Ex Parte Guminy et al

Patent Trial and Appeal Board

Mar 19, 2018

13545627 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/545,627 07/10/2012
75532 7590 03/21/2018
LEE LAW, PLLC
IBM SVLIP
P.O. BOX 189
PITTSBORO, NC 27312
FIRST NAMED INVENTOR
Scott M. Guminy
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.
CA920120013US 1 1049
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
docketing@leelawpllc.com
docketing_archive@leelawpllc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT M. GUMINY and LEHO NIGUL
Appeal2016-003795 1
Application 13/545,6272
Technology Center 3600
Before ANTON W. PETTING, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Specification ("Spec.," filed Jul. 10,
2012), Appeal Brief ("App. Br.," filed Aug. 8, 2015), Reply Brief ("Reply
Br.," filed March 2, 2016), the Examiner's Answer ("Ans.," mailed Jan. 4,
2016) and the Final Office Action ("Final Act.," mailed Mar. 11, 2015).
2 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 3.
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Application 13/545,627
CLAIMED INVENTION
Appellants' claimed invention "relates to advertising and marketing
incentive generation" and, more particularly, to "multi-channel, self-
leaming, social influence-based incentive generation." Spec. i-f 1.
Claims 1, 8, and 14 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
detecting, via a processor, a social networking action by a
user within a social networking website that positively references
a marketplace offering of an entity; and
determining, in response to detecting the social
networking action by the user, a social networking influence of
the user based upon entity interactions by social network
connections of the user with the entity via a plurality of entity
access channels of the entity.
(App. Br., Claims Appendix, 69).
REJECTIONS
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 2--4.
Claims 1-5, 8-11, and 14--18 are rejected under 35 U.S.C. § 102(b) as
anticipated by Atazky et al. (US 2013/0304585 Al, pub. Nov. 14, 2013;
hereinafter "Atazky"). Final Act. 4--11.
Claims 6, 7, 12, 13, 19, and 20 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Atazky and Okerlund (US 2013/0080239, pub. Jan. 10,
2012). Final Act. 11-16.
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ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "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., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Tex., LLC v. DIIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(citations omitted). Here, claim 1 recites a method having two steps:
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(1) detecting a social networking action by a user that positively references a
marketplace offering of an entity; and (2) determining a social networking
influence of the user based upon entity interactions by social network
connections of the user with the entity. Further, the Specification describes
that the invention "relates to advertising and marketing incentive
generation." Spec. i-f 1. Specifically, the Specification provides that
conception of the present subject matter resulted
from recognition of certain limitations associated
with advertising and advertising incentives. For
example, it was observed that, while advertisers
desire to increase sales, brand recognition, and
market share, previous advertisement approaches
are limited with respect to the information provided
to advertisers and problematic because different
consumers often respond differently to the same
incentives. Further it was observed that advertisers
are limited with respect to learning how different
consumers respond to incentives that are provided.
Additionally, it was observed that while people
often "tweet" about experiences with retailers and
other organizations (e.g., in-store, online shopping
experiences, call center experiences, etc.) and share
this information on social media websites, there is
no way within the previous/existing systems to
correlate influence with respect to purchasing
decisions for different types of users (e.g.,
celebrities with lots of followers versus users with
small circles of friends) among their
friends/followers.
Spec. i-f 29. To address these observed shortcomings, Appellants' invention
"improves advertising and marketing by providing for influence-based
incentive generation that is performed in response to programmatic
determinations of user influence within social media circles and social
networks." Id. Users are further incentivized to influence friends based
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upon their determined influence. Id. In this way, the invention "enables
businesses to offer the most desired and comprehensive incentives to
different segments of their customers based upon higher determined
influence," resulting in "improved advertising and marketing." Id.
Therefore, it is clear from a fair reading of the claims in light of the
Specification that the focus of the claimed advance over the prior art is an
improvement to advertising, which is achieved by detecting and
determining. As such, we see no legal difficulty with the Examiner's
determination that the claims as a whole are directed to targeted marketing,
which is a fundamental economic concept, i.e., an abstract idea. Ans. 6. See
Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014),
ajfd, 622 F. App'x 915 (Fed. Cir. 2015) (quoting Tuxis Techs., LLC v.
Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL 4382446, at *5 (D. Del.
Sept. 3, 2014) (targeted advertising "has been practiced as long as markets
have been in operation.").
Appellants argue that the claims are directed to "determining a social
networking influence of the user based upon entity interactions by social
network connections with the entity via a plurality of entity access channels
of the entity" in response to detecting a social networking action by the user.
Reply Br. 12. Therefore, Appellants contend that the claimed invention "at
its core is a complex Internet-centric detection." Id.; see also App. Br. 62.
Specifically, Appellants charge that prior to the claimed invention, different
entity access channels could not be collectively used to determine the
influence of a social network user within a separate and distinct social
network. Reply Br. 12. Appellants assert that the claimed solution
integrates disparate technologies to form a new technological capability that
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did not previously exist, which is not abstract, and is significantly more than
the alleged abstractions. Id. 12-13 (citing Spec., Fig. 1); see also id. at 14
(asserting that the claimed "technology [] operates across disparate
technological domains"), 15 ("It is the technological determination of the
social networking influence of the user across the multiple different entity
access channels that represents the core of the claimed technology, and is
what the claims are directed to as a whole"); App. Br. 62---63.
Yet, Appellants do not identify, and we do not find, any support in the
Specification indicating that the invention is directed to an improvement that
enables technology to operate across disparate technological domains. Nor
do Appellants indicate how the claimed steps of detecting and determining
achieve such integration. For example, Appellants do not point us to, and
we do not find, anything in the claims or Specification to indicate that any
specialized computer hardware, inventive computer components, or
programming is required.
Instead, the Specification broadly describes that a user can interact
with an entity via different access channels, such as a web server, call center,
and kiosk. Spec. i-fi-1 31, 64, Fig. 1. Without providing any implementation
details, the Specification describes that the invention monitors these
channels to detect interactions by social network connections of the user
(e.g., friends and followers) with the entity. Id. i1 64. The Specification
further describes that the process increments an entity interaction counter
after determining that the detected interaction was performed by a social
network connection of the user (id. i1 68), and determines a quantified
influence rating based on the number of entity interactions formed by friends
and followers of the user (id. i170). In other words, the claims recite desired
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results (i.e., detecting and determining) without meaningfully specifying
how the claimed method achieves that result. See Finjan, Inc. v. Blue Coat
Systems, Inc., 879 F.3d 1299, 1305 ("a result, even an innovative result, is
not itself patentable") (citations omitted).
Appellants argue that the "claimed subject matter is [a] concrete
technological innovation that is claimed in a technological manner." Reply
Br. 13. Specifically, Appellants assert that the claims recite detecting a
social networking action by a user with a first platform, and then
determining the social networking influence of the user "based upon the
entity interactions by social network connections of the user with the entity
via the disparate technologies of the different plurality of entity access
channels of the entity." Id. at 13-14; see also Appeal Br. 65-66. Yet,
limiting the use of an abstract idea to a particular technological environment
does not impart patent eligibility. See Alice Corp. Pty. Ltd., 134 S. Ct. at
2358.
We are not persuaded by Appellants' argument regarding preemption.
App. Br. 63. There is no dispute that the Supreme Court has described "the
concern that drives [the exclusion of abstract ideas from patent eligible
subject matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354.
But, characterizing pre-emption as a driving concern for patent eligibility is
not the same as characterizing pre-emption as the sole test for patent
eligibility. "The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability" and "[ fJor
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). "[P]reemption may
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signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility." Id.
We are not persuaded by Appellants' argument that the claims are not
abstract because they are directed to novel and non-obvious technological
improvements. App. Br. 13, 65. A novel and non-obvious claim directed to
a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S.
at 90. See also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ("The
'novelty' of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the§ 101 categories of possibly patentable subject matter.").
Turning to the second step of the analysis, we are not persuaded that
the Examiner erred in determining that there is no inventive concept that
would support patent eligibility. See Ans. 7. Here, the only elements of the
claim that are not part of the abstract idea are generic computer elements,
e.g., a processor, a website, access channels. Instructing a practitioner to
apply an abstract idea using generic computer elements to perform generic
computer functions does not make an abstract idea patent-eligible. See
Alice, 134 S. Ct. at 2359---60.
Appellants' claimed invention is not directed to the solution of a
"technological problem," Alice, 134 S. Ct. at 2358, nor is it directed to an
improvement in computer or network functionality. Instead, the claims
recite an improvement to a process that itself is an abstract idea (i.e.,
advertising) via the steps of detecting and determining, using technology as
a tool. The claims, thus, amount to nothing significantly more than
instructions for detecting a social networking action by a user and
determining a social networking influence based upon entity interactions by
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social network connections of the user. But the steps of detecting and
determining are well-understood, conventional computer functions. See,
e.g., Alice, 134 S. Ct. at 2359 ("[U]se of a computer to obtain data, adjust
account balances, and issue automated instructions; all of these computer
functions are 'well-understood, routine, conventional activit[ies]' previously
known to the industry.") (quoting Mayo, 132 S. Ct. at 1294); Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) ("The concept of data collection, recognition,
and storage is undisputedly well-known. Indeed, humans have always
performed these functions.").
To the extent Appellants maintain that the claimed invention amounts
to "significantly more" than an abstract idea because the claims are allegedly
novel and/or non-obvious in view of the prior art (see App. Br. 63),
Appellants misapprehend the controlling precedent. Although the second
step in the Mayol Alice framework is termed a search for an "inventive
concept," the analysis is not an evaluation of novelty or non-obviousness,
but rather, a search for "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., 134 S. Ct. at
2355 (citation omitted).
We have carefully considered the Appellants' arguments (see Appeal
Br. 59---66; Reply Br. 12-18), but we are not persuaded that the Examiner
erred in rejecting claims 1-20 under 35 U.S.C. § 101. Therefore, we sustain
the Examiner's rejection.
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Anticipation
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 1, 8, and 14 under 35 U.S.C. § 102(b) because
Atazky does not disclose "detecting a social networking action by a user
within a social networking website that positively references a marketplace
offering of an entity," and "determining ... a social networking influence of
the user based upon entity interactions by social network connections of the
user with the entity via a plurality of entity access channels of the entity," as
recited in claim 1 and similarly recited in claims 8 and 14. App. Br. 26-34.
The Examiner relies on paragraph 15 of Atazky for disclosing the claimed
detecting, and paragraphs 13-15, 65, and 106-110 for disclosing the claimed
determining. Final Act. 4; Ans. 2-3. We have reviewed the cited portions
of Atazky. Yet, we find nothing that teaches the argued limitations.
By way of background, Atazky relates to marketing, advertising, and
offering incentives over a social network implemented over the Internet.
Atazky i-f 3. An object of Atazky is to "identify key members of a social
network" and provide these members "with incentives to review and then
spread by word-of-mouth the product or service in question. Id. i-f 13. A
marketer or advertiser selects a target audience during a marketing or
advertising campaign. Id. i-f 15. Interpersonal relationships can be
"generated by data mining past interactions, including extraneous
collaborative systems, such as email databases." Id. i-f 106. Once users are
defined within the context of a social network and selected, the method of
Atazky stores information relevant to the users, and uses the information to
deliver the messages to the users. Id. i-f 15. In this way, an advertiser
delivers relatively small scale, but highly focused, advertising to key people
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in targeted social networks, thereby providing free dissemination through
social interaction. Id. i-fi-164--65. The message "benefit[s] from the level of
trust in which members of the social network hold each other." Id. i165.
The Examiner finds that Atazky's disclosure of selecting targeted
users of a social network, and sending messages to the targeted message to
the selected user, teaches the claimed detecting. Final Act. 4. We agree that
Atazky defines users within the context of a social media, and delivers
messages to select ones of the defined users. See Atazky i-f 15. But instead
of detecting a social networking action by a user that positively references a
marketplace offering of an entity, Atazky describes defining users in a social
network, selecting defined users, and delivering an advertisement to the
selected user. The Examiner does not identify, and we do not find, where
Atazky teaches, that the user is selected by detecting a social networking
action by a user that positively references a marketplace offering of an
entity, such as "liking" a marketplace offering or commenting on the
marketplace offering. See Spec. i-f 17.
In the Answer, the Examiner finds that paragraph 15 of Atazky
describes "collecting information about a user such as clicks or likes and
then providing an advertisement based on utilizing information based on
user's actions." Ans. 2. However, as correctly pointed out by Appellants
(see Reply Br. 5), nothing in paragraph 15 of Atazky teaches collecting
clicks or likes from a user. Instead, the cited paragraph describes defining
users and selecting defined users to target. Moreover, even if the record
adequately supported the Examiner's finding that Atazky teaches collecting
clicks or likes, the Examiner acknowledges that this information, in tum, is
used to provide an advertisement to the user, not to positively reference an
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existing marketplace offering. Stated differently, the Examiner does not
account for how the alleged clicks and likes "positively reference[] a
marketplace offering of an entity," as required by claim 1, and similarly
required by claims 8 and 14.
The Examiner ostensibly finds that Atazky' s disclosure of an message
(e.g., advertisement) sent to the selected user that benefits from a level of
trust that members of the social network share with the user teaches the
claimed step of determining a social networking influence of the user. See
Ans. 2-3 (quoting Atazky i-f 65). But we find nothing in this portion, or any
other portion of Atazky cited by the Examiner (see Final Act. 4; see also
Ans. 2-3), that teaches determining the influence of the user based upon
entity interactions by "social network connections of the user" "with the
entity," much less by connections with the entity "via a plurality of entity
access channels of the entity," as recited in claim 1, and similarly recited in
claims 8 and 14. Access channels include, for example, websites, call
centers, kiosks, and point of sale terminals. See Spec. i-f 13.
Therefore, we do not sustain the Examiner's rejection of independent
claims 1, 8, and 14, and claims 2-5, 9-11, and 15-18, which depend
therefrom, under 35 U.S.C. § 102(b).
Obviousness
The Examiner's rejection of dependent claims 6, 7, 12, 13, 19, and 20
under 35 U.S.C. § 103(a) does not cure the deficiencies in the Examiner's
rejection of the independent claims under 35 U.S.C. § 102(b). Therefore, we
do not sustain the Examiner's rejections of claims 6, 7, 12, 13, and 19 under
35 U.S.C. § 103(a) for the same reasons set forth above with respect to the
independent claims.
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DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1-5, 8-11, and 14--18 under
35 U.S.C. § 102(b) is reversed.
TheExaminer'srejectionofclaims 6, 7, 12, 13, 19, and20under
35 U.S.C. § 103(a) is reversed.
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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