Ex Parte Lyons et al

Patent Trial and Appeal Board

Jan 30, 2017

13299514 (P.T.A.B. Jan. 30, 2017)

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.
13/299,514 11/18/2011 Garry LYONS 0076412-000042 2346
21839 7590 02/01/2017
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
EXAMINER
LI, SUN M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
ADIPDOCl@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARRY LYONS, STEPHEN ELDER, and ALAN COOKE
Appeal 2014-0075361
Application 13/299,5142
Technology Center 3600
Before JAMES A. WORTH, BRADLEY B. BAYAT, and AMEE A. SHAH,
Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1—6. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE and ENTER a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Jan. 27, 2014), Reply Brief (“Reply Br.,” filed June 24,
2014), and Specification (“Spec.,” filed Nov. 18, 2011), and to the
Examiner’s Answer (“Ans.,” mailed Apr. 25, 2014), and Final Office Action
(“Final Act.,” mailed Aug. 26, 2013).
2 According to the Appellants, the real party in interest is MasterCard
International Incorporated. Appeal Br. 2.
Appeal 2014-007536
Application 13/299,514
STATEMENT OF THE CASE
The Appellants’ invention “relates to distribution of offers to mobile
devices, specifically using device location and purchasing history of a user.”
Spec. 12.
Claims 1,3, and 5 are the independent claims on appeal. Claim 1 is
exemplary of the subject matter on appeal and is reproduced below
(bracketing added for reference):
1. A method of distributing context based offers,
comprising:
[(a)] storing, in an offer database, a plurality of offers for
the purchase of goods or services, wherein each offer in the
plurality of offers is associated with at least one merchant;
[(b)] identifying, by a processing device, a geographic
location of a mobile device associated with a user;
[(c)] identifying, by the processing device, a plurality of
merchants proximate to the identified geographic location of the
mobile device;
[(d)] identifying, by the processing device, an offer
distance based on the identified plurality of merchants;
[(e)] identifying, by the processing device, a merchant
within the offer distance of the geographic location and
associated with at least one offer stored in the offer database;
[(f)] identifying, in a user account associated with the user,
at least one previous transaction between the user and the
identified merchant; and
[(g)] distributing, to the mobile device, the at least one
offer associated with identified merchant.
Appeal Br. 14 (Claims App.)
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Appeal 2014-007536
Application 13/299,514
THE REJECTION
Claims 1—6 stand rejected under 35 U.S.C. 102 (b) as being
anticipated by Monteforte (US 2010/0262449 Al, pub. Oct. 14, 2010).
FINDINGS OF FACT
The findings of fact herein are supported at least by a preponderance
of the evidence.3
ANALYSIS
Claims 1 and 3 require identifying a plurality of merchants and
identifying an offer distance based on the identified plurality, as recited in
limitations (c) and (d) of claim 1. Appeal Br. 14—15. Claim 5 recites a
similar limitation of identifying an offer distance based on a plurality of
merchants. Id. at 16.
The Examiner cites to Monteforte’s Figure 23b, item 2356, and
paragraphs 3, 82, 90, and 106 for disclosing these limitations. Final Act.
4—5; Ans. 3^4.
We are persuaded by the Appellants’ arguments that Monteforte does
not disclose identifying an offer distance based on an identified plurality of
merchants. Appeal Br. 8—9; Reply Br. 2—3. Monteforte discloses a user
specifying a distance from a current location such that a search is conducted
for offers for merchants within that specified distance. Monteforte ]Hf 89,
90, Fig. 23b. Monteforte further discloses using the location’s device to
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2014-007536
Application 13/299,514
focus search results (id. 13), redirecting users to another advertiser (id.
| 82), and identifying merchants within a predefined area from which the
closest advertising merchant is identified (id. 1106). Thus, we agree with
the Appellants that Monteforte discloses that the offer distance is entered by
the user from which merchants are identified, rather than identifying the
offer distance based on identified merchants, as required by the claims.
Based on the foregoing, we are persuaded of error on the part of the
Examiner. Therefore, we do not sustain the Examiner’s rejection of
independent claims 1,3, and 5 and also dependent claims 2, 4, and 6.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims
1—6 under 35U.S.C. § 101 as being directed to non-statutory subject matter.
We find the claims are ineligible for patent protection because they are
directed to an abstract idea.
The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134
S. Ct. 2347 (2014) identified a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§ 101. We analyze the claims using the two part analysis: 1) determine
whether the claims are directed to an abstract idea; and 2) if an abstract idea
is present in the claims, determine whether any element, or combination of
elements, in the claims is sufficient to ensure the claims amount to
significantly more than the abstract idea itself to transform the claims into a
patent-eligible invention. See Alice, 134 S. Ct. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to the concept of distributing marketing offers sent
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Application 13/299,514
to a device based on criteria, i.e., filtering marketing offers sent to a device.
In that context, filtering marketing offers is a fundamental economic and
conventional business practice. Our reviewing courts have held certain
fundamental economic and conventional business practices, like tailoring
information presented to a user based on particular information (see
Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015); Bascom Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)), and intermediated settlement
{see Alice, 134 S. Ct. at 2356—57), as being abstract ideas. The filtering of
marketing messages of claim 1 is similar to these abstract ideas, and, thus
claim 1 is directed to an abstract idea.
Under the second step of the analysis, we find neither independent
claim 1 nor dependent claim 2 has any additional elements that amount to
significantly more to transform the abstract idea of filtering marketing
messages into a patent-eligible application of the abstract idea. Independent
claim 1 and dependent claim 2 recite a method of storing the data of offers in
a database, identifying a location of a device, identifying the data of
merchants proximate to the location, identifying the data of an offer
distance, identifying the data of a merchant within the distance and with an
offer, identifying the data of a previous transaction, and distributing the
offer. Appeal Br. 14. Any general purpose computer available at the time
the application was filed would have been able to perform these functions.
The Specification supports that view. See Spec. 43, 179, 181.
Independent apparatus claim 3 and dependent claim 4 recite a system
comprising a database, device, and processor, i.e., general computers.
Appeal Br. 14—15. Similarly, independent apparatus claim 5 and dependent
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Application 13/299,514
claim 6 recite a device comprising a transmitter for transmitting data and a
receiver for receiving data. Id. at 15—16. The introduction of a computer to
implement an abstract idea is not a patentable application of the abstract
idea. Alice, 134 S. Ct. at 2357—58. The computer implementation here is
purely conventional and performs basic functions. See id. at 2359-60.
Taking the limitations of the claims alone and in combination, the claims do
not purport to improve the functioning of the computer itself, nor do they
effect an improvement in any other technology or technical field. See id. at
2359; cf. Bascom, 827 F.3d at 1350 (“Filtering content on the Internet was
already a known concept, and the patent describes how its particular
arrangement of elements is a technical improvement over prior art ways of
filtering such content” (emphasis added)).
Thus, under the two-part analysis, we find that claim 1 covers claimed
subject matter that is judicially-excepted from patent eligibility under § 101.
The other independent claims — system claim 3 and device claim 5 parallel
claim 1 — similarly cover claimed subject matter that is judicially-excepted
from patent eligibility under § 101. See Alice, 134 S. Ct. at 2360. The
dependent claims describe using GPS to obtain geographic information that
do little to patentably transform the abstract idea. See Spec. 1181 (“Other
suitable methods of identification of the geographic location of the mobile
device 2420 will be apparent to persons having skill in the relevant art.”).
Therefore, we enter a new ground of rejection of claims 1—6 under 35
U.S.C. § 101.
DECISION
The rejection of claims 1—6 under 35 U.S.C. § 102(b) is REVERSED.
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A NEW GROUND OF REJECTION has been entered for claims
1—16 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the Examiner. The new ground of rejection is binding upon
the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection designated in
the decision. Should the examiner reject the claims, appellant
may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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Application 13/299,514
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED; 37 C.F.R. $ 41.50(b)
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