Chu, Zi et al.

Patent Trials and Appeals Board

Sep 18, 2019

14682168 - (R) (P.T.A.B. Sep. 18, 2019)

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.
14/682,168 04/09/2015 Zi Chu 1460-002U 8672
142227 7590 09/18/2019
Shutts & Bowen LLP
Steven M. Greenberg, Esq.
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
09/18/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZI CHU, ROBERT CHANG, SWAPNIL JAIN,
MURAT SOYUPAK, and HERAAD FARKHOUR1
____________

Appeal 2018-005536
Application 14/682,168
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants have filed a Request for Rehearing (hereinafter “Request”)
under 37 C.F.R. § 41.52(a)(3) of our Decision entered on May 29, 2019
(hereinafter “Decision”). Our Decision affirmed the Examiner’s rejection
under 35 U.S.C. § 101, and the rejection made under 35 U.S.C. § 103(a).
Decision 17. For the reasons identified below, we deny the Request for
Rehearing.

1 Appellants identify the real party in interest as Twitter, Inc. App. Br. 2.
Appeal 2018-005536
Application 14/682,168

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REQUEST FOR REHEARING ARGUMENTS
Appellants argue,

At pages 2 through 10 of the Appeal Brief, Appellants
asserted the failure of Examiner to properly perform the “two-
part Mayo analysis” as required by the M.P.E.P. 2016(I), who
instead appeared to only to compare Appellants’ claims to those
of Parker v. Flook1 [1437 U.S. 584 (1978)] and CyberSource
Corp. v. Retail Decisions, Inc.2 [ 2 654 F.3d 1366 (Fed. Cir.
2016).] In response, at page 3 of the Examiner’s Answer,
Examiner simply disagreed asserting that “the action applies the
two-step framework while drawing similarity between the
abstract ideas of Flook and Cybersource and” Appellants’
claimed invention. As well, in the Appeal Brief, applying the
Mayo step 2A analysis, Appellants noted that Appellants’
claims recited a process that reflected a particular solution to a
problem or a particular way to achieve a desired outcome, in
accordance with the law of McRO, Inc. dba Planet Blue v.
Bandai Namco Games America Inc.3 [ 3120 USPQ2d 1091(Fed.
Cir. 2016)], and the memorandum of November 2, 20164,
[ 4citing Robert W. Bahr, Memorandum - Recent Subject Matter
Eligibility Decisions], hereinafter the “November 2nd
Memorandum”.

Request 2–3.

First, Appellants’ arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. (See 2019 Revised Guidance (hereinafter “Guidance”), 84 Fed.
Reg. 50, 51 (“Eligibility-related guidance issued prior to the Ninth Edition,
R–08.2017, of the MPEP (published Jan. 2018) should not be relied
upon.”)).
To the extent Appellants are arguing that the Examiner failed to
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properly perform the “two-part Mayo analysis” and thus did not make a
prima facie case, we disagree. All that is required of the USPTO to meet its
prima facie burden is that the Examiner set forth the statutory basis of the
rejection and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice requirement of 35
U.S.C. § 132. As the statute itself instructs, the Examiner must “notify the
applicant,” “stating the reasons for such rejection,” “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of his application.” 35 U.S.C. § 132(a); see also
In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011) (declining “to impose a
heightened burden on examiners beyond the notice requirement of § 132”).
Here, as we found above, the Examiner has made these findings as required
by the statute. See Final Act. 2–6.
The Examiner, as well as our Decision, identify the required
determinations for the “two–part Mayo analysis” in the record as follows: 1)
“the Examiner found that the claims are ‘directed to abstract concepts
involving a mathematical algorithm and mental processes to construct and
ultimately predict user behaviors.’” Decision 8 (citing Final Act. 4).
2). The claim does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception. While the claim recites at least one computer
processor used to execute instructions performing the
predictions, these elements are not enough to qualify as
“significantly more” than being recited in the claim along with
the abstract idea.

Decision 9–10 (citing Final Act. 5).
And, our Decision at pages 12–13 responds to Appellants’
solution/improvement argument finding it insufficient citing, e.g.,
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Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1342 (fed.
Cir. 2017), and See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016).
Appellants next argue,
But, at pages 3 and 4 of the Examiner’s Answer,
Examiner while acknowledging Appellants’ foregoing
assertion, disagreed stating that Appellants’ claimed process
amounted to nothing more than an “algorithm”. Hence,
Appellants concluded that Examiner implicitly argued that any
“algorithm” necessarily reflects an abstract idea. In response, at
page 3 of the Reply Brief, Appellants concluded that
Examiner’s analysis was flawed on its face since the very
definition of an algorithm is a “way of doing things” which in
of itself, is a process. All method claims inherently are ways of
doing things, yet not all method claims are reflective of abstract
ideas. Thus, at page 3 of the Reply Brief, Appellants noted that
the simple fact that Appellants had presented a method claim
alone did not result in the method claim being abstract contrary
to Examiner's implicit assertion. In the Decision, however, the
Board did not take note of the foregoing arguments. Instead,
the Board set forth a new basis of rejection under 35 U.S.C.
§ 101 in light of the guidelines of the United States Patent and
Trademark Office issued on January 7, 20195 [ 584 Fed. Reg.
50], hereinafter, the “2019 Guidance”.

Request 3–4.

First, we disagree with Appellants that the Board erred in failing to
respond to an argument made in its Reply Brief when that argument should
have been made in its Appeal brief. That is, Appellants direct us to the
Examiner’s Answer at pages 3 and 4 which is where the Appellants say the
Examiner made the algorithm finding that the “claimed process amounted to
nothing more than an ‘algorithm.’” Id. at 3. However, the Examiner first
made this finding that the “invention is directed to abstract concepts
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involving a mathematical algorithm and mental processes” in the Final
Action dated June 5, 2007 as follows:
In other words, the claimed invention is directed to
abstract concepts involving a mathematical algorithm and
mental processes to construct and ultimately predict user
behaviors. These concepts involve mathematical relationships
as well as mental processes that can be performed using pen
and paper which both have been established as abstract ideas by
courts. For example, in Flook,1[ 1Parker v. Flook, 437 U.S. 584
(1978)] a formula for updating alarm limits was deemed
ineligible and in CyberSource,2 [ 2CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)] mental
processes such as processes that can be performed by pen and
paper alone were deemed ineligible. Here, identifying a set of
features for each user, splitting the dataset, executing a
discretization model and logistic regression model, and
calculating a churn probability is an algorithm. The ultimate
goal is determining that the user is likely to churn based on
thresholds and targeting the user based on using rules to detect
or analyze data (as in Fairwarning3), [ 3Fairwarning IP, LLC v.
Iatric Sys., Inc., 120 USPQ2d 1293 (Fed. Cir. 2016)] is also an
abstract concept.

Final Act. 4–5.

Thus, Appellants should have responded to this argument in its
Appeal Brief, but did not. Appellants now maintain in their Request at
page 4 that because their Reply Brief argues the Examiner’s “algorithm
finding,” “the Board did not take note of the foregoing arguments [in the
Reply Brief],” that error occurred. Request 4.
We disagree with Appellants. Appellants’ Appeal Brief did not
respond to the Examiner’s “algorithm finding” where it should have been
raised, and Appellants have not shown good cause as to why the argument
was not raised in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2) (Any
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argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner’s answer, including
any designated new ground of rejection, will not be considered by the Board
for purposes of the present appeal, unless good cause is shown.). The Board
could not have overlooked what was not presented to it. Cf. DeSilva v.
DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999) (“[An appeal] brief must
make all arguments accessible to the judges, rather than ask them to play
archaeologist with the record.”).
Appellants next maintain that because:
the 2019 Guidance dramatically differs from that analysis
presented by the Examiner in the Examiner’s Answer. . . . [T]he
Appellants were not afforded an opportunity to demonstrate
under Prong Two of Mayo step 2A how Appellants additionally
claimed elements reflected an improvement in the technical
field of social network service management[.]

Request 4–5.

Appellants’ argument is not persuasive as to error because the law
applied by the Examiner’s Answer is the same substantive law followed by
the Guidance.
This guidance does not constitute substantive rulemaking
and does not have the force and effect of law. The guidance sets
out agency policy with respect to the USPTO’s interpretation of
the subject matter eligibility requirements of 35 U.S.C. 101 in
view of decisions by the Supreme Court and the Federal
Circuit. The guidance was developed as a tool for internal
USPTO management and does not create any right or benefit,
substantive or procedural, enforceable by any party against the
USPTO. Rejections will continue to be based upon the
substantive law, and it is those rejections that are appealable to
the Patent Trial and Appeal Board (PTAB) and the courts. All
USPTO personnel are, as a matter of internal agency
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management, expected to follow the guidance. Failure of
USPTO personnel to follow the guidance, however, is not, in
itself, a proper basis for either an appeal or a petition.

Guidance, 84 Fed. Reg. at 51.
Appellants also argue, “As can be seen, the Honorable Board found
that Sharp taught the transmitting of messages to subscribers based upon
their risk to churn. But, the Board overlooked the required claim language
that the message must ‘suggest a course of interaction with the social
network.’” Request 8.
We disagree with Appellants because our Decision explicitly
identifies a course of interaction with the social network stating:
one of ordinary skill in the art would understand that the
marketing message would respond in the same media in which
the user was interacting, e.g. social network to social network
as a kind–for–kind response. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (In making the obviousness
determination one “can take account of the inferences and
creative steps that a person of ordinary skill in the art would
employ.” Emphasis added).

Decision 16.
Our finding here responds to the limitation “suggest[ed] a course of
interaction with the social network” by suggesting that interaction be kind-
for-kind i.e., social network to social network. In other words, the finding
uses the same interaction platform as the suggested course of interaction.
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CONCLUSION OF LAW
For the reasons above, we are not convinced that Appellants have
shown, with particularity, points believed to have been misapprehended or
overlooked in our Decision. See 37 C.F.R. § 41.52(a)(1) (2011).

REHEARING DENIED