AT&T Intellectual Property I, L.P.

Patent Trials and Appeals BoardMay 26, 2021

2021000045 (P.T.A.B. May. 26, 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. 15/010,878 01/29/2016 Michael Thomas Lugo 2015-0747/ 27.6106US01 5326 82866 7590 05/26/2021 AT&T Legal Department - H&C Attn: Patent Docketing One AT&T Way Room 2A212 Bedminster, NJ 07921 EXAMINER BOYCE, ANDRE D ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 05/26/2021 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): eOfficeActionDocs@att.com jodi@hciplaw.com katie@hciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL THOMAS LUGO Appeal 2021-000045 Application 15/010,878 Technology Center 3600 Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH A. FISCHETTI, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s Final decision to reject claims 1–20.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND of rejection. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies AT&T Intellectual Property I, L.P. as the real party in interest. Appeal Br. 1. Appeal 2021-000045 Application 15/010,878 2 CLAIMED SUBJECT MATTER The claimed subject matter relates to “communication systems and networks that interact with mobile devices.” (Spec. para. 1). Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A communication system comprising: at least one memory that stores executable instructions; and at least one processor coupled with the at least one memory, wherein the at least one processor, responsive to executing the instructions, facilitates performance of operations, the operations comprising: receiving location data associated with mobile devices over a time period, wherein the location data includes first location data for a first mobile device of the mobile devices, and wherein the first location data includes geographical coordinate data of the first mobile device generated by at least one of: the first mobile device or a communication network, and wherein the first location data further includes a measure of error associated with the geographical coordinate data; evaluating the location data to predict hours of operation of an enterprise by: selecting a first group of the mobile devices based on geographical proximity to the enterprise, wherein the selecting the first group of the mobile devices includes comparing the first location data to a location of the enterprise by applying a probabilistic filter based on the measure of error associated with the geographical coordinate data; analyzing the location data to identify a subset of the first group of the mobile devices predicted to correspond to employees of the enterprise; selecting a second group of the mobile devices by filtering the subset from the first group of the mobile devices; analyzing the location data corresponding to the second group of the mobile devices over the time period to determine aggregate time periods when the second Appeal 2021-000045 Application 15/010,878 3 group of the mobile devices is in the geographical proximity to the enterprise; and predicting the hours of operation of the enterprise according to the aggregate time periods; and sharing, with at least one content provider, the hours of operation of the enterprise; wherein a screen display presents the hours of operation of the enterprise to a user in conjunction with a consumer application associated with the at least one content provider. Appeal Br. 15–16 (Claims Appendix). THE REJECTION Claims 1–20 are rejected under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter without significantly more. OPINION Claims 1–20 are indefinite for the reasons discussed below. Accordingly, the rejection of claims 1–20 under 35 U.S.C. § 101 for claiming patent-ineligible subject matter must fall, pro forma, because it necessarily is based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). We make the following observations to explain why we are raising a question of definiteness. We otherwise have no comment on the merits of the Examiner’s position regarding the patent-eligibility of the claimed subject matter. We cannot meaningfully review this rejection because, based on the present record, we have been unable to give the claim limitation “probabilistic filter” (independent claims 1, 10, and 19) a broadest Appeal 2021-000045 Application 15/010,878 4 reasonable construction in light of the Specification, as it would be interpreted by one of ordinary skill in the art. Introduction 35 U.S.C. § 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor.” In that regard, claim 1 (reproduced above) covers an “apparatus,” and the other independent claims 10 and 19 cover a “method” and “manufacture,” respectively, and all are thus statutory subject matter for which a patent may be obtained.2 This is not in dispute. However, the 35 U.S.C. § 101 provision “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). In that regard, notwithstanding claims 1, 10, and 19 cover statutory subject matter (as do the claims depending from them), the Examiner has raised a question of patent eligibility on the ground that the claims are directed to an abstract idea. Alice identifies a two-step framework for determining whether claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217. 2 This corresponds to Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”) which requires determining whether “the claim is to a statutory category.” Guidance, 84 Fed. Reg. at 53. See also id. at 53–54 (“consider[] whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101.”). Appeal 2021-000045 Application 15/010,878 5 Alice step one — the “directed to” inquiry: According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S. at 218 (emphasis added). The Examiner determined, inter alia, that the claims “recite predicting store hours, including receiving, evaluating, selecting, analyzing, predicting, sharing and presenting steps . . . that, under its broadest reasonable interpretation, covers organizing human activity concepts.” Final Act. 3. Appellant disagrees, arguing inter alia that the claims instead provide improvements to accuracy of prediction by receiving location data that includes a measure of error and by further applying a probabilistic filter based on this measure of error to select a first group of the mobile devices based on geographical proximity to the enterprise. Appeal Br. 7. Accordingly, there is a dispute over whether the claims are directed to an abstract idea. Specifically, is claim 1 directed to “predicting store hours, including receiving, evaluating, selecting, analyzing, predicting, sharing and presenting” (Final Act. 3) or “improvements to accuracy of prediction” (Appeal Br. 7)? Appeal 2021-000045 Application 15/010,878 6 Claim Construction3 To make a determination as to whether the claims at issue are directed to a patent-ineligible concept (or not), in accordance with step one of the Alice framework, we need to first accurately articulate what it is that the claims are directed to. The Examiner and the Appellant have two different views on this. The correct view will be the one that aligns with the claims, properly construed. In that regard, we consider the claim as a whole4 giving it the broadest reasonable construction5 as one of ordinary skill in the art would have interpreted it in light of the Specification6 at the time of filing. All the claims call for a “probabilistic filter.” However, it is described in functional terms; that is, a “probabilistic filter” “compar[es] . . . first location data to a location of the enterprise” “based on the measure of error 3 “[T]he important inquiry for a § 101 analysis is to look to the claim.” Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that ‘claim construction is not an inviolable prerequisite to a validity determination under § 101.’ However, the threshold of § 101 must be crossed; an event often dependent on the scope and meaning of the claims.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48 (Fed. Cir. 2015). 4 “In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole.” Diamond v. Diehr, 450 U.S. 175, 188 (1981). 5 See Guidance, 84 Fed. Reg. at 52, footnote 14 (“If a claim, under its broadest reasonable interpretation.”). 6 “First, it is always important to look at the actual language of the claims. . . . Second, in considering the roles played by individual limitations, it is important to read the claims ‘in light of the specification.’” Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir. 2017) (J. Linn, dissenting-in-part and concurring-in-part) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others. Appeal 2021-000045 Application 15/010,878 7 associated with . . . geographical coordinate data.” Claim 1. The claims do not, however, define what the “probabilistic filter” is. Turning to the Specification, a “probabilistic filter” is mentioned only in paragraphs 40 and 57, but in both places it is described in the same functional terms as presented in the claims. We have reviewed the entire Specification, but have been unable to find anything to assist us in understanding what a “probabilistic filter” is. As with the claims, the Specification describes what it is intended to accomplish, but not what it is. We understand that an objective of the “probabilistic filter” is to account for error measurements that define “a probabilistic error radius about the geographical coordinates that indicate bounds on the true location of the corresponding device to a certain level of statistical certainty.” Spec. para. 40. “The processor . . . can adapt to this uncertainty inherent in the comparison of the location data to the location of the enterprise by applying a probabilistic filter based on the measure of error associated with the geographical coordinate data.” Id. But what is the “probabilistic filter”? Does it refer to a probability concept or theory? Is it generic software for performing a probability analysis? Is it a data structure or some other component of the processor? Or is it something more than that as Appellant suggests. At this juncture, given nothing more than what is recited in the claims and the cited passages from the Specification, we are unable to give the phrase “probabilistic filter” an ordinary and customary meaning. There is insufficient information to ascertain what the “probabilistic filter” of the claims is. Appeal 2021-000045 Application 15/010,878 8 The disagreement between the Examiner and the Appellant as to what the “probabilistic filter” is mirrors our own difficulty. The Examiner appears to lump the probabilistic filter in with the generic “at least one processor coupled with the at least one memory” (claim 1) as it is not separately identified in the characterization of what the claims are directed to. Final Act. 3–6. The Appellant, on the other hand, points out inter alia that a “technical improvement” occurs “by improving accuracy of prediction because ‘the processor can adapt to this uncertainty inherent in the comparison of the location data to the location of the enterprise by applying a probabilistic filter based on the measure of error associated with the geographical coordinate data,’ as stated in paragraph [0040].” Appeal Br. 7. And yet the technology underlying the “probabilistic filter,” which would help us understand the technical improvement is never spelled out. We agree that the Specification provides support for using a “probabilistic filter” to improve accuracy of prediction. But given no further technical details about the “probabilistic filter,” we cannot determine whether said “probabilistic filter” is a common function of a generic computer device as the Examiner appears to understand it to be, or, for example, more complex software that when applied to mobile device location data (given a measure of error associated with the geographical coordinate data) as claimed yields a technological improvement as Appellant suggests. Based on the present record, we are unable to resolve that dispute in any meaningful way. Appeal 2021-000045 Application 15/010,878 9 The Abstract Idea7 Since we are unable to ascertain what the “probabilistic filter” is, we are unable to give the claims a broadest reasonable construction (see above). Consequently, we cannot proceed to identify those limitations that recite an abstract idea.8 Knowing what the “probabilistic filter” consists of is crucial to determine whether the claimed subject matter is directed to an abstract idea; that is to say, whether the claimed subject matter falls within the enumerated groupings of abstract ideas; that is, “Mathematical concepts,” “Certain methods of organizing human activity,” and “Mental processes.” 9 Specific asserted technological improvements, when claimed, can render claimed subject matter not directed to an abstract idea.10 Cf. McRO, 7 See Step 2A of the 2019 Revised Guidance. Step 2A determines “whether a claim is ‘directed to’ a judicial exception,” such as an abstract idea. Guidance, 84 Fed. Reg. at 53. Step 2A is a two prong inquiry. 8 See Prong One (a) of Step 2A of the 2019 Revised Guidance. “To determine whether a claim recites an abstract idea in Prong One, examiners are now to: (a) Identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea . . . .” Guidance, 84 Fed. Reg. at 54. 9 See Prong One (“Evaluate Whether the Claim Recites a Judicial Exception”) (emphasis omitted) (b) of Step 2A of the 2019 Revised Guidance. “To determine whether a claim recites an abstract idea in Prong One, examiners are now to . . . (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance.” Guidance, 84 Fed. Reg. at 54. 10 See Prong Two (“If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application”) of Step 2A of the 2019 Revised Guidance. “A claim that integrates a judicial exception into a practical application will apply, rely on, or use 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 Appeal 2021-000045 Application 15/010,878 10 Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (“When looked at as a whole, claim 1 is directed to a patentable, technological improvement over the existing, manual 3–D animation techniques.”). In that regard, we can consider specific asserted technological improvements in the step one analysis of the Alice framework. This is consistent with the case law. See Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018) (“We have several times held claims to pass muster under Alice step one when sufficiently focused on such improvements.”) Nonetheless, as we have explained, without an understanding of what the “probabilistic filter” technically entails, we are unable to ascertain a broadest reasonable construction for the claims. That inability prevents us from accurately articulating what the claims are directed to and then reaching a determination as to whether what the claims are directed to is a patent-ineligible concept under step one of the Alice framework of patent- eligible subject matter. We do not reach step two of the Alice framework. For the foregoing reasons, we are not placed in a position to do a meaningful review of this rejection. designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 54. One consideration, implicated here, that is “indicative that an additional element (or combination of elements) may have integrated the exception into a practical application” (id. at 55) is if “[a]n additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” (id.). Appeal 2021-000045 Application 15/010,878 11 NEW GROUND OF REJECTION Claims 1–20 are rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellant regards as the invention. The claims and the Specification fail to inform those skilled in the art about the scope of the “probabilistic filter” with any reasonable certainty. Appellant provides no definition for “probabilistic filter” either in the briefs or the Specification. A “probabilistic filter” has no ordinary meaning, and its scope is unclear based on the intrinsic record. Because the present record provides insufficient technical detail, the claim phrase “probabilistic filter” remains vague. “[U]nder the broadest reasonable interpretation when read in light of the Specification, [the phrase “probabilistic filter” ] is vague and unclear, and a person having ordinary skill in the art would not be able to discern the metes and bounds of the claimed invention in light of this claim language.” Ex parte McAward, 2015–006416, 15–16 (PTAB Aug. 25, 2017) (precedential). Accordingly, claims 1–20 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim Appellant’s invention. CONCLUSION The decision of the Examiner to reject claims 1–20 is reversed and a new rejection is entered as a new ground of rejection. More specifically: The decision of the Examiner to reject claims 1–20 under 35 U.S.C. § 101 for claiming patent-ineligible subject matter is reversed pro forma. Claims 1–20 are newly rejected under 35 U.S.C. § 112(b). Appeal 2021-000045 Application 15/010,878 12 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1–20 101 Eligibility 1–20 1–20 112(b) Indefiniteness 1–20 Overall Outcome 1–20 1–20 NEW GROUND This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . REVERSED; 37 C.F.R. § 41.50(b)