Ex Parte Fisher et al

Patent Trial and Appeal Board

Mar 2, 2017

11944267 (P.T.A.B. Mar. 2, 2017)

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.
11/944,267 11/21/2007 Michelle FISHER 379842-991100 5012
12120 7590 03/06/2017
Miohelle Fisiher
EXAMINER
PO Box 10383 FU, HAO
Marina Del Rev, CA 90295
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/06/2017 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):
mfisher @ blazemobile .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHELLE FISHER and RATHIN GUHA
Appeal 2015-004370
Application 11/944,2671
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the non-
final rejection of claims 1, 2, 5—8, 22, 27—31, 41—45, 51, 52, 58, 59, 62, 63
and 68—72. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
1 The Appellants identify the assignee of this application, Michelle Fisher,
the real party in interest. App. Br. filed Aug. 25, 2014 at 3.
Appeal 2015-004370
Application 11/944,267
THE INVENTION
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for sending an artifact to a mobile communication
device of a user, the method comprising:
receiving a request from an application executing at the mobile
communication device of the user, wherein the request is to send an
artifact for display within a specific application generated screen
running on the mobile communication device of the user from a
management server storing a plurality of user profiles and a plurality
of artifacts that receives the request, wherein the specific application­
generated screen is a screen, scene, or area of the application, wherein
the mobile application is not browser based and is preinstalled or
downloaded and installed by a user on the mobile communications
device;
retrieving personal information from a user profile of the user at
the management server;
retrieving a transaction of the user at the management server,
the transaction stored at the management server including-payment
transactions made by the user through the mobile communication
device.
generating two or more targeting parameters by correlating, on
the management server, personal information of the user and the
transaction of the user;
selecting an artifact to send to the specific application generated
screen running on the mobile communication device based on the two
or more targeting parameters, the artifact selected at the management
server;
sending the selected artifact to the mobile communication
device from the management server; and
displaying the artifact within the specific application generated
screen.
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Application 11/944,267
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Natsuno et al.
Hampel et al.
Sun et al.
Jeffs
Kim
Ramer et al.
US 2002/0165773
US 2007/0270166
US 2008/0167988
US 2009/0100477
US 2010/0100446
US 2010/0293051
Al Nov. 7, 2002
Al Nov. 22, 2007
Al July 10, 2008
Al Apr. 16, 2009
Al Apr. 22, 2010
Al Nov. 18,2010
The following rejections are before us for review:
1. Claims 70-72 stand rejected under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the
subject matter which the Appellants regard as the invention.
2. Claims 1, 2, 5, 7, 22, 29-31, 41^15, 51, 52, 58, 59, 62, 63, 68, 69, 71,
and 72 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Hampel, Ramer, Natsuno, and Kim.
3. Claims 6, 28, and 41 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hampel, Ramer, Natsuno, Kim, and Sun.
4. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hampel, Ramer, Natsuno, Kim, and Jeffs.
5. Claim 27 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hampel, Ramer, Natsuno, Kim, and Official Notice.
ISSUES
Did the Examiner err in rejecting claims 70—72 under 35 U.S.C.
§112, second paragraph, for failing to particularly point out and distinctly
claim the subject matter which the Appellants regard as the invention; claims
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Application 11/944,267
1, 2, 5, 7, 22, 29-31, 41^15, 51, 52, 58, 59, 62, 63, 68, 69, 71, and 72 under
35 U.S.C. § 103(a) as being unpatentable over Hampel, Ramer, Natsuno, and
Kim; claims 6, 28, and 41 under 35 U.S.C. § 103(a) as being unpatentable
over Hampel, Ramer, Natsuno, Kim, and Sun; claim 8 under 35 U.S.C. §
103(a) as being unpatentable over Hampel, Ramer, Natsuno, Kim, and Jeffs;
and claim 27 under 35 U.S.C. § 103(a) as being unpatentable over Hampel,
Ramer, Natsuno, Kim, and Official Notice.
ANALYSIS
The rejection of claim 70—72 under 35 U.S.C. § 112, second paragraph, for
failing to particularly point out and distinctly claim the subject matter which
the Appellants regard as the invention.
According to the Examiner, the claim 70 limitation “payment
transaction history” is indefinite (Non-final Act. 4—5).
Claim 70 depends from claim 1. Neither claim 1 nor claim 70
contains the language “payment transaction history.”
Accordingly, we do not sustain the rejection.
The Examiner also rejected claims 71 and 72 under 35 U.S.C. § 112,
second paragraph, because “essential steps are omitted from claim 71 and
72.” (Non-final Act. 5).
We disagree. The Specification does not describe the use of payment
transactions as essential, but rather as exemplary. See, e.g., Specification at
paragraph 18 (“the management server 106 sends artifacts to the mobile
application based on user profile information and/or a transaction history (or
payment trends).” See also MPEP 2174.
Accordingly, the rejection is not sustained.
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Application 11/944,267
The rejection of claims 1, 2, 5, 7, 22, 29—31, 41—45, 51, 52, 58, 59, 62, 63,
68, 69, 71, and 72 under 35 U.S.C. § 103(a) as being unpatentable over
Hampel, Ramer, Natsuno, and Kim.
The rejection of claims 6, 28, and 41 under 35 U.S.C. § 103(a) as being
unpatentable over Hampel, Ramer, Natsuno, Kim, and Sun.
The rejection of claim 8 under 35 U.S.C. § 103(a) as being unpatentable
over Hampel, Ramer, Natsuno, Kim, and Jeffs.
The rejection of claim 27 under 35 U.S.C. § 103(a) as being unpatentable
over Hampel, Ramer, Natsuno, Kim, and Official Notice.
The Examiner grouped independent claims 1, 62, 71, and 72 in a
single omnibus rejection. (Non-final Act. 6—9).
In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting sufficient evidence in support of the
conclusion that one of ordinary skill in the art given the prior art would have
been led to the claimed subject matter. We do not find sufficient evidence in
support of the conclusion that one of ordinary skill in the art would have
been led to the claimed subject matter.
Independent claim 1 includes the limitation:
retrieving a transaction of the user at the management server,
the transaction stored at the management server including-
payment transactions made by the user through the mobile
communication device;
(App. Br. filed Sept. 10, 2014 at 2, Claims Appendix).
The Examiner did not make any explicit finding for the above
limitation in claim 1 (Non-final Act. 6—9).
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The Appellants contend that Hampel and Ramer do not disclose the
above limitation (App. Br. filed Aug. 25, 2014 at 8, 25).
In the Answer, the Examiner did not respond to the Appellants’
arguments regarding this limitation (Ans. 4—7).
A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence. Accordingly, the rejection of
claim 1 and its dependent claims is not sustained.
Independent claim 62 contains a similar limitation, and the
Examiner’s rejection of claim 62 is based on the same deficient findings
(Non-final Act. 6—9). Accordingly, the rejection of claim 62 and its
dependent claims is not sustained.
Claims 71 and 72 do not contain the above limitation (App. Br. filed
Sept. 10, 2014 at 5—6, Claims Appendix). As the Examiner observed, the
scope of claims 71 and 72 is broader than claims 1 and 62. We have
considered the Appellants’ arguments and are not persuaded of error in the
rejection as to claims 71 and 72.
For the first time in the Reply Brief, the Appellants argue that Kim
and Hampel are not valid prior art in light of the Appellants’ Rule 131
declarations submitted with the Reply Brief that purport to swear behind
those references (Reply Br. 7, 10). However, these declarations were not
presented in a timely fashion for consideration by the Examiner. We decline
to consider them in the first instance on appeal. See MPEP 715.09
(“declarations under 37 CFR 1.131(a) must be timely presented in order to
be admitted.”).
Accordingly, we sustain the rejection of claims 71 and 72.
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NEW GROUND OF REJECTION
Claims 1, 2, 5-8, 22, 27-31, 41^15, 51, 52, 58, 59, 62, 63, and 68-72
are rejected under 35U.S.C. § 101 as being directed to non-statutory subject
matter.
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Id. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to a method for sending targeted advertisements to
certain mobile device users based on their characteristics. Sending targeted
advertisements to certain mobile device users based on their characteristics
is a method of organizing human activity and/or fundamental economic
practice. As such it is an abstract idea. See Morsa v. Facebook, Inc., 77 F.
Supp. 3d 1007, 1014 (C.D. Cal. 2014), aff d, 622 F. App’x 915 (Fed. Cir.
2015) (claims directed to “targeting advertisements to certain consumers,
and using a bidding system to determine when and how advertisements will
be displayed” held to be directed to an abstract idea). As noted by the court
in Morsa, matching consumers with a given product or service “has been
practiced as long as markets have been in operation.” Id. (quoting Tuxis
Technologies, LLC v. Amazon.com, Inc., No. CV 13—1771—RGA, 2014 WE
4382446, at *5 (D.Del. Sept. 3, 2014)); see also OpenTV, Inc. v. NetflixInc.,
76 F.Supp.3d 886, 893, No. 1A-CV-01525-RS, at 10, 2014 WE 7185921
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(N.D.Cal. December 16, 2014) (“The concept of gathering information about
one’s intended market and attempting to customize the information then
provided is as old as the saying, ‘know your audience.’”).
Step two of Alice is “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 significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 2355 (citation omitted).
We see nothing in the subject matter claimed that transforms the
abstract idea of sending targeted advertisements to certain mobile device
users based on their characteristics into an inventive concept.
The method of claim 1 includes seven steps of receiving a request for
an artifact (“receiving”), gathering first information (“retrieving personal
information”), gathering second information (“retrieving a transaction”),
generating third information by correlating the first and second information
(“generating”), selecting an artifact (“selecting”), sending the artifact to the
mobile communication device (“sending”), and displaying the artifact
(“displaying”).
None of these individual steps, viewed “both individually and ‘as an
ordered combination,”’ transform the nature of the claim into patent-eligible
subject matter. See Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at
1297, 1298). All of the claim limitations are well-understood, routine,
conventional activities previously known to the industry. The information
gathering, generating, and sending steps are known information gathering
operations for distributing information in a conventional electronic network
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(e.g., internet) and thus add little to patentably transform the abstract idea of
monitoring automotive systems.
We note that claim 1 calls for “a mobile communication device” and
“a management server.” But “the 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.” Alice at 2358.
The Specification does not describe a new mobile device, a new
server, or a new physical combination of the two. Rather, “[t]he
specification fails to provide any technical details for the tangible
components, but instead predominately describes the system and methods in
purely functional terms.” In re TLI Comma ’ns LLC Patent Litig., 823 F.3d
607, 612 (Fed. Cir. 2016). For example, “[t]he mobile communication
device 102 can be a cellular phone, a wireless personal digital assistant
(PDA), or other wireless communication device” (Spec. para. 17). The
Specification does not provide any implementation details regarding the
management server, aside from its function (see, e.g., Spec. para. 18, “the
management server 106 can send artifacts in response to a request”). In
other words, the focus of the Appellants was not on an improved mobile
device or an improved server. Nor do the claims attempt to solve “a
challenge particular to the Internet.” DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1256—57 (Fed.Cir.2014); cf. Intellectual Ventures I,
792 F.3d at 1371 (because the patent claims at issue did not “address
problems unique to the Internet, ... DDR has no applicability.”).
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For the foregoing reasons, we find that claim 1 covers subject matter
that is judicially-excepted from patent eligibility under § 101. Independent
method claim 71 is directed to similar subject matter as claim 1, albeit less
narrowly constructed.
We reach the same conclusion as to independent system claims 62 and
72. Here, as in Alice, “the system claims are no different in substance from
the method claims. 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.” Alice 134 S.
Ct. at 2351. “[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 if” is not enough for patent
eligibility.” Id. at 2358 (quoting Mayo, 132 S. Ct. at 1294).
The dependent claims describe various information gathering and
distributing schemes which do little to patentably transform the abstract idea.
Therefore, we enter a new ground of rejection of claims 1, 2, 5—8, 22,
27-31, 41—45, 51, 52, 58, 59, 62, 63, and 68-72 under 35 U.S.C. § 101.
CONCLUSIONS
The rejection of claims 70-72 under 35 U.S.C. § 112, second
paragraph, for failing to particularly point out and distinctly claim the
subject matter which the Appellants regard as the invention, is not sustained.
The rejection of claims 1, 2, 5—8, 22, 27—31, 41—45, 51, 52, 58, 59, 62,
63, and 68—70 under 35 U.S.C. § 103(a) is not sustained.
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The rejection of claims 71 and 72 under 35 U.S.C. § 103(a) is
sustained.
DECISION
The decision of the Examiner to reject claims 1, 2, 5—8, 22, 27—31,
41—45, 51, 52, 58, 59, 62, 63, and 68-70 under 35 U.S.C. § 103(a) is
reversed.
The decision of the Examiner to reject claims 71 and 72 under 35
U.S.C. § 103(a) is affirmed.
Claims 1, 2, 5-8, 22, 27-31, 41^15, 51, 52, 58, 59, 62, 63, and 68-72
are newly rejected under 35 U.S.C. § 101.
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 Appellants, 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 proceeding 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 ....
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Should the Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If the Appellants elect prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Patent Trial and Appeal Board for final
action on the affirmed rejection, including any timely request for rehearing
thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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