WILLIAM PARKSDownload PDFPatent Trials and Appeals BoardMay 26, 20212020005695 (P.T.A.B. May. 26, 2021) 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. 13/181,464 07/12/2011 WILLIAM T. PARKS SCEA10083US00 4442 15840 7590 05/26/2021 Joshua D. Isenberg 809 Corporate Way Fremont, CA 94539 EXAMINER ZAMAN, SADARUZ ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 05/26/2021 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): josh@jdipatent.com robert@jdipatent.com scea_patent_docket@Playstation.Sony.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM T. PARKS Appeal 2020-005695 Application 13/181,464 Technology Center 3700 Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and CARL M. DeFRANCO, Administrative Patent Judges. PER CURIAM. 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 1–24. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Sony Interactive Entertainment Inc. Appeal Br. 2. Appeal 2020-005695 Application 13/181,464 2 CLAIMED SUBJECT MATTER The claims are directed to a method and system for tag-based grouping of online communities. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for tag-based grouping of online communities using a computer system, comprising: a) obtaining computer accessible information corresponding to one or more tags associated with a user of a computer game system by the computer system, wherein the computer system determines one or more of the tags by monitoring the user’s interactions and associating one or more tags with the user based on the user’s interactions; a’) determining a location of the computer system using a geo- location device associated with the computer system; b) identifying one or more communities compatible with the one or more tags and the determined location of the computer system with the computer system from computer accessible information relating to one or more communities; and c) after identifying the one or more communities compatible with the one or more tags and the determined location of the computer system, prompting the user to join the one or more communities identified in b) with the computer system. REJECTION Claims 1–24 are rejected under 35 U.S.C. § 101. Final Act. 2. The Examiner withdrew the rejections under 35 U.S.C. § 103(a). Ans. 4. OPINION The claims are argued as a group (Appeal Br. 4–6) for which claim 1 is representative under 37 C.F.R. § 41.37(c)(1)(iv). The Examiner correctly determined that claim 1 is directed to aiding a user in joining a group or “community” based on compatible characteristics (categorized by “tags”) and location information of the user and group. Final Appeal 2020-005695 Application 13/181,464 3 Act. 3. Our reviewing court has held methods involving collecting, organizing, grouping, and storing data obtained via survey2 to fall within the realm of abstract ideas. See, e.g., In re Jobin, Appeal 2020-1067, 2020 WL 2298381 (Fed. Cir. May 8, 2020). Methods involving creating organizational groups of individuals based on common attributes3 (which could include, among other things, location information) in order to determine pricing4 have also been held to be abstract ideas. Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015). Using “tags” to identify, organize, and locate resources has also been held within the realm of abstract ideas. Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315 (Fed. Cir. 2017). Thus, consistent with these principles, the subject matter now before us is correctly categorized by the Examiner as one of the certain methods of organizing human activity (i.e., managing personal behavior or relationships or interactions between people) enumerated in the guidance issued by the USPTO on the application of 35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (hereinafter “2019 Eligibility Guidance”). As the Examiner correctly points out, the recited computer-based limitations merely amount to ancillary data gathering, monitoring, analyzing, and displaying steps, and the claim does not integrate these steps into a practical application. Final Act. 3 (citing Elec. Power Grp., 2 “[T]ags may be obtained by the client device 105 or the server 106 when the user provides input.” Spec. 5:7–8 3 “[U]ser preferences (e.g., favorite game, favorite sports team, etc.) and user identifiers (e.g., age, location. etc.) . . . [are used to] discover several tags associated with the user.” Spec. 4:25–5:6. 4 The present application similarly makes a specialized offer to an individual based on the individual’s grouping, albeit to “compete in a computer-game” (see, e.g., claim 4), instead of making a purchase. Appeal 2020-005695 Application 13/181,464 4 LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)); see also 2019 Eligibility Guidance, 84 Fed. Reg. at 54–55. Appellant argues the following limitation of claim 1 amounts to a practical application: the computer system determines one or more of the tags by monitoring the user’s interactions and associating one or more tags with the user based on the user’s interactions Appeal Br. 5. Appellant contends that this limitation does not preempt all ways of accomplishing the stated task of determining tags associated with a user because it requires “monitoring the user’s habits” which “provides a meaningful limit on the abstract idea.” Appeal Br. 5. Appellant effectively contends that the ability to point to essentially any subject matter not preempted demonstrates the existence of a practical application. Reply Br. 5–6. First, our reviewing court has made clear that, although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Second, to the extent some limited amount of subject matter is not preempted by the limitation in question, there is still a very significant amount of subject matter that is preempted. The actions “determines,” “monitoring,” and “associating” are recited in broad sweeping abstract language without reduction to specific algorithms that can be practically applied. The objects of these actions, “user’s interactions” and “tags,” are also recited only as very broad abstract classes of subject matter. The argued limitation clearly reflects more of an effort to monopolize the exception to patent-eligible Appeal 2020-005695 Application 13/181,464 5 subject matter than an effort to impose meaningful limitations on the claimed method for organizing human activity. Appellant submits that “the groups recited in the claims are ‘online communities’ and as such the claims are already directed to an internet era and not some internet era practice [sic].” Appeal Br. 5 (citing DDR Holdings LLC v Hotels.com LP, 773 F.3d 1245, 1265 (Fed. Cir. 2014)). Thus, Appellant argues that the claims “represent a practical application of an alleged judicial exception.” Id. Appellant’s argument is not persuasive because it is not commensurate with the scope of claim 1, which does not specify the identity or genesis of the communities (i.e., whether they were established before or after usage of the internet became commonplace). Further, the holding in DDR does not appear to be applicable to the case before us. The claims at issue in DDR address the problem of retaining website visitors who would otherwise be transported away from the host website after clicking on an advertisement on the host website and activating a hyperlink. DDR, 773 F.3d at 1257. The DDR claims call for a web server that “directs the visitor to an automatically-generated web page that combines visual ‘look and feel’ elements from the host website and product information from the third-party merchant’s website related to the clicked advertisement.” Id. This permits visitors “to purchase products from the third-party merchant without actually entering that merchant’s website.” Id. at 1258. Thus, the solution set forth in the DDR claims “is necessarily rooted in computer technology in order to overcome a problem arising in the realm of computer networks.” DDR, 773 F.3d at 1257. Claim 1, by contrast, identifies communities that appear to be relevant to a person based on a person’s prior interactions and, thus, Appeal 2020-005695 Application 13/181,464 6 addresses a problem that exists outside of the internet, rather than one that is necessarily rooted in computer technology. Appellant next argues that Appellant did not have adequate notice as to the subject matter the Examiner characterized as “extra-solution activity.” Appeal Br. 6; Reply Br. 10–11. It is true that appellants are entitled to adequate notice of the Office’s position. However, it is preferable that issues related to the clarity of an examiner’s action be resolved prior to taking an appeal. There are multiple avenues available to applicants for seeking clarification of the examiner’s position such as by requesting an interview with the examiner or the examiner’s supervisor, or filing a petition under 37 C.F.R. § 1.104. The record before us makes no mention of any attempts by Appellant to pursue such avenues. In any case, on reviewing the Final Action from which this appeal was taken, we have no difficulty determining the subject matter the Examiner regarded as extra-solution activity. In this regard the Examiner identifies: a plurality of computers, identification of communities, prompting users to join another communities for changing user habits. Final Act. 3. It is quite apparent that the Examiner is paraphrasing the claim limitations reciting: “obtaining computer accessible information”; “identifying . . . with the computer system from computer accessible information relating to one or more communities”; and “prompting the user to join the one or more communities . . . with the computer system.” Appellant does not present any substantive arguments to rebut the Examiner’s position in this regard. Indeed, the collection of information, retrieval (or identification) of certain information, and the presentation of Appeal 2020-005695 Application 13/181,464 7 that information would seem to fall very squarely within the pre, post, or extra-solution activity classifications commonly associated with § 101 jurisprudence. See cases discussed at MPEP § 2106.05(g). No issues are raised by Appellant concerning the subject matter the Examiner regarded as well-understood, routine, or conventional. See Final Act. 4. Appellant’s additional argument that the Examiner improperly relied on nonfunctional descriptive material jurisprudence (Reply Br. 7–8) amounts to a mischaracterization of the Examiner’s position. Although the Examiner may have used certain language that is commonly associated with an analysis of nonfunctional descriptive material, it is clear that the Examiner was not regarding any claimed subject matter as such. Ans. 9. Rather the Examiner was conducting a search for “improvements to technology or computer functionality” (see MPEP § 2106.06(b) summarizing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016), and McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016)). For the foregoing reasons, we sustain the Examiner’s § 101 rejection. CONCLUSION The Examiner’s rejection is AFFIRMED. Appeal 2020-005695 Application 13/181,464 8 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–24 101 Eligibility 1–24 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