Winters, Kelly et al.Download PDFPatent Trials and Appeals BoardMar 31, 202013564583 - (D) (P.T.A.B. Mar. 31, 2020) 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. 13/564,583 08/01/2012 Kelly Winters 26295-20644 3721 87851 7590 03/31/2020 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER CHOI, PETER H ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 03/31/2020 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): fwfacebookpatents@fenwick.com ptoc@fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KELLY WINTERS, CHANGHAO JIANG, YUANKAI GE, and ROHIT DHAWAN Appeal 2019-004190 Application 13/564,583 Technology Center 3600 Before JUSTIN BUSCH, LINZY T. McCARTNEY, and BETH Z. SHAW, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1–6 and 42–47. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies the real party in interest as Facebook, Inc. Appeal Brief 1, filed November 7, 2018 (Appeal Br.). Appeal 2019-004190 Application 13/564,583 2 CLAIMED SUBJECT MATTER Claim 1 illustrates the claimed subject matter: 1. A computer-implemented method comprising: [a] maintaining profiles for a plurality of users who have connected to a page in a social networking system, where the page represents a place of business operated by a merchant that administers the page; [b] maintaining a plurality of edge objects on the social networking system, each edge object representing an action performed by at least one of the plurality of users of the social networking system on at least one object in the social networking system; [c] receiving an indication that a subject user of the plurality of users is located near the place of business; [d] determining, by a processor, one or more edge objects from the plurality of maintained edge objects representing actions of the subject user in the social networking system on an object in the social networking system corresponding to the place of business of the merchant; [e] sending a notification comprising the indication to the merchant through a page administration application, the notification comprising information about content associated with the determined one or more edge objects representing actions of the subject user; [f] providing a plurality of customizable actions associated with the page for selection by the merchant to institute a loyalty program for the merchant, comprising: [g] receiving selection of a plurality of custom metrics, each metric defining a user action that meets the metric, for the loyalty program associated with the merchant; and [h] receiving selection of a plurality of custom user reward actions corresponding to user actions meeting the plurality of metrics in the loyalty program, where each reward action of the plurality of reward actions is Appeal 2019-004190 Application 13/564,583 3 performed for a user responsive to the user meeting a metric of the plurality of metrics in the loyalty program; [i] determining whether the determined one or more edge objects representing actions of the subject user meet the defined user actions of at least one of the selected plurality of custom metrics; [j] responsive to the subject user meeting a metric of the plurality of metrics in the loyalty program, performing the corresponding reward action directed at the subject user in the social networking system based on the metric; and [k] generating a story associated with the subject user meeting the metric of the plurality of metrics in the loyalty program, the story being sponsored by the page for distribution to one or more other users connected to the subject user within the social networking system. Appeal Br. 15–16 (bracketed letters added).2 REJECTIONS Claims 35 U.S.C. § References/Basis 1–6, 42–47 101 Eligibility 1–6, 42–47 103(a) Frederick,3 Walker,4 Rathod,5 Van Grove6 2 The Appeal Brief lacks pages numbers. We treat the Appeal Brief as if Appellant had sequentially numbered it starting with the page containing the Real Party in Interest section and ending with the last page of the Claims Appendix. 3 Frederick et al. (US 2013/0262203 A1; October 3, 2003). 4 Walker et al. (US 2013/0060637 A1; March 7, 2013). 5 Rathod (US 2011/0208822 A1; August 25, 2011). 6 Jennifer Van Grove, Twitter and Foursquare Become the New Loyalty Program at Tasti D-Lite, Mashable.com (Jan. 13, 2010), http://mashable.com/2010/01 /13/tasti-d-lite-tastirewards/#92CIZG lwuiq3. Appeal 2019-004190 Application 13/564,583 4 DISCUSSION We have reviewed the Examiner’s rejections and Appellant’s arguments, and Appellant has not persuaded us that the Examiner erred in rejecting claims 1–6 and 42–47 under § 101. For this rejection, as consistent with the discussion below, we adopt the Examiner’s reasoning, findings, and conclusions on pages 2–4 and 23–25 of the Final Office Action mailed January 12, 2018 (Final Act.), and pages 3–11 of the Examiner’s Answer mailed March 8, 2019 (Ans.). But we agree with Appellant that on this record, the Examiner erred in rejecting claims 1–6 and 42–47 under § 103. We address these rejections in turn. Section 101 Rejection 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. But the Supreme Court 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 Int’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 examine “the elements of [the] 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)). Appeal 2019-004190 Application 13/564,583 5 That is, we examine the claim 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). The Patent Office has revised its guidance about this framework. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites subject matter that falls within one of the abstract idea groupings listed in the Revised Guidance and (2) fails to integrate the recited abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 51, 54. If the claim is directed to an abstract idea, as noted above, we then determine whether the claim has an inventive concept. The Revised 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 well-understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56. With these principles in mind, we turn to the § 101 rejection. Appellant argues claims 1–6 and 42–47 together for this rejection, so as permitted by 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal for this rejection based on claim 1. Appeal 2019-004190 Application 13/564,583 6 Abstract Idea The Revised Guidance explains that the abstract idea exception includes “certain methods of organizing human activity” such as (1) fundamental economic principles or practices, (2) commercial or legal interactions, and (3) managing personal behavior or relationships or interactions between people. Revised Guidance, 84 Fed. Reg. at 52; see also USPTO, October 2019 Update: Subject Matter Eligibility at 4–6, https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df (October SME Update). The Examiner found that claim 1 recites subject matter that falls within this category of abstract ideas. See Ans. 4. We agree. Claim 1 recites “[a] computer-implemented method” that includes limitations [a]–[k]. These limitations recite a method that, in the words of the written description, allows merchants “to design and implement a customizable loyalty program for [a] business represented by [a] page on [a] social networking system.” Spec. ¶ 55. The disclosed loyalty programs can offer users rewards in exchange for performing certain activities. For example, the loyalty programs can offer deals when users order a certain number of items from a business, spend a predetermined amount of money at a business, “check in” at a business a certain number of times, or promote a business. See Spec. ¶¶ 34, 56–58. As courts have noted, similar “[i]ncentive award programs designed to encourage sales of products and services have been familiar aspects of marketing for many years.” Kroy IP Holdings, LLC v. Safeway, Inc., 107 F. Supp. 3d 677, 690 (E.D. Tex. 2015) (Bryson, J.), aff'd, 639 F. App'x 637 (Fed. Cir. 2016). Limitations [a]–[k] thus recite fundamental economic principles or practices and commercial interactions. We see no meaningful difference Appeal 2019-004190 Application 13/564,583 7 between the concepts recited in limitations [a]–[k] and other concepts that courts have determined are abstract ideas. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (using advertising as an exchange or currency); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (customizing information based on information known about a user and navigation data); Kroy, 107 F. Supp. 3d at 690 (providing computer-based incentive award programs); Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014) (targeting advertising to consumers), aff’d, 622 F. App’x 915 (Fed. Cir. 2015); Tuxis Techs., LLC v. Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL 4382446, at *3 (D. Del. Sept. 3, 2014) (upselling); see also Alice, 573 U.S. at 219 (intermediated settlement); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (offer-based price optimization); In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009) (structuring a sales force or marketing company); Loyalty Conversion Sys. Corp. v. Am. Airlines, Inc., 66 F. Supp. 3d 829, 837 (E.D. Tex. 2014) (Bryson, J.) (converting loyalty program points). Claim 1 therefore recites certain methods of organizing human activity, one of the abstract idea groups listed in the Revised Guidance. Revised Guidance, 84 Fed. Reg. at 52. Claim 1 thus recites an abstract idea. Because we determine that claim 1 recites an abstract idea, we next consider whether claim 1 integrates the abstract idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we evaluate the claim as a whole to determine whether the claim “integrate[s] the [abstract idea] into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit.” Appeal 2019-004190 Application 13/564,583 8 Revised Guidance, 84 Fed. Reg. at 55; see also October SME Update at 12 (discussing the practical application analysis). That is, we consider any additional elements recited in the claim along with the limitations that recite an abstract idea to determine whether the claim integrates the abstract idea into a practical application. See October SME Update at 12. The Examiner found that the additional elements recited in claim 1 include “a social networking system,” “a processor,” and “a page administration application.” See Final Act. 3. The Examiner found that these elements are generic and determined that, whether considered individually or together with the claim as a whole, these elements do not transform the recited abstract idea into a patent-eligible invention. See Final Act. 3–4. We agree. Other than the abstract idea, claim 1 recites a social networking system” that includes pages and edge objects, “a processor,” and “a page administration application.” See Appeal Br. 15–16. Appellant does not explicitly contest the Examiner’s finding that the social networking system and processor are generic components, and the record before us adequately supports that finding. Claim 1 recites these elements at a high level of generality, and the written description indicates that the recited social networking system and processor encompass known computer components. See, e.g., Spec. ¶¶ 2 (explaining, in the Background section, that “[w]ith the advent of social media, particularly social networking systems,” business and merchants “may create pages on a social networking system and provide content about the businesses through their pages”), 24 (disclosing that user and admin devices can be “a conventional computer system”) 55 (disclosing that “[s]ocial networking systems may have previously relied on a single approach for all businesses wishing to Appeal 2019-004190 Application 13/564,583 9 implement a loyalty program”), 64 (disclosing that that the invention may relate to an apparatus that “comprise[s] a general-purpose computing device”). As for the page administration application, claim 1 also recites this element at a high level of generality, and both claim 1 and the written description describe this element in largely functional terms with few technical details. See, e.g., Appeal Br. 15 (claim 1 reciting “sending a notification comprising the indication to the merchant through a page administration application”); Spec. ¶¶ 14 (disclosing that “[a] separate mobile page administration application may be developed to enable administrators of pages to better manage the content posted on the pages as well as manage relationships with fans of pages”), 45 (disclosing that “a notification is sent 306 to the merchant comprising the indication through a page administration application”). The lack of technical details about the page administration application shows that the application encompasses a generic computer component. See, e.g., Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so lacking in implementation details that it amounts to merely a generic component (software, hardware, or firmware) that permits the performance of the abstract idea, i.e., to retrieve the user-specific resources.”); Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“[A] patent need not teach, and preferably omits, what is well known in the art.”). Considering these additional elements along with the limitations that recite an abstract idea, both individually and as an ordered combination, we determine that the claimed method does not integrate the abstract idea into a Appeal 2019-004190 Application 13/564,583 10 practical application. The claimed method uses generic computer components to implement the abstract idea, and there is no indication that the claimed method overrides the conventional use of known features or involves an unconventional arrangement or combination of elements. Using generic computer components to implement an abstract idea generally does not integrate the abstract idea into a practical application. See, e.g., Alice, 573 U.S. at 223–24 (“[W]holly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77) (second and third alterations in original)). Because claim 1 recites an abstract idea and does not integrate the abstract idea into a practical application, we determine that claim 1 is directed to an abstract idea. Appellant has not persuaded us otherwise. Appellant asserts that claim 1 is not “directed to organizing human activity” because the claim is not directed to “a fundamental economic concept” or “marketing and sales activities.” Reply Br. 3–4. Appellant also asserts that claim 1 is patent eligible because it “contain[s] elements related to user interfaces” like an example of a patent-eligible claim in Office guidance. Reply Brief 3–4, filed May 2, 2019 (Reply Br.). We disagree. Although Appellant asserts that claim 1 is not directed to a fundamental economic concept or marketing and sales activities, Appellant has not provided persuasive evidence or reasoning to support this assertion. See Reply Br. 3–4. And even if we were to agree that claim 1 recites “elements related to user interfaces,” reciting such elements alone would not change that claim 1 is directed to an abstract idea. See, e.g., Affinity Labs of Appeal 2019-004190 Application 13/564,583 11 Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258–65 (Fed. Cir. 2016) (determining that a claimed graphical user interface did not make the abstract idea of providing out-of-region access to a regional broadcast content patent eligible); Intellectual Ventures I, 792 F.3d at 1370–71 (determining that a claimed interactive interface did not make the abstract idea of customizing information based on information known about a user and navigation data patent eligible). We thus find these arguments unpersuasive. Appellant next contends that claim 1 integrates the abstract idea into a practical application because the claim supposedly “impose[s] meaningful limits on the judicial exception” and “do[es] not attempt to monopolize the judicial exception.” Reply Br. 5. We disagree. Instead of imposing meaningful limits on the recited abstract idea, as discussed above, the method recited in claim 1 uses generic computer components to implement an abstract idea. That is not enough to integrate an abstract idea into a practical application. See, e.g., Alice, 573 U.S. at 223–24. And even if claim 1 does not preempt the recited abstract idea, that alone does not show that claim 1 is patent eligible: “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Inventive Concept Finally, we consider whether claim 1 has an inventive concept, that is, whether the claim has additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the Appeal 2019-004190 Application 13/564,583 12 additional claim elements add “a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field” or “simply append[] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56. As discussed above, the additional elements recited in claim 1 include “a social networking system,” “a processor,” and “a page administration application.” See Final Act. 3. The Examiner found that each of these elements is conventional. See, e.g., Ans. 8–9. The written description adequately supports the Examiner’s finding that, at the level of generality recited in claim 1, the social networking system and processor encompass conventional elements. See, e.g., Spec. ¶¶ 2, 24, 55, 64. The written description also adequately supports the Examiner’s finding that the page administration application is conventional. As noted above, the written description provides few technical details about this element, which shows that the element is well understood, routine, and conventional. See Hybritech, 802 F.2d at 1384; see also USPTO, Memorandum on Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19, 2018), available at https://www.uspto.gov/sites/default/files/documents /memo-berkheimer-20180419.PDF (explaining that a specification that describes additional elements “in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well understood, routine, and conventional). Appeal 2019-004190 Application 13/564,583 13 Whether we consider these additional elements individually or as an ordered combination, these elements do not transform the nature of claim 1 into a patent-eligible invention. Reciting conventional computer components is not enough to provide an inventive concept. See, e.g., 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.”). Appellant argues that the Examiner erred because the Examiner focused on the social networking system, processor, and page administration application recited in claim 1 and allegedly “ignore[d] the actual elements of the claim [and] the combination of elements of the claim.” Reply Br. 8. According to Appellant, like the claims in BASCOM Global Internet Services., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the method recited in claim 1 is “non-routine and non-conventional.” Reply Br. 8. Appellant also asserts that the Examiner has not provided adequate support to show that the additional elements are well-understood, routine, and conventional. Reply Br. 9. We disagree. The Federal Circuit has made clear that “the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (emphases added); see also Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 892 (Fed. Cir. 2019) (“At Alice step two we assess ‘whether the claim limitations other than the invention’s use of the ineligible concept to which it was directed were well-understood, routine, and conventional.’” (quoting BSG Tech, 899 F.3d at 1290)). The Federal Circuit has explained that “[i]t has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed Appeal 2019-004190 Application 13/564,583 14 cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech, 899 F.3d at 1290; see also Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1385 (Fed. Cir. 2019) (“The abstract idea itself cannot supply the inventive concept, ‘no matter how groundbreaking the advance.’” (quoting SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018)). Thus, the Examiner was not required to show that the abstract idea itself is well understood, routine, and conventional. The Examiner properly determined that the additional elements recited in claim 1 are well understood, routine, and conventional and although Appellant contend otherwise, for the reasons explained above, the written description adequately supports the Examiner’s finding. Conclusion We have considered the other arguments presented by Appellant and find them unpersuasive. For at least the above reasons, we sustain the Examiner’s rejection of claim 1 under § 101. Section 103 Rejection Claim 1 recites “determining, by a processor, one or more edge objects from the plurality of maintained edge objects representing actions of the subject user in the social networking system on an object in the social networking system corresponding to the place of business of the merchant.” Appeal Br. 15. Appellant asserts the Examiner erred because the cited references, whether considered individually or in combination, do not teach or suggest determining specific edge objects for a particular user. See Appeal Br. 11–12; Reply Br. 10–12. We agree. The Examiner found that a combination of Frederick and Rathod teaches or suggests this limitation. See Final Act. 6–15; Ans. 12–15. Appeal 2019-004190 Application 13/564,583 15 But the cited parts of these references do not explicitly teach determining specific edge objects for a particular user, and the Examiner did not adequately explain how combining the teachings of these references would result in determining these edge objects. As a result, we do not sustain the Examiner’s rejection of claim 1 and its dependent claims under § 103. Because the Examiner’s rejection of independent claims 43 suffers from a similar deficiency, we also do not sustain the Examiner’s rejection of claim 43 and its dependent claims under § 103. CONCLUSION The following table summarizes our decision for claims 1–6 and 42– 47, the claims before us on appeal: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–6, 42–47 101 Eligibility 1–6, 42–47 1–6, 42–47 103(a) Frederick, Walker, Rathod, Van Grove 1–6, 42–47 Overall Outcome 1–6, 42–47 Because we affirm at least one ground of rejection for each claim on appeal, we affirm the Examiner’s decision. See 37 C.F.R. § 41.50(a)(1). No 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