Ex Parte Raman et al

Patent Trial and Appeal Board

Feb 28, 2018

13593651 (P.T.A.B. Feb. 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.
13/593,651 08/24/2012 Madhusudan Raman 20120571 4181
25537 7590
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
GELDRES, ARTHUR E
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
patents @ verizon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MADHUSUDAN RAMAN and PETER STEVEN TIPPETT
Appeal 2016-006049
Application 13/593,651
Technology Center 3600
Before ERIC B. CHEN, KARA L. SZPONDOWSKI, and
DAVID J. CUTITTAII, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2016-006049
Application 13/593,651
STATEMENT OF THE CASE
Appellants’ invention is directed to presenting offers in an augmented
reality environment. Spec. 111. Claim 1, reproduced below with the
disputed limitations in italics, is representative of the claimed subject matter:
1. A method, comprising:
storing, by a user device, user preferences for advertising
categories of a set of standardized advertising categories, wherein the
user preferences include a ranking of a user’s level of interest in the
advertising categories;
sending, from the user device to a service provider network, an
indication of a location of the user device;
receiving, by the user device from the service provider network,
a default offer set, wherein the default offer set includes offers in a
proximity of the location, and wherein each of the offers in the default
offer set includes category information to indicate at least one of the
advertising categories;
selecting, by the user device and by applying the user
preferences, top advertising categories from one or more of the offers
in the default offer set, wherein the selecting identifies the top
advertising categories from the ranking of the user’s level of interest
in the advertising categories;
presenting, by the user device, a reality image associated with
the location;
displaying, by the user device, an offer icon representing one of
the advertising categories in the top advertising categories, wherein
the offer icon is overlaid on a portion of the reality image, and
wherein the offer icon includes a rating indication of the user’s level
of interest for the one of the advertising categories',
receiving, by the user device, a user’s selection of the offer
icon', and
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presenting, by the user device and in response to the user’s
selection of the offer icon, one or more offers from the one of the
advertising categories in the top advertising categories.
REJECTIONS1
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception to statutory subject matter.
Claims 1—20 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Altman et al. (US 2012/0220314 Al; published Aug. 30,
2012) (“Altman”).
ANALYSIS
35 U.S.C. § 101 Rejections
To determine whether a claim is eligible under § 101, “[w]e must first
determine whether the claims at issue are directed to a patent-ineligible
concept.” Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2355
(2014). If it is, we then “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.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78-79 (2012)).
In the first step of the Alice analysis, the Examiner determines the
claims are directed to the abstract idea of “informed advertising.” Final
Act. 22. In the second step of the Alice analysis, the Examiner determines
1 The Examiner withdrew 35 U.S.C. § 112(b) rejections of claims 1—20.
Ans. 4.
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the additional recitations of a “user,” “user device,” “icon,” and “rating,”
“amounts to merely conventional, insignificant, pre-solution, post-solution,
token-extra-solution, basic, obvious, well-understood, long-prevalent,
already-in-use, purely conventional, unsubstantial, and/or routine step(s),
activitie(s), fimction(s) and/or action(s)” that are “insufficient to transform
the claimed abstract idea . . . into a patent-eligible application.” Final
Act. 23.
With respect to the first step of the Alice analysis, Appellants argue
claim 1 “does not recite a basic concept that is similar to a law of nature, a
natural phenomenon, or any abstract idea previously identified by the
courts.” App. Br. 19. Appellants further argue “the claimed method is
necessarily rooted in computer technology to overcome a problem
specifically arising in an augmented reality environment, and not an abstract
idea.” Id. According to Appellants, the Examiner failed to consider the
claim as a whole and the claims “clearly do not seek to monopolize any
judicial exception.” Id. at 17—18. With respect to the second step of the
Alice analysis, Appellants argue
claim 1 adds unconventional steps that confine the claim to a
particular useful application and adds meaningful limitations
that amount to more than generally linking the use of the
abstract idea to a particular technological environment (i.e.,
associating an advertising category within a portion of a reality
image and indicating a user’s potential level of interest in the
advertising category.)
App. Br. 19.
We are not persuaded by Appellants’ arguments. As such, we adopt
the Examiner’s findings and conclusions as set forth in the Answer. See
Final Act. 20—24; Ans. 4—12. As to step one of the Alice analysis,
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Appellants admit “the claimed method relates to identifying and presenting
advertising of interest to a user within a reality image.” App. Br. 18. We
agree with the Examiner that the claims are directed to informed advertising,
and are, therefore, directed to a fundamental economic or commercial
practice. See Affinity Labs, of Texas, LLC v. Amazon.com Inc., 838 F.3d
1266, 1269 (Fed. Cir. 2016) (“we hold that the concept of delivering user-
selected media content to portable devices is an abstract idea”); Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369—70 (Fed.
Cir. 2015) (the practice of tailoring advertising to individual customers is a
“‘fundamental. . . practice long prevalent in our system’”); Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 714—715 (Fed. Cir. 2014) (“showing an
advertisement before delivering free content” is an abstract idea).
Although Appellants argue “the claimed method is necessarily rooted
in computer technology to overcome a problem specifically arising in an
augmented reality environment, and not an abstract idea,” Appellants do not
elaborate upon this argument to address what problem “specifically arising
in an augmented reality environment” is addressed by claim 1. App. Br. 19;
see Ans. 8—9. Appellants, therefore, have not provided persuasive
supportive evidence for such arguments. We note that attorney argument in
a brief cannot take the place of evidence. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974).
Appellants’ preemption argument is likewise unpersuasive of
Examiner error. We find that this argument is adequately addressed by the
remainder of the Alice analysis. See Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“Where a patent’s claims are
deemed only to disclose patent ineligible subject matter under the Mayo
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framework, as they are in this case, preemption concerns are fully addressed
and made moot.”); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362—63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”).
Turning to the second step of the Alice analysis, Appellants’
arguments that certain limitations, i.e., associating an advertising category
within a portion of a reality image and indicating a user’s potential level of
interest in the advertising category, add meaningful limitations are not
persuasive. The storing, sending, receiving, selecting, presenting,
displaying, receiving, and presenting steps of claim 1 are all routine and
conventional computer functions, performed by the “user device.” The
receiving, generalizing, forwarding, identifying, scoring, sending, receiving,
selecting, displaying, and receiving steps of claim 9 are likewise routine and
conventional computer functions performed by either a “network device” or
the “user device.” Claim 15 recites a “user device,” “display,” “memories,”
and “processors.” The Specification describes generic computers and
computer components for these devices. E.g., Spec. H 16, 17 (describing
that user device may include, for example, a tablet computer, smartphone,
laptop computer, gaming console, GPS device, etc.); 118 (“[sjervice
provider network 205 may include network devices to provide backend
services to user devices 100”); 129 (“[processing unit 320 may include one
or more processors or microprocessors that interpret and execute
instructions”); 130 (“[mjemory 330 may include a random access memory
(RAM)... a read only memory (ROM)”); 135 (functional components of
the user device may be implemented by, for example, “processing unit 320
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in conjunction with memory 330”). Appellants do not adequately show how
the claimed steps are technically performed such that they are not routine,
conventional functions of a generic computer, nor do Appellants provide
evidence why the steps are not routine and conventional functions of a
generic computer. The claims when viewed as a whole are nothing more
than performing conventional processing functions that courts have routinely
found insignificant to transform an abstract idea into a patent-eligible
invention. As such, the claims amount to nothing significantly more than an
instruction to implement the abstract idea on a generic computer — which is
not enough to transform an abstract idea into a patent-eligible invention. See
Alice, 134 S. Ct. at 2360.
In view of the foregoing, we sustain the Examiner’s 35 U.S.C. § 101
rejection of claims 1—20.
35 U.S.C. § 102 Rejections
Appellants argue Altman does not disclose “displaying, by the user
device, an offer icon representing one of the advertising categories in the top
advertising categories, wherein the offer icon is overlaid on a portion of the
reality image, and wherein the offer icon includes a rating indication of the
user’s level of interest for the one of the advertising categories,” “receiving,
by the user device, a user’s selection of the offer icon,” and “presenting, by
the user device and in response to the user’s selection of the offer icon, one
or more offers from the one of the advertising categories in the top
advertising categories,” as recited in independent claim 1. App. Br. 21—24.
Specifically, Appellants argue “nothing in [Altman] discloses or even
suggests that an offer icon, representing one of the advertising categories in
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the top advertising categories, is overlaid on a portion of the reality image”
and “[Altman] certainly does not disclose or suggest that the offer icon
includes a rating indication of the user’s level of interest for the one of the
advertising categories.” App. Br. 22. Appellants further argue “to assert a
selection of the offer icon, the Examiner relies on a completely different
embodiment of [Altman], namely coupons that are delivered . . . [and] the
coupons of [Altman] do not represent an offer category and are not
presented in response to the user’s selection of the offer icon.” App. Br. 23.
We are persuaded by Appellants’ arguments. Altman generally
describes capabilities for presenting locations of mobile communication
devices operated by a user on a map representation of an area. Altman
Abstract. In addition, Altman discusses tools for an advertiser to create and
transmit relevant ad messages to a user based on a specific location, where
the ad messages can be in the form of a text message, coupon, or graphic
element. Altman Abstract. The Examiner identifies paragraphs 52, 53, 55,
56, 74, and 82 of Altman as teaching “that displayable information/data (e.g.
an icon) is interactive” and “receiving a selection . . . and in response to the
selection . . . offering information.” Ans. 19, emphasis omitted. The
Examiner finds Altman is “at least fully capable ... of [receiving a
selection] and . . . presenting one offer.” Ans. 20, emphasis omitted. The
Examiner also cites to Figures 2B, 15A, 15B, and paragraphs 103 and 104 as
“example(s) of making available (i.e. presenting) offer(s) and of selection(s)
of actionable icon(s)).” Final Act. 27.
None of paragraphs 52, 53, 55, 56, 74, and 82 describe the selection or
display of information pertaining to offers or advertisements. See Altman
1 52 (describing display of user information “when the icon associated with
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the user is selected on the display” and displaying “names and status of
friends and/or places of interest or events”); 1 53 (describing displaying user
information in a pop-up display activated by a toggle switch or command);
155 (describing displaying a set of groups of friends); 1 55 (describing
displaying information relating to friends); 174 (describing displaying
description of an event); 1 82 (describing use of icons to specify the identity
and status of users and friends, places, and events).
In a separate embodiment, Altman describes the ability of an
advertiser to “directly tie an ad message with a user based directly on the
user’s activity in a location and time-based context.” Altman 1100. Such
advertisements may be in the form of “banner ad messages, advertisement
screens, sponsored maps, and the like” and the messages may be in the form
of “text, graphics, animation, logo, trademark or any other suitable format.”
Altman 1100. Altman describes that “[t]he advertising message or logo for
a product or service can also be incorporated into the map display provided
by the mobile application.” Altman 1101. Altman goes on to describe
various embodiments for the advertisement, including advertising messages
or logos, a banner ad displayed over a portion of the map display, or a
particular logo or graphic displayed when the point of interest corresponding
to the advertiser is present in the map. Altman 1101, Fig. 14B.
Even assuming the banner, advertising message, logo, or graphic
constitutes the claimed “offer icon,” the claim requires “a user’s selection of
the offer icon” and in response to that selection, “presenting . . . one or more
offers.” We do not see, and the Examiner has not directed us to, any
indication in Altman that any of the described advertising banners or
graphics may be selected by a user, and in response to that selection,
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presenting one or more offers. In another embodiment, cited by the
Examiner as an example of presenting an offer (Final Act. 27), Altman
describes a mechanism for an advertiser to deliver coupons, however Altman
describes that coupons are delivered in response to a user search, as an SMS
or alert when the user is near the merchant location, or as interstitial coupons
that are delivered during the loading screen of the mobile application.
Altman 1104. Therefore, Altman’s coupons do not appear to be delivered
based upon a user selection of any of the described advertising messages in
Altman.
To anticipate, a reference must disclose “within the four corners of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim.”
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008).
Here, the Examiner has combined multiple embodiments from Altman in
formulating the anticipation rejection. See id. (For anticipation, “‘[t]he
[prior art] reference must clearly and unequivocally disclose the claimed
[invention] or direct those skilled in the art to the [invention] without any
need for picking, choosing, and combining various disclosures not directly
related to each other by the teachings of the cited reference.”’
(parenthetically quoting In reArkley, 455 F.2d 586, 587 (CCPA 1972))).
Specifically, the Examiner relies on embodiments relating to the display of
user, friends, events, and location information to teach or suggest that certain
elements may be selected by the user in order to display further information,
but relies on the embodiments pertaining to advertisements and coupons to
disclose presentation of the offer. While “[s]uch picking and choosing may
be entirely proper in the maki ng of a 103, obviousness rejection ... it has no
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place in the making of a 102, anticipation rejection.” In reArkley, 455 F.2d
at 587—588.
Accordingly, based on the record before us, we do not sustain the
Examiner’s 35 U.S.C. § 102 rejection of independent claim 1, and
independent claims 9, 15, and 18 which recite commensurate limitations as
those discussed above, and, for the same reasons, dependent claims 2—8, 10-
14, 16, 17, 19, and 20.
DECISION
We affirm the Examiner’s 35 U.S.C. § 101 rejection of claims 1—20.
We reverse the Examiner’s 35 U.S.C. § 102 rejection of claims 1—20.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision to reject all of the
pending claims.
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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