Ex Parte Linden et al

Patent Trial and Appeal Board

Oct 30, 2018

13615328 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/615,328 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.
19487.352.4 7301
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
Appeal2017-005350
Application 13/615,328 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
non-final rejection of claims 1-20, 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. 13/615,289, 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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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, at an online social network, a gift request from a
sender, the gift request specifying a recipient and a selected gift item;
requesting, by the online social network, approval of the gift
item from the recipient by sending the recipient an electronic gift
message with an option to accept the gift item;
posting, by the online social network, a notification of the gift
item on the online social network for viewing by the sender and
friends of the sender in response to the approval of the gift item by the
recipient but prior to the sender purchasing the gift item, wherein the
notification comprises an indication of the sender, the recipient, and a
modification to the gift item by the recipient;
upon posting the notification of the gift item, sending, by the
online social network, an electronic message to the sender indicating
the posting of the notification to the online social network and
prompting the sender to purchase the gift item for the recipient;
monitoring, by the online social network, comments made on
the notification;
dynamically updating, by the online social network, the
electronic message to the sender prompting the sender to purchase the
gift item for the recipient, each time a comment is made on the
notification, to include the comment made on the notification and an
indication of the friend of the sender that made the comment; and
in response to the sender confirming the purchase of the gift
item, initiating payment for the gift item.
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception without significantly
more. Non-Final Act. 2--4.
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Claims 1, 7, 10-18, and20 stand rejected underpre-AIA35 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), and Reilly et al. (US
2011/0055335 Al; published Mar. 3, 2011) ("Reilly"). Non-Final Act. 5-9.
Claims 2-6, 8, 9, and 19 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over the combination of O'Sullivan, Morgenstern,
Reilly, and Kaushansky et al. (US 2008/0215607 Al; published Sept. 4,
2008) ("Kaushansky"). Non-Final Act. 9-12.
Claim 1 stands provisionally rejected on the ground of nonstatutory
double patenting as unpatentable over claim 1 of copending Application No.
13/615,289, claim 1 of copending Application No. 13/615,321, and claim 1
of copending Application No. 13/615,307. Non-Final Act. 12-13.
ANALYSIS
We have reviewed the rejections of claims 1-20 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 (Non-Final Act. 2-14). We provide the following explanation for
emphasis.
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Rejection of Claims 1-20 under 35 USC§ 101
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
Bankint'l, 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
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the abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
In rejecting independent claims 1 and 17, and dependent claims 2-16
and 18-20, under 35 U.S.C. § 101, the Examiner determined that the claims
are directed to an abstract idea of "gift shopping," i.e., a "fundamental
economic practice." Non-Final Act. 3. The Examiner also determined that
the claims as a whole do not amount to significantly more than the abstract
idea itself. Id. at 3--4.
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. 13.
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 Non-Final Act. 4; see also Ans. 5. 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
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purchases the gift after recipient approval and after two notifications about
the gift has been posted on an online social network. 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 (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 Non-Final Act. 2-3;
see also Ans. 5-10.
Appellants next argue the Examiner's analysis overly generalizes the
claims because "the actual claims contain numerous steps that are not
involved in the concept of 'gift shopping."' App. Br. 15. 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.
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 a notification of the gift item for viewing by the sender
and friends of the sender in response to the approval of the gift
item by the recipient but prior to the sender purchasing the gift
item, wherein the notification comprises an indication of the
sender, the recipient, and a modification to the gift item by the
recipient,
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is directed to the abstract idea itself, while "by the online social network,"
and "on the 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).
Appellants also argue the claims are directed to concrete, patent-
eligible concepts, not mere "gift shopping." App. Br. 15. In Appellants'
view, the claims are directed to
systems and methods for utilizing an online social network to
provide digital notifications and messages to a sender of a gift
item (and friends of the sender) prior to the sender purchasing a
gift, while monitoring digital comments provided via the social
networking system and updating messages to the sender prior to
the sender purchasing the gift for the recipient via the online
social network.
Id. at 16 (citing Enfish).
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. 17 ( 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. 5---6.
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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. 18. 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
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 determined that the limitations
requiring steps be performed "by the online social network" and "on the
online social network" are nothing more than a requirement that the steps be
performed by a generic computer. Ans. 4--5, 7. The Examiner reached the
same conclusion in analyzing the "electronic message." Id. at 5, 7.
Appellants have not challenged the Examiner's determinations with regard
to the additional elements identified by the Examiner. Nor have Appellants
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argued that any additional element adds something "significantly more" such
that the claims are patent-eligible. See App. Br. 17-21.
For example, Appellants do not argue that any of the elements of
claims 1 and 17 are individually inventive. See App. Br. 17-18. 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
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
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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. 19 (citing Bascom Global Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Appellants argue
"the ordered combination of limitations in the claims provide an inventive
concept that goes beyond mere recitation of 'gift shopping."' Id. at 20. In
particular, Appellants argue the claims
include the inventive concept of utilizing an online social
network to provide digital notifications and messages to a sender
of a gift item ( and friends and family of the sender) prior to the
sender purchasing a gift, while monitoring digital comments
provided via the social networking system and updating
messages to the sender prior to the sender purchasing the gift for
the recipient via the online social network.
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. 21.
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.
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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
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. 8), 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 1-20 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 1-20 under 35 USC§ 103(a)
In rejecting independent claims 1 and 17 for obviousness, the
Examiner found the combination of O'Sullivan, Morgenstern, and Reilly
teaches all of the recited limitations. Non-Final Act. 5-9.
Appellants contend the Examiner erred because the cited references
fail to teach or suggest the limitation
posting, by the online social network, a notification of the
gift item on the online social network for viewing by the sender
and friends of the sender in response to the approval of the gift
item by the recipient but prior to the sender purchasing the gift
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item, wherein the notification comprises an indication of the
sender, the recipient, and a modification to the gift item by the
recipient,
as recited in independent claim 1, and as similarly recited in independent
claim 17. App. Br. 24--25. In particular, Appellants argue that one of
ordinary skill would not have read O'Sullivan and Morgenstern as teaching
posting a notification for viewing by the sender and friends of the sender
prior to the sender purchasing the gift item. Id. at 26.
We are not persuaded that the Examiner erred. The Examiner found
that O'Sullivan teaches a notification that is sent prior to purchasing the
item. Non-Final Act. 5; Ans. 9 (citing O'Sullivan Fig. 3C, ,r 48). We agree.
O'Sullivan, in describing Figure 3C, explicitly teaches "the transaction
manager module 208 or purchase process manager module 204 may notify
the gift recipient of the gift giver's final gift selection prior to actual
purchase of the gift by the gift giver (block 332)." O'Sullivan ,r 48.
Appellants further argue the portions of O'Sullivan cited by the
Examiner do not teach "posting" notifications, but simply teach sending
approval messages to a recipient. Reply Br. 9.
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
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).
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Here, the Examiner relied on O'Sullivan as teaching posting a
notification of the gift item. Non-Final Act. 5. 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. at 5---6. 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, Morgenstern, and Reilly teaches or
suggests the disputed limitation recited in claims 1 and 1 7.
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. 27; Reply Br. 11. 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. 27 (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. (citing O'Sullivan ,r 70). Further, Appellants argue that "O'Sullivan
teaches that 'explicitness' would 'devalue the gift and/or the entire gift
giving process."' Id. (citing O'Sullivan ,r 6).
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Appellants' "teaching away" argument fails because Appellants have
not identified where O'Sullivan actually criticizes, discredits, or otherwise
discourages
posting, by the online social network, a notification of the gift
item on the online social network for viewing by the sender and
friends of the sender in response to the approval of the gift item
by the recipient but prior to the sender purchasing the gift item,
wherein the notification comprises an indication of the sender,
the recipient, and a modification to the gift item by the recipient.
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
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
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cannot be said to be teaching away from a public notification." Ans. 9
( 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 limitation. App. Br. 26.
We disagree. 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); see Non-Final Act. 6. Thus,
we are not persuaded of error in the Examiner's ultimate conclusion that
claims 1 and 1 7 are obvious over the combined teachings of O'Sullivan,
Morgenstern, and Reilly.
Accordingly, we sustain the Examiner's§ 103(a) rejection of
independent claims 1 and 17. We also sustain the Examiner's§ 103(a)
rejection of dependent claims 2-16 and 18-20, not argued separately with
particularity. App. Br. 28, 29.
Non-Statutory Double Patenting Rejection of Claim 1
Claim 1 stands provisionally rejected on the ground of nonstatutory
double patenting as unpatentable over claim 1 of copending Application No.
13/615,289, claim 1 of copending Application No. 13/615,321, and claim 1
of copending Application No. 13/615,307. Non-Final Act. 12-13.
Because Appellants make no arguments related to this rejection, we
sustain the rejection proforma. Arguments not made are waived.
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DECISION
We affirm the Examiner's decision rejecting claims 1-20.
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. § 4I.50(f).
AFFIRMED
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