Ex Parte Nawrocki et al

Patent Trial and Appeal Board

Jun 28, 2016

12495014 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/495,014 0613012009
22242 7590 06/29/2016
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Gregory J. Nawrocki
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.
8681/95121 2074
EXAMINER
OSMAN BILAL AHME, AF AF
ART UNIT PAPER NUMBER
3622
MAILDATE DELIVERY MODE
06/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY J. NAWROCKI and DAVID J. NUGENT
Appeal2014-002037
Application 12/495,014
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE1
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-19. We affirm.
1 Appellants identify American Spirit Data Solutions, LLC as the real party
in interest. (Appeal Br. 3).
Appeal2014-002037
Application 12/495,014
THE CLAIMED INVENTION
Appellants claimed invention "relates generally to presentations that
are shared by a plurality of end users and more particularly to modifications
of such presentations." (Spec., para. 2).
Claim 1 is illustrative of the claimed subject matter:
1. A method comprising:
by a control circuit:
receiving a data message in conjunction with a
corresponding source identifier from each of a plurality of
sources, wherein the plurality of sources each have, at the time
of sourcing their respective data message, a corresponding
attending end user who aggregately comprise end users, wherein
the end users are all presently sharing a common presentation;
using the source identifier to determine additional
identifying information for at least a substantial number of the
end users;
using the additional identifying information to determine
characterizing information for at least a substantial number of the
end users;
at the control circuit or elsewhere:
using the characterizing information to modify the
common presentation.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Diederiks
Li
Arnold
US 2007 /0136122 Al June 14, 2007
US 2007 /0169143 Al July 19, 2007
US 2008/0120182 Al May 22, 2008
REJECTIONS
The following rejections are before us for review.
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The Examiner rejected claims 1-12 under 35 U.S.C. § 101 as reciting
ineligible subject matter.
The Examiner rejected claims 1-11 and 13-19 under 35 U.S.C.
§ 103(a) as unpatentable over Diederiks and Arnold.
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Diederiks, Arnold, and Li.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification does not lexicographically define the term control
circuit, but describes, by example, that it may be a "digital computer."
(Spec., para. 36).
2. The Specification does not lexicographically define the term substantial,
but describes it by example, stating:
a substantial number of end users shall be understood to refer to
at least thirty percent of the responding end users. Other
thresholds can of course apply depending upon the needs and/or
opportunities as tend to characterize a given application setting.
For example, in some settings, as few as ten percent may be
sufficient while in other cases it may be required that a great
percentage (such as seventy-five, eighty, or ninety percent) be
achieved.
(Spec., para. 27).
3. The ordinary and customary definition of the term substantial is
"considerable in importance, value, degree, amount, or extent." (The
Free Dictionary by Farlex, last retrieved from
http://www.thefreedictionary.com/substantial on June 17, 2016).
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Application 12/495,014
4. Arnold discloses a billboard system that adapts the displayed message to
information received from a consumer's mobile device, such as a
preferred language or currency. (Arnold, para. 21 ).
5. Arnold discloses the information may be displayed to a consumer "via a
display device, such as a television, a computer monitor, a printer,
speakers, a display on the contactless device, or through other means."
(Id.).
6. Arnold provides an example of its billboard system in a restaurant,
stating:
If the consumer is proximate to a smart billboard system that
typically displays a menu in Chinese, a contactless reader
associated with the smart billboard system may detect the
preference-based information on the consumer's contactless
device and translate the menu into English. If a preferred
currency for the consumer is also stored on the contactless
device, the smart billboard system may calculate the prices for
the menu items in the preferred currency based on, for example,
real-time exchange rates.
(Arnold, para. 22).
ANALYSIS
Rejection of claims 1-12 under 35 U.S.C. § 101 2
Appellants argue limitations, directed to using information to
determine other information, are not insignificant extra-solution activity in
2 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review claims 13-19 for
compliance under 35 U.S.C. § 101 in light of the recently issued preliminary
examination instructions on patent eligible subject matter. See "Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank
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Application 12/495,014
the context of an analysis of patentable subject matter under Section 101.
(Appeal Br. 1 O; see also Reply Br. 2-3). The Examiner found insignificant
extra-solution activity is among the factors considered in determining the
whether the claims are focused on an abstraction. (Final Act. 4.). We find
no error with the Examiner's reasoning here.
The Supreme Court:
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, [ ]
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. [ ] If so, we then ask, "[ w ]hat else is
there in the claims before us? [] To answer that question, []
consider the elements of each claim both individually and "as an
ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a 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."
Alice Corp. Pty. Ltd. v CLS Bank Intl., 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012)). To perform this test, we must first determine whether the
claims at issue are directed to a patent-ineligible concept.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of using
information to determine, or find, and modify, other information, as at issue
International, et al.," Memorandum to the Examining Corps, June 25, 2014.
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here. The abstraction here focuses on receiving data, using that data to find
other data, and using the other data to modify the received data. Both are
squarely within the realm of "abstract ideas" as the Court has used that term.
See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
The remaining claims limit the types of information, or uses of
information, or add additional information types to the method, such as an
incentives. We conclude that the claims at issue are directed to a patent-
ineligible concept, because they are merely an abstract idea, capable of being
performed through human thought and insignificant data input and output
operations.
The introduction of a "control circuit" into the claims does not alter
the analysis at Mayo step two. The "control circuit" is not defined, but is
described as encompassing a "digital computer." (FF 1 ).
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea '"to a particular technological environment.'"
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t ]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of "additional feature[e]" that provides any
"practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
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"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Viewed as a whole, Appellants' method claims simply recite the
abstract concept of managing information. Even were the steps implied as
being performed on a computer, the method claims do not, for example,
purport to improve the functioning of a computer itself. Nor do they effect
an improvement in any other technology or technical field. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of managing information to a specific type of
information in the form of a "presentation." Under our precedents, that is
not enough to transform an abstract idea into a patent-eligible invention. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
Rejection of claims 1-11 and 13-19 under 35 U.S.C. § 103(a)
Initially, we note that the Appellants argue independent claims 1, 13,
and 17 together as a group. (Appeal Br. 5). Correspondingly, we select
representative claim 1 to decide the appeal of these claims, with remaining
claims 13 and 1 7 standing or falling with claim 1. Appellants do not provide
a substantive argument as to the separate patentability of 2-11, 14--16, 18,
and 19 that depend from claims 1, 13, and 17. Thus claims 2-11 and 13-19
stand or fall with claim 1. See, 37 C.F.R. § 41.37(c)(l)(vii).
Appellants argue "[ w ]hile Arnold teaches modifying displayed
content as a function of a single individual, Arnold does not teach modifying
displayed content as a function of 'a substantial number' of such persons."
(Appeal Br. 11-13; see also Reply Br. 3--4).
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We are not persuaded by Appellants' argument. In Appellants'
Specification, there is no explicit definition of the term "substantial"; only
examples of percentages of users considered to be "substantial." (FF 2).
Thus, there is no guidance provided for a given situation as to what level is
required to be considered "substantial," as claimed. Instead, we rely on the
ordinary and customary meaning of "substantial" to be "considerable in
importance, value, degree, amount, or extent." (FF 3). We, thus, construe
"substantial number of users" to be a number of users which is a
"considerable" number in importance.
Arnold discloses a system that modifies displayed content on a
billboard system (FF 4, 5), where a user is proximate, and has personal
preference information on the device showing a different language
preference than the language currently displayed, the billboard will change
the display to use the user's language preference instead. (FF 6). In this
particular situation, we find that even a single user with a different language
preference within proximity of the billboard system will affect a change in
the display. (FF. 6). As such, we find that the single user is "considerable in
importance" because he/she causes the altered display. Arnold's example,
thus, meets the claim language.
Appellants also argue Arnold teaches away. (Appeal Br. 12). We are
not persuaded, because Arnold specifically meets the claim language, as we
have shown above.
In addition, a "reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant." In re Kahn, 441
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F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation marks
omitted). See also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(noting that merely disclosing more than one alternative does not teach away
from any of these alternatives if the disclosure does not criticize, discredit,
or otherwise discourage the alternatives). Arnold does not discourage one
from having a number that is "considerable in importance," as the English-
language consumer (FF 6), and, thus, does not teach away.
Rejection of claim 12 under 35 U.S.C. § 103(a)
Appellants do not argue claim 12 separately, so we affirm its rejection
on the same basis as that of claim 1, above.
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-12 under 35 U.S.C.
§ 101.
The Examiner did not err in rejecting claims 1-19 under 35 U.S.C.
§ 103(a).
DECISION
For the above reasons, the Examiner's rejections of claims 1-19 are
affirmed.
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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