Ex Parte Doughty et al

Patent Trial and Appeal Board

Feb 15, 2018

13691054 (P.T.A.B. Feb. 15, 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.
13/691,054 11/30/2012 Dennis L. Doughty AOLI.246035 8477
130011 7590 02/20/2018
Shook, Hardy & Bacon L.L.P.
(AOL Inc.)
Intellectual Property Department
2555 Grand Blvd.
Kansas City, MO 64108-2613
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
02/20/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
seaton@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS L. DOUGHTY, BENJAMIN M. GORDON,
SHRIKANTH B. MYSORE, and MATTHEW A. TENGLER
Appeal 2016-005247
Application 13/691,054
Technology Center 3600
Before BIBHU R. MOHANTY, JAMES A. WORTH, and
BRUCE T. WIEDER, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1 and 3—9 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 2016-005247
Application 13/691,054
THE INVENTION
The Appellants’ claimed invention is directed to a system for targeted
advertising to mobile and non-mobile communication facilities accessed by
the same user (Spec., para. 3). Claim 1, reproduced below, is representative
of the subject matter on appeal.
1. A system for identifying a same user of multiple
communication devices, the system comprising one or more
computers having computer readable media having stored thereon
instructions which, when executed by one or more processors of the
one or more computers, causes the system to perform the steps of:
(a) receiving data corresponding to a first application use-
pattern from a first communication device operated by a user, wherein
the first application use-pattern is an order in which applications are
used at a first time of day on the first communication device;
(b) receiving data corresponding to a second application use-
pattern from a second communication device operated by a user,
wherein the second application use pattern is an order in which
applications are used at a second time of day on the second
communication device, wherein the first application use-pattern is the
same as the second application use-pattern and the first and second
time of day are substantially the same;
(c) determining that the user of the first communication device
is the user of the second communication device based on identifying
that the first application use-pattern is the same as the second
application use-pattern; and
(d) creating a universal profile for the user containing data
corresponding to the first and second communication devices, wherein
the universal profile includes data that identifies the first and second
communication devices as being operated by the user.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1 and 3—9 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to show possession of the claimed invention.
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Application 13/691,054
2. Claims 1 and 3—9 are rejected under 35U.S.C. § 112, second
paragraph, as being indefinite.
3. Claims 1 and 3—9 are rejected under 35U.S.C. § 101 as being
directed to non-statutory subject matter.
4. Claims 1, 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shockley et al. (US 5,534,855; iss. July 9, 1996) and
Eisen (US 2010/0004965; pub. Jan. 7, 2010).
5. Claims 5—9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shockley, Eisen, and Sinn et al. (US 2010/0070962 Al;
pub. Mar. 18, 2010).
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.
ANAFYSIS
Rejection under 35 U.S.C. § 112 first and second paragraph
The Appellants have not provided any arguments in response to these
rejections and these rejections are therefore both summarily affirmed.
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 2016-005247
Application 13/691,054
Rejection under 35 U.S.C. §101
The Appellants argue that the rejection of the claims under 35 U.S.C.
§ 101 is improper (App. Br. 4—6, Reply Br. 4—6). The Appellants argue that
the claim is rooted in technology (Reply Br. 4).
In contrast, the Examiner has determined that rejection is proper
(Final Rej. 3—5, Ans. 3, 4).
We agree with the Examiner. Under 35 U.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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Application 13/691,054
Here, we determine that the claim is directed to the concept of
identifying a person based on their particular patterns and creating a profile
of them. This is a method of organizing human activities and fundamental
economic practice long prevalent in our system of commerce and an abstract
idea beyond the scope of 35 U.S. C. § 101. Further, Courts have found
similar claims directed to collecting, recognizing, and storing data in a
computer memory to be directed to an abstract idea. Content Extraction and
Transmission LLC v. Wells Fargo Bank, National Association, 776 F.3d
1343 (Fed. Cir. 2014); see also Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it,
and displaying results from certain results of the collection and analysis was
held to be an abstract idea.
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 using generic computer components. We conclude
that it does not.
Considering each of the claim elements in turn, 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 to perform a generic computer function. The Specification
at paragraphs 31 and 100 states that generic cell phones and computer
components may be used in the system.
Further, here, as in Alice, “the system claims are no different in
substance from the method claims. The method claims recite the abstract
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Application 13/691,054
idea implemented on a generic computer; the system claims recite a handful
of generic computer components configured to implement the same idea.”
Alice 134 S. Ct. at 2351. “[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention. Stating an abstract idea ‘while adding the words ‘apply if is not
enough for patent eligibility.” Id. at 2358 (quoting Mayo, 132 S. Ct. at
1294).
For these reasons the rejection of claim 1 is sustained. The remaining
claims are directed to similar subject matter and the rejection of these claims
is sustained as well.
Rejections under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 1 is improper because
Shockey fails to disclose claim limitations that the “system determines that
the user is that same user on various devices by the order of the applications
he accesses and when he accesses them” (App. Br. 6).
In contrast, the Examiner has determined that the cited claim
limitation is found in Shockey at col. 10:4—13 and Eisen at paragraph 107
and that the rejection is proper (Final Rej. 7, 8, Ans. 4, 5).
We agree with the Appellants. Here, the claim requires in part:
(b) receiving data corresponding to a second application use-
pattern from a second communication device operated by a user,
wherein the second application use pattern is an order in which
applications are used at a second time of day on the second
communication device, wherein the first application use-pattern is the
same as the second application use-pattern and the first and second
time of day are substantially the same.
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Application 13/691,054
(Claim 1, emphasis added). The citation to Shockey at col. 10:4—13 and
Eisen at paragraph 107 both fail to disclose this claim limitation
individually. Further, there is no articulated reasoning with rational
underpinnings to combine and modify the references to meet the
requirements of claim limitation “b” identified above. Here the cited claim
limitation requires that the “the second application use pattern is an order in
which applications are used at a second time of day on the second
communication device ” the cited combination fails to disclose or suggest
this. For these reasons this rejection of claim 1 and its dependent claims is
not sustained.
CONCFUSIONS OF FAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1 and 3—9 under 35U.S.C. § 112, first and second
paragraphs as listed in the Rejection section above.
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims 1 and 3—9 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims land 3—9 are rejected under 35 U.S.C. § 103(a) as listed
in the Rejections section above.
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DECISION
The Examiner’s rejection of claims 1 and 3—9 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(a).
AFFIRMED
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