Ex Parte Kelly et al

Patent Trial and Appeal Board

Dec 19, 2016

13487380 (P.T.A.B. Dec. 19, 2016)

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.
13/487,380 06/04/2012 Sean Kelly P14584US1
(119-0299US1)
1003
61947 7590 12/21/2016
Ar>r>le - Rlank Rome.
EXAMINER
c/o Blank Rome LLP
717 Texas Avenue, Suite 1400
WHITAKER, ANDREW B
HOUSTON, TX 77002 ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
mbrininger @ blankrome. com
hou stonpatents @ blankrome .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN KELLY, THOMAS ALSINA, and EDWARD VOAS
Appeal 2015-001219
Application 13/487,3 801
Technology Center 3600
Before MICHAEL W. KIM, PHILIP J. HOFFMANN, 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—29. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Apple Inc. Appeal
Br. 3.
Appeal 2015-001219
Application 13/487,380
ILLUSTRATIVE CLAIM
1. A social network-based product tracking method,
comprising:
querying, by a server-side media distribution application,
a server-side social network application to determine a number
of occurrences of a media product identifier in social network
messages, wherein the media product identifier is included in
social network messages generated through the server-side
media distribution application;
generating, by the server-side media distribution
application, one or more statistics related to a media product
based at least in part on the number of occurrences of the
identifier in the social network messages; and
creating, by the server-side media distribution
application, a rating of the media product based at least in part
on the one or more statistics.
REJECTIONS
I. Claims 1—29 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.2
II. Claims 1—3, 5, 6, 9, 12—14, and 17—21 are rejected under
35 U.S.C. § 102(e) as anticipated by Futty et al. (US 2012/0116905 Al, pub.
May 10, 2012) (“Futty”).
III. Claims 4, 10, 11, 15, 22, and 25—29 are rejected under
35 U.S.C. § 103(a) as unpatentable over Futty and Eberstadt et al.
(US 2012/0233020 Al, pub. Sept. 13, 2012) (“Eberstadt”).
IV. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Futty and Donsbach et al. (US 7,668,821 Bl, iss. Feb. 23,
2010) (“Donsbach”).
2 The rejection under 35 U.S.C. § 101 was set forth in the Answer as a new
ground of rejection. Answer 15.
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Application 13/487,380
V. Claims 16, 23, and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Futty, Eberstadt, and Robinson et al. (US 8,290,823 Bl,
iss. Oct. 16, 2012) (“Robinson”).
FINDINGS OF FACT
We rely upon and adopt the Examiner’s findings stated in the Final
Office Action at pages 2—17 (mailed November 22, 2013), the Advisory
Action (dated February 25, 2014), and the Answer at pages 2—17, except as
stated otherwise in the Analysis below. Additional findings of fact may
appear in the Analysis below.
ANALYSIS
Subject Matter Eligibility of Claims 1—29
The Appellants contend (Reply Br. 3—7) that the Examiner erred in
setting forth a new ground of rejection that claims 1—29 do not claim subject
matter that is eligible for patenting, under 35 U.S.C. § 101 (see Answer 15).
The Examiner and the Appellants employ the two-step methodology
identified in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355
(2014), whereby it is determined whether the claims are directed to a patent-
ineligible concepts (e.g., laws of nature, natural phenomena, and abstract
ideas) and, if so, it is determined whether the claims recite features sufficient
to ensure that the patent in practice amounts to significantly more than a
patent upon the ineligible concept itself.
According to the Examiner, the claims are directed to the abstract idea
of “social network-based product tracking,” which the Examiner regards as
“a method of organizing human activities,” and the claims do not include
limitations reciting significantly more than the abstract idea itself. Answer
15.
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The Appellants contend that the Examiner did not establish a prima
facie case of patent ineligibility. Reply 4. The Appellants also argue that
the claims do not recite “a method of organizing human activities,” and are
not directed to an abstract idea. Id. at 5—6. In addition, the Appellants argue
that even if the claims could be described as reciting an abstract idea, the
“claimed features are novel computing features,. . . [which] cannot be
accomplished as some abstract idea outside of a computing environment”;
hence, the claims do not merely recite generic computer structure/fimctions
for carrying out such an abstract idea. Id. at 6. Further, the Appellants
contend that the claimed features accomplish an improvement to the
computer itself. Id. at 7.
In order to satisfy the procedural burden of establishing a prima facie
case, a rejection must set forth the statutory basis of the rejection and
reasons therefor in a sufficiently articulate and informative manner as to
meet the notice requirement of § 132. See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011). The Examiner has done so, in regard to the rejection under
35U.S.C. § 101.
The Appellants persuasively argue that the Examiner erred in
determining that the claims do not recite patent-eligible subject matter.
Because the claims require implementation with a computer network of
some sort, they are not fairly characterized as a method of organizing human
activities. See Reply Br. 5—6. Further, the proposed abstract idea (“social
network-based product tracking”) fails to encompass what the claims are
accomplishing — notwithstanding that the phrase appears in the preamble to
claim 1. In particular, independent claims 1 and 17 involve “social network
messages generated through the server-side media distribution application”
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and, thus, transcend mere “tracking.” See id. Independent claim 22 involves
the distribution of a “pre-filled message” relating to a product, to a “social
network” and does not require product tracking. See id.
Accordingly, the Examiner erred in rejecting claims 1—29 under 35
U.S.C. § 101, as directed to patent-ineligible subject matter. This rejection
is not sustained.
Anticipation and Obviousness Rejections of Claims 1—21
Independent claims 1 and 17 are argued together. Appeal Br. 5—7.
Claim 1 is selected for analysis herein. See 37 C.F.R. § 41.37(c)(l)(iv).
The Appellants contend (Appeal Br. 5—7) that the Examiner erred in
rejecting independent claim 1 because Futty does not teach the recited
“social network messages generated through the server-side media
distribution application.”
The Appeal Brief argues that Futty’s system “simply does not
generate any type of social network message.” Id. at 6. Further, Futty’s
system “does not query the social network for product identifiers in social
network messages that were previously generated by” the system. Id.
According to the Examiner, Futty’s system can poll a user’s
acquaintances regarding application store product information, such that the
answers to polls are the claimed “social network messages generated
through the server-side media distribution application.” Answer 15—16
(citing Futty || 15, 24, 25, 27, 52, claim 6, Fig. 2); see also Final Action 3,
16 (citing Futty || 19, 20, 25, 35—38).
In the Reply Brief, the Appellants argue that Futty’s polling
functionality does not accomplish the claimed “social network messages
generated through the server-side media distribution application” because
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Futty does not teach “crawling the social network for any sort of product
identifier in that poll.” Reply Br. 8 (citing Futty || 13—15). As the
Appellants explain, “it appears that the system doesn’t do any
crawling/querying at all for the poll, because any response to the poll is
presumably automatically provided back to the tastemaker system (a.k.a
media distribution platform).” Id. Further, the Appellants allege that
“Figure 2 of Futty does not at all illustrate a media distribution platform that
includes a social network”; rather, “Futty’s tastemaker system and social
network are clearly illustrated as two distinct and independent platforms,”
and Futty does not “push product reviews as social network messages into
the independent social network and then later query for their count.” Id.
at 8, 9.
The Appellants’ arguments are unpersuasive of Examiner error. More
specifically, the Appellants’ argument in the Reply Brief, to the effect that
Futty’s polls do not constitute the claimed “messages,” is based upon
speculation (see Reply Br. 8 (“zY appears that. . . because any response to
the poll is presumably . . .”) (emphasis added)) that, in any event, constitutes
attorney argument, rather than factual evidence. In addition, the Appellants’
assertions depend upon features not set forth in the claim: “a media
distribution platform that includes a social network” (Reply Br. 8) and
“pushing] product reviews” (id. at 9). With that in mind, the Appellants do
not distinguish adequately Futty’s polling functionality from the claimed
“social network messages.”
Therefore, the rejection of independent claim 1 under 35 U.S.C.
§ 102(e) is sustained. Because it was argued together with claim 1, the
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rejection of independent claim 17 under 35 U.S.C. § 102(e) is sustained. See
37C.F.R. §41.37(c)(l)(iv).
The Appellants rely upon the foregoing arguments, as to respective
dependent claims. See Appeal Br. 7, 9. Because, however, the Appellants
have not demonstrated error in the Examiner’s position that Futty teaches the
limitation of independent claim 1 addressed herein, the Appellants’
argument that Eberstadt does not teach the limitation (see id. at 9) is not
persuasive that the Examiner erred in rejecting claims 4, 10, 11, and 15 (all
of which depend from claim 1).
Therefore, the rejections of claims 2, 3, 5, 6, 9, 12—14, and 18—21
under 35 U.S.C. § 102(e), and of claims 4,7, 8, 10, 11, 15, and 163 under 35
U.S.C. § 103(a), are sustained.
Obviousness Rejections of Claims 22—29
The Appellants contend (Appeal Br. 7—8) that the Examiner erred in
rejecting independent claim 22 because Eberstadt does not teach the
limitation italicized below:
22. A non-transitory program storage device, readable
by a computer processor and comprising instructions stored
thereon to cause the computer processor to:
display, on a display element, a media distribution
platform interface having a product listing and a corresponding
share selector;
display, on the display element and in response to an
input indicative of selection of the share selector, an identifier
for each of one or more social networks;
3 The Appellants do not set forth an explicit basis for alleging error in the
rejection of claim 16. See Appeal Br. 4, 7—9.
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receive an input indicative of selection of at least one of
the one or more social networks;
obtain, in response to the input indicative of selection of
the at least one social network, a pre-filled message
corresponding to the product listing, the pre-fdled message
including an identifier of the product listing;
display, on the display element, the message;
receive a transmit input; and
transmit, in response to the transmit input, the message to
each of the selected at least one social network.
(Emphasis added).
The Examiner finds that Eberstadt teaches the above-referenced
limitation, in a disclosure of providing messages indicating that a person in
the user’s social network took some action relating to an identified product
(e.g., stating “a friend of yours bought” the product). Final Action 6—7
(citing Eberstadt || 136, 138, Figs. 44, 46); Advisory Action 2 (citing
Eberstadt || 94—96, 109, 136—138, Fig. 8). The Examiner regards the
messages as generated through the claimed “media distribution platform,” in
view of Futty’s teaching that the social network application is part of the
distribution platform. Advisory Action 2 (citing Futty, Fig. 2).
The Appellants argue that Eberstadt’s message is not “obtained], in
response to the input indicative of selection of the at least one social
network,” as recited in claim 22, because it “is not at all created when the
user selects the social networking sharing link.” Appeal Br. 8; see also
Reply Br. 10. In addition, the Appellants argue that Eberstadt’s message is
generated by an independent social media application (e.g., Facebook), but
“is not generated by a media distribution application, as claimed.” Reply
Br. 10; see also Appeal Br. 8. Further, the Appellants contend that
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Eberstadt’s message is not “pre-filled” with a “product identifier,” per claim
22, because it is merely “a blank text entry box that the user can
subsequently fill in with a custom message (which may or may not include a
product identifier).” Appeal Br. 8; see also Reply Br. 10-11. The
Appellants also dispute the Examiner’s finding that Futty teaches the “social
network” and the “media distribution application” as being part of the same
platform. Reply Br. 11.
The Appellants’ arguments are not persuasive because they rely upon
features that are not set forth in the claim, in order to distinguish Eberstadt.
Claim 22 does not require that the “pre-filled message” must be created or
generated by any particular instrumentality or at any particular time, as the
Appellants contend. See Appeal Br. 8; Reply Br. 10. Rather, the claim
merely requires that the “pre-filled message” be “obtained7” “in response to
the input indicative of selection of the at least one social network.” Further,
contrary to the Appellants’ contention, nothing in the claim language
excludes a message that is filled in by a user. See Appeal Br. 8; Reply Br.
10-11. The claimed message need only be “pre-filled”; that is, filled in
before it is “obtained],” which Eberstadt teaches, per the Examiner’s
findings.
With regard to dependent claims 23—29, the Appellants rely upon the
arguments presented for independent claim 22. Appeal Br. 9. Accordingly,
the Examiner’s decision to reject claims 22—29, under 35 U.S.C. § 103(a), is
sustained.
DECISION
We REVERSE the Examiner’s decision rejecting claims 1—29 under
35 U.S.C. § 101.
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We AFFIRM the Examiner’s decision rejecting claims 1—3, 5, 6, 9,
12-14, and 17-21 under 35 U.S.C. § 102(e).
We AFFIRM the Examiner’s decision rejecting claims 4, 7, 8, 10, 11,
15, 16, and 22-29 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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