Ex Parte MEHTA et al

Patent Trial and Appeal Board

Jun 28, 2018

12470476 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/470,476 05/21/2009
12371 7590 07/02/2018
Muncy, Geissler, Olds & Lowe, P.C./QUALCOMM
4000 Legato Road, Suite 310
Fairfax, VA 22033
Chand MEHTA
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.
QC081549 3939
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHAND MEHTA and ROBERT C. LEWIS
Appeal2017-003421
Application 12/470,476
Technology Center 3600
Before ERIC B. CHEN, MELISSA A. RAAP ALA, and
KARA L. SZPONDOWSKI Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-58. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Appellants identify the real party in interest as QUALCOMM
Incorporated. App. Br. 3.
Appeal2017-003421
Application 12/470,476
STATEMENT OF THE CASE
Appellants' invention is directed to a method and system for
generating a user profile based on user location history tracked via a mobile
device. Spec. ,r 2. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of generating a user profile based on location fixes,
compnsmg:
receiving, at a communications device, a set of location fixes
representing one or more locations of a mobile device;
combining, by the communications device, the set of location
fixes to generate a user location history for a user of the mobile
device;
identifying, by the communications device, a set of visited
locations in the user location history;
sorting, by the communications device, the set of visited
locations by at least dwell-time of the mobile device at each of the set
of visited locations to identify a set of significant locations to the user
of the mobile device; and
generating, by the communications device, a user profile for the
user of the mobile device based at least on the set of significant
locations.
REJECTIONS
Claims 1-58 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1-14, 16, 17, 19, 21, 22, 24, 26, 27, 29, 31, 32, 34, 36, 37, 39,
42--44, 46, 48, 49, 51-53, and 56-58, stand rejected under 35 U.S.C.
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Application 12/470,476
§ 102(b) as being anticipated by De Wolf et al. (US 2002/0111172 Al;
published Aug. 15, 2002). 2
Claims 15, 20, 25, 30, 35, 40, 41, 47, 54, and 55 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over the combination of De Wolf
and Lau et al. (US Patent 6,975,941 Bl; issued Dec. 13, 2005) ("Lau").
Claims 18, 23, 28, 33, 38, and 45 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of De Wolf, Doherty et
al. (US 2008/0125959 Al; published May 29, 2008) ("Doherty"), and
Reference "U" on PT0-892, AMERICAN TIME USE SURVEY--2005
RESULTS ANNOUNCED BY BLS, News Bureau of Labor Statistics, US
Dept. of Labor (2005), USDL 06-1276, p 2.
ANALYSIS
35 U.S. C. § 1 OJ Rejections
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), identifies a two-step framework for determining whether claimed
subject matter is judicially excepted from patent eligibility under 35 U.S.C.
§ 101. In the first step, "[ w ]e must first determine whether the claims at
issue are directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355.
The Federal Circuit has instn1cted that "[t]he "directed to' inquiry ... [does
not] simply ask whether the claims involve a patent-ineligible concept,
because essentially every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural phenomenon,"
2 Claim 50 does not stand rejected under 35 U.S.C. § I02(b) or 35 U.S.C.
§ 103 (a) in the Final Rejection. In the event of further prosecution, the
Examiner may want to consider whether claim 50 is anticipated or obvious
for similar reasons as claim 9.
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but rather "applies a stage-one filter to claims, considered in light of the
specification, based on whether 'their character as a whole is directed to
excluded subject matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (citing Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
The Examiner determines:
Claim( s) 1-5 8 are directed to a method of generating a user
profile based on location fixes by receiving a set of location
fixes which represent the location of a mobile device,
combining the set of location fixes to generate a user location
history, identifying a set of visited locations in the user location
history, sorting the set of visited location histories by dwell
time at each location and generating a user profile based on the
sorted set of visited locations, which is considered an abstract
idea.
Final Act. 2. The Examiner compares the claims to those in Cyberfone
Systems, LLC v. CNN Interactive Grp, Inc., 558 F. App'x 988 (Fed. Cir.
2014) (nonprecedential), finding "the current invention uses sets of locations
to organize and store user location history in a user profile" and Digitech
Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014), finding "the current action sorts the actions by dwell time which is
organizing the information." Final Act. 2-3.
Appellants argue the claims "are not a fundamental economic
practice, a method of organizing human activities[,] an idea 'of itself,'
and/or a mathematical relationship or formula." App. Br. 8. In addition,
Appellants argue the "types of detailed features [in the claims] are clearly in
contrast to the very high-level abstract ideas in the relevant case law on this
topic." App. Br. 8.
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Application 12/470,476
We are persuaded by Appellants' arguments inasmuch as we agree
that the Examiner has not sufficiently articulated the abstract idea and has
not explained why the claims are directed to an abstract idea. More
specifically, the Examiner has not established what the claimed invention is
directed to in a manner sufficient for us to evaluate whether it represents, for
example, a fundamental economic practice or method of organizing human
activity. Merely reciting the claim language and stating that it is "considered
to be an abstract idea" (Final Act. 2) is not sufficient. Although the
Examiner compares the claims to those in Cyberfone and Digitech, the
comparison is generic, conclusory, and fails to consider the claims as a
whole. See Internet Patents, 790 F.3d at 1346 ("the claims are considered in
their entirety to ascertain whether their character as a whole is directed to
excluded subject matter.")
Because we determine the Examiner does not show the claims are
directed to an abstract idea, we need not reach the second step. However,
we are further not persuaded the Examiner establishes the claims are
excepted under the second part of the test. In the second step of the Alice
analysis, we "consider the elements of each 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." Alice,
134 S. Ct. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78-79 (2012)). In other words, the second step is to
"search for an 'inventive concept'-i.e., an element or combination of
elements that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Id.
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
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The Examiner determines:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the combination of elements, when
considered alone or in combination, do nothing more than use
"a communication device" or a "wireless interface to a mobile
device and a server" to perform the steps of the abstract idea of
generating a user profile using location fixes. The "GPS", "A-
GPS", "Galileo system", "Tower triangulation", type of
"mobile de[ v ]ice" all describe the data that is being or
generically link the steps to a computing environment. The
additional elements of the claims do not add a meaningful
limitation to the abstract idea because they are generic
computer components which perform generic computer
functions and they would be routine in any computer
implementation. Therefore the combination of elements in the
claims are not sufficient to amount to significantly more than
the abstract idea.
Final Act. 3. In addition, the Examiner determines:
[T]he claims are directed to a generic computer running
software, i.e.[,] a series of mathematical formulations, i.e.[,] if a
then b, or a>b goto, in a language such as Java or C, in
computer code, perform generic computer functions that are
well-understood, routine and conventional activities previously
known to the industry, in common commercial activities. Any
commercial software could be called a series of mathematical
formulations, think of the millions of lines of computer code
that make up windows software, but the public record must
show that the concept of the claims are directed towards
software to manage a common commercial activity.
Independent claims are directed towards a business model for
building a user profile, expressed as abstract computer
programming generic computer components.
Final Act. 13-14; see also Ans. 3. The Examiner also states that
because claim 1 "has been properly and finally given a 102(b)
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reject[ion], each element [is] found to be well-understood, routine[,]
and conventional." Ans. 2.
Appellants argue "whether or not specific claim features are
'well-understood, routine and conventional,' and thus amount to
significantly more than the judicial exception itself, is a factual
analysis that must be based on evidence." App. Br. 9. According to
Appellants, certain claim limitations "have been characterized as
'well-understood, routine and conventional' without any evidentiary
support." App. Br. 10; see also Reply Br. 3--4.
We agree with Appellants. "The question of whether a cfaim ekment
or cornbination of elements is weH-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). Here, the Examiner has merely
identified certain computer components recited in the claim and found that
those computer components are generic and perform generic computer
functions. However, even if the claimed invention uses generic computer
components, the "inventive concept can be found in the non-conventional
and non-generic anangement of known, conventional pieces." Bascom
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016). As one example, the Examiner has not sufficiently
explained how the step of "generating, by the communications device, a user
profile for the use or of the mobile device based at least on the set of
significant locations" is performed in a well-understood, routine, and
conventional manner. Therefore, the Examiner has not established with
appropriate factual evidence that the claims use well-understood, routine and
conventional functionality. See Berkheimer, 881 F.3d at 1369 (cautioning
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that "[ t ]he mere fact that something is disclosed in a piece of prior art [] does
not mean it was well-understood, routine, and conventional").
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 101
r~jection of clairns 1-58.
35 U.S. C. § 102(b) Rejections
Issue: Did the Examiner err in finding De Wolf discloses "sorting, by
the communications device, the set of visited locations by at least dwell-time
of the mobile device at each of the set of visited locations to identify a set of
significant locations to the user of the mobile device," as recited in
independent claim 1 and commensurately recited in independent claims 16,
21, 26, 31, 36, 43, and48?
The Examiner finds
The cited section of De Wolf (para 68) is believed to teach this
element by disclosing "The observed activities (step 520) are
categorized by analyzing the time data, frequency, route, etc.
associated with the subscriber 210. The different locations are
sorted by time spent in each location, 6 para 68, example given
as commute to work, another example given in para 69, the
observed locations may be defined in terms of time spent at the
location. For example, in the last week the subscriber 210 was
at the park for 3 hours.). Webster's Dictionary defines sort as: a
group set up on the basis of any characteristic in common, thus
the categorizing of [De Wolf] shown in fig. 4 # 420, and
paragraph 58, categorizing location, teaches this element, in
which the top locations are prioritized for serving
advertisements.
Ans. 3--4; see also Final Act. 4--5.
Appellants argue "De Wolf does not disclose or suggest 'sorting ...
the set of visited locations,' much less 'sorting ... the set of visited locations
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by at least dwell-time of the mobile device at each of the set of visited
locations to identify a set of significant locations to the user of the mobile
device."' App. Br. 14; see also Reply Br. 6-8. According to Appellants,
"De Wolf makes no mention of 'sorting' and ... the Examiner does not
appear to explain how 'the sorted set of visited locations' is disclosed by
De Wolf." App. Br. 14. Appellants further argue there is no "disclosure or
suggestion that 'the time, location and other features' used in the
classification include 'at least dwell-time of the mobile device at each of the
set of visited locations."' App. Br. 14.
We agree with Appellants. De Wolf generally describes a method and
system for profiling a subscriber based on observing activities and locations
where the subscriber travels. De Wolf ,r 19. De Wolf describes storing data
related to a subscriber's location and time at that location, and then
processing the data to observe activities that the subscriber partakes in and
observes locations that the subscriber visits. DeWolf,I 67. De Wolf
describes "categorizing" observed activities by "analyzing the time data,
frequency, route, etc. associated with the subscriber." DeWolf,I 68.
De Wolf also describes that "observed locations may be defined in terms of
time spent at the location." DeWolf,I 69. This information is used to
predict a subscriber's activity. De Wolf Abstract.
De Wolf also separately describes the generation of a location profile
(separate from a subscriber location profile) that consists of data related to
locations including, for example, a location type, the type of entities that
visit that location, and the clientele or characteristics of those entities.
DeWolf,I,I 56, 58, Fig. 4A, 4B. Location attributes such as parks, shopping
centers, and business districts, are used to categorize the locations into, for
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example, residential areas, commercial areas, or other location types.
DeWolf,I 58. The location category may be broken down into
subcategories, such as retail establishments, restaurants, or businesses, and
further defined to identify a specific entity, such as The GAP. DeWolf,I 59.
This location profile information is used to determine the profile of the
subscriber. DeWolf,I,I 45, 57.
We do not see where De Wolf describes that the "[t]he different
locations are sorted by time spent in each location," as the Examiner finds
(see Ans. 4) or indeed where De Wolf describes any sorting of the different
locations. The Examiner appears to rely on the categorization of observed
activities and/or the categorization of the locations to teach "sorting." The
Examiner offers a noun definition of the term "sort." However, the term
"sorting," as used in the claim, is a verb. "Sorting" is defined as "to put in a
certain place or rank according to kind, class, or nature" or "to arrange
according to characteristics." Merriam-Webster on line Dictionary,
http://www.merriam-webster.com/dictionary/sort. This is consistent with
how the term is used in Appellants' Specification. See, e.g., Spec. 7-9, Fig.
2A. Although De Wolf discloses that observed locations may be defined in
terms of time spent at that location, the Examiner does not identify where
these observed locations are sorted. We do not agree with the Examiner that
the aforementioned "categorizing" of the activities or in the context of
creating a location profile discloses "sorting ... by at least dwell-time at
each of the set of visited locations to identify a set of significant locations to
the user of the mobile device."
Appellants present additional arguments. However, because the
identified issue is dispositive of the appeal with regard to the rejections
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under 35 U.S.C. § 102(b), we do not reach the additional issues.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 102(b) rejections
of independent claims 1, 16, 21, 26, 31, 36, 43, and 48. For the same
reasons, we do not sustain the Examiner's rejections of dependent claims 2-
15, 17-20, 22-25, 27-30, 32-35, 37--42, 44--47, and 49-58.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1-58 is reversed.
The Examiner's 35 U.S.C. § 102(b) rejection of claims 1-14, 16, 17,
19,21,22,24,26,27,29,31,32,34,36,37,39,42--44,46,48,49,51-53,
and 56-58 is reversed.
The Examiner's 35 U.S.C. § 103(a) rejection of claims 15, 18, 20, 23,
25, 28, 30, 33, 35, 38, 40, 41, 45, 47, 54, and 55 is reversed.
REVERSED
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