Ex Parte MacLeod et al

Patent Trial and Appeal Board

Oct 29, 2018

11416767 (P.T.A.B. Oct. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/416,767 05/02/2006
139885 7590 10/31/2018
HERE Global/ Alston & Bird
Bank of America Plaza
101 South Tryon Street, Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
John MacLeod
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.
064359/500745 7505
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
10/31/2018 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN MACLEOD, LUMUMBA MBEKEANI,
and HOW ARD R. HA YES JR.
Appeal2017-007595
Application 11/416,767 1
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-11, 14--24, and 29-36. We have jurisdiction
over the pending rejected claims under 35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify Here Global B.V. as the real party in interest. (App.
Br. 2.)
Appeal2017-007595
Application 11/416,767
THE INVENTION
Appellants' disclosed and claimed invention is directed to a method of
providing advertisements in which an advertisement is provided for output
on a navigation system based on the presence of an advertising reference
code. (Spec. ,r 8.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A computer-implemented method for a traffic
information broadcast system to provide advertisements in a
traffic message comprising:
obtaining at a processor in the traffic information
broadcast system traffic data having a traffic condition of a
location description on a road network;
assessing by the processor a location reference code
associated with the location description, the location reference
code is pre-assigned prior to operation of the traffic information
broadcast system;
assessing by the processor an advertising reference code
associated with the location reference code;
wherein the location reference code and the advertising
reference code are associated with an advertisement message
having a data size larger than the data size of the location
reference code and advertising reference code;
generating by the processor a traffic message having the
location reference code and the advertising reference code
instead of the advertisement message, the data size of the traffic
message being less than if the advertisement message were
included therein; and
automatically broadcasting the traffic message in a traffic
channel such that a device in receipt of the traffic message may
present the advertisement message, not included in the traffic
message, to a user thereof based on the location reference code
and the advertising reference code.
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Appeal2017-007595
Application 11/416,767
REJECTIONS
The Examiner rejected claims 23 and 24 under 35 U.S.C. § 112,
fourth paragraph, as being of improper dependent form. 2 (Final Act. 2.)
The Examiner rejected claims 1-11, 14--24, and 29-36 under 35
U.S.C. § 101 because the claimed invention is directed to a judicial
exception without significantly more. (Final Act. 3--4.)
ISSUE ON APPEAL
Appellants' arguments in the Appeal and Reply Briefs present the
following issue: 3
Whether the Examiner erred in finding claims 1-11, 14--24, and 29-
36 as directed to non-statutory subject matter. (Reply Br. 2-5.)
ANALYSIS
The Examiner concludes the pending claims are patent-ineligible
under 35 U.S.C. § 101 because independent claims 1, 14, and 29 recite an
abstract idea "of delivering targeting advertisements to customers in a traffic
message" in which:
2 Appellants submitted an Amendment after Final Rejection on July 27,
2016 that canceled claims 23 and 24, but the Advisory Action mailed on
Sept. 12, 2016 does not indicate the Amendment would be entered, and the
Answer fails to indicate the status of claims 23 and 24. As Appellants do
not challenge the rejection and the file history contains no indication the
Amendment was entered, we summarily affirm the rejection.
3 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Dec. 20, 2016); the Reply
Brief (filed Apr. 21, 2017); the Final Office Action (mailed June 7, 2016);
the Advisory Action (mailed Sept. 12, 2016); and the Examiner's Answer
(mailed Feb. 28, 2017) for the respective details.
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Appeal2017-007595
Application 11/416,767
[t]he steps of "obtaining", "assessing", "generating" and
"broadcasting" the traffic message, is simply a way of
collecting information and comparing known information,
which is an idea of itself, as evidenced by Classen [ Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed.
Cir. 2011)] and store and transmit information in Cyberfone
[Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558
Fed. Appx. 988 (Fed. Cir. 2014)(non-precedential)], or
comparing new and stored information and using rules to
identify options in SmartGene [ SmartGene, Inc. v. Advanced
Biological Laboratories, SA, 555 Fed.Appx. 950 (Fed. Cir.
2014) ( non-precedential)].
(Final Act. 3.) The Examiner further finds that there is nothing in the claims
that is significantly more than this abstract idea, because the cited steps "are
generic computer functions that are well-understood, routine and
conventional" and the additionally-recited processor, server, and
navigational systems "do not add meaningful limitations." (Final Act. 3--4.)
Appellants argue, inter alia, that "the claimed invention represents a
significant improvement to communications technology" that "provides for a
specific and particular application which transmits message reference codes
instead of actual messages" in which "[ t ]he reference codes require much
less bandwidth to transmit than the actual messages and therefore can be
used over a lower bandwidth medium or with lower bandwidth
communications protocols." (App. Br. 6, citing Spec. ,r,r 5, 11.)
We are persuaded of Examiner error. The Supreme Court has long
held that "[l]aws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014) ( quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589--90 (2013)). The "abstract ideas" category embodies the
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Application 11/416,767
longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134
S. Ct. at 2354--55 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims "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 Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. ( quoting Mayo, 566 U.S. at 73.) The
prohibition against patenting an abstract idea "'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant postsolution activity."' Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010).
Turning to the first step of the Alice inquiry, we agree with the
Examiner's finding that the claims are directed to the abstract idea "of
delivering targeting advertisements to customers in a traffic message."
There is no definitive rule to determine what constitutes an "abstract
idea." Rather, the Federal Circuit has explained that "both [it] and the
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Appeal2017-007595
Application 11/416,767
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous
cases." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir.
2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) (explaining that, in determining whether claims are
patent-eligible under § 101, "the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were decided").
The Federal Circuit also noted that "examiners are to continue to determine
if the claim recites (i.e., sets forth or describes) a concept that is similar to
concepts previously found abstract by the courts." Amdocs, 841 F.3d at
1294 n.2.
Here, the Examiner finds that the steps of "obtaining", "assessing",
"generating" and "broadcasting" comprise "collecting information and
comparing known information." We agree, as our reviewing court has held
that collecting information, including when limited to particular content,
analyzing it, and outputting the result are steps within the realm of abstract
ideas. See, e.g., Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed Cir. 2016); In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607,
613 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
Additionally, while Appellants do state that "the present claims are not
directed to an abstract idea" (App. Br. 4), Appellants do not provide specific
arguments challenging the Examiner's Alice step one findings for the
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Application 11/416,767
"obtaining", "assessing", "generating" and "broadcasting" steps. See App.
Br. 5-13.
Turning to the second step of the Alice inquiry, we disagree with the
Examiner and find the claimed combination adds significantly more to
transform the abstract idea of delivering targeting advertisements to
customers in a traffic message. Particularly, we find "an inventive concept"
in the "non-conventional and non-generic arrangement of known
conventional pieces" (Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)), as Appellants'
claimed method requires
the location reference code and the advertising reference code
are associated with an advertisement message having a data size
larger than the data size of the location reference code and
advertising reference code,
which improves computer functionality and requires less bandwidth as
argued by Appellants and supported by the disclosure. App. Br. 6, citing
Spec. ,r,r 5, 11. We agree with Appellants that
even a savings of one byte per message, when considered in the
context of the volume of messages which may be sent using the
claimed system, would represent a significant savings in the
consumption of bandwidth
(Reply Br. 2) and achieves an improvement in computer functionality.
As the claimed combination adds significantly more to the abstract
idea, we reverse the Examiner's non-statutory subject matter rejection of
claims 1-11, 14--24, and 29-36.
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Application 11/416,767
CONCLUSION
For the reasons stated above, we affirm the Examiner's rejection of
claims 23 and 24 under 35 U.S.C. § 112, fourth paragraph; and reverse the
Examiner's non-statutory subject matter rejection of claims 1-11, 14--24,
and 29-36.
DECISION
The Examiner's decision rejecting claims 23 and 24 under 35 U.S.C.
§ 112( 4) is affirmed.
The Examiner's decision rejecting claims 1-11, 14--24, and 29-36
under 35 U.S.C. § 101 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
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