Ex Parte Ranganath et al

Patent Trial and Appeal Board

Jul 24, 2017

13764740 (P.T.A.B. Jul. 24, 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.
13/764,740 02/11/2013 Rama Ranganath 26295-20626/US 5519
87851 7590 07/26/2017
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center GARG, YOGESH C
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07/26/2017 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):
ptoc @ fenwick.com
fwfacebookpatents @ fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMA KITTANE RANGANATH, JARED MORGENSTERN,
and MARK RABKIN
Appeal 2016-0085261
Application 13/764,740
Technology Center 3600
Before JOHN A. EVANS, HUNG H. BUI, and AARON W. MOORE,
Administrative Patent Judges.
EVANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims 1—20, all of the claims pending in the
application. App. Br. 16. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 Appellants identify Facebook, Inc. as the real party in interest. App. Br. 1.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed March 8, 2016, “App. Br.”), the Reply Brief
(filed September 12, 2016, “Reply Br.”), the Examiner’s Answer (mailed
August 10, 2016, “Ans.”), the Final Action (mailed July 14, 2015, “Final
Act.”), and the Specification (filed February 2, 2013, “Spec.”) for their
Appeal 2016-008526
Application 13/764,740
STATEMENT OF THE CASE
The claims relate to a social networking system. See Abstract.
INVENTION
Claims 1 and 17 are independent. An understanding of the invention
can be derived from a reading of Claim 1, which is reproduced below with
some formatting added:
1. A computer implemented method comprising: storing
user profiles of each of a plurality of users of a social
networking system, each user profile including one or more
interests of a corresponding user;
receiving, by the social networking system, a plurality of
bids, each bid comprising information identifying a gift
suggestion and a bid value representing revenue to be provided
to the social networking system in connection with the gift
suggestion;
identifying by the social networking system, a life event
of a target user of the social networking system;
retrieving by the social networking system, one or more
interests of the target user from the user profile of the target
user;
selecting by the social networking system, one or more
candidate users connected to the target user via the social
networking system; and
for each of one or more of the candidate users:
retrieving by the social networking system, one or more
interests of the candidate user from the user profile of the
candidate user,
generating by the social networking system, a score for
each of a plurality of gift suggestions based on factors including
respective details.
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Application 13/764,740
the bid value associated with the gift suggestion and a matching
between the one or more interests of the target user and the one
or more interests of the candidate user,
selecting by the social networking system, a gift
suggestion from the plurality of gift suggestions based on the
scores, and
sending by the social networking system, the selected gift
suggestion for display to the candidate user.
Rejection
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception to statutory subject matter. Final. Act. 7—10.
ANALYSIS
We have reviewed the rejections of Claims 1—20 in light of
Appellants’ arguments that the Examiner erred. We have considered in this
Decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We
are not persuaded that Appellants identify reversible error. We provide the
following explanation to highlight and address specific arguments and
findings primarily for emphasis. We consider Appellants’ arguments
seriatim, as they are presented in the Appeal Brief, pages 5—15.
Claims 1-20: Non-statutory, Abstract Idea
Doctrinal framework.
“The statutory rule governing patent eligibility ... is found in § 101
of the Patent Act. . . ‘ [wjhoever invents or discovers any new and useful
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process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.’” Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1293 (Fed. Cir. 2016). Notwithstanding this
broad mandate, “judicial gloss on the law of patent eligibility has long
recognized that certain fundamental principles are not included in that broad
statutory grant. Though over the years these principles have been described
in differing terms, in today’s vernacular these exceptions are called Taws of
nature, natural phenomena, and abstract ideas’.” Id. (quoting Alice Corp. v
CLSBanklnt’l, 134 S.Ct. 2347, 2354 (2014)).
The Supreme Court has established a two-part test to distinguish
patents that claim one of the patent-ineligible exceptions to statutory subject
matter from those that claim patent-eligible applications of those concepts.
Alice, 134 S.Ct. at 2354 (citing Mayo Collaborative Services v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1294, 1296—97 (2012). As directed by the
Federal Circuit, we begin with Step 1, whether the claims are “directed to” a
patent-ineligible concept. Rapid Litigation Mgmt. Ltd. v. CellzDirect, Inc.,
827 F.3d 1042, 1047 (Fed. Cir. 2016). If so, we next consider the various
claim elements individually and in an ordered combination to determine
whether the additional elements “‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 134 S.Ct. at 2355.
The Federal Circuit observes that there is no single test or definition to
distinguish a patent-eligible claim from an ineligible one. Amdocs, at 1294.
Instead of a definition or test, the decisional mechanism applied by the
Federal Circuit is a comparison of the accused claims to those of prior cases
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to determine how similar or parallel claims were decided. Id.', see Electric
Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016).
Comparison of adjudicated claims
The Examiner and Appellants agree that Bilski and Alice are relevant.
The Examiner finds that it is “enough to recognize that there is no
meaningful distinction between the conceptual abstraction of risk hedging in
Bilski and the concept of managing and providing web hosting services, a
commercial transaction. Both are squarely within the realm of ‘abstract
ideas’ as the Court has used that term.” Final Act. 8 (citing Bilski v. Kappos,
561 U.S. 593 (2010); Alice, 134 S.Ct. 2347).
Appellants contend the Supreme Court uses the term “abstract ideas”
to mean those ideas that are “building blocks” and “fundamental” to culture
or the “modem economy,” and are “the basic tools of scientific and
technological work.” App. Br. 7 (citing Alice, 134 S.Ct. at 2354, 2357).
Appellants argue that, in order to establish that an idea is a fundamental
building block in this sense specific references must be cited to support a
finding that an alleged abstract idea is “long prevalent” in the field. Thus,
according to Appellants, it must be shown the alleged abstract idea: 1) is
long known, rather than of recent origin; and 2) is widely used. App. Br. 7.
Appellants contend the claimed social networking system is not a long
prevalent practice in the field of promoting products, nor is using asocial
networking system as an intermediary for promoting products for gift giving
a fundamental economic practice. App. Br. 8. Appellants argue a social
networking system is a specific type of system that stores information
describing users and their interactions with each other. Appellants insist
their claims relate to a process of “managing a commercial transaction
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wherein merchants/vendors use [the] social networking system as an
intermediary or an agent for letting merchants/vendors promote their
products.” Id. Thus, Appellants argue, the claimed method cannot be a
fundamental economic practice because it encompasses a specific type of
method to manage a commercial transaction using a specific type of system,
and there are many other ways to manage commercial transactions. Id.
(citing Alice, 134 S.Ct. at 2354 (distinguishing “patents that claim the
‘buildin[g] block[s]’ of human ingenuity,” from those that “pose no
comparable risk of pre-emption”).
We disagree with Appellants because, whereas “preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellants further argue the Examiner fails to identify the specific
claim limitation that recites the judicial exception and, thus, the Examiner
also fails to explain why any further limitations are not “significantly more”
than the judicial exception. Reply Br. 4.
We agree with the Examiner’s finding that representative Claim 13 * * 6is
drawn to the concept of providing gift suggestions to users of a social
networking system based upon stored user profiles. Ans. 4. The Examiner
finds, and we agree, the
social networking system, when given the broadest reasonable
interpretation, can be considered as an entity to be represented
3 The Examiner finds Claim 1 to be representative and rejects all claims
based solely on a discussion of Claim 1. Final Act. 7 (citing Planet Bingo,
LLCv. VKGS, LLC, 961 F.Supp.2d 854, 857 (W.D. Mich. 2013)).
Appellants do not separately argue the claims. See App. Br. 5—15.
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by a group of people and acting as an intermediary to provide
gift suggestions for the group participants based upon life
events such as birthdays, anniversaries, etc. based upon user
profiles. For example, a social networking system could relate
to a big family group comprising a plurality of relatives,
siblings, children, adults, men, women, etc.
Id. Therefore, the “concept of providing gift suggestions to users of a social
networking system based upon stored user profiles covers a ‘fundamental
practice long prevalent in our system, ’ involving human activity relating to
commercial practices because the purchase of suggested gifts so relate to
commercial practice.” Id. (citing Alice, 134 S.Ct. at 2357 (intermediated
settlement); Bilski, 561 U.S. at 611 (risk hedging)). We agree with the
Examiner’s finding that Claim 1 “requires concrete, tangible components
such as ‘a computer associated with the social networking system.’”
However, as found by the Examiner, the Specification makes clear that the
recited physical components merely provide a generic environment. Id.
(citing Spec., 128 (“[T]he social networking system 100 is implemented
using a computer system. The users including the target user 105 and
friends 145 communicate with the social networking system using computer
systems, for example, client devices.”)). Appellants’ disclosure further
clarifies that the claims relate to an abstract idea: “A social networking
system provides gift suggestions to users of the social networking system.
The suggested gifts are presented to a user who is connected to a target user
in the social networking system, where the suggested gift is for a life event
of the target user.” Spec., 1 5.
Appellants cite DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014), for the proposition that “additional limitations,
though implemented on a generic computer, [may] confer patent-eligibility.”
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App. Br. 15. However, we agree with the Examiner that Enfish more aptly
articulated how computer related claims can be patent eligible. Ans. 5.
(citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016)
(contrasting claims “directed to an improvement in the functioning of a
computer” with claims “simply adding conventional computer components
to well-known business practices”)). Appellants fail to show their claims
result in any “improvement in the functioning of a computer,” or, indeed, the
improvement of any technology. Thus, we find the claims are directed to
non-patent-eligible abstract ideas.
DECISION
The Examiner’s rejection of Claims 1—20 under 35 U.S.C. § 101 is
affirmed.
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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