Ex Parte Scholes et al

Patent Trial and Appeal Board

Feb 15, 2019

13733104 (P.T.A.B. Feb. 15, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/733, 104 01/02/2013
95084 7590 02/20/2019
Loza & Loza, LLP
Tyler Barrett, Esq.
305 N. Second Avenue #127
Upland, CA 91786
FIRST NAMED INVENTOR
Wayne Gary James Scholes
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.
RTM-1008 8058
EXAMINER
ANDREI, RADU
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/20/2019 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):
tyler@lozaip.com
docketing@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE GARY JAMES SCHOLES,
JON FRANKLYN BUTLER, and DAVID ALAN HUBBARD
Appeal 2017-010501 1
Application 13/733,1042
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 7-13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
March 23, 2017) and Reply Brief ("Reply Br.," filed August 2, 2017), and
the Examiner's Answer ("Ans.," mailed June 2, 2017) and Non-Final Office
Action ("Non-Final Act.," mailed September 22, 2016).
2 Appellants identify Really Epic Dog, Ltd. as the real party in interest.
App. Br. 2.
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CLAIMED INVENTION
Appellants' claimed invention "relates generally to systems and
methods for advertising, advertising related activities, and promoting
products or services between multiple sources and multiple recipients" and
in particular to "providing a participant with an adaptive advertising
experience through interactive feedback of the participant" (Spec. ,r 2).
Claim 7, reproduced below with bracketed notations added, is the sole
independent claim, and representative of the claimed subject matter:
7. A method for adapting advertising material, the
method comprising:
[(a)] collecting information about a participant from a
data acquisition device configured as a visual recognition device
associated with a participant access point;
[ (b)] analyzing the collected information;
[ ( c)] selecting advertising material based on the
analyzation of the collected information;
[ ( d)] gathering additional information about the
participant;
[ ( e)] identifying one or more patterns from the collected
information and the gathered additional information; and
[ ( f)] adapting advertising content presented to a
participant according to the identified patterns.
REJECTIONS
Claims 7-13 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 7-13 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Kasargod et al. (US 2012/0041825 Al, pub. Feb. 16, 2012)
("Kasargod") and Mori et al. (US 2012/0046857 Al, pub. Feb. 23, 2012)
("Mori").
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ANALYSIS
Patent-Ineligible Subject Matter
Appellants argue the pending claims as a group (App. Br. 4---6). We
select independent claim 7 as representative. The remaining claims stand or
fall with claim 7. See 37 C.F.R. §4I.37(c)(l)(iv).
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: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "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., 573 U.S. at 217.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "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. (quoting Mayo,
566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
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or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined, and we agree, that the claims are directed to "adaptive
marketing [i.e., advertising] using interactive feedback," i.e., to a method of
organizing human activity and, therefore, to an abstract idea (Non-Final
Act. 3). The Examiner also determined that the claims do not include
limitations that are "significantly more" than the abstract idea because the
claims do not include improvements to another technology or technical field;
improvements to the functioning of the computer itself; apply the judicial
exception with, or by use of a particular machine; effect a transformation or
reduction of a particular article to a different state or thing; add a specific
limitation other than what is well-understood, routine, and conventional in
the field; add unconventional steps that confine the claim to a particular
useful application; or contain other meaningful limitations beyond generally
linking the use of the judicial exception to a particular technological
environment (id. at 3-6).
Appellants do not provide any substantive challenge to the
Examiner's determination that claim 7 is directed to an abstract idea.
Instead, Appellants assert that "even if the Examiner properly concludes that
the claims are directed to an abstract idea, which Appellant [sic] does not
concede, the claims are directed to significantly more than an abstract idea"
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(App. Br. 5 (emphasis added)). In this regard, Appellants note that claim 7
recites, inter alia, "collecting information about a participant from a data
acquisition device configured as a visual recognition device associated with
a participant access point," and assert that a visual recognition device
collects more than simply "interactive feedback"; "[i]nstead, the visual
recognition device enables collection of information relating to passive data
that the participant may not even be aware is being collected" (id.). Pointing
to paragraphs 18, 24, and 25 of the Specification, Appellants, thus, observe
that the Specification discloses that the visual recognition device "monitors
the actions of a consumer as [he or she] move[ s] through a store," e.g.,
capturing images of the consumer browsing a particular magazine in a
magazine display, and that the device also "provides information about how
a participant is dressed" and "gathers information about the consumer's age
and gender - features that Appellants maintain "are significantly more than
any alleged understood, routine, and conventional use of interactive
feedback" and "add unconventional steps that confine the claim to a
particular useful application" (id.). Appellants argue that "such features
were not realistically attainable prior to the present application" (i.e.,
employing sales people to watch and follow customers throughout a store to
collect information was not feasible, e.g., because it risks creating a
uncomfortable situation where a customer would feel as ifhe or she were
being stalked), and that these features "facilitate a system that was
previously not possible in a real-world environment, and accordingly was
not conventional in the field" (id. at 6).
Appellants' arguments are not persuasive at least because we find no
indication in the Specification, nor do Appellants point us to any indication,
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that "collecting information about a participant," as recited in claim 7,
requires any specialized or inventive computer components, invokes any
allegedly inventive programming, or that the claimed step is performed
using other than a generic component operating in its normal, expected, and
routine manner. In fact, in paragraph 18, to which Appellants refer, the
Specification describes that the data acquisition device, i.e., the visual
recognition device, may be a camera having image recognition software,
e.g., a security camera, located in a retail store (Spec. ,r 18). Collecting
information using a generic visual recognition device, e.g., a camera, is not
the type of unconventional feature that Alice envisioned as imparting patent
eligibility. Cf Alice Corp., 573 U.S. at 223 ("[T]he 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.") (quoting Mayo, 566 U.S.
at 72 (internal quotation marks omitted)).
"Collecting information about a participant from a data acquisition
device configured as a visual recognition device associated with a
participant access point" is, moreover, part of the abstract idea itself; it is not
an additional element to be considered when determining whether claim 7
includes additional elements or a combination of elements that is sufficient
to amount to significantly more than the judicial exception.
Addressing step two of the Mayo/Alice framework in Berkheimer, the
Federal Circuit held that the question of whether a claim element or
combination of elements is well-understood, routine, and conventional to a
skilled artisan in the relevant field is a question of fact. Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). Yet, it could not be clearer from
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Alice, that under step two of the Mayo/Alice framework, the elements of
each claim are considered both individually and "as an ordered
combination" to determine whether the additional elements, i.e., the
elements other than the abstract idea itself, "transform the nature of the
claim" into a patent-eligible application. Alice Corp., 573 U.S. at 217. See
Mayo, 566 U.S. at 72-73 (requiring that "a process that focuses upon the use
of a natural law also contain other elements or a combination of elements,
sometimes referred to as an 'inventive concept,' sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself' ( emphasis added)). In other words, the inventive concept
under step two of the Mayol Alice test cannot be the abstract idea itself:
It is clear from Mayo that the "inventive concept" cannot be the
abstract idea itself, and Berkheimer ... leave[ s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged "inventive concept" is the abstract idea.
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring). See also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290-91 (Fed. Cir. 2018) ("Our precedent has consistently employed this
same approach. If a claim's only 'inventive concept' is the application of an
abstract idea using conventional and well-understood techniques, the claim
has not been transformed into a patent-eligible application of an abstract
idea.").
The only claim element in claim 7 beyond the abstract idea is the
claimed "data acquisition device configured as a visual recognition device,"
i.e., a generic component, e.g., a camera having image recognition software
(see, e.g., Spec. ,r 18). Appellants cannot reasonably contend, nor do they,
that there is a genuine issue of material fact regarding whether operation of
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the claimed data acquisition device is well-understood, routine, or
conventional, where, as described above, there is nothing in the
Specification to indicate that the operations recited in claim 7 require any
specialized hardware or inventive computer components or that the claimed
invention is implemented using other than generic components operating in
their routine and ordinary capacity.
Appellants also misapprehend the controlling precedent to the extent
that Appellants maintain that the claims are patent-eligible because a visual
recognition device has not previously been used to monitor the actions of a
consumer moving through a store, i.e., that the claims allegedly are novel
and/or non-obvious (see, e.g., Reply Br. 3 ("These features are not simply
being automated or computerized, but are being made possible for the first
time by the present invention. These are unconventional features that are
unique and useful and valuable in the art, and are a credit to the inventors for
their valuable contributions.")). Neither a finding of novelty nor a non-
obviousness determination automatically leads to the conclusion that the
claimed subject matter is patent-eligible. Although the second step in the
Mayo/Alice framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "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., 573 U.S. at 217-18
( citation omitted). "Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry." Ass 'n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
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ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188-89 (1981) ("The 'novelty' of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.").
The Examiner determined here, as described above, that the claims do
not include improvements to another technology or technical field,
improvements to the functioning of the computer itself, or contain other
meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment (Non-Final Act. 3---6).
We find nothing in the Specification, nor do Appellants direct us to anything
in the Specification, to indicate otherwise.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 7 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of claim 7, and claims 8-13, which fall with
claim 7.
Obviousness
By way of background, Kasargod is directed to a method and
apparatus for triggering the delivery of interactive advertisements to users'
devices, e.g., wireless mobile devices, based on the users' exposure to a non-
interactive advertisement, e.g., an advertisement on a publicly displayed
billboard, a video advertisement, etc. (Kasargod Abstract). Kasargod
discloses that rather than merely using contextual information limited to user
location or user profile information, the apparatus and methods correlate one
or more behavioral context parameters to exposure, including exposure
duration, to assess the user's interest in the non-interactive advertisement
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and, thus, the user's suitability for receiving a corresponding interactive
advertisement (id.).
Mori is directed to a visual recognition area estimation device and
driving support device (Mori ,r 1 ), and describes that in the related art, a
warning device warns a driver about obstacles existing around a vehicle; the
device determines whether the driver recognizes the obstacles by comparing
the position of the detected obstacles with the direction of the driver's eyes
and warns the driver about any obstacles, which are determined not to be
recognized by the driver (id. ,r 2). Mori discloses that because the prior
device correlates the positions of the obstacles with the direction of the
driver's eyes, when a plurality of obstacles exists around a vehicle, the
throughput of the decision processing becomes large and processing in real
time becomes difficult. Mori purportedly solves this problem using a visual
recognition area estimation device that calculates the visual recognition area
recognized by the driver based on the driver's eyes, and estimates a time
series visual recognition area as the area currently recognized by the driver
based on histories of a plurality of visual recognition areas calculated from
the past to the present for a predetermined time (id. at Abstract). Mori
discloses that by estimating the time series visual recognition area, also
including the past visual recognition area, the area currently recognized by
the driver can be accurately estimated (id.).
In rejecting claim 7 under§ 103(a), the Examiner cites Kasargod as
disclosing substantially all of the limitations of claim 7, including collecting
information about a participant and analyzing the collected information
(Non-Final Act. 6-7). The Examiner, however, acknowledges that Kasargod
does not disclose "a data acquisition device configured as a visual
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recognition device associated with [a] participant access point," and the
Examiner cites Mori to cure the deficiency of Kasargod (id. at 7 (citing Mori
Abstract, ,r 48)).
The Examiner explains, "[i]n the instant case, Kasargod evidently
discloses collecting, analyzing information and adapting content. Mori is
merely relied upon to illustrate the functionality of a visual recognition
device in the same or similar context" (id. at 8). The Examiner then
concludes, "since the elements disclosed by Kasargod and Mori would
function in the same manner in combination as they do in their separate
embodiments, it would be reasonable to conclude that their resulting
combination would be predictable. Accordingly, the claimed subject matter
is obvious over Kasargod/Mori" (id.).
Addressing the rejection in the Appeal Brief, Appellants assert that
Kasargod is "limited to teaching that exposure determination to a non-
interactive advertisement is determined based on the user's distance from the
advertisement according to GPS data, and the duration the user remains
within a predefined distance," i.e., that Kasargod, as the Examiner
acknowledges, does not disclose or suggest "collecting information about a
participant from a data acquisition device configured as a visual recognition
device associated with a participant access point" and "analyzing the
collected information," as recited in claim 7 (App. Br. 9). And Appellants
argue that Mori does not cure the deficiency of Kasargod because Mori
"simply discloses imaging a face of a driver, particularly the range including
both eyes, and utilizing that information to calculate a visual recognition
area recognized by the driver in a certain time" (id. at 10 ( citing Mori ,r,r 43
and 48)).
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Responding to Appellants' arguments, the Examiner takes the position
in the Answer that exposure determiner 306 in Kasargod "reds [sic] on [the
claimed] data acquisition device with visual capability" (Ans. 6 ( citing
Kasargod ,r 54, Fig. 4 ( element 401) ). The Examiner also references
Figure 14 (element 814) 3 and paragraph 110 ofKasargod, asserting
Kasargod discloses that "' a surveillance camera system 814 with face
recognition capability recognizes the user 802,' which reads on collecting
information based on visual recognition" (id. at 12).
We have reviewed the cited portions of Kasargod, on which the
Examiner relies, and we agree with Appellants that there is nothing there
that discloses or suggests that exposure determiner 306 is a "data acquisition
device with visual capability," as called for in claim 7 (Reply Br. 4).
Kasargod merely discloses that "determiner 306 ... is able to determine
exposure to a non-interactive advertisement 308" (Kasargod ,r 48), and that
the determiner may get location information from a satellite-based or
terrestrial network-based position-location system, and correlate the location
with the known locations of the advertisements within a certain range of the
location in order to determine exposure duration (id.).
Kasargod discloses, in paragraph 110, that a surveillance camera
system 814 with face recognition capability recognizes a user 802, e.g., by
accessing an employee biometric database 816. But, we agree with
Appellants that Kasargod does not disclose or suggest that this surveillance
camera system is connected in any way to the exposure determiner; nor is
any such connection shown in Figure 14 (Reply Br. 4).
3 We understand the Examiner to be referencing Figure 14 rather than
Figure 12 inasmuch as element 814 does not appear in Figure 12.
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The Examiner has not established that a person of ordinary skill at the
time of Appellants' invention would have had an apparent reason to modify
Kasargod, which is concerned with determining a user's interest in an
advertisement based on the user's distance from the advertisement and the
duration the user remains within a predefined distance, to use Mori' s visual
recognition device to collect information about the user - a device that, as
Appellants observe, Mori merely discloses is used to image "a face of a
driver to estimate an area recognized by the driver based on the eyes of the
driver, and to estimate the caution state of the driver" (App. Br. 8 ( citing
Mori ,r 8)). As such, the Examiner has not established a prima facie case of
obviousness. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(holding that a prima facie case of obviousness requires showing that one of
ordinary skill in the art would have had both an apparent reason to modify
the prior art and predictability or a reasonable expectation of success in
doing so).
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 7 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the rejection of dependent claims 8-13.
DECISION
The Examiner's rejection of claims 7-13 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 7-13 under 35 U.S.C. § 103(a) is
reversed.
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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)(l )(iv).
AFFIRMED
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