Facebook, Inc.Download PDFPatent Trials and Appeals BoardMar 27, 202013677062 - (D) (P.T.A.B. Mar. 27, 2020) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/677,062 11/14/2012 Bikash Kumar Agarwalla 26295-22374 3397 87851 7590 03/27/2020 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER PRATT, EHRIN LARMONT ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 03/27/2020 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): fwfacebookpatents@fenwick.com ptoc@fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BIKASH KUMAR AGARWALLA, PRASHANT FULORIA, RESHMA KHILNANI EBBERSON, and GUY ROM Appeal 2019-003286 Application 13/677,062 Technology Center 3600 Before CAROLYN D. THOMAS, PHILLIP A. BENNETT, and IFTIKHAR AHMED, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 6–9, and 13–22. Appeal Br. 1.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Facebook, Inc. Appeal Br. 2. 2 We note Appellant failed to include page numbing in both the Appeal Brief and Reply Brief. As such, our citations to these documents reference them as though the pages were numbered with the first page as page 1. Appeal 2019-003286 Application 13/677,062 2 CLAIMED SUBJECT MATTER The claims are directed to identity-based subscription management. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A computer implemented method comprising: maintaining, by a social networking system, subscriptions for users of the social networking system to receive offerings from one or more service providers and operational context information for each of the users describing how a respective user accesses the social networking system and an overall communication environment associated with the accessing of the social networking system, the overall communication environment including a bandwidth of a connection between a user device associated with the respective user and the social networking system, wherein the offerings are selected from a group consisting of: offerings for products, offerings for services, and offerings for products and services; tracking, by the social networking system, eligibility information for each of the users to receive offerings from a plurality of service providers, the plurality of service providers including the social networking system and at least one service provider that is an external system distinct from the social networking system; responsive to the tracking, determining a user is eligible to receive offerings from a subset of the plurality of service providers, the subset including the at least one service provider that is the external system; providing to a user device associated with the user a graphical user interface, the graphical user interface listing the subset of the plurality of service providers, the listing including information about offerings from the subset of the plurality of service providers and pricing information for subscriptions to those offerings; receiving, from the user device, a selection of multiple service providers from the subset of the plurality of service Appeal 2019-003286 Application 13/677,062 3 providers, the selection subscribing the user to subscriptions for the offerings provided by the selected service providers; providing, by the social networking system, operational context information for the user to each of the selected service providers, the operational context information including a bandwidth of a connection between the user device associated with the user and the social networking system; providing the user access to each of the offerings through the social networking system in accordance with the associated subscription, the access to each offering customized to the operational context information and restricted by a level of consumption of the offering by the user; receiving, by the social networking system from the selected service provider, a request for information regarding eligibility of the user to continue to receive the each of the offerings from the selected service providers; determining that the eligibility information identifies that the user is eligible to continue to have access to each of the offerings as part of the subscriptions based in part on the level of consumption by the user being less than a threshold value; responsive to the received request, providing to the selected service providers the eligibility information identifying that the user is eligible to continue to access the offerings based on the determining; and providing the user with continued access to the offerings through the social networking system in accordance with the subscription based on the eligibility information indicating the user was determined to be eligible to continue to access the offerings. App. Br. 19–21 (Claims Appendix). REJECTION Claims 1–4, 6–9, and 13–22 stand rejected under 35 U.S.C. § 101 as being directed to ineligible subject matter. Final Act. 2–16 Appeal 2019-003286 Application 13/677,062 4 REJECTION UNDER 35 U.S.C. § 101 Standard for Patent Eligibility In issues involving subject matter eligibility, our inquiry focuses on whether the claims satisfy the two-step test set forth by the Supreme Court in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court instructs us to “first determine whether the claims at issue are directed to a patent- ineligible concept,” Id. at 217–18, and, in this case, the inquiry centers on whether the claims are directed to an abstract idea. If the initial threshold is met, we then move to the second step, in which we “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court describes the second step as a 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 USPTO has published revised guidance on the application of § 101 consistent with Alice and subsequent Federal Circuit decisions. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the 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 Appeal 2019-003286 Application 13/677,062 5 practice, or mental processes) (referred to Step 2A, prong 1 in the Guidance); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)) (referred to Step 2A, prong 2 in the Guidance). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then move to Step 2B of the Guidance. There, we look to 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 Guidance, 84 Fed. Reg. at 52. Examiner’s Findings and Conclusion The Examiner rejects the pending claims as being directed to a judicial exception without significantly more. Final Act. 2–16. The Final Office Action was mailed prior to the issuance of the Guidance. The Examiner’s Answer was mailed subsequent to the Guidance, and it applies the Guidance in further explaining the basis for the eligibility rejection. See Ans. 5 (maintaining the rejection and applying the revised procedure set forth in the Guidance to the claims). Applying Step 2A, the Examiner determines the claims recite an abstract idea of, inter alia, determining whether a user is eligible to continue to have access to a subscription based on the level of consumption being less than a threshold value. Final Act. 2– Appeal 2019-003286 Application 13/677,062 6 4; Ans. 6. The Examiner identifies the recited abstract idea as being within the category of “certain methods of organizing human activity” under the Guidance. Ans. 6. Under Step 2A, prong two, the Examiner determines additional recited elements are insufficient to integrate the abstract idea into a practical application because they are “recited at a high-level of generality” and generally amount to computing operations which are “a form of insignificant extra solution activity.” Id. at 9. The Examiner further determines: [T]he combination of these additional elements is no more than mere instructions to apply the exception using a generic computer environment (i.e., a ‘social networking system’, an ‘overall communication environment’, a ‘user device associated with a graphical user interface’, and an ‘external system’) and does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Ans. 9–10. Under Step 2B, the Examiner determines that the claims do not “include additional elements that are sufficient to amount to significantly more than the judicial exception because when considered both individually and as an ordered combination [they] do not amount to significantly more than the abstract ideas.” Final Act. 4–5. The Examiner finds the additional limitations generally use generic computers to performing generic functions similar to elements that the court have recognized as well-understood, routine, and conventional activities, and cites various cases identified in MPEP § 2106.05(d) in support. Id. at 5–7. Appeal 2019-003286 Application 13/677,062 7 Appellant’s Contentions Appellant argues that there are several deficiencies in the rejection. App. Br. 12–17. Appellant argues the Examiner’s analysis is deficient because “[t]here is no explanation as to why the lengthy abstract idea alleged here is actually abstract or how it really is similar to the abstract ideas identified in the court cases raised by the examiner.” Appeal Br. 13. Appellant further argues the claims are not directed to an abstract idea because “the claimed method recites an improvement to the way users maintain various online subscriptions by providing a central platform receiving periodic updates on the offerings and operational context information for each of the subscriptions.” Appeal Br. 14. Under Step 2B, the Appellant argues the Examiner has failed to provide sufficient evidence and explanation that the claims are well- understood, routine, and conventional. Appeal Br. 15. Appellant further contends that the recited invention is significantly more because it “solves the problem of connecting users and service providers in a manner that ensures privacy, and solves the problem of complicated tracking of subscriptions, by allowing the social networking system to act as the central platform.” Appeal Br. 15. According to Appellant: The social networking system does the complicated work of maintaining the subscriptions for each user to various service providers, maintains operational information and bandwidth data for the user, tracks eligibility for different offerings, provides the user a GUI with information and pricing for offerings, tracks continued eligibility over time according to the subscription, etc. Appeal Br. 15. Appellant further asserts the Examiner has failed to comply with the requirements of the Berkheimer memorandum because the Appeal 2019-003286 Application 13/677,062 8 Examiner has not explained “why the Examiner considers the additional elements to be well-understood, routine, or conventional.” Appeal Br. 16.3 Revised Guidance, Step 2A, Prong One 4 The Judicial Exception Applying the Guidance, we are not persuaded the Examiner has erred in rejecting the claims as being directed to patent-ineligible subject matter. The Guidance instructs us first to determine whether any judicial exception to patent eligibility is recited in the claim. The Guidance identifies three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. We focus our analysis on the second grouping—certain methods of organizing human activity such as commercial interactions.5 Claim 1 recites the following limitations: (1) “maintaining . . . subscriptions for users . . . to receive offerings from one or more service providers . . . wherein the offerings are selected from a group consisting of: offerings for products, offerings for services, and offering for products and services,” (2) “tracking . . . eligibility information for each of the users to 3 Although Appellant filed a Reply Brief, the Reply Brief is not responsive to the Examiner’s Answer. 4 Throughout this opinion, we give the claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 5 Appellant’s arguments are made to the claims generally. We treat claim 1 as representative. 37 C.F.R. § 41.37(c)(iv) (“When multiple claims subject to the same ground of rejection are argued as a group or subgroup by Appellant, the Board may select a single claim from the group or subgroup and may decide the appeal as to the ground of rejection with respect to the group or subgroup on the basis of the selected claim alone.”). Appeal 2019-003286 Application 13/677,062 9 receive offerings from a plurality of service providers, the plurality of service providers,” (3) “responsive to the tracking, determining a user is eligible to receive offerings from a subset of the plurality of service providers,” (4) “providing to a user . . . [a] listing the subset of the plurality of service providers, the listing including information about offerings from the subset of the plurality of service providers and pricing information for subscriptions to those offerings,” (5) “receiving . . . a selection of multiple service providers from the subset of the plurality of service providers, the selection subscribing the user to subscriptions for the offerings provided by the selected service providers,” (6) “providing . . . operational context information for the user to each of the selected service providers,” (7) “providing the user access to each of the offerings . . . in accordance with the associated subscription, the access to each offering customized to the operational context information and restricted by a level of consumption of the offering by the user,” (8) “receiving . . . from the selected service provider, a request for information regarding eligibility of the user to continue to receive each of the offerings from the selected service providers,” (9) “determining that the eligibility information identifies that the user is eligible to continue to have access to each of the offerings as part of the subscriptions based in part on the level of consumption by the user being less than a threshold value,” (10) “responsive to the received request, providing to the selected service providers the eligibility information identifying that the user is eligible to continue to access the offerings based on the determining,” and (11) “providing the user with continued access to the offerings . . . in accordance with the subscription based on the eligibility Appeal 2019-003286 Application 13/677,062 10 information indicating the user was determined to be eligible to continue to access the offerings.” Appeal Br. 19–21 (Claims Appendix). We conclude that these limitations, under their broadest reasonable interpretation, recite the practice of managing subscription services, which is a commercial interaction, and falls under the category of certain methods of organizing human activities. This is so because the limitations recite basic operations that would customarily and routinely be performed in managing subscriptions on behalf of consumers. For example, limitations (1)–(4) recite maintaining subscription availability to multiple service providers, tracking eligibility for certain offers from those service providers, and delivering those offers to users. These operations are similar to those historically performed by magazine subscription clearinghouses. Similarly, limitation (5) recites the customary practice of receiving subscription requests from customers for multiple services offered by service providers. Again, this activity largely analogous to the subscription model maintained in magazine subscription clearinghouses. Limitation (6) reflects the customary practice of sharing subscriber information with the service providers—similar to telling publishers where to deliver the magazines. Similarly, limitation (7), which recites providing user access to the subscribed offerings in accordance with their subscription, is also analogous to the familiar practice of delivering magazines to customers based on their subscription. Limitations (8)–(11), which recite checking subscriber eligibility for the purpose of determining whether the subscriber can continue to receive services, implement the familiar practice of checking whether a subscription has run out, and permitting continued access to the subscription services accordingly. Accordingly, we conclude the claims Appeal 2019-003286 Application 13/677,062 11 recite a judicial exception of a commercial interaction, which is a certain method of organizing human activities under the Guidance. Revised Guidance, Step 2A, Prong Two Integration of the Judicial Exception into a Practical Application Having determined that claim 1 recites a judicial exception, our analysis under the Memorandum turns now to determining whether there are “additional elements that integrate the judicial exception into a practical application.” See Guidance, 84 Fed. Reg. at 54–55 (citing MPEP § 2106.05(a)–(c), (e)–(h)). Under the Guidance, limitations that are indicative of “integration into a practical application” include: 1. Improvements to the functioning of a computer, or to any other technology or technical field — see MPEP § 2106.05(a); 2. Applying the judicial exception with, or by use of, a particular machine — see MPEP § 2106.05(b); 3. Effecting a transformation or reduction of a particular article to a different state or thing — see MPEP § 2106.05(c); and 4. Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception — see MPEP § 2106.05(e). In contrast, limitations that are not indicative of “integration into a practical application” include: 1. Adding the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an Appeal 2019-003286 Application 13/677,062 12 abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea – see MPEP § 2106.05(f); 2. Adding insignificant extra-solution activity to the judicial exception — see MPEP § 2106.05(g); and 3. Generally linking the use of the judicial exception to a particular technological environment or field of use — see MPEP 2106.05(h). See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). Appellant’s claim 1 recites elements additional to the abstract limitations identified above. Certain of these limitations primarily relate to the computer equipment that is used to carry out the recited process, and they include (a) “a social networking system,” (b) “an external system” associated with a service provider,” and (c) “a user device associated with the user [and] a graphical user interface.” Appeal Br. 19–21 (Claims Appendix). We conclude that these limitations are insufficient to integrate the recited judicial exception into a practical application. In particular, these additional claim limitations amount only to the use of generic hardware to carry out the abstract idea. It is well-established that mere automation of manual processes using computers is insufficient to integrate a claim into a practical application. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior cases have made clear that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”); see also MPEP § 2106.05(a) (“Mere automation of manual processes, such as using a Appeal 2019-003286 Application 13/677,062 13 generic computer to process an application for financing a purchase” is insufficient) (citing Credit Acceptance Corp, 859 F.3d at 1055). Claim 1 also recites the following additional limitations that go beyond generic recitations of computer processing: (d) “operational context information for each of the users describing how a respective user accesses the social networking system and an overall communication environment associated with the accessing of the social networking system, the overall communication environment including a bandwidth of a connection between a user device associated with the respective user and the social networking system,” and (e) “operational context information including a bandwidth of a connection between the user device associated with the user and the social networking system.” Although not generic computer limitations, these limitations are nevertheless insufficient to integrate the recited subscription management process into a practical application. These limitations generally recite the gathering and storage of the necessary data for carrying out the recited commercial interaction. Such data gathering and storage is a form of extra-solution activity. See MPEP § 2106.05(g), which as noted above, is indicative of a limitation integrating an abstract idea into a practical application. Appellant’s argument that “the claimed method recites an improvement to the way users maintain various online subscriptions by providing a central platform receiving periodic updates on the offerings and operational context information for each of the subscriptions” misses the mark. The type of improvement identified by the Guidance is an “[i]Improvement[] to the functioning of a computer, or to any other technology or technical field.” MPEP § 2106.05(a). The improvement Appeal 2019-003286 Application 13/677,062 14 alleged by Appellant in an improvement to the commercial practice of subscription management, and not to any technology or technical field. As such, we do not find the additional limitations of claim 1, either individually or as an ordered combination, are sufficient to integrate the judicial exception into a practical application. The Inventive Concept – Step 2B Having determined the claim is directed to a judicial exception, we proceed to evaluating whether the claim adds any specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)) or simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 56. Our review of the Examiner’s rejection under Step 2B is guided by the revised examination procedure published online by the USPTO on April 19, 2018, entitled “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (“Berkheimer Memorandum”), which imposed a new fact finding requirement for Examiners, as applicable to rejections under § 101. In our review of the rejection under Step 2B, we consider the same “additional limitations” as were considered at Step 2A, Prong 2. We agree with the Examiner that the additional limitations are well- understood, routine, and conventional under the Guidance. As noted above, Appellant argues the Examiner has failed to provide sufficient evidence. We disagree. The Berkheimer Memorandum provides that the Examiner may support a finding that an additional element or combination of elements may be supported by “[a] citation to one or more of the court decisions discussed Appeal 2019-003286 Application 13/677,062 15 in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).” Berkheimer Memorandum at 4, § III(A)(2). This section of the MPEP notes that “[r]eceiving or transmitting data over a network, e.g., using the Internet to gather data” as well as “storing and retrieving information in memory” have been recognized by courts as being well-understood, routine and conventional. MPEP § 2106.05(d)(II) (citing, inter alia, OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). The Examiner references the court decisions from MPEP § 2106.05(d)(ii), including citing OIP Technologies in support of the rejection. Ans. 12–14. As such, we disagree with Appellant that the Examiner’s analysis in Step 2B was insufficient, and we agree with the Examiner that the additional limitations in the claims do not supply an inventive concept. Because the Examiner correctly concluded claim 1 is directed to a judicial exception, and because Appellant does not identify any error in the Examiner’s determination under Step 2B of the Guidance, we sustain the rejection of representative claim 1 under 35 U.S.C. § 101. CONCLUSION The Examiner’s rejection is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6–9, 13–22 101 Eligibility 1–4, 6–9, 13–22 Appeal 2019-003286 Application 13/677,062 16 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation