Case: 19-1832   Document: 57    Page: 1    Filed: 05/12/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

     IN RE: JAGADESHWAR REDDY NOMULA,
                     Appellant
              ______________________

                  2019-1832, 2019-1833
                 ______________________

     Appeals from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in Nos. 13/089,772,
 13/908,992.
                  ______________________

                 Decided: May 12, 2020
                 ______________________

     JUNDONG MA, Jdm Patent Law PLLC, Columbia, MD,
 for appellant.

    MONICA BARNES LATEEF, Office of the Solicitor, United
 States Patent and Trademark Office, Alexandria, VA, for
 appellee Andrei Iancu. Also represented by THOMAS W.
 KRAUSE, FARHEENA YASMEEN RASHEED, MEREDITH HOPE
 SCHOENFELD.
                 ______________________

     Before O’MALLEY, WALLACH, and TARANTO, Circuit
                        Judges.
 TARANTO, Circuit Judge.
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 2                                               IN RE: NOMULA




      Jagadeshwar Reddy Nomula filed U.S. Patent Applica-
 tion Nos. 13/908,992 and 13/089,772, which claim systems
 and methods for recommending gifts using Internet-based
 information of the gift recipient. The examiner rejected all
 pending claims as unpatentable for obviousness, and the
 Board upheld the examiner’s obviousness rejections. We
 affirm.
                                I
     The ’992 application is a continuation of the ’772 appli-
 cation. The applications claim methods and systems for
 recommending to a first social-network user gifts for a sec-
 ond user of the same social network based on information
 about social networking or ecommerce activity of the latter
 (the “recipient”). Use of the claimed systems or methods
 begins with authentication of the user’s own membership
 in an online social network. Then a first element—a user
 interface—allows the user to select a friend in that social
 network as a gift recipient. A second element collects and
 aggregates the recipient’s social networking or ecommerce
 activity information and analyzes it in order to recommend
 potential gifts for that person.
    Claim 1 of the ’992 application and claim 21 of the ’772
 application are representative for purposes of the appeal:
          1. A method, performed by a computer sys-
     tem, for recommending to a first user of targeted
     gifts for a second user in an online social network
     of the first user, the first user operating a user ter-
     minal, the online social network of the first user es-
     tablished through a social networking platform
     communicable to both the computer system and the
     user terminal, the computer system having access
     to a database storing ecommerce activity infor-
     mation of each of a plurality of system users, the
     ecommerce activity information of each user
     adapted to identify prior activities which the re-
     spective user has conducted on at least one
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 IN RE: NOMULA                                             3



    ecommerce website coupled to the database, the
    method comprising steps of:
     sending, by the computer system, a first set of
        instructions to the user terminal for the
        user terminal to display a first user inter-
        face (UI), the first UI containing one or
        more UI elements allowing the first user to
        authenticate to the social networking plat-
        form using the first user interface as a way
        for the first user to sign-up with or authen-
        ticate into the computer system;
     receiving, by the computer system, social net-
         work information of the first user from the
         social networking platform after the first
         user successfully authenticates to the social
         network platform, the received social net-
         work information including information
         about the second user;
     sending, by the computer system, a second set
        of instructions to the user terminal for the
        user terminal to display a second UI, the
        second UI listing the second user as a se-
        lectable recipient for receiving one or more
        gift items from the first user;
     receiving, by the computer system, selection in-
         formation from the user terminal, the selec-
         tion information indicating that the second
         user is selected by the first user as a recip-
         ient to receive one or more gifts from the
         first user;
     receiving, by the computer system, social net-
         work information of the second user from
         the social networking platform,
     determining, by the computer system, whether
         the database stores ecommerce activity
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 4                                             IN RE: NOMULA




          information of the second user as one of the
          plurality of system users, using the re-
          ceived social network information of the
          second user;
      retrieving, when ecommerce activity infor-
          mation of the second user is determined to
          be present in the database, ecommerce ac-
          tivity information of the second user, and
          deciding one or more potential gift items for
          the second user using at least the retrieved
          ecommerce activity information of the sec-
          ond user; and
      sending, by the computer system, a third set of
         instructions to the user terminal for the
         user terminal to display a third UI, the
         third UI listing the decided one or more po-
         tential gift items as selectable for purchase
         for the second user.
 J.A. 401–02.
          21. A method, performed by a computer sys-
     tem, for recommending to a first user of targeted
     gifts for a second user linked to the first user
     through a first online social networking platform,
     the first user operating a user terminal, the user
     terminal comprising a network-capable computing
     device having a display screen to display graphical
     user interfaces, the first online social networking
     platform having at least one server adapted to per-
     form online social networking services for users
     thereof, the computer system comprising a proces-
     sor, a system memory, and a network interface de-
     vice (NID) adapted to enable the computer system
     to communicate to both the user terminal and the
     first online social networking platform, the method
     comprising the steps of:
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 IN RE: NOMULA                                             5



     sending, by the computer system, a first set of
        instructions to the user terminal for the
        user terminal to display a first user inter-
        face (UI), the first UI enabling the first user
        to authenticate to the first online social net-
        working platform as a way for the first user
        to sign-up with or authenticate into the
        computer system;
     receiving, by the computer system, social net-
         work information of the first user from the
         first online social networking platform af-
         ter the first user successfully authenticates
         to the first online social networking plat-
         form, the received social network infor-
         mation including information about friends
         in a social network of the first user in the
         first online social networking platform;
     sending, by the computer system, a second set
        of instructions to the user terminal for the
        user terminal to display a second UI, the
        second UI enabling the first user to select
        one or more friends in the first user’s social
        network for whom the first user wishes to
        purchase one or more gifts;
     receiving, by the computer system, giftee selec-
         tion information from the user terminal,
         the giftee selection information indicating
         that the second user is among the selected
         one or more friends for whom the first user
         wishes to purchase one or more gifts;
     receiving, by the computer system, aggregated
         social network information of the second
         user aggregated from one or more online so-
         cial networking platforms;
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 6                                               IN RE: NOMULA




         processing and analyzing, by the computer sys-
             tem, the received aggregated social net-
             work information of the second user, and
             recommending one or more potential gift
             items for the second user using the received
             aggregated social network information of
             the second user; and
         sending, by the computer system, a third set of
            instructions to the user terminal for the
            user terminal to display a third UI, the
            third UI presenting the recommended one
            or more potential gift items as selectable by
            the first user for purchase for the second
            user.
 J.A. 921–22.
     The examiner rejected pending claims 1–4, 6–14, and
 16–22 of the ’992 application and pending claims 21–32 and
 39–46 of the ’772 application as unpatentable for obvious-
 ness. As relevant in this appeal, the examiner relied on the
 combination of U.S. Patent Publication No. 2008/0189188
 (Morgenstern) and U.S. Patent Publication No.
 2008/0294624 (Kanigsberg). 1 Nomula appealed the exam-
 iner’s rejections to the Board pursuant to 35 U.S.C.
 § 134(a). 2
     The Board affirmed the examiner’s obviousness rejec-
 tions. Ex parte Nomula, No. 2017-011126, 2019 WL
 1255499, *7–12 (P.T.A.B. Feb. 25, 2019) (’992 Decision); Ex


     1   Although the examiner also relied on U.S. Patent
 Publication No. 2009/0222329 (Ramer) in rejecting some
 claims, Nomula has made no arguments to this court about
 that reference, so we do not address it.
     2   The examiner also rejected the same claims under
 35 U.S.C. § 101, but the Board reversed those rejections.
 No § 101 issue is before us.
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 IN RE: NOMULA                                               7



 parte Nomula, No. 2017-011325, 2019 WL 1255500, *7–10
 (P.T.A.B. Feb. 25, 2019) (’772 Decision); J.A. 14–25, 39–45. 3
 The Board agreed with the examiner that Morgenstern and
 Kanigsberg together teach all claim elements relevant to
 Nomula’s present appeal. The Board found that Morgen-
 stern teaches a system that allows a user to input the name
 of a recipient into a gift module, which, after verifying that
 the recipient is a member of an online social network, rec-
 ommends gifts (“assets”) for the recipient. ’992 Decision,
 2019 WL 1255499, at *8; J.A. 17–18 (citing J.A. 1025, 1027,
 1030, 1043–46). The Board also found that the Morgen-
 stern system displays gifts already received by the recipi-
 ent so that the user can choose to give either accessories for
 a displayed gift (e.g., headphones if the recipient has an
 IPOD) or a non-duplicative gift. ’992 Decision, 2019 WL
 1255499, at *9; J.A. 19–20 (citing J.A. 1041, 1044); see J.A.
 1025–26, 1030–31. Additionally, Morgenstern discloses
 making gift recommendations based on the recipient’s
 known affinity for certain assets. ’992 Decision, 2019 WL
 1255499, at *8; J.A. 17–18 (citing J.A. 1044).
      The Board further found that Kanigsberg teaches us-
 ing a social-network user’s social networking or ecommerce
 activity information to make recommendations. ’992 Deci-
 sion, 2019 WL 1255499, at *10; J.A. 20. Kanigsberg de-
 scribes a system and method for generating advertising
 recommendations, including in an ecommerce environ-
 ment, based on interest information, keyword terms, and
 prior product ratings from users’ social-networking pro-
 files. Id. (citing J.A. 1096); see J.A. 1050, 1099. The Board
 found that combining Morgenstern with Kanigsberg would
 yield “no more than a predictable result to one skilled in
 the art” and would teach all claim elements relevant to



     3   The Board’s decisions are substantively the same
 for purposes of this appeal. For simplicity, we cite only the
 ’992 Decision.
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 8                                                IN RE: NOMULA




 Nomula’s appeal. 4 ’992 Decision, 2019 WL 1255499, at *10;
 J.A. 20.
     Nomula timely appealed the Board’s decisions to this
 court under 35 U.S.C. § 141(a), and we consolidated the ap-
 peals. We have jurisdiction under 28 U.S.C. § 1295(a)(4).
                                II
      “We review the Board’s ultimate obviousness determi-
 nation de novo and underlying factual findings for substan-
 tial evidence.” In re Varma, 816 F.3d 1352, 1359 (Fed. Cir.
 2016). Among the factual determinations in an obvious-
 ness analysis are “findings as to the scope and content of
 the prior art.” Ariosa Diagnostics v. Verinata Health, Inc.,
 805 F.3d 1359, 1364 (Fed. Cir. 2015).
     Nomula argues that the Board lacked substantial evi-
 dence to find that the combination of Morgenstern and
 Kanigsberg discloses (1) a user interface allowing a user to
 select a recipient in the user’s social network, (2) collecting
 and using the recipient’s aggregated social networking or
 ecommerce activity information to recommend gifts for the
 recipient, and (3) determining whether the recipient’s ag-
 gregated information is stored in a database. We disagree.
     There is substantial-evidence support for the Board’s
 finding that Morgenstern teaches what Nomula identifies
 as the first claimed element—a user interface that allows
 a user to select a gift recipient in the user’s social network. 5



     4    Nomula does not challenge the Board’s finding of a
 motivation to combine Morgenstern with Kanigsberg with
 a reasonable expectation of success, so we do not discuss
 that aspect of the Board’s analysis.
     5    Nomula notes several claim limitations implicating
 this first element, though he identifies only the following
 limitations as “key”: “receiving . . . social network infor-
 mation of the first user from the social networking
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 IN RE: NOMULA                                                 9



 See ’992 Decision, 2019 WL 1255499, at *8; J.A. 17–18.
 Morgenstern starts from the premise that users have de-
 vices that “are coupled to a social network provider . . . via
 a communications network.” J.A. 1042. Morgenstern’s
 Figure 6 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.”
 J.A. 1045; J.A. 1030 (showing a recipient window 610). The
 system includes a “gift display window” from which the
 user can choose a gift to deliver to the selected recipient.
 J.A. 1045–46; J.A. 1030 (showing “an assortment of gifts
 640” in display window 620).
      There is likewise substantial-evidence support for the
 Board’s findings that the prior art discloses what Nomula
 identifies as the second and third elements. The second
 element is the collection and aggregation of information
 about the recipient’s social networking or ecommerce activ-
 ity to use for recommending a gift for the recipient. 6 See



 platform,” “listing the second user as a selectable recipi-
 ent,” and “receiving . . . selection information from the user
 terminal, the selection information indicating that the sec-
 ond user is selected by the first user as a recipient to re-
 ceive one or more gifts from the first user.” Appellant’s Br.
 9–10. Nomula makes no distinctions among these limita-
 tions in his argument about what he treats as the first ele-
 ment.
     6   Nomula again identifies several claim limitations
 implicating this second element: “receiving . . . social net-
 work information of the second user from the social net-
 working platform,” “retrieving, when ecommerce activity
 information of the second user is determined to be present
 in the database, ecommerce activity information of the sec-
 ond user,” and “sending . . . a third set of instructions to the
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 10                                             IN RE: NOMULA




 ’992 Decision, 2019 WL 1255499, at *9–10; J.A. 18–20. The
 third is determining whether the gift recipient’s social net-
 working or ecommerce activity information exists in a da-
 tabase along with other users’ information. The evidence
 for these elements is usefully discussed together.
      The prior art teaches collecting and aggregating the re-
 cipient’s social networking or ecommerce activity infor-
 mation.     Morgenstern discloses that users of social
 networking platforms “provid[e] information about the
 user to a social network website for access by the other us-
 ers.” J.A. 1041. This information includes “current job po-
 sition, hobbies,” and “information about gifts received, gifts
 given, purchases made, etc.” Id. Kanigsberg similarly dis-
 closes collecting and analyzing a user’s interests, including
 “movies, music[,] books,” and “[r]atings for products.” J.A.
 1096.
     The prior art likewise discloses using the recipient’s ag-
 gregated social networking or ecommerce activity infor-
 mation to recommend gifts.           Morgenstern discloses
 recommending gifts based on the “affinity of the recipient.”
 J.A. 1044. Morgenstern also teaches the use of a “gift box”
 that displays “digital assets received as gifts by a recipi-
 ent.” J.A. 1041, 1044; see J.A. 1025–26, 1030–31. This in-
 formation is social networking or ecommerce activity
 information 7 that indicates which assets the recipient


 user terminal for the user terminal to display a third [user
 interface]” in order to recommend gifts for purchase. Ap-
 pellant’s Br. 13. Nomula makes no distinctions among
 these limitations in his argument about what he treats as
 the second element.
     7    Nomula does not challenge the Board’s determina-
 tion that “ecommerce activity information” is “information
 indicative of [a] user’s ecommerce activities on an ecom-
 merce website.” See ’992 Decision, 2019 WL 1255499, at
 *9; J.A. 19 (emphasis removed).
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 already has and suggests limitations on the choice of gifts.
 See J.A. 1041 (when a recipient has an “IPOD” icon, “a sec-
 ond IPOD would probably not be an appropriate gift, while
 IPOD accessories and tunes might be appropriate gifts”),
 1044. There is substantial evidence for the Board to find
 that the recipient’s aggregated information is used in gift
 recommendations.
      Kanigsberg more explicitly discloses making recom-
 mendations based on social networking and ecommerce ac-
 tivity 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’
 “[r]atings for products.” J.A. 1096. As the Board found,
 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. ’992 Decision, 2019 WL 1255499,
 at *10; J.A. 20 (citing J.A. 1096).
     Further, in Kanigsberg, “user data [is] stored in [a] da-
 tabase” that is accessed to generate advertising recommen-
 dations for a user based on the stored data. J.A. 1099; see
 J.A. 1054 (showing “Data repository 315”), 1096, 1101 (de-
 scribing “Database Construction and Population”). As the
 Board found, “Kanigsberg explicitly discloses statistically
 comparing a user’s personal ratings to the collaborative set
 of ratings [from other users] to form recommendations.”
 ’992 Decision, 2019 WL 1255499, at *10; J.A. 20. 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 rec-
 ommendations. Substantial evidence supports the Board’s
 conclusion that Kanigsberg, in combination with
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 12                                            IN RE: NOMULA




 Morgenstern’s gift-giving platform, discloses the second
 and third elements. 8
                             III
     For the foregoing reasons, we affirm the Board’s deci-
 sion.
                       AFFIRMED




      8   The Director argues that Nomula failed to pre-
 serve, before the Board, several of the arguments presented
 in Nomula’s opening brief. Because we find that substan-
 tial evidence supports the Board’s decision, we do not ad-
 dress these waiver arguments.
