Ex Parte Gopinath et al

Patent Trial and Appeal Board

May 9, 2018

13800140 (P.T.A.B. May. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/800,140 03/13/2013
26681 7590 05/11/2018
Driggs, Hogg, Daugherty & Del Zoppo Co., LP.A.
38500 CHARDON ROAD
DEPT. IEN
WILLOUGHBY HILLS, OH 44094
Divya Gopinath
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.
END920l20196US1_IEN1074l5 9192
EXAMINER
CIVAN,ETHAND
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
05/11/2018 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):
usptocommunications@driggslaw.com
mwheeler@driggslaw.com
cgiacomazzo@driggslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIVYA GOPINATH, RAJESH RADHAKRISHNAN, and
JENNIFER A. WATSON
Appeal2017-001963
Application 13/800,140
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, and 26-39, which are all the claims pending in this application.
Claims 3-25 are cancelled. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellants' invention is directed to "generat[ing] and execut[ing] an
e-commerce gift offer for a social network contact as a function of
integrating social network data into a web site offering goods or services for
sale within a network computing environment." Abstract.
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Application 13/800,140
Representative Claim
Claim 1 is representative of the invention and reads as follows:
1. A computer implemented method for automatically
generating and executing an e-commerce gift offer for a social
network contact as a function of integrating social network data,
the method comprising executing on a processor the steps of:
in response to a selection of an item that is offered for
sale on a first web site that offers goods or services for sale,
determining a category of the item;
searching social network personal data of a first user that
is associated with the selection of the item to identify a plurality
of other, second users that are listed within the personal data of
the first user and are indicated by individual social network
profile data of the second users to at least one of like an item
that is within the category and to have previously purchased an
item within the category, wherein the personal data of the first
user and the individual social network profile data of the second
users are acquired from a social network web site that is
different from the first web site, and wherein the second users
are each indicated by the social network personal data of the
first user to be at least one of a friend, a family member and a
business associate of the first user;
using the individual social network profile data of the
second users that is acquired from the social network web site
to automatically determine a geographic location of a current
residence of each of the second users;
presenting a rank-ordered listing of offers to the first user
to select the item for additional gift purchase for each of the
second users by ranking the offers to family members ahead of
friends and to friends ahead of offers to business associates of
the first user, and as a function of distance from geographic
locations of current residences of each of the second users to a
geographic location of the item; and
in response to acceptance of one of the rank order listed
offers, identifying at least one online retailer that offers the item
for sale and provides for delivery of the item to the determined
geographic location of the current residence of the second user
that is identified in the accepted offer, and automatically
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selecting one of the at least one online retailers for execution of
the additional gift purchase of the item for the second user that
is identified in the accepted offer that has at least one of lowest
transaction cost, a highest customer satisfaction rating, and a
shortest estimated shipping time.
Rejection 1
Claims 1, 2, and 26-39 are rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2.
Issue on Appeal
Did the Examiner err in rejecting claims 1, 2, and 26-39 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Mayo/Alice Analysis under 35 U.S. C. § 1 OJ
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
1 The Examiner withdrew the rejections under 35 U.S.C. § 102. Final Act. 4.
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The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
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the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
The Examiner's Rejection under 35 U.S.C. § 101
Regarding the first part of the Alice/Mayo analysis, the Examiner
concludes claims 1, 2, and 26-39 are directed to the abstract idea of:
the series of steps instructing how to generate and execute e-
commerce gift offers for social network contracts, which is a
fundamental economic practice, and hence, an abstract idea.
(Final Act. 2). 2
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims do not:
include additional elements that are sufficient to amount to
significantly more than the judicial exception.
Final Act. 4. 3
The Examiner further finds: "The present claims are directed to
creating contractual relationships relating to the purchase and gifting of
goods, which is analogous to the creation of other contractual relationships.
The other elements in the present claims include: a "web site";
"social network"; and "online".
2 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed.
Cir. 2013).
3 The patent eligibility inquiry may contain underlying issues of fact. Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed.
Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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Such elements are generic computer elements and all provide
communication and interface functions. Each has been long used in the art
and is not being used in a novel manner." Final Act. 4.
Thus, the Examiner concludes that all claims 1, 2, and 26-39 on
appeal are not patent-eligible under 35 U.S.C. § 101.
Mayol Alice Analysis - Step 1
Regarding Alice Step 1, Appellants contend, inter alia, that
It is clear that the analysis of the examiner at pages 2-4 of
the Examiner's Answer fails to consider whether their character
of the claim limitations as a whole is directed to a patent
ineligible concept, improperly describes the claims at a high
level of abstraction untethered from the language of the claim in
determining the focus of the claimed invention, and ignores the
admonishment that an invention's ability to run on a general
purpose computer does not doom the claim (Memorandum on
Enfish and TL! Communications).
Reply Br. 4.
Appellants specifically contend the Examiner's decision is erroneous
in view of the following intervening cases: "Enfish, LLC v. Microsoft Corp.
and TL! Communications LLC v. A. V Automotive, LLC," "Bascom Global
Internet, Inc. v. AT&T Mobility LLC," and "McRO, Inc. v. Bandai Namco
Games America Inc." (Reply Br. 1-2.)
We note Appellants' independent claim 1 is directed to, inter alia:
generating and executing an e-commerce gift offer for a social network
contact as a function of integrating social network data, and executing a
series of steps, including searching personal data, determining the
geographic location of users, presenting a listing of offers to a user, and in
response to acceptance of an offer, selecting online retailers based on certain
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recited variables. Remaining independent claims 28, 32, and 36 recite
similar language of commensurate scope. 4
Our reviewing court guides that claimed fundamental economic and
conventional business practices are often abstract ideas, even if performed
on a computer. See, e.g., OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362---63 (Fed. Cir. 2015); Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) ("Each of the claims is directed
to the abstract idea of processing an application for financing a purchase.").
Thus, under a broad but reasonable interpretation, we conclude each
of Appellants' claims on appeal is directed to an economic or business
practice, i.e., to the result of "generating and executing an e-commerce gift
offers for a social network contact as a function of integrating social network
data." Claim 1. However, our reviewing court guides "[t]he abstract idea
exception prevents patenting a result where 'it matters not by what process
or machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. 62, 113 (1854)) (emphasis added).
This guidance is applicable here. Therefore, on this record, we are not
persuaded of error regarding the Examiner's legal conclusion that all claims
on appeal are directed to the abstract idea of a "fundamental economic
practice." (Final Act. 2).
4 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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Mayo/Alice Analysis - Step 2
Because the claims are directed to an abstract idea, we tum to the
second part of the Alice/Mayo analysis. We analyze the claims to determine
if there are additional limitations that individually, or as an ordered
combination, ensure the claims amount to "significantly more" than the
abstract idea. Alice, 134 S. Ct. at 2357.
Regarding Alice Step 2, Appellants urge: "The inventions defined by
amended independent claims 1, 28, 32 and 36 are not 'well-understood,'
'routine' or 'conventional' in the field of optimizing information technology
systems in response to environmental data inputs." (App. Br. 7).
Appellants specifically argue the limitations of claim 1:
"[ A ]dd a specific limitation other than what is well-understood,
routine and conventional in the field", or "add unconventional
steps that confine the claim to a particular useful application"
within the field of project management. This is indicated by the
examiner's express findings that the claimed subject matter is
allowable under 35 USC 103 over the prior art of record. Thus,
that the unique and specifically defined system and process
steps as described above, and their interdependent relationships
as used to revise task lengths, are not "well-understood,"
"routine" or "conventional" in the field of project management.
Accordingly, consideration (5) of the Step 2B analysis
establishes and supports a finding that the claimed inventions at
issue are statutory subject matter under 35 USC 101.
Additionally, pursuant to consideration (1) of the Step 2B
analysis "Significantly More" considerations listed above, the
claimed device aspects provide an improvement to the technical
field of retail e-commerce. The improvements provide
automated devices that transfer friends' names, addresses and
preferences directly from social network data domains on a
continual, periodic or as-needed basis to e-commerce gift
giving platforms, thereby providing for improved efficiencies in
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finding, purchasing and shipping an appropriate gift for a
particular person identified in an end-user's social network.
(App. Br. 8-9).
Appellants' arguments do not persuade us the Examiner erred,
because the withdrawal of a rejection over prior art does not provide a basis
for a "significantly more" consideration. We emphasize that our review for
patent-eligible subject matter under 35 U.S.C. § 101 is independent of any
review of another rejection. The Supreme Court emphasizes: "[t]he
'novelty' of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the§ 101 categories of possibly patentable subject matter." Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981). Our reviewing court further guides
that "[e]ligibility and novelty are separate inquiries." Two-Way Media Ltd.
v. Comcast Cable Commc 'ns., LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017);
see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016) (holding that "[e]ven assuming" that a particular claimed
feature was novel does not "avoid the problem of abstractness").
Moreover, Appellants essentially recite the claim limitations without
any persuasive explanation of how the limitations either individually, or as
an ordered combination, amount to an inventive concept that converts the
abstract idea (i.e., the fundamental economic practice of presenting offers
and making gift delivery arrangements) into patent-eligible subject matter.
Appellants further contend:
The claimed device aspects provide an improvement to the
technical field of retail ecommerce: by executing the
precedential series of "rules" or steps, they autonomously
transfer friends' names, addresses and preferences directly from
social network data domains, suggest gift purchases for friends
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as a function of identifying specific preferences from the
transferred social network data (inclusive of purchase history),
and drive the purchase of gifts via e-commerce gift giving
platforms as a function of the transferred geographic residence
data of the friends, and as a function of pricing and shipping
data from the respective e-commerce platforms, all without the
need for the user to spend time and effort on manually initiating
or directing the process, or to populate each e-commerce site
with purchasing information.
Reply Br. 5---6, emphasis added.
However, to the extent that Appellants' recited steps or acts ( or
functions) may be performed faster or more efficiently using a computer
(App. Br. 8), our reviewing court provides applicable guidance:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself. See
Bancorp Servs., L.L. C. v. Sun Life Assurance Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that
the required calculations could be performed more efficiently
via a computer does not materially alter the patent eligibility of
the claimed subject matter.").
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphases added).
Further, regarding the use of a generic processor, see Alice, 134 S. Ct.
at 2358, holding that "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention;"
Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016) ("An abstract idea on 'an Internet computer network'
or on a generic computer is still an abstract idea."); Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (quotation omitted);
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("We have repeatedly held that such invocations of computers and networks
that are not even arguably inventive are 'insufficient to pass the test of an
inventive concept in the application' of an abstract idea.") ( quotations
omitted).
Regarding Appellants' contention the Examiner's decision is
erroneous in view of the intervening case "McRo, Inc. v. Bandai Namco
Games America Inc." (Reply Br. 2---6), we conclude the claims here are
directed to the abstract idea of a fundamental economic practice (generating
gift offers), and are thus distinguished from the McRo claims that automate
lip synchronization using rules. In McRo, the court emphasized that the
claimed automated lip synchronization was patent-eligible because "the
automation goes beyond merely 'organizing [ existing] information into a
new form' or carrying out a fundamental economic practice." McRo, 837
F .3d at 1314 (internal citation omitted) ( emphasis added).
Appellants further contend the absence of preemption confirms an
inventive step. Reply Br. 6.
Our reviewing court provides applicable guidance: "[ w ]hile
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).
Therefore, we are not persuaded by Appellants' argument regarding the
absence of complete preemption.
In summation, the category of abstract ideas embraces "fundamental
economic practice[s] long prevalent in our system of commerce." Alice, 134
S. Ct. at 2356. Here, it is our view that merchants have long determined
offering products using various modeling algorithms that take into account
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customer data with respect to selecting offerings. This practice is a common
fundamental economic and business practice. Furthermore, "simply
appending conventional steps, specified at a high level of generality, to laws
of nature, natural phenomena, and abstract ideas cannot make those laws,
phenomena, and ideas patentable." Mayo, 566 U.S. at 82.
Nor do we find Appellants' claims similar to the claimed solution the
court held to be patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). Here, we conclude Appellants' claimed
solution is not rooted in computer technology, such that the invention on
appeal overcomes a problem specifically arising in the realm of computers,
including computer networks, as was the case with the type of claim the
court concluded was patent-eligible in DDR Holdings. (Id. at 1257).
We further conclude that independent claims 1, 28, 32, and 36 are not
related to the type of patent-eligible database claim considered by the court
in Enfish. We note all claims on appeal are silent regarding any mention of
a database. Therefore, none of Appellants' claims is directed to a "self-
referential table for a computer database" of the type considered in Enfish,
822 F.3d at 1336.
Appellants additionally cite to Bascom as an intervening case. Reply
Br. 2. However, the court guides in Bascom, 827 F.3d at 1348, that
implementing "[a]n abstract idea on 'an Internet computer network' or on a
generic computer is still an abstract idea."
We find nothing in the claims on appeal that focuses on a specific
means or method that improves the recited "processor" or "computer
system." (Independent claims 1, 28, 32, and 36). In particular, we find the
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claims on appeal are silent regarding specific limitations directed to an
improved computer system, processor, memory, database, or Internet.
Our reviewing court provides further guidance regarding the use of
such generic computers and/or computer/network components. Intellectual
Ventures I, 850 F.3d at 1341 ("Rather, the claims recite both a generic
computer element-a processor-and a series of generic computer
'components' that merely restate their individual functions .... That is to
say, they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two.").
Because none of Appellants' claims on appeal is directed to an
improvement in a processor, database, or other computer component, we
conclude that none of the claim limitations, viewed "both individually and as
an ordered combination," amounts to significantly more than the judicial
exception in order to sufficiently transform the nature of the claims into
patent-eligible subject matter. See Alice, 134 S. Ct. at 2355 (internal
quotations omitted) (quoting Mayo, 566 U.S. at 79).
Applying the aforementioned guidance from our reviewing courts to
the claims before us on appeal, we conclude, in our Mayo/Alice analysis, that
each of Appellants' claims 1, 2, and 26-39, considered as a whole, is
directed to (under step one), a patent-ineligible abstract idea, and under step
two, does not recite something "significantly more" to transform the nature
of the claim into a patent-eligible application.
Accordingly, for at least the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 1, 2, and 26-39, as
being directed to patent-ineligible subject matter in light of Alice and its
progeny.
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CONCLUSION
The Examiner did not err in rejecting claims 1, 2, and 26-39, under
35 U.S.C. § 101, as being directed to patent-ineligible subject matter.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, and 26-39
under 35 U.S.C. § 101.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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