Ex Parte Serad

Patent Trial and Appeal Board

Dec 14, 2018

13895430 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/895,430 05/16/2013 Roger Serad
98346 7590 12/18/2018
Bayramoglu Law Offices LLC
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Suite 100
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UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
GBRSOOl 6243
EXAMINER
BRADY, MARIE P.
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
in@bayramoglu-legal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROGER SERAD
Appeal2017---004068
Application 13/895,430
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Roger Serad (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 55, 68, and 70, the only claims pending in the application
on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant's Appeal Brief ("Appeal
Br.," filed November 21, 2016) and Reply Brief ("Reply Br.," filed January
17, 2017), and the Examiner's Answer ("Ans.," mailed December 2, 2016),
and Final Action ("Final Act.," mailed July 29, 2016).
Appeal2017-004068
Application 13/895,430
The Appellant invented a way of "extending social networking features
to a map based system Social Navigation." Specification 1: 6-7.
An understanding of the invention can be derived from a reading of
exemplary claim 55, which is reproduced below (bracketed matter and some
paragraphing added).
55. A computer-implemented system for interactively
providing information to user in a social GPS environment,
compnsmg:
[ 1] a server;
[2] a plurality of user devices, wherein each of the plurality of
user devices comprises a beacon installed therein;
the plurality of user devices at least include a first user
device and a second user device and a network
communicating with the server and the plurality of user
devices;
[3] wherein each beacon emits a beacon signal of user location
information to the server via the network when the [sic] each
beacon is turned on,
[4] wherein
the server receives
and
a first beacon signal of a first user location
information from a first beacon of the first user
device
and
a second beacon signal of a second user location
information from a second beacon of the second
user device
via the network or from a GPS system via a GPS
network,
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Application 13/895,430
the first user device emits a first message along with the
first beacon signal of user location information to the
server,
and
the first message indicates that the second user device
receives the first user location information of the first
user device,
and
the server sends a second message to the second user
device to share the first user location information of the
first user device on a social GPS on the second user
device;
and
visibility of the each beacon is set at a street level, at a
city level or not visible on the plurality of user devices;
[6] wherein
the second message is accepted via the network by the
second user device, the second beacon of the second user
device is turned on and the second user location
information of the second user device is shared with the
first user device by the network,
and
the second beacon of the second user device is turned off
by deleting the second message.
The Examiner relies upon the following prior art:
Altman US 2008/0132251 Al Jun.5,2008
Claims 55, 68, and 70 stand rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
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Application 13/895,430
Claims 55, 68, and 70 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Altman.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of obviousness tum primarily on whether Altman describes
turning a beacon on and off as recited in the claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
"beacon."
02. The ordinary meaning of "beacon" is: 2
A signal fire, especially one used to warn of an enemy's
approach.
A signaling or guiding device that emits light, such as a
lighthouse.
2 American Heritage Dictionary, 5th ed. 2018, last visited __
https://www.ahdictionary.com/word/search.html?q=beacon
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Application 13/895,430
A radio transmitter that emits a characteristic guidance
signal for aircraft.
A signaling device that emits a repeating sound; a pinger.
Facts Related to Appellant's Disclosure
03. The user controlling user device 2 can send user device 3 and
user device 4 a message and makes it active or selects a
destination that can be a friend, a beacon id, a featured place, an
event or a street address. If user device 3 and user device 4 accept
the message, then a reply is sent and the private beacons of the
accepting users are turned on. This enables the users to locate
each other in the active message in real time on the social GPS.
Private beacons are turned off by deleting the message or through
the user beacon control function. If user device 3 and user device
4 accepts the message, then a reply is sent and the private beacons
of the accepting users are turned on. This enables the users to
locate each other in relationship to the destination. If the
destination is a friend beacon id the location is dynamic. Spec.
6:1-10.
Facts Related to the Prior Art
Altman
04. Altman is directed to creating and sharingjournal entries
containing location-based information. Altman para. 2.
05. Altman describes a location-based social network manager
process. The process is executed on a server computer coupled to
mobile communication devices over a wireless network. At least
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some of the mobile devices are location-aware mobile
communication devices. The process determines the geographic
location of a mobile communication device operated by a user
within an area, displays a map representation of the area around
the mobile communication device on a graphical user interface of
the mobile communication device, and superimposes on the map
the respective locations of one or more other users of mobile
communication devices coupled to the mobile communication
device over the network. The user can build a database of trusted
friends among the one or more other users whose location can be
displayed on each respective mobile communication device. A
journal creation and management component provides tools for
users to create and store user-generated content in the form of an
online journal. This user-generated content can be automatically
tagged with location information provided by the location-aware
mobile communication device. Such geo---tagged journal
information can be shared with specific users in the network or
utilized by users with specific interest in the location dimension of
the journal content. The user-generated content can be provided
in the form of text or graphic messages, pictures, audio/video
clips, reviews/ratings, past events and the like. Altman para. 6.
06. Altman describes a location-aware device as a mobile phone or
similar mobile device that incorporates the location sharing
feature provided by the location-based social network manager
process. This allows the location of device to be displayed on its
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own display as well as on the display of other user devices, which
may or may not have location capabilities, and/or server
computers. Location information for the device is determined by
position determination unit, such as a Global Positioning System
(GPS) method, or other location determination process
implemented within the device. The location information is
provided in a standardized format, such as latitude/longitude to a
processor and a data radio. The data radio transmits the location
data for the device as well as the scale information over network
to the server. Altman para. 44.
07. Altman describes the location-based social network manager
process being executed by the server as including a location-to--
display process. This process converts the location data into pixel
data that displays an icon representing the device on a map that is
appropriately scaled based on user input. The background maps
may be provided by a separate map server. The location-based
social network manager process includes components that display
the location information for device to other user devices based on
lists of friends whom user has specified as authorized to view such
location information. Altman para. 45.
08. Altman describes individual users being provided the
capability of turning on or off their location sharing capability.
This can be implemented through means of a toggle switch
provided by the user interface on the mobile device or the web
page, for each individual user of the system. This would allow a
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user to tum off location sharing for friend 1, but keep it on for
friend 2, or to tum it off for a class of friends, and so on. The user
interface also provides a method for the user to specify certain
times or time periods in which location sharing is to be
automatically disabled or enabled. For example, a user may
specify that his or her location should never be shared between 11
pm and 9 am, or on weekends, or any other time parameter. Such
restrictions can also be specified for location, such as enabling or
disabling location based on area. Altman para. 60.
09. Altman describes the location information for mobile
communication device being transmitted and stored in the server
computer of the network. The location information for all of the
users is then transmitted from the server to the mobile
communication devices based on the filters and preferences
established for each of the users. Altman para. 88.
10. Altman describes data being cached on the mobile
communication device, including the status of a user's friends on
the network and other similar data that is small in size and
frequently accessed. The synchronization function is used in
conjunction with the mobile communication device cache to
ensure data coherence between the user's mobile communication
device and the server computer. Any friends with updated
information transmit the new data to the server computer. The
updated information can be generated by a new location fix or
through a message transmitted over the system or a parameter
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change in the user's database. For example, an information update
can be performed by the user inputting certain new or modified
information directly into his or her mobile device, or
automatically through a friend update, such as a status change
caused by a friend changing location, sending a message, or
changing the status availability flag. The updated information is
transmitted from the mobile communication device to the server
computer. On the server computer, the data is updated and
flagged as updated data. The server computer can be configured
to transmit the updated information along to the user as soon as it
is received. Altman paras.98-99.
ANALYSIS
Claims 55, 68, and 70 rejected under 35 USC§ 101 as directed to a
judicial exception without significantly more
Claim 55 is the sole independent claims on appeal, with the rest of the
claims on appeal depending therefrom.
The Examiner rejects these claims according to the two step procedure in
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S.Ct. 2347 (2014). As to the first
step, the Examiner finds that the claims are directed to receiving a first user
location information and a second user location information, emitting a first
message by the first user, sending a second message to the second user,
sharing the first user location information, and accepting a second message
by the second user, and sharing the second user location information with
the first user, which is considered an abstract idea. Final Act. 2. We agree.
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The preamble to claim 1 recites that the claim is to system for interactively
providing information to user in a social GPS environment. The steps
performed by the system of claim 55 result in sending and sharing
information. The Specification at 1 :6-7 describes the invention as being
related to extending social networking features to a map based system Social
Navigation. Thus, all of the evidence supports the Examiner's finding that
claim 1 is directed to sending and sharing information, which, like the risk
hedging in Bilski is a notoriously old practice and therefore an abstract idea.
See Bilski v. Kappas, 561 U.S. 593 (2010).
The second step of the Alice test requires the consideration of "the
elements of each claim both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355.
Independent claim 1 uses a beacon installed in each user device to
share location information and sends messages affirming receipt of such
location information and recites
the second message is accepted via the network by the second
user device, the second beacon of the second user device is
turned on and the second user location information of the
second user device is shared with the first user device by the
network, and the second beacon of the second user device is
turned off by deleting the second message.
Claim 55. According to the Appellant,
the limitations "the second message is accepted via the network
by the second user device, the second beacon of the second user
device is turned on and the second user location information of
the second user device is shared with the first user device by the
network, and the second beacon of the second user device is
turned off by deleting the second message" are all technical
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features, and the location information is obtained by the
interactions with message, beacon and network
Appeal Br. 12.
Examiner finds that the
claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception
because the claims do nothing more than use a server, user
devices, a network, beacons, GPS system, and GPS network to
perform the steps of the abstract idea. The additional elements
of the claims, including the beacon, the GPS system, and the
GPS network are all generic GPS elements and beacons which
perform generic beacon and GPS functions and which are used
to determine the user location, and do not add meaningful
limitation to the abstract idea because they are generic
computer components which perform do not add a meaningful
limitation to the abstract idea because they are generic
computer components which perform generic computer
functions and they would be routed in a computer
implementation.
Final Act. 3. We agree with the Examiner that the claims appear to recite
"generic computer components" that perform generic computer functions
which are "well-understood, routine and conventional." Id. And the
Appellant does not contend that they invented the server, beacon, or other
computer-related equipment recited in the claims on appeal.
However, the Examiner does not sufficiently establish that the "ordered
combination" of the recited elements also fails to "'transform the nature of
the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355.
"[ A ]n inventive concept can be found in the non-conventional and non-
generic arrangement of known, conventional pieces," even if these pieces
constitute generic computer-related components. Bascom Global Internet v.
AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). The instant
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claims are analogous to those in Bascom in that, as in Bascom, an
intermediary is inserted between two otherwise conventional computer
nodes to move the location where a process is otherwise ordinarily executed.
In Bascom it was filtering. In the instant claims it is a beacon and the
messages the beacons send and the way the linkage between them is
implemented. The claims further recite automated operation of the beacon
based on this linkage. The reason for the linkage is rooted in the ways of
internet technology.
As discussed above, the Appellant explains that the claimed architecture
(i.e., the ordered combination and arrangement of the recited elements)
provides a particular technical advantage. The Examiner does not
persuasively challenge the Appellant's position on this matter.
Accordingly, the Examiner has not sufficiently established, on the
record before us, that independent claim 55 and the claims depending
therefrom do not pass muster under step two of the Alice test.
Claims 55, 68, and 70 rejected under 35 US.C. § 103(a) as unpatentable
over Altman
First, the Specification does not lexicographically define "beacon." FF
01. Of the accepted meanings of "beacon" the ones closest in context are a
radio transmitter that emits a characteristic guidance signal or a signaling
device that emits a repeating sound. FF 02. Thus we construe a beacon as a
device that emits either a guidance or a repeating signal.
We are persuaded by Appellant's argument that "the beacon of claim 55
can be turned on and off, while the features "'location sharing feature"
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and "position determination unit 166" of Altman cannot be turned on
and off." Appeal Br. 15. The limitation at issue is
wherein the second message is accepted via the network by the
second user device, the second beacon of the second user
device is turned on and the second user location information of
the second user device is shared with the first user device by the
network, and the second beacon of the second user device is
turned off by deleting the second message
Claim 55.
Thus the second beacon is turned on when the second message is
accepted and turned off when the second message is deleted. 3 Altman
describes individual users being provided the capability of turning on or off
their location sharing capability. Altman describes doing so with a toggle
switch provided by the user interface on the mobile device or the web page.
Altman does not describe doing so when a message is accepted or deleted.
The Examiner determines that Appellant admitted that one of ordinary skill
knew to do so when deleted. Final Act. 9-10. Appellant responds that the
portion of the prosecution history the Examiner relies on was misworded,
misunderstood, or taken out of context. Appeal Br. 16. In any event, we
find that Altman still does not describe turning the beacon on when a
message is accepted.
3 See Specification 6:1-10 for support.
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CONCLUSIONS OF LAW
The rejection of claims 55, 68, and 70 under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more is improper.
The rejection of claims 55, 68, and 70 under 35 U.S.C. § 103(a) as
unpatentable over Altman is improper.
DECISION
The rejection of claims 55, 68, and 70 is reversed.
REVERSED
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