregation of data in order [to] present that mere data back to the requestor,
along with additional related content” and “is nothing more than the mere
manipulation and presentation of data.” Non-Final Act. 3. The Examiner
determines that the recited process is similar to those found abstract in prior
cases such as Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315
(Fed. Cir. 2017) and Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332 (Fed. Cir. 2017).
Under the second step of the Alice inquiry, the Examiner determines
that “[t]he recited additional elements of Claim 1 are not considered
‘significantly more’ than the abstract idea presented within Claim 1 and
provide the mere storage of information.” Non-Final Act. 4. The Examiner
further determines that “[l]ooking at the limitations as an ordered
combination adds nothing that is not already present when looking at the
elements taken individually. There is no indication that the combination of
elements improves the functioning of a computer or improves any other
technology.” Non-Final Act. 4.
Appellant’s Contentions
Appellant argues the cases cited by the Examiner are distinguishable
because in those cases “already-existing data was manipulated according to
the invention.” Appeal Br. 17. Appellant further asserts that claim 1 “does
more than manipulate already-existing data . . . [because] a human
participant must provide new data, such as by identifying image feature data
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from the tracked entity and generating characteristic data relevant to the
tracked entity.” Appeal Br. 17.
Revised Guidance, Step 2A, Prong One3
The Judicial Exception
Applying the Guidance, we are not persuaded the Examiner has erred
in determining that the claims recite a judicial exception to patent eligible
subject matter. The Guidance identifies three 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 and third
groupings—certain methods of organizing human activity and mental
processes.4

3 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).
4 Although Appellant’s Brief purports to argue each claim separately, the
arguments presented for each claim are substantially identical in form. In
each case, the argument: (1) summarizes what the claim recites, (2) restates
the Examiner’s position, (3) notes the claim is a dependent claim, and (4)
asserts that the claim “does more than merely provide data manipulation.”
Appeal Br. 19–76. This form of repetitive and conclusory argument “will
not be considered an argument for separate patentability.” 37 C.F.R.
§ 41.37(c)(1)(iv) (2018). As such, we consider Appellant’s arguments
against the § 101 rejection to be made to the claims generally, and we treat
claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv) (2018) (“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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We conclude the limitations of claim 1 recite both a mental process
and a commercial interaction, which amounts to a combination of abstract
ideas under the Guidance.5 For example, claim 1 recites (1) “obtaining
identifying image feature data from the tracked entity,” and (2) “generating,
by a tracking entity, characteristic data relevant to the tracked entity at a first
location, wherein the characteristic data includes the identifying image
feature data,” (3) “storing the characteristic data,” (4) “accessing, by at least
one of the tracking entity and another tracking entity, at least a portion of the
stored characteristic data at at least one of the first location and another
location in order to track a current physical location and condition of the
tracked entity.” As a whole, these limitations recite tracking of items in
transit. Accordingly, they may be categorized as a commercial interaction
that falls within the enumerated group of “certain methods of organizing
human activity.” Guidance, 84 Fed. Reg. at 52. Separately, these limitations
each recite an abstract mental process under the Guidance because they each
can be performed by a human in their mind either through observation,
evaluation and judgment, and also because they can be performed by a
human with the aid of pen and paper. See October 2019 Guidance Update at
7 (“examples of mental processes include observations, evaluations,
judgments, and opinions”), 9 (“A claim that encompasses a human
performing the step(s) mentally with the aid of a pen and paper recites a
mental process”) (emphasis omitted).

5 RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
(“Adding one abstract idea . . . to another abstract idea . . . does not render
the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (patent-ineligible claims were
directed to a combination of abstract ideas).
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For example, limitation (1), which recites obtaining identifying image
feature data from the tracked entity, can be performed by a person through
observation by visually inspecting the tracked item. Limitation (2), which
recites “generating, by a tracking entity, characteristic data relevant to the
tracked entity at a first location, wherein the characteristic data includes the
identifying image feature data,” is also an action that can be performed
mentally, as a person, having inspected the item, could readily draw the
observed image on a piece of paper. Limitations (3) and (4), which recite
storing and accessing the data at a location also can be performed mentally
by a person. Storing the observed characteristic data can be stored by a
person remembering the data, and accessing the data can be performed by
mentally recalling that same data while the person is at the location.
Under the Guidance, these limitations recite both a mental process and
a commercial interaction of tracking items in transit. Accordingly, we
conclude the claimed process set forth in claim 1 recites judicial exceptions
of both a mental process and of a commercial interaction, which is a certain
method of organizing human activity under the Guidance.
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 Guidance turns now to determining whether claim 1
recites any 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:
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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);
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”).
As shown above, most of the claim limitations in claim 1 recite
abstract ideas. The only limitation in the claim additional to those abstract
limitations recites that characteristic data is stored “at a server.” The use of
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a generic server, however, merely evinces the use of conventional computer
technology to implement the otherwise abstract process on a computer. It is
well-established, however, that the use of generic technology to implement
an abstract idea is insufficient to integrate it into a practical application. See
MPEP 2106.05(f) (explaining that it is not indicative of integration into a
practical application where the claims “merely include instructions to
implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea”).
In sum, Appellant’s invention is focused on improving the
commercial practice of tracking items as they are in transit. The purported
improvement identified provided by the claims is not to technology, but
instead to a business process, and therefore constitutes an improvement to
the abstract idea itself. It is well-established, however, that improvements in
the abstract idea are insufficient to confer eligibility on an otherwise
ineligible claim. SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed.
Cir. 2018). We conclude claim 1 is directed to a judicial exception under
step 2A, prong 2, of the Guidance.
The Inventive Concept – Step 2B
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether claim 1 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, 84 Fed. Reg.
at 56.
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Our review of the Examiner’s rejection under Step 2B is guided by the
Berkheimer Memorandum, which sets forth what fact finding requirements
are applicable to rejections under § 101. Consistent with the Berkheimer
Memorandum, we agree with the Examiner that claim 1 does not add
specific limitations beyond what is well-understood, routine, and
conventional.
Our analysis focuses largely on the same limitation addressed in
Step 2A, prong 2, above. We agree with the Examiner that the addition of a
generic “server” does not supply an inventive concept under Step 2B
because the server is described at a high level, in functional terms, without
any detail in the Specification regarding how those functions are achieved.
Spec. 13–14 (section entitled “Cloud or Server”). This lack of detailed
description evidences the well-understood, routine, and conventional nature
of the recited “server.”
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 the
remaining claims.
REJECTION UNDER 35 U.S.C. § 103
We reverse the prior art rejections. The Examiner rejects claim 1 as
obvious over the combined teachings of Kenedy and Daniel. The Examiner
finds that Kenedy teaches a computer-implemented method of tracking a
tracked entity which generates data relevant to the tracked entity at a first
location and storing that data. Non-Final Act. 6 (citing Kenedy ¶ 63, 64,
111, 139, 153). The Examiner finds that Kenedy does not teach either the
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“obtaining” or “accessing” limitations of claim 1, and introduces Daniels to
address the deficiency. Non-Final Act. 6–7 (citing Daniels ¶¶ 22, 51–53,
and 58).
Appellant argues the Examiner has erred in several respects (Appeal
Br. 77–90), but we need only address one here. Appellant argues Kenedy is
deficient in that “[t]he system does not generate data relevant to a tracked
entity at a first location.” Appeal Br. 77. We agree.
Kenedy is directed to monitoring user behavior online in order to
provide “personalized online recommendations of web items that are based
on the user’s pangenetic makeup.” Kenedy, Abstract. The Examiner cites
tracking user behavior as described in paragraph 153 of Kenedy as teaching
the recited “generating, by a tracking entity, characteristic data relevant to
the tracked entity at a first location.” Non-Final Act. 6. However, we agree
with Appellant that Kenedy does not track the location of the user either in
the cited paragraph or otherwise. In fact, in the cited passage, Kenedy
makes no reference whatsoever to the location of the user. As such, we
agree with Appellant that Kenedy does not teach the disputed limitation.
The Examiner makes no finding with respect to Daniels that cures this
deficiency in Kenedy. Accordingly, we do not sustain the rejection of claim
1 under 35 U.S.C. § 103.6

6 In the event of further prosecution of this patent application, we suggest the
Examiner consider whether Shaw, cited in connection with certain
dependent claims, remedies the identified deficiencies in Kenedy.
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Remaining Claims
The remaining claims each incorporate the argued limitation of claim
1 by virtue of their claim dependencies. As such, we also do not sustain the
rejections of the remaining claims.
CONCLUSION
We affirm the Examiner’s rejection of claims 1–46 under 35 U.S.C.
§ 101.
We reverse the Examiner’s rejections of the claims under 35 U.S.C.
§ 103.
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).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–46 101 Eligibility 1–46
1–23, 30–
46
103 Kenedy, Daniel 1–23, 30–
46
24–29 103 Kenedy, Daniel,
Shaw
24–29
Overall
Outcome
1–46
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
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SMITH, Administrative Patent Judge, dissenting-in-part.
I disagree with the decision to reverse the rejection under 35 U.S.C.
§ 103. Claim 1 recites “generating, by a tracking entity, characteristic data
relevant to the tracked entity at a first location.” Appellant argues Kenedy is
deficient in that “[t]he system does not generate data relevant to a tracked
entity at a first location.” Appeal Br. 77. According to Appellant, the
“individual terms must be given their usual definitions unless otherwise
noted in the specification.” Id. at 85. Appellant contends that “track” as
claimed, according to a dictionary definition, means to “follow the course or
trail of (someone or something), typically in order to find them or note their
location at various points.” Id. at 85–86.
However, Appellant incorrectly states the standard for broadest
reasonable interpretation. The claims measure the invention. See SRI Int’l
v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc).
During examination, the Office must apply the broadest reasonable meaning
to the claim language (and not, as Appellant contends, the “usual
definitions”), taking into account any definitions presented in the
specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Under the broadest reasonable interpretation, “[a]bsent an
express definition in their specification, the fact that appellants can point to
definitions or usages that conform to their interpretation does not make the
PTO’s definition unreasonable when the PTO can point to other sources that
support its interpretation.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997).
Our reviewing court guides that extrinsic evidence, such as a
dictionary definition, is unlikely to result in a reliable interpretation of patent
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claim scope unless considered in the context of the intrinsic evidence. See
Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed. Cir. 2005). The court in
Phillips states that “heavy reliance on the dictionary divorced from the
intrinsic evidence risks transforming the meaning of the claim term to the
artisan into the meaning of the term in the abstract, out of its particular
context, which is the specification.” Id. at 1321. The court further states
that “a general-usage dictionary cannot overcome art-specific evidence of
the meaning of a claim term. . . . The dictionary does not always keep
abreast of the inventor. It cannot.” Id. at 1322 (citations omitted).
When determining the meaning of a claim term, the court states that
the Specification “is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.” Id. at 1315 (citation omitted). In particular, “[a] claim
construction that excludes a disclosed embodiment is rarely, if ever, correct
and would require highly persuasive evidentiary support.” Adams
Respiratory Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed.
Cir. 2010)(citation omitted). Here, Appellant’s Specification does not
provide an express definition of “track” that is limited to tracking a location.
Rather, Appellant’s Specification provides several non-limiting examples of
“track,” in addition to tracking location, that include tracking various other
things such as a person’s status or treatment history, tracking time, or
tracking changes in data. Spec. 1 (“However, it is important to track not
only the person’s location, but also his or her status and treatment history”),
2 (“Currently, known tracking systems focus on time and location, and do
not provide additional details”), 9 (“Thus, the system . . . provides the ability
to track pets, livestock, people, and objects at various levels of treatment,
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aid, care, or service”), 14 (“These correlations . . . help track the progression
of Patient 1 through the various stages of treatment”), claim 5 (“tracking
chronological changes in biometric data”). The Specification concludes by
stating that the “exemplary embodiments are illustrative of the inventive
concept recited in the appended claims, and are not limiting of the scope or
spirit of the present invention as contemplated by the inventors.” Spec.
18:19–20. Thus, the scope of “track” encompasses, but is not limited to, at
least these disclosed non-limiting examples.
In particular, the scope of “track” is broader than the disclosed non-
limiting examples, and the claims are not confined to the specific
embodiments described in the specification. See Phillips, 415 F.3d at 1323.
Here, the Examiner finds that Paragraph 64 of Kenedy discloses “monitoring
users’ (tracked entities) online behavior to track and record what each user
clicks on . . . .” Ans. 9. Also, Paragraph 93 of Daniel discloses that
“observations by the practitioner . . . may be tracked.” Kenedy and Daniel
provide art-specific evidence of the meaning of “track” to a person of
ordinary skill in the art. Appellant’s citation to “a general-usage dictionary
cannot overcome art-specific evidence of the meaning of” track provided by
Kenedy and Daniels. See Phillips, 415 F.3d at 1322.
Appellant’s contention, that the meaning of “track” is limited by an
extrinsic dictionary definition to mean “following the course or trail of
(someone or something) typically in order to find them or note their location
at various points,” is (a) not recited in the claim, (b) not a limiting definition
found in Appellant’s Specification, (c) excludes the Specification’s disclosed
embodiments of tracking things other than location, and (d) excludes art-
specific evidence of tracking things other than location. Excluding disclosed
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embodiments is “rarely, if ever, correct and would require highly persuasive
evidentiary support,” which Appellant has not provided. Adams, 616 F.3d at
1290. Further, the dictionary definition cited by Appellant does not
overcome the art-specific evidence cited by the Examiner. Phillips, 415
F.3d at 1322. “[T]he fact that appellants can point to [a] definition[] . . . that
conform[s] to their interpretation does not make the PTO’s definition
unreasonable when the PTO can point to other sources that support its
interpretation,” such as the Specification’s and the prior art’s disclosures of
tracking things other than location. Morris, 127 F.3d at 1056.
The Examiner finds that both Kenedy and Daniel teach “generating,
by a tracking entity, characteristic data relevant to the tracked entity at a first
location” as claimed. Ans. 8–11. For example, the Examiner finds that
Kenedy teaches a system that generates behavioral data relevant to the
behavior characteristic of a user at the user’s zip code location. Ans. 8–9.
The Examiner’s findings are supported by the record. Both the behavioral
“characteristic data” and the zip code “characteristic data,” which are
“relevant to the” user, or “tracked entity,” are generated by the system, or
“tracking entity,” when the “tracked entity” is “at a first location” as
indicated by the user’s zip code, as taught by Kenedy. See Kenedy ¶ 97,
Fig. 8. I agree with the Examiner, that Kenedy teaches “generating, by a
tracking entity, characteristic data relevant to the tracked entity at a first
location” within the scope of claim 1 as read in light of Appellant’s
Specification. The Examiner makes similar findings regarding the teachings
of Daniel. Ans. 10–11.
Appellant does not respond to the Examiner’s findings in the Reply.
Because Appellant has not identified any specific deficiencies in the
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Examiner’s findings showing Examiner error, Appellant has not provided
persuasive evidence or argument to rebut the Examiner’s prima facie case.
See In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (citing Ex Parte
Frye, 94 USPQ2d 1072 (BPAI 2010) (precedential)).
Further, the scope of “generating . . . characteristic data” is not limited
to generating tracking data. Under the broadest reasonable interpretation,
this claim limitation does not recite that the step of “generating . . .
characteristic data” performs generating data for tracking a location of the
tracked entity, nor does this limitation recite generating data for tracking any
other feature of the tracked entity. Rather, the scope of the claimed
“generating . . . characteristic data” encompasses “generating” data that is
“relevant to the tracked entity,” regardless of whether such data is used for
tracking or not. The term “at a first location” does not limit the
characteristic data to be location data, but rather, limits either the “tracking
entity” or the “tracked entity” to be located at “a first location” when the
“characteristic data” is generated.7 Appellant’s contention that this
limitation requires generating data for tracking a location, or anything else,
is not commensurate with the broadest reasonable interpretation of the claim.
“Construing claims broadly during prosecution is not unfair to the
applicant . . . because the applicant has the opportunity to amend the claims
to obtain more precise claim coverage.” Am. Acad., 367 F.3d at 1364. “An
essential purpose of patent examination is to fashion claims that are precise,

7 The claim language is vague as to whether the tracking entity or the
tracked entity is at the first location. Given that this claim term, along with
several other claim terms, are amenable to two or more plausible
interpretations, the Examiner should consider whether the claim satisfies the
requirements of 35 U.S.C. § 112, second paragraph.
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clear, correct, and unambiguous. Only in this way can uncertainties of claim
scope be removed, as much as possible, during the administrative process.”
In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Here, if Appellant intends
the claimed “tracking entity” to generate location data of the “tracked
entity,” then Appellant has the opportunity to amend the claims to obtain
more precise claim coverage. If Appellant intends that the claimed “tracking
entity” actually tracks the location of a tracked entity by following the
course or trail of (someone or something), typically in order to find them or
note their location at various points, then Appellant has the opportunity to
amend the claims to actually recite this limitation.
Similarly, contrary to Appellant’s contention, the claim limitation
“accessing by at least one of the tracking entity and another tracking entity,
at least a portion of the stored characteristic data at at least one of the first
location and another location” does not require accessing location data of the
tracked entity, nor does this limitation require tracking anything. This claim
limitation does not recite that the “stored characteristic data” that is accessed
is location data. Rather, this limitation recites accessing “a portion of the
stored characteristic data,” where the “characteristic data” is data that is
“relevant to the tracked entity” as discussed in the analysis of the
“generating” step above. The scope of the at least one “location” recited in
this limitation encompasses the location of the entity that is “accessing” the
data. In particular, the claim recites that the “accessing” is performed by one
of the tracking entities that is located at either “the first location,” or at
“another location.” If Appellant intended “the first location” and “another
location” to mean something other than the location of the entity that is
accessing the data, then Appellant has the opportunity to amend the claims.
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If Appellant intended to limit the “stored characteristic data” to mean
location data of the tracked entity, then Appellant has the opportunity to
amend the claims to obtain more precise claim coverage.
Even were this limitation construed to be limited to accessing location
data of the tracked entity, the scope of “accessing . . . characteristic data at at
least one of a first location and another location” only requires, under this
unduly narrow construction, accessing location data for “the first location”
of the tracked entity. Contrary to Appellant’s contention, the claim does not
track an entity by following the trail of a tracked entity, because the claim,
even under this unduly narrow construction, only accesses one location,
which is not a trail, but a single location.8 The Examiner finds that both
Kenedy and Daniel teach accessing the first location of the tracked entity,
even under this unduly narrow claim interpretation. See Ans. 9 (citing
Kenedy ¶ 97 (“[F]or example a zip code value which indicates a user
location.”)). Appellant does not rebut the Examiner’s findings in the Reply.
The claim limitation “in order to track a current physical location and
condition of the tracked entity” is not positively recited as a method step in
the claim. The “in order to” clause does not affect any steps of the method
of claim 1. Rather, this limitation recites the intended result of the
“accessing” step. The “in order to” clause is not entitled to patentable
weight. Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329 (Fed. Cir. 2005)
(The court held that a “clause in a method claim is not given weight when it

8Appellant’s Specification does not disclose how the claimed step of
“accessing” a single location would result in tracking a location of an entity
by following a trail of the entity. The Examiner should consider whether the
claims satisfy the requirements of 35 U.S.C. § 112, first paragraph, as well
as second paragraph.
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simply expresses the intended result of a process step positively recited.”).
If Appellant intended “track[ing] a current physical location and condition of
the tracked entity” to be a step that is positively performed by the method of
claim 1, then Appellant has the opportunity to amend the claims.
Given (a) the scope of the claim under broadest reasonable
interpretation, (b) Appellant’s incorrect claim interpretation, (c) that
Appellant’s arguments regarding the teaching of the prior art are not
commensurate with the scope of the claim, and (d) that Appellant has failed
to rebut the Examiner’s findings regarding both the scope of the claim and
the teaching of the prior art, I would affirm the Examiner’s rejection.