Ex Parte Pridmore et al

Patent Trials and Appeals BoardMar 29, 2019

13759973 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/759,973 02/05/2013 87851 7590 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 04/02/2019 FIRST NAMED INVENTOR Keenan Pridmore 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. 26295-21242 2350 EXAMINER ELCHANTI, TAREK ART UNIT PAPER NUMBER 3621 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): 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 KEENAN PRIDMORE, PHILIP JOHN MACGREGOR IV, and STEPHEN BIDDLE 1 Appeal2017-010943 Application 13/759,973 Technology Center 3600 Before ALLEN R. MacDONALD, JASON V. MORGAN, and ADAM J. PYONIN, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Introduction This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Non-Final Rejection of claims 1-15. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Appellant and the real party in interest is Facebook, Inc. Appeal Br. 2. Appeal2017-010943 Application 13/759,973 Summary of disclosure The Specification disclosed a method in which a retailer accesses the social information of users in a social networking system to generate customization options for a product. Abstract. An exemplary embodiment of this method would be a social networking system that identifies "pizza toppings to recommend to [a] user ... based on social information of the user's friends in the social networking system." Spec. ,r 4; see also id. Fig. 2. Representative claim 1. A computer-implemented method comprising: storing a user profile for a user of a social networking system, the user connected to one or more additional users of the social networking system; receiving a request for a recommendation of options for a customizable product that is purchasable by the user, the customizable product having a plurality of selectable options to include in the customizable product; responsive to receiving the request for the recommendation of options for the customizable product: retrieving social information comprising information about the one or more additional users of the social networking system connected to the user; determining values for one or more recommended options for the customizable product that correspond to the retrieved social information associated with the one or more additional users of the social networking system connected to the user, the values for the one or more recommend options determined without input from the user; providing the determined values for the one or more recommended options to the user; and 2 Appeal2017-010943 Application 13/759,973 receiving a selection of at least one of the determined values for the one or more recommended options, the selection indicative of a request to include the selected values for the recommended options in the customizable product for purchase by the user. Rejection2 The Examiner rejects claims 1-15 under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. Non-Final Act. 2--4. PRINCIPLES OF LAW To be statutorily patentable, the subject matter of an invention must be a "new and useful process, machine, manufacture, or composition of matter, or [a] new and useful improvement thereof." 35 U.S.C. Â§ 101. There are implicit exceptions to the categories of patentable subject matter identified inÂ§ 101, including: (1) laws of nature; (2) natural phenomena; and (3) abstract ideas. Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,216 (2014). The Supreme Court has set forth a framework for distinguishing patents with claims directed to these implicit exceptions "from those that claim patent- eligible applications of those concepts." Id. at 217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The evaluation follows a two-part analysis: (1) determine whether the claim is directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so, then determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the patent-ineligible concept itself. See id. at 217-18. 2 The Examiner withdraws the 35 U.S.C. Â§ 103 rejections. Ans. 2. 3 Appeal2017-010943 Application 13/759,973 Although the second step in the Alice/Mayo framework is termed a search for an "inventive concept," the analysis is not an evaluation of novelty or non-obviousness, but rather a search for "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.'" Id. ( citation omitted). A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) ("Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the Â§ 101 inquiry"). If a claim proves to be unpatentable as a result of the two-part analysis, no additional determination regarding preemption is necessary. "While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility," as "questions on preemption are inherent in and resolved by the Â§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (internal quotation marks and citation omitted). The U.S. Patent and Trademark Office (USPTO) recently published revised guidance on the application of the two-part analysis. US PTO Memorandum of January 7, 2019, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 ("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) (see id. at 54 (step 2A-prong one)); and 4 Appeal2017-010943 Application 13/759,973 (2) additional elements that integrate the judicial exception into a practical application (see id. at 54--55 (step 2A-prong two); 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: (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, 84 Fed. Reg. at 56 (step 2B). ANALYSIS Memorandum step 2A-prong one The Examiner determines the concept of claim 1 relates "to economic practices in which monetary transactions between people are managed," which are "not meaningfully different [from] those economic concepts found by the courts to be abstract ideas." Non-Final Act. 3; see also Ans. 3. Appellant contends the Examiner erred because claim 1 is "not directed to an abstract idea." Appeal Br. 4. Despite Appellant's arguments, we agree with the Examiner that claim 1 recites at least one abstract idea. The recitations of claim 1 include responding to a received "request for a recommendation of options for a customizable product" by "determining values for one or more recommended options for the customizable product," "providing the determined values for the one or more recommended options to the user," 5 Appeal2017-010943 Application 13/759,973 and "receiving a selection of at least one of the determined values for the one or more recommended options." In other words, claim 1 recites a process for providing recommendations for customization options for a product, a form of sales activity commonly associated with customizable products. Claim 1 includes further recitations directed to making these recommendations based on information found in a customer's social network. Incorporating predicted preferences of a customer in making recommendations would have long been understood as a best-practice for providing recommendations in a sales activity because accurately predicting what a customer prefers increases the likelihood of a successful sale. Therefore, claim 1, reciting the above limitations to a fundamental economic practice (providing recommendations for customization options for a product, where the recommendations are based on customer preference predictions) recites an abstract idea. Memorandum step 2A-prong two Appellant argues that claim 1 is directed to "a technological improvement over prior art techniques for recommending customizations for products." Appeal Br. 4 ( citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). That is, Appellant argues that rather than simply providing recommended options based on the user's own preferences, the claimed invention advances the conventional technology by determining values for one or more recommended options for the customizable product that correspond to the retrieved social information associated with the one or more additional users of the social networking system connected to the user. Reply Br. 2-3. 6 Appeal2017-010943 Application 13/759,973 Appellant's arguments are unpersuasive because the values determination step merely recites determining recommended option values "for the customizable product that correspond to the retrieved social information associated with the one or more additional users of the social networking system connected to the user, the values for the one or more recommend options determined without input from the user." This values determination step does not include limited rules structured in a manner that differs from what a human using social information associated with a user would likely utilize in making predictions about the user's customization preferences. See McRO, 837 F.3d at 1316 (citing Myriad, 569 U.S. at 595- 96). The claim is broad enough, in fact, to encompass having a human verbally discuss or manually look through social information associated with users connected to a customer to make predictions regarding the customer's preferences. For these reasons, despite Appellant's arguments, we determine that the claimed use of social information associated with users connected to the user does not integrate the fundamental economic practice into a practical application. See Memorandum, 84 Fed. Reg. at 54. Memorandum step 2B Appellant argues claim 1 recites "a technology-based solution for suggesting options for the customizable product to a user where the options are based on the social information of the user's connections in the social networking system." Appeal Br. 8; see also Reply Br. 4--5. Appellant further argues claim 1 recites a "particular arrangement and combination" that, like the patent-eligible claim in Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), 7 Appeal2017-010943 Application 13/759,973 "transforms the abstract idea into a particular, practical application of the abstract idea." Appeal Br. 8; see also Reply Br. 5-6. Appellant's argument is unpersuasive because the claimed invention in BASCOM included "an inventive concept ... found in [a] non-conventional and non-generic arrangement of known, conventional pieces" (Bascom, 827 F.3d at 1350) that made a prior-art solution "more dynamic and efficient" so as to improve the performance of the computer system itself (id. at 13 51 ). This inventive concept is what made BASCOM's otherwise patent-ineligible abstract idea of filtering internet content patent-eligible. See id. at 1348. Here, the claimed invention fails to provide for any comparable technological improvement. Rather, any improvements are in the abstract idea itself. See Memorandum, fn. 24 ("USPTO guidance uses the term 'additional elements' to refer to claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception."). Furthermore, the Specification explicitly discloses that the functions of the embodiments can "be implemented by computer programs or equivalent electrical circuits, microcode, or the like," that is, "embodied in software, firmware, hardware, or any combination thereof." Spec. ,r 56; see also id. ,r,r 57-58. This broad disclosure evinces that the claimed invention does not improve any computer technologies, but instead merely uses them as tools for applying the patent-ineligible abstract idea. For these reasons, we determine that claim 1 simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea. Therefore, claim 1 lacks any element, or combination of elements, sufficient 8 Appeal2017-010943 Application 13/759,973 to ensure that the claim amounts to significantly more than the patent- ineligible abstract idea. Accordingly, we sustain the Examiner's 35 U.S.C. Â§ 101 rejection of claim 1, and claims 2-15, which Appellant does not argue separately. See Appeal Br. 9. DECISION We affirm the Examiner's decision rejecting claims 1-15. 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). See 37 C.F.R. Â§ 4I.50(f). AFFIRMED 9