Ex Parte Root et al

Patent Trial and Appeal BoardMar 28, 2019

11818836 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/818,836 06/15/2007 27557 7590 04/01/2019 BLANK ROME LLP 1825 Eye Street NW WASHINGTON, DC 20006-5403 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Steven A. Root 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. 134602.0108 2604 EXAMINER GARTLAND, SCOTT D ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): W ashingtonDocketing@blankrome.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN A. ROOT and MICHAEL R. ROOT Appeal 2018-002631 Application 11/818,836 1 Technology Center 3600 Before JOHNNY A. KUMAR, JOHN A. EV ANS, and JAMES W. DEJMEK, Administrative Patent Judges. DEJMEK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from a Non-Final Rejection of claims 4--22. Appellants have canceled claims 1-3. See App. Br. 21. We have jurisdiction over the remaining pending claims under 35U.S.C. Â§ 6(b). SeeExparteLemoine,46USPQ2d 1420, 1423 (BPAI 1994) (precedential). We affirm. 1 Appellants identify Location IP, LP as the real party in interest. App. Br. 3. Appeal 2018-002631 Application 11/818,836 STATEMENT OF THE CASE Introduction Appellants' disclosed and claimed invention generally relates to providing targeted marketing and/or advertising information to a plurality of users. Spec. ,r 123. More particularly, in a disclosed embodiment, the location of the user (i.e., the user's device) is monitored and correlated to information indicative of product locations. Spec. ,r,r 126-127. Based on the correlation of the user's location and information indicative of product locations, targeted marketing and/or advertising information is transmitted to the user's device. Spec. ,r 128. Claim 4 is representative of the subject matter on appeal and is reproduced below with the disputed limitations emphasized in italics: 4. A method for providing targeted marketing and advertising information to a user located remotely from a broadcast network but within a marketing area of one or more vendors, comprising the steps of: monitoring real-time spatial locations of a user's communicator device within the marketing area; correlating the location of the user's communicator device within the marketing area with information indicative of product locations within the marketing area; and transmitting targeted marketing or advertising information to the user's communicator device based on the correlation of the spatial locations with the information indicative of the product locations within the marketing area. The Examiner's Rejections 1. Claims 4--22 stand rejected under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. Non-Final Act. 2-3. 2 Appeal 2018-002631 Application 11/818,836 2. Claims 4--22 stand rejected under pre-AIA 35 U.S.C. Â§ I02(b) as being anticipated by Barnes, JR. (US 2005/0136949 Al; June 23, 2005) ("Barnes"). Non-Final Act. 4--8. ANALYSIS 2 Re} ection under 3 5 US. C. Â§ 101 Appellants dispute the Examiner's conclusion that the pending claims are directed to patent-ineligible subject matter. App. Br. 16-19; Reply Br. 6-11. In particular, Appellants argue in rejecting the claims under 35 U.S.C. Â§ 101, the Examiner does not analogize the alleged abstract idea to other cases in which the pending claims in those cases were held to be patent ineligible. App. Br. 18. Additionally, Appellants dispute the Examiner's conclusion that "correlating device locations with product locations" is an abstract mathematical relationship. App. Br. 18. Contrary to the Examiner's conclusion, Appellants assert the pending claims are similar to those the claims in SimpleAir, Inc. v. Google Inc., 136 F. Supp. 3d 745 (E.D. Tex. 2015) in which the district court held the claims were directed to "patent-eligible methods and systems of 'using a central broadcast server' to package and transmit 'data from an online information source to remote computing devices."' App. Br. 18; Reply Br. 10-11. Additionally, in reply to the Examiner's identification of analogous cases (see Ans. 7-8), Appellants assert that, unlike the claims at issue in 2 Throughout this Decision, we have considered the Appeal Brief, filed June 14, 2017 ("App. Br."); the Reply Brief, filed January 16, 2018 ("Reply Br."); the Examiner's Answer, mailed November 16, 2017 ("Ans."); and the Non-Final Office Action, mailed May 12, 2016 ("Non-Final Act."), from which this Appeal is taken. 3 Appeal 2018-002631 Application 11/818,836 Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015), the pending claims do not recite a fundamental practice, long prevalent in our system of commerce. Reply Br. 6-7. Similarly, Appellants assert the pending claims are distinguishable from those in Digitech Image Techs., LLC v. Elec.for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) because Appellants' claims do not cover all uses of information and require input from several physical devices. Reply Br. 8-9. The Supreme Court's two-step framework guides our analysis of patent eligibility under 35 U.S.C. Â§ 101. Alice Corp. v. CLS Bankint'l, 573 U.S. 208,217 (2014). In addition, the Office recently published revised guidance for evaluating subject matter eligibility under 35 U.S.C. Â§ 101, specifically with respect to applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Office Guidance"). If a claim falls within one of the statutory categories of patent eligibility (i.e., a process, machine, manufacture, or composition of matter) then the first inquiry is whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must "look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016) (internal citations omitted). Per Office Guidance, this first inquiry has two prongs of analysis: (i) does the claim recite a judicial exception ( e.g., an abstract idea), and (ii) if so, is the judicial exception integrated into a practical application. 84 Fed. Reg. at 54. Under the Office Guidance, if the judicial exception is integrated into a practical 4 Appeal 2018-002631 Application 11/818,836 application, see infra, the claim passes muster underÂ§ 101. 84 Fed. Reg. at 54--55. If the claim is directed to a judicial exception (i.e., recites a judicial exception and does not integrate the exception into a practical application), the next step is to determine whether any element, or combination of elements, amounts to significantly more than the judicial exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56. Here, we conclude Appellants' claims recite an abstract idea. Appellants' claims are generally directed to providing targeted marketing and advertising to a user based on the location of the user (i.e., the user's communicator device) relative to information indicative of product locations. This is consistent with how Appellants describe the claimed embodiment of the invention. See, e.g., Spec. ,r,r 123-128, Fig. 8 (describing the disclosed system is designed "to provide targeted marketing and/ or advertising information to a plurality of users" and further monitoring the location of the user's communicator device "correlated with the information indicative of product locations"); App. Br. 4 ("The invention relates to providing targeted marketing and advertising information to a user's communicator device based on a user profile and correlation of the device location and product locations."). "[T]argeted advertising is [a well-known] concept, insofar as matching consumers with a given product or service 'has been practiced as long as markets have been in operation."' Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014), ajf'd, 622 F. App'x 915 (Fed. Cir. 2015) (quoting Tuxis Techs., LLC v. Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL 4382446, at *5 (D. Del. Sept. 3, 2014)). In other words, "[t]he concept of gathering information about one's intended market and attempting to customize the information then provided is as old 5 Appeal 2018-002631 Application 11/818,836 as the saying, 'know your audience."' Morsa, 77 F. Supp. 3d at 1013 (quoting OpenTV, Inc. v. Netflix Inc., 76 F. Supp. 3d 886, 893 (N.D. Cal. 2014)). We conclude that providing targeted marketing and advertising to a user based on the location of the user's communicator device relative to information indicative of product locations is a certain method of organizing human activity ( e.g., a commercial interaction, such as marketing or sales activity}-i.e., an abstract idea. See 84 Fed. Reg. at 52; see also Intellectual Ventures I, 792 F.3d at 1369 (holding that "tailoring content based on the viewer's location" (i.e., a function of the user's personal characteristics) is the type of information tailoring that is a fundamental practice long prevalent in our system and is an abstract idea); Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (concluding "[l]ike the basic concept of tailoring content to a user, as in Intellectual Ventures I, the basic concept of customizing a user interface is an abstract idea"). Claim 4 is reproduced below and includes the following claim limitations that recite providing targeted marketing and advertising to a user based on the location of the user's communicator device relative to information indicative of product locations, emphasized in italics. 4. A method for providing targeted marketing and advertising information to a user located remotely from a broadcast network but within a marketing area of one or more vendors, comprising the steps of: monitoring real-time spatial locations of a user's communicator device within the marketing area; correlating the location of the user's communicator device within the marketing area with information indicative of product locations within the marketing area; and 6 Appeal 2018-002631 Application 11/818,836 transmitting targeted marketing or advertising information to the user's communicator device based on the correlation of the spatial locations with the information indicative of the product locations within the marketing area. More particularly, providing targeted marketing and advertising to a user based on the location of the user's communicator device relative to information indicative of product locations comprises (i) knowing where the user is located (i.e., the claimed step of monitoring real-time spatial locations of a user's communicator device); (ii) correlating the user's location (i.e., the location of the user's communicator device) with information indicative of product locations (i.e., the claimed correlating step); and (iii) transmitting targeted marketing or advertising to the user based on the correlation of the user (i.e., user's communicator device) with information indicative of product locations (i.e., the claimed transmitting step). Further, we find Appellants' reliance on SimpleAir (see App. Br. 18- 19; Reply Br. 10-11) unavailing. Contrary to Appellants' arguments (see Reply Br. 10), the district court's ruling in SimpleAir is not precedential for the Board. See Novartis AG v. Noven Pharms. Inc., 853 F.3d 1289, 1294 (Fed. Cir. 2017) (citing Cuozzo Speed Techs., LLCv. Lee, 136 S. Ct. 2131, 2146 (2016) ). Moreover, the claims at issue in SimpleAir are distinct and different than the claims at issue in the instant proceeding, which are directed to providing targeted marketing and advertising to a user based on the location of the user's communicator device relative to information indicative of product locations. Because the claim recites an abstract idea, we next determine whether the claim integrates the abstract idea into a practical application. 84 Fed. 7 Appeal 2018-002631 Application 11/818,836 Reg. at 54. To determine whether the judicial exception is integrated into a practical application, we identify whether there are "any additional elements recited in the claim beyond the judicial exception(s)" and evaluate those elements to determine whether they integrate the judicial exception into a recognized practical application. 84 Fed. Reg. at 54--55 (emphasis added); see also Manual of Patent Examining Procedure ("MPEP") Â§ 2106.05(a}- (c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018). Here, there are no additional limitations recited beyond the judicial exception itself to integrate the exception into a practical application. Similarly, the additional limitations recited in the dependent claims fail to integrate the judicial exception into a practical application. More particularly, the claims do not recite: (i) an improvement to the functionality of a computer or other technology or technical field (see MPEP Â§ 2106.05(a)); (ii) use a "particular machine" to apply or use the judicial exception (see MPEP Â§ 2106.05(b)); (iii) a particular transformation of an article to a different thing or state (see MPEP Â§ 2106.05(c)); or (iv) any other meaningful limitation (see MPEP Â§ 2106.05(e)). See also 84 Fed. Reg. at 55. Rather, the additional limitations recited in the dependent claims merely further define the claimed marketing area (see, e.g., claims 5-7, 11- 13, 15-17, and 19-21) or the targeted marketing information (see, e.g., claims 9, 10, 14, and 22), or recite extra-solution activity (e.g., selling and delivering the good or service, claim 14). See MPEP Â§ 2106.05 (g), (h). Further, additional consideration of a user's like/dislikes in identifying targeted marketing or information to transmit to a user (as recited in, for example independent claim 8 or dependent claim 18) is an additional component of the underlying abstract idea. See Intellectual Ventures I, 792 8 Appeal 2018-002631 Application 11/818,836 F.3d at 1369 (i.e., tailoring content as a function of the user's personal characteristics is an abstract idea). For at least the foregoing reasons, the claims do not integrate the judicial exception into a practical application. Because we determine the claims are directed to an abstract idea or combination of abstract ideas, we analyze the claims under step two of Alice to determine if there are additional limitations that individually, or as an ordered combination, ensure the claims amount to "significantly more" than the abstract idea. Alice, 573 U.S. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73, 77-79 (2012)). As stated in the Office Guidance, many of the considerations to determine whether the claims amount to "significantly more" under step two of the Alice framework are already considered as part of determining whether the judicial exception has been integrated into a practical application. 84 Fed. Reg. at 56. Thus, at this point of our analysis, we determine if the claims add a specific limitation, or combination of limitations, that is not well- understood, routine, conventional activity in the field, or simply appends well-understood, routine, conventional activities at a high level of generality. 84 Fed. Reg. at 56. Here, Appellants' claims do not recite specific limitations ( or a combination of limitations) that are not well-understood, routine, and conventional. For example, the claimed "broadcast network" and "communicator device" are described at a high level of generality and perform generic functions that are well-understood, routine, and conventional. See, e.g., Spec. ,r 32 (describing the communicator device as a smart phone, laptop computer, or personal digital assistant); ,r 20 (describing 9 Appeal 2018-002631 Application 11/818,836 the broadcast network as comprising a user input database, a communication location database, and a communication network). "The location of the communicator device ... can be determined using any suitable system or technology." Spec. ,r 126 (providing examples of known technologies and approaches such as GPS, triangulation, or the use of position sensors). Moreover, in describing components of the disclosed and claimed embodiment, Appellants describe the vendors of Figure 8 are provided with "any suitable computer system" to update user profiles and provide targeted information. Spec. ,r 130. Such generic disclosures do not amount to "significantly more" than the judicial exception. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016) (generic computer components such as an "interface," "network," and "database," fail to satisfy the inventive concept requirement). Additionally, to the extent Appellants contend the claims do not seek to tie-up an abstract idea (see Reply Br. 9), we are unpersuaded of Examiner error. "' [W]hile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility."' FairWarning IP LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e- commerce setting do not make them any less abstract."). Further, "[ w ]here a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot." Ariosa, 788 F.3d at 1379. 10 Appeal 2018-002631 Application 11/818,836 For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner's rejection of claims 4--22 under 35 U.S.C. Â§ 101. Rejection under 35 USCÂ§ 102 Appellants argue the Examiner erred in finding Barnes anticipates the pending claims. App. Br. 11-16; Reply Br. 2-5. In particular, Appellants argue Barnes discloses "correlating the user communicator device location with the vendor location rather than the product location," as set forth in independent claim 4. App. Br. 11 ( emphasis altered). Regarding independent claim 8, Appellants argue "Claim 8 further requires correlating a spatial location of a user's communicator device within a retail store with product locations within the retail store." App. Br. 12 (emphasis altered). Similarly, Appellants assert the cited portions of Barnes do not disclose determining a location of a device within a store relative to "a product location." See, e.g., App. Br. 12, 13, and 15; Reply Br. 3--4. Further, Appellants assert: the plain language of the claims require that the matching must be matching a device location with product locations within a marketing area (independent Claim 4) or product locations within a retail store or a sales outlet of a vendor ( dependent Claim 5) or product locations within a retail store (independent Claim 8 or dependent Claim 11 ). Reply Br. 2. As an initial matter, contrary to Appellants' assertions, the claims more broadly recite "correlating the location of the user's communicator device within the marketing area with information indicative of product 11 Appeal 2018-002631 Application 11/818,836 locations within the marketing area."3 Claim 4 ( emphasis added). Thus, the user location (i.e., the location of the user's communicator device) is correlated with information indicative of product locations. Accordingly, Appellants' arguments are not persuasive of error at least because they are not commensurate in scope with the claim language. See In re Self, 671 F .2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Barnes generally relates to "providing location based services, mobile e-commerce, and other functions." Barnes ,r 3. More particularly, Barnes discloses a communications device comprising, inter alia, a location module. Barnes ,r 28, Fig. 1. Barnes describes the location module of the communications device may provide an absolute location of the device (such as by using a GPS receiver integrated into the device) or a "relative location to a point of interest." Barnes ,r,r 91-94. The relative location refers to a location of the device relative to another point of interest, such as the distance from a particular point of interest. Barnes ,r 94. Further, Barnes describes a "point of interest" may be a vendor for a particular product, a type of vendor, or a particular vendor. Barnes ,r 151. Moreover, Barnes discloses that "data of the target point of interest is determined and may be supplied by the user or retrieved from memory ... , a product, data present in the user profile, and/or other input." Barnes ,r 154 (emphasis added). Barnes further describes a user may indicate a preference to only buy fuel from a specific vendor (e.g., ShellÂ®). Barnes ,r 154. Thus, the point of 3 During examination, claims are given their broadest reasonable interpretation consistent with the specification. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 12 Appeal 2018-002631 Application 11/818,836 interest may be determined according to the user's preferences. See Barnes Additionally, Barnes discloses that users may enter into the user device communication criteria data (CCD), which may include user information, user activities, products data, and other data to form a user profile. Barnes ,r 206. Further, Barnes describes an embodiment wherein an Area Computer System (ACS) may determine a user's location within a shopping complex. Barnes ,r 217. More specifically, the ACS can determine an approximate location of the user within a vendor's store location. Barnes ,r 219. Barnes discloses the "ACS bases the selection of the advertisement [ ( sent to the user device)] on location data of the user such as, for example, the current location of the user." Barnes ,r 221. Additionally, Barnes describes the user device may transmit CCD to the ACS and the ACS will determine a selection of advertisements, for example, to transmit to the user based on location data as well as CCD data- including product data ( e.g., "the identity of any product the user wishes to buy") and/or other characteristics or desires of the user. Barnes ,r 222. "Thus, ACS selects the advertisements based on location data, temporal data, and/or the CCD, from a plurality of advertisements for numerous venders stored in memory." Barnes ,r 224. Barnes further discloses the targeting criteria may include "location data, CCD and/or temporal data" and may further include other data, as appropriate. Barnes ,r 224. Thus, as discussed, Barnes describes correlating the location of the user's device with points of interest (e.g., a particular product) and further discloses transmitting targeted advertising information to the user based on the correlation. The points of interest described in Barnes, as identified by 13 Appeal 2018-002631 Application 11/818,836 the Examiner (see, e.g., Ans. 4), correspond to the claimed "information indicative of product locations." Regarding independent claim 8, Appellants advance similar arguments to those made with respect to claim 4. See, e.g., App. Br. 12-15 (limiting the claim language to requiring product locations rather than information indicative of product locations). For similar reasons to those discussed supra, we find these arguments unpersuasive. Appellants also assert that independent claim 8 requires correlating the "location of a user's communicator device within a retail store with product locations within the retail store." App. Br. 12. Appellants argue Barnes does not disclose correlating the user's location in a retail store with product locations ( or information indicative of product locations) within the retail store. App. Br. 12-15. Similar to claim 4, Appellants' arguments are not persuasive of error at least because they are not commensurate in scope with the language of claim 8. See Self, 671 F.2d at 1348. Claim 8 recites, in relevant part, "correlating the location of the user's communicator device within the at least one store with information indicative of product locations within the marketing area." (Emphasis added.) Further, Barnes discloses the targeted advertising information may include a coupon for a product at a vendor's location (see, e.g., Barnes ,r 225 (describing a coupon for coffee from a particular vendor) ,r,r 230-232 (describing a coupon for a product at a particular vendor)). Again, Barnes discloses basing the selection of the targeted advertising information on location data and CCD data (including desired product data). Barnes ,r 222. Thus, Barnes discloses "correlating the location of the user's communicator device within the at least one store with 14 Appeal 2018-002631 Application 11/818,836 information indicative of product locations within the marketing area," as recited in claim 8. Further, Barnes discloses transmitted targeted advertising information based on this correlation. See, e.g., Barnes ,r 228 ( describing that after the ACS selects the advertisement, "the ACS retrieves the advertisement( s) from memory and transmits the advertisement( s) to the user's device"). For the reasons discussed supra, we are unpersuaded of Examiner error. Accordingly, we sustain the Examiner's rejection of independent claims 4 and 8. Additionally, we sustain the Examiner's rejection of claims 5-7, and 9-22, which depend directly or indirectly therefrom and were not argued separately. See App. Br. 16; see also 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2016). DECISION We affirm the Examiner's decision rejecting claims 4--22 under 35 U.S.C. Â§ 101. We affirm the Examiner's decision rejecting claims 4--22 under pre- AIA 35 U.S.C. Â§ 102(b). No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 15