Ex Parte Winters et al

Patent Trials and Appeals Board

Jul 2, 2019

13181347 - (D) (P.T.A.B. Jul. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/181,347 07/12/2011
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
07/05/2019
FIRST NAMED INVENTOR
Kelly Winters
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.
26295-18356 4207
EXAMINER
MUNSON, PATRICIA H
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
07/05/2019 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):
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 KELLY WINTERS, BO HU,
EMILY CLARK WHITE, and KOUN HAN
Appeal2017-007696
Application 13/181,34 7
Technology Center 3600
Before HUNG H. BUI, BETH Z. SHAW, and AARON W. MOORE,
Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
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Application 13/181,34 7
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 3, 5-15, 17, 18, and 20-26, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to "[a] social networking system [that] acts
as a platform for distributing deals from one or more deal providers."
(Abstract.) Claim 1, reproduced below, exemplifies the subject matter on
appeal:
1. A computer-implemented method comprising:
storing by a social networking system, information describing
connections between users;
receiving information about a deal from a deal provider, wherein
the deal is associated with a purchase price;
offering, by the social networking system, the deal to a plurality
of users of the social networking system;
receiving request for participation in the deal from one or more
participating users;
receiving information describing connections of participating
users as potential participants of the deal;
receiving revenue from the one or more participating users based
on the purchase price associated with the deal;
transferring a portion of the received revenue from the social
networking system to the deal provider, thereby leaving a
platform share from the received revenue;
1 Appellants identify Face book, Inc., of Menlo Park, California as the real
party in interest. (See App. Br. 2.)
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for each of the one or more participating users, determining a
total number of connections of the user that also participated
in the deal;
determining, by the social networking system, an amount of the
platform share of the received revenue to provide to each of
the one or more participating users, the amount of the
platform share of the received revenue for each participating
user determined based on the total number of connections of
the participating user who also participated in the deal; and
for each of the one or more participating users, providing the
determined amount of the platform share of the received
revenue back to the user.
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Turpin, et al.
Dessert, et al.
Neuhauser, et al.
Beatty, et al.
US 2008/0189169 A 1 Aug. 7, 2008
US 2012/0072271 Al Mar. 22, 2012
US 2012/0130784 Al May 24, 2012
US 2012/0166267 Al June 28, 2012
THE REJECTIONS
1. Claims 1, 3, 5-15, 17-18, and 20-26 stand rejected under
35 U.S.C. § 101 as "not directed to patent eligible subject matter." (See
Final Act. 2-3.)
2. Claims 1, 5, 7-15, 17-18, and 20-26 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Neuhauser, Turpin, and Beatty. (See
Final Act. 3-27.)
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3. Claims 3 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Neuhauser, Turpin, Beatty, and Dessert. (See Final Act.
27-29.)
ANALYSIS
Patent Eligibility
By statue, a patentable invention must be a "new and useful process,
machine, manufacture, or composition of matter, or [a] new and useful
improvement thereof." 35 U.S.C. § 101. The Courts have identified implicit
exceptions to patentability-laws of nature, natural phenomena, and abstract
ideas, and the Supreme Court in Alice Corp. v. CLS Banklnt'l, 573 U.S.
208, 217 (2014), and Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012), provided a framework for identifying ineligible claims.
The "Mayo/Alice" evaluation has two steps: (1) determining if a claim is
directed to an ineligible concept, and, if so, (2) determining if one or more
claim elements is sufficient make the claim "significantly more" than the
ineligible concept itself. See Alice, 573 U.S. at 217-18.
The most recent guidance for applying Mayo/Alice is the USPTO 's
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50. The Guidance instructs us first to
look at whether a claim recites a judicial exception, the broad categories of
which are defined by the Guidance as mathematical concepts, certain
methods of organizing human activity, and mental processes.2 See 84 Fed.
Reg. at 54 (Step 2A, Prong One).
2 "Mathematical concepts" includes "mathematical relationships,
mathematical formulas or equations, [ and] mathematical calculations";
"certain methods of organizing human activity" includes "fundamental
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If we find a judicial exception, we determine whether it is "integrated
into a practical application" in the claim. See 84 Fed. Reg. at 54-55 (Step
2A, Prong Two); see also MPEP § 2106.05(a)-(c), (e)-(h) (non-exhaustively
listing ways in which a practical application may be found). "Practical
application" means that the claim includes "a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception." 84 Fed. Reg. at 54. For example, a
practical application may exist in an improvement in the functioning of a
computer or other technology, a particular machine or manufacture integral
to the claim, or transformation or reduction of an article to a different state
or thing. See id. at 55. However, merely using a computer to perform an
abstract idea, adding insignificant extra-solution activity, or only generally
linking to a particular technological environment or field are not sufficient
for a practical application. See id.
If a claim recites a judicial exception not integrated into a practical
application, the claim is directed to an abstract idea. In that case, we further
look at whether the claim adds a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional." See 84 Fed.
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions)"; "mental processes" includes "concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion." 84 Fed. Reg. at 52.
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Reg. at 56 (Step 2B); see also MPEP § 2106.0S(d). In the absence of such
an addition, a claim that has reached this stage of the analysis is ineligible.
Abstract Idea
Claim 1 recites a method that includes "storing" information
describing connections between social network users; "receiving"
information about a deal from a deal provider; "offering" the deal to users;
"receiving" user requests for participation in the deal; "receiving"
information describing connections of the participating users as potential
participants; and "receiving" revenue from the participating users. The
claim further recites "transferring" a portion of the revenue to the deal
provider and retaining a platform share; "determining" the number of a
participating user's connections that also participated; "determining" that
user's amount of the platform share based on the number of connections
who also participated; and "providing" that amount to the user. 3
The Examiner found that "the claims detail steps toward targeting
advertising, targeted advertising is a fundamental economic practice and
therefore the claims disclose a patent ineligible abstract idea." (Final Act. at
3.) The Examiner further found that "[t]he claims do not include limitations
that are 'significantly more' than the abstract idea because the claims do not
include an improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment." (Id.) The Examiner also found that
3 Following the lead of the Examiner and Appellants, we address subject
matter eligibility in the context of claim 1. See 37 C.F.R. § 41.37( c )(1 )(iv).
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"[t]he limitations are merely instructions to implement the abstract idea on a
computer and require no more than a generic computer to perform generic
computer functions that are well-understood, routine and conventional
activities previously known to the industry." (Id.)
Appellants argue that "the scope of the claims is not 'targeted
advertising"' because "[t]he claimed invention concerns deals in social
networking systems and in particular to distributing deals via a social
networking system from one or more deal providers." (App. Br. 8.)
Consistent with Appellants' description of their own claims, we find
that the limitations we summarize above describe a particular method for
promoting or distributing deals that is fairly characterized as at least one of
"advertising, marketing or sales activities or behaviors," all of which fall
into the "certain methods of organizing human activity" category of abstract
ideas. See 84 Fed. Reg. at 52.
Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole
would not be "directed to" merely an abstract idea.
Practical Application
As noted, the "practical application" inquiry looks at whether a claim
includes "a meaningful limit on the judicial exception," to ensure that "the
claim is more than a drafting effort designed to monopolize the judicial
exception." 84 Fed. Reg. at 54. In this case, we have a "computer-
implemented" advertising technique. The claim thus recites a method that
"merely uses a computer as a tool to perform an abstract idea," id. at 55, and,
therefore, lacks integration into a practical application. We do not find "an
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improvement in the functioning of a computer or other technology," because
the generic computer is used for its ordinary purpose. We do not find "a
particular machine or manufacture integral to the claim," because a general
purpose computer is not enough. And we do not find "transformation or
reduction of an article to a different state or thing," because only intangible
data is changed or manipulated.
Because we conclude that claim 1 lacks additional elements that
would allow us to find a practical application, we agree with the Examiner
that the claim is directed to an abstract idea and move to Step 2B.
Inventive Concept
"It is possible that a claim that does not 'integrate' a recited judicial
exception is nonetheless patent eligible" as, "[f]or example the claim may
recite additional elements that render the claim patent eligible even though a
judicial exception is recited in a separate claim element." 84 Fed. Reg. at
56. We need not reconsider the issues addressed in Step 2A, but do weigh
whether any additional claim elements add something beyond the judicial
exception that is not "well-understood, routine, conventional" in the field or,
instead, simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Id. at 56.
Claim 1 is directed to a computer-implemented technique for targeted
advertising. Appellants do not identify, and we otherwise fail to find, any
additional elements that evidence an "inventive concept" beyond the abstract
idea that might impart eligibility. Cf Parker v. Flook, 437 U.S. 584, 585-86
(1978) (holding claims ineligible because "[t]he only difference between the
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conventional methods ... and that described in respondent's application
rests in [the abstract idea]").
Appellants argue that "[t]he claims of this application are analogous to
the claims at issue in the DDR Holdings case" because they "solve a
problem that does not have a traditional business analog." (App. Br. 10-11,
citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
Cir. 2014).) We do not agree that the claims here are eligible like the claims
in DDR. These claims describe what may be a solution to a business
problem-how to expand the reach of advertising-but not a technical
problem like in DDR, which claimed a unique virtual store within a virtual
store concept that amounted to a fundamentally new way to use the Internet.
See DDR Holdings, 773 F.3d at 1258 (explaining that the "claims address
the problem of retaining website visitors that, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an advertisement
and activating a hyperlink").
DDR clarified that "not all claims purporting to address Internet-
centric challenges are eligible for patent," identifying as an example
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), where the
claims were "directed to a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before." DDR Holdings, 773 F.3d at 1258. The DDR court
explained that "[ u ]nlike the claims in Ultramercial, the [ DDR claims] ...
specify how interactions with the Internet are manipulated to yield a desired
result ... that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink." Id. We find Appellants'
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claims analogous, from an eligibility perspective, to the ineligible claims in
Ultramercial, not the eligible claims in DDR.
Appellants' preemption argument (see App. Br. 8) is not persuasive
because, although "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).
Eligibility Conclusion
The claims recite an abstract idea, have not been shown to be
integrated into a practical application, and do not include additional
recitations that make them significantly more than the underlying abstract
idea. The Examiner's rejection of claims 1, 3, 5-15, 17-18, and 20-26
under 35 U.S.C. § 101 is, therefore, sustained.
Obviousness: Claims 1, 3, 7-15, 17-18, and 20--26
In the Final Action, the Examiner found that Neuhauser teaches most
of what is recited in independent claims 1, 15, and 18, but that "Neuhauser
does not specifically disclose determining ... the amount of platform share
of the received revenue to provide to each of the one or more participating
users, the amount of the platform share of the received revenue for each
participating user determined based on a total number of connections of the
participating user who also participated in the deal." (Final Act. 4-5.) The
Examiner further found, however, that "Turpin discloses determining an
amount of revenue share to provide to the users that 'influence the
purchasing decisions of visitors to the owner's profile webpage and discuss
the marketer's products shown in the displayed advertisements."' (Id. at 5,
citing Turpin Tables 1-5 and ,i 132.)
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The Examiner also found in the Final Action that although
"Neuhauser discloses that the amount paid to the member is based on the
connections to the member that perform the action of participating in the
deal," it "does not specifically disclose for each of the one or more
participating users, determining a total number of connections of the user
that also participated in the deal," a gap the Examiner filled with Beatty.
(See id. at 6, citing Beatty ,i 117.)
Appellants argue4 the art does not teach or suggest the steps of
( 1) determining the number of connections of the user that participated in the
deal or (2) determining the amount of the platform share to provide to each
participating user. (See App. Br. 15-19.)
In the Answer, the Examiner cites paragraphs 27-29, 31, and 34 of
Neuhauser, Table 1 and paragraph 132 of Turpin, and paragraph 117 of
Beatty, for determining the number of connections. (See Ans. 7-8.)
Appellants respond that "none of the cited references show this feature."
(Reply Br. 7.)
We agree with the Examiner. The limitation at issue is "for each of
the one or more participating users, determining a total number of
connections of the user that also participated in the deal," which is taught or
suggested at least by Neuhauser's disclosure in paragraph 27 that
"[ m ]embers earn commissions for shouting a deal to another member who
then scores the deal," because that requires determining, for the "shouting"
member, how many of their connections "scored the deal."
4 Appellants assert that"[ c ]laim 1 is representative" (App. Br. 14), and we
therefore only address that claim in our discussion of claims 1, 3, 7-15, 1 7-
18, and 20-26. See 37 C.F.R. § 41.37(c)(l)(iv).
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In the Answer, the Examiner cites Tables 1-5 and paragraph 132 of
Turpin, paragraphs 27-29, 31, and 34 of Neuhauser, and paragraph 117 of
Beatty for determining the amount of the platform share to provide to each
participating user. (Ans. 7-8.) Appellants respond that "[assuming] the
amount of the platform share ... for each participating user of Neuhauser is
determined based on the total number of connections ... who also
participated in the deal," the result "would be that no member would be
compensated." (Reply Br. 9.) According to Appellants, "the result [in
Neuhauser would be] an illogical compensation scheme, one that does not
compensate members for influencing other members to purchase a deal." Id.
We again agree with the Examiner. The limitation at issue is
"determining ... an amount of the platform share ... to provide to each of
the one or more participating users," where "the amount of the platform
share ... for each participating user [is] determined based on the total
number of connections of the participating user who also participated in the
deal." This is taught or suggested at least by Neuhauser's disclosure of
paying commissions to "shouting" users for connections who "score" the
deals. The amount of the share would be "determined based on" the number
of participating connections. We do not agree with Appellants' analysis of
Neuhauser. In the example of Figure 1, D would receive a 10% commission
for each user that scored the deal in response to D's shouting, such that D's
share would be "based on the total number of connections ... who also
participated in the deal," as claimed. See Neuhauser ,-J 28.
Because we find Appellants' arguments regarding the independent
claims unpersuasive of error, we sustain the Section 103 rejections of claims
1, 15, and 18 and their dependent claims 3, 7-14, 17, and 20-26, which
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Appellants do not argue separately. Appellants offer additional arguments
concerning claims 5 and 6, which we address below.
Obviousness: Claims 5 and 6
Claim 5 recites that the amount of the platform share "is determined
based on the total number of connections of the participating user in the
social networking system." Claim 6 recites that the amount of the platform
share is determined based on the total number of connections "having more
than a threshold measure of affinity with the user."
For claim 5, the Examiner found that "Neuhauser does not specifically
disclose that the portion of the platform share of the revenue provided back
to the user is determined based on the total number of connections of the
user in the social networking system" but that Turpin discloses "targeting
based on attributes in a user's profile including a total number of
connections of the user," "determining a social rank of a person using
attributes data of the user's profile including interests, actions and attitudes
of the user and influence of the user profile over other user's profiles," and
"determining an amount of revenue share to provide to the users that
'influence the purchasing decisions of visitors to the owner's profile
webpage and discuss the marketer's products shown in the displayed
advertisements."' (Final Act. 7-8, citing Turpin ,i,i 39-40, 44-54, 118, 132,
Tables 1-5). The Examiner concluded that it would have been obvious "to
combine the portion of the revenue share for the user taken from the profit of
the system is determined by actions of the friends of the user of Neuhauser
with the actions including a total number of connections of the user of the
invention of Turpin" because both "teach sharing a portion of the social
networks revenue with users based on actions within the social network
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system" and Turpin "teaches that sharing a percentage of revenue generated
by an ad campaign with a user profile owner will motivate the owner to
voluntarily influence the purchasing decisions of visitors to the owner's
profile webpage and discuss the marketer's products shown in the displayed
advertisements."
For claim 6, the Examiner found that "Dessert discloses that a user is
selected to be the initiator of a deal because they have a large total number
of connections and a large number of friends who previously participated in
a deal and will therefore receive a large portion of the discount for the
current deal." (Final Act. 29.) The Examiner further concluded that it
would have been obvious "to combine the portion of the revenue share for
the user taken from the profit of the system is determined by number of the
friends of the user participating in the deal including the measure of affinity
of those connections of Neuhauser with the discount amount based on the
total number of friends of Dessert." (Id.) The Examiner reasoned that "both
Neuhauser and Dessert teach rewarding users based on their actions and the
actions of their friends within the social network system and Dessert in at
least [O 103 and O 148] teaches that a user with a large number of friends in a
social network who has previously successfully initiated a deal is very
valuable to a merchant offering a deal which will offer a larger discount to
that user in response to their business value." (Id.)
Appellants argue that "[ a ]t best, Turpin discloses that analytics data
may be used for filtering for user profiles of higher social rank to identify
influencers, and that influencers may be given a percentage of revenue
generated from an ad campaign." (App. Br. 21.) They further argue that
"[ a ]t best, Dessert discloses that participating users may get an amount of
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platform share based on their respective positions in ... [a] marketing
campaign." (Id. at 23.)
We agree with Appellants that the combination does not teach or
suggest that "the amount of the platform share of the revenue provided back
to a participating user is determined based on the total number of
connections of the participating user in the social networking system." As
explained above, Neuhauser teaches that the amount of the platform share is
determined based on the number of connections of the participating user
who also participated in the deal, not the user's total number of connections.
We do not find in the cited portions of Turpin a teaching or suggestion that
the determination of a participating user's share might be based the total
number of connections, as required by claims 5 and 6, and thus do not
sustain the Section 103 rejections of those claims.
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DECISION
The rejection of claims 1, 3, 5-15, 17-18, and 20-26 under 35 U.S.C.
§ 101 is affirmed.
The rejection of claims 1, 3, 7-15, 17-18, and 20-26 under 35 U.S.C.
§ 103 is affirmed. The rejection of claims 5 and 6 under 35 U.S.C. § 103 is
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED5
5 Because we sustain at least one ground of rejection with respect to each
claim on appeal, the Examiner's decision rejecting claims 1, 3, 5-15, 17-18,
and 20-26 is affirmed. See 37 C.F.R. § 41.50(a)(l).
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