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Patent Trials and Appeals Board

Aug 30, 2021

2021001454 (P.T.A.B. Aug. 30, 2021)

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.
14/723,761 05/28/2015 Jordan Schiffer ES2014025-1 2860
126105 7590 08/30/2021
Duke W. Yee
Yee & Associates, P.C.
P.O. BOX 6669
MCKINNEY, TX 75071
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/30/2021 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):
ptonotifs@yeeiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JORDAN SCHIFFER and HADAR YACOBOVITZ
____________

Appeal 2021-001454
Application 14/723,761
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING,
MICHAEL C. ASTORINO, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1–28. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims an activity-based relationship system (Spec. ¶ 1, Title).
Claim 1 is representative of the subject matter on appeal.
1. A method of determining connections among a set
of entities, the method comprising:
receiving identity information for at least one entity
in the set of entities for determining activity-based
relationships;
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capturing on-line activity data for on-line activities
performed by the at least one entity;
analyzing the on-line activity data of the on-line
activities performed by the at least one entity to identify
others entities among a set of entities and subjects of
interest for the at least one entity;
determining relationship activity metrics for the at
least one entity, the relationship activity metrics
comprising metrics for interactions between the at least
one entity and the others entities among a set of entities,
and metrics for interactions between the at least one entity
and the subjects of interest;
digitally presenting, in a graphical user interface
and based on the relationship activity metrics, the at least
one entity, the other entities, and the subjects of interest as
a set of nodes in an activity-based connection diagram
with relationship activity metrics; and
presenting, in the graphical user interface and based
on the relationship activity metrics, connections among
the set of nodes in the activity-based connection diagram.

THE REJECTION
Claims 1–28 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
Claims 1, 4–15, 18–21 and 24–28 are rejected under 35 U.S.C. § 102(a)(2)
as being anticipated by Goldman et al. (US 9,443,274 B1, iss. Sept. 13, 2016).
Claims 2, 3, 16, 17, 22 and 23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Goldman in view of Sheinfeld (US 2014/0108535 A1, pub.
Apr. 17, 2014).

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ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–28 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those
concepts. First, . . . determine whether the claims at issue
are directed to one of those patent-ineligible concepts. . . .
If so, . . . then ask, “[w]hat else is there in the claims before
us?” . . . To answer that question, . . . 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. . . . [The Court] described step two of
this analysis as a 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.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at issue are
directed to a patent-ineligible concept. The Federal Circuit has explained that “the
‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the
[S]pecification, based on whether ‘their character as a whole is directed to
excluded subject matter.’” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed.
Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in
relevant technology or on a process that itself qualifies as an “abstract idea” for
which computers are invoked merely as a tool. See id. at 1335–36.
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In so doing we apply a “directed to” two prong test: 1) evaluate whether the
claim recites a judicial exception, and 2) if the claim recites a judicial exception,
evaluate whether the judicial exception is integrated into a practical application.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 FR 50, pp 50–57 (Jan.
7, 2019).
The Examiner determines that the claims recite determining
connections between entities including receiving, capturing, analyzing and
presenting steps. (Final Act. 3). The entities can be employer personnel,
individuals, groups, organizations and companies. (Spec. ¶ 37). The Examiner
determines that the claim limitations cover managing personal relationships or
interactions between people and commercial interactions including business
relations and fall within the category of a certain method of organizing human
activity. (Final Act. 4). The Examiner finds that the judicial exception is not
integrated into a practical application because the computer system and graphical
user interface are recited at a high level of generality such that it amounts to no
more than mere instructions to apply the exception using generic computer
components. The Examiner also finds that the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception. (Id).
The Specification discloses that businesses rely on collaborative efforts to
facilitate communication to achieve organizational goals of a business. (Spec. ¶ 3).
The present invention is an activity–based relationship system in communication
with a display system. (Spec. ¶ 6). The activity based relationship system receives
identity information for at least one entity for determining activity based
relationships. The online activity consists of sending and receiving email, sending
and receiving meeting invitations, storing and retrieving data files, accessing
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URLs, VoIP calls, online meeting activity, travel activity and online postings. The
system of the invention determines relationship activity metrics between entities.
(Id). The disclosed system is used to perform operations with respect to employer
personnel such as providing communication between and distributing ideas
amongst employer personnel so that they can gain a greater understanding of how
their individual work effort impacts and enables others of employer personnel to
contribute to the activities, goals, deliverables and the like of the employer. (Spec.
¶ 27).
Consistent with this disclosure, claim 1 recites “receiving identity
information for at least one entity,” “capturing on–line activity data . . . performed
by the at least one entity,” “analyzing the on–line activity data,” “determining
relationship activity metrics for the at least one entity,” and “presenting . . . the at
least one entity and the other entities and the subjects of interest as a set of nodes, “
and “presenting . . . connections among a set of nodes.”
We thus agree with the Examiner’s findings that the claims recite
determining connections between entities including receiving, capturing, analyzing
and presenting steps. The entities are employees, individuals, groups,
organizations and companies. Therefore, claim 1 recites a method of determining
and facilitating connections between people or organizations. Facilitating
connections between humans is a method to organize human interactions and is
thus a certain method of organizing human beings. In addition, determining
connections between entities that are organizations and companies relates to
business relations and thus is a certain method of organizing human activity on that
basis as well. Guidance 84 Fed. Reg. 52.
Also, we find the steps of receiving information, capturing data, analyzing
data, determining relationship activity and presenting an activity based connection
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diagram and connections between nodes constitute “analyzing information by steps
people go through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain
arrangements involving contractual relations are directed to abstract ideas). Thus,
we determine that the claims recite the judicial exception of methods of organizing
human activity and in the alternative, a mental process.
Turning to the second prong of the “directed to test”, claim 1 merely
requires a “graphical user interface.” This recitation does not impose “a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance at 55.
We find no indication in the Specification, nor does Appellant direct us to any
indication, that the operations recited in independent claim 1 invoke any inventive
programming, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, or that the claimed invention is
implemented using other than generic computer components to perform generic
computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim patent-
eligible.”).
We also find no indication in the Specification that the claimed invention
effects a transformation or reduction of a particular article to a different state or
thing. Nor do we find anything of record, short of attorney argument, that
attributes any improvement in computer technology and/or functionality to the
claimed invention or that otherwise indicates that the claimed invention integrates
the abstract idea into a “practical application,” as that phrase is used in the revised
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Guidance. See Guidance, 84 Fed. Reg. at 55.
In this regard, the recitation does not affect an improvement in the
functioning of the user interface or other technology, does not recite a particular
machine or manufacture that is integral to the claims, and does not transform or
reduce a particular article to a different state or thing. Id. Claim 1 recites judicial
exceptions that are not integrated into a practical application and thus claim 1 is
directed to abstract ideas.
Turning to the second step of the Alice analysis, because we find that the
claims are directed to abstract ideas, claim 1 must include an “inventive concept”
in order to be patent-eligible, i.e., there must be an element or combination of
elements that is sufficient to ensure that the claim in practice amounts to
significantly more than the abstract idea itself. See Alice, 573 U.S. at 217-18
(alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of the computer component of a graphical user interface
into claim 1 does not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-
eligible invention. Stating an abstract idea “while adding
the words ‘apply it’” is not enough for patent eligibility.
Nor is limiting the use of an abstract idea “‘to a particular
technological environment.’” Stating an abstract idea
while adding the words “apply it with a computer” simply
combines those two steps, with the same deficient result.
Thus, if a patent’s recitation of a computer amounts to a
mere instruction to “implemen[t]” an abstract idea “on . . .
a computer,” that addition cannot impart patent eligibility.
This conclusion accords with the preemption concern that
undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is
not generally the sort of “additional featur[e]” that
provides any “practical assurance that the process is more
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than a drafting effort designed to monopolize the [abstract
idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether claim 1 here does more than
simply instruct the practitioner to implement the abstract idea . . . on a generic
computer.” Id. at 225. It does not.
Considered as an ordered combination, the graphical user interface of
Appellant’s claim 1 adds nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-access/display is
equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of
receiving, selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond,
Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval,
analysis, modification, generation, display, and transmission was abstract), Two-
Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring
was abstract). The ordering of the steps is, therefore, ordinary and conventional.
Claim 1 does not, for example, purport to improve the functioning of the
graphical user interface itself. As we stated above, the claims do not effect an
improvement in any other technology or technical field. The Specification spells
out different generic equipment that can be used to perform the steps of the
invention. (See, e.g., Spec. ¶¶ 63–64). Thus, claim 1 at issue amounts to nothing
significantly more than instructions to apply the abstract idea of determining
connections among entities using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 573 U.S. at 226.
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We have reviewed all the arguments (Appeal Br. 7–13; Reply Br. 2–4)
Appellant has submitted concerning the patent eligibility of the claims before us
that stand rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments, which have been made.
But, for purposes of emphasis, we will address various arguments in order to make
individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by Appellant’s
argument that the claims are not directed to a commercial interaction nor any of the
identified sub–groups of alleged abstract idea of “certain method of organizing
human activity.” Specifically, the Appellant argues that the claims do not relate to
social activities, teaching, following rules or instructions, playing a dice game,
voting, tabulation of votes, hair designs or instructions on how to hedge risk.
Appellant also argues that the claims do not involve any aspects of legal or
commercial interactions. (Appeal Br. 9–10).
As we determined above, claim 1 recites a process of determining
connections among a set of entities. The entities may be people or organizations of
people. (Spec. ¶ 37). The Specification teaches that this is done to foster
collaboration between entities and facilitate a desired level of interactions. (Spec.
¶¶ 2–3). Clearly, claim 1 recites a method that manages the interactions between
people. It does so by fostering collaboration between people by presenting an
activity–based connection diagram. In addition, the presentation of the activity–
based connection diagram is done to manage relationships in a business to achieve
organizational goals of a business and thus is a certain method of organizing
human activity on that basis as well. Guidance 84 Fed. Reg. 52.
We are not persuaded of error on the part of the Examiner by Appellant’s
argument that the claims require the analysis of a large amount of inter–related
data, captured from a variety of disparate sources, in a quick and efficient manner
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and must be accomplished with a computer. Appellant presents this argument to
support the proposition that the alleged judicial exception is integrated into a
practical application.
First, this argument is not persuasive because claim 1 does not recite a large
amount of data but is broad enough to cover a method that involves analyzing the
online activity of one entity for interactions between the at least one entity and a
set of entities wherein the set of entities may be only two entities. Moreover,
improvements in efficiency or speed resulting from implementing an abstract idea
on generic computers does not make the abstract idea patent eligible. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017) (“But
merely ‘configur[ing]’ generic computers in order to ‘supplant and enhance’ an
otherwise abstract manual process is precisely the sort of invention that the Alice
Court deemed ineligible for patenting.”) (citation omitted); Intellectual Ventures,
792 F.3d at 1370 (“[O]ur precedent is clear that merely adding computer
functionality to increase the speed or efficiency of the process does not confer
patent eligibility on an otherwise abstract idea.”); OIP, 788 F.3d at 1363
(“[R]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.”); Bancorp Servs.,
L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012)
(“[T]he computer merely permits one to manage a stable value protected life
insurance policy more efficiently than one could to mentally. Using a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.”); see Credit Acceptance, 859 F.3d at 1055 (automation of manual
processes on generic computers is not a patentable improvement in computer
technology).
In view of the foregoing, we will sustain the Examiner’s rejection of claim 1.
We will also sustain this rejection as it is directed to the remaining claims because
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the Appellant has not argued the separate eligibility of these claims.
REJECTION UNDER 35 U.S.C. § 102
We will not sustain this rejection because we agree with Appellant that
Goldman does not disclosure “capturing on-line activity data” or “analyzing the
on-line activity data.” Appellant specifically argues that the Goldman reference
captures and analyzes information that may be from online or offline sources but
does not capture or analyze online activity.
The Examiner relies on column 7, lines 52 to 55 and Figure 4 for teaching
this subject matter. (Final Act. 8). We find that this portion of Goldman discloses
that the system gathers information on entities, people or organizations from online
and offline sources. The information gathered may include all activities and news
related to the specific person being tracked (col. 8, ll. 44 to 46).
As we found above the Specification discloses that the online activity
tracked consist of sending and receiving email, sending and receiving meeting
invitations, storing and retrieving data files, accessing URLs, VoIP calls, online
meeting activity, travel activity and online postings.
We find that the relied on portions of Goldman disclose capturing
information about entities from online and offline sources, but we agree with the
Appellant that Goldman tracks news articles and publicly available information
about a person but not online activities performed by the person as required by
claim 1. Therefore, we will not sustain this rejection as it is directed to claim 1.
We will not sustain this rejection as it is directed to the remaining claims subject to
this rejection because each of the remaining claims requires the subject matter we
have found lacking in Goldman.
REJECTION UNDER 35 U.S.C. §103
Claims 2, 3, 16, 17, 22 and 23 under 35 U.S.C. § 103 as being unpatentable
over Goldman and Sheinfeld. The Examiner relies on Sheinfeld for teaching an
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agent that monitors mail applications, chat applications, phone calls, video
conferences, social networks, etc. The Examiner concludes that the claimed
invention is merely a combination of old elements, and in the combination each
element merely would have performed the same functions as it did separately, and
that one of ordinary skill in the art would have recognized that the results of the
combination were predictable. (Final Act. 18).
We are not persuaded of error on the part of the Examiner by Appellant’s
argument that there is no motivation to combine the teachings of Goldman and
Sheinfeld because Goldman relates to influential people and these influential
people would not consent to the installation of the Sheinfeld local agent at the
respective client nodes. (Appeal Br. 17–18). We agree with the Examiner’s
response to this argument found on page 11 of the Answer. We note that the
Supreme Court emphasized that “the principles laid down in Graham reaffirmed
the ‘functional approach’ of Hotchkiss, 11 How. 248.” KSR, 127 S.Ct. at 1739
(citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)), and
reaffirmed principles based on its precedent that “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a person
of ordinary skill can implement a predictable variation,
§103 likely bars its patentability. For the same reason, if
a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond
his or her skill.
Id. at 1740. The operative question in this “functional approach” is thus “whether
the improvement is more than the predictable use of prior art elements according to
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their established functions.” Id. We agree with the Examiner that since both
Goldman and Sheinfeld are directed to effective activity monitoring a person of
ordinary skill in the art would have been motivated to modify Goldman with the
teachings of Sheinfeld because such combination would be a combination of old
elements to achieve predictable results.
In view of the foregoing, we will sustain this rejection as it is directed to
claim 2. We will also sustain this rejection as it is directed to the remaining claims
subject to this rejection because Appellant has not argued the separate patentability
of the remaining claims.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–28 under 35
U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1, 4–15, 18–21 and
24–28 under 35 U.S.C. § 102(a)(2).
We conclude the Examiner did not err in rejecting claims 2, 3, 16, 17, 22 and
23 under 35 U.S.C. § 103.

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DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–28 101 Eligibility 1–28
1, 4–15,
18–21, 24–
28
102(a)(2) Goldman 1, 4–15,
18–21, 24–
28
2, 3, 16, 17,
22, 23
103 Goldman,
Sheinfeld
2, 3, 16, 17,
22, 23

Overall
Outcome
1–28

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