Alek Tziortzis et al.

Patent Trials and Appeals Board

Sep 3, 2019

12770220 - (R) (P.T.A.B. Sep. 3, 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.
12/770,220 04/29/2010 Alek TZIORTZIS 35848-US-PAT 9272
95866 7590 09/03/2019
Fleit Gibbons Gutman Bongini & Bianco P.L.
4800 N. Federal Highway, Suite B306
Boca Raton, FL 33431
EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
ptoboca@fggbb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALEK TZIORTZIS, DAVID RENE PROULX,
MATTHEW BELLS, and SHERRYL LEE LORRAINE SCOTT
____________________

Appeal 2018-002222
Application 12/770,2201
Technology Center 3600
____________________

Before HUNG H. BUI, IRVIN E. BRANCH, and ADAM J. PYONIN,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing (“Request”) under 37 C.F.R.
§ 41.52 for reconsideration of our Decision on Appeal, mailed on April 3,
2019 (“Decision”). In that Decision, we affirmed the Examiner’s final
rejection of claims 1–3, 7, 9–18, and 21–24 under 35 U.S.C. § 101, but
reversed the Examiner’s rejection of claims 1–3, 7, 9–18, and 21–24 under
35 U.S.C. § 103. We have considered the arguments presented by
Appellants in the Request, but we are not persuaded that any points were
misapprehended or overlooked by the Board in affirming the Examiner’s
final rejection of claims 1–3, 7, 9–18, and 21–24 under 35 U.S.C. § 101. As

1 Appellants identify BlackBerry Limited as the real party in interest. App.
Br. 2.
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such, we have provided herein additional explanation, but do not change our
decision in view of Appellants’ arguments.

ANALYSIS
The applicable standard for a Request for Rehearing is set forth in
37 C.F.R. § 41.52(a)(1), which provides in relevant part, “[t]he request for
rehearing must state with particularity the points believed to have been
misapprehended or overlooked by the Board.”
In this case, Appellants request a rehearing by arguing the Board
mischaracterized Appellants’ Specification as not having “any description
that selecting and transmitting an advertisement to be presented in a mobile
device based on various conditions and formats is intended to reduce
network traffic or avoid user distraction while operating a vehicle,” whereas
paragraphs 2, 47, 117 of Appellants’ Specification provide:
clear support for the claimed invention being directed to a
technical solution (e.g., specific distribution of appropriate data
items to devices to reduce overall network traffic and delivery of
specific data items in specific formats when the user of the
mobile device can safely receive and view those data items) to a
technical problem (e.g., how to provide common data items to a
plurality of mobile telecommunication devices within a mobile
telecommunication network to reduce overall network traffic and
how to provide data items to users on the device so that the users
may safely consume the data items in their current context such
as driving, not driving, etc.).

Req. Reh’g 2–3 (citing Spec. ¶¶ 2, 117).
We disagree. At the outset, we note that the Board has not
misapprehended or overlooked any points or arguments originally raised by
Appellants. The Board carefully considered Appellants’ previous
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arguments, but nevertheless found that: (1) claims 1–3, 7, 9–18, and 21–24
are directed to “distributing messages [i.e., advertisement] to electronic
devices” including “selection and presentation of advertisements” which is
considered as a fundamental economic practice involving “advertising,
marketing, and sale activities” and one of the “certain methods of organizing
human activities” similar to the claims in Bilski v. Kappos, 561 U.S. 593
(2010) and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014)
(Decision 8–9, 14–15) and, thus, an abstract idea (see 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (January 7, 2019)
(“Revised Guidance”); and (2) Appellants’ distribution of an advertisement
to a mobile device in a certain presentation format based on various
conditions, i.e.: (i) movement data of the mobile device; and (ii) movement
context data (i.e., data indicating a type of a vehicle and whether the device
is associated with a driver or a passenger of a vehicle) does not provide any
“technical solution to a technical problem” as contemplated by the Federal
Circuit in (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014) and (2) Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288 (Fed. Cir. 2016). See MPEP § 2106.05(a). Dec. 9–16.
For example, we explained:
[Appellants’] abstract idea of “distributing advertisements to a
portable electronic device” does not provide a technical solution
to a technical problem unique to the Internet, i.e., a “solution . .
. necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of
computer networks.” DDR, 773 F.3d at 1257. Nor does
Appellants’ invention entail, like Amdocs, any “unconventional
technological solution (enhancing data in a distributed fashion)
to a technological problem (massive record flows which
previously required massive databases)” and “improve the
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performance of the system itself.” Amdocs, 841 F.3d at 1300,
1302. Instead, the solution proposed by Appellants is simply to
improve the business strategy and increase revenue and not to
improve the technology. While an advertisement selected for
sending to a mobile device can be any combination of audio,
video, and SMS messages, the selection of such an
advertisement is not intended to solve any problem related to
network traffic or network efficiency.

Dec. 15–16 (emphasis added).
As we also explained, Appellants’ distribution of an advertisement to
a mobile device in a certain presentation format based on various conditions
is “neither technology nor a technical solution to a technological problem.”
Dec. 15. “Nor does transmission of an advertisement to a mobile device
based on various conditions and presentation formats improve any computer
functionality or ‘reduce the overall traffic within the network . . . and further
improving the safety of users while interacting with the electronic content.’”
Dec. 16. The focus of Appellants’ invention is not to improve the
performance of computers or “any other technology or technical field” as
contemplated by MPEP § 2106.05(a). Instead, computers (i.e., server and
microprocessor) are used as a tool to implement business functions of
selecting and distributing an advertisement to only targeted mobile devices
in the most efficient format (data items based on shared attributes). Cf.
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (“Two-Way Media asserts that the claim solves
various technical problems, including excessive loads on a source server,
network congestion, unwelcome variations in delivery times, scalability of
networks, and lack of precise recordkeeping. But claim 1 here only uses
generic functional language to achieve these purported solutions.”).
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Paragraph 117 of Appellants’ Specification describes:

“selective targeting of the devices and/or content may provide a
reduction in the overall traffic within the network as it can
obviate or reduce the need to push (or pull) data items to all
devices operating in the network, rather data items are distributed
to those devices whose attributes match a predefined attribute
type.”

In other words, appropriate data items can be distributed to targeted mobile
devices based on shared attributes so that these data items would not have to
be distributed (push or pull) to all mobile devices in order to reduce the
overall traffic. One skilled in the art would understand that targeting an
advertisement to specific mobile devices instead of broadcasting the same
advertisement to all mobile devices available on a network would certainly
reduce the overall traffic of the network. However, such an embodiment is
nothing more than an incidental, insignificant extra or post-solution activity
to the judicial exception, and not a “technical solution to a technical
problem” as contemplated by the Federal Circuit in DDR and Amdocs. See
Revised Guidance at 54–55 (“Prong Two”); MPEP § 2106.05(g);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097 (Fed. Cir.
2016) (“As we have explained, ‘merely selecting information, by content or
source, for collection, analysis, and [announcement] does nothing significant
to differentiate a process from ordinary mental processes, whose implicit
exclusion from § 101 undergirds the information-based category of abstract
ideas.’”); Voit Techs., LLC v. Del-Ton, Inc., 757 F. App’x 1000, 1003–04
(Fed. Cir. 2019) (“Although Voit alleges the method of the ’412 patent
‘improves the efficiency of transmitting’ high resolution data, . . . , we have
recognized that claims directed to ‘improved speed or efficiency inherent
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with applying the abstract idea on a computer’ are insufficient to
demonstrate an inventive concept.”).
A claim for a new abstract idea is still an abstract idea. See Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). “No
matter how much of an advance in the finance field the claims recite, the
advance lies entirely in the realm of abstract ideas, with no plausibly alleged
innovation in the non-abstract application realm.” See SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).

CONCLUSION
We have considered the arguments raised by Appellants in the
Request for Rehearing, but find none of these arguments persuasive that our
original Decision misapprehended or overlooked any points raised by
Appellants in affirming the Examiner’s § 101 rejection of claims 1–3, 7, 9–
18, and 21–24 in light of the Office’s 2019 Revised Guidance. As such, we
decline to grant the relief requested. This Decision on Appellants’
“REQUEST FOR REHEARING” is deemed to incorporate our earlier
Decision by reference. See 37 C.F.R. § 41.52(a)(1).

DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision, but we deny the request with respect to making
any changes therein. The Examiner’s decision rejecting claims 1–3, 7, 9–18,
and 21–24 under 35 U.S.C. § 103(a) remains AFFIRMED.
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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.
§ 41.50(f).

REHEARING DENIED