Ex Parte Cummings

Patent Trials and Appeals Board

Feb 28, 2019

12113989 - (D) (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/113,989
131270 7590
BELZER PC
ATTN: John G. Posa
2905 Bull Street
Savannah, GA 31405
05/02/2008
02/28/2019
FIRST NAMED INVENTOR
Ian Cummings
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.
IAN-10402/29 (PATENT) 2106
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
02/28/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN CUMMINGS
Appeal2018-001652
Application 12/113,989
Technology Center 3600
Before CARL W. WHITEHEAD JR, JEFFREYS. SMITH and
ERIC B. CHEN, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1-11 and 13-28
under 35 U.S.C. § 134(a). Appeal Brief 2-9. We have jurisdiction under 35
U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to "providing advertising content on a
computerized navigator." Specification ,r 1.
Illustrative Claim
1. A method of conveying advertising content to a user of a
navigation system, comprising the steps of:
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Application 12/113,989
providing a vehicle navigation system including a user
input device and a display screen providing navigation
guidance including the location of advertisers within a
geographic region;
receiving information from or about the user indicating
that the user would be interested in receiving advertising
content through the navigation system, advertising content
being defined as information relating to goods or services
offered or sold by one of the advertisers;
displaying text or an icon overlayed on a map image on
the display screen informing the user through the navigation
system that advertising content is available through the
navigation system;
receiving a command through the user input to convey
the available advertising content; and
conveying the advertising content to the user in response
to the command.
Rejections on Appeal
Claims 1-11 and 13-28 stand rejected under 35 U.S.C. §101 because
the claimed invention is directed to nonstatutory subject matter. Final
Action 2--4.
Claims 1--4, 6-11, 14--19 and 21-27 stand rejected under pre-AIA 35
U.S.C. § I03(a) as being unpatentable over Ramaswamy (US Patent
7,640,104 B2; issued December 29, 2009), Park (US Patent 5,627,549;
issued May 6, 1977) and Mitsuoka (US Patent Application Publication
2002/0026355 Al; published February 28, 2002). Final Action 4--11.
Claim 5 stands rejected underpre-AIA 35 U.S.C. §I03(a) as being
unpatentable over Ramaswamy, Park, Mitsuoka and Kumar (US Patent
7,617,122 B2; issued November 10, 2009). Final Action 11.
Claim 13 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Ramaswamy, Park, Mitsuoka and Rodriguez (US Patent
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Application 12/113,989
Application Publication 2003/0154475 Al; published August 14, 2003).
Final Action 12.
Claim 20 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Ramaswamy, Park, Mitsuoka and Smith (US Patent
Application Publication 2007/0210937 Al; published September 13, 2007).
Final Action 12-13.
Claim 28 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Ramaswamy, Park, Mitsuoka and Jobs (US Patent
Application Publication 2008/0122796 Al; published May 29, 2008). Final
Action 13.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed July 17, 2017), the Reply Brief (filed
December 4, 2017), the Final Action (mailed November 18, 2016) and the
Answer (mailed October 3, 2017) for the respective details.
35 U.S.C. §101 rejection
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101 because the claims are directed to an abstract idea comprising a
fundamental economic practice or organizing human activity, and do not
include additional elements that are sufficient to amount to significantly
more than the abstract idea. Final Action 2; see also Alice Corp. Pty. Ltd. v.
CLS Bank Int 'l, 573 U.S. 208, 217 (2014) (Describing the two-step
framework "for distinguishing patents that claim laws of nature, natural
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phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.").
After the mailing of the Answer and the filing of the Briefs in this
case, the US PTO published revised guidance on the application of§ 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the
Office first looks 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 MPEP § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.0S(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 Memorandum.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Memorandum.
Appellant argues the pending claims are not directed to an abstract
idea because "Appellant's claims reside in a method of conveying
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advertising content to a user of a navigation system, and the claims include
numerous references to positively recited physical elements. Thus,
Appellant's claims transcend mere 'abstract ideas."' Appeal Brief 2.
We agree with the Examiner's determination that the claims are
directed to an abstract idea. See Final Rejection 2--4. Claim 1 recites a
"method of conveying advertising content to a user of a navigation system"
wherein information is received by the user from an unspecified source
where the user's interest in receiving advertising content is not at issue and
where the "advertising content being defined as information relating to
goods or services offered or sold by one of the advertisers." These steps
comprise fundamental economic principles or practices and/or commercial
or legal interactions; thus the claim recites the abstract idea of "certain
methods of organizing human activity." Memorandum, Section I
(Groupings of Abstract Ideas); see Specification ,r 27. Our reviewing court
has found claims to be directed to abstract ideas when they recited similar
subject matter. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (using advertising).
Appellant argues that although the Examiner acknowledged that
claim 1 recited "'additional limitations' of a vehicle navigation system, user
input device and display screen" - the Examiner stated that "' all are
described in the claim and specification as conventional electronic
components."' Appeal Brief 4 ( citing Final Action 3.) Appellant contends,
"Never did Appellant describe any of its physical hardware as
'conventional."' Appeal Brief 4.
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We do not find Appellant's argument persuasive because claim 1
appears to be utilizing the vehicle navigation system as merely a tool to
distribute advertising content. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1335-36 (Fed. Cir. 2016). ("[W]e find it relevant to ask whether the
claims are directed to an improvement to computer functionality versus
being directed to an abstract idea ... the focus of the claims is on the
specific asserted improvement in computer capabilities (i.e., the self-
referential table for a computer database) or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool."). Claim 1 does not recite an additional element or elements that
reflect an improvement in the functioning of a computer, or an improvement
to other technology or technical field. See Final Action 4 ("The ordered
combination does not appear to improve the functioning of the computer
itself or improvement to another technology or technical field."); Alice, 573
U.S. at 222 ("In holding that the process was patent ineligible, we rejected
the argument that 'implement[ing] a principle in some specific fashion' will
'automatically fal[l] within the patentable subject matter of§ 101. "')
(quoting Parker v. Flook, 437 U.S. 584, 593(1978)).
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the
Judicial Exception Is Integrated Into a Practical Application). Nor do we
find the claim includes a specific limitation or a combination of elements
that amounts to significantly more than the judicial exception itself. See
Memorandum, Section III(B)(Step 2B: If the Claim Is Directed to a Judicial
Exception, Evaluate Whether the Claim Provides an Inventive Concept); see
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also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1359 (Fed. Cir. 2018) ("the 'inventive concept' cannot be the abstract idea
itself').
Appellant contends, "Assuming Appellant's claims distinguish over
the prior art, which Appellant certainly believes per the rebuttal arguments
of record on the merits, then by definition the [ claimed] steps are not
routine, well-understood or conventional." Reply Brief 2. Appellant further
contends, "[s]ince Appellant's method steps are [] non-obvious, no existing
vehicle navigation system is simply performing Appellant's functions, nor
are such functions expected from any conventional navigation system. The
Examiner has not pointed to any existing or 'conventional' navigation
system which performs any of Appellant's distinguishing functions." Reply
Brief 3. It is noted, as the Federal Circuit has explained, a "'claim for a new
abstract idea is still an abstract idea."' SAP America, Inc. v. Investpic, LLC,
890 F.3d 1016, 1018 (Fed. Cir. 2018) (quoting Synopsis, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016)). Even assuming the
technique claimed was "'innovative, or even brilliant,"' that would not be
enough for the claimed abstract idea to be patent eligible. See SAP America,
890 F.3d at 1018.
The Examiner finds, "the input device and display screen are simply
performing their generic function of receiving input and displaying
information" and therefore "the additional limitations are simply performing
their routine, well-understood and conventional function similar to what has
been found by the courts (in Alice) not to be adding significantly more to the
underlying abstract idea." Final Action 3. The Examiner determines, "[t]he
physical elements do not transform the abstract idea to a patent eligible
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subject matter since the physical elements are performing their routine, well-
understood and conventional function (Step 2B)." Answer 2-3.
We do not find Appellant's argument persuasive. Other than the
abstract idea itself, the remaining claim elements only recite generic
computer components that are well-understood, routine, and conventional.
See Alice, 573 U.S. at 226. Accordingly, we agree with the Examiner that
claims 1-11 and 13-28, not argued separately, are not patent eligible. See
Appeal Brief 2.
35 U.S.C. §103 rejections
Claims 1-4, 6-8, 9-11, 14-19 and 21-27
Appellant contends, "Ramaswamy relates to GPS navigation, but
emphasizes the locations of businesses (i.e., 'waypoints'), which is not
advertising content per Appellant's claimed definition" and "Ramaswamy
does not teach Appellant's step of 'receiving information from or about the
user indicating that the user would be interested in receiving advertising
content through the navigation system.'" Appeal Brief 5. Appellant further
contends, "Col. 6:3-5 of Ramaswamy states that ' [ o ]nee the logic filter 102
has been established, the navigation system receives advertising content
from advertising providers."' Appeal Brief 5. Appellant concludes, "[t]his
is unrelated to receiving information indicating that the user would be
interested in receiving through the navigation system." Appeal Brief 5. We
find Appellant's contentions are counterintuitive to Ramaswamy's actual
disclosure.
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Claim 1 recites, "receiving information from or about the user
indicating that the user would be interested in receiving advertising content
through the navigation system." Ramaswamy discloses "the navigation
system 20 optionally includes a system for extracting information regarding
the occupants of the vehicle and then utilizes that extracted information to
selectively display advertising regarding waypoints on the navigation screen
38." Ramaswamy, column 5, lines 5-9; Final Action 5. It is evident that
Ramaswamy's waypoints are not advertising content but entities from which
the advertising content originates. It is also evident that Ramaswamy
discloses the advertising content is modified based upon the interest of the
vehicle's occupants and the location of the vehicle. Ramaswamy, column 6,
lines 36-43 ("[T]he display of advertising content on the navigation system
screen 38 is filtered to not only limit the display of the advertising content to
advertisements that may be of interest to the vehicle occupants, but to also
filter the received advertising content as a function of the vehicle route so
that only advertising content within a reasonable distance from the route will
be shown on the display screen."); Final Action 5.
Appellant argues that Park fails to address the alleged deficiency of
Ramaswamy because, "[ a ]lthough in Park a user can select a data record of
interest, Appellant's claimed step requires 'receiving information from or
about the user indicating that the user would be interested in receiving
advertising content through the navigation system,' which Park fails to
disclose or suggest." Appeal Brief 6. We do not find Appellant's argument
persuasive because Park discloses, "device 4Q[lJ monitors the stream of data
1 "A travel information device likely to be soon more commonly
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provided in data broadcast 22 and compares location information therein to
the current vehicle location to collect all references within a given distance
of current vehicle location. Additionally, the user establishes a category of
interest, e.g., auto parts advertisements, grocery store advertisements,
sporting goods or restaurant advertisements, to further filter information
available in data broadcast 22." Park, column 7, lines 1-8; Final Action 6.
Further, we find Park superfluous in view of the disclosure of Ramaswamy
as discussed above.
Appellant notes:
The Examiner concedes that Ramaswamy and Park do not
disclose several of Appellant's steps, including:
informing the user through the navigation system that
advertising content is available through the navigation system;
receiving a command through the user input to convey the
available advertising content; and
conveying the advertising content to the user in response to the
command.
Note that "informing the user through the navigation
system that advertising content is available through the
navigation system" is actually an incomplete paraphrasing of
Appellant's step, which reads in its entirety:
"displaying text or an icon overlayed on a map image on the
display screen informing the user through the navigation system
that advertising content is available through the navigation
system."
Appeal Brief 6.
incorporated into vehicles is a vehicle position detecting system, e.g., the
well known global positioning system (GPS) providing satellite broadcast to
determine location of a receiving GPS device." Park, column 1, lines 15-21.
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Appellant argues that Mitsuoka failed to address the alleged
deficiencies of the Ramaswamy/Park combination. Appeal Brief 6. The
Examiner finds Ramaswamy discloses displaying text or an icon on the map
image that advertising content is available. Final Action 5 ( citing
Ramaswamy, column 1, lines 14--19, Figure 2). Ramaswamy discloses,
"Once the appropriate waypoint has been identified and the waypoint is
within the map currently display on the screen. The waypoint optionally
containing additional information relative to the waypoint, is displayed on
the screen 38 as shown at 64 (FIG. 2)." Ramaswamy, column 4, lines 18-
24. Whereas it has been noted above that the additional information could
contain advertising content. See Ramaswamy, column 6, lines 35--43.
Claim 1 recites, "providing a vehicle navigation system including a
user input device and a display screen." Ramaswamy in column 3, lines 13-
19 discloses:
A receiving or entry device 40 for the navigation system 20
enables an occupant of the vehicle to enter a desired destination
point to the navigation system 20. The entry device 40 may be of
any conventional construction, such as a touch screen ( which
may be the same as the display screen 38), a keyboard, a speech
processor that receives oral commands via a microphone, or the
like.
As stated above, the navigation system includes a system for extracting
information about the vehicle's occupants and using the information to
select relevant advertising regarding the waypoints wherein, "One method of
extracting information concerning the occupants of the vehicle is to include
a microphone 80 within the vehicle occupation compmiment so that the
microphone 80 picks up speech from the vehicle occupants." Ramaswamy,
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column 5, lines 10-13. It is evident that Ramaswamy provides both a user
input device for the user to command or indicate advertising content
preferences and a display screen as recited in claim 1. Also, as discussed
above, Ramaswamy discloses the advertising content is modified based upon
the interest of the vehicle's occupants and the location of the vehicle.
Ramaswamy, column 6, lines 36-43. Accordingly, we do not find
Appellant's arguments persuasive because the disputed claim 1 limitations
read upon Ramaswamy's disclosure as discussed above and we further find
Mitsuoka superfluous in view of the disclosure of Ramaswamy as discussed
above. We consequently sustain the Examiner's obviousness rejection of
claims 1--4, 6-8, 9--11, 14--19 and 21-27 not argued separately. See Appeal
Brief 5.
Claim 5
Appellants contend, "[ c ]laim 5 adds to claim 1 the limitation that the
information about the user includes demographic information about the
user." Appeal Brief 7. The Specification merely discloses, "[a]ltematively,
such information may include demographic information about the user."
Specification ,r 12. Ramaswamsy discloses wherein the user's advertising
content is based upon the vehicle occupants' information, as discussed
above, accordingly, we find it would have been obvious for the vehicle
occupants in Ramaswamsy to indicate their ages in order to receive age
approximate advertising content within a geographical region. "As our
precedents make clear, however, the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int 'l v. Teleflex Inc., 550 U.S.
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398,418 (2007).
The Examiner finds, "Kumar discloses wherein the information about
the user includes demographic information about the user (claims 2, 8, 14)."
Final Action 11. Appellant argues, "Kumar relate 'improved targeted
marketing techniques that target users navigating online environments,' and
has nothing to do with vehicle navigation, let alone wireless client-server
vehicle navigation." Appeal Brief 7. We do not find Appellant's argument
persuasive because the claimed user's information is not based upon the
vehicle navigation, it is based upon the user's information which includes
demographical information.
Claim 13
Appellant argues, "Rodriguez has nothing to do with Appellant's
invention. Rather, Rodriguez relates to television, and more particularly, to
subscriber television systems and methods for increasing the viewing of
television advertisements by reducing viewer avoidance." Appeal Brief 8.
The Examiner finds, "Rodriguez discloses wherein the text or icon is
presented in a manner visually discemable from indicators for locations
for which advertising content is not available ([0052], a value is associated
with each of the advertisement ( a value of zero implies that coupon has no
value or not available)." Final Action 12. The Specification merely
discloses, "[i]ndicators for locations for which advertising content is
available may be presented in a manner visually discemable from indicators
for locations for which advertising content is not available." Specification ,r
14. Claim 13 uses different icons or text to differentiate locations in which
advertising content is not available. One of the prime purposes of
employing icons or text is to differentiate elements and we find using
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different icons or text to differentiate locations would have been an obvious
modification to Ramaswamy's invention. "As our precedents make clear,
however, the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int 'l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Claim 20
Appellant argues, "[a]ppellant's claim 20 adds to claim 1 that the
advertising content includes a telephone number, address, email address or
other information enabling the user to contact a party associated with the
advertisement." Appeal Brief 20. The Examiner finds, "Smith discloses
wherein the advertising content includes a telephone number, address, email
address or other information enabling the user to contact a party associated
with the advertisement ([0064])." Final Action 12-13. Smith discloses,
"[ m ]ap information and advertisements displayed in conjunction with the
map information can be dynamically rendered as a function of a user
advertising preference." Abstract. Smith further discloses, "[ s Jome
embodiments relate to advertisement information that is tailored for a
particular user based in part on user preferences") and that map information
can include detailed information in regard to a point of interest "regarding a
name of a building or other structure can be provided upon request or
automatically, such as when a user hovers a mouse over the object. Other
information regarding the structure can also be provided, such as telephone
numbers, email alias information, web-site information, hours of operation,
special events, etc." Smith ,r ,r 9, 64. We do not find Appellant's argument
persuasive because the incorporation of an advertiser's contact information
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and business location is well known in the art and would have been an
obvious modification to the Ramaswamy's invention.
Claim 28
Claim 2 8 recites "wherein user commands to provide advertising
information and user commands to provide guidance to a destination are
differentiated by the manner in which the user interacts with the
touchscreen." The Specification discloses in paragraph 19:
The navigation system may be a wireless client-server navigator,
and the user may provide[] commands to the navigation system
via a touchscreen, in which case user commands to provide
advertising information and user commands to provide guidance
to a destination may be differentiated by the manner in which the
user interacts with the touchscreen.
Appellant argues:
The Examiner's rationale to combine Ramaswamy, Park,
Mitsuoka, and Jobs is "to use different touch screen gestures as
a command." This motivation is difficult to follow. Does the
Examiner mean, literally, that different touch screen gestures can
be used as the same command? In any case, such a motivation is
far too fundamental to support a finding of obviousness.
Appeal Brief 9.
It is not clear from the claim language the manner in which the user
commands providing advertising information and the user commands
providing guidance is supposed to differentiate. The Specification is silent
in regard to the differentiation as well. Accordingly, Ramaswamy in column
3, lines 13-19 discloses:
A receiving or entry device 40 for the navigation system 20
enables an occupant of the vehicle to enter a desired destination
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point to the navigation system 20. The entry device 40 may be of
any conventional construction, such as a touch screen ( which
may be the same as the display screen 38), a keyboard, a speech
processor that receives oral commands via a microphone, or the
like.
We find Ramaswamy differentiates the user's commands by
recognizing the manner in which the command is received by the entry
device in the same manner as required by the claim. Subsequently, we
sustain the Examiner's obviousness rejection of claim 28.
DECISION
The Examiner's nonstatutory subject matter rejection of claims 1-11
and 13-28 is affirmed.
The Examiner's obviousness rejections of claims 1-11 and 13-28 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l ). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
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