Edelson, Ari

Patent Trials and Appeals Board

Apr 10, 2020

13449931 - (D) (P.T.A.B. Apr. 10, 2020)

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.
13/449,931 04/18/2012 Ari Edelson 120201.00004 2247
21832 7590 04/10/2020
MCCARTER & ENGLISH, LLP
CITYPLACE I
185 ASYLUM STREET
HARTFORD, CT 06103
EXAMINER
KARMIS, ALISSA D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
04/10/2020 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):
hartforddocketing@mccarter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARI EDELSON

Appeal 2018-004955
Application 13/449,931
Technology Center 3600

Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.

HOFFMANN, 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 and 3–5.2 We have jurisdiction under
35 U.S.C. § 6(b). The Board held an oral hearing with Appellant on
March 2, 2020.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “the
inventor, Ari Edelson.” Appeal Br. 1.
2 As discussed during the hearing, the Appeal Brief’s Claims Appendix
includes errors in the listing of the dependent claims. See Appeal Br.,
Claims App. The correct dependent claims as are set forth in Appellant’s
Response to Office Action filed May 24, 2016. See Response to Office
Action filed May 24, 2016, 3.
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We AFFIRM.
According to Appellant, the “invention relates . . . to providing
recommendations directed to cultural events, restaurants, books or other
subjects via an online site.” Spec. 1, ll. 10–11. Claim 1 is the sole
independent claim on appeal. Below, we reproduce claim 1, as
representative of the appealed claims:
1. A computer readable, non-transitory storage
medium having computer readable instructions for instructing
at least one computer system to provide recommendations for
cultural events of interest to a user, the instructions comprising
the steps of:
(a) receiving from the user a listing of individual
reviewers to create a user selected group of individual
reviewers;
(b) receiving a rating of one or more cultural events by
the user indicating whether the user liked or disliked the
cultural event;
(c) analyzing opinions of cultural events by one or more
of the individual reviewers in the user’s selected group of
individual reviewers and rating the opinions to indicate whether
the one or more reviewers liked or disliked the cultural event;
(d) for events that have been rated by both the user and
one or more of the individual reviewers, comparing the rating
of the one or more cultural events by the user against the rating
of the one or more cultural events by the individual reviewers in
the user’s selected group of individual reviewers to determine
whether the user and the individual reviewer like or dislike the
same events;
(e) calculating an affinity score based upon the
consistency and frequency with which the user and the
individual reviewers’ opinions of the one or more cultural
events agree or the consistency with which the user and the
individual reviewers’ opinions of the one or more cultural
events disagree;
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(f) using the affinity score and the opinions of the
individual reviewers to generate a recommendation as to the
likelihood that the user will like or dislike a cultural event that
the user has not yet rated;
wherein after a recommendation has been generated that
the user will like a cultural event, a determination is made as to
whether the liked events are currently and locally available to
the user, and if the event is currently and locally available a
notice of the event is transmitted to the user over a wireless
communication channel to a wireless device associated with the
user.
REJECTION
The Examiner rejects claims 1 and 3–5 under 35 U.S.C. § 101 as
reciting only patent-ineligible subject matter.
PRINCIPLES OF LAW CONCERNING 35 U.S.C. § 101
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, the
Supreme Court’s two-step framework, described in Mayo and Alice, guides
us. See id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” Id. at 219 (“On
their face, the claims before us are drawn to the concept of intermediated
settlement, i.e., the use of a third party to mitigate settlement risk.”); see also
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Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts that the courts determined to be abstract ideas—and, thus,
patent ineligible—include certain methods of organizing human activity,
such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
67 (1972)). Concepts that the courts determined to be patent eligible include
physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
(quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
In Diehr, although the claim at issue recited a mathematical formula,
the Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”).
Nonetheless, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
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that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
2019 Revised Patent Subject Matter Eligibility Guidance
Last year, the U.S. Patent and Trademark Office published revised
guidance on the application of § 101. See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
Under that 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 i) a fundamental economic
practice, or ii) managing personal behavior or relationships or
interactions between people, or mental processes); and
(2) additional elements that integrate the judicial
exception into a practical application (see MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)
(9th Ed., Rev. 08.2017, Jan. 2018)).
A practical application “appl[ies], rel[ies] on, or use[s] the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
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that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance at 54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim either:
(3) adds a specific limitation beyond the judicial
exception which is not “well-understood, routine, [or]
conventional” in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See generally Guidance.
ANALYSIS
Initially, we note that Appellant argues against the Examiner’s § 101
rejection of the claims as a group. See Appeal Br. 3–11. We choose
independent claim 1 for our analysis, and the remaining, dependent claims
stand or fall with claim 1. See 37 C.F.R. § 41.37 (c)(1)(iv). For the
following reasons, we sustain the Examiner’s rejection of the claims as
patent-ineligible.
We determine that in accordance with point (1) of the Guidance
referenced above, independent claim 1 recites at least one judicial exception,
including an abstract idea. More specifically, as described in further detail,
the abstract idea includes certain methods of organizing human activity, such
as managing personal behavior or relationships or interactions between
people.
With reference to claim 1, as the claim’s preamble states, the claim
“provide[s] recommendations for cultural events of interest to a [person, i.e.,
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a] user.” Appeal Br., Claims App. (Claim 1). As stated in claim 1’s body,
the claim recites: the user creating a group of reviewers (step (a)); receiving
information from the user as to whether the user liked or disliked cultural
events (step (b)); analyzing each of the reviewers’ opinions to determine
whether each of the reviewers liked or disliked cultural events (step (c));
comparing the user’s like or dislike for specific cultural events to the
reviewers’ like or dislike for the same specific cultural events (step (d));
calculating an “affinity score” indicating the extent to which the user’s and
each reviewer’s opinions agree or disagree for the cultural events (step (e));
generating a recommendation for the user as to whether the user will like or
dislike a cultural event that the user has not yet rated, based on the affinity
score (step (f)); and providing this recommendation to the user when the not-
yet-rated-by-the-user cultural event is currently and locally available to the
user. Id. Regarding the claimed “affinity score,” as explained in
Appellant’s Specification,
the affinity score is determined by determining the number of
times a user agrees with an individual reviewer in liking or
disliking a particular cultural event. The individual reviewers
are then ranked from most number of agreements to least
number of agreements and a percentile value is assigned to the
individual reviewer based upon their position in the ranking.
The percentile ranking is the affinity score.
Spec. 10, ll. 8–13. Thus, the above describes a method of organizing human
activity, by managing interactions between people (i.e., the user, and the
reviewers), which is an abstract idea. See MPEP § 2106.04(a)(2)(II)(A) and
the supporting case law cited therein.
In accordance with point (2) of the Guidance referenced above,
claim 1 does not recite any additional element that integrates the judicial
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exception into a practical application—i.e., something that “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Guidance
at 54; see also Alice, 573 U.S. at 223–24. Aside from the abstract idea
described above, the claim only generically recites the use of certain
arguably-physical hardware—a computer-readable medium, a wireless
communication channel, and a wireless device—and, thus, this hardware
does not meaningfully limit the claim. Further, in the Specification,
Appellant does not describe any of the claimed hardware in such a way as to
indicate that the hardware is anything other than generic. Thus, claim 1 does
not integrate the non-abstract portion of the claim into a practical
application, and does not affect an improvement in any technology or
technical field.
Therefore, for the above reasons, independent claim 1 is directed to
the above-discussed abstract idea, and does not integrate the judicial
exception into a practical application.
In accordance with points (3) and (4) of the Guidance referenced
above, claim 1 fails to recite a specific limitation beyond the judicial
exception which is not well understood, routine, and conventional in the
field, but instead simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. Taking the claim elements separately,
the claimed hardware, as well as the functions performed by the claimed
hardware, are purely conventional. Specifically, claim 1 uses known,
generic components to perform their known, basic functions. Although,
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arguably, the data processed and transmitted differs, the claim recites the
hardware only at a high level of generality. In other words, here the claim
recites only well-understood, routine, and conventional functions. See In re
Katz, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming.”).
For the following reasons, when considered as an ordered
combination, claim 1’s hardware does not add anything that is not already
present when we consider the steps separately. The hardware and its
technological configuration remains the same before, during, and after
transmitting the recommendation to the user. Thus, the claim amounts to
nothing significantly more than instructions to apply the abstract idea with
generic hardware, and does not improve the hardware. Accordingly, the
claim recitations are insufficient to transform the abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225–26.
We have considered all of Appellant’s arguments in the Briefs, but
Appellant does not persuade us of error. We now address certain arguments
below.
For the reasons set forth in detail above, we disagree with Appellant
that the claims are not directed to an abstract idea. See Appeal Br. 3–7; see
Reply Br. 2–5. We also disagree with Appellant, for the above reasons, that
the claims recite significantly more than the abstract idea. See Appeal
Br. 7–11; see Reply Br. 5–6.
Appellant’s argument with reference to BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), is not
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persuasive of error. Id. 7, 9–10. In BASCOM, the Court did not find claims
eligible, but rather found that the appellee did not provide sufficient
evidence to support a 12(b)(6) motion to dismiss in which facts are
presumed in the non-movant’s favor. Regardless, a key fact in BASCOM
was the presence of a structural change in “installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user. This design gives the filtering tool both
the benefits of a filter on a local computer and the benefits of a filter on the
ISP server.” BASCOM, 827 F.3d at 1350. Appellant’s claim 1 has no
analogous structural benefit.
CONCLUSION
We AFFIRM the Examiner’s § 101 rejection of clams 1 and 3–5.
In summary:
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.
§ 41.50(f).
AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5 101 Eligibility 1, 3–5