Ex Parte Gandhi

Patent Trials and Appeals Board

Apr 24, 2019

13587602 - (D) (P.T.A.B. Apr. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/587,602 08/16/2012 Shaheen A. Gandhi
91230 7590 04/26/2019
Baker Botts L.L.P./Facebook Inc.
2001 ROSS A VENUE
SUITE 900
Dallas, TX 75201
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.
079894.0685 4415
EXAMINER
NETZLOFF, ERIC R
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
04/26/2019 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAHEEN A. GANDHI
Appeal 2018-002271 1
Application 13/587,6022
Technology Center 3600
Before ALLEN R. MACDONALD, CARL W. WHITEHEAD, JR., and
JAMES B. ARPIN, Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 3-8, 10, 12, 20-26, 28, and 29. Final Act. 2; App.
Br. 3. Claims 2, 9, 11, 13-19, and 27 are canceled. App. Br. 15-22 (Claims
1 In this Decision, we refer to Appellant's Appeal Brief ("App. Br.," filed
August 28, 2017) and Reply Brief ("Reply Br.," filed December 22, 2017);
the Final Office Action ("Final Act.," mailed March 14, 2017) and the
Advisory Action ("Adv. Act.," mailed June 7, 2017); the Examiner's
Answer ("Ans.," mailed November 6, 2017); and the originally-filed
Specification ("Spec.," filed August 16, 2012). Rather than repeat the
Examiner's findings and determinations and Appellant's contentions in their
entirety, we refer to these documents.
2 Appellant asserts Facebook, Inc. is the real party-in-interest. App. Br. 3.
Appeal 2018-002271
Application 13/587,602
App.). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellant's recited methods, computer-readable media, and systems
"relate[] to electronic advertising." Spec. ,-J 1.
In particular embodiments, an electronic advertising space may
be viewed or may intended to be viewed by multiple consumers
of an advertisement in the advertising space. For example,
digital billboards or electronic displays in restaurants,
businesses, or public or private structures may be viewed by
multiple individuals. In particular embodiments, at least some of
the individuals may be users of a social network containing nodes
corresponding to individuals, concepts, or things and edges
describing the connections or relationships among the various
nodes.
Id. ,-i 3. Appellant's Figure 2 is reproduced below.
:,':(I
In Figure 2, social graph 200 includes nodes 210, such as user nodes that
each correspond to a respective user of the social network environment,
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concept nodes each devoted or directed to a particular concept, or topic
nodes, which may or may not be ephemeral, each devoted or directed to a
particular topic of current interest among users of the social network
environment. Id. i117. Further, social graph 200 includes a plurality of
edges 220, each defining or representing a connection between a
corresponding pair of nodes 210 in social graph 200. Id. Thus, social
graph 200 "contemplates a social network having any suitable number of
nodes representing any suitable entity, concept, or thing, and any suitable
edges connecting the nodes." Id.
As noted above, claims 1, 3-8, 10, 12, 20-26, 28, and 29 are pending.
Claims 1, 12, and 20 are independent. App. Br. 15-16, 17-18, 19-20
(Claims App.). Claims 3-8, 10, 21-26, 28, and 29 depend directly or
indirectly from claim 1. Id. at 16-22.
Claim 1, reproduced below, is representative.
1. A method comprising, by one or more computing device
of a social-networking system:
by one or more of the computing devices, receiving, from each
of a plurality of mobile devices corresponding to a plurality of
individuals, respectively:
real-time identifying information associated with the mobile
device; and
real-time location and orientation data associated with the
mobile device, the location and orientation data being gathered
by one or more sensors on the mobile device and locally stored
on the mobile device, the location and orientation data indicating
a current location, a current orientation, and a current velocity of
the mobile device;
by one or more of the computing devices, using the identifying
information to identify a plurality of individuals, the plurality of
identified individuals comprising a plurality of users of a social-
networking system, the social-networking system comprising a
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graph that comprises a plurality of nodes and edges connecting
the nodes, for each identified individual at least one user node in
the graph corresponding to a user profile of the identified
individual;
by one or more of the computing devices, determining, for each
of the plurality of identified individuals, whether the individual
is in a viewing area of an electronic advertising display, the
electronic advertising display being affixed to a designated
location, each determination based on a comparison of the
location and orientation data corresponding to the individual
with electronic advertising display data stored on a server, the
electronic advertising display data indicating:
a geography around the electronic advertising display;
a size and orientation of the electronic advertising display;
and
a size of an area surrounding the electronic advertising
display;
by one or more of the computing devices, accessing the graph to
determine one or more attributes common to two or more
individuals of the plurality of the identified individuals within
the viewing area, the attributes being determined by identifying
at least two user nodes corresponding to at least two individuals
in the viewing area of the electronic display, respectively, each
of the identified user nodes being connected by one or more
edges to each of one or more concept nodes corresponding to the
one or more attributes, respectively, common to the at least two
individuals in the viewing area;
by one or more of the computing devices, providing the attributes
for dynamic selection of an advertisement to present on the
electronic advertising display to the plurality of the identified
individuals, the selection based at least in part on one or more of
the concept nodes corresponding to one or more of the respective
determined attributes common to the two or more individuals in
the viewing area of the electronic display; and
by one or more of the computing devices, sending the selected
advertisement to the electronic advertising display for real-time
presentation to the plurality of the identified individuals.
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Id. at 15-16.
REJECTION
The Examiner rejects the claims 1, 3-8, 10, 12, 20-26, 28, and 29 as
unpatentable under 35 U.S.C. § 101 as directed to patent ineligible subject
matter. Final Act. 4-8.
We review the appealed rejection for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BP AI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv). Unless
otherwise indicated, we adopt the Examiner's findings in the Answer as our
own and add any additional findings of fact appearing below for emphasis.
We address the rejection below.
A. Section 101
ANALYSIS
Patent Ineligible Claims
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573
U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court's two-step framework, described in Alice and Mayo.
Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first
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determine what concept the claim is "directed to." See Alice, 573 U.S. at
219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267-68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that "[a] claim drawn to subject matter otherwise statutory does
not become nonstatutory simply because it uses a mathematical formula."
Diehr, 450 U.S. at 176; see also id. at 191 ("We view respondents' claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula."). Having said that, the Court
also indicated that a claim "seeking patent protection for that formula in the
abstract ... is not accorded the protection of our patent laws, []and this
principle cannot be circumvented by attempting to limit the use of the
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formula to a particular technological environment." Id. ( citing Benson and
Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a
law of nature or mathematical formula to a known structure or process may
well be deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, in which "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
B. Office Patent Eligibility Guidance
The Office recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019). 3 Under that guidance, we first look to whether the
claim recites:
(1) Step 2A - Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain
methods of organizing human activity, such as a fundamental
economic practice, or mental processes); and
3 This guidance supersedes previous guidance memoranda. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51 ("All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.").
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(2) Step 2A- Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP4
§ 2106.05(a)-(c), (e)-(h)).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54-55 ("Revised Step 2A").
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See id. at 56 ("Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.").
C. Statutory Categories
As an initial matter, each of the pending claims must be directed to at
least one of four recognized statutory categories, namely, apparatus, process,
article of manufacture, or composition of matter. MPEP § 2106(1). Here,
independent claims 1, 12, and 20 are directed to methods, i.e., "proceses,"
computer-readable media, i.e., "articles of manufacture," and systems, i.e.,
"machines," respectively. Final Act. 5; see 35 U.S.C. § 101. Thus, the
pending claims are directed to recognized statutory categories. See
Accenture Global Servs. GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
4 All Manual of Patent Examining Procedure ("MPEP") citations herein are
to MPEP, Rev. 08.2017, January 2018.
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1341 (Fed. Cir. 2013) ("Although CLS Bank issued as a plurality opinion, in
that case a majority of the court held that system claims that closely track
method claims and are grounded by the same meaningful limitations will
generally rise and fall together.") ( citation omitted).
D. Two-Step Alice/Mayo Analysis
1. Step 2A - Prong One
Applying the first step of the Alice/Mayo analysis, the Examiner
considered the limitations of the pending claims both individually and as an
ordered combination. See Final Act. 8; Ans. 6-7. The Examiner finds the
pending claims are directed to the abstract idea of:
receiving information about a plurality of individuals and using
nodes or edges in a graph associated with social network user
profiles to determine attributes common to two or more
individuals in the viewing area of a display. The information
about the individual is used to determine whether the user is in
the viewing area and the common attributes are used to select an
advertisement and present the advertisement to the plurality of
individuals viewing the display.
Final Act. 5; see id. at 9 ("Further, this abstract idea is merely being
used to determine attributes for targeting advertising, which is again an
abstract idea." ( emphasis added)); Ans. 4 ("The information about the
individual is used to determine whether the user is in the viewing area and
the common attributes are used to select an advertisement and present the
advertisement to the plurality of individuals viewing the display.")
The Examiner further determines that the abstract idea, to which the
pending claims are directed, is similar to ideas that have been identified as
abstract by the courts. Final Act. 5-6; see Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266 (Fed. Cir. 2016) ("[T]he magistrate judge
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found that the '085 patent is directed to an abstract idea-'delivering
selectable media content and subsequently playing the selected content on a
portable device."'); Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1369 (Fed. Cir. 2015) ("Here, the patent claims are directed
to an abstract idea: tracking financial transactions to determine whether they
exceed a pre-set spending limit (i.e., budgeting) .... The abstract idea here is
not meaningfully different from the ideas found to be abstract in other cases
before the Supreme Court and our court involving methods of organizing
human activity."). The Examiner concludes:
The claims also recite ideas in the category of"Organizing
Human Activity" because the claims are directed to the concept
of associating a first person's attributes with another person or
group having similar attributes. This concept is similar to the
other types of concepts relating to advertising, marketing and
sales activities or behaviors, such as structuring a sales force or
marketing company ([In re Ferguson, 558 F.3d 1359, 1364 (Fed.
Cir. 2009) ("At best it can be said that Applicants' methods are
directed to organizing business or legal relationships in the
structuring of a sales force ( or marketing company).")]), using an
algorithm for determining the optimal number of visits by a
business representative to a client ([Application of Maucorps,
609 F.2d 481, 482 (Fed. Cir. 1979) ("Appellant's invention is a
computer-implemented model of a sales organization. It
determines the optimum number of times a sales representative
for a business should visit each customer over a period of time.
The optimum number of sales representatives the organization
should have, and the optimum organization of sales
representatives.")]. Therefore, the claims are directed to an
abstract idea.
Final Act. 6. Appellant disagrees.
Appellant asserts that the pending claims are not directed to an
abstract idea for at least two reasons. App. Br. 7-10. For the reasons set
forth below, we disagree.
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First, Appellant contends that the pending claims are necessarily
rooted in computer technology. Id. at 7-9; Reply Br. 3-4. In particular,
Appellant contends that:
the specification correctly characterizes the problem: identifying
"multiple individuals in the viewing area of an advertising
space," determining that those individuals are actually within the
viewing area of the advertising space, and determining
"attributes of the individuals," which includes actions those
individuals have taken on the online social network, such as
"liking" a particular brand of ice cream. (Specification, para.
0004, 0018 and 0053.) These are problems arising out of online
social networking, which is intrinsically tied to the Internet.
Thus, these claims are necessarily rooted in computer
technology.
Reply Br. 3-4 ( emphasis added). Although it is correct that the recited
method uses a social networking system and a network, such as the Internet
(see Spec. ,i 13), that does not necessarily root the method in those
technologies. Appellant contends that these claim steps "do not merely
recite the performance of some business practice known from the pre-
Internet world." Id. at 4 (quoting DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014)); see App. Br. 8-9. Instead, "by
reciting specifically how the location, velocity, and orientation data of
multiple devices are combined with attributes of multiple users from the
social graph for selection of an advertisement for an electronic display, 'the
claimed solution is necessarily rooted in computer technology."' Reply
Br. 4 (quoting DDR Holdings, 773 F.3d at 1257). The Examiner finds,
however, that "the problem of targeting advertising on public displays and
the solution of determining the identity of the multiple individuals in the
viewing area of an advertising space, were both known in television and
billboard advertising prior to computer technology." Ans. 4-5. Specifically,
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the Examiner notes that the claimed method merely recites steps for
presenting information on electronic displays, such as television screens or
monitors, rather than on billboards that may require repainting. Id. ( quoting
Spec. ,i 2). We agree with the Examiner.
Second, Appellant contends that the recited methods are directed to
"improvements to computer technology." App. Br. 9-10 ( quoting Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)); Ans. 5. We
disagree.
Initially, Appellant contends:
[ t ]he Examiner asserts that the claims are merely directed to 'use
information about a user to determine whether the user is [in] a
viewing area then use nodes and a graph to identify common
attributes of users in order to provide targeted advertisements.'
([Final Act. 5].) However, this characterization overly abstracts
the claims, which are more specifically directed to the steps listed
in the previous section.
App. Br. 10 ( emphasis added). However, as our reviewing court has
explained, "[ a ]n abstract idea can generally be described at different levels
of abstraction." Apple Inc. v. Ameranth Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016)). We do not find the Examiner's assessment of the claims improperly
abstract.
Referring to the Specification, Appellant further contends "the claims
achieve benefits over existing technology, such as delivering more relevant
advertisements to a higher number of people who all occupy the same public
space at a particular time, as well as faster advertisement selection and
delivery times." App. Br. 10 (citing Spec. ,i,i 2-4, 48, 51, 52, 57). The use
of particular technologies in a method, even a novel and non-obvious
method (see Final Act. 2-3), to accomplish this abstract idea does not make
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the claims patent eligible. See Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 89-90 (2012); see also Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) ("[A] claim for a new
abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating§ 102 novelty."); Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016)
(same for obviousness). The Examiner finds the identified benefits describe
improvements to the abstract idea, not to the applied technology. Final
Act. 9; Ans. 4. We agree.
Considered individually or as an ordered combination, the
independent claims recite no more than the abstract idea of delivering
advertising. See Spec. ,-J 2. Referring to independent claim 1, the recited
method includes: (1) gathering real-time, identifying information and
location and orientation data associated with a plurality of individuals
("receiving, from each of a plurality of mobile devices corresponding to a
plurality of individuals, respectively: real-time identifying information
associated with the mobile device; and real-time location and orientation
data associated with the mobile device ... "); (2) identifying particular
individuals (i.e., "nodes") and connections between them (i.e., "edges")
("using the identifying information to identify a plurality of individuals, the
plurality of identified individuals comprising a plurality of users of a
social-networking system, the social-networking system comprising a graph
that comprises a plurality of nodes and edges connecting the nodes, for each
identified individual at least one user node in the graph corresponding to a
user profile of the identified individual"); (3) determining the proximity of
each identified individual to viewing area of an advertisement based on
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where they are (i.e., "location") and where they are going (i.e., "orientation")
and the characteristics of the advertisement ("determining, for each of the
plurality of identified individuals, whether the individual is in a viewing area
of an electronic advertising ... "); (4) determining common attributes (i.e.,
based on the "concept nodes" and "edges")5 of the identified individuals
proximate to the advertisement ("accessing the graph to determine one or
more attributes common to two or more individuals of the plurality of the
identified individuals within the viewing area, the attributes being
determined by identifying at least two user nodes corresponding to at least
two individuals in the viewing area of the electronic display, respectively,
each of the identified user nodes being connected by one or more edges to
each of one or more concept nodes corresponding to the one or more
attributes, respectively, common to the at least two individuals in the
viewing area"); (5) selecting an advertisement to present to the proximate,
identified individuals based on the common attributes ("providing the
attributes for dynamic selection of an advertisement to present on the
electronic advertising display to the plurality of the identified individuals,
the selection based at least in part on one or more of the concept nodes
corresponding to one or more of the respective determined attributes
common to the two or more individuals in the viewing area of the electronic
display"); and ( 6) sending the advertisement to the display ("sending the
selected advertisement to the electronic advertising display for real-time
presentation to the plurality of the identified individuals"). See App. Br. 15-
5 See Spec. ,i 17 ("concept nodes each devoted or directed to a particular
concept" and "a plurality of edges 220 that each define or represent a
connection between a corresponding pair of nodes 210 in social graph 200").
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16 (Claims App.). This method does not differ substantively from known
methods (see Final Act. 6 ("The court in the Intellectual Ventures I case
explained that tailoring of content based on information about the user-such
as where the user lives or what time of day the user views the content-is an
abstract idea that is as old as providing different newspaper inserts for
different neighborhoods."); Spec. ,i 2 ("painted billboards")). We liken the
recited method to the situation in which a business owner sees two people
cross the street walking towards her store's front door. The two people (e.g.,
identified individuals) share the connection (e.g., an edge) that they are
drawn to the store ( e.g., a common attribute). The owner steps outside,
when both are close enough to her front door, and hands each of them a flyer
describing her upcoming sale. Similarly, the owner of a store selling men's
ties sees two men in suits walking on the sidewalk towards her store from
one direction and two men in blue jeans approaching from another direction.
The two pairs of men (e.g., a plurality of identified individuals) share the
connection (e.g., an edge) that they are passing the tie store (e.g., a common
attribute), also men more frequently wear ties ( e.g., a common attribute), but
the two men in suits share the more relevant connection ( e.g., an edge) that
they are dressed in clothing associated more closely with ties ( e.g., a
common attribute). The owner steps outside and hands flyers regarding her
upcoming tie sale to the men in suits. See Spec. ,i,i 17 ("This disclosure
contemplates a social network having any suitable number of nodes
representing any suitable entity, concept, or thing, and any suitable edges
connecting the nodes." ( emphases added)); 18 ("While this disclosure
describes specific examples of information expressly available to a social
network and methods of inferring information, this disclosure contemplates
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any suitable type of express information available to a social network and
any suitable method of inferring information relating to one or more nodes
or edges in a social graph." (emphases added)).
We are persuaded that analyzing common attributes of proximate
individuals and sending tailored advertising for display is a fundamental
economic principle or practice, e.g., identifying and contacting potential
customers; a commercial interaction, including advertising, marketing, or
sales activities; or managing relationships, e.g., between a seller and a
potential customer. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. at 52; see Final Act. 5, 9; Adv. Act. 2; Ans. 4.
Referring to independent claim 1, the method of identifying individuals with
common attributes and sending tailored advertisements for display to those
individuals may be achieved with or without the described devices and
systems. Final Act. 5, 9. Neither the generic devices used to perform the
particular steps nor the environment in which steps are intended to occur
root the recited methods ( claims 1 and 12), nor the corresponding systems
( claim 20), in computer technology or direct them to improvements in
computer technology, rather than the identified abstract idea. See Spec.
,-J,-J 15-1 7. Thus, we determine that the Examiner links the identified abstract
idea to abstract ideas previously identified by the courts and persuasively
argues that the pending claims are directed to certain methods of "organizing
human activity." Final Act. 9; see 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 52.
2. Step 2A - Prong Two
Appellant contends the recited "computing device of a social
networking system," "mobile devices," and "electronic display" play a
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significant part in the claimed methods, computer-readable media, and
systems and provide meaningful limitations to the pending claims. App.
Br. 10-11; Reply Br. 5. According to Appellant, "[t]he Federal Circuit has
asserted that such requirements impose a meaningful limit that ties the claim
to a machine, and thereby makes the claim patent eligible." Reply Br. 5.
The Examiner concludes:
The claimed "computing device of a social networking system"
"mobile devices" and "electronic display" do not play a
significant part or provide meaningful limitations. The
computing device is any generic computer capable of performing
the routine and conventional function of implementing an
algorithm and the part played by the computing device are
receiving data, processing data and sending data; [t]he mobile
device is any device capable of providing location, orientation
and velocity, which are routine and conventional functions
offered by almost every mobile telephone and the part played by
the mobile devise is providing the data and sending the data; The
display is any electronic display capable of receiving
advertisement and the part played by the display is presenting the
advertisement. In short, the claimed use of technology does not
"tie" claims to any particular technology.
Examiner respectfully asserts that the appellant has not shown
that a computer is integral to the inventive concept, which means
the computers are merely generic tools appended to various steps
that collect data, process data and transmit resulting data in an
environment where computers are routinely used for those
purposes, which means the appellant is not transforming the
computer to a special purpose machine nor improving the
performance of a computer or using a computer as anything more
than a data processor.
Ans. 6-7. We agree.
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The Specification explains that the recited components are generic. 6
See Spec. ,i,i 13-20, 41, 48, 54; see also id. ,i 24 ("Moreover, although this
disclosure describes and illustrates particular components carrying out
particular steps of the method of FIGURE 3, this disclosure contemplates
any suitable combination of any suitable components carrying out any
suitable steps of the method of FIGURE 3." (emphasis added)). Neither the
claims nor the Specification states that any of the described embodiments
necessarily invokes particular hardware or software or, as discussed above,
results in improvements in computer technology or functions. See Spec.
,i,i 13-20, 24, 41, 48, 55. Thus, the claims rely on generic or known
hardware and software techniques, and these do not provide meaningful
limitations beyond generally linking the use of the identified abstract idea to
a particular technological environment, i.e., social networks. See MPEP
§ 2106.05(h).
As noted above, Applicant contends that the problems addressed by
the pending claims "are problems arising out of online social networking,
which is intrinsically tied to the Internet. Thus, these claims are necessarily
rooted in computer technology .... Notably, these claim steps 'do not
merely recite the performance of some business practice known from the
pre-Internet world."' Reply Br. 3-4; see App. Br. 7 ("[C]laims that do not
'broadly and generically claim 'use of the Internet' to perform an abstract
6 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. at 55 n.25, 27-32.
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[idea],' but rather specify how interactions with the Internet are manipulated
to yield a desired result' are also patent eligible."); but see Spec. ,i 2 (The
electronic displays are substitutes for known means, i.e., painted
billboards.); Final Act. 6 (The claims achieve results similar to newspaper
inserts.; citing Intellectual Ventures I LLC, 792 F.3d. at 1369).
Nevertheless, the pending claims may include, but are not limited to, use of
the Internet. As the Specification explains:
In particular embodiments, network 110 is an intranet, an
extranet, a virtual private network (VPN), a local area network
(LAN), a wireless LAN (WLAN), a wide area network (WAN),
a metropolitan area network (MAN), a portion of the Internet, a
cellular technology-based network, a satellite communications
technology-based network, or another network 110 or a
combination of two or more such networks 110. This disclosure
contemplates any suitable network 110.
Spec. ,i 13 (emphasis added).
Appellants assert that the claims are directed to "[t]he concrete
problem [ ofJ how to provide relevant advertisements to individuals in real-
time in a public space to an electronic advertising display in their view area,
which is a device other than their own personal computing device." App.
Br. 8 ( emphasis added); Reply Br. 2. As discussed above, however,
Appellant's claimed methods, computer-readable media, and systems only
use the recited components to perform the abstract idea. That is, the
additional components "merely include[] instructions to implement an
abstract idea on a computer, or merely uses a computer as a tool to perform
an abstract idea." 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. at 55; see MPEP § 2016.05(±); see also Credit Acceptance
Corp. v. Westlake Services, 859 F.3d 1044 (Fed. Cir. 2017) (using a
computer as a tool to process an application for financing a purchase).
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Moreover, the claims only recite the intended purpose of "sending the
selected advertisement to the electronic advertising display for real-time
presentation" in an area where the identified individuals might view or be
able to view them. See, e.g., App. Br. 16 (Claims App.) (claim 1) (emphasis
added). Because claim 1 and the other pending claims only recite "sending
the selected advertisements to the electronic advertising display" (id.), it is
not clear from the claim language that the claims recite a practical
application solving the asserted concrete problem.
In view of Appellant's Specification, claims, and contentions and
consistent with the Examiner's determinations, we conclude the pending
claims do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.0S(a)-(c), (e)-(h). Thus, we conclude that the pending
claims do not integrate the judicial exception into a practical application.
3. Step 2B
Applying second step of the Alice/Mayo analysis, the Examiner
concludes:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the claims merely receive data and make
determinations then transmit targeted content to nearby users
without reciting technical improvements beyond the generic
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technical elements that provide data, implement the vanous
determining steps and display data.
Final Act. 6. We do not find where the Specification asserts that any of the
recited components, alone or in combination, are not generic. On the
contrary, the Specification makes clear that the components and techniques
recited in the pending claims are well-understood, routine, and conventional.
As noted above, the Specification makes clear that only generic components
performing known functions are used in Appellant's recited methods,
computer-readable media, and systems. See, e.g., Spec. ,-J,-J 13-20. Thus, the
Examiner concludes, "[w]hen viewed either individually, or as an ordered
combination, the additional limitations do not amount to a claim as a whole
that is significantly more than the abstract idea." Final Act. 8.
Appellant contends that:
Claims 1, 12, and 20 are directed to providing relevant
advertisements to individuals in real-time in a public space to an
electronic advertising display, and one of skill in the art would
understand the invention to provide at least improvements to
another technology or technical field or improvements to the
functioning of the computer itself. Furthermore, independent
Claims 1, 12, and 20 recites steps that, taken as a whole, relate to
"a computer-implemented method to transform data in a
particular manner by" at least by using location and orientation
data along with social graph information and determining one or
more attributes common to two or more individuals in a viewing
area of an electronic advertising display to dynamically select an
advertisement to present on the electronic advertising display and
sending the selected advertisement to the electronic advertising
display for real-time presentation.
App. Br. 12. We disagree.
As the Examiner finds, the claims do not recite improvements to
"another technology or technical field or improvements to the functioning of
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the computer itself." Ans. 6. There is no evidence that the claims change
the operation of any recited technology or technical field. See Spec. ,i,i 13-
20, 24, 41, 48, 55. Instead, the recited "computing device of a social
networking system," "mobile devices," and "electronic display" "are
invoked merely as tools to collect data and display advertising." Ans. 6; see
Final Act. 9 ("[T]he claims merely perform steps on a generic computer in a
customary manner (i.e. identify and determine) on data that is routinely
collected about devices and users, which means the claims do not apply the
abstract idea in a meaningful way nor do the claims improve technology in
anyway."). We agree with the Examiner.
Further, Appellant contends, like the claims found patent eligible in
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016):
a combination of receiving real-time location and orientation
data being gathered by one or more sensors, determining whether
a user is in a viewing area of an electronic advertising display,
using a social graph to determine one or more attributes common
to two or more individuals, and providing the attributes for
dynamic selection of an advertisement also provide an inventive
concept [ for the pending claims].
App. Br. 13; see Reply Br. 6. The Examiner asserts, however, that unlike
the specific technical solution provided in BASCOM's claims, the
combination in the pending claims "include nodes and social graphs linking
users, three pieces of location information about users and three pieces of
information about signage with the claimed technology merely providing the
information, processing the information, and displaying the results." Ans. 7.
Appellant does not show that the recited combinations of these few
components operate in any way unconventional, non-routine, or non-generic
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(Ans. 7-8). See Alice, 573 U.S. at 222 ("In holding that the process was
patent ineligible, we rejected the argument that 'implement[ing] a principle
in some specific fashion' will 'automatically fal[l] within the patentable
subject matter of§ 101."') (quoting Flook, 437 U.S. at 593).
On this record, we agree with the Examiner that the independent
claims 1, 12, and 20 are directed to a fundamental economic practice, which
is one of certain methods of organizing human activity identified in the
Memorandum and thus an abstract idea, and the claims do not recite
limitations that amount to significantly more than the abstract idea itself.
Therefore, we are not persuaded that the Examiner erred in determining that
the independent claims are patent ineligible, and we sustain the rejection of
those claims. Appellant does not argue the eligibility of the dependent
claims separately, and we find that the dependent claims fall with their base
claims. App. Br. 13; see Final Act. 2. Thus, we sustain the rejection of the
dependent claims, as well.
CONCLUSIONS
1. The Examiner did not err in rejecting claims 1, 3-8, 10, 12, 20-26, 28,
and 29 under 35 U.S.C. § 101, as directed to patent-ineligible subject
matter.
2. Claims 1, 3-8, 10, 12, 20-26, 28, and 29 are not patentable.
DECISION
We affirm the Examiner's rejections of claims 11, 3-8, 10, 12, 20-26,
28, and 29.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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