Ex Parte Ranganath et al

Patent Trial and Appeal Board

Sep 20, 2018

13764747 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/764,747 02/11/2013
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
09/24/2018
FIRST NAMED INVENTOR
Rama Ranganath
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.
26295-20628/US 1849
EXAMINER
CIVAN,ETHAND
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
09/24/2018 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAMA RANGANATH, JARED MORGENSTERN,
and MARK RABKIN
Appeal2017-004207
Application 13/764,747 1
Technology Center 3600
Before: JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final decision rejecting claims 1, 3, 4, 6-12, 14, 15, and 17-22.
Claims 2, 5, 13, and 16 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, Facebook, Inc. is the real party in interest. App.
Br. 1.
Appeal2017-004207
Application 13/764,747
Appellants 'Invention
The invention generally relates to suggesting gift giving between
users of a social networking system. Spec. ,r 1. Specifically, a social
networking system may present information regarding important events in a
user's life, for example, a birthday, wedding, or anniversary, to the user's
connections along with gift suggestions of gifts provided by merchants
advertising products on the social networking system. Spec. ,r,r 22-23.
However, because the user may prefer a different gift than one selected by a
user's connection, the social network system may present alternative gifts to
the user along with the gift selected by the user's connection. Spec. ,r 25. If
the user selects to receive an alternative gift, the social networking system
may generate revenue based on the price difference between the gift selected
by the user's connection and the alternative gift selected by the user. Id.
Representative Claim
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computer implemented method comprising:
storing user profiles of each of a plurality of users of a
social networking system, each user profile including data
identifying one or more interests of a corresponding user;
identifying, by the social networking system, a life event
of a target user of the social networking system;
receiving a selection of an offered gift from one or more
users connected to the target user via the social networking
system for presenting to the target user for the life event;
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determining for each of a plurality of candidate alternative
gifts, an expected revenue for the social networking system
presenting the candidate alternative gift to the target user, the
expected revenue for a candidate alternative gift determined
based on a difference in price between the candidate alternative
gift and the offered gift and a matching between attributes of the
candidate alternative gift and interests of the target user retrieved
from the user profile of the target user;
selecting an alternative gift from the one or more candidate
alternative gifts based at least in part on the expected revenue;
sending to the target user an option to redeem the offered
gift or the selected alternative gift;
receiving a choice from the target user of the selected
alternative gift instead of the offered gift; and
receiving as revenue at least a portion of a difference in
price between the offered gift and the selected alternative gift.
Rejection on Appeal
The Examiner rejects claims 1, 3, 4, 6-12, 14, 15, and 17-22 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
ANALYSIS
Appellants argue claims 1, 3, 4, 6-12, 14, 15, and 17-22 together as a
group. See App. Br. 6-14. We select claim 1 as representative in addressing
Appellants' arguments below. See 37 C.F.R. § 4I.37(c)(l)(iv) ("When
multiple claims subject to the same ground of rejection are argued as a group
or subgroup by appellant, the Board may select a single claim from the
group or subgroup and may decide the appeal as to the ground of rejection
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with respect to the group or subgroup on the basis of the selected claim
alone.").
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLSBankint'l, 134 S.Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S.Ct. at 2355.
Assuming that a claim nominally falls within one of the statutory categories
of machine, manufacture, process, or composition of matter, the first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concept[s]." Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 2355-57. If the claim is directed to a judicial exception,
such as an abstract idea, the second step is to determine whether additional
elements in the claim "'transform the nature of the claim' into a patent-
eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This
second step is described as "a search for an "'inventive concept"'-i.e., an
element or combination of elements that is ' ... significantly more than ...
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the [ineligible concept] itself."' Id. at 2355 (quoting Mayo, 566 U.S. at 72-
73).
Prima Facie Case
Appellants contend the Final Office Action's "conclusory analysis
fails to properly establish the reasoning for the examiner's rejection and
meet the examiner's burden under 35 U.S.C. § 132 to provide notice and
reasons for the rejections." App. Br. 8. In other words, Appellants argue the
Examiner failed to establish a prima facie case of patent-ineligibility. We
disagree with Appellants.
The Federal Circuit has repeatedly explained that "the prima facie
case is merely a procedural device that enables an appropriate shift of the
burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
"PTO carries its procedural burden of establishing a prima facie case when
its rejection satisfies 35 U.S.C. § 132, in 'notify[ing] the applicant ... [by]
stating the reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."' In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132). The PTO
violates section 132 "when a rejection is so uninformative that it prevents
the [ A Jpplicant from recognizing and seeking to counter the grounds for
rejection." Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). But if
the PTO "adequately explain[ s] the shortcomings it perceives .... the
burden shifts to the [ A Jpplicant to rebut the prima facie case with evidence
and/or argument." Hyatt, 492 F.3d at 1370.
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The Examiner's rejection under section 101 satisfies section 132
because it reflects the Alice analytical framework by identifying an abstract
idea and finding the claims do not amount to significantly more than the
abstract idea itself (Final Act. 2-3; Ans. 3-9), thus apprising Appellants of
the reasons for the section 101 rejection under that framework. As discussed
in more detail below, Appellants recognize the Examiner's Alice analysis
and present arguments regarding each step. See App. Br. 6-14; Reply Br. 2-
13. Appellants do not respond by alleging a failure to understand the
rejection. See id.
Alice Step One
"The first step in the Alice inquiry ... 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." Enfzsh, 822 F.3d at 1335-36.
"The abstract idea exception prevents patenting a result where 'it matters not
by what process or machinery the result is accomplished."' McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)
(quoting O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)). "We
therefore look to whether the claims ... focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery." McRO, 837 F.3d at 1314.
Appellants contend claim 1 is not directed to the Examiner's
identified abstract idea-"receiv[ing] as revenue at least a portion of the
difference in price between an offered gift and a selected alternative gift"-
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because this idea omits elements of the claim. See App. Br. 10-11; Reply
Br. 3. That is, Appellants argue the Examiner simply seized onto the end
result of claim 1 rather than consider the claim as a whole. See Reply Br. 4--
6. We are not persuaded by Appellants' argument.
Claim 1, in essence, is a process for generating revenue as a
middleman between two parties where a mismatch between a gift selected
by one party and an alternative gift desired by the other party offers an
opportunity for profit-a process the Specification refers to as "gift
arbitrage." Spec. ,r 25. We thus agree with the Examiner (see Final Act. 2;
Ans. 3) and find the idea of receiving revenue based on a price difference
between a gift offered to and selected by a gift giving party and an
alternative gift offered to and selected by a gift receiving party sufficiently
captures the focus of claim 1 as a whole.
The fact that claim 1 recites numerous other steps besides the
"receiving as revenue" step does not change the focus of the claim because
many of the limitations, such as "storing user profiles," "identifying ... a
life event," "receiving a selection of an offered gift," "sending ... an
option," and "receiving a choice" are ancillary information handling steps in
service of the main idea of gift arbitrage. The remaining "determining" and
"selecting" steps in claim 1 determine the expected revenue for each
candidate alternative gift and select an alternative gift based on the expected
revenue. Rather than change the focus of claim 1, the "determining" and
"selecting" steps are part and parcel of the idea of gift arbitrage because one
must know the expected revenue from an alternative gift in order to perform
the gift arbitrage and receive revenue. Notably, the "determining" step does
not define a specific way of determining expected revenue, but merely states
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the criteria for expected revenue-i.e., a price difference and a matching of
attributes between the candidate alternative gift and the user. Likewise, the
"selecting" step does not define a specific way of selecting an alternative
gift, other than that it is based in part on the expected revenue. Accordingly,
the focus of claim 1 remains on the idea of receiving revenue as a result of
gift arbitrage.
Therefore, claim 1 utilizes computers merely as a tool to perform
information processing steps in service of the result of claim I-receiving
revenue from the difference in price between one gift and another alternative
gift. We see no error in the Examiner's defining the abstract idea based on
the result, or goal, of claim 1, without listing all the supporting information
handling steps that ensure the receiving of revenue from gift arbitrage,
because "[ a ]n abstract idea can generally be described at different levels of
abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed.
Cir. 2016). Accordingly, we find the Examiner's identified abstract idea
gives due consideration to the claim as a whole.
Appellants also contend the Examiner failed to properly analyze the
alleged abstract idea by comparing it to similar abstract ideas previously
identified by the courts. See App. Br. 8-10. Appellants further contend the
Examiner has not shown the alleged abstract idea to be a fundamental
economic practice. Reply Br. 10. We disagree with Appellants.
The Examiner finds claim 1 can be properly categorized as a
fundamental economic concept, akin to the mitigating settlement risk and
hedging concepts in Alice and Bilski. Ans. 6 ( citing Alice, 134 S.Ct. at 2356;
Bilski v. Kappas, 130 S.Ct. 3218, 3231 (2010)). We agree, because the idea
of capitalizing on a difference in prices of products-i.e., arbitrage-is
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indeed a fundamental concept in economics. Although not exactly like the
concepts at issue in Alice and Bilski, the arbitrage concept underlying claim
1 similarly represents a building block of economic activity. The fact that
claim 1 limits the concept to gift giving in a social media environment does
not change the analysis. See Alice, 134 S.Ct. at 2358 ("[T]he prohibition
against patenting abstract ideas cannot be circumvented by attempting to
limit the use of [ the idea] to a particular technological environment.")
(quoting Bilski, 130 S.Ct. at 3230) (quotation marks omitted).
Additionally, Appellants contend claim 1 "determines and presents
gifts to a target user in a way that is distinct from a common gift-giving
process." Reply Br. 7-9. In other words, the claimed automated process
differs from a prior human method, as in McRO, and claim 1 is therefore
patent-eligible. See id. We are not persuaded by this argument.
Although McRO found it important to distinguish the claims at issue
from a prior human method for performing animation (see McRO, 837 F.3d
at 1314), the fact that there may be no comparable prior human method does
not in itself show the claim is not abstract. Indeed, even a new abstract idea
is still an abstract idea. Synopsys, Inc. v. Mentor Graphics Corp., 839 F .3d
1138, 1151 (Fed. Cir. 2016). The issue is thus not whether the method of
claim 1 had actually been performed by human agency in the same way, but
whether it would be so performed except for the application of generic
computer technology to automate the process. See id. ("This [human]
activity, even if automated by rules, would not be within the scope of the
claims."). Claim 1, unlike the claims in McRO, does not recite rules
specifically defining a computerized process that is different in kind from
the steps a human would use to collect and analyze information to decide
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which gifts to offer to generate revenue from gift arbitrage. That is, there is
no aspect of claim 1 that defines a technological improvement, whether in a
software algorithm or a hardware design. See McRO, 837 F.3d at 1314;
Enfzsh, 822 F.3d at 1335-36.
We are, therefore, not persuaded the Examiner erred in finding claim
1 is directed to an abstract idea.
Alice Step Two
The second step in the Alice analysis requires a search for an
"inventive concept" that "must be significantly more than the abstract idea
itself, and cannot simply be an instruction to implement or apply the abstract
idea on a computer." Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349 (2016). There must be more than
"computer functions [that] are 'well-understood, routine, conventional
activit[ies]' previously known to the industry." Alice, 134 S.Ct. at 2359
( quoting Mayo, 566 U.S. at 73).
Appellants contend numerous steps of claim 1, particularly in
combination, amount to significantly more than the abstract idea itself. App.
Br. 13-14; Reply Br. 12-13. We disagree with Appellants.
Claim 1 recites a "computer implemented method" that makes use of
a "social networking system." These generic invocations of technology
amount to merely a statement to apply the abstract idea on a computer,
which the Federal Circuit admonished against in Bascom. 827 F.3d at 1349.
Moreover, Appellants do not specifically explain why the combination of
limitations in claim 1 amounts to significantly more than an abstract idea
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itself; rather, Appellants merely list the claimed steps. See App. Br. 12-14;
Reply Br. 12-13.
We are, therefore, not persuaded the Examiner erred in finding claim 1
does not amount to significantly more than the abstract idea itself.
Accordingly, we find the Examiner did not err in rejecting claim 1, and
claims 3, 4, 6-12, 14, 15, and 17-22 grouped therewith, as patent-ineligible.
CONCLUSION
Appellants have not shown the Examiner erred in rejecting claims 1,
3, 4, 6-12, 14, 15, and 17-22 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1, 3, 4, 6-12, 14, 15,
and 17-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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