Ex Parte Tedjamulia et al

Patent Trials and Appeals Board

Jul 1, 2019

13184001 - (D) (P.T.A.B. Jul. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/184,001 07/15/2011
160816 7590 07/03/2019
Terrile, Cannatti & Chambers, LLP - Dell
P.O. Box 203518
Austin, TX 78720
FIRST NAMED INVENTOR
Steven Ted jamulia
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.
DC-19199 9487
EXAMINER
CASEY, ALEXIS M
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
07/03/2019 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):
tmunoz@tcciplaw.com
USPTO@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN TEDJAMULIA, MANISH C. MEHTA,
RONALD VINCENT ROSE, RODNEY T. WHISNANT, and
HENRY HAITIAN CHEN
Appeal2017-009094
Application 13/184,001 1
Technology Center 3600
Before LARRY J. HUME, JASON J. CHUNG, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-20, which constitute all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Dell Products L.P. as the real party in interest. App. Br. 1.
Appeal2017-009094
Application 13/184,001
BACKGROUND
The Claimed Invention
The invention relates to "managing social commerce within a social media
environment," and specifically, to sharing user data in affiliate networks.
Spec. ,r,r 2-3. Claims 1, 7, and 13 are independent. Claim 1, reproduced below, is
illustrative of the invention and the subject matter in dispute:
1. A computer-implementable method for automating the
administration of social commerce, comprising:
processing, via an information handling system, social
commerce activity data to generate user activity data, the social
commerce activity data corresponding to a plurality of users of a
social commerce site, the social commerce site operating within a
social media environment, the social commerce site comprising a
social commerce storefront embedded within a social media site, the
social commerce site associated with an affiliate, the affiliate
associated with a provider of a set of available products, the social
media site comprising social commerce content associated with the at
least some of the set of available products;
processing, via the information handling system, the user
activity data to generate social commerce analysis data corresponding
to the plurality of users use of the social commerce site; and
providing, via the information handling system, the social
commerce analysis data to the affiliate via a user interface, the user
interface presenting the social commerce analysis data associated with
the social commerce site associated with the affiliate, the user
interface comprising a portion reminding the affiliate to generate
social commerce content.
App. Br. 8 (Claims Appendix) ( emphases added).
The Re} ections on Appeal
Claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter. Final Act. 2--4; Ans. 2---6.
2
Appeal2017-009094
Application 13/184,001
Claims 1-20 are rejected under 35 U.S.C. § I03(a) as being unpatentable
over Kumar et al. (US 7,797,197 B2; iss. Sep. 14, 2010) ("Kumar"), Smith et al.
(US 2002/0010625 Al; pub. Jan. 24, 2002) ("Smith"), and Ventilla et al. (US
2011/0106746 Al; pub. May 5, 2011) ("Ventilla").
DISCUSSION
We have reviewed the Examiner's rejection in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could have made
but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv). On the record before us, we are not persuaded the Examiner has
erred. We adopt as our own the findings and reasons set forth in the rejections
from which the appeal is taken and in the Examiner's Answer, and provide the
following for highlighting and emphasis.
Rejection Under 35 U.S. C. § 1 OJ
The Examiner determined that the claims constitute ineligible subject matter
because they recite "social commerce data analysis[, which is] a method of
organizing human activities," and they do not recite significantly more than the
abstract idea. Final Act. 3--4 (citing Alice Corp. Pty. Ltd. v. CLS Bank lnt'l, 134 S.
Ct. 2347, 2355 (2014) (describing two-step framework "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts")). The Examiner further
noted that the claims "do not purport to improve the functioning of [a] computer
itself nor do they effect an improvement in any other technology or technical
field," but rather, simply recite elements that "perform[] their activities according
to their generic functionalities which are well-understood, routine, and
conventional." Final Act. 3--4.
3
Appeal2017-009094
Application 13/184,001
Appellants argue the Examiner erred because the "Examiner ignore[ d]
specific details of the claim elements," and that the claims are patent eligible
because they recite a "technological improvement" like the claims found patent-
eligible in Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016) and inMcRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1312 (Fed. Cir. 2016). App. Br. 5.
After the Brief2 was filed and Answer mailed in this case, the USPTO
published "Revised Subject Matter Eligibility Guidance" synthesizing case law and
providing agency instruction on the application of§ 101. See USPTO's January 7,
2019, 2019 Revised Patent Subject Matter Eligibility Guidance 84 Fed. Reg. 50
(Jan. 7, 2019) ("Guidance"). Under the Guidance, we must look to whether the
claim recites:
(1) 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) ("Step 2A,
Prong One") 3; and
(2) additional elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a}-(c), (e}-(h)) ("Step 2A, Prong Two").
See 84 Fed. Reg. at 54--55.
2 No Reply Brief was filed to rebut the Examiner's factual findings and legal
conclusions in the Answer.
3 The Guidance refers to "Step One" as determining whether the claimed subject
matter falls within the four statutory categories identified by 35 U.S.C. § 101:
process, machine, manufacture, or composition of matter. This step is not at issue
here, as Appellants' claims recite systems (machines) and methods (processes).
4
Appeal2017-009094
Application 13/184,001
Only if a claim recites a judicial exception and 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 id. at 56 ( collectively "Step 2B").
We begin our de nova review with Appellants' claim 1. We agree with the
Examiner's determination that claim 1 recites an abstract idea, namely, a
fundamental economic practice. See Guidance at Section III ( describing Step 2A,
Prong One); see supra at 4. The claim recites a fundamental economic practice
because the steps of "generat[ing] user activity data" on a "social commerce site,"
"processing" the data to generate information on "users' use of the social
commerce site," and "providing" such data to an "affiliate" all constitute basic
aspects of an e-commerce affiliate network. Final Act. 3. Indeed, the preamble of
the claim expressly recites that the method therein is "for automating the
administration of social commerce," and the Specification provides that "[o]ne
known aspect of electronic commerce is affiliate networks, which allow online
merchants to reach a larger audience" through sharing customer activity and sales
information. App. Br. 8 (emphasis added); Spec. ,r 4 (emphasis added). Sharing
customer information in an affiliate network involves collecting and providing that
information to affiliates, which is precisely what the claim's recited "processing,"
"generating," and "providing" steps do.
5
Appeal2017-009094
Application 13/184,001
Accordingly, we conclude claim 1 recites a fundamental economic practice,
which is one of certain methods of organizing human activity recognized as
abstract under the Guidance, and thus is an abstract idea.
Appellants do not contest the Examiner's determination that claim 1 is
directed to a fundamental economic practice, but argue that the invention
constitutes an "improvement" to technology. App. Br. 4--5. Under the Guidelines
Step 2A, Prong 2, if the claim "as a whole" integrates the abstract idea into a
"practical application," it is patent eligible. Improving the functioning of a
computer can reflect integration of an idea into a "practical application."
Guidelines Sect. III. Appellants argue that, like the claims in Bascom and McRO,
Appellants' invention improves a technology "by automating specific computer
processing using specific types of rules." App. Br. 4. We, however, disagree.
Appellants do not explain, and we do not discern, how the claimed invention
is sufficiently analogous to the claims in McRO and Bascom. 4 The claims in
McRO recited a "specific ... improvement in computer animation" using
"unconventional rules that relate[ d] sub-sequences of phonemes, timings, and
morph weight sets." McRO, 837 F.3d at 1302---03, 1307---08, 1314--15. In McRO,
"the incorporation of the claimed rules, not the use of the computer," improved an
existing technological process. Id. at 1314. In contrast to the claims in McRO,
Appellants' claim 1 does not improve an existing technological process. See Alice,
134 S. Ct. at 2358 (explaining that "the claims in Diehr were patent eligible
because they improved an existing technological process"). Instead, claim 1
concerns "automating the administration of social commerce." App. Br. 8;
Abstract. For the same reasons, we do not agree that Appellants' claims are
4 Appellants' entire argument regarding the § 101 rejection consists of little more
than a rote recitation of the holdings of several cases. App. Br. 4--5.
6
Appeal2017-009094
Application 13/184,001
analogous to the claims at issue in Bascom, which (like the claims in McRO) were
directed to technical improvements in a computer or network. See Bascom, 827
F.3d at 1350 ("hamess[ing] this technical feature of network technology in a
filtering system" to customize content filtering); see also McRO, 837 F.3d at 1315
("improvement in computer animation," for "achieving automated lip-
synchronization").
Appellants also do not direct us to any evidence that any of the claimed
"processing" steps correspond to unconventional rules, transform or reduce an
element to a different state or thing, or otherwise integrate the idea into a practical
application. See App. Br. 3-5. Rather, claim 1 recites a series of steps in which
"social commerce activity data" is "process[ ed]" to generate other "data," which
ultimately is "provid[ed] ... to [an] affiliate." App. Br. 8. Reciting a result-
oriented solution that lacks any details as to how the computer performed the
modifications is the equivalent of the words "apply it." Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341--42 (Fed. Cir. 2017) (citing
Elec. Power Grp., LLC, 830 F.3d 1350, 1356 (Fed. Cir. 2016) (cautioning against
claims "so result focused, so functional, as to effectively cover any solution to an
identified problem")); see also CyberSource v. Retail Decisions, Inc., 654 F.3d
1366, 1375 (Fed. Cir. 2011) (mere data gathering does not make a claim patent-
eligible ). The data gathering and "processing" steps in claim 1 do not add
meaningfully to the recited fundamental economic practice.
Finally, under the Guidance we must look to whether the claims include any
"additional limitation that is not well-understood, routine [or] conventional"
(Guidance Step 2B). The "question of whether a claim element or combination of
elements is well-understood, routine and conventional to a skilled artisan in the
relevant field is a question of fact." Berkheimer v. HP Inc., 881 F.3d 1360, 1368
7
Appeal2017-009094
Application 13/184,001
(Fed. Cir. 2018); see also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d. 1314, 1325 (Fed. Cir. 2016) (holding that patent eligibility inquiry may
contain underlying issues of fact).
Appellants do not argue, and we do not discern, any additional element that
is not well-understood, routine [or] conventional. As evidence of the conventional
nature of the recited "information handling system" and "user interface" in method
claim 1 · "processor" "data bus" and "medium" in system claim 7· and "user
' ' ' '
interface" in medium claim 13, we note, for example, the Specification discloses:
[0033] A method and system are disclosed for managing social
commerce within a social media environment. For purposes of this
disclosure, an information handling system may include any
instrumentality or aggregate of instrumentalities operable to compute,
classify, process, transmit, receive, retrieve, originate, switch, store,
display, manifest, detect, record, reproduce, handle, or utilize any
form of information, intelligence, or data for business, scientific,
control, or other purposes. For example, an information handling
system may be a personal computer, a network storage device, or any
other suitable device and may vary in size, shape, performance,
functionality, and price. The information handling system may include
random access memory (RAM), one or more processing resources
such as a central processing unit (CPU) or hardware or software
control logic, ROM, and/or other types of nonvolatile memory.
Additional components of the information handling system may
include one or more disk drives, one or more network ports for
communicating with external devices as well as various input and
output (I/0) devices, such as a keyboard, a mouse, and a video display.
The information handling system may also include one or more buses
operable to transmit communications between the various hardware
components.
[0034] Figure 1 is a generalized illustration of an information
handling system 100 that can be used to implement the system and
method of the present invention. The information handling system 100
includes a processor (e.g., central processor unit or "CPU") 102,
input/output (I/0) devices 104, such as a display, a keyboard, a
mouse, and associated controllers, a hard drive or disk storage 106,
8
Appeal2017-009094
Application 13/184,001
and various other subsystems 108. In various embodiments, the
information handling system I 00 also includes network port 110
operable to connect to a network 140, which is likewise accessible by
a service provider server 142. The information handling system 100
likewise includes system memory 112, which is interconnected to the
foregoing via one or more buses 114. System memory 112 further
comprises operating system (OS) 116 ....
Spec. ,r,r 33, 34.
Thus, because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations may be
broadly but reasonably construed as reciting conventional computer components
and techniques, particularly in light of Appellants' Specification, as quoted above. 5
See also Ans. 4 ( observing that the computer-related elements perform "in a
manner routinely and conventionally expected of these elements," and that a
computing device can "routinely generate, process, transmit, and display
information.").
Moreover, "automation" or any increase in processing speed in the claimed
method ( as compared to without using computers) comes from the capabilities of
the generic computer components, and not the recited process itself. See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016)
(citing Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed.
Cir. 2012) ("[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of the
claimed subject matter.")); see also Intellectual Ventures I LLC v. Erie Indemnity
Co., 711 F. App'x 1012, 1017 (Fed. Cir. 2017) (unpublished) ("Though the claims
5 Claim terms are given their broadest reasonable interpretation, as understood by
those of ordinary skill in the art in light of the Specification. In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997).
9
Appeal2017-009094
Application 13/184,001
purport to accelerate the process of finding errant files and to reduce error, we have
held that speed and accuracy increases stemming from the ordinary capabilities of
a general-purpose computer 'do[] not materially alter the patent eligibility of the
claimed subject matter.'"). Like the claims in Fair Warning, the focus of
Appellants' claims are not on an improvement in computer processors as tools, but
on "automating social commerce" that uses generic computing components as
tools. See FairWarning, 839 F.3d at 1095 (citations and quotation marks omitted).
Accordingly, we conclude the Examiner did not err in concluding that the
claims (all of which were argued together, see 37 C.F.R. § 4I.37(c)(l)(iv))
constitute ineligible subject matter. We, therefore, sustain the rejection of claims
1-20 under 35 U.S.C. § 101.
Rejection Under 35 U.S. C. § 103
Appellants argue that the Examiner erred in finding claim 1 obvious,
because "nowhere within Kumar is there any is there any disclosure or suggestion
of processing social commerce activity data to generate user activity data which
corresponds to a plurality of users of a social commerce site where the social
commerce site operates within a social media environment."6 App. Br. 6
( emphasis added). Appellants further argue, "nowhere within Kumar nor Smith is
there any disclosure of suggestion of providing the social commerce analysis data
to the affiliate via a user interface, the user interface presenting the social
commerce analysis data associated with the social commerce site associated with
the affiliate, the user interface comprising a portion reminding the affiliate to
generate social commerce content." Id.
6 Appellants argue all claims together as a group, and we choose claim 1 as
representative. 37 C.F.R. § 4I.37(c)(l)(iv).
10
Appeal2017-009094
Application 13/184,001
Appellants' arguments, however, do not persuade us of error because they
fail to take account of the combination of references relied upon by the Examiner.
The Examiner's rejection cites the combination of Kumar, Smith, and Ventilla.
Final Act. 4--7. Specifically, for example, the Examiner finds "Ventilla discloses
social commerce sites comprise commerce storefronts embedded within social
media sits, where each social commerce storefront includes a catalog of at least
some of the set of purchasable products." Id. The Examiner further finds that one
of ordinary skill would have modified the combination of Kumar and Smith, in
view of Ventilla, to "include social commerce sites" embedded within social media
sites, increasing "user affinity for expanded and detailed data analysis ... while
automating compensation to merchants." Id. at 7. Appellants' arguments only
allege deficiencies in Kumar and Smith individually ( and make no mention of
Ventilla) and, therefore, are insufficient to demonstrate error. In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be
established by attacking references individually where the rejection is based upon
the teachings of a combination of references.").
Accordingly, we sustain the Examiner's rejection of claims 1-20 under
35 U.S.C. § 103(a) as unpatentable over Kumar, Smith, and Ventilla.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
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). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
11