Ex Parte Landsman

Patent Trials and Appeals BoardMar 29, 2019

13620647 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/620,647 09/14/2012 Richard A. Landsman 107193 7590 04/02/2019 Keller Jolley Preece/Facebook 1010 North 500 East Suite 210 North Salt Lake, UT 84054 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. 19487.144.1.1.1 5009 EXAMINER SCHMIDT, KARIL ART UNIT PAPER NUMBER 2439 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): docketing@kjpip.com gjolley@kjpip.com tmeid@kjpip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD A. LANDSMAN Appeal2018-004351 Application 13/620,647 1 Technology Center 2400 Before LARRY J. HUME, JENNIFERL. McKEOWN, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 21--40, which are all the claims pending in this application. Claims 1-20 are canceled. Appeal Br. 21. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 According to Appellant, the real party in interest is the Facebook, Inc. App. Br. 1. Appeal2018-004351 Application 13/620,647 STATEMENT OF THE CASE Introduction Appellant's application relates to implementing group messaging lists based on trust mechanisms. Spec. ,r 2. Claim 21 illustrates the appealed subject matter and reads as follows: 21. A method comprising: rece1vmg, at a communication system, electronic messages from sender users, wherein each of the electronic messages are distributed to one or more recipient users based on defined communication relationships within the communications system between the sender users and the one or more recipient users; identifying, from among the defined communication relationships, a defined two-way communication relationship between a first user and a second user of the communications system, the defined two-way communication relationship defining one or more two-way settings authorizing the communication system to forward each of the electronic messages from the first user to the second user and to forward each of the electronic messages from the second user to the first user; based on the defined two-way communication relationship: forwarding, using at least one processor, each of the electronic messages from the first user to the second user; and forwarding each of the electronic messages from the second user to the first user; identifying, from among the defined communication relationships, a defined one-way communication relationship between the first user and a third user of the communications system, the defined one-way communication relationship defining one or more one-way settings authorizing the communication system to forward each of the electronic 2 Appeal2018-004351 Application 13/620,647 messages from the first user to the third user and to prevent the communication system from forwarding each of the electronic messages from the third user to the first user; based on the defined one-way communication relationship: forwarding each of the electronic messages from the first user to the third user; and refraining from forwarding each of the electronic messages from the third user to the first user. The Examiner's Rejections Claims 21--40 stand rejected under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. Final Act. 6-7. Claims 21--40 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Yeager (US 7,383,433 B2; June 3, 2008) and Soong (US 6,769,067 Bl; July 27, 2004). Final Act. 8-16. ANALYSIS Patent-Ineligible Subject Matter An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, 3 Appeal2018-004351 Application 13/620,647 we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk . . . . "). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 ( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting 4 Appeal2018-004351 Application 13/620,647 to limit the use of the formula to a particular technological environment." Id. (internal citation omitted) ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an '"inventive concept'" sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The PTO recently published revised guidance on the application of Â§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under that guidance, we first look to whether the claim recites: ( 1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.05(a}-(c), (e}-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: 5 Appeal2018-004351 Application 13/620,647 (3) adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.0S(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Revised Guidance. Revised Guidance Step 1 Step 1 of the Revised Guidance asks whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. Â§ 101: process, machine, manufacture, or composition of matter. Claim 1 recites a "method" (process) and a number of a steps. Accordingly, claim 1 falls within the process category under Â§ 101. Revised Guidance Step 2A, Prong 1 Under Step 2A, Prong 1 of the Revised Guidance, we determine whether the claims recite any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes). See Revised Guidance. Claim 21 recites the following limitations: (1 )"receiving ... electronic messages from sender users, wherein each of the electronic messages are distributed to one or more recipient users based on defined communication relationships within the communications system between the sender users and the one or more recipient users;" (2) "identifying ... a defined two-way communication relationship between a first user and a second user of the communications system;" and (3) "based on the defined two-way communication relationship: forwarding ... each of the electronic 6 Appeal2018-004351 Application 13/620,647 messages from the first user to the second user; and forwarding each of the electronic messages from the second user to the first user." These limitations, under their broadest reasonable interpretation, recite an algorithm for managing two-way communications between users. For example, "receiving ... electronic messages from sender users," as recited in limitation (1) characterizes receiving messages sent from one user to another. The "identifying" step recited in limitation (2) defines a manner of identifying a two-way relationship between the two users. The "based on" step recited in limitation (3) defines how to handle messages between the users based on the identified relationship. These steps, like the "one-way communication relationship" limitations recited in the claim, manage communications between people, which is a form of managing personal behavior or relationships or interactions between people. The claims are similar to the claims in Interval Licensing. Interval Licensing LLC, v. AOL, Inc., 896 F.3d 1335, 1344--45 (Fed. Cir. 2018) (concluding that claims directed to managing the provision of information to a person were directed to an abstract idea). Accordingly, we conclude the claims are directed to managing personal behavior or relationships or interactions between people, which falls within the certain methods of organizing human activity category of abstract ideas listed in the Revised Guidance. Appellant argues the Examiner erred in defining the abstract idea as "communication between users" because this definition is a high-level abstraction untethered to the pending claims. App. Br. 9-10. Appellant has not persuaded us of Examiner error in the Examiner's identification of the abstract idea. Under the "abstract idea" step we must evaluate "the 'focus of the claimed advance over the prior art' to determine if the claim's 'character 7 Appeal2018-004351 Application 13/620,647 as a whole' is directed to excluded subject matter." Affinity Labs of Texas LLC v. DirecTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). Appellant's argument that the claims "have never purported to cover such a broad spectrum of technology without further limitation" (App. Br. 10) is not persuasive of error because determining whether a claim is directed to an abstract idea is not the end of the analysis, which further involves examining the additional limitations in the claim. Although the Examiner's framing of the abstract idea is broad, it nonetheless captures the character of the claims as a whole. See also Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction .... The Board's slight revision of its abstract idea analysis does not impact the patentability analysis."). Revised Guidance Step 2A, Prong 2 Under Step 2A, Prong 2 of the Revised Guidance, we next determine whether the claims recite additional elements that integrate the judicial exception into a practical application (see MPEP Â§Â§ 2106.05(a}-(c), (e}-(h)). The Examiner finds the claims are no different from execution by a human being using the mind and/or pencil and paper. Ans. 6. The Examiner further finds the claims merely recite generic, conventional components to perform the abstract idea of communicating between users. Id. at 8. Appellant argues the claims improve the relevant technology, namely, control of forwarding electronic messages based on communication relationships. App. Br. 11. In particular, Appellant argues the claims recite defining both two-way and one-way communication relationships to enable flexible distribution of electronic messages. Id. at 12. 8 Appeal2018-004351 Application 13/620,647 Appellant has persuaded us of Examiner error. We agree with Appellant that the claims improve the relevant technology, namely, electronic communication systems, by flexibly using defined one-way and two-way relationships. In particular, the claims recite establishing one-way or two-relationships between users that apply to every message between the users, an improvement to the existing communication systems. We, therefore, conclude the claims integrate the judicial exception into a practical application. See MPEP Â§ 2106.0S(a). We further conclude the claimed "forwarding" limitations, which are "based on" the defined one-way and two-way relationships, contribute to there being "additional features to ensure that the claim describes a process or product that applies the exception in a meaningful way, such that it is more than a drafting effort designed to monopolize the exception." See MPEP Â§ 2106.0S(e). We are guided by our reviewing court's decision in McRO, where the court held that claims that recite rules allowing automation of animation tasks that could only be performed manually were not directed to an abstract idea because the claims improved animation technology. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313-14 (Fed. Cir. 2016). Like McRO, the claims here improve an existing technology and are, therefore, not directed to an abstract idea. For these reasons, we do not sustain the Examiner's rejection of independent claim 21 as directed to patent-ineligible subject matter. We also do not sustain the patent-ineligible subject matter rejection of independent claims 32 and 38, which recite commensurate subject matter, and dependent claims 22-31, 33-37, 39, and 40. 9 Appeal2018-004351 Application 13/620,647 Obviousness The Examiner finds the combination of Yeager and Soong teaches or suggests: "based on the defined one-way communication relationship: forwarding each of the electronic messages from the first user to the third user; and refraining from forwarding each of the electronic messages from the third user to the first user." In particular, the Examiner finds Soong teaches determining whether to forward an electronic message to a recipient based on whether the originator gives a password to the recipient. Ans. 11 (citing Soong 12:5-55). The Examiner finds the inclusion of the password defines a two-way relationship and the omission or removal of the password defines a one-way relationship. Id. Appellant argues the Examiner erred because Soong' s password features are message-specific, not user-specific. App. Br. 18-19. Appellant argues the decision to withhold a password does not create a defined one- way communication relationship between users because the decision is specific to that message. Id. Appellant argues the decision does not apply to "each of the electronic messages [ forwarded] from the first user to the third user" and does not "prevent the communication system from forwarding each of the electronic messages from the third user to the first user," as recited in claim 21. Id. Appellant has persuaded us of Examiner error. As Appellant argues, Soong teaches a password may be included or omitted from an electronic message to allow or prevent replies to that electronic message. See Soong 12:5-55. However, Soong's password feature is message-specific, not user- specific, and thus does not define a communication relationship that applies to each of the messages between users. In other words, the Examiner has 10 Appeal2018-004351 Application 13/620,647 failed to establish that Soong teaches a "defined one-way communication relationship defining one or more one-way settings authorizing the communication system to forward each of the electronic messages from the first user to the third user" or "to prevent the communication system from forwarding each of the electronic messages from the third user to the first user," as recited in claim 21. For these reasons, we do not sustain the Examiner's rejection of independent claim 21 as unpatentable over Yeager and Soong. We also do not sustain the obviousness rejection of independent claims 32 and 38, which recite commensurate subject matter, and dependent claims 22-31, 33- 37, 39, and 40. DECISION We reverse the decision of the Examiner rejecting claims 21--40. REVERSED 11