Ex Parte Rajaram

Patent Trial and Appeal Board

Sep 6, 2018

13247780 (P.T.A.B. Sep. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/247,780 09/28/2011 Gokul Rajaram
91230 7590 09/10/2018
Baker Botts L.L.P./Facebook Inc.
2001 ROSS A VENUE
SUITE 900
Dallas, TX 75201
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.
079894.0347 3483
EXAMINER
PATEL,DIPENM
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/10/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GOKUL RAJARAM
Appeal2016--006781 1
Application 13/247,7802
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRADLEY B. BAY AT, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1--4, 6, 10, 21-25, 27-31, and 34--37. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Br.," filed
November 3, 2015), the Examiner's Answer ("Ans.," mailed
April 20, 2016), and Non-Final Office Action (''Non-Final Act.," mailed
July 15, 2015).
2 Appellant identifies Facebook, Inc., as the real party in interest (Br. 3).
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Application 13/247,780
CLAIMED INVENTION
Appellant's claims relate generally to "to providing a referral program
for businesses that also maintain a presence on a social networking system"
(Spec. ,r 1 ).
Claims 1, 21, and 28 are the independent claims on appeal. Claim 1,
reproduced below with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
1. A method comprising:
[a] receiving a request to perform a social-networking
action in relation to a concept node and a user node in a social
graph of a social-networking system, wherein the user node
represents a user of the social-networking system, and wherein
the concept node represents a merchant;
[b] by the computing device, receiving data indicating a
completed transaction involving the user and the merchant,
wherein the data comprises information identifying the user, the
merchant, and a particular purchase by the user from the
merchant;
[ c] by the computing device, in response to the receiving
the request, displaying a prompt to enter an interaction
identification code, wherein the interaction identification code is
a unique code generated by the merchant, and wherein the
interaction identification code identifies the completed
transaction;
[ d] by the computing device, receiving the interaction
identification code;
[ e] by the computing device, verifying, using the data
indicating the completed transaction, the interaction
identification code;
[ fJ by the computing device, displaying ( 1) a list of entities
associated with the merchant in the social-networking system
and (2) a prompt to select a referrer from the list of entities;
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[g] by the computing device, rece1vmg a selection
identifying one of the entities as the referrer, the social-
networking system being operable to apply one or more policies
to an account associated with the referrer and the merchant in the
social-networking system; and
[h] by the computing device, creating an edge between the
user node and the concept node in relation to the social-
networking action, wherein the edge comprises information
associating the identified referrer entity with the data indicating
the completed transaction.
REJECTIONS
Claims 1--4, 6, 10, 21-25, 27-31, and 34--37 are rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter.
Claims 1--4, 10, 21-24, 27-30, and 34--37 are rejected under
315 U.S.C. § I03(a) as being unpatentable over Klish (US 2010/0223119
Al, pub. Sept. 2, 2010) and Bohannon, (US 2010/0262461 Al, pub. Oct. 14,
2010).
Claims 6, 25, and 31 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Klish, Bohannon, and Redstone (US 8,150,844 B2, iss.
Apr. 3, 2012).
ANALYSIS
Non-statutory subject matter
Independent claims 1, 21, and 28, and dependent claims 2-4, 6, 10, 22-25,
27, 29-31, and 34-37
Appellant argues claims 1--4, 6, 10, 21-25, 27-31, and 34--37 as a
group (see Br. 5-9). We select independent claim 1 as representative.
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Claims 2--4, 6, 10, 21-25, 27-31, and 34--37 stand or fall with independent
claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
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
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination"' to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
( quoting Mayo, 566 U.S. at 79, 78).
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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
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McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to a method
[ t Jo implement the abstract idea of organizing human activities,
utilizing basic data processing techniques, between a user
(buyer), a merchant (seller), and a third-party (a referrer).
Furthermore, this abstract idea also seems to be directed to a
fundamental economic practice, at least in part, of crediting the
referrer for increasing sales for a particular merchant, sort of like
a word-of-mouth campaign. Lastly, the transaction identifier as
being claimed is being interpreted as a routine and fundamental
building block utilized in the industry for daily business activities
such as settlement, accounting and/ or forecasting.
(Non-Final Act. 5; see also Ans. 3--4). The Examiner also determined that
the additional elements or combination of elements in the claims, other than
the abstract idea, amounts to "no more than: (i) mere instructions to
implement the idea on a computer, and (ii) recitation of generic computer
structure that serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
pertinent industry"; and that viewed as a whole, these additional claim
elements do not provide meaningful limitations to transform the abstract
idea into a patent-eligible application of the abstract idea such that the
claims amount to significantly more than the abstract idea itself (Non-Final
Act. 5-6).
In response, Appellant argues that independent claim 1 is not directed
to an abstract idea because "[i]t is not by itself a building block of human
ingenuity, a fundamental economic practice, a method of organizing human
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activity, an idea of itself, or a mathematical relationship or formula" (Br. 7-
8). However, the Supreme Court in Alice did not rigidly define or otherwise
restrict the universe of abstract ideas to one or more of: a building block of
human ingenuity, a fundamental economic practice, and an algorithm. See
Alice, 134 S. Ct. at 2357 ("[W]e need not labor to delimit the precise
contours of the 'abstract ideas' category"). And, under step one of the
framework set forth in Alice, we agree with the Examiner that the invention
is broadly directed to an abstract idea (see e.g., Ans. 3 (citing Spec. ,r,r 1,
51 )), and is similar to the steps that the Federal Circuit determined are patent
ineligible in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (collecting information and "analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, [are] essentially mental processes within the abstract-idea
category.").
Here, as the Examiner points out (see Ans. 3), the present invention
"relates to providing a referral program for businesses that also maintain a
presence on a social networking system, and from the referral program,
identifying experts and influencers in the social network and utilizing the
identified experts and influencers for advertising, social grouping, and other
suitable purposes" (Spec. ,r 1 ). According to the Specification, the present
[i]nvention permit[s] an application residing on a computing
device to receive a code corresponding to a particular node on
the social network that represents a particular business. Upon
receiving the code, the application may prompt the user of the
application to select from a list of his or her first-degree
connections, the user or users who referred the user to the
particular business.
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(Id. ,r 4). And, taking independent claim 1 as representative, the claimed
subject matter is generally directed to "receiving a request to perform a
social-networking action" between "a user of the social-networking system"
and "a merchant," "receiving data indicating a completed transaction
involving the user and the merchant," "in response to the receiving the
request, displaying" an interaction identification code that identifies the
completed transaction, and is generated by the merchant, receiving and
verifying the interaction identification code, "displaying (1) a list of entities
associated with the merchant in the social-networking system and (2) a
prompt to select a referrer from the list of entities," "receiving a selection
identifying one of the entities as the referrer," and the ability "to apply one
or more policies to an account associated with the referrer and the merchant
in the social-networking system," "creating an edge between the user node
and the concept node in relation to the social-networking action." See claim
1 supra.
Accordingly, we find that independent claim 1 involves nothing more
than receiving data, analyzing data, and providing data, without any
particular inventive technology- activities squarely within the realm of
abstract ideas. See, e.g., Elec. Power Grp., LLC, 830 F.3d at 1353-54 (when
"[t]he focus of the asserted claims ... is on collecting information, analyzing
it, and displaying certain results of the collection and analysis," the claims
are directed to an abstract idea). See also 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
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eligible); Clarilogic, Inc. v. FormFree Holdings Corp., 681 F. App'x 950,
954 (Fed. Cir. 2017) (non-precedential) (holding that claims "for collection,
analysis, and generation of information reports, where the claims are not
limited to how the collected information is analyzed or reformed, is the
height of abstraction").
Turning to the second step of the Mayo/Alice framework, rather than
reciting additional elements that amount to "significantly more" than the
abstract idea, exemplary independent claim 1, at best, adds only "a
computing device" i.e., "a desktop computer, laptop computer, personal
digital assistant (PDA)" (see, e.g., Spec. ,r 17), which lacks an inventive
concept. Although the steps of independent claim 1 may be tied to a
computer (see Br. 7), that is not sufficient by itself to transform the abstract
idea into patent-eligible subject matter. See, e.g., DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal quotation
marks omitted) ("[ A ]fter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible .... The bare fact that a computer exists in the physical
rather than purely conceptual realm 'is beside the point."').
And, similar to Electric Power, we are not apprised of anything other
than off-the-shelf, conventional computer and display technology for
gathering, analyzing, and presenting the desired information to remove the
claim from the class of subject matter ineligible for patenting. As the court
explained in Electric Power, "merely selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
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exclusion from § 101 undergirds the information-based category of abstract
ideas." Elec. Power Grp., 830 F.3d at 1355.
Appellant argues that even if the claims are directed to an abstract
idea, the claims are nonetheless patent-eligible because the claims "contain
an inventive concept sufficient to transform the claimed abstract idea into a
patent-eligible application" (Br. 8). However, to the extent Appellant
maintains that the claimed invention is patent-eligible, i.e., that claim 1
amounts to "significantly more" than an abstract idea, and/or that the recited
functions are not "well-understood, routine, and conventional activities,"
because independent claim 1 "is patentably distinct from the cited
references," Appellant misapprehends the controlling precedent.
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "an element or combination of elements
that is 'sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself."'
Alice Corp., 134 S. Ct. at 2355. "Groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry." Ass 'n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
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determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.").
In view of the foregoing, we are not apprised of Examiner error and,
thus, we sustain the Examiner's rejection under 35 U.S.C. § 101 of
independent claim 1, and claims 2--4, 6, 10, 21-25,
27-31, and 34--37, which fall with independent claim 1.
Obviousness
Independent claims 1, 21, and 28, and dependent claims 2-4, 6, 10, 22-25,
27, 29-31, and 34-37
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a), because Klish, upon
which the Examiner relies, does not disclose or suggest "receiving a request
to perform a social-networking action in relation to a concept node and a
user node in a social graph of a social-networking system, wherein the user
node represents a user of the social-networking system, and wherein the
concept node represents a merchant," as recited by limitation [a] of
independent claim 1, and similarly recited by independent claims 21 and 28
(see Br. 9-11).
The Examiner maintains that the rejection is proper, and cites Klish, at
paragraphs 37, 41, 43, 46, 47, elements 114 and 120 of Figure 1, element
304 of Figure 3, and the Abstract (Non-Final Act. 7; see also Ans. 5-6).
However, we agree with Appellant that there is nothing in the cited portions
that discloses or suggests the argued limitation.
In making this determination, we note that Klish is directed to a
system "for creating advertising web user interfaces in a social web site"
(Klish ,r 3). Klish discloses that "users 122-126 belong to the social
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network hosted by social network server 114, and the users create
relationships on the social network that link them to each other" (id. ,r 35).
Reproduced below is Figure 1 of Klish.
Electronic
Commerce
Advertising
Server
120
FIG. 1 depicts a simplified schematic diagram of a network
system for implementing embodiments of the present invention.
Klish discloses that "sample relationships are shown in FIG. 1 by the
dotted arrows joining user 122 to users 123--125; user 124 to users 122 and
126; user 126 to 123 and 124; etc." (id. ,r 35). Klish further discloses that
"Advertising server 120 provides ad delivery to Internet users and
publishers, also referred to as content providers" (id. ,r 36). Klish discloses
that "Social Network Server 114, Advertising Server 120, Endorsement
Server 112, and Electronic Commerce Server 116 cooperate to allow users
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to endorse products and services, get or search endorsement information
from other users, place advertisements in social web sites, and purchase
products and services" (id. ,r 37). Klish further discloses that "once a user
clicks on a product sponsored on a social site, the user is redirected to
Electronic Commerce Server 116 where the user can purchase the sponsored
product or service" (id.). More particularly, Klish discloses
[ w ]hen a product endorsement is clicked on by a user, the product
advertisement redirects the user to another website containing
more product information, such as Electronic Commerce Server
116 of FIG. 1. The click can be a billable event similar to
sponsored search advertisements in search engines. Advertisers
will pay, that is, provide incentives, for each click or conversion
generated by an advertisement embedded inside a user's home
page in the form of an endorsement.
(Id. ,I 48).
We have reviewed the cited portions of Klish, and agree with
Appellant that none of the cited portions of Klish discloses or suggests the
argued limitation. Instead, we agree with Appellant that "the social network
in Klish is limited to users connected to other users" (Br. 10), and as such,
does not disclose or suggest "a concept node and a user node in a social
graph of a social-networking system," as required by independent claims 1,
21, and 28. Although we agree with the Examiner that Klish describes
relationships between user nodes, we do not see, and the Examiner does not
explain adequately how or why Klish discloses or suggests a "concept
node," as the claims require.
Responding to Appellant's argument in the Response to Argument
section of the Answer, the Examiner finds that "there is a direct connection
between the user and the merchants" in Klish because "the user is endorsing
one or more of [a] merchant's product[s]" (Ans. 6 (citing Klish ,r,r 37, 41,
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43, 49; Fig. 1, elements 112, 114 and Fig. 3, elements 304, 306)). The
difficulty with the Examiner's reasoning, however, is that the claims do not
simply require "a direct connection between the user and the merchants"; but
rather, a connection between "a concept node and a user node." Here, as
Appellant points out, Klish only discloses relationships between users (see
Br. 10 (citing Klish ,r 35). The Examiner does not rely on Bohannon to
address this limitation (see Non-Final Act. 10-11). Thus, we are persuaded
by Appellant's argument that the combination of Klish and Bohannon fails
to disclose or suggest "receiving a request to perform a social-networking
action in relation to a concept node and a user node in a social graph of a
social-networking system, wherein the user node represents a user of the
social-networking system, and wherein the concept node represents a
merchant," as recited by limitation [a] of independent claim 1, and similarly
recited by independent claims 21 and 28.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1, 21, and 28 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner's rejection of claims 2--4, 10,
22-24, 27, 29, 30, and 34--37, which depend therefrom. On the same basis,
we do not sustain the obviousness rejection of dependent claims 6, 25, and
31, as the additional reference, Redstone, is not cited to remedy the
aforementioned deficiency.
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DECISION
The Examiner's rejection of claims 1--4, 6, 10, 21-25, 27-31, and 34--
37 under 35 U.S.C. § 101 is affirmed.
The Examiner's rejections of claims 1--4, 6, 10, 21-25, 27-31, and
34--37 under 35 U.S.C. § 103(a) are reversed.
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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