Ex Parte Stibel et alDownload PDFPatent Trial and Appeal BoardNov 14, 201714522422 (P.T.A.B. Nov. 14, 2017) Copy Citation 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. 384.9541USU 8931 EXAMINER MCCORMICK, GABRIELLE A ART UNIT PAPER NUMBER 3629 MAIL DATE DELIVERY MODE 14/522,422 10/23/2014 Jeffrey M. Stibel 27623 7590 11/15/2017 OHLANDT, GREELEY, RUGGIERO & PERLE, LLP ONE LANDMARK SQUARE, 10TH FLOOR STAMFORD, CT 06901 11/15/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFFREY M. STIBEL, MOUJAN KAZERANI, JUDITH G. HACKETT, CHAD MICHAEL BUECHLER, and BRANDON MILLS Appeal 2016-007889 Application 14/522,422 Technology Center 3600 Before JOHN A. EVANS, KARA L. SZPONDOWSKI, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-007889 Application 14/522,422 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1—9, 11—13, 15—19, and 21—23, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION The application is directed to “a system that generates different customized decks of cards with each deck being customized for a different user with a condensed and filtered set of business data that is relevant to that user.” (Abstract.) Claim 1, reproduced below, exemplifies the subject matter on appeal: 1. A computer-implemented method for producing a customized business information card deck, the method comprising: providing a business information viewing application to a user for installation on a network and touch enabled device of the user, wherein the application, upon installation and registration, displays a first plurality of cards of the card deck on said user device and monitors user interactions with each card of the plu rality of cards, each card of the first plurality of cards presenting creditworthiness, an industry classification, size of the business or business representative, reviews, and ratings, wherein said size is derived from at least one of a number of employees, rev enue, years in business, and number of locations of the business or business representative, and wherein the reviews and ratings provide experiences others have had with the business or busi ness representative; receiving said user interactions with the first plurality of cards over the Internet from the application at a system machine, 1 Appellants identify Dun & Bradstreet Emerging Businesses Corp. as the real party in interest. (See App. Br. 1.) 2 Appeal 2016-007889 Application 14/522,422 wherein said user interactions identify a first card about a first business that the user views for a longer duration than other cards of the plurality of cards and a second card about a different sec ond business that the user rejects with a touch-based flick gesture in a first direction, the system machine comprising a micropro cessor and memory that stores said user interactions, wherein the microprocessor modifies said card deck in response to receiving said user interactions, wherein said modifying produces a modified card deck with a second plurality of cards by (i) automatically adding to the first plurality of cards as a result of the longer duration the user views the first card relative to the other cards of the plurality of cards, a first subset of cards identifying a first subset of businesses or business representatives with cre ditworthiness, industry classifications, and sizes correspond ing to at least one of the creditworthiness, the industry classi fication, and the size of the first business identified from the first card and (ii) automatically removing from the first plu rality of cards as a result of the touch-based flick gesture in the first direction, a second subset of cards identifying a sec ond subset of businesses or business representatives with cre ditworthiness, industry classifications, and sizes correspond ing to the creditworthiness, the industry classification, and the size of the second business identified from the second card; generates an alert containing the second plurality of cards of the modified card deck; and transmits the alert over the Internet to the user network and touch enabled device, wherein the alert activates the applica tion to update the first plurality of cards of the card deck with the second plurality of cards of the modified card deck, and wherein the alert causes the application to display the second plurality of cards in place of the first plurality of cards when the application is next launched on the user network and touch enabled device. 3 Appeal 2016-007889 Application 14/522,422 THE REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Shah et al. US 2002/0035556 Al Mar. 21,2002 Salim US 2003/0126051 Al July 3, 2003 Jeavons US 7,606,810 B1 Oct. 20, 2009 Lane US 2010/0095234 Al Apr. 15,2010 Bolivar et al. US 2011/0307411 Al Dec. 15,2011 Huang US 2012/0290601 Al Nov. 15,2012 Mangum et al. US 2013/0167088 Al June 27, 2013 Yi et al. US 2014/0280890 Al Sept. 18,2014 Apple CEO Steve Jobs Unveils New Products at WWDC Show, CEO Wire (June 2011) (“CEO Wire”) THE REJECTIONS 1. Claims 1—9, 11—13, 15, and 16 stand rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. (See Final Act. 2—3.) 2. Claims 17—19 and 21—23 stand rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. (See Final Act. 3—4.) 3. Claims 1—9, 11—13, 15—19, and 21—23 stand rejected under 35 U.S.C. § 101 “because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.” (See Final Act. 4—6.) 4 Appeal 2016-007889 Application 14/522,422 4. Claims 1—3 stand rejected under 35 U.S.C. § 103 as unpatentable over Yi, Huang, Salim, and Shah. (See Final Act. 7—9.) 5. Claim 4 stands rejected under 35 U .S.C. § 103 as unpatentable over Yi, Huang, Salim, Shah, and Mangum. (See Final Act. 9-10.) 6. Claims 5—8 stand rejected under 35 U.S.C. § 103 as unpatentable over Yi, Huang, Salim, Shah, and Bolivar. (See Final Act. 10.) 7. Claims 9, 11—13, 15, and 16 stand rejected under 35 U.S.C. § 103 as unpatentable over Yi, Huang, Bolivar, Jeavons, and Shah. (See Final Act. 10—14.) 8. Claims 17—19, 22, and 23 stand rejected under 35 U.S.C. § 103 as unpatentable over Yi, Huang, Bolivar, CEO Wire, and Lane. (See Final Act. 14—17.) 9. Claim 21 stands rejected under 35 U.S.C. § 103 as unpatentable over Yi, Huang, Bolivar, CEO Wire, Lane, and Shah. (See Final Act. 17— 18.) ANALYSIS Written Description The Examiner observes that claims 1 and 9 “recite transmitting an alert to the user network and device wherein the alert activates the application to update the first plurality of cards and wherein the alert causes the application to display the second plurality of cards in place of the first when the application is next launched” but “does not find support for the alert causes the updating or display of second plurality” because “the specification discloses that the alert is sent to the user to inform the user of updates.” (Final Act. 2—3, citing Spec. 13, 42.) 5 Appeal 2016-007889 Application 14/522,422 Appellants respond that paragraph 42 of the Specification “teaches that the alert does more than simply inform the user of updates” in that “[t]he alert ‘directs’ the user to updated cards and ‘the updated information can be highlighted or otherwise distinguished from the other information.’” (App. Br. 10.) According to Appellants, “[sjince the updated cards are presented through the application graphical user interface (GUI) and the alert ‘directs’ the user to the updated cards, the alert therefore involves activation of the application ... in conformance with the ‘transmit’ limitations.” (Id.) Appellants also point to their Figure 10, said to “provide further support” because “reference marker 1050 of Figure 10 illustrates an alert presenting a new card to the user” and “[i]n response to receiving the alert, paragraph 77 of the specification recites ‘[t]he customer can then submit (at 1060) a review of the business directly through interactions with that business’s card. ’” (Id.) We are not persuaded of Examiner error. The claim requires that “the alert activates the application to update the first plurality of cards.” The Specification, on the other hand, describes that “[ajlerts can ... be provided whenever any change is made to a card that the user has liked or approved or a card that the user has previously viewed” and that “[t]he alert directs the user to the card or cards having the updates.” (Spec. 142.) Nowhere does the Specification describe an alert that, itself, activates an application to update the cards, which is what is required by the plain language of the claims. The Examiner also finds that the Specification does not support “generat[ing] an alert containing the second plurality of cards,” as recited in claim 1. (See Final Act. 3.) Because Appellants do not identity any support 6 Appeal 2016-007889 Application 14/522,422 for the alert containing the second plurality of cards, we agree that this claim recitation also lacks written description support. For these reasons, we sustain the rejection of claims 1—9, 11—13, 15, and 16 under 35 U.S.C. § 112(a) as lacking adequate support in the original written description. Indefiniteness The Examiner concludes claim 17 is indefinite because “[i]t is unclear how the displayed cards can be ‘continually updated’ and in response to a user interaction” and “[i]t is unclear whether the displayed cards would be updated (as required by the ‘continually updated’ limitation) in the absence of user interactions.” (Final Act. 3.) We do not agree that “continually updated” renders the claim indefinite. Instead, we conclude that one of skill in the art would understand that, as described in the Specification, the cards are updated as a consequence of user interactions as they occur, without further action by the user. (See, e.g., Spec. 111 (“The system continually updates each user’s deck of cards based on changing adjusted card values that result from continued monitoring the user’s behavior and card interactions.”).) The Examiner further concludes claim 17 “is unclear and lacks proper antecedent basis” because the recitation “a different second touch and hold gesture” “presumes a first ‘second touch and hold gesture.” (Final Act. 3.) The Examiner also finds “[i]t is unclear as to whether” “the/said second touch and hold gesture” is the same gesture as the “different second touch and hold gesture.” (Id.) We agree that the terms “different” and “second” modifying “touch and hold gesture” render the claim as whole unclear and, thus, indefinite. We also agree with the Examiner that claim 22 is indefinite 7 Appeal 2016-007889 Application 14/522,422 as a consequence of its use of the similar language “a different third touch- based gesture.” (See Final Act. 3.) For these reasons, we sustain the rejection of claims 17—19 and 21—23 under 35 U.S.C. § 112(b). Patent Eligibility The Examiner finds the claims “directed to modifying data based on monitored user interactions which is a method of organizing human activity and an abstract idea.” (Final Act. 4.) The Examiner further finds the claims “do not include additional elements that are sufficient to amount to significantly more than the judicial exception” because “[t]he limitations of monitoring interactions, including detecting swiping and tapping gestures and monitoring dwell times, receiving user inputs such as qualifications and producing matches to the qualifications are well-known, routine and conventional practices that require no more than a generic computer to perform generic computer functions.” {Id. at 4—5.) Appellants argue “the claims are not directed to any method of organizing human activity,” but instead are “directed to graphical user interfaces (GUIs) that customize the presentation of business data in response to user interactions.” (App. Br. 14.) We agree with Appellants. Under Alice step one, “the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). “Abstraction is avoided or overcome when a proposed new application or computer- implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement 8 Appeal 2016-007889 Application 14/522,422 to the capability of the system as a whole.” Trading Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x 1001, 1004 (Fed. Cir. 2017). Considering the instant claims as a whole, we find them directed to a graphical user interface method that imparts a specific functionality to an information management system and that, as such, they are at least eligible for patenting. Cf. Trading Techs., 675 F. App’x at 1004 (finding eligible “claims [that] require[d] a specific, structured graphical user interface paired with a prescribed functionality directly related to the graphical user interface’s structure that is addressed to and resolves a specifically identified problem in the prior state of the art”). Because we conclude that the claims are not directed to an abstract idea, and that Sections 102 and 103 are the appropriate measure for assessing whether the claimed system is one that merits a patent,2 we do not sustain the rejection under Section 101. Obviousness: Claims 1—8 The Examiner finds Yi to disclose most of the limitations of claim 1, but that Yi does not disclose: (a) “that the content items are represented as cards presenting data about businesses or business representatives,” for which the Examiner relies on Huang; (b) “objective data comprising creditworthiness data, industry classification and size or subjective data 2 See Trading Techs., 675 F. App’x at 1005—06 (“[T]he public interest in innovative advance is best served when close questions of eligibility are considered along with the understanding flowing from review of the patentability criteria of novelty, unobviousness, and enablement, for when these classical criteria are evaluated, the issue of subject matter eligibility is placed in the context of the patent-based incentive to technologic progress.”). 9 Appeal 2016-007889 Application 14/522,422 comprising reviews and ratings about a business or business,” for which the Examiner relies on Salim; and (c) “alerting a user to changed data,” for which the Examiner relies on Shah. (See Final Act. 7—9.) Appellants argue the Examiner erred in rejecting claim 1 for five reasons, which we address in the order presented. First, Appellants argue the Examiner “provides a disjoint and piecemeal rejection of the claims that fails to consider or address the claim as a whole.” (App. Br. 24.) We find this argument unpersuasive because any obviousness rejection is a combination or modification of existing art to arrive at what is claimed. Here, the Examiner did consider the claim as a whole in assessing obviousness, as each of the claim elements is accounted for in the rejection. Appellants’ complaint that the rejection was “formed from a combination of unrelated elements from unrelated references pieced together to individually and arbitrarily” (id.) is not sufficient to show error without persuasive argument that the art is not analogous and/or an explanation of why the Examiner’s reasons to combine are not valid. Second, Appellants argue “[t]he obviousness rejection of claim 1 is based solely on statements that the claimed invention is within the capabilities of one of ordinary skill in the art without any articulated reasoning in support.” (App. Br. 26.) We do not agree and, instead, find the Examiner has provided sufficient reasons to combine. (See Final Act. 7—9.) For example, the Examiner finds that “Yi does not disclose that the content items are represented as cards presenting data about businesses or business representatives” but that it would have been obvious to use a system like Yi to manage business cards, such as those disclosed in Huang “for the motivation of providing a method of electronically organizing business 10 Appeal 2016-007889 Application 14/522,422 cards.” (Final Act. 8.) We do not agree with Appellants that this motivation “is a conclusory statement that is absent of actual reasoning or rationale.” (App. Br. 26.) Instead, the rationale is to have a way to organize information of the type contained in business cards. Appellants do not explain why that would not be a rational reason to make the Examiner’s modification, and we see no reason why one aware of Yi’s techniques for determining a user’s interests in content would not use those techniques with business information as the content. For similar reasons, we are satisfied that the motivations to add Salim and Shah are sufficient to support the conclusion of obviousness. Third, Appellants argue “[t]he rejection is improper because the rejection requires modifying the teachings of Huang in a way that renders the prior art unsatisfactory for its intended purpose and changes the principle of Huang’s operation.” (App. Br. 28.) We do not agree, because the Examiner relies on Huang only for the business card content itself. (See Final Act. 8.) Thus, Appellants’ arguments are not responsive to the rejection as articulated by the Examiner, which modifies Yi in view of the teachings of Huang, and does not propose modifying Huang. (Final Act. 8.) Fourth, Appellants argue the combination does not teach or suggest “performing a rejection gesture on ‘the second card’ and removing ‘a second subset of cards’ as a result.” (App. Br. 29.) In particular, Appellants argue the claim requires “performing a rejection gesture on ‘the second card’ and removing ‘a second subset of cards’ as a result,” but “[t]he prior art does not disclose or teach this one-to-other action” because it instead “teaches a one- to-one action in which a rejection action performed on particular content 11 Appeal 2016-007889 Application 14/522,422 results in removal of that particular content, not other content or a subset of other related content.” (App. Br. 29.) The Examiner responds as follows: Yi discloses this feature at P[0082]: the content pool is dynami cally updated (thus disclosing second, third, fourth, etc., presen tations of sets of data) based on changes in performance or pop ularity of the relevant content over time; P[0083]: sub-pools are created according to a user’s particular interests and P[0084]: content relating to a certain topic is fetched and added to the pool. (Ans. 8.) We are not persuaded by Appellants’ argument because the claim requires removing “a second subset” corresponding to criteria identified from the second card, and if the second card was the only card with that criteria, that removed card itself would be the claimed “second subset.” Thus, the claim language would be met in Yi where, according to Appellants, “a rejection action performed on particular content results in removal of that particular content.” (App. Br. 29.) The claim does not require that the “second subset” exclude the second card or include more than the second card. Finally, Appellants argue the art does not teach or suggest “wherein the alert activates the application to update the first plurality of cards of the card deck with the second plurality of cards of the modified card deck” and “wherein the alert causes the application to display the second plurality of cards in place of the first plurality of cards when the application is next launched on the user network and touch enabled device.” (App. Br. 30.) We agree that the portion of Shah cited for this subject matter does not teach or suggest an alert that activates an application or causes an application to 12 Appeal 2016-007889 Application 14/522,422 display a second set of cards and, therefore, do not sustain the Section 103 rejection of claim 1, as well as the same rejection of dependent claims 2—8.3 Obviousness: Claims 9, 11—13, 15, and 16 The Examiner finds Yi to disclose most of the limitations of claim 9, but that Yi does not include: (a) “that the content items are represented as cards presenting data about businesses or business representatives,” for which the Examiner relies on Huang; (b) “the user or other users providing reviews/rankings for a piece of content or adding content to a directory,” for which the Examiner relies on Bolivar; (c) “adjusting the values by decreasing when the set of business data is incomplete or not verified,” for which the Examiner relies on Jeavons; and (d) “alerting a user to changed data,” for which the Examiner relies on Shah. (See Final Act. 10—13.) Appellants argue the Examiner erred in rejecting claim 9 for three reasons, the first two of which are essentially the same as the first two arguments made in connection with claim 1 and which are not persuasive of error for the reasons described above, namely that (i) we do not agree that the Examiner did not consider the claims as a whole and (ii) we do not agree that the reasons to combine are not sufficient. Appellants’ third argument for claim 9 is that the combination does not teach or suggest “deriv[ing] default values for each card of the plurality of cards” by “(i) increasing a value of each business or business representative identified by each card of the plurality of cards” and “(ii) decreasing a value of each business or business representative identified by 3 However, this limitation is also not described in Appellants’ application, rendering the claims invalid under Section 112, as discussed above. 13 Appeal 2016-007889 Application 14/522,422 each card of the plurality of cards.” (App. Br. 33, emphasis omitted.) The Examiner responds that “Yi discloses that users are monitored and content popularity is determined in order to make decision about adding or deleting content from the pool (P[0082]) and user engagement scores are collected from a number of users (P[0107]) thus disclosing that Yi tracks the number of users that are interacting with the content.” (Ans. 10.) We agree with the Examiner because paragraph 82 of Yi describes a “content pool” that is “dynamically update [d] . . . when . . . information related to the performance of the content is received.” This disclosure is sufficient to teach or suggest updating card values as claimed. Because we find Appellants’ arguments unpersuasive of error, we sustain the Section 103 rejection of claim 9, as well as the same rejection of claims 11—13, 15, and 16, which are argued on the same bases.4 Obviousness: Claims 17—19 and 21—23 The Examiner finds Yi to disclose most of the limitations of claim 17, but that Yi does not include: (a) “that the content items are represented as cards presenting data about businesses or business representatives,” for which the Examiner relies on Huang; (b) “the user or other users providing reviews or rankings for a piece of content,” for which the Examiner relies on Bolivar; (c) “various touch-based gestures,” for which the Examiner relies on CEO Wire and Lane. (See Final Act. 14—16.) 4 Appellants do not argue that claim 9 distinguishes over the art due to the “alert activates the particular application to update the first set of cards” language and we find that any such argument has been waived. See Hyatt v. Dudas, 551 F.3d 1307, 1313—14 (Fed. Cir. 2008) (“the Board may treat any argument [appellant failed to make for a given] ground of rejection as waived”). 14 Appeal 2016-007889 Application 14/522,422 Appellants argue that “none of the cited references disclose or teach a touch and hold gesture, let alone sending a card as a recommendation in response to the touch and hold gesture.” (App. Br. 37.) In the Final Action, the Examiner found that “gestures such as a ‘flick’ and a ‘touch and hold’ are gestures that are known to be used to execute sub-routines” and that it would have been obvious to one of ordinary skill in the art to include in the content recommendation system of Yi the gestur ing interaction capability as taught by CEO Wire/Lane since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combina tion were predictable. (Final Act. 16.) Appellants argue that “Lane paragraph 6 only generally teaches generating sub-routines in response to touch motions” and that such teachings do not disclose or teach the claim 17 limitation “(d) detecting a different second touch and hold gesture issued on a different sec ond card from the plurality of cards while the second card is dis played in the GUI, wherein the processor sends a second business identified by the second card as a recommendation to another user in response to the second touch and hold gesture.” {Id. at 37—38.) The Examiner responds by reiterating that “gestures such as a ‘flick’ and a ‘touch and hold’ are gestures that are known to be used to execute sub-routines.” (Ans. 11.) Having reviewed the references, we fail to find any description of a touch and hold gesture or of the use of any gesture to “send[] a second business identified by the second card as a recommendation to another user.” 15 Appeal 2016-007889 Application 14/522,422 We thus find that, on this record, the Examiner has not established claim 17 would have been obvious. Because we find Appellants’ argument persuasive, we reverse the Section 103 rejection of claims 17—19 and 21—23 without reaching Appellants’ other arguments concerning these claims. DECISION The rejection of claims 1—9, 11—13, 15, and 16 under 35 U.S.C. § 112(a) is affirmed. The rejection of claims 17—19 and 21—23 under 35 U.S.C. § 112(b) is affirmed. The rejection of claims 1—9, 11—13, 15—19, and 21—23 under 35 U.S.C. § 101 is reversed. The rejections of claims 1—8, 17—19, and 21—23 under 35 U.S.C. §103 are reversed. The rejection of claims 9, 11—13, 15, and 16 under 35 U.S.C. § 103 is 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). AFFIRMED5 5 Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision rejecting claims 1—9, 11—13, 15— 19, and 21-23 is affirmed. See 37 C.F.R. § 41.50(a)(1). 16 Copy with citationCopy as parenthetical citation