Sumit ChughDownload PDFPatent Trials and Appeals BoardSep 5, 201913787720 - (D) (P.T.A.B. Sep. 5, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/787,720 03/06/2013 Sumit Chugh 3516-PM5473 8923 136639 7590 09/05/2019 Thorpe, North & Western - Amazon 8180 South 700 East Suite 350 Sandy, UT 84070 EXAMINER MPAMUGO, CHINYERE ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 09/05/2019 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): jennifer.morison@tnw.com patentdocket@tnw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte Sumit Chugh1 ________________ Appeal 2017-011617 Application 13/787,720 Technology Center 3600 ________________ Before BARBARA A. BENOIT, JON M. JURGOVAN, and RUSSELL E. CASS, Administrative Patent Judges. CASS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 4–9, and 12–24. Appeal Br. 5.2 Claims 2, 3, 10 and 11 have been cancelled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the Examiner’s rejections under 35 U.S.C. §§ 112 and 101, and affirm the rejection under 35 U.S.C. § 103. 1 Appellant lists Amazon Technologies, Inc. as the real party in interest. Appeal Brief filed January 5, 2017 (“Appeal Br.”) 3. 2 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the above mentioned Appeal Brief, as well as the following documents for their respective details: the Final Action mailed August 11, 2016 (“Final Act.”); and the Examiner’s Answer mailed June 28, 2017 (“Ans.”). Appeal 2017-011617 Application 13/787,720 2 BACKGROUND The present invention relates to systems and methods for allowing a user to identify products sold in retail stores and perform certain actions relating to those products. Spec. ¶¶ 15–17. For example, a user may use a mobile device with a camera and Global Positioning System (GPS) receiver to capture a photographic image of a product and a geographical location of a retail store where the product is located. Id. ¶¶ 74–75. The geographical location captured by the mobile device may be sent to a server that identifies a retail store location associated with the geographical location. Id. ¶ 76. The product image captured by the camera on the mobile device may be sent to a server that identifies the product based on the image. Id. ¶ 77. The user is then given the ability to share the product and retail store information on the shopper’s social network account. Id. ¶ 80. The system may also send an authentication request to the mobile device requesting authorization to share product information on the user’s social network. Id. ¶¶ 26, 70–77. Claim 1 is illustrative of the claims at issue: 1. A system for authenticating an action request and performing an action with respect to a product located in a physical retail store, comprising: a first server system, including one or more memories and one or more hardware processors, that operate in a first network domain, the first server system storing account information of a user, product information, and retail store information, the first server system providing an action service for enabling users to submit image data for a product and geographical location data for a physical retail store where the product is located and have the product information for the product and the retail store information for the physical retail store shared to a social network page associated with the user; and Appeal 2017-011617 Application 13/787,720 3 a second server system that operates in a second network domain that is distinct from the first network domain, said second server system hosting a third-party social network website for which the user has a social network account and the user is prompted for authentication credentials for the social network account as part of submitting the product information and the retail store information to the third-party social network website to be shared to a social network page associated with the social network account; wherein the first server system is configured to receive the image data that is representative of the product and the geographical location data that is representative of the physical retail store from a mobile device via a network, wherein the image data is captured using a camera included in the mobile device and the geographical location data is obtained using a Global Positioning System (GPS) receiver included in the mobile device; receive the action request via the network to be executed using the action service, the action request including a request to submit the product information and the retail store information to the third-party social network website; obtain the product information associated with the image data, wherein the image data captured using the camera included in the mobile device is processed and associated with a product identifier that is used to identify the product information, and the product information is formatted for submission to the third-party social network website, thereby transforming the nature of the image data to the product information that is formatted for display on the social network page; obtain the retail store information associated with the geographical location data, wherein the geographical location data obtained using the GPS receiver included in the mobile device is processed and associated with the physical retail store and the retail store information, and the retail store information Appeal 2017-011617 Application 13/787,720 4 is formatted for submission to the third-party social network website, thereby transforming the nature of the geographical location data to the retail store information that is formatted for display on the social network page; send an authentication request via the network to the mobile device requesting social network account authentication that allows the action request to be performed; receive an authentication request response from the mobile device via the network that includes the authentication credentials allowing performance of the action; submit the authentication credentials to the second server system that hosts the third-party social network website via a secure channel for authentication of the social network account; submit at least the product information and the retail store information via the secure channel to the third-party social network website hosted by the second server system to be shared to the social network page, wherein the second server system provides the product information and the retail store information in response to a request for the social network page; and verify performance of the action, with respect to the product, to the mobile device. Appeal Br. 26–27 (Claims Appendix). PRINCIPLES OF LAW A. SECTION 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract Appeal 2017-011617 Application 13/787,720 5 ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a Appeal 2017-011617 Application 13/787,720 6 mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept” sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. B. USPTO SECTION 101 GUIDANCE The United States Patent and Trademark Office (“USPTO”) recently published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under the 2019 Guidance, we first look to whether the claim recites the following: Appeal 2017-011617 Application 13/787,720 7 (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities 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)). See 2019 Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(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 2019 Guidance, 84 Fed. Reg. at 56. ANALYSIS I. THE SECTION 101 REJECTION A. The Examiner’s Rejection and Appellant’s Contentions In the Final Office Action, the Examiner rejected claims 1, 4–9, and 12–24 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Final Act. 4–6. With respect to claim 1, the Examiner determines that the claimed invention is directed to the abstract idea of “using image data to identify product and location data,” which can be classified as “using Appeal 2017-011617 Application 13/787,720 8 categories to organize, store and transmit information.” Final Act. 5. The Examiner further determines that the claims do not improve another technology or technical field, or improve the functioning of the computer itself, and therefore “there are no meaningful limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself.” Id. at 6. Appellant argues that claim 1 is “not directed to an abstract idea” but instead is “directed towards a patent-eligible concept.” Appeal Br. 13. Appellant argues that the “generalized assertions made by the Examiner appear to overlook the nature of the technology and its application,” and that claim 1 is not one “to which general purpose computer components are added after the fact to a fundamental economic practice or mathematical equation.” Id. at 14–15. Instead, Appellant argues, claim 1 is directed to an improvement in computer-related technology of identifying products located in physical retail stores and securely sharing product and physical retail store information to a third-party social network website. Id. at 14 B. Analysis under Step 2A, Prong 1, of the 2019 Guidance Under Step 2A, Prong 1, of the 2019 Guidance, we first must determine whether any judicial exception to patent eligibility is recited in the claim. The 2019 Guidance identifies three judicially excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. 2019 Guidance, 84 Fed. Reg. at 52–53. The Examiner determines that claim 1 recites the abstract idea of “using image data to identify product and location data.” Final Act. 5. This purported “abstract idea,” however, does not fall into any of the judicially Appeal 2017-011617 Application 13/787,720 9 excepted groupings set forth in the 2019 Guidance. It is not a “mathematical concept” because “using image data to identify product and location data” does not involve mathematical relationships, formulas, equations, or calculations, and no such mathematical relationships, formulas, equations or calculations are recited in the claim. See 2019 Guidance, 84 Fed. Reg. at 52. It also is not a mental process because it is not a concept that is performed in the human mind, such as an observation, evaluation, judgment or opinion, but instead involves operations performed on data using computer equipment. See id. Specifically, the claim recites a “mobile device” that captures image data using a camera, a network for sending the image data from the mobile device, and a “first server system” that “is configured to receive the image data that is representative of the product” and “obtain the product information associated with the image data” by “process[ing] and associat[ing] [the image data] with a product identifier that is used to identify the product information.” Appeal Br. 26–27 (Claims Appendix). That leaves the third category of “certain methods of organizing human activity.” The Examiner’s proposed abstract idea of “using image data to identify product and location data” does not fall into this category because it does not involve organizing activities performed by one or more humans, or automating such activities. Rather, it involves activities performed on image data using computer equipment including a mobile device with a camera, a network, and a first server system. The proposed abstract idea also is not similar to the methods of organizing human activity that the 2019 Guidance has identified based on existing Supreme Court and Federal Circuit precedent, including fundamental economic principles or practices (including hedging, insurance, or mitigating risk), commercial or Appeal 2017-011617 Application 13/787,720 10 legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, or business relations), or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See id. Because the Examiner has not established that claim 1 recites a judicial exception, we reverse the rejection of claim 1 as directed to non- statutory subject matter under Section 101. Independent claims 18 and 23 also recite similar limitations to those of claim 1. Appeal Br. 30–32 (Claims Appendix). For the reasons discussed with respect to claim 1, we reverse the rejection of claims 18 and 23, and the rejection of dependent claims 4–9, 12– 17, 19–22, and 24, which Appellant does not argue separately. II. THE SECTION 112 REJECTION In the Final Office Action, the Examiner rejected claims 1, 4–9, and 12–24 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Final Act. 3. With respect to claim 1, the Examiner determines that the Specification does not disclose that “the product information is formatted for submission to the third-party social network website, thereby transforming the nature of the image data to the product information that is formatted for display on the social network page.” Id. at 3. Appellant argues that paragraph 86 of Appellant’s Specification along with Figure 7e discloses this limitation. Appeal Br. 20– 21. The Examiner acknowledges that these portions of the Specification “disclose formatting the product information,” but determines that “the disclosure provides no support for transforming the nature of the image data.” Ans. 2. Appeal 2017-011617 Application 13/787,720 11 We agree with Appellant that this limitation is sufficiently disclosed by Appellant’s Specification. Claim 1 states that product information is “formatted for submission” to the third party website, thereby “transforming the nature of the image data” such that it is “formatted for display” on the social network. This language would be reasonably understood by one of ordinary skill to mean that the transformation of the image data occurs by formatting the product data for submission to the third party social network website so that it is formatted for display on the user’s social network page. We find that paragraph 86 of Appellant’s Specification discloses such formatting: Upon selecting an action from among the number of actions 955 associated with the product 915, the action then may be performed via the mobile device 900. For example, an action to share a product 915 on a social networking website may be performed via the mobile device 900 whereby the mobile device 900 may collect and format the product information 922 and the physical retail store information 924, and then submit the information to the social networking website. Spec. ¶ 86; see also Fig. 7e. Consequently, we determine that the Specification sufficiently discloses that “the product information is formatted for submission to the third-party social network website, thereby transforming the nature of the image data to the product information that is formatted for display on the social network page,” as claim 1 requires. We therefore reverse the rejection of claim 1 under Section 112(a). For the reasons discussed with respect to claim 1, we reverse the rejection of claims 18 and 23, and the rejection of dependent claims 4–9, 12–17, 19–22, and 24, which Appellant does not argue separately. Appeal 2017-011617 Application 13/787,720 12 III. THE SECTION 103 REJECTION In the Final Office Action, the Examiner rejected claims 1, 4–9, and 12–24 as unpatentable over Paradise (US 2011/0145051 A1; published June 16, 2011) in view of Karpenko (US 2013/0144785 A1; published June 6, 2013). With respect to claim 1, the Examiner finds that Paradise teaches, inter alia, allowing users to use a mobile device to submit image data for a product and geographical location data for a retail store, obtaining product information associated with the image data and retail store information associated with the geographical location data, and sharing the product and retail store information to a third-party social network website. Final Act. 7–8 (citing Paradise ¶¶ 53, 103). The Examiner relies on Karpenko to teach sending an authentication request to the mobile device requesting social network account authentication, receiving credentials from the mobile device, and submitting the authentication credentials to the server hosting the third-party social network website. Id. at 8–9 (citing Karpenko ¶ 46). Appellant makes two arguments in response to the Examiner’s rejection. First, Appellant argues that Karpenko “does not disclose requesting social network account authentication to perform an action request that submits product information and retail store information obtained using a mobile device to a third party social network website to be shared on a social network page.” Appeal Br. 22. Instead, Appellant argues, Karpenko teaches a social network authenticated payment procedure for purchasing a product from a merchant, and teaches sending checkout input to a merchant server rather than a third-party social network site. Id. Thus, Appellant argues, Karpenko “in no way teaches or suggests submitting Appeal 2017-011617 Application 13/787,720 13 product and retail store information to a third party social network website to be shared to a social network page,” as in claim 1. Id. The Examiner responds that Karpenko is not cited for the limitations that recite submitting “product information and retail store information obtained using a mobile device to a third party social network website,” but rather for the limitations reciting “send[ing] an authentication request via the network to the mobile device requesting social account network authentication,” receiv[ing] an authentication request response from the mobile device via the network that includes the authentication credentials allowing performance of the action,” and “submit[ting] the authentication credentials to the second server system that hosts the third-party social network website via a secure channel for authentication of the social network account.” Ans. 4–5. We do not find Appellant’s argument persuasive. The Examiner’s rejection relies on Paradise for the limitation reciting “submitting product and retail store information to a third party social network website to be shared to a social network page.” Final Act. 7–8; Ans. 4–5. The Examiner does not rely on Karpenko for this limitation, but instead relies on Karpenko for the limitations reciting sending a request to a mobile device requesting social account network authentication, receiving authentication credentials from the mobile device, and submitting the authentication credentials to the system hosting the social network. Id. Therefore, Appellant’s argument that Karpenko does not disclose submitting product and retail store information to a third party social network website to be shared to a social network page does not overcome the rejection made by the Examiner. Appeal 2017-011617 Application 13/787,720 14 Second, Appellant argues that “Paradise fails to teach the third-party social network website” recited in claim 1 because the users of Paradise’s system “must install the purchase facilitating application on their mobile devices in order to use the social networking function.” Appeal Br. 22–23. Appellant argues that “[t]he term ‘third party’ used in [claim 1] denotes the non-proprietary nature of the social network website.” Id. at 23. Appellant argues that in contrast, Paradise discloses “a proprietary multi-functional retail store application that includes a social networking function” that is only viewable to users who have installed the proprietary application on their mobile device. Id. In other words, Appellant argues that the claims preclude the use of a proprietary application installed on the mobile device. Id. (“Namely, there is no need in the presently claimed technology for a customer to install a physical retail store’s proprietary application to view other customer profiles that include product information.”). Appellant, however, does not provide evidence or persuasive reasoning that the recited “third-party social network website” precludes the use of proprietary application software on the mobile device. The Examiner responds that the claims do not require the use of a “non-proprietary social network website” that is viewable to users without the application installed on their mobile devices. Ans. 5–6. We agree with the Examiner. First, nothing in the claim language requires that the social network website be non-proprietary such that installing a proprietary application on the mobile device is precluded. Rather, the claim language requires the mobile device to have a camera and Appeal 2017-011617 Application 13/787,720 15 GPS receiver and to perform certain functions with those devices.3 The claim language also recites functions performed by the mobile device, such as to “submit the authentication credentials to the second server system that hosts the third-party social network website via a secure channel for authentication of the social network account.” The language of the claim, however, does not expressly recite or otherwise limit the software resident on the mobile device that accomplishes those functions. Thus, the plain language of claim 1 does not require non-proprietary software on the mobile device or otherwise preclude the use of proprietary software to perform the recited functions. Nor does claim 1 require the third-party social network website to be non-proprietary such that a proprietary application on the mobile device is precluded. Rather, claim 1 requires (i) the third-party social network website to be hosted on the second server system, (ii) the user to have a social network account for the third-party social network website, (iii) the social network account to be associated with authentication credentials, and (iv) the user to be prompted for those authentication credentials as part of submitting the recited information to the third-party social network website for the recited information sharing.4 Thus, the recited “third-party social 3 Claim 1 recites “wherein the image data is captured using a camera included in the mobile device and the geographical location data is obtained using a Global Positioning System (GPS) receiver included in the mobile device.” 4 Claim 1 recites “second server system hosting a third-party social network website for which the user has a social network account and the user is prompted for authentication credentials for the social network account as part of submitting the product information and the retail store information to Appeal 2017-011617 Application 13/787,720 16 network website” does not preclude the installation of a proprietary application on the mobile device. Rather the recited “third-party” social network website, under the broadest reasonable interpretation of the claims, relates to the party operating the website and not whether the application resided on the mobile device is a proprietary application. Nor does Appellant identify any portion of the written description that requires “a third-party social network website” to operate without installing a proprietary application on the mobile device. Consequently, we sustain the Examiner’s rejection of claim 1. For the reasons discussed with respect to claim 1, we reverse the rejection of claims 18 and 23, and the rejection of dependent claims 4–9, 12–17, 19–22, and 24, which Appellant does not argue separately. DECISION We reverse the Examiner’s rejection of claims 1, 4–9, and 12–24 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We reverse the Examiner’s rejection of claims 1, 4–9, and 12–24 under 35 U.S.C. § 112(a). We affirm the Examiner’s rejection of claims 1, 4–9, and 12–24 as unpatentable over Paradise in view of Karpenko. Because we affirm at least one ground of rejection for each claim on appeal, we affirm the Examiner’s decision to reject all of the claims on appeal. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). the third-party social network website to be shared to a social network page associated with the social network account.” Appeal 2017-011617 Application 13/787,720 17 AFFIRMED Copy with citationCopy as parenthetical citation