Ex Parte Hu et al

Patent Trial and Appeal Board

Nov 19, 2018

13181344 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/181,344
87851 7590
Facebook/Fenwick
Silicon Valley Center
07/12/2011
801 California Street
Mountain View, CA 94041
11/21/2018
FIRST NAMED INVENTOR
Bo Hu
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
26295-18355 4200
EXAMINER
MUNSON, PATRICIA H
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BO HU, KELLY WINTERS,
and EMILY CLARK WHITE 1
Appeal2017-009676
Application 13/181,344
Technology Center 3600
Before ROBERT E. NAPPI, JAMES W. DEJMEK, and
STEVEN M. AMUNDSON Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 6, 11 through 14, 21 through 23, 26, 28 through 30,
and 32. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, Facebook is the real party in interest. App.
Br. 2.
Appeal2017-009676
Application 13/181,344
INVENTION
The invention is a social network that allows deal providers to provide
social deals that require participation by users connected to the social
networking system. Abstract. Claim 1 is illustrative of the invention and is
reproduced below.
1. A computer implemented method comprising:
storing information for a deal, wherein the deal
comprises an offer that can be accepted by a user
alone; and
for a particular user of a social networking system:
observing interactions of the particular user with
the social networking system, the
interactions associated with deals,
determining, by a computer, a likelihood of
participation of the particular user in one or
more future social deals based on
participation of the particular user in past
social deals, a social deal comprising an
offer that can be accepted by the particular
user only with one or more other users
connected to the particular user in the social
networking system, and
converting, by the computer, the deal to a social
deal based on the likelihood of the particular
user participating in one or more future
social deals; and
identifying a set of connections of the user as potential
participants of the social deal based on a likelihood
of participation in the social deal of the
connections of the user, the likelihood of
participation determined based on past interactions
of the connections with the social networking
system;
determining a criteria for activation of the social deal
based on the identified set of connections; and
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Application 13/181,344
sending information describing the criteria for activation
of the social deal to the user.
EXAMINER'S REJECTIONS 2
The Examiner has rejected claims 1, 6, 11 through 14, 21 through 23,
26, 28 through 30, and 32 under 35 U.S.C. § 101 for being directed to
patent-ineligible subject matter. Answer 2.
The Examiner has rejected claims 1, 6, 11 through 14, 21 through 23,
26, 28 through 30, and 32 under 35 U.S.C. § 103 as being unpatentable over
Kargman et al. (US 2008/0082420 Al; pub. Apr. 3, 2008, hereinafter
"Kargman") and Higgins et al. (US 2010/0332304; pub. Dec. 30, 2010,
hereinafter "Higgins"). Answer 2.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
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.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of
nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 134 S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v.
2 Throughout this Decision we refer to the Appeal Brief filed July 20, 2016
("App. Br."); the Reply Brief filed July 5, 2017 ("Reply Br."); Final Office
Action mailed January 29, 2016 ("Final Act."); and the Examiner's Answer
mailed May 5, 2017 ("Ans.").
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Application 13/181,344
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). The Supreme Court sets
forth a two-part "framework for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo, 566 U.S. at 76-
77]. If so, we then ask, "[what] else is there in the claims
before us?" Id., at [77-78]. To answer that question, we
consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. Id., at [78-79]. We have described step
two of this analysis as a search for an "'inventive concept"'-
i. e., 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." Id., at [71-
73].
Id. at 2355.
Although an abstract idea itself is patent ineligible, an application of
the abstract idea may be patent eligible. Alice, 134 S. Ct. at 2355. Thus, we
must consider "the elements of each claim both individually and 'as an
ordered combination' to determine whether the additional elements
'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 78-79). The claim must contain elements or a
combination of elements that are "sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ abstract idea]
itself." Id. (quoting Mayo, 566 U.S. at 72-73). The Federal Circuit has
explained that, in determining whether claims are patent eligible under
section 101, "the decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can be seen-
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Application 13/181,344
what prior cases were about, and which way they were decided." Amdocs
(Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
The Federal Circuit also noted in that decision that "[E]xaminers are to
continue to determine if the claim recites (i.e., sets forth or describes) a
concept that is similar to concepts previously found abstract by the courts."
Id. at 1294 n.2.
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have persuaded us of error in the
Examiner's rejection of claims 6, 11, 23, 28, and 32 under 35 U.S.C. § 103.
However, Appellants' arguments have not persuaded us of error in the
Examiner's rejection of claims 1, 12 through 14, 21, 22, 26, and 28 through
30 under 35 U.S.C. § 103 or the Examiner's rejection of claims 1, 6, 11
through 14, 21 through 23, 26, 28 through 30, and 32 under 35 U.S.C. § 101.
Re} ection under 3 5 US. C. § 101
Appellants argue on pages 5 and 6 of the Appeal Brief and pages 2
through 6 of the Reply Brief that the Examiner's rejection of claim 1 under
35 U.S.C. § 101 is in error as representative claim 1 does not recite an
abstract idea as the Examiner concludes. Appellants argue "the scope of the
claims is not 'targeting advertising."' App. Br. 6. "The claimed invention
concerns a method for converting a deal to a social deal." Id. Further, the
claimed system determines criteria for activation of the social deal and
therefore does not preempt the concept of targeted advertisement. Id.
The Examiner has provided a detailed and comprehensive response to
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Appellants' arguments on pages 2 and 3 of the Answer. The Examiner
provides a detailed response comparing the claims at issue to claims found
to be abstract by the courts. Answer 3 ( citing SmartGene Inc. v. Adv. Bio.
Labs. SA, 555 F. App'x 950 (Fed. Cir. 2014) (non-precedential); Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014); Cyberfone Sys., LLC v. CNN Interactive Grp., 558 F. App'x 988
(Fed. Cir. 2014); Alice; Bilski v. Kappas, 130 S. Ct. 3218 (2010); buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014); and Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
We concur with the Examiner. As Appellants argue, the "claimed
invention concerns a method for converting a deal to a social deal." App.
Br. 6. Appellants' Specification identifies that a deal is something a
provider of services or products offers to potential or current customers to
entice them to make purchases. Specification para. 3. Thus, a deal is like an
advertisement or an offer in that it entices a purchase of a service or good,
and we concur with the Examiner that such an enticement is a fundamental
economic practice. Such a deal is a precursor to a purchase, a contractual
relationship, (a fundamental economic transaction). In buySAFE, our
reviewing court concluded claims directed to the creation of a contractual
relationship were directed to an abstract idea. buySAFE, 765 F.3d 1350,
1353-54.
Further, the remaining steps of observing interactions and determining
the likelihood of participating in the deal, converting the deal, and
identifying connection are merely steps of collecting and manipulating data.
Our reviewing court has concluded that abstract ideas include the concepts
of "collecting, displaying, and manipulating data." Intellectual Ventures I
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LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). See
also Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
776 F.3d 1343, 1347 (Fed. Cir. 2014); and Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d
1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another
abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) ( determining the pending claims were directed to a combination of
abstract ideas).
Although, as Appellants argue on pages 3 through 5 of the Reply
Brief, the data collected in representative claim 1 is specific to the users of
the social network, and different from the data discussed in the cases cited
by the Examiner, that does not make the claim less abstract. Our reviewing
court has said "we have treated collecting information, including when
limited to particular content (which does not change its character as
information), as within the realm of abstract ideas." Elec. Power, 830 F.3d
at 1353 (holding that claims directed to a process of gathering and analyzing
information of a specific content are directed to an abstract idea).
Accordingly, Appellants' arguments have not persuaded us the Examiner
erred in concluding claim 1 is directed to an abstract idea.
Appellants argue on pages 7 through 10 of the Appeal Brief and pages
6 and 7 of the Reply Brief that the Examiner's rejection of claim 1 under 35
U.S.C. § 101 is in error as representative claim 1 recites additional elements
that amount to significantly more than the abstract idea. Appellants argue
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that the claims are similar to the claims at issue in DDR Holdings, as they
solve a problem that does not exist in a traditional business analog because
they address a problem of a social networking system. App. Br. 7-8.
The Examiner provides a comprehensive response to Appellants'
arguments on pages 3 through 5 of the Answer. The Examiner finds the
claims merely use generic computer implementation and that the remainder
of the claimed features are directed to a fundamental economic principle.
Answer 3-5.
We concur with the Examiner. Claim 1 recites a computer
implemented method, which includes a step of determining, by a computer,
a likelihood of participation by a user. Appellants' Specification identifies
that the invention may be general purpose computer. Specification para. 87.
Further, as discussed infra with respect to the obviousness rejection the use
of a computer when making offers of social deals is known in the art. Thus,
we concur that the recitation of a computer is just using generic computers.
Further, Appellants' argument that the claims are similar to those at issue in
DDR is not persuasive because, unlike DDR, the claims do not overcome a
problem specifically arising in the realm of computer networks; rather, the
recitation of the social networking system is merely a source of information,
which as discussed above does not make the claimed invention less abstract.
Accordingly, Appellants' arguments have not persuaded us the Examiner
erred in concluding the limitations of claim 1 are such that the claim does
not amount to significantly more an abstract idea. Thus, we sustain the
Examiner's rejection of claims 1, 6, 11 through 14, 21 through 23, 26, 28
through 30, and 32 under 35 U.S.C. § 101.
Rejection under 35 USC§ 103
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Claims 1, 12 through 14, 21, 22, 26, and 28 through 30
Appellants' arguments directed to the obviousness rejection of
independent claim 1 present us with the issue did the Examiner err in finding
the combination of Kargman and Higgins teaches or suggests the claimed
converting by a computer a deal to a social deal? Specifically, Appellants'
arguments are directed to the teachings of Kargman and assert that the
teachings do not disclose converting a deal, rather it "simply discloses two
separate types of purchases ... by himself or as a group." App. Br. 12.
Appellants additionally state the teaching of Kargman cited by the
"Examiner appears to map a first person who makes a purchase in a buying
group to being a single deal" and "the first person to buy in a buying group
is the first person to buy in the group deal and not a single deal." Reply Br.
8-9.
The Examiner responds to these arguments finding that Kargman
teaches several embodiments where a deal is converted to a group buying
opportunity. Answer 5---6. Specifically, the Examiner cites to an example in
in paragraph 22 where a person can buy a pizza by themselves or the person
can buy in a group. If the person wants to be part of a group, the person
notifies others of the group purchase and they get the group rate if they make
a purchase. Answer 5---6.
We concur with the Examiner. It appears that the Examiner is
equating the user purchasing alone as the claimed "deal" and the "group
purchase" is the claimed social deal. Appellants' distinction of the group
deal with first person buying in a group being different from a single deal is
not borne out by the claim. Appellants' claims merely identify the deal as
being an offer that a person can accept alone. Clearly in the Examiner's
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example, the person buying the pizza alone is such a deal. Accordingly, we
are not persuaded of error by Appellants' arguments directed to claim 1.
Appellants have not presented separate arguments directed to claims 12
through 14, 21, 22, 26, and 28 through 30 similarly rejected. Accordingly,
we sustain the Examiner's rejection of claims 1, 12 through 14, 21, 22, 26,
and 28 through 30.
Claim 6
Appellants present separate arguments with respect to claim 6,
asserting the combination of Kargman and Higgins does not teach that the
step of determining the likelihood of participation comprises checking
whether the user has more than a threshold number of connections. App.
Br. 14--15; see also Reply Br. 9--10.
In response to Appellants' arguments, the Examiner cites to Kargman
paragraphs 38 and 39, stating:
[in] this passage, Kargman discloses that the buying group is
made up of a number of others who made similar purchases or
intend to make similar purchases as part of a group and one of
the buying group members, Sally, is likely to participate when
the "buying group is large enough such that she could purchase
the DVD for $9.00[.]" Here the threshold numbers are "a
number of others who made similar purchases or intend to
make similar purchases" and a "group is large enough[.]"
Answer 6. Thus, the Examiner concludes Kargman teaches the disputed
limitation.
We disagree with the Examiner's finding. As argued by Appellants,
on page 9 of the Reply Brief, the threshold discussed in this passage of
Kargman is merely part of a reminder of the number of people who need to
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join the group and not a threshold number of connections of the user to make
the social deal. Accordingly, we do not sustain the Examiner's rejection of
claim 6.
Claim 11.
Appellants present separate arguments with respect to claim 11,
asserting the combination of Kargman and Higgins does not teach
determining whether to convert a deal to a social deal based upon a category
associated with the deal received from the provider. App. Br. 14, 15; see
also Reply Br. 10.
The Examiner in response to Appellants' arguments states:
Kargman in at least [0031, 0039, 0041--43] discloses
determining whether to convert the deal to a social deal based
on a category associated with the deal received from the
provider such as deal for a restaurant. In the example of [0041]
the people are all interested in Pizza deals at a particular
restaurant and not a competitor.
Answer 7. Thus, the Examiner concludes Kargman teaches the disputed
limitation.
We disagree with the Examiner as we do not find that the Examiner
has adequately shown that the people interested in Pizza are a category that
is used to determine to convert the deal to a social deal. The teaching of
Kargman in paragraph 41 discusses changing the group purchase incentives
if people are purchasing at a competitor. Even if the group of people
interested in a particular restaurant were considered a category, this category
is not used to determine whether to change a deal to a social deal, rather it is
just used to adjust the social deal. Accordingly, we do not sustain the
Examiner's rejection of claim 11.
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Claim 23.
Appellants present separate arguments with respect to claim 23,
asserting the combination of Kargman and Higgins does not teach
determining whether to convert a deal to a social deal based upon a
determination of whether the particular user participated in more than a
threshold number of social deals in the past. App. Br. 14, 15; see also Reply
Br. 10.
The Examiner in response to Appellants' arguments states:
Kargman in at least [0031--48] discloses determining if the user
participated in deals in the past. In one example, Kargman in at
least [0038-39] discloses that the buying group is made up of a
number of others who made similar purchases or intend to
make similar purchases as part of a group. Here Kargman has
determined whether users have participated in a deal in the past.
The threshold her[ e] is at least one.
Answer 7.
We disagree with the Examiner. In the teaching cited by the
Examiner the number of others who made similar purchases does not meet
the claim as the claim recites the number of purchases the user made, not the
number of other users who made purchase. Accordingly, we do not sustain
the Examiner's rejection of claim 23.
Claim 32.
Appellants present separate arguments with respect to claim 32,
asserting the combination of Kargman and Higgins does not teach receiving
revenue from the users and transferring a portion of the received revenue to
a provider of the deal. App. Br. 16-17. Specifically, Appellants argue the
teachings of Kargman cited by the Examiner discuss purchasing but not
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receiving revenue. Reply Br. 12 (citing Kargman paragraphs 22, 23, 28, 34,
and 41 through 48). Further, Higgins discloses revenue may be shared
between parties, but that the revenue is not from the revenue from the deal
but from advertisers. Reply. Br. 13 (citing Higgins paragraphs 59, 128, and
130).
The Examiner responds to Appellants' arguments, finding that
Kargman teaches receiving revenue from users. Answer 7 ( citing Kargman
paragraphs 22, 23, 28, 34, and 41--48). Further, the Examiner cites to
Higgins as transferring revenue received to the provider of a deal through
revenue sharing. Answer 8.
We disagree with the Examiner's finding. We have reviewed the
teachings of Higgins cited by the Examiner and do not find that the cited
portion demonstrates revenue received to the provider of a deal is shared.
Rather, as argued by the Appellants, the revenue shared is from an advertiser
not the deal. Accordingly, we do not sustain the Examiner's rejection of
claim 32.
DECISION
We reverse the Examiner's rejections of claims 6, 11, 23, and 32
under 35 U.S.C. § 103.
We affirm the Examiner's rejections of claims 1, 12 through 14, 21,
22, 26, and 28 through 30 under 35 U.S.C. § 103.
We affirm the Examiner's rejection of claims 1, 6, 11 through 14, 21
through 23, 26, 28 through 30 and 32 under 35 U.S.C. § 101.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1, 6, 11
through 14, 21 through 23, 26, 28 through 30, and 32 is affirmed. See 37
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C.F.R. § 4I.50(a)(l).
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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