Ex Parte Whale

Patent Trial and Appeal Board

Jan 19, 2018

12767771 (P.T.A.B. Jan. 19, 2018)

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.
12/767,771 04/26/2010 Peter WHALE QC093163 4315
Muncy, Geissler, Olds & Lowe, P.C./QUALCOMM
4000 Legato Road, Suite 310
Fairfax, VA 22033
EXAMINER
LI, SUN M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/23/2018 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):
meo.docket@mg-ip.com
meo@mg-ip.com
ocpat_uspto@qualcomm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER WHALE
Appeal 2016-002633
Application 12/767,771
Technology Center 3600
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Peter Whale (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1—93, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed August 7, 2015) and Reply Brief (“Reply Br.,” filed January 5,
2016), and the Examiner’s Answer (“Ans.,” mailed November 9, 2015), and
Final Action (“Final Act.,” mailed February 25, 2015).
Appeal 2016-002633
Application 12/767,771
The Appellant invented a way of generating recommendations to users
of a mobile device. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method performed by a user device configured to
recommend an action, comprising:
[1] determining, by the user device, a human context
corresponding to a user of the user device,
wherein the human context includes a current,
time-sensitive mood or condition of the user;
[2] generating, by the user device, a set of status update
messages
descriptive of the current, time-sensitive mood or
condition of the user
and
based upon a profile of the user;
[3] proposing, by the user device, to the user a recommended
action of
posting one or more status update messages from the set
of status update messages to a social network of the user;
[4] receiving, by the user device, a response
that authorizes a given status update message
associated with the set of status update messages
to be posted to the social network;
and
[5] communicating, by the user device, the authorized status
update message to the social network based upon the response.
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Appeal 2016-002633
Application 12/767,771
The Examiner relies upon the following prior art:
Jokinen US 2002/0095333 A1
Gabai US 6,773,344 B1
Azzaro US 2008/0141301 A1
Jin US 2010/0217645 A1
July 18,2002
Aug. 10, 2004
June 12, 2008
Aug. 26, 2010
Claims 21—23, 60—62, 90, and 91 stand rejected under 35 U.S.C.
§ 112(b) as failing to particularly point out and distinctly claim the
invention.
Claims 1—93 stand rejected under 35 U.S.C. § 101 as directed to non—
statutory subject matter.
Claims 1-6, 9-13, 16-29, 32-36, 39-A6, 50-54, 57-68, 72-76, 79-85,
87, and 90-93 stand rejected under 35 U.S.C. § 102(e) as anticipated by Jin.
Claims 7, 8, 14, 15, 30, 31, 37, 38, 47, 48, 55, 56, 69, 70, 77, 78, and 86
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Jin and Gabai.
Claims 49 and 71 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jin and Jokinen.
Claims 88 and 89 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jin and Azzaro.
ISSUES
The issues of indefiniteness matter turn primarily on whether the
Specification describes examples of how the means-plus-fimction limitations
are implemented.
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Application 12/767,771
The issues of eligible subject matter turn primarily on whether the claims
describe more than abstract conceptual advice as to what a computer is to do
without reciting how to do it.
The issues of novelty turn primarily on whether the art describes the
claims.
The issues of obviousness turn primarily on the anticipation issues.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Jin
01. Jin is directed to advertising to users of a social network. Jin
para. 1.
02. Jin describes advertising with an engagement interface to
members of a social network.
A social network receives a plurality of
engagement interfaces to be presented to members
of a social network, where each engagement
interface has a call to action and a link to perform
the action within the social network from within
the engagement interface. Then, responsive to a
request for a web page from a member of the
social network via a member device, the social
network selects an engagement interface to present
to the member and sends a webpage comprising
the selected engagement interface to the member
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Application 12/767,771
device. The engagement interface is operable to
modify at least one object within the social
network in response to a user selection of its call to
action. If the user selects the call to action, the
social network modifies one or more objects in the
social network that are associated with the
engagement interface according to the particular
user selection of the link.
Jin para. 5.
03. Jin describes an advertiser creating a page on the social network
that describes a product or brand that the advertiser wishes to
promote. In generating the engagement interface, the advertiser
may ask the member to “become a fan” of the page created for
that specific product. The member would only need to click once
on the request to “become a fan” of the advertised product. For
example, in Figure 4C, a television network may want to advertise
a television show by making a page for the television show on the
social network, where fans can receive updates and content from
the cast and crew. An engagement interface 425 for the television
show would include a call to action 430 for the member to
“become a fan” of the television show and a link 440 to perform
the action of becoming a fan. As Figure 4D illustrates, the
selection of the link modifies the associated objects and causes the
engagement interface 425 for the television show to refresh with
an indication 445 that the action was successful. Jin para. 53.
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Application 12/767,771
ANALYSIS
Claims 21—23, 60—62, 90, and 91 rejected under 35 U.S.C. § 112(b) as
failing to particularly point out and distinctly claim the invention
The Examiner rejected claims 21—23 and 60—62 based on lack of
supporting structure in the Specification for means-plus-fimction limitations
in the claims. Final Act. 3^4. We are persuaded by Appellant’s argument
that the Specification does describe sufficient structure. App. Br. 11—12.
Appellant cites Specification paras. 65—75. App. Br. 4. The Specification,
at paras. 67—69, describes examples of generating status update messages,
proposing to the user a recommended action of posting one or more status
update messages, and receiving a response in the form of posing contextual
status questions and proposing such actions based on the user’s responses.
Thus, the means for performing the recited functions are covered by such
means and their equivalents.
The Examiner rejected claims 90 and 91 based on lack of clarity as to
the scope of a single status update message. Final Act. 5. We are persuaded
by Appellant’s argument that the scope is clear. App. Br. 10. The Examiner
responded that it is unclear whether the limitation refers to one status update
or one updated need/action or one updated message. Ans. 10. The plain
meaning is a single status update message. Claim 91 is similar, but refers to
plural messages instead of a single message.
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Appeal 2016-002633
Application 12/767,771
Claims 1—93 rejected under 35 U.S.C. § 101 as directed to non—statutory
subject matter
Method claim 1 recites receiving data representing mood and generating
descriptive and prescriptive information as to that mood, and receiving and
posting descriptive data to some network. Thus, claim 1 recites receiving,
generating, selecting, and posting data. None of the limitations recite
implementation details for any of these steps, but instead recite functional
results to be achieved by any and all possible means. Data reception,
generation, selection, and posting are all generic, conventional data
processing operations to the point they are themselves concepts awaiting
implementation details. The sequence of data reception-generation-
selection-posting is equally generic and conventional. The ordering of the
steps is therefore ordinary and conventional. The remaining claims merely
describe parameters and content for the posted data, with no implementation
details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
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that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to recommending an action and transmitting transaction offers.
Final Act. 13.
While the Court in Alice made a direct determination as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in posting a message. The Specification at 1 recites
that the invention relates to generating recommendations. Thus, all this
evidence shows that claim 1 is directed to posting messages, i.e., advertising.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappos,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of
advertising is a fundamental business practice long prevalent in our system
of commerce. The use of advertising is also a building block of marketing
and promotion. Thus, advertising, like hedging, is an “abstract idea” beyond
the scope of § 101. See Alice, 134 S. Ct. at 2356.
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As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
risk hedging in Bilski and the concept of advertising at issue here. Both are
squarely within the realm of “abstract ideas” as the Court has used that term.
See Alice, 134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent-ineligible concept”); see also In re TLI
Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
As such, claim 1 is directed to the abstract idea of retrieving, analyzing, and
transmitting data.
The remaining claims merely describe parameters and content for the
advertising. We conclude that the claims at issue are directed to a patent-
ineligible concept.
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Application 12/767,771
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the 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 it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea ... on a generic
computer.” Alice, 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, analyze, and post data amounts to electronic data query
and retrieval—one of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to the industry. In short, each step does no more than
require a generic computer to perform generic computer functions.
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Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s method claims
simply recite the concept of advertising as performed by a generic computer.
To be sure, the claims recite doing so by advising one to query about a user
and post some message based on the response. But this is no more than
abstract conceptual advice on the parameters for such advertising and the
generic computer processes necessary to process those parametersdo not
recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 25 pages of the Specification
spell out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of advertising under different scenarios.
They do not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of advertising using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
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This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, 134 S. Ct, at 2360.
We are not persuaded by Appellant’s argument that “a claim is only
deemed directed to an abstract idea under Part I of the Mayo /Alice
framework if the abstract idea is actually recited in the claim itself.” App.
Br. 14 (emphasis omitted). Appellant transcribes part of the USPTO
eligibility guidelines that says “[a] claim is directed to a judicial exception
when ... an abstract idea is recited (i.e. set forth or described) in the claim.”
Id. (emphasis omitted). Thus, the test is not an ipsis verbis test, but a
descriptive test. We find evidence supra that the claims describe and result
in posting a message which is the abstract idea of advertising.
We are not persuaded by Appellant’s argument that it should be self-
evident that the pending claims do not preempt or “‘tie up use’” of
“‘recommending an action and transmitting transaction offers.’” Id. That
the claims do not preempt all forms of the abstraction or may be limited to
the abstract idea in the e-commerce setting do not make them any less
abstract. See OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1360-1361 (Fed. Cir. 2015). Appellant contends that because the claims are
expressed in words, the claims do not preempt anything that uses different
words. The issue is whether the claims recite more than abstract conceptual
advice, not whether the claims are expressed atomistically in words that
might be circumscribed.
We are not persuaded by Appellant’s argument that the claim limitations
are not well understood, routine, or conventional. App. Br. 15. The actions
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recited are plainly well understood, routine, and conventional. Appellant
contends it is the particular data the actions operate upon that are not so. But
data, being binary digits of arbitrary sequence depending on the coding
scheme, are ubiquitous. What the data is meant to represent is in the mind of
the beholder and of no patentable consequence. In re Bernhart, 417 F.2d
1395, 1399 (CCPA 1969).
Appellant further argues that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Court evaluated
the eligibility of claims “address[ing] the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host’s website after ‘clicking’ on an advertisement and activating a
hyperlink.” Id. at 1257. There, the Court found that the claims were patent-
eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no “pre-Internet
analog.” Id. at 1258. The Court cautioned, however, “that not all claims
purporting to address Internet-centric challenges are eligible for patent.”
Id. For example, in DDR Holdings the Court distinguished the patent-
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258—59 (citing Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 714—16 (Fed. Cir. 2014)). As noted there, the
Ultramercial claims were “directed to a specific method of advertising and
content distribution that was previously unknown and never employed on
the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at
714—16). Nevertheless, those claims were patent-ineligible because they
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“merely recite[d] the abstract idea of ‘offering media content in exchange
for viewing an advertisement, ’ along with ‘routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.’” Id.
Appellant’s asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website”; “restricting general public access to said
media product”; “receiving from the consumer a request to view [a]
sponsor message”; and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellant’s asserted claims recite
receiving, analyzing, and posting data. This is precisely the type of
Internet activity found ineligible in Ultramercial.
We do not reach the separate reason for rejecting claims 21—23 and 60-
62 under 35 U.S.C. § 101 for failing to fall within one of the enumerated
statutory categories (Final Act. 13—15) as it is cumulative.
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Claims 1-6, 9-13, 16-29, 32-36, 39-46, 50-54, 57-68, 72-76, 79-85, 87,
and 90—93 rejected under 35 U.S.C. § 102(e) as anticipated by Jin
Initially, we must construe the scope of “message” in the claims. A
message is a usually a short communication transmitted by words, signals, or
other means.2 Thus, the communications between software components
within Jin are messages.3
Jin describes determining, by the user device, a human context
(condition) corresponding to a user from the state of the program being on a
particular social media page, thus describing a condition of the user as
viewing that page.
Jin describes generating, by the user device, a set of status update
messages descriptive of the current condition of the user by monitoring the
user sending navigational messages to navigate the social media site, which
informs the site of the user’s condition with respect to the site. Jin also
describes generating, by the user device, a set of status update messages
descriptive of the current condition of the user by updating the pages of the
site presented to the user as the user navigates the social media site.
2 American Heritage Dictionary.
https://www.ahdictionary.com/word/search.html?q=message
3 See, e.g., a definition of message driven processing used in client server
settings http://searchmicroservices.techtarget.com/defmition/message-
driven-processing
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Jin describes proposing, by the user device, to the user a recommended
action of posting one or more status update messages from the set of status
update messages to a social network of the user by the social network
selecting an engagement interface to present to the member and sending a
webpage comprising the selected engagement interface to the member
device. The message proposed to be posted is necessarily from the set of
status update messages because the message is from the web page that is
being presented. Again, the web page presented is itself a status update
message. Jin presents an example of an engagement interface inviting the
user to “become a fan.”
Jin describes receiving, by the user device, a response that
authorizes a given status update message associated with the set of status
update messages to be posted to the social network and communicating, by
the user device, the authorized status update message to the social network
based upon the response by the user selecting the call to action, upon which
the social network modifies one or more objects in the social network that
are associated with the engagement interface according to the particular user
selection of the link. As a matter of claim construction, we find that this step
does not recite that the response is itself identical to one of the generated
status update messages, but only that there be some manner of association
with the generated messages.
Appellant’s arguments are unpersuasive when read in light of the
manner the rejection is meant to be interpreted as discussed supra. The
remaining claims are argued on the basis of claim 1. We find that although
claims 21 and 60 express some of the limitations in the form of means-plus-
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function,4 Appellant does not argue on the basis of such construction, and so
any such arguments are waived.
Claims 7, 8, 14, 15, 30, 31, 37, 38, 47, 48, 55, 56, 69, 70, 77, 78, and 86
rejected under 35 U.S.C. § 103(a) as unpatentable over Jin and Gabai
This is argued on the basis of claim 1.
Claims 49 and 71 rejected under 35 U.S.C. § 103(a) as unpatentable over
Jin and Jokinen
This is argued on the basis of claim 1.
Claims 88 and 89 rejected under 35 U.S.C. § 103(a) as unpatentable over
Jin and Azzaro
This is argued on the basis of claim 1.
CONCLUSIONS OF LAW
The rejection of claims 21—23, 60-62, 90, and 91 under 35 U.S.C.
§ 112(b) as failing to particularly point out and distinctly claim the invention
is improper.
4 Claim 82 reciting modules plus function may also be subject to 35 U.S.C.
§ 112(f), but any such arguments are similarly waived.
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The rejection of claims 1—93 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 1—6, 9-13, 16—29, 32—36, 39-46, 50-54, 57—68,
72—76, 79-85, 87, and 90—93 under 35 U.S.C. § 102(e) as anticipated by Jin
is proper.
The rejection of claims 7, 8, 14, 15, 30, 31, 37, 38, 47, 48, 55, 56, 69, 70,
77, 78, and 86 under 35 U.S.C. § 103(a) as unpatentable over Jin and Gabai
is proper.
The rejection of claims 49 and 71 under 35 U.S.C. § 103(a) as
unpatentable over Jin and Jokinen is proper.
The rejection of claims 88 and 89 under 35 U.S.C. § 103(a) as
unpatentable over Jin and Azzaro is proper.
DECISION
The rejection of claims 1—93 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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