Ex Parte Cheng et alDownload PDFPatent Trial and Appeal BoardSep 29, 201713747649 (P.T.A.B. Sep. 29, 2017) 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. 13/747,649 01/23/2013 Loren Alfred Cheng 26295-20770/US 6765 87851 7590 10/03/2017 Faoehnnk/Fen wi ok EXAMINER Silicon Valley Center CIRNU, ALEXANDRU 801 California Street Mountain View, CA 94041 ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 10/03/2017 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): ptoc @ fenwick.com fwfacebookpatents @ fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LOREN ALFRED CHENG and EDWARD ZAGAT Appeal 2016-0027121 Application 13/747,6492 Technology Center 3600 Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and ALYSSA A. FINAMORE, Administrative Patent Judges. FINAMORE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to35U.S.C. § 134, Appellants appeal from the Examiner’s decision to reject claims 1—22. We have jurisdiction under § 6(b). We REVERSE. 1 Our Decision references Appellants’ Specification (“Spec.,” filed Jan. 23, 2013), Appeal Brief (“Appeal Br.,” filed July 10, 2015), and Reply Brief (“Reply Br.,” filed Dec. 29, 2015), as well as the Examiner’s Final Office Action (“Final Act.,” mailed Apr. 9, 2015) and Answer (“Ans.,” mailed Nov. 9, 2015). 2 Appellants identify Facebook, Inc. as the real party in interest. Appeal Br. 1. Appeal 2016-002712 Application 13/747,649 SUBJECT MATTER ON APPEAL The invention “relates generally to social networking systems and more specifically to linking financial accounts with a user’s profile in a social networking system.” Spec. 11. Claims 1, 12, and 20 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: receiving an account identifier for a financial account of a user of a social networking system, the financial account maintained by a financial account provider; associating the financial account identifier with a user profile for the user maintained by the social networking system; retrieving a transaction history for the user from the financial account provider using the received account identifier; identifying one or more candidate pages, each candidate page corresponding to a user page in the social networking system representing a commercial entity, the identifying based on at least one of the retrieved transaction history for the user and the user profile; presenting the one or more candidate pages to the user; receiving a selection of a candidate page associated with a selected vendor; and providing an identifier associated with the selected vendor and a credit amount to the financial account provider, the credit amount specifying an amount added to the financial account of the user. The Examiner relies on the following prior art in rejecting the claims REFERENCES on appeal: Kohda et al. (“Kohda”) Shinya US 2001/0053998 Al Dec. 20, 2001 US 2009/0098821 Al Apr. 16, 2009 2 Appeal 2016-002712 Application 13/747,649 Fordyce, III et al. (“Fordyce”) US 2011/0087550 A1 Strutton Baluja et al. (“Baluja”) Milne Wilkes US 2012/0011432 Al US 2012/0054205 Al US 2012/0191606 Al US 2014/0164199 Al Apr. 14, 2011 Jan. 12, 2012 Mar. 1,2012 July 26, 2012 June 12, 2014 REJECTIONS The Examiner rejects the claims on appeal as follows: claims 1—22 under 35 U.S.C. § 101 as directed to non-statutory subject matter; claims 1, 2, 4, 5, 12—14, and 22 under 35 U.S.C. § 103(a) as unpatentable over Fordyce, Strutton, and Wilkes; claim 3 under 35 U.S.C. § 103(a) as unpatentable over Fordyce, Strutton, Wilkes, and Kohda; claims 6—8 and 15—17 under 35 U.S.C. § 103(a) as unpatentable over Fordyce, Strutton, Wilkes, and Baluja; claim 9 under 35 U.S.C. § 103(a) as unpatentable over Fordyce, Strutton, Wilkes, and Milne; claims 10, 11, 18, and 19 under 35 U.S.C. § 103(a) as unpatentable over Fordyce, Strutton, Wilkes, and Shinya; and claims 20 and 21 under 35 U.S.C. § 102(e) as anticipated by Wilkes. ANALYSIS Non-Statutory Subject Matter In rejecting claims 1—22 under 35 U.S.C. § 101, the Examiner applies the two-step framework set forth in Mayo Collaborative Services v. 3 Appeal 2016-002712 Application 13/747,649 Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1297—98 (2012) and reiterated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), which considers, in the first step, whether the claims are directed to a patent-ineligible concept, e.g., an abstract idea, and then, in a second step, whether the claims, individually and as an ordered combination, recite an inventive concept—an element or combination of elements sufficient to ensure the claims amount to significantly more than the abstract idea and transform the nature of the claims into a patent-eligible application. Final Act. 2—3; Ans. 3.3 Appellants argue the Examiner has not sufficiently established that the claims are directed to an abstract idea pursuant to the first step of the patent-eligibility analysis. Appeal Br. 12; Reply Br. 3^4. We agree with Appellants. Here, the Examiner finds the claims “are directed to associating a user financial account with a social networking user profile, as well as providing targeted content based on the association, which is considered to be an abstract idea.” Final Act. 2. Yet, the Examiner does not explain why “associating a user financial account with a social networking user profile, as well as providing targeted content based on the association” is an abstract idea. Consequently, the Examiner has not established adequately that the claims are directed to an abstract idea pursuant to the first step of the patent- eligibility analysis, and we therefore do not sustain the Examiner’s rejection. 3 The Answer does not include page numbers. Consequently, we treat the pages as consecutively numbered, beginning with the page following the mailing sheet and entitled “Examiner’s Answer” as page 1. 4 Appeal 2016-002712 Application 13/747,649 Obviousness In rejecting independent claim 1, the Examiner finds Stratton teaches the limitation reciting “identifying one or more candidate pages, each candidate page corresponding to a user page in the social networking system representing a commercial entity, the identifying based on at least one of the retrieved transaction history for the user and the user profile.” Final Act. 4; Ans. 6 (both citing Stratton || 8, 63). Appellants argue Stratton does not disclose this limitation. Appeal Br. 15—16; Reply Br. 10. Appellants’ argument is persuasive. Stratton teaches inserting social media plugins into a merchant’s web page to link the merchant’s web page and the social media system, thereby allowing integration of interactive features of the social media system on the web page and communication between social media profile pages and the web page. Stratton | 8. Stratton also teaches that examples of these social media plugins include the “Like” button and Activity Feed box of FACEBOOK™, the “Share” button of LINKEDIN™, and the “Tweet” button of TWITTER™. Id. ^ 12; see also id. at Fig. 10B. Stratton further teaches that when a person buys a product from a merchant’s web page, the link between a merchant’s web page and a social media system facilitates sharing of information related to the product with the friends and fans of the person on the social media system. Id. 1 63. Although Stratton teaches that the social media plugins link the merchant’s web site and the social media system, allow integration of interactive features of social media system on the web page, and facilitate information sharing, the Examiner does not explain how the insertion of social media plugins on a merchant’s webpage provides for the identification 5 Appeal 2016-002712 Application 13/747,649 of a commercial entity’s page in the social networking system based on at least one of the retrieved transaction history for the user and the user profile, as claimed. Consequently, the Examiner has not persuaded us that Strutton teaches “identifying one or more candidate pages, each candidate page corresponding to a user page in the social networking system representing a commercial entity, the identifying based on at least one of the retrieved transaction history for the user and the user profile,” as recited in independent claim 1. In view of the foregoing, we do not sustain the Examiner’s rejection of independent claim 1 and claims 2, 4, 5, and 22 depending therefrom. Independent claim 12 includes a similar limitation as the limitation discussed above in regard to independent claim 1, and the Examiner’s rejection of independent claim 12 suffers from the same deficiency as the Examiner’s rejection of independent claim 1. Final Act. 7. Accordingly, we do not sustain the Examiner’s rejection of independent claim 12 and claims 13 and 14 depending therefrom. Furthermore, the Examiner’s rejections of claims 3, 6—11, and 15—19 suffer from the same deficiency as the Examiner’s rejections of the independent claims {id. at 9—13), and we similarly do not sustain these rejections. Anticipation In rejecting independent claim 20, the Examiner relies on paragraphs 15, 31, 34, and 35 and Figure 2 of Wilkes to disclose the claim limitation reciting receiving, from the social networking system, a vendor identifier and a credit amount for application to a transaction with a vendor associated with the vendor identifier using the 6 Appeal 2016-002712 Application 13/747,649 financial account of the social networking system user, the vendor being a commercial entity that is associated with a user page in the social networking system representing the vendor. Final Act. 13—14; Ans. 8. Appellants argue Wilkes does not disclose this limitation. Appeal Br. 21—22; Reply Br. 12—13. Appellants’ argument regarding the disputed limitation is persuasive. Wilkes discloses that social networking services allow users to interact with each other (Wilkes 115), and Wilkes further discloses enabling financial transactions by integrating a user’s financial account with a social networking account {id. 138, Fig. 2). According to Wilkes, when a user wants to initiate a purchase from a merchant, the user sends a request for an access code enabling the purchase to the social networking service. Id. f 34. Upon receipt of the request, the social networking service determines the availability of funds or credit associated with the user’s financial account. Id. If there are sufficient funds or credit to make the purchase, the social networking service generates an access code and sends the access code to the user so that the user may present the access code to the merchant to make the purchase. Id. H 34—35. Wilkes also discloses that the request may include the identifier for the user’s social networking account. Id. 131. Although Wilkes discloses that the social networking service generates an access code enabling a purchase from a merchant upon confirmation that there are sufficient funds or credit in a user’s financial account to make the purchase, the Examiner does not explain, and we fail to see, how Wilkes’ generation of an access code discloses the disputed limitation. More specifically, the Examiner does not explain how Wilkes’ generation of an access code by a social networking service to enable a 7 Appeal 2016-002712 Application 13/747,649 purchase discloses “receiving, from the social networking system, a vendor identifier and a credit amount,” as claimed. In view of the foregoing, the Examiner has not persuaded us that Wilkes discloses the disputed limitation of independent claim 20. We, therefore, do not sustain the rejection of independent claim 20 and claim 21 depending therefrom. DECISION The Examiner’s decision to reject claims 1—22 under 35 U.S.C. § 101 is reversed. The Examiner’s decision to reject claims 1—20 and 22 under 35 U.S.C. § 103(a) is reversed. The Examiner’s decision to reject claims 20 and 21 under 35 U.S.C. § 102(e) is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation