International Business Machines Corporation

Patent Trials and Appeals Board

Mar 22, 2021

2020005330 (P.T.A.B. Mar. 22, 2021)

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.
15/416,572 01/26/2017 Lisa Seacat DeLuca END920160471US1 9989
11445 7590 03/22/2021
IBM Corporation - Endicott Drafting Center
1701 North Street
Building 256-3
Endicott, NY 13760
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/22/2021 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):
edciplaw@us.ibm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LISA SEACAT DELUCA and SCOTT H. MITCHELL
____________

Appeal 2020-005330
Application 15/416,572
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a rejection
of claims 1–18, i.e., all pending claims. Because the claims have been twice
rejected, we have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). See
Ex parte Lemoine, 46 USPQ2d 1420, 1423 (BPAI 1994) (precedential).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2019). Appellant identifies the real party in interest
as International Business Machines Corporation. Appeal Br. 1.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates generally “to
location events, and more specifically to a location event forced exit within
a program.” Spec. ¶ 1.2 The Specification explains that “[d]ata regarding
the movements of the customers within a venue,” such as a store, “can be
used to send real-time promotions and offers to customers that are
personalized to a zone level as the customers move around in the venue.”
Id. ¶ 2; see also id. ¶ 49, Fig. 4. The Specification also explains that “it is
possible for an event to be triggered and held in a campaign system for a
period of time before it is actually sent,” e.g., due to “slow processing time
or on purpose to limit message overload.” Id. ¶ 3. This delay in sending a
promotion or offer may result in “receiv[ing] a promotion or offer too late,”
e.g., after the customer has “already left the applicable zone or possibly the
venue.” Id. ¶¶ 3, 52.
Hence, the invention endeavors to avoid annoying or burdening a
consumer with untimely promotions and offers. See Spec. ¶¶ 12–13, 38–47,
50–52, Fig. 3. For example, a location-management system may track a
consumer’s movement in a store as the consumer enters and exits various
zones associated with various products. See id. ¶ 49, Fig. 4. The location-
management system may “recognize that the user exited many of the zones

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed January 26, 2017; “Non-Final Act.” for the Non-Final
Office Action, mailed September 11, 2019; “Appeal Br.” for the Appeal
Brief, filed February 24, 2020; “Claims App.” for the Claims Appendix,
filed March 23, 2020; “Ans.” for the Examiner’s Answer, mailed June 24,
2020; and “Reply Br.” for the Reply Brief, filed July 13, 2020.
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soon after the consumer entered them, such that notifications would never
be sent.” Id. ¶ 51. When the location-management system discerns an exit
event, the system “would force exit the consumer from the program of the
campaign if a notification of a promotion had not already been sent to the
consumer’s device.” Id.; see also id. ¶¶ 4–6, 40, 45, Fig. 3.
“Conventionally, the consumer’s movement would have triggered an
event for each zone,” and “the consumer would therefore see numerous
notifications” even though some notifications “would come after the
consumer exits the applicable zone.” Id. ¶ 50; see also id. ¶ 52.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads
as follows:
1. A method of location event forced exit from a program
of a campaign of promotions for a consumer in a venue
comprising the steps of:
a computer detecting a first location event triggered by
a consumer in the venue;
the computer enabling the campaign of promotions
associated with the first location event;
the computer detecting a second location event, different
than the first location event, triggered by the consumer of the
venue, wherein the computer detects a plurality of further
location events different from the first and second location
events triggered by the consumer of the venue which triggered
the first location event, with no dwell time, without sending
a notification to the consumer in any of the location events;
the computer determining a status of the campaign
of promotions associated with the first location event; and
when the consumer is participating with an enabled
campaign associated with the first location event when the
user is detected by a triggered second event, the computer
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forcing an exit from the enabled campaign associated
with the first location event.
Claims App. 1.
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103, the Examiner
cites U.S. Patent Application Publication US 2014/0279014 A1 to Roka
et al. (“Roka”), titled “Push Notifications for Location-Based Content
Delivery,” filed March 14, 2014, and published September 18, 2014.
The Rejections on Appeal
Claims 1–18 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Non-Final Act. 7–12.
Claims 1–18 stand rejected under 35 U.S.C. § 103 as unpatentable
over Roka. Non-Final Act. 13–17.
ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we agree with the
Examiner’s conclusions concerning ineligibility under § 101 but disagree
with the Examiner’s conclusions concerning unpatentability under § 103.
We provide the following to address and emphasize specific findings and
arguments.
The § 101 Rejection of Claims 1–18
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
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requirements of this title.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth
a two-step analytical framework for evaluating patent eligibility. Mayo,
566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
Simio, LLC v. FlexSim Software Prods., Inc., 983 F.3d 1353, 1359 (Fed. Cir.
2020); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir.
2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”).3 The 2019 Guidance applies to the Board. Id. at 50–51,
57 n.42; see 35 U.S.C. § 3(a)(2)(A) (investing the Director with
responsibility “for providing policy direction” for the PTO).

3 In response to received public comments, the PTO issued further guidance
in October 2019 with further explanations about various aspects of the 2019
Guidance. October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019)
(available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf).
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The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG ONE
Patent-ineligible abstract ideas include fundamental economic
practices, mental processes, and mathematical formulas. See, e.g., Alice,
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573 U.S. at 219–20 (fundamental economic practice of intermediated
settlement); Bilski v. Kappos, 561 U.S. 593, 599, 611–12 (2010)
(fundamental economic practice of hedging or protecting against risk in
independent claim and mathematical formula in dependent claim); Parker v.
Flook, 437 U.S. 584, 585–86, 596–98 (1978) (mathematical formula for
calculating updated alarm limit); Gottschalk v. Benson, 409 U.S. 63, 65–67
(1972) (mental process of converting binary-coded-decimal representation
to binary representation). The 2019 Guidance specifies three groupings
of abstract ideas: (1) certain methods of organizing human activity,
(2) mental processes, and (3) mathematical concepts. 84 Fed. Reg. at 51–52.
In Alice, the Supreme Court “did not establish any ‘precise contours’
for defining whether claims are directed to ‘abstract ideas’ or something
else.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir.
2019) (citing Alice, 573 U.S. at 221). Further, for Mayo/Alice step one, the
Federal Circuit has noted that “[a]n abstract idea can generally be described
at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016).
Here, the Examiner determines that the claims recite an abstract idea
falling within one of the three groupings of abstract ideas specified in the
2019 Guidance, i.e., certain methods of organizing human activity ineligible
for patenting. Non-Final Act. 8; Ans. 6; see 84 Fed. Reg. at 51–52.
Specifically, the Examiner determines that the claims recite the fundamental
economic principle or practice of “tailoring advertising or information based
on location.” Non-Final Act. 8 (citing Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015)); Ans. 6. The Examiner
explains that the claims concern the concept of “not send[ing] location based
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offers to a consumer if they do not meet a minimum dwell time in, or have
otherwise left, the targeted location.” Non-Final Act. 7.
Appellant disputes that the claims recite an abstract idea. See Appeal
Br. 8–9; Reply Br. 6–7. According to Appellant, “Appellant’s contention
that ‘the idea of tailoring advertising or information based on location’ is not
an abstract idea is in fact warranted” by the Manual of Patent Examining
Procedure (MPEP). Reply Br. 7 (citing MPEP § 2106.04(a)(2)(II)).
We agree with the Examiner that the claims recite an abstract idea
falling within one of the three groupings of abstract ideas specified in the
2019 Guidance, i.e., certain methods of organizing human activity ineligible
for patenting. See Non-Final Act. 7–9; Ans. 6–7; 84 Fed. Reg. at 51–52.
The 2019 Guidance describes those patent-ineligible methods as including
“commercial or legal interactions,” such as “advertising, marketing or sales
activities or behaviors.” 84 Fed. Reg. at 52.
Here, each independent claim recites the following limitations relating
to “commercial or legal interactions,” specifically “advertising, marketing
or sales activities or behaviors”:
● “detecting a first location event triggered by a consumer
in the venue”;
● “enabling the campaign of promotions associated with
the first location event”;
● “detecting a second location event, different than the first
location event, triggered by the consumer of the venue”;
● “detect[ing] a plurality of further location events different
from the first and second location events triggered by the
consumer of the venue which triggered the first location
event, with no dwell time, without sending a notification
to the consumer in any of the location events”;
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● “determining a status of the campaign of promotions
associated with the first location event”; and
● “forcing an exit from the enabled campaign associated
with the first location event” when “the consumer is
participating with an enabled campaign associated with
the first location event” and “the user is detected by a
triggered second event.”4
Claims App. 1–3.
Each of the above-identified limitations contributes to “advertising,
marketing or sales activities or behaviors.” For instance, the “detecting”
limitations ascertain a consumer’s location for purposes of deciding whether
to send promotions to the consumer or withhold promotions from the
consumer. Further, the “enabling” and “forcing” limitations operate to
activate and deactivate, respectively, a “campaign of promotions” targeted
to the consumer. Targeted advertising and the “tailoring of content based on
information about the user . . . is an abstract idea that is as old as providing
different newspaper inserts for different neighborhoods.” Affinity Labs of
Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016).
The 2019 Guidance identifies “advertising, marketing or sales
activities or behaviors” as a certain method of organizing human activity
ineligible for patenting, and thus an abstract idea. 84 Fed. Reg. at 52.

4 In the event of continued prosecution, the Examiner should consider
the propriety of a rejection under 35 U.S.C. § 112(b) due to the lack of
antecedent basis for “the user” recited in each independent claim. While the
Board has discretion to enter a new ground of rejection, no inference should
be drawn from a failure to exercise that discretion. See 37 C.F.R.
§ 41.50(b); MPEP § 1213.02.
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MAYO/ALICE STEP ONE: PTO STEP 2A PRONG TWO
Because we determine that each independent claim recites an abstract
idea, we consider whether each claim as a whole integrates the recited
abstract idea into a practical application. See 84 Fed. Reg. at 54–55. “Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
Each independent claim recites one additional element, i.e., a
“computer.” Claims App. 1–3; see also Non-Final Act. 9–10; Ans. 7–8.
We determine that each independent claim as a whole does not integrate
the recited abstract idea into a practical application because the additional
element does not impose meaningful limits on the abstract idea. See 84 Fed.
Reg. at 53–54; see also Non-Final Act. 9–10; Ans. 7–8. Instead, the claimed
“computer” constitutes a generic computer that performs generic computer
functions. See Spec. ¶¶ 32, 54–60, Fig. 1; Non-Final Act. 7, 9–10; Ans. 7–8.
Appellant argues that the claims “are directed to improvement in the
functioning of a computer.” Appeal Br. 9. Specifically, Appellant asserts
that the “claims are an improvement of the technology or technological field
of forcing a consumer out of a program for marketing campaigns in a venue
to reduce the load of the computer and increase efficiency” of “the computer
by preventing stalling and running of the computer when a campaign is no
longer applicable to the consumer.” Id. at 10.
We disagree that the claims concern an improvement in a technology
or technical field because “forcing a consumer out of a program for
marketing campaigns in a venue” does not constitute a technology or
technical field. In Bilski, for example, the Supreme Court did not view
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balancing risk positions as a technology or technical field. See Bilski,
561 U.S. at 599, 609–13. And in Alice, the Court did not view mitigating
settlement risk as a technology or technical field. See Alice, 573 U.S.
at 212–14 & n.2, 219–23.
In addition, we agree with the Examiner that “nothing in the claims
pertains to an improvement in the functioning of the computer itself or any
other technology or technical field.” Non-Final Act. 10; see also Ans. 7–8.
We also agree with the Examiner that “there is no evidence in the record
such as a technical explanation as to how the functioning of the computer, as
a computer, is improved by the claimed invention.” Non-Final Act. 10.
Further, the Examiner properly determines that “any performance
consideration of the computer is irrelevant, or virtualized away from, the
functioning of the claimed invention.” Ans. 8 (citing Spec. ¶ 32, Fig. 1).
To demonstrate an improvement in a technology or technical field,
Appellant quotes the following statement from the Specification: “Certain
embodiments of the present invention reduce the load of a processor of the
location management system, since programs are preventing from stalling
and running when no longer applicable to consumers.” Appeal Br. 10
(quoting Spec. ¶ 53). That statement amounts to a conclusory assertion
because the Specification fails to explain how preventing “stalling and
running” relates to processor load. We may accord little weight to a
conclusory assertion. See Skky, Inc. v. MindGeek, s.a.r.l., 859 F.3d 1014,
1022 (Fed. Cir. 2017); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1368 (Fed. Cir. 2004).
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Moreover, that statement makes little sense because “stalling” and
“running” describe contradictory conditions. A running program is not
stalled, and a stalled program is not running.
In addition, each independent claim recites “detect[ing] a plurality of
further location events different from the first and second location events
triggered by the consumer of the venue which triggered the first location
event, with no dwell time, without sending a notification to the consumer
in any of the location events.” Claims App. 1–3. Thus, the claims require
that the claimed “computer” process location events “different from the first
and second location events.” The required additional processing increases
processor load contrary to the Specification’s statement about reducing
processor load.
In short, Appellant relies on unclaimed features for patent eligibility.
See Appeal Br. 9–10; Reply Br. 7–8. But unclaimed features do not support
patent eligibility. See ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d
759, 769 (Fed. Cir. 2019); Berkheimer v. HP Inc., 881 F.3d 1360, 1369–70
(Fed. Cir. 2018).
Appellant analogizes the claims here to the claims in Enfish and
asserts that the claims here are “directed to a ‘specific implementation of a
solution to a problem in the software arts,’” and thus patent eligible. Appeal
Br. 10 (emphasis by Appellant) (quoting Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1339 (Fed. Cir. 2016)).
We disagree that the claims here resemble the claims in Enfish.
There, the Federal Circuit decided that the claims satisfied § 101 under
Mayo/Alice step one because they recited a “specific improvement to the
way computers operate,” i.e., an improved database configuration that
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permitted faster and more efficient searching. Enfish, 822 F.3d at 1330–33,
1336, 1339. Further, the Federal Circuit has explained that the claims in
Enfish “did more than allow computers to perform familiar tasks with
greater speed and efficiency” and “actually permitted users to launch and
construct databases in a new way.” Finjan, Inc. v. Blue Coat Sys., Inc.,
879 F.3d 1299, 1305 (Fed. Cir. 2018). Unlike the claims in Enfish, the
claims here do not recite a “specific improvement to the way computers
operate.” See Non-Final Act. 10; Ans. 8.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing MPEP §§ 2106.05(a)–(c), 2106.05(e)). As the above analysis
indicates, we have evaluated Appellant’s arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract idea into a practical application. Thus, each claim is directed
to a judicial exception and does not satisfy § 101 under Mayo/Alice step one.
MAYO/ALICE STEP TWO: PTO STEP 2B
Because we determine that each independent claim is directed
to a judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “look with more specificity at what the claim elements add, in
order to determine ‘whether they identify an “inventive concept” in the
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application of the ineligible subject matter’ to which the claim is directed.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016)). An “inventive concept” requires more than
“well-understood, routine, conventional activity already engaged in” by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–80). But a
“non-conventional and non-generic arrangement of known, conventional
pieces” may provide an “inventive concept” satisfying step two. BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016).
As discussed above, each independent claim recites one additional
element, i.e., a “computer.” Claims App. 1–3; see Non-Final Act. 9–10;
Ans. 7–8. As also discussed above, the claimed “computer” constitutes
a generic computer that performs generic computer functions. See Spec.
¶¶ 32, 54–60, Fig. 1; Non-Final Act. 7, 9–10; Ans. 7–8.
The Specification describes the claimed “computer” generically and
evidences its conventional nature. See Spec. ¶¶ 32, 54–60, Fig. 1. For
instance, the Specification states that “computing devices” include “personal
digital assistant (PDA) or cellular telephone 54A, desktop computer 54B,
laptop computer 54C, and/or automobile computer system 54N.” Id. ¶ 32,
Fig. 1. The Specification explains that “computing devices 54A-N shown in
Fig. 1 are intended to be illustrative only.” Id. ¶ 32. The Specification also
states that “instructions may be provided to a processor of a general purpose
computer, special purpose computer, or other programmable data processing
apparatus to produce a machine, such that the instructions, which execute via
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the processor of the computer or other programmable data processing
apparatus, create means for implementing” the claimed invention. Id. ¶ 59.
Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk, 409 U.S. at 64–65, 71).
Moreover, the claimed “computer” operates to store, manipulate, and
communicate data. Claims App. 1–3; see Non-Final Act. 9–12; Spec. ¶¶ 32,
54–60. Court decisions have recognized that generic computer components
operating to store, manipulate, and communicate data are well understood,
routine, and conventional to a skilled artisan. See, e.g., Alice, 573 U.S.
at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Apple, 842 F.3d
at 1234, 1241–42; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1316–20 (Fed. Cir. 2016); Versata Dev. Grp., Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715–16 (Fed. Cir. 2014); buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014).
Hence, the claimed “computer” does not satisfy the “inventive
concept” requirement. See, e.g., Customedia Techs., LLC v. Dish Network
Corp., 951 F.3d 1359, 1361, 1366 (Fed. Cir. 2020) (describing the claimed
“processor,” “storage device,” “programmable receiver unit,” and “remote
server” as “generic computer components”); Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (holding
that “generic computer components such as an ‘interface,’ ‘network,’ and
‘database’” did not satisfy the “inventive concept” requirement);
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FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095–96 (Fed. Cir.
2016) (describing the claimed “microprocessor” and “user interface” as
“generic computer elements”); Prism Techs. LLC v. T-Mobile USA, Inc.,
696 F. App’x 1014, 1016–17 (Fed. Cir. 2017) (describing the claimed
“authentication server,” “access server,” “Internet Protocol network,”
“client computer device,” and “database” as “indisputably generic computer
components”).
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Considering the limitations as
an ordered combination adds nothing to the abstract idea that is not already
present when considering the limitations separately. See Mayo, 566 U.S.
at 79; Non-Final Act. 9–12; Ans. 6–8. The ordered combination of
limitations in each independent claim amounts to nothing more than the
abstract idea implemented with a generic computer that performs generic
computer functions. See Alice, 573 U.S. at 225–26; Non-Final Act. 9–12;
Ans. 6–8. Hence, we conclude that the ordered combination of limitations in
each independent claim does not supply an “inventive concept” that renders
the claim “significantly more” than the abstract idea. See Non-Final
Act. 9–12; Ans. 6–8. Thus, each claim does not satisfy § 101 under
Mayo/Alice step two.
SUMMARY FOR INDEPENDENT CLAIMS 1, 7, AND 13
For the reasons discussed above, Appellant’s arguments have not
persuaded us of any error in the Examiner’s findings or conclusions under
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Mayo/Alice step one or step two. Hence, we sustain the § 101 rejection of
the independent claims.
DEPENDENT CLAIMS 2–6, 8–12, AND 14–18
We also sustain the § 101 rejection of dependent claims 2–6, 8–12,
and 14–18 because Appellant does not argue eligibility separately for them.
See Appeal Br. 7–12; Reply Br. 4–8; 37 C.F.R. § 41.37(c)(1)(iv).
The § 103 Rejection of Claims 1–18
INDEPENDENT CLAIMS 1, 7, AND 13
As noted above, the § 103 rejection of claims 1, 7, and 13 rests on
Roka. See Non-Final Act. 13–16. Appellant argues that the Examiner erred
in rejecting claims 1, 7, and 13 because Roka fails to teach or suggest the
following limitation in each claim: “when the consumer is participating with
an enabled campaign associated with the first location event when the user is
detected by a triggered second event, the computer forcing an exit from the
enabled campaign associated with the first location event.” See Appeal Br.
12–20; Reply Br. 9–10.
The Examiner “construes a minimum dwell time requirement to mean
forcing an exit from the enabled campaign associated with the first location
event when the dwell time requirement is not met.” Non-Final Act. 15; see
also id. at 3–4; Ans. 9. The Examiner finds that Roka discloses sending a
notification to a user device after determining that the user device “has
stayed or lingered in a particular location exceeding a pre-determined
period.” Non-Final Act. 15 (quoting Roka ¶ 99). The Examiner also finds
that failing to send a notification to a user device if the user device “was
enabled for the zone” and “the device passed through too quickly” teaches
or suggests “exits the consumer from the enabled campaign” according to
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the disputed limitation in claims 1, 7, and 13. Ans. 10 (citing Roka ¶¶ 51,
99, 100).
Appellant asserts that Roka “is silent with respect to forcing an exit
from an enabled campaign.” Appeal Br. 13; see also id. at 13–20
(discussing Roka ¶¶ 23, 27, 30, 51, 57, 73, 78, 100). Appellant also asserts
that Roka lacks “any teaching, or motivation” that “defines a ‘minimum
dwell time requirement’ as forcing an exit from an enabled campaign.” Id.
at 20 (emphasis by Appellant).
In addition, Appellant contends that “Roka teaches that if a user
device is detected as exceeding a pre-determined time period, then a
notification is generated to the user in response.” Appeal. Br. 20. Appellant
also contends that the “factor in Roka for determining whether a consumer
should receive a notification is not based on the detection of a trigger second
event” but instead on how long “the consumer stayed in the zone.” Reply
Br. 10.
Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of Roka teach
or suggest the disputed limitation in claims 1, 7, and 13. See Appeal Br.
12–20; Reply Br. 9–10. Roka discloses that a “location-based content
delivery system may send notification of a sale of a particular item or a sale
in a particular store” to a user device. Roka ¶ 23. Roka also discloses that
“the location and time of the presence of” a user device “in a certain location
(e.g., store aisle) proximate to a product” may cause the system to “generate
a push notification to the user device” about the product. Id. ¶ 84. In
addition, Roka discusses examples where a user device “has stayed or
lingered in a particular location exceeding a pre-determined period” and the
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system sends a notification to a merchant after the pre-determined period.
Id. ¶¶ 99–100.
Failing to send a notification if a user device fails to satisfy a
minimum dwell time, as Roka discloses, does not correspond to “forcing
an exit from the enabled campaign associated with the first location event”
according to the disputed limitation in claims 1, 7, and 13. In the cited
portions, Roka does not disclose preventing a user device from receiving
a notification after a trigger event occurs as required by the disputed
limitation. See, e.g., Roka ¶¶ 23, 27, 30, 51, 55, 57, 73, 78, 84, 93, 99–100.
Because the Examiner has not adequately explained how the cited
portions of Roka teach or suggest the disputed limitation in claims 1, 7,
and 13, we do not sustain the § 103 rejection of claims 1, 7, and 13.
DEPENDENT CLAIMS 2–6, 8–12, AND 14–18
Claims 2–6 depend from claim 1; claims 8–12 depend from claim 7;
and claims 14–18 depend from claim 13. For the reasons discussed for
claims 1, 7, and 13, we do not sustain the § 103 rejection of these dependent
claims.
CONCLUSION
We affirm the rejection of claims 1–18 under 35 U.S.C. § 101.
We reverse the rejection of claims 1–18 under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection for each claim
on appeal, we affirm the Examiner’s decision to reject all of the claims
on appeal. See 37 C.F.R. § 41.50(a)(1).
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In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–18 101 Eligibility 1–18
1–18 103 Roka 1–18
Overall
Outcome 1–18
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED