Alek Tziortzis et al.Download PDFPatent Trials and Appeals BoardSep 3, 201912770220 - (R) (P.T.A.B. Sep. 3, 2019) Copy Citation 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. Appeal 2018-002222 Application 12/770,220 2 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 Appeal 2018-002222 Application 12/770,220 3 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 Appeal 2018-002222 Application 12/770,220 4 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.”). Appeal 2018-002222 Application 12/770,220 5 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 Appeal 2018-002222 Application 12/770,220 6 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. Appeal 2018-002222 Application 12/770,220 7 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 Copy with citationCopy as parenthetical citation