Ex Parte De Novi

Patent Trial and Appeal Board

Jan 22, 2018

13893397 (P.T.A.B. Jan. 22, 2018)

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.
13/893,397 05/14/2013 Gianluca De Novi 13-082-GD 9129
32118 7590 01/24/2018
LAMBERT & ASSOCIATES
92 STATE STREET
BOSTON, MA 02109-2004
EXAMINER
BRADY, MARIE P.
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/24/2018 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):
lambert @ lambertpatentlaw. com
shortell@lambertpatentlaw.com
connaughton @ lambertpatentlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GIANLUCA DE NOVI
Appeal 2016-0037111
Application 13/893,3972
Technology Center 3600
Before ANTON W. FETTING, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—6, 8, and 9. We have jurisdiction under 35 U.S.C.
§ 6(b).
1 Our Decision references Appellant’s Appeal Brief (“App. Br.,” filed
Sept. 18, 2015) and Reply Br. (“Reply Br.,” filed Feb. 23, 2016), and the
Examiner’s Answer (“Ans.,” mailed Dec. 23, 2015), Advisory Action
(“Adv. Act.,” mailed Aug. 11, 2015), and Final Office Action (“Final Act.,”
mailed Apr. 24, 2015).
2 Appellant identifies the inventor, Gianluca De Novi, as the real party in
interest. App. Br. 2.
Appeal 2016-003711
Application 13/893,397
We AFFIRM.
CLAIMED INVENTION
Appellant’s claimed invention “relates to a system and method for
electronic correlation of sales and advertising.” Spec. 2.
Claim 1, reproduced below with added bracketed notations, is the sole
independent claim on appeal, and is representative of the claimed subject
matter:
1. A checkout and point of sale system for presenting
information related to an identified product during checkout
comprising:
[(a)] a point of sale computer;
[(b)] a connector bypass connected to the point of sale
computer configured to split a data output from a bar code reader
connected through the connector bypass to the point-of-sale
computer the splitting of the data output splitting the data output
from the bar code reader into two identical signals, a first of the
two signals going to the point of sale computer;
[(c)] an electronic display comprising a computer
processor connected through the connector bypass to the bar
code reader a second of the two signals from the connector
bypass going to the electronic display, the electronic display
being isolated from communication with the point of sale
computer; and
[(d)] a database in a computerized storage, the database
comprising product information, data correlating products in the
database and visual representations of product warning
information, the database in electronic communication with the
electronic display, and isolated from communication with the
point of sale computer;
[(e)] wherein, [(i)] when the bar code reader scans a bar
code of a first product, providing the data output identifying the
first product, the data identifying the first product is passed
through the connector bypass and split, [(ii)] sending the first
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signal to the point of sale computer and the second signal to the
electronic display, and [(iii)] in response to receiving the data
identifying the first product, the electronic display computer
processor configured to retrieve from the database information
relating to a second product correlated to the first product and
displays the information relating to the second product on the
electronic display; and
[(f)] wherein the electronic display is configured to
display product warning information.
REJECTIONS3
Claims 1—6, 8, and 9 are rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Ans. 2.
Claims 1—6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burke (US 2011/0093344 Al, pub. Apr. 21, 2011) and
Bhagwan (US 2012/0005222 Al, pub. Jan. 5, 2012). Ans. 2.
ANALYSIS
Patent-Eligible Subject Matter
Appellant argues claims 1—6, 8, and 9 as a group. App. Br. 4. We
select claim 1 as representative, and claims 2—6, 8, and 9 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice Corp. Pty.
3 The Examiner has withdrawn the rejection of claims 1 and 7 under 35
U.S.C. § 112, second paragraph. See Adv. Act. 2; see also Ans. 2
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Ltd. v. CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014). The first step in that
analysis is to “determine whether the claims at issue are directed to one of
those patent-ineligible concepts.” Id. If the claims are not directed to a
patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise,
the inquiry proceeds to the second step where the elements of the claims are
considered “individually and ‘as an ordered combination’” to determine
whether there are additional elements that “‘transform the nature of the
claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct.
at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, Appellant’s Specification describes the invention as providing
customized advertisements based on items being purchased by a consumer.
Spec. 3. In this regard, Appellant describes a need for “stimulating sales” by
identifying what consumers are purchasing, identifying additional products
based on the products being purchased, and presenting the additional
products to the consumer. See Spec. 2. For example, the claimed invention
may identify products that compliment, are similar, or compete with the
products being purchased. Id. In this way, the invention contemplates
stimulating impulse purchases by inducing a consumer to remember and buy
products related to an item the cmer intends to purchase, resulting in
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increased revenue. Id. at 3^4. For example, when insulin is scanned for
purchase, information relating to syringes may be displayed; whereas, when
an antibiotic is scanned for purchase, a probiotic may be displayed. Id. at 6.
Independent claim 1 recites a checkout and point of sale system
comprising four components (i.e., (1) a point of sale computer, (2) a
connector bypass, (3) an electronic display, and (4) a database). The system
recited in claim 1 performs the following steps: (i) when the bar code reader
scans a bar code of a first product, passing data identifying the first product
through the connector bypass and splitting the data into two identical
signals; (ii) sending a first signal to the point of sale computer, and a second
signal to the electronic display; and (iii) in response to receiving the data
identifying the first product, the electronic display computer being
configured to retrieve from the database information relating to a second
product correlated to the first product and display the information relating to
the second product, as well as product warning information. The
Specification does not describe any of the four components recited in claim
1 as new and does not provide for their technical details, but instead
predominately describes the claimed invention and its physical components
in functional terms. See, e.g., Spec. 4—8. Put differently, the components
are merely conduits for obtaining information, retrieving information, and
displaying information.
Considering the claims in light of the Specification’s description of
the problem the invention seeks to overcome, we are not persuaded that the
Examiner erred in determining that the invention is “directed to the abstract
idea of presenting advertisements.” Final Act. 4. Encouraging consumers to
make purchases through advertising is a fundamental economic practice, i.e.,
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an abstract idea. Long before the advent of point of sale computers,
merchants have encouraged additional purchases by identifying products
related to a product being purchased to encourage additional purchases.
Additionally, we determine that the claims are directed to the abstract
idea of collecting, retrieving, and displaying data. See Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014) (holding claims drawn to the concept of data collection,
recognition, and storage to be an undisputedly well-known, abstract idea);
see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (holding claims directed to collecting information, analyzing it,
and displaying the results are abstract).
Appellant charges that claim 1 recites steps that “solve the computer-
specific problem of being able to simultaneously check out using the point
of sale system and use check-out information to provide product information
to the purchaser.” App. Br. 7. Yet, Appellant does not identify, and we do
not find, support in the Specification for Appellant’s contention that the
invention solves a computer-specific problem. Instead, the Specification
describes the invention as focusing on the alleged failure of current
advertisement methods “to target consumers directly based on what they
purchase.” Spec. 1. The Specification describes a need to identify what a
consumer is purchasing, and present complementary products to stimulate
sales. Spec. 1. This problem relates to a needed improvement in the abstract
process of presenting advertisements, not any computer-specific challenge.
Having concluded that the claims are directed to an abstract idea, we
next consider whether there are additional elements recited in the claims that
transform the nature of the claim into a patent-eligible application. We
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conclude that there are not. The elements added to the abstract idea include
the introduction of (1) a point of sale computer, (2) a connector bypass,
(3) an electronic display, and (4) a database for performing the recited steps.
Yet, there is no indication in the Specification that these components are
anything more than conventional, off-the-shelf devices operating in their
ordinary capacity. See, e.g., Spec. 4 (describing the point of sale computer
as having “management software,” the database as being “stored in a
storage, hard drive, or memory” “at a location either locally, or remotely to
the point of sale,” and the connector bypass as “any structure capable of
splitting an input signal into two of the same signals including, but not
limited to, a two channel splitter”), 5 (describing the display as “any
computerized display,” and the point of sale computer in functional terms).
Claim 1 additionally recites that the electronic display is configured to
display product warning information, but this limitation further limits the
type of information displayed, which is insufficient. See Elec. Power Grp.,
830 F.3d at 1355 (“But 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.”).
Claim 1 further recites splitting data output from a bar code reader
into two identical signals, the first of two signals going to the point of sale
computer, the second going to the electronic display; the electronic display
being isolated from communication with the point of sale computer, and the
database also being isolated from communication with the point of sale
computer. Yet, splitting is a conventional functionality performed by the
connector bypass and, as Appellant describes, the “isolation” is achieved by
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the splitting. See Reply Br. 2. Appellant calls the connector bypass
“specialized” (id.; see also App. Br. 8), yet such assertions are belied by
Appellant’s description that a the connector bypass is a conventional channel
splittter or any other device capable of splitting an input signal into two
identical output signals (see Spec. 4). Here, Appellant does not identify, and
we do not find, adequate support in the Specification that the claimed
connector bypass, alone or in combination with other claim elements,
constitutes an inventive concept sufficient to render the claim
patent-eligible.
Appellant argues that claim 1 is directed to patent-eligible subject
matter, because it recites four devices, ostensibly satisfying the machine-or-
transformation test. See App. Br. 6 (arguing that “these four devices []
satisfy the meaning of the word [‘machine’]”); see also Reply Br. 2—3
(asserting that the bypass splits and replicates the input signal, isolating and
separating the database and display from the point of sale computer and
thereby transforming the signal). Yet, the Supreme Court, “in Mayo,
emphasized that satisfying the machine-or-transformation test, by itself, is
not sufficient to render a claim patent-eligible, as not all transformations or
machine implementations infuse an otherwise ineligible claim with an
‘inventive concept.’” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014) (citing Mayo, 132 S. Ct. at 2360). Here, there is
no “inventive concept” employing generic devices operating in their
ordinary capacity to implement the improved abstract idea. Likewise, there
is no “inventive concept” in limiting the abstract idea to a particular
technological environment (e.g., one having four devices). See Alice, 134 S.
Ct. at 2358.
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We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2—6, 8, and 9, which
fall with claim 1.
Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Burke does
not disclose or suggest an electronic display “being isolated from
communication with the point of sale computer” and a database “being
isolated from communication with the point of sale computer,” as recited in
claim 1, limitations (c) and (d). As Appellant points out, the Examiner finds
that Burke discloses the argued limitations. See Ans. 5—6; see also Final
Act. 6—8 (citing Burke, Fig. 1, H 26, 28, 32, 119).
By way of background, Burke relates to providing interactive digital
content in a retail setting. Burke 12. With reference to Figure 1, Burke
describes that cashier 150 operates a POS system, including POS terminal
152 and scanner 154, to facilitate the purchase of item 120 by customer 110.
Id. at Fig. 1,119. As shown in Figure 1, POS terminal 152, display 132,
and database 170 are all connected via network 180. POS terminal 152, for
example, connects to network 180 by communications link 153, which
facilitates communications between POS terminal 152 and other devices
within network 180. Id. H 20—21. “Network 180 represents any number of
interconnected data networks.” Id. 121.
In the Answer, the Examiner finds that “being isolated,” as recited in
limitations (c) and (d), is not positively recited and, thus, gives the phrase
little patentable weight. Ans. 5—6. The Examiner further determines that
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“being isolated” means being “a separate device” under a broad, but
reasonable, interpretation {id.), ostensibly suggesting that Burke’s
description of a POS terminal that is a separate device from display 132 and
database 170 teaches limitations (c) and (d). However, claim 1 requires the
electronic display and database each to be “isolated from communication
with the point of sale computer,” structurally limiting Appellant’s claimed
system, and requiring more than mere physical separation. As such, we
disagree that Burke’s POS terminal 152, database 170, and display 132
disclose or suggest the argued limitations by virtue of being separate
devices.
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner
additionally reasons that Burke teaches limitation (c) because “Burke does
not say that the electronic display and the point of sale computer
communicate with each other.” Ans. 6 (citing Burke 132). Similarly, with
respect to limitation (d), the Examiner reasons that Burke does not expressly
describe “the database communicating with the point of sale terminal,” and
thus teaches the claimed isolation. Id. at 6—7 (citing Burke 128).
Yet, Figure 1 of Burke shows these structures as being interconnected,
not isolated, by network 180. Paragraph 32 describes that display 32 may
communicate with one or more devices, such as interactive content unit 130
and server 160. Put differently, interactive content unit 130 and server 160
are exemplary, not exhaustive, devices with which display 132 may
communicate. Likewise, paragraph 28 describes that interactive content
unit 130 may retrieve content from a remote device, “such as database 170
or server 160.” This particular example, does not teach that POS
terminal 152 is isolated from database 170. To the contrary, it further
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describes “any device, including interactive content unit 130, POS
terminal 152, server 160, and/or any other device” may perform the function
of combining additional information with marketing content. Burke 128
(emphasis added); see also id. 120 (“POS terminal 152 may communicate
with other devices and/or systems via communications link 153”).
Here, the Examiner does not adequately support the finding that
Burke’s display 132 and database 170 are isolated from communication with
the POS terminal, as recited in limitations (c) and (d).
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 1, and dependent claims 2—6, 8, and 9 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 1—6, 8, and 9 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejections of claims 1—6, 8, and 9 under 35 U.S.C.
§ 103(a) is reversed.
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)(iv).
AFFIRMED
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