Ex Parte Baird-Smith et al

Patent Trial and Appeal Board

Jun 23, 2017

13216197 (P.T.A.B. Jun. 23, 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.
13/216,197 08/23/2011 Anselm P. Baird-Smith P9769US1 (119-0483US1) 3649
61947 7590 06/27/2017
Ar>r>le - Rlank Rome.
EXAMINER
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
DESAI, RESHA
HOUSTON, TX 77002 ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANSELM P. BAIRD-SMITH, PAYAM MIRRASHIDI, and
STEVE S. GEDIKIAN
Appeal 2016-002659
Application 13/216,1971
Technology Center 3600
Before JEAN R. HOMERE, JOSEPH P. LENTIVECH, and
MICHAEL M. BARRY, Administrative Patent Judges.
LENTIVECH, 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—9 and 31^44. Claims 10—30 have
been canceled. See App. Br. 18 (Claims App’x). We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Apple Inc. App. Br. 3.
Appeal 2016-002659
Application 13/216,197
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention generally relates to a networked system and a
method for providing recommendations to users of the networked system.
Spec. 1 5. The networked system can provide media content and/or a social
network to users and can evaluate users and/or activities to determine when
and to which users a recommendation should be provided. Id. Independent
claim 1 is illustrative of the subject matter on appeal and reads as follows:
1. A method for providing a recommendation to a user of a
social networking system, the method comprising:
detecting, by a processor, an event associated with an
online commercial transaction by a first user of a social
networking system;
comparing, by the processor, in response to the detecting,
the first user’s media profile to each media profile in a plurality
of media profiles associated with one or more other users of the
social networking system, wherein each media profile represents
a respective user’s media interests;
identifying, by the processor, based on the comparing, at
least one candidate user from the one or more other users with
media interests that are similar to the media interests of the first
user;
generating a recommendation pertaining to the event;
customizing the recommendation based on the at least one
candidate user’s media interests; and
sending, by the processor, the recommendation to the at
least one candidate user.
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References
The Examiner relies on the following prior art in rejecting the claims:
Herz et al. US 2001/0014868 A1 Aug. 16, 2001
Dunning et al. US 2002/0082901 Al June 27, 2002
Bezos etal. US 7,433,832 B1 Oct. 7, 2008
Rejections
Claims 1—9 and 31—44 stand rejected under 35U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 3^4.
Claims 1—7, 9, 31—36, and 38-42 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Herz and Bezos.
Final Act. 5—10.
Claims 8 and 37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Herz, Bezos, and Dunning. Final
Act. 11.
ANAFYSIS
Rejection of Claims 19 and 31—44 under 35 U.S.C. § 101
Issue: Did the Examiner err in finding that claims 1—9 and 31—44 are
directed to nonstatutory subject matter under 35 U.S.C. § 101?
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be
statutorily patentable, the subject matter of an 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 Supreme Court has
held that there are implicit exceptions to the categories of patentable subject
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matter identified in § 101, including (1) laws of nature, (2) natural
phenomena, and (3) abstract ideas. Alice Corp. Pty. Ltd. v. CIS Banklnt’l,
134 S. Ct. 2347, 2355 (2014). Further, the Court has “set forth a framework
for distinguishing patents that claim [1] laws of nature, [2] natural
phenomena, and [3] abstract ideas from those that claim patent-eligible
applications of those concepts.” Id. (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). The evaluation
follows the two-part analysis set forth in Mayo: (1) determine whether the
claim is directed to a patent-ineligible concept, e.g., an abstract idea; and (2)
if so, determine whether any element, or combination of elements, in the
claim is sufficient to ensure that the claim amounts to significantly more
than the patent-ineligible concept itself. See Alice, 134 S. Ct. at 2355.
The Examiner concludes that independent claim 1 recites a method,
i.e., a process, and therefore falls within one of the statutory classes of
patentable subject matter. Final Act. 3. Nevertheless, the Examiner
concludes claim 1 is directed to a patent ineligible abstract idea. Id.
Specifically, the Examiner concludes claims 1—9 and 31—44 “are directed
towards recommending products to a user to purchase,” which “is
considered to be an abstract idea inasmuch as such activity is considered
both a method of organizing human activity and a fundamental economic
practice.” Ans. 4; see also Final Act. 3.
Initially, Appellants contend the Examiner fails to establish a prima
facie case of patent-ineligibility because the Examiner provides no basis for
the conclusion that the claims are directed to a judicial exception (i.e., an
abstract idea) and, therefore, “failed to provide Appellant with its right to an
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‘opportunity to explain why the claimed method is not drawn to an abstract
idea.’” App. Br. 7 (citing MPEP § 2106); see also Reply Br. 3^4.
We disagree. The Examiner has provided a reasoned rationale that
identifies the judicial exception recited in the claims, i.e., abstract idea, and
explained why it is an exception. See Final Act. 3; Ans. 4—5. Further,
Appellants’ contention that the Examiner failed to provide Appellants with
its right to an opportunity to explain why the claimed method is not drawn to
an abstract idea is belied by the arguments presented by Appellants in the
Appeal Brief addressing the Examiner’s finding that the claims are directed
to an abstract idea. See App. Br. 7—10; Reply Br. 4—7.
Appellants further contend the claims are not directed to an abstract
idea because they are not directed to a long prevalent fundamental economic
practice (App. Br. 7—9; Reply Br. 5) or a method of organizing human
activity (App. Br. 9—10; Reply Br. 4—5). Appellants argue “the claims are
not directed to simple product recommendations” but, instead, “[t]he claims
are directed to creating customized social network recommendations related
to a commerce transaction when two related users are found to have similar
interests, even if those interests have nothing to do with the initial
commerce transaction.’ '’ App. Br. 8. Appellants further argue “the claims
recite generating customized product recommendations for specific social
network friends based on finding similarities in social network media
profiles” and “[t]he claimed social networking activities are indispensable to
describing and understanding the claims.” Id. According to Appellants,
“[sjocial networking is a term of art that involves a specific computing
environment” and “social networking activities like those claimed by
Appellant cannot be executed outside of this platform.” Id. Appellants
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argue the claims are not directed to a method of organizing human activity
because:
The claims do not recite humans’ making product
recommendations; the claims recite a processor that detects
online commercial activity, compares media profiles associated
with users in a social network to identify users with similar media
interests, and sends customized recommendations within the
social network platform to the identified users based on the
similarities. None of these steps is directing a human. Every
step in Appellant’s claims is a data-driven step. While a human
commerce transaction is contemplated, that transaction is not at
all being claimed. All that is being claimed is detecting that
transaction, which is a data-driven step.
App. Br. 9.
Considering the first step of the Mayo/Alice analysis, we find the
Examiner has properly and reasonably found that claims 1—9 and 31—44 are
directed to the abstract idea of “recommending products to a user to
purchase.” See Final Act. 3; Ans. 4—5. Appellants acknowledge “[t]he
claims are directed to creating customized social network recommendations
related to a commerce transaction when two related users are found to have
similar interests.” App. Br. 8. Further, claim 1, for example, expressly
provides that the claim is directed to “[a] method for providing a
recommendation to a user of a social networking system.” As also
acknowledged by Appellants (App. Br. 10), “the claims recite a computing
process that detects purchases by users, compares media profiles of users in
a social network environment, and then generates and delivers customized
recommendations to users in the social network based on the comparisons.”
Such activities are squarely within the realm of abstract ideas. See, e.g.,
Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)
(characterizing collecting information, analyzing information by steps
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people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas); Content Extraction &
Transmission v. Wells Fargo Bank, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(characterizing collecting data, recognizing certain data within the collected
data set, and storing the recognized data in memory as drawn to an abstract
idea); SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx.
950, 955 (Fed. Cir. 2014) (“comparing new and stored information and
using rules to identify medical options” is an abstract idea). Accordingly,
we agree with the Examiner that the claims are directed to an abstract idea.
In the second step of Alice, we “consider the elements of each claim
both individually and ‘as 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 (quoting Mayo, 132 S. Ct. at 1297—
98). In other words, the second step is to “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. (quoting Mayo, 132 S. Ct. at 1294
(internal quotation marks omitted)).
Appellants contend the claims recite significantly more because
Appellant’s claims do not recite a concept of humans making
product recommendations. Instead, the claims recite a
computing process that detects purchases by users, compares
media profiles of users in a social network environment, and then
generates and delivers customized recommendations to users in
the social network based on the comparisons. Furthermore, the
claimed system contemplates making product recommendations,
even when users’ similar media interests have no relation to the
purchased product. None of these activities are possible outside
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the context and computing power of the social network
computing platform, mainly because media interests can
potentially be extensive and complex, and the social network
includes millions of users, most of which are not known to each
other. Accordingly, the claimed activities are, by definition, not
routine processes executed on a generic computer.
App. Br. 10-11. Appellants argue the claims are directed to “a very
specifically-defined automated process of providing computer-generated
recommendations to users in a social network based on comparing their
social network media profiles and identifying media profile similarities.”
App. Br. 11. Appellants further argue the social networking system is an
essential part of the claims, which are all directed to activities that are
specifically carried out on a social networking system. Reply Br. 6.
We do not find Appellants’ contentions persuasive. Applying the
second step of Alice, we agree with the Examiner that the claims, when
viewed as a whole, do not include anything significantly more than the
abstract idea of recommending products to users by collecting and analyzing
data and presenting a result of that analysis to the users. Emphasizing the
claimed hardware and social network elements, such as the processor and
social networking system (see App. Br. 10-11), Appellants argue the claims
are directed to activities that are not possible outside the context and
computing power of the social network computing platform and, therefore,
the claimed activities are, by definition, not routine processes executed on a
generic computer. However, we agree with the Examiner that the recited
hardware elements are generic computer elements used to perform routine
and conventional functions, and that the recited social networking system
does not impose a meaningful limitation on the claim and amounts to
insignificant extra-solution activity. See Ans. 5—6. As our reviewing court
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has explained, “[i]t is well-settled that mere recitation of concrete, tangible
components is insufficient to confer patent eligibility to an otherwise
abstract idea. Rather, the components must involve more than performance
of ‘well-understood, routine, conventional activities previously known to the
industry.’” In re TLI Comms. LLC Patent Litigation, 823 F.3d 607, 613
(Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2359 (internally quoting Mayo,
132 S. Ct. at 1294 (quotation marks omitted))). Appellants’ claims merely
employ generic computer components to perform generic computer
functions, i.e., receiving and comparing information, which is not enough to
transform an abstract idea into a patent-eligible invention.
As discussed supra, claims 1—9 and 31—44 are directed to the abstract
idea of recommending products to users by collecting and analyzing data
and presenting a result of that analysis to a user. Narrowing that abstract
idea to social networking systems merely limits the use of the abstract idea
to a particular technological environment, which the Court has made clear is
insufficient to transform an otherwise patent-ineligible abstract idea into a
patent-eligible subject matter. See Alice, 134 S. Ct. at 2358.
Further, we disagree with Appellants’ contentions that the claims are
all directed to activities that are specifically carried out on a social
networking system. Reply Br. 6. Instead, “social networking system” is
merely used to describe certain elements recited in the claims. For example,
claim 1 recites “comparing . . . the first user’s media profile to each media
profile in a plurality of media profiles associated with one or more other
users of[not in as argued by Appellants (Reply Br. 6)] the social networking
system.” (Emphasis added).
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For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1—9 and 31—44 under 35 U.S.C. § 101.
Rejection of Claims 19 and 31—44 under 35 U.S.C. § 103(a)
Issue: Did the Examiner err in finding that the combination of Herz and
Bezos teaches or suggests
identifying, by the processor, based on the comparing, at
least one candidate user from the one or more other users with
media interests that are similar to the media interests of the first
user;
generating a recommendation pertaining to the event;
customizing the recommendation based on the at least one
candidate user’s media interests; and
sending, by the processor, the recommendation to the at
least one candidate user,
as recited in claim 1?
Appellants do not argue the rejection of claims 1—9 and 31—44 under
35 U.S.C. § 103(a) separately but, instead, rely on the same arguments for
all the claims. App. Br. 11—14; Reply Br. 8—9. We select claim 1 as
representative. Accordingly, claims 2—9 and 31—44 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend the combination of Herz and Bezos does not teach
or suggest the disputed limitations because “Herz does not customize a
recommendation based on a ‘candidate user’s’ media interests” and “Herz
does not teach sending a customized recommendation to one or more
candidate users.” App. Br. 12. Appellants argue Herz, instead, teaches
preparing and sending an offer for the user that initiated the online
transaction (e.g., the claimed “first user”). Id. Appellants further argue
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“[u]nlike Herz, the Appellant’s claims do not trigger a recommendation for a
candidate shopper based on a purchase made by that candidate shopper'1'’
but, instead, “trigger one or more recommendations for one or more
candidate shoppers, and those recommendations are triggered based on a
purchase made by the original shopper.'1'’ Reply Br. 8.
Herz discloses storing records of products purchased by shoppers
from a shopper database and grouping records associated with similar
shoppers who accepted the same offer or purchased the same product. Herz
33—34. The Examiner finds Herz teaches or suggests the disputed
limitations because Herz teaches when another shopper purchases the same
item as a previous shopper (e.g., a shopper corresponding to a record stored
in the shopper database), a recommended offer is sent to the shopper
currently purchasing the item based on purchases made and offers accepted
by the previous shopper. Ans. 7 (citing Herz H 33, 37); see also Final
Act. 5—6 (citing Herz H 33, 37, 53, 136, 138, 158, 298). Contrary to
Appellants’ arguments, the Examiner does not identify the shopper currently
purchasing the item as the claimed “first user” but, instead, the Examiner
identifies the previous shopper as the claimed “first user” and identifies the
shopper currently purchasing the item as the claimed “candidate user.”
Ans. 7. Appellants’ contentions fail to address the express findings of the
Examiner and, therefore, are unpersuasive of error.
Accordingly, we are not persuaded the Examiner erred in rejecting
claim 1 or claims 2—9 and 31—44, which fall with claim 1.
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DECISION
We affirm the Examiner’s rejection of claims 1—9 and 31—44 under 35
U.S.C. § 101.
We affirm the Examiner’s rejection of claims 1—9 and 31—44 under 35
U.S.C. § 103(a).
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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