Ex Parte Nomula

Patent Trials and Appeals Board

Feb 25, 2019

13089772 - (D) (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/089,772 04/19/2011
105518 7590 02/27/2019
JDM Patent Law PLLC
6801 Kenilworth Ave, Suite 120
Riverdale Park, MD 20737
FIRST NAMED INVENTOR
Jagadeshwar Reddy Nomula
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.
NOMUOOOl 1098
EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
jma@jdmpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAGADESHW AR REDDY NO MULA
Appeal 2017-011325
Application 13/089,772
Technology Center 3600
Before DENISE M. POTHIER, WSTIN BUSCH, and
NORMAN H. BEAMER, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
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Application 13/089,772
STATEMENT OF THE CASE
Appellant1,2 appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 21-32 and 39--46. Appeal Br. 2. Claims 1-20 and 33-38
have been canceled. See October 26, 2015 Supplemental Reply 2, 6. The
instant application for this appeal relates to U.S. Application No.
13/908,992, which has been assigned Appeal No. 2017-011126.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Invention
Appellant's invention relates to a method and system for presenting
gift recommendations for a friend through an online social networking
platform. "[I]nformation corresponding to the friend is mined from the
online social networking platform" and "[r]ecommend[ations] corresponding
to gifts for the friend [are] presented based on processing ... the mined
information." Spec. ,r 9. The invention also relates to a similar method and
system that "enable[ s] sharing ... aggregated information to applications
that can leverage the information to enhance the relevance of the targeted
content[, including recommended goods that can be bought as gifts,]
presented to the user." Id. ,r 7; see id. ,r 19.
Independent claim 21 exemplifies the claims at issue and reads as
follows:
21. A method, performed by a computer system, for
recommending to a first user of targeted gifts for a second user
1 Throughout this opinion, we refer to the Non-Final Action (Non-Final
Act.) mailed March 24, 2016, the Appeal Brief (Appeal Br.) filed April 3,
2017, the Examiner's Answer (Ans.) mailed July 3, 2017, and the Reply
Brief (Reply Br.) filed September 5, 2017.
2 Appellant identifies the real party in interest as J agadeshwar Reddy
N omula. Appeal Br. 2.
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linked to the first user through a first online social networking
platform, the first user operating a user terminal, the user
terminal comprising a network-capable computing device
having a display screen to display graphical user interfaces, the
first online social networking platform having at least one
server adapted to perform online social networking services for
users thereof, the computer system comprising a processor, a
system memory, and a network interface device (NID) adapted
to enable the computer system to communicate to both the user
terminal and the first online social networking platform, the
method comprising the steps of:
sending, by the computer system, a first set of
instructions to the user terminal for the user terminal to display
a first user interface (UI), the first UI enabling the first user to
authenticate to the first online social networking platform as a
way for the first user to sign-up with or authenticate into the
computer system;
receiving, by the computer system, social network
information of the first user from the first online social
networking platform after the first user successfully
authenticates to the first online social networking platform, the
received social network information including information
about friends in a social network of the first user in the first
online social networking platform;
sending, by the computer system, a second set of
instructions to the user terminal for the user terminal to display
a second UI, the second UI enabling the first user to select one
or more friends in the first user's social network for whom the
first user wishes to purchase one or more gifts;
receiving, by the computer system, giftee selection
information from the user terminal, the giftee selection
information indicating that the second user is among the
selected one or more friends for whom the first user wishes to
purchase one or more gifts;
receiving, by the computer system, aggregated social
network information of the second user aggregated from one or
more online social networking platforms;
processing and analyzing, by the computer system, the
received aggregated social network information of the second
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user, and recommending one or more potential gift items for the
second user using the received aggregated social network
information of the second user; and
sending, by the computer system, a third set of
instructions to the user terminal for the user terminal to display
a third UI, the third UI presenting the recommended one or
more potential gift items as selectable by the first user for
purchase for the second user.
Id. at 25-26 (Claims App'x).
The Examiner relies on the following as evidence of unpatentability:
Morgenstern
Kanigsberg
Ramer
US 2008/0189188 Al
US 2008/0294624 Al
US 2009/0222329 Al
The Rejections
Aug. 7, 2008
Nov. 27, 2008
Sept. 3, 2009
Claims 21-32 and 39--46 are rejected under 35 U.S.C. § 101.
Non-Final Act. 7-11.
Claims 21-25, 27-31, 40, 41, 43, and 44 3 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Morgenstern and Kanigsberg. Non-Final Act.
13-21.
Claims 26, 39, 42, 45, and 46 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Morgenstern, Kanigsberg, and Ramer. Non-Final Act.
21-26.
THE PATENT ELIGIBILITY REJECTION
The Examiner finds that the claims are directed to (1) an abstract idea
of collecting, comparing, organizing, storing, and transmitting information,
3 Although omitting claim 44 in the rejection's heading (Non-Final Act. 13),
claim 44 is rejected the rejection's body (Non-Final Act. 21).
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including using rules to identify options (Non-Final Act. 8-10; see also Ans.
3) and (2) optimizing a marketing objective through collecting, storing,
comparing, and displaying data (see Non-Final Act. 4; see also Ans. 3). The
Examiner states the claimed computer components, when considered as an
ordered combination, "add nothing that is not already present when the steps
reconsidered [sic] separately," do not add significantly more than applying
the abstract idea using a generic computer, and do not transform the abstract
idea into a patent-eligible invention. Non-Final Act. 11; Ans.
3--4. The Examiner adds the claim's individual limitations "are some of the
most basic functions of a computer" and are "well-understood, routine,
conventional activities previously known to the industry." Non-Final Act.
IO; see also Ans. 3.
Appellant argues that the Examiner has oversimplified the claims and
has failed to identify an abstract idea when considering the claim as a whole.
Appeal Br. 15-16. Appellant asserts the claimed invention improves on the
existing technological process by acquiring content targeting a specific user
and making gift recommendations using the specific user's ecommerce
activity information. Id. at 17. Appellant further states the additional claim
limitations are not merely routine or conventional. Id. at 18-19.
LEGAL FRAMEWORK
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
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ideas" are not patentable. See Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). Under that framework, we first
determine what concept the claim is "directed to." See Alice, 573 U.S. at
219; see also Bilski v. Kappas, 561 U.S. 593, 611 (2010). Concepts
determined to be abstract ideas, and thus patent ineligible, include certain
methods of organizing human activity, such as fundamental economic
practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental
processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal quotation marks
omitted). "A claim that recites an abstract idea must include 'additional
features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance concerning 35 U.S.C.
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance ("2019
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Guidance"), 84 Fed. Reg. 50 (Jan. 7, 2019). Under this guidance, we first
look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes) ("Revised Step 2A, Prong One"); and
(2) additional elements that integrate the judicial exception into a
practical application (see the Manual of Patent Examining Procedure
(MPEP) § 2106.05(a}-(c), (e}-(h)) ("Revised Step 2A, Prong Two").
See 2019 Guidance, 84 Fed. Reg. 50-52, 54--55.
If a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, we further consider whether the
claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Guidance, 84 Fed. Reg. 50, 56.
ANALYSIS
Based on the record before us, we find error.
The Judicial Exception - Revised Step 2A, Prong 1
Among other descriptions, the Examiner finds claim 21 recites
optimizing a marketing objective through collecting, storing, comparing, and
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displaying data. See Non-Final Act. 4; see also Ans. 3. This
characterization falls into one of the three judicial exceptions in the 2019
Guidance, including a certain method of organizing human activity ( e.g.,
commercial interaction that involves marketing and sales activities or
behaviors).
Claim 21 recites " [a] method ... for recommending to a first user of
targeted gifts for a second user." Appeal Br. 25 (Claims App'x). Claim 21 's
method is implemented on a computer system. The recited method uses the
computer system to: (1) send instructions to enable the first user to select a
friend for which the first user wishes to purchase a gift, (2) receive giftee
selection information indicating the second user is among the selected
friend(s) from who the first user wishes to purchase a gift, (3) receive the
second user's aggregated social network information, (4) process and
analyze the received aggregated social network information, (5) recommend
a potential gift item for the second user using the received second user's
aggregated social network information, and ( 6) send instructions to display a
user interface that presents the recommended potential gift item as selectable
to the first user for purchase. Id. at 25-26 (Claims App'x).
Recommending gifts ( e.g., a marketing objective as described by the
Examiner (Non-Final Act. 4)) by targeting a specific user's social network
information, including a recipient's information, is a commercial interaction
( e.g., marketing or sales activity). Because claim 21 covers this commercial
interaction, claim 21 is directed to subject matter that falls within the group
of certain methods of organizing human activity. See 2019 Guidance, 84
Fed. Reg. 50, 52 ( explaining that the grouping of certain methods of
organizing human activity includes "commercial or legal interactions").
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Appellant argues that the Examiner failed to identify one abstract idea
for the entire claim. Appeal Br. 15-16. We are not persuaded. "Adding one
abstract idea (math) to another abstract idea ( encoding and decoding) does
not render the claim non-abstract." See RecogniCorp, LLC v. Nintendo Co.,
855 F.3d 1322, 1327 (Fed. Cir. 2017). Also, to the extent Appellant asserts
the Examiner fails to identify any abstract idea, we disagree for the above-
stated reasons.
Appellant states "the claimed subject matter is ... to increase the
relevancy of gift recommendations specifically targeting a specific user."
Appeal Br. 15. Appellant argues the claimed invention improves on the
conventional art of providing online targeting information to a specific user
by making the acquired content more relevant. Id. at 17. According to the
Specification, known approaches to present targeted content in this
environment do not consider the gift recipient's preferences, including
mining the recipient's information aggregated from multiple social
networking platforms. Spec. ,r,r 5-7, 42--43. Even so, "a claim for a new
abstract idea is still an abstract idea." Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016).
On this record, we are not persuaded that the Examiner erred in
determining that claim 21 recites a judicial exception.
Integration into a Practical Application - Revised Step 2A, Prong 2
Claim 21 recites features in addition to the judicial exception of
recommending gifts by targeting specific user activities. Namely, claim 21
performs its steps using (1) a computer system having a processor, memory
and network interface device, (2) a database that stores information of its
system users, and (3) a user terminal having a display screen to receive and
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send instructions in a social networking environment. In addition, the first
two steps in claim 21 (i.e., "sending ... a first set of instructions to the user
terminal for the user terminal to display a first user interface (UI), the first
UI enabling the first user to authenticate to the first online social networking
platform as a way for the first user to sign-up with or authenticate into the
computer system" and "receiving ... social network information of the first
user from the first online social networking platform after the first user
successfully authenticates to the first online social networking platform, the
received social network information including information about friends in a
social network of the first user in the first online social networking
platform") are separate from the above-identified judicial exception. That is,
these first two steps involve authenticating a user to a social networking
platform and are further features in addition to claim 21 's judicial exception.
Appellant argues the claimed invention improves on the conventional
art by providing online targeting information to a specific user and by
making the acquired content more relevant. Appeal Br. 17 ( citing McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). For
the reasons stated below related to Step 2B, we do not reach whether claim
21 is integrated into a practical application. If prosecution continues, we
encourage the Examiner to follow the guidance set forth in the 2019
Guidance related to Revised Step 2A, Prong 2. See 2019 Guidance, 84 Fed.
Reg. at 54--55.
The Inventive Concept - Step 2B
Regarding the inventive concept, the Examiner finds "the individual
limitations claimed are some of the most basic functions of a computer. All
of these computer functions are well-understood, routine, conventional
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activities previously known to the industry." Non-Final Act. 10; see also
Non-Final Act. 4 (discussing obtaining, identifying, and filtering data
functions are well-understood, routine, and conventional activities); see also
Ans. 3 (same).
Among other things, Appellant argues the first two steps in claim 21
are not routine or conventional activity in a field of recommending a gift to a
specific giftee. See Appeal Br. 18-19. As previously stated, claim 21 's first
two steps are additional elements beyond the judicial exception. Also, as
noted above, claim 21 includes limitations directed to purported
improvements described in the Specification.
In response to Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018),
reh 'g denied en bane, 890 F.3d 1369 (Fed. Cir. 2018), the Office issued
Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (Apr.
19, 2018) ("2018 Memorandum"). 4 Specifically, the 2018 Memorandum
states an additional element ( or combination of elements) is not well-
understood, routine or conventional to one skilled in the art unless the
Examiner finds and supports the§ 101 rejection with one or more of the
following: ( 1) a citation to an express statement in the Specification or to
statement made by applicants during prosecution demonstrating the well-
understood, routine, and conventional nature of the additional elements, (2) a
citation to one or more court decisions in MPEP § 2106.05( d)(II) as noting
the well-understood, routine and conventional nature of the additional
elements, (3) a citation to a publication that demonstrates the well-
4 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419 .PDF.
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understood, routine, and conventional nature of the additional elements, and
( 4) a statement that the Examiner is taking official notice of the well-
understood, routine, and conventional nature of the additional elements.
2018 Memorandum 3--4.
Upon review of the record, the Examiner has not relied upon one or
more of the above-identified manners to support the findings that the certain,
additional features in claim 21 are well-understood, routine, and
conventional. See Non-Final Act. 4, 10; see also Ans. 3. Specifically, the
Examiner has not relied upon the Specification, case law, or a publication to
demonstrate the well-known, routine, and conventional nature of the first
two steps in claim 21 (i.e., "sending ... a first set of instructions to the user
terminal for the user terminal to display a first user interface (UI), the first
UI enabling the first user to authenticate to the first online social networking
platform as a way for the first user to sign-up with or authenticate into the
computer system" and "receiving ... social network information of the first
user from the first online social networking platform after the first user
successfully authenticates to the first online social networking platform, the
received social network information including information about friends in a
social network of the first user in the first online social networking
platform"). See Non-Final Act. 4, 10; see also Ans. 3.
Also, to the extent the Examiner relied upon Official Notice of the
well-understood, routine, and conventional nature of the additional elements,
no such explicit statement has been made in the record. See Non-Final Act.
4 (discussing obtaining, identifying, and filtering data functions are well-
understood, routine, and conventional activities), 10; see also Ans. 3. In
any event, the 2018 Memorandum indicates that once applicant challenges
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the Examiner's position that certain elements are not well-understood,
routine, and conventional activities, as is the case here, the Examiner can no
longer rely on Official Notice and must provide one of the above, outlined
items (1) through (3).
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (1) independent claims 21 and 27 and (2) dependent claims 22-
26, 28-32, and 39--46 for similar reasons.
THE OBVIOUSNESS REJECTION OVER MORGENSTERN
AND KANIGSBERG
Regarding independent claim 21, the Examiner finds Morgenstern
teaches or suggests many of its limitations. Non-Final Act. 13-15 ( citing
Morgenstern ,r,r 21-22, 49, 52-57, Abstract, Figs. 1, 2, 4, 6, and 7). As for
the steps of "receiving ... aggregated social network information of the
second user aggregated from one or more social networking platforms,"
"processing and analyzing ... the received aggregated social network
information of the second user, and recommending one or more potential
gift items for the second user using the received aggregated social network
information of the second user," the Examiner relies on Morgenstern and
Kanigsberg in combination. Id. at 14--15 (citing Kanigsberg ,r 3, Abstract).
Appellant argues Morgenstern is irrelevant to gift-recommending and
therefore to the subject matter recited in independent claim 21. Appeal Br.
20-23. Appellant asserts Morgenstern relates to an already purchased asset
and does not teach selecting a friend "for whom the first user wishes to
purchase one or more gifts" or "recommending one or more potential gift
items for the second user" as recited. Id. Also, Appellant argues
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Kanigsberg does not cure the above purported deficiency because
Kanigsberg is irrelevant to selecting a giftee from a user's friends and to gift
recommendations using a selected giftee' s aggregated social network
information. Id. at 22.
Appellant argues claims 21 and 27 as a group. Id. at 20-23. We
select claim 21 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
MAIN ISSUE
Under§ 103, has the Examiner erred in rejecting claim 21 by finding
Morgenstern and Kanigsberg collectively would have taught or suggested
"receiving ... giftee selection information from the user terminal, the giftee
selection information indicating that the second user is among the selected
one or more friends for whom the first user wishes to purchase one or more
gifts" and "recommending one or more potential gift items for the second
user using the received aggregated social network information of the second
user"?
ANALYSIS
Based on the record before us, we find no error in the Examiner's
obviousness rejection of independent claim 21. Appellant first argues
Morgenstern is irrelevant to gift-recommending. Appeal Br. 20-21, 23. In
this regard, Appellant contends the gifts in Morgenstern have already been
purchased and do not involve selecting a second user as a giftee. Id. at 20.
We are not persuaded.
Morgenstern discloses a method that recommends gifts to a first user.
For instance, Morgenstern discloses a gift database 308 of available gifts
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using a social network provider and a first user's (e.g., 102A) gift webpage
can be used to gift to a second user (e.g., 102B). Morgenstern
,r,r 56, 66, Figs. 1 and 3, cited in part in Non-Final Act. 13-14. Morgenstern
describes Figure 3 as gifting an asset ( e.g., an image) and gift module 306
"may recommend several rose images to" the first user ( e.g., 102A) "for
consideration," which are based on the recipient's affinity. Morgenstern
,r 66. Morgenstern additionally teaches and shows in Figure 6 a first user
selecting a recipient for a gift ( e.g., a friend which is a second user in
window 610) and then displaying numerous "potential gift items" ( e.g., in
window 620) a first user can give to a friend. Morgenstern ,r,r 77-78, Fig. 6,
cited in in part in Non-Final Act. 14. Morgenstern thus teaches a process
that "receiv[ es] ... giftee selection information ... , the giftee selection
information indicating that the second user is among the selected one or
more friends for whom the first user wishes to purchase one or more gifts"
and "recommend[ s] one or more potential gift items for the second user"
based on second user's information (e.g., recipient's affinity) as claim 21
recites.
Additionally, Morgenstern's process includes embodiments where a
first user buys a gift for a second user in an online social network
environment and the gift has not been purchased already. Morgenstern ,r 28;
see also id. ,r,r 76-82, Figs. 5-8, cited in part in Non-Final Act. 13-14.
Even if some features in Morgenstern address an already purchased gift (see
Appeal Br. 20 ( citing Morgenstern ,r,r 24--26) ), Morgenstern teaches other
features where the gift has not been purchased already, such as that shown in
cited Figures 6 and 7 discussed above (see Non-Final Act. 13-14) and
Figure 8 (see Morgenstern, Fig. 8 (elements 810, 820)). See also
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Morgenstern ,r 26, cited in Appeal Br. 20. As such, contrary to Appellant's
assertions, Morgenstern teaches giftee selection from among friends in the
giftor's social network (e.g., element 610 in Figure 6) and the second user's
gift ( e.g., element 620 in Figure 6) is selected for purchase. See Appeal Br.
20-22; see also Reply Br. 5.
Additionally, Appellant contends the Examiner relies on Figure 2 and
in particular, element 240 to teach the giftee selection. Appeal Br. 22.
Appellant argues this relates to displaying purchased gifts and "has nothing
to do with a second user listed in a giftee selection user interface" as
claimed. Id. We are not persuaded. Granted, the Examiner states element
240 "is interpreted as an area of giftee selection." Non-Final Act. 5. But,
this statement is not part of the rejection. Id. at 13-15. The rejection
provides various citations, including Figure 6, which as previously discussed
shows a field where the user can choose the recipient of a gift, including a
friend. Id. at 14 (citing Morgenstern ,r,r 21, 22, 52-57, Abstract, Figs. 1, 2,
4, 6, 7). We refer to the above analysis for more explanation.
Appellant separately contends Morgenstern does not relate to
recommending gifts for the second user using aggregated social network
information as recited. See Appeal Br. 21-22. We are not persuaded.
Notably, claim 21 recites the "aggregated social network information" is
"information of [ each system] user aggregated from one or more online
social networking platforms." Id. at 26 (Claims App'x) (emphasis added).
As broadly recited, the information can come from one social networking
platform.
Turning to the merits, the Examiner relies on Morgenstern and
Kanigsberg to teach this feature. Non-Final Act. 14--15 (citing Kanigsberg
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,r 3, Abstract). In this regard, Morgenstern discusses a user can provide
information to a social network website for access to other users, the
information coming from personal webpages, web logs, and other sources
( e.g., a plurality of social networking platforms). Morgenstern ,r 21. Also,
as previously discussed, Morgenstern discusses making recommendations
based on a recipient's affinity (Morgenstern ,r 66), and Kanigsberg further
teaches that it is known to an ordinary skilled artisan to use user information
in a user's social networking profile to make recommendations in an
ecommerce environment (Kanigsberg ,r 3, Abstract). When combining
Morgenstern's and Kanigsberg's teachings, we agree the combination would
have yielded a predictable result to one ordinarily skilled in the art of
"recommending one or more potential gift items for the second user using
the received aggregated social network information of the second user" as
claim 21 recites. See Non-Final Act. 14--15.
Regarding Kanigsberg, Appellant argues this reference merely
discloses prior art subject matter (i.e., collaborative filtering). Appeal Br.
22-23; Reply Br. 5. For this reason, Appellant asserts Kanigsberg is not
relevant to gift recommending or giftee selection. Id. This argument is
unavailing. First, claim 21 does not preclude using collaborative filtering.
Second, Appellant has not demonstrated how the recited "receiving ... [a]
giftee selection information from the user terminal" or "recommending" a
potential gift excludes a collaborative filtering techniques. Third, although
stating collaborative filtering is a commonly-used technique (Spec. ,r 5), the
Specification also indicates collaborative filtering can be used to recommend
gifts in the invention (Spec. ,r,r 39, 44).
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Appellant quotes many limitations in claim 21 asserting Morgenstern
does not disclose or suggests its limitations. See Appeal Br. 21-22. But,
merely reciting claim features and asserting these features are missing from
Morgenstern is not considered a separate argument for patentability. See In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 21 and claim 27, which is not separately
argued.
Claims 22-25, 28-31, 40, 41, 43, and 44
For the dependent claims, Appellant argues the claims are allowable
due to their dependencies on claims 21 and 2 7. Appeal Br. 23. We are not
persuaded for the above reasons. Accordingly, Appellant has not persuaded
us of error in the rejection of claims 22-25, 28-31, 40, 41, 43, and 44.
THE OBVIOUSNESS REJECTION OVER MORGENSTERN,
KANIGSBERG, AND RAMER
Claims 26, 39, 42, 45, and 46 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Morgenstern, Kanigsberg, and Ramer. Non-Final Act.
21-26. For these claims, Appellant argues the claims are allowable due to
their dependencies on claims 21 and 2 7. Appeal Br. 23. According! y,
Appellant has not persuaded us of error in the rejection of claims 26, 39, 42,
45, and 46.
DECISION
We affirm the Examiner's rejections of claims 21-32 and 39--46 under
§ 103.
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Appeal2017-011325
Application 13/089,772
We reverse the Examiner's rejection of claims 21-32 and 39--46 under
§ 101.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 4I.50(a)(l).
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
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