Ex Parte Earhart et al

Patent Trial and Appeal Board

Dec 20, 2018

13748222 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/748,222
87851 7590
Facebook/Fenwick
FILING DATE
01/23/2013
12/25/2018
Silicon Valley Center
801 California Street
Mountain View, CA 94041
FIRST NAMED INVENTOR
Amanda Earhart
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
26295-20771 3878
EXAMINER
DURAISAMYGURUSAM, LAUTH M
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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 AMANDA EARHART and LOREN ALFRED CHENG
Appeal2017-010940
Application 13/748,222
Technology Center 3600
Before CARL W. WHITEHEAD JR., IRVINE. BRANCH and
DAVID J. CUTITTA II, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 are appealing the rejection of claims 5, 8, 10-12, 15, 16,
and 18-30 under 35 U.S.C. § 134(a). Appeal Brief 5. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
Introduction
The invention is directed to "social networking and, more specifically,
to maintaining a socially-generated listing of desired goods and/or services
for a social networking system user." Specification, paragraph 1.
1 Appellants identify Facebook, Inc. as the real party in interest. See Appeal
Brief 1.
Appeal2017-010940
Application 13/748,222
Illustrative Claim
16. A computer-implemented method comprising:
storing one or more user profiles of users of a social
networking system and a set of connections among the users,
the one or more user profiles including a user profile of a
v1ewmg user;
retrieving a user profile of a target user connected to the
viewing user, the user profile of the target user associated with
a wish list identifying products associated with the target user;
selecting, by the social networking system, an additional
product for the target user based on the products identified by
the wish list associated with the target user;
sending, by the social networking system to a first client
device associated with the viewing user over a network, an
identifier of the additional product, the identifier sent for
display via a first application executing on the first client device
along with an inquiry of whether the viewing user would like to
suggest the additional product to the target user;
receiving, by the social networking system from the first
client device over the network, a request by the viewing user to
suggest the additional product to the target user, the request
having been initiated by the viewing user via the first
application based on the inquiry;
responsive to receiving the request to suggest the
additional product to the target user, sending, by the social
networking system to a second client device associated with the
target user over the network, a notification of the additional
product, the notification sent for display via a second
application executing on the second client device;
receiving, by the social networking system from the
second client device over the network, a request by the target
user to add the additional product to the wish list, the request
having been initiated by the target user via the second
application based on the display of the notification; and
2
Appeal2017-010940
Application 13/748,222
responsive to receiving the request to add the additional
product to the wish list, adding a description of the additional
product to the wish list.
Rejection on Appeal
Claims 5, 8, 10-12, 15, 16, and 18-30 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to non-statutory subject
matter. Non-Final Action 10.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed January 18, 2017), the Reply Brief (filed
August 15, 2017), the Answer (mailed June 15, 2017), and the Non-Final
Action (mailed April 21, 2016) for the respective details.
35 U.S.C. § 101 Rejection
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208,217 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
71-73 (2012)). In the first step of the analysis, we determine whether the
claims at issue are "directed to" a judicial exception, such as an abstract
idea. Alice, 573 U.S. at 217. If not, the inquiry ends. Thales Visionix Inc. v.
U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to be
directed to an abstract idea, then we consider under step two whether the
3
Appeal2017-010940
Application 13/748,222
claims contain an "inventive concept" sufficient to "'transform the nature of
the claim' into a patent-eligible application." Alice, 573 U.S. at217 (citation
omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look
to: (1) whether the claims focus on a specific means or method that improves
the relevant technology, or (2) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner determines the claims are directed to a patent-ineligible
concept because the claims recite an abstract idea. Non-Final Action 4. The
Examiner determines: "The idea of suggesting/recommending a product is
'an idea having no particular concrete or tangible form[.]' This is similar to
4
Appeal2017-010940
Application 13/748,222
the concepts involving human activity relating to commercial practices ( e.g.,
hedging in Bilski) that have been found by the courts to be abstract ideas."
Non-Final Action 4 (citing Bilski v. Kappas, 561 U.S. 593 (2010)). The
Examiner further determines: "The limitations that narrow the idea of
storing, retrieving, selecting, sending, receiving, suggesting, adding, do not
make the concept less abstract. The mere recitation of a computer (social
networking system, first client device, second client device) is not enough to
transform the abstract idea into a patent-eligible invention." Non-Final
Action 4 ( emphasis omitted).
Appellants contend "[t]he claims here are not directed to the result of
suggesting a product, but rather the method of producing the result of
suggesting a product to a user." Appeal Brief 6. Appellants argue the
claimed invention improves on the technology wherein, "[t]raditionally,
based on the products that a user has in his/her wish list, a computer system
will select an additional product to suggest to the user[, h ]owever, in
majority of the cases the user is not interested in the suggested product" and
"[i]f the user has no interest in the additional product, the suggestion of the
product may cause the user to be irritated and have a negative experience."
Appeal Brief 6.
Appellants contend:
The claimed invention improves on this technology.
Similar to prior technologies, in the claimed invention a
computer system/social networking system selects an additional
product for a target user based on products identified by a wish
list associated with the target user. However, instead of simply
suggesting the selected additional product to the target user as is
traditional, the social networking system takes additional steps to
verify that the target user will be interested in the additional
5
Appeal2017-010940
Application 13/748,222
product prior to suggesting the additional product. The additional
steps include the social networking system presenting the
additional product to a viewing user connected to the target user
(e.g., a friend) and inquiring as to whether the viewing user
believes the additional product should be suggested to the target
user. The social networking system makes the inquiry by sending
via a network an identifier of the additional product to a first
client device associated with the viewing user and having the
identifier displayed via a first application executing on the first
client device.
Appeal Brief 6.
"The Supreme Court has suggested that claims 'purport[ ing] to
improve the functioning of the computer itself,' or 'improv[ing] an existing
technological process' might not succumb to the abstract idea exception."
Enfish, 822 F.3d at 1335 (alterations in original) ( citing Alice, 573 U.S. at
223-25). Thus, our reviewing court guides that the first step in the Alice
inquiry asks whether the focus of the claims is on a specific asserted
improvement in computer capabilities or an existing technological process,
or, instead, on a process that qualifies as an "abstract idea" for which
computers are invoked merely as a tool. Enfish, 822 F.3d at 1335-36.
Accord McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314
(Fed. Cir. 2016) ("We therefore look to whether the claims in these patents
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery.").
Despite characterizing the claimed invention as using computer
technology to overcome a problem specific to the operation of a computer or
a computer network per se, Appellants do not present sufficient persuasive
evidence or argument that the claims are directed to an improvement specific
6
Appeal2017-010940
Application 13/748,222
to a computer network or the Internet itself. See Elec. Power Grp., 830 F.3d
at 1354 ("[T]he focus of the claims is not on such an improvement in
computers as tools, but on certain independently abstract ideas that use
computers as tools."). We find Appellants' claims are distinguished from
those claims that our reviewing court has found to be patent eligible by
virtue of reciting technological improvements to a computer system. See,
e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1249, 1257
(Fed. Cir. 2014) (holding that claims reciting a computer processor for
serving a "composite web page" were patent-eligible because "the claimed
solution is necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks"); Enfish,
822 F.3d at 1338 (holding that claims directed to a self-referential table for a
computer database were patent eligible because the claims were directed to
an improvement in the functioning of a computer); Visual Memory LLC v.
NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017) (holding that claims
directed to "an improved computer memory system" having many benefits
were patent eligible).
We agree with the Examiner's determination that at step one of the
Alice analysis, the claims are directed to one or more abstract ideas. We tum
to the second step of the Alice analysis, in which we must determine whether
the additional elements of the claims transform them into patent-eligible
subject matter.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Appellants contend "[t]he claimed invention is similar to BASCOM v.
AT&T in that it is the ordered combination of the claim limitations that
7
Appeal2017-010940
Application 13/748,222
makes the claims patent eligible." Appeal Brief 8 (citing Bascom Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Appellants produce a chart comparing a claim from Bascom that
was found to be patent eligible under the second step of the Alice test and
claim 16 from the instant application. See Appeal Brief 9-10. The chart is
not reproduced here. The Federal Court stated in Bascom:
We have found software-related patents eligible under
both steps of the test Alice sets out. We found a patent to a
particular improvement to a database system patent-eligible
under step one in Enfzsh LLC v. Microsoft Corp., 822 F.3d 1327,
1339--40, 2016 WL 2756255, at *8 (Fed. Cir. May 12, 2016).
There, we found claim language reciting the invention's specific
improvements to help our determination in step one of the Alice
framework that the invention was directed to those specific
improvements in computer technology. But we also recognized
that, "in other cases involving computer-related claims, there
may be close calls about how to characterize what the claims are
directed to." Id. "In such cases," we noted, "an analysis of
whether there are arguably concrete improvements in the recited
computer technology could take place under step two." Id. That
is, some inventions' basic thrust might more easily be understood
as directed to an abstract idea, but under step two of the Alice
analysis, it might become clear that the specific improvements in
the recited computer technology go beyond "well-understood,
routine, conventional acti vit[ ies]" and render the invention
patent-eligible. See Alice, [573 U.S. at 225]. We took this step-
two path in DDR, 773 F.3d at 1259 ("When the limitations of the
... claims are taken together as an ordered combination, the
claims recite an invention that is not merely the routine or
conventional use of the Internet.").
Bascom, 827 F.3d at 1348.
8
Appeal2017-010940
Application 13/748,222
Therefore, "the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, analyze, modify, and generate data, amounts to
electronic data query and retrieval----one of the most basic functions of a
computer. All of these computer functions are well-understood, routine, and
conventional activities previously known to the industry. See Elec. Power
Grp., supra. See also In re Katz Interactive Call Processing Patent Litig.,
639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower
construction of the terms 'processing,' 'receiving,' and 'storing,' ... those
functions can be achieved by any general purpose computer without special
programming."). In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, "even if a process of collecting and analyzing information is 'limited
to particular content' or a particular 'source,' that limitation does not make
the collection and analysis other than abstract." SAP Am. Inc. v. InvestPic
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (citation omitted).
Accordingly, we are not persuaded the Examiner erred and sustain the
Examiner's 35 U.S.C. § 101 rejection of claims 5, 8, 10-12, 15, 16, and
18-30.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 5, 8, 10-12, 15,
16, and 18-30 is affirmed.
9
Appeal2017-010940
Application 13/748,222
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
10