Zohar Beeri

Patent Trials and Appeals Board

Sep 4, 2019

12729434 - (D) (P.T.A.B. Sep. 4, 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.
12/729,434 03/23/2010 Zohar Beeri BEER P0891 7207
122066 7590 09/04/2019
M&B IP Analysts, LLC
500 Headquarters Plaza
Morristown, NJ 07960-7070
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
eofficeaction@appcoll.com
michael.benshimon@gmail.com
pair@mb-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZOHAR BEERI
____________

Appeal 2018-001326
Application 12/729,434
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
non-final rejection of claims 1–21. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a system, method, and computer program product
for social network based transactions. The computer program product may
include a non-transient computer readable medium that may store
instructions for monitoring an offer to enter a transaction. (Spec. ¶ 6, Title).
Claim 1 is representative of the subject matter on appeal.
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1. A computer program product that comprises a non
transient computer readable medium that stores instructions for:
monitoring an offer to enter a transaction, wherein the
offer is being distributed over a social networking community
by a referring entity; wherein members of the social networking
community interact through a network;
detecting a completion of the transaction;
compensating the referring entity, wherein the referring
entity differs from an initiator of the offer; and
detecting a contribution that is not directly attributed to
the completion of the transaction; and compensating the
contributing entity, the contributing entity differs from the
referring entity and is not directly associated with the
transaction.

App. Br. 16 (Claims Appendix).

THE REJECTION
Claims 1–21 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–21 under 35 U.S.C. § 101.
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, . . . 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
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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 that the patent in practice
amounts to significantly more than a patent upon
the [ineligible concept] itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, 57 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims are directed to storing,
monitoring, collecting and transmitting data. The Examiner determines that
the claims are directed to a fundamental economic practice in that the claims
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create a contractual relationship - compensation based on contribution,
and/or a certain method of organizing human activities. The Examiner also
determines that the claims are directed to comparing and storing information
and using rules to identify options. (Non-Final Act. 2–3).
The Examiner finds that the claims do not recite additional elements
that are sufficient to amount to significantly more than the judicial
exception. In regard to the recitations in claim 1 in addition to the judicial
exception, the Examiner finds that the processor system merely receives,
processes, and stores data and that the functions of the processor system are
well-understood and conventional activities known in the employment and
social network art. The Examiner also finds that the claims do not recite an
improvement to the functioning of the computer itself or meaningful
limitations beyond generally linking the use of the abstract idea to a
particular technological environment. (Non-Final Act. 3).
The Specification discloses that the computer readable medium of the
invention may store instructions for monitoring a virtual negotiation between
the initiator of an offer and a third party. The computer readable medium
may store instructions for printing a receipt indicative of completion of the
transaction. (Spec. 2). As such, the Specification supports the Examiner’s
determination that the claims recite creating a contractual relationship -
compensation based on contribution, which, we agree is a fundamental
economic practice, i.e., a certain method of organizing human activity.
Guidance, 84 Fed. Reg. at 52.
The steps recited in claim 1, for example, also support the
determination that the claims recite creating a contractual relationship -
compensation based on contribution by reciting: “monitoring an offer to
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enter a transaction,” “detecting a completion of the transaction,”
“compensating the referring entity,” “detecting a contribution,” and then
“compensating the contributing entity.”
We thus agree with the Examiner’s findings that the claims recite a
fundamental economic practice.
Also, we find the steps of “monitoring an offer,” detecting a
completion of the transaction,” and “detecting a contribution” constitute
“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain
arrangements involving contractual relations are directed to abstract ideas).
Thus, we find that the claims recite a fundamental economic practice or, in
the alternative, a mental process, i.e., methods of organizing human activity
or mental processes, and, therefore, an abstract idea.
Turning to the second prong of the “directed to test”, claim 1 requires
a “computer program product,” “a social networking community” and “a
network.” The recitation of the words “computer program product,” “social
networking community” and “network” does not impose “a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at
18. We find no indication in the Specification, nor does Appellant direct us
to any indication, that the operations recited in independent claim 1 invoke
any inventive programming, require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, or that the
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claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”). Appellant
has not directed our attention to a disclosure in the Specification of a specific
computer, a specific social networking community or a specific network. In
fact, the Specification discloses that the method may be executed by a
computer that accesses a computer readable medium of a computer product,
which supports the Examiner’s finding that the computer is a general
purpose computer. (Spec. ¶ 30). In addition, the Specification also discloses
that the social networking community may be any online social networking
community such as MySpace, Friendster, Facebook, LinkedIn, Orkut etc.
(Spec. ¶ 41). The network is depicted in Figure 2 as simply the Internet.
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
Therefore, the claims are directed to judicial exceptions without
integration into a practical application and are, therefore, directed to abstract
ideas.
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Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas, the claims must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S.
at 72–73).
The introduction of a computer program product into the claims does
not alter the analysis at Alice step two.
[T]he 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
“implemen[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 featur[e]” that
provides any “practical assurance that the process
is more than a drafting effort designed to
monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
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Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225 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 monitor, detect, and compensate, without more is simply using
a computer for the most basic functions. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316
(Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018). In addition, as we stated above, there is no improved social
networking community recited or disclosed.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-
access/display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
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allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the computer, the network or the social networking community. As we
stated above, the claims do not effect an improvement in any other
technology or technical field. Thus, the claims at issue amount to nothing
significantly more than instructions to apply the abstract ideas using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice,
573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 6–14 Appellant has
submitted concerning the patent eligibility of the claims before us that stand
rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We will not address Appellant’s argument that the action of the
Examiner to enter this present rejection is contrary to the principles of
compact prosecution. (App. Br. 8). This is a petitionable matter and is not
under the jurisdiction of the Board. See, e.g., Ex parte Wolf, 65 USPQ 527,
528 (Bd. Pat. App. 1945); Ex Parte Wilckens, 63 USPQ 187, 189 (Bd. Pat.
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App. 1942).
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims recite concrete technical features
solving Internet-related problems that yield a desired result. (App. Br. 12–
13). In making this argument, Appellant analogizes the claims to the claims
in DDR Holdings,773 F.3d a t 1245. 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.” DDR, 773 F.3d 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 DDR, 773 at 1258–59 (citing Ultramercial, 772 F.3d
a t 715–16). 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 715–16). Nevertheless, those
claims were patent ineligible because they “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,
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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 the 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.” Ultramercial, 772 F.3d at 712. Similarly,
Appellant’s asserted claims recite “[s]toring data (transaction compensation
rule data, social network entity data), [m]ontoring and [c]ollecting data
(transaction data, contributing entity data, referring entity data), and
[t]ransmitting compensation data based on saved rule data.” (Non-Final Act.
2). This is precisely the type of Internet activity found ineligible in
Ultramercial.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims include referral features that provide
computerized function improvements that are distinguishable from existing
economic practices. (App. Br. 12 (citing Spec. ¶ 75)). These improvements,
according to the Appellant, are that unlike current practices, the system
makes sure that referrals are being provided based on actual business
outcome not just for “selling” a contact and maintains integrity for a period
of time allowing to define referral fees in the context of time too. To the
extent Appellant maintains that the limitations of claim 1, because they are
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distinguishable or novel, necessarily amount to “significantly more” than an
abstract idea because the claimed apparatus is an improvement over the prior
art, Appellant misapprehends the controlling precedent. Although the
second step in the Alice/Mayo framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “an element or combination of elements
that is sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.” Alice, 573 U.S. at
217–18. A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 73.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain this rejection as it is directed to the remaining
claims because Appellant has not argued the separate eligibility of these
claims.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims on appeal
under 35 U.S.C. § 101.

DECISION
The decision of the Examiner 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)(1)(iv).
AFFIRMED