Ex Parte Linden et al

Patent Trial and Appeal Board

Oct 30, 2018

13615289 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/615,289 09/13/2012 Lee Linden
107193 7590 11/01/2018
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
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.
19487.352.1 4933
EXAMINER
SEIBERT, CHRISTOPHERB
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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@kjpip.com
gjolley@kjpip.com
tmeid@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE LINDEN and BENJAMIN LEWIS
Appeal2017-005937
Application 13/615,289 1
Technology Center 3600
Before MARC S. HOFF, JASON J. CHUNG, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-29, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, this application is related to copending
Application No. 13/615,328, copending Application No. 13/615,321, and
copending Application No. 13/615,307, all currently on appeal. App. Br. 1.
2 According to Appellants, the real party in interest is Facebook, Inc. App.
Br. 1.
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Application 13/615,289
INVENTION
Appellants' invention relates to a method for enabling a gift
transaction. Abstract. Claim 1 is illustrative and reads as follows:
1. A method comprising:
receiving, using at least one computer system having at least one
processor, a gift request from a sender, the gift request specifying a recipient
and a gift item;
sending an approval electronic message, by the at least one processor,
to the recipient, the approval electronic message seeking approval of the gift
item from the recipient;
receiving a modification of the gift item by the recipient and approval
of the modified gift item from the recipient;
in response to approval of the modified gift item by the recipient but
prior to the sender purchasing the modified gift item:
posting, by the at least one processor, a first notification of the
modified gift item to an online social network, the first notification
indicating that the sender has gifted the gift item to the recipient, that the
recipient has modified the gift, and the modification;
controlling access to the first notification by limiting access to only
the sender and connections of the sender within the online social network;
posting, by the at least one processor, a second notification of the
modified gift item to the online social network, the second notification
indicating that the recipient has been gifted the gift item by the sender, that
the recipient has modified the gift, and the modification;
controlling access to the second notification by limiting access to only
the recipient and connections of the recipient; and
initiating, by the at least one processor, payment for the modified gift
item, on behalf of the sender, in response to approval of the modified gift
item by the recipient.
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REJECTIONS
Claims 13 and 14 stand rejected under 35 U.S.C. § 112 (pre-AIA),
second paragraph, as indefinite. Final Act. 2-3.
Claims 1-29 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception, without significantly
more. Final Act. 3-5.
Claims 1-18, 20-22, and 24--28 stand rejected under pre-AIA
35 U.S.C. § I03(a) as unpatentable over the combination of O'Sullivan et al.
(US 2010/0280879 Al; published Nov. 4, 2010) ("O'Sullivan"),
Morgenstern (US 2008/0189188 Al; published Aug. 7, 2008). Final Act. 5-
13.
Claim 5 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of O'Sullivan, Morgenstern, and Maeda
(US 2002/0038347 Al; published Mar. 28, 2002). Final Act. 13-14.
Claims 14, 15, 19, and 23 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over the combination of O'Sullivan, Morgenstern,
and Bhosle et al. (US 8,364,559 Bl; issued Jan. 29, 2013) ("Bhosle"). Final
Act. 14--15.
Claim 29 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of O'Sullivan, Morgenstern, and Eggink
et al. (US 2009/0013002 Al; published Jan. 8, 2009) ("Eggink). Final Act.
16-17.
Claims 1 and 16 stand provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claim 1 of copending
Application No. 13/615,307, claim 1 of copending Application No.
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13/615,321, and claim 1 of copending Application No. 13/615,328. Final
Act. 17.
ANALYSIS
We have reviewed the rejections of claims 1-29 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments Appellants could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 3-10) and in the Action from which this appeal
was taken (Final Act. 2-17). We provide the following explanation for
emphasis.
Rejection of claims 13 and 14 under 35 U.S.C. § 112, Second Paragraph
The Examiner rejected claim 13 for indefiniteness because the
limitation "'the gift request form"' lacks antecedent basis. Final Act. 2-3.
The Examiner rejected claim 14 for indefiniteness because the limitation
"'wherein the limitation comprises an indication ... "' lacks antecedent basis.
Id.
Because Appellants do not address the indefiniteness rejections of
claims 13 and 14 in the Appeal Brief, we sustain the Examiner's rejections
of claims 13 and 14 under 35 U.S.C. § 112, second paragraph, proforma.
Rejection of Claims 1-29 under 35 U.S. C. § 1 OJ
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
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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
Bank Int'!, 134 S. Ct. 2347, 2354 (2014). In determining whether a claim
falls within the excluded category of abstract ideas, we are guided in our
analysis by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice, 134 S. Ct. at 2355 ( citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 76-77 (2012)).
In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See id. at 2356.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Id. at
2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. (internal quotations and
citation omitted). 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. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
In rejecting independent claims 1 and 16, and dependent claims 2-15
and 17-29, under 35 U.S.C. § 101, the Examiner determined the claims are
directed to an abstract idea of "gift shopping," i.e., a "fundamental economic
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practice." Ans. 3. The Examiner also determined the claims as a whole do
not amount to significantly more than the abstract idea itself. Final Act. at
4--5.
Alice Step 1: Abstract Idea
As to the first step of the Alice inquiry, Appellants contend the
Examiner erred by inventing an abstract idea and not citing case authority
for the conclusion that "gift shopping" is an abstract idea akin to a
fundamental economic practice and a method of organizing human activity.
App. Br. 14.
We are not persuaded of error. To determine whether the claims at
issue are directed to an abstract idea, we need only look to other decisions
where similar concepts were previously found abstract by the courts. See
Amdocs (Israel) Limited 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.")
We agree with the Examiner that the claimed invention resembles the
claims at issue in Alice. See Final Act. 3; see also Ans. 3. Claim 1 is
directed to gift shopping, whereby a sender specifies a recipient and a gift
item, a gift request for approval is sent to the recipient, and the sender
purchases the gift after the recipient modifies the gift item and approves the
modified gift item, and after two notifications about the gift have been
posted on an online social network, with controlled access. Gift shopping is
a fundamental economic practice, long prevalent in our system of
commerce, like the risk hedging in Bilski (see Bilski v. Kappas, 561 U.S. 593
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(2010)) and the intermediated settlement in Alice (see Alice, 134 S. Ct. at
2356-57). Thus, gift shopping, like the fundamental economic practices
above, is an "abstract idea" beyond the scope of§ 101. See Alice, 134 S. Ct.
at 2356. Accordingly, we see no error in the Examiner's conclusion that the
claims are directed to a fundamental economic practice. See Final Act. 3--4.
Appellants next argue the Examiner's analysis overly generalizes the
claims because the general concept of "gift shopping" does not involve
several elements from claim 1. App. Br. 16. Appellants assert that the
Examiner merely copied and pasted the claim language and concluded,
without further analysis, that all of the elements are "'directed to the abstract
idea."' Id. at 15.
We are not persuaded of error. Appellants' argument does not address
the Examiner's determinations as to which claim elements are part of the
abstract idea and which are additional elements. See Ans. 4--5. For
example, the Examiner determined that
posting first a notification of the modified gift item to a social
network, the first notification indicating that the sender has gifted
the gift item to the recipient, that the recipient has modified the
gift, and the modification
is directed to the abstract idea itself, while "by the at least one processor,"
and "online [social network]," are additional limitations. Id. at 4.
Additional elements are addressed in step 2 of the Alice analysis, which
endeavors to identify additional elements "sufficient to ensure that the patent
in practice amounts to significantly more than a patent upon the [ineligible
concept] itself." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566 U.S. at 73).
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Appellants also argue the claims are directed to concrete, patent-
eligible concepts, not mere "gift shopping." App. Br. 19. In Appellants'
view, the claims are directed to
utilizing a computer system to provide digital notifications via an
online social network to a sender and recipient ( and connections
of the sender and recipient) in relation to a gift item and recipient
modifications to the gift item prior to the sender purchasing the
gift item for the recipient via the online social network.
Id. ( citing Enfzsh ).
We are not persuaded. In Enfzsh, "the plain focus of the claims is on
an improvement to [the] computer functionality itself." Enfzsh, 822 F.3d at
1336. In contrast, we do not find a claimed focus on an improvement to the
computer functionality here. Appellants point to the Specification, but none
of the cited paragraphs explains how using a social networking system to
provide digital notifications and messages prior to a sender purchasing a gift
improves any computer functionality. See App. Br. 20 ( citing Spec. ,r,r 18,
50, 55, 56). We agree with the Examiner that the claims are directed to
solving a business or commercial problem, not a technical problem. See
Ans. 6.
For these reasons, we are not persuaded of error in the Examiner's
determination that the claims are directed to "gift shopping," which is a
fundamental economic practice and an "abstract idea."
Alice Step 2: Inventive Concept
As to the second step of the Alice inquiry, Appellants argue "the
actual elements of the claims go far beyond the general idea of 'gift
shopping'." App. Br. 21. As in step 1 of the Alice analysis, Appellants
again identify claim elements that Appellants do not consider part of the
abstract idea of "gift shopping." Id. Appellants argue that the Examiner
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failed to analyze any additional elements in step 2 because the Examiner
determined that all of the claim elements are directed to the abstract idea of
"gift shopping" in step 1. See id.
Appellants' arguments are not persuasive. The question in step 2 of
the Alice analysis is not whether there are additional elements in the claims,
but whether the additional elements add anything "significantly more" to
transform the abstract concept into patentable eligible subject matter. Alice,
134 S. Ct. at 2355. The Examiner identified the recited posting, monitoring,
and updating "by the online social network," that the recited notification is
"on the online social network," and the recited "electronic message" as
additional elements. Ans. 7. The Examiner identified the limitation "by the
at least one processor" and the social network being "online" as additional
elements. Id. The Examiner determined the additional elements are merely
instructions to perform the abstract idea on a generic computer. Id.
Appellants have presented no argument challenging the Examiner's
determinations with regard to the additional elements identified by the
Examiner. Nor have Appellants argued that any additional element adds
something "significantly more" such that the claims are patent-eligible. See
App. Br. 20-25.
For example, Appellants do not argue that any of the elements of
claims 1 and 16 are individually inventive. See App. Br. 21-22. Instead, in
the Reply Brief (Reply Br. 7-8), Appellants rely on DDR Holdings, LLC v.
Hotels.com L.P., 773 F.3d 1245 (Fed. Cir. 2014), in which the Federal
Circuit found claims were "necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
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networks" because they addressed a technical issue unique to Internet
website problems. 773 F.3d at 1257.
Here, unlike in DDR Holdings, the claims merely use technology to
address issues of communication between gift senders, gift recipients, and
others, without solving any underlying technological issues. As recognized
by the Supreme Court, "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
See Alice, 134 S. Ct. at 2358-59 (concluding claims "simply instruct[ing]
the practitioner to implement the abstract idea of intermediated settlement on
a generic computer" not patent eligible); see also Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014) (Claims merely reciting
abstract idea of using advertising as currency as applied to particular
technological environment of the Internet not patent-eligible.); Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45
(Fed. Cir. 2013) (Claims reciting "generalized software components
arranged to implement an abstract concept [ of generating insurance-policy-
related tasks based on rules to be completed upon the occurrence of an
event] on a computer" not patent eligible.); Dealertrack, Inc. v. Huber, 674
F.3d 1315, 1333-34 (Fed. Cir. 2012) ("Simply adding a 'computer aided'
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible.").
We are also not persuaded by Appellants' argument that the claimed
limitations as an ordered combination include an inventive concept because
"they provide an inventive concept that provides a technical solution to a
technical problem." App. Br. 22 (citing Bascom Global Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Appellants argue
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"the ordered combination of limitations in the claims provide an inventive
concept that goes beyond mere recitation of 'gift shopping.'" Id. at 23. In
particular, Appellants argue the claims
include inventive concepts of utilizing a computer system to
generate a list of recommended gift items based on a first list of
gift items specified by previous senders in previous gift requests
(see claim 16) and utilizing an online social network and
electronic notifications to notify a sender, recipient, and
connections of the sender and recipient regarding a pending
electronic gift transaction (including recipient modifications to a
gift item) prior to the sender consummating the pending
electronic gift transaction (see claim 1 and claim 16).
Id. Appellants further argue the claimed invention "serves to provide a
digital solution that can remove concerns regarding the absence of a brick-
and-mortar store"; "serves to remove the hurdle of entering payment or
delivery information prior to selecting a gift"; and "serves to further
encourage the sender to take necessary steps to complete the digital
transaction." App. Br. 24.
The claims here are distinguishable from those in Bascom. In
Bascom, the system claims were directed to a "'content filtering system for
filtering content retrieved from an Internet computer network,"' which the
court held were directed to an abstract idea. Bascom, 827 F.3d at 1348--49.
The court further held the claims included an inventive concept in the
ordered combination of system components, including a local client
computer and a remote ISP server connected to the client computer and
Internet computer network providing for "the installation of a filtering tool at
a specific location, remote from the end-users, with customizable filtering
features specific to each end user." Id. at 1350. The claims at issue here do
not involve a similar or analogous arrangement or "ordered combination" of
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components. We agree with the Examiner that the additional limitations are
not improvements to the functioning of a computer or some other technology
(see Ans. 5---6), and that any problems being solved are commercial, not
technological. Indeed, we find nothing in Appellants' claims that adds
anything "significantly more" to transform the abstract concept of gift
shopping.
Because Appellants' claims 1-29 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
these claims under 35 U.S.C. § 101.
Rejection of Claims 1-29 under 35 U.S.C. § 103(a)
In rejecting independent claims 1 and 16 for obviousness, the
Examiner found the combination of O'Sullivan and Morgenstern teaches or
suggests all of the recited limitations. Final Act. 5-13.
Appellants contend the Examiner erred because the cited references
fail to teach or suggest the limitations
in response to approval of the modified gift item by the
recipient but prior to the sender purchasing the modified gift
item:
posting, by the at least one processor, a first notification
of the modified gift item to an online social network, the first
notification indicating that the sender has gifted the gift item to
the recipient, that the recipient has modified the gift, and the
modification;
controlling access to the first notification by limiting
access to only the sender and connections of the sender within
the online social network;
posting, by the at least one processor, a second
notification of the modified gift item to the online social
network, the second notification indicating that the recipient has
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been gifted the gift item by the sender, that the recipient has
modified the gift, and the modification; [ and]
controlling access to the second notification by limiting
access to only the recipient and connections of the recipient,
as recited in independent claim 1, and as similarly recited in independent
claim 16. App. Br. 27-28. In particular, Appellants argue one of ordinary
skill would not have read O'Sullivan and Morgenstern as teaching, in
response to approval of the modified gift item by the recipient, but prior to
the sender purchasing the modified gift item, posting a first notification of
the modified gift item to an online social network, the first notification
indicating that the sender has gifted the gift item to the recipient, that the
recipient has modified the gift, and the modification. Id. at 29. Appellants
further argue that one of ordinary skill in the art would not have read
0' Sullivan and Morgenstern as teaching, in response to approval of the
modified gift item by the recipient, but prior to the sender purchasing the
modified gift item, controlling access to the first notification by limiting
access to only the sender and connections of the sender within the online
social network, as recited in claims 1 and 16. Id.
We are not persuaded the Examiner erred. Although Appellants
contend an artisan of ordinary skill would not read the prior art references as
teaching the disputed limitations of claims 1 and 16, Appellants do not
provide any basis for those arguments. See App. Br. 29. It is well settled
that mere attorney arguments and conclusory statements, which are
unsupported by factual evidence, are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence).
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Appellants next contend the Examiner fails to provide "any cogent
reason" that one of ordinary skill in the art would read Morgenstem's
teaching of posting a notification of a purchased gift item and O'Sullivan's
teaching to provide a gift suggestion as teaching the disputed limitations.
App. Br. 30.
We are not persuaded the Examiner erred. On page 9 of the Answer,
the Examiner explained how the combination of O'Sullivan and
Morgenstern teaches or suggests the disputed limitations. Ans. 9.
Appellants have not rebutted the Examiner's findings persuasively. In
addition, we find the Examiner provided "articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appellants further argue in the Reply Brief that the portions of
0' Sullivan cited by the Examiner do not teach "posting" notifications, but
simply teach sending approval messages to a recipient. Reply Br. 10.
Appellants contend "[ s ]ending a message to a recipient for approval of a gift
item is fundamentally different than posting multiple notifications to an
online social network in response to approval of a modified gift item but
prior to the sender purchasing the modified gift item." Id.
We are not persuaded by Appellants' argument because Appellants
argue the references separately. Nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co., 800 F .2d 1091,
1097 (Fed. Cir. 1986). The test for obviousness is not whether the claimed
invention is suggested expressly in any one or all of the references, but
whether the claimed subject matter would have been obvious to those of
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ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413,425 (CCPA 1981).
Here, the Examiner relied on O'Sullivan as teaching posting a
notification of the gift item. Final Act. 6. The Examiner relied on
Morgenstern as teaching posting a notification of the gift item for viewing
by the sender and friends of the sender on an online social network in
response to approval of the gift item by the recipient and wherein the
notification comprises an indication of the sender the recipient, and a
modification to the gift item by the recipient. Id. Appellants do not address
whether the disputed limitation would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references.
For these reasons, we are not persuaded that the Examiner erred in
finding the combination of O'Sullivan and Morgenstern teaches or suggests
the disputed limitation recited in claims 1 and 16.
Appellants next contend that the disputed subject matter would not
have been obvious because O'Sullivan teaches away from the Examiner's
proposed combination. App. Br. 30; Reply Br. 11-14. In particular,
Appellants argue that O'Sullivan teaches away from the disputed "posting"
limitation because "O'Sullivan warns that sharing direct information about
'selections, specifications, or rejections' may undermine the relationship
between the sender and the recipient." App. Br. 30-31 (citing O'Sullivan
,r 9). Appellants further argue that "O'Sullivan explains that information
should be maintained in 'an anonymous manner' to avoid violating 'social
norms."' Id. at 31 (citing O'Sullivan ,r 70). Further, Appellants argue that
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"O'Sullivan teaches that 'explicitness' would 'devalue the gift and/or the
entire gift giving process."' Id. ( citing O'Sullivan ,r 6).
Appellants' "teaching away" argument fails because Appellants have
not identified where O'Sullivan actually criticizes, discredits, or otherwise
discourages
posting ... a first notification of the modified gift item
to an online social network, the first notification indicating that
the sender has gifted the gift item to the recipient, that the
recipient has modified the gift, and the modification, [and]
posting, by the at least one processor, a second
notification of the modified gift item to the online social
network, the second notification indicating that the recipient has
been gifted the gift item by the sender, that the recipient has
modified the gift, and the modification.
Claim 1; See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) ("A reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
'criticize, discredit, or otherwise discourage' investigation into the invention
claimed") ( citing Fulton).
The paragraphs in O'Sullivan cited by Appellants do not actually
criticize, discredit, or otherwise discourage the disputed limitation.
Paragraph 6 of O'Sullivan explains, for example, that "having the gift
recipient specify a gift to eliminate uncertainty in gift selection removes the
element of surprise and may also obligate the gift giver to an uncomfortable
price point or type of gift." O'Sullivan ,r 6. Paragraph 9 describes a "gift
incentive engine [that] combines an interactive distributed environment for
gathering anonymous ( and opaque) gift selection advice from relevant
parties .... " O'Sullivan ,r 9. Paragraph 70 describes that "knowledge held
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by one party that would be beneficial to another party is obtained in an
anonymous manner (anonymous from the point of view of the non-input
providing parties)." O'Sullivan ,r 70. As the Examiner points out,
"O'Sullivan teaches both anonymous and public notifications and therefore
cannot be said to be teaching away from a public notification." Ans. 10
(citing O'Sullivan ,r 38).
Appellants also argue the Examiner "fails to provide any cogent
reason that one of ordinary skill in the art would read Morgenstern 's
teaching (to post a notification of a purchased gift item) with O'Sullivan's
teaching (to provide a gift suggestion) in combination as teaching" the
disputed limitations. App. Br. 30.
We disagree. The Examiner provided "articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness."
Kahn, 441 F .3d at 988; see Final Act. 6. Thus, we are not persuaded of error
in the Examiner's ultimate conclusion that claims 1 and 16 are obvious over
the combined teachings of O'Sullivan and Morgenstern.
Accordingly, we sustain the Examiner's§ 103(a) rejection of
independent claims 1 and 16. We also sustain the Examiner's§ 103(a)
rejection of dependent claims 2-15 and 17-29, not argued separately with
particularity. App. Br. 32-34.
Non-Statutory Double Patenting Rejection of Claims 1 and 16
Claims 1 and 16 stand provisionally rejected on the ground of
nonstatutory double patenting as unpatentable over claim 1 of copending
Application No. 13/615,307, claim 1 of copending Application No.
13/615,321, and claim 1 of copending Application No. 13/615,328. Final
Act. 17.
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Because Appellants make no arguments related to this rejection, we
sustain the rejection proforma. Arguments not made are waived.
DECISION
We affirm the Examiner's decision rejecting claims 1-29.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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