Ex Parte Linden et al

Patent Trials and Appeals BoardApr 3, 2019

13735982 - (D) (P.T.A.B. Apr. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/735,982 01/07/2013 Lee Linden 107193 7590 04/05/2019 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. 19487.355 3373 EXAMINER VYAS, ABHISHEK ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 04/05/2019 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 LEE LINDEN, BENJAMIN LEWIS, and ABHEEK ANAND Appeal2017-006861 Application 13/735,982 Technology Center 3600 Before JOSEPH L. DIXON, JENNIFER L. McKEOWN, and JOHN D. HAMANN, Administrative Patent Judges. McKEOWN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1-10 and 28--44. Claims 11-27 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6. We affirm. 1 According to Appellants, the real party in interest is Facebook, Inc. App. Br. 3. Appeal2017-006861 Application 13/735,982 STATEMENT OF THE CASE Appellants' disclosed and claimed invention "relates generally to the field of electronic commerce ( or 'ecommerce '), and more specifically to a new and useful method for enabling gift prepay via e-commerce." Spec. ,r 3. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A method comprising: based on an action of a recipient stored in a social networking system, identifying recipient interest in a product; based on an association between the recipient and a sender stored in the social networking system, prompting the sender to supply a fund to be applied to a purchase of the product by the recipient; receiving an indication of one or more conditions to be satisfied for the fund to be applied to the purchase of the product; receiving, at a host, the fund supplied from the sender; requesting a financial account identifier from the recipient; identifying an electronic initiation of a purchase of the product by the recipient from a third-party merchant based on the financial account identifier collected, by the third-party merchant, from the recipient; determining that the electronic initiation of the purchase of the product from the third-party merchant fails to satisfy the one or more conditions; in response to the determination that the electronic initiation of the purchase of the product from the third-party merchant fails to satisfy the one or more conditions, sending an electronic notification via the social networking system to the recipient of a modification to the purchase necessary to satisfy the one or more conditions prior to the completion of the purchase of the product; upon a subsequent electronic initiation of the purchase of the product from the third-party merchant satisfying the one or more conditions, adjusting, by at least one processor, a purchase price of the product for the recipient, prior to completion of the purchase of the product, to reflect the fund supplied by the sender; 2 Appeal2017-006861 Application 13/735,982 generating a notification indicating purchase of the product by the recipient; and initiating transfer, from the host, of the fund to the third- party merchant in response to completion of the purchase of the product by the recipient. THE REJECTION The Examiner rejected claims 1-10 and 28--44 under 35 U.S.C. Â§ 101 as directed to patent ineligible subject matter. Non-Final Act. 3-8. ANALYSIS Based on the record before us, we are not persuaded that the Examiner erred in rejecting claims 1-10 and 28--44 as patent ineligible. 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. 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, 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 3 Appeal2017-006861 Application 13/735,982 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 ( Gottschalk v. 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 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1853))); 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 176; see also id. at 192 ("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 to limit the use of the formula to a particular technological environment." Id. ( 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 4 Appeal2017-006861 Application 13/735,982 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. (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 section 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). 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 MANUAL OF PATENT EXAMINING PROCEDURE ("MPEP") Â§ 2106.05(a}-(c), (e}-(h) (9th ed. 2018)). See Memorandum 52, 55-56. 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 Appeal2017-006861 Application 13/735,982 (3) adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.05(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 Memorandum 56. Examiner's Findings and Conclusion Under step one of the Alice test, the Examiner determines that the claims are directed to the abstract idea of providing or sending a gift via e-commerce based on satisfying conditions. Non-Final Act. 4, 7; Ans. 2; see also Non-Final Act. 4 (noting that "[t]he claims recite prompting the sender to supply a fund to be applied to a purchase of the product by a recipient of the gift by performing various checks to see if both the recipient and the merchant satisfies the one or more conditions."). The Examiner explains: [p ]roviding a gift by itself is interpreted as abstract as certain methods of organizing human activity such as interpersonal or intrapersonal activities; managing relationships or transactions between people ( as in the instant claims) have been found to be abstract. Non-Final Act. 5. The Examiner also notes that the claimed abstract idea is similar to "creating a contractual relationship and managing relationships or transactions between people (buySafe )" and "[i]nitiating a transfer of funds is interpreted as fundamental economic practice." Ans. 3; see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014). Under step two of the Alice analysis, the Examiner determines that the claims do not amount to significantly more than the abstract idea. Non-Final Act. 6-8. Specifically, the Examiner identifies that "Applicant's 6 Appeal2017-006861 Application 13/735,982 specification in paragraphs 27-33 in fact recite general purpose systems and generic hardware executing the software performing the functions recited in the claims." Non-Final Act. 5; see also Non-Final Act. 6-7 (noting that the claim elements either alone or in combination perform "generic functionalities which are well-understood, routine, and conventional."). Appellants ' Contentions Appellants maintain that the claims "involve 'enabling gift prepay via e-commerce'," but is not directed to this abstract idea. App. Br. 15; Reply Br 5---6. For example, Appellants assert that the claims are directed to concrete systems and methods that provide a solution to technological problems, namely linking the purchase of a product with a gift account and notifying a recipient of gift conditions. App. Br. 16; App. Br. 12; see also Reply Br. 6-7 (asserting that the claims "address a problem that does not exist without the internet" and that the claims improve a technological process). Appellants argue that the claims include significantly more than the abstract idea because the claims "include features ... that provide an inventive concept by way of solution-significant features." App. Br. 17; Reply Br. 10. For example, electronic gifts often have conditions ( e.g., dates that the gifts are valid, etc.), and buyers typically are not aware of a failing to meet a requirement of the electronic gift until the purchase is completed. The present claims, however, provide an innovative solution that advances the gifted electronic funds industry in this area. App. Br. 17. 7 Appeal2017-006861 Application 13/735,982 Analysis -Revised Step 1 Under step one we consider 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 including a number of a steps. Accordingly, claim 1 falls within the process category under Â§ 101. Analysis - Revised Step 2A Under the Memorandum, in prong one of step 2A we look to whether the claims recite a judicial exception. The claimed invention here recites "based on actions of a recipient stored in a social networking system identifying recipient interest in a product" and "prompting a sender to supply a fund for the purchase of the product by the recipient based on an association saved in the social networking system." In other words, these steps recommend a fund or monetary gift based on recipient behavior and an association, e.g., connection or relationship, between the sender and the recipient. The Specification describes examples such as determining "a potential sender who is a coworker of the recipient is a suitable entity to fulfill a $5 prepay for coffee at a local coffee shop 'liked' by the recipient" or "a potential sender who is a parent of the recipient is a suitable entity to fulfill a $100 prepay for a dress 'pinned' by the recipient." Spec. ,r 56. These steps manage social interactions between individuals, namely a sender providing a gift to a recipient through a recommendation of a social networking system. Thus, these steps recite certain method of organizing human activity, which is an abstract idea. 8 Appeal2017-006861 Application 13/735,982 The claimed invention further recites "receiving an indication of one or more conditions to be satisfied to apply the provided funds to the purchase of the product;" "receiving, at a host, the fund supplied from the sender;" "upon a subsequent electronic initiation of the purchase of the product from the third-party merchant satisfying the one or more conditions, adjusting, ... a purchase price of the product for the recipient, prior to completion of the purchase of the product, to reflect the fund supplied by the sender;" and "initiating transfer ... of the fund to the third-party merchant in response to completion of the purchase of the product by the recipient." These steps are commercial or legal interactions, such as sales activities or behaviors, namely a recipient receiving a fund or gift, through use of a financial account identifier, and using the fund or gift (with one or more conditions) to purchase a product through electronic commerce. These steps, thus, also recite certain methods of organizing human behavior, which is an abstract idea. See also Ans. 5 (noting that "[t]he claims are directed to managing a relationship or transaction between people which has been found to be abstract by the courts (buySAFE). The claims use stored and collected information, and rules to identify options to initiate a transfer of funds ( or not)."). Moreover, using a gifted fund to purchase a product is a fundamental economic practice, which is also certain methods of organizing human activity. See, e.g., Coqui Technologies, LLC v. Gyft, Inc., 2018 WL 6033479, *4 (D. Del. Nov. 16, 2018) (stating that "the use of gift certificates [ or gift cards] is a longstanding, fundamental economic practice"). As such, we determine that the claimed invention recites an abstract idea. 9 Appeal2017-006861 Application 13/735,982 Next, under prong two of step 2A, we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception( s ); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. In addition to the abstract idea discussed above, the claimed invention recites "requesting a financial account identifier from the recipient;" "identifying an electronic initiation of a purchase of the product by the recipient from a third-party merchant based on the financial account identifier collected, by the third-party merchant, from the recipient;" "determining that the electronic initiation of the purchase of the product from the third-party merchant fails to satisfy the one or more conditions;" "in response to the determination that the electronic initiation of the purchase of the product from the third-party merchant fails to satisfy the one or more conditions, sending an electronic notification via the social networking system to the recipient of a modification to the purchase necessary to satisfy the one or more conditions prior to the completion of the purchase of the product" and "generating a notification indicating purchase of the product by the recipient." Appellants assert that the claimed invention is "directed to concrete systems and methods that provide a solution to technological problems." App. Br. 16. Appellants, in particular, argue that that the additional claim limitations provide the solutions of "linking the purchase of a product at a third-party merchant with a gift account of a host of a social networking system and providing a mechanism for ensuring that the recipient does not 10 Appeal2017-006861 Application 13/735,982 make a purchase from the third-party merchant thinking that the gift will be applied, not knowing that a condition for the gift has not been satisfied." App. Br. 16; see also App. Br. 19--20 (asserting that the claimed invention "provides a solution rooted in computer technology" and "help[s] users avoid making a purchase based on the assumption that they will receive gift funds when, in fact, the purchase does not qualify for the gift funds"). We disagree with Appellants that the additional limitations provide solutions to technological problems but, instead, are merely insignificant extra-solution activity. For example, receiving a recipient's financial account identifier and linking electronic purchases by that recipient with that account identifier are insignificant data gathering. See MPEP Â§ 2106.05(g); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (gathering and analyzing statistics amounted to mere data gathering). Further, Appellants' argument overlooks that the argued "solution" must be a technical solution. Appellants' argument does not explain how either the problem or solution is technical. Unlike the claims at issue in cases such as DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (claims at issue are "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks") and Enfzsh, 822 F.3d at 1339 (claims at issue are "directed to a specific implementation of a solution to a problem in the software arts"), Appellants merely address a business issue through the use of generic, computer-related recitations that do not add meaningful limitations to steps otherwise directed to an abstract idea. See, e.g., Spec ,r,r 3--4 ( discussing issues with physical gift cards, namely that "these cards are commonly lost, are forgotten, or otherwise fail to be applied to purchases by 11 Appeal2017-006861 Application 13/735,982 their recipients, and the monetary value of these cards thus remains inaccessible to their would-be owners" and characterizing the claimed invention as "a new and useful method for enabling gift prepay via e- commerce."). See also Priceplay.com, Inc. v. AOL Advert., Inc., 83 F. Supp. 3d 577 (D. Del. 2015), affd, 627 F. App'x 925 (Fed. Cir. 2016) ("Performing a sales transaction over the Internet, or in conjunction with an auction and a competitive activity, does not make the concept any more 'concrete.' Therefore, the patent claims are directed to patent-ineligible subject matter."). Moreover, as the Examiner explains, the claimed determining that the condition is not satisfied and notifying the recipient of a modification in response to that determination, "does not provide any insight into solving a network problem. The generic notification sent via the networking system does not solve a network centric solution." Non-Final Act. 9. While the notification may be useful for the recipient, the claims merely provide the data to the recipient without any further actions or limitations. Thus, this improvement is to the underlying method of organizing human activity, namely providing a gift through e-commerce. Accord OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (finding claim to price optimization method directed to an abstract idea). Therefore, we determine that the recited judicial exception is not integrated into a practical application, and thus the claimed invention is directed to the judicial exception. Analysis - Step 2B 12 Appeal2017-006861 Application 13/735,982 We agree with the Examiner that the additional limitations are not sufficient to amount to significantly more than the abstract idea. See Non- Final Act. 5-8; Ans. 3--4. Namely, as the Examiner determines, the additional limitations merely use a generic computer to do generic data collection and rule processing. Non-Final Act. 5---6. For example, the Examiner explains In the instant application: receiving actions of a user, receiving an indication of one or more conditions, identifying a purchase initiation, determining that the electronic initiation of the purchase of the product fails to satisfy a condition, and performing an action in response to the determination are interpreted as generic computer input, processing and providing an output result. Non-Final Act. 6; see also Non-Final Act. 5 (identifying the additional limitations "as extra solution data collection and therefore do not amount to significantly more than the judicial exception."). The Examiner points out that "specification in paragraphs 27-33 in fact recite general purpose systems and generic hardware executing the software performing the functions recited in the claims." Non-final Act. 6. Appellants' argument that linking a gift fund with a financial account identifier adds significantly more to the abstract idea is unpersuasive. App. Br. 20. As discussed above, these steps are merely insignificant extra- solution activity. Namely, the claimed invention receives the financial account identifier and also purchases connected to the account identifier - this is merely conventional data gathering and analysis. See MPEP Â§ 2106.05(g); OIP Techs., Inc., 788 F.3d at 1363 (collecting and analyzing data amounted to mere data gathering). 13 Appeal2017-006861 Application 13/735,982 Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's conclusion that the appealed claims are directed to patent-ineligible subject matter. Therefore, we affirm the Examiner's decision to reject claims 1-10 and 28--44 as directed to patent ineligible subject matter. DECISION We affirm the Examiner's decision to reject claims 1-10 and 28--44. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 14