Ex Parte Khan

Patent Trial and Appeal Board

Feb 25, 2019

13211082 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/211,082 08/16/2011
25297 7590 02/27/2019
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
FIRST NAMED INVENTOR
Mohammad Khan
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.
1615/51/2 3421
EXAMINER
SITTNER, MICHAEL J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
usptomail@jwth.com
datcheson@jwth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMMAD KHAN 1
Appeal 2018-002246
Application 13/211,082
Technology Center 3600
Before ALLEN R. MACDONALD, CARL W. WHITEHEAD JR and
JEFFREYS. SMITH, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1-7, 9-20 and 22-
27 under 35 U.S.C. § 134(a). Appeal Brief 10-11. We have jurisdiction
under 35 U.S.C. § 6(b) (2012).
We affirm.
Introduction
The invention is directed to "methods, systems, and computer
readable media for providing an electronic advertisement to a mobile
device." Specification 1.
1 According to Appellant, the real party in interest is MasterCard
International Incorporated. Appeal Br. 2.
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Application 13/211,082
Illustrative Claim
1. A method for providing an electronic advertisement to a
mobile device, the method comprising:
at a trigger management server, serving as a central point of
contact for electronic offer certificate request messages from a mobile
device, receiving an electronic offer certificate request message from
the mobile device in response to the mobile device interfacing with a
touch point, obtaining a first offer identifier from the electronic
certificate request message, identifying an advertising management
server associated with the first offer identifier, and forwarding the
electronic offer certificate request message to the advertisement
management server;
receiving, by the advertisement management server, the
electronic offer certificate request message including the first offer
identifier obtained by interfacing the mobile device with the touch point
and a subscriber identifier associated with the mobile device;
identifying, by an offer management module of the
advertisement management server and based on the first offer identifier,
a first electronic offer certificate;
communicating, by the offer management module, the first
electronic offer certificate to an over the air (OTA) provisioning server
separate from the trigger management server;
prov1s10ning, by the OT A provisioning server, a wallet
application on the mobile device with the first electronic offer
certificate;
identifying, by an advertisement management module of the
advertisement management server and based on the first offer identifier,
an electronic advertisement for at least one product or service, wherein
identifying the electronic advertisement includes querying an
advertisement policy database to obtain an advertisement policy that
specifies that the identified electronic advertisement is based at least on
an electronic offer certificate history associated with the subscriber
identifier, wherein the electronic offer certificate history includes
location information of touch points previously interfaced by the
mobile device; and
utilizing, by the advertisement management server, the
subscriber identifier to communicate the identified electronic
advertisement to the mobile device, wherein the electronic
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Application 13/211,082
advertisement is provided to be displayed by the mobile device upon
the redemption of the first electronic offer certificate.
Rejections on Appeal
Claims 1-7, 9-20 and 22-27 stand rejected under 35 U.S.C. § 112(b)
or (for pre-AIA) 35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor, a joint inventor, or (for pre-AIA) the applicant regards as the
invention. Final Action 2--4.
Claims 1-7, 9-20 and 22-27 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to nonstatutory subject matter.
Final Action 4--7.
Claims 1, 2, 4, 7, 10-11, 13-15, 17, 20, 23-24 and 26-27 stand
rejected under 35 U.S.C. § I03(a) as being unpatentable over Kumar (US
Patent Application Publication 2010/0241494 Al; published September 23,
2010); Macllwaine (US Patent Application Publication 2011/0125565 Al;
published May 26, 2011 ); Sakata (US Patent Application Publication
2002/0138347 Al; published September 26, 2002) and Sterling (US Patent
Application Publication 2009/0265228 Al; published October 22, 2009).
Final Action 7-21.
Claims 12 and 25 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kumar, Macllwaine, Sakata, Sterling and Lin (US Patent
Application Publication 2011/0161158 Al; published June 30, 2011). Final
Action 21-22.
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Application 13/211,082
Claims 5, 6, 8, 9, 18, 19, 21 and 22 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Kumar, Macllwaine, Sakata, Sterling
and Ramer (US Patent Application Publication 2009/0234745 Al; published
September 17, 2009). Final Action 23-26.
Claims 3 and 16 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kumar, Macllwaine, Sakata, Sterling and Tulloch (US
Patent Application Publication 2010/0161410 Al; published June 24, 2010).
Final Action 26-28.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed June 20, 2017), the Reply Brief (filed
December 20, 2017), the Final Action (mailed December 20, 2016) and the
Answer (mailed October 20, 2017) for the respective details.
35 U.S.C. § 112 rejection
The Examiner finds independent claims 1, 14 and 27 has two
plausible distinct interpretations because:
[T]he definition of the term "upon" is: "a formal term for "on",
especially in an abstract sense." The preposition upon has the
same core meaning as the preposition on. However, in modern
English upon tends to be restricted to more formal contexts or to
established phrases and idioms, as in once upon a time and row
upon row of seats.
Final Action 3.
Appellant "submits that the independent claims are not ambiguous
and that [the] interpretation (i.e., the electronic advertisement is
provided to be displayed by the mobile device) is the proper interpretation
based on the reading of the claims. It is further submitted that the
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Specification supports this interpretation on page 11, line 24 - page 12, line
1." Appeal Brief 11.
We find Appellant's argument persuasive. We reverse the Examiner's
35 U.S.C. § 112(b) rejection of claims 1-7, 9-20 and 22-27.
35 U.S.C. § 101 rejection
The Examiner determines the claims are patent ineligible under
35 U.S.C. § 101 because the claims are directed to an abstract idea
comprising a fundamental economic practice or organizing human activity,
and do not include additional elements that are sufficient to amount to
significantly more than the abstract idea. Final Action 2; see also Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) (Describing the
two-step framework "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.").
After the mailing of the Answer and the filing of the Briefs in this
case, the US PTO published revised guidance on the application of§ 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the
Office first looks 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
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field (see
MPEP § 2106.0S(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 Memorandum.
We are not persuaded the Examiner's rejection is in error. We adopt
the Examiner's findings and conclusions as our own, and we add the
following primarily for emphasis and clarification with respect to the
Memorandum.
Appellant argues the pending claims are not directed to an abstract
idea because "independent claims 1, 14, and 27 respectively recite a method,
a system, and a computer readable medium for providing an electronic
advertisement to a mobile device." Appeal Brief 12-13.
We agree with the Examiner's determination that the claims are
directed to an abstract idea. See Final Rejection 4--7. Claim 1 recites a
"method for providing an electronic advertisement to a mobile device"
wherein upon "receiving an electronic offer certificate request message from
the mobile device in response to the mobile device interfacing with a touch
point" an "electronic advertisement is provided to be displayed by the
mobile device upon the redemption of the first electronic offer certificate" in
accordance to "an advertisement policy that specifies that the identified
electronic advertisement is based at least on an electronic offer certificate
history." These steps comprise fundamental economic principles or
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Application 13/211,082
practices and/or commercial or legal interactions; thus the claim recites the
abstract idea of "certain methods of organizing human activity."
Memorandum, Section I ( Groupings of Abstract Ideas); see Specification 1.
Our reviewing court has found claims to be directed to abstract ideas when
they recited similar subject matter. See Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014) (using advertising).
Appellant argues "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." Appeal Brief 12. We do not find
Appellant's argument persuasive because claims 1, 14 and 27 appear to be
utilizing the network as merely a tool to distribute advertising content. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
("[W]e find it relevant to ask whether the claims are directed to an
improvement to computer functionality versus being directed to an abstract
idea ... the focus of the claims is on the specific asserted improvement in
computer capabilities (i.e., the self-referential table for a computer database)
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool."). Claims 1, 14 and 27 do not recite
an additional element or elements that reflect an improvement in the
functioning of a computer, or an improvement to other technology or
technical field. See Final Action 6 ("[T]he step of obtaining an offer
identifier through a generically described method of interfacing a mobile
device with a touch-point/smart poster is not novel nor is it the focus of
applicant's invention; it is merely an application of the identified abstract
concepts to a field of use; i.e. NFC [ near field communications] and RFID
[ radio frequency identification] are technologies which are merely used but
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not which are themselves being improved upon and it is not disputed that
such technology was old and well-known at the time of applicant's
invention."); Alice, 573 U.S. at 222 ("In holding that the process was patent
ineligible, we rejected the argument that 'implement[ing] a principle in some
specific fashion' will 'automatically fal[l] within the patentable subject
matter of§ 101."') (quoting Parker v. Flook, 437 U.S. 584, 593 (1978)).
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the
Judicial Exception Is Integrated Into a Practical Application). Nor do we
find the claim includes a specific limitation or a combination of elements
that amounts to significantly more than the judicial exception itself. See
Memorandum, Section III(B)(Step 2B: If the Claim Is Directed to a Judicial
Exception, Evaluate Whether the Claim Provides an Inventive Concept); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1359 (Fed. Cir. 2018) ("the 'inventive concept' cannot be the abstract idea
itself'). Other than the abstract idea itself, the remaining claim elements
only recite generic computer components that are well-understood, routine,
and conventional. See Final Action 6; Specification 5-7; Alice, 573 U.S. at
226.
Accordingly, we agree with the Examiner that claims 1-7, 9-20 and
22-27, not argued separately, are not patent eligible. See Appeal Brief 12.
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Application 13/211,082
35 U.S.C. § 103 rejections
Claims 1, 2, 4, 7, 10-11, 13-15, 17, 20, 23-24 and 26-27
Appellant contend that Kumar's "softcard coupon needs to be
displayed on the mobile device and subsequently selected via the GUI
sometime prior to the user redeeming the ecoupon/softcard coupon." Reply
Brief 4. Appellant further contends that "that providing the branding/issuer
marketing data (which is needed to display the softcard coupon) to the
mobile device after a redemption ( or, alternatively, a transaction at a
transaction terminal 105 as indicated in Macllwain) would be impracticable
and/or incompatible with the system described in Kumar." Reply Brief 4.
Appellant concludes, "the branding/issuer information disclosed in Kumar is
necessarily provided to the mobile device for display on the mobile device
prior to any conducted transaction, and therefore teaches away from any
teaching or suggestion of providing an electronic advertisement after a
transaction as disclosed in Macllwaine." Reply Brief 4.
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (citations and internal quotation marks omitted). See also
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (noting that merely
disclosing more than one alternative does not teach away from any of these
alternatives if the disclosure does not criticize, discredit, or otherwise
discourage the alternatives). Accordingly, we do not find Appellant's
argument persuasive because Appellant has not indicated where Kumar
discourages modification by providing electronic advertisement as disclosed
by Macllwaine.
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Appeal2018-002246
Application 13/211,082
Claim 1 requires, "wherein the electronic advertisement is provided to
be displayed by the mobile device upon the redemption of the first electronic
offer certificate."
Kumar's Figure 3 is reproduced below:
................................................................................................. • 302
! SEND CONTrmL SHORT MESSAGE !,',,,····
1,. f-R()f\A O'Tt\ PR.O·ViS10NH~G .SEf"\\fE:R
TO NFC ENABLED f·IA"-JD8ET
' ,_._~...._ ....................................................................... '-'.'-'-...... , ................................................. __ ._._._,,_.,_,,_,,_._..._,,_,,_,,_.,_..._.,,_..._ ............. '
1 ···········;~·;;··~~~~-E·;-~:1~~-~-~;·;:s·~~;;{~~:E:~:············· i -· ··304
: :
L"""" '"~;t~f-~~~T~;~:i~~f ;;;~~~~~~:~~ ................. I
···----································:·········1 '"''"') .. 30{i
• OTA PHOVfSIONING SERVER !····
i RECflVES ACKNO\,VLED(,MENT j:
i HESPONSE FROM VV.t'LlET CUENT
: .................................................................................................... .
i
----------'------------------------""'""'"""""""·: .. 30})
OTA PROVlS!ONiNG SF-:RVEF~ CREATES A !,',, ,.
SECURED UNK \i\>ffH SEGUHE EIJ:]'<•lENT
Of NfG ENABLED H.•'\NDSET
---------------------··----------------·····--········--··········
' l -OTA PROVIS!()N!NG SE~~VER PROVIDES ( ...... } t{J
I '~~;~Niv~~ti~l}~~~:
I c~~; ~~;:,!;~;ii;~~~~ri:: ]/312
',.·······-~;~-;~;~~c.~-~-D A Tt 1/\:'lRH.ES-S. DEvi'ci""'""'I,,.·""' 314
F1EADER TO J\ili\KE PURCHASE
Figure 3 "depict a flow chart of an exemplary method 300 for delivering an
electronic coupon to an NFC enabled mobile device." Kumar, ,r 41.
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Application 13/211,082
Mcllwaine discloses, "an advertising network is provided based on a
transaction handler to present personalized or targeted advertisements/ offers
on behalf of advertisers." Mallwaine ,r 29. Mcllwaine further discloses
accumulated transaction data is used to:
[G]enerate intelligence information about the purchase behavior,
pattern, preference, tendency, frequency, trend, amount and/or
propensity of the users ( e.g., 101 ), as individuals or as a member
of a group. The intelligence information can then be used to
generate, identify and/or select targeted advertisements for
presentation to the user (101) on the point of interaction (107),
during a transaction, after a transaction, or when other
opportunities arise.
Mallwaine ,r 399; see Final Action 11.
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference; nor is it that the claimed invention must be expressly suggested in
any one or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art." See In re Keller, 642 F.2d 413,425 (CCPA 1981).
Subsequently, we agree with the Examiner's findings that it would have
been obvious to one skilled in the art to modify Kumar by providing
electronic advertisement to a mobile device upon the redemption of the first
electronic offer certificate. We sustain the rejection for claim 1, as well as,
dependent claims 2, 4, 7, 10, 11 and 13, not argued separately. See Appeal
Brief 18. We also sustain the Examiner's obviousness rejection for
independent claims 14 and 27 wherein the arguments made for claim 1 as
essentially the same. See Appeal Brief 15, 18-24. We sustain the
obviousness rejection of dependent claims 15, 17, 20, 23, 24 and 26 which
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Application 13/211,082
depend upon independent claim 14, not argued separately. See Appeal Brief
21.
Claims 3, 5, 6, 8, 9, 12, 16, 18, 19 and 21
We sustain the Examiner's obviousness rejections of dependent
claims 5, 6, 8, 9, 12, 18, 19 and 21 because Appellant's arguments are based
upon the rejection of the independent claims 1, 14 and 27 which we have
sustained as discussed above. See Appeal Brief 24--27; see also Answer 13-
15.
Appellant argues, "Tulloch's disclosure of a user's geographical
location does not necessarily teach or suggest the determination, based
on the first offer identifier, of a location of the touch point and the
identification of an electronic advertisement based on the determined
location of the touch point as recited in claims 3 and 16." Appeal Brief 27.
The Examiner finds, "Tulloch's (see [0025]) 'usage data' is data regarding
usage of a specific 'smart poster' and includes 'geographic location'. As
discussed at [0052] the 'particular location' refers to the location of the
'smart poster'. Tulloch is not gathering GPS coordinates of the user device
but instead Tulloch teaches that he knows the locations of his 'smart
posters'." Answer 14. We do not find Appellant's argument persuasive and
agree with the Examiner's findings. We sustain the Examiner's obviousness
rejection of dependent claims 3 and 16.
DECISION
The Examiner's 35 U.S.C. § 112(b) rejection of claims 1-7, 9-20 and
22-27 is reversed.
The Examiner's nonstatutory subject matter rejection of claims 1-7,
9-20 and 22-27 is affirmed.
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Application 13/211,082
The Examiner's obviousness rejections of claims 1-7, 9-20 and 22-
2 7 are 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)(l ). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
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