Lee Linden et al.

Patent Trials and Appeals Board

Sep 30, 2019

13684089 - (D) (P.T.A.B. Sep. 30, 2019)

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.
13/684,089 11/21/2012 Lee Linden 19487.354.1 2749
107193 7590 09/30/2019
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
FADOK, MARK A
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEE LINDEN and BENJAMIN LEWIS
____________

Appeal 2018-007251
Application 13/684,089
Technology Center 3600
____________

Before JOSEPH L. DIXON, JENNIFER L. McKEOWN, and
JOHN D. HAMANN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 6, 7, 11, 15, 23–26, and 29–31. Claims 2–5, 8–
10, 12–14, 16–22, 27, and 28 have been canceled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 Facebook, Inc. (“Appellant”) is the applicant as provided in 37 C.F.R.
§ 1.46 and is identified as the real party in interest. App. Br. 3.
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STATEMENT OF THE CASE
Appellant’s disclosed and claimed invention relates to
receiving a set of communications from multiple users, the set of
communications directed to a recipient through a social
networking system; identifying a gift-appropriate event of the
recipient based on the set of communications; determining an
intent of a sender to respond to the gift-appropriate event of the
recipient based on an incomplete electronic note drafted by the
sender, within the social networking system, and designating the
recipient; selecting a gift for the recipient in response to the
determined intent of the sender; and prior to transmission of the
note to the recipient, displaying a recommendation to the sender,
the recommendation including a suggestion to purchase the gift
for the recipient.
Abstract.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method comprising:
receiving, via a social networking system, a set of
communications from a set of remote client devices, the set of
communications directed to a recipient;
identifying, by at least one processor, a gift-appropriate
event of the recipient based on the set of communications from
the set of remote client devices; detecting, by the at least one
processor via a local application corresponding to the social
networking system installed on a remote client device associated
with a sender, that the sender is drafting an incomplete electronic
note to the recipient using the remote client device;
determining, by the at least one processor via the local
application corresponding to the social networking system
installed on the remote client device, while the sender drafts the
incomplete electronic note, an intent of the sender to respond to
the previously identified gift-appropriate event of the recipient
based on the incomplete electronic note being drafted by the
sender by comparing a phrase of the incomplete electronic note
with indicators of the previously identified gift-appropriate event
and identifying a correspondence between the phrase of the
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incomplete electronic note and the previously identified gift-
appropriate event;
while the sender drafts the incomplete electronic note to
the recipient, selecting, by the at least one processor, a gift for
the recipient in response to the determined intent of the sender to
respond to the previously identified gift-appropriate event of the
recipient; and
while the sender drafts the incomplete electronic note and
prior to completion of the incomplete electronic note, providing,
via the local application corresponding to the social networking
system, a recommendation to the remote client device associated
with the sender for display to the sender with the incomplete
electronic note, wherein the recommendation enables the sender
to initiate a purchase of the selected gift for the recipient.

THE REJECTIONS
The Examiner rejected claims 1, 6, 7, 11, 15, 23–26, and 29–31 under
35 U.S.C. § 101 as directed to patent ineligible subject matter. Final Act. 3–
6.
The Examiner rejected claims 1, 6, 7, 11, 15, 23–26, and 29–312
under 35 U.S.C. § 103 as unpatentable over Leydon (US 2013/0159919;
published June 20, 2013), Becker (US 2012/0102064 A1; published Apr. 26,
2012), and Evans (US 2012/0284093 A1; published Nov. 8, 2012). Final
Act. 6–14.

2 We note that the Examiner lists claim 18, 27, and 28 as rejected as
unpatentable over Leydon, Becker, and Evans, however, these claims have
been cancelled. Compare Final Act. 6 with App Br. 1 (identifying pending
claims).
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ANALYSIS
THE § 101 REJECTION
Claims 1, 6, 7, 11, 15, 23–26, and 29–31
Based on the record before us, Appellant has not persuaded us that the
Examiner erred in rejecting claims 1, 6, 7, 11, 15, 23–26, and 29–31 as
directed to patent ineligible subject matter.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
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that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
section 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)-(c), (e)-(h) (9th ed. 2018)).
See Memorandum 52, 55–56. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, do we
then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum 56.
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Analysis – Revised Step 2A
Under the Memorandum, in prong one of step 2A, we look to whether
the claims recite a judicial exception. The claimed invention includes
“receiving. . . a set of communications from a set of remote client devices,
the set of communications directed to a recipient;” “identifying. . . a gift-
appropriate event of the recipient based on the set of communications from
the set of remote client devices;” “detecting. . . via a local application
corresponding to the social networking system installed on a remote client
device associated with a sender, that the sender is drafting an incomplete
electronic note to the recipient using the remote client device;” “while the
sender drafts the incomplete electronic note,” “determining. . . via the local
application corresponding to the social networking system installed on the
remote client device. . . an intent of the sender to respond to the previously
identified gift appropriate event of the recipient” by “comparing a phrase of
the incomplete electronic note with indicators of the previously identified
gift-appropriate event and identifying a correspondence between the phrase
of the incomplete electronic note and the previously identified gift-
appropriate event;” “while the sender drafts the incomplete electronic note to
the recipient, selecting, by the at least one processor, a gift for the recipient
in response to the determined intent of the sender to respond to the
previously identified gift-appropriate event of the recipient;” and “while the
sender drafts the incomplete electronic note and prior to completion of the
incomplete electronic note, providing, via the local application
corresponding to the social networking system, a recommendation to the
remote client device associated with the sender for display to the sender with
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the incomplete electronic note, wherein the recommendation enables the
sender to initiate a purchase of the selected gift for the recipient.”
In other words, the claimed invention identifies a gift-appropriate
event of a recipient based on an incomplete note from a user, determines an
intent to respond to the gift-appropriate event, provides gift
recommendations for a recipient for the gift-appropriate event, and prompts
the user to initiate purchase of the recommended gift. The steps of
recognizing gift-appropriate events and providing gift recommendations are
managing personal behavior or personal interactions and, thus, are certain
methods of organizing human activity, which is an abstract idea. See Final
Act. 5; see also Accenture Global Services, Gmbh v. Guidewire Software,
Inc., 728 F.3d 1336 (Fed. Cir. 2013) (finding ineligible claims directed to an
automated method for generating tasks including determining characteristics
of received information and applying characteristics of the information to
rules to determine a task to be completed). Additionally, providing a
recommendation enabling the sender to initiate purchase of the gift is
advertising or sales activities, which are also certain methods of organizing
human activity – an abstract idea. See Final Act. 5; see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) (finding ineligible
claims directed to pricing a product based on collected and analyzed
information). As such, the claimed invention recites an abstract idea.
Under prong two of revised step 2A, we determine whether the recited
judicial exception is integrated into a practical application of that exception
by: (a) identifying whether there are any additional elements recited in the
claim beyond the judicial exception(s); and (b) evaluating those additional
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elements individually and in combination to determine whether they
integrate the exception into a practical application.
Appellant contends that the claimed invention “improve[es] social
networking computer systems and reducing digital siphoning from social
networking systems to remote websites.” App. Br. 14; see also App. Br. 19
(arguing the claimed invention “allows the social networking system to
retain users without driving them to other sources to identify and purchase
gifts corresponding to gift-appropriate events.”). Appellant additionally
argues that the claimed invention “provide[s] a technical solution to this
technical problem (App. Br. 18) and “[is] ‘necessarily rooted in computer
technology to overcome a problem specifically arising in the realm of
computer networks.’” App. Br. 17.
We disagree. Namely, the claimed invention does not address a
technical problem or provide a technical improvement. Rather, as the
Examiner points out, “[a]ny improvement is manifested only in the
procedure for targeting advertisements suggestions itself.” Ans. 5 (emphasis
omitted); see also Final Act. 4 (noting that “the claims direct themselves
wholly to the commercial endeavor”). Specifically, “the claims are directed
solely to the manner in which the advertisements are targeted” and, as such,
“fail[s] to result in an improvement in the performance of a computer,
another technology, or technical field.” Ans. 5; see also Ans. 14–15
(distinguishing BASCOM Global Internet v. AT&T Mobility LLC 827 F.3d
1341 (Fed. Cir. 2016) because Bascom’s unconventional arrangement of
generic technical components resulted in a technical improvement, “not an
abstract-idea-based solution.”). The claimed invention instead, merely uses
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the computer as a tool to implement the abstract idea. See Gottschalk v.
Benson, 409 U.S. 63 (1972).
We further note that the steps of receiving data, such as receiving and
processing data, such as receiving and comparing data to determine if the
data matches, is insignificant extra-solution activity. See MPEP
§ 2106.05(g); OIP Techs., Inc., 788 F.3d at 1363; Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). As such, based on the
record before us, we determine that the claimed invention is not integrated
into a practical application.
Analysis – Revised Step 2B
Under step 2B, we determine that the claimed invention does not add
significantly more to the abstract idea. Appellant, in particular, argues that
the Examiner fails to sufficiently support the finding of the additional
limitations as well-understood, routine, and conventional. Reply Br. 9–10.
We find this argument unpersuasive. As the Examiner explains,
the claims at issue recite conventional computing components
arranged in a conventional manner leveraged only as mechanism
for achieving the claimed result more efficiently. Merely using a
computer to perform more efficiently what could otherwise be
accomplished manually does not confer patent-eligibility.
Ans. 14 (citing BuySAFE Inc. v Google, Inc., 765 F.3d 1350 (Fed. Cir.
2014); Final Act. 6 (citing prior art as support). See also Elec. Power Grp.,
LLC, 830 F.3d at 1355 (finding that use of “conventional computer, network,
and display technology for gathering, sending, and presenting the desired
information” does not add significantly more to the claimed abstract idea);
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (discussing that data collection,
recognition, and storage is well-known); CyberSource Corp. v. Retail
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Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“[T]he incidental use
of a computer to perform the [claimed process] does not impose a
sufficiently meaningful limit on the claim’s scope.”).
Therefore, based on the record before us, we are not persuaded of
error in the Examiner’s determination that the appealed claims are directed
to patent ineligible subject matter. Accordingly, we affirm the Examiner’s
decision to reject claims 1, 6, 7, 11, 15, 23–26, and 29–31 as directed to
patent ineligible subject matter.

THE § 103 REJECTION BASED ON LEYDON, BECKER, AND EVANS
Claims 1, 6, 7, 11, 15, 23–26, and 29–31
Based on the record before us, we are not persuaded that the Examiner
erred in finding that claims 1, 6, 7, 11, 15, 23–26, and 29–31 are
unpatentable over Leydon, Becker, and Evans.
Appellant contends that the prior art combination fails to teach or
suggest “limitations in the claims related to comparing incomplete electronic
notes to gift-appropriate events to identify user intent to respond to a gift-
appropriate event while a user is drafting an incomplete electronic note as
recited by amended independent claims 1, 15, and 23.” App. Br. 21. In
particular, Appellant argues that Evans only teaches inserting an
advertisement after a text message is complete and, thus,
Evans fails to teach determining an intent of the sender while a
sender drafts an incomplete electronic note, fails to teach
comparing a phrase of an incomplete electronic note with
indicators of a gift-appropriate event, and fails to teach
identifying a correspondence between the phrase of the
incomplete electronic note and the previously identified gift-
appropriate event.
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App. Br. 23. Next, with respect to Becker, Appellant maintains that Becker
only teaches sending a reminder or advertisement regarding an event based
on text communications regarding the event. Id. According to Appellant,
providing a reminder or advertisement regarding an event fails to
teach determining an intent of the sender while a sender drafts an
incomplete electronic note, fails to teach comparing a phrase of
an incomplete electronic note with indicators of a gift-
appropriate event, and fails to teach identifying a correspondence
between the phrase of the incomplete electronic note and the
previously identified gift-appropriate event.
App. Br. 24. Further, Appellant asserts that Leydon’s teaching of
identifying candidate emoticons for a text field similarly fails to teach the
disputed limitations. Id.
We find Appellant’s arguments unpersuaive. Appellant’s arguments
fail to consider the combination of the teachings of Evans, Becker, and
Leydon. One cannot show nonobviousness by attacking references
individually where the rejections are based on combinations of references.
See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986).
Specifically, the Examiner determines that Leydon shows “inserting a
recommended object into an incomplete note was taught in the art (see
particularly para 0047, 0048)” and Becker teaches identifying gift-
appropriate events based on communications. Ans. 20. As such,
the combination of Leydon and Becker teach identifying gift
appropriate events by analyzing segments of an incomplete
message, but does not specifically mention that the object
provided to the user during the message and as a result of the
analysis includes an advertisement. Evans teaches adding a
relevant advertisement to a user in a message.
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Id. In other words, it would have been obvious to a skilled artisan at the
time of the invention to replace Leydon’s emoticon with an advertisement,
as taught by Evans, related to an identified gift-appropriate event, as taught
by Becker. As such, based on the record before us, we are not persuaded
that the cited combination of prior art fails to teach or suggest the disputed
limitations.
Accordingly, we affirm the Examiner’s decision to reject claims 1, 6,
7, 11, 15, 23–26, and 29–31 as unpatentable over Leydon, Becker, and
Evans.

DECISION
We affirm the Examiner’s decision to reject claims 1, 6, 7, 11, 15, 23–
26, and 29–31 as directed to patent ineligible subject matter and affirm the
Examiner’s decision to reject claims 1, 6, 7, 11, 15, 23–26, and 29–31 as
unpatentable over Leydon, Becker, and Evans.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED