Ex Parte Malik et alDownload PDFPatent Trial and Appeal BoardSep 29, 201714323472 (P.T.A.B. Sep. 29, 2017) Copy Citation 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. 14/323,472 07/03/2014 Dale W. Malik 19487.370.3.1.3 9800 107193 7590 10/03/2017 Keller Jolley Preece/Facebook 1010 North 500 East Suite 210 North Salt Lake, UT 84054 EXAMINER SCHMUCKER, MICHAEL W ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 10/03/2017 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): docketing@kjpip.com gj olley @ kj pip. com tkusitor@kjpip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DALE W. MALIK and RICHARD A. ANDERSON Appeal 2016-007676 Application 14/323,4721 Technology Center 3600 Before JOSEPH L. DIXON, ELENI MANTIS MERCADER, and ALEX S. YAP, Administrative Patent Judges. YAP, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—20, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Facebook, Inc. (App. Br. 2.) Appeal 2016-007676 Application 14/323,472 STATEMENT OF THE CASE Introduction Appellants’ Specification states that their “inventions relate to the provision of information on communication devices and services.” (July 3, 2014 Specification (“Spec.”) 2.) Claim 1 is illustrative and is reproduced below: 1. A method comprising: comparing, using at least one processor, user profile information for a first user to user profile information for a second user to identify a discrepancy between the user profile information for the first user and the user profile information for the second user; and providing, to the second user and based on the identified discrepancy, contextual information associated with the identified discrepancy. Prior Art and Rejections on Appeal The following table lists the prior art relied upon by the Examiner in rejecting the claims on appeal: US 2001/0013069 A1 Aug. 9, 2001 US 2001/0027478 A1 Oct. 4, 2001 Claims 1—20 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 8,341,018 and the claims of copending Application Nos. 14/323,447, 14/323,464, 13/687,068, and 14/328,516. (See Final Office Action (mailed June 25, 2015) (“Final Act.”) 2-8, 21.) Shah Meier et al. (“Meier”) 2 Appeal 2016-007676 Application 14/323,472 Claims 1—7, 9, 10, 13—16, and 18—20 stand rejected under 35 U.S.C. § 102 as being anticipated by Shah. (See id. at 11—17, 24—27.) Claims 8, 11, 12, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Shah in view of Meier. (See id. at 17—20.) Claims 1—20 stand rejected under 35 U.S.C. § 101 because the claims are not directed to patent eligible subject matter. (See id. at 9-11, 21—24.) ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We are persuaded that the Examiner erred in rejecting claims 1—20 under 35 U.S.C. §§ 102 and 103. We are not persuaded that the Examiner erred in rejecting claims 1—20 under 35 U.S.C. §101 and on the ground of nonstatutory double patenting. Prior Art With respect to independent claims 1,10, and 16, the Examiner finds that Shah discloses the limitations of these claims. (Final Act. 11—12, 15— 16.) Specifically, according to the Examiner, Shah discloses “comparing, using at least one processor, user profile information for a first user to user profile information for a second user to identity a discrepancy between the user profile information for the first user and the user profile information for the second user” of claim 1. (Emphasis added.) Independent claims 10 and 16 contain similar limitations. According to the Examiner, Shah discloses this limitation because the “identifies whether the sender’s message routing information is a match to the receiver’s message routing information!)]” (Final Act. 12.) In Shah, a message sent by a sender to a recipient can be rerouted “according to the recipient’s message routing preference” by 3 Appeal 2016-007676 Application 14/323,472 routing server 42. (Shah 140.) Shah also discloses that “message—initiation header typically includes information such as the identities of the sender and recipient and the length and priority of the message.” {Id. 150.) Server 42 “examines the message-initiation header and, based on the header, the network environment, and the recipient’s routing rules, determines the appropriate receiving device and whether or not PTP communication between the sending and receiving devices is possible.” {Id. 151.) Appellants contend that Shah does not disclose the limitation at issue. (App. Br. 17—18.) We have reviewed the portions of Shah cited by the Examiner, and we agree with Appellants that these cited portions of Shah do not disclose the limitation at issue. Even assuming arguendo that the Examiner’s construction of the term “user profile” is correct, the cited portions of Shah do not disclose comparing the user profiles of the sender (first user) and the recipient (second user). Instead, server 42 “examines the message-initiation header and, based on the header, the network environment, and the recipient’s routing rules” decides how to route the message. (Shah 151.) On the record before us, the Examiner does not explain adequately how the system in Shah would necessarily need to compare the message-initiation header (containing the first user’s user profile) with the recipient’s message routing preference (containing second user’s user profile).2 2 In case of further prosecution, the Examiner may consider whether it would have been obvious to one of ordinary skill in the art that the system in Shah would compare the message-initiation header (containing the first user’s user profile) with the recipient’s message routing preference (containing second user’s user profile). 4 Appeal 2016-007676 Application 14/323,472 For the foregoing reasons, we are persuaded of Examiner error in the rejection of independent claims 1,10, and 16, and do not sustain the 35 U.S.C. § 102 rejection of these claims. We are also persuaded of Examiner error in the rejection of dependent claims 2—9, 11—15, and 17—20, which depend from either claim 1, 10, or 16, and therefore do not sustain the 35 U.S.C. § 102 rejection and 35 U.S.C. § 103 rejection of these claims for the same reasons. Patent Eligibility The Examiner rejects claims 1-20 under 35 U.S.C. § 101 because the claims are not directed to patent eligible subject matter. (Final Act. 9-11, 21—24.) According to the Examiner: The Claims are directed to accessing data, inferring data, accessing more data, assembling data for marketing purposes. Similar claims directed to comparing new and stored information and using rules to identify options . . . , organizing information through mathematical correlations . . . , and using categories to organize, store and transmit information . . . have all been found by the courts to be abstract ideas. Further several additional court decisions have identified fundamental economic practices as abstract ideas as well (Alice, Bilski, BuySAFE and Ultramercial). Because Applicants claims are directed to similar steps of retrieving and manipulating data, the claims are likewise directed to abstract ideas. Further the claims detail steps toward marketing, which is a fundamental economic practice and therefore the claims disclose a patent ineligible abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no other elements in the claims beyond the abstract ideas identified above. At a minimum the claims disclose generic computer components that serve only to implement the claimed judicial exceptions. The generically recited computer elements do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation. 5 Appeal 2016-007676 Application 14/323,472 (Id. at 23—24.) Appellants contend that the claims are not directed to an abstract idea abstract idea and even if they were, the claims include “limitations that are significantly more than the abstract idea.” (App. Br. 26—32.) Appellants, however, have not persuaded us that the Examiner erred. Whether an invention is patent-eligible is an issue of law, which we will review de novo. 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 implicit exceptions: “[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). 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. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). In accordance with that framework, we first determine whether the claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing respondents’ claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable 6 Appeal 2016-007676 Application 14/323,472 subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978) (“Respondent’s application simply provides a new and presumably better method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S. 63, 64 (1972) (“They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals.”). The patent-ineligible end of the spectrum includes fundamental economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611; mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of scientific and technological work, Gottschalk, 409 U.S. at 67. On the patent- eligible side of the spectrum are physical and chemical processes, such as curing rubber, Diamond, 450 U.S. at 184 n.8, “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for manufacturing flour, Gottschalk, 409 U.S. at 69. 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. Alice, 134 S. Ct. 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. With regard to the first step of Alice, the Examiner finds the claims are directed to an abstract idea of “accessing data, inferring data, accessing more data, assembling data for marketing purposes.” (Final Act. 23.) Specifically, according to the Examiner: Similar claims directed to comparing new and stored information and using rules to identify options in SpartGene v. Advanced Biological Labs, organizing information through mathematical 7 Appeal 2016-007676 Application 14/323,472 correlations Digitech v. Electronics for Imaging, and using categories to organize, store and transmit information in Cyberfone v. CNN have all been found by the courts to be abstract ideas. Further several additional court decisions have identified fundamental economic practices as abstract ideas as well (Alice, Bilski, Buy SAFE and Ultramercial). Because Applicants claims are directed to similar steps of retrieving and manipulating data, the claims are likewise directed to abstract ideas. Further the claims detail steps toward marketing, which is a fundamental economic practice and therefore the claims disclose a patent ineligible abstract idea. (Final Act. 23; Ans. 7—8.) Appellants contend that “[t]he present claims go well beyond the abstract idea found in Ultramercial.” (App. Br. 29.) According to Appellants, the claims are not abstract because: the present claims recite a method of identifying discrepancies in information related to user profiles, communication devices, and communication services utilized by users of a communication system. “Identifying discrepancies” is significantly more than consulting activity logs, as found to be a “data-gathering step,” and restricting public access, as found to be “pre-solution activity” in Ultramercial. Rather, “identifying discrepancies” involves comparing user profiles, communication devices, and communication services between users. . . . {Id. at 29—30; Reply 8—9.) Appellants have not persuaded us that the claims are directed to a specific improvement to computer-related technology instead of use of computer-related technology for “accessing data, inferring data, accessing more data, assembling data.” (Final Act. 23; Ans. 7—8.) Moreover, Appellants’ contentions are mere attorney argument and a conclusory statement, which is unsupported by factual evidence, and, thus is entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). 8 Appeal 2016-007676 Application 14/323,472 Appellants also contend that “the claims are directed to subject matter that is significantly different compared to cases that have been held to be directed to ‘advertising’ or ‘marketing’ [and that] the Examiner errs in asserting that independent claims 1,10, and 16 are directed to the abstract idea of an economic practice ... of marketing.” (App. Br. 28—29; Reply 8— 9.) We are not persuaded by Appellants’ contention because, as discussed above, the Examiner also provided other reasons (e.g., the use of computer- related technology for “accessing data, inferring data, accessing more data, assembling data”) for why the claims are abstract. In addition, claim 12, which recite, in part, “contextual information comprises promotional content associated with . . .,” is directed to the fundamental business practice of marketing. (Emphasis added.) This is confirmed by the Specification, which states that “[contextual information may include advertising, marketing . . ., etc.” (Spec. 14.) Furthermore, the Specification states, in the Summary section, that targeted contextual advertising is the purpose of “the invention”: In sum, the inventions described herein allow for the targeted contextual advertisement of communication devices and services. Further, the inventions implement the targeted contextual advertisement of communication devices and services so the information is delivered in an appropriate contextual manner. (Spec. 6; Ans. 8.) Regarding step two of Alice, Appellants argue that, “the claims of the present application are still directed toward eligible subject matter because they include limitations that are significantly more than an abstract idea.” (App. Br. 30.) According to Appellants, “the claimed invention resolves a particular network-centric problem.” {Id. at 31—32; Reply 9.) Appellants 9 Appeal 2016-007676 Application 14/323,472 contend that “[providing notifications based on these identified discrepancies, as presently claimed[,] is not part of any ‘business practice known from the pre-Internet world. ’ Rather, providing notifications in the manner claimed is a solution to a problem that, per se, arose in the realm of computer networks.” (App. Br. 32.) Appellants, however, do not provide persuasive evidence that the claim amounts to “significantly more” than the abstract idea itself, and we agree with the Examiner’s finding that nothing in the claims adds an inventive concept that transforms the nature of the claim into a patent-eligible application of the abstract idea. (Final Act. 23—24; Ans. 9, 11.) We agree with the Examiner that “[tjhere is no indication that” the alleged improvement (i.e., ‘“identifying a discrepancy’ between user profiles, communication devices, and communication services, and providing a notification based on the identified discrepancy” (App. Br. 31— 32)) “improves the functioning of a computer or improves any other technology.” (Ans. 8—9.) Moreover, the alleged improvement is mere attorney argument and a conclusory statement, which is unsupported by factual evidence, and, thus is entitled to little probative value. In re Geisler, 116 F.3d at 1470. For the foregoing reasons, because claims 1—20 are directed to an abstract idea and nothing in the claims adds an inventive concept that transforms the nature of the claim into a patent-eligible application of the abstract idea, the claims are not patent-eligible under § 101. Therefore, we sustain the 35 U.S.C. § 101 rejection of claims 1—20. Double Patenting The Examiner rejects claims 1-20 on the ground of non-statutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10 Appeal 2016-007676 Application 14/323,472 8,341,018 and the claims of copending Application Nos. 14/323,447, 14/323,464, 13/687,068, and 14/328,516. (See Final Act. 2-8, 21.) Appellants do not respond to the Examiner’s substantive findings but instead “request[] the rejections on the ground of non-statutory obviousness-type double patenting be held in abeyance at least until the pending claims have been indicated as otherwise allowable.” (App. Br. 33.) Appellants further states that “[a]t such a time as the claims have otherwise been indicated as allowable, Applicant will consider any non-statutory obviousness-type double patenting rejections and reconsider the need to submit a terminal disclaimer.” (Id.) Because Appellants do not challenge the Examiner’s findings on this issue, we summarily affirm the Examiner’s five double patenting rejections of claims 1-20. DECISION We affirm the decision of the Examiner to reject claims 1—20 under 35 U.S.C. § 101 and on the ground of nonstatutory double patenting. We reverse the decision of the Examiner to reject claims 1—20 under 35 U.S.C. §§ 102 and 103(a). 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 11 Copy with citationCopy as parenthetical citation