Ex parte Berk

• Docket Number: Appeal 2023-001838,Application 15/381,525,Technology Center 2100
• Decision Date: 19 January 2024
• Parties: Ex parte MATTHEW BERK and RYAN FRITZKY
• Court: Patent Trial and Appeal Board

1

Ex parte MATTHEW BERK and RYAN FRITZKY

Appeal 2023-001838

Application 15/381,525

Technology Center 2100

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 19, 2024

FILING DATE: 12/16/2016

Before LARRY J. HUME, JAMES W. DEJMEK, and JOYCE CRAIG Administrative Patent Judges.

DECISION ON APPEAL

CRAIG ADMINISTRATIVE PATENT JUDGE.

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant^[1] appeals from the Examiner's decision to reject claims 31-51 and 54-56. See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).

We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).

CLAIMED SUBJECT MATTER

The claims are directed to person-to-person viewing of recommended items as grouped into categories. Claim 31 reproduced below, illustrates the claimed subject matter:

31. A method in a computing system for authorizing item sharing between users, the method comprising:

maintaining, by one or more processors of the computing system, a catalog of items representing virtual objects and physical objects;

receiving, from a plurality of users by the one or more processors, indications of virtual objects or physical objects of interest;

associating by the one or more processors, with each of the plurality of users, items of interest, wherein the items of interest are from the maintained catalog of items and correspond to the virtual objects or physical objects of interest to the plurality of users;

receiving, by the one or more processors from a first user, a request to access from a second user a requested item from the items of interest associated with the second user, wherein the requested item is associated with an item category;

receiving, by the one or more processors, an indication that a permission action, associated with the request by the first user to access from the second user the requested item, has been accepted by the second user, the accepted permission action indicating that the second user has affirmatively shared the requested item with the first user;

establishing, based on the indication that the permission action has been accepted by the second user, an affirmative sharing relationship between the first user and the second user, wherein the affirmative sharing relationship enables the first user to be able to view the requested item and a set of items of interest associated with the second user and corresponding to the item category of the requested item, wherein the set of items of interest associated with the second user and associated with the item category includes an item other than the requested item; and identifying a bond between the first user and the second user according to affirmative interactions between the first and second users including at least the accepted permission action, the bond comprising a multi-dimensional measure of a relationship between the first and second users and being modifiable in accordance with multiple categories of items in the catalog of items that are affirmatively shared between the first and second users.

Appeal Br. 19 (Claims App.).

REFERENCES

The Examiner relied on the following references to reject the claims:

Name Reference Date

Aleong

US 2011/0004519 A1

Jan. 6, 2011

Bodor

US 2012/0078830 A1

Mar. 29, 2012

Oskolkov

US 2012/0253972 A1

Oct. 4, 2012

Higgins

US 2014/0214895 A1

July 31, 2014

REJECTIONS

The Examiner maintains the following rejections:

Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis

31, 32, 34, 35, 38-41, 43, 44, 47-51, 54-56

                              103
                            
                

Oskolkov, Higgins

33, 42

                              103
                            
                

Oskolkov, Higgins, Aleong

36, 37, 45, 46

                              103
                            
                

Oskolkov, Higgins, Bodor

ANALYSIS

Rejection of Claims 31, 32, 34, 35, 38-41, 43, 44, 47-51, 54, and 56^[2]

Appellant argues the claims subject to the first ground of rejection as a group. Appeal Br. 7-16. We select claim 31 as representative of the group, with claims 32, 34, 35, 38-41 43, 44, 47-51, 54, and 56 standing or falling with claim 31. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues dependent claim 55 separately. Appeal Br. 16.

Regarding claim 31, Appellant argues that the Examiner erred in finding that the combination of the cited portions of Oskolkov and Higgins teaches or suggests the limitation "identifying a bond between the first user and the second user according to affirmative interactions between the first and second users." Appeal Br. 14. In particular, Appellant argues that the cited paragraphs of Oskolkov (¶¶71, 73, and 79) do not disclose "affirmative interactions between the first and second users including at least the accepted permission action," as recited in claim 31. Id. at 14-15 (emphasis omitted).

Claim 31 recites "a request to access" from a first user and "an indication that a permission action . . . has been accepted by the second user, the accepted permission action indicating that the second user has affirmatively shared the requested item with the first user" Appeal Br. 19 (Claims App.) (emphasis added). Appellant persuades us that neither Oskolkov nor Higgins teaches or suggests a bond that is identified according to such affirmative actions between two users.

The Examiner's finding that Oskolkov teaches "bonds" between users because items have been shared between the users is insufficient to teach or suggest the disputed claim limitation. See Ans. 9. Oskolkov teaches that, at step 1820 of Figure 18, a request to access content "can be granted or denied as a function of permissions determined for the member from the social graph information." Oskolkov ¶ 79; Non-Final Act. 8. In other words, Oskolkov teaches using a set of predetermined criteria stored in memory to allow access to object information by others represented in a social graph. See Oskolkov ¶¶ 71, 78. Claim 31, however, requires "affirmative interactions between the first and second users" in order to form a bond. Appeal Br. 19 (Claims App.).

The Examiner's reliance on paragraph 51 of Higgins in the Answer (Appeal Br. 9) suffers from a similar deficiency. In paragraph 51, Higgins teaches using machine learning algorithms to calculate a strength of connection between individuals based in part on the "number of shared contacts or keywords between the users." Higgins ¶ 51. The cited paragraph of Higgins fails to teach or suggest "affirmative interactions between the first and second users" in order to form a bond, as claim 31 requires.

For these reasons, the Examiner has not identified in the cited art a teaching or suggestion of "identifying a bond between the first user and the second user according to affirmative interactions between the first and second users," as recited in claim 31.

Accordingly, we reverse the Examiner's rejection of independent claim 31, as well as of independent claim 40, and dependent claims 32, 34, 35, 38-41, 43, 44, 47-51, and 54-56, grouped with claim 31. We also reverse the Examiner's rejection of dependent claim 55 based on its dependency from claims 54 and 31. Regarding the rejections of remaining dependent claims 33, 36, 37, 42, 45, and 46, the Examiner has not shown that either of the additionally cited references overcomes the aforementioned deficiencies of Oskolkov and Higgins. Accordingly, we also reverse the Examiner's obviousness rejections of dependent claims 33, 36, 37, 42, 45, and 46.

New Ground of Rejection-Claims 31 and 40

Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 31 and 40 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.

Principles of Law

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 U.S. 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. E.g., 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 Court's two-part framework, described in Mayo and Alice. Id. at 217-218 (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 and4 in petitioners' application explain the basic concept of hedging, or protecting against risk.").

If the claim is "directed to" an abstract idea, we turn to the second part 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 (quotation marks omitted). "A claim 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. (alterations in original) (quoting Mayo, 566 U.S. at 77). "[M]erely requiring] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention." Id.

In 2019, the U.S. Patent and Trademark Office ("USPTO") published guidance on the application of 35 U.S.C. § 101.^{[3] [4]}

Under MPEP § 2106, we first look to whether the claim recites:

(1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts,

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