Bruce Sears

Patent Trials and Appeals Board

Sep 5, 2019

14082889 - (D) (P.T.A.B. Sep. 5, 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.
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)
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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
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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).
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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,
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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
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(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
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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
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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
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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
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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
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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