WILLIAM PARKS

Patent Trials and Appeals Board

May 26, 2021

2020005695 (P.T.A.B. May. 26, 2021)

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.
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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
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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.
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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
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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,
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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
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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.
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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