13952572 - (R) (P.T.A.B. Apr. 23, 2020)

Kohn, Jeffrey

Patent Trials and Appeals BoardApr 23, 2020

13952572 - (R) (P.T.A.B. Apr. 23, 2020)

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. 13/952,572 07/26/2013 Jeffrey Kohn 1215-002 4253 88360 7590 04/23/2020 Richards Patent Law P.C. 20 N Clark Street Suite 3300 Chicago, IL 60602 EXAMINER SUMMERS, KIERSTEN V ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 04/23/2020 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): docketing@richardspatentlaw.com eofficeaction@appcoll.com robin@richardspatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JEFFREY KOHN ____________ Appeal 2018-000745 Application 13/952,572 Technology Center 3600 ____________ BEFORE NINA L. MEDLOCK, TARA L. HUTCHINGS, and MATTHEW S. MEYERS, Administrative Patent Judges. MEYERS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE Appellant1 filed a Request for Rehearing (“Req.”), pursuant to 37 C.F.R. § 41.52, on February 20, 2020, seeking reconsideration of our Decision on Appeal mailed December 26, 2019 (“Decision”), in which we affirmed the Examiner’s rejection of claims 14, 16–20, 23, and 24 under 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our Decision references Appellant’s Appeal Brief (“Br.,” filed May 8, 2017), the Examiner’s Answer (“Ans.,” mailed August 25, 2017), and Final Office Action (“Final Act.,” mailed July 7, 2016). The record includes a transcript of the October 15, 2019 oral hearing. Appeal 2018-000745 Application 13/952,572 2 35 U.S.C. §§ 101, 112(b), and 103(a).2 We have jurisdiction over the Request under 35 U.S.C. § 6(b). DISCUSSION 35 U.S.C. § 101 Appellant asserts that “[t]he Board misapprehended the uniqueness of the non-conventional and non-generic elements of the claimed methodology in the 35 U.S.C. § 101 rejection.” Req. 2 (emphasis omitted). Appellant argues that the Board improperly “contended that claim 14 does not operate in a non-conventional and non-generic way.” Id. (citing Dec. 15–16). According to Appellant, “exemplary claim 14[,] in fact[,] operates in a non- conventional and non-generic way” (Req. 3), and is “analogous to Claims 2 and 3 of Example 35 of the additional business method examples [] issued December 15, 2016.” Id. at 2. We have reviewed Appellant’s argument, but are not persuaded of error. Initially, we note that Appellant’s argument regarding the purported “uniqueness of the non-conventional and non-generic elements” recited by independent claim 14 simply repeats the same arguments from the Appeal Brief. Req. 2–5; cf. Br. 5–8. In this regard, the Decision determined that exemplary independent claim 14 was not similar to claims 2 and 3 of Example 35 of the “Subject Matter Eligibility Examples: Business Methods” published by the USPTO on December 15, 2016 (hereinafter “2016 Guidance”). Dec. 15. In making this determination, the Decision stated, 2 Appellant has not requested reconsideration of the rejection under 35 U.S.C. § 112(b). Appeal 2018-000745 Application 13/952,572 3 We agree with the Examiner that the additional limitations of a “user interface” and “user interface of a mobile device” simply allow a generic computer to perform the claimed operations using generic computer functions (see, e.g., Spec. ¶ 44). And, taking the claim elements separately, the function performed by the user interface at each step of the process is purely conventional. The claimed computer system operates in its ordinary and conventional capacity to perform the well- understood, routine, and conventional functions of receiving information related to setting up an advertising campaign, receiving information required by the advertising campaign, displaying and processing information, and then sending information (i.e., transmission of digital reward) (see, e.g., Spec. ¶¶ 44, 47, 49–50, 53, 58 (“[u]pon receiving confirmation from the API, the mobile application 18 rewards the user points associated with the first subject matter 22”)). Dec. 13–14 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354–55 (Fed. Cir. 2016); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 226 (2014); In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 612 (Fed. Cir. 2016); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)). And, consistent with this statement, the Decision determined that exemplary independent claim 14 does not operate in a non- conventional and non-generic way. Instead, exemplary independent claim 14 is directed broadly to receiving information related to setting up an advertising campaign, receiving information required by the advertising campaign, displaying and processing information, and then sending information (i.e., transmission of digital reward). As discussed above, independent claim 14 recites an abstract idea that merely uses computers as tools. Dec. 16. Appellant’s Request fails to substantively address any of these portions of the Decision or provide evidence of what particular limitation is Appeal 2018-000745 Application 13/952,572 4 meaningful beyond the face of the claim. In light of the above, we are not persuaded by Appellant’s assertion that the Decision “misapprehended the uniqueness of the non-conventional and non-generic elements of the claimed methodology in the 35 U.S.C. § 101 rejection.” Req. 2 (emphasis omitted). 35 U.S.C. § 103(a) Appellant asserts “that the Board overlooked the details of certain claim limitations including features not shown in the prior art.” Req. 5. However, other than rephrasing portions of the Appeal Brief discussing what the relied upon prior art discloses, Appellant has not persuasively identified any points that were misapprehended or overlooked by the original Decision that resulted in error. Id. at 5–6; cf. Br. 12–15. Instead, Appellant’s Request asserts, without any explanation, that “claim 14 includes detailed recitations that are not shown or described in the cited references” (Req. 6), and then simply reproduces independent claim 14 with emphases added to “portions of the claim that are not disclosed or described in the prior art” (id. at 6–7). A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1); see Ex parte Quist, 95 USPQ2d 1140, 1141 (BPAI 2010) (precedential). A request for rehearing is not an opportunity to express disagreement with a Board decision or rehash arguments previously presented. See 37 C.F.R. § 41.52(a)(1). Here, Appellant’s Request does not persuade us of any points we misapprehended or overlooked in the Decision, or that we misapplied the relevant law. In summary, Appellant’s Request has been granted only to the extent that we have reconsidered our Decision in light of Appellant’s Request, but Appeal 2018-000745 Application 13/952,572 5 is denied in all substantive respects. Accordingly, we decline to modify our original Decision. CONCLUSION Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 14, 16–20, 23, 24 101 Eligibility 14, 16–20, 23, 24 14, 16–20, 23, 24 103 Ladd, Wu, Roeding 14, 16–20, 23, 24 Overall Outcome 14, 16–20, 23, 24 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 14, 16–20, 23, 24 101 Eligibility 14, 16–20, 23, 24 14, 16–20, 23, 24 112(b) Indefiniteness 14, 16–20, 23, 24 14, 16–20, 23, 24 103 Ladd, Wu, Roeding 14, 16–20, 23, 24 Overall Outcome 14, 16–20, 23, 24 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). DENIED