Ex Parte Gupta et al

Patent Trial and Appeal Board

Apr 25, 2018

13737492 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131737,492 01109/2013
33438 7590 04/27/2018
TERRILE, CANNATTI & CHAMBERS, LLP
P.O. BOX 203518
AUSTIN, TX 78720
FIRST NAMED INVENTOR
Munish Gupta
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-100181.01 2187
EXAMINER
UBER, NATHAN C
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
tmunoz@tcchlaw.com
heather@tcchlaw.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MUNISH GUPTA, RAJIV NARANG,
AKINTUNDE A. EHINDERO, JENNIFER W. BRUCE, and
AHMED TARIQ
Appeal2017-001655
Application 13/73 7 ,492
Technology Center 3600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1, 2, 4--8, 10-14, and 16-18, which
constitute all the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b). Claims 3, 9, and 15 were cancelled.
We affirm.
1 Appellants identify the real party in interest as Dell Products L.P. App.
Br. 1. Dell Products L.P. is the Applicant for the instant patent application.
See Bib. Data Sheet.
Appeal2017-001655
Application 13/737,492
CLAIMED SUBJECT MATTER
Appellants' invention relates a "system and method for analyzing
return on investment (ROI) for social commerce interactions." Spec. i-f 1.
Claim 1 is representative and reproduced below:
1. A computer-implemented method for analyzing return on
investment for social commerce interactions, comprising:
processing a set of user data associated with a set of social
media users to generate a first set of social commerce metrics,
the set of user data comprising a first set of social media
interaction data corresponding to a first set of social commerce
interactions with the set of social media users;
processing the set of user data and the first set of social
media interaction data to generate a second set of social
commerce interactions;
performing the second set of social commerce interactions
with the set of social media users to generate a second set of
social commerce interaction data;
processing the second set of social commerce interaction
data to generate a second set of social commerce metrics; and
processing the first and second sets of social commerce
metrics to generate a set of return on investment metrics
corresponding to the second set of social commerce interactions;
and wherein
the set of user data is processed to generate a social
presence map;
the first set of social media interaction data is processed to
generate a predictive model; and
the social presence map and the predictive model are
processed to generate the first set of social commerce metrics.
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Application 13/737,492
REJECTIONS 2
Claims 1, 2, 4--8, 10-14, and 16-18 stand rejected under 35 U.S.C.
§ 101, as being directed to ineligible subject matter. Final Act. 2-3. 3
Claims 1, 2, 4--8, 10-14, and 16-18 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Whitney (US 8,291,016 Bl; Oct. 16, 2012).
Final Act. 4--6.
THE§ 101 REJECTION
The Alice/Mayo Framework
The Patent Act defines patent-eligible subject matter broadly:
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. There is no dispute in this
Appeal that the pending claims are each directed to one of these categories.
In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 70 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank International, 134
S. Ct. 2347, 2354 (2014), the Supreme Court explained that§ 101 "contains
an important implicit exception" for laws of nature, natural phenomena, and
abstract ideas. SeeDiamondv.Diehr,450U.S. I75, 185(1981). InMayo
and Alice, the Court set forth a two-step analytical framework for evaluating
2 The rejections are under the provisions of 35 U.S.C. in effect before the
effective date of the Leahy-Smith America Invents Act of 2011 (AIA). See,
e.g., Final Act 2.
3 Claims 3, 9, and 15 are mistakenly included in the header for this rejection,
see Final Act. 2, but are indicated by Appellants as cancelled by amendment,
see Amendment 2, 4, 6 (Mar. 2, 2015). We find the Examiner's
typographical error to be harmless.
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patent-eligible subject matter: (1) "determine whether the claims at issue are
directed to" a patent-ineligible concept, such as an abstract idea; and, if so,
(2) "consider the elements of each claim both individually and 'as an
ordered combination' to determine whether the additional elements" add
enough to transform the "nature of the claim" into "significantly more" than
a patent-ineligible concept. Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 79); see Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Step one in the Mayo/Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Step two
involves the search for an "inventive concept." Alice, 134 S. Ct. at 2355;
Elec. Power Grp., 830 F.3d at 1353. For an inventive concept, "more is
required than 'well-understood, routine, conventional activity already
engaged in"' by the relevant community. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566
U.S. at 79--80).
Step One of the Alice Framework
Turning to step one of the Alice framework, we are unpersuaded that
the Examiner erred in concluding the claims are directed to an abstract idea.
Final Act. 2; Ans. 4. Appellants' only arguments with respect to step one
are that "the claims of the present application are unlike that of any of the
examples provided by the Court" in Alice, including "fundamental economic
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practices, principles in the abstract that are a fundamental truth, an original
cause or a motive, and mathematical relationships or formulas." App. Br. 4.
Appellants' contention concerning an unfounded requirement that
only the abstract ideas mentioned in Alice are a basis to supporting a § 101
rejection does not persuade us of Examiner error. See Alice, 134 S. Ct. at
2357 (recognizing that "we need not labor to delimit the precise contours of
the 'abstract ideas' category in this case"); see also DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (finding "identifying
the precise nature of [an] abstract idea is not ... straightforward"); Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (finding
"[a Jn abstract idea can generally be described at different levels of
abstraction"); RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327
(Fed. Cir. 2017) (finding "[a]dding one abstract idea (math) to another
abstract idea (encoding and decoding) does not render the claim non-
abstract").
The Examiner finds the claims are "directed to the abstract idea of
analyzing [ROI] for social commerce interactions; which is considered a
fundamental economic practice." Final Act. 2. We agree. Taking
independent claim 1 as representative of the claims on appeal, the claimed
method recites, in essence, seven distinct steps-(a) generate a social
presence map from user data including a first set of social media interaction
data; (b) generate a predictive model from the first set of social media
interaction data; ( c) generate a first set of social commerce metrics from the
social presence map and predictive model; ( d) generate a second set of social
commerce interactions from the user data and first set of social media
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interaction data; ( e) generate a second set of social commerce interaction
data from social media users and the second set of social commerce
interactions; (t) generate a second set of commerce metrics from the second
set of social commerce interaction data; and (g) generate ROI metrics from
the first set of social commerce metrics and second set of social commerce
interaction data. Thus, consistent with the preamble of claim 1 that recites a
"method for analyzing [ROI] for social commerce interactions," the basic
character of the claimed subject matter, as a whole, is focused on generating
ROI metrics from social media users.
We find that generating ROI metrics from social media users is a
fundamental economic practice. Appellants provide no persuasive argument
or evidence showing the claims are not directed to a fundamental economic
practice. And because fundamental economic practices are abstract ideas,
we agree with the Examiner that the claims are directed to an abstract idea.
Step Two of the Alice Framework
Because we find that the claims are "directed to an abstract idea," we
tum to step two of the Alice framework to determine whether the limitations,
when considered both "individually and 'as an ordered combination'"
contain an "inventive concept" sufficient to transform the claimed "abstract
idea" into a patent-eligible application. Alice, 134 S. Ct. at 2355-58.
We find unavailing both Appellants' comparison of the claims to
those of DDR Holdings and Appellants' argument that "the claims of the
present application are necessarily rooted in computer technology rather than
simply implement old ideas on a computer." App. Br. 5. In DDR Holdings,
the claims specified "how interactions with the Internet are manipulated to
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yield a desired result-a result that overrides the routine and conventional
sequence of events ordinarily triggered by the click of a hyperlink." DDR
Holdings, 773 F.3d at 1258. The court determined that:
these claims stand apart because they do not merely recite the
performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks.
Id. at 1257. Here, Appellants have not identified a purported "problem
specifically arising in the realm of computer networks" solved by the
invention. Nor have Appellants pointed to any claim limitation that
"overrides the routine and conventional sequence of events." Rather,
Appellants' claims merely apply a conventional economic practice of using
metrics to determine a return on investment with respect to a particular
investment-namely social commerce interactions.
We also find unavailing Appellants' comparison of the claims to those
of Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1348 (Fed. Cir. 2016) and Appellants' argument that claim 1 's
inventive concept is a technological improvement achieved through a
particular ordered combination of elements. Reply Br. 3. In Bascom, the
Federal Circuit found "the limitations of the claims, taken individually,
recite generic computer, network and Internet components, none of which is
inventive by itself," but "an inventive concept can be found in the non-
conventional and non-generic arrangement of known, conventional pieces."
Bascom, 827 F.3d at 1349--50. Claim 1 recites generic components, and
Appellants do not provide a persuasive explanation of how or why the
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recited ordered combination of these elements amounts to "significantly
more," rendering the claimed abstract idea patent-eligible subject matter.
Thus, "the claims at issue amount to 'nothing significantly more' than
an instruction to apply the abstract idea ... using some unspecified, generic
computer." Alice, 134 S. Ct. at 2360 (citing Mayo, 566 U.S. at 79--80). For
the above reasons, Appellants have not persuaded us of error in the rejection
of the claims under 35 U.S.C. § 101.
THE ANTICIPATION REJECTION
The Examiner finds Whitney discloses every recited element of
independent claim 1 including, among other things, processing a social
presence map and a predictive model to generate a first set of social
commerce metrics. Final Act. 5 (citing Whitney 2:39--44, 8:15-24, 9:38-51,
claim 4 ). Appellants assert Whitney discloses identifying visitors to a
website according to a visitor engagement spectrum, but argue Whitney does
not disclose generating a social presence map, much less processing the
generated social presence map with a predictive model to generate a first set
of social commerce metrics. App. Br. 6. We are not persuaded of Examiner
error.
As the Examiner explains, Whitney's fan engagement spectrum is
processed with a performance prediction of a client's campaign to
recommend modifications or courses of action. Ans. 5. We find the
Examiner's explanation to be reasonable. Whitney generates actual
performance scores for comparison against baseline parameters by scoring
visitors using scoring metrics. Whitney 8:10-14, Fig. 3 (step 108).
Whitney's visitors are identified and labeled based on a fan engagement
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spectrum. Id. at 8: 15--45, Fig. 4. Whitney's process then aggregates
valuations based on predicted performance data. Id. at 9:38--46, Fig. 3
(step 110). Whitney's process then compares the predicted performance
data with other parameters to recommend modifications to increase
parameter performance. Id. at 10:22-37, Fig. 3 (step 122). Thus, Whitney
discloses processing (1) scoring metrics based on a fan engagement
spectrum (the claimed "social presence map") and (2) aggregated valuations
based on predicted performance data (the claimed "predictive model") to
generate recommended modifications to increase parameter performance
(the claimed "first set of social commerce metrics"). Therefore, the
Examiner's finding in this regard have a rational basis that has not been
persuasively rebutted.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 1under35 U.S.C. § 102(e), or claims 2, 4--8, 10-14, and 16-18,
which were not argued separately with particularity.
CONCLUSION
On this record, the Examiner did not err in rejecting claims 1, 2, 4--8,
10-14, and 16-18 under§§ 101 and 102(e).
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DECISION
For the above reasons, we affirm the Examiner's decision to reject
claims 1, 2, 4--8, 10-14, and 16-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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