Mahesh Subramanian

Patent Trials and Appeals Board

Nov 24, 2020

2020002090 (P.T.A.B. Nov. 24, 2020)

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.
12/556,511 09/09/2009 Mahesh Subramanian 2043.727US1 2697
49845 7590 11/24/2020
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
JESSEN, DEREK
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
11/24/2020 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):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MAHESH SUBRAMANIAN

Appeal 2020-002090
Application 12/556,511
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals from the Examiner’s rejection of claims 1–25
under 35 U.S.C. § 103(a). We AFFIRM.2

1 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42 (e.g., “the
inventor or all of the joint inventors”). “The real party in interest of the
above-captioned patent [a]pplication is the assignee, eBay Inc.” (Appeal
Br. 2.)
2 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
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THE APPELLANT’S INVENTION
The Appellant discloses a system “to incentivize transactions to
enhance social goodness.” (Spec. ¶ 2.)
ILLUSTRATIVE CLAIM
1. A publishing system to incentivize transactions that
enhance social goodness, the publishing system comprising:
one or more hardware processors; and
a non-transitory machine-readable medium for storing
instructions that, when executed by the one or more hardware
processors, cause the one or more hardware processors to
perform operations comprising:
receiving a request for a badge representing a social
goodness of a user from a client device associated with a third
party, the request including a user identifier of the user;
applying a non-political social goodness criterion
selected by the user to a particular transaction executed by the
user on a first network entity based on asserting a flag included
in transaction information of the particular transaction, the flag
corresponding to the non-political social goodness criterion
selected by the user, the asserting of the flag including
modifying a record of a database associated with the publishing
system to indicate a particular social goodness action, by the
user, that corresponds to the non-political social goodness
criterion selected by the user;
identifying one or more transactions executed by the
user, to which the non-political social goodness criterion
selected by the user was applied, including the particular
transaction, based on detecting the asserted flag in the
transaction information of each of the one or more transactions;
computing a social goodness index for the user based on
the non-political social goodness criterion selected by the user
and the identified one or more transactions, the social goodness
index providing a measurement of the social goodness of the
user in relation to other users of the first network entity;
generating the badge based on the social goodness index;
and
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in response to receiving the request for the badge,
causing display of the badge in a user interface of the client
device associated with the third party, the causing display of the
badge including causing display, in the badge, of one or more
representations of the social goodness index associated with the
user.

REJECTION3
The Examiner rejects claims 1–25 under 35 U.S.C. § 103 as
unpatentable over Winston,4 Ariff,5 Czyzewicz,6 and Pourfallah.7 (Final
Action 2.)
ANALYSIS
Independent claim 1 sets forth a system “to incentivize transactions
that enhance social goodness.” (Appeal Br., Claims App.) The Examiner
determines that the claimed system would have been obvious over the
combined teachings of Winston, Ariff, Czyzewicz, and Pourfallah. (See
Final Action 2.)8 We have carefully considered the Appellant’s argument

3 The Examiner’s rejection of claims 1–25 under 35 U.S.C. § 112 (see Final
Action 2) has been withdrawn (see Answer 3).
4 US 2009/0198666 A1, published August 6, 2009.
5 US 7,613,628 B2, issued November 3, 2009.
6 US 8,275,860 B2, issued September 25, 2012.
7 US 2013/0226609 A1, published August 29, 2013.
8 Winston provides a computerized system “to identify, classify, track, and
communicate with user populations over a network” (Winston ¶ 1); Ariff
provides a computerized system “for implementing a loyalty program on a
network-wide level” (Ariff c3:61–62); Czyzewicz provides a computerized
system “for managing information personal to individual users of social web
sites” (Czyzewicz c1:16–17); and Pourfallah provides a computerized
system for processing user “transactions” (Pourfallah ¶ 124). The Examiner
finds that these prior art computer systems collectively include each element
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that the Examiner errs in making this determination (see Appeal Br. 11–14),
but we are not persuaded thereby.
The claim limitation at issue in this appeal is an “identifying” step
recited in independent claim 1 which involves “a non-political social
goodness criterion selected by [a] user,” a “flag” corresponding to this
criterion, and “transaction information” in which this flag is “asserted.”
(Appeal Br., Claims App.) The limitation at issue reads “identifying one or
more transactions executed by the user, to which the non-political social
goodness criterion selected by the user was applied, including [a] particular
transaction, based on detecting the asserted flag in the transaction
information of each of the one or more transactions.” (Id.)
The only argument advanced by the Appellant in the Appeal Brief is
that the Examiner relies “exclusively” on Pourfallah to teach each and every
feature of the claimed “identifying” step. (Appeal Br. 12.)
More particularly, the Appellant contends that the Examiner relies
upon Pourfallah, exclusively, to teach a “social goodness criterion selected
by the user,” a “flag corresponding to the social goodness criterion,” and
“transaction information” in which this flag is asserted. (Appeal Br. 13.)
According to the Appellant, Pourfallah cannot teach these recited features of
the identifying step because Pourfallah “is merely directed to a portable
prescription payment device management program.” (Id. at 12.)

claimed; and the Examiner finds that one of ordinary skill in the art would
have combined the prior art elements in a known manner (i.e., by
conventional programming). (See Final Action 3–8.) “[A] combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” (KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007).)
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We are not persuaded by this argument because it is not aligned with
the Examiner’s actual rejection in which it is “the combination of the
references” that renders the claimed method obvious. (Answer 4.)
Specifically, for example, the Examiner can rely upon Winston and Ariff,
together, to teach the above-listed features which are allegedly missing in
Pourfallah. (See Final Action 3–5; see also Answer 4–7.)
Winston discloses a computerized system which receives a request
(submitted by a user) including “one or more parameters related to a user’s
current match interests.” (Winston ¶ 99). Winston’s “affinity matching”
system uses the selected parameter(s) “for identifying users with shared
affinities.” (Id. ¶ 6.) Ariff teaches the “mapping” (i.e., matching) of
multiple users with the help of retailer-associated codes (see Ariff
c13:25–32), and Ariff expressly teaches that a “retailer” can be a “charitable
organization” (id. c8:1–2).
Ariff teaches that the retailer-associated codes, used to match multiple
users, can also be used to match purchases (transactions) made by an
individual user. (See id. c12:6–31, c12:41–59, c13:31–34.) In Ariff’s
system, a retailer-associated code can be included (i.e., asserted) in the
transaction information for each of said user’s purchases. (See id.
c13:19–22.) Thus, with Ariff’s system, a charity-corresponding code would
be included in the transaction information for each purchase made by a user
from charitable organizations.
Ariff teaches a “purchaser profile” that includes “any data used to
characterize a consumer and/or the behavior of a consumer,” and this data
can include “consumer enrollment data” and “purchase data.” (Id.
c12:41–45.) “Consumer enrollment data” includes a user’s “interests” (Ariff
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c8:9–35) and “[p]urchase data” consolidates transaction information data for
all transactions made by a user (id. c12:6–16).
Ariff teaches that “retailer data” can be used to “provide rewards to
consumers” in order to further “frequency-based incentives.” (Id.
c13:56–67.) In other words, Ariff teaches rewarding a user for his/her
collective purchases from certain retailers. Thus, if these certain retailers are
charitable organizations, Ariff teaches rewarding a user in accord with his/her
loyalty towards these charitable organizations.
Consequently, the Examiner need not rely upon Pourfallah, alone, to
teach a social goodness criterion selected by a user; to teach a flag
corresponding to this social goodness criterion; and/or to teach asserting a
criterion-corresponding flag into transaction information.
The Examiner need only rely upon Pourfallah to teach identifying a
user’s transactions associated with a known criterion (e.g., a loyalty
component) based upon detecting criterion-corresponding data (e.g., a flag)
in transaction information. Pourfallah discloses a transaction processing
system in which each set of transaction information can include data about
“rewards” and “loyalty” (Pourfallah ¶ 144); and Pourfallah teaches “[t]his
information can be data mined” for “loyalty incentives and rewards” (id.
¶ 147).
The Appellant argues that the Examiner “fail[s] to articulate a
motivation to combine the references.” (Reply Br. 5.) This argument is
raised for the first time in the Reply Brief, and, therefore, unconsidered.9 As

9 “Any argument raised in the reply brief which was not raised in the appeal
brief, or is not responsive to an argument raised in the examiner’s answer,
including any designated new ground of rejection, will not be considered by
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noted above, the only argument raised by the Appellant in the Appeal Brief
is that the Examiner relies “exclusively” on Pourfallah to disclose the
identifying step recited in independent claim 1. (Appeal Br. 12.)
Thus, we sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 103. The Appellant argues claims 1–25 as a group (see
Appeal Br. 11–15), and so claims 2–25 fall with independent claim 1.10
CONCLUSION
Claims
Rejected
35 U.S.C. Reference(s)/
Basis
Affirmed Reversed
1–25 § 103 Winston, Ariff,
Czyzewicz,
Pourfallah
1–25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

the Board for purposes of the present appeal, unless good cause is shown.”
(37 C.F.R. § 41.41.)
10 “When multiple claims subject to the same ground of rejection are argued
as a group or subgroup by appellant, the Board may select a single claim
from the group or subgroup and may decide the appeal as to the ground of
rejection with respect to the group or subgroup on the basis of the selected
claim alone.” (37 C.F.R. § 41.37(c)(1)(iv).)