Ex Parte Kennedy

Patent Trial and Appeal Board

Sep 25, 2018

14667270 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/667,270 03/24/2015
86378 7590 09/27/2018
Pearne & Gordon LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Michael R. Kennedy
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.
KDY1-50036US2 2168
EXAMINER
UBER, NATHAN C
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
patdocket@pearne.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL R. KENNEDY
Appeal2017-005890
Application 14/667,270 1
Technology Center 3600
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1-28. 2 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.
1 According to the Appellant, "[t]he real party in interest is MPT, Inc."
Appeal Br. 2.
2 The Appellant lists Application Serial Number 14/085,281, under the
Related Appeals and Interferences section of the Appeal Brief. Appeal
Br. 2. This related appeal has been assigned appeal number 2018-004645.
In appeal number 2018-004645, at page 2, the Appellant lists Application
Serial Number 14/085,317 under the Related Appeals and Interferences
section. This related application has been assigned appeal number 2018-
004767. The related applications are being decided concurrently with the
present appeal.
Appeal2017-005890
Application 14/667,270
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1, 15, and 26 are the independent claims on appeal. Claims 1
and 15, reproduced below, are illustrative of the appealed subject matter.
1. A method of advertising comprising:
a) soliciting a seller to make available space on its plastic
shopping bags for adhesive labels bearing advertisements to
be adhered to those bags;
b) accepting from or generating for the seller or a third-party
advertiser indicia constituting an advertisement;
c) printing said indicia on a plurality of adhesive labels; and
d) supplying to the seller a plurality of shopping bags
respectively having ones of said plurality of adhesive labels
adhered thereon, said plurality of adhesive labels being
effective so that the seller's customers can view said plurality
of adhesive labels and the associated advertisement, and can
remove said plurality of adhesive labels from said shopping
bags for subsequent use thus leaving substantially no
adhesive or other residue on said shopping bags.
15. A method of promoting in-store purchases, comprising:
a) a seller offering to a third-party advertiser an opportunity to
advertise on plastic shopping bags of the seller; and
b) the seller distributing to its customers an advertisement from
said third-party advertiser in a form of adhesive labels
bearing said advertisement adhered respectively to ones of
the shopping bags.
Rejections
I. Claims 1-28 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
II. Claims 1-26 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as indefinite.
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III. Claims 1-3, 9, 12, 15, 16, and 19-28 are rejected under (pre-
AIA) 35 U.S.C. § I03(a) as unpatentable over Kashani (US 2013/0168283
Al, pub. July 4, 2013) and Absher (US 5,298,104, iss. Mar. 29, 1994).
IV. Claims 4--8, 17, and 18 are rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Kashani, Absher, and Hanson
(US 2005/0121347 Al, pub. June 9, 2005).
V. Claims 13 and 14 are rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Kashani, Absher, and Regard
(US 2006/0187058 Al, pub. Aug. 24, 2006).
VI. Claims 10 and 11 are rejected under (pre-AIA) 35 U.S.C.
§ I03(a) as unpatentable over Kashani, Absher, Hanson, and Regard.
ANALYSIS
Rejection I. Non-Statutory Subject Matter
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
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consider the elements of the 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 of the abstract idea. Id.
This is a search for an "inventive concept" an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id.
Independent claims 1 and 26 and dependent claims 2-14, 27, and 28
Under the first step of the Alice/Mayo framework, the Examiner
determines that claim 1 is directed to an abstract idea; namely, "[ o ]rganizing
human activity" and/or "targeted advertising." Final Act. 2-3.
The Specification supports this determination by instructing that the
invention is directed to "a method of advertising." Spec. 3:2; see id.
at 20:21-23 ("an advertising method that allows the consumer to get
multiple targeted coupons on their grocery bags 30, with the targeting being
dependent upon the type of shopping experience."). According to the
Specification,
Plastic bags and other types of packaging are often used
for advertising. For example, grocery store retailers will print
their name and logo on the front and/or back of each bag.
Consumers often reuse bags and carry them back and forth to
work, etc. As a result, retailers get free advertising while their
bags are on display by the consumer. Thus, it is desirable by the
retailer that their bags be unadulterated by coupons that block
their logo and/or name.
Id. at 1:21-26; see also id. at 1:18-20 ("Because a large number of plastic
bags reach consumers, efforts have been made to provide advertising and
coupons on bags").
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Independent claim 1 provides for a "[a] method of advertising
comprising:" "soliciting a seller to make available space on its plastic
shopping bags for adhesive labels bearing advertisements to be adhered to
those bags"; "accepting from or generating for the seller or a third-party
advertiser indicia constituting an advertisement"; ''printing said indicia"; and
"supplying to the seller a plurality of shopping bags respectively having ones
of said plurality of adhesive labels adhered thereon." Appeal Br. 27
( emphasis added). According to the Specification:
An example method of advertising is depicted in the
flowchart of Fig. 26. This method includes presenting an offer
to provide packaging materials to a seller that incorporates
advertising materials according to the invention. Then the
seller's buying scenarios are determined, as well as the seller's
needs for packaging materials that incorporate advertising
materials. Then the packaging materials are manufactured to
include the advertising materials. Then the packaging materials
are provided to the seller, such as by shipping them to the seller.
Thereafter, the seller distributes the packaging materials, which
include advertising materials, to the consumer or another party.
In connection with the different buying scenarios, some
examples of buying scenarios, in the context ofbags, include: 1)
how many bags a typical consumer will use during a shopping
trip at the check-out, 2) whether all check-out lines are the same
or some lines have different shopping experiences than other
lines, 3) whether an in store shopping opportunity is to be
provided or an after shopping experience offer is to be offered;
4) whether the advertising will be directed to the user, or to a
different entity; 5) how many offers to include on a bag 30; 6)
type of offer to be offered on a bag 30; and 7) whether the user
wants all bags 30 to include advertising, or only some of the bags
30, among other criteria.
See id. at 21:13-30.
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The context of claim 1, in light the Specification, is consistent with
the Examiner determination that claim 1 is directed "[ o ]rganizing human
activity" and/or "targeted advertising." Courts have determined that
concepts relating to organizing human activity, and particularly, advertising,
to be abstract. See In re Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009);
Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed.
Cir. 2016) ( customizing a user interface to have targeted advertising based
on user information); Morsa v. Facebook, Inc., 77 F.Supp.3d 1007, 1013
(C.D. Cal. 2014), aff'd, 622 F. App'x 915 (Fed. Cir. 2015) ("First, targeted
advertising is just such a concept, insofar as matching consumers with a
given product or service 'has been practiced as long as markets have been in
operation"') (quoting Tuxis Techs., LLC v. Amazon.com, Inc., No. CV 13-
1771-RGA, 2014 WL 4382446, at *5 (D. Del. Sept. 3, 2014)).
We disagree with the Appellant that "[ c ]laim 1 is directed to a
practical method of manufacturing and distributing labels bearing
advertising via attachment to shopping bags." Appeal Br. 4. Moreover, we
have fully considered the arguments presented in the Appeal Brief at
pages 4--9, and Reply Brief at pages 3---6, but these arguments are not
persuasive to show error.
Under the second step of the Mayo/Alice framework, the Examiner
determines
[t]he claims do not include additional elements that are sufficient
to amount to "significantly more" than the abstract idea because
the claims only require functions that are well-understood,
routine and conventional activity (using adhesive labels as an
advertising mechanism on shopping bags) and this activity was
previously known to the industry.
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Final Act. 3. The Examiner appears to find that physical elements in the
claims are generic and concern well-understood, routine, and conventional
nature of the additional activity and elements which amount to no more than
implementing the abstract idea. See Ans. 4--5, 15-18.
The Appellant argues "[t]he [E]xaminer cannot simply conclude that
the limitations of the claim, individually and as a whole, are well-
understood, routine, and conventional without 'explain[ing] why the courts
have recognized, or those in the relevant field of art would recognize, those
claim limitations as being well-understood, routine, conventional
activities.'" Appeal Br. 11 ( citing May 2016 Update to Interim Guidance,
pg. 4 ( emphasis added)); Reply Br. 7. The Appellant argues that "the
[E]xaminer here recited only generic conclusory statements supporting the
rejection" and that as claimed "[t]he labels and bags are not generic
structure." Appeal Br. 11. Rather, the method of claim 1 includes
"preparing and disseminating adhesive labels adhered to shopping bags,
wherein those labels leave behind substantially no residue when removed."
Id.; see Reply Br. 8.
In this case, there is inadequate support in the record for the
Examiner's determination that the claims concern well-understood, routine,
and conventional activity and/or elements that amount to no more than
implementing the abstract idea. In particular, we fail to see support for this
determination as it relates to step "d" of claim 1, which recites with added
emphasis:
supplying to the seller a plurality of shopping bags
respectively having ones of said plurality of adhesive labels
adhered thereon, said plurality of adhesive labels being effective
so that the seller's customers can view said plurality of adhesive
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labels and the associated advertisement, and can remove said
plurality of adhesive labels from said shopping bags for
subsequent use thus leaving substantially no adhesive or other
residue on said shopping bags.
Appeal Br. 27 ( emphasis added). Therefore, we do not sustain the rejection
of claim 1, and its dependent claims, under § 101. Independent claim 26 is
similar to claim 1, and for the same reasons we do not sustain the rejection
of claim 26, and its dependent claims, under § 101.
Independent claim 15 and dependent claims 16--25
The Appellant argues "claim 15 recites the same core structural and
transformational features of claim 1 that are discussed above, claim 15 is
also patent-eligible for at least the same reasons as claim 1." Appeal Br. 15.
For reasons similar to those discussed above with regard to
independent claim 1, we agree with the Examiner that independent claim 15,
which recites, "[a] method of promoting in-store purchases," is directed to
an abstract idea; namely, "[o]rganizing human activity" and/or "targeted
advertising." Final Act. 2-3.
We next consider whether additional elements of the claim 15, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic components. We conclude that it does not.
Claim 15 does not include the same specificity of the adhesive labels
as required by claim 1. More specifically, claim 15 does not require
"preparing and disseminating adhesive labels adhered to shopping bags,
wherein those labels leave behind substantially no residue when removed"
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(Appeal Br. 11). Rather, claim 15 includes an adhesive label adhered on a
shopping bag. The Specification at pages 1-2 describes that the use of
adhesive coupons on a shopping bag concerns well-understood, routine, and
conventional activity and/or elements.
We have fully considered the arguments presented in the Appeal Brief
at pages 10-13 and 15 and Reply Brief at pages 3-9, but these arguments are
not persuasive to show that the rejection of claim 15 is improper. Thus, we
sustain the rejection of independent claim 15 under § 101.
Dependent claims 16-18 and 21-25 are drawn to similar subject
matter as independent claim 15. The Appellant argues the Examiner failed
to separately analyze the dependent claims. However, in the Answer the
Examiner provides a separate analysis for the dependent claims. See Ans. 3,
8-9, 18-19. Thus, we likewise sustain the rejection of claims 16-18 and
21-25 under§ 101.
Dependent claim 19, however, includes similar recitations to those
described in independent claim 1. See Appeal Br. 29. Claim 20 depends
from claim 19. See id. For reasons similar as those discussed above
concerning the rejection of claim 1 under§ 101, we do not sustain the
rejection of claims 19 and 20 under§ 101.
Rejection II. Indefiniteness
The Appellant does not contest this ground of rejection. Reply Br. 3;
see Ans. 2. As such, we summarily sustain the Examiner's rejection of
claims 1-26 as indefinite.
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Rejections III-VI. Obviousness
Independent claims 1 and 26 and dependent claims 2-14, 27, and 28
Independent claim 1 recites "said plurality of adhesive labels being
effective so that the seller's customers ... can remove said plurality of
adhesive labels from said shopping bags for subsequent use thus leaving
substantially no adhesive or other residue on said shopping bags." Appeal
Br. 27. Claim 26 recites a nearly identical limitation. Id. at 30.
The Examiner finds Kashani lacks, but the Absher discloses, the
above-mentioned recitations of claims 1 and 26. Final Act. 6-7, 24--25. The
Examiner appears to rely on Absher's teachings concerning coupon
assembly 40, which is adhered to a bag ( e.g., bags 60, 70). See Ans. 25-26;
Absher, col. 5, 11. 3-7, Figs. 5, 7. Absher's coupon assembly 40 includes
coupon portion 43 and adhesive portion 41. See id. at col. 5, 11. 8-10, Fig. 7.
The Examiner appears to find Absher's teachings correspond to the claimed
subject matter at issue because Absher's coupon portion 43 may be removed
from bag 60 and no sticky residue is left behind, as polyester layer 50 (non-
sticky) of adhesive portion 41 remains on the surface of bag 60. See
Ans. 26. 3
The Appellant argues that "Absher leaves behind a residue in the form
of an adhesive and polyester layer," and, as such, fails to teach the above-
mentioned recitations of claims 1 and 26. Appeal Br. 21. The Appellant
asserts that the "'[n]o residue' is not limited to only 'sticky residue."' Reply
Br. 12; see also Spec. 5 (quoting, with added emphasis, "coupon 32 [is]
remov[ able] by a user without leaving substantially any residue, including
3 The Examiner defines "residue" as "'something that remains after a part is
removed, disposed of, or used."' Ans. 26 ( citing www.dictionary.com).
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any adhesive residue or a plastic liner, on the bag"). The Appellant's
position is persuasive. The Appellant points out correctly that Absher's
adhesive portion 41, which includes a polyester layer 50 and an adhesive
layer 51, remains on bag 60 when coupon portion 43 is removed. See Reply
Br. 12; Absher, col. 5, 11. 28--46. Additionally, the Appellant points out
correctly that adhesive layer 51 binds polyester layer 50 to bag 60, and as
such, a sticky residue left (i.e., adhesive layer 51) is left behind.
Thus, we do not sustain the Examiner's rejection of claims 1 and 26
under (pre-AIA) 35 U.S.C. § 103(a) as unpatentable over Kashani and
Absher. Claims 2-14 depend from independent claim 1 and claims 27 and
28 depend from independent claim 26. Appeal Br. 27-30. The rejections of
these claims rely on the same errant finding discussed above with regard to
the rejection of claims 1 and 26. The errant finding is not cured by the
findings and/or reasoning associated with the rejections of claims 2-14, 27,
and 28. Thus, we do not sustain the Examiner's rejections of claims 2-14,
27, and 28 under (pre-AIA) 35 U.S.C. § 103(a).
Independent claim 15 and dependent claims 16--18 and 21-23
Claim 15 recites, "a seller offering to a third-party advertiser an
opportunity to advertise on plastic shopping bags of the seller. " 4 Appeal
Br. 29 ( emphasis added).
4 Unlike claim 1, claim 15 does not require a "plurality of adhesive labels
being effective so that the seller's customers ... can remove said plurality of
adhesive labels from said shopping bags for subsequent use thus leaving
substantially no adhesive or other residue on said shopping bags." Appeal
Br. 27 ( claim 1 ).
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The Examiner finds that Kashani teaches a plastic shopping bag.
Final Act. 11-12 (citing Kashani ,r,r 3, 17, 19, 23, 24). Indeed, Kashani
teaches bags 21 are made of plastic. See Kashani ,r 19, Figs. 3A-3G.
The Appellant argues the Kashani' s bag is not a traditional plastic
bag, rather it is a bio-degradable plastic bag. See Appeal Br. 16-17. The
Appellant also argues that Kashani teaches away from a traditional plastic
bag. Id. at 16-20 (citing Kashani ,r,r 2--4, 18-21). The Appellant's position
is not persuasive. In this case, the Appellant's argument is outside the scope
of the subject matter of claim 15. See Ans. 20-21. Stated otherwise,
claim 15 recites "plastic shopping bags" and Kashani teaches plastic
shopping bags; i.e., a bio-degradable plastic shopping bags.
Thus, we sustain the Examiner's rejection of claim 15 as unpatentable
over Kashani and Absher.
The Appellant adds a further heading, but not a further argument for
the rejection of dependent claims 16 and 21-23. See Appeal Br. 22. We
sustain the Examiner's rejection of claims 16 and 21-23 as unpatentable
over Kashani and Absher.
Similarly, the Appellant adds a further heading for the rejection of
dependent claims 17 and 18. See Appeal Br. 24. The Appellant assert that
Hanson fails to cure the alleged deficiencies of the rejection of claim 15.
See id. However, as discussed above, the Appellant does not provide a
persuasive argument that the rejection of claim 15 suffers from any
deficiency. As such, we likewise sustain the Examiner's rejection of claims
17 and 18 as unpatentable over Kashani, Absher, and Hanson.
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Dependent claims 19 and 20
Dependent claim 19 recites, "said adhesive labels being effective so
that the seller's customers can remove said adhesive labels from said
shopping bags for subsequent use thus leaving substantially no adhesive or
other residue on the bags." Appeal Br. 29. Claim 20 depends from
claim 19. Id. Similar to the rejection of claims 1 and 26, the Examiner
relies on Absher and not Kashani to teach this recitation of claim 19. Final
Act. 14--15. Thus, for reasons similar to those discussed above, we do not
sustain the Examiner's rejection of claims 19 and 20 as unpatentable over
Kashani and Absher.
Dependent claims 24 and 25
The Examiner finds that Kashani teaches biodegradable plastic
shopping bags, but fails to teach "shopping bags being made of polyethylene
or polypropylene," as recited in claim 24. Final Act. 20. To remedy this
deficiency the Examiner turns to Absher. Id. at 21. The Examiner finds that
"Absher discloses that the plastic bags may be made of polyethylene." Id.
The Appellant asserts that "at best Kashani might describe that plastic
bags made from com or other plants could be considered 'environmentally
friendly."' Appeal Br. 22 ( citing Kashani ,r,r 18-20). The Appellant argues
that a modification of Kashani' s environmentally friendly bag to be made of
polyethylene "would defeat the entire purpose of Kashani by placing non-
environmentally friendly bags, as defined in the reference, into the
marketplace." See id. at 22-23. Similarly, the Appellant contends Kashani
"expressly discredits '[p]lastic disposable bags, particularly those given out
by supermarkets' because they 'are non-degradable and fill up the
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landfills.'" Reply Br. 10 ( citing Kashani ,r 2); see id. at 11. The Appellant's
position is persuasive. In response, the Examiner fails to explain how
modifying Kashani' s environmentally friendly bag to be made of
polyethylene would maintain Kashani's bag as environmentally friendly.
Thus, we do not sustain the Examiner's rejection of claim 24, and
claim 25 which depends from claim 24, as unpatentable over Kashani and
Absher.
DECISION
We AFFIRM the Examiner's decision rejecting: claims 15-18
and 21-25 under 35 U.S.C. § 101 as directed to non-statutory subject matter
(Rejection I); claims 15, 16, and 21-23 under (pre-AIA) 35 U.S.C. § 103(a)
as unpatentable over Kashani and Absher (Rejection III); and claims 17 and
18 under (pre-AIA) 35 U.S.C. § 103(a) as unpatentable over Kashani,
Absher, and Hanson (Rejection IV).
We SUMMARILY AFFIRM the Examiner's decision rejecting
claims 1-26 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second
paragraph, as indefinite (Rejection II).
We REVERSE the Examiner's decision rejecting: claims 1-14, 19,
20, and 26-28 under 35 U.S.C. § 101 as directed to non-statutory subject
matter (Rejection I); claims 1-3, 9, 12, 19, 20, and 24--28 under (pre-AIA)
35 U.S.C. § 103(a) as unpatentable over Kashani and Absher (Rejection III);
claims 4--8 under (pre-AIA) 35 U.S.C. § 103(a) as unpatentable over
Kashani, Absher, and Hanson (Rejection IV); claims 13 and 14 under (pre-
AIA) 35 U.S.C. § 103(a) as unpatentable over Kashani, Absher, and Regard
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(Rejection V); claims 10 and 11 under (pre-AIA) 35 U.S.C. § 103(a) as
unpatentable over Kashani, Absher, Hanson, and Regard (Rejection VI).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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