Ex Parte Musial et al

Patent Trial and Appeal Board

Apr 30, 2018

13396177 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/396, 177 02/14/2012
70748 7590
IBM Corp. (AUS/RCR)
c/o Rolnik Law Firm, P.C.
24 N. Main St.
Kingwood, TX 77339
05/02/2018
FIRST NAMED INVENTOR
John G. Musial
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.
IN9201 l 023 7US 1 4250
EXAMINER
JOSEPH, TONY A S
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
05/02/2018 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):
notices@rolnikiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN G. MUSIAL, ABHINA YR. NAGP AL,
SANDEEP R. PATIL, and CAROLYN A. WHITEHEAD
Appeal 2017-001164
Application 13/3 96, 177
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 14, 21, and 22, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse and enter a new ground ofrejection. 2
1 Appellants identify International Business Machines Corporation as the
real party in interest. (App. Br. 2.)
2 Our Decision refers to the Specification ("Spec.") filed February 14, 2012,
the Final Office Action ("Final Act.") mailed November 18, 2015, the
Appeal Brief ("App. Br.") filed March 16, 2016, the Examiner's Answer
("Ans.") mailed September 16, 2016, and the Reply Brief ("Reply Br.") filed
October 24, 2016.
Appeal2017-001164
Application 13/396, 177
CLAIMED INVENTION
The claims are directed to computer program products for distributing
advertisements to an aggregation of people in an airport, using a "service
vehicle associated with a flight" for which the people have checked-in.
(Spec. ,r,r 4, 31; Title; Abstract.) Such "service vehicles can include fuel
trucks, food and beverage delivery trucks, baggage handling equipment, and
the like." (Spec. ,r 31.) Appellants' invention dispatches an advertisement
to the service vehicle for rendering, the advertisement selected based on an
"aggregated population characteristic" formed from "cumulative
characteristics [ of the aggregation of people] selected from at least one of
the group consisting of age, marital status, and parental status associated
with at least one of the first check-in and second check-in." (Spec. ,r 57;
Abstract.)
Claims 14 and 21 are independent. Claim 14, reproduced below, is
illustrative of the claimed subject matter:
14. A computer program product for selecting an
advertisement, the computer program product comprising:
a computer readable non-transitory medium having
computer readable program code stored thereon, the computer
readable program code comprising:
program instructions to receive a first check-in
corresponding to at least one person, wherein the first check-in
is a indication of presence relative to an airport gate servicing a
flight and the first check-in is received from a kiosk;
program instructions to receive a second check-in to form
an aggregation of people, wherein the second check-in is a
indication of presence relative to the airport gate servicing the
flight;
program instructions to characterize the aggregation based
on cumulative characteristics selected of at least one vital
2
Appeal2017-001164
Application 13/396, 177
statistic of each person checking-in to form an aggregated
population characteristic;
program instructions to receive flight details concerning
the flight, wherein the flight details comprise a flight destination,
and the advertisement concerns a service provider at the flight
destination;
program instructions to select at least one advertisement
based on the aggregated population characteristic and the flight
details, in response to the second check-in;
program instructions to receive a check-out of at least one
person, wherein the check-out comprises reading an identifier of
an at least one person who departs;
program instructions to select at least one advertisement
based on the aggregated population characteristic;
program instructions to second characterize the
aggregation based on the cumulative characteristics to form a
second cumulative characteristic based on the aggregation
without at least one vital statistic corresponding to the at least
one person who departs, wherein the program instructions to
select at least one advertisement based on the aggregated
population characteristic perform to select the at least one
advertisement is based on the second cumulative characteristic;
program instructions to select at least one advertisement
based on the second cumulative characteristic, and a destination
of the flight details, wherein the destination is stated within the
at least one advertisement;
program instructions to dispatch the at least one
advertisement; and
program instructions to detect presence of a service
vehicle associated with a flight near and outside an aircraft
associated with the flight, wherein the detecting presence relies
on at least one global positioning satellite (GPS) signal received
at the service vehicle and reported as location data to the
hardware processor, wherein program instructions to dispatch
comprises instructions to dispatch the at least one advertisement
to the service vehicle for rendering and such dispatching 1s
responsive to detecting presence of the service vehicle.
(App. Br. 14--16 (Claims App'x).)
3
Appeal2017-001164
Application 13/396, 177
REJECTI0NS 3
Claims 14, 21, and 22 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. (Final Act. 4--5.)
ANALYSIS
Rejection of Claims 14, 21, and 22 under 35 US.C. § 101 as being directed
to an abstract idea without "significantly more"
The Examiner finds the claims are "directed to the abstract idea of
displaying advertisements based on an aggregation of people which falls into
the category of ... a method of organizing human activities, ... [and] an
idea of itself." (Final Act. 4; see also Ans. 3.) The Examiner further finds
"[ t ]he additional elements or combination of elements in the claims other
than the abstract idea per se amounts to no more than the recitation of
generic computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional activities."
(Final Act. 4--5; see also Ans. 3-5.) For these reasons, the Examiner
concludes the claims are directed to unpatentable subject matter under 35
U.S.C. § 101. Id.
To determine whether subject matter is patentable under 35 U.S.C.
§ 101, the Supreme Court has set forth a two part test "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. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014).
3 Claims 14, 21, and 22 were rejected under 35 U.S.C. § 112 (pre-AIA),
second paragraph, as being indefinite. (Final Act. 3--4.) However, this
rejection was withdrawn in the Examiner's Answer, and is no longer
pending on appeal. (Ans. 2.)
4
Appeal2017-001164
Application 13/396, 177
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. ( citation omitted). For computer-related technologies, "the first step in
the Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities" (which would be eligible
subject matter) or instead "on a process that qualifies as an 'abstract idea' for
which computers are invoked merely as a tool" (which would be ineligible
subject matter). Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36,
1338 (Fed. Cir. 2016) (emphasis added). "If the claims are not directed to an
abstract idea [or other patent-ineligible concept], the inquiry ends. If the
claims are 'directed to' an abstract idea, then the inquiry proceeds to the
second step of the Alice framework." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016).
The second step in the Alice framework 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. ( citing Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 78, 79 (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. ( citing Mayo, 566 U.S. at 72-73).
Under step one of the Alice framework, we note, claims 14 and 21 are
directed to advertisement selection based on aggregated population
characteristics pertaining to aggregations of people. (App. Br. 14--16
(Claims App'x); Spec. ,r,r 4, 25-26; Title.) The claim language, in light of
5
Appeal2017-001164
Application 13/396, 177
the Specification, thus supports the Examiner's determination that the claims
are directed to the abstract idea of "targeted advertising," which is a
fundamental economic practice. (Ans. 3--4.) Indeed, courts have regarded
"targeted advertising," in various forms, as 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 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)); Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 713 (Fed. Cir. 2014) (allowing a consumer to
receive copyrighted media in exchange for watching a selected
advertisement was an abstract idea); Morsa v. Facebook, Inc., 77 F.Supp.3d
1007 (C.D. Cal. 2014), aff'd, 622 F. App'x 915 (Fed. Cir. 2015); and
OpenTV, Inc. v. Neiflix Inc., 76 F.Supp.3d 886, 893 (N.D. Cal. 2014) ("The
concept of gathering information about one's intended market and
attempting to customize the information then provided is as old as the
saying, 'know your audience."'). Therefore, we are not persuaded that the
Examiner erred in determining claims 14 and 21 are directed to an abstract
idea under step one of the Alice framework.
Under step two of the Alice framework, however, we are persuaded
that the Examiner erred in determining that claims 14 and 21 do not recite
significantly more. Particularly, the Examiner states
looking at the limitations as an ordered combination adds nothing
that is not already present when looking at the elements taken
individually. There is no indication that the combination of
elements improves the functioning of a computer or improves
6
Appeal2017-001164
Application 13/396, 177
any other technology. Their collective functions merely provide
conventional computer implementation.
(Ans. 4.) However, as Appellants argue (Reply. Br. 3--4)
The Examiner has not even explained how dispatching an
advertisement for rendering at a service vehicle would be
conventional given that passengers/users who have checked-
in/checked-out are not even on or in that service vehicle. A fair
characterization would be that to render such advertisements ( or
even the mere dispatching of advertisements) to such a vehicle
runs counter to the notion that passenger/users should be
entertained/informed within the aircraft. Rather, such an
approach, as described in the claim limitations, is odd, counter-
intuitive and unconventional. ...
The output, in the claims 14, 21 and 22 is, for example "dispatch
the at least one advertisement to the service vehicle for
rendering" .... it is unconventional to dispatch and/or render
material for an audience on a vehicle that the audience does not
even occupy.
That is, the ordered combination of steps in claims 14 and 21 performs
targeted advertising for an aggregation of people (based on cumulative
characteristics and flight details pertaining to the aggregation) by
delivering/ dispatching an advertisement "to [a] service vehicle [ associated
with the flight] for rendering[,] and such dispatching is responsive to
detecting presence of the service vehicle" "near and outside an aircraft
associated with the flight" using a GPS signal received at the service vehicle.
(App. Br. 14--15 (claim 14).) The ordered combination of Appellants' steps
thus recites an advancement to the technology for delivering targeted
advertising.
Although "the limitations of the claims, taken individually, recite
generic computer, network and Internet components, none of which is
inventive by itself," "an inventive concept can be found in the non-
7
Appeal2017-001164
Application 13/396, 177
conventional and non-generic arrangement of known, conventional pieces."
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349--50 (Fed. Cir. 2016). Here, the ordered combination of steps in
claims 14 and 21 is directed to a specific technological solution to a specific
problem pertaining to targeted advertising, namely the problem of assessing
receptiveness to various advertisements and then advertising to changing
captive audiences in airport areas where network access may be limited or
constrained. (See Spec. ,r,r 1-3, 25-26, 57.)
Furthermore, claims 14 and 21 do not attempt to preempt every way
of performing "targeted advertising"; rather claims 14 and 21 recite specific
ways for delivery of targeted advertising by "dispatching an advertisement
for rendering at a service vehicle" for viewing by "passengers/users who
have checked-in/checked-out [but] are not even on or in that service
vehicle." (Reply Br. 3; see DDR Holdings, LLC, v. Hotels.com, L.P., 773
F.3d 1245, 1259 (Fed. Cir. 2014).)
Therefore, claims 14 and 21 include "additional features" that ensure
the claims are "more than a drafting effort designed to monopolize [an
abstract idea]." Alice, 134 S. Ct. at 2357.
We are persuaded of error in the rejection of claims 14 and 21 under
35 U.S.C. § 101. Accordingly, we do not sustain the Examiner's rejection
under 35 U.S.C. § 101, of claims 14, 21, and 22.
New Grounds of Rejection of Claims 14, 21, and 22 under 35 US.C. § 101
as directed to software per se and printed matter
Pursuant to our authority under 3 7 C.F .R. § 41.50(b ), we enter a new
ground of rejection against claims 14, 21, and 22 under 35 U.S.C. § 101
8
Appeal2017-001164
Application 13/396, 177
because the claims are directed to software per se and, thus, are not within
one of the four classes of statutory subject matter.
Particularly, claims 14, 21, and 22 are directed to "[a] computer
program product for selecting an advertisement, the computer program
product comprising: a computer readable non-transitory medium having
computer readable program code stored thereon, the computer readable
program code comprising: program instructions," and Appellants'
Specification teaches the "computer readable program code" and "program
instructions" may be software. (See Spec. ,r,r 17, 20-21, 64---65.)4
Regarding the claimed "computer program product," Appellants'
Specification provides "the invention can take the form of a computer
program product accessible from a computer-usable or computer-readable
medium providing program code for use by or in connection with a
computer or any instruction execution system." (See Spec. ,r 65 ( emphasis
added).) Thus, the claimed "computer program product" does not exclude it
being software. Additionally, the "computer readable non-transitory
4 Appellants' Specification provides "the invention can take the form of a
computer program product accessible from a computer-usable or computer-
readable medium providing program code for use by or in connection with a
computer or any instruction execution system," where the "[ c ]omputer
program code for carrying out operations for aspects of the present invention
may be written in any combination of one or more programming
languages"; additionally, the "[p ]rogram code embodied on a computer
readable medium may be transmitted using any appropriate medium." (See
Spec. ,r,r 20-21, 65 ( emphasis added).) The Specification further provides
"one or more embodiments may take the form of ... an entirely software
embodiment (including firmware, resident software, micro-code, etc.)," and
"[t]he program code may execute ... as a stand-alone software package."
(See Spec. ,r,r 17, 21, 64 (emphasis added).)
9
Appeal2017-001164
Application 13/396, 177
medium" as claimed and described in Appellants' Specification also does
not exclude it being software. (See Spec. ,r,r 18-19; see also infra n. 5.)
Although claims 14 and 21 reference method steps (e.g., a step that
"receive[s] a first check-in corresponding to at least one person," etc.), the
claims are directed to a "computer program product" including "program
code" for performing the method and not the method itself. Further,
although claims 14 and 21 reference a "hardware processor" (in the last step
of each claim), the claims are not directed to that processor. Rather, claims
14, 21, and 22 are directed to a computer program product comprising
program code, i.e., software per se, and are, accordingly, not patent-eligible.
We additionally reject independent claims 14 and 21 and dependent
claim 22 under 35 U.S.C. § 101 as directed to a mere arrangement of
"printed matter" and merely claiming the content of "printed" information.
See In re Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015); In re Miller, 418
F.2d 1392 (CCPA 1969) (holding that claims directed to a mere arrangement
of printed matter are patent-ineligible under 35 U.S.C. § 101); and In re
Jones, 373 F.2d 1007 (CCPA 1967).
As discussed supra, claims 14 and 21 (and dependent claim 22) are
directed to "[a] computer program product for selecting an advertisement,
the computer program product comprising: a computer readable non-
transitory medium having computer readable program code stored thereon,
the computer readable program code comprising: program instructions."
(App. Br. 14--16 (Claims App'x).) That is, the scope of claims 14, 21, and
22 is very broad and includes a computer-readable substrate ("computer
readable non-transitory medium") with information in digital form
("computer readable program code" comprising "program instructions")
10
Appeal2017-001164
Application 13/396, 177
printed thereupon. 5 See Miller, 418 F.2d at 1392; In re Lowry, 32 F.3d
1579, 1583-84 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
2004) (holding that claims directed to conveying data or meaning to a
human reader rather than establishing a functional relationship between
recorded data and a computer system are patent-ineligible under 35 U.S.C.
§ 101 ).
Accordingly, we reject claims 14, 21, and 22 under 35 U.S.C. § 101 as
patent ineligible as software per se and as directed to "printed matter."
DECISION
For the above reasons, the Examiner's rejection of claims 14, 21, and
22 under 35 U.S.C. § 101 as being directed to an abstract idea without
"significantly more" is reversed.
We enter new grounds of rejection against claims 14, 21, and 22 under
35 U.S.C. § 101.
37 C.F.R. § 4I.50(b) provides that, "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
5 Appellants' Specification provides "[t]he computer readable medium may
be a computer readable signal medium or a computer readable storage
medium," where the "computer readable storage medium may be any
tangible medium that can contain, or store a program for use by or in
connection with an instruction execution system, apparatus, or device," and
the "computer readable signal medium may be any computer readable
medium that is not a computer readable storage medium and that can
communicate, propagate, or transport a program." (Spec. ,r,r 18-19
( emphasis added).) The Specification further provides the "[ c ]omputer
program code for carrying out operations for aspects of the present invention
may be written in any combination of one or more programming languages."
(Spec. ,r 21.)
11
Appeal2017-001164
Application 13/396, 177
37 C.F.R. § 41.50(b) also provides that the Appellants, 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 proceedings 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 37 C.F.R. § 41.52 by the Board upon the same
Record.
REVERSED
37 C.F.R. § 4I.50(b)
12