TSZ CHENG et al.

Patent Trials and Appeals Board

Apr 1, 2021

2020004749 (P.T.A.B. Apr. 1, 2021)

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.
12/272,225 11/17/2008 TSZ S. CHENG CHA920080011US1_8134-0118 5895
112978 7590 04/01/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
BURKE, JEFF A
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte TSZ S. CHENG and GREGORY P. FITZPATRICK
________________

Appeal 2020-004749
Application 12/272,225
Technology Center 3600
________________

Before JASON V. MORGAN, BENJAMIN D. M. WOOD, and
SHARON FENICK, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 42–59. Claims 1–41 are canceled.
Appeal Br. 2. This appeal is related to a prior appeal (2017-010541) of the
same application, decided June 4, 2018. Appeal Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as IBM Corporation. Appeal Br. 1.
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SUMMARY OF THE DISCLOSURE
Appellant’s claimed subject matter relates to “a solution for obtaining
trusted recommendations through discovery of common contacts in contact
lists.” Abstract.
REPRESENTATIVE CLAIM
42. A computer-implemented method within a
recommendation server, comprising:
receiving, from a client device, a recommendation query
including a search criteria;
receiving a plurality of contact lists respectively
associated with a plurality of different users;
combining the plurality of contact lists to generate a
shared contact list as a shared data structure stored within a data
store;
matching the search criteria to the shared contact list to
generate a recommendation result comprised of a plurality of
individual contacts;
discovering, from the shared contact list, at least one
common contact who appears multiple times within the shared
contact list;
adding, to the recommendation result, a confidence rating
for each of the plurality of individual contacts within the
recommendation result; and
forwarding, to the client device and after the adding, the
recommendation result to the client device, wherein
the confidence rating for a particular individual contact
within the recommendation result is based upon a number of
instances the particular individual contact is found within the
shared contact list.
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REJECTION2
The Examiner rejects claims 42–59 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2–5; Ans. 3.
PRINCIPLES OF LAW
To constitute patent-eligible subject matter, an invention must be a
“new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in 35 U.S.C. § 101, including: (1) laws of nature; (2) natural phenomena;
and (3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). The U.S. Supreme Court has set forth a framework for
distinguishing patents with claims directed to these implicit exceptions
“from those that claim patent-eligible applications of those concepts.” Id. at
217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66 (2012)). The evaluation follows a two-part framework: (1) determine
whether the claim is directed to a patent-ineligible concept, e.g., an abstract
idea; and (2) if so, then determine whether any element, or combination of
elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the patent-ineligible concept itself. See id. at 217–18.

2 The Examiner indicates in the Answer that the “rejection of claims 42–59
under 35 U.S.C. 102(e) has been withdrawn.” Ans. 3. In the Final Action,
claims 42–44, 46–50, 52–56, 58, and 59 are rejected under 35 U.S.C.
§ 102(e). Final Act. 5–8. Claims 45, 51, and 57, which depend from
independent claims 42, 48, and 54 respectively, are rejected under 35 U.S.C.
§ 103, based on the § 102 rejections of the claims from which they depend.
Final Act. 8–9. Therefore, we understand the Examiner to have withdrawn
all prior art rejections made in the Final Action.
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Under U.S. Patent and Trademark Office (“USPTO”) 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) (MPEP § 2106.04(a)(2) (9th Ed.,
Rev. 10.2019, June 2020); USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan.
7, 2019) (“2019 Revised Guidance”) (step 2A, prong one);
USPTO, October 2019 Update: Subject Matter Eligibility, 3–9,
available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf (Oct. 17, 2019) (“Oct.
2019 Update”); and
(2) additional elements that integrate the judicial
exception into a practical application (MPEP §§ 2106.04(d),
2106.05(a)–(c), (e)–(h); 2019 Revised Guidance, 84 Fed. Reg.
at 54–55; Oct. 2019 Update at 10–14).
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 is not “well-understood, routine, conventional”
in the field; 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.
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MPEP § 2106.05(d); 2019 Revised Guidance, 84 Fed. Reg. at 56; Oct. 2019
Update at 16.
ADOPTION OF EXAMINER’S FINDINGS AND CONCLUSIONS
With respect to the maintained rejection, we agree with and adopt as
our own the Examiner’s findings as set forth in the Answer and in the Final
Action from which this appeal was taken, and we concur with the
Examiner’s conclusions. We have considered Appellant’s arguments, but we
do not find them persuasive of error. We provide the following explanation
for emphasis.
ANALYSIS
Step 2A—prong one
In rejecting claim 42 as patent-ineligible, the Examiner determines
that the claim recites certain methods of organizing human activity. Final
Act. 2; Ans. 3. Appellant contends the Examiner erred because claim 42
does “not recite a human acting upon a referral.” Appeal Br. 6. Instead,
Appellant argues, claim 42 is “directed to an improved search engine that
implements specific computer-implemented operations that respond to a
particular computer-implemented search request with a modified result
based upon that search request.” Id. Appellant acknowledges, however, that
“[t]o the extent that receiving an oral request to identify someone to perform
a job within a budget is a fundamental economic process or a mental
process, the Examiner has identified something in the claims that recite[s] a
judicial exception.” Reply Br. 3.
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We agree with the Examiner that claim 42 at least recites a patent-
ineligible abstract idea. Specifically, claim 42 recites “receiving . . . a
recommendation query including a search criteria,” “receiving a plurality of
contact lists . . . associated with a plurality of . . . users,” “combining the
plurality of contact lists to generate a shared contact list,” “matching the
search criteria to the shared contact list to generate a recommendation result
comprised of a plurality of individual contacts,” “discovering, from the
shared contact list, at least one common contact who appears multiple times
within the shared contact list,” and “adding, to the recommendation result, a
confidence rating for each of the plurality of individual contacts within the
recommendation result,” “wherein the confidence rating for a particular
individual contact within the recommendation result is based upon a number
of instances the particular . . . contact is found within the shared contact
list.” The Examiner persuasively illustrates how these recitations correspond
to the collection, filtering, and ranking of contacts from multiple individuals
to make recommendations. Final Act. 3; Ans. 4. Thus, claim 42 recites
marketing or sales activities or behaviors, which represent an abstract idea in
the form of certain methods of organizing human activity. MPEP
§ 2106.04(a); 2019 Revised Guidance, 84 Fed. Reg. at 52; see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Intell.
Ventures I LLC v. Cap. One Bank (USA), 792 F.3d 1363, 1369–70 (Fed. Cir.
2015); In re Greenstein, 778 F. App’x 935, 937 (Fed. Cir. 2019).
Step 2A—prong two
The Examiner further determines that the judicial exception of claim
42 “is not integrated into a practical application because there are no
additional elements that could be interpreted as being more than the abstract
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idea, because all of the limitations have been mapped to the abstract idea.”
Final Act. 3–4. The Examiner belatedly acknowledges that at least some of
the recitations are not part of the abstract idea, but the Examiner determines
that
the recitation of [a] computer implementation, a recommend-
ation server, and on a client device[] are merely the equivalent
of adding the words “apply it” with the judicial exception, or in
other words, the additional elements recite nothing more than
[the] instructions to apply the abstract idea on a computer or . . .
use the computer as a tool for the implementation of the
abstract idea.
Ans. 5.
Appellant contends the Examiner erred because claim 42 “describes
the receipt of a computer data structure from a computer device” and
“recites a computer operation that generates a data structure, which is stored
in a computer device (i.e., data store).” Appeal Br. 7. Appellant further
argues the claim recitations “involve [a] shared contact list, which is a
computer data structure and necessarily involve computer operations.” Id. at
7–8. And, Appellant argues, claim 42 “establishes that the recommendation
result is also a computer data structure.” Id. at 8.
Appellant’s arguments are not persuasive, however, because, as the
Examiner notes, the additional recitations merely apply the abstract idea on a
computer, thus using the computer as a tool to perform the abstract idea.
Ans. 5; MPEP § 2016.04(d); see also Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
Appellant also contends claim 42 describes “a particular manner by
which the data is acquired and stored.” Appeal Br. 9. But the particular
features for data acquisition (i.e., that data is received from a plurality of
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contact lists and recommendation results are forwarded to a client device)
also represent using computer technologies as a tool, and thus do not
integrate the abstract idea into a practical application.
Appellant also contends “the claimed invention is directed to an
improved search engine, which is a computer technology.” Id. at 8. The
claimed invention does not, however, recite an improved search engine. At
best, it recites “matching [a] search criteria to [a] shared contact list.” But
matching search criteria to data does not represent an improved search
engine technology.
Appellant further contends the Examiner erred because claim 42 is
similar to example 42 of the published subject matter eligibility examples.
Appeal Br. 7–8; Reply Br. 7. Example 42, however, presents not one, but
two exemplar claims: one that integrates an abstract idea into a practical
application and one that fails to integrate an abstract idea into a practical
application. Subject Matter Eligibility Examples: Abstract Ideas, 18–20,
available at https://www.uspto.gov/sites/default/files/documents/101_
examples_37to42_20190107.pdf (Jan. 7, 2019) (“Examples”). Appellant
does not persuasively identify what features of claim 42 make the patent-
eligible exemplar claim of example 42 more pertinent than the patent-
ineligible exemplar claim of example 42.
Appellant argues that “[l]ike Example 42, the present claim recites
additional elements that explicitly integrate the alleged abstract idea into
computer technology.” Appeal Br. 7 (emphasis added). But the patent-
ineligible exemplar claim of example 42 recites “storing information . . . in a
plurality of network-based non-transitory storage devices,” “providing
access, by a content server,” and “storing the updated information . . . in the
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plurality of network-based non-transitory storage devices.” Thus, the patent-
ineligible exemplar claim of example 42 also recites a computer technology
similar to that argued by Appellant as dispositive with respect to claim 42.
This was insufficient to integrate the abstract idea into a practical
application. The computer technology recitations of claim 42 are similarly
insufficient here to integrate the underlying abstract idea into a practical
application.
For these reasons, we agree with the Examiner that claim 42 does not
include recitations that integrate the underlying abstract idea—marketing or
sales activities or behaviors representing certain methods of organizing
human activity—into a patent-eligible abstract idea.
Step 2B
With respect to step 2B, the Examiner determines claim 42 does “not
include additional elements that are sufficient to amount to significantly
more than the judicial exception because any additional elements are merely
well understood, routine and conventional data gathering steps.” Final Act. 4
(citing MPEP § 2106.5(d)).
Appellant does not persuasively show error in the Examiner’s
determination. Moreover, we agree with the Examiner that the additional
recitations (e.g., “a client device,” “a data store,” and the preamble recitation
of “a recommendation server”) represent well-understood, routine, and
conventional technologies that are insufficient to transform the judicial
exception to a patent-eligible invention. See, e.g., Spec. ¶¶ 8–10.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 42, and claims 43–59, which Appellant does not argue separately.
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CONCLUSION
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
42–59 101 Eligibility 42–59
TIME PERIOD FOR RESPONSE
No time period for taking 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)(1)(iv).
AFFIRMED