Sumit Chugh

Patent Trials and Appeals Board

Sep 5, 2019

13787720 - (D) (P.T.A.B. Sep. 5, 2019)

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.”).
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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
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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
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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
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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
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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:
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(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
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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
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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
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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.
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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.
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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
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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.
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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
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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
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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.”
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AFFIRMED