EBAY INC.Download PDFPatent Trials and Appeals BoardMar 23, 20212020004909 (P.T.A.B. Mar. 23, 2021) Copy Citation 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. 13/670,958 11/07/2012 Jean-David Ruvini 2043.B63US1 1399 49845 7590 03/23/2021 SCHWEGMAN LUNDBERG & WOESSNER/EBAY P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER YOUNG, ASHLEY YA-SHEH ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 03/23/2021 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): SLW@blackhillsip.com USPTO@SLWIP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEAN-DAVID RUVINI Appeal 2020-004909 Application 13/670,958 Technology Center 3600 Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and JEREMY M. PLENZLER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 5–10, and 13–20. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as “eBay Inc.” Appeal Br. 2. Appeal 2020-004909 Application 13/670,958 2 CLAIMED SUBJECT MATTER The disclosed subject matter pertains to “data processing and more specifically, to facilitating social interaction using purchase history.” Spec. ¶ 1. Claims 1, 9, and 17 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for facilitating social connections, the method comprising: receiving user preferences from a first user, the user preferences specifying a time period within a user activity history associated with the first user, the user activity history comprising a set of user activities that include a viewing time of one or more web-pages that contain information describing a first item; accessing a portion of the user activity history of the first user based on the time period specified by the user preferences, the portion of the user activity history including the viewing time of the one or more web-pages that contain information describing the first item; identifying an indication of interest in the first item by the first user based on the the [sic.] portion of the user activity history, the indication of interest based on the set of user activities that include the viewing time of each of the one or more web-pages that contain information about the first item by the first user; retrieving location data that identifies a current location of the first user in response to the identifying the indication of interest; searching a first range for a matching user to the first user based on the indication of interest in the first item by the first user, and wherein the first range extends by a first distance from the current location of the first user; determining a threshold number of users are not within the first range; adjusting the first range to a second range in response to the determining that the threshold number of users are not within the first range; Appeal 2020-004909 Application 13/670,958 3 identifying a second user within the second range of the current location of the first user, the identifying based on the indication of interest in the first item; and simultaneously presenting a notification at a first device associated with the first user, and a second device associated with the second user in response to the identifying the second user within the second range, the notification including an identification of the indication of interest in the first item, and one or more contact options to initiate a communication session between the first device and the second device. REFERENCES Name Reference Date Bezos et al. (“Bezos”) US 2005/0203807 A1 Sept. 15, 2005 Kishore et al. (“Kishore”) US 2006/0064431 A1 Mar. 23, 2006 McKiou et al. (“McKiou”) US 2009/0082038 A1 Mar. 26, 2009 THE REJECTIONS ON APPEAL Claims 1, 2, 5–10, and 13–20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1, 2, 5–10, and 13–20 are rejected under 35 U.S.C. § 103 as unpatentable over McKiou, Kishore, and Bezos. ANALYSIS The rejection of claims 1, 2, 5–10, and 13–20 as being directed to an abstract idea without significantly more Appellant argues these claims together. See Appeal Br. 10–14. We select claim 1 for review with the remaining claims (i.e., claims 2, 5–10, and 13–20) standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-004909 Application 13/670,958 4 As background, Section 101 of the Patent Act provides that “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is patent eligible. 35 U.S.C. § 101. Claim 1 falls within the literal scope of this provision because it recites a process (method). See also Ans. 3 (“the claims as a whole are considered as being in a statutory category under Step 1 of the test”). The Supreme Court, however, has long recognized an implicit exception to this section: “Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us, first, to consider whether the claim is “directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then, second, examine “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, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive concept,” “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.’” Alice, 573 U.S. at 217– 18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73). Regarding the first step above (commonly referred to as step 2A), in order to decide whether a claim is “directed to” an abstract idea, we are to evaluate whether the claim (1) recites an abstract idea grouping listed in the Appeal 2020-004909 Application 13/670,958 5 guidance (commonly referred to as prong 1 of step 2A) and (2) fails to integrate the recited abstract idea into a practical application (commonly referred to as prong 2 of step 2A). See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51 (Jan. 7, 2019) (“2019 Eligibility Guidance”).2 The groupings of abstract ideas listed in the guidance for purposes of step 2A, prong 1 above include, for example: “[m]athematical concepts,” “[c]ertain methods of organizing human activity,” and “[m]ental processes.” 2019 Eligibility Guidance, 84 Fed. Reg. at 52. In the event the claim is “directed to” an abstract idea (see step 2A), we then are instructed to determine whether the claim recites an inventive concept (commonly referred to as step 2B). The guidance explains that, when making this determination, we should consider whether the additional claim elements add “a specific limitation or combination of limitations that are not [a] well-understood, routine, conventional activity in the field” or, stated another way, whether the claim element “simply appends well- understood, routine, conventional activities previously known to the industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56. In the matter before us (and regarding step 2A, prong 1), the Examiner recites the limitations of claim 1 and identifies those that “are drawn to a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components.” Final Act. 7–8; Ans. 3–4. Appellant acknowledges “mental processes” as one of the “enumerated groupings” but contends that 2 An update to the 2019 Revised Patent Subject Matter Eligibility Guidance issued in October 2019 (“October 2019 Update,” available at https:// www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf). Appeal 2020-004909 Application 13/670,958 6 claim 1 is “not directed to subject matter within any of the enumerated groupings of abstract ideas.” Appeal Br. 10–11. Appellant references the same limitations described by the Examiner above contending that they “describe a system which identifies a user device” and that because such a device is recited, “Appellant fails to see how such operations could possibly be performed exclusively within the human mind.” Appeal Br. 11. Indeed, claim 1 recites both “a first device” and also “a second device.” These are the only structural components recited in claim 1. To better understand these claim terms, Appellant’s Specification states, “[e]ach of the device machines 110, 112 comprises a computing device that includes at least a display and communication capabilities.” Spec. ¶ 13. Thereafter, Paragraph 13 identifies a variety of machines that may be considered a “device,” which include work stations, computers, Internet appliances, hand- held devices, wireless devices, PDA’s tablets, game consoles “and the like.” Spec. ¶ 13. Appellant does not describe the recited “devices” with any further specificity. As such, we do not fault the Examiner for referring to such devices as being “generic.” See Final Act. 7, 8; see also Ans. 3 (“merely requiring generic computer implementation, which fails to transform that abstract idea into a patent-eligible invention”). Consequently, regarding these claim limitations, Appellant is not persuasive that the Examiner erred is stating that “other than reciting [devices], nothing in the claim element precludes the step from practically being performed in the mind,” and as such, “the claim recites an abstract idea.” Final Act. 8; see also Ans. 3, 4. We are in agreement with the Examiner on this point. Appeal 2020-004909 Application 13/670,958 7 Next, and as noted above with respect to step 2A, prong 2, we are to investigate whether claim 1 integrates the recited abstract idea into a practical application. The Examiner states that there has been no such integration into a practical application because claim 1 only recites using the “device to perform the steps of the invention” and that this “amounts [to] no more than mere instructions to apply the exception using a generic computer component.” Final Act. 8; see also Ans. 6. Appellant disagrees stating that claim 1 “recite[s] a practical application” because the claim recites “limitations which describe ‘an additional element’ that reflects an improvement in the functioning of a device’s ability to present and display notifications.” Appeal Br. 12. The 2019 Eligibility Guidance provides assistance in this matter by setting forth examples “in which a judicial exception has not been integrated into a practical application.” 2019 Eligibility Guidance, 84 Fed. Reg. at 55. One listed example of non-integration is that which was alluded to by the Examiner above, i.e., if the claim “merely recites the words ‘apply it’ (or an equivalent) with the judicial exception.” Another example of a lack of integration into a practical application is a claim that “merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea.” 2019 Eligibility Guidance, 84 Fed. Reg. at 55. Appellant does not explain how the “additional element” recited claim 1 is employed other than as a tool to apply the remaining limitations. Further, Appellant does not explain how the “additional element” improves the devices’ function of presenting and displaying notifications. Appeal Br. 12. Accordingly, we agree with the Examiner on this point. Appeal 2020-004909 Application 13/670,958 8 Having determined that claim 1 is an abstract idea under both prongs of step 2A, we are to next investigate this claim in accordance with step 2B, i.e., does claim 1 recite an inventive concept. See above. The Examiner finds that “[m]ere instructions to apply an exception using a generic computer component cannot provide an inventive concept.” Final Act. 9; see also Ans. 8. Appellant, on the other hand, contends that claim 1 recites “an inventive concept, including, for example, a specific method for presenting notifications at devices.” Appeal Br. 12. Appellant does not elaborate further as to how or in what manner claim 1 recites “a specific method” when the limitations are recited at a high-level of generality. For example, the first limitation recites receiving user preferences only specifying that these preferences specify “a time period within a user activity history.” Another limitation recites “accessing a portion of the user activity history” which is to include “the viewing time of the one or more web-pages that contain information” about an item. The remaining limitations also contain similarly generic or general terms. Thus, Appellant’s contention that claim 1 recites “a specific method for presenting notifications at devices” (Appeal Br. 12) is not persuasive, and especially when claim 1 only recites “presenting a notification,” not even a specific notification (not that that would necessarily matter in the present situation). Appellant further contends that claim 1 is “rooted in computer technology in order to overcome a problem specifically arising in a particular computer realm.” Appeal Br. 12; see also id. at 13. Appellant describes this problem as “the difficulty experienced by users of social networking platforms arising from the limitations of these platforms in facilitating search for relevant users.” Appeal Br. 13. Accordingly, Appeal 2020-004909 Application 13/670,958 9 Appellant’s “claimed solution provides users with an improved method for searching for social network connections.” Appeal Br. 14. The Examiner responds stating “that the facilitating of social connections as claimed is a well-understood, routine, conventional activity and can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry.” Ans. 6. We do not disagree with the Examiner that facilitating social connections is well-understood, routine, and conventional. Appellant proffers no evidence to the contrary. Additionally, and in order to ascertain a better understanding of claim limitations alleged to be “rooted in computer technology,” as Appellant contends above, our reviewing court has provided the following help: In Enfish, for instance, the court determined that claims related to a database architecture that used a new, self-referential logical table were non-abstract because they focused on “an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1304–5 (Fed. Cir. 2018) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). In the matter before us, Appellant does not explain how claim 1 is “an improvement to computer functionality itself” and does not, instead, recite “economic or other tasks for which a computer is used in its ordinary capacity.” See above. Accordingly, we are not persuaded that claim 1 is, as asserted by Appellant, “rooted in computer technology” when assessing whether a claim may be considered abstract or not under Section 101. Appeal Br. 12, 13. Thus, based on the record presented, we sustain the Examiner’s rejection of claims 1, 2, 5–10, and 13–20 under 35 U.S.C. § 101. Appeal 2020-004909 Application 13/670,958 10 The rejection of claims 1, 2, 5–10, and 13–20 as unpatentable over McKiou, Kishore, and Bezos Appellant argues claims 1, 2, 5–10, and 13–20 together. See Appeal Br. 15–16. We select claim 1 for review, with the remaining claims standing or falling with claim 1. The Examiner identifies overlapping teachings in the references to McKiou, Kishore, and Bezos before concluding that claim 1 is obvious. For example, claim 1 recites the limitation “receiving user preferences from a first user, the user preferences specifying a time period within a user activity history associated with the first user.” The Examiner finds that McKiou teaches “receiving user preferences from a first user.” Final Act. 9–10 (citations omitted). The Examiner also finds that Kishore teaches “receiving user preferences from a first user, the user activity comprising a set of user activities that include a viewing time of one or more web-pages.” Final Act. 13 (citations omitted). Additionally, the Examiner finds that Bezos teaches “the user preferences specifying a time period within a user activity history associated with the first user.” Final Act. 17 (citations omitted). In other words, in rejecting claim 1, the Examiner relies upon the redundant teachings of three references, and provides reasons for their combination. See Final Act. 16, 18. Appellant addresses this same limitation stating “Appellant respectfully disagrees with this assertion and submits that the cited references do not teach or suggest such limitations.” Appeal Br. 15. Notably, Appellant does not challenge the Examiner’s reasons for the combination, only that the cited art does not teach the limitation in question. However, in challenging the Examiner’s findings, Appellant only addresses “McKiou and Kishore” to reach the above conclusion that these two Appeal 2020-004909 Application 13/670,958 11 references do not teach the above limitation. Appellant does not address the role Bezos has in specifying a time period within a user activity history associated with the first user, as noted above. Nor does Appellant explain how such teachings are lacking in Bezos such that the Examiner’s reliance thereon is faulty. Furthermore, Appellant provides a synopsis of McKiou’s teachings stating that McKiou does “not describe a system which enables a user to specify ‘a time period within a user activity history.’” Appeal Br. 15–16. However, as noted above, the Examiner relied on Bezos for this teaching, not McKiou. Likewise, Appellant provides a synopsis of Kishore’s teachings stating “Kishore does not however disclose a system which enables a user to specify a portion of their user activity based on a selection of a time period” as recited in claim 1. Appeal Br. 16. However, again, the Examiner relied on Bezos, not Kishore, for teaching “accessing a portion of the user activity history of the first user based on the time period specified by the user preferences.” Final Act. 17 (citations omitted). In summation, Appellant contends that McKiou and Kishore “fail to teach or suggest ‘receiving user preferences from a first user’” and also that these references do not teach “wherein ‘the user preferences specifying a time period within a user activity history associated with the first user,’” which is the limitation initially addressed above. Appeal Br. 16. All Appellant contends regarding Bezos is that “Bezos was not cited by the Examiner with respect to the above-mentioned limitation.” Appeal Br. 16. We disagree with Appellant’s contention above for the reason that Bezos was, indeed, cited by the Examiner with respect to that limitation. See Final Act. 17; see also Ans. 10. Accordingly, Appellant is not Appeal 2020-004909 Application 13/670,958 12 persuasive the Examiner erred in rejecting claim 1 as being obvious over McKiou, Kishore, and Bezos. We sustain the Examiner’s rejection of claims 1, 2, 5–10, and 13–20 as being obvious in view of such art. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5–10, 13–20 101 Eligibility 1, 2, 5–10, 13–20 1, 2, 5–10, 13–20 103 McKiou, Kishore, Bezos 1, 2, 5–10, 13–20 Overall Outcome 1, 2, 5–10, 13–20 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation