Scott P. Monahan

Patent Trials and Appeals Board

Jul 23, 2019

13048060 - (D) (P.T.A.B. Jul. 23, 2019)

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.
13/048,060 03/15/2011 Scott P. MONAHAN 103317/1173-521 7971
115309 7590 07/23/2019
W&T/Qualcomm
106 Pinedale Springs Way
Cary, NC 27511
EXAMINER
OSMAN BILAL AHME, AFAF
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
07/23/2019 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):
ocpat_uspto@qualcomm.com
patents@wt-ip.com
us-docketing@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT P. MONAHAN
____________

Appeal 2018-004518
Application 13/048,060
Technology Center 3600
____________

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

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 4, 6–8, 10, 11, 14, 16–18, 20, 21, 24, 26–28, 30,
31, 34, 36–38, and 40, which constitute all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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STATEMENT OF THE CASE
Appellant’s invention is directed to a system and method for
“determining a location of a consumer within a retail establishment” that
“leverage[s] existing infrastructure, such as wireless routers, to assist the
PCD [portable computing device] and a remote server in communication
with the PCD to determine a location of a consumer in possession of the
PCD within a retail location.” Spec. ¶ 6. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A method for providing an electronic retail offer based
on the location of a portable computing device (“PCD”),
comprising the steps of:
receiving from the PCD over a telecommunications
network a service set identifier (“SSID”) at a processor of a
remote server, wherein:
the SSID is broadcast from a physically stationary
wireless router such that a broadcast range of the
physically stationary wireless router defines a
geographical region;
the SSID is received at the processor of the remote
server in response to the PCD physically entering the
broadcast range of the physically stationary wireless
router, receiving the SSID from the physically stationary
wireless router and transmitting the SSID over the
telecommunications network to the processor of the
remote server; and
the remote server is physically located outside the
broadcast range of the physically stationary wireless
router;
determining with the processor of the remote server if the
received SSID is valid;
querying a database with the processor of the remote
server for the SSID, wherein the SSID is associated in the
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database with physical location data of the physically stationary
wireless router;
based on the physical location data of the physically
stationary wireless router, determining that the physical
location of the PCD is within the defined geographical region
of the physically stationary wireless router; and
the processor of the remote server transmitting a retail
offer over the telecommunications network, wherein the offer is
based on the physical location data of the wireless router.

REJECTIONS
Claims 1, 4, 6–8, 10, 11, 14, 16–18, 20, 21, 24, 26–28, 30, 31, 34, 36–
38, and 40 stand rejected under 35 U.S.C. § 101 for being directed to patent-
ineligible subject matter. Final Act. 7.
Claims 1, 11, 21, and 31 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written-description requirement.
Final Act. 8.
Claims 1, 11, 21, and 31 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 9.
Claims 1, 6–8, 10, 11, 16–18, 20, 21, 26–28, 30, 31, 36–38, and 40
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Moore et
al. (US 7,200,566 B1; issued Apr. 3, 2007) (“Moore”) and Jabara et al. (US
2011/0076948 A1; published Mar. 31, 2011) (“Jabara”). Final Act. 10.
Claims 4, 14, 24, and 34 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Moore, Jabara, and Donaldson et al. (US
2009/0098903 A1; published Apr. 16, 2009) (“Donaldson”). Final Act. 12.

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ANALYSIS
35 U.S.C. § 101 Rejections
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski v. Kappos, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
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elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (internal citation
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). Under that guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity such as a
fundamental economic practice, or mental processes); and

(2) additional elements that integrate the judicial exception
into a practical application (see MANUAL OF PATENT
EXAMINING PROCEDURE (MPEP) § 2106.05(a)–(c), (e)–(h)
(9th Ed., Rev. 08.2017, Jan. 2018)).
The Memorandum “extracts and synthesizes key concepts identified
by the courts as abstract ideas to explain that the abstract idea exception
includes the following groupings of subject matter, when recited as such in a
claim limitation(s) (that is, when recited on their own or per se)”:
(a) Mathematical concepts—mathematical
relationships, mathematical formulas or equations,
mathematical calculations;

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(b) Certain methods of organizing human activity—
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or
sales activities or behaviors; business relations); managing
personal behavior or relationships or interactions between
people (including social activities, teaching, and following
rules or instructions); and

(c) Mental processes—concepts performed in the
human mind (including an observation, evaluation,
judgment, opinion).
Memorandum, 84 Fed. Reg. at 52 (footnotes omitted). Only if a claim
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application, do we then look to whether the claim:
(1) adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the
field (see MPEP § 2106.05(d)); or

(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 52–57.
USPTO Memorandum, Step 2A, Prong 1
Under the first step of the Alice/Mayo framework, the Examiner
concludes the claimed invention is directed towards “a judicial exception,
namely the abstract idea of: determining a location of a portable computing
device.” Final Act. 7. Specifically, the Examiner concludes the “querying a
database with the processor . . .,” “determining . . . the physical location
. . .,” and “determining . . . if the received SSID is valid . . .” limitations are
“directed toward a fundamental economic practice.” Id.; see also Final
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Act. 3. The Examiner further concludes the “determining . . . the physical
location . . .” and “determining . . . if the received SSID is valid . . .”
limitations are “a series of calculations and organizing data based on
calculated values,” which are abstract ideas. Id. (emphasis omitted). The
Examiner also concludes “the claims are drawn to comparing new and stored
information and using rules to identify options that the courts have found to
be abstract idea[s].” Id. at 8 (emphasis omitted) (citing SmartGene, Inc. v.
Advanced Biological Labs., 555 Fed. App’x 950 (Fed. Cir. 2014)); see also
Ans. 4.
Appellant argues the claimed invention “may be interpreted to include
an underlying abstract idea in the form of an economic practice (making a
retail offer to a consumer),” but that the “subject matter is not rendered
ineligible simply because it involves an abstract concept.” App. Br. 11–12
(emphasis added).
The Examiner concludes claim 1 itself and certain limitations in claim
1 recite several different abstract ideas: (1) determining a location of a
portable computing device; (2) comparing new and stored information and
using rules to identify options; (3) a series of calculations and organizing
data based on calculated values; and (4) a fundamental economic practice.
See Final Act. 3, 7–8. First, we note that “determining a location of a
portable computing device” does not fall within the categories of abstract
ideas identified by the Memorandum. Second, the Examiner’s conclusion
that (1) the claimed invention is drawn to comparing new and stored
information and using rules to identify options; and (2) the “determining . . .
the physical location . . .” and “determining . . . if the received SSID is valid
. . .” limitations are directed to the abstract idea of organizing data based on
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calculated values, does not sufficiently explain how the claimed invention
recites an abstract idea under the guidelines in the Memorandum.
Specifically, claim 1 recites the following limitations:
● “receiving from the PCD over a telecommunications
network a service set identifier (‘SSID’) at a processor of
a remote server”
● “the SSID is broadcast from a physically stationary
wireless router such that a broadcast range of the
physically stationary wireless router defines a
geographical region”;
● “the SSID is received at the processor of the remote
server in response to the PCD physically entering the
broadcast range of the physically stationary wireless
router, receiving the SSID from the physically stationary
wireless router and transmitting the SSID over the
telecommunications network to the processor of the
remote server”;
● “determining with the processor of the remote server if
the received SSID is valid”;
● “querying a database with the processor of the remote
server for the SSID, wherein the SSID is associated in the
database with physical location data of the physically
stationary wireless router”;
● “determining with the processor of the remote server if
the received SSID is valid”;
● “based on the physical location data of the physically
stationary wireless router, determining that the physical
location of the PCD is within the defined geographical
region of the physically stationary wireless router.”
App. Br. 26. Independent claims 11, 21, and 31 recite similar limitations.
See App. Br. 29, 32, 35.
In SmartGene, the Federal Circuit held that “the claim at issue here
involves a mental process excluded from section 101: the mental steps of
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comparing new and stored information and using rules to identify medical
options.” SmartGene, 555 Fed. App’x at 955. As relevant here, the
Memorandum explains that mental processes include “concepts performed
in the human mind,” such as “an observation, evaluation, judgment, [or]
opinion.” Memorandum, 84 Fed. Reg. at 52. The Memorandum further
explains that mathematical concepts include “mathematical relationships,
mathematical formulas or equations, [and] mathematical calculations.” Id.
We do not see, and the Examiner has not sufficiently explained, how
the above-quoted limitations, or even specifically the “determining . . . the
physical location . . .” and “determining . . . if the received SSID is valid
. . .” limitations cited by the Examiner, recite a mental process practically
performed in the human mind or a mathematical relationship, formula,
equation, or calculation as set forth in Memorandum. Rather, the above-
quoted limitations generally recite steps to receive and use a physically
stationary wireless router’s SSID to determine that the user’s device is
located within a defined geographical region of the physically stationary
wireless router.
Further, the Examiner has not sufficiently explained how the
“querying a database with a processor,” determining . . . the physical
location . . .,” and “determining . . . if the received SSID is valid . . .”
limitations recite a fundamental economic practice. See Final Act. 3, 7. The
Memorandum identifies “fundamental economic principles or practices
(including hedging, insurance, mitigating risk)” as among the enumerated
methods of organizing human activity. Memorandum, 84 Fed. Reg. at 52.
We do not see how these three limitations recite a fundamental economic
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practice as described in the Memorandum, nor has the Examiner provided
any explanation.
The last limitation in claim 1 recites “the processor of the remote
server transmitting a retail offer over the telecommunications network,
wherein the offer is based on the physical location data of the wireless
router.” App. Br. 26; see App. Br. 29, 32, 35. Appellant admits “making a
retail offer to a consumer” includes an abstract idea in the form of an
economic practice. See App. Br. 11; see also App. Br. 13. We agree that
this limitation recites “advertising, marketing, or sales activities,” which,
along with fundamental economic principles or practices, is identified as an
abstract idea of certain methods of organizing human activity under the
guidelines in the Memorandum. See Memorandum, 84 Fed. Reg. at 52.
Accordingly, under Step 2A, Prong 1, claim 1 recites an abstract idea.
USPTO Memorandum, Step 2A, Prong 2
In determining whether the claims are “directed to” the identified
abstract idea, we next consider whether the claims recite additional elements
that integrate the judicial exception into a practical application.1 See
Memorandum, 84 Fed. Reg. at 54–55. We conclude that they do.
Appellant argues the claims are similar to those in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), in that “[t]he
claimed solutions address a business challenge (providing electronic retail

1 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See Memorandum, 84 Fed. Reg. at 55 n.25, 27–32.

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offers to consumers based on the specific location of the consumer’s
portable computing device) that is particular to the technological
environment of wireless networks and portable computing devices.” App.
Br. 13. According to Appellant, “the claimed solution is necessarily rooted
in computer technology, i.e. rooted in mobile devices configured to
communicate through a network and engage in mobile commerce.” App.
Br. 13. Appellant argues that, “when taken as a whole, the claimed solution,
like the DDR model claim, amounts to significantly more than any
underlying abstract idea.” App. Br. 14–15.
We agree. In particular, the claims address the problem of accurately
identifying a consumer’s presence within an establishment, and then using
that information for targeted sales. See Spec. ¶¶ 3, 5. Moreover, claim 1
recites the particular solution to this problem in a specific way to achieve the
desired outcome (e.g., receiving and using a physically stationary wireless
router’s SSID to determine that the user’s portable computing device is
located within a defined geographical region of the physically stationary
wireless router), rather than merely claiming the result (e.g., transmitting a
retail offer based on a location). In our view, the combination of limitations
in the claim, when viewed as a whole, integrates the identified abstract idea
into a practical application under the guidelines in the Memorandum. See
Memorandum, 84 Fed. Reg. at 55; see also Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (“the ‘directed to’ inquiry applies a
stage-one filter to claims, considered in light of the specification, based on
whether ‘their character as a whole is directed to excluded subject matter.’”);
Spec. Title (“User Identification Within a Physical Merchant Location
Through the Use of a Wireless Network”), ¶ 5 (“what is needed is a system
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and method for positively verifying a consumer’s presence in a retail
establishment . . .”), ¶ 6 (“leverage existing infrastructure, such as wireless
routers, to assist the PCD and a remote server in communication with the
PCD to determine a location of a consumer in possession of the PCD within
a retail location.”), ¶¶ 27, 28.
We, therefore, agree the Examiner erred. Accordingly, we do not
sustain the Examiner’s § 101 rejection of claims 1, 4, 6–8, 10, 11, 14, 16–18,
20, 21, 24, 26–28, 30, 31, 34, 36–38, and 40.

Section 112 Rejections
35 U.S.C. § 112, First Paragraph, Rejection
The Examiner finds that the claim language “determining with the
processor of the remote server if the received SSID is valid” fails to comply
with the written-description requirement. See Final Act. 9; Ans. 5.
Specifically, the Examiner finds that the Specification and drawings do not
“disclose in detail the specific steps or algorithm needed to perform the
operation.” Final Act. 9. According to the Examiner, Appellant’s
Specification “gives several examples but does not provide the algorithm
that performs the claimed” determining “function in sufficient detail such
that one of ordinary skill in the art can reasonably conclude that the inventor
had possession of the claimed subject matter.” Final Act. 9; see Ans. 5.
Appellant contends that “one of ordinary skill in the art of
programming could easily be able to program a processor to determine a
physical location of a PCD based on a known physical location of a router
and SSID router data received from the PCD” and does “not need . . . a
particular algorithm in the specification in order . . . to implement the
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solution.” App. Br. 15 (citing Spec. ¶¶ 71–72). Appellant further identifies
paragraphs 49 and 50 and Figures 1, 3, and 4 of the Specification, as
describing the limitation. App. Br. 5, 15–16. According to Appellant,
“[r]equiring specific software coding examples, explanations of wireless
communication protocols, encryption algorithms, database languages and
query techniques, etc. is unreasonable and not required for understanding of
the claims.” App. Br. 16.
To satisfy the written-description requirement, a patent specification
must describe the claimed invention in sufficient detail that one skilled in the
art can reasonably conclude that the inventor had possession of the claimed
invention. See, e.g., Moba, B.V. v. Diamond Auto., Inc., 325 F.3d 1306,
1319 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563
(Fed. Cir. 1991). “[T]he test requires an objective inquiry into the four
corners of the specification from the perspective of a person of ordinary
skill in the art,” where “the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The exact level of detail
required depends upon “the nature and scope of the claims and on the
complexity and predictability of the relevant technology.” Id. Factors for
“evaluating the adequacy of the disclosure” may include “‘the existing
knowledge in the particular field, the extent and content of the prior art, the
maturity of the science or technology, [and] the predictability of the aspect at
issue.’” Id. (quoting Capon v. Eshhar, 418 F.3d 1349, 1359 (Fed. Cir.
2005)).
In describing Figure 4, the Specification states:
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Returning back to exemplary method 400 in the context of
a preferred customer with an associated PCD 110 entering
a merchant’s storefront 135, at step 435, a server 105 may
run a server-side validation routine (as opposed to the
PCD-side routine of a V/R module that may be run at step
420 in some embodiments of a PCD 110). The information
taken from the validation at step 435 may comprise, but is
not limited to, frequency data representative of the number
of times a particular SSID has been received by server
105, time of day, updated PCD user data transmitted
along with the SSID, etc. This information from step 435
may be stored in database 120 at step 440.
Spec. ¶ 49 (emphasis added).
We find the Specification’s description of validation, using a
validation routine and information such as frequency data representing the
number of times the SSID has been received, sufficiently shows Appellant
had possession of the disputed limitation.
Accordingly, we reverse the Examiner’s 35 U.S.C. § 112, first
paragraph, rejection of claims 1, 11, 21, and 31.

35 U.S.C. § 112, Second Paragraph, Rejection
The Examiner concludes that the limitation “the SSID is broadcast
from a physically stationary wireless router such that a broadcast range of
the physically stationary wireless router defines a geographical region,” as
claimed, is indefinite. Final Act. 9; Ans. 6. Specifically, the Examiner
explains that the “use of the term ‘such that’ is an exemplary language and
the Examiner is unable to determine the meets [sic] and bounds of the
claim.” Ans. 6.
Appellant argues that the claim amendment “such that the wireless
router is physically stationary” limits the wireless router “to a specific
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geographic location.” App. Br. 17. According to Appellant, “one of
ordinary skill in the art reviewing the specification would understand that the
geographical region for the wireless router is defined by the broadcast range
of the wireless router” and that “the recited geographical region is an area
around the wireless router limited by the broadcast range of the wireless
router.” App. Br. 17.
We are persuaded by Appellant’s arguments. “A claim is indefinite if,
when read in light of the specification, it does not reasonably apprise those
skilled in the art of the scope of the invention.” Amgen, Inc. v. Hoechst
Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). “As the
statutory language of ‘particular[ity]’ and ‘distinct[ness]’ indicates, claims
are required to be cast in clear – as opposed to ambiguous, vague, indefinite
– terms. It is the claims that notify the public of what is within the
protections of the patent, and what is not.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014).
Appellant’s Specification describes
If the received SSID is found valid at step 445, then at step
450 the PCD 110 which transmitted the SSID to server 105
at step 430 may be located by querying database 120 to
determine the geographical proximity of the wireless
router device 125 associated with the SSID.
Advantageously, because the geographic proximity
associated with the wireless router 125 may be associated
with the unique SSID broadcast by the wireless router 125,
the location of the PCD 110 user may be positively
identified.
Spec. ¶ 50 (emphasis added).
In light of this disclosure in the Specification, the Examiner does
not sufficiently explain why the claimed “the SSID is broadcast from a
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physically stationary wireless router such that a broadcast range of the
physical stationary wireless router defines a geographical region” is
indefinite. We agree with Appellant that the claim, based on the claim
language (i.e., “such that a broadcast range of the physical stationary
wireless router defines a geographical region”) and in light of Appellant’s
Specification (i.e., associating the geographic proximity with the wireless
router using the SSID), is sufficiently clear. See App. Br. 16–17; Spec. ¶ 50.
Accordingly, we reverse the Examiner’s rejection of claims 1, 11, 21,
and 31 under 35 U.S.C. § 112, second paragraph.

35 U.S.C. § 103(a) Rejections
Dispositive Issue: Did the Examiner err in finding that the
combination of Moore and Jabara teaches “the SSID is broadcast from a
physically stationary wireless router such that a broadcast range of the
physical stationary wireless router defines a geographical region,” “receiving
the SSID from the physically stationary wireless router and transmitting the
SSID over the telecommunications network to the processor of the remote
server,” and “determining that the physical location of the PCD is within the
defined geographical region of the physically stationary wireless router,” as
recited in independent claim 1, and commensurately recited in independent
claims 11, 21, and 31?
The Examiner finds that Moore teaches “receiving the SSID from the
physically stationary wireless router and transmitting the SSID . . . to a
processor of a remote server and determining that the physical location of
the PCD is within a defined proximity of the physically stationary wireless
access point.” Final Act. 10 (citing Moore col. 8, ll. 16–62 and Figs. 4, 6–
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7); see Ans. 7–8, 9. The Examiner finds that Jabara teaches “the SSID is
received at a processor in response to the PCD physically entering a
broadcast range of the wireless router and transmitting the SSID.” Final
Act. 11 (citing Jabara ¶¶ 41–42, 102–103); see Ans. 8.
Appellant argues that “Moore does not teach or suggest a physically
stationary wireless router such that a broadcast range of the physically
stationary wireless router defines a geographical region” because there is
“no router, or intermediate device, between the phone D and each server S1-
S5” in Moore. App. Br. 20. Appellant further argues that “Jabara teaches
that each portable computing device, such as a phone, transmit SSIDs to
each other” and “does not describe, suggest or teach transmitting SSIDs with
routers that are received from relayed by [sic] portable computing devices.”
App. Br. 21–22.
We are persuaded by Appellant’s arguments. Claim 1 requires that
the wireless router broadcasts the SSID to the PCD, which transmits the
SSID to the remote server, and the remote server acts as an intermediate
device to validate and use the SSID to determine the PCD’s location within
the geographical region of the wireless router. In other words, claim 1
requires the wireless router (i.e., a merchant server) informing the PCD (i.e.,
shopper) of SSID information (i.e., location information), and then the
remote server (i.e., intermediate device) validating and using the SSID
information to determine the PCD location is within a geographic proximity
of the wireless router location.
The sections of Moore cited by the Examiner (see Final Act.
10) teach:
A central server C connected to the Internet performs a
merchant discovery and mediation function. The servers
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S1, S2, S3, S4, and S5 are connected to the central server
C through a telecommunications network (e.g., the
Internet). Periodically, the wireless mobile device D
reports its location to the central server C via the cellular
communications discussed above.
Moore, col. 8, ll. 25–31 (emphasis added). Jabara teaches “the wireless
communication device 120 is within a coverage range 374 of the access
point 140” and “business messages are exchanged between the access point
140 and the wireless communication device 120 via the wireless
communication link 142.” Jabara ¶ 102.
In other words, Moore teaches a central server C (i.e., remote server
or intermediate server) between the servers S1-S5 (i.e., wireless routers) and
the wireless mobile device D (i.e., user device PCD), and that the PCD
informs the central server of the PCD’s location. Jabara teaches exchanging
messages between the access point (i.e., wireless router) and the
communication device (i.e., PCD).
However, Moore does not teach the wireless routers informing the
PCD with SSIDs (i.e., location related information). Jabara does not teach
the use of any intermediate device (i.e., remote server) used in determining
the location of the PCD in relation to the wireless router. Therefore, we find
the Examiner has not provided sufficient findings that the combination of
Moore and Jabara teaches the claimed “receiving the SSID from the
physically stationary wireless router and transmitting the SSID over the
telecommunications network to the processor of the remote server” to
“determin[e] that the physical location of the PCD is within the defined
geographical region of the physically stationary wireless router.” Because
we agree with at least one of the arguments advanced by Appellant, we need
not reach the merits of Appellant’s other arguments.
Appeal 2018-004518
Application 13/048,060

19
Accordingly, we do not sustain the Examiner’s § 103(a) rejection of
independent claims 1, 11, 21, and 31, and dependent claims 6–8, 10, 16–18,
20, 26–28, 30, 36–38, and 40, not separately argued. Moreover, because
the Examiner has not shown that the additional reference cures the
foregoing deficiency regarding the rejection of the independent claim, we
do not sustain the obviousness rejection of dependent claims 4, 14, 24, and
34, not separately argued.

DECISION
We reverse the Examiner’s rejection of claims 1, 4, 6–8, 10, 11, 14,
16–18, 20, 21, 24, 26–28, 30, 31, 34, 36–38, and 40 under 35 U.S.C. § 101.
We reverse the Examiner’s rejection of claims 1, 11, 21, and 31 under
35 U.S.C. § 112, first paragraph.
We reverse the Examiner’s rejection of claims 1, 11, 21, and 31 under
35 U.S.C. § 112, second paragraph.
We reverse the Examiner’s rejections of claims 1, 4, 6–8, 10, 11, 14,
16–18, 20, 21, 24, 26–28, 30, 31, 34, 36–38, and 40 under 35 U.S.C. § 103.

REVERSED