Bo Hu et al.Download PDFPatent Trials and Appeals BoardOct 17, 201913167657 - (D) (P.T.A.B. Oct. 17, 2019) 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. 13/167,657 06/23/2011 Bo Hu 26295-18353 8526 87851 7590 10/17/2019 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER CHOI, PETER H ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 10/17/2019 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 BO HU, KELLY WINTERS, DAVID FERGUSON, and EMILY CLARK WHITE ____________ Appeal 2017-009510 Application 13/167,657 Technology Center 3600 ____________ Before HUNG H. BUI, BETH Z. SHAW, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-009510 Application 13/167,657 2 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1–10, 13–15, and 18–26, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The application is directed to “[s]ocial networking systems [that] allow users to initiate a deal associated with a provider.” (Abstract.) Claim 1, reproduced below, exemplifies the subject matter on appeal: 1. A computer implemented method comprising: receiving a request to initiate a deal from a user of the social net- working system, the request comprising information describ- ing an action that the user would like to perform and a deal proposal for the action, wherein the action is performed by a set of participants; receiving, by the computer, information describing deals of a plurality of providers; determining a likelihood of acceptance of the deal proposal by each provider; selecting, by the computer, a provider from the plurality of pro- viders based on a matching of the deal proposal against infor- mation describing deals of the provider and the likelihood of acceptance of the deal proposal by the provider; and finalizing a deal from the selected provider for the user and the one or more connections based on the deal proposal, the fi- nalizing comprising: 1 Appellants identify Facebook, Inc. as the real party in interest. (See App. Br. 2.) Appeal 2017-009510 Application 13/167,657 3 suggesting, by the computer, one or more connections of the user for participating in the deal based a frequency of in- teraction of each of the one or more connections of the user with the user. THE REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Altman et al. US 2008/0133336 A1 June 5, 2008 Work et al. US 8,010,460 B2 Aug. 30, 2011 De Facendis US 2012/0029992 A1 Feb. 2, 2012 Dessert et al. US 2012/0072271 A1 Mar. 22, 2012 Plut US 2012/0209722 A1 Aug. 16, 2012 THE REJECTIONS 1. Claims 1–10, 13–15, and 18–26 stand rejected under 35 U.S.C. § 101 as “not directed to patent eligible subject matter.” (See Final Act. 2– 3.) 2. Claims 1–5, 7, 14, 15, and 18–26 stand rejected under 35 U.S.C. § 103 as unpatentable over Dessert, De Facendis, and Plut. (See Final Act. 4–16.) 3. Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable over Dessert, De Facendis, Plut, and Altman. (See Final Act. 16–18.) 4. Claims 8–10 and 13 stand rejected under 35 U.S.C. § 103 as unpatentable over Dessert, De Facendis, Plut, and Work. (See Final Act. 18–25.) Appeal 2017-009510 Application 13/167,657 4 ANALYSIS Patent Eligibility By statue, a patentable invention must be a “new and useful process, machine, manufacture, or composition of matter, or [a] new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has identified implicit exceptions to patentability––laws of nature, natural phenomena, and abstract ideas, and, in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014), and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), provided a framework for identifying ineligible claims. The “Mayo/Alice” evaluation has two steps: (1) determining if a claim is directed to an ineligible concept, and, if so, (2) determining if one or more claim elements is sufficient make the claim “significantly more” than the ineligible concept itself. See Alice, 573 U.S. at 217–18. The most recent guidance for applying Mayo/Alice is USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50. The Guidance instructs us first to look at whether a claim recites a judicial exception, the broad categories of which are defined by the Guidance as mathematical concepts, certain methods of organizing human activity, and mental processes.2 See 84 Fed. Reg. at 54 (Step 2A, Prong One). 2 “Mathematical concepts” includes “mathematical relationships, mathematical formulas or equations, [and] mathematical calculations”; “certain methods of organizing human activity” includes “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships Appeal 2017-009510 Application 13/167,657 5 If we find a judicial exception, we determine whether it is “integrated into a practical application” in the claim. See 84 Fed. Reg. at 54–55 (Step 2A, Prong Two); see also MPEP §§ 2106.05(a)–(c), (e)–(h) (non- exhaustively listing ways in which a practical application may be found). “Practical application” means that the claim includes “a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg. at 54. For example, a practical application may exist in an improvement in the functioning of a computer or other technology, a particular machine or manufacture integral to the claim, or transformation or reduction of an article to a different state or thing. See id. at 55. However, merely using a computer to perform an abstract idea, adding insignificant extra-solution activity, or only generally linking to a particular technological environment or field are not sufficient for a practical application. See id. If a claim recites a judicial exception not integrated into a practical application, the claim is directed to an abstract idea. In that case, we further look at whether the claim adds a specific limitation, combination of limitations, or activity beyond that which was “well-understood, routine, conventional.’” See 84 Fed. Reg. at 56 (Step 2B); see also MPEP § 2106.05(d). In the absence of such an addition, a claim that has reached this stage of the analysis is ineligible. or interactions between people (including social activities, teaching, and following rules or instructions)”; “mental processes” includes “concepts performed in the human mind (including an observation, evaluation, judgment, opinion.” 84 Fed. Reg. at 52. Appeal 2017-009510 Application 13/167,657 6 Abstract Idea Claim 1 recites a computer implemented method that includes (1) “receiving a request to initiate a deal”; (2) “receiving . . . information describing deals of a plurality of providers”; (3) “determining a likelihood of acceptance of the deal proposal by each provider”; (4) “selecting . . . a provider . . . based on a matching of the deal proposal against information describing deals of the provider and the likelihood of acceptance”; and (5) “finalizing a deal . . . based on the deal proposal,” including by “suggesting . . . one or more connections of the user for participating in the deal based a frequency of interaction of each . . . with the user.”3 The Examiner found that, because the claims recite “receiving a request, receiving information, matching a deal against information, selecting a provider, finalizing a deal, [and] suggesting connections of the user and providing a deal,” they are “directed toward a fundamental economic practice and mathematical relationships or formulations” and, therefore, “are drawn to a patent ineligible abstract idea.” (Final Act. 2.) The Examiner further found that the claims are also directed to “fundamental economic practices,” including “targeted advertising.” (Id. at 3.) The Examiner also found that “[t]he claims do not include limitations that are ‘significantly more’ than the abstract idea because [they] do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond 3 Following the lead of the Examiner and Appellant, we address subject matter eligibility in the context of claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2017-009510 Application 13/167,657 7 generally linking the use of an abstract idea to a particular technological environment.” (Id.) Appellants argue that “[t]he claimed invention is not merely about ‘targeted advertisement,’ as maintained in the Office Action” because “[i]nstead, the claimed invention provides a specific approach for allowing users to initiate deals in a social networking system.” (App. Br. 7.) “More specifically,” Appellants argue, the claimed invention “recites receiving a request to initiate a deal” from a social network user, “matches the deal proposal against information describing deals of a plurality of providers and determines a likelihood of acceptance,” “selects a provider based on the likelihood of acceptance of the deal proposal by the provider,” and “finalizes a deal from the selected provider based on the deal proposal and provides the deal to the user.” (Id.) Consistent with Appellants’ description of their own claims, we find that the limitations we summarize above describe a particular method for making deals that is fairly characterized as at least one of “advertising, marketing or sales activities or behaviors,” all of which fall into the “certain method of organizing human activity” category of abstract ideas. See 84 Fed. Reg. at 52. Because we agree with the Examiner that the claim recites an abstract idea, we proceed to Prong Two of Step 2A to determine if the idea is integrated into a practical application, in which case the claim as a whole would not be “directed to” merely an abstract idea. Practical Application As noted, the “practical application” inquiry looks at whether a claim includes “a meaningful limit on the judicial exception,” to ensure that “the Appeal 2017-009510 Application 13/167,657 8 claim is more than a drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg. at 54. In this case, we have “computer implemented” deal matching. The claim thus recites a method that “merely uses a computer as a tool to perform an abstract idea” (id. at 55), and, therefore, lacks integration into a practical application. We do not find “an improvement in the functioning of a computer or other technology,” because the generic computer is used for its ordinary purpose. We do not find “a particular machine or manufacture integral to the claim,” because a general purpose computer is not enough. And we do not find “transformation or reduction of an article to a different state or thing,” because only intangible data is changed or manipulated. Because we conclude that claim 1 lacks additional elements that would allow us to find a practical application, we agree with the Examiner that the claim is directed to an abstract idea and move to Step 2B. Inventive Concept “It is possible that a claim that does not ‘integrate’ a recited judicial exception is nonetheless patent eligible” as, “[f]or example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.” 84 Fed. Reg. at 56. We need not reconsider the issues addressed in Step 2A, but do weigh whether, for example, the claim “[a]dds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field.” Id. at 56. Claim 1 is directed to a computer-implemented technique for deal matching. Appellants do not identify, and we otherwise fail to find, any additional elements that evidence an inventive concept beyond the abstract Appeal 2017-009510 Application 13/167,657 9 idea that might impart eligibility. Cf. Parker v. Flook, 437 U.S. 584, 585–86 (1978) (holding claims ineligible because “[t]he only difference between the conventional methods . . . and that described in respondent’s application rests in [the abstract idea]”). We do not agree with Appellants that “[t]he claims of this application are analogous to the claims at issue in” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). (App. Br. 9.) Appellants describe the claims as “a novel and nonobvious mechanism to finalize a deal from the selected provider for the user and the connections based on the deal proposal by suggesting the connections of the user for participating in the deal based on a frequency of interaction of each of the connections of the user with the user.” (Id. at 12.) That, however, would be a solution to a business problem, i.e., how to make more or better deals, not a technical problem, as in DDR. Eligibility Conclusion The claims recite an abstract idea, have not been shown to be integrated into a practical application, and do not include additional recitations that make them significantly more than the underlying abstract idea. The Examiner’s rejection of claims 1–10, 13–15, and 18–26 under 35 U.S.C. § 101 is, therefore, sustained. Obviousness The Examiner finds that Dessert teaches several of the claim limitations, but “does not specifically disclose determining a matching deal for the user that matches the information and determining a likelihood of the provider or providing the matching deal to the user and to the one or more connections of the user.” (Final Act. 4–5.) The Examiner then turns to De Appeal 2017-009510 Application 13/167,657 10 Facendis, finding that it “discloses determining a likelihood of acceptance from the providers” in paragraphs 62 and 84–86. (Id. at 5.) In the Answer, the Examiner additionally cites paragraph 70 of De Facendis. (See Ans. 7.) Appellants, grouping the independent claims together, argue that “[n]o cited reference discloses or suggests . . . ‘selecting. . . a provider from the plurality of providers based on a matching of the deal proposal against information describing deals of the provider and the likelihood of acceptance of the deal proposal by the provider.’” (App. Br. 13.) We agree with Appellants. Paragraph 62 of De Facendis states that social media connections can be used to attract buyers to buyer pools. Paragraph 70 describes, very generally, how negotiations for the purchase goods can be done on-line. And paragraphs 84–86 describe how, if a buyer is interested in a purchase, the system can be used to create a pool of buyers. But the Examiner does not explain, and we otherwise fail to see, how these portions of De Facendis teach or suggest selecting a provider from a plurality of providers based on a matching of the deal proposal against information describing deals of the provider and the likelihood of acceptance of the deal proposal by the provider. In particular, the cited paragraphs of De Facendis include nothing that might teach or suggest selecting a deal based on the likelihood that the provider would accept the deal, as claimed. Because we agree with Appellants, we do not sustain the Section 103 rejection of independent claims 1 and 18, or, for the same reason, the same rejection of dependent claims 2–10, 13–15, 19, and 20–26. Appeal 2017-009510 Application 13/167,657 11 DECISION The rejection of claims 1–10, 13–15, and 18–26 under 35 U.S.C. § 101 is affirmed. The rejections of claims 1–10, 13–15, and 18–26 under 35 U.S.C. § 103 are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED4 4 Because we sustain at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision rejecting claims 1–10, 13–15, and 18–26 is affirmed. See 37 C.F.R. § 41.50(a)(1). Copy with citationCopy as parenthetical citation