RetailMeNot, Inc.

Patent Trials and Appeals Board

Jan 19, 2021

2020002892 (P.T.A.B. Jan. 19, 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.
14/619,756 02/11/2015 Rachel Renee Bell 2964P200 7823
8791 7590 01/19/2021
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
EXAMINER
REFAI, SAM M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/19/2021 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):
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RACHEL RENEE BELL and NICHOLAS JAMES SHIFFERT

Appeal 2020-002892
Application 14/619,756
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

Opinion for the Board filed by SILVERMAN, Administrative Patent Judge.

Opinion Concurring filed by MURPHY, Administrative Patent Judge.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1–4, 7–13, and 16–29. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
RetailMeNot, Inc. Appeal Br. 2.
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ILLUSTRATIVE CLAIM
1. A computer-implemented method for providing an
event-based offer, comprising:
obtaining, by one or more processors, an event geofence
defining a perimeter around a geographic area that includes an
event venue;
obtaining, by one or more processors, one or more event
criteria associated with an event-based offer;
causing, by one or more processors, the event geofence to
be cached on a plurality of mobile user devices in response to
the mobile user devices requesting geofences corresponding to
geographic locations of the mobile user devices sensed by the
mobile user devices;
identifying, by one or more processors, the plurality of
mobile user devices within the event geofence;
obtaining, by one or more processors, event data
associated with an event occurring at the event venue;
comparing, by one or more processors, the event data to
the event criteria to determine whether the event criteria are
met; and
providing over a network, by one or more processors, the
event-based offer to the plurality of mobile user devices within
the event geofence in response to determining that the one or
more event criteria are met by pushing at least part of the event-
based offer to instances of a native application installed on the
mobile user devices.
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REFERENCES
Name Reference Date
Montgomery et al.
(“Montgomery”)
US 2012/0253901 A1 Oct. 4, 2012
Sorden et al.
(“Sorden”)
US 2013/0091452 A1 Apr. 11, 2013
Heisler et al.
(“Heisler”)
US 2013/0159076 A1 June 20, 2013
Harkey et al.
(“Harkey”)
US 2014/0279123 A1 Sept. 18, 2014

REJECTIONS
I. Claims 1–4, 7–13, 16–19, 24, and 29 are rejected under 35
U.S.C. § 112(a) as failing to comply with the written description
requirement.
II. Claims 1–4, 7–13, and 16–29 are rejected under 35 U.S.C.
§ 101 as ineligible subject matter.
III. Claims 1–4, 7–13, 16, 17, 19, 24, and 29 are rejected under 35
U.S.C. § 103 as unpatentable over Heisler, Montgomery, Harkey, and
Sorden.
IV. Claim 18 is rejected under 35 U.S.C. § 103 as unpatentable
over Heisler, Montgomery, Harkey, Sorden, and Official Notice.
V. Claims 20–22 and 25–27 are rejected under 35 U.S.C. § 103 as
unpatentable over Heisler and Montgomery.
VI. Claims 23 and 28 are rejected under 35 U.S.C. § 103 as
unpatentable over Heisler, Montgomery, and Official Notice.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
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ANALYSIS
Subject-Matter Eligibility
Claims 1–4, 7–13, and 16–29 stand rejected under 35 U.S.C. § 101.
The Appellant “contest[s] the rejection of claims 1–4, 7–13, 16–19, 24,
and 29,” but is “not contesting the rejection of claims 20–23 and 25–28.”
Appeal Br. 8. Accordingly, we summarily sustain the rejection of
claims 20–23 and 25–28, under 35 U.S.C. § 101. For the reasons provided
below, we do not sustain the rejection of claims 1–4, 7–13, 16–19, 24, and
29, under 35 U.S.C. § 101.
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. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted 35 U.S.C. § 101 to exclude laws of nature, natural
phenomena, and abstract ideas, 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 premised
upon them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
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eligible invention.” Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88–89 (2012) (internal quotation marks omitted)).
The first step determines whether the claim is directed to judicially excluded
subject matter (such as a so-called “abstract idea”); the second step
determines whether there are any “additional elements” recited in the claim
that (either individually or as an “ordered combination”) amount to
“significantly more” than the identified judicially excepted subject matter
itself. Id. at 217–18.
In 2019, the USPTO published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”). Under the 2019 Revised Guidance, a claim is
“directed to” an abstract idea, only if the claim recites any of (1)
mathematical concepts, (2) certain methods of organizing human activity,
and (3) mental processes — without integrating such abstract idea into a
“practical application,” i.e., without “apply[ing], rely[ing] on, or us[ing] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Id. at 52–55. The considerations
articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim
element (or combination of elements) integrates an abstract idea into a
practical application. Id. at 55. A claim that is “directed to” an abstract idea
constitutes ineligible subject matter, unless the claim recites an additional
element (or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
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Although created “[i]n accordance with judicial precedent,” the 2019
Revised Guidance enumerates the analytical steps differently than the
Supreme Court’s Alice opinion. 2019 Revised Guidance, 84 Fed. Reg. at 52.
Step 1 of the 2019 Revised Guidance addresses whether the claimed subject
matter falls within any of the statutory categories of 35 U.S.C. § 101. Id.
at 53–54. Step 2A, Prong One, concerns whether the claim at issue recites
ineligible subject matter; if an abstract idea is recited, Step 2A, Prong Two,
addresses whether the recited abstract idea is integrated into a practical
application. Id. at 54–55. Unless such integration exists, the analysis
proceeds to Step 2B, in order to determine whether any additional element
(or combination of elements) amounts to significantly more than the
identified abstract idea. Id. at 56.
We apply the analytical approach of the 2019 Revised Guidance to
independent claim 1, after which we address the other claims in dispute.
The Examiner’s Answer (pages 5–14) specifically characterizes the
§ 101 rejection, so as to accord with the terminology of the 2019 Revised
Guidance.
As to Step 1, the Examiner determines that claim 1 is within a
statutory category of subject matter. Answer 5.
With regard to Step 2A, Prong One, the Examiner refers to the
following limitations of claim 1: a “method for providing an event-based
offer, comprising” “obtaining” “an event geofence defining a perimeter
around a geographic area that includes an event venue”; “obtaining” “one or
more event criteria associated with an event-based offer”; “requesting
geofences corresponding to geographic locations”; “identifying” “the
plurality of mobile user devices within the event geofence”; “obtaining”
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“event data associated with an event occurring at the event venue”;
“comparing” “the event data to the event criteria to determine whether the
event criteria are met”; and “providing” “the event-based offer to the
plurality of” “user[s]” “within the event geofence in response to determining
that the one or more event criteria are met.” See Answer 5–6.
The Examiner regards the foregoing limitations as describing both (1)
a mental process and (2) a “certain method[ ] of organizing human activity”
— each of which is a type of patent-ineligible abstract idea. Answer 6.
According to the Examiner, the identified limitations describe a
mental process, because they “can be practically performed in the human
mind or by a human using pen and paper.” Answer 6. See also id. at 11–12.
The Examiner does not explain the basis for this position, nor is any viable
reason apparently discernible. Therefore, we do not regard the Examiner’s
identified claim language as describing a judicial exception in the form of a
mental process.2

2 Although we agree with the Appellant’s position (see Reply Br. 4) that the
claims do not recite a mental-process judicial exception, we do not agree
with the Appellant’s analysis on this point, because the Appellant refers to
the following limitations of claim 1 as being incapable of practical
performance in the human mind:
causing, by one or more processors, the event geofence to
be cached on a plurality of mobile user devices in response to
the mobile user devices requesting geofences corresponding to
geographic locations of the mobile user devices sensed by the
mobile user devices.
See id. Yet, this quoted portion of claim 1 includes limitations that the
Examiner regards as additional elements, outside of the judicial exception.
See Answer 5–6. Therefore, the Appellant’s argument, on this point, is not
persuasive of Examiner error.
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Conversely, we agree with the Examiner’s position that the identified
limitations describe marketing or commercial activities that courts have
regarded as patent-ineligible methods of organizing human activity.
Notably, the claim limitations identified by the Examiner are similar to
forms of targeted advertising, which courts have determined to constitute
ineligible methods of organizing human activity. See Customedia Techs.,
LLC v. Dish Network Corp., 951 F.3d 1359, 1362 (Fed. Cir. 2020) (using a
computer to deliver targeted advertising to a user constitutes an abstract
idea); Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838 F.3d 1266, 1271
(Fed. Cir. 2016) (“[T]ailoring of content based on information about the user
— such as where the user lives or what time of day the user views the
content — is an abstract idea that is as old as providing different newspaper
inserts for different neighborhoods.”)
The Appellant contends otherwise (Reply Br. 4–5), but does not offer
any argument or explanation for why the identified claims would not recite a
judicial exception as a method of organizing human activity.
Accordingly, we are not persuaded of Examiner error in applying
Step 2A, Prong One, determining that claim 1 recites a judicial exception.
Turning to Step 2A, Prong Two, unless a claim that recites a judicial
exception (such as an abstract idea) “integrates the recited judicial exception
into a practical application of that exception,” the claim is “directed to” the
judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 53. The
analysis of such an “integration into a practical application” involves
“[i]dentifying . . . any additional elements recited in the claim beyond the
judicial exception(s)” and “evaluating those additional elements individually
and in combination to determine whether they integrate the exception into a
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practical application.” Id. at 54–55. Among the considerations “indicative
that an additional element (or combination of elements) may have integrated
the exception into a practical application” is whether “[a]n additional
element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” Id. at 55 (footnote
omitted). “[W]hether an additional element or combination of elements
integrate[s] the exception into a practical application should be evaluated on
the claim as a whole.” Id. at 55 n.24.
The Examiner regards the additional elements of claim 1 that
accomplish computer implementation — the recitations of “computer-
implemented,” “one or more processors,” “causing, by one or more
processors, the event geofence to be cached on a plurality of mobile user
devices,” “sensed by the mobile user devices,” “a network,” and “by pushing
at least part of the event-based offer to instances of a native application
installed on the mobile user devices” — as merely linking the abstract idea
to technological environment of networked mobile devices. See
Answer 6–7.
The Examiner and the Appellant disagree sharply, regarding the
application of Step 2A, Prong Two, with respect to the following limitations
of claim 1:
causing, by one or more processors, the event geofence to
be cached on a plurality of mobile user devices in response to
the mobile user devices requesting geofences corresponding to
geographic locations of the mobile user devices sensed by the
mobile user devices.
See Answer 7–8, 12–14; see also Appeal Br. 11–12.
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As an initial matter, as noted above, the Examiner includes the feature
of “requesting geofences corresponding to geographic locations” as part of
the judicial exception. Answer 5. Further, according to the Examiner, the
limitations of “causing, by one or more processors, the event geofence to be
cached on a plurality of mobile user devices” and “sensed by the mobile user
devices” in the paragraph of claim 1 just quoted (together with the recitation,
in the final paragraph of claim 1, “by pushing at least part of the event-based
offer to instances of a native application installed on the mobile user
devices”) are additional elements that merely “add insignificant extra-
solution activity” to the identified judicial exception and fail to effect any
technological improvement. Answer 7–8, 12–14.
Yet, the Examiner does not account for the phrase “in response to”
(concerning the prompt for causing event geofences to be cached on mobile
devices) or the specific recitation of “the mobile user devices” (as the
element that “request[s] geofences corresponding to geographic locations”)
— as being among the claim 1 limitations that describe either the judicial
exception or the additional elements.
By contrast, the Appellant argues that the entirety of the claim 1
paragraph in question — concerning the “mobile user devices” “requesting”
and “cach[ing]” “geofences” — integrates the judicial exception into a
practical application thereof, and achieves a technological improvement,
under Step 2A, Prong Two. Appeal Br. 10–12.
Whereas the Examiner does not categorize the “in response to” claim
language, noted above, as being part of the additional elements — and,
consequently, does not address its significance for the Step 2A, Prong Two,
analysis — the Appellant indicates that the claimed “in response to”
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language is important for assessing whether the additional elements integrate
the judicial exception into a practical application. Appeal Br. 10–12.
According to the Appellant:
[E]vent geofences are provided responsive to mobile user
devices’ reported location. Devices need not cache or monitor
geofences unrelated to their location. This affords a unique
practical application for improving geofence implementation in
the context of providing event-based offers. In naive [sic,
“native”] implementations, a large number of candidate
geofences could be provided to a user device (e.g., one for
every event in the US or world). This would drain the device’s
battery and waste bandwidth. In contrast, the claims recite a
more thoughtful approach, where only those geofences
corresponding to the mobile user devices’ current location are
stored and monitored client-side. The caching allows mobile
user devices to monitor some (but not necessarily all) geofences
known to the server-side logic.
Id. at 11 (emphasis added). See also id. at 12.
Because the Examiner does not address the “in response to”
limitation, in regard to the additional elements of claim 1, we are persuaded
that the Examiner does not adequately establish that the additional elements
fail to integrate the identified judicial exception into a practical application,
under Step 2A, Prong Two.
This does not mean that the Appellant persuasively argues that the
additional elements of claim 1 accomplish the proposed technological
improvement. Notably, the Appellant does not provide any reliable basis —
e.g., in the Specification or by way of an affidavit — to the effect that the
claimed technique achieves a technological improvement in managing
mobile device bandwidth and battery power. The Appellant’s assertions on
this score (see Appeal Br. 11–12) amount to attorney argument. See In re
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Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”) The Appellant does not remedy
this shortcoming, by referring to paragraph 74 of the Specification, which
incorporates by reference U.S. Patent App. 13/928,833 (“the ’833
Application”). See Appeal Br. 12. The Appellant points out that
paragraph 78 of the ’833 Application “stat[es that] geofence monitoring
‘services may be selected and implemented with the desire to limit power
consumption and maximize battery life of a mobile user device.’” Id.
However, the identified portion of the ’833 Application does not disclose
“cach[ing]” a “geofence” “in response to the mobile user devices requesting
geofences corresponding to geographic locations of the mobile user devices
sensed by the mobile user devices,” per claim 1. Nor does the identified
statement, in paragraph 78 of the ’833 Application — i.e., that geofence
monitoring services “may be selected and implemented with the desire to
limit power consumption and maximize battery life of a mobile user device”
— articulate the Appellant’s assertion that the particular identified
limitations of claim 1 preserve battery power and bandwidth.
Nevertheless, for the reasons provided above, we are, at least,
persuaded of error in the rejection of claim 1, with regard to analysis of Step
2A, Prong Two. Therefore, we do not proceed to Step 2B of the 2019
Revised Guidance.
The Examiner rejects the other disputed claims — claims 2–4, 7–13,
16–19, 24, and 29 — based upon essentially the same reasoning employed in
regard to claim 1. See Answer 9–11.
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The Appellant argues that the reasons for not sustaining the rejection
of independent claim 1 should also apply to claims 2–4, 7–13, 16–19, 24,
and 29. See Appeal Br. 10–11.
We agree. Independent claim 10 recites the same limitations critical
to our Step 2A, Prong Two, analysis of claim 1. Claims 2–4 and 7–9 depend
from claim 1. Claims 11–13 and 16–19 depend from claim 10. Claims 24
and 29 depend, respectively, from independent claims 20 and 25 —
independent claims for which the Appellant does not challenge the rejection.
See id. at 8. Yet, claims 24 and 29 each include limitations similar to those
of claim 1, discussed above. Therefore, our analysis of the claim 1 rejection
also applies to independent claim 10, the respective claims that depend from
claim 1 (claims 2–4 and 7–9) and claim 10 (claims 11–13 and 16–19), as
well as claims 24 and 29.
Accordingly, we do not sustain the rejection of claims 1–4, 7–13, 16–
19, 24, and 29 under 35 U.S.C. § 101. As noted above, we summarily
sustain the rejection of claims 20–23 and 25–28 under § 101, which the
Appellant does not contest (Appeal Br. 8).
Written Description
Claims 1–4, 7–13, 16–19, 24, and 29 stand rejected under 35 U.S.C.
§ 112(a), as failing to comply with the written description requirement.
The Appellant argues independent claims 1 and 10 together and offers
no separate argument for any of their dependent claims 2–4, 7–9, 11–13,
and 16–19. Appeal Br. 5–7. Therefore, we view the Appellant as arguing
claims 1–4, 7–13, and 16–19 as a group. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(iv), we select claim 1 for analysis herein.
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With regard to independent claims 1 and 10, the Examiner determines
that the Specification does not adequately disclose the following limitations:
causing, by one or more processors, the event geofence to
be cached on a plurality of mobile user devices in response to
the mobile user devices requesting geofences corresponding to
geographic locations of the mobile user devices sensed by the
mobile user devices.
See Final Act. 3. The Examiner states:
While ¶ 773 of the specification discloses that the “obtained
geofences and geofence identifiers may be stored (e.g., cached)
on the user device,” it fails to disclose that the event geofences
are cached in response to the mobile user device requesting
geofences corresponding to geographic locations of the mobile
user devices sensed by the mobile user devices.
Id.
“[T]he test for sufficiency,” in regard to the written description
requirement, “is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co, 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc) (citations omitted). However, “the level of detail required to satisfy
the written description requirement varies depending on the nature and scope
of the claims and on the complexity and predictability of the relevant
technology.” Id. (citation omitted).
The Appellant argues that, in addition to the paragraph identified by
the Examiner (corresponding to paragraph 75 of the Specification dated

3 The Examiner cites paragraph 77 of the published version (US
2015/0235268 A1, pub. Aug. 20, 2015) of the Application under review.
The Examiner’s citation corresponds to paragraph 75 of the original
Specification (Feb. 11, 2015).
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Feb. 11, 2015), paragraphs 36, 82, and 88 of the Specification provide
written-description support for the identified claim language. Appeal Br.
5–7.
The Specification supports at least a portion of claim 1, to the effect
that the claimed “event geofence” may be “cached on a plurality of mobile
user devices.” For example, paragraph 75 states: “In some embodiments,
the obtained geofences and geofence identifiers may be stored (e.g., cached)
on the user device.” Spec. ¶ 75. Similarly, paragraph 82 states:
In some embodiments, a mobile user device may store local
geofences and detect when the mobile user device enters a
geofenced area. For example, a mobile user device may obtain
location data via communication with a satellite-based
positioning system (e.g., GPS) or other suitable locating
techniques, such as Wi-Fi based locating, IP address
geolocation, or other techniques. Local geofences may be
obtained, such as from an offers engine 12, and stored on the
mobile user device. After a user carrying a mobile user device
crosses a geofence, a mobile user device may detect traversal of
the geofence and transmit a geofence identifier to the offers
engine 12. In some embodiments, the mobile user device may
include a program (e.g., a native service or application) that
monitors the location of the mobile user device and determines
traversal of a geofence. In some embodiments, a program of
the mobile user device may monitor the geofences stored (e.g.,
cached) on the mobile user device and detect traversal of a
stored geofence.
Id. ¶ 82. In addition, paragraph 36 states: “In some embodiments, the API
server 16 [of offers engine 12] communicates with the native application 52
of the mobile user device 28 or the third-party offer server 34.” Id. ¶ 36.
Further, paragraph 88 states:
In some embodiments, the mobile user devices 600 may obtain
geofences within a specific proximity of a location and store
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(e.g., cache) obtained local geofence data. For example, each
mobile user device 600 may store an identifier for the
geofence 604 and, in some embodiments, other data describing
the geofence 604. Next, as shown in Figures 6A and 6B, the
user 602 and mobile user devices 600 may traverse the
geofence 604 (as indicated by movement arrows 608). As
noted above, the traversal of the geofence 604 may be detected
by the mobile user devices 600. The mobile user devices 600
may be identified as mobile user devices located within the
geofence 604 and, consequently, attending the event occurring
at the event venue 606.
Id. ¶ 88.
However, the portions of the Specification identified by the Appellant
does not disclose that an “event geofence” may be “cached on a plurality of
mobile user devices” “in response to the mobile user devices requesting
geofences corresponding to geographic locations of the mobile user devices
sensed by the mobile user devices.” (Emphasis added).
The Appellant contends: “[T]he [S]pecification describes that an
offers engine may receive, from a user device, a request identifying which
data is to be retrieved by the offers engine and communicated by the offers
engine to the user device.” Appeal Br. 7. The Appellant also contends:
“The specification further describes that the offers engine may store
geofences for providing to the user devices.” Id.
Yet, contrary to the Appellant’s argument (Appeal Br. 7), the
Specification’s general description of communications between mobile
devices and the offers engine does not amount to claim 1’s “request[ ]” for
“geofences,” or “causing . . . the event geofence to be cached on a plurality
of mobile user devices in response to the mobile user devices requesting
geofences” — and, in particular, geofences “corresponding to geographic
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locations of the mobile user devices sensed by the mobile user devices”
(emphasis added).
Accordingly, we are not persuaded of error, in regard to the rejection
of independent claims 1 and 10, as well as dependent claims 2–4, 7–9,
11–13, and 16–19, for lacking adequate written description.
With regard to claims 24 and 29 (depending, respectively, from
independent claims 20 and 25) — each of which contains limitations similar
to those identified, above, from claims 1 and 10 — the Appellant relies upon
the arguments advanced for claims 1 and 10. Appeal Br. 7. Accordingly,
we sustain the rejection of claims 24 and 29, based upon the reasons
provided above.
Therefore, we sustain the rejection of claims 1–4, 7–13, 16–19, 24,
and 29 under 35 U.S.C. § 112(a).
Obviousness
Claims 1–4, 7–13, and 16–29 stand rejected as obvious over particular
combinations of prior art references and/or Official Notice. The Appellant
presents several arguments for the nonobviousness of various claims, which
we address below. Based upon the following analyses, we sustain the
rejections of claims 1–4, 7–13, 16, 17, and 19–29 under 35 U.S.C. § 103.
However, as explained below, we do not sustain the rejection of claim 18
under 35 U.S.C. § 103.
I. “pushing . . . the event-based offer to . . . mobile user devices”
(Independent Claims 1, 10, 20, and 25)
The Appellant argues that the Examiner erred in rejecting all of the
independent claims in the Appeal (i.e., claims 1, 10, 20, and 25), because the
cited prior art does not teach or suggest the following claim limitation:
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“pushing at least part of the event-based offer to instances of a native
application installed on the mobile user devices.” See Appeal Br. 17.
According to the Appellant, “the cited references are silent regarding
whether offers are pushed to, or are pulled by, the mobile devices.” Id.
The Examiner relies upon the Heisler reference as teaching this
limitation. Final Act. 12–13, 26–27 (citing Heisler ¶¶ 4, 7, 52, 62, 67, 68).
Heisler relates to techniques for “providing games and contests to
those specifically attending an event at an arena that provides various
benefits and advantages for the user of the games and contests and those
involved with the arena or hosting the event.” Heisler ¶ 2. Such attendees
participate in Heisler’s techniques “using a mobile device, such as a mobile
phone.” Id. ¶ 52. The mobile devices “respond to events triggered by
APNS (Apple Push Notification Services),” whereby, “[w]henever an event
occurs, the application relays the request to the proper class.” Id. ¶ 67. In
addition, “the system allows the clients to receive ad display requests over
APNS,” which “will trigger a screen to display an ad on all participating
phones or other input device.” Id. ¶ 69. Accordingly, Heisler sufficiently
teaches the claimed “pushing at least part of the event-based offer to
instances of a native application installed on the mobile user devices.”
Therefore, the Appellant’s argument, based upon the identified
“pushing” limitation, does not persuade us of error in the rejection of
independent claims 1, 10, 20, and 25.
II. “causing . . . the event geofence to be cached”
(Independent Claims 1 and 10; Dependent Claims 24 and 29)
Among the additional arguments presented for independent claims 1
and 10, the Appellant contends that these claims stand rejected erroneously,
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because the cited references fail to teach or suggest the following limitations
(appearing in each of claims 1 and 10):
causing, by one or more processors, the event geofence to
be cached on a plurality of mobile user devices in response to
the mobile user devices requesting geofences corresponding to
geographic locations of the mobile user devices sensed by the
mobile user devices.
See Appeal Br. 14–17. The Appellant relies upon the same argument for
claims 24 and 29 (depending, respectively, from independent claims 20
and 25), which contain similar limitations. Id. at 14.
The Examiner relies upon a combination of the Harkey and Sorden
references, in order to satisfy the identified limitations. Final Act. 14–19.
The Examiner relies upon Harkey for teaching “causing, by one or more
processors, the event geofence to be cached on a plurality of mobile user
devices.” Id. at 14–16. The Examiner relies upon Sorden for teaching “in
response to the mobile user devices requesting geofences corresponding to
geographic locations of the mobile user devices sensed by the mobile user
devices.” Id. at 16–18.
The Appellant disputes the Examiner’s reliance on Harkey, arguing
that “Harkey makes no mention of caching, let alone in the claimed
context.” Appeal Br. 15. Although conceding that Harkey discloses
“[s]toring a geofence in memory,” the Appellant argues that such teaching
“does not necessarily entail caching geofences corresponding to sensed
locations, as claimed.” Id. According to the Appellant, Harkey provides
“no indication of when, how, or for what reason parameters of a geofence
may be stored in a memory of the mobile device”; “[m]erely detecting
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traversal of a geofence in memory does not indicate how that geofence came
to be in memory.” Id.
Yet, the Appellant’s foregoing argument relates to features beyond the
claimed subject matter said to be taught in Harkey, per the Examiner’s
analysis: “causing, by one or more processors, the event geofence to be
cached on a plurality of mobile user devices.” Final Act. 14–16. Therefore,
the Appellant does not contradict the Examiner’s position that the identified
claim features are taught in, at least, Harkey’s paragraph 59. Id. at 15–16;
Answer 15–16.
The Appellant also argues: “the cited art does not teach the problem
addressed by the claimed caching technique, indicating that there is no
reason to modify the references to reach the claimed subject matter.”
Appeal Br. 15. Specifically, according to the Appellant, “one problem
mitigated by the claimed caching operation arises from power and
bandwidth challenges faced by mobile computing devices.” Id. The
Appellant argues that Harkey did not recognize the battery or bandwidth
problems and, consequently, “Harkey only discusses geolocation with
respect to a determination of whether a device has crossed a threshold
without mention of caching.” Id. at 16.
These additional arguments relating to Harkey are not persuasive. As
noted, Harkey’s paragraph 59 adequately teaches the feature of “causing . . .
the event geofence to be cached on a plurality of mobile user devices.”
Further, an adequate reason to combine or modify teachings need not be the
same reason that led the Appellant to develop the claimed subject matter:
In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
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purpose of the patentee controls. What matters is the objective
reach of the claim. . . .
[T]he problem motivating the patentee may be only one of
many addressed by the patent’s subject matter. The question is
not whether the combination was obvious to the patentee but
whether the combination was obvious to a person with ordinary
skill in the art. Under the correct analysis, any need or problem
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419–20 (2007).
Turning to the Sorden reference, the Appellant argues that the cited
portions of Sorden “relate to a user defining or selecting geolocations from
an interface or receiving a notification of a current location” — but fail to
teach the claimed “in response to the mobile user devices requesting
geofences corresponding to geographic locations of the mobile user devices
sensed by the mobile user devices.” Appeal Br. 16.
As to the limitation in question, the Examiner (Final Act. 16–18;
Answer 16) relies upon paragraph 81 of Sorden, which states, in part:
A geo-fence can either be created dynamically or be associated
with a physical object in a static manner. In one embodiment,
when a user of the wireless device 20 or a computing device
enters an area that is geofenced the wireless device 20 will
receive a notification (SMS text, MMS text, voice response,
email, or any other type of notification) that is [sic] has entered
a certain location. The notification can include information
related to whether the user wants to opt-in to a location-based
service 10, register with a location, receive information about
the location that is geofenced, or information about other
wireless device 20 users within the geofenced locations. . . . In
another embodiment, a user of a computing device or wireless
device 20 can define or select a geofenced area 60 or multiple
geofenced areas. In one embodiment, the geofenced areas are
displayed on a graphical map interface on the computing device
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or wireless device 20. The user can select one or more
geofenced areas displayed on the mapping interface and request
additional information from the selected geofenced areas.
Sorden ¶ 81.
Disputing the Examiner’s position, the Appellant argues that “if only
the current location matters, there is no need to cache geofences.” Appeal
Br. 17. However, the Examiner relies upon Harkey (not Sorden) for the
claimed feature of the “event geofence” being “cached.” Final Act. 14–16.
Moreover, the Examiner’s position does not turn on whether or not there
might be a “need to cache geofences,” as the Appellant contends (Appeal
Br. 17).
The Appellant also argues that Sorden is deficient, for the following
reasons:
[W]ith respect to user defined geofences or selecting a geofence
area within an interface, there is no requirement for the user
define geofences or selected geofences to correspond to
geolocations sensed by the device. Nor is it similar to a caching
operation as claimed where the cached geolocations correspond
to geolocations sensed by the device. For example, a user may
define a geofence within Canada for an oil and gas field from
an office in LA without the device having ever sensed a
geolocation corresponding to that which the user defined. The
user may also select a defined geofence in Canada via a user
interface of their device without the device having ever sensed
any location.
Appeal Br. 17.
This argument is also unpersuasive. Sorden’s potential disclosure of
particular features not appearing in the identified claim language — such as
permitting a user to select a distant geofence that is not sensed by the user’s
mobile device (see Appeal Br. 17) — does not diminish the Examiner’s
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position that Sorden teaches or suggests the claim limitation at issue.
Indeed, Sorden states: “when a user of the wireless device 20 or a
computing device enters an area that is geofenced the wireless device 20 will
receive a notification . . . that is [sic] has entered a certain location.” Sorden
¶ 81. In other words, Sorden teaches the claimed “mobile user devices”
“sens[ing]” “geofences corresponding to geographic locations of the mobile
user devices.”
Accordingly, the foregoing arguments are not persuasive of error in
the rejection of claims 1, 10, 24, and 29.
III. Reasons To Combine or Modify Teachings
(Independent Claims 1 and 10)
The Appellant disputes the sufficiency of three reasons to combine or
modify particular teachings of prior art references, in the rejection of
independent claims 1 and 10. Appeal Br. 17–19.
First, the Appellant challenges the Examiner’s position of
“modify[ing] [Heisler’s] sporting event location requirement,” by combining
it with Montgomery’s teaching of claim 1’s geofence that “defin[es] a
perimeter around a geographic area that includes an event venue.” Appeal
Br. 17–18 (quoting Final Act. 14). According to the Examiner, a person of
ordinary skill in the art, at the relevant time, would have undertaken the
modification, because Montgomery (e.g., paragraph 7 thereof) provides the
feature of determining qualified users. Final Act. 14. The Appellant argues
that such feature is an “additional, superfluous qualification to that already
performed by Heisler,” because “an attendee located at the sporting event is
nothing other than a user already determined to be qualified.” Appeal
Br. 18.
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24
This argument is not persuasive, because it lacks evidentiary support
for the assertion that Heisler discloses the determination of qualified users.
The Appellant’s assertion, as to Heisler’s teachings, is purportedly based
upon the Examiner’s findings. See Appeal Br. 18. Yet, the Appellant’s
position appears to depend upon attorney argument, rather than any
identified finding of the Examiner. See In re Pearson, 494 F.2d at 1405
(“Attorney’s argument in a brief cannot take the place of evidence.”)
Second, the Appellant disputes the Examiner’s position that a person
of ordinary skill in the art, at the relevant time, would have modified the
combination of Heisler and Montgomery, by adding Harkey’s teaching of
caching the event geofence. Appeal Br. 17–18. According to the Appellant,
“Harkey makes no mention of caching, let alone for the reasons addressed
by the present application” — i.e., “one aspect of the problem mitigated by
the independent claims arises from power and bandwidth challenges faced
by mobile computing devices.” Id. at 18.
This argument, which repeats issues addressed above, is unpersuasive
for the reasons already identified. Harkey’s paragraph 59 adequately teaches
claim 1’s feature of “causing . . . the event geofence to be cached on a
plurality of mobile user devices.” Further, the Appellant’s position — to the
effect that the claimed subject matter was achieved, in order to address
battery and bandwidth limitations of mobile devices — does not limit the
viability of other reasons for demonstrating obviousness. See KSR, 550 U.S.
at 419–20.
Finally, the Appellant disputes the Examiner’s reasoning for
modifying the combination of Heisler, Montgomery, and Harkey, with
Sorden’s teaching of claim 1’s feature “in response to the mobile user
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devices requesting geofences corresponding to geographic locations of the
mobile user devices sensed by the mobile user devices.” See Appeal Br. 18.
According to the Examiner, the modification/combination would have
been obvious, because the addition of Sorden’s technique for selecting
geofences “would enable users to receive localized advertisements, search
for information or assets within the geofence, emergency services, and/or
any other task associated with a geofenced location or area.” Final Act. 18
(citing Sorden ¶ 46).
Disputing the Examiner’s position, the Appellant argues:
[T]he selection operation in Sorden is performed by a user who
defines and selects specific geofenced areas manually on their
device, not in association with caching in response to the
mobile user devices requesting geofences corresponding to
geographic locations of the mobile user devices sensed by the
mobile user devices. . . . [T]he only stated motivation to
combine Sorden is a tautology to advance a piecemeal attack on
a single claim feature. The basis for combining a feature from a
reference cannot simply be to obtain the missing feature,
especially where that feature is not taught by the reference. See
e.g., In re NuVasive, Inc., 842 F. 3d 1376, 1383 (Fed. Cir.
2016); and In re Chaganti, 2014, WL 274514, *4 (Fed. Cir.
2014) (non-precedential) (stating “circular reasoning is not
sufficient — more is needed to sustain an obviousness
rejection.”) Otherwise, the Supreme Court’s requirement in
KSR for a rational underpinning to support the combination
would be deprived of meaning: every combination would be
self-supporting. The only benefit the Examiner has identified is
that of obtaining the feature missing from the primary
reference.
Appeal Br. 19.
The Examiner’s analysis does not run afoul of the cited principles,
however. To begin with, the rejection relies upon Harkey (not Sorden) for
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the claimed “cach[ing]” feature. Further, as the Supreme Court stated in
KSR, 550 U.S. at 420, “any need or problem known in the field of endeavor
at the time of invention” can provide a viable reason for combining or
modifying prior art teachings. Here, the Appellant has not explained why
the reasons advanced for applying Sorden’s features (e.g., the enhanced
communications capabilities, per Sorden paragraph 46) would not satisfy
KSR, let alone why the Examiner’s position might constitute circular
reasoning, as the Appellant contends.
Accordingly, the Appellant’s foregoing arguments do not persuade us
of error in the rejection of independent claims 1 and 10.
IV. Official Notice
(Dependent Claim 18)
The Appellant separately argues that claim 18 (which depends from
independent claim 10) stands rejected erroneously, because the Examiner
improperly relies upon Official Notice to teach the limitation of a “geofence
that does not include the event venue.” See Appeal Br. 20.
The Examiner takes Official Notice that the identified limitation is
“old and well-known.” Final Act. 25. “For example,” the Final Office
Action states,
it is known that a merchant can set a defined boundary in which
users located within this defined boundary can receives [sic]
targeted offers from the merchant. This defined boundary may
or may not include a merchant location as the merchant may
want to obtain new customers who are located away from the
merchant.
Id.
The Appellant argues that the Official Notice is deficient, in regard to
the limitation of claim 18, because a merchant’s strategy of deploying a
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geofence, so as to attract new customers located away from the merchant,
does not explain why such a geofence would exclude the “event venue,” as
recited in claim 18. Appeal Br. 20. Additionally, the Appellant argues that
crafting a geofence, in the manner of claim 18, is not well-known. Id.
The predecessor of our reviewing court addressed the USPTO’s
capacity to take notice of certain facts, where independent evidence is
absent:
As to the propriety of the board’s taking such notice at all, this
court has already previously determined that the Patent Office
appellate tribunals, where it is found necessary, may take notice
of facts beyond the record which, while not generally notorious,
are capable of such instant and unquestionable demonstration as
to defy dispute. In re Knapp Monarch Co., 296 F.2d 230, 49
CCPA 779 (1961). This rule is not, however, as broad as it first
might appear, and this court will always construe it narrowly
and will regard facts found in such manner with an eye toward
narrowing the scope of any conclusions to be drawn therefrom.
Assertions of technical facts in areas of esoteric technology
must always be supported by citation to some reference work
recognized as standard in the pertinent art and the appellant
given, in the Patent Office, the opportunity to challenge the
correctness of the assertion or the notoriety or repute of the
cited reference. Cf. In re Cofer, 354 F.2d 664, 53 CCPA 830
(1966); In re Borst, 345 F.2d 851, 52 CCPA 1398 (1965).
Allegations concerning specific “knowledge” of the prior art,
which might be peculiar to a particular art should also be
supported and the appellant similarly given the opportunity to
make a challenge. See In re Spormann, 363 F.2d 444, 53
CCPA 1375 (1966).
In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970). In other words, “Official
notice unsupported by documentary evidence should only be taken by the
examiner where the facts asserted to be well-known, or to be common
knowledge in the art are capable of instant and unquestionable
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demonstration as being well-known.” MPEP § 2144.03(A) (9th ed.
March 2014, Rev. June 2020 [R-10.2019]).
In regard to claim 18, the highly specific and arguably uncommon
nature of the claim feature at issue, in addition to the Appellant’s question of
how the identified subject matter (purportedly based upon Official Notice)
relates to the Examiner’s reasoning, warrant the Appellant’s challenge to the
reliance upon Official Notice, in this instance.
Therefore, we do not sustain the rejection of dependent claim 18
under 35 U.S.C. § 103.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–13,
16–19, 24,
29
112(a) Written
Description
1–4, 7–13,
16–19, 24,
29

1–4, 7–13,
16–29
101 Subject Matter
Eligibility
20–23,
25–28
1–4, 7–13,
16–19, 24,
29
1–4, 7–13,
16, 17, 19,
24, 29
103 Heisler,
Montgomery,
Harkey, Sorden
1–4, 7–13,
16, 17, 19,
24, 29

18 103 Heisler,
Montgomery,
Harkey, Sorden,
Official Notice
18
20–22,
25–27
103 Heisler,
Montgomery
20–22,
25–27

23, 28 103 Heisler,
Montgomery,
Official Notice
23, 28
Overall
Outcome
1–4, 7–13,
16–29

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RACHEL RENEE BELL and NICHOLAS JAMES SHIFFERT

Appeal 2020-002892
Application 14/619,756
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

Opinion for the Board filed by SILVERMAN, Administrative Patent Judge.

Opinion Concurring filed by MURPHY, Administrative Patent Judge.

MURPHY, Administrative Patent Judge.

I join with the Majority’s affirmance of the Examiner’s rejections
under 35 U.S.C. §§ 103 and 112, and I agree with the analyses leading to
these outcomes.
I concur with the Majority’s reversal of the Examiner’s rejection
under 35 U.S.C § 101, and I agree with the analysis leading to this outcome
— except for the discussion regarding the Appellant’s argument concerning
battery life and bandwidth. The Majority’s comments give me pause
because they seem to imply that the Appellant must always shoulder an
unfair evidentiary responsibility in order to overcome an even
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unsubstantiated determination that a claim is directed to an abstract idea
under the first step of the Alice framework.
The Appellant advances a practical-application argument that is
premised on the “in response to” limitation recited in independent claim 1
and how it contributes to a technical improvement in managing mobile
device bandwidth and battery power. (See Appeal Br. 11.) Because the
Examiner does not address the “in response to” limitation, and because the
Appellant argues this limitation, the Majority concludes, and I agree, that the
Examiner does not adequately establish that the additional elements fail to
integrate the identified judicial exception into a practical application, under
Step 2A, Prong Two. In other words, our reversal hinges upon the Examiner
completely overlooking a limitation argued by the Appellant, not the
persuasiveness of the argument itself.
Nonetheless, the Majority proceeds to comment on the evidentiary
shortcomings of the Appellant’s argument that the claimed technique
achieves a battery/bandwidth improvement. The Majority does not maintain
that the Appellant fails to provide a plausible technical explanation as to
why such an improvement is achieved. Rather, the Majority seems to say
that this explanation, even it rests upon straightforward technical reasoning,
is undeserving of a close look because it is simply “attorney argument.”
To be clear, if the record contains evidence supporting the Examiner’s
Prong-Two determination (e.g., in the Specification), and the Majority had
relied upon this evidence in its analysis, attorney argument alone would not
be enough to meaningfully challenge this determination. If the Examiner
had provided a plausible technical explanation to support his/her Prong-Two
determination, and the Majority had deemed the Appellant’s technical
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explanation less plausible, attorney argument alone would not be enough to
overcome this determination. But the Examiner offers neither evidence nor
technical reasoning.
In the Answer, the Examiner acknowledges the Appellant’s argument
that “the claimed invention provides an improvement to the functioning of
the computer.” (Answer 12.) But the Examiner’s response to this
acknowledged argument does not even mention the words “battery” or
“bandwidth.” Rather, the Examiner responds that “[t]he concept of caching
information was not invented by Appellants,” “[t]he mobile devices recited
in the claims and the [S]pecification are recited at a high level of generality,”
and “[t]he mobile devices are being used as tools in their ordinary capacity
to perform the abstract idea.” (Id. at 12–13.) Thus, the Examiner provides,
at most, a conclusory statement that the Appellant’s technical reasoning
about battery/bandwidth improvement is without merit.
The Majority’s comments imply that, although we would blindly
accept the Examiner’s Prong-Two determination even though he/she gives
us little to nothing in the way of “reliable basis,” the Appellant must still
provide “reliable basis” in order to even have a prayer of challenging the
Examiner’s determination. To me, this unfairly places evidentiary
responsibility solely on the shoulders of the Appellant.
This is not to say that I consider the Appellant’s argument about
battery/bandwidth improvement as persuasively establishing that the
identified abstract idea has been integrated into a practical application.
Indeed, in my view, the Appellant’s argument would miss the mark even if
bolstered by the Specification, an affidavit, or other evidence.
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According to the Appellant, when “event geofences are provided
responsive to mobile user devices’ reported locations,” the mobile user
devices “need not cache or monitor geofences unrelated to their location.”
(Appeal Br. 11.) The Appellant explains that, without this feature, “a large
number of candidate geofences could be provided to a user device (e.g., one
for every event in the US or the world)” and “[t]his would drain the device’s
battery and waste bandwidth.” (Id.) The Appellant contends that “the
claims recite a more thoughtful approach, where only those geofences
corresponding to the mobile user devices’ current locations are stored and
monitored client side.” (Id.)
A fatal flaw in the Appellant’s argument is that it is does not align
with what is actually being claimed. Contrary to the Appellant’s contention,
independent claim 1 is not confined to an approach where only those
geofences corresponding to the mobile devices’ respective current locations
are stored and monitored. Although independent claim 1 may “allow”
mobile user devices to monitor some (but not necessarily all) geofences,
claim 1 does not preclude “a large number of candidate geofences” (e.g.,
“one for every event in the US or world”) from also being provided to the
mobile user devices. Likewise, claim 1 does not specify the magnitude of
the “perimeter around” the geographic area that includes the event venue,
and, therefore, this perimeter could be wide enough to encompass “every
event in the US or world.” Thus, claim 1 covers scenarios where “a large
number of candidate geofences” are provided to the mobile user devices,
and, according to the Appellant, these covered scenarios “would drain the
device’s battery and waste bandwidth.”
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I further question whether the Appellant’s battery/bandwidth
explanation boils down to the notion that the less information stored on a
computer component, the less battery/bandwidth is used by the computer
component. If so, any improvement resides in the reduction of information,
which often is unrelated to the software/hardware interworkings of the
computer component itself. The Appellant’s explanation implies that, with
its claimed method, a reduction in information stems from potential
customers being provided with only geographically-relevant offers, as
opposed to offers for every event in the US or world. This would seem to be
an advantageous aspect of any advertising strategy that targets potential
customers based upon their geographic locations, and thus a part of the
abstract idea recited in independent claim 1.
In any event, I agree with the Majority’s reversal of the Examiner’s
§ 101 rejection and I share the sentiment that the Appellant’s battery/
bandwidth argument does not adequately establish that independent
claim 1’s additional elements integrate the identified abstract idea into a
practical application.