Ex Parte Accardo et al

Patent Trial and Appeal Board

Nov 29, 2018

13165459 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/165,459 06/21/2011
63649 7590 12/03/2018
DISNEY ENTERPRISES, INC.
C/0 FARJAMI & FARJAMI LLP
26522 LA ALAMEDA A VENUE, SUITE 360
MISSION VIEJO, CA 92691
FIRST NAMED INVENTOR
Anthony Accardo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0260305 3893
EXAMINER
SCHMUCKER, MICHAEL W
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
docketing@farj ami. com
farjamidocketing@yahoo.com
ffarj ami @farj ami. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY ACCARDO, AMBER BROWN,
and JOE MARKS 1
Appeal2017-001671
Application 13/165,459
Technology Center 3600
Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-5, 7-15, and 17-20. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants identify Disney Enterprises, Inc., as the real party in interest.
App. Br. 2.
Appeal2017-001671
Application 13/165,459
Claim 1 is illustrative:
1. A method for providing commerce options through a
mobile device having a processor, a sensor and a display, the
method comprising:
sensing, using the sensor, a credit roll segment of a
movie being shown;
converting, by the processor, the sensed credit roll
segment of the movie to a sensor data sample corresponding to
the sensed credit roll segment of the movie;
transmitting, by the processor, the sensor data sample to
a server;
receiving, by the processor, from the server, an
advertising campaign generated by the server based
on an identity of the movie determined by the server by
matching the sensor data sample to a media record
corresponding to the movie in a media database, and identifying
the movie using the media record corresponding to the movie,
wherein the media record includes the identity of the movie;
and
displaying, by the processor, the advertising campaign on
the display of the mobile device.
Appellants appeal the following rejections:
Claims 1-5, 7-15, and 17-20 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1-5, 7-15, and 17-20 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
Claims 1, 2, 4, 5, 7-9, 11, 12, 14, 15, and 17-19 are rejected under
35 U.S.C. § I03(a) as being unpatentable over Obermeyer
(US 2009/0307067 Al, published Dec. 10, 2009) in view of Rhoads (US
2011/0098029 Al, published Apr. 28, 2011, Ziv (US 2007/0179854 Al,
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Application 13/165,459
published Aug. 2, 2007), and McIntire (US 2007/0250901 Al, published
Oct. 25, 2007).
Claims 3 and 13 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Obermeyer in view of Rhoads, Ziv, McIntire, and
Carlson (US 2009/0327151 Al, published Dec. 31, 2009).
Claims 10 and 20 are rejected under 35 U.S.C. I03(a) as being
unpatentable over Obermeyer in view of Rhoads, Ziv, McIntire, and Murray
(US 2011/0112913 Al, published May 12, 2011).
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014) (internal quotations and citation omitted).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76-77 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
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against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--595 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. (internal quotations and
citation omitted).
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In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Comm '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).
Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( determining claims not abstract because they "focused on a specific
asserted improvement in computer animation.").
ANALYSIS
Rejection under 35 USC§ 101
The Examiner determines that the claims are directed to the concept
of targeted advertising by location and attendance at an event, which is a
fundamental economic practice, a series of mathematical formulation and/or
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a method organizing what a human could do with the same information
(human activity). Final Act. 5---6. In regard to the second step of the
analysis, the Examiner finds:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the claims do not recite an improvement to
another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations
beyond generally linking the use of an abstract idea to a
particular technological environment. It should be noted the
limitations of the current claims are performed by the
generically recited computer/processor. The limitations are
merely instructions to implement the abstract idea on a
processor/computer and require no more than a generic
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known to the industry.
Final Act. 6.
Appellants argue that the claimed mobile device does not
operate in its normal and expected manner, i.e., by sending its GPS
coordinates to a server for receiving advertisements but rather senses
the credit roll segment of a movie. App. Br. 12-13.
In the Answer, the Examiner does not address Appellants' argument
that the mobile device does not operate in its normal and expected manner.
Rather, the Examiner states that Appellants' invention uses a known
computer and computer functionality to address a business issue of
presenting target messages to consumers based upon time, location, and
perceived need, which will hopefully have the highest return on investment.
Because the Examiner has not provided an analysis as to why the step
of sensing the credit roll segment of a movie by the mobile device is a well-
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understood, routine and conventional activity of a mobile device previously
known to the industry, the basis for the Examiner's findings is not apparent
\Ve, therefore, reverse the Examiner's rejection of claim 1 as directed to
patent ineligible subject matter. We reverse this rejection as it is directed to
the remaining c 1aims for the same reason.
Rejection under 35 USC§ 103(a)
In rejecting the claims under 35 U.S.C. § 103(a), the Examiner relies
on Obermeyer in combination with Rhoads, Ziv and McIntire. The
Examiner finds that Obermeyer teaches sending advertisement in the form of
coupons based on the location data of the user, but not based on a movie or
movie event. Final Act. 12. The Examiner finds that Rhoads teaches
matching audio and/or visual data to a database of information to determine
what the information is, e.g., a movie. Final Act. 9. The Examiner finds
that Ziv teaches presenting content based upon attending and/or viewing
media events. Final Act. 12-13. The Examiner specifically relies on the
teaching in Ziv of providing users attending a soccer match, for example,
with replays or other soccer content. However, we find that Ziv makes its
determination of whether a user is viewing a soccer event based on the
location of the viewing device, ticket sales data, or other connected data
indicating the location of the customer, not actually on the soccer content
itself. Ziv ,r 95.
The Examiner finds that Obermeyer modified by the teaching of Ziv
provides content based on an event, but does not appear to specify a
movie. However, the Examiner determines that the type of event does not
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change the method used in gathering a sample determining the credit roll of
the movie and delivering an advertisement. Final Act. 15.
The Examiner relies on McIntire for teaching a signal that depicts the
ending of a movie. Final Act. 16.
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to modify Obermeyer by presenting content at the
appropriate time to attendee/viewers of events as taught by Ziv in order to
present relevant content at the correct time to users in a manner that should
increase sales. The Examiner also concludes it would have been obvious to
a person of ordinary skill in the art to modify Obermeyer/Ziv with the
teaching in McIntyre of using audio and/or video cues at any time during the
event to offer additional information as taught and explained by McIntire for
the purpose of projecting positive products to consumers and thereby
increase sales. Final Act. 15-16.
The Examiner relies on Rhoads for teaching matching audio and/ or
visual data in a database of information to determine what that information
1s. Final Act. 9.
The problem with the Examiner's reasoning is that it has not been
established that there is a disclosure in the prior art of sending ads based on
specific content, much less a disclosure of sending ads based on sensing the
closing credits of a movie. In addition, we agree with the Appellants that the
Examiner has not established that there would have been a reason to sense
the credit roll of a movie in a system like Obermeyer that is sending coupons
based on a location.
In view of the foregoing, we will not sustain this rejection as it is
directed to claim 1 and claims 2, 4, 5, 7-9 dependent therefrom. We will
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also not sustain the rejection as it is directed to claims 11, and claims 12, 14,
15, and 1 7 dependent therefrom for the same reason.
We will also not sustain the remaining rejections because these
rejections also rely on the combination of Obermeyer and Ziv.
DECISION
We reverse the Examiner's§ 102 and§ 103 rejections.
ORDER
REVERSED
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