Ex Parte England et al

Patent Trial and Appeal Board

Nov 7, 2018

14043349 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/043,349 10/01/2013
33438 7590 11/09/2018
TERRILE, CANNATTI & CHAMBERS, LLP
P.O. BOX 203518
AUSTIN, TX 78720
FIRST NAMED INVENTOR
Aron England
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.
DC-19239.01 9036
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
USPTO@dockettrak.com
tmunoz@tcciplaw.com
heather@tcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARON ENGLAND, STEVEN TEDJAMULIA, and
HENRY HAITIAN CHEN
Appeal2017-008434
Application 14/043,349
Technology Center 3600
Before JOSEPH L. DIXON, JOHN A. JEFFERY, and
JOHNNY A. KUMAR, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-008434
Application 14/043,349
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 7-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
The claims are directed to a social marketplace digital worth score.
Spec., Title. Claim 7, reproduced below, is illustrative of the claimed
subject matter:
7. A system comprising:
a processor;
a data bus coupled to the processor; and
a computer-usable medium embodying computer
program code, the computer-usable medium being coupled to
the data bus, the computer program code interacting with a
plurality of computer operations and comprising instructions
executable by the processor and configured for:
processing a first set of social graph data associated with
a first social media user to identify a plurality of second social
media users, the first social media user associated with a first
social commerce storefront, the plurality of second social media
users associated with a second set of social graph data;
processing the first and second sets of social graph data
to generate a first digital worth score and a plurality of second
digital worth scores;
processing the first and second digital worth scores to
generate an aggregate digital worth score;
1 Appellants indicate that Dell Products L.P. is the real party in interest.
(App. Br. 1.)
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retrieving social commerce data associated with the
social commerce storefront;
processing the aggregate digital worth score and the
retrieved social commerce data to generate a first social
commerce valuation value;
identifying a second social commerce storefront
comparable to the first social commerce storefront, the second
social commerce storefront comprising a second social
commerce valuation value;
performing comparison operations to compare the first
social commerce valuation value to the second social commerce
valuation value to generate a potential monetary value for the
virtual storefront.
REJECTIONS 2
The Examiner made the following rejections:
Claims 7-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is not directed to patent eligible subject matter. (Final
Act. 4---6.)3
2 We note that independent claims 7 and 13 were significantly modified in
an amendment, dated April 3, 2015, which changed that the scope of the
independent claims and prosecution, but neglected to modify any dependent
claims for the corresponding changes to the independent claims. In any
further prosecution on the merits, the Examiner should address the
antecedent bases problems in all of the dependent claims regarding "the
product catalog," "the purchasable products," "the social data," etc. which
are not found in the independent claims.
3 We note that the Examiner has not modified the statement of rejection
since the Non-Final Office Action, dated January 5, 2015, and the
Examiner's Final Office Action, dated June 24, 2016, addresses the original
claim language. Appellants have merely provided general arguments
reciting the amended claim language without substantive arguments and the
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Claims 13-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. (Final Act. 6-
7 .)
ANALYSIS
With respect to independent claims 7 and 13, Appellants do not
present separate arguments for patentability of the claims. (App. Br. 3.) As
a result, we select independent claim 1 as the representative claim for the
group and will address Appellants' arguments thereto. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
We consider all evidence presented and all arguments actually made
by Appellants. We do not consider arguments which Appellants could have
made but chose not to make in the Brief so that we deem any such
arguments as waived. 37 C.F.R. § 4I.37(c)(l)(iv).
Additionally, Appellants did not file a Reply Brief to further respond
to the Examiner's ground of rejection and findings and conclusion regarding
the lack of patent eligible subject matter in the Examiner's Answer.
Appellants generally argue the claims of the present application are
similar to those addressed in the McRO, Inc. v. Namco Bandai Games
America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) and Bascom Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) cases.
(App. Br. 4--5.)
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
Examiner merely responds to those arguments. Arguments which
Appellants could have made but did not make in the Briefs are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
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v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of
nature, natural phenomena, and abstract ideas. Id. at 2354--55. If so, we
then proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
Alice Step One
Applying Alice Step one, we agree with the Examiner that the claimed
invention is directed to an abstract idea, namely "implementing the process."
The Examiner specifically finds:
In the instant case, claims 7 and 13 are directed to apparatuses
for implementing the process. The claims are directed to
providing electronic catalogs to users which is considered to be
an abstract idea inasmuch as such activity is considered both a
fundamental economic practice and a method of organizing
human activity.
(See Final Act. 5.)
We note that Appellants' Specification states "[ e ]mbodiments of the
invention relate generally to information handling systems. More
specifically, embodiments of the invention provide a method and system for
managing catalog resources within a social commerce environment." (Spec.
,r 2.) Appellants' Specification further states:
We provide a service to individuals, SMB and enterprises that
allow them to give us access to their social networks, analytics
to their sites, site content, emails and then we extract
information (e.g., keywords) and match it up against our
algorithm. Advertisements are then processed with the
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algorithm to generate a potential dollar worth score for their
social property to get a higher SEO [ ( search engine
optimization; see Spec. ,r 41)] score, ad clicks, and product
sales. The score will allow them to see what a site is worth if
the user plans to ever buy or sell it.
(Spec. ,r 7 (emphasis added).)
In essence, the claimed invention makes data manipulations for
valuations of worth based on digital worth scores and social commerce data.
Given this fundamental data analysis function, we agree with the Examiner
that the claimed invention is directed to an abstract idea despite Appellants'
arguments to the contrary. (App. Br. 3-5.) Moreover, the dependent claims
further emphasize the data manipulation of product catalog data used in
independent claim 7 which does not further limit the claimed invention to
"significantly more" than the abstract idea.
It is well settled that collecting information is within the realm of
abstract ideas----even when the information is limited to particular content.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). It is also well settled that analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, are
essentially mental processes within the abstract idea category. Id. at 1354.
And merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.
Id. Similar to the claims at issue in Electric Power, the claimed invention
here retrieves, processes, and identifies data to generate a potential monetary
value for the virtual storefront, but does not use any particular inventive
technology for performing those functions.
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Extracting data from collected data set is likewise abstract. See
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding ineligible claims directed to
(1) collecting data; (2) recognizing certain data within the collected data set;
and (3) storing the recognized data in memory). Therefore, processing
social graph data and processing digital worth scores and social commerce
data in the claimed invention, like the data extraction in Content Extraction,
is an abstract idea.
We find unavailing Appellants' contention that the Examiner has
oversimplified the claims and ignores specific details in the claim elements.
(App. Br. 4.) Appellants further contend that:
claim 7 is a technological improvement over existing
technology achieved through the particular ordered combination
of elements. The inventiveness of the claims is not derived
from the application of well-known concepts to a computer.
Thus, clearly the claims do not merely apply an abstract idea on
a computer and are not required to improve the functioning of
the computer itself. Thus, as with Bascom, the claims herein
are "more than a drafting effort designed to monopolize the
[abstract idea]." Alice, 134 S. Ct. at 2357. Instead, the claims
may be read to "improve[] an existing technological process."
Id. at 2358 ( discussing the claims in Diehr, 450 U.S. 175).
Bascom, p. 17.
(Id. at 5.)
We disagree with Appellants. Moreover, the Examiner has evaluated
Appellants' arguments and found the arguments are not persuasive with
regards to the claimed invention. (Ans. 4--5.) Our finding is not inconsistent
with the Examiner's finding of an abstract idea as recited in the language of
independent claims 7 and 13 .
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Furthermore, with respect to a Step 2 of the Alice analysis, we find the
recited steps to merely recite basic computer functions which do not amount
to significantly more than the abstract idea.
But the claimed invention is not directed to improving the computer's
operation by, for example, improving its speed and efficiency, but rather
performs data manipulation to generate a monetary value. Although these
functions may be beneficial to a user, a claim for a useful or beneficial
abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379--80 (Fed. Cir. 2015).
Nor are we persuaded that the claimed invention improves the
computing devices' functionality or efficiency, or otherwise changes the
way those devices function, at least in the sense contemplated by the Federal
Circuit in Enfzsh, LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir.
2016), despite Appellants' arguments to the contrary. (App. Br. 3.) The
claimed self-referential table in Enfzsh was a specific type of data structure
designed to improve the way a computer stores and retrieves data in
memory. Enfzsh, 822 F.3d at 1339. To the extent Appellants may contend
that the claimed invention uses such a data structure to improve a
computer's functionality or efficiency, or otherwise change the way that
device functions (see App. Br. 3), there is no persuasive evidence on this
record to substantiate such a contention.
To be sure, the court in Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1299--300 (Fed. Cir. 2016) held that a claim directed to using
accounting information with which a network accounting record is
correlated to enhance the record was held eligible because the claim
involved an unconventional technological solution ( enhancing data in a
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distributed fashion) to a technological problem (massive record flows which
previously required massive databases). Although the court recognized that
this solution used generic components, the recited enhancing function
necessarily required these generic components to operate in an
unconventional manner to achieve an improvement in computer
functionality. Id. at 1300--01. Notably, the recited enhancement in Amdocs
depended on not only the network's distributed architecture, but also on the
network devices and "gatherers" working together in a distributed
environment. Id. at 1301. In reaching its eligibility conclusion, the court
noted the patent's emphasis on the drawbacks of previous systems where all
network information flowed to one location making it very difficult to keep
up with massive record flows from network devices and requiring huge
databases. Id. at 1300. The court also noted similar network-based
drawbacks that were overcome by similar unconventional distributed
solutions in other patents at issue. See id. at 1305---06.
That is not the case here. Although the claimed invention uses
conventional computing components that receive and process data, there is
no persuasive evidence on this record to show that these generic components
operate in an unconventional manner to achieve an improvement in
computer functionality as in Amdocs.
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
Alice Step Two
Turning to Alice step two, the recited elements----considered
individually and as an ordered combination----do not transform the nature of
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claim 1 into a patent-eligible application of the abstract idea to ensure that
the claim amounts to significantly more than that idea. See Alice, 134 S. Ct.
at 2357.
That the recited method steps in the system are executed by a
processor does not change our conclusion. As the Examiner explains, the
claimed invention merely uses generic computing components to perform
the recited abstract idea, namely making data processing based on social
graft data and social commerce data. (See Final Act. 5---6; Ans. 5.) Merely
reciting these generic computing components cannot transform a patent-
ineligible abstract idea into a patent-eligible invention. See Alice 134 S. Ct.
at 2358-59; see also Mortgage Grader, Inc. v. First Choice Loan Servs.,
Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016) (noting that components such
an "interface," "network," and "database" are generic computer components
that do not satisfy the inventive concept requirement); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer
receives and sends the information over a network-with no further
specification-is not even arguably inventive.").
Moreover, the recited generic computing components merely do that
which can be performed mentally or with pen and paper----exclusive
functions ineligible for patent protection under § 101. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). For
example, a human can process social graph data to generate digital worth
scores and further process social commerce data as claimed. Based on this
interpretation, we see no reason why a human could not process these data
values to achieve the resultant data values, as claimed. That the claims do
not specify how the recited data processing steps are performed apart from
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its performance based processor only underscores the breadth of these
limitations which, as noted above, can otherwise be performed manually.
We reach a similar conclusion regarding the identifying and comparing steps
could otherwise be performed manually.
To the extent that Appellants may contend that the recited functions
could not otherwise be performed manually (see generally App. Br. 4), there
is no persuasive evidence on this record to substantiate such a contention.
See CyberSource, 654 F.3d at 1372.
Nevertheless, even assuming, without deciding, that the recited
components add efficiency, any speed increase comes from the capabilities
of the generic computer components-not the recited process itself. See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.")). Like the claims in
Fair Warning, the focus of claim 7 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
( citations and quotation marks omitted).
In short, merely reciting these generic computing components cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Alice, 134 S. Ct. at 2358. In other words, merely reciting an abstract idea
while adding the words "apply it with a computer" does not render an
abstract idea non-abstract: there must be more. See id. at 2358-59. Nor
does the claimed invention improve the processor's functionality or
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efficiency, or otherwise change the way that device functions. Cf Enfzsh,
822 F.3d at 1335. Appellants' contention, then, that the "inventive concept
in, for example, claim 7 is a technological improvement over existing
technology achieved through the particular ordered combination of
elements" (App. Br. 5), is unavailing.
Lastly, Appellants have not set forth separate arguments for
patentability/eligibility of any of the dependent claims nor have Appellants
filed a Reply Brief to respond to the Examiner's further clarifications.
For the foregoing reasons, then, the recited elements----considered
both individually and as an ordered combination----do not contain an
"inventive concept" sufficient to transform the claimed abstract idea into a
patent-eligible application. Therefore, we are not persuaded that the
Examiner erred in rejecting claims 7-20 as ineligible under § 101.
Non-transitory Medium
The Examiner maintains that the broadest reasonable interpretation of
independent claim 13 and its dependent claims includes a transitory
computer readable medium. (Final Act. 6-7.)
Appellants contend that independent claim 13 will be amended upon
removal of the Alice-type statutory subject matter rejection to overcome the
lack of a "'non-transitory computer readable medium"' statutory subject
matter rejection. (App. Br. 5.)
Because Appellants have not amended claim 13, we additionally pro
forma sustain the Examiner's rejection of claims 13-20 based upon a lack of
a non-transitory medium.
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CONCLUSIONS
The Examiner did not err in rejecting claims 7-20 based upon a lack
of patent eligible subject matter under 35 U.S.C. § 101, and the Examiner
did not err in rejecting claims 13-20 as directed to non-statutory subject
matter under 35 U.S.C. § 101 based upon a lack of a "non-transitory
computer readable medium".
DECISION
For the above reasons, we sustain the Examiner's patent eligibility
rejections of claims 7-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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