Ex Parte Reudink

Patent Trial and Appeal Board

May 31, 2016

12429171 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/429,171 0412312009
61795 7590 06/02/2016
Nathaniel A, Gilder
Jensen & Puntigam, PS
1700 7th Ave., Suite 116, #271
Seattle, WA 98101
FIRST NAMED INVENTOR
DOUGLAS REUDINK
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.
MTCW000401 1482
EXAMINER
YESILDAG, LAURA G
ART UNIT PAPER NUMBER
2844
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
agilder@j ensenpuntigam. com
agilder@ gilderip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS REUDINK1
Appeal2015-001108
Application 12/429,171
Technology Center 2800
Before MICHAEL P. COLAIANNI, JEFFREY W. ABRAHAM, and
BRIAND. RANGE, Administrative Patent Judges.
ABRAHAM, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134(a) from the
decision of the Examiner finally rejecting claims 1, 3-15, and 17-'20. We
have jurisdiction pursuant to 35 U.S.C. § 6(b). We affirm.
BACKGROUND
Appellant's claimed invention relates to systems, methods, and
devices for allowing users to share real-time location information. Spec. i-f 5.
1 According to the Appeal Brief, the real party in interest is Empire
Technology Development, LLC. App. Br. 1.
Appeal2015-001108
Application 12/429,171
Claim 1 is illustrative, and is reproduced below from the Claims
Appendix (App. Br. 10):
1. A communications system configured to facilitate real-
time location information sharing among a plurality of
devices, comprising:
a network server configured to:
receive real-time location information associated with the
plurality of devices;
receive a real-time location sharing request from a first
one of the plurality of devices;
determine a set of devices from the plurality of devices,
the set of devices having real-time locations that are within a
predetermined proximity range from the first device;
before identifying devices within the determined set of
devices to the first device, send permission requests to the
determined set of devices, the permission requests
comprising requests to disclose real-time location
information to the first device, wherein the permission
requests may be granted or denied by users of the
determined set of devices;
receive one or more permissions from devices within the
determined set of devices in response to the permission
requests; and
after receiving the one or more permissions, send shared
device real-time location information to the first device, the
shared device real-time location information including real-
time device locations of devices that grant permission in
response to permission requests and not including real-time
device locations of devices that do not grant permission in
response to permission requests.
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Application 12/429,171
Appellant appeals the rejection of claims 1, 3-15, and 17-20
under 35 U.S.C. § 102(b) as anticipated by iCarpool,2 and the
rejection of claims 1, 3-15, and 17-20 under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter. 3
OPINION
Rejections under 35 U.S. C. § 102
Independent claim 1 recites, inter alia, a communications system
comprising a network server configured to receive a real-time location
sharing request from a first device and determine a set of devices having
real-time locations within a predetermined proximity range from the first
device. Claim 1 specifically requires, "before identifying devices within the
determined set of devices to the first device, send[ing] permission requests
to the determined set of devices, the permission requests comprising requests
to disclose real-time location information to the first device, wherein the
permission requests may be granted or denied by users of the determined set
of devices." Claim 1 further requires sending "shared device real-time
location information to the first device" only after receiving permission from
devices within the determined set of devices within a predetermined
proximity range of the first device.
The Examiner finds that iCarpool reads on the "permission request"
limitations of the claims based on iCarpool's disclosure of different privacy
2 iCarpool.com, Carpool Made Easy (Sept. 22, 2007),
http://web.archve.org/web/20070922030228/http://www.icarpool.com/en/
MainPage.aspx.
3 Designated as a new ground of rejection in the Examiner's Answer. Ans.
3-5.
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Application 12/429,171
settings available to an iCarpool user. Final Act. 5-8. Specifically, the
Examiner finds that selecting the "Do not show my trip to anyone" option on
the "Modify Route Preferences" page prevents a user from appearing as a
match for a particular trip when another user searches the website. Id. at 6
(noting that this is "a very strict privacy level so that users can be invisible
such they are not even identified as a possible match since they don't even
show up at all.") The Examiner further finds that when the "Do not show
my trip to anyone option" is not selected, a user's trip information, such as
start location, end location, and date/time of travel, is public and visible to
other iCarpool members, and may appear as a match for a trip when other
members search the website. Id. at 6-7 (citing iCarpool, 31 ).
The Examiner determines that the claims do not distinguish between
querying users manually by sending permission requests to each user and
automatically querying each user's settings/preferences to determine
whether the user gives permission to the requesting user. Ans. 9. Thus; the
Examiner finds that
iCarpool determines in real-time a set of devices from the
plurality of devices and sends permission requests (or automatic
queries) to confirm whether or not the user would like to reveal
his location information to the first-device, wherein permission
queries are sent out by the system and depending on the user's
profile settings, the system automatically confirms or denies the
query permission request. Thus, before revealing devices to the
first user device, iCarpool anticipates sending permission request
by checking the user's profile settings to all the determined
devices.
Id. at 10 (citing iCarpool, 14, 18).
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Application 12/429,171
Appellant argues that iCarpool's disclosure regarding privacy settings
does not correspond to sending permission requests to a determined set of
devices before identifying those devices to the first device. App. Br. 7.
Specifically, Appellant contends that "sending 'permission requests to the
determined set of devices' as recited in [Appellant's] claims, is different
from 'checking the user's profile settings' as argued in the Examiner's
Answer," and that the Examiner's position is "more appropriate for
rejections under 35 USC§ 103 than for rejections under 35 USC§ 102."
Reply Br. 9. Appellant further argues that the Examiner failed to cite to a
specific portion of iCarpool to support the Examiner's finding that iCarpool
always automatically checks to see whether the user's preferences/settings
grants the permission request. Id.
We are persuaded by Appellant's arguments.
According to the Specification,
[t]he permission request may take a number of forms. It could
be a call from an automated system, for example orally asking
the recipient for approval to disclose the recipient's location. It
could also be a text message or instant message requesting the
recipient to perform some act, such as pushing a particular button
on a mobile device, to indicate permission or no permission to
disclose the recipient's location.
Spec. i-f 26. The Specification continues to discuss receiving a response
(either granting or denying permission) from the devices that were sent a
permission request, and processing the response to determine whether or not
to send device location information from a particular device to the
requesting device. Id. i-f 27. This description mirrors the language in claim 1
regarding sending permission requests to devices, receiving a response to the
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Application 12/429,171
request, and sharing location information only for those devices which
granted permission in response to the permission request. App. Br. 10.
The Specification also explains that "[i]n the alternative, a user might
wish to always disclose his or her location without being asked for
permission, or might wish to never disclose his or her information to certain
users." Id. i-f 28 (emphasis added). This type of system would have "a
mechanism for storing user preferences on a computer-readable medium
350, allowing users to specify when their information may always be shared
or never be shared." Id.; see also id. at Fig. 3c, i-f45 ("For example, a taxi
service may wish to have sharing permission stored and automatically
accessed, rather than being queried for permission each time a prospective
rider is available.")
The Specification thus clearly delineates between embodiments of the
claimed inventions that operate by sending permission requests and
rece1vmg responses, and those that operate based on accessing stored
permission preferences. This is consistent with Appellant's argument that
"sending permission requests" is different from checking a user's profile
setting. Furthermore we note that there is no express language in the claims
that corresponds to the alternative embodiment described in the
Specification wherein user preferences are stored and automatically accessed
"rather than [the user] being queried for permission each time a prospective
rider is available" (id. f 45), such that a user's location information can be
shared "without being asked for permission" (id. f 48). The evidence of
record thus undermines the Examiner's determination that the claims do not
distinguish between querying users manually by sending permission requests
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to each user and automatically querying each user's settings/preferences to
determine whether the user gives permission to the requesting user. Ans. 9.
According to iCarpool, a user's trip information (start location, end
location, and date/time of the journey) is public and visible to other iCarpool
members unless a user selects the "Do not show my trip to anyone" option.
iCarpool, 14, 31. Selecting the "Do not show my trip to anyone" option
"prevent[ s] you from showing up as a match for that particular route when
other members search the website." Id. at 14. Therefore, as the Examiner
points out, iCarpool does appear to automatically perform some type of
query of each user's settings/preferences to determine whether the user gives
permission to show up as a match to a requesting user. As discussed above,
however, the claims are directed to a system that comprises a network server
configured to operate differently, namely by receiving real-time location
information, sending permission requests to devices seeking permission to
disclose the real-time information; receiving responses to those requests; and
sharing location information only for those devices which granted
permission in response to the permission requests. The Examiner has not
directed us to adequate evidence within iCarpool sufficient to determine that
iCarpool' s system discloses these limitations of claim 1. 4 As a result, we
reverse the Examiner's rejection of claim 1, and claims 3-11, which depend
therefrom, under 35 U.S.C. § 102 as anticipated by iCarpool.
Independent claim 12 recites a "computing device configured to
facilitate real-time location information sharing between a user of the
4 We agree with Appellant's statement that the Examiner's position is "more
appropriate for rejections under 35 USC§ 103 than for rejections under 35
USC§ 102." Reply Br. 9.
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computing device and a remote device," and independent claim 18 recites a
"method for facilitating location information sharing among a plurality of
devices." App. Br. 12-13. Both of these independent claims contain
limitations directed to permission requests similar to those included in claim
1. Therefore, for the same reasons discussed above in connection with claim
1, we reverse the Examiner's rejection of independent claims 12 and 18, as
well as claims 13-15, 17, and 19-20, which depend therefrom, under 35
U.S.C. § 102 being as anticipated by iCarpool.
Re} ection under 3 5 U.S. C. § 101
The Examiner has rejected claims 1, 3-15, and 17-20 under 35 U.S.C.
§ 101 as being directed to ineligible subject matter. Ans. 3-5. Specifically,
the Examiner finds that
[t]he claims are directed towards the concept of implementing a
ride-sharing service (carpooling) by facilitating real-time
location information sharing between a plurality of users, which
is considered an abstract idea inasmuch as such permissive
location sharing is considered a concept of organizing human
activity by ultimately providing a list of matching users to a
user.
Id. at 4. The Examiner further finds that the claims do not recite limitations
that add significantly more than the abstract idea, as they merely recite
instructions for implementing the abstract idea of sharing location
information in real-time on a computer/mobile device, and require no more
than a general computer to perform generic functions that constitute
conventional activities previously known in the industry. Id. at 5.
Appellant argues that this rejection is improper. Reply Br. 2-7.
Appellant contends that the Examiner "mischaracterizes" the claims in
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determining that they are directed to an abstract idea, and "over-generalizes"
the claims in determining that they do not add "significantly more" than the
abstract idea. Reply Br. 2.
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: "laws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Bank Int'!, 134 S.Ct. 2347, 2354 (2014).
Injudging whether independent claims 1, 12, and 18 fall within the
excluded category of abstract ideas, we are guided in our analysis by the
Supreme Court's two step framework, described in Mayo and Alice. Id. at
2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1296-97 (2012)). In accordance with that framework, we first
determine whether the claim is "directed to" a patent-ineligible abstract idea.
If so, we then consider the elements of the 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 of the
abstract idea. Id. This is a search for an "inventive concept," an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. The Court also stated
that "the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention." Id. at 2358.
In applying the framework set out in Alice, and as the first step of our
analysis, we agree with the Examiner that independent claims 1, 12, and 18
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are directed to a patent-ineligible abstract idea, namely, the concept of
organizing information and human activity, in the form of sharing real-time
location information. Ans. 4 (characterizing the invention as "providing a
matching list of users to a user").
Appellant argues that claims 1,5 12,6 and 18 are not directed to an
abstract idea, but are instead directed to a communication system, computing
device, and method, respectively, that are "configured to facilitate real-time
location information sharing among a plurality of devices in a specific
manner." Reply Br. 3, 6. Appellant points out that the claims each include
additional limitations directed to permission requests. Id. at 3, 6. Appellant
further argues that the Examiner erred by stating that these claims are
directed towards "the concept of implementing a ride-sharing service
(carpooling)." Id. at 3, 5; Ans. 4.
Appellant's arguments are not persuasive. Appellant's own
characterization of the subject matter of claims 1, 12, and 18 as a system,
device, or method configured to facilitate real-time location information
sharing supports the Examiner's finding that the claims are directed to the
abstract idea of organizing and sharing information. 7 And although the
5 Appellant states that claims 1, 3-11, and 18-20 stand or fall together under
35 U.S.C. § 101, and does not separately argue the patentability of any
dependent claim.
6 Appellant separately argues the patentability of independent claim 12, and
states that claims 12-15 and 17 stand or fall together under 35 U.S.C. § 101.
Appellant and does not separately argue the patentability dependent claims
13-15 or 17.
7 We note that Appellant's recitation of additional limitations in claims 1,
12, and 18 is more relevant to the second step of the analysis according to
the framework set forth in Alice, discussed below.
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Examiner does refer to carpooling services in the context of claims 1, 12,
and 18, we do not find this to be a reversible error in view of the Examiner's
additional finding that "permissive location sharing is considered a concept
of organizing human activity by ultimately providing a list of matching users
to a user." Ans. 4.
In the second step of our analysis, we consider whether additional
elements transform the nature of the claim into a patent-eligible application
of the abstract idea, e.g., whether the claim does more than simply
implement the abstract idea over the Internet, using generic computer
components. We conclude that it does not.
We agree with the Examiner's finding that
it should be noted the limitations of the current claims can
merely be performed by a generically recited and/or general
purpose computer/processor. The limitations are merely
instructions to implement the abstract idea of receiving location
data and a user request to determine other users that are in
proximity and sharing location data in real-time on a
computer/mobile device and require no more than a general
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known to the industry.
Ans. 5. For example, in claims 1, 12, and 18, the recited elements of a
communications system, network server, communication interface, and
various devices are generic electronic components that are well-understood,
routine, and conventional in the industry. Alice, 134 S.Ct. at 2358 ("[I]f a
patent's recitation of a computer amounts to a mere instruction to
'implemen[t]' an abstract idea 'on ... a computer,' Mayo, supra, at __ , 132
S.Ct., at 1301, that addition cannot impart patent eligibility.")
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Appellant argues that the claims recite an improvement to the field of
"networked communications systems which support communications among
a plurality of devices," and specifically refers to the fact that the claims
require sending permission requests to the determined set of devices before
identifying those devices to the first device. Reply Br. 4, 7. We are not
persuaded by Appellant's argument that the permission request limitations
constitute an improvement to the field of networked communications
sufficient to transform the nature of the claim into a patent-eligible
application of the abstract idea. Requesting permission from a person before
sharing information about that person with another is a well-understood,
routine, and conventional activity. 8 See, e.g., Ans. 5; Spec. i-f 2 ("In addition,
privacy and security concerns may inhibit users from sharing their current
location and other personal information with other users if they believe they
would not have control over the ways in which their personal information
might be used."). Moreover, the notion of obtaining permission prior to
sharing information is, in itself, part of an abstract method of communicating
information and organizing human activity. We therefore find that
8 Our reversal of the Examiner's rejection of claims 1, 3-15, and 17-20
under 35 U.S.C. § 102(b) as anticipated by iCarpool should not be
interpreted as a determination that the general concept of seeking permission
from a user before sharing that user's information was not known in the art.
Instead, as explained above, our reversal was based on the Examiner's
failure to demonstrate that iCarpool disclosed a method or system
configured to operate as required by the claims, namely by sending
permission requests to devices, receiving responses to those requests, and
sharing location information only for those devices which granted
permission in response to the permission requests.
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Appellant's claims "do no more than require a generic computer to perform
generic computer functions." Alice, 134 S.Ct. at 2359.
Having considered the elements of claims 1, 12, and 18 both
individually and as an ordered combination, we determine that the additional
elements fail to transform the nature of claims 1, 12, and 18 into a patent-
eligible application of the abstract idea of sharing location information, and
that the combination of elements in each of claims 1, 12, and 18 is
insufficient to ensure that the claims in practice amount to significantly more
than a claim to the abstract idea itself. Accordingly, we sustain the
Examiner's rejection of claims 1, 3-15, and 17-20 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.
CONCLUSION
For the reasons set forth above, we reverse the Examiner's rejection of
claims 1, 3-15, and 17-20 under 35 U.S.C. § 102 as anticipated by iCarpool,
and affirm the Examiner's rejection of claims 1, 3-15, and 17-20 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter.
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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