Bruce SearsDownload PDFPatent Trials and Appeals BoardSep 5, 201914082889 - (D) (P.T.A.B. Sep. 5, 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. 14/082,889 11/18/2013 Bruce SEARS 20131106 4795 25537 7590 09/05/2019 VERIZON PATENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 EXAMINER CARVALHO, ERROL A ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 09/05/2019 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): patents@verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRUCE SEARS1 ____________ Appeal 2018-001892 Application 14/082,889 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and BRUCE T. WIEDER, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1−22 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 According to the Appellant, the real party in interest is Verizon Communication Inc. (App. Br. 3) Appeal 2018-001892 Application 14/082,889 2 THE INVENTION The Appellant’s claimed invention is directed to enabling a user to access products or services and content offered by an entity based on an image captured by the user device (Spec., para. 14). Claim 1, reproduced below with italics added, is representative of the subject matter on appeal. 1. A method, comprising: receiving, by a device and over a network, an image captured by a user device, the image having been captured by a camera of the user device at an event or at an event location; analyzing, by the device, the image; determining, by the device and based on analyzing the image, the event or the event location using global positioning system (GPS) coordinates of the user device; determining, by the device and based on analyzing the image, an entity associated with the event or the event location; determining, by the device and based on analyzing the image, at least one of a product, a service, or content associated with at least one of the event, the event location, or the entity; providing, by the device and to the user device over the network, information associated with the at least one of the product, the service, or the content; providing, by the device, information identifying a location within the event location from which to purchase the at least one of the product, the service, or the content; and providing, by the device and based on analyzing the image and determining the entity, at least one of audio, video, or audio lyrics. THE REJECTIONS The following rejections are before us for review: 1. Claims 1−22 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1, 3, 7, 9, 10, 12, 14, 16−18, 20 and 22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher et al. (US Appeal 2018-001892 Application 14/082,889 3 2012/023000 A, pub. Sept. 13, 2012) and Hosein et al. (US 2014/0046802 A1, pub. Feb. 13, 2014). 3. Claims 2, 4, 5 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher, Hosein, and Shihadah et al. (US 2013/0282532 A1, pub. Oct. 24, 2013) 4. Claims 6, 13 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher, Hosein, and Wong (US 2011/0282906 A1, pub. Nov. 17, 2011). 5. Claims 8, 15, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fisher, Hosein, and Levien et al. (US 2007/0005422 A1, pub. Jan. 4, 2007). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence2. ANALYSIS Rejection under 35 U.S.C. § 101 The Appellant argues that the rejection of claim 1 is improper because the claim is not directed to an abstract idea (App. Br. 7−12; Reply Br. 2−6). The Appellant argues the claim is an improvement to computer-related technology (App. Br. 13−16). The Appellant argues further that the claim is “significantly more” than the alleged abstract idea, improves a technical 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2018-001892 Application 14/082,889 4 field, and improves the functioning of the computer itself (App. Br. 19−23; Reply Br. 9−11). In contrast, the Examiner has determined that the rejection of record is proper (Final Action 2−4, 13−17; Ans. 3−7). We agree with the Examiner. 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, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, Appeal 2018-001892 Application 14/082,889 5 such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). The PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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 Appeal 2018-001892 Application 14/082,889 6 (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). 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: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. 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 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 (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. (alterations in original) (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. Here, the Examiner has determined that the claim is directed to the concept of providing information based on analyzing a captured image, which is a method of organizing human activity, fundamental economic practice, and idea in itself and therefore an abstract idea (Final Act. 3). We agree with the Examiner in this regard. The steps in italics in the claim above recite the concept of taking data from a user’s determined location and providing targeted information based on that location which is a Appeal 2018-001892 Application 14/082,889 7 fundamental economic practice or a method of organizing human activity. In Intellectual Ventures I LLC v. Capital One Bank (USA) 792 F. 3d 1363, 1369 (Fed. Cir. 2015) tailoring content on a website based on a user’s location and time of day was held to be a fundamental economic practice and directed to an abstract idea. Courts have also found claims directed to collecting, recognizing, and storing data in a computer memory to be directed to an abstract idea. Content Extraction and Transmission LLC v. Wells Fargo Bank, National Association, 776 F.3d 1343 (Fed. Cir. 2014); see Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it, and displaying results from certain results of the collection and analysis was held to be an abstract idea. In Int. Ventures I LLC v. Capital One Financial, 850 F.3d 1332, 1340 (Fed. Cir. 2017) it was held that collecting, displaying, and manipulating data was directed to an abstract idea. Thus, we consider the claim to be directed to an abstract idea as identified above. Turning to the second step of the Alice and Mayo framework, we determine that the claim does not contain an inventive concept sufficient to “transform” the abstract nature of the claim into a patent-eligible application. The claims do not improve computer functionality, improve another field or technology, utilize a particular machine, or effect a physical transformation. Rather, we determine that nothing in the claims imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort to monopolize the judicial exception. For example, in claim 1 the steps of [1] “receiving… an image captured by a user device”; [2] “analyzing, by the device, the image”; [3] “determining…the event or the event location using Appeal 2018-001892 Application 14/082,889 8 global positioning system (GPS) coordinates of the user device”; [4] “determining, by the device and based on analyzing the image, an entity associated with the event or the event location”; [5] “determining, …a service, or content associated with at least one of the event, the event location, or the entity”; [6] “providing… information associated with the at least one of the product, the service, or the content”; [7] “providing…information identifying a location within the event location from which to purchase the at least one of the product, the service, or the content”; and [8] “providing, by the device and based on analyzing the image and determining the entity, at least one of audio, video, or audio lyrics” are merely conventional steps performed by a generic computer that do not improve computer functionality. That is, these recited steps [1]−[8] “do not purport to improve the functioning of the computer itself” but are merely generic functions performed by a conventional processor. Likewise, these same steps [1]−[8] listed above do not improve the technology of the technical field and merely use generic computer components and functions to perform the steps. Also, the recited method steps [1]−[8] above do not require a “particular machine” and can be performed with a general purpose computer, and the steps performed are purely conventional. In this case the general purpose computer is merely an object on which the method operates in a conventional manner and does not provide “significantly more” to the claim beyond a nominal or insignificant execution of the method. Further, the claim as a whole fails to effect any particular transformation of an article to a different state in a manner that would render the claim “significantly more” than the abstract idea. The recited steps [1]−[8] fail to provide meaningful limitations to limit the judicial exception and rather are mere Appeal 2018-001892 Application 14/082,889 9 instructions to apply the method to a generic computer. Considering the elements of the claim both individually and as “an ordered combination” the functions performed by the computer system at each step of the process are purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. We do not find anything of record, short of attorney argument, that attributes any improvement in computer technology and/or functionality to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the revised Guidance, i.e., the claim “appl[ies], rel[ies] on, or use[s] 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.” See Guidance, 84 Fed. Reg. at 54–55. Further the claim fails to add a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional in the field. Rather the claim uses well-understood, routine, and conventional activities previously known in the art and recites them at a high level of generality. The Specification at paragraphs 25−35 for example describes using conventional computer components such as a computer, server, data storage device, and workstation in a conventional manner. The claim specifically includes recitations for a global positioning system to implement the method but this computer component is used in a manner that is well-understood, routine, and conventional in the field. The Appellant has not shown these claimed generic computer components which are used to implement the claimed method are not well understood, routine, or conventional in the field. The Appellant has not demonstrated that the computer described in Appeal 2018-001892 Application 14/082,889 10 the Specification at paragraph 26 for instance is not a general purpose computer beyond those known to be routine and conventional known to perform similar functions in a well-understood manner. For these above reasons the rejection of claim 1 is sustained. The Appellant has provided the same arguments for the remaining claims which are directed to similar subject matter and the rejection of these claims is sustained as well. Rejection under 35 U.S.C. § 103(a) The Appellant argues that the rejection of claim 1 is improper because the claim limitation for “providing, by the device and based on analyzing the image [having been captured by a camera of the user at an event or event location] and determining the entity, at least one of audio, video, or audio lyrics” (App. Br. 23, 24). In contrast, the Examiner has determined that the cited claim limitation is found in Hosein at paragraphs 41 and 43 (Final Act. 6, Ans. 7, 8). We agree with the Appellant. Hosein at paragraph 41 does disclose “point[ing] or scanning/camera component 222 at a retired number which would bring up information related to the player that used to wear the number” but fails to disclose “providing, by the device and based on analyzing the image and determining the entity, at least one of audio, video, or audio lyrics”. While Hosein at paragraph 43 does disclose providing music and lyrics of songs sung by the crowd it is not specifically disclosed that this is done through “analyzing the image”. The Hosein reference does not specifically disclose that it is an “analyzing of the image” that leads to Appeal 2018-001892 Application 14/082,889 11 the providing of music and lyrics of songs. The rejection has failed to provide any rationale with articulated reasoning with rational underpinnings for making a modification to meet the argued claim limitation. For these reasons, this rejection is not sustained. The remaining independent claims 10 and 17 contain a similar limitation and the rejection of these claims is not sustained as well. The additional references used in the 35 U.S.C. § 103(a) rejections directed to dependent claims not grouped with the rejection of claims 1, 3, 9-10, 12, 16- 18, 20 and 22 do not remedy the deficiency noted above. CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1−22 under 35 U.S.C. § 101 as being directed to non- statutory subject matter. We conclude that the Appellant has shown that the Examiner erred in rejecting claims 1−22 under 35 U.S.C. § 103(a) as listed in the Rejections section above. DECISION The Examiner’s rejection of claims 1−22 is sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation