Ex Parte Milton et al

Patent Trial and Appeal Board

Jun 28, 2018

14311264 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/311,264 06/21/2014
909 7590 07/02/2018
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
Stephen Milton
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.
034470-0437399 1025
EXAMINER
ROTARU, OCTAVIAN
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN MIL TON and DUNCAN MCCALL
Appeal2016-004328
Application 14/311,264 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 21, 22, 24--28, 30-32, 34--38, and 40-46. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appellants identify PlaceIQ, Inc. as the real party in interest. Appeal
Br. 2.
Appeal 2016-004328
Application 14/311,264
ILLUSTRATIVE CLAIM
21. A method of measuring an amount of persons that
have physically visited a retail store over one or more periods
of time, the method comprising:
obtaining location histories of a plurality of users,
each location history corresponding to a respective
one of the plurality of users and being indicative of
geographic locations visited by the respective one of the
plurality of users,
each location history including one or more time-
stamped geographic locations sensed by a respective
mobile user device of the respective one of the plurality
of users,
obtaining a plurality of geographic areas corresponding
to a plurality of retail stores,
each of the geographic areas being data describing
the geographic area occupied by a respective one of a
plurality of retail stores;
obtaining a plurality of periods of time,
for each geographic area among the plurality of
geographic areas, determining, with one or more processors, an
amount of persons who visited the respective geographic area
during one or more corresponding periods of time among the
plurality of periods of time by determining whether the one or
more time-stamped geographic locations are inside the
respective geographic area during the one or more
corresponding periods of time, wherein determining the amount
of persons who visited the respective geographic area during
one or more corresponding periods of time comprises:
estimating an amount of undetected persons who
visited the respective geographic area;
reducing undercounting of undetected persons by
increasing the resulting determined amount based on the
estimated amount of undetected persons;
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Application 14/311,264
identifying a subset of users among the plurality of
users who were sent an advertisement while in a given
geographic region,
the respective geographic area
corresponding to a respective one of the plurality
of retail stores, and
the given geographic region being a
geographic region over which advertisement
effectiveness is to be measured; and
determining an effectiveness of the advertisement
in the geographic region based on the identified subset of
users and the increased resulting determined amount of
persons who visited the respective geographic area
during the one or more corresponding periods of time;
and
storing the determined effectiveness of the advertisement
in the given geographic region in memory.
CITED REFERENCES
The Examiner relies upon the following references:
Horvitz et al.
(hereinafter "Horvitz")
US 2007/0005419 Al Jan. 4, 2007
Liang et al.
(hereinafter "Liang")
US 2010/0153216 Al June 17, 2010
Kramer et al.
(hereinafter "Kramer")
US 2011/0093340 Al Apr. 21, 2011
Busch US 2012/0290383 Al
Kjelsbak et al. US 2013/0054335 Al
(hereinafter "Kjelsbak")
Nov. 15, 2012
Feb.28,2013
Erick Schonfeld, Study: Mobile Ad-Tracking Systems Are "Blind" to
80 Percent of Apple iOS Devices, techcrunch.com, Mar. 15 2011
(http://techcrunch.com/2011/03/15/mobile-ad-blind-80-percent-apple-
ios/) ("Schonfeld")
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Application 14/311,264
REJECTIONS 2
I. Claims 21, 22, 24--28, 30-32, 34--38, and 40-46 are rejected
under 35 U.S.C. § 101 as ineligible subject matter.
II. Claims 21, 22, 24--28, 30-32, 34--38, and 40-46 are rejected
under 35 U.S.C. § 112(b) (AIA) for failing to particularly point out and
distinctly claim the subject matter that the Appellants regard as the
invention. 3
III. Claims 21, 24--26, 28, 30, 31, 34--36, 38, 40, 42, 43, 45, and 46
are rejected under 35 U.S.C. § 103(a) as unpatentable over Kramer, Horvitz,
and Kjelsbak.
IV. Claims 22 and 32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kramer, Horvitz, Kjelsbak, and Liang.
V. Claims 27 and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kramer, Horvitz, Kjelsbak, and Schonfeld.
VI. Claims 41 and 44 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kramer, Horvitz, Kjelsbak, and Busch.
2 In addition to the enumerated rejections, the Final Office Action (page 2)
includes a rejection under either 35 U.S.C. § 112(a) (AIA) or 35 U.S.C.
§ 112, ,r 1 (pre-AIA). This rejection is withdrawn. See Advisory Action
(Mar. 31, 2015); see also Appeal Br. 15.
3 Although the identified claims stand rejected under either 35 U.S.C.
§ 112(b) (AIA) or 35 U.S.C. § 112, ,r 2 (pre-AIA) (see Final Action 2-3),
this Decision applies the AIA version of 35 U.S.C. § 112, because the filing
date of the Application under review is after the effective date of Section
4(c) of the Leahy-Smith America Invents Act (AIA) (September 16, 2012)
(re-designating 35 U.S.C. § 112, ,r 2, as 35 U.S.C. § 112(b)). Unlike the
AIA versions of certain other statutory sections, the effective date for the
AIA version of 35 U.S.C. § 112 is based upon the application filing date,
rather than the priority date for claimed subject matter.
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FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Rejection Under 35 USC§ 101
Issues of subject-matter eligibility are analyzed according to the
framework delineated by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS
Bank International, 134 S. Ct. 2347, 2355 (2014)- first, determining
whether the claim is directed to judicially excepted subject matter (such as a
so-called "abstract idea") and, if so, second, determining whether there are
any "additional elements" recited in the claim that ( either individually or as
an "ordered combination") amount to "significantly more" than the
identified judicially excepted subject matter.
As to the first Alice step, the rejection maintains that the claims in the
Appeal are directed to an ineligible abstract idea, characterized variously as
"market segmentation and advertising," "market segmentation using
customer geolocation." See Final Action 3; see also Answer 4.
The Appellants argue that this characterization does not fit the claim
language and that it is not similar to concepts that courts have regarded as
abstract. Appeal Br. 8-13.
However, the Examiner's description of the identified abstract idea
fits into the category of fundamental economic practices, which has been
recognized in various court decisions. Indeed, the Examiner's description is
similar to the concept of targeted advertising, which courts have regarded as
such an abstract idea. See Affinity Labs of Tex., LLC v. Amazon.com, Inc.,
838 F.3d 1266, 1271 (Fed. Cir. 2016) ("tailoring of content based on
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information about the user-such as where the user lives or what time of day
the user views the content-is an abstract idea that is as old as providing
different newspaper inserts for different neighborhoods") ( citing Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir.
2015)).
As to the second Alice step, the Appellants argue that the claimed
feature of "determining an effectiveness of the advertisement in the
geographic region based on [ enumerated factors]" amounts to "significantly
more" than the abstract idea. Appeal Br. 13-15. Further, the Appellants
contend that certain dependent claims add details constituting significant
additions to the abstract idea----claims 25 and 35 recite "obtaining an
estimated amount of undercounting based on an identifier of an application
executed by a mobile device of the at least one user" and claims 27 and 37
recite adjusting the undercount of users "based on an amount of persons
having mobile devices with the operating system that are not detectable."
Appeal Br. 15.
Yet, we agree with the Examiner (see Answer 14 ), that the
"determining" step - even if regarded as something distinct from the
identified abstract idea itself- is a form post-solution activity that does not
confer eligibility. See Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 79 (2012). Similarly, we agree with the Examiner's position
(see Answer 14--15) that the features of the dependent claims, identified by
the Appellants, amount to data-gathering operations, which also do not give
rise to patent-eligibility. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015).
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Accordingly, we are not persuaded of reversible error and therefore
sustain the rejection of claims 21, 22, 24--28, 30-32, 34--38, and 40-46
under 35 U.S.C. § 101.
Rejection Under 35 US. C. § l l 2(b)
The rejection raises two issues of indefiniteness under 35 U.S.C.
§ 112(b ), which are addressed separately, below. Because we agree that the
first of these issues ( concerning claim language reciting "a plurality of retail
stores") renders the claims indefinite, we sustain the rejection of claims 21,
22, 24--28, 30-32, 34--38, and 40-46 under 35 U.S.C. § 112(b).
1. "a plurality of retail stores"
In the first indefiniteness issue, both of independent claims 21 and 31
are rejected, based upon the use of phrases referring to "a plurality of retail
stores." See Final Action 3. Claim 21, for example, recites:
21. A method of measuring an amount of persons that
have physically visited a retail store over one or more periods
of time, the method comprising: ...
obtaining a plurality of geographic areas corresponding
to a plurality of retail stores,
each of the geographic areas being data describing
the geographic area occupied by a respective one of a
plurality of retail stores; ... [and]
identifying a subset of users among the plurality of
users who were sent an advertisement while in a given
geographic region,
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the respective geographic area
corresponding to a respective one of the plurality
of retail stores
(Emphasis added). According to the Examiner, "the dual recitation of 'a
plurality of retail stores' makes it unclear if said independent claims seek
coverage for a respective one of the same plurality of retail stores
antecedently recited in the said limitation, or to a totally different plurality of
retail stores." Advisory Action (Mar. 31, 2015).
The Appellants contend that "[ t ]he concern here appears to be that the
claims do not limit the stores to a particular type of relationship" and that
"[t]his concern is merely with breadth, not indefiniteness." Reply Br. 3.
To the contrary, in regard to the claimed "plurality of retail stores,"
the recitation of two instances involving the indefinite article "a" ("a
plurality of retail stores" and "a respective one of a plurality of retail
stores"), followed by an instance involving the definite article "the" ("a
respective one of the plurality of retail stores") results in ambiguity as to
which "plurality of retail stores" is being referenced and/or whether there is
only one such "plurality of retail stores" at issue in the claims.
Accordingly, we sustain the rejection of claims 21, 22, 24--28, 30-32,
34--38, and 40-46 under 35 U.S.C. § 112(b), on the basis of the claim
language relating to "a plurality of retail stores."
2. "an amount of persons"
With regard to the second indefiniteness issue, independent claims 21
and 31 are rejected on account of their use of the expression "an amount of
persons." See Answer 17. Specifically, the preamble ( of claim 21, for
example) recites "an amount of persons that have physically visited a retail
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store" and the body of the claim recites "an amount of persons who visited
the respective geographic area," followed, later in the claim body, by "the
amount of persons who visited the respective geographic area":
21. A method of measuring an amount of persons that
have physically visited a retail store over one or more periods
of time, the method comprising: ...
for each geographic area among the plurality of
geographic areas, determining, with one or more processors, an
amount of persons who visited the respective geographic area
during one or more corresponding periods of time among the
plurality of periods of time by determining whether the one or
more time-stamped geographic locations are inside the
respective geographic area during the one or more
corresponding periods of time, wherein determining the
amount of persons who visited the respective geographic area
during one or more corresponding periods of time
compnses: ...
(Emphasis added).
The Appellants argue:
The claims are clear. The body of the claim does not
look to the preamble for antecedent basis, and as such, there is
no ambiguity regarding whether if or how "an amount of
persons" in the body of the claim refers back to the "amount of
persons" in the preamble. It does not. This is plainly indicated
by the article "an" being used in the body of the claim, rather
than the article "the," which would indicate reference back to
the preamble. Because "an" prefaces the phrase in the body of
the claim, rather than "the," the language in the body of the
claim does not look to the preamble for antecedent basis.
Reply Br. 2-3.
We agree with the Appellants. Leaving aside the interpretational
principle that claim preambles are not necessarily limiting (but often simply
recite a goal or potential use of the claimed invention), here the preamble
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uses a different phrase from what is set forth in the body of the claim, thus
foreclosing concerns about ambiguity that animated the rejection.
Specifically, the preamble of claim 21 recites "an amount of persons that
have physically visited a retail store," whereas the body of the claim recites
"an amount of persons who visited the respective geographic area."
(Emphasis added). The meaning of the claim is not rendered unclear or
ambiguous, simply because the identified expression ("an amount of
persons") is also used (in regard to a different phrase) in the preamble.
Accordingly, we do not sustain the rejection of claims 21, 22, 24--28,
30-32, 34--38, and 40-46 under 35 U.S.C. § 112(b ), on the basis of the claim
language relating to "an amount of persons."
Rejections Under 35 USC§ 103(a)
The Appellants argue all claims in the Appeal as a group. Appeal
Br. 16-21. Independent claim 21 is selected for analysis herein. See
37 C.F.R. § 4I.37(c)(l)(iv).
The Appellants argue (Appeal Br. 17-21) that the prior art does not
teach or suggest the following features of independent claim 21:
determining an effectiveness of the advertisement in the
geographic region based on the identified subset of users and
the increased resulting determined amount of persons who
visited the respective geographic area during the one or more
corresponding periods of time.
Note that the "identified subset of users," in the above quotation, refers to
claim 21 's prior limitation of "identifying a subset of users among the
plurality of users who were sent an advertisement while in a given
geographic region." Note, further, that the feature of the "increased
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resulting determined amount of persons who visited ... " refers to a
technique for determining the undercounting of visitors, by (per claim 21)
"estimating an amount of undetected persons who visited the respective
geographic area."
The Examiner's position is that teachings of the cited references may
be combined in various ways to accomplish the identified subject matter.
For example, the claimed "determining an effectiveness of the advertisement
in the geographic region" is taught by Kramer's ,r 229 (which discloses that
venues may tracking users' acceptance of particular promotional
advertising). See Answer 21. In addition, Kjelsbak, at ,r,r 44--45, discloses
monitoring the mobile devices of users to which a voucher for a particular
promotional deal has been distributed, including whether the deal has been
purchased - thus teaching both "determining an effectiveness of the
advertisement in the geographic region," as well as making such
determinations "based on the identified subset of users" (i.e., the users who
were sent an advertisement while in a given geographic region, as set forth
in claim 21 ). See Answer 21-23.
The Appellants argue that Kjelsbak is deficient, because the reference
"measures redemptions of offers, not visits to stores." Appeal Br. 19 ( citing
Kjelsbak ,r 44). In this regard, the Appellants are mistaken, because
Kjelsbak ,r 13 states that a user may "receive a voucher for the product or
service on his mobile device, and be able to walk into a store with the
voucher on his mobile phone to redeem the voucher for the offered product
or service." See also Kjelsbak ,r 37 ("When a user desires to redeem the
voucher for the offered product or service, the user may travel to the location
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of the seller (e.g., a store) and present the voucher to the seller for
redemption.")
The Appellants also argue (Appeal Br. 19) that Kjelsbak does not
account for effectiveness of ads in driving visits in a way that accounts for
undetected people, as reflected in the claim language reciting the "increased
resulting determined amount." Yet, Kramer teaches this feature.
Specifically, claim 21 's feature of the "increased resulting determined
amount of persons who visited the respective geographic area during the one
or more corresponding periods of time" (i.e., estimating and compensating
for the undercounting of patrons) is taught by Kramer ,r 62 ( which discloses
calculating and applying a ratio that reflects the degree of undercounting).
The Appellants contend that Kramer does not teach this feature of claim 21
(see Reply Br. 3--4 ), however the Appellants do not address, let alone
criticize, the disclosure of Kramer's ,r 62 or the Examiner's discussion of
such disclosure.
Accordingly, the Appellants have not persuasively argued that
claim 21 was rejected erroneously. Therefore, we sustain the rejection of
claims 21, 22, 24--28, 30-32, 34--38, and 40--46 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 21, 22, 24--28,
30-32, 34--38, and 40--46 under 35 U.S.C. § 101.
We AFFIRM the Examiner's decision rejecting claims 21, 22, 24--28,
30-32, 34--38, and 40--46 under 35 U.S.C. § 112(b) (AIA).
We AFFIRM the Examiner's decision rejecting claims 21, 22, 24--28,
30-32, 34--38, and 40--46 under 35 U.S.C. § 103(a).
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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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