Ex Parte Vernal et al

Patent Trial and Appeal Board

Jan 28, 2019

14037357 (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/037,357 09/25/2013 Michael Vernal
107193 7590 01/30/2019
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
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.
19487.507.1 2149
EXAMINER
JACOB, WILLIAM J
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
docketing@kjpip.com
gjolley@kjpip.com
tmeid@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL VERNAL, YUJI HIGAKI, and
DEBORAH LIU
Appeal2017-008429
Application 14/037,357
Technology Center 3600
Before JOSEPH L. DIXON, JENNIFER L. McKEOWN, and
JAMES W. DEJMEK, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-008429
Application 14/037,357
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1-11 and 21-29. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims generally relate to a dynamically providing a third-party
checkout option. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method comprising:
receiving an engagement request, at one or more servers
of a network application from a client device, including an
indication that a user has begun a transaction using a client
application on the client device;
determining, by the one or more servers in response to the
engagement request, whether providing personal information
maintained at the network application will increase a probability
that the user completes the transaction using the client
application on the client device;
dynamically displaying, in a user interface of the client
application, a user selectable option to complete the transaction
using the personal information maintained by the one or more
servers of the network application based on a determination that
providing the personal information from the network application
will increase the probability that the user completes the
transaction using the client application on the client device; and
dynamically refraining from displaying, in the user
interface of the client application, the user selectable option to
complete the transaction using the personal information
1 Appellants identify the real party in interest as Facebook, Inc. (App. Br.
1.)
2
Appeal2017-008429
Application 14/037,357
maintained by the one or more servers of the network application
based on a determination that providing the personal information
from the network application will not increase the probability
that the user completes the transaction using the client
application on the client device.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Silverstein et al. ("Silverstein") US 2004/0093281 Al
Saccocio US 2006/0047847 Al
Donlan et al. ("Donlan") US 2014/0032294 Al
REJECTIONS
The Examiner made the following rejections:
May 13, 2004
Mar. 2, 2006
Jan.30,2014
Claims 1-11 and 21-29 stand rejected under 35 U.S.C. § 101, because
they recite non-patentable subject matter. The claimed invention is directed
to a judicial exception (i.e., an abstract idea, method of organizing human
activity, etc.) without significantly more. 2
Claims 1, 2, 4--11, and 21-29 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Donlan, in view of Saccocio.
2 We note that Appellants proffer that the invention is significantly more
based upon the determination that providing the personal information will
increase the probability that a user completes a transaction, but Appellants
have not identified a method or algorithm regarding how this determination
is made. We note that the Summary of the Claimed Subject Matter merely
identifies paragraphs which contain the same language, but the Specification
provides no underlying detail regarding the methodology of the
determination that providing the personal information will increase the
probability that a user completes a transaction. We leave it to the Examiner
to further evaluate this issue in any further prosecution on the merits.
3
Appeal2017-008429
Application 14/037,357
Claim 3 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Donlan, in view of Saccocio, and further in view of Silverstein.
ANALYSIS
35 U.S.C. § 101
According to the Specification, Appellants have identified a problem
in the prior art regarding the presentation of checkout information during an
ongoing purchase using a mobile device. (See Figure 5A-5G; Spec. ,r,r 90-
102.) Appellants further contend:
The claims are generally directed to dynamically providing an
option, on a mobile device, to use stored payment information
when the option will likely increase the likelihood of a purchase
on the mobile device. Handheld devices have become
increasingly common. Such devices enable individuals to make
purchases on network applications by utilizing a touch screen.
While these applications can increase shopping ease and allow
users to make purchases without visiting a brick and mortar store,
the checkout process can be inconvenient. Due to the limited
size of most touch screens, the user interface can become
confusing and cluttered, particularly during checkout and
payment processing - leading to more abandoned purchases.
The claimed invention provides a solution by dynamically
displaying or dynamically refraining from displaying a user's
stored personal information on a client device based on whether
providing the information will increase the probability that the
user completes the transaction using the client device. See
Dynamically Providing a Third-Party Checkout Option,
Specification, Application No. 14/037,357 (Sept. 25, 2013)
(hereinafter "Specification'') at ,r [0012].
(App. Br. 1-2.)
The claimed invention is generally relate to the variable presentation
of checkout information during an ongoing purchase using a mobile device.
4
Appeal2017-008429
Application 14/037,357
Appellants have found that users get frustrated trying to purchase
goods using mobile devices because of the amount of information users have
to input and that some users fail to complete the purchase because of these
difficulties.
While commerce applications can increase shopping ease and
allow users to make purchases without visiting a brick and mortar
store, the checkout process in many commerce applications can
be inconvenient. For instance, commerce applications typically
require a user to provide detailed payment information. In many
cases, a user may need to fill-in up to twenty information fields.
It is common for potential consumers using a commerce
checkout process to have difficulty entering payment
information, run-out of time, or question otherwise become
frustrated with the checkout process. Such frustrations often
cause potential consumers to abandon their commerce
transactions. Frustration with commerce checkout processes is
often exacerbated when using a mobile device due to the small
screen and difficulty of typing-in large amounts of information.
(Spec. ,r 6.)
Consequently, Appellants assert they have come up with the solution
that after a user has begun a transaction on a client application, Appellants
determine whether providing personal information maintained by the
network will increase the probability that the user completes the transaction
using the client application. (App. Br. 1.)
As a result of this determination regarding pre-populated information,
Appellants dynamically display the option of using the personal information
maintained on the network if that will increase the probability that the user
completes the transaction, and Appellants dynamically refrain from
displaying that user selectable option to complete the transaction using
stored personal information. (Spec. ,r 12.)
5
Appeal2017-008429
Application 14/037,357
In the Final Action, the Examiner finds claim 1 is directed to "the
fundamental economic practice of storing personal information for later use,
so as to facilitate future transactions, and selectively presenting such stored
information to a client device." (Final Act. 3.) In the Examiner's Answer,
the Examiner finds:
This is because the term "transaction" in the context of
performance by users of a client device, still connotes an
economic activity. Even if it did not, it is appreciated that types
of transactions and personal information are used in long
standing commercial activity, such as presenting stored personal
payment information to facilitate a subsequent consumer
transaction, as acknowledged in Applicant's example of page 3.
For example, it is a long standing commercial practice to offer a
customer to use preexisting or stored personal information to
consummate a subsequent purchase ( e.g., via a telephone), which
implicitly consists of a decision that offering same is
advantageous.
(Ans. 12.) The Examiner further finds "[t]he claims recite the business
method of providing personal information to complete a transaction being
performed across generic computing technology; contrary to Applicant's
assertion an improvement to computing technology (e.g., an internet-centric
improvement) is not recited." (Ans. 13.) The Examiner further finds the
claims are directed to:
[a] decision making metric to determine when it is beneficial to
change the printed matter on a GUI does not provide an
improvement to the GUI itself, as selective presentation of
information has long existed (e.g., targeted advertising to effect
a consumer transaction, buttons that selectively become
activated, etc.). Rather, the claims recite inventions directed
towards the business method of providing stored personal
information to a consumer in order to complete a transaction,
which is applicable outside of the internet.
(Ans. 14.)
6
Appeal2017-008429
Application 14/037,357
Appellants argue:
Beyond overgeneralizing the recited claim limitations of
the independent claims, the Examiner has also applied an
unrecognized category of abstract idea. The Examiner's alleged
abstract idea of, "the fundamental economic practice of storing
personal information for later use, so as to facilitate future
transactions, and selectively presenting such stored information
to a client device," ( Office Action at 3) is not a judicially
recognized abstract idea. Specifically, the Examiner has failed
to establish that the idea corresponds to a concept that the courts
have identified as abstract.
(App. Br. 13.)
We agree with Appellants that the Examiner has overgeneralized the
claimed invention and applied an unrecognized category of abstract idea.
Moreover, we find the dynamic variable display of optional information on a
display is not an abstract idea.
Appellants further contend that "the claims do not recite a long-
prevalent economic practice." (App. Br. 13.) Again, we agree with
Appellants that "the claims address the problem of mobile device users
generally being unable or unwilling to complete purchase transactions via
their mobile devices due to limited screen space and the potential for
unnecessary options or other content to confuse and frustrate users, leading
to abandoned transactions." (App. Br. 14.)
We agree with Appellants that the claimed process is more specific
than the Examiner identifies, and the Examiner has overgeneralized the
underlying purchase transaction. We further agree with Appellants that the
Examiner does not properly consider the claimed invention as a whole with
regards to
intelligently and dynamically provide the option to use stored
payment information when the option will likely increase the
7
Appeal2017-008429
Application 14/037,357
likelihood of a purchase. Furthermore, when the option to use
stored payment information will not likely increase the
likelihood of a purchase, the option may not be provided; thereby
reducing graphical interface clutter.
(Spec. ,r 12.)
The Examiner's distillation of this idea into the abstract idea of "the
fundamental economic practice of storing personal information for later use,
so as to facilitate future transactions, and selectively presenting such stored
information to a client device" fails to consider the claim as a whole. (Final
Act. 3.)
[D]escribing the claims at such a high level of abstraction and
untethered from the language of the claims all but ensures that
the exceptions to § 101 swallow the rule. See Alice [ Corp. Pty.
Ltd. v. CLS Bank Int'!, 573 U.S. 208,217 (2014)] (noting that
"we tread carefully in construing this exclusionary principle [ of
laws of nature, natural phenomena, and abstract ideas] lest it
swallow all of patent law"); cf Diamond v. Diehr, 450 U.S. 175,
189 n. 12 (1981) ( cautioning that overgeneralizing claims, "if
carried to its extreme, make[ s] all inventions unpatentable
because all inventions can be reduced to underlying principles of
nature which, once known, make their implementation
obvious").
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016) (third
and fourth alterations in original).
We agree with Appellants that, like the claims in Enfish, the claims
here are not merely directed to "the fundamental economic practice of
storing personal information for later use, so as to facilitate future
transactions, and selectively presenting such stored information to a client
device," but instead are specifically directed to "address the problem of
mobile device users generally being unable or unwilling to complete
purchase transactions via their mobile devices due to limited screen space
8
Appeal2017-008429
Application 14/037,357
and the potential for unnecessary options or other content to confuse and
frustrate users, leading to abandoned transactions." See Enfzsh, 822 F.3d at
1337. Thus, claim 1 is directed to an improvement in computer technology,
rather than the overly generalized abstract idea identified by the Examiner.
For these reasons, Appellants have persuaded us the Examiner erred
in finding claim 1 is directed to the abstract idea of "the fundamental
economic practice of storing personal information for later use, so as to
facilitate future transactions, and selectively presenting such stored
information to a client device." (Final Act. 3.) Moreover, Appellants have
persuaded us the Examiner erred in finding the claims are
drawn towards long standing commercial practice, even though
they arguable encompass more than just economic practice (e.g.,
merchant websites with data fields pre-populated with previous
entries to facilitate future purchases, telephonic operators
inquiring as to whether an account holder would like to use the
personal information they have on file, etc.).
(Ans. 3.) We, therefore, do not sustain the rejection of claim 1 as being
directed to patent-ineligible subject matter because we find the Examiner has
not met the Examiner's burden under the 2014 Interim Guidance on Patent
Subject Matter Eligibility ("2014 IEG") 3 at the time of the Final Action and
Examiner's Answer.
We also do not sustain the rejections of independent claim 23, which
recites commensurate limitations, and we do not sustain the rejections
dependent claims 2-11, 21, 22, and 24--29 for the same reasons.
Additionally, with regard to the Examiner's rejection under 35 U.S.C.
§ 101, we decide the appeal based upon the Office's 2019 Revised Patent
3 79 Fed. Reg. 74618 (Dec. 16, 2014).
9
Appeal2017-008429
Application 14/037,357
Subject Matter Eligibility Guidance
(https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf)
(see USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019)). As discussed above, we find the Examiner has
overgeneralized the finding of an abstract idea in the claimed invention. The
Examiner finds the claimed invention is directed to:
[T]he fundamental economic practice of storing personal
information for later use, so as to facilitate future transactions,
and selectively presenting such stored information to a client
device. That is to say, despite the removal of such terms as
"consumer " "purchase " "commerce " etc the claims are still ' ' ' .,
drawn towards long standing commercial practice, even though
they arguable encompass more than just economic practice (e.g.,
merchant websites with data fields pre-populated with previous
entries to facilitate future purchases, telephonic operators
inquiring as to whether an account holder would like to use the
personal information they have on file, etc.). As such, they recite
an abstract idea under Alice.
(Final Act. 3; see also Ans. 3.) The Examiner further finds:
This is because the term "transaction" in the context of
performance by users of a client device, still connotes an
economic activity. Even if it did not, it is appreciated that types
of transactions and personal information are used in long
standing commercial activity, such as presenting stored personal
payment information to facilitate a subsequent consumer
transaction, as acknowledged in Applicant's example of page 3.
For example, it is a long standing commercial practice to offer a
customer to use preexisting or stored personal information to
consummate a subsequent purchase ( e.g., via a telephone), which
implicitly consists of a decision that offering same is
advantageous.
(Ans. 12.)
Although we agree with the Examiner that the disclosed method may
be used in commerce, we find the claimed invention to be directed to a
10
Appeal2017-008429
Application 14/037,357
method of variable presentation of a display option which allows the user to
select the option to use pre-stored personal information data if the system
has dynamically displayed the user selectable option "based on a
determination that providing the personal information from the network
application will increase the probability that the user completes the
transaction using the client application on the client device." The Examiner
relies upon the fact that the claim recites a "transaction" and an "engagement
request" to thereby overgeneralize or mischaracterizes the remainder of the
substantive claim language regarding the "dynamic display" and "dynamic
refraining" from displaying on the user interface.
The Examiner attempts to identify that the commerce transaction is
well-known by generally identifying page 3 of the Specification in the
background section discussing "commerce applications" integrated with
third parties which identifies users being redirected to the third-party
different website for completion of the transaction. (Ans. 12.) The
Specification also identifies the confusion in these third-party transactions
and the inconvenience of providing the additional button on the mobile
commerce application in which space is a premium on the display. (Spec.
,r,r 8-10.)
The Examiner finds that "the claims recite inventions directed towards
the business method of providing stored personal information to a consumer
in order to complete a transaction, which is applicable outside of the
internet." (Ans. 14.) Additionally, the Examiner finds:
As originally discussed with Applicant, the initial design of a
commercial GUI/display includes a decision metric regarding the
preferred content (e.g., for effecting the most sales, etc.)
regarding the masses, based on some of the factors considered in
11
Appeal2017-008429
Application 14/037,357
this invention. The difference in considering such factors, and
making a decision on a case-by-case basis fails to offer
significantly more, because providing personal information on a
case-by case basis after acquiring information from the consumer
is also well-known, routine, and conventional (See, e.g., Donlan,
providing personalized offers to consumers based on the similar
factors).
(Ans. 14.) The Examiner generally identifies the Donlan reference, which is
applied in the obviousness rejection for presenting personalized offers to
consumers, but the personalized offer may be directed to a different
commercial transaction rather than continuing with the transaction that has
already begun and does not specifically teach or suggest dynamically
displaying or refraining from displaying "a user selectable option to
complete the transaction [ which has begun] using the personal information
maintained by the one or more servers of the network application."
As a result, we find the Examiner's factual findings regarding the
underlying abstract idea to overgeneralize the claimed invention under the
patent eligibility guidelines at the time of the Examiner's Answer (2014
IEG) and this same overgeneralized abstract idea similarly does not meet the
Examiner's requisite burden for analysis under the 2019 Revised Patent
Subject Matter Eligibility Guidance. As a result, we cannot sustain the
Examiner's conclusion of a lack of patent-eligible subject matter based upon
the Examiner's findings in the Final Action and the Examiner's Answer.
35 U.S.C. § 103
With respect to independent claims 1 and 23, Appellants set forth
arguments to the claims together. Therefore, we select independent claim 1
12
Appeal2017-008429
Application 14/037,357
as the illustrative claim for the group and will address Appellants' arguments
thereto. (App. Br. 18-27 .)
With respect to dependent claims 2-11, 21, 22, and 24--29, Appellants
rely upon the arguments made with respect to independent claim 1 and 23,
and Appellants do set forth separate arguments with regards to these
dependent claims. (App. Br. 28.) We need not reach these additional
arguments because we find the Examiner's obviousness rejection to be
deficient with respect to independent claims 1 and 23.
With respect to the obviousness rejection of illustrative independent
claim 1, Appellants argue that the prior art references do not teach or suggest
the specific sequence of steps after a transaction has begun. Appellants
further argue that the prior art references do not teach or suggest the
limitation of in response to determining in increase in the likelihood once the
transaction has begun, displaying the option of providing the personal
information or refraining from displaying the option. (App. Br. 22.)
Appellants further contend that "Donlan does not consider that determining
whether providing personal information will increase the probability that a
user will complete a transaction using the client application on the client
device is performed in response to the system receiving an indication that
the user has already begun a transaction." (App. Br. 22.) Appellants further
argue that the Examiner's reliance upon the determination in the Donlan
reference
misses the mark entirely because it is not predicated on a user
having already begun a transaction as recited in Appellant's
claims. The same can be said for each subsequent limitation, i.e.,
dynamically displaying or dynamically refraining from
displaying the user selectable option to complete the transaction
13
Appeal2017-008429
Application 14/037,357
since each of these limitations are also conditioned on the user
having already begun a transaction.
(App. Br. 23.)
The Examiner finds that Donlan teaches selectively providing a
targeted offer (e.g., coupon, discount, etc.) to the consumer in effort to
complete a purchase transaction (i.e., increase the likelihood that the
consumer will complete the purchase) whereas the instant invention provides
"personal information" to the consumer in effort to complete the transaction.
(Ans. 14.) The Examiner further finds that the Donlan reference "teaches
dynamically presenting said offer where deemed likely to induce a purchase,
which contemplates refraining from presenting a particular offer where
otherwise deemed, and which includes an embodiment wherein the offer is
made prior to the transaction's completion." (Ans. 15 (citations omitted).)
Appellants contend that "Donlan fails to teach or suggest determining
whether providing personal information-as opposed to the offer/ coupon in
Donlan-will increase a probability that the user completes the transaction."
(Reply Br. 6.)
We agree with the Appellants that the Donlan reference "does not
consider that determining whether providing personal information will
increase the probability that a user will complete a transaction using the
client application on the client device is performed in response to the system
receiving an indication that the user has already begun a transaction." (App.
Br. 22.)
The Examiner relies upon the Saccocio reference for providing
personal information from a database using "Quick Checkout" using a
"passport and wallet." (Final Act. 7 (citing Saccocio ,r 55).) The Examiner
further finds that an advantage for using the quick checkout is to "drastically
14
Appeal2017-008429
Application 14/037,357
reduce the amount of work required to fill out forms on web pages." (Id.
(citing Saccocio ,r 22).) The Examiner finally concludes that it "would have
been obvious to an ordinary artisan to modify the method of Donlan to
provide personal information in lieu of an offer, so as to reduce the amount
of work required to complete the transaction, and to further encourage the
transaction." (Id.)
The Examiner further finds that the Saccocio reference teaches the
provisioning of prior stored personal payment information at checkout to
complete an online transaction. (Ans. 15 (citing Saccocio, Abstract).)
Appellants contend that although
Saccocio does mention the idea of "personal information" in one
sense, but storing the personal passport or wallet information for
the purpose of faster field population in Saccocio is nonetheless
fundamentally different from the determining whether providing
personal information will increase a probability that a user will
complete a transaction recited in independent claim 1. Indeed,
there is a predictive element involved in determining whether
providing personal information will increase a probability that a
user will complete a transaction that is missing from Saccocio
which only teaches that providing personal information to more
quickly populate data fields may "assist in the completion of an
online transaction." Id. at [0055].
(Reply Br. 6-7.)
We agree with Appellants that the Saccocio reference discloses the
use of stored personal information, but the Examiner has not identified how
or where the Saccocio reference teaches or suggests the predictive element
involved in determining whether providing the personal information will
increase the probability that the user will complete the transaction. (Reply
Br. 6.) As a result, the Examiner has not shown all the claimed elements in
the combination of the Donlan reference and the Saccocio reference.
15
Appeal2017-008429
Application 14/037,357
We find the Examiner's combination seeks to replace the offer of the
Donlan reference with the use of personal information in the Saccocio
reference, but the claims set forth presenting or refraining from presenting
the option to the user to use the personal information. (Final Act. 7.) We
find the Examiner does not squarely address this intermediate feature of
"determining ... whether providing personal information ... will increase a
probability that the user completes the transaction." (Reply Br. 8.)
CONCLUSIONS
The Examiner erred in rejecting claims 1-11 and 21-29 based upon a
lack of patent-eligible subject matter under 35 U.S.C. § 101, and the
Examiner erred in rejecting claims 1-11 and 21-29 based upon obviousness
under 35 U.S.C. § 103.
DECISION
For the above reasons, we reverse the Examiner's rejections of claims
1-11 and 21-29 under 35 U.S.C. §§ 101 and 103.
REVERSED
16