Ex Parte Kruglick

Patent Trial and Appeal Board

Sep 13, 2017

13642775 (P.T.A.B. Sep. 13, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/642,775 10/22/2012 Ezekiel Kruglick MTCW003002 9202
61795 7590 09/15/2017
Nathaniel A 011 Her
EXAMINER
Jensen & Puntigam, PS JESSEN, DEREK
1700 7th Ave., Suite 116, #271
Seattle, WA 98101 ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/15/2017 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):
agilder @j ensenpuntigam. com
agilder @ gilderip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EZEKIEL KRUGLICK
Appeal 2016-005245
Application 13/642,775
Technology Center 3600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and
JOHN P. PINKERTON, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005245
Application 13/642,775
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—10, 12, 13, 15, 16, 19, 21, and 23—26. Claims
11, 14, 17, 18, 20, 22, and 27—51 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
Independent claims 1 (method), 10 (non-transitory computer readable
storage medium with instruction executable by a processor), and 19
(computing device including a processor, memory, and limited offer
distribution system stored in the memory and executable by the processor)
are directed to processing of limited offer claims using social network graph
information. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method to process limited offer claims using social
network graph information, comprising:
accepting, by a computing device, one or more offer
claims from one or more root participants, wherein the one or
more root participants are in the limited offer after acceptance
of the one or more offer claims from the one or more root
participants, and wherein the limited offer is available to limited
root participants; and
subsequent to accepting the one or more offer claims
from the one or more root participants, limiting, by the
computing device, the limited offer to participants connected in
a social network to one or more of:
at least one root participant among the one or more
root participants in the limited offer; or
at least one branch participant in the limited offer,
wherein the at least one branch participant is in the
limited offer after acceptance of an offer claim from the
at least one branch participant, and wherein the at least
one branch participant is connected, in the social
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network, to at least one root participant in the limited
offer or at least one other branch participant in the
limited offer;
wherein limiting, by the computing device, the limited
offer to participants connected in the social network to at least
one root participant in the limited offer and/or at least one
branch participant in the limited offer comprises performing, by
the computing device in response to an offer claim from an
interested branch participant, operations comprising:
providing, by the computing device, an interested
branch participant identifier (ID) to a social network
interface;
receiving, by the computing device, from the
social network interface, social network graph
information indicating social network graph connections
between the interested branch participant and root
participants in the limited offer and/or branch participants
in the limited offer;
accepting, by the computing device, the offer
claim from the interested branch participant when the
social network graph information indicates a social
network graph connection between the interested branch
participant and at least one root participant in the limited
offer and/or at least one branch participant in the limited
offer; and
declining, by the computing device, the offer claim
from the interested branch participant when the social
network graph information indicates no social network
graph connections between the interested branch
participant and root participants in the limited offer or
branch participants in the limited offer.
REFERENCES and REJECTIONS
The Examiner made the following rejections:
(1) Claims 1—10, 12, 13, 15, 16, 19, 21, and 23—26 are rejected under
35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
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without significantly more. Final Act. 2—3; Ans. 2—3, 9-12. Specifically,
the Examiner determines the claims are directed to the abstract idea of
processing limited offer claims, and the additional claimed elements in the
claims are instructions to implement the idea on a computer. Final Act. 2;
Ans. 3.
(2) Claims 1—8, 10, 12, 13, 15, 16, 19, 21, and 23—26 are rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Gemmell (US
2011/0320250 Al; published Dec. 29, 2011) and Roever (US 2012/0203618
Al; published Aug. 9, 2012). Final Act. 3—8; Ans. 3—8, 12—21.
(3) Claim 9 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Gemmell, Roever, and Stratton (US 2012/0011432 Al;
published Jan. 12, 2012). Final Act. 8—9; Ans. 8—9.
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Final
Rejection (Final Act. 3—9), Advisory Action (Advisory Act. 2), and Answer
(Ans. 3—8). Additional findings of fact may appear in the Analysis below.
ANALYSIS
35 U.S.C. § 101 Non-Statutory Subject Matter
Appellant argues the claims as a group. See App. Br. 4—10; Reply Br.
1—3. Independent claims 1,10, and 19 are each directed to processing
limited offer claims using social network graph information and contain
similar features regarding the interaction of root and branch participants in a
social network. We select claim 1 as the representative claim for this group,
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and the remaining claims 2, 3, 5, 12, 14—21, 23, 24, and 28—33 stand or fall
with claim l.1 37 C.F.R. § 41.37(c)(l)(iv).
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
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75—77 (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.), e.g., to an abstract
idea. For example, abstract ideas include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355—57. If
the claims are not directed to a patent-ineligible concept, the inquiry ends.
1 Although Appellant provides separate arguments under a separate heading
for dependent claims 2—9, 12, 13, 15, 16, 21, and 23—26 (App. Br. 10), the
arguments are conclusory and nominal. Appellant merely contends the
Examiner fails to provide any rationale as to why each dependent claim does
“not add ‘significantly more’ than the abstract idea identified in the Office
Action” {id.). However, there is no requirement that the Examiner do so,
and the Examiner’s explanations in the Final Rejection (Final Act. 2—3) and
the Answer (Ans. 2—3, 6—12) provide Appellant sufficient notice as to the
thrust of the rejection.
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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.” Alice Corp., 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 78—9). For claims to pass muster, “at step
two, an inventive concept must be evident in the claims.” RecogniCorp,
LLCv. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355. We have considered all of
Appellant’s arguments (App. Br. 4—10; Reply Br. 1—3), but find them
unpersuasive as to error in the rejection. The rejection is sustained.
Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
finds, and we agree, that claim 1 is directed to the abstract idea of processing
limited offer claims, and that the additional elements in claim 1 are
instructions to implement the idea on a computer (Final Act. 2; Ans. 3, 9—
10). The numerous claim limitations recite generally a method (claims 1—9),
a non-transitory computer readable storage medium with instructions
executable by a processor (claims 10, 12, 13, 15, 16), and a computing
device having a processor, memory, and limited offer distribution system
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stored in the memory (claims 19, 21, 23—26) to process limited offer claims
using data (social network graph information). Thus, no more than a general
purpose computer is recited in the claims on appeal, and we find the claims
are not directed to an improvement to computer functionality, but to an
abstract idea.
We conclude that processing limited offer claims as recited in method
claim 1 is a fundamental economic practice and, therefore, constitutes
patent-ineligible subject matter. See Alice, 134 S. Ct. at 2357; Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016) (“fundamental economic and conventional
business practices are often found to be abstract ideas, even if performed on
a computer”).
The Examiner also finds, and we agree, claim 1 does not include
limitations that are “significantly more” than the abstract idea because the
claims do not include an improvement to another technology or technical
field, an improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment. See Final Act. 2; Ans. 3, 10—11.
Appellant’s arguments (App. Br. 7—10) that the Examiner has not
provided clear explanations of the reasoning behind the rejection are not
persuasive in light of: (i) the Examiner’s explanations in the Final Rejection
(Final Act. 2—3); and (ii) the Answer (Ans. 2—3, 6—12), which sufficiently
put Appellant on notice as to the thrust of the rejection.
The Federal Circuit has held that the USPTO carries its procedural
burden of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S. C. § 132 by notifying the applicant of the reasons for
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rejection, “together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application.”
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original).
Here, in rejecting claim 1 under § 101, the Examiner notified
Appellant of the reasons for the rejection “together with such information
... as may be useful in judging of the propriety of continuing the
prosecution of [the] application.” 35 U.S.C. § 132. The Examiner states a
general, and adequate, rationale that applies to independent method claim 1,
as well as independent claim 10 (non-transitory computer readable storage
medium with instruction executable by a processor) and independent claim
19 (computing device including a processor, memory, and limited offer
distribution system stored in the memory and executable by the processor),
all of which are directed to processing limited offer claims using social
network graph information. Thus, we find that the Examiner set forth a
prima facie case of unpatentability.
Additionally, examining earlier cases can have a role, especially in
deciding whether a concept that claims are found to be directed to is an
abstract idea. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1294 (Fed. Cir. 2016) (“Instead of a definition [for what an ‘abstract
idea’ encompasses], then, the decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen—what prior cases were about, and which way they were decided.”).
Here, the instant case concerns processing limited offer claims information
— a fundamental economic, commercial, and/or business practice.
And, at least the following decisions from our reviewing court have
found many types of fundamental commercial practices patent ineligible:
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OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015), cert,
denied, 136 S. Ct. 701 (2015) (mem.) (holding that claims drawn to offer-
based price optimization are abstract and, therefore, patent ineligible);
NexusCard, Inc. v. Kroger Co., 688 F. App’x 916 (Fed. Cir. 2017) (mem.)
(affirming district court’s holding that a membership discount program on a
network are abstract and, therefore, patent ineligible); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (transaction guaranty);
Personalized Media Commc’ns, L.L.C. v. Amazon.com, Inc., 671 F. App’x
111 (Fed. Cir. 2016) (mem.) (receiving instructions for ordering);
Macropoint, LLC v. Fourkites, Inc., 671 F. App’x 780 (Fed. Cir. 2016)
(mem.) (tracking freight); Wireless Media Innovations, LLC v. Maher
Terminals, LLC, 636 F. App’x 1014 (Fed. Cir. 2016) (mem.) (monitoring
shipping containers); America’s Collectibles Network, Inc. v. Jewelry
Channel, Inc. USA, 672 F. App’x 997 (Fed. Cir. 2017) (mem.) (conducting
reverse auction by adjusting price and inventory); and Easy Web Innovations,
LLCv. Twitter, Inc., No. 2016-2066, 2017 WL 1969492 (Fed. Cir. May 12,
2017) (receiving, authenticating, and publishing data). In this light, the
processing of limited offer claims based on branch/root information from a
social network recited in the claims on appeal are commercial practices that
are economic and fundamental in nature.
In summary, none of the individual steps of representative claim 1,
viewed “both individually and ‘as an ordered combination,”’ transforms the
nature of the claim into patent-eligible subject matter. See Alice, 134 S. Ct.
at 2355 (quoting Mayo, 566 U.S. at 79). The claimed sequence of steps
comprises only “conventional steps, specified at a high level of generality,”
which is insufficient to supply an “inventive concept.” Id. at 2357 (quoting
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Mayo, 566 U.S. at 71—2, 77—8, 82—3). In view of the foregoing, we sustain
the Examiner’s rejection under 35 U.S.C. § 101 of representative
independent claim 1, as well as claims 2—10, 12, 13, 15, 16, 19, 21, and 23—
26 grouped therewith and not argued separately.
35 U.S.C. §103
Appellant argues independent claims 1,9, 10, and 19 together (App.
Br. 11—14).2 Independent claims 1 (method), 10 (non-transitory computer
readable storage medium with instruction executable by a processor), and 19
(computing device including a processor, memory, and limited offer
distribution system stored in the memory and executable by the processor)
are each directed to processing limited offer claims using social network
graph information and contain similar features regarding the interaction of
root and branch participants in a social network. We select independent
claim 1 as the representative claim and will address Appellant’s arguments
with respect thereto. 37 C.F.R. § 41.37(c)(l)(iv).
At the outset, we note the striking similarity of Gemmell’s disclosures
of (i) making an offer valid only “for a limited time, thus encouraging users
14 to take advantage of the offer 24 prior to its expiration” (| 31 (last
sentence)), and (ii) “encourage[ing] ‘early adopters’ [i.e., root participants]
who are the first members of the social group 24 to try, purchase, and/or
2 Because Appellant (i) argues claim 9, rejected over the combination of
Gemmell, Roever, and Strutton, under the same heading in the Appeal Brief
(see App. Br. 11—14) with claims 1, 10, and 19 rejected over Gemmell and
Roever, and (ii) states that “[t]he outstanding rejections should be reversed
as incomplete” (id. at 14), the outcome of the obviousness rejection of
dependent claim 9 will stand/fall with the outcome of the obviousness
rejection of claim 1 from which it depends.
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promote the product 38” (132), to Appellant’s disclosure of using limited
offers within a social network group to motivate purchasers and increase
customer interest (Spec. H 2 4).
With respect to claim 1, Appellant contends (App. Br. 11—13) that
Gemmell does not teach or suggest limiting an offer to participants
connected in a social network to (i) at least one root participant among the
one or more root participants, or (ii) at least one branch participant in the
limited offer, where the root and branch participants are in the limited offer
after acceptance of offer claims from the root and branch participants.
However, Appellant admits that: (i) “Gemmell’s paragraph 0031 states that,
‘many types of conditions may be placed on the offer 42, either to limit the
scope of the offer 42 to a particular set of users 14 or to encourage the users
14 [to] accept the offer 42” (App. Br. 12); and (ii) “Gemmell’s paragraph
0031 provides examples including ‘limiting the offer to users 14 of the
social group 24’” (App. Br. 13). Further, nothing in Gemmell precludes root
and/or branch participants in the limited offer from being in the limited
group of social group members.
In view of the foregoing, we agree with the Examiner (Final Act. 3—6;
Ans. 3—5) that Gemmell teaches or suggests (H 29 (last sentence), 31,38)
limiting the offer to participants connected in a social network to (i) at least
one root participant among the one or more root participants, or (ii) at least
one branch participant in the limited offer, where the root and branch
participants are in the limited offer after acceptance of offer claims from the
root and branch participants. Inasmuch as Appellant argues that Gemmell
does not disclose the offer being a limited offer, we find to the contrary, as
does the Examiner (Ans. 12), that Gemmell (131 (last sentence)) discloses
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an offer limited by time (i.e., a limited offer). In addition, we agree with the
Examiner (Final Act. 5; Ans. 5, 13) that Roever (| 33) clearly teaches
limited offers.
Appellant’s arguments have not shown error in the Examiner’s factual
findings or ultimate conclusion of obviousness of claim 1, or remaining
independent claims 10 and 19, which are argued for the same reasons as
claim 1.
With regard to the dependent claims argued separately (see App. Br.
14—21), we agree with the Examiner’s explanation (Final Act. 5—9; Advisory
Act. 2; Ans. 3—9, 14—21) that the combination of Gemmell and Roever
teaches or suggests every claimed limitation.
CONCLUSIONS
The Examiner did not err in rejecting claims 1—10, 12, 13, 15, 16, 19,
21, and 23—26 based upon a lack of patent eligible subject matter under
35 U.S.C. § 101, and the Examiner did not err in rejecting claims 1—10, 12,
13, 15, 16, 19, 21, and 23—26 for obviousness under 35 U.S.C. § 103.
DECISION
For the above reasons, we sustain the Examiner’s rejections of claims
1-10, 12, 13, 15, 16, 19, 21, and 23-26 under 35 U.S.C. §§ 101 and 103.
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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