Ex Parte Fieldman et al

Patent Trials and Appeals Board

May 3, 2019

12718253 - (D) (P.T.A.B. May. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/718,253 03/05/2010 Ethan Henry Fieldman
22852 7590 05/07/2019
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK A VENUE, NW
WASHINGTON, DC 20001-4413
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.
11214.0001-00 4503
EXAMINER
BROWN, LUIS A
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
05/07/2019 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
Appeal2017-000598
Application 12/718,25 3 1
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3 and 5-23. An oral hearing in this Appeal was
held on April 4, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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, 201 7.
Appeal2017-000598
Application 12/718,253
ILLUSTRATIVE CLAIM
1. A method of tracking referrals among a plurality of
members of a social network, comprising:
storing, in a data storage, member information for
the plurality of members;
determining, by one or more processors,
relationships, within the social network, between the
plurality of members using the member information in
the data storage;
creating, by the one or more processors, a data
structure representing the relationships, within the social
network, between the plurality of members;
receiving a first member event between a first
member of the plurality of members and a purchasing
member of the plurality of members;
receiving a second member event between a
second member of the plurality of members and the
purchasing member that occurred after the first member
event;
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 based on the first member event and the
second member event and a comparison of a location
within the data structure corresponding to the purchasing
member to locations within the data structure
corresponding to the first member and the second
member; 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.
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Appeal2017-000598
Application 12/718,253
CITED REFERENCES
The Examiner relies upon the following references:
Flake et al. US 2008/0270551 Al
(hereinafter "Flake")
Martinez et al. US 2009/0006192 Al
(hereinafter "Martinez")
Butcher et al. US 2010/0268574 Al
(hereinafter "Butcher")
Oct. 30, 2008
Jan. 1, 2009
Oct. 21, 2010
How to Use Two-Tier Affiliate Model, WordPress Affiliate Platform
(http://www. tipsandtricks-hq .com/wordpress-affiliate/how-to-use-
two-tier-affiliate-model-112 ), 2009 (hereinafter "WordPress")
REJECTIONS
I. Claims 1-3 and 5-23 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 1-3 and 5-20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Flake, Butcher, and WordPress. 2
III. Claims 21-23 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Flake, Butcher, W ordPress, and Martinez. 3
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
2 We regard as inadvertent the inclusion of claim 4 and the omission of
claim 17, in the Examiner's identification of the rejected claims. See Final
Action 5, 17-18; Answer 30.
3 We regard as inadvertent the omission of claim 23, in the Examiner's
identification of the rejected claims. See Final Action 18, and 25-18.
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Application 12/718,253
ANALYSIS
Subject-Matter Eligibility
Under 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. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply'" these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 217 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under these
judicial exclusions, involves a two-step framework for "distinguish[ing]
between patents that claim the buildin[g] block[ s] of human ingenuity and
those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention." Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called "abstract
idea"); the second step determines whether there are any "additional
elements" recited in the claim that ( either individually or as an "ordered
combination") amount to "significantly more" than the identified judicially
excepted subject matter itself. Id. at 217-18.
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The USPTO recently published revised guidance on the application of
§ 101, in accordance withjudicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (2019
Revised Guidance). Under the 2019 Revised Guidance, a claim is "directed
to" an abstract idea, only if the claim recites any of: ( 1) mathematical
concepts; (2) certain methods of organizing human activity; and (3) mental
processes - without integrating such abstract idea into a "practical
application," i.e., without "apply[ing], rely[ing] on, or us[ing] 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." Id. at 52-55. 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. A claim that is "directed to" an abstract idea
constitutes ineligible subject matter, unless the claim recites an additional
element ( or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
As to the first step of the Alice framework, 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,
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Application 12/718,253
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 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.
Turning to the second step of the Alice framework, the Examiner
determines that the additional claim elements do not amount to significantly
more than the various concepts identified as judicially excepted subject
matter. Final Action 2--4; Answer 26-27.
Disputing the rejection, the Appellants argue independent claims 1, 8,
15, and 21 as a group. See Appeal Br. 9-19. Claim 1 is selected for analysis
herein. See 37 C.F.R. § 4I.37(c)(l)(iv). No dependent claim is argued
separately, such that all claims in the Appeal stand or fall with claim 1.
Although created "[i]n accordance with judicial precedent," 84 Fed.
Reg. at 52, the 2019 Revised Guidance enumerates the analytical steps
differently than the Supreme Court's Alice opinion. 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 2, 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
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Application 12/718,253
determine whether any additional element ( or combination of elements)
amounts to significantly more than the identified abstract idea. Id. at 56.
The Appellants' arguments relate to Step 2A (both Prongs One and
Two) and Step 2B of the 2019 Revised Guidance.
The Appellants' assertion that the "claims on their face are
distinguished from the abstract concepts relied upon by the Examiner" in the
Answer (Reply Br. 7) relates to Step 2A, Prong One, of the 2019 Revised
Guidance. Claim 1, in part, recites: "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." These claim features
correspond to the Examiner's refined characterizations of the claimed
subject matter as reciting: "determining a reward based on receiving
member event data and determining who influenced a purchase first"; "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"; and "rewarding of
members based on their influence level on a purchase." Answer 25. These
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)" -
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Application 12/718,253
which constitute a category of patent-ineligible abstract ideas. Accordingly,
the Examiner's analysis sufficiently demonstrates that the claimed subject
matter recites an abstract idea, under Step 2A, Prong One.
We also are not persuaded of Examiner error, with regard to Step 2A,
Prong Two. The Appellants contend that "the claimed features similarly
recite an improvement to computer resource utilization itself providing the
functionality of tracking referrals among a plurality of members of a social
network, thus, making it possible to track multiple levels of referrals across
social media and the Internet." Reply Br. 9. See also id. at 13. This
amounts to an argument that the claimed subject matter, in the parlance of
the 2019 Revised Guidance, 84 Fed. Reg. at 54--55, contains additional
elements that integrate the identified abstract idea into a practical
application, under Step 2A, Prong Two. Yet, the functionality that the
Appellants rely upon encompasses claim elements identified, above - i.e.,
claim 1 's recitation: "in response to a purchasing member making a
purchase, determining ... that the first member and the second member both
contributed to the purchase." Accordingly, the Appellants do not show any
additional elements- i.e., elements "beyond the judicial exception(s)" -
that might integrate the identified abstract idea into a practical application.
See id.
Nor does the Appellants' assertion that the subject matter of claim 1 is
"inextricably tied to computer technology" (Appeal Br. 14--15) persuade us
of error in the rejection, on account of effecting a practical application of the
identified abstract idea. Again, the Appellants rely upon claim elements
identified, above, as describing judicially excepted subject matter -
specifically, the recitation of "in response to a purchasing member making a
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Application 12/718,253
purchase, determining ... that the first member and the second member both
contributed to the purchase" - rather than any additional elements.
Accordingly, in view of the foregoing analysis, we are not persuaded
that the Examiner erred in determining that the claimed subject matter is
directed to an abstract idea, per the rubric of Step 2A, Prong Two, of the
2019 Revised Guidance.
Further, the Appellants do not indicate any error, with respect to the
inquiry of Step 2B of the 2019 Revised Guidance, as to whether any
additional element ( or combination of additional elements) might amount to
significantly more than the identified abstract idea, by virtue of being
unconventional or non-generic. Rather, the Appellants rely upon claim
elements that are part of the identified abstract idea, as addressed above -
specifically: "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." See Appeal Br. 15-19. "It has been clear since Alice that a
claimed invention's use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention 'significantly
more' than that ineligible concept." BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018). Additionally, although the
Appellants contend that the "claims are patent-eligible at least because they
include a particular arrangement that provides an advance over prior art
systems, that has not been shown to be merely conventional or generic"
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Application 12/718,253
(Reply Br. 14), the Appellants identify no such "particular arrangement" of
additional elements.
In addition, the Appellants argue that the claims are patent-eligible,
because they do not threaten to monopolize or preempt an abstract idea. See
Appeal Br. 11-13; Reply Br. 9-11. Yet,"[ 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).
Accordingly, in view of the foregoing analysis, the Appellants do not
persuade us of error in the rejection of independent claim 1, such that we
sustain the rejection of claims 1-3 and 5-23 under 35 U.S.C. § 101.
Obviousness
Independent claims 1, 8, 15, and 21 are argued as a group. Appeal
Br. 23. Claim 1 is selected for analysis herein. See 37 C.F.R.
§ 4I.37(c)(l)(iv). No dependent claim is argued separately, such that all
claims in the Appeal stand or fall with claim 1.
The Appellants contend that "the cited references, taken alone or in
combination do not teach or suggest" the following recitations of claim 1:
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 based on the
first member event and the second member event and a
comparison of a location within the data structure
corresponding to the purchasing member to locations within the
data structure corresponding to the first member and the second
member; and
awarding a first credit to the first member that is higher
than a second credit awarded to the second member based on
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Application 12/718,253
determining that the first member event occurred before the
second member event.
See Appeal Br. 23. More particularly, the Appellants contend:
Id.
Although Wordpress discloses an affiliate program
structure that rewards affiliates for making direct sales as well
as encouraging other affiliates to join the program, Wordpress,
p. 1, it does not disclose or suggest the above recited elements
of the independent claims. Moreover, the other cited references
fail to compensate for the deficiencies of Wordpress, and the
Final Office Action does not contend otherwise.
However, the rejection does not rely upon WordPress, alone, to teach
or suggest the identified limitations; instead, the rejection relies upon the
combination of various teachings of Flake, Butcher, and WordPress in order
to teach or suggest distinct features within the identified limitations. See
Final Action 5-11. See also Answer 32-33. "[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references." In re Keller, 642 F.2d
413,426 (CCPA 1981) (citation omitted). Indeed, "the [E]xaminerpoints
out that Wordpress was not used to reject the entire limitation pointed out,
but only portions, and the examiner is not even sure what limitations the
appellant is arguing that Wordpress does not teach." Answer 32.
Accordingly, the Appellants' arguments are not persuasive of error in
the rejection of claim 1, such that we sustain the rejection of claims 1-3 and
5-23 under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-3 and 5-23
under 35 U.S.C. § 101.
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Application 12/718,253
We AFFIRM the Examiner's decision rejecting claims 1-3 and 5-23
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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