Agarwal, Shubham et al.Download PDFPatent Trials and Appeals BoardDec 13, 201914212977 - (D) (P.T.A.B. Dec. 13, 2019) Copy Citation 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. 14/212,977 03/14/2014 Shubham Agarwal 26582US02 3507 23446 7590 12/13/2019 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 EXAMINER DURANT, JONATHAN W ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 12/13/2019 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): mhmpto@mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHUBHAM AGARWAL, ROBERT C. HUDSON, GIUSEPPE MARIO DI PRIZIO, ABHISHEK RAMANI, and G. MERCEDES DE LUCA ____________ Appeal 2018-007898 Application 14/212,977 Technology Center 3600 ____________ Before HUBERT C. LORIN, NINA L. MEDLOCK, and MATTHEW S. MEYERS, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2018-007898 Application 14/212,977 2 STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 25–31 and 34–37, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED INVENTION Appellant describes that the present disclosure relates to “systems and methods that support [a] joint gift registry” and, more particularly, to “negotiation, creation, and distributed fulfillment of joint gift registries that include social components involving gift registry registrants and prospective gift purchasers” (Spec. ¶ 7). Claim 25, reproduced below with bracketed notations added, is the sole independent claim, and is representative of the claimed subject matter: 25. A method for distributed fulfillment of a gift registry, the method comprising: performing by at least one server communicatively coupled to a plurality of prospective purchaser computing devices over a network, at least: [(a)] receiving a registry list comprising a list of products; [(b)] providing the registry list to the plurality of prospective purchaser computing devices, wherein the registry list is provided to the plurality of prospective purchaser computing devices via a unified gift registry application executed 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed April 26, 2018) and Reply Brief (“Reply Br.,” filed July 31, 2018), and the Examiner’s Answer (“Ans.,” mailed May 31, 2018) and Non-Final Office Action (“Non-Final Act.,” mailed November 27, 2017). Appellant identifies the real party in interest as Sears Brands, L.L.C. Appeal Br. 2. Appeal 2018-007898 Application 14/212,977 3 by one or more of the at least one server and the plurality of prospective purchaser computing devices; [(c)] receiving, from at least one of the plurality of prospective purchaser computing devices, a product selection from the registry list; [(d)] updating the registry list via the unified gift registry application to indicate the product selection, wherein the product selection is dynamically viewable in substantially real-time at the plurality of prospective purchaser computing devices via the unified gift registry application; [(e)] receiving and transmitting, via the unified gift registry application, electronic messages between at least one of the plurality of prospective purchaser computing devices and the at least one of the plurality of prospective purchaser computing devices that provided the product selection from the registry list, wherein the electronic messages comprise negotiation feedback comprising one or more of: one or more button selections, one or more selected menu options, one or more selected boxes, and one or more text message inputs, each related to one or more of the product selection, one or more other suggested products, and a final selected product; [(f)] collecting, by the unified gift registry application, the negotiation feedback from the electronic messages received and transmitted by the at least one server between the at least one of the plurality of prospective purchaser computing devices and the at least one of the plurality of prospective purchaser computing devices that provided the product selection from the registry list; [(g)] analyzing, by the unified gift registry application, the negotiation feedback collected from the electronic messages received and transmitted by the at least one server between the at least one of the plurality of prospective purchaser computing devices and the at least one of the plurality of prospective purchaser computing devices that provided the product selection from the registry list; Appeal 2018-007898 Application 14/212,977 4 [(h)] updating a customer profile of the at least one of the plurality of prospective purchaser computing devices based at least in part on the negotiation feedback analysis; [(i)] providing, via the unified gift registry application, a product recommendation to at least one of the plurality of prospective purchaser computing devices based on the updated customer profile; and [(j)] facilitating, via the unified gift registry application, the purchase of the final selected product. REJECTION Claims 25–31 and 34–37 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS 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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court, in Alice, reiterated the two-step framework 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., 573 U.S. at 217. 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 Appeal 2018-007898 Application 14/212,977 5 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). This is “a search for an ‘inventive concept’ — i.e., 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.’” Id. at 217–18 (alteration in original). After Appellant’s briefs were filed, and the Examiner’s Answer mailed, the U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019 for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. Id. The first step in the Mayo/Alice framework, as mentioned above, is to determine whether the claims at issue are “directed to” a patent-ineligible concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test; in Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: Appeal 2018-007898 Application 14/212,977 6 (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next consider whether the claim includes additional elements, beyond the judicial exception, “that integrate the [judicial] exception into a practical application,” i.e., that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id. In rejecting the pending claims under 35 U.S.C. § 101, the Examiner determined that the claims “are directed to a method for fulfillment of a gift registry” (Non-Final Act. 3), i.e., to a “fundamental economic practice, an abstract idea, and a method of organizing human activity to fulfill a gift registry and update a customer profile” (id. at 3–4). The Examiner concluded that the concept of “fulfillment of a gift registry and updating a customer profile” is substantially similar to other concepts that the courts have found abstract (id.). And the Examiner determined that the additional elements in the claims “amount to no more than limitations consistent with what the courts have recognized, or those in the art would recognize, to be well-understood, routine, and conventional” and do not amount to significantly more than the judicial exception (id. at 4–5). The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, Appeal 2018-007898 Application 14/212,977 7 based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. Here, the Specification is entitled “JOINT GIFT REGISTRY,” and describes, in the Background section, that traditional gift registries have normally been maintained as a physical, hard-copy record of the items selected by individuals celebrating a life event; more recently, online gift registries have enabled wider, electronic access to the information of the traditional gift registry, but have still been primarily for maintaining a list of items selected by an individual or couple as things desired as a gift during the celebration of a particular life event (Spec. ¶ 8). Typically, attendees of an event are provided with a gift registry or information enabling the attendees to access the gift registry; the attendees purchase products listed in the gift registry and the gift registry is updated to reflect these purchases (id. ¶ 9). The Specification describes that “[a]ttendees using existing gift registries may have difficulty collaborating with other attendees to identify products to purchase from the gift registry” (id.). These attendees, using existing gift registries, also “can have problems identifying equivalent products if a product on the gift registry is sold out, discontinued, or otherwise not available” (id.). The claimed invention is intended to address these problems by providing a system and method that enables negotiation and distributed Appeal 2018-007898 Application 14/212,977 8 fulfillment of a gift registry while supporting social interaction between prospective purchasers (id. ¶ 19). The Specification, thus, discloses various embodiments that provide “a unified joint registry application”2 designed to “aid collaboration between prospective purchasers to fulfill a gift registry” (id. ¶ 20). In some embodiments, the unified joint registry application analyzes negotiations between prospective purchasers and, based at least in part on this analysis, provides product recommendations to the prospective purchaser(s) (id.). More particularly, the Specification discloses that the unified gift registry application updates the registry list “in substantially real-time as products are selected for purchase from the registry list such that other prospective purchasers . . . can view the products selected from the registry list and provide negotiation feedback related to the selected products” (id. ¶ 56). The unified gift registry application also enables prospective purchasers to suggest alternative products (id. ¶ 57). “For example, in response to a prospective purchaser selecting a toaster, another prospective purchaser can provide negotiation feedback suggesting that prospective purchasers collaborate to purchase a set of silverware and a kitchen knife set to take advantage of a group incentive” (id.). The unified gift registry application collects and analyzes the negotiation feedback and, based on that analysis, updates customer profiles of the prospective purchasers (id. ¶¶ 58, 59). The updated prospective purchaser profiles then can used by the gift registry application to provide product recommendations (id. ¶ 59). 2 The unified joint registry application is alternatively referred to as a “unified gift registry application” in the Specification. See, e.g., Spec. ¶¶ 29–31, 33–48, 53–60. Appeal 2018-007898 Application 14/212,977 9 Consistent with this disclosure, claim 25 recites a method for distributed fulfillment of a gift registry comprising a series of steps performed by a server coupled, via a network, to a plurality of prospective purchaser computing devices. These steps include: (1) “receiving a registry list comprising a list of products” (step (a)); (2) providing the registry list to the plurality of prospective purchaser computing devices, i.e., providing the registry list to the plurality of prospective purchaser computing devices, wherein the registry list is provided to the plurality of prospective purchaser computing devices via a unified gift registry application executed by one or more of the at least one server and the plurality of prospective purchaser computing devices (step (b)); (3) “receiving, from at least one of the plurality of prospective purchaser computing devices, a product selection from the registry list” (step (c)); (4) updating the registry list to reflect the product selection, i.e., updating the registry list via the unified gift registry application to indicate the product selection, wherein the product selection is dynamically viewable in substantially real-time at the plurality of prospective purchaser computing devices via the unified gift registry application (step (d)); (5) receiving and transmitting electronic messages between prospective purchasers, i.e., receiving and transmitting, via the unified gift registry application, electronic messages between at least one of the plurality of prospective purchaser computing devices and the at least one of the plurality of prospective purchaser computing devices that provided the product selection from the registry list, wherein the electronic messages comprise negotiation feedback comprising one or more of: one or more button selections, one or more selected menu options, one or more selected boxes, and one or more text message inputs, Appeal 2018-007898 Application 14/212,977 10 each related to one or more of the product selection, one or more other suggested products, and a final selected product (step (e)); (6) collecting and analyzing the negotiation feedback from the electronic messages, i.e., collecting, by the unified gift registry application, the negotiation feedback from the electronic messages received and transmitted by the at least one server between the at least one of the plurality of prospective purchaser computing devices and the at least one of the plurality of prospective purchaser computing devices that provided the product selection from the registry list; [and] analyzing, by the unified gift registry application, the negotiation feedback collected from the electronic messages received and transmitted by the at least one server between the at least one of the plurality of prospective purchaser computing devices and the at least one of the plurality of prospective purchaser computing devices that provided the product selection from the registry list (steps (f) and (g)); (7) “updating a customer profile of the at least one of the plurality of prospective purchaser computing devices based at least in part on the negotiation feedback analysis” (step (h)); (8) providing a product recommendation to the prospective purchaser based on the updated customer profile, i.e., “providing, via the unified gift registry application, a product recommendation to at least one of the plurality of prospective purchaser computing devices based on the updated customer profile” (step (i)); and (9) facilitating, the purchase of the final selected product, i.e., “facilitating, via the unified gift registry application, the purchase of the final selected product” (step (j)). Applying the 2019 Revised Guidance, we are persuaded that even if claim 25 recites an abstract idea, i.e., a fundamental economic practice and, therefore, a method of organizing human activity, as the Examiner Appeal 2018-007898 Application 14/212,977 11 determined, the Examiner has not sufficiently established that the claim fails to either integrate the abstract idea into a practical application or recite significantly more than an abstract idea. The Examiner determined here, as described above, that the pending claims are directed to fulfillment of a gift registry and updating a customer profile. Yet, the method of claim 25 goes beyond merely allowing prospective purchasers to access a gift registry and purchase products listed in the registry. Via the claimed unified joint registry application, the claimed method also facilitates negotiation, and supports social interaction, e.g., collaboration, in substantially real-time, between the prospective purchasers regarding product selections from the registry list. The unified joint registry application also collects and analyzes the negotiation feedback and, based on the analysis, updates profiles for the prospective purchaser(s) in order to provide alternative product recommendations. Responding to Appellant’s arguments, the Examiner opines in the Answer that [t]he claimed steps of fulfillment of a gift registry and updating a customer profile are similar to collecting information . . . , analyzing it . . . , and displaying certain results of the collection and analysis . . . and are thus an abstract idea consistent with the types of ideas found to be abstract by the courts (Electric Power Group)3 Ans. 5. But the Examiner has not addressed whether the claimed functionality provided by the unified joint registry application entails an improvement in the field of gift registries. The Specification details, as described above, the shortcomings associated with then existing gift 3 We understand the Examiner’s reference to be to Elec. Power Grp. LLC v. Alstom, S.A., 830 F.3d 1350 (Fed. Cir. 2016). Appeal 2018-007898 Application 14/212,977 12 registries, including the difficulty involved in collaborating with other users to identify products to purchase from the gift registry and the difficulty that prospective purchasers encounter in identifying equivalent products if a product on the gift registry is sold out, discontinued, or otherwise not available. The claimed invention addresses these shortcomings by providing a method, including a unified gift registry application, that enables negotiation, e.g., collaboration, and social interaction, in real time, among users, e.g., prospective purchasers, of a gift registry, and also provides product recommendations based on an analysis of the negotiation feedback and user profile information. The Examiner has not addressed whether this functionality, viewed in light of Appellant’s Specification, entails an improvement in gift registry technology. And, as such, the Examiner has not established that claim 25 fails to integrate the asserted abstract idea into a practical application. Therefore, we do not sustain the Examiner’s rejection of independent claim 25 under 35 U.S.C. § 101. For the same reasons, we also do not sustain the Examiner’s rejection of dependent claims 26–31 and 34–37. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 25–31, 34– 37 101 Eligibility 25–31, 34– 37 REVERSED Copy with citationCopy as parenthetical citation