Ex Parte SOHN et al

Patent Trial and Appeal BoardSep 27, 2018

14534965 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/534,965 11/06/2014 23373 7590 10/01/2018 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Jung-joo SOHN 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. Q214142 7018 EXAMINER BAKER, IRENE H ART UNIT PAPER NUMBER 2152 NOTIFICATION DATE DELIVERY MODE 10/01/2018 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUNG-JOO SOHN, KEUM-KOO LEE, HYE-WON LEE, CHUL-HO HAN, and YONG-GOOK PARK Appeal2018-002972 Application 14/534,965 Technology Center 2100 Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and JOHN D. HAMANN, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-33, which are all the claims pending in this application. We have jurisdiction over the pending claims under 35 U.S.C. Â§ 6(b). We affirm. 1 Appellants identify Samsung Electronics Co., LTD., as the real party in interest. App. Br. 2. Appeal2018-002972 Application 14/534,965 STATEMENT OF THE CASE Introduction Appellants' Specification describes "a system and method for sharing a profile image card of a user during communication between devices." Spec. ,r 2. Claims 1 and 12 are exemplary and read as follows: 1. A method of a first device for sharing a profile image card, the method comprising: obtaining a plurality of profile image cards of a first user of the first device; matching at least one profile image card of the first user from among the plurality of profile image cards with a second user of a second device; extracting link information about the at least one matched profile image card; and requesting to communicate with the second device and transmitting the link information about the at least one matched profile image card to the second device, wherein the matching comprises: displaying the plurality of profile image cards and an indication of the second user; receiving a selection of the at least one profile image card from among the displayed plurality of profile image cards; and matching the at least one selected profile image card with the second user. 12. The method of claim 1, wherein the matching further comprises: providing a list of the plurality of profile image cards of the first user to the second device of the second user; 2 Appeal2018-002972 Application 14/534,965 receiving, from the second device, an ID value of a profile image card of the first user selected from the list by the second user; and matching the profile image card of the first user having the ID value with the second user. The Examiner's Rejections Claims 1-33 stand rejected under 35 U.S.C. Â§ 101 for being directed to patent-ineligible subject matter. See Final Act. 4--13. Claims 1-3, 7-11, 13-16, 20-24, and 26-33 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Cox (US 2009/0177974 Al, published July 9, 2009), Eitan (US 2014/0108289 Al; published Apr. 17, 2014), and Purkayastha (US 2006/0122967 Al; published June 8, 2006). See Final Act. 15--40. Claims 4, 5, 17, and 18 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Cox, Eitan, Purkayastha, and Park (US 2014/0148094 Al; published May 29, 2014). See Final Act. 40--44. Claims 6 and 19 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Cox, Eitan, Purkayastha, and Gautier (US 7,127,493 Bl: issued Oct. 24, 2006). See Final Act. 44--47. Claims 12 and 25 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Cox, Eitan, Purkayastha, and Dawson (US 2003/0234953 Al; published Dec. 25, 2003). See Final Act. 47-50. ANALYSIS Rejection Under 35 US.C. Â§ 101 With regard to the Examiner's rejection under 35 U.S.C. Â§ 101, we disagree with Appellants' arguments, and agree with and adopt the 3 Appeal2018-002972 Application 14/534,965 Examiner's findings and conclusions in (i) the action from which this appeal is taken (Final Act. 4--13) and (ii) the Answer(Ans. 4--12) to the extent they are consistent with our analysis below. The Examiner rejects the claims under 35 U.S.C. Â§ 101 because they are directed to patent-ineligible subject matter. See Final Act. 4--13. In particular, the Examiner determines the claims are directed to "the abstract idea for receiving, processing, transmitting, and displaying data between several devices, which fail to amount to significantly more than the judicial exception." Final Act. 4--5. The Examiner further determines the claims use generic computer components to perform generic computer functions, which add nothing that is not already present in the claims. See Final Act. 9--10. Appellants argue the Examiner erred. See App. Br. 9--19; Reply Br. 4--12. Appellants have not persuaded us of error. Section 101 of the Patent Act provides "[ w ]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. Â§ 101. That provision "contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Federal Circuit has described the Alice step-one inquiry as looking at the "focus" of the claims, their "character as a whole," and the Alice step-two inquiry as looking more precisely at what the claim elements add-whether they identify an "inventive concept" in the application of the ineligible matter to which the claim is directed. See Elec. Power Grp., LLC 4 Appeal2018-002972 Application 14/534,965 v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Regarding Alice step one, the Federal Circuit has "treated collecting information, including when limited to particular content ( which does not change its character as information), as within the realm of abstract ideas." Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348--49 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "In a similar vein, we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category." Elec. Power, 830 F.3d at 1354 (emphasis added); see also In re TL! Commc'ns. LLC Patent Litig., 823 F.3d 607,613 (Fed. Cir. 2016). "And we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis." Elec. Power, 830 F.3d at 1354 ( emphasis added); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15 (Fed. Cir. 2014). The rejected claims "fall into a familiar class of claims 'directed to' a patent-ineligible concept." Elec. Power, 830 F.3d at 1353. Contrary to Appellants' arguments (App. Br. 11-13; Reply Br. 4--7), the claims are similar to the claims of Electric Power, and are focused on the combination of abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354. For example, claim 1 is directed to collecting information ("obtaining a 5 Appeal2018-002972 Application 14/534,965 plurality of profile image cards"), analyzing (including generating) information ("matching at least one profile image card" and "extracting link information about the at least one matched profile image card"), and presenting information ("displaying the plurality of profile image cards," "receiving a selection," and "matching the at least one selected profile image card"). Similarly, independent claims 14, 27, and 30 are directed to collecting information, analyzing (including generating) information, and presenting information. See Elec. Power, 830 F.3d at 1353. The dependent claims are directed to similar functions or processes, and Appellants have not shown such claims are directed to other non-abstract functions or processes. See claims 2-13, 15-26, 28, 29, and 31-33. As a result, we agree with the Examiner that the claims are directed to abstract functions or processes for processing image data. Contrary to Appellants' assertion (Reply Br. 5---6), the Examiner did not reject the claims merely because they recite in general terms that image cards are matched. The Examiner instead explains that claim 1 broadly recites functions related to obtaining image card data, matching them, and presenting the result and claim 12 recites the routine activity or function of using an ID value associated with a profile image card. Ans. 4--5. Further, Appellants' assertion (App. Br. 11-13; Reply Br. 4--7) about DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), is unpersuasive. In DDR Holdings, the Federal Circuit determined that certain claims satisfied Mayol Alice step two because "the claimed solution amount[ ed] to an inventive concept for resolving [a] particular Internet- centric problem," i.e., a challenge unique to the Internet. DDR Holdings, 773 F.3d at 1257-59; see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 6 Appeal2018-002972 Application 14/534,965 1138, 1151 (Fed. Cir. 2016) (noting that "[i]n DDR Holdings, we held that claims 'directed to systems and methods of generating a composite web page that combines certain visual elements of a "host" website with content of a third-party merchant' contained the requisite inventive concept"). In DDR Holdings, the Federal Circuit explained that the patent-eligible claims specified "how interactions with the Internet are manipulated to yield a desired result ... that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." DDR Holdings, 773 F.3d at 1258. The court reasoned that those claims recited a technological solution "necessarily rooted in computer technology" that addressed a "problem specifically arising in the realm of computer networks." Id. at 1257. Here, the recited features address collecting and analyzing information and presenting the results, which are not activities that are recognized as necessarily rooted in computer technology. We are not persuaded by Appellants' argument that the claimed features are rooted in computer technology because "extracting link information about the at least one matched profile image card; and ... transmitting the link information about the at least one matched profile image card to the second device" [ and] "using the at least one matched profile image card, extracting and transmitting to the second device the link information for display of the at least one matched profile image card" ... is analogous to the generating and transmitting the second web page of DDR. Reply Br. 5 ( emphasis omitted). In fact, the argued improvement is focused on an alleged improvement to the abstract idea. See Elec. Power, 830 F.3d at 1354 ("[T]he focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools."). Furthermore, according to the Federal Circuit, "DDR 7 Appeal2018-002972 Application 14/534,965 Holdings does not apply when ... the asserted claims do not 'attempt to solve a challenge particular to the Internet."' Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting TL! Commc 'ns, 823 F.3d at 613). Similarly, the claims here do not attempt to solve a challenge particular to selecting image data and sending to a second user. Among other things, they do not require any unconventional network/storage configurations or any uncommon systems for obtaining the image cards, matching them, and transmitting the matched one to another device. Lastly, Appellants assert that claim 1 "addresses the computer-centric problem in which a mobile device's algorithm is insufficient to appropriately match a profile of a user of the mobile device to another user of another mobile device." App. Br. 11-12. By referring to their Figure 11, Appellants assert "the above additional limitations of claim 1 amount to more than simply stating 'apply the abstract idea on the Internet."' App. Br. 13. The Examiner responds by explaining the claims rely on "the user to make the final matching determination (by selecting from the list of profile image cards) and merely transmit[] the associated selected value." Ans. 7. The Examiner further determines that the claims perform nothing "more than provid[ing] a platform for receiving, retrieving, transmitting, and displaying data" or "fetch[ing] data from one storage device and transmit[ing] the data to another place upon receiving some indication to retrieve and transmit such data" and therefore include "no new generation of data, nor any new techniques by which the claimed limitations were accomplished." Ans. 8. In response, Appellants argue that the claims do not require a user to make the final matching determination, as stated by the Examiner (see Ans. 7-8) 8 Appeal2018-002972 Application 14/534,965 because the claims further include "extracting and transmitting the link information about the at least one matched profile image card," as shown in both Figures 11 and 12. Reply Br. 7. Appellants' assertions do not persuade us of Examiner error. "The search for a Â§ 101 inventive concept is ... distinct from demonstrating Â§ 102 novelty." Synopsys, 839 F.3d at 1151; see Diamond v. Diehr, 450 U.S. 175, 188-89 (1981 ); Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017). "[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature ( or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility .... " Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). "[A] claim for a new abstract idea is still an abstract idea." Synopsys, 839 F.3d at 1151. Similarly, a claim for a beneficial abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379-80 (Fed. Cir. 2015). Further, the Federal Circuit has expressly rejected the notion that "abstract ideas remain patent-eligible under Â§ 101 as long as they are new ideas, not previously well known, and not routine activity." Ultramercial, 772 F.3d at 714--16. Thus, the claims' alleged novelty and improvements related to extracting and transmitting the link information, which is directed to providing the analysis results, fail to provide an inventive concept needed to satisfy Mayo/Alice step two. The claims here do not achieve an improvement in computer functionality. See Ans. 8. Appellants do not describe an advance in hardware or software that, for example, causes a computer itself or a database itself to perform the image selection functions more efficiently. 9 Appeal2018-002972 Application 14/534,965 Appellants do not address the operation of a computer itself or a database itself. Instead, Appellants discuss collecting and transmitting profile image cards that allegedly solves "the computer-centric problem in which a mobile device's algorithm is insufficient to appropriately match a profile of a user of the mobile device to another user of another mobile device." App. Br. 11-12 (quoting Spec. ,r,r 146-149, Fig. 11). Further, the claims here do not recite a technological solution to a technological problem specific to computer algorithms and networks, e.g., because they do not require any unconventional network configurations. App. Br. 30-39 (Claims App.). Rather, they require generic computer components for collecting and verifying user data. See, e.g., Spec. ,r,r 194 (using conventional operating systems), 199 (using conventional communications protocols), 207 (using conventional memory devices), 227-229 (using conventional computer readable code/instructions stored on conventional recording media). Because Appellants have not persuaded us the Examiner erred, we sustain the Examiner's rejection of claims 1-33 under 35 U.S.C. Â§ 101. Rejections Under 35 USCÂ§ 103 Appellants contend the Examiner erred in finding Purkayastha teaches the recited "displaying the plurality of profile image cards and an indication of the second user; receiving a selection of the at least one profile image card from among the displayed plurality of profile image cards." App. Br. 20. Appellants specifically argue the cited portions of Purkayastha in paragraphs 26 and 27 do not implicitly or inherently teach the displaying of the profile image cards and receiving the selection of at least one card. App. Br. 22-23. Instead, Appellants argue paragraph 18 of Purkayastha describes 10 Appeal2018-002972 Application 14/534,965 a wireless device selects the user profile based on the device location without displaying the profiles to a user for selection. App. Br. 23. We are not persuaded of Examiner error. Appellants' argument does not address the Examiner's specific findings. The Examiner finds Purkayastha teaches user interaction in selecting the specific profile in the Abstract ("[a] method for distributing information to a user of an information system via a device"), paragraph 2 ("the disclosed system relates to 'distributing information to a wireless device"'), paragraph 8 ("a wireless device for distributing information to a user of an information system includes ... a display"), and paragraph 21 ("the [ user profile] can change based on the user moving to a different location or the user selecting a different [user profile] after the information has been displayed"). Ans. 14 (emphases added). Contrary to Appellants' arguments (Reply Br. 15), we conclude that the Examiner's explanation that Purkayastha's disclosure suggests a user selects a different user profile when those profiles are presented or displayed on the device, is reasonable. See Ans. 15. Accordingly, because we are not persuaded of Examiner error in rejection claim 1, we sustain the 35 U.S.C. Â§ 103 rejection of claim 1, as well as claims 2-11, 13-24, and 26-33 not argued separately. We reach the opposite conclusion with respect to claim 12 because we agree with Appellants that the cited portions of Dawson refer to a list of events and do not disclose providing a list of plurality of profile image cards of the first user or receiving an ID value of a profile image card of the first user. App. Br. 26-27. The Examiner's explanation that a list of events teaches or suggests a list of profile image cards of the first user because the image card refer to "nonfunctional descriptive material ... not relevant to 11 Appeal2018-002972 Application 14/534,965 the claimed function," ignores the recited claim terms. Ans. 16. Additionally, the Examiner has not explained how selecting an event based on a matched image (see Ans. 16-17 ( citing Dawson ,r 107)) results in providing a list of plurality of profile image cards of the first user or receiving an ID value of a profile image card of the first user, as claimed. Accordingly, we do not sustain the 35 U.S.C. Â§ 103 rejection of claim 12, as well as claim 25 which recites similar limitations. CONCLUSIONS The Examiner did not err in rejecting claims 1-33 under 35 U.S.C. Â§ 101. The Examiner did not err in rejecting claims 1-11, 13-24, and 26-33 under 35 U.S.C. Â§ 103. The Examiner erred in rejecting claims 12 and 25 under 35 U.S.C. Â§ 103. DECISION We affirm the Examiner's decision to reject claims 1-33. 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. Â§ 4I.50(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. Â§ 1.13 6( a )(1 )(iv). AFFIRMED 12