Ex Parte Rubinstein et al

Patent Trial and Appeal BoardFeb 14, 2019

14555506 (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/555,506 11/26/2014 87851 7590 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 02/19/2019 FIRST NAMED INVENTOR Yigal Dan Rubinstein 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. 26295-27883/US 7205 EXAMINER EBERSMAN, BRUCE I ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 02/19/2019 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 YIGAL DAN RUBINSTEIN, ABHISHEK DOSHI, RESHMA KHILNANI EBBERSON, and COLE GLEASON Appeal 2017-011360 Application 14/555,506 1 Technology Center 3600 Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and JOHN P. PINKERTON, Administrative Patent Judges. PINKERTON, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-19, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 The real party in interest identified by Appellants is Facebook, Inc. App. Br. 2. Appeal 2017-011360 Application 14/555,506 STATEMENT OF THE CASE Introduction Appellants' described and claimed invention relates generally to providing an indication of a user's opinion regarding content presented by a social networking system. See Spec. ,r 2. 2 Claim 1 is representative and reads as follows: 1. A non-transitory computer readable medium configured to store instructions, the instructions when executed by a processor cause the processor to: store one or more graphical elements in a social networking system, each graphical element providing a visual representation of an emotional state associated with a user; present content items to a viewing user of the social networking system; receive a request from the viewing user to associate a graphical element with a selected content item from the presented content items; retrieve one or more graphical elements eligible to be used by the viewing user; present the retrieved one or more graphical elements to the v1ewmg user; receive a selection of a selected graphical element from the one or more graphical elements from the viewing user; prompt the viewing user for payment information associated with the selected graphical element; associate the selected graphical element with the content item when payment information is received; and 2 Our Decision refers to the Final Office Action mailed February 18, 2016 ("Final Act."), Appellants' Appeal Brief filed October 17, 2016 ("App. Br."), and Reply Brief filed September 11, 2017 ("Reply Br."), the Examiner's Answer mailed July 10, 201 7, and the original Specification filed November 26, 2014 ("Spec."). 2 Appeal 2017-011360 Application 14/555,506 display the selected graphical element along with the content item to one or more additional users of the social networking system connected to the viewing user and viewing the selected content item. App. Br. 11 (Claims App.). Rejection on Appeal Claims 1-19 stand rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to patent-ineligible subject matter. ANALYSIS Applicable Law Under 35 U.S.C. Â§ 101, 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. The Supreme Court, however, has long interpretedÂ§ 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (citation omitted). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 75-77 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in the analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. For example, abstract ideas include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355-57. The 3 Appeal 2017-011360 Application 14/555,506 "directed to" inquiry asks not whether "the claims involve a patent-ineligible concept," but instead whether, "considered in light of the specification, ... 'their character as a whole is directed to excluded subject matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citations omitted). In that regard, we determine whether the claims "focus on a specific means or method that improves the relevant technology" or are "directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). If, at the first stage of the Alice analysis, we conclude that the claim is not directed to a patent-ineligible concept, it is considered patent eligible under Â§ 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016). If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims "individually and 'as an ordered combination"' to determine whether there are additional elements that "'transform the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). In other words, the second step is to "search for an "'inventive concept"'- i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Id. (quoting Mayo, 566 U.S. at 72-73). The prohibition against patenting an abstract idea "cannot be circumvented by attempting to limit the use of the formula to a particular technological environment" or adding "insignificant postsolution activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted). 4 Appeal 2017-011360 Application 14/555,506 The Office recently published revised guidance on the application of 35 U.S.C. Â§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50-57 (Jan. 7, 2019) ("Memorandum"). Under the revised guidance, we first look to whether the claim recites: any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as fundamental economic practices, or mental processes); and additional elements that integrate the judicial exception into a practical application. See Memorandum 54--55. Only if a claim recites a judicial exception and does not integrate that exception into a practical application, do we then look to whether the claim adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field. See Memorandum 56. Appellants' Arguments2 Appellants contend the claims are eligible under the first step of Alice because they are not directed to an abstract idea. See App. Br. 5. More specifically, Appellants contend displaying a selected graphical element along with a content item, which the Examiner alleges the claims are directed to, is not an abstract idea. See App. Br. 6. According to Appellants, displaying the selected graphical element along with the content item is neither a concept relating to agreements between people or performance of financial transactions, nor a concept relating to mitigating risks, and thus, 3 Appellants argue claims 1-19 as a group, focusing on independent claims 1, 10, and 15. See App. Br. 4--9. We consider claims 1, 10, and 15 to be representative of the claimed subject matter on appeal and, therefore, we decide the rejection of claims 2-9, 11-14, and 16-19 on the basis of representative claims 1, 10, and 15. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). 5 Appeal 2017-011360 Application 14/555,506 displaying the selected graphical element along with the content item is not a fundamental economic practice. See id.; see also Reply Br. 2-3. Further, according to Appellants, displaying the selected graphical element along with the content item is inextricably tied to computer technology and distinct from the types of concepts found by the courts to be abstract. See App. Br. 6-7. As argued by Appellants in their Reply Brief, the claim limitations of claims 1, 10, and 15 provide for non-abstract improvements to social networking system technology. See Reply Br. 3--4. In addition, Appellants contend the claims are eligible under the second step of Alice because the claims as a whole amount to significantly more than the purported abstract idea. See App. Br. 7. More specifically, Appellants contend the claims recite limitations that are not well-understood, routine, or conventional, as evidenced by the lack of a prior-art rejection. See App. Br. 8; see also Reply Br. 5---6. According to Appellants, the claims do not recite storing data or receiving data in the abstract, and, instead, amount to significantly more than the identified abstract idea of displaying the selected graphical element along with the content item. See App. Br. 9; see also Reply Br. 5. Further, Appellants' Appeal Brief and Reply Brief, as well as the Final Office Action and Examiner's Answer, were all filed before the issuance of new Office guidance in the Memorandum. However, we analyze the claims and the Examiner's rejection underÂ§ 101 under the Office guidance detailed in the Memorandum. 6 Appeal 2017-011360 Application 14/555,506 Step One of Alice Prong 1 : Whether Claims Are Directed to an Abstract Idea The Examiner finds the claims are directed to an abstract idea. See Ans. 3--4. More specifically, the Examiner finds the claims are directed to displaying a selected graphical element along with a content item, which the Examiner finds is a fundamental economic practice. See id. We are persuaded that the Examiner erred in finding claims 1, 10, and 15 are directed to a fundamental economic practice, which is one of the categories of abstract ideas identified by the Office's recent guidance in the Memorandum. More specifically, the Examiner has not shown, on this record, that displaying a selected graphical element along with a content item is the same as any other example of fundamental economic practices articulated by the courts or the recent guidance in the Memorandum. Because the Examiner has not established on this record that claims 1, 10, and 15 are directed to an abstract idea, we do not need to proceed ( as set forth in the Memorandum guidance) to either: (a) prong two of the first step of Alice; or (b) the second step of Alice. Thus, for these reasons, we conclude claims 1, 10, and 15, as well as claims 2-9, 11-14, and 16-19, are directed to patent-eligible subject matter under 35 U.S.C. Â§ 101. DECISION We reverse the Examiner's rejection of claims 1-19 under 35 U.S.C. Â§ 101. REVERSED 7