Ex Parte Modani

Patent Trials and Appeals Board

Jun 25, 2019

14076679 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/076,679 11/11/2013 Natwar Modani
30449 7590 06/27/2019
SCHMEISER, OLSEN & WATTS
22 CENTURY HILL DRIVE
SUITE 302
LATHAM, NY 12110
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.
IN920130127US 1 7962
EXAMINER
YESILDAG, MEHMET
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
30449@IPLA WUSA.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATWAR MODANI
Appeal2018-003244
Application 14/076,679
Technology Center 3600
Before ALLEN R. MacDONALD, KAL YANK. DESHPANDE, and
IFTIKHAR AHMED, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, 6-10, and 14--17. Appellant has cancelled
claims 3-5, 11-13, and 18-20. App. Br. 32, 35, and 37. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 Appellant indicates the real party in interest is International Business
Machines Corporation. App. Br. 1.
Appeal2018-003244
Application 14/076,679
Illustrative Claim
Illustrative claim 1 under appeal reads as follows ( emphasis,
formatting, and bracketed material added):
1. A method for virally infecting connected social
network nodes with product offers, said method comprising:
[A.] receiving, by a computer processor of a computing
system, a customer list comprising a population of potential
customers for a product or service;
[B.] receiving, by said computer processor, effort budget
data and customer data associated with said potential
customers;
[C.] dividing, by said computer processor, said potential
customers into groups of social communities associated with
said connected social network nodes;
[D.] automatically determining, by said computer
processor, specified effort criteria comprising an amount of
effort to spend on each of said groups of social communities
with respect to said product or service,
[ i.] wherein said specified effort criteria is
measured in terms of a number of said potential
customers for targeting and an amount of a promotion
budget allocated to said potential customers, and
[ii.] wherein said automatically determining said
specified effort criteria comprises;
[a.] allocating said potential customers into
said groups of social communities based on
specified attributes of said social communities; and
[b.] modifying said allocating with respect
to a resistance threshold and said effort budget
data, wherein said resistance threshold is
associated with a product comprising a quick
spread rate within said groups of social
communities;
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[E.] associating, by said computer processor based on
inspection data received from expert individuals with respect to
inspecting said social communities, each said specified effort
criteria with an associated group of said groups of social
communities with respect to said product or service;
[F.] selecting, by said computer processor based on each
said specified effort criteria, specified customers from each
group of said groups of social communities,
[i.] wherein each specified customer of said
specified customers is associated with an associated
group of said groups of social communities via a
connected social network node of said connected social
network nodes,
[ii.] wherein each said connected social network
node is connected to another connected social network
node,and
[iii.] wherein said selecting said specified
customers from each said group comprises associating a
measure of influence associated with specified customers
with respect to each other, and
[iv.] wherein each said measure of influence is
associated with a strength of communication and a
connection between each said connected social network
node;
[G.] determining, by said computer processor,
interactions between each said connected social network node;
and
[H.] virally infecting, by said computer processor via
each said connected social network node based on each said
measure of influence and said interactions, each said group
with associated product offers.
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Application 14/076,679
Rejections2
A. 35 U.S.C. § 101
The Examiner rejects claims 1, 2, 6-10, and 14--17 under 35 U.S.C.
§ 101 because the claims "are directed to a judicial exception (i.e., law of
nature, natural phenomenon, or abstract idea) without providing significantly
more" (Final Act. 2), i.e., because the claimed invention is directed to
patent-ineligible subject matter. Final Act. 2---6.
We select claim 1 as representative. Appellant does not separately
argue claims 2, 6-10, and 14--17. Except for our ultimate decision, we do
not discuss the§ 101 rejection of claims 2, 6-10, and 14--17 further herein.
B. 35 U.S.C. § 112(a)
The Examiner rejects claims 1, 2, 6-10, and 14--17 under 35 U.S.C.
§ 112(a), as failing to comply with the written description requirement.
Final Act. 8-9. The Examiner determined:
The claim(s) contains subject matter which was not described in
the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor or a joint inventor, or
for pre-AIA the inventor( s ), at the time the application was filed,
had possession of the claimed invention. Claims 1, 9 and 16
recite the limitations or a substantially similar versions of:
i. "virally infecting connected social network nodes
with product offers" and "virally infecting, by said
computer processor via each said connected social
network node based on each said measure of
influence and said interactions, each said group with
associated product offers" and
These limitations include new matter.
2 All citations to the "Final Action" are to the Final Action mailed on
April 6, 2017.
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Id. at 7. Appellant's Appeal Brief does not present arguments directed to
this rejection. Sub silentio, App. Br. 8. Therefore, we sustain this rejection
proforma. 3
C. 35 U.S.C. § 112(b)
The Examiner rejects claims 1, 2, 6-10, and 14--17 under 35 U.S.C.
§ 103 as being indefinite. Final Act. 8-9. Appellant's Appeal Brief does not
present arguments directed to this rejection. Sub silentio, App. Br. 8.
Therefore, we sustain this rejection proforma. 4
3 Appellant presents in the Reply Brief, new arguments against this rejection
of claim 1. Reply Br. 12-14. This rejection was not previously argued in
the Appeal Brief or raised by the Examiner in the Answer ( contrary to
Appellant's attempt to frame these new arguments as responsive to the
Examiner's Answer (e.g., Id. at 12)). In the absence of a showing of good
cause by Appellant, we decline to consider an argument raised for the first
time in the Reply Brief, as the Examiner has not been provided a chance to
respond. See 37 C.F.R. § 41.41(b)(2) (2012); In re Hyatt, 211 F.3d 1367,
1373 (Fed. Cir. 2000) (noting that an argument not first raised in the brief to
the Board is waived on appeal); Ex parte Nakashima, 93 USPQ2d 1834,
1837 (BPAI 2010) (informative) (explaining that arguments and evidence
not timely presented in the principal brief will not be considered when filed
in a reply brief, absent a showing of good cause explaining why the
argument could not have been presented in the principal brief); Ex parte
Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative) ("Properly
interpreted, the Rules do not require the Board to take up a belated argument
that has not been addressed by the Examiner, absent a showing of good
cause."). Appellant has provided no showing of good cause and the
Examiner's statement noting Appellant's failure to raise this arguments in
the Appeal Brief (Ans. 5) does not provide Appellant with good cause as to
why Appellant's arguments could not have been presented in the Appeal
Brief.
4 Appellant presents in the Reply Brief, new arguments against this rejection
of claim 1. Again, in the absence of a showing of good cause by Appellant,
we decline to consider an argument raised for the first time in the Reply
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Issue on Appeal
Did the Examiner err in rejecting claim 1 as being directed to
patent-ineligible subject matter?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellant. Except as noted below, we adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner's Answer in response to Appellant's Appeal Brief arguments.
We concur with the conclusions reached by the Examiner. We highlight the
following points.
A. Section 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.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[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).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Brief, as the Examiner has not been provided a chance to respond.
Appellant has provided no showing of good cause.
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Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. 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 Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts 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
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 waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but 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."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
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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. ( citation omitted) ( citing Benson and Flook); see, e.g., id. at 187 ("It is
now commonplace 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 tum 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 (quotation marks 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. ( alterations in original) ( 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.
B. USPTO § 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of§ 101. US PTO' s January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 ("2019 Memorandum"). Under that guidance,
we first look to whether the claim recites:
( 1) (see 2019 Memorandum Step 2A - Prong One) any judicial
exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human activity
such as a fundamental economic practice, or mental processes); and
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(2) (see 2019 Memorandum Step 2A - Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.0S(a}-(c), (e}-(h)). 5
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:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Memorandum Step 2B.
C. Examiner's§ 101 Rejection -Alice/Mayo - Steps 1 and 2
C.1. 2019 Memorandum Step 2A - Prong One
Applying the Alice/Mayo analysis, the Examiner concludes claim 1
recites:
[T]he abstract idea of virally infecting/delivering social
network/ community with product offers, by[:]
[A.] receiving a customer list comprising a population of
potential customers for a product or service,
[B.] receiving effort budget data and customer data associated
with said potential customers,
[C.] dividing said potential customers into groups of social
communities,
5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of 2019 Memorandum). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under Step 1 of Alice (Step 2A of 2019 Memorandum). See 2019
Memorandum.
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[D.] determining specified effort criteria comprising an amount
of effort to spend on each of said groups of social
communities with respect to said product or service,
[i.] wherein said specified effort criteria is measured in
terms of a number of said potential customers for
targeting and an amount of a promotion budget
allocated to said potential customers, and
[ii.] wherein said determining said specified effort criteria
comprises allocating said potential customers into
said groups of social communities based,
[a.] allocating said potential customers into said
groups of social communities based on
specified attributes of said social
communities,
[b.] modifying said allocating with respect to a
resistance threshold and said effort, budget
data, wherein said resistance threshold is
associated with a product comprising a quick
spread rate within said groups of social
communities,
[E.] associating based on inspection data received from expert
individuals with respect to inspecting said social
communities, each said specified effort criteria with an
associated group of said groups of social communities
with respect to said product or service,
[F.] selecting based on each said specified effort criteria,
specified customers from each group of said groups of
social communities,
[i.] wherein each specified customer of said specified
customers is associated with an associated group of
said groups of social communities,
[ii.] wherein said selecting said specified customers from
each said group comprises associating a measure of
influence associated with specified customers with
respect to each other, and
[iii.] wherein each said measure of influence is associated
with a strength of communication and connection
between each customer,
[G.] determining interactions between each said customer,
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[H.] virally infecting ... based on each said measure of influence
and said interactions, each said group with associated
product offers[.]
Final Act. 2-3 ( emphasis, formatting, and bracketed material added).
The Examiner further determines:
[ A ]11 of which can be performed by a human mentally and/or
with pen and a paper; therefore, these functions include idea of
itself (similar in concept to that of 'Collecting information,
analyzing it, and displaying certain results of the collection and
analysis', which was identified by the courts as an abstract idea
in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016)). Further, infecting/delivering social
network/community with product offers is also similar in
concept to that of 'Displaying an advertisement', which was
identified by the courts as an abstract idea in Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709[] (Fed. Cir. 2014).
Final Act. 3--4 ( emphasis modified).
C.2. 2019 Memorandum Step 2A - Prong Two
Further applying the Alice/Mayo analysis, the Examiner concludes
claim 1 is directed to an abstract idea.
The claims do not amount to "significantly more" than the
abstract idea because they neither (1) recite any improvements to
another technology or technical field; (2) recite any
improvements to the functioning of the computer itself; (3) apply
the judicial exception with, or by use of, a particular machine;
( 4) effect a transformation or reduction of a particular article to a
different state or thing; ( 5) add a specific limitation other than
what is well-understood, routine and conventional in the field;
( 6) add unconventional steps that confine the claim to a particular
useful application; nor (7) provide other meaningful limitations
beyond generally linking the use of the judicial exception to a
particular technological environment. As per claims 1, 9, and 16,
transmitting data/information between generic/well-known
devices (such as networked hardware nodes, computer processor,
etc.) is insignificant extra-solution activity and customers of
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social communities communicating via nodes which is also an
insignificant extra-solution activity .... As per claims 1, 9, and
16, using receiving and using a given data/information of
strength of communication and connection between nodes does
not provide significantly more to the abstract idea since this is
merely receiving data via generic devices which is an
insignificant extra-solution activity. As per claims 1, 9, and 16,
storing data using generic/well-known devices (such as
networked/connected nodes, computer processor, etc.) is
insignificant extra-solution activity which does not provide
significantly more to the abstract idea identified above.
Final Act. 5-6 ( emphasis added).
C.3. 2019 Memorandum Step 2B
Applying the Alice/Mayo analysis, the Examiner determines:
[W]hile the claims 1, 2, 6-10, 14-17 recite hardware or software
elements, such as a processor or memory or computer readable
medium, or {computer} nodes networked, these limitations are
not enough to qualify as "significantly more" being recited in the
claims along with the abstract idea since these are generic/well-
known devices which are used for their conventional purposes
and/or well-known software modules executed by these
generic/well-known devices.
Final Act. 5 ( emphasis added).
Additionally, the Examiner determines:
As per claims 1, 9, and 16, transmitting data/information between
generic/well-known devices (such as networked hardware
nodes, computer processor, etc.) is ... well-known, routine and
conventional (such as smartphones/tablets of a community of
people are connected to the cellular and/or cable internet, and
further can use applications to communicate with each other),
which do not provide significantly more to the abstract idea
identified above .... As per claims 1, 9, and 16, merely
{automatically} implementing functions, otherwise would be
performed by a human manually, using generic/well-known
devices ( such as networked/ connected nodes, computer
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processor, etc.) does not provide significantly more to the
abstract idea identified above.
Final Act. 5---6 ( emphasis added).
D. Appellant's§ 101 Arguments &Panel's Analysis
D.1. 2019 Memorandum Step 2A, Prong 1
D.1.a.
Appellant contends:
[A] human cannot with a pen and paper or mentally select
anything ( from social communities) or perform any functions via
connected social network nodes (i.e., a hardware/software
device on a network) and enable definitions for attributes of the
connected social network nodes in combination with
determining interactions between the connected social network
nodes.
App. Br. 14 ( emphasis added).
Likewise, Appellant asserts that the phrase "virally infecting" is
defined ( e.g., at https://en.wikipedia.org/wiki/Viral_marketing)
as social networking services and other technologies to try to
produce increases in brand awareness or to achieve other
marketing objectives (such as product sales) through self-
replicating viral processes, analogous to the spread of viruses or
computer viruses and may be delivered by word of mouth or
enhanced by the network effects of Internet and mobile
networks (i.e., cannot be done in the human mind).
App. Br. 16-17 (emphasis added).
Appellant contends that the viral infection process of Appellant's
claims involves complex machine and software based
communications (via multiple remotely located nodes or
computers across a network) for quickly spreading novel
software implemented offers throughout a complex system of
multiple remotely located nodes. Additionally, Appellant
contends that performing functions based on a determined
strength of Internet communication in a broadest reasonable
interpretation ( e.g., a bandwidth as alleged by the Examiner)
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could not be performed by a human mind or with pen and paper
as Appellant asserts that a human mind does not have the ability
to monitor and analyze internal functions or processes of a
computer or network ( and associated connections between
nodes) such as a bandwidth without the use of specialized
hardware or software such as, inter alia, a network probe.
App. Br. 18 ( emphasis added).
[The] method for virally infecting connected social network
nodes with product offers is not a method of organizing human
activities or an idea of itself
App. Br. 17 ( emphasis added).
D.1.b.
Appellant's arguments do not address the Examiner's rejection
because the argued "social network nodes" (i.e., a hardware/software device
on a network) specifics of claim 1 are not part of the judicial exception
analysis. Rather, these specifics are part of determining whether, in addition
to the judicial exception, the claim includes an inventive concept. Alice, 573
U.S. at 217 ("First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask, ' [ w ]hat else is
there in the claims before us?"' ( Citations omitted)).
D.1.c.
The Examiner correctly determines that claim 1 recites the following
limitations:
[A.] receiving a customer list compnsmg a population of
potential customers for a product or service;
[B.] receiving effort budget data and customer data associated
with said potential customers,
[C.] dividing said potential customers into groups of social
communities,
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[D.] determining specified effort criteria comprising an amount
of effort to spend on each of said groups of social
communities with respect to said product or service, ....
within said groups of social communities,
[E.] associating based on inspection data received from expert
individuals with respect to inspecting said social
communities, each said specified effort criteria with an
associated group of said groups of social communities
with respect to said product or service,
[F.] selecting based on each said specified effort criteria,
specified customers from each group of said groups of
social communities, ... customer,
[G.] determining interactions between each said customer,
[H.] virally infecting ... based on each said measure of
influence and said interactions, each said group with
associated product offers[.]
Final Act. 2-3 (formatting, and bracketed material added). Further, the
Examiner correctly determines that all these "can be performed by a human
mentally and/or with pen and a paper," and that "infecting/delivering social
network/community with product offers is also similar in concept to that of
'Displaying an advertisement', which was identified by the courts as an
abstract idea in Ultramercial." Final Act. 3--4.
In short, the Examiner correctly determines that claim 1 recites a
method of facilitating targeting advertisements; and advertising is one of
certain methods of organizing human activity identified in the 2019
Memorandum, and thus an abstract idea. 84 Fed. Reg. at 52.
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D.2. 2019 Memorandum Step 2A, Prong 2
D.2.a.
Having determined that claim 1 recites an abstract idea, we now tum
to whether claim 1 is directed to that abstract idea, or instead integrates the
judicial exception into a practical application. Appellant contends:
Appellant asserts that similar to the Federal circuit
analysis in Enfish ... , Appellant claims a specific type of non-
abstract node technology improvement process to "improve ...
computer technology" defined by a connected social network
node viral infection technology improvement associated with
"logical structures and processes" defined by hardware and
software components performing a process for dividing groups
of social communities with respect to connected nodes; selecting
the groups via the nodes; determining node based influence
based on a strength of communications and connections between
the nodes; determining interactions between the nodes; and
virally infecting the groups ( of remotely connected nodes or
computers) based on based on interactions between each of the
nodes.
App. Br. 21 ( emphasis added).
Appellant asserts that the preceding features of claims 1,
9, and 16 improve the operational performance or functioning of
connected social network nodes (i.e., improves the functioning
of the computer itself ... by: dividing potential customers into
groups of social communities associated with said connected
social network nodes; automatically determining specified
effort criteria (by allocating the potential customers into said
groups of social communities based on attributes of the social
communities and modifying the allocations based on a quick
spread rate within the groups of social communities); selecting
social communities via connected social network nodes based on
a strength of communication and connection between each
connected social network node; determining interactions
between each connected social network node; and virally
infecting (via each connected social network node based on
strength of communication and connection) each said group with
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associated product offers such that the performance or
functioning of the computing system (itself) is improved to meet
the needs of a specific social network node viral infection
process.
App. Br. 25 ( emphasis added).
We agree with Appellant that improving a technological process may
result in integrating the judicial exception into a practical application. This
consideration has also been referred to as the search for a technological
solution to a technological problem. See Amdocs (Isr.), Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) ("[T]his claim entails
an unconventional technological solution ... to a technological problem
.... ").
However, Appellant's argument is not persuasive. Unlike the
"specific type of data structure" improvement disclosed and claimed in
Enfzsh, Appellant's social network node is disclosed as a non-particular
element (e.g., Appellant's figure 7, item 704). We determine that unlike
Enfzsh, Appellant claims the node without specifying how the node operates.
Rather, the node achieves a result without further detail. In order to
transform a judicial exception into a patent-eligible application, the
additional element or combination of elements must do "'more than simply
stat[e] the Uudicial exception] while adding the words 'apply it"'. Alice, 573
U.S. at 221 (quoting Mayo, 566 U.S. at 72).
D.2.b.
We agree with the Examiner that as to the steps of claim 1, "providing
improvement to a business model does not necessarily provide improvement
to a computer technology." Ans. 5. In view of Appellant's Specification,
and consistent with the Examiner's determinations, we conclude that claim 1
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does not integrate the judicial exception into a practical application. We
determine claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a}-(c), (e}-(h). We agree with the Examiner that
claim 1 is directed to a judicial exception.
D.3. 2019 Memorandum Step 2B
Discussing the nodes (Final Act. 5, line 6), the Examiner points out:
The[] limitation[ is] not enough to qualify as "significantly
more" being recited in the claims along with the abstract idea
since these are generic/well-known devices which are used for
their conventional purposes and/or well-known software
modules executed by these generic/well-known devices.
Final Act. 5.
We agree with the Examiner that use of social network nodes is well-
understood, routine and conventional. This is evidenced by MySpace, Inc. v.
Graphon Corp., 672 F.3d 1250, 1265 (Fed. Cir. 2012)("[t]he claims thus cut
across vast swaths of the Internet and potentially extend to most online
advertising and social networking sites"); Davis v. Brouse McDowell, 596
F3d 1355, 1357 (Fed Cir. 2010) ("[t]he IP-Exchange as a social networking
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Application 14/076,679
platform"). At best, Appellant uses the claimed social network nodes as
built and not as part of an improvement to the functioning of a computer
system. Although claim 1 recites "more" under step two of the Alice/Mayo
analysis, we conclude the "more" is not patentably significant. Rather, the
record shows this "more" to be the epitome of a well-understood, routine,
conventional element/combination previously known in the industry.
Because claim 1, in addition to the abstract idea, recites only a well-
understood, routine, conventional element/combination previously known in
the industry, we conclude the case law shows there is no genuine issue of
material fact regarding step two of the Examiner's Alice/Mayo analysis.
Therefore, we are unpersuaded by Appellant's argument that further
evidence is required. In view of Appellant's Specification, and consistent
with the Examiner's determinations, we determine the claims do not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity m the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 2, 6-10, and
14--17 under 35 U.S.C. § 101, as being directed to patent-ineligible subject
matter.
(2) Appellant does not properly present arguments that the Examiner
has erred in rejecting claims 1, 2, 6-10, and 14--17 under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement.
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Application 14/076,679
(3) Appellant does not properly present arguments that the Examiner
has erred in rejecting claims 1, 2, 6-10, and 14--17 under 35 U.S.C. § 112(b)
as being indefinite.
(4) Claims 1, 2, 6-10, and 14--17 are not patentable.
DECISION
The Examiner's rejection of claims 1, 2, 6-10, and 14--17 under
35 U.S.C. § 101, as being directed to patent-ineligible subject matter, is
affirmed.
The Examiner's rejections of claims 1, 2, 6-10, and 14--17 as being
unpatentable under 35 U.S.C. § 112(a) and§ 112(b) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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