Ex Parte Tannenbaum

Patent Trial and Appeal Board

Oct 23, 2017

13272853 (P.T.A.B. Oct. 23, 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.
13/272,853 10/13/2011 David H. Tannenbaum 46816/0321 1007
105758 7590 10/25/2017
Laurence & Phillips IP Law LLP
7327 SW Barnes Road #521
Portland, OR 97225-6119
EXAMINER
FADOK, MARK A
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
mphillips @ lpiplaw. com
docket @ lpiplaw. com
mphillips_patlaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID H. TANNENBAUM
Appeal 2016-0043561
Application 13/272,8532
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
1 Our Decision references Appellant’s Specification (“Spec.,” filed Oct. 13,
2011), Appeal Brief (“Appeal Br.,” filed Sept. 11, 2015), and Reply Brief
(“Reply Br.,” filed Mar. 21, 2016), the Examiner’s Final Office Action
(“Final Act.,” mailed Feb. 12, 2015) and Answer (“Ans.,” mailed Jan. 22,
2016), and the transcript of the oral hearing held on September 19, 2017
(“Tr.”).
2 Appellant identifies Fantod Audio Limited Liability Company, “which is
affiliated with Intellectual Ventures Management LLC,” as the real party in
interest. Appeal Br. 1.
Appeal 2016-004356
Application 13/272,853
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s
decision to reject claims 19—22 and 29-40. We have jurisdiction under
§ 6(b). We AFFIRM.
SUBJECT MATTER ON APPEAL
The invention “relates to the delivery of merchandise from a
merchandise provider to a merchandise seeker and more particularly to a
system and method for allowing a merchandise provider to identify
merchandise seekers.” Spec. 12. Claims 19, 29, and 34 are the independent
claims on appeal. Claim 19, reproduced below, is illustrative of the claimed
subject matter:
19. A method of providing to a user information pertaining to
merchandise available at geographically diverse locations, said
method comprising:
initiating, by a system, access to a device under control of
said user to determine if an identity associated with the system is
stored at the device, said system being associated with a plurality
of geographically diverse locations;
determining a current location of said device under control
of said user; and
if the identity is stored at the device, accessing, by the
system, merchandise information based on a location associated
with both the system and said current location of said device
under control of said user.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Souissi et al. (“Souissi”) US 6,091,959 July 18, 2000
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Calvert US 6,526,275 B1 Feb. 25,2003
Dahod et al. (“Dahod”) US 6,574,608 B1 June 3, 2003
Richton US 6,650,902 B1 Nov. 18,2003
“Gnutellal—14,” Information Disclosure Statement by Applicant dated
Oct. 13, 2011 and “Gnutellal5—19,” Information Disclosure Statement by
Applicant dated Dec. 12, 2011 (collectively “Gnutella”).
REJECTIONS
The Examiner rejects the claims on appeal as follows:
claims 19-22 and 29-40 under 35 U.S.C. § 101 as non-statutory
subject matter;
claims 19-21, 29—31, 34—36, 39, and 40 under § 103(a) as
unpatentable over Calvert, Gnutella, and Dahod;
claim 22 under § 103(a) as unpatentable over Calvert, Gnutella,
Dahod, and Souissi;
claims 32 and 37 under § 103(a) as unpatentable over Calvert,
Gnutella, Dahod, and Official Notice; and
claims 33 and 38 under § 103(a) as unpatentable over Calvert,
Gnutella, Dahod, and Richton.
ANALYSIS
Non-Statutory Subject Matter
In rejecting the claims under 35 U.S.C. § 101, the Examiner applies
the two-step framework set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1296—97 (2012) and
reiterated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347, 2355 (2014), which considers, in the first step, whether the claims are
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directed to a patent-ineligible concept, e.g., an abstract idea, and, if so,
considers, in the second step, whether the claims, individually and as an
ordered combination, recite an inventive concept—an element or
combination of elements sufficient to ensure the claims amount to
significantly more than the abstract idea and transform the nature of the
claims into a patent-eligible concept. More specifically, under the first step
of the analysis, the Examiner finds the claims are directed to “providing
advertisements based on a location of the device,” which is both a method of
organizing human activity and an idea of itself, and, therefore, an abstract
idea. Ans. 3. Under the second step, the Examiner finds the claims do not
recite additional limitations amounting to significantly more than the
abstract idea because the claims amount to a mere instruction to apply the
abstract idea using some unspecified, generic computer. Id. at 7.
As an initial matter, we are unpersuaded of error by Appellant’s
argument that the claims do not preempt all applications involving a location
of a consumer. Appeal Br. 11—13. Although preemption may be the
concern driving the exclusion of abstract ideas from patent-eligible subject
matter, preemption is not the test for eligibility. “The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice,
134 S. Ct. at 2354).
Turning to the two-step analysis for patent-eligibility under § 101,
Appellant argues the Examiner’s characterization of the claims pursuant to
the first step is disconnected from the claim language because the claims
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require a location of a device. Appeal Br. 6—8; Reply Br. 1. Appellant’s
argument is not persuasive of error because the Examiner characterizes the
claims as “providing advertisements based on a location of the device,”
which takes into account the location of the device. Ans. 3.
Appellant similarly argues that determining a location of a device is
not an abstract idea. Appeal Br. 8; Reply Br. 1—2. We disagree.
As the Examiner explains in the Final Office Action, the concept of
delivering targeted location-based information is an abstract idea.
Final Act. 3. Indeed, the Federal Circuit has held that tailoring content
based on a user’s location is an abstract idea. Intellectual Ventures ILLCv.
Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015). The issue
here is whether providing information based on a location of a device, as
opposed to a location of a user, falls outside the realm of abstract ideas. We
find it does not. Our reviewing court has held concepts involving devices to
be abstract ideas. For example, in Affinity Labs of Texas, LLC. v.
Amazon.com, Inc., the Federal Circuit determined that the concept of
delivering user-selected media content to portable devices is an abstract idea.
838 F.3d 1266, 1269 (Fed. Cir. 2016). In doing so, the court explained that
the claims are directed to the use of conventional or generic technology
without any indication that the invention reflects an inventive solution to a
problem associated with the technology. Id.
Fike the claims in Affinity Labs, there is no indication that the claimed
device is something other than a generic computer component. For example,
Appellant’s Specification describes PC 21 as “any type of processor and/or
memory, including a telephone, pager, portable computer, personal
assistants, and the like.” Spec. 136. The present claims also do not address
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a problem associated with the device. Accordingly, Appellant does not
apprise us of error in the Examiner’s finding that “providing advertisements
based on a location of the device” is an abstract idea.
After considering Appellant’s arguments pursuant to the first step of
the patent-eligibility analysis, we are not persuaded that the Examiner erred
in finding the claims are directed to the abstract idea. Accordingly, we turn
to Appellant’s arguments under the second step.
Appellant argues the claims amount to significantly more than the
abstract idea because determining a location of a device is not generic data
processing. Appeal Br. 9—10; Reply Br. 2—3. We find this argument
unpersuasive under the second step for essentially the same reasons we find
it unpersuasive under the first step. Namely, the Specification describes that
the device is a conventional or generic component, and the claims do not
describe how a location of a device is determined. As such, we fail to see
how determining a location of a device requires something other than
generic data processing, which does not amount to significantly more than
the abstract idea.
Appellant additionally argues the claimed functions are not routine
and conventional computer functions because they are novel and
nonobvious. Appeal Br. 10. Appellant’s argument is not persuasive.
Notwithstanding that “‘the § 101 patent-eligibility inquiry and, say,
the § 102 novelty inquiry might sometimes overlap’ ... a claim for a new
abstract idea is still an abstract idea,” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (quoting Mayo, 132 S. Ct. at 1304), The
question in the second step of the patent-eligibility analysis is not whether an
additional feature Is novel, but whether the implementation of the abstract
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idea involves “more than the performance of ‘well-understood, routine,
[and] conventional activities previously known to the industry.”’ Content
Extraction and Transmission LLC v. Wells Fargo Bank Nat. Ass % 776 F,3d
1343, 1347-48 (quoting Alice. 134 S. Ct, at 2359).
Here, we fail to see how the implementation of the abstract idea
requires something apart from generic computing components performing
well-understood, routine, and conventional computer functions. For
example, as set forth above, the claims do not describe how a location of a
device is determined, nor do the claims address a problem associated with
the device. Consequently, Appellant does not apprise us of error in the
Examiner’s finding that the claims recite something apart from the generic
computer implementation of the abstract idea. Ans. 6.
Appellant further contends that the claims are patent-eligible because,
like the claims in BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016), the present claims improve a computer
system. Tr. 7—8. According to Appellant, by having the identity associated
with the system stored at the device and having the system access the device,
the claimed invention enables a user to receive local information without
having to send a request for the information and without being spammed.
Id. at 7—10. Appellant’s argument is unpersuasive.
In BASCOM, the Federal Circuit held “[t]he inventive concept
described and claimed in the ’606 patent is the installation of a filtering tool
at a specific location, remote from end-users, with customizable filtering
features specific to each end user.” 827 F.3d at 1350. In determining this
feature to be an inventive concept, the Federal Circuit explained that the
remote location of a filtering tool having customizable user-specific filtering
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features provides the filtering tool both the benefits of a filter on a local
computer and the benefits of a filter on the ISP server. Id. The Federal
Circuit further explained that the “claims do not merely recite the abstract
idea of filtering content along with the requirement to perform it on the
Internet or on generic computer components,” but instead the claims are “a
technical improvement over prior art ways of filtering [Internet] content.”
Id. Notably, the Federal Circuit specifically determined that “the claims
may be read to ‘improve[] an existing technological process.’” Id. at 1351
(citing Alice, 134 S. Ct. at 2358).
In contrast to the claims in BASCOM, the present claims are an
improvement to the abstract idea of “providing advertisements based on a
location of the device,” not an improvement to the technological
implementation of the abstract idea. As set forth above, Appellant explains
that the claimed invention enables a user to receive local information
without having to send a request for the information and without being
spammed. Tr. 7—10. Receiving unsolicited offers and limiting unwanted
offers are not technical issues, nor do they arise exclusively upon the
computer implementation of the abstract idea of “providing advertisements
based on a location of the device.” For example, receptionists are routinely
used to screen solicitations. Given that the claims do not recite an
improvement to the technological implementation of the abstract idea,
Appellant’s reliance on BASCOM does not apprise us of error in the
Examiner’s finding that the claims do not recite additional limitations
amounting, individually or as an ordered combination, to significantly more
than the abstract idea.
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In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s determination that the claims are directed to non-statutory
subject matter. We, therefore, sustain the rejection of claims 19-22 and 29-
40 under 35 U.S.C. § 101.
Obviousness
Appellant has persuaded us that the prior art does not teach an
“identity associated with the system,” as recited in independent claim 19.
Appeal Br. 14—17; Reply Br. 3^4.
Independent claim 19 recites “initiating, by a system, access to a
device under control of said user to determine if an identity associated with
the system is stored at the device.” Independent claim 19 thus requires that
the “identity associated with the system” is the identity associated with the
system that is initiating access to a user’s device.
Here, the Examiner relies on Calvert’s teaching of information related
to a communication device user’s favorite fast food restaurant for disclosing
an “identity associated with the system.” Ans. 13. Calvert discloses a
communication system that, either periodically on its own or responsive to a
request for a particular product from a communication device, determines an
approximate location of the communication device and whether the
requested product is available in the general vicinity of the communication
device. Calvert 3:17—26. As the Examiner finds, in addition to conveying a
request for a particular product, Calvert discloses conveying specific
information about a communication device user, including favorite fast food
chains. Calvert 14:5—28. The fast food chains, however, are not part of
Calvert’s communication system, and the fast food chains do not initiate
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access to the user’s communication device. As such, we fail to see how the
combined teachings of Calvert, Gnutella, and Dahod would result in the
claimed “identity associated with the system.”
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 19 and claims 20 and 21 depending therefrom.
Each of independent claims 29 and 34 recites a similar limitation to the
limitation discussed above in regard to independent claim 19, and the
Examiner’s rejection of independent claims 29 and 34 suffers from the same
deficiency as the Examiner’s rejection of independent claim 19.
Accordingly, we similarly do not sustain the Examiner’s rejection of
independent claims 29 and 34 and claims 30, 31, 35, 36, 39, and 40
depending therefrom. The Examiner’s rejections of claims 22, 32, 33, 37,
and 38 also suffer from the same deficiency as the Examiner’s rejection of
independent claim 19, and we do not sustain the Examiner’s rejections of
these claims.
DECISION
The Examiner’s decision to reject claims 19—22 and 29-40 under
35U.S.C. § 101 is affirmed.
The Examiner’s decision to reject claims 19—22 and 29-40 under
35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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