Ex Parte Purvis et al

Patent Trial and Appeal BoardDec 10, 2018

12584962 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/584,962 09/14/2009 63649 7590 12/12/2018 DISNEY ENTERPRISES, INC. C/0 FARJAMI & FARJAMI LLP 26522 LA ALAMEDA A VENUE, SUITE 360 MISSION VIEJO, CA 92691 FIRST NAMED INVENTOR Christopher Purvis 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. 0260161! 8147 EXAMINER EPSTEIN, BRIAN M ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 12/12/2018 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): docketing@farj ami. com farjamidocketing@yahoo.com ffarj ami @farj ami. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER PURVIS, LAURA KAMPO, and KEVIN RICE Appeal2017-010467 1 Application 12/584,9622 Technology Center 3600 Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and TARA L. HUTCHINGS, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-21, 23, 24, and 26-28. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed March 27, 2017) and Reply Brief ("Reply Br.," filed August 4, 2017), and the Examiner's Answer ("Ans.," mailed June 8, 2017) and Final Office Action ("Final Act.," mailed October 31, 2016). 2 Appellants identify Disney Enterprises, Inc. as the real party in interest. App. Br. 2. Appeal2017-010467 Application 12/584,962 CLAIMED INVENTION Appellants describe that the claimed invention "relates generally to electronic circuits and systems" and, more particularly, to "communications systems for transmission of digital data" (Spec. 1, 11. 10-12). Claims 1 and 11 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A wireless portable device for providing dynamic location-based data to a user in a defined geographical area including a plurality of points of interest and static location- based data to the user when the user is outside the defined geographic area, the wireless portable device comprising: a transmitter configured to: transmit location information determined by the wireless portable device to a wireless server over a wireless network, wherein the location information is indicative of a location of the wireless portable device within the defined geographical area; transmit the location information and a communication to another wireless portable device over the wireless network; a receiver configured to: receive the dynamic location-based data from the wireless server over the wireless network periodically and automatically when the wireless portable device is in the defined geographical area, and receive static location- based data transmitted from a wireless transmitter when the wireless portable device is outside the defined geographic area; receive another location information and another communication from the another wireless portable device over the wireless network; receive interactive data corresponding to the defined geographical area, wherein the interactive data is received after being at a point of interest from the plurality of points of interest for a pre-determined time and includes 2 Appeal2017-010467 Application 12/584,962 an interactive game relating to a theme of the point of interest; a display configured to: display a schedule of activities in the defined geographical area to the user based on the dynamic location-based data, wherein the dynamic location-based data are generated using the location of the wireless portable device and queue time for each of the activities; and display the interactive data corresponding to the defined geographical area. REJECTIONS Claims 1-21, 23, 24, and 26-28 are rejected under 35 U.S.C. Â§ 101 as directed to a judicial exception without significantly more. Claims 1-3, 5, 7-13, 15, 17-21, and 24 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Davies et al. (US 6,889,900 B2, iss. May 10, 2005) ("Davies"), Robertson et al. (US 2008/0150921 Al, pub. June 26, 2008) ("Robertson"), Siddique et al. (US 2010/0030578 Al, pub. Feb. 4, 2010) ("Siddique"), Inselberg (US 6,996,413 B2, iss. Feb. 7, 2006), Glorikian (US 6,343,317 Bl, iss. Jan. 29, 2002), and Leapman et al. (US 2002/0087401 Al, pub. July 4, 2002) ("Leapman"). Claims 4 and 14 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Davies, Robertson Siddique, Inselberg, Glorikian, Leapman, and Baranowski (US 2007/0178912 Al, pub. Aug. 2, 2007). Claims 6 and 16 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Davies, Robertson Siddique, Inselberg, Glorikian, Leapman, and Takaki et al. (US 2004/0224703 Al, pub. Nov. 11, 2004) ("Takaki"). 3 Appeal2017-010467 Application 12/584,962 Claims 23 and 26 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Davies, Robertson Siddique, Inselberg, Glorikian, Leapman, and Tom (US 7,603,139 Bl, iss. Oct. 13, 2009). Claims 27 and 28 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Davies, Robertson Siddique, Inselberg, Glorikian, Leapman, and Giraldin et al. (US 2006/0105783 Al, pub. May 18, 2006) ("Giraldin"). ANALYSIS Patent-Ineligible Subject Matter Under 35 U.S.C. Â§ 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpretedÂ§ 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp., 134 S. Ct. at 2355. The first step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered "individually and 'as an ordered combination'" to determine whether there are additional elements that 4 Appeal2017-010467 Application 12/584,962 "'transform the nature of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79, 78). The Court acknowledged in Mayo, that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has instructed that claims are to be considered in their entirety to determine "whether their character as a whole is directed to excluded subject matter." McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). In rejecting the pending claims under Â§ 101, the Examiner determined that the claims are directed to "providing location based information to users," which the Examiner determined is a method of organizing human activities, and, therefore, an abstract idea (Final Act. 7-8). The Examiner also determined that the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea itself (id. at 8). Addressing the first step of the Mayo/Alice framework, Appellants argue that the Examiner erred in determining that claim 1 is directed to an abstract idea (App. Br. 8-14). Appellants note that claim 1 is directed to a wireless portable device configured to selectively receive dynamic location- based data or static location-based data depending on whether the user is inside or outside a defined geographic area; and Appellants argue that the performance of the wireless portable device is advantageously improved due to this configuration (id. at 12-14). Appellants also maintain that "because the transition between receiving static location-based data and dynamic 5 Appeal2017-010467 Application 12/584,962 location-based data occurs substantially in real-time with respect to the location of the user, that transition is rooted in computer technology and not one that could be reasonably performed by a human being using paper and pencil" (id. at 14 ). Therefore, according to Appellants, "step one of the Section 101 analysis, in light of the guidance provided by Enfish [i.e., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)], should end the inquiry with respect to patent eligibility by finding that independent claim 1 is not directed to a merely abstract idea" (id.). Appellants' argument is not persuasive, at least because we find nothing from our review of the Specification, nor do Appellants direct us to any portion of the Specification, that attributes any improvement in the operation and/or functionality of the wireless portable device to the claimed invention. Instead, as the Examiner observes, it clearly appears from the Specification that the portable device functions in its ordinary and customary capability to receive data from two distinct sources, i.e., from a wireless server when the portable device is within a defined geographical area and from a wireless (infrared) transmitter when the device is outside the defined geographical area (Ans. 2-3). In Enfish, the Federal Circuit rejected aÂ§ 101 challenge at the step one stage of the Mayo/Alice analysis because the claims at issue focused on a specific type of data structure, i.e., a self-referential table for a computer database, designed to improve the way a computer carries out its basic functions of storing and retrieving data, and not on asserted advances in the uses to which existing computer capabilities could be put. Id. at 1335-36. We find no parallel here between independent claim 1 and the 6 Appeal2017-010467 Application 12/584,962 claims in Enfish nor any comparable aspect in claim 1 that represents an improvement to computer functionality. Turning to step two of the Mayo/Alice framework, Appellants quote claim 1 in its entirety, and ostensibly take the position that the totality of the claim limitations transform the nature of claim 1 into a patent-eligible application of the alleged abstract idea because these limitations "act in concert to improve location-based communication by a wireless portable device, regardless of the location of the wireless portable device with respect to a defined geographical area" (App. Br. 15). That argument is not persuasive at least because, as described above, we find nothing in the record, short of attorney argument, that attributes any improvement in the operation and/or functionality of the wireless portable device to the claimed invention. Finally, we are not persuaded of Examiner error to the extent that Appellants maintain that claim 1 is patent-eligible because the claim does preclude the use of other effective ways of obtaining location-based data (id. at 16). There is no dispute that the Supreme Court has described "the concern that drives [the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354. But, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing pre-emption as the sole test for patent eligibility. "The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability" and "[ fJor this reason, questions on preemption are inherent in and resolved by the Â§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). 7 Appeal2017-010467 Application 12/584,962 "[P]reemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility." Id. We are not persuaded, on the present record, that the Examiner erred in rejecting claim 1 under 35 U.S.C. Â§ 101. Therefore, we sustain the Examiner's rejection. For the same reasons, we also sustain the Examiner's rejection of independent claim 11 and dependent claims 2-10, 12-21, 23, 24, and 26-28, which are not argued separately except with reference to Appellants' arguments with respect to claim 1 (App. Br. 16). Obviousness Independent Claims 1 and 11 and Dependent Claims 2, 3, 5, 7-10, 12, 13, 15, 17-21, and 24 We are persuaded by Appellants' argument that Examiner erred in rejecting claims 1 and 11 under 35 U.S.C. Â§ 103(a) because none of the cited references, individually or in combination, discloses or suggests "receiv[ing] ... dynamic location-based data from the wireless server ... when the wireless portable device is in the defined geographical area, and receiv[ing] static location-based data transmitted from a wireless transmitter when the wireless portable device is outside the defined geographic area," as recited in claim 1, and similarly recited in claim 11 (App. Br. 16-20). In rejecting claim 1 underÂ§ 103(a), the Examiner acknowledges that the combination of Davies, Robertson Siddique, Inselberg, and Glorikian fails to disclose that the receiver is configured to "receive static location- based data transmitted from a wireless transmitter when the wireless portable device is outside the defined geographic area" (Final Act. 14). And the Examiner cites Leapman to cure this deficiency (id. ( citing Leapman ,r,r 21-23, 34, Fig. 3)). 8 Appeal2017-010467 Application 12/584,962 Leapman is directed to a system and method for broadcasting advertising to a mobile communication device (Leapman Abstract), and discloses, with reference to Figure 1, that the system comprises a mobile device 100 and advertisement broadcasting systems or sources 102 and 104 (id. ,r 17). Leapman discloses that mobile device 100 has a wireless transmission module 150, which is capable of wirelessly sending and receiving data (id. ,r 21 ). Ad sources 102 and 104 also have wireless transmission modules 152 and 154, respectively, and each transmits broadcast advertisements via a wireless channel (id.). Mobile device 100 is able to receive broadcast advertisements from ad source 102 or 104 when it is within a broadcast range of the ad source (id.). Leapman discloses an embodiment, with reference to Figure 3, in which a mobile device is used in a tradeshow hall 310, including a plurality of booths 320 positioned at different locations within the hall (id. ,r 34). Each booth 320 is equipped with a wireless transmitter 330 that emits broadcast advertisements describing products or services ( or any other desired information) and the location of the booth 320 (id.). A user carrying a mobile device 300 walks through tradeshow hall 310 among the booths 320 and receives broadcast advertisements from booths 320 in the immediate vicinity of the mobile device and/or according to the signal strength of the broadcast advertisement (id.). We agree with Appellants that Leapman merely discloses a mobile device receiving advertising data from wireless transmitter equipped booths when the mobile device is within a geographic region suitable for receipt of the transmission, i.e., within tradeshow hall 310 (App. Br. 17-18; see also Reply Br. 2-3). We find nothing in the cited portions of Leapman that 9 Appeal2017-010467 Application 12/584,962 discloses or suggests that the mobile device receives location-based advertising data when it is out of range of the advertising sources, i.e., outside the defined geographic area. In view of the foregoing, we do not sustain the rejection of independent claims 1 and 11 under 35 U.S.C. Â§ 103(a). For the same reasons, we also do not sustain the rejection of dependent claims 2, 3, 5, 7- 10, 12, 13, 15, 17-21, and 24. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Dependent Claims 4, 6, 14, 16, 23, and 26--28 The rejections of dependent claims 4, 6, 14, 16, 23, and 26-28 do not cure the deficiency in the rejection of independent claims 1 and 11. Therefore, we do not sustain the Examiner's rejection under 35 U.S.C. Â§ 103(a) of these dependent claims for the same reasons set forth above with respect to independent claims 1 and 11. DECISION The Examiner's rejection of claims 1-21, 23, 24, and 26-28 under 35 U.S.C. Â§ 101 is affirmed. The Examiner's rejections of claims 1-21, 23, 24, and 26-28 under 35 U.S.C. Â§ 103(a) are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 10