Ex Parte Warman et al

Patent Trial and Appeal Board

Dec 19, 2016

13237900 (P.T.A.B. Dec. 19, 2016)

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.
13/237,900 09/20/2011 PAUL WARMAN SI-11-010 7656
26381 7590 12/21/2016
IP Authority, LLC
Ramraj Soundararajan
7432 Alban Station Blvd, Suite B250
Springfield, VA 22150
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
ram@ip-authority.com
brandi@ip-authority.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL WARMAN and DIANE AYRES
Appeal 2014-009128
Application 13/237,9001
Technology Center 3600
Before HUBERT C. LORIN, JAMES A. WORTH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul Warman et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1—18. We have jurisdiction under 35
U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION.
1 The Appellants identify Paul Warman and Diane Ayres as the real parties
in interest. App. Br. 1.
Appeal 2014-009128
Application 13/237,900
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system comprising a server with a processor and storage,
said storage storing computer readable program code that is
executed by the processor to implement a caregiving network
on the server, said storage comprising:
computer readable program code executed by the
processor to receive a request to create a social network
account;
computer readable program code executed by the
processor to receive at least one message comprising
information relating to an owner of the social network account;
computer readable program code executed by the
processor to create the social network account with a profile
comprising the information relating to the owner of the social
network account, said profile based on completing both a
caregiver profile and a care recipient profile;
computer readable program code executed by the
processor to transmit from the server a message acknowledging
the creation of the social network account;
wherein the social network account is both a caregiver
account and a care recipient account, said caregiver account
based on said completed caregiver profile and said care
recipient based on said care recipient profile;
wherein the caregiver account provides a first gateway
for the owner of social network account to provide care for at
least one care recipient;
wherein the care recipient account provides a second
gateway for the owner of the social network account to receive
care from at least one caregiver.
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Appeal 2014-009128
Application 13/237,900
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Holzberg US 2010/0153287 A1 June 17, 2010
Leverant US 2012/0095846 A1 Apr. 19, 2012
Lotsa Helping Hands, http://www.lotsahelpinghands.com/ (last
visited Sept. 20, 2011) (hereinafter “Lotsa Helping Hands”).
The following rejection is before us for review:
1. Claims 1—18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Holzberg, Lotsa Helping Hands, and Leverant.
ISSUE
Did the Examiner err in rejecting claims 1—18 under 35 U.S.C.
§ 103(a) as being unpatentable over Holzberg, Lotsa Helping Hands, and
Leverant?
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
All the claims require an account associated with both caregivers and
care recipients. See App. Br., Claims App’x. (independent claims 1 and 9
(“the account is both a caregiver account and a care recipient account”) and
independent claim 16 (“the account for the first user is linked to a plurality
of care recipient accounts of a plurality of second users, and the account for
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Appeal 2014-009128
Application 13/237,900
the first user is linked to a plurality of caregiver accounts of a plurality of
third users.”))
The Examiner takes the position that said limitation is disclosed in the
Abstract and paras. 27—33 of Holzberg. Final Act. 4. The Appellants
disagree. See App. Br. 7—13. The Appellants have the better argument.
The Abstract of Holzberg states that the “[Holzberg’s] system . . .
facilitates the building of an online community and social media network,
using templates to help patients, caregivers, or supporters.” Paragraphs 27—
32 list various groups who are “enable[d]... to view and enter data, as the
patient permits, via patient ‘blogs’.” Holzberg, para. 26. These include
patients and caregivers. Paragraph 33 discloses that “[cjaregivers will be
invited to access a patient's site and add their own thoughts and comments.
They may also be required to input information on behalf of the patient.”
Holzberg’s disclosure suggests only a patient account (e.g., patient
blog; patient site), not both a caregiver account and a care recipient account.
We agree with the Appellants that “in Holzberg, there is NO disclosure for
the Patient to assume the role of a Caregiver, or for the Caregiver to assume
the role of a Patient.” App. Br. 15.
For the foregoing reason, a prima facie case of obviousness has not
been made out in the first instance by a preponderance of the evidence.
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Appeal 2014-009128
Application 13/237,900
NEW GROUND OF REJECTION
Claims 1—18 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
Taking claim 1 as representative of the claims on appeal, the claimed
subject matter is directed to social networking. Social networking is a
fundamental building block of human ingenuity. As such it is an abstract
idea.
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. (alteration in original) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)).
We see nothing in the subject matter claimed that transforms the
abstract idea of social networking into an inventive concept.
The system of claim 1 sets out to create a social network account
based on a profile to provide the owner with gateways.
Claim 1 sets out specifics as to the type of information contained in
the profile and the intended use for the gateways that add little to patentably
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Appeal 2014-009128
Application 13/237,900
transform the social networking abstract idea. The profile as claimed
comprises “information relating to the owner of the social network
account” and is “based on completing both a caregiver profile and a care
recipient profile.” Using this specific type of information allows for a social
network account to be created that is both a caregiver account and a care
recipient account, said accounts being based on the respective caregiver and
care recipient profiles. Using this specific type of information further allows
for the presence of gateways, a first and second gateway — so that the owner
of the social network account can provide and receive care for at least one
care recipient and from at least one caregiver, respectively. Thus, claim 1
describes a system whereby specific types of information are used to fashion
a social network relationship between a social network account owner, a
care recipient, and a caregiver. The system of claim 1 is a practical
application for social networking in the field of caregiving. However, this is
insufficient to transform the abstract idea of social networking into an
inventive concept to ensure that in practice the system amounts to
significantly more than to be on social networking itself. Cf. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011) (“The
Court [Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the
recitation of a practical application for the calculation could alone make the
invention patentable.”).
We also note that claim 1 calls for the system to be comprised of “a
server with a processor and storage, said storage storing computer readable
program code that is executed by the processor to implement a caregiving
network on the server.” But any general-purpose computer available at the
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Application 13/237,900
time the application was filed would have satisfied this. The Specification
supports that view. See Spec., 18:15 — 19:11. “[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea ‘while adding the words
“apply if” is not enough for patent eligibility.” Alice, 134 S. Ct. at 2358.
The same is true for messages, accounts, profiles, and gateways, all of which
are convention elements of any social networking system available at the
time the application was filed.
For the foregoing reasons, we find that claim 1 covers claimed subject
matter that is judicially-excepted from patent eligibility under §101. The
other independent claims — article claim 9 and system claim 16 parallel
claim 1 — similarly cover claimed subject matter that is judicially-excepted
from patent eligibility under § 101. The dependent claims describe various
social networking schemes which do little to patentably transform the
abstract idea.
Therefore, we enter a new ground of rejection of claims 1—18 under
35U.S.C. § 101.
For the foregoing reasons, the rejection is reversed, but the claims are
newly rejected under §101.
CONCLUSIONS
The rejection of claims 1—18 under 35 U.S.C. § 103(a) as being
unpatentable over Holzberg, Lotsa Helping Hands, and Leverant is reversed.
Claims 1—18 are newly rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
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Appeal 2014-009128
Application 13/237,900
DECISION
The decision of the Examiner to reject claims 1—18 is reversed.
Claims 1—18 are newly rejected.
NEW GROUND
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
REVERSED: 37 C.F.R, $ 41.50(b)
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