Ex Parte FishDownload PDFPatent Trial and Appeal BoardMar 16, 201714061642 (P.T.A.B. Mar. 16, 2017) 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. 14/061,642 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. 2 Appeal 2016-005715 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. 3 Appeal 2016-005715 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 4 Appeal 2016-005715 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 5 Appeal 2016-005715 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. 6 Appeal 2016-005715 Application 14/061,642 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. 7 Appeal 2016-005715 Application 14/061,642 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 8 Appeal 2016-005715 Application 14/061,642 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 9 Copy with citationCopy as parenthetical citation