IP Law Daily, PATENT—Fed. Cir.: Method for recommending gifts based on Internet usage ruled obvious, (May 12, 2020)

By Brian Craig, J.D.

The PTAB properly denied a patent application that claims a method for recommending gifts based on a recipient’s social networking or ecommerce activity.

The U.S. Court of Appeals for the Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board rejecting a patent application relating to a method for recommending gifts based on a recipient’s social networking or ecommerce activity. The Federal Circuit held that substantial evidence supports the Board’s conclusion that a prior art reference teaches a user interface that allows a user to select a gift recipient in the user’s social network. Additionally, two prior art references concerning the collection and aggregating the recipient’s social networking or ecommerce activity information make the patent claims unpatentable based on obviousness (In re Nomula, May 12, 2020, Taranto, R.).

An individual, Jagadeshwar Reddy Nomula, filed two patent applications which claim systems and methods for recommending gifts using Internet-based information of the gift recipient. The examiner rejected all claims as unpatentable for obviousness. The examiner relied on the combination of two prior art references, U.S. Patent Publication No. 2008/0189188 (Morgenstern) and U.S. Patent Publication No. 2008/0294624 (Kanigsberg). The Board affirmed the examiner’s obviousness rejections. The applicant appealed.

Obviousness. The Federal Circuit held that substantial evidence supports the Board’s finding of obviousness for the applicant’s gift-giving platform. The Federal Circuit reviews an ultimate obviousness determination de novo and underlying factual findings for substantial evidence. Among the factual determinations in an obviousness analysis are findings as to the scope and content of the prior art.

The Federal Circuit concluded that there is substantial evidence to support the Board’s finding that a prior art reference, Morgenstern, teaches the first claimed element concerning a user interface that allows a user to select a gift recipient in the user’s social network. Morgenstern starts from the premise that users have devices that are coupled to a social network provider via a communications network. The figure and corresponding description teach a recipient window configured to receive an identity of a recipient user in which the gift-giving user enters a name of the recipient user and the system verifies the recipient user as a member of the social network environment.

Substantial evidence also supports the Board’s findings that the prior art discloses the second claimed element for the collection and aggregation of information about the recipient’s social networking or ecommerce activity to use for recommending a gift for the recipient. Morgenstern discloses recommending gifts based on the affinity of the recipient. Morgenstern also teaches the use of a "gift box" that displays digital assets received as gifts by a recipient. Kanigsberg more explicitly discloses making recommendations based on social networking and ecommerce activity information. It discloses making advertising recommendations "based on some information about the user’s profile" and the user’s "past behavior in conjunction with other users of the system," including all users’ ratings for products. Kanigsberg’s analysis of a user’s behavior and the behavior of other users—including product ratings—discloses using social networking and ecommerce activity information to make recommendations.

Additionally, substantial evidence supports the third claimed element relating to information stored in a database to suggest gifts. In Kanigsberg, user data is stored in a database that is accessed to generate advertising recommendations for a user based on the stored data. The Kanigsberg system, therefore, determines whether the user’s data is stored in a database so that the data can be compared to other users’ information in order to make recommendations.

Therefore, substantial evidence supports the Board’s determination of unpatentability for the applicant’s gift-giving platform based on obviousness.

This case is Nos. 19-1832 and 19-1833.

Attorneys: Jundong Ma (JDM Patent Law PLLC) for Jagadeshwar Reddy Nomula. Monica Barnes Lateef, USPTO, for Andrei Iancu.

Cases: Patent GCNNews FedCirNews