Ex Parte Sunkada

Patent Trial and Appeal Board

Sep 12, 2017

14093443 (P.T.A.B. Sep. 12, 2017)

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.
14/093,443 11/30/2013 Gururaj Sunkada 20100099C1 6936
7590 09/14/201725537
VERIZON
PATENT MANAGEMENT GROUP
1320 North Court House Road
9th Floor
ARLINGTON, VA 22201-2909
EXAMINER
POND, ROBERT M
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
09/14/2017 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 GURURAJ SUNKADA
Appeal 2016-000218
Application 14/093,4431
Technology Center 3600
Before NINA L. MEDLOCK, SHEILA F. McSHANE, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 1—13, 15—17, and 19-21. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appellants identify Verizon Communications Inc. as the real party in
interest. Appeal Br. 3.
Appeal 2016-000218
Application 14/093,443
ILLUSTRATIVE CLAIM
1. A method comprising:
automatically providing, by a product marketing system
for display on an access device in response to an image
associated with a product being captured by the access device, a
graphical user interface including a set of tools configured to
facilitate a user definition of a product search request, the set of
tools including at least one of a keyword parameter tool and a
category parameter tool;
receiving, by the product marketing system by way of the
graphical user interface, the user definition of the product
search request, the product search request including at least one
of a keyword search parameter and a category search
parameter;
searching, by the product marketing system, a repository
of product data associated with one or more products to identify
at least one match to the image associated with the product and
the product search request, the product data including product
image data representative of one or more images associated
with the one or more products;
generating, by the product marketing system and based
on the at least one match, search results data comprising
product information for at least one product; and
providing, by the product marketing system, the search
results data for presentation to a user of the access device.
REJECTION
Claims 1—13, 15—17, and 19-21 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
ANALYSIS
According to the rejection, applying the first of the two analytical
steps articulated in Alice Corp. Pty. Ltd. v. CLS Bank International,
134 S. Ct. 2347, 2355 (2014), claims 1—13, 15—17, and 19-21 are directed to
searching for products, which the Examiner regards as an abstract idea,
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Appeal 2016-000218
Application 14/093,443
because it is both a fundamental economic practice and a method of
organizing human activity (by providing a service for a user to receive
product information based on the user’s image data and keyword
parameters). Final Action 5. As to the second Alice step, the Final Office
Action states that the claimed elements — whether individually or in
combination — recite the execution of generic, well-understood, routine,
and conventional computer functionalities, such that the claims do not
amount to significantly more than the abstract idea itself. Id. at 6.
According to the Examiner, the limitations of claim 1 do not meaningfully
limit the claim beyond the abstract idea of searching for products and, in
practical terms, preempt the abstract idea of searching for products. See
Answer 7, 9—10.
For the following reasons, the Appellant argues persuasively for error
in the rejection.
Laws of nature, natural phenomena, and abstract ideas are deemed not
patent-eligible, because they are regarded as the basic tools of scientific and
technological work, such that including them within the domain of patent
protection would risk inhibiting future innovation that might otherwise build
upon these fundamental pieces. See Association for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2113 (2013) (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293, 1301
(2012)). Alice articulates a two-step framework for distinguishing between
patents that claim the building blocks of human ingenuity — thus, risking
disproportionately tying up the underlying ideas — and those patents that
integrate the building blocks into something more, thus posing no
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Application 14/093,443
comparable risk of preempting all applications of these fundamental ideas.
Alice, 134 S. Ct. at 2355—56 (citing Mayo, 132 S. Ct. at 1294, 1303).
Leaving aside whether the rejection properly characterizes claim 1 as
directed to the proposed abstract idea of searching for products, we are
persuaded that the rejection does not adequately explain why the claim fails
to recite elements amounting to “significantly more” than the proposed
abstract idea itself. In particular, as the Appellant contends (see Appeal Br.
18—20; see also Reply Br. 9), the rejection does not adequately explain why
broad idea of searching for products is not meaningfully limited by claim 1 ’s
features of capturing a product image with an access device, receiving a
product search request (having both a keyword search parameter and a
category search parameter), and matching product data (that includes
product image data) with the captured product image and the recited product
search request.
According to the rejection, these claim elements constitute nothing
more than “generic computer functionalities which are well-understood,
routine and conventional activities previously known to the industry.” Final
Action 6; see also Answer 6, 8—10. However, “an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces,” even if these individual pieces constitute generic
computer structures. BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). Indeed, here, the
Appellant contends that the elements, “especially considered in
combination,” provide “unconventional steps that confine the claim to a
particular useful application of ‘searching for products.’” Reply Br. 9 (citing
Spec. 117).
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Appeal 2016-000218
Application 14/093,443
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 — and, for similar reasons independent claims 15
and 19 and dependent claims 2—13, 16, 17, 20, and 21 —under 35 U.S.C.
§101.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—13, 15—17,
and 19-21 under 35 U.S.C. § 101.
REVERSED
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