Ex Parte Su et al

Patent Trials and Appeals Board

Mar 21, 2019

14137793 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/137,793 12/20/2013 Libo Su
132906 7590 03/25/2019
Haynes & Boone, LLP (70481)
2323 Victory Ave. #700
Dallas, TX 75219
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.
70481.1192 1401
EXAMINER
POE,KEVINT
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
03/25/2019 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):
ipdocketing@haynesboone.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIBO SU, EGAN SCHULZ, and
MICHELLE SERRANO
Appeal2018-002343
Application 14/137,793 1
Technology Center 3600
Before HUNG H. BUI, IRVINE. BRANCH, and ADAM J. PYONIN,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 PayPal, Inc. is listed as the real party in interest. App. Br. 2.
Appeal2018-002343
Application 14/137,793
STATEMENT OF THE CASE
Introduction
The Application is directed to "techniques for facilitating electronic
commerce in an augmented reality environment." Spec. ,r 8. Claims 1--4, 8-
14, 16-18, and 25-30 are pending; of these, claims 1, 9, and 16 are
independent. App. Br. 18-21. 2 Claim 1 is reproduced below for reference
( emphasis added):
1. A computing system, comprising:
one or more hardware processors; and
a non-transitory memory coupled to the one or more
hardware processors and having instructions stored thereon that
are executable by the one or more hardware processors to cause
the computing system to perform operations comprising:
receiving an image of a real-world environment that was
acquired via an optical input system;
receiving at least one user input command that is
associated with a particular real-world object depicted in the
image;
based on information included in the image, determining
an identity of the particular real-world object;
based on the determined identity of the particular real-
world object and the at least one user input command, retrieving
information specifying a monetary amount corresponding to the
particular real-world object; and
causing graphic overlay information to be shown in
association with a view of the particular real-world object on an
output display component, wherein the graphic overlay
information includes the monetary amount.
2 Throughout this opinion, we refer to the pages of the Appeal Brief as if
numbered consecutively starting on the first page
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Application 14/137,793
References and Rejections
Claims 1--4, 8-14, 16-18, and 25-30 stand rejected under 35 U.S.C.
§ 101 as being patent ineligible. Final Act. 4.
Claims 1--4, 8-12, 16-18, and 26-30 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Rosenblatt (US 2013/0085941 Al; Apr.
4, 2013) and Grove (US 2002/0188551 Al; Dec. 12, 2002). Final Act. 8.
Claims 13 and 14 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Rosenblatt, Grove, and Calman (US 2012/0233072 Al;
Sept. 13, 2012). Final Act. 13.
Claim 25 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Rosenblatt, Grove, and Webb (US 2014/0040045 Al;
Feb. 6, 2014). Final Act. 15.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. Arguments Appellants could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv). We discuss each
of the statutory grounds of rejection, in tum.
A. 35U.S.C.§101
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101, because "the claims are not significantly more than an abstract
idea." Ans. 4; see also Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S.
208,217 (2014) (describing the two-step framework "for distinguishing
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Application 14/137,793
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts").
After the docketing of this Appeal, the US PTO published revised
guidance on the application of§ 101 ("Guidance"). See USPTO' s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) ("Memorandum"). Under the Guidance, 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 § 2106.0S(a}-(c), (e}-(h)).
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.
Appellants argue the Examiner erred in determining the claims are
abstract, because "Claim 1 ... relates to a computing system that operates
within a particular technical environment." App. Br. 9. Appellants contend
that, "[ w ]hile claim 1 mentions a 'monetary amount' in its limitations, this is
not the focus of the claim" (id. at 10), and "claim 1 does not even explicitly
mention any 'financial transaction' at all" (id. at 11 ). "Instead, claim 1
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Application 14/137,793
relates to a series of concrete, technical steps performed relative to a real-
world image." Id. at 10.
Pursuant to the Guidance, we are persuaded the rejection is in error.
The Examiner determines "[t]he instant claims are directed to facilitating
financial transactions, which is similar to ... certain methods of organizing
human activity." Ans. 4--5. Examples of certain methods of organizing
human activity are enumerated in the Guidance to include "fundamental
economic principles or practices (including hedging, insurance, mitigating
risk)," "commercial or legal interactions (including agreements in the form
of contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations)," and "managing personal behavior or
relationships or interactions between people." Memorandum, Section I
(Groupings of Abstract Ideas), 84 Fed. Reg. at 52.
Claim 1, in contrast with these abstract concepts, requires receiving an
image, retrieving a monetary amount corresponding to an object in the
image, and displaying a graphic overlay shown in association with a view of
the particular real-world object on an output display component, wherein the
graphic overlay includes the monetary amount. These limitations are not
certain methods of organizing human activity, pursuant to the Guidance: the
claim does not recite steps of a financial practice such as hedging, and the
claimed retrieval and display of information is not an interaction or
relationship as described in the Guidance. Memorandum, Section I
(Groupings of Abstract Ideas), 84 Fed. Reg. at 52. Nor do we see, based on
the record before us, any indication that claim 1 recites mathematical
concepts or mental processes. See Memorandum, Section III (A) ( 1) (Prong
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One: Evaluate Whether the Claim Recites a Judicial Exception), 84 Fed.
Reg. at 52.
Accordingly, we are persuaded claim 1 "does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas in Section I)," so "the claim is
eligible at Prong One of revised Step 2A." Memorandum, Section III
(Instructions for Applying Revised Step 2A During Examination), 84 Fed.
Reg. at 54. We do not sustain the Examiner's patent eligibility rejection of
claim 1, independent claims 9 and 16 which recite similar limitations, or the
claims dependent thereon.
B. 35 U.S.C. § 103(a)
Appellants argue the Examiner's obviousness rejection is in error,
because "Rosenblatt and Grove do not teach or suggest 'based on
information included in the image, determining an identity of the particular
real-world object"' as claimed. App. Br. 14 (emphasis omitted).
Particularly, Appellants contend "Rosenblatt is simply describing a generic
digital camera that is capable of taking a picture of an object," and in the
reference, "[ n Jo further elaboration is provided, and no other portions of
Rosenblatt discuss this briefly mentioned aspect." Reply Br. 3.
We are not persuaded that the Examiner errs. Rosenblatt, as cited by
the Examiner, teaches the "camera 46 may be used to capture images or
video and may be used to obtain merchandise information," as "the camera
46 may be used to take a picture of an item for purchase to identify the
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item." Rosenblatt ,r 44; Ans. 7. 3 We find Rosenblatt's disclosure to be
tantamount to the claim 1 recitation "based on information included in the
image, determining an identity of the particular real-world object."
Appellants argue Rosenblatt does not teach the examples as elaborated in the
Specification; however, Appellants do not show the claim language itself is
not taught or suggested by the cited references. See Reply Br. 3--4; see also
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) ("limitations are not
to be read into the claims from the specification"). Accordingly, we are not
persuaded the Examiner's rejection of independent claim 1 is in error.
We sustain the Examiner's obviousness rejection of claim 1.
Appellants do not separately argue the claims. See App. Br. 6. Thus, we
also sustain the Examiner's obviousness rejection of claims 2--4, 8-14, 16-
18, and 25-30.
DECISION
The Examiner's rejections of claims 1--4, 8-14, 16-18, and 25-30
under 35 U.S.C. § 103(a) are affirmed.
The Examiner's rejection of claims 1--4, 8-14, 16-18, and 25-30
under 35 U.S.C. § 101 is reversed.
The Examiner's decision is affirmed because we have affirmed at
least one ground of rejection with respect to each claim on appeal. See 37
C.F.R. § 4I.50(a)(l).
3 We note Grove, as cited by the Examiner, also teaches identifying an
object. See Final Act. 9; Grove ,r 42 ("a look-up is performed within the
database 23, and specifically on the items table 42, to obtain a title"), ,r 43
("Retrieving the item includes retrieving additional information ( e.g. title,
description[)] ... associated with the item.").
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Application 14/137,793
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
AFFIRMED
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