Ex Parte MacNeille et al

Patent Trial and Appeal Board

Mar 28, 2018

13671987 (P.T.A.B. Mar. 28, 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.
13/671,987 11/08/2012 Perry Robinson MacNeille 83231505 7061
28395 7590 03/30/2018
RROOKS KTTSHMAN P C /FfTET
EXAMINER
1000 TOWN CENTER JOHNSON, ROBERT C
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
docketing @brookskushman. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PERRY ROBINSON MACNEILLE, YIMIN LIU,
JULIUS MARCHWICKI, SCOTT BURNELL, EDWARD WEHRMAN,
OLEG YURIEVITCH GUSIKHIN, and BASAVARAJ TONSHAL
Appeal 2016-00441U
Application 13/671,9871 2
Technology Center 3600
Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Specification (“Spec.,” filed Nov. 8,
2012), Appeal Brief (“App. Br.,” filed Aug. 11, 2015), Reply Brief (“Reply
Br.,” filed Mar. 15, 2016), the Examiner’s Answer (“Ans.,” mailed Jan. 22,
2016) and the Final Office Action (“Final Act.,” mailed May 26, 2015).
2 Appellants identify Ford Global Technologies, LLC as the real party in
interest. App. Br. 2.
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CLAIMED INVENTION
Appellants’ claimed invention “generally relate[s] to a method and
apparatus for digital coupon presentation.” Spec. 11.
Claims 1,13, and 19 are the independent claims on appeal. Claims 1
and 13, reproduced below, are illustrative of the claimed subject matter:
1. A system comprising:
a processor configured to:
receive an entertainment media element including an
interactive advertisement and coupon;
present the interactive advertisement and coupon in a
vehicle;
receive vehicle-occupant acquiescence to store the
coupon;
store of the coupon; and
store events digitally associated with the coupon,
designated as triggers for suggesting redemption of the coupon.
13. A system comprising:
a processor configured to:
receive incoming event notification from a vehicle system;
compare the event notification to a stored event, relating
to a coupon previously presented to and stored by a vehicle
occupant;
upon a correlation between the event notification and at
least one stored event, present the stored coupon for redemption;
receive an indication that redemption of the stored coupon
is desired; and
provide guidance in redeeming the stored coupon.
REJECTIONS
Claims 1—19 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 2—8.
Claims 1—12 are rejected under 35 U.S.C. § 103(a) as unpatentable by
French et al. (US 6,882,290 B2, iss. Apr. 19, 2005). Final Act. 8—13.
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Claims 13—19 are rejected under 35 U.S.C. § 103(a) as unpatentable
over French and Treyz et al. (US 2008/0228600 Al, pub. Sept. 18, 2008).
Final Act. 13—17.
ANALYSIS
Non-Statutory Subject Matter
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
Banklnt’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., 566 U.S. 66 (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., 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. 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, 566 U.S. at 79, 78).
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The step-one analysis calls upon us to consider “the claims in their
entirety to ascertain whether their character as a whole is directed to
excluded subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015). The question is whether the claims as
a whole “focus on a specific means or method that improves the relevant
technology” or are “directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
Before turning to the claims individually, we note that Appellants’
Specification describes the invention as relating to digital coupon
presentation. Spec. 11. In the Background section, the Specification
provides that traditional forms of advertisement include a simple
advertisement played over the radio in a vehicle, and a data stream
delivering content from the Internet. Id. ^ 2. And the inventors have
recognized that advances in content delivery systems and user display
systems provide additional resources that can be applied to achieve new and
improved advertisement content delivery. See id.
Independent Claims 13 and 19, and Dependent Claims 14—18
Claim 19 recites a computer implemented method that performs a
sequence of steps that results in providing guidance in redeeming the stored
coupon. The steps include: (1) receiving an event notification from a
vehicle system, (2) comparing the event notification to a stored event
relating to a coupon previously presented to and stored by a vehicle
occupant, (3) presenting the stored coupon for redemption upon a correlation
between the event notification and stored event, (4) receiving and indication
that redemption of the stored coupon is desired, and (5) providing guidance
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in redeeming the stored coupon. Claim 13 recites similar language but in the
format of a “system” comprising a “processor” for performing the steps.
In rejecting claim 19 under 35U.S.C. § 101, the Examiner first
determines that claim 19 is directed to an abstract method of organizing
human activities. In particular, the Examiner determines:
[t]he claimed invention is directed to the methods of organizing
the human activities of receiving an event notification,
comparing the event notification to stored events related to stored
coupons, presenting the correlated stored coupons for
redemption, receiving an indication that the coupon is desired
and providing guidance in redeeming the coupon. As noted
above, methods of organizing human activities are examples of
abstract ideas explicitly referenced in Alice Corp.
Final Act. 5. In the Answer, the Examiner additionally finds the claims
analogous to claims related to collecting, processing, and displaying data
that the Federal Circuit has held to be patent-ineligible, and claims directed
to mental steps. See Ans. 3—5. Turning to step two of the analysis, the
Examiner determines that the recited steps are not enough to transform the
abstract idea into a patent-eligible application, because the steps are “a mere
instruction to apply the abstract idea.” Id. at 5—6. The Examiner finds that
the additional elements alone and in combination contain “no improvement
to another technology or technical field, no improvements to the functioning
of the computer itself, and no meaningful limitations beyond generally
linking the use of an abstract idea to a particular technical environment.” Id.
at 6. Instead, “the claims require no more than a generic computer to
perform generic computer functions that are well-understood, routine and
conventional.” Id.
Turning to claim 13, the Examiner determines that the same analysis
should be used for claim 13 as claim 19, because the additional component,
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a “processor,” “add[s] nothing of substance to the underlying abstract idea”
and “[a]t best. . . merely provid[es] an environment in which to carry out the
abstract idea.” Id.
Appellants argue that the Examiner erred by listing the limitations of
the claims without identifying “an actual abstract idea embodied by the
claims.” App. Br. 7. Yet, the Examiner characterized the claims as a
method of organizing human activity, which is reasonably supported by
claims 13 and 19.
Appellants additionally argue that the Examiner erred in determining
that the claims are analogous to patent-ineligible claims that recite steps of
receiving, presenting, and storing data, determination, because claims 19 and
13 “recite utilization of event notifications as the basis for presenting a
stored coupon, a practice that is neither mere receiving, presenting or storing
data (but rather utilizing received data as the basis for further action).”
Reply Br. 2. Yet, analyzing events or other data as the basis for further
action is precisely the sort of activity that the Federal Circuit has held to be
abstract. See, e.g., Accenture Global Services, GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (“generating tasks
[based on] rules ... to be completed upon occurrence of an event” is an
abstract idea) (quoting US 7,013,284 B2, iss. Mar. 14, 2006, col. 107,11. 25,
38-39).
In our view, the claimed method is not meaningfully distinct from
claims involving the collecting data, analyzing data, and displaying the
results that have been deemed patent-ineligible by the Federal Circuit. For
example, in Electric Power Group, the Federal Circuit held that claims
focused “on collecting information, analyzing it, and displaying certain
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results of the collection and analysis” are directed to an abstract idea. Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Stating that “[information as such is an intangible,” the Federal Circuit in
Electric Power Group noted that the Federal Circuit has “treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
Id. (internal citations omitted). The Federal Circuit pointed out that “[i]n a
similar vein, ... [it has] treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Id. at 1354.
Similar to the situation in Electric Power Group, the advance Appellants’
claims “purport to make is a process of gathering and analyzing information
of a specified content, then . . . [transmitting] the results, and not any
particular assertedly inventive technology,” i.e., an abstract idea. Id. The
claims involve the same general steps of collecting (e.g., receiving incoming
event notification, receiving an indication that redemption of the coupon is
desired) and processing (e.g., comparing the event notification, presenting
the stored coupon upon correlation) information, and providing the results
(e.g., providing guidance).
Appellants argue that even if the claims are directed to an abstract
idea, the claims are patent eligible because the claims do not tie up the
abstract idea and, thus, are patent eligible under the streamlined eligibility
analysis set forth in USPTO guidance. App. Br. 6—8 (citing 2014 Interim
Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618, 74625);
see also Reply Br. 2—3. However, the 2014 Interim Guidance does not go
beyond case law to impose a streamlined eligibility test, as argued by
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Appellants. See Reply Br. 3 (“unless the Examiner can prove that the claim .
. . seeks to tie up a judicial exception . . . then the Examiner has not met the
burden with regards to the above test”); see also App. Br. 7 (“the accelerated
eligibility analysis still applies”). Instead, the 2014 Interim Guidance
provides the streamlined analysis as an optional tool for Examiners to use at
their discretion. See 2014 Interim Guidance on Patent Subject Matter
Eligibility, 79 Fed. Reg. 74618, 74625 (Dec. 16, 2014) (“[A] streamlined
eligibility analysis can be used.'” (emphasis added)). Further, “if there is
doubt as to whether the applicant is effectively seeking coverage for a
judicial exception itself, the full analysis should be conducted.'” Id.
(emphasis added). Here, the Examiner’s decision to perform a full § 101
analysis does not constitute error.
Further, to the extent Appellants argue that the claims are patent-
eligible because they do not tie up the abstract idea, that argument, too, is
unpersuasive. Although the Supreme Court has described “the concern that
drives [the exclusion of abstract ideas from patent eligible subject matter] as
one of pre-emption,” Alice Corp., 134 S. Ct. at 2354, characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the sole test for patent eligibility. “The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability” and “[f]or this reason, questions
on preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 134 S. Ct. at 2354). “[Preemption may signal patent ineligible
subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” Id.
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We are not persuaded by Appellants’ argument that the claims
“improve the field of digital coupon redemption and advertising.” App.
Br. 8. Appellants assert, in particular, that adding a trigger-event to the
stored coupon provides a “marked improvement over the idea of storing a
digital coupon and then having to remember that the coupon was stored” and
enables the claimed invention to “automatically represent the saved coupon
when a certain stored event. . . occurs.” Reply Br. 3. Yet, an improved
abstract idea remains nonetheless abstract. Here, each of the steps in the
claims are recited in terms of results-based functionality (e.g., receiving an
event notification, comparing the event notification to a stored event)
without any technical details on how to achieve the claimed functionality.
Likewise, we do not find, and Appellants do not point us to, any description
in the Specification showing that these limitations require any innovative
programming or technology. Instead, these limitations are described
functionally in terms of the results desired. See, e.g., Spec. ]Hf 48-49. At
best, claim 19 applies the abstract idea of providing guidance in redeeming
coupons to a particular technical environment involving a “vehicle system”
and a “vehicle computing system.” But “the prohibition against patenting
abstract ideas cannot be circumvented by attempting to limit the use of [the
abstract idea] to a particular technological environment.” Alice, 134 S. Ct. at
2358.
Independent Claim 1, and Dependent Claims 2—12
Appellants relies on the same arguments with respect to claim 1 that
are advanced with respect to claims 13 and 19. See App. Br. 6—8. We are
not persuaded by these arguments for the reasons discussed above.
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Appellants additionally suggest that the Examiner erred in
determining that claim 1 is directed to the abstract idea of “receiving an
event notification, comparing the event notification . . . receiving an
indication that the coupon is desired and providing guidance in redeeming
the coupon,” because claim 1 does not recite some of these elements. See
App. Br. 7 (quoting Final Act. 5). Appellants’ argument is not persuasive, at
least because the portion of the Final Office Action quoted by Appellants is
related to the Examiner’s analysis for claims 19 and 13. See Final Act. 5.
The Examiner separately analyzes claim 1 under 35 U.S.C. § 101 at
pages 6—8 of the Final Office Action, and Appellants have not apprised us of
legal error in the Examiner’s two-part analysis.
Here, claim 1 recites a “system” comprising a “processor” that is
configured to: (1) receive an entertainment media element including an
interactive advertisement and coupon, (2) present the interactive
advertisement and coupon in a vehicle, (3) receive vehicle occupant
acquiescence to store the coupon, (4) store the coupon, and (5) store events
digitally assigned as triggers for suggesting redemption of the coupon.
Claim 1 thus recites a sequence of steps that results in storing a coupon and
events that are triggers for “suggesting redemption of the coupon.” In other
words, like claims 13 and 19, claim 1 is directed to organizing human
activities related to redemption of the coupon, and is akin to the types of data
collection and processing claims that the Federal Circuit has held to be
patent ineligible. See Final Act. 7. For example, as the Examiner points out,
claim 1 does not recite any particular way the abstract steps (i.e., receive,
present, store) are performed. Id. We agree with the Examiner that claim 1
generally links the use of the abstract idea to a particular technical
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environment, and requires no more than generic computers and technology,
which is insufficient for conferring an inventive concept under step two.
See id. at 8 (citing Spec. Tflf 20—21).
We are not persuaded, for the reasons outlined above, that the
Examiner erred in rejecting independent claims 1,13, and 19, and their
dependent claims, under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection.
Obviousness
Independent Claim 1 and Dependent Claims 2—12
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because French does
not disclose or suggest “receiv[ing] vehicle-occupant acquiescence to store
the coupon,” as recited in claim 1. See App. Br. 8—9; see also Reply Br. 4.
The Examiner acknowledges that French does not teach this limitation, but
concludes that the limitation would have been obvious because French
teaches that passengers can disable the play of advertisement messages
where regulations require such functionality. See Final Act. 10.
French relates to displaying advertisements within a rental vehicle.
French, col. 1,11. 8—11. Customer 180, which is a company maintaining a
fleet of rental vehicles, loads combined media into rental vehicles for display
on a multimedia (MM) system messaging device 200. Id. at col. 5,11. 33—
35, 7,11. 1—3. In cases where regulations require the capability for a
passenger to prevent the display of advertisements, the IMMDS allows the
dispatch system to re-enable the advertising unit of the MM system once the
trip has ended. Id. col. 4,11. 30-34.
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It is not readily apparent, and the Examiner does not adequately
explain, why one of ordinary skill in the art would modify French to require
acquiescence from the vehicle-occupant in order to store the media into a
rental vehicle in light of French’s capability to deactivate the stored media,
as needed, for particular customers. Stated differently, changing an
activation status of stored media as needed for a particular rental customer,
as described by French, seems more efficient, for example, than requesting
acquiescence from the rental customer to store the media in the rental
vehicle in the first instance, as the Examiner’s modification requires.
In the Answer, the Examiner further finds that “[t]he printing of the
coupon or other message related information requires the customer to
acquiesce to the storing of both the user interaction and the requested data.”
Ans. 7 (citing French col. 10,11. 42—58, col. 11,11. 12—17). Yet, the coupon
is already stored when the rental car customer requests to print the coupon
and, thus, cannot be an acquiescence “to store” the coupon. See Reply Br. 4
(“laterprint[ing] the coupon in response to seeing the coupon is also not
storage of the coupon”).
Therefore, we do not sustain the Examiner’s rejection of independent
claim 1 and its dependents under 35 U.S.C. § 103(a).
Independent Claim 13 and 19 and Dependent Claims 14—18
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting independent claims 13 and 19 under 35 U.S.C. § 103(a)
because French and Treyz do not disclose or suggest “compar[ing] the event
notification to a stored event, relating to a coupon previously presented to
and stored by a vehicle occupant,” and “upon a correlation between the
event notification and at least one stored event, present [ing] the stored
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coupon for redemption,” as recited in claim 13, and similarly recited in
claim 19. See App. Br. 9—10. The Examiner acknowledges that French does
not teach a coupon previously presented to and stored by a vehicle occupant.
Final Act. 14. However, the Examiner relies on Treyz to cure the
deficiency. See id. (citing Treyz || 52, 334, 351, 359, Fig. 56).
Treyz relates to handheld computing devices that assist users in
shopping and performing wireless transaction. Treyz 12. With reference to
Figure 56, Treyz describes Old Navy promoting $10 off a minimum $30
purchase, expiring at 1:00 p.m. Id. 1334, Fig. 56. If the user chooses to
“respond now,” the handheld computing device displays screen 602. Id.
1335. Screen 602 charges the user $1 to hold the $10 coupon until
9:30 p.m. Id. at Fig. 57. Alternatively, instead of choosing “respond now,”
the user may select “remind me later,” which provides the user with a
reminder message at a later time. Id. 1334, Fig. 56. The reminder message
may include promotional material, such as a coupon. Id. 1352.
Appellants argue that Treyz “teaches an advertisement to which a user
can affirmatively respond by making a purchase,'1'’ not storing a coupon.
App. Br. 9. Yet, Treyz describes with reference to Figure 57 that the offer is
a coupon that may be stored for later use. See Trey Fig. 57 (“HOED MY
$10 COUPON”).
Appellants argue that even if the advertisement is a coupon, Treyz
does not teach storing the advertisement with an event notification from a
vehicle computing system, but instead ties the reminder to time. App. Br. 9—
10. Yet, Appellants’ Specification describes time as an exemplary event
notification associated with a coupon. See, e.g., Spec. Tflf 46(“[t]hese events
include, but are not limited to,... a time-sensitive activation of a coupon
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offer”), 48 (“[t]he McDonalds coupon may only be good until 11 AM that
day,” and “a user may be notified that a coupon must be used or lost”). As
such, we are not persuaded that the Examiner erred in finding Treyz’s
coupon reminder based on the event of time meets the claimed limitation for
comparing an event notification to a stored event.
Therefore, we sustain the Examiner’s rejection of independent
claims 13 and 19, and dependent claims 14 and 16—18 under 35 U.S.C.
§ 103(a).
Claim 15
Claim 15 depends from claim 13, and further recites that the incoming
event notification is received from a vehicle occupant. In the Final Office
Action, the Examiner finds that French’s disclosure at column 9, lines 30—35
teaches this limitation, because French teaches that the driver of the vehicle
can provide notification of a passenger entering the vehicle. See also
Ans. 10 (explaining that “[t]he event notifications trigger stored
advertisements, as described for claim 13”). However, we agree with
Appellants that if French and Treyz are applied such that the claimed
incoming event notification is a passenger entering the vehicle, and not time
as applied with respect to the rejection of claim 13, then this application of
French and Treyz fails to meet each of the limitations required by claim 15.
See App. Br. 10; see also Reply Br. 4—5. For example, the event notification
of the user entering the car is not compared to a stored event relating to a
coupon previously stored, as recited in claim 13.
Therefore, we do not sustain the Examiner’s rejection of claim 15
under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejection of claims 1—19 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 13, 14, and 16—19 under 35 U.S.C.
§ 103(a) are affirmed.
The Examiner’s rejections of claims 1—12 and 15 under 35 U.S.C.
§ 103(a) are 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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