Ex Parte Borucki et al

Patent Trials and Appeals Board

Nov 7, 2018

13663711 - (D) (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/663,711
107681 7590
NCR Corporation
864 Spring Street NW
Atlanta, GA 30308
10/30/2012
11/09/2018
FIRST NAMED INVENTOR
Robert Thomas Borucki
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
12-2328 (500.0582) 7176
EXAMINER
MPAMUGO, CHINYERE
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
PTOMail.Law@ncr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT THOMAS BORUCKI
and RICHARD VARWELL TOWNSEND
Appeal2017-002774
Application 13/663,711
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Robert Thomas Borucki and Richard Varwell Townsend
("Appellants") seek review under 35 U.S.C. § 134 from a Non-Final
Rejection of claims 1-21, the only claims pending in the Application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
We affirm.
1 Our Decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed August 4, 2016) and the Examiner's Answer ("Ans.," mailed October
6, 2016), and Non-Final Action ("Non-Final Act.," mailed March 24, 2016).
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Application 13/663,711
The Appellants invented a form of electronic advertising, and more
particularly, injecting an advertisement into a mobile document displayed on
a mobile device. Spec., para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer implemented method for injecting an
advertisement into a mobile document, the method comprising:
[ 1] receiving a mobile document request from a mobile device
via a network,
wherein the request includes information uniquely
identifying a mobile document and information about the
mobile device;
[2] receiving a digital advertisement selected to be relevant to
the requested mobile document;
[3] adjusting the display size of the advertisement,
through execution of instructions on a processor
with regard to the received digital advertisement
and
based on the size of the display of the mobile device and
a predetermined layout for the requested mobile
document;
[ 4] generating an optical code
and
using information about the requested mobile document
wherein the display size of the generated optical code is
based on the size of the display of the mobile device and
the predetermined layout for the requested mobile
document;
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[ 5] transmitting, via the network and in response to the received
mobile document request,
a mobile document formatted according to the
predetermined layout for the requested mobile document
to the mobile device
wherein the mobile document includes the size adjusted
advertisement and the generated optical code.
The Examiner relies upon the following prior art:
Behr US 2008/0262929 Al
Moukas US 2011/0022473 Al
Oct. 23, 2008
Jan. 27, 2011
Claims 1-21 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1-21 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Behr and Moukas.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
The issues of obviousness tum primarily on whether the references
describe generating an optical code that is transmitted.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
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Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of "optical
code."
02. The term "optical code" is not recognized as a term of art.
03. The plain meaning of "optical code" is a code modified by a
characteristic that is in some sense optical.
Facts Related to Appellants' Disclosure
04. Mobile devices usually have small displays when compared to
standard size computer displays and laptop displays. Additionally,
different makes and models of mobile devices have different size
displays with different resolutions making it difficult to display the
same size document on each display. The small displays of the
mobile devices also restrict how much information a mobile
document can display. Typically, a mobile document includes an
optical code, such as a barcode, that is displayed on the mobile
device and can be presented for scanning. Spec., para. 4.
05. The term optical code includes machine-readable indicia that
includes, but is not limited to, one-dimensional barcodes and two-
dimensional barcodes. Id. at para. 21.
Facts Related to the Prior Art
Behr
06. Behr is directed to providing wireless advertising and
information services to mobile device users. Behr, para. 2.
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07. Behr describes a web-based content management server that is
adapted to transmit advertisements and other informational content
on-demand to one or more mobile device users. The content
management server adjusts the format of the advertisements and
other informational content sent to the user's mobile device based
at least in part on the browser capabilities of the mobile device
and/or the user's preferences. Behr, para. 7.
08. Behr describes requesting advertising information using a
mobile device equipped with an automatic bar-code reader. A
mobile device user views an advertisement containing a unique
bar-code associated with the advertised product or service. The
user may then take a photograph of the bar-code with the mobile
device. The mobile device converts the photographed bar-code
into a unique number, which is then transmitted along with the
user's identifying information to the content management server
requesting that the selected advertisement be delivered to the
user's mobile device. Id. at para. 80.
Moukas
09. Moukas is directed to marketing and advertising to mobile
devices. Moukas, para. 2.
10. Moukas describes a method for reserving a transaction
comprising the steps of offering a transaction over a mobile device
communication link using a mobile marketing device platform,
receiving a response to the offer of the transaction by way of the
mobile communication device link, generating a scanable identifier
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as a confirmation of receiving the response to the offer, and
wirelessly transmitting the scanable identifier over the mobile
communication device link for processing by a decoding device as
proof of confirmation. Additional aspects of the embodiment
include the offered transaction being the sale of a product or a sale
of tickets to an event. According to another feature, the response
to the offered transaction is the purchase of a product or service, or
the purchase of tickets to an event. The scanable identifier may
include a 2-D barcode. Further, the method may include pre-
registering for notice of the transaction. Moukas, para. 10.
11. Moukas describes an apparatus for reserving a transaction over
a mobile device link comprising a mobile marketing platform with
a transmitter for offering a transaction over a communication link
and a barcode generator for generating a barcode as a confirmation
of receiving the response to the offer. The transmitter transmits the
barcode using a wireless protocol and decoding of the barcode
serves as proof of confirmation. Id. at para. 11.
12. Moukas describes a repository with mobile device capabilities
such as rendering language, image size, supported file extensions
that are used for the correct rendering of pages served to each
specific mobile device. A banner manager 330 is responsible
managing ad banners and their placement in external W AP sites, as
well as serving the appropriate banner to W AP pages of such sites,
when a request comes. Id. at para. 76.
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13. Moukas describes a reservations-enquiry system in conjunction
with the mobile marketing platform, utilizing a method for end-
customers of retail-shops/chains with mobile handsets via mobile
SMS/MMS messaging services to acquire information about
products availability in retail shops inventory based on retail-stores
catalogue numbers. Embodiments further allow end-customers to
reserve available products in retail-shops for future purchases over
the counter using either simple reservation identification strings or
MMS-encoded images of 2D scanable identifiers such as barcodes.
The system allows for users of mobile handsets with SMS/MMS
messages services enabled to inquire about the availability of
certain products by sending SMS messages to a predefined mobile
messaging service point including the catalogue product ID in
question and, optionally, the retail-shop identification number.
Further, the reservation and scanable identifier aspects of the
invention further allow a mobile device user to receive information
for product availability from the system by means of one-or-more
SMS messages containing information about the availability of the
requested product, including the location of stores and the number
of current inventory for the product. Moukas, para. 160.
14. Moukas describes receiving a reservation ticket in the form of a
string ID or 2D bar-code via SMS/MMS in case of a successful
reservation request, that can be used as proof of reservation in
retail stores. According to one embodiment, two types of proofs of
purchase are provided in forms of reservation IDs: a) a unique
string up to 160 characters based on the GSM 3 .3 8 character set
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delivered as a single SMS message; and b) a 2D-barcode image
delivered in the form of an MMS message. These reservation IDs
can be used with corresponding readers in retail stores to confirm a
reservation for a predefined time period. Any known scanable
identifiers, such as 2D-bar codes, Aztec Code, bCode, Data Matrix,
may be utilized. In some embodiments, the reservation ticket
message (SMS/MMS) is accompanied by a second informational
SMS message informing the user that reservation has been
successful with details of the reservation (product ID, description,
price, store location, and expiration date). Moukas, para. 162.
15. Moukas describes administration of a scanable, identifier-based
advertising campaign or activity. The mobile marketing platform
may be linked to the advertiser's retail operations, allowing the
targeted audiences of the advertising campaign to view, purchase
and otherwise interact with a retailer in an electronic marketplace.
Specifically, administrative users of the system can update a
catalogue of offered products, update the list of retail-store
locations and identification number, enable/disable
information/reservation SMS/MMS services for specific catalogue
products and/or retail/stores, define whether a reservation for a
specific product will be delivered via SMS string message or MMS
2D-barcode, view statistics on the popularity of enquiries and
reservations of products via SMS/MMS service and other
functionalities as embodied in different system implementations.
Moukas, para. 163.
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16. Moukas describes a Mobile Inventory Reservation System
("MIRS") that receives SMS from consumers and translates them
to RCIS requests, receives RCIS responses to inquiries and
translates to informational SMS messages relayed to the
consumers, and receives RCIS responses to reservations requests
and translates reservation IDs to 1 D encrypted string or 2D
barcode images. The translated reservation IDs are relayed to the
end-user. Id. at para. 170.
ANALYSIS
We initially take up the matter of claim construction as it pertains to
the interpretation of the phrase "optical code." This is not lexicographically
defined, nor is it a recognized term of art, and its plain meaning is a code
modified by a characteristic that is in some sense optical. The Specification
at paragraph 4 states that its scope encompasses machine-readable indicia
that includes, but is not limited to, one-dimensional barcodes and two-
dimensional barcodes. Therefore, we construe an optical code to mean a
code modified by a characteristic that is in some sense optical and that
includes within its scope machine-readable indicia. Thus, the characteristic
modifying "code" includes within its scope the attribute of being machine
readable. As a practical matter, given the notoriety and ubiquity of optical
character recognition, this encompasses the standard ASCII character set of
letters and numbers. This construction also encompasses the bar codes both
of the applied references describe.
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Claims 1-21 rejected under 35 US.C. § 101 as directed to a judicial
exception without significantly more
Method claim 1 recites receiving a mobile document request,
receiving a digital advertisement, adjusting the display size of the
advertisement, generating a code, and transmitting the document,
advertisement, and code. Thus, claim 1 recites receiving, analyzing,
modifying, generating, and transmitting. None of the limitations recite
implementation details for any of these steps, but instead recite functional
results to be achieved by any and all possible means. Data reception,
analysis and modification, and display are all generic, conventional data
processing operations to the point they are themselves concepts awaiting
implementation details. The sequence of data reception-analysis-
modification-generation-transmission is equally generic and conventional.
The ordering of the steps is, therefore, ordinary and conventional. The
remaining claims merely describe process parameters, with no
implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts .... If so, we then ask, "[ w ]hat
else is there in the claims before us? . . . To answer that
question, ... consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. . . . [The Court]
described step two of this analysis as a search for an "'inventive
concept'"-i.e., an element or combination of elements that is
"sufficient to ensure that the patent in practice amounts to
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significantly more than a patent upon the [ineligible concept]
itself."
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner finds the
claims directed to receiving a digital advertisement selected to be relevant to
the requested mobile document, which is a fundamental advertising practice
that falls under an economic objective or practice rather than a technological
one. Non-Final Act. 6.
Although the Court in Alice made a determination as to what the
claims were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is a method for injecting an
advertisement into a mobile document. The steps in claim 1 result in
transmitting a mobile document with a size adjusted advertisement. The
Specification at paragraph 1 recites that the invention relates to electronic
advertising, and more particularly, injecting an advertisement into a mobile
document displayed on a mobile device. Thus, all this evidence shows that
claim 1 is directed to placing an advertisement in a mobile document that
also includes some code, i.e. advertisement insertion. This is consistent with
the Examiner's finding.
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It follows from prior Supreme Court cases, and Bilski (Bilski v.
Kappas, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
advertisement insertion is a fundamental business practice long prevalent in
our system of commerce. The use of advertisement insertion is also a
building block of ingenuity in marketing and promotion. Thus,
advertisement insertion, like hedging, is an "abstract idea" beyond the scope
of§ 101. See Alice, 134 S. Ct. at 2356.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
risk hedging in Bilski and the concept of advertisement insertion at issue
here. Both are squarely within the realm of "abstract ideas" as the Court has
used that term. See id. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F .3d
1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing
it, and displaying certain results of the collection and analysis" are "a
familiar class of claims 'directed to' a patent-ineligible concept"); see also
In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis,
modification, generation, and transmission and does not recite an
improvement to a particular computer technology. See, e.g., McRO, Inc. v.
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Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
(finding claims not abstract because they "focused on a specific asserted
improvement in computer animation"). As such, claim 1 is directed to the
abstract idea of receiving, analyzing, modifying, generating, and
transmitting data.
The remaining claims merely describe process parameters. We
conclude that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[ t ]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 134 S. Ct. at 2358 ( citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 2359. They do not.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Receiving,
analyzing, modifying, generating, and transmitting data amounts to
electronic data query and retrieval----one of the most basic functions of a
computer. That the code is an optical code does not change this
determination. First, the code is not rendered in the claim, and the technical
details of such generation are not recited. Therefore, the limitation is
functionally no more than code generation. Second, the Specification at
paragraph 4 admits that embedding an optical code in a document is
conventional. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp., supra; see also In re Katz Interactive Call Processing Pat. Litig., 639
F.3d 1303, 1316 (Fed. Cir. 2011) ("Absentapossiblenarrowerconstruction
of the terms 'processing,' 'receiving,' and 'storing,' . . . those functions can
be achieved by any general purpose computer without special
programming"). In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, "even if a process of collecting and analyzing information is 'limited
to particular content' or a particular 'source,' that limitation does not make
the collection and analysis other than abstract." SAP Am. Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data receiving, analyzing,
modifying, generating, and transmitting is equally generic and conventional
or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772
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F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission); Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(sequence of processing, routing, controlling, and monitoring). The ordering
of the steps is, therefore, ordinary and conventional.
Viewed as a whole, Appellants' method claims simply recite the
concept of advertisement insertion as performed by a generic computer. To
be sure, the claims recite doing so by advising one to do so in the context of
a mobile device and size the ad, including some content code, accordingly.
But this is no more than abstract conceptual advice on the parameters for
such advertisement insertion and the generic computer processes necessary
to process those parameters, and do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 21 pages of Specification spell
out different generic equipment2 and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of advertisement insertion under different
scenarios. They do not describe any particular improvement in the manner a
2 The Specification describes using a personal computer and tablet computer
or smart phone. Spec., paras. 24--25.
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computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of
advertisement insertion using some unspecified, generic computer. Under
our precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art."'
Id. at 2360.
We are not persuaded by Appellants' argument that
when considering the claim as a whole, the claim is actually
directed to providing not only a digital advertisement, but also a
requested mobile document as well as generating and providing
an optical code where the optical code is generated using
information about the requested mobile document. So there are
really three elements that are provided. A mobile document, an
advertisement that is relevant to the mobile document, and an
optical code that is generated based on information about the
requested mobile document. This is not only in a different
context than the asserted abstract idea, but also is much less
abstract.
Br. 7-8. That three elements of data are provided is immaterial to what the
claim is directed to, as the document, ad, and code are all data provided for
assembly on a screen. The code is not part of the ad, and, as the airline
boarding pass in the Specification exemplifies, is part of the complete
document onto which the ad is to be inserted. As such, the claims are
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directed to the abstract conceptual advice of inserting an ad onto a document
that includes some optical code, the inclusion of the optical code being
known to be conventional.
Appellants further argue that the asserted claims are akin to the claims
found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014). Br. 8. In DDR Holdings, the Court evaluated the
eligibility of claims "address[ing] the problem of retaining website visitors
that, if adhering to the routine, conventional functioning of Internet
hyperlink protocol, would be instantly transported away from a host's
website after 'clicking' on an advertisement and activating a hyperlink." Id.
at 1257. There, the Court found that the claims were patent eligible because
they transformed the manner in which a hyperlink typically functions to
resolve a problem that had no "pre-Internet analog." Id. at 1258. The Court
cautioned, however, "that not all claims purporting to address Internet-
centric challenges are eligible for patent." Id. For example, in DDR
Holdings the Court distinguished the patent-eligible claims at issue from
claims found patent-ineligible in Ultramercial. See id. at 1258-59 (citing
Ultramercial, 772 F.3d at 715-16). As noted there, the Ultramercial claims
were "'directed to a specific method of advertising and content distribution
that was previously unknown and never employed on the Internet before."'
Id. at 1258 (quoting Ultramercial, 772 F.3d at 715-16). Nevertheless, those
claims were patent ineligible because they "merely recite[ d] the abstract idea
of 'offering media content in exchange for viewing an advertisement,' along
with 'routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet."' Id.
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Appellants' asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
media product;" "receiving from the consumer a request to view [a] sponsor
message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." Ultramercial, 772 F.3d at 712. Similarly, Appellants' asserted
claims recite receiving, analyzing, modifying, generating, and transmitting
data. This is precisely the type of Internet activity found ineligible in
Ultramercial.
We are not persuaded by Appellants' argument that "the sizing of the
generating of the optical code based on the size of the display of the mobile
device as claimed is a very concrete, as opposed to abstract, solution to a
problem that exists specifically in the context of mobile devices." Br. 9.
Appellants do not recite any technological implementation details for how
the generation is performed, or how the generation is based on the size of the
display and, therefore, the limitation of basing on size is abstract conceptual
advice for a result to be achieved by any and all possible means.
Affinity contends that the '085 patent embodied a concrete
technological innovation because, as of its priority date (March
28, 2000), wireless streaming of media was not "routine,
conventional, or well-known." The patent, however, does not
disclose any particular mechanism for wirelessly streaming
content to a handheld device. The specification describes the
function of streaming content to a wireless device, but not a
specific means for performing that function. Claim 14, in tum,
recites ( 1) a "media managing system" that maintains a library
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of content, (2) a "collection of instructions" that are "operable
when executed" by a handheld wireless device to request
streaming delivery of the content, and (3) a "network based
delivery resource" that retrieves and streams the requested
content to the handheld device. At that level of generality, the
claims do no more than describe a desired function or
outcome, without providing any limiting detail that confines the
claim to a particular solution to an identified problem. The
purely functional nature of the claim confirms that it is directed
to an abstract idea, not to a concrete embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016). More critically, the claims do not recite actually rendering the
code, leaving the limitation of being based on size aspirational rather than
functional.
Claims 1-21 rejected under 35 USC§ 103(a) as unpatentable
over Behr and Moukas
We are not persuaded by Appellants' argument that
the claimed transmitting is of a mobile document that includes
the size adjusted advertisement and the generated optical code.
Review of paragraph [0080] of Behr reveals that what is
described is the scanning of a barcode on a mobile device and
then retrieving content based on data included in the scanned
barcode. The results is that the content management server
delivers the selected advertisement based on the barcode. There
is no mention of the barcode, or an optical code as claimed,
being transmitted back to the mobile device or the generation of
a barcode, or an optical code as claimed, that is provided to the
mobile device with the advertisement.
Br. 10. As the Examiner responds
Moukas teaches generating of the barcode, whereas Behr
teaches the transmission of the bar code. In regards to
generating the barcode, Examiner has added Paragraphs [0011]
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and [0170] of Moukas for more clarification (In addition to the
originally cited Paragraph [0162]). Paragraph [0011] of
Moukas discloses "the invention includes an apparatus for
reserving a transaction over a mobile device link comprising a
mobile marketing platform with a transmitter for offering a
transaction over a communication link and a barcode generator
for generating a barcode as a confirmation of receiving the
response to the offer". Paragraph [0162] ofMoukas discloses
more detail about the reservation system. Paragraph [O 170]
discloses the barcode generator in more detail: "Mobile
Inventory Reservation System ('MIRS ') receives SMS from
consumers and translates them to RCIS requests, receives RCIS
responses to inquiries and translates to informational SMS
messages relayed to the consumers, and receives RCIS
responses to reservations requests and translates reservation IDs
to 1 D encrypted string or 20 barcode images. Regarding
transmission of the barcode, Paragraph [0080] of Behr discloses
"[R ]equesting advertising information using a mobile device
equipped with an automatic bar-code reader. The method may
begin generally at block 164, when the mobile device user 16,
18, 20 views and advertisement containing a unique bar-code
associated with the advertised product or service. Once the
mobile device user 16, 18, 20 views the advertisement, the user
may then take a photograph of the bar-code with the mobile
device, as indicated generally at block 166. The mobile device
can then be configured to convert the photographed bar-code
into a unique number (block 168), which can then be
transmitted (block 170) along with the user's identifying
information to the content management server 14 requesting
that the selected advertisement be delivered to the user's mobile
device." In this case, "transmitting, via the network and in
response to the received mobile document request", is disclosed
in Behr as "[R ]equesting advertising information using a
mobile device equipped with an automatic bar-code reader" and
"a mobile document formatted according to the predetermined
layout for the requested mobile document to the mobile device
wherein the mobile document" is disclosed in Behr as "[T]he
mobile device user 16,18,20 views [an] advertisement
containing a unique bar-code associated with the advertised
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Appeal2017-002774
Application 13/663,711
product or service .... [T]he user may then take a photograph
of the bar-code with the mobile device . . . . The mobile device
can then be configured to convert the photographed bar-code
into a unique number (block 168), which can then be
transmitted (block 170) along with the user's identifying
information to the content management server 14 requesting
that the selected advertisement be delivered to the user's mobile
device."
Ans. 3--4 ( emphasis omitted). We agree with the Examiners findings and
determination.
CONCLUSIONS OF LAW
The rejection of claims 1-21 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more, is proper.
The rejection of claims 1-21 under 35 U.S.C. § 103(a) as unpatentable
over Behr and Moukas is proper.
DECISION
The rejection of claims 1-21 is affirmed.
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.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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