Ex Parte Das

Patent Trial and Appeal Board

Oct 6, 2017

13337486 (P.T.A.B. Oct. 6, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/337,486 12/27/2011 Pradeep K. Das G-593 3387
919 7590 10/11/2017
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT.
37 EXECUTIVE DRIVE
MSC 01-152
DANBURY, CT 06810
EXAMINER
ROSS, SCOTT M
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/11/2017 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):
iptl@pb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRADEEP K. DAS
Appeal 2015-000541
Application 13/337,486
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BIB HU R. MOHANTY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1—28 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-000541
Application 13/337,486
THE INVENTION
The Appellant’s claimed invention is directed to targeted campaign
communications on mobile devices (Spec., para. 2). Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A computer method for facilitating targeted campaign
communications on mobile devices, the method comprising:
at a campaign creation computer, receiving campaign data from
a campaign entity and, as part of the campaign data, receiving:
campaign content information; and
media placement location data;
at the campaign creation computer, generating a campaign
website based on the received campaign content information at the
campaign creation computer, generating campaign media for printing,
the step of generating the campaign media including generating
encoded data that includes an identification of the campaign website
and media placement location data;
providing the generated campaign media, including the
generated encoded data, to the campaign entity;
receiving a communication from a mobile device to the
campaign website, the communication initiated by the mobile device
scanning the encoded data on the campaign media, the received
communication including media placement location data;
dynamically selecting, from a plurality of location-related
communications, a location based targeted communication based on
the media placement location data received from the mobile device;
and
transmitting the dynamically selected location-based targeted
communication to the mobile device.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-28 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
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Appeal 2015-000541
Application 13/337,486
2. Claims 1-2, 5-6, 9-10, 12-14, 15-16, 19-20, 23-24, and 26-28
are rejected under 35 U.S.C. § 103(a) as unpatentable over Kovesdi (US
2003/0155413 A1 published August 21, 2005) and Ogasawara (US
6,386,450 B1 issued May 14, 2002).
3. Claims 3 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kovesdi and Gordon (US 2004/0030662 A1 published
February 12, 2004).
4. Claims 4 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kovesdi, Ogasawara, and Feinberg (US 2001/0053999 A1
published December 20, 2001).
5. Claims 7, 8, 21, 22, and 25 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kovesdi, Ogasawara, and Appleton (US
2008/0301643 A1 published December 4, 2008).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
Rejection under 35 U.S.C. §101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea but rather “relates to a very
particular technology that facilities campaign communications on mobile
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2015-000541
Application 13/337,486
devices” (Reply Br. 2, lines 2—3). The Appellant also argues that the claim
includes technology beyond “campaign management” and mere “computer
implementation of an abstract idea” (Reply Br. 2).
In contrast, the Examiner has determined that the rejection is proper
(Ans. 2, 3).
We agree with the Examiner. Under 35U.S.C. § 101, 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 an implicit exception: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 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., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
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. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id at 2358.
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Appeal 2015-000541
Application 13/337,486
Here, we determine that the claim is directed to the concept of
campaign management and idea of displaying information based on a given
location which is a fundamental economic practice long prevalent in our
system of commerce and is an abstract idea beyond the scope of § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea over the Internet, using generic computer components. We
conclude that it does not.
Considering each of the claim elements in turn, and as an ordered
combination, the function performed by the computer system at each step of
the process is purely conventional. Each step of the claimed method does no
more than require a generic computer instrument or well-known mobile
device to perform a generic computer function.
For these reasons, the rejection of claim 1 is sustained. The Appellant
has provided the same arguments for the remaining claims and the rejection
of these claims is sustained as well.
Rejections under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art fails to disclose or suggest the claim limitation requiring;
dynamically selecting, from a plurality of location-related
communications, a location based targeted communication based on
the media placement location data received from the mobile device.
(App. Br. 4, Reply Br. 2—3). The Appellant also argues that there is no
suggestion that the references should be combined (App. Br. 5).
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Appeal 2015-000541
Application 13/337,486
In contrast, the Examiner has determined that the cited claim
limitation is shown by Kovesdi at Figure 1, paras. 35, 56, 62, 64; and
Ogasawara at col. 2:52-56, col. 3:46-52, col. 5:5-8, and col. 6:44-51 (Ans.
3—5). The Examiner has determined also that the cited combination would
have been obvious to customize directions by profile to increase user
convenience and sales (Ans. 4, 6—7).
We agree with the Examiner. Appellant’s arguments attack references
individually, when the rejections are over a combination of references. See
In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non­
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references”). We agree with and
adopt the findings and rationale for the combination as being an obvious
modification as set forth in the Answer. For example Kovesdi at para. 62
discloses barcode labels and RFID tags in the system to embed location
coordinates and the location coordinates serve as “location data”. Further,
Ogasawara at col. 6:44-51 discloses providing a customer information based
on the particular location which serves as “targeted information.” For these
reasons the rejection of claim 1 is sustained. The Appellant has provided the
same arguments for the remaining claims and the rejection of these claims is
therefore sustained as well.
CONCFUSIONS OF FAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting the claims as listed in the Rejections section above.
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Appeal 2015-000541
Application 13/337,486
DECISION
The Examiner’s rejection of claims 1-28 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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