Ex Parte Linden et al

Patent Trial and Appeal Board

Jul 30, 2018

13684084 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/684,084 11/21/2012 Lee Linden
107193 7590 08/01/2018
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.
19487.353.1 3906
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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
Appeal2017-002222
Application 13/684,084
Technology Center 3600
Before CARL W. WHITEHEAD JR, JASON V. MORGAN and
ADAM J. PYONIN, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1-20 under 35
U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35 U.S.C.
§ 6(b) (2012).
We affirm.
Introduction
The invention is directed to "the field of e-commerce, and more specifically
to a new and useful method for advertising a gift to a sender in the field of e-
commerce." Specification, paragraph 4.
Appeal2017-002222
Application 13/684,084
Illustrative Claim
1. A method comprising:
identifying, by at least one processor, a set of communications
from a set of users of a social networking system and directed to a
recipient from within the social networking system;
identifying, by the at least one processor, indicators of a gift-
appropriate event of the recipient within the set of communications;
determining, by the at least one processor, that a threshold
number of communications from the set of communications that
include an identified indicator of the gift-appropriate event have been
sent within a predetermined time period;
in response to the threshold number of communications with
the identified indicator of the gift-appropriate event being sent within
the predetermined time period, selecting, by at least one processor, a
gift for the recipient based on factors tracked by the social networking
system;
selecting, by the at least one processor, a potential gift sender,
outside the set of users, based on a determined relationship between
the potential gift sender and the recipient;
transmitting, by the at least one processor and via the social
networking system, an electronic notification to the potential gift
sender, the electronic notification comprising a recommendation for
the selected gift for the recipient and allowing the potential gift sender
to electronically purchase the gift from a third-party vendor without
leaving the social networking system;
identifying, by the at least one processor, whether the potential
gift sender has purchased the gift for the recipient;
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Application 13/684,084
detecting, by the at least one processor, after transmission of the
electronic notification to the potential gift sender but prior to purchase
of the gift by the potential gift sender, an update event;
identifying, by the at least one processor, that the detected
update event relates to a change to one or more of the factors based on
which the gift was selected;
modifying, by the at least one processor, the recommendation in
response to the update event; and
transmitting, by the at least one processor and via the social
networking system, an updated electronic notification to the potential
gift sender that includes the modified recommendation.
Rejection on Appeal1
Claims 1-20 stand 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) without significantly more. Final Action 2.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed April 21, 2016), the Reply Brief (filed
November 28, 2016), the Answer (mailed September 27, 2016) and the Final
Action (mailed September 21, 2015) for the respective details.
1 The 35 U.S.C. § 112 rejection was withdrawn by the Examiner. Advisory
Action. 35 U.S.C. § 103 rejection was withdrawn by the Examiner. Final
Action 6.
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Application 13/684,084
35 U.S.C. §101 Rejection
The Supreme Court has set forth an analytical "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 Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine
whether the claims at issue are "directed to" a judicial exception, such as an
abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales
Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are
determined to be directed to an abstract idea, then we consider under step
two whether the claims contain an "inventive concept" sufficient to
"transform the nature of the claim into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quotations and citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court 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:
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Application 13/684,084
( 1) whether the claims focus on a specific means or method that improves
the relevant technology, or (2) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfish, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner finds that the claims are directed to "the concept of
recommending gifts to a gift sender to be given to a recipient based upon
analysis of collected data related to mutual communication between the two
who are part of a social networking system" and finds the claimed concept
"represents certain methods involving human activity related to commercial
practices found to be abstract ideas by the Supreme Court." Answer 4. The
Examiner further finds:
[NJ arrowing of the claims by adding familiar conventional steps
and activities such as collecting analyzing data, identifying and
determining certain options from the analyzed data based upon
certain criteria, transmitting and receiving messages, organizing
purchase of gift items, detecting changes in the collected data and
modifying and updating options based upon detected changes so
that the claims do not preempt all practices of "recommending
gifts to a gift sender to be given to a recipient based upon
analysis of collected data related to mutual communication
between the two" or may be limited to in the computing
setting do not make them any less abstract.
Answer 4.
Appellants contend:
Under step one, Applicant's claims are not abstract, but
concretely specify how to identify gift-appropriate events from
communications within a social networking system, recommend
both a gift and potential gift sender-along with updated
recommendations-based on tracked factors and relationships
from within that system, and provide the potential gift sender
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Application 13/684,084
with an option to purchase the recommended gift from within the
social networking system.
Appeal Brief 7.
Appellants argue that:
Here, as in DDR2, Applicant's claims are concrete (and not
abstract) because they solve a business challenge unique to the
Internet. The pending claims address a problem that could not
exist outside a computer network-identifying gifting events and
potential gift senders from communications within a social
networking system and preventing third-party purchase links
from directing users to "other gifting venues" and thereby
"siphon users away from [the] social networking system."
Specification ,r [0005].
Additionally, as in DDR, the Applicant's claims present a
solution "necessarily rooted in computer technology," id at 1257,
by both drawing on the technological resources of a social
networking system and introducing new ways to update gift
recommendations on that system.
Appeal Brief 9.
We do not find Appellants' arguments persuasive. The Federal Circuit
has repeatedly confirmed since Alice that the category of abstract ideas
embraces "fundamental economic practice[ s] long prevalent in our system of
commerce," including "longstanding commercial practice[ s ]" and
"method[s] of organizing human activity." E.g., Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1313 (Fed. Cir. 2016). Our reviewing
court has explained that claims directed to "the mere formation and
manipulation of economic relations" and "the performance of certain
financial transactions" are properly held to be directed to abstract ideas.
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n,
2 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed Cir. 2014)
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776 F.3d 1343, 1347 (Fed. Cir. 2014); see also, e.g., Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (finding computer-
implemented system for "using advertising as a currency [on] the Internet"
to be ineligible); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355
(Fed. Cir. 2014) (finding computer-implemented system for guaranteeing
performance of an online transaction to be ineligible.); CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (finding
computer-implemented system for "verifying the validity of a credit card
transaction over the Internet" to be ineligible).
Also, our reviewing court has repeatedly held that information
collection and analysis, including when limited to particular content, is
within the realm of abstract ideas. See, e.g., Elec. Power Grp., 830 F.3d at
1353 (holding that "collecting information, analyzing it, and displaying
certain results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept"); Fair Warning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (claims directed to
collecting information and analyzing it according to certain rules were
directed to an abstract idea); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011) (computer-implemented system for
"verifying the validity of a credit card transaction over the Internet" was
patent-ineligible).
Appellants' argument that the claimed invention solves a business
challenge unique to the Internet is not persuasive because the mere
application of an abstract idea on a computer system does not make a
claimed invention patentable. See Alice Corp., 134 S. Ct. at 2358 ("[I]f a
patent's recitation of a computer amounts to a mere instruction to
'implemen[ t]' an abstract idea 'on ... a computer,' []that addition cannot
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impart patent eligibility.") (citations omitted). Appellants do not argue, nor
does Appellants' Specification state, that the claimed programmed computer
processor require specialized or improved technology.
Further, we find Appellants' claims are distinguished from those
claims that our reviewing court has found to be patent eligible by virtue of
reciting technological improvements to a computer system. See, e.g., DDR
Holdings, 3 773 F.3d at 1249, 1257 (holding that claims reciting computer
processor for serving "composite web page" were patent eligible because
"the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks"); Enfzsh, 822 F.3d at 1338 (holding that claims directed to a self-
referential table for a computer database were patent eligible because the
claims were directed to an improvement in the functioning of a computer);
Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017)
(holding that claims directed to "an improved computer memory system"
having many benefits were patent eligible).
We agree with the Examiner's finding that at step one of the Alice
analysis, the claims are directed to one or more abstract ideas, we tum to the
second step of the Alice analysis, in which we must determine whether the
additional elements of the claims transform them into patent-eligible subject
matter.
3 Moreover, we note the court in DDR did not tum on the issue of whether
the claims were abstract under the first step of Alice analysis. See DDR
Holdings, 773 F.3d at 1257 ("under any of these characterizations of the
abstract idea, the '3 99 patent's claims satisfy Mayo/ Alice step two").
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Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Appellants' argument that the claimed invention solves an Internet-
centric problem with a solution that is rooted in computer technology is not
persuasive of Examiner error because, as we noted above, the mere
application of an abstract idea on a computer system does not make a
claimed invention patentable. See Alice Corp., 134 S. Ct. at 2358 ("[I]f a
patent's recitation of a computer amounts to a mere instruction to
'implemen[ t]' an abstract idea 'on ... a computer,' []that addition cannot
impart patent eligibility.") ( citations omitted); See Appeal Brief 11.
Appellants do not argue, nor does Appellants' Specification state, that the
claimed method of gift recommendation requires specialized or improved
technology. See, e.g., Specification ,r,r 23, 24, 91.
Appellants argue:
The claims require transmitting an updated electronic
notification with a modified gift recommendation upon detecting
"an update event" relating to tracked factors. While these steps
are by no means exhaustive, they demonstrate that the claimed
inventions do not merely recite an abstract idea of human
activity, embody a field of use of a computer, or perform generic
computer functions, as the Examiner asserts.
Appeal Brief 12.
Appellants further argue:
The combined steps enable at least three things necessarily
rooted in computer technology allowing the electronic purchase
of a recommended gift from within the social networking system,
maintaining the look and feel of that system during the gift-
notification and purchasing process, and updating the electronic
notification based on tracked factors within the system. See
Specification, FIGS. 3-4, 9, 13 and ,r,r [0005], [0081], [0083],
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[0085]. When considered as an ordered combination, therefore,
claims 1-20 amount to significantly more than an abstract idea.
Appeal Brief 12-13.
The Examiner finds:
Viewing the limitations as an ordered combination does not add
anything further than looking at the limitations individually.
When viewed either individually, or as an ordered
combination, the additional limitations do not amount to a
claim as a whole that is significantly more than the abstract
idea, because the claims simply instruct the practitioner to
implement the abstract idea with routine, conventional
activity (Step 28: NO). The claim is not patent eligible.
Final Action 5-6.
We do not find Appellants' arguments persuasive and agree with the
Examiner's findings. The claim's additional steps-whether viewed
individually or combined----employ computer technology to merely
implement the human activity via conventional technology and therefore do
not amount to significantly more than an abstract idea. As the Supreme
Court has explained, "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
Alice Corp., 134 S. Ct. at 2358. Thus, automating the claimed gift
recommendation method with the use of a generic computer performing
generic computer operations such as collecting and categorizing data does
not transform Appellants' claims into patent-eligible subject matter.
Accordingly, we sustain the Examiner's 35 U.S.C. §101 rejection of claims
1-20.
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Application 13/684,084
DECISION
The Examiner's 35 U.S.C. §101 rejection of claims 1-20 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
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