Ex Parte Tedjamulia et al

Patent Trial and Appeal Board

Mar 26, 2018

12951513 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/951,513 11/22/2010 Steven Ted jamulia
33438 7590 03/28/2018
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
P.O. BOX 203518
AUSTIN, TX 78720
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.
DC-18668 9888
EXAMINER
PALA VECINO, KATHLEEN GAGE
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
tmunoz@tcchlaw.com
heather@tcchlaw.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN TEDJAMULIA, RONALD VINCENT ROSE,
MANI SH C. MEHTA, and HENRY HAITIAN CHEN
Appeal2017-000155
Application 12/951,513
Technology Center 3600
Before ERIC B. CHEN, MICHAEL J. STRAUSS, and AMBER L. HAGY,
Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection2 of claims 1, 3-7, 9-13, and 15-20, which are all of the
pending claims. 3 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Dell Products L.P. as the real party in interest. (Br. 1.)
2 Although the cover page of the action dated April 22, 2015, indicates that
the "action is non-final," the Examiner states on page 2 of the action that
"[t]he following is a final office action." Appellants do not challenge this
statement. We, therefore, refer herein to the April 22, 2015, action as a Final
Action ("Final Act.").
3 Claims 2, 8, and 14 have been canceled. (Br. 8, 10, 11 (Claims App'x); see
also Final Act. 2.)
Appeal2017-000155
Application 12/951,513
STATEMENT OF THE CASE
Introduction
According to Appellants, "embodiments of the invention provide a
method and system for conducting electronic commerce within a social
media environment." (Spec. i-f 1.) By way of background, Appellants'
Specification describes well-known concepts of social media and electronic
commerce, and notes that the intersection of these concepts has resulted in
"social commerce," which Appellants' Specification describes as "the use of
social media in the context of ecommerce, [including] ... customer ratings
and reviews, user recommendations and referrals, private and public forums
and communities, and social advertising." (Id. i-fi-13--4.) Appellants'
Specification states that a need exists "to seamlessly extend social commerce
to provide complete ecommerce functionality from within a social media
environment," which Appellants purport to address with their claimed
invention. (Id. i-f 5.)
Exemplary Claim
Claims 1, 7, and 13 are independent. Claim 1 reproduced below with
the disputed limitations italicized, is exemplary of the claimed subject
matter:
1. A computer-implementable method for conducting
electronic commerce within a social media environment
compnsmg:
receiving, via a computer system, configuration data
comprising social commerce site configuration data and
further comprising product data;
using, via the computer system, the social commerce site
configuration data to configure a social commerce site;
2
Appeal2017-000155
Application 12/951,513
activating the social commerce site to perform social commerce
operations, the activating being executed on the computer
system;
accessing the social commerce site from within the social media
environment, wherein the accessing is performed by a
user of the social media environment, the accessing being
executed on the computer system;
performing electronic commerce operations associated with a
vendor of the product, the performing being executed on
the computer system;
processing data associated with the social commerce
operations to generate social commerce operations data;
processing data associated with the electronic commerce
operations to generate electronic commerce operations
data;
processing the social commerce operations data and the
electronic commerce operations data to generate social
commerce analysis data; and,
presenting the social commerce analysis data via a social
commerce performance analysis panel.
References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Heller et al. ("Heller")
Paolini
Cue et al. ("Cue")
US 8,452,865 B 1
US 2009/0089186 Al
US 2009/0177551 Al
Rejections
May 28, 2013
Apr. 2, 2009
July 9, 2009
Claims 1, 3-7, 9-13, and 15-20 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. (Final Act. 2--4, 7 .)
3
Appeal2017-000155
Application 12/951,513
Claims 1, 3-7, 9-13, and 15-19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cue and Heller. (Final Act. 4---6, 8-13.)
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cue, Heller, and Paolini. (Final Act. 13-14.)
Issues
1. Whether the Examiner erred in rejecting claims 1, 3-7, 9-13,
and 15-20 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
2. Whether the Examiner erred in finding the combination of Cue
and Heller teaches or suggests "accessing the social commerce site from
within the social media environment, wherein the accessing is performed by
a user of the social media environment," as recited in independent claim 1
and commensurately recited in independent claims 7 and 13.
3. Whether the Examiner erred in finding the combination of Cue
and Heller teaches or suggests the "processing" and "presenting" steps as
recited in independent claim 1 and commensurately recited in independent
claims 7 and 13.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments the Examiner has erred. We disagree with Appellants'
conclusions and we adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken (Final Act. 2-
14 ); and (2) the reasons set forth by the Examiner in the Examiner's Answer
in response to Appellants' Appeal Brief (Ans. 3-9). We concur with the
4
Appeal2017-000155
Application 12/951,513
conclusions reached by the Examiner, and we highlight the following points
for emphasis.
A. § 101 Rejection
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine
whether the claims at issue are "directed to" a judicial exception, such as an
abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are
determined to be directed to an abstract idea, then we consider under step
two whether the claims contain an "inventive concept" sufficient to
"transform the nature of the claim into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quotations and citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
5
Appeal2017-000155
Application 12/951,513
abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look
to: (1) whether the claims focus on a specific means or method that
improves the relevant technology, or (2) are directed to a result or effect that
itself is the abstract idea, in which the claims merely invoke generic
processes and machinery. See Enfzsh, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
The Examiner concludes the claims are directed to an abstract idea of
"conducting electronic commerce," which the Examiner finds is "a
fundamental economic practice." (Final Act. 2.) The Examiner further
concludes: "The claims are directed to or describe an 'idea of itself' in that
they recite an uninstantiated concept or scheme related specifically to the
processing and organization of information." (Ans. 3.) In particular, the
Examiner concludes "claim 1 describes organizing information (e.g.
processing data associated with social commerce operations and electronic
commerce operations) through mathematical correlations (e.g. social
commerce analysis data)." (Id. at 4.)
We agree with the Examiner's conclusion that the claims are directed
to an abstract idea. Each of the limitations of claim 1 pertains to
"receiving," "using," "processing" or "presenting" some form of data (e.g.,
"configuration data") or performing "social commerce operations," which
Appellants' Specification describes as a form of electronic commerce. (See
Spec. i-f 4.) As such, the claims are directed to the abstract idea of combining
social media with ecommerce, which includes gathering, manipulating, and
outputting data. (See also Final Act. 2: "These steps merely represent the
6
Appeal2017-000155
Application 12/951,513
performance of business related steps, and do not amount to more than
automating the commercial interaction on a general purpose computer.")
Appellants do not expressly challenge the Examiner's conclusions at
step one other than to assert that "the claims of the present application are
unlike that of any of the examples provided by the Court" in Alice. (Br. 4.)
We disagree. The Alice Court noted that the category of abstract ideas
encompasses "fundamental economic practice[s]." Alice Corp., 134 S. Ct. at
2356. The Examiner concludes, and we agree, the claims are directed to a
"fundamental economic practice" of conducting ecommerce. (Final Act. 2.)
This concept of conducting commercial transactions in an online
environment, and the associated data collection and manipulation, are
similar to other "fundamental economic concepts" found to be abstract ideas
by the Federal Circuit applying Alice. See, e.g., OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) ("automatic pricing
method and apparatus for use in electronic commerce"); Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (''using advertising as an
exchange or currency"); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("data
collection").
Thus, at step one of the analysis, we are not persuaded that the
Examiner erred in determining that the claims are directed to a patent-
ineligible subject matter-that is, to an abstract idea.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Having concluded that the claims are directed to an abstract idea, the
Examiner also concludes that the additional elements or combinations of
elements beyond the abstract idea do not amount to significantly more than
7
Appeal2017-000155
Application 12/951,513
the abstract idea itself because "[ t ]he claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea using some
unspecified, generic computer." (Final Act. 4; see also Ans. 5: "[T]he
additional elements are merely recited in a generic manner and operate using
well-understood, routine and conventional functions.")
Appellants argue the claims amount to a "substantial improvement" in
the field and contain limitations that are sufficient to "transform" the claims
into a patent-eligible application. (Br. 4.) Appellants further cite as support
the Federal Circuit's holding in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). (Br. 4--5.)
We are not persuaded by Appellants' arguments. First, combining
social media and ecommerce, as Appellants' claimed invention purports to
address, is not a technical problem; it is a business problem. In addition,
combining those concepts so that ecommerce may be conducted from within
a social media environment, and gathering and manipulating related data, is
a commercial solution, not a technical solution. The only portion of the
pending claims that could be considered "technological" is the generic
computer hardware, i.e., the claimed "computer system" used to implement
the claimed invention, which is not enough to confer subject matter
eligibility. See Alice Corp., 134 S. Ct. at 2358 ("[I]f a patent's recitation of
a computer amounts to a mere instruction to 'implemen[t]' an abstract idea
'on ... a computer,' that addition cannot impart patent eligibility.") (Internal
citations omitted).
In DDR Holdings, in contrast, the Federal Circuit determined that,
although the patent claims at issue involved conventional computers and the
Internet, the claims addressed a challenge particular to the Internet, i.e.,
8
Appeal2017-000155
Application 12/951,513
retaining website visitors who, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be transported instantly
away from a host's website after "clicking" on an advertisement and
activating a hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal
Circuit, thus, held that the claims were directed to statutory subject matter
because they claimed a solution "necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks." Id.; see also Enfzsh, 822 F.3d at 1338 (holding that claims
directed to a self-referential table for a computer database were patent
eligible because the claims were directed to an improvement in the
functioning of a computer); Visual Memory LLC v. NVIDIA Corp., 867 F.3d
1253, 1259 (Fed. Cir. 2017) (holding that claims directed to "an improved
computer memory system" having many benefits were patent eligible).
No such technological advance is evident in the present invention.
(See Ans. 5-7.) Although claim 1 calls for certain steps to be performed
"via a computer system," Appellants do not indicate, either on appeal or in
the Specification, that the recited computer system is anything other than a
generic version of such a system. Instead, the claims merely employ generic
computer components to perform generic computer functions, i.e., receiving
and processing information. Unlike the situation in DDR Holdings,
Appellants do not identify any problem particular to computer networks
and/or the Internet that the claims allegedly overcome. In particular,
Appellants identify no improvement to another technology or technical field,
no improvements to the functioning of the computer itself, and no
meaningful limitations beyond generally linking the use of an abstract idea
of ecommerce to a particular technological environment (within a social
9
Appeal2017-000155
Application 12/951,513
media platform), and the claims require no more than a generic computer to
perform generic computer functions that are well-understood, routine and
conventional. See Ultramercial, Inc., 772 F.3d at 715-16 (concluding
claims merely reciting abstract idea of using advertising as currency as
applied to particular technological environment of the Internet are not patent
eligible).
For the foregoing reasons, we are not persuaded the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter, or in rejecting on the same basis independent
claims 7 and 13, as well as dependent claims 3---6, 8-12, and 15-20, which
Appellants do not argue separately. (Br. 3.)
B. § 103(a) Rejections
The Examiner finds Cue teaches or suggests the limitations of
independent claims 1, 7, and 13, except for the "processing" and
"presenting" limitations, for which the Examiner combines Cue's teachings
with those of Heller. (Final Act. 8-14.)
Appellant argues the Examiner's findings are in error because,
according to Appellant:
[N]owhere within Figure 3 [of Cue] nor the accompanying
specification for Figure 3 (nor anywhere else in Cue) is there
any disclosure or suggestion of accessing a social commerce
site from within a social media environment, much less where
the accessing is performed by a user of the social media
environment, as required by claims 1, 7, and 13.
(Br. 6.) Appellants' argument is not persuasive of Examiner error because it
further relies on an overly narrow reading of Cue that ignores pertinent
teachings cited by the Examiner.
10
Appeal2017-000155
Application 12/951,513
Cue discloses creation and use of a "custom web page" for
ecommerce transactions for use by a particular group, in which "virtual
bundles of products ... are recommended to be purchased by members of
the group." (Cue i-fi-124, 36.) An example of such a store is shown in Cue's
Figure 7, which depicts an "Apple Store" customized for a group ("Denver
Public Schools"), and which includes "Recommended Systems" as well as
additional "[ w ]orkshops, products, and services" to help users "integrate
technology and[] learning." (Id. at Fig. 7 .) The Examiner finds, and we
agree:
Cue discloses where the present invention relates to electronic
commerce sites, especially electronic commerce sites designed
for the use of members of a group and the configuration data
can include virtual bundles of products which are recommended
(interaction of group members) to be purchased by the members
of the group, as well as the blocking of certain products from
purchase at the custom web site (see at least: paragraph [0001]
and [0024]).
(Ans. 8; see also Final Act. 9.) Thus, the Examiner finds Cue teaches a
"social media environment" in the form of the custom web page, which is
customized by an "administrator associated with a group" for use by
members of that particular group of people to purchase products (e.g.,
persons affiliated with Denver public schools) and includes, as part of that
customization, purchasing recommendations relevant to those persons.
(Final Act. 8-10 (citing Cue i-fi-17, 8, 24, 36, Fig. 3).)
Appellants fail to address the substance of the Examiner's rejection
and, in particular, do not address the foregoing findings that Cue's teaching
of a custom online store teaches a social commerce site that includes a social
media environment. (Final Act. 4.) The Examiner bases these findings on a
broad but reasonable interpretation of a "social media environment" as "the
11
Appeal2017-000155
Application 12/951,513
means of interactions among people in which they create, share, exchange
and comment contents among themselves in virtual communities and
networks." (Final Act. 4 (citing Wikipedia).) This interpretation is
consistent with statements in Appellants' Specification describing "social
media" as "the use of web-based technologies for the creation and exchange
of user-generated content for social interaction." (Spec. i-f 3.)
Appellants additionally argue the Examiner's findings regarding
Heller are in error. Appellants' contentions as to the teachings of Heller
amount to no more than terse restatements of the "processing" and
"presenting" limitations of claim 1 for which the Examiner cites Heller,
followed by a conclusory statement that "nowhere within Heller is there any
disclosure or suggestion" of those limitations. (Br. 6-7.) Such conclusory
assertions have little or no value in identifying the Examiner's alleged error,
and, consequently, have little persuasive value. See 37 C.F.R. § 41.37(c)(iv)
("A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim."); see also In
re Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011). Moreover, we agree the
Examiner's findings regarding Heller (Final Act. 5---6) are supported by the
cited teachings.
For the foregoing reasons, we are not persuaded of error in the
Examiner's 35 U.S.C. § 103(a) rejection of independent claim 1, or of
independent claims 7 and 13, which are argued collectively with claim 1.
(Br. 7 .) We, therefore, sustain the rejection of independent claims 1, 7 and
13 as unpatentable over the combination of Cue and Heller, along with the
rejection of dependent claims 3---6, 9--12, and 15-20, which are not
separately argued with particularity. (Id.)
12
Appeal2017-000155
Application 12/951,513
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1, 3-7, 9-13, and
15-20 is affirmed.
The Examiner's 35 U.S.C. § 103(a) rejections of claims 1, 3-7, 9-13,
and 15-20 are affirmed.
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
13