Ex Parte Jain

Patent Trial and Appeal Board

Jun 29, 2018

14287000 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/287,000 05/24/2014
64128 7590 07/03/2018
MICHAEL A DESANCTIS
HAMILTON DESANCTIS & CHA LLP
12640 W. Cedar Drive, Suite 1
LAKEWOOD, CO 80228
FIRST NAMED INVENTOR
Ankit Jain
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.
QTR-000110 3150
EXAMINER
MACASIANO, MARILYN G
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
07 /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):
mdesanctis@hdciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANKIT JAIN
Appeal2017-003834
Application 14/287,000
Technology Center 3600
Before DAVID M. KOHUT, JENNIFER L. MCKEOWN, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-6 and 9-22, which are all of the claims pending
in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We enter a new ground of rejection under 37 C.F.R. § 41.50(b).
1 According to Appellant's, the real party in interest is Quettta, Inc. Br. 4.
2 Claims 7 and 8 have been canceled. Final Act. 2.
Appeal2017-003834
Application 14/287,000
INVENTION
Appellant's invention relates to a mobile user, activity and application
profiling. Abstract. Claim 1 is illustrative and reads as follows:
1. A method comprising:
proactively monitoring and collecting, by an activity monitoring
module running on a mobile device, activity stream data, wherein the
activity stream data includes information regarding context and usage of
one or more applications installed on the mobile device by identifying at
various points in time one or more of (i) applications, application
processes or tasks currently running on the mobile device and (ii) a
current state associated with the applications, the application processes or
the tasks; and
providing, by the activity monitoring module, the activity stream
data to a central server that collects activity stream data from a plurality
of mobile devices, including the mobile device, and processes the
collected activity stream data in conjunction with auxiliary data to create
derived mobile user activity profiles for users of the plurality of mobile
devices, wherein the auxiliary data includes one or more of (i)
information characterizing a type or nature of a plurality of mobile
applications and (ii) information characterizing a type or nature of a
particular location.
REJECTIONS 3
Claims 1---6, 9-12, and 17-19, 21, and 22 stand rejected under
35 U.S.C. § 103 as unpatentable over the combination of Rathod (US
2011/0276396 Al, published Nov. 10, 2011) and Lau et al. (US
2013/0102283 Al, published Apr. 25, 2013) ("Lau").
3 In the Answer, the Examiner withdrew the rejections of claims 1---6 and 9-
22 under 35 U.S.C. §§ l 12(a) and l 12(b ). Ans. 20; see also Final Act. 3.
2
Appeal2017-003834
Application 14/287,000
Claims 13-16 and 20 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Rathod, Lau, and Beatty et al. (US
2012/0166267 Al, published June 28, 2012) ("Beatty").
Rejection of Claims 1-6 and 9-22 under 35 US.C. § 103
Because claims 1-6 and 9-22 are directed to patent-ineligible subject
matter (see New Ground of Rejection below), we do not reach the prior art
rejections of those claims. See In re Comiskey, 554 F.3d 967, 973 (Fed. Cir.
2009) (declining to reach the prior art rejection when claims are barred at the
threshold by§ 101); Exparte Gutta, 93 USPQ2d 1025, 1036 (BPAI 2009)
(precedential) (same).
NEW GROUND OF REJECTION
Under the provisions of 37 C.F.R. § 41.50(b ), we enter the following
new ground of rejection:
Claims 1-6 and 9-22 are rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter because the claims are directed to an abstract
idea without significantly more.
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: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
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
3
Appeal2017-003834
Application 14/287,000
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts" (id.), for
example, to an abstract idea. If the claims are directed to one of the patent-
ineligible concepts, 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." Alice,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
Applying the framework set out in Alice, in the first step of the
analysis, we conclude claim 1 is directed to a patent-ineligible abstract idea,
namely, collecting and processing information. The "proactively monitoring
and collecting," and "providing" steps of claim 1 are similar to the steps that
the Federal Circuit determined were patent ineligible in Content Extraction
& Transmission v. Wells Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014), and
more recently, in Electric Power Grp. LLC v. Alstom, 830 F.3d 1350 (Fed.
Cir. 2016).
In Content Extraction, the Federal Circuit considered the patent
eligibility of a method claim for "processing information from a diversity of
types of hard copy documents." Content Extraction, 116 F.3d at 1345.
Applying step one of the Alice framework, the Federal Circuit determined
that the claim was "drawn to the abstract idea of 1) collecting data, 2)
recognizing certain data within the collected data set, and 3) storing that
recognized data in a memory"---concepts that the court noted were
"undisputedly well-known." Id. at 1347.
4
Appeal2017-003834
Application 14/287,000
In Electric Power, the method claims at issue were directed to
performing real-time performance monitoring of an electric power grid by
collecting data from multiple data sources, analyzing the data, and
displaying the results. Elec. Power Grp., 830 F.3d at 1351-52. There, the
Federal Circuit held that the claims were directed to an abstract idea because
"[ t ]he advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions."
Id. at 1354.
Thus, in view of Content Extraction and Electric Power, here,
collecting and processing information is an abstract idea.
In the second step of the analysis, we consider whether additional
elements transform the nature of the claim into a patent-eligible application
of the abstract idea. The recited elements of "an activity monitoring module
running on a mobile device," "a central server," and "auxiliary data" are
generic and well-known. For example, Appellant's Specification describes
the recited "activity monitoring module running on a mobile device"
generically as an application running on a mobile device and, more
particularly, as "a process that may run in the background." Spec. i-fi-1 46-48.
The Specification describes the recited "central server" generically and in
functional terms. See Spec. i-fi-127, 29, 62---66. The Specification also
describes that claim steps may be performed by "a general-purpose or
special-purpose [computer] programmed with instructions." Spec. i-f 113.
The recited "auxiliary data" is mere information, which does not add
"significantly more" to the abstract idea of collecting and processing
information. See Spec. i1 96. Moreover, the particular function of collecting
5
Appeal2017-003834
Application 14/287,000
data from a plurality of devices is known in the art (see, e.g., Lau i-fi-198, 104;
Rathod i1274) and amounts to extrasolution activity.
Thus, claim 1 amounts "to 'nothing significantly more' than an
instruction to apply the abstract idea ... using some unspecified, generic
computer" and in which "each step does no more than require a generic
computer to perform generic computer functions." Alice, 134 S. Ct. at
2359---60. Our conclusions with regard to claim 1 apply equally to claims 2-
6 and 9-22.
Because we conclude each of Appellant's claims 1---6 and 9-22 is
directed to a patent-ineligible abstract concept, and the claims considered
individually and as an ordered combination do not recite additional elements
that transform the nature of the claim into a patent-eligible application, we
conclude the claims on appeal do not encompass something "significantly
more" under the second step of the Alice analysis.
Accordingly, we enter a new ground of rejection for claims 1-6 and
9-22 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
DECISION
We enter a new ground of rejection, rejecting claims 1-6 and 9-22
under 35 U.S.C. § 101.
TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
6
Appeal2017-003834
Application 14/287,000
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under§
41.52 by the Board upon the same record ....
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
37 C.F.R. § 41.50(b)
7