Ex Parte GU et al

Patent Trial and Appeal Board

Jun 27, 2018

13667084 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/667,084 11/02/2012 QUIJUGU
919 7590 06/29/2018
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT.
37 EXECUTIVE DRIVE
MSC 01-152
DANBURY, CT 06810
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.
G-610 8391
EXAMINER
TSUI, ALFRED H
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
iptl@pb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QUIJU GU and JUN ZHANG
(Applicant: Pitney Bowes Inc.)
Appeal2017-002814
Application 13/667 ,084 1
Technology Center 3600
Before JAMES R. HUGHES, JOHN A. EV ANS,
and NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-15. We have jurisdiction over the pending
rejected claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Pitney Bowes Inc. as the real party in interest. (Br. 2.)
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Application 13/667,084
THE INVENTION
Appellants' disclosed and claimed invention is directed to modeling
consumer activity based on social media and mobile activity data.
(Abstract.) Independent claim 1, reproduced below, is illustrative of the
subject matter on appeal:
1. A method for determining a living and working area for a
person, the method comprising:
receiving, by a processing device, a plurality of
location history data points for the person from at least
one of a social media service provider and a mobile
telephone carrier service provider;
clustering, by the processing device, the plurality
of location history data points using a first clustering
radius to provide at least one location cluster for the
person;
identifying, by the processing device, a home area
cluster for the person from the at least one location
cluster based on longevity and frequency of the location
history data points included in each of the at least one
location cluster;
generating, by the processing device, a home area
polygon for the location history data points included in
the home area cluster:
clustering, by the processing device, the location
history data points in the home area polygon using a
second clustering radius that is less than the first
clustering radius to provide at least one home area
location cluster for the person; and
determining, by the processing device, at least one
of a living area and working area for the person from the
at least one home area location cluster by applying a time
of day filter to each of the at least one home area location
cluster.
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Application 13/667,084
REJECTIONS
The Examiner rejected claims 1-15 under 35 U.S.C. § 101 as being
directed to ineligible subject matter. (Final Act. 6-7 .)
The Examiner rejected claims 1, 6-8, 10, and 13-15 under 35 U.S.C.
§ I03(a) as being unpatentable over Blom et al. (US 2012/0136865 Al, pub.
May 31, 2012) ("Blom") and Edge et al. (US 2009/0093259 Al, pub. Apr. 9,
2009) ("Edge"). (Final Act. 7-13.)
The Examiner rejected claim 9 under 35 U.S.C. § I03(a) as being
unpatentable over Blom, Edge, and Weiss et al. (US 2011/0099046 Al, pub.
Apr. 28, 2011) ("Weiss"). (Final Act. 13-14.)
The Examiner rejected claims 4, 5, and 12 under 35 U.S.C. § I03(a)
as being unpatentable over Blom, Edge, and Mehta et al. (US 2010/0004997
Al, pub. Jan. 7, 2010) ("Mehta"). (Final Act. 14--16.)
The Examiner rejected claims 2, 3, and 11 under 35 U.S.C. § I03(a)
as being unpatentable over Blom, Edge, and Feintuch et al. (US 5,040,133,
issued Aug. 13, 1991) ("Feintuch"). (Final Act. 16-19.)
ISSUES ON APPEAL
Appellants' arguments in the Appeal Brief present the following
dispositive issues: 2
Issue One: Whether claims 1-15 are directed to ineligible subject
matter. (Br. 4--7.)
2 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed Jan. 19, 2016) (herein, "Br.");
the Final Office Action (mailed Aug. 27, 2015) (herein, "Final Act."); and
the Examiner's Answer (mailed July 26, 2016) (herein, "Ans.") for the
respective details.
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Application 13/667,084
Issue Two: Whether the Examiner erred in finding the combination of
Blom and Edge teaches or suggests the limitations of independent claims 1,
10, and 15. (Br. 7-9.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. For the rejection pursuant to 35 U.S.C.
§ 101, we disagree with Appellants' arguments, and we adopt as our own ( 1)
the pertinent findings and reasons set forth by the Examiner in the Action
from which this appeal is taken (Final Act. 6-7) and (2) the corresponding
findings and reasons set forth by the Examiner in the Examiner's Answer in
response to Appellants' Appeal Brief. (Ans. 3-5.) We concur with the
applicable conclusions reached by the Examiner, and emphasize the
following.
Issue One
The Examiner concludes the pending claims are patent-ineligible
under 35 U.S.C. § 101:
The claims are, generally speaking, directed to the abstract idea
of determining a working and living area for a person.
Determining a working and living location is a longstanding
commercial practice. While this abstract idea is not identical to
any of the specific concepts the courts have identified as being
abstract ideas, the abstract idea of the instant case is similar in
that it may be construed as a method of organizing human
activity, and one that focuses on a general organization of
information. . . . Although the claims are directed to a specific
and particular abstract idea, the claims are directed to an
abstract idea nonetheless. Merely limiting the scope of an
abstract idea ( effectively claiming a very particular abstract idea
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Application 13/667,084
described at a higher level of specificity) does not make an
abstract idea statutory.
(Final Act. 2.) In addition, the Examiner concludes:
[T]he claim as a whole may be considered to merely apply the
abstract idea of comparing new and stored information and
using rules to identify options by a generic computing device
( e.g., a portable electronic device, smart phone, or tablet), with
the additional elements adding insignificant extra-solution
activity ( e.g., merely collecting data which is well understood,
routine, and conventional activities). Thus, the additional
elements generally link the use of the abstract idea to a
particular technological environment, without significantly
more. Accordingly, the Examiner concludes that there are no
meaningful limitations in the claim that transform the judicial
exception into a patent eligible application such that the claim
amounts to significantly more than the judicial exception itself.
(Id. at7.)
Appellants argue:
The present invention is related to modeling consumers'
activity areas based on social media and mobile activity data.
This is not an abstract idea within the meaning of Alice, as this
is not a long standing and fundamental practice . . . . The
claimed invention differs from other claims found by the courts
to recite abstract ideas in that they do not merely recite the
performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
Internet.
(Br. 5---6.) Appellants also argue the claims recite significantly more than an
abstract idea, because of the detailed "specific steps" recited in the claims.
(Id. at7.)
We are not persuaded by Appellants' arguments. We adopt the
Examiner's findings and conclusions provided in the Final Office Action
and Answer. (Final Act. 2--4, 6-7; Ans. 4--5.) The Supreme Court has long
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held that "[l]aws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354
(2014) (quoting Assoc.for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). The "abstract ideas" category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134
S. Ct. at 2354--55 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355. The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. If the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims "individually and 'as an ordered combination'" to determine
whether there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to "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. ( quoting Mayo, 566 U.S. at 73.) The
prohibition against patenting an abstract idea "'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant postsolution activity."' Bilski v.
Kappas, 561 U.S. 593, 610-11 (2010) (internal citation omitted.)
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Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellants' claims are reasonably characterized as directed to
an abstract idea of "determining a working and living area for a person."
(Final Act. 6.) As the Examiner concludes, the fact that the claims further
recite the abstract idea "at a higher level of specificity," does not alter the
conclusion that the claims are directed to an abstract idea. (Id. at 2.)
There is no definitive rule to determine what constitutes an "abstract
idea." Rather, the Federal Circuit has explained that "both [it] and the
Supreme Court have found it sufficient to compare claims at issue to those
claims already found to be directed to an abstract idea in previous
cases." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir.
2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) ( explaining that, in determining whether claims are
patent-eligible under § 101, "the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen-what prior cases were about, and which way they were decided").
The Federal Circuit also noted that "examiners are to continue to determine
if the claim recites (i.e., sets forth or describes) a concept that is similar to
concepts previously found abstract by the courts." Amdocs, 841 F.3d at
1294 n.2 (internal citation omitted.)
Here, the claims are similar to the claims that the Federal Circuit
determined are patent ineligible in Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (collecting information and
"analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category"). The Federal Circuit has also held
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similar data manipulation claims to be directed to patent-ineligible abstract
ideas-seeDigitechimage Techs., LLCv. Elecs.for Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014) (employing mathematical algorithms to
manipulate existing information); OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362---63 (Fed. Cir. 2015) (offer-based price
optimization); Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information presented to a user
based on particular information); Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir. 2013) (generating
tasks in an insurance organization); and Versata Dev. Grp. v. SAP Am., 793
F.3d 1306, 1333-34 (Fed. Cir. 2015) (price-determination method involving
arranging organizational and product group hierarchies). Here, we agree
with the Examiner that the "higher level of specificity" recited in the claims
nevertheless is directed to an abstract mental process that can be carried out
by a human being by data gathering, plotting points on a map and deducing
and characterizing clusters (i.e., "home" versus "office") in accord with the
algorithms set out in the claims. (Ans. 2.) Cf CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) ("steps can be
performed in the human mind, or by a human using a pen and paper").
Turning to the second step of the Alice inquiry, we find nothing in the
claims that adds anything "significantly more" to transform the abstract idea
of determining a working and living area for a person. Alice, 134 S. Ct. at
2357. Beyond an abstract idea, the claims merely recite "'well-understood,
routine, conventional activit[ies]. "' Alice, 134 S. Ct. at 2359 (quoting Mayo,
566 U.S. at 73). In particular, we agree with the Examiner that "[g]eneric
computer components recited as performing generic computer functions," do
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not add significantly to the claimed subject matter. (Ans. 4--5.) For
example, the Specification states the computer system "may comprise a
general purpose computer selectively activated or reconfigured by a
computer program .... " (Spec. ,r 11.) Considered individually or taken
together as an ordered combination, the claim elements fail "to 'transform'
the claimed abstract idea into a patent-eligible application." Alice, 134 S.
Ct. at 2357 (quoting Mayo, 566 U.S. at 72-73, 78).
Because Appellants' claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's 35 U.S.C. § 101
rejection of the pending claims.
Issue Two
Appellants argue the combination of Blom and Edge does not teach or
suggest the independent claim 1 limitation, "clustering, by the processing
device, the location history data points in the home area polygon using a
second clustering radius that is less than the first clustering radius ... ," nor
the commensurate limitations of independent claims 10 and 15. (Br. 8-9.)
The Examiner relies on the disclosure in Blom of "hierarchical location
anchors" determined from clusters of "stay points." (Final Act. 8; Blom,
Fig. 12B, ,r 117.) However, as Appellants argue:
[W]hen a location anchor reaches its maximum size, another
location anchor is generated and the two location anchors are
grouped together to form a larger location anchor. This is the
exact opposite of using a second radius that is smaller than the
first radius to perform a clustering operation.
(Br. 8.)
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The Examiner responds that Appellants are relying on an "intended
result" that "does not limit the function of the claim." (Ans. 5-6.) This is
not a sufficient reason for ignoring the explicit requirements of the claim
limitation at issue. We, therefore, are persuaded on this record that the
Examiner has not sufficiently demonstrated that the combination of Blom
and Edge teaches or suggests the claim limitation at issue. Accordingly, we
do not sustain the Examiner's obviousness rejections of independent claims
1, 10, and 15.
CONCLUSION
For the reasons stated above, we sustain the Examiner's rejection of
claims 1-15 as being directed to patent-ineligible subject matter under
§ 101.
Also for the reasons stated above, we do not sustain the Examiner's
obviousness rejections of independent claims 1, 10, and 15 over Blom and
Edge.
We also do not sustain the obviousness rejections of claims 6-8 and
13-15 over Blom and Edge, of claim 9 over Blom, Edge, and Weiss, of
claims 4, 5, and 12 over Blom, Edge, and Mehta, and of claims 2, 3, and 11
over Blom, Edge, and Feintuch, each of which claims depends from
independent claim 1 or claim 10.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 4I.50(a) (1).
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DECISION
We affirm the Examiner's decision rejecting claims 1-15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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