Ex Parte Zadeh et al

Patent Trial and Appeal Board

Sep 20, 2018

13854044 (P.T.A.B. Sep. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/854,044 03/29/2013 Shayan G. Zadeh
30748 7590 09/21/2018
INNOVATION PARTNERS
540 UNIVERSITY A VE.
SUITE 300
PALO ALTO, CA 94301
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.
1762 5293
EXAMINER
DOAN,TAN
ART UNIT PAPER NUMBER
2442
MAIL DATE DELIVERY MODE
09/21/2018 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 SHAY ANG. ZADEH, ALEXANDER F. MEHR,
ERIC R. BARNETT, and CHARLES E. GOTLIEB 1
Appeal2018-003089
Application 13/854,044
Technology Center 2400
Before JAMES R. HUGHES, JENNIFER S. BISK, and
JOHN P. PINKERTON, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1, 7, and 13. Claims 2---6, 8-12, and
14--21 have been canceled. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Zoosk Inc. Appeal Br.
2.
2 Appellants filed an Amendment ("Amendment F") on Sept. 27, 2017 in
conjunction with the Reply Brief. The Amendment canceled pending claims
2, 3, 5, 6, 8, 9, 11, 12, 14, 15, and 17-21. The Advisory Action, mailed
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Application 13/854,044
Appellants' Invention
The invention relates generally "to computer software and more
specifically to computer software for matching users of a web site and
displaying information about matched users." Spec. 2:9-12. The claims
concern computer program products, systems, and methods of distributing
information about a first user and a second user across a network of
computers. The information distribution process receives information about
the first user and the second user, as well as an indication from the first user
that the first user and the second user have established a relationship. The
information distribution process then confirms the relationship with the
second user and receives approvals of the relationship from entities other
than the first user and the second user. Responsive to the indication, the
confirmation, and the approvals, the information distribution process
distributes the information about the first user and the second user on a web
page corresponding to the first user and the second over the network to a
multiple computer systems coupled to the network. See Spec. 2 :23-9 :21;
Abstract. 3
Nov. 9, 2017, entered the Amendment. Accordingly, only independent
claims 1, 7, and 13 remain pending and appealed.
3 We refer to Appellants' Specification ("Spec.") filed Mar. 29, 2013
(claiming benefit of US 61/ 617,050 filed Mar. 29, 2012); Appeal Brief
("Appeal Br.") filed Mar. 30, 2017; and Reply Brief ("Reply Br.") filed
Sept. 27, 2017. We also refer to the Examiner's Final Office Action (Final
Rejection) ("Final Act.") mailed Aug. 30, 2016, and Answer ("Ans.") mailed
July 27, 2017.
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Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A method of distributing information about a first
user and a second user across a network of computers,
compnsmg:
receiving over the network information about the first user
and the second user at a computer system that introduced the first
and second users to one another;
receiving over the network a first indication from the first
user that the first user and the second user have established a
relationship;
confirming with the second user via the network at least
that that the first user and the second user have established the
relationship;
receiving from at least some of the computer systems
coupled to the network a plurality of approvals of the relationship
from entities other than the first user and the second user; and
responsive to the first indication received, the confirming
step, and the plurality of approvals distributing over the network
to a plurality of computer systems coupled to the network the
information about the first user and the second user on a web
page corresponding to the first user and the second user.
App. Br. 21 (Claims Appendix) ( emphasis added).
Rejections on Appeal4
1. The Examiner rejects claims 1, 7, and 13 under 35 U.S.C. § 101
as being directed to non-statutory subject matter. See Final Act. 4---6.
2. The Examiner rejects claims 1, 7, and 13 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Fallah (US 2011/0167059 Al,
4 The grounds of rejection have been modified to reflect the pending claims
for clarity and consistency of the record.
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Application 13/854,044
published July 7, 2011) and Kim (US 2008/0201447 Al, published Aug. 21,
2008). See Final Act. 6-12.
ISSUES
Based upon our review of the record, Appellants' contentions, and the
Examiner's findings and conclusions, the issues before us are as follows:
1. Did the Examiner err in finding that the combination of Fallah
and Kim collectively would have taught or suggested:
confirming with the second user via the network at least
that that the first user and the second user have established the
relationship; [and]
responsive to the first indication received, the confirming
step, and the plurality of approvals distributing over the network
to a plurality of computer systems coupled to the network the
information about the first user and the second user on a web
page corresponding to the first user and the second user
within the meaning of claim 1 and the commensurate limitations of claims 7
and 13?
2. Did the Examiner err in finding claims 1, 7, and 13 were
directed to patent-ineligible subject matter under 35 U.S.C. § 101?
ANALYSIS
For clarity of the record and convenience, we address Appellants'
contentions seriatim as presented in Appellants' Appeal Brief.
The 35 U.S. C. § 103 Rejection
The Examiner rejects independent claim 1 (and independent claims 7
and 13) as being obvious in view of Fallah and Kim. See Final Act. 6-8;
Ans. 3-9. Appellants argue independent claims 1, 7, and 13, together as a
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group. See Appeal Br. 7-15. We select independent claim 1 as
representative of Appellants' arguments with respect to claims 1, 7, and 13.
37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner relies on Fallah as teaching the features of claim 1 with
the exception of the third party approvals (evaluations) and distribution of
information based on the third-party approvals. See Final Act. 7-8.
Specifically, the Examiner cites Fallah as describing confirming with the
second user that the first user and the second user have established a
relationship. See Final Act. 7; Ans. 4--5 (citing Fallah ,r,r 67, 142-144, 146).
The Examiner further cites Fallah as describing distributing ( over a network
to multiple computer systems) information about the first user and the
second user on a web page corresponding to the first user and the second
user (where the distribution is responsive to the receipt of an indication and
the confirmation). See Final Act. 7; Ans. 5-9 (citing Fallah ,r,r 46, 67, 146).
The Examiner also cites Kim as teaching third-party ( entities other than the
first user and the second user) approvals of the relationship (Fallah's third-
party evaluations) and distributing information about the first user and the
second user responsive to the evaluations/approvals. See Final Act. 8 ( citing
Kim ,r,r 46-48; Figs. 9-11 ).
Appellants contend that Fallah and Kim do not teach the disputed
features of claim 1. See Appeal Br. 7-15; Reply Br. 2---6. More specifically,
Appellants contend that Fallah does not teach the confirmation procedure-
"confirming with the second user via the network at least that that the first
user and the second user have established the relationship" ( claim 1 }-and,
instead, Fallah describes linking the profiles of two users-"[i]t is the
request to link, not the confirmation, that establishes the profile link" and
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"the establishment of the link is not conditioned on the confirmation"
(Appeal Br. 11). See Appeal Br. 10-12; Reply Br. 2--4. Appellants further
contend that Fallah does not teach distributing information about the first
user and the second user on a web page corresponding to the first user and
the second user, and that any distributed information is not distributed on a
web page to multiple computer systems. See Appeal Br. 12-15; Reply Br.
4---6.
We disagree with Appellants that Fallah and Kim do not teach the
disputed confirmation and distribution. We also concur with the findings
and conclusions reached by the Examiner, and we address specific findings,
conclusions, and arguments for emphasis as follows.
With respect to the claimed confirmation (and Fallah's approval of
linking profiles), Appellants narrowly interpret Fallah to only describe
approving whether a linked user can view another user's profile
information-that the user requesting the linking of profiles can view the
linked user's profile information. See Appeal Br. 10-12; Reply Br. 2--4. We
disagree with Appellants' overly-narrow interpretation of Fallah. Fallah
describes a user sending an add request to another user-"the user can send
an add request, namely a request to link the two profiles, to the intended
person. If the person being searched is in a relationship with the adding
user, the adding user sends the type of the relationship along with the add
request." Fall ah ,r 14 2. F allah also describes approving ( confirming) the
request-"[u]pon approval of the add request" (Fallah ,r 144). Therefore, we
find Fallah at least suggests a second user approving that the first user and
the second user have established a relationship. At the very least, linking of
profiles establishes a "relationship" between users. See Fallah ,r 20.
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Approving the linking is a confirmation of the relationship. See Id.
Moreover, a "request" is not mandatory. It implies asking approval. Fallah
describes approving a request that includes relationship information (the
type of relationship), which connotes not only approving the add request and
linking of profiles, but also the relationship information. See Fallah ,r,r 20,
142-146.
With respect to the claimed distribution of information, we broadly
but reasonably construe "distributing[,] ... to a plurality of computer
systems coupled to the network[,] the information about the first user and the
second user on a web page corresponding to the first user and the second
user" ( claim 1) to mean publishing information ( about the first user and the
second user) on a web page viewable by multiple computer systems. This
construction is consistent with Appellants' Specification, which does not
define "distributing," or describe distributing information in detail, but does
describe creating and publishing a "couples profile" on a webpage. See
Appeal Br. 3, 11. 24--31 (citing Spec. 16:9-17:3; 18:1-8; 21:22-22:8; 27:5-
23; Fig. 2); see also Spec. 73:5-81:8 (summarizing the claim language and
generally describing distributing information).
In accordance with our construction, the at-issue limitation requires
publishing a web page (relating to the first user and the second user)
including information about the first user and the second user, such as their
relationship status. As explained by the Examiner, Fallah describes
publishing information, including relationship information, about a first and
a second user. See Final Act. 7-8; Ans. 5-9 ( citing Fallah ,r,r 46, 67, 146).
The relationship information is available (able to be viewed) by someone
( either user A or user B) accessing the profile of a user (user C) in a
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relationship (having a linked profile) with the other users (users A and B).
See Fallah ,r 146. More particularly, the relationship information associates
the users. Accordingly, a web page including the relationship information
(e.g., user C's profile, which shows the relationship between A and C)
corresponds to (is associated with) both users and is viewable by other users
( e.g., user B). Fallah also allows searching for a profile and displaying the
resulting profile. See Fallah ,r,r 138-139, 146. Therefore, Fallah at least
suggests distributing information about the first user and the second user on
a web page corresponding to the first user and the second user and that the
information is distributed to multiple computer systems coupled to the
network. Additionally, Appellants do not address in detail the Examiner's
findings with respect to Kim. See Appeal Br. 10. Indeed, Appellants appear
to concede that Kim describes distributing information ( about two users}-
"Kim's information is distributed without regard to a confirmation" (Appeal
Br. 10). Thus, we agree with the Examiner that Fallah and Kim teach or at
least suggest the disputed distribution of information about the first and
second users.
With respect to Appellants' comb inability arguments (see Appeal Br.
14--15), we disagree with Appellants. Contrary to Appellants' arguments,
"[t]he test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference . . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413,425 (CCPA 1981) (emphasis added). Here,
Appellants argue the references individually and do not address the specific
arguments set out by the Examiner. The references cited by the Examiner
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must be read, not in isolation, but for what each fairly teaches in
combination with the prior art as a whole. See In re Merck & Co., 800 F .2d
1091, 1097 (Fed. Cir. 1986) (one cannot show non-obviousness by attacking
references individually where the rejections are based on combinations of
references).
We find that it would have been within the skill of an ordinarily
skilled artisan to combine the known technique of publishing relationship
information (as taught by Fallah) and distributing user information as taught
by Kim (see Kim ,r,r 46-48). See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 417 (2007) ("[I]f a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill."). We are not persuaded that
combining the respective familiar elements of the cited references in the
manner proffered by the Examiner would have been "uniquely challenging
or difficult for one of ordinary skill in the art" at the time of Appellants'
invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Thus, Appellants' contentions do not persuade us of error in the
Examiner's obviousness rejection of representative independent claim 1.
Accordingly, we affirm the Examiner's rejection of representative claim 1
and independent claims 7 and 13, not separately argued with particularity
(supra).
The 35 U.S.C. § 101 Rejection
Appellants argue independent claim 1 and independent claims 7 and
13 together as a group with respect to the§ 101 rejection. See Appeal Br.
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15-18.
The Examiner rejects claim 1 (and claims 7 and 13) as being directed
to patent-ineligible subject matter (see generally Final Act. 4---6; Ans. 9-12)
in that the claimed invention is "directed to the abstract idea of 'organizing
human activity'" (Final Act. 4) and the claim does "not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the method ... involves generic computer that perform[]"
(Final Act. 4) "generic computer functions that are well-understood, routine,
and conventional activities previously known to the industry" (Final Act. 5).
The Examiner also explains:
the claims are clearly focused on a method of organizing human
activity, or alternatively, an abstract idea [-] .... a process of
gathering and analyzing information of a specified content, then
displaying the results, and not any particular asserted inventive
technology for performing those functions. They are therefore
directed to an abstract idea (see ELECTRIC POWER GROUP,
LLC).
The steps of receiving indication of a relationship,
confirming of the relationship, receiving approvals of the
relationship over the network could be done by emails; the step
of distributing of information on a web page such as wedding
announcement is routine. All the steps are generic computer
functions that are well-understood, routine, and conventional
activities previously known to the industry. The claim also
recites a plurality of computer systems coupled to the network
which do not add meaningful limitations to the idea of organizing
human activity beyond generally linking the method to a
particular technological environment, that is, implementation via
computers. The web page, the multiple computer system[s], the
confirmation and approvals do not amount to significantly more
than the underlying abstract idea of organizing human activity.
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Ans. 11-12. 5
Appellants contend that the claims are not directed to an improper
judicial exception or abstract idea because "the claims recite meaningful and
specific limitations like those of MCR0"6 and "[t]he claims are not merely
directed to a result or effect that is itself an abstract idea." Appeal Br. 16.
Appellants also contend the "claims are not directed to organizing human
activity by any means whatsoever." Appeal Br. 16.
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77-80 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
5 The Examiner cites to Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016).
6 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
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directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. For example, abstract ideas include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 23 55-57. If
the claims are not directed to an abstract idea, the inquiry ends. Otherwise,
the inquiry proceeds to the second step where the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566
U.S. at 78, 79). This second step is described as "a search for an "'inventive
concept"'-i.e., an element or combination of elements that is ' ...
significantly more than ... the [ineligible concept] itself."' Id. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Alice Step 1 Analysis
Turning to the first step of the eligibility analysis, "[t]he first step in
the Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfish, 822 F.3d at 1335-36. "The abstract idea exception
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prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, 837 F.3d at 1312 ( quoting
0 'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)). "We therefore look
to whether the claims ... focus on a specific means or method that improves
the relevant technology or are instead directed to a result or effect that itself
is the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
Instead of using a fixed definition of an abstract idea and analyzing
how claims fit ( or do not fit) within the definition, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen - what prior cases were about,
and which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)). As part of
this inquiry, we must "look at the 'focus of the claimed advance over the
prior art' to determine if the claim's 'character as a whole' is directed to
excluded subject matter." Affinity Labs of Texas, LLC v. DirecTV, LLC, 838
F.3d 1253, 1257 (Fed. Cir. 2016).
The Examiner determines claim 1 is directed to the abstract idea of
"gathering and analyzing information of a specified content, then displaying
the results" (Ans. 12), which is a method of "organizing human activity"
(Final Act. 4; see Ans. 11-12). The Examiner finds the limitations of claim
1 are analogous to claims found patent ineligible in Electric Power Group.
See Ans. 11-12. Appellants focus their argument on the first step of the
Alice eligibility test and, in particular, on the "multi part test for Alice step
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one" (Appeal Br. 15) set forth in McRO. See Appeal Br. 15-18; Reply Br.
6-8.
Initially, we agree that the Examiner's determination that Appellants'
claim 1 is directed to "gathering and analyzing information ... then
displaying the results" (Ans. 12), which is a "method of organizing human
activity" (Ans. 11). We also agree that the claims are analogous to those in
Electric Power Group. See Ans. 12.
In summary, claim 1 recites collecting, organizing, analyzing,
manipulating, and displaying data (information about two users). The claim
specifically recites a process of distributing information about a first user
and a second user across a network of computers. The process receives
data-information about the first user and the second user, an indication
from the first user that the first user and the second user have established a
relationship. The process confirms the relationship (utilizing unspecified
means) with the second user. The process also receives additional data-
approvals of the relationship from entities other than the first user and the
second user. The process analyzes and manipulates the received data and
responsive to the data-the indication, the confirmation, and the approvals-
displays (distributes (see supra)) the information about the first user and the
second user. See Spec. 2:23---6: 11
With respect to the proposed abstract concept, although the Examiner
could have characterized Appellants' claim 1 with more detail (see Appeal
Br. 16), such a (narrower) characterization does not change the patent-
eligibility analysis. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-
1241 (Fed. Cir. 2016) ("An abstract idea can generally be described at
different levels of abstraction."). The inclusion of additional limitations
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( resulting in a more detailed characterization) still amounts to organizing
information and data collection, analysis, and manipulation.
Our reviewing court has held that abstract ideas include gathering,
analyzing, organizing, and displaying information. See Electric Power
Group, 830 F.3d at 1354 (finding "gathering and analyzing information of a
specified content, then displaying the results," to be directed to an abstract
idea). Similarly, our reviewing court has held that abstract ideas include
gathering, analyzing, organizing, and storing information.
We, like the Examiner (see Ans. 9-12), find Appellants' claims are
dissimilar to the claims at issue in McRO, which were directed to technical
improvements in automated lip-synchronization and animation techniques.
See McRO, 837 F.3d at 1315 ("improvement in computer animation," for
"achieving automated lip-synchronization"). Appellants' invention, in
contrast, is performed by standard, generic data processing and storage
elements. See supra. The use of such generic computing elements "do[ es]
not alone transform an otherwise abstract idea into patent-eligible subject
matter." FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1096
(Fed. Cir. 2016) (citing DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014)); see Ans. 10-12.
For the foregoing reasons, we are not persuaded the Examiner erred.
We sustain the rejection of claims 1, 7, and 13 as directed to patent-
ineligible subject matter.
CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1, 7, and 13 under 35 U.S.C. § 101.
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Appellants have not shown that the Examiner erred in rejecting claims
1, 7, and 13 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 1, 7, and 13.
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).
AFFIRMED
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