Ethan Henry. Fieldman et al.

Patent Trials and Appeals Board

Aug 8, 2019

12718253 - (R) (P.T.A.B. Aug. 8, 2019)

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.
12/718,253 03/05/2010 Ethan Henry Fieldman 11214.0001-00 4503
22852 7590 08/08/2019
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
BROWN, LUIS A
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
08/08/2019 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ETHAN HENRY FIELDMAN and RITESH CHAUBE
____________

Appeal 2017-000598
Application 12/718,2531
Technology Center 3600
____________

Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
The Appellants filed a Request for Rehearing, dated July 8, 2019, of
the Decision on Appeal, dated May 7, 2019 (“Decision,” herein), which
affirmed the rejections of claims 1–3 and 5–23 under both 35 U.S.C. § 101

1 According to the Appellants’ Appeal Brief (page 2), “Group Interactive
Solutions, Inc. is the real party in interest, as evidenced by the assignment
document recorded at the U.S. Patent and Trademark Office.” USPTO
assignment records indicate that the present application was assigned
subsequently to Study Edge LLC (Reel/Frame 042642/0704) and then to
Ethan Fieldman (Reel/Frame 042642/0724), both records having been
received and recorded on June 8, 2017.
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and 35 U.S.C. § 103(a). We have jurisdiction over the Request for
Rehearing under 35 U.S.C. § 6(b).
ANALYSIS
The Appellants’ Request for Rehearing addresses both the rejection
under 35 U.S.C. § 101 and the rejection under 35 U.S.C. § 103(a). For the
reasons provided below, the Appellants do not persuade us that any point
presented in the Request for Rehearing has been misapprehended or
overlooked. See 37 C.F.R. § 41.52(a)(1).
Subject-Matter Eligibility
The Appellants argue that the Board “misapprehended or overlooked
Appellant’s identification of additional claim elements integrating the
alleged ‘certain methods of organizing human activity’ into a practical
application” (Req. Reh’g 3–4), in the manner of Step 2A, Prong Two, of the
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50,
54–55 (Jan. 7, 2019) (2019 Revised Guidance).
Although created “[i]n accordance with judicial precedent” (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court’s opinion in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208
(2014). Step 1 of the 2019 Revised Guidance addresses whether the claimed
subject matter falls within any of the statutory categories of § 101. Id. at 53–
54. Step 2A, Prong One, concerns whether the claim at issue recites
ineligible subject matter and, if an abstract idea is recited, Step 2A, Prong
Two, addresses whether the recited abstract idea is integrated into a practical
application. Id. at 54–55. Unless such integration exists, the analysis
proceeds to Step 2B, in order to determine whether any additional element
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(or combination of elements) amounts to significantly more than the
identified abstract idea. Id. at 56.
The analysis of an “integration into a practical application,” under
Step 2A, Prong Two, involves “[i]dentifying . . . any additional elements
recited in the claim beyond the judicial exception(s)” and “evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application.” Id. at 54–55.
“[W]hether an additional element or combination of elements integrate[s]
the exception into a practical application should be evaluated on the claim as
a whole.” Id. at 55 n.24. The considerations articulated in MPEP
§ 2106.05(a)–(c) and (e)–(h) bear upon whether a claim element (or
combination of elements) integrates an abstract idea into a practical
application. Id. at 55.
In the Final Office Action, the Examiner characterizes the
independent claims as reciting a “method for storing member information,
determining relationships between members, and creating a data structure
representing the relationships,” which the Examiner regards as a
fundamental economic practice. Final Action 2, 4. The Examiner’s Answer
refines this description, stating that the claims recite “determining a reward
based on receiving member event data and determining who influenced a
purchase first” (which the Examiner regards as similar to the ineligible
concept of SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x
950 (Fed. Cir. 2014) (nonprecedential)), or “the idea of giving a reward to
the first influencer of a purchase is determined only by analysis of stored and
received event data and then reward determination based on the finding of
who was first” (which the Examiner regards as an “idea of itself”), or the
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concept of “rewarding of members based on their influence level on a
purchase” (which the Examiner likens to the idea of granting access to
media content, in exchange for viewing an advertisement, of Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)). Answer 25.
The Decision (page 7) refers, in particular, to the following limitations
of independent claim 1: “A method of tracking referrals among a plurality
of members of a social network”; “in response to a purchasing member
making a purchase, determining (1) that the first member and the second
member both contributed to the purchase and (2) that the first member event
occurred before the second member event”; and “awarding a first credit to
the first member that is higher than a second credit awarded to the second
member based on determining that the first member event occurred before
the second member event.” According to the Decision (page 7), these claim
features correspond to the Examiner’s refined characterizations of the
claimed subject matter (see Answer 25). Further, according to the Decision,
the Examiner’s characterizations are examples of “[c]ertain methods of
organizing human activity” that are described in the 2019 Revised Guidance,
84 Fed. Reg. at 52 — particularly “commercial or legal interactions
(including . . . advertising, marketing or sales activities or behaviors[, and]
business relations)” — a category of patent-ineligible abstract ideas.
Arguing that the Decision misapprehended or overlooked arguments
presented in the Appeal Brief, the Request for Rehearing refers to the
following limitations of independent claim 1: “determining, by one or more
processors, relationships, within the social network, between the plurality of
members using the member information in the data storage” and “creating,
by the one or more processors, a data structure representing the
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relationships, within the social network, between the plurality of members.”
Req. Reh’g 4 (citing Appeal Br. 11).2 The Appellants argue: “[T]hese
additional elements integrate the purported abstract ideas to [sic] practical
application of determining and rewarding influence among online, social
media relationships on a multilayer basis.” Id. (citing Reply Br. 8). Further,
according to the Appellants:
[T]he additional claim elements, in view of the specification,
are directed to providing computer functionality of tracking
referrals among a plurality of members in an online context,
namely a social network. Appeal Brief, pp. 16, 18; Reply

2 In the referenced portion of the Appeal Brief, in regard to the two
limitations of claim 1 addressed in the Request for Rehearing, the Appellants
argue:
[E]lements such as “determining, by one or more processors,
relationships, within the social network, between the plurality
of members using the member information in the data storage”
and “creating, by the one or more processors, a data structure
representing the relationships, within the social network,
between the plurality of members” logically cannot be drawn to
“known” concepts because social networks are a recent
innovation, in contrast to longstanding business concepts in
Alice and similar cases.
Appeal Br. 11. The key concern of the Alice analysis is not whether the
subject matter at issue is “a recent innovation” (id.), but, rather, whether the
subject matter encroaches upon a fundamental concept that is among “the
basic tools of scientific and technological work.” Alice, 573 U.S. at 216
(internal quotation marks and citations omitted). See also Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed Cir. 2016) (“But, a claim
for a new abstract idea is still an abstract idea. The search for a § 101
inventive concept is thus distinct from demonstrating § 102 novelty.”)
Although Alice refers to the abstract idea at issue in that case as “a
fundamental economic practice long prevalent in our system of commerce,”
573 U.S. at 219, the determination that it was a “fundamental” concept was
the critical feature — not that it was old.
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Brief, p. 7–9. As explained by the specification, the traditional
methods of referral methods use word of mouth, emails,
Internet cookies, etc. — all requiring the people know each
other. Specification, ¶¶ [0002]–[0004]. In contrast, the people
connected by an online social network may not have direct
relationships or may not know each other. See April 4, 2019
Oral Hearing Transcript, pp. 3–4. The additional elements of
“determining, by one or more processors, relationships, within
the social network, between the plurality of members using the
member information in the data,” “creating, by the one or more
processors, a data structure representing the relationships,
within the social network, between the plurality of members,”
enable an online multi-layer referral method to be implemented-
even among people who do not necessarily know each other.
See id., p. 5. Therefore, the claims, as a whole, integrate the
purported abstract idea to the practical application of tracking
multiple layers of referrals that occur in an online social
network that has no real-world offline equivalent.
Req. Reh’g 4–5.
The identified limitations exemplify the sort of technological
environment (here, an electronic social network) that does not confer patent-
eligibility; rather — in regard to claim 1, for example — it constitutes only a
tool or system for implementing the abstract idea. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016) (“[T]he first step
in the Alice inquiry in this case asks whether the focus of the claims is on the
specific asserted improvement in computer capabilities . . . or, instead, on a
process that qualifies as an ‘abstract idea’ for which computers are invoked
merely as a tool.”) Notably, an “additional element” that “does no more
than generally link the use of a judicial exception to a particular
technological environment or field of use” does not integrate the judicial
exception into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. See also Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (“[T]he
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prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or adding ‘insignificant postsolution activity.”’) (quoting
Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)); Intellectual Ventures I
LLC v. Erie Indem. Co., 850 F.3d 1315, 1329 (Fed. Cir. 2017) (“The use of
metafiles to build the claimed index is yet another natural consequence of
carrying out the abstract idea in a computing environment and is, therefore,
also insufficient to transform a patent-ineligible abstract idea into a patent-
eligible invention.”); Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1354 (2016) (“[L]imiting the claims to the particular technological
environment of power-grid monitoring is, without more, insufficient to
transform them into patent-eligible applications of the abstract idea at their
core.”) (citations omitted); In re TLI Commc’ns LLC Patent Litig., 823 F.3d
607, 614 (Fed. Cir. 2016) (“[T]he telephone unit simply provides the
environment in which the abstract idea of classifying and storing digital
images in an organized manner is carried out.”); Content Extraction &
Transmission LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348 (Fed. Cir.
2014) (“At most, CET’s claims attempt to limit the abstract idea of
recognizing and storing information from hard copy documents using a
scanner and a computer to a particular technological environment. Such a
limitation has been held insufficient to save a claim in this context.”)
(citations omitted); Ultramercial, 772 F.3d at 716 (“Narrowing the abstract
idea of using advertising as a currency to the Internet is an ‘attempt[ ] to
limit the use’ of the abstract idea ‘to a particular technological environment,’
which is insufficient to save a claim.”) (citations omitted). The Appellants
may intend to address, for example, some purportedly innovative feature of
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the claimed “creating . . . a data structure representing the relationships,
within the social network, between the plurality of members”; yet, the
Appellants do not identify any such feature in the claims.
In addition, although the Appellants’ contend that “the people
connected by an online social network may not have direct relationships or
may not know each other” (Req. Reh’g 4), the claims include no such
feature; consequently, this point does not bear upon the patent-eligibility
determination. Nor does the identified portion of the Specification support
the Appellants’ assertion that the “traditional methods of referral . . . all
requiring [sic] the people know each other.” Id. (citing Spec. ¶¶ 2–4).
According to the Specification, “traditional methods of marketing include
word of mouth marketing, e-mail marketing such as using spam emails, and
utilizing internet cookie technology to track an internet user accessing a
particular website.” Spec. ¶ 2. Contrary to the Appellants’ assertion, the use
of impersonal “spam emails” and “internet cookie technology to track an
internet user accessing a particular website” indicate that persons subjected
to the identified “traditional” electronic marketing manifestations do not
know each other. See id.
Finally, the Appellants argue that the claims impose no risk of
preemption or monopolization and that such “lack of monopolization is
strong evidence that the additional elements integrate the claims to a
practical application”:
[T]hese additional elements do not threaten to monopolize any
purported abstract idea because there are other ways of
“determining, by one or more processors, relationships, within
the social network, between the plurality of members using the
member information in the data storage” and “creating, by the
one or more processors, a data structure representing the
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relationships, within the social network, between the plurality
of members.”
Req. Reh’g 5 (citing Appeal Br. 12; Answer 28; 2019 Revised Guidance, 84
Fed. Reg. at 54).
To begin with, the preemption concern of the Alice inquiry relates to
the claimed abstract ideas — not the respective additional elements to which
the Appellants refer in the quotation above, asserting that there are “other
ways” to perform the steps of “determining . . . relationships” and “creating
. . . a data structure representing the relationships.” See Req. Reh’g 5.
Moreover, the proper test for determining whether a claim improperly
preempts a fundamental tool of scientific and technological work is to apply
the very framework that the Supreme Court delineated in Alice and Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012). “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
In view of the foregoing, the Appellants’ arguments in the Request for
Rehearing, concerning the rejection of independent claim 1 — as well as
independent claims 8, 15, and 21, and dependent claims 2, 3, 5–7, 9–14, 16–
20, 22, and 23, none of which is argued separately — under 35 U.S.C. § 101,
are not persuasive.
Obviousness
As to the obviousness rejections, the Appellants’ Request for
Rehearing focuses upon two limitations of claim 1 — first, “determining . . .
that the first member event occurred before the second member event” and,
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second, based upon such “determin[ation],” “awarding a first credit to the
first member that is higher than a second credit awarded to the second
member.” See Req. Reh’g 7–8.3
According to the Appellants, the cited references (alone or in
combination) fail to disclose the first limitation and “[i]t follows,” as a
necessary consequence, that the references “also fail[ ] to disclose or
suggest” the second limitation. Id.
With regard to the first limitation, the Appellants contend:
“Wordpress’ ‘Tier Affiliate Model Example’ — whether taken alone or in
any combination with Flake, Butcher, and/or Martinez — does not disclose
determining a member event between Person A and Person C (i.e., a
purchasing member) occurring before a second member event between
Person B and Person C.” Req. Reh’g 7–8.
To the contrary, there is adequate support for the Examiner’s finding
that WordPress teaches “determining that a first member event occurred
before a second member event.” Final Action 9. The Examiner regards
WordPress’ multi-tier award system as basing different commission amounts
upon different “levels of influence on the purchase, including order and type
of chronological influence.” Id. at 10. Indeed, WordPress provides an
example involving an earlier member event (“Person A sends Person B to

3 The first of these limitations (“determining . . . that the first member event
occurred before the second member event”), or a substantially similar
limitation, appears in each of the independent claims 1, 8, 15, and 21.
However, the second limitation that the Appellants discuss (“awarding a first
credit to the first member that is higher than a second credit awarded to the
second member”) appears only independent claims 1 and 8, as well as claim
16, which depends from claim 15.
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the site”) and a later member event that leads to a purchase (“Person B refers
Person C who buys a product”). WordPress 1.
This determination alone — i.e., that WordPress adequately teaches
“determining . . . that the first member event occurred before the second
member event” — is sufficient to sustain the rejections of independent
claims 15 and 21 (along with dependent claim 17–20, 22, and 23) under
35 U.S.C. § 103(a). These claims do not include the second limitation
addressed in the Request for Rehearing and the Appellants advance no other
corresponding basis for error.
With regard to the second limitation at issue in the Appellants’
argument, the Examiner’s analysis — in view of recognized shortcomings of
the cited references — combines and modifies teachings of the WordPress
and Flake references, in order to determine the obviousness of the recited
“awarding a first credit to the first member that is higher than a second credit
awarded to the second member.” See Final Action 9–11.
In WordPress, as the Examiner indicates, Person A (on account of the
earlier event) and Person B (on account of the later event) “would both
receive varying commissions for the purchase based upon their influence
level of the purchaser.” Final Action 9. See also Answer 32–33. However,
as the Examiner acknowledges, in this example from WordPress, greater
influence (and, consequently, the greater commission) is attributed to the
event closer to the time of the purchase, such that “the direct influencer
Person B receiv[es] a higher credit than the indirect influencer.” Final
Action 9. As WordPress states: “In the tier affiliate model Person B still
receives the commission but Person A also receives a small commission
since Person A originally referred person B to this site.” WordPress 1. Yet,
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WordPress is not inconsistent with assigning credit otherwise — such as
assigning the greater commission to the earlier action (in the manner of
claim 1 of the Appeal). Indeed, WordPress discloses a “settings menu”
through which the “2nd Tier Commission Level” (i.e., corresponding to the
earlier member event in the example) is set to the desired value. Id.
In addition to WordPress’ teaching the use of chronological ordering
of events for assessing influences on a purchase, the Examiner relies upon
Flake, for “teach[ing] reward calculations based on weighting/degree and
other influence calculations.” Final Action 10. See also id. at 6–7 (citing
Flake ¶¶ 87, 93–105). In view of these findings, the Examiner concludes
that it would have been obvious to combine/modify WordPress and Flake, in
order to attain the claimed subject matter, including the recited “awarding a
first credit to the first member that is higher than a second credit awarded to
the second member,” because “doing so would allow for a time-based
influence measure relative to a relevant product to be given.” Final Action
10–11.
The Appellants do not address the Examiner’s findings, in regard to
the Flake reference. Nor do the Appellants address the Examiner’s
determinations based upon the combination/modification of WordPress and
Flake. Still further, the Appellants do not address the Examiner’s reasoning
for combining and modifying WordPress and Flake. Accordingly, the
Appellants do not persuade us of error in regard to the “awarding a first
credit to the first member that is higher than a second credit awarded to the
second member” limitation of independent claim 1 (together with its
dependent claims 2, 3, and 5–7), or with regard to similar limitations of
independent claim 8 (together with its dependent claims 9–14), and
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dependent claim 16. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”) (citing Ex parte Frye,
Appeal No. 2009-006013, at 9–10, 2010 WL 889747 (BPAI Feb. 26, 2010)
(precedential)).
In view of the foregoing, the Appellants’ arguments concerning the
rejection of claims 1–3 and 5–23 under 35 U.S.C. § 103(a), in the Request
for Rehearing, are not persuasive.
DECISION
The Appellants’ Request for Rehearing has been granted to the extent
that the Decision has been reconsidered in light of the Request for
Rehearing, but is denied in all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED