Ex Parte Nomula

Patent Trial and Appeal Board

Feb 25, 2019

13908992 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/908,992 06/03/2013
105518 7590 02/27/2019
JDM Patent Law PLLC
6801 Kenilworth Ave, Suite 120
Riverdale Park, MD 20737
FIRST NAMED INVENTOR
Jagadeshwar Reddy Nomula
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.
NOMU0002 7173
EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
jma@jdmpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAGADESHW AR REDDY NO MULA
Appeal 2017-011126
Application 13/908,992
Technology Center 3600
Before DENISE M. POTHIER, WSTIN BUSCH, and
NORMAN H. BEAMER, Administrative Patent Judges.
POTHIER, Administrative Patent Judge.
DECISION ON APPEAL
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Application 13/908,992
STATEMENT OF THE CASE
Appellant1,2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1--4, 6-14, and 16-22.3 Appeal Br. 1. Claims 5 and
15 have been canceled. Final Act. 2. The instant application for this appeal
relates to U.S. Application No. 13/089,772, which has been assigned Appeal
No. 2017-011325.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Invention
Appellant's invention relates to a method and system for presenting
gift recommendations for a friend through an online social networking
platform. "[I]nformation corresponding to the friend is mined from the
online social networking platform" and "[r]ecommend[ations] corresponding
to gifts for the friend [are] presented based on processing ... the mined
information." Spec. ,r 9. The invention also relates to a similar method and
system that "enable[ s] sharing ... aggregated information to applications
that can leverage the information to enhance the relevance of the targeted
content[, including recommended goods that can be bought as gifts,]
presented to the user." Id. ,r 7; see id. ,r 19.
1 Throughout this Opinion, we refer to the Final Office Action (Final Act.)
mailed May 19, 2016, the Appeal Brief (Appeal Br.) filed January 19, 2017,
the Examiner's Answer (Ans.) mailed June 30, 2017, and the Reply Brief
(Reply Br.) filed August 30, 2017.
2 Appellant identifies the real party in interest as Jagadeshwar Reddy
N omula. Appeal Br. 2.
3 Appellant states both that " [ c] laims 21-3 8 are pending and are the subject
of this appeal" and that "[c]laims 1-4, 6-14, and 16-22 stand finally
rejected." Appeal Br. 2. We presume the reference to claims 23-38 was in
error because claims 1--4, 6-14, and 16-22 are pending and rejected. See
Final Act. 1.
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Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method, performed by a computer system, for
recommending to a first user of targeted gifts for a second user
in an online social network of the first user, the first user
operating a user terminal, the online social network of the first
user established through a social networking platform
communicable to both the computer system and the user
terminal, the computer system having access to a database
storing ecommerce activity information of each of a plurality of
system users, the ecommerce activity information of each user
adapted to identify prior activities which the respective user has
conducted on at least one ecommerce website coupled to the
database, the method comprising steps of:
sending, by the computer system, a first set of
instructions to the user terminal for the user terminal to display
a first user interface (UI), the first UI containing one or more UI
elements allowing the first user to authenticate to the social
networking platform using the first user interface as a way for
the first user to sign-up with or authenticate into the computer
system;
receiving, by the computer system, social network
information of the first user from the social networking
platform after the first user successfully authenticates to the
social network platform, the received social network
information including information about the second user;
sending, by the computer system, a second set of
instructions to the user terminal for the user terminal to display
a second UI, the second UI listing the second user as a
selectable recipient for receiving one or more gift items from
the first user;
receiving, by the computer system, selection information
from the user terminal, the selection information indicating that
the second user is selected by the first user as a recipient to
receive one or more gifts from the first user;
receiving, by the computer system, social network
information of the second user from the social networking
platform,
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determining, by the computer system, whether the
database stores ecommerce activity information of the second
user as one of the plurality of system users, using the received
social network information of the second user;
retrieving, when ecommerce activity information of the
second user is determined to be present in the database,
ecommerce activity information of the second user, and
deciding one or more potential gift items for the second user
using at least the retrieved ecommerce activity information of
the second user; and
sending, by the computer system, a third set of
instructions to the user terminal for the user terminal to display
a third UI, the third UI listing the decided one or more potential
gift items as selectable for purchase for the second user.
Appeal Br. 29-30 (Claims App.).
The Examiner relies on the following as evidence of unpatentability:
Morgenstern
Kanigsberg
Ramer
US 2008/0189188 Al
US 2008/0294624 Al
US 2009/0222329 Al
The Rejections
Aug. 7, 2008
Nov. 27, 2008
Sept. 3, 2009
Claims 1--4, 6-14, and 16-22 are rejected under 35 U.S.C. § 101.
Final Act. 7-10.
Claims 1--4, 6-9, 11-14, 16-19, 21, and 224 are rejected under
35 U.S.C. § I03(a) as unpatentable over Morgenstern and Kanigsberg. Final
Act. 12-29.
Claims 10 and 20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Morgenstern, Kanigsberg, and Ramer. Final Act. 30-31.
4 Although omitting claims 21 and 22 in the rejection's heading (Final
Act. 12), claims 21 and 22 are rejected in the rejection's body (Final
Act. 29).
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THE PA TENT ELIGIBILITY REJECTION
The Examiner finds that the claims are directed to (1) an abstract idea
of collecting, comparing, organizing, storing, and transmitting information,
including using rules to identify options (Final Act. 7-9; see also Ans. 3)
and (2) optimizing a marketing objective through collecting, storing,
comparing, and displaying data (see Final Act. 4; see also Ans. 3). The
Examiner states the claimed computer components, when considered as an
ordered combination, "add nothing that is not already present when the steps
reconsidered [sic] separately," do not add significantly more than applying
the abstract idea using a generic computer, and do not transform the abstract
idea into a patent-eligible invention. Final Act. 1 O; Ans. 3--4. The Examiner
adds the claim's individual limitations "are some of the most basic functions
of a computer" and are "well-understood, routine, conventional activities
previously known to the industry." Final Act. 10; see also Ans. 3.
Appellant argues that the Examiner has oversimplified the claims and
has failed to identify an abstract idea when considering the claim as a whole.
Appeal Br. 17-18; Reply Br. 5. Appellant asserts the claimed invention
improves on the existing technological process by acquiring content
targeting a specific user and making gift recommendations using the specific
user's ecommerce activity information. Appeal Br. 19. Appellant further
states the additional claim limitations are not merely routine or conventional.
Id. at 20-21.
LEGAL FRAMEWORK
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
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However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. See 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)). Under that framework, we first
determine what concept the claim is "directed to." See Alice, 573 U.S. at
219; see also Bilski v. Kappas, 561 U.S. 593, 611 (2010). 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)).
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 (internal quotation marks
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.
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The PTO recently published revised guidance concerning 35 U.S.C.
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance ("2019
Guidance"), 84 Fed. Reg. 50 (Jan. 7, 2019). Under this 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 interactions such as a fundamental economic practice, or
mental processes) ("Revised Step 2A, Prong One"); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)) ("Revised
Step 2A, Prong Two").
See 2019 Guidance, 84 Fed. Reg. 50-52, 54--55.
If a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, we further consider whether the
claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 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 2019 Guidance, 84 Fed. Reg. 50, 56.
ANALYSIS
Based on the record before us, we find error.
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The Judicial Exception - Revised Step 2A, Prong 1
Among other descriptions, the Examiner finds claim 1 recites
optimizing an advertiser's marketing objective through collecting, storing,
comparing, and displaying data. See Final Act. 4; see also Ans. 3. This
characterization falls into one of the three judicial exceptions in the 2019
Guidance, including a certain method of organizing human activity ( e.g.,
commercial interaction that involves marketing and sales activities or
behaviors).
Claim 1 recites "[a] method ... for recommending to a first user of
targeted gifts for a second user." Appeal Br. 29 (Claims App.). Claim 1 's
method is implemented on a computer system. The recited method uses the
computer system to: (1) send instructions to list the second user as a
selectable recipient for receiving a gift item from the first user, (2) receive
information indicating the second user has been selected to receive a gift, (3)
receive the second user's social network information, (4) determine whether
the received information includes the second user's ecommerce activity
information, ( 5) when such a determination has been made, retrieve the
ecommerce activity information, ( 6) decide on potential gifts for the second
user using the retrieved ecommerce activity information, and (7) send
instructions to display the decided potential gifts as selectable for purchase.
Appeal Br. 29-30 (Claims App.).
Deciding on or recommending gifts (e.g., an advertiser's marketing
objective as described by the Examiner (Final Act. 4)) by targeting specific
user activities, including a recipient's commerce activity is a commercial
interaction (e.g., marketing or sales activity). Because claim 1 covers this
commercial interaction, claim 1 is directed to subject matter that falls within
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the group of certain methods of organizing human activity. See 2019
Guidance, 84 Fed. Reg. 50, 52 (explaining that the grouping of certain
methods of organizing human activity includes "commercial or legal
interactions").
Appellant argues that the Examiner failed to identify one abstract idea
for the entire claim. Appeal Br. 17-18. We are not persuaded. "Adding one
abstract idea (math) to another abstract idea ( encoding and decoding) does
not render the claim non-abstract." See RecogniCorp, LLC v. Nintendo Co.,
855 F.3d 1322, 1327 (Fed. Cir. 2017). Also, to the extent Appellant asserts
the Examiner fails to identify any abstract idea, we disagree for the
above-stated reasons.
Appellant states "the claimed subject matter is ... to increase the
relevancy of gift recommendations specifically targeting a specific user."
Appeal Br. 17. Appellant argues the claimed invention improves on the
conventional art of providing online targeting information to a specific user
by making the acquired content more relevant. Id. at 19. According to the
Specification, known approaches to present targeted content in this
environment do not consider the gift recipient's preferences, including
mining the recipient's information related to the recipient's ecommerce
activities or aggregated from multiple social networking platforms. Spec.
,r,r 5-7, 42--43. Even so, "a claim for a new abstract idea is still an abstract
idea." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016).
On this record, we are not persuaded that the Examiner erred in
determining that claim 1 recites a judicial exception.
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Integration into a Practical Application - Revised Step 2A, Prong 2
Claim 1 recites features in addition to the judicial exception of
deciding/recommending gifts by targeting specific user activities. Namely,
claim 1 performs its steps using a computer system, a database that stores
information of its system users, and a user terminal to receive and send
instructions in a social networking environment. In addition, the first two
steps in claim 1 (i.e., "sending ... a first set of instructions to the user
terminal for the user terminal to display a first user interface (UI), the first
UI containing one or more UI elements allowing the first user to authenticate
to the social networking platform using the first user interface as a way for
the first user to sign-up with or authenticate into the computer system" and
"receiving ... social network information of the first user from the social
networking platform after the first user successfully authenticates to the
social network platform, the received social network information including
information about the second user") are separate from the above-identified
judicial exception. That is, these steps involve authenticating a user to a
social networking platform and are further features in addition to claim 1 's
judicial exception.
Appellant argues the claimed invention improves on the conventional
art by providing online targeting information to a specific user by making
the acquired content more relevant. Appeal Br. 19 ( citing McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). For the
reasons stated below related to Step 2B, we do not reach whether claim 1 is
integrated into a practical application. If prosecution continues, we
encourage the Examiner to follow the guidance set forth in the 2019
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Guidance related to Revised Step 2A, Prong 2. See 2019 Guidance, 84 Fed.
Reg. 50, 54--55.
The Inventive Concept -Step 2B
Regarding the inventive concept, the Examiner finds "the individual
limitations claimed are some of the most basic functions of a computer. All
of these computer functions are well-understood, routine, conventional
activities previously known to the industry." Final Act. 10; see also Final
Act. 4 ( discussing obtaining, identifying, transmitting, displaying, and
filtering data functions are well-understood, routine, and conventional
activities); see also Ans. 3 (same).
Among other things, Appellant argues the first two steps in claim 1
are not routine or conventional activity in a field of recommending a gift to a
specific giftee. See Appeal Br. 20-21. As previously stated, claim 1 's first
two steps are additional elements beyond the judicial exception. Also, as
noted above, claim 1 includes limitations directed to purported
improvements described in the Specification.
In response to Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018),
reh 'g denied en bane, 890 F.3d 1369 (Fed. Cir. 2018), the Office issued
Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) (Apr.
19, 2018) ("2018 Memorandum"). 5 Specifically, the 2018 Memorandum
states an additional element ( or combination of elements) is not
well-understood, routine or conventional to one skilled in the art unless the
Examiner finds and supports the§ 101 rejection with one or more of the
5 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419 .PDF.
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following: ( 1) a citation to an express statement in the Specification or to a
statement made by applicants during prosecution demonstrating the
well-understood, routine, and conventional nature of the additional elements,
(2) a citation to one or more court decisions in MPEP § 2106.05( d)(II) as
noting the well-understood, routine, and conventional nature of the
additional elements, (3) a citation to a publication that demonstrates the
well-understood, routine, and conventional nature of the additional elements,
and ( 4) a statement that the Examiner is taking official notice of the
well-understood, routine, and conventional nature of the additional elements.
2018 Memorandum 3--4.
Upon review of the record, the Examiner has not relied upon one or
more of the above-identified manners to support the findings that the certain,
additional features in claim 1 are well-understood, routine, and conventional.
See Final Act. 4, 10; see also Ans. 3. Specifically, the Examiner has not
relied upon the Specification, case law, or a publication to demonstrate the
well-known, routine, and conventional nature of the first two steps in claim
1 (i.e., "sending ... a first set of instructions to the user terminal for the user
terminal to display a first user interface (UI), the first UI containing one or
more UI elements allowing the first user to authenticate to the social
networking platform using the first user interface as a way for the first user
to sign-up with or authenticate into the computer system" and "receiving ...
social network information of the first user from the social networking
platform after the first user successfully authenticates to the social network
platform, the received social network information including information
about the second user"). See Final Act. 4, 10; see also Ans. 3. Also, to the
extent the Examiner relied upon Official Notice of the well-understood,
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routine, and conventional nature of the additional elements, no such explicit
statement has been made in the record. See Final Act. 4 ( discussing
obtaining, identifying, transmitting, displaying, and filtering data functions
are well-understood, routine, and conventional activities), 1 O; see also Ans.
3. In any event, the 2018 Memorandum indicates that once applicant
challenges the Examiner's position that certain elements are not
well-understood, routine, and conventional activities, as is the case here, the
Examiner can no longer rely on Official Notice and must provide one of the
above, outlined items ( 1) through (3 ).
For the foregoing reasons, Appellant has persuaded us of error in the
rejection of (I) independent claims 1, 6, 11, and 16 and (2) dependent claims
2--4, 7-10, 12-14, and 17-22 for similar reasons.
THE OBVIOUSNESS REJECTION OVER MORGENSTERN
AND KANIGSBERG
Regarding independent claim 1, the Examiner finds Morgenstern
teaches or suggests many of its limitations. Final Act. 12-14 ( citing
Morgenstern ,r,r 21-22, 28, 49, 52-57, Abstract, Figs. 1, 2, 4, 6, and 7). As
for the steps of "receiving ... social network information of the second user
from the social networking platform," "determining ... whether the database
stores ecommerce activity information of the second user ... ," and
"retrieving ... ecommerce activity information of the second user, and
deciding one or more potential gift items for the second user using at least
the retrieved ecommerce activity information of the second user," the
Examiner relies on Morgenstern and Kanigsberg in combination. Id. at
13-14 (citing Kanigsberg ,r 3, Abstract).
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Appellant argues Morgenstern is irrelevant to gift-recommending and
therefore to the "subject matter recited in independent claims 1, 6, 11, and
16." Appeal Br. 22. Appellant contends Morgenstern does not disclose a
combination ( 1) "relating to a first user (giftor) selecting a second user as a
giftee" (id. at 23), (2) "of a first user (giftor) selecting a second user as a
giftee using the online social network information of the first user" (id.), or
(3) "relating to using ecommerce activity information of the second user or
aggregated social network information of the second user, to determine
recommended gifts for the second user" (id. at 24). Appellant asserts
Morgenstern relates to an already purchased asset and does not disclose
selecting a second user as a giftee using a first user's online social network
information. Id. at 23, 25. Also, Appellant argues Kanigsberg does not
relate to using ecommerce activity information or aggregated social network
information of a giftee to determine a recommended gift. Id. at 25.
Appellant argues claims 1, 6, 11, and 16 as a group. Id. at 21-26.
Claims 1 and 11 differ in scope from claims 6 and 16. We therefore select
independent claims 1 and 6 as representative. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
MAIN ISSUE
Under§ 103, has the Examiner erred in rejecting claim 1 by finding
Morgenstern and Kanigsberg collectively would have taught or suggested
"[a] method, performed by a computer system, for recommending to a first
user of targeted gifts for a second user in an online social network of the first
user" and "deciding one or more potential gift items for the second user
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using at least the retrieved ecommerce activity information of the second
user"?
ANALYSIS
Claims 1 and 11
Based on the record before us, we find no error in the Examiner's
obviousness rejection of independent claim 1. Appellant first argues
Morgenstern is irrelevant to gift-recommending. Appeal Br. 22-24. In this
regard, Appellant contends the gifts in Morgenstern have already been
purchased and do not involve selecting a second user as a giftee. Id. at 23.
We are not persuaded.
Although reciting "[a] method ... for recommending to a first user of
targeted gifts for a second user" in its preamble, claim 1 does not recite an
active step of recommending a gift in the body. Id. at 29-30 (Claims App.).
At best, claim 1 recites "deciding [on] one or more potential gift items for
the second user using at least the retrieved ecommerce activity information
of the second user" and "sending ... a third set of instructions to the user
terminal for the user terminal to display a third UI, the third UI listing the
decided one or more potential gift items as selectable for purchase for the
second user."6 Id. at 30 (Claims App.). The later step only recites sending
6 These steps stem from a conditional limitation, where if the condition for
performing its contingent step is not satisfied, the performance recited by the
step need not be carried out in order for the claimed method to be performed.
See MPEP § 2111.04(II) (9th ed. Rev. 08.2017, Jan. 2018) (citing Ex parte
Schulhauser, Appeal No. 2013-007847 (PTAB Apr. 28, 2016)
(precedential) ). In claim 1, the recited "retrieving ... ecommerce activity
information of the second user" only occurs "when ecommerce activity
information of the second user is determined to be present in the database."
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instructions to the user to display the instruction, but does not recite actively
displaying the potential gift item listing. Id. As such, the preamble's
recitation regarding gift recommending is intended use, and claim 1 's
breadth requires only the ability to recommend targeted gifts. See Am. Med.
Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1358-59 (Fed. Cir. 2010).
Nonetheless, Morgenstern discloses a method that recommends gifts
to a first user. For instance, Morgenstern discloses a gift database 308 of
available gifts using a social network provider, and a first user's ( e.g., 102A)
gift webpage can be used to gift to a second user (e.g., 102B). Morgenstern
,r,r 56, 66, Figs. 1 and 3, cited in part in Final Act. 12-13 and Ans. 5.
Morgenstern further describes gifting an asset ( e.g., an image) and gift
module 306 "may recommend several rose images to" the first user ( e.g.,
102A) "for consideration," which are based on the recipient's affinity.
Morgenstern ,r 66. Morgenstern even further teaches and shows in Figure 6
a first user selecting a recipient user (e.g., a second user in window 610) and
then displaying numerous "potential gift items" ( e.g., in window 620) a first
user can give to a second user. Morgenstern ,r,r 77-78, Fig. 6, cited in part
in Final Act. 13. Morgenstern thus teaches a process that can recommend
gifts to a first user and "decid[ e on] one or more potential gift items for the
Appeal Br. 30 (Claims App.) (emphasis added). Also, the "deciding" and
"sending" steps follow from the above "retrieving" step and only occur
when the above condition occurs. Similar limitations are found in claim 6.
Notably, claims 11 and 16 recite "system" claims, where the claim
construction differs because the structure for performing the conditional
limitations must be present in the system. See MPEP § 2111.04(II).
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second user" based on second user's information (e.g., recipient's affinity)
as claim 1 recites.
Additionally, Morgenstern's process includes embodiments where a
first user buys a gift for a second user in an online social network
environment and the gift has not been purchased already. Morgenstern ,r 28,
cited in Ans. 5; see also Morgenstern ,r,r 76-82, Figs. 5-8, cited in part in
Final Act. 12-13. Even if some features in Morgenstern address an already
purchased gift (see Appeal Br. 22-23 ( citing Morgenstern ,r,r 24--26) ),
Morgenstern teaches other features where the gift has not been purchased
already, such as that shown in cited Figures 6 and 7 (see Final Act. 13) and
Figure 8 (see Morgenstern, Fig. 8 ( elements 810, 820) ). See also
Morgenstern ,r 26, cited in Appeal Br. 22. As such, contrary to Appellant's
assertions, Morgenstern teaches using a first user's online social network
information to select a second user ( e.g., element 610 in Figure 6) and the
second user's gift (e.g., element 620 in Figure 6) is selected for purchase.
See Appeal Br. 22-23; see also Reply Br. 7.
Appellant further argues Morgenstern is not relevant "to any
combination relating to using ecommerce activity information of the second
user ... to determine recommended gifts for the second user." Appeal
Br. 24; see also Reply Br. 7. As previously discussed, claim 1 recites
"deciding [on] one or more potential gift items for the second user using at
least the retrieved ecommerce activity information of the second user" but
does not actively recommend gifts. However, we previously noted
Morgenstern can recommend gifts to a user. Moreover, the rejection relies
on Morgenstern and Kanigsberg to teach the recited "deciding" step. Final
Act. 13-14 (citing Kanigsberg ,r 3, Abstract). As such, Appellant cannot
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show nonobviousness by attacking Morgenstern individually. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Regarding Kanigsberg, Appellant argues this reference does not relate
to using a giftee's or second user's ecommerce activity information to
determine recommended gifts for the second user. Appeal Br. 25. This
argument too does not consider what both Morgenstern and Kanigsberg
collectively teach or suggest to one skilled in the art and what Morgenstern
already teaches or suggests, including deciding on potential gifts for the
second user based on the second user's affinity as previously discussed.
Turning to the Specification, the phrase "ecommerce activity
information" has not been defined. At best, the Specification provides an
example of system 100 using information about a friend's purchase ( e.g., an
iPhone) to provide a recommended gift ( e.g., iPhone accessories). Spec.
,r 42, Fig. 1. We decline to import such an embodiment into claim 1, which
is broader in scope. Claim 1 also recites the "ecommerce activity
information of each user [is] adapted to identify prior activities which the
respective user has conducted on at least one ecommerce website coupled to
the database." Appeal Br. 29 (Claims App.) (emphasis added). But, this
does not claim the "ecommerce activity information" are prior user activity
information conducted on an ecommerce website. Rather, the recited
information is information indicative of user's ecommerce activities on an
ecommerce website.
Turning to the references, Morgenstern discusses retaining a gift box
( e.g., 285) that may display digital assets received as gifts by the second user
(e.g., electronic commerce concerning the second user). Morgenstern ,r 57,
cited in Final Act. 13. Morgenstern also discloses an example where the
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icons represent information related to what a user already owns (e.g., an
iPod) and "[t]hus, a second IPOD would probably not be an appropriate gift,
while IPOD accessories and tunes might be appropriate gifts." Morgenstern
,r 24, cited in Appeal Br. 22. Morgenstern thus suggests obtaining a user's
ecommerce activity information and displaying appropriate icons based on
this information.
Kanigsberg further teaches that it is known to an ordinary skilled
artisan to use information in a user's social networking profile (e.g., user's
interests), past behaviors, and all users' product ratings to make
recommendations in an ecommerce environment. Kanigsberg ,r 3, Abstract.
Although not explicitly stating such user's information is "ecommerce
activity information," Kanigsberg discusses analyzing a user's information
( e.g., a user's past behavior) with the other users, collecting all user's
product ratings, and comparing all users' product ratings to the user's ratings
of the same products, which at least suggests each user has purchased a
product online and that each user's product rating information is collected
prior to recommending a product. Id. ,r 3. Thus, Kanigsberg suggests using
all users' "ecommerce activity information," including the second user, to
make recommendations. When combining this suggestion with
Morgenstern, we agree the combination would have yielded no more than a
predictable result to one skilled in the art of "deciding [on] one or more
potential gift items for the second user using at least the retrieved
ecommerce activity information of the second user" and "sending" a listing
that includes "the decided one or more potential gift items" to the user
terminal operated by the first user as claim 1 recites. See Final Act. 14.
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Appellant quotes many limitations in claim 1. See Appeal Br. 22-24.
To the extent Appellant is asserting Morgenstern ( or Kanigsberg) does not
teach each of these claim features of claim 1, merely reciting claim features
and asserting these features are missing from Morgenstern is not considered
a separate argument for patentabiiity. See In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011).
Appellant also argues Kanigsberg discloses prior art subject matter
(i.e., collaborative filtering), which does not involve using factors personal
to the giftee. Appeal Br. 25. This argument is unavailing. First, claim 1
does not preclude using collaborative filtering. Second, the Specification
states "the instant [ collaborative filtering] approach does not appear to be
designed to consider the preference of the person who will be receiving the
gift into consideration." Spec. ,r 5 ( emphasis added). This does not
demonstrate collaborative filtering necessarily excludes a giftee' s
preferences. Third, although stating collaborative filtering is a commonly-
used technique (Id. ,r 5), the Specification also indicates collaborative
filtering can be used to recommend gifts in the invention (Id. ,r,r 39, 44).
Fourth, Kanigsberg explicitly discloses statistically comparing a user's
personal ratings to the collaborative set of ratings to form recommendations,
which suggests considering other particular user's preferences or factors.
For the first time in the Reply Brief, Appellant asserts the Examiner
has not presented a prima facie case of obviousness because Morgenstern
does not relate to the claimed subject matter. See Reply Br. 6-7. We are not
persuaded for the above stated reasons. To the extent Appellant is further
attempting to assert the Examiner has not made a prima facie case for all the
claim language quoted in the Appeal Brief, Appellant has not pointed out
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what specific features are purportedly missing other than the "aspects (i) and
(ii)" (Reply Br. 7; see also Appeal Br. 22-25), which we already addressed.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 1 and claim 11, which is not separately
argued.
Claims 2--4 and 12-14
For the dependent claims, Appellant argues the claims are allowable
due to their dependencies on claims 1 and 11. Appeal Br. 26. Appellant
also repeats Morgenstern and Kanigsberg are not relevant to using a second
user's retrieved ecommerce activity information to recommend a gift. Id.
For this reason, Appellant contends the references do not teach similar
limitations found in the dependent claims. Id. at 26-27 (underlining similar
language found in the dependent claims). We are not persuaded for reasons
previously stated. Accordingly, Appellant has not persuaded us of error in
the rejection of claims 2--4 and 12-14.
Claims 6 and 16
Many of the arguments for representative claim 6 are the same as
those for claim 1. See id. at 21-25. We are not persuaded for reasons
previously stated. We further note, like claim 1, claim 6's last step only
recites sending instructions to the user to display the instruction but does not
recite actively displaying the potential gift items lists. Id. at 31-33 (Claims
App.). As such, the preamble's recitation regarding gift recommending is
intended use.
Appellant separately contends Morgenstern does not relate to
determining a recommended gift for the second user using aggregated social
network information and, thus, does not teach "deciding [on] one or more
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potential gift items for the second user using at least the retrieved aggregated
social network information of the second user" (id. at 33 (Claims App.)) in
claim 6 to determine recommended gifts for the second user. See id. at 22,
24--25. We are not persuaded.
In claim 6, the "aggregated social network information" is
"information of each system user aggregated from a plurality of social
networking platforms." Id. at 32 (Claims App.). The Examiner turns to
Morgenstern and Kanigsberg to teach this feature. Final Act. 16, 18 ( citing
Morgenstern ,r,r 21, 28, 49, Fig. 1 and Kanigsberg ,r 3, Abstract).
Specifically, Morgenstern discusses a user can provide information to a
social network website for access to other users, the information coming
from personal webpages, web logs, and other sources (e.g., a plurality of
social networking platforms). Morgenstern ,r 21. Also, as previously
discussed, Morgenstern discusses making recommendations based on a
recipient's affinity (Morgenstern ,r 66), and Kanigsberg further teaches that
it is known to an ordinary skilled artisan to use user information in a user's
social networking profile to make recommendations in an ecommerce
environment (Kanigsberg ,r 3, Abstract). When combining Morgenstern's
and Kanigsberg' s teachings, we agree the combination would have yielded a
predictable result to one skilled in the art of "deciding [on] one or more
potential gift items for the second user using the retrieved aggregated social
network information of the second user" as claim 6 recites to determine
recommended gifts for the second user. See Final Act. 18.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 6 and claim 16, which is not separately
argued.
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Claims 7-9, 17-19, 21, and 22
For the dependent claims, Appellant argues the claims are allowable
due to their dependencies on claims 6 and 16. Appeal Br. 26. Appellant
also repeats Morgenstern and Kanigsberg are not relevant to using a second
user's aggregated social network information to recommend a gift. Id. at 26.
For this reason, Appellant contends the references do not teach similar
limitations found in the dependent claims. Id. at 26-27 (underlining similar
language found in the dependent claims). We are not persuaded for reasons
previously stated. Accordingly, Appellant has not persuaded us of error in
the rejection of claims 7-9, 17-19, 21 and 22.
THE OBVIOUSNESS REJECTION OVER MORGENSTERN,
KANIGSBERG, AND RAMER
Claims 10 and 20 are rejected based on Morgenstern, Kanigsberg, and
Ramer. Final Act. 30-31. The Examiner turns to Ramer in combination
with Morgenstern and Kanigsberg to teach the recited features related to
social feeds among other things. See id.
Appellant argues the claims are allowable due to their dependencies
on claims 6 and 16. Appeal Br. 26. Appellant also repeats Morgenstern and
Kanigsberg are not relevant to using a second user's aggregated social
network information to recommend a gift. Id. at 26. For this reason,
Appellant contends the references do not teach similar limitations found in
the dependent claims. Id. at 26-27 (underlining similar language found in
the dependent claims). We are not persuaded for reasons previously
discussed. Additionally, Appellant does not dispute the findings and
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conclusions related to Ramer, including those features underlined in claims
10 and 20. See id.
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of claims 10 and 20.
DECISION
We affirm the Examiner's rejections of claims 1--4, 6-14, and 16-22
under§ 103.
We reverse the Examiner's rejection of claims 1--4, 6-14, and 16-22
under§ 101.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 4I.50(a)(l).
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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