Ex Parte GIL et al

Patent Trial and Appeal Board

Aug 3, 2018

13326336 (P.T.A.B. Aug. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/326,336 12/15/2011
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
08/07/2018
FIRST NAMED INVENTOR
SEBASTIAN GIL
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
26295-19484 1960
EXAMINER
FLEISCHER, MARK A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/07/2018 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEBASTIAN GIL, ROUSSEAU KAZI, ROHIT DHAWAN, and
JEFFREY ANDREW KANTER
Appeal2017---001694
Application 13/326,336
Technology Center 3600
Before ANTON W. PETTING, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Sebastian Gil, Rousseau Kazi, Rohit Dhawan, and Jeffrey Andrew
Kanter (Appellants2) seek review under 35 U.S.C. § 134 of a final rejection
1 Our Decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed February 17, 2016) and Reply Brief ("Reply Br.," filed November
11, 2016), and the Examiner's Answer ("Ans.," mailed September 13,
2016), and Final Office Action ("Final Act.," mailed June 12, 2015).
2 According to Appellants, Facebook, Inc. is the real party in interest. See
App. Br. 1.
Appeal2017-001694
Application 13/326,336
of claims 1-26, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
The Appellants invented a way of distributing electronic offers using a
social networking system. Spec. para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[ 1] receiving, by a social networking system, a post from an
advertising user,
the post comprising a coupon for redemption at a
merchant establishment associated with the advertising
user;
[2] generating a coupon story comprising the post with the
coupon,
the coupon story further comprising an option for
claiming the coupon;
[3] sending a feed for display to the viewing user of the social
networking system,
the feed comprising the coupon story and a plurality of
news stories about one or more other users of the social
networking system who are connected to the viewing
user;
[ 4] receiving a selection from the viewing user of the option for
claiming the coupon;
[5] responsive to receiving the selection from the viewing user
for claiming the coupon,
sending information for redeeming the coupon to at least
one of a device of the viewing user and a device
associated with the merchant establishment,
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and
the transmitted information suitable for redeeming the
coupon by the viewing user at a point of sale terminal at
the merchant establishment;
[ 6] responsive to the viewing user claiming the coupon from the
feed:
[7] generating, by a processor of the social networking system,
a news story about the viewing user claiming the coupon in a
feed of news stories for display to one or more connected users,
the connected users comprising other users of the social
networking system who are connected to the viewing
user;
[8] generating, by the processor, an additional feed of news
stories for display to each of the one or more connected users,
and
the additional feed of news stories comprising the news
story about the viewing user claiming the coupon and a
plurality of news stories about activities of the viewing
user and activities of one or more other users of the social
networking system who are connected to the one or more
connected users;
[9] providing the additional feed of news stories from the social
networking system to a user device for presentation to a
connected user.
The Examiner relies upon the following prior art:
Rotbard
Subramanian
Amaro
US 2012/0054002 Al
US 2012/0109749 Al
US 2012/0215610 Al
Mar. 1, 2012
May 3, 2012
Aug. 23, 2012
Claims 1-26 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1-26 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Rotbard, Subramanian, and Amaro.
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ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
The issues of obviousness tum primarily on whether all of the
limitations are described by the art or the Examiner, otherwise, shows to be
obvious.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Rotbard
01. Rotbard is directed to a network system or platform for marketing
by vendors of retail products and services to customers. Rotbard
para. 3.
02. Rotbard describes marketing products or services to consumers,
using a transaction source for processing a purchasing transaction
between a given business and a customer, and producing
corresponding transaction data including at least a unique
identifier for the customer. Rotbard para. 9.
03. Rotbard describes a transaction within its Social Networking
Appreciation Platform (SNAP) beginning with the submission of
information containing a unique identifier to a SNAP server. The
SNAP server is programmed and configured to process the
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submitted information, match a unique identifier to the
consumer's associated SNAP account, and communicate an
appropriate message to selected friends on the consumer's enabled
social networks while also providing businesses and consumers
with web portal access for marketing campaign and account
management. Rotbard para. 27.
04. Rotbard describes a SNAP Social Coupon service that uses the
Social Announcement engine to allow a participating business to
transmit a coupon to their customers. The Social Announcement
service may be provided with a clickable link to the coupon
service, which link allows the SNAP server to auto-generate a
coupon with, for example, a 2-D bar code that can be viewed as a
web page on a smart phone, or printed from a computer. A
customer receiving the coupon can then redeem the coupon and
receive a reward in the form of, e.g., additional bonus points,
discounts, or other special coupons. Rotbard para. 60.
05. Rotbard describes a Social Sharing service that allows a customer
to send messages to their friends. A customer can choose to
resend a coupon, a social announcement from a business, or even
copy and paste an article of information from a participating
business's web site. A participating business may inject such
code into their web site as to allow a quick plug-in to the Social
Sharing service. Rotbard para. 70.
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Subramanian
06. Subramanian is directed to processing of transaction data.
Subramanian para. 2.
07. Subramanian describes the user specifying a location and a
merchant category to request a list of recommended merchants,
sorted according to the preference scores of the respective
merchants. Subramanian para. 4 7.
Amaro
08. Amaro is directed to processing of transactions, such as payments
made via credit cards, debit cards, prepaid cards, etc., and/or the
distribution of offers based on and/or in connection with the
processing of transaction data. Amaro para. 2.
09. Amaro describes being configured to monitor the transactions of
the user and/or the friends of the user to detect a transaction that
satisfies the redemption requirement of the offer and, thus, provide
the benefit of the offer to the purchaser involved in the
transaction, which may be the user or one of the friends of the
user. Amaro Abstract.
ANALYSIS
Claims 1-26 rejected under 35 U.S.C. § 101 as directed to non-statutory
subject matter
Method claim 1 recites receiving a post, generating a story, sending a
feed, receiving a selection, sending information, and responsive to claiming
a coupon, generating news story feeds. Thus, claim 1 recites receiving,
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analyzing, generating, and transmitting data. None of the limitations recite
implementation details for any of these steps, but instead recite functional
results to be achieved by any and all possible means. Data reception,
analysis and modification, generation, and transmission are all generic,
conventional data processing operations to the point they are themselves
concepts awaiting implementation details. The sequence of data reception-
analysis-generation-transmission is equally generic and conventional. The
ordering of the steps is, therefore, ordinary and conventional. The remaining
claims merely describe parameters for the news feeds or device locations,
with no implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts .... If so, we then ask, "[ w ]hat
else is there in the claims before us? ... To answer that
question, ... 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 .... [The Court]
described step two of this analysis as 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."
Alice Corp., Pty. Ltd. v CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner finds the
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claims directed to enabling and facilitating product referrals and providing
coupons. Final Act. 7.
Although the Court in Alice made a determination as to what the
claims were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in generating news feeds about coupon redemption.
The Specification at paragraph 1 recites that the invention relates to
distributing electronic offers using a social networking system. Thus, all this
evidence shows that claim 1 is directed to generating marketing promotion
materials, i.e., marketing promotions. This is consistent with the Examiner's
finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v.
Kappas, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
marketing promotions is a fundamental business practice long prevalent in
our system of commerce. The use of marketing promotions is also a
building block of ingenuity in marketing. Thus, marketing promotions, like
hedging, is an "abstract idea" beyond the scope of§ 101. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of marketing
promotions at issue here. Both are squarely within the realm of "abstract
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ideas" as the Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct.
at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 1 is directed to the abstract idea of receiving, analyzing, and
transmitting data.
The remaining claims merely describe parameters for the news feeds
or device locations. We conclude that the claims at issue are directed to a
patent-ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
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computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t]" an abstract idea
"on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (internal citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, generating, and transmitting data amounts
to electronic data query and retrieval----one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp. v. Alstom S.A., supra. See also In re Katz, 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
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other than abstract." SAP Am. Inc. v. InvestPic LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018) (internal citation omitted).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
generation-transmission is equally generic and conventional or, otherwise,
held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction),
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (sequence of data retrieval, analysis, modification,
generation, display, and transmission), Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of
processing, routing, controlling, and monitoring). The ordering of the steps
is, therefore, ordinary and conventional.
Viewed as a whole, Appellants' method claims simply recite the
concept of marketing promotions as performed by a generic computer. To
be sure, the claims recite doing so by advising one to generate news feeds
about one person's use of promotional materials after offering some
information about promotions and accepting a promotion selection. But this
is no more than abstract conceptual advice on the parameters for such
marketing promotions and the generic computer processes necessary to
process those parameters, and do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 23 plus pages of Specification
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spell out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of marketing promotions under different
scenarios. They do not describe any particular improvement in the manner
in which a computer functions. Instead, the claims at issue amount to
nothing significantly more than an instruction to apply the abstract idea of
marketing promotions using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting
§ 101 "in ways that make patent eligibility 'depend simply on
the draftsman's art. '"
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to Appellants' arguments in the Appeal Brief, we adopt the
Examiner's determinations and analysis from the Final Office Action at
pages 7-8 and the Examiner's Answer at pages 2-7 and reach similar legal
conclusions. We now address the Reply Brief arguments.
We are not persuaded by Appellants' argument that claim 1 is
analogous to those involved in McRO, wherein the Court found claims of
software patents were not directed to abstract ideas under Alice step one.
Reply Br. 3---6.
The claims in McRO were not directed to an abstract idea, but
instead were directed to "a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
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particular type." ... We explained that "the claimed
improvement [was] allowing computers to produce 'accurate
and realistic lip synchronization and facial expressions in
animated characters' that previously could only be produced by
human animators." ... The claimed rules in McRO transformed
a traditionally subjective process performed by human artists
into a mathematically automated process executed on
computers ....
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO).
In McRO, "it ... [was] the incorporation of the claimed rules ... [ for
the process of creating animation], not the use of the computer, that
improved the existing technology process," because the prior process
performed by humans "was driven by subjective determinations rather than
specific, limited mathematical rules." McRO, 837 F.3d at 1314 (internal
quotation marks, citation, and alterations omitted). In contrast, the claims of
the instant application merely implement information transfers based on
some user selection and are not directed to a technological operation such as
animation for which another technological solution in the form of
mathematical rules unobstructed by human intervention to interpolate the
animation sequences. In particular, the claims recite nothing about how the
newsfeeds are generated, and the newsfeeds are not computer animation.
We are not persuaded by Appellants' argument that the claims do not
preempt all means of operating the referral system. Reply Br. 7. "Where a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo[/Alice] framework, as they are in this case, preemption
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concerns are fully addressed and made moot." Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We are not persuaded by Appellants' argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
(Bascom Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016)). Reply Br. 7-8. Initially, we remind Appellants that
Bascom did not find claims eligible, but rather that the Appellees did not
provide sufficient evidence to support a 12(b )( 6) motion to dismiss in which
facts are presumed in the non-movant's favor. The key fact in Bascom was
the presence of a structural change in "installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user. This design gives the filtering tool both
the benefits of a filter on a local computer and the benefits of a filter on the
ISP server." Bascom, 827 F.3d at 1350.
Appellants here repeat the claim limitations and conclude that their
sequence provides some benefit. This is a conclusory argument and there is
no structural change in the organization of data flow from the conventional
flow of data reception-analysis-generation-transmission, as we find supra.
Basically, Appellants depend on the meaning of the content that is
distributed to achieve the benefits, but that meaning is discemable only in
the human mind and afforded no patentable weight. See In re Bernhart, 417
F.2d 1395, 1399 (CCPA 1969).
We are not persuaded by Appellants' argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in Amdocs
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(Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016)) for reasons similar to those supra relative to Bascom. Reply Br.
9-10.
Claims 1-26 rejected under 35 U.S. C. § 103 (a) as unpatentable over
Rotbard, Subramanian, and Amaro
We are persuaded by Appellants' argument that the art applied fails to
describe a news story about the viewing user claiming the coupon in a feed
of news stories. App. Br. 13. The Examiner finds that Rotbard describes
communicating an appropriate message. Ans. 10. Examples of such
messages are resending a coupon, a social announcement from a business, or
even an article of information from a participating business's web site.
Rotbard para. 70. The Examiner presents no evidence the message would
describe a news story about the viewing user claiming the coupon.
CONCLUSIONS OF LAW
The rejection of claims 1-26 under 35 U.S.C. § 101 as directed to
non-statutory subject matter is proper.
The rejection of claims 1-26 under 35 U.S.C. § 103(a) as unpatentable
over Rotbard, Subramanian, and Amaro is improper.
DECISION
The rejection of claims 1-26 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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