Ex Parte Fish

Patent Trial and Appeal Board

Mar 16, 2017

14061642 (P.T.A.B. Mar. 16, 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.
14/061,642 10/23/2013 Robert D. Fish 100323.0089US1 2957
24392 7590
FISH & TS ANG LLP
ROBERT D. FISH
2603 Main Street
Suite 1000
Irvine, CA 92614-6232
EXAMINER
VY, HUNG T
ART UNIT PAPER NUMBER
2163
NOTIFICATION DATE DELIVERY MODE
03/20/2017 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):
rfish @ fishiplaw. com
patents @ fishiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT D. FISH
Appeal 2016-005715
Application 14/061,642
Technology Center 2100
Before JASON V. MORGAN, NABEEL U. KHAN, and
KAMRAN JIVANI, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review, under 35 U.S.C. § 134(a), of the
Examiner’s decisions rejecting claims 1—12. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-005715
Application 14/061,642
THE INVENTION
“The present invention provides systems and methods in which
user-created and user-selectable personas are used to enhance a search string
for submission to a search engine.” Abst.
Claim 1, reproduced below, is the only independent claim.
1. A computer-implemented system that maintains an
information store of information, and interacts with (a) a user A
device operated by an ordinary user A and (b) a user B device
operated by an ordinary user B, the system operating software
configured to accomplish the following:
cooperate with the user A to create a user A persona that includes
a first interest criterion selected from a set of then-available
interest criteria;
allow the user to select the user A persona from a set of multiple
different personas;
filter a first item from the information store at least in part
according to the first interest criterion, and send the first item to
the user A device;
cooperate with the user A to add a user-suggested second interest
criterion to the set of then-available interest criteria to create an
updated set of interest criteria;
cooperate with the user B to create a user B persona that includes
the second interest criterion selected from the updated set of
interest criteria; and
filter a second item from the information store at least in part
according to the second interest criterion, and send the second
item to the user B device.
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Application 14/061,642
THE REJECTIONS
Claim 1 stands rejected, under 35U.S.C. § 101, as being directed to
patent-ineligible subject matter. Non-final Act. 3^4 (July 30, 2015).
Claims 1—9 stand rejected, under 35 U.S.C. § 103(a), as being obvious
over Szabo (US 7,181,438 Bl; Feb. 20, 2007) and Refuah (US 7,631,032
Bl; Dec. 8, 2009). Non-final Act. 5-10.
Claims 10-12 stand rejected, under 35 U.S.C. § 103(a), as being
obvious over Szabo, Refuah, and Moores (US 2003/0149580 Al; Aug. 7,
2003). Non-final Act. 10—11.
35 U.S.C. § 101
Appellant contends that the Examiner fails to set forth a prima facie
case of patent ineligibility for claim 1 because “the Examiner has failed to
provide any evidentiary support in making this allegation.” App. Br. 3.
Appellant further contends the Examiner fails to show the claim recites
concepts that courts have found to be abstract ideas “such as a mathematical
algorithm, a fundamental economic practice, a method of organizing human
activities, an idea of itself, or any of the many examples known in the case
law.” App. Br. 3^4; see also Reply Br. 3—5. Finally, Appellant argues that
even if the claims are directed at a judicially recognized exception, the claim
as a whole amounts to significantly more than the judicial exception. App.
Br. 4—5. In particular, Appellant calls our attention to the limitation
requiring the ability to “cooperate with the user A to add a user-suggested
second interest criterion to the set of then-available interest criteria to create
an updated set of interest criteria” arguing this limitation is novel over what
is well-understood, routine, and conventional. App. Br. 5—6.
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Application 14/061,642
We are unpersuaded by Appellant’s arguments. We first turn to the
issue of whether the Examiner presented a prima facie case of patent
ineligibility. A prima facie case shifts the burden of argument to the
applicant. See In re Jung, 637 F.3d 1356, 1362—63 (Fed. Cir. 2011)
(addressing an examiner’s notice requirement under 35 U.S.C. § 132). To
present a prima facie case, the Examiner needs to provide the applicant with
information sufficient to address the rejection. Id. Here the Examiner
adhered to the PTO guidelines for presenting a rejection under 35 U.S.C.
§101:
For subject matter eligibility, the examiner’s burden is met by
clearly articulating the reason(s) why the claimed invention is not
eligible, for example by providing a reasoned rationale that
identifies the judicial exception recited in the claim and why it is
considered an exception, and that identifies the additional
elements in the claim (if any) and explains why they do not
amount to significantly more than the exception. This rationale
may rely, where appropriate,... on the case law precedent^]
July 2015 Update on Subject Matter Eligibility, 80 Fed. Reg. 45,429 (July
30, 2015); see also 2014 Interim Guidance on Patent Subject Matter
Eligibility, 79 Fed. Reg. 74,618 (Dec. 16, 2014). the Examiner expressly
finds that claim 1 is directed to an abstract idea because the scope
encompasses “organizing human activity” similar to the method involving a
“concept of data collection, recognition, and storage” addressed in Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d
1343, 1347, and 1351 (Fed. Cir. 2014). Non-final Act. 3; see also Ans. 11.
The Examiner then further analyzed the claim limitations not squarely
addressed by Content Extraction—namely the recitations of user-suggested,
shareable filtering criteria— and found they encompass “a mental process
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Application 14/061,642
(thinking) that []can be performed in human mind, or by a human using pen
and paper.” Ans. 13; see also Non-Final Act. 3; accord Genetic Techs. Ltd.
v. MerialL.L.C., 818 F.3d 1369, 1378 (Fed. Cir. 2016) (A mental process
cannot constitute a “requisite inventive concept.”), cert, denied, 137 S. Ct.
242 (2016). Thus, we find the Examiner presented a prima facie case of
patent ineligibility by identifying a judicially recognized exception to which
the claims are directed, and analyzing the additional claim limitations
explaining why they, when viewed in the context of the claim as a whole, do
not amount to significantly more than the exception.
Next, we turn to two-step analysis laid out in Alice Corp. Pty Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) {citingMayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75—78 (2012). As to step one,
we find the Examiner did not err in finding claim 1 is directed to a judicially
recognized abstract idea. The claim recites steps for maintaining an
information store, creating personas consisting of interest criteria, filtering
information from the information store based on criteria from the persona,
adding user-suggested interest criteria, and making these criteria available to
other users for creating their personas for filtering information. The Federal
Circuit has found that collecting data, storing data in memory, and
recognizing certain data within the stored data constitutes an abstract idea.
Content Extraction, 776 F.3d at 1347. In another case, the Federal Circuit
found that “filtering content is an abstract idea because it is a longstanding,
well-known method of organizing human behavior, similar to concepts
previously found to be abstract.” Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016). The limitations
at issue here of maintaining an information store and filtering that
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Application 14/061,642
information based on certain criteria, fall within the scope of aforementioned
judicially recognized forms of abstract ideas.
Applying step two of the framework we turn to the claim as a whole
to determine whether it consists of an inventive concept that transforms the
claim to significantly more than the abstract ideas of storing and filtering
information. Appellant argues the claim limitation “cooperate with the user
A to add a user-suggested second interest criterion to the set of
then-available interest criteria to create an updated set of interest criteria” is
novel over what is well-understood, routine, and conventional that
transforms the claim to significantly more than an abstract idea. App. Br. 5—
6. We agree with the Examiner, however, that this inventive concept, relates
to the abstract idea of collecting information and sharing it with others, an
idea that can be performed through human thought and effort, and, like the
other limitations, relates to organizing human behavior. Ans. 12—13. There
is no indication before us that claim l’s implementation of user-suggested
shareable filter criteria provides “significantly more” than the abstract idea
of individually customizable filtering. See Bascom, 827 F.3d at 1346, 1345
(agreeing with the district court’s finding that claim 23’s
“individual-customizable set of inclusive lists” (user-suggested) and a
“master-inclusive list” (shareable) are not inventive concepts). Thus, we
disagree that the claim contains an inventive concept that transforms it to
significantly more than an abstract idea.
Accordingly, we sustain the Examiner’s rejection of claim 1 under 35
U.S.C. § 101.
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35 U.S.C. § 103
Claims 19
Claims 1—9 stand rejected as obvious over Szabo and Refuah.
Claim 1 is representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Appellant argues “neither Szabo nor Refuah teaches that users can add
new interest criteria.” App. Br. 6. Addressing Refuah, Appellant
particularly contends:
To modify the persona, [Refuah] teaches that personas can be
modified by programs that track the user’s internet usage patterns
and location. See Refuah at C22/L21-49. The user may modify
a persona by multiplying parameters by factors that can be
increased or decreased according to how the user prioritizes each
parameter. See Refuah at C22/L50-57. However, Refuah fails
to teach, suggest, or motivate one having ordinary skill in the art
to allow users to add new user-suggested interest criteria. Of
course, as used in the claims, the term “user-sug[g]ested” refers
to a suggestion by the defined element, “the user.”
App. Br. 7.
We are unpersuaded by Appellant’s argument. As reflected by
Appellant’s argument, Refuah teaches that “a persona may be defined in a
parametric manner,” such as via the “client. . . multiplying various
parameter values by factors.” Refuah, col. 22,11. 51—53. Refuah describes
the “client” as “he” {id. at col. 22,11. 53—55); thus, confirming the user
actively suggests the parameter value. Szabo’s cited disclosure also teaches
a user’s active entry of demographics, preferences, and the like for
filtering/ranking of searched data. See Szabo, col. 36,1. 60-col. 37,1. 10
(cited at Ans. 13—14). Because the user actively suggests these criteria, we
agree with the Examiner’s finding that these criteria are user-suggested.
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Appellant further argues ‘“interest criteria’ are characteristics fields
(e.g. elements 130/132: Race, Sports, Gender) that have corresponding
choices/values (e.g., elements 140/142: Asian, basketball, male/female)”
whereas “[t]he Examiner’s arguments imply that he interprets ‘interest
criteria’ to mean the choices/values rather than the characteristic field.”
Reply Br. 9—10. The argument is incommensurate with claim l’s scope and,
thus, unpersuasive. There is nothing within Figure 2A, or the cited
disclosure, defining claim l’s “interest criterion” as an interest category
(e.g., Figure 2A’s “Age group”). Rather, even assuming Figure 2A defines
an interest criterion, the figure conveys that an interest criterion can be an
interest category (e.g., Figure 2A’s “Age group”), measurement thereof
(e.g., range of years), or importance thereof (see Figure 2A’s “Most
importance characteristic”). By stating that filtering and ranking “are
effectively the same” (Spec., p. 16,11. 1—3), the written disclosure likewise
conveys that an interest criterion is any parameter that reflects a user’s
interests and impacts either filtering or ranking (e.g., a preference
parameter).
Appellant also argues, “neither Szabo nor Refuah teaches that users
can add new interest criteria, which are then made available to other users.”
See Reply Br. 11—13. The argument is unpersuasive. First, the argument
could have been raised by the Appeal Brief, but is only raised by the Reply
Brief and, thus, waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015) (“Except as
provided for in §§ 41.41, 41.47 and 41.52, any arguments or authorities not
included in the appeal brief will be refused consideration by the Board for
purposes of the present appeal.”). Second, the argument is conclusory;
providing no meaningful analysis of the Examiner’s findings, claim
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language, prior art, etc. See id. (“A statement which merely points out what
a claim recites will not be considered an argument for separate patentability
of the claim.”). Third, the argument neglects the Examiner’s findings as to
Szabo’s “group user modes.” Non-Final Act. 7.
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejections of claims 1—9.
Claims 10—12
Claims 10-12 stand rejected as obvious over Szabo, Refuah, and
Moores. Appellant argues that Szabo and Refuah fail to teach claim l’s
“cooperating with user A to add a new user-suggested interest criterion”
(Appellant’s words) and “Moores fails to remedy this deficiency.” App.
Br. 7—8. For the reasons stated above, Appellant has not shown that Szabo
and Refuah fail to teach or suggest a limitation of claim 1.
Accordingly, we also sustain the Examiner’s rejection of claims 10—
12.
DECISION
The Examiner’s rejections of claims 1—12 are affirmed.
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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