Ex Parte Malik et al

Patent Trial and Appeal Board

Sep 29, 2017

14323472 (P.T.A.B. Sep. 29, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
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