Ex Parte Tuzhilin et al

Patent Trials and Appeals Board

Apr 1, 2019

13604377 - (D) (P.T.A.B. Apr. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/604,377 09/05/2012 Alexander S. Tuzhilin
91230 7590 04/03/2019
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.
079894.0892 6443
EXAMINER
ZIDANIC, MICHAEL
ART UNIT PAPER NUMBER
2122
NOTIFICATION DATE DELIVERY MODE
04/03/2019 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDERS. TUZHILIN
and GEDIMINAS ADO MA VICIUS
Appeal2018-006813 1
Application 13/604,377
Technology Center 2100
Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 2, 4--7, 9-11, 13-19, 21, 22, and 24, which are all the
claims pending in this application. 2 We have jurisdiction under 35 U.S. C.
§ 6(b).
We affrrm.
1 Appellants identify Facebook, Inc., as the real party in interest. App. Br.
3.
2 Claims 3, 8, 12, 20, and 23 are canceled. See App. Br. 12-16.
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STATEMENT OF THE CASE
Introduction
Appellants' application relates to "dynamic profiling of a user in one
to one marketing applications." Spec. 1 :21-22. Specifically, a user profile
is created based on historical data and is utilized, for example, in a shopping
assistant application to efficiently serve the user. See Spec. 1 :23-2:2. Claim
1 illustrates the claimed subject matter and reads as follows:
1. A method comprising:
accessing, by a computing device, a user profile of a user,
wherein the user profile comprises rules identifying:
a previous state of the user; and
previous purchasing behavior of the user coincident
with the previous state;
determining, by a computing device, a current or future
state of the user;
comparing, by a computing device, the previous state of
the user with the current or future state of the user;
generating, by a computing device, based on a similarity
between the previous state and the current or future state, a
purchasing recommendation for the user that corresponds to the
previous purchasing behavior; and
providing, by a computing device, the purchasing
recommendation.
2
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The Examiner's Rejection
Claims 1, 2, 4--7, 9-11, 13-19, 21, 22, and24 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
ANALYSIS
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 § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g.,Alice Corp. v. CLSBankint'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 inAlice.
Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566U.S. 66, 75-77(2012)). Inaccordancewiththatframework, wefrrst
determine what concept the claim is "directed to." See Alice, 573 U.S. at
219 ("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."); see also Bilski v. Kappas, 561 U.S. 593,611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
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 (Parkerv. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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such as "molding rubberproducts"(Diamondv. Diehr,450U.S. 175,192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n. 7 (quoting Corningv. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Gottschalk, 409 U.S. at 69
(citing Cochranev. Deener, 94 U.S. 780, 785 (1876))).
In Di ehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that"[ a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr,450U.S. at 176, 192("Weview
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws,[] and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Gottschalk and Flook); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step oftheAlice andMayo 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 ( citations 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
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[abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77). "[M]erelyrequir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January?, 2019 Memorandum,2019 Revised Patent
Subject Matter Eligibility Gui dance ("Revised Guidance"). Under that
guidance, we frrst 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 activities, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106. 05( a}-( c ), ( e }-(h) ).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are 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 Revised Guidance.
Revised Guidance Step 1
Step 1 of the Revised Guidance asks whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. § 101: process, machine, manufacture, or
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composition of matter. See Revised Guidance. Claim 1 is drawn to "[a]
method" and recites a number of steps. Accordingly, claim 1 falls within the
process category under § 101.
Revised Guidance Step 2A, Prong 1
Under Step 2A, Prong 1 of the Revised Guidance, we determine
whether the claims recite any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities, or mental processes). See Revised Guidance.
The Examiner concludes the claims are directed to "providing
purchasing recommendations," an abstract idea. Non-Final Act. 2-3; Ans.
2-3. Appellants contend the claims are similar to the claims the Federal
Circuit found patent eligible in McRO, Inc. v. Bandai Namco Games Am.
Inc., 837F.3d 1299(Fed. Cir. 2016). App. Br. 6-9. Specifically, Appellants
argue "the claims here are directed to 'some specific way,' a 'particular
implementation,' of providing a meaningful purchasing recommendation to a
user. Appellant's claimed implementation recites a number of specific,
concrete rules to achieve a specific, concrete way of providing a meaningful
purchasing recommendation to a user." App. Br. 7.
Claim 1 recites "determining ... a current or future state of the user;
comparing ... the previous state of the user with the current or future state
of the user; generating ... based on a similarity between the previous state
and the current or future state, a purchasing recommendation for the user
that corresponds to the previous purchasing behavior." These claim 1
limitations essentially recite comparing previous and current states of a user
and, if the previous and current states are similar, generating a purchasing
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recommendation corresponding to previous purchasing behavior associated
with the previous state-in other words, a personal recommendation service
based on a user's history. Such personal recommendation service can be
implemented by steps performed in a person's mind.
For example, the Specification defmes a current state of a user as
encompassing "the user's location information, preferences, and desires
( e.g., the user is hungry now and wants to eat)." Spec. ,r 23. Such current
state information can be ascertained through mere observation of the user by
a person, such as a friend, concierge, or other service worker. In performing
the personal recommendation service, a person need only recall and evaluate
purchasing behavior of the user at a time when the user's state was similar to
the current state, and then recommend that same or similar purchasing
behavior. One can imagine an implementation of the personal
recommendation service within the scope of claim 1 where a user enters a
favorite restaurant and tells the waiter he's very hungry, and the waiter
remembers that the last time the user came in very hungry he ordered a large
bowl of spaghetti with extra garlic bread, and thus the waiter recommends
that same order to the user. Accordingly, the personal recommendation
service of claim 1 is based on observation and evaluation and falls within the
mental processes category of abstract ideas listed in the Revised Guidance.
Claim 1 is unlike the patent eligible claims in McRO. InMcRO the
representative patent-eligible claim "focused on a specific asserted
improvement in computer animation, i.e., the automatic use of rules of a
particular type." McRO, 837 F.3d at 1314. Importantly, the computer
employed "a distinct process to automate a task previously performed by
humans," in contrast to other cases "where the claimed computer-automated
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process and the prior method were carried out in the same way." Id. Here,
claim 1 does not recite a distinct process that is different than a prior human
method. Rather, claim 1 recites steps such as "determining" and
"comparing" that are not defined with a level of specificity that distinguishes
them from how a human would perform them. Appellants assert that claim
1 recites "a combined order of specific rules." App. Br. 9. The only rules
recited in claim 1, however, are "rules identifying: a previous state of the
user; and previous purchasing behavior of the user coincident with the
previous state." These "rules" merely define data, not some specific way of
performing a distinct process. Therefore, claim 1 falls within the mental
processes category of abstract ideas listed in the Revised Guidance.
Revised Guidance Step 2A, Prong 2
Under the Step 2A, Prong 2 of the Revised Guidance, we next
determine whether the claims recite additional elements that integrate the
judicial exception into a practical application (see MPEP § 2106.05(a}-(c),
(e}-(h)).
We conclude that claim 1 does not integrate the abstract idea into a
practical application because claim 1 merely uses a computer to perform
steps that a person can perform mentally, as discussed above. See MPEP
§ 2106. 05(±) ("[C]laims that amount to nothing more than an instruction to
apply the abstract idea using a generic computer do not render an abstract
idea eligible."). For example, the Specification provides that an embodiment
may implement a "Personal Shopping Assistant (PSA) system" for
providing purchasing recommendations where the P SA system may be "a
general purpose computer 300" (Spec. 19:1--4; 22:21-22), which, as shown
in Figure 7, comprises a "Display Device," "Storage Device," "Processor,"
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and "I/0." See Fig. 7. Accordingly, the fact thatthe steps of the claimed
method are performed "by a computing device" does not integrate the
abstract idea into a practical application because there is no requirement to
use a particular or improved computer. See MPEP § 2106. 05(b) ("It is
important to note that a general purpose computer that applies a judicial
exception, such as an abstract idea, by use of conventional computer
functions does not qualify as a particular machine."); id. at § 2106. 05( a)
("[T]he claim must include more than mere instructions to perform the
method on a generic component or machinery to qualify as an improvement
to an existing technology.").
Additionally, the "accessing" and "providing" limitations in claim 1
are mere pre- and post-solution activities and therefore do not integrate the
abstract idea into a practical application. See MPEP § 2106. 05(g) ("The
term 'extra-solution activity' can be understood as activities incidental to the
primary process or product that are merely a nominal or tangential addition
to the claim. Extra-solution activity includes both pre-solution and post-
solution activity."). In particular, the limitation of"accessing, by a
computing device, a user profile of a user, wherein the user profile
comprises rules identifying: a previous state of the user; and previous
purchasing behavior of the user coincident with the previous state" merely
retrieves data. The limitation "providing, by a computing device, the
purchasing recommendation" merely presents data. Neither the retrieval nor
the presentation of data, as broadly recited in claim 1, meaningfully limits
the claim because these are activities that must be performed in any method
that evaluates data and provides a result.
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Therefore, claim 1 does not integrate the abstract idea into a practical
application.
Revised Guidance Step 2B
Under Step 2B of the Revised Guidance, we next determine whether
the claims recite an "inventive concept" that "must be significantly more
than the abstract idea itself, and cannot simply be an instruction to
implement or apply the abstract idea on a computer." BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir.
2016). Theremustbemorethan "computer functions [that] are 'well-
understood, routine, conventional activit[ ies]' previously known to the
industry." Alice, 573 U.S. at225 (quotingMayo, 566 U.S. at73).
The Examiner concludes claim 1 does not recite additional elements
that are sufficient to amount to significantly more than the abstract idea.
Non-Final Act. 2. Appellants do not argue that claim 1 amounts to
significantly more than the abstract idea. Nevertheless, we briefly look to
whether any additional limitations in claim 1 include an inventive concept.
As already discussed, the claim 1 limitation "by a computing device," when
read in light of the Specification, encompasses the use of a general purpose
computer, and thus does not provide an inventive concept. See, e.g.,
Berkheimerv. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018) ("The
limitations amount to no more than performing the abstract idea of parsing
and comparing data with conventional computer components."). Further,
the claim 1 limitations "accessing ... a user profile of a user" and
"providing ... the purchasing recommendation" do not defme ways of
retrieving and presenting data that is different than any of the myriad
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conventional ways in which a computer can retrieve and present data, and
thus do not provide an inventive concept. See, e.g., buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer
receives and sends the information over a network-with no further
specification-is not even arguably inventive.").
Therefore, claim 1 does not recite an inventive concept. Accordingly,
we agree with the Examiner that independent claim 1, and independent
claims 14 and 18 not specifically argued separately, are directed to patent-
ineligible subject matter.
Dependent Claims
Appellants contend the Examiner failed to establish a prima facie case
of patent ineligibility with respect to the dependent claims, namely, claims 2,
4--7, 9-11, 13, 15-17, 19, 21, 22, and 24. See App. Br. 9-10; Reply Br. 4--6.
The Federal Circuit has repeatedly explained that "the prima facie
case is merely a procedural device that enables an appropriate shift of the
burden of production." Hyattv. Dudas,492F.3d 1365, 1369(Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
"PTO carries its procedural burden of establishing a prima facie case when
its rejection satisfies 35 U.S.C. § 132, in 'notify[ing] the applicant [by]
stating the reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.'" In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132). The PTO
violates § 132 "when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
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rejection." Chesterv. Miller, 906F.2d 1574, 1578 (Fed. Cir. 1990). But if
the PTO "adequately explain[ s] the shortcomings it perceives ... the burden
shifts to the applicant to rebut the prima facie case with evidence and/or
argument." Hyatt, 492 F.3d at 1370.
The Examiner's rejection under § 101 satisfies § 13 2 because it
reflects the Alice analytical framework by identifying an abstract idea and
fmding the claims do not amount to significantly more than the abstract idea
itself (Non-Final Act. 2--4; Ans. 2---6), thus apprising Appellants of the
reasons for the § 101 rejection under that framework. In particular, the
Examiner fmds the dependent claims are patent ineligible for the same
reasons as the independent claims. Non-Final Act. 4; Ans. 5---6. Appellants
recognize the Examiner's Alice analysis and present arguments accordingly.
See App. Br. 6-10; Reply Br. 1---6. Appellants do not respond by alleging a
failure to understand the rejection. See id. We are, therefore, not persuaded
the Examiner failed to establish a prima facie case.
Regarding the merits of the dependent claims, Appellants do not
specifically explain why the Examiner erred in concluding that the
dependent claims recite an abstract idea and do not amount to significantly
more than the abstract idea. See App. Br. 9-10. In the Reply Brief,
Appellants recite the limitations of dependent claim 10 and argue the
Examiner's analysis of these limitations is insufficient. See Reply Br. 5---6.
Appellant does not explain, however, what specifically about claim 10
renders it patent eligible. See id. We will not speculate as to possible
arguments for patent eligibility.
Accordingly, absent specific arguments presenting reasons why
dependent claims 2, 4--7, 9-11, 13, 15-17, 19, 21, 22, and 24 are patent
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eligible, we are not persuaded the Examiner erred in rejecting the dependent
claims.
DECISION
We affrrm the Examiner's decision to reject claims 1, 2, 4--7, 9-11,
13-19, 21, 22, and 24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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