Deanna Lawrence

Patent Trials and Appeals Board

Sep 10, 2019

14262154 - (D) (P.T.A.B. Sep. 10, 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.
14/262,154 04/25/2014 Deanna Lawrence PALI0101PUSP 6889
22045 7590 09/10/2019
Brooks Kushman
1000 Town Center
22nd Floor
Southfield, MI 48075
EXAMINER
POUNCIL, DARNELL A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/10/2019 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEANNA LAWRENCE
____________

Appeal 2018-008789
Application 14/262,154
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–8. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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ILLUSTRATIVE CLAIM
1. A computer implemented method for providing social
media data to brands, the method comprising:
pairing a user with a brand in response to the user
requesting a connection with the brand, wherein the brand is an
entity advertising products through social media;
creating a privacy agreement between the user and the
brand, the privacy agreement specifying one of a plurality of
predefined tiers of social media data authorized by the user to
be shared electronically over a network with the brand;
receiving social media data related to the user;
creating, via a computer, a user data package that
includes at least a portion of the social media data, wherein the
user data package includes data based on instructions from the
brand specifying user characteristics of interest to the brand;
removing data from the user data package that is
excluded according to the tier of social media data of the
privacy agreement to create a filtered data package; and
sending the filtered data package to the brand.
CITED REFERENCES
The Examiner relies upon the following references:
Higgins et al. US 2010/0082403 A1 April 1, 2010
(hereinafter “Higgins”)
Wolfe et al. US 2015/0149282 A1 May 28, 2015
(hereinafter “Wolfe”)
REJECTIONS
I. Claims 1–8 are rejected under 35 U.S.C. § 101 as ineligible
subject matter.
II. Claims 1–8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Higgins and Wolfe.
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FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
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. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88–89 (2012)). The first step determines whether
the claim is directed to judicially excluded subject matter (such as a so-
called “abstract idea”); the second step determines whether there are any
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“additional elements” recited in the claim that (either individually or as an
“ordered combination”) amount to “significantly more” than the identified
judicially excepted subject matter itself. Id. at 217–18.
The USPTO recently published revised guidance on the application of
§ 101, in accordance with judicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (“2019
Revised Guidance”). Under the 2019 Revised Guidance, a claim is “directed
to” an abstract idea, only if the claim recites any of (1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes — without integrating such abstract idea into a “practical
application,” i.e., without “apply[ing], rely[ing] on, or us[ing] the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Id. at 52–55. The considerations
articulated in MANUAL OF PATENT EXAMINING PROCEDURE § 2106.05(a)–(c)
and (e)–(h) (“MPEP”) bear upon whether a claim element (or combination
of elements) integrates an abstract idea into a practical application. Id. at 55.
A claim that is “directed to” an abstract idea constitutes ineligible subject
matter, unless the claim recites an additional element (or combination of
elements) amounting to significantly more than the abstract idea. Id. at 56.
Although created “[i]n accordance with judicial precedent” (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court’s Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of § 101. Id. at 53–54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
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recited, Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54–55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element (or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
The Appellant argues claims 1–8 as a group. Appeal Br. 4–7.
Claim 1 is selected for analysis herein. See 37 C.F.R. § 41.37(c)(1)(iv).
Neither the Examiner nor the Appellant questions the satisfaction of
Step 1 of the 2019 Revised Guidance — i.e., that the claims are drawn to
subject matter within the scope of § 101.
With regard to the inquiry of Step 2A, Prong One, the Final Office
Action addresses the following limitations of independent claim 1:
pairing a user with a brand in response to the user
requesting a connection with the brand, wherein the brand is an
entity advertising products through social media;
creating a privacy agreement between the user and the
brand, the privacy agreement specifying one of a plurality of
predefined tiers of social media data authorized by the user to
be shared electronically over a network with the brand;
receiving social media data related to the user;
creating, via a computer, a user data package that
includes at least a portion of the social media data, wherein the
user data package includes data based on instructions from the
brand specifying user characteristics of interest to the brand;
removing data from the user data package that is
excluded according to the tier of social media data of the
privacy agreement to create a filtered data package; and
sending the filtered data package to the brand.
See Final Action 3. According to the Examiner, these limitations describe
the concept of “providing social media data to brands, by customizing
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information based on information known about the user,” which the
Examiner regards as “an idea of itself and/or methods of organizing human
activities” amounting to an “abstract idea.” Id. The Examiner supports this
determination, with reference to Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1369–70 (Fed. Cir. 2015), which regarded the
concept of tailoring information presented to a user, based upon information
about the user — such as presenting “tailored advertisements based on the
time of day during which the advertisement was viewed” — as “an abstract,
overly broad concept long-practiced in our society.”
Viewed through the lens of the 2019 Revised Guidance, 84 Fed. Reg.
at 52, the identified claim limitations depict the claimed subject matter as
one of the ineligible “[c]ertain methods of organizing human activity” that
include “commercial or legal interactions (including agreements in the form
of contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations).” Notably, claim 1 recites “creating a privacy
agreement between the user and the brand” that determines the type of data
about the user that that brand may receive.
The Appellant does not address the portion of the Examiner’s analysis
corresponding to Step 2A, Prong One, of the 2019 Revised Guidance, 84
Fed. Reg. at 54. Therefore, we are not persuaded of any error, in regard to
Step 2A, Prong One.
Turning to Step 2A, Prong Two, unless a claim that recites a judicial
exception (such as an abstract idea) “integrates the recited judicial exception
into a practical application of that exception,” the claim is “directed to” the
judicial exception. Id. at 53. The analysis of such an “integration into a
practical application” involves “[i]dentifying . . . any additional elements
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recited in the claim beyond the judicial exception(s)” and “evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application.” Id. at 54–55.
Among the considerations “indicative that an additional element (or
combination of elements) may have integrated the exception into a practical
application” is whether “[a]n additional element reflects an improvement in
the functioning of a computer, or an improvement to other technology or
technical field.” Id. at 55 (footnote omitted). “[W]hether an additional
element or combination of elements integrate the exception into a practical
application should be evaluated on the claim as a whole.” Id. at 55 n.24.
In regard to the inquiries of Step 2A, Prong Two, the Appellant argues
that the claims “represent an atypical approach in user approval for data
access, in allowing a user to specify, on a brand by brand basis, elements and
categories of user data that brand can access.” Appeal Br. 4. Further,
according to the Appellant:
Instead of generically approving access, the user can
individually specify what data a brand can access, and this is
both an atypical solution and one that improves the data flow
between consumers and brands by allowing certain trusted or
preferred brands to access certain data without having to give
blanket approval. Similarly, disfavored brands can be blocked
without having to block access to preferred or approved brands.
Id.
Yet, claim 1 does not recite the features of “specify[ing], on a brand
by brand basis, elements and categories of user data that brand can access”
or “block[ing]” “disfavored brands” (see id.); therefore, these features
cannot confer patent-eligibility.
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Moreover, the aspects of the recited subject matter that the Appellant
contends to “improve[ ] the data flow between consumers and brands” (i.e.,
“allowing certain trusted or preferred brands to access certain data without
having to give blanket approval”) (id.) are encompassed by the claim
limitations that constitute the identified judicially excepted abstract concept,
as discussed above, i.e., they are part of the abstract concept. Therefore, the
subject matter alleged to amount to an improvement does not include any
“additional elements recited in the claim beyond the judicial exception[ ],”
such that it cannot be relied upon to “integrate[ ] the recited judicial
exception into a practical application of that exception.” 2019 Revised
Guidance, 84 Fed. Reg. at 54–55.
Therefore, we are not persuaded of any error, with respect to Step 2A,
Prong Two, of the 2019 Revised Guidance.
Turning to Step 2B of the 2019 Revised Guidance (id. at 56), a claim
that recites a judicial exception (such as an abstract idea) might,
nevertheless, be patent-eligible, if the claim contains “additional elements
amount[ing] to significantly more than the exception itself” — i.e., “a
specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present.” See Alice, 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”)
The Examiner’s position is that the only such elements of claim 1 —
i.e., other than those describing the identified abstract idea itself — involve
well-understood, routine, and conventional computer network functionality.
See Final Action 4.
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The Appellant argues that the Examiner does not “consider the actual
language of the claims” and “fails to consider the effect of the elements
working in conjunction” (see Appeal Br. 4), in determining whether claim 1
contains significantly more than the identified abstract idea. The Appellant
emphasizes the principle that well-known components might be arranged in
a non-conventional and non-generic way, so as to constitute significantly
more than an identified abstract idea. Id. at 6. See BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)
(“[A]n inventive concept can be found in the non-conventional and non-
generic arrangement of known, conventional pieces.”)
Yet, it is unclear which limitations of claim 1 — even if regarded in
combination — are alleged to amount to significantly more than the abstract
idea. Insofar as the Appellant relies upon the same claim features discussed
above, in regard to Step 2A, Prong Two (see Appeal Br. 4), the Appellants
do not identify any additional element(s), but instead purport to rely upon
claim limitations describing the identified abstract idea. Indeed, as the
Federal Circuit has explained, “[i]t has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018).
Therefore, the Appellant does not persuade us of error in the rejection,
with regard to the inquiry of Step 2B.
Accordingly, in view of the foregoing analysis, we sustain the
rejection of claims 1–8 under 35 U.S.C. § 101.
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Obviousness
The Appellant presents several arguments for error in the rejection of
claims 1–8 as obvious over Higgins and Wolfe.
The Appellant concedes that Higgins teaches independent claim 1’s
recitation of an “agreement between the user and the brand,” but the
Appellant argues that “nothing in Wolfe fills in the missing details as to
what that agreement will include.” Appeal Br. 9. In particular, the
Appellant contends that the cited prior art lacks the features of an
“agreement” “specifying one of a plurality of predefined tiers of social
media data authorized by the user to be shared electronically over a network
with the brand.” See id.
The Appellant’s argument is unpersuasive, in this regard. To the
contrary, Wolfe’s disclosure adequately supports the Examiner’s position.
See Final Action 6. See also Answer 4. In particular, Wolfe states: “The
social networking platform of the present invention can be a public platform,
a semi-private platform, or a private platform. The level of privacy may be
customizable according to member preference.” Wolfe ¶ 8. See also id.
¶ 15 (“The user groups can be private/semi-private/public.”) Wolfe further
states: “The whole system is built on a powerful permissions and sharing
model that gives the owner of a piece of content the ability to selectively
share it with individuals or groups of members, and to control the
permissions that those viewers of the content have.” Id. ¶ 17. According to
Wolfe:
A user’s personal information is private and it is theirs
rather than the social platform provider’s. Users own their
content and all of their data, and share according to their level
of comfort with privacy issues. Users are in control of who can
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see information about them and posted by them. The social
platform provider will by default refrain from making user data
being available for searching, advertisement placement etc.
unless the user wants that. The platform provider typically will
not suggest contacts, friends, or “people you might know”, to
users. Permissions and privacy are considered as user rights.
Embodiments of the invention make it easy for users to deny or
give access to any content they create. Embodiments of the
invention ensure tracking, profiling, sharing of personal
information are disabled without specific content from the user.
Id. ¶ 40. We find that Wolfe’s capacity to permit a user to deploy particular
degrees of sharing information satisfies claim 1’s limitation of “specifying
one of a plurality of predefined tiers of social media data authorized by the
user to be shared electronically over a network with the brand.”
The Appellant also argues that Wolfe fails to teach or suggest
claim 1’s “user data package includ[ing] data based on instructions from the
brand specifying user characteristics of interest to the brand.” Appeal Br. 9.
Yet, we agree with the Examiner (see Answer 5) that Wolfe sufficiently
discloses the limitation, stating, for example:
The individual can choose from a selection of consumer
goods and services, for example, by starting at a top/gross level
ad categories, and then optionally drilling down to select sub
categories. Alternatively or additionally, the selection may be
from specific companies and the sub categories, from specific
products and/or services offered by the companies etc., as
selected by the user.
Wolfe ¶ 79 (emphasis added). Presenting a user with options to select “from
specific companies and . . . from specific products and/or services offered by
the companies,” thereby providing the user’s information relating thereto
(per Wolfe ¶ 79), sufficiently discloses claim 1’s “data based on instructions
from the brand specifying user characteristics of interest to the brand.”
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The Appellant also argues that the Examiner erred in rejecting
claim 1, because the cited prior art does not teach or suggest the recited
“removing data from the user data package that is excluded according to the
tier of social media data of the privacy agreement.” See Appeal Br. 9–10.
The Appellant contends that there is no basis for combining/modifying
Higgins and Wolfe to achieve the identified limitation, because “there is no
correlation of data to a tier of social media anywhere in the prior art.” Id.
at 10.
To the contrary, as discussed above, there is adequate support for
Examiner’s finding that Wolfe does correlate privacy tiers with access to
particular aspects of user data. See Final Action 6; Answer 4. Furthermore,
as the Examiner indicates (see Final Action 5), Higgins discloses the
“removing data” feature, such that — in combination with Wolfe (see id.
at 4–5) — the cited references meet the identified limitation. Notably,
Higgins discloses “[a] ‘W4 Communications Network’ or W4 COMN” that
“provides information related to the ‘Who, What, When and Where’ of
interactions within the network,” which performs (among other functions)
“filtering, . . . deleting, [and] privacy” “on any communication channel
accessible by the W4 COMN.” Higgins ¶¶ 34–35. Accordingly, we are not
persuaded by the Appellant’s argument that the cited prior art fails to teach
or suggest claim 1’s “removing data from the user data package that is
excluded according to the tier of social media data of the privacy
agreement.”
Nor are we persuaded by the Appellant’s essentially similar argument
(see Appeal Br. 10) that the cited prior art fails to teach the limitation, in
independent claim 8, of “a processor . . . programmed to . . . filter the data to
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block access to data excluded by the predetermined privacy settings
according to the specified tier” (emphasis added). According to the
Appellant,
there is still no support for the obviousness contention with
regards to data filtering before package assembly, any more
than data removal after package assembly, when that data is
filtered/removed based on a correlation between the data and a
tier of social media, based on a definition in a privacy
agreement.
Id. Yet, as discussed above, Wolfe adequately teaches such a correlation.
See Final Action 6; Answer 4. Further, Higgins teaches claim 8’s
“filter[ing]” data, in addition to claim 1’s “removing” data. See Higgins
¶ 35 (describing “filtering, . . . deleting, [and] privacy” “on any
communication channel accessible by the W4 COMN.”)
In view of the foregoing the Appellant’s arguments do not persuade us
of error in the rejection of independent claim 1, claims 2–7 depending
therefrom (for which no separate arguments are presented), and independent
claim 8 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–8 under
35 U.S.C. § 101.
We AFFIRM the Examiner’s decision rejecting claims 1–8 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED