Erick TsengDownload PDFPatent Trials and Appeals BoardAug 1, 201914729705 - (D) (P.T.A.B. Aug. 1, 2019) Copy Citation 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. 14/729,705 06/03/2015 Erick Tseng 26295-29687/US 3745 87851 7590 08/01/2019 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER BOUTAH, ALINA A ART UNIT PAPER NUMBER 2443 NOTIFICATION DATE DELIVERY MODE 08/01/2019 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): fwfacebookpatents@fenwick.com ptoc@fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ERICK TSENG ____________________ Appeal 2018-0075301 Application 14/729,705 Technology Center 2400 ____________________ Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Facebook, Inc. is listed as the real party in interest. App. Br. 2. Appeal 2018-007530 Application 14/729,705 2 STATEMENT OF THE CASE Introduction The Application is directed to a “social networking system” that “provides relevant third-party content objects to users by matching user location, interests, and other social information with the content, location, and timing associated with the content objects.” Abstract. Claims 1–20 are pending, of which claims 1 and 12 are independent. App. Br. 11–16. Claim 1 is reproduced below for reference (bracketed element numbering added): 1. A computer-implemented method comprising: [1] maintaining connections between users of a social networking system; [2] identifying a second user connected to a first user in the social networking system; [3] identifying an interest of the second user; [4] determining a relevance score for a third-party content object associated with the interest of the second user, the relevance score comprising a measure of likelihood that the second user would be interested in the third-party content object; [5] calculating a weighted relevance score for the third-party content object based on the determined relevance score and a type of relationship between the first user and the second user maintained by the social networking system, the weighted relevance score comprising a measure of likelihood that the first user would be interested in the third-party content object associated with the second user; and [6] storing the weighted relevance score for the third-party content object associated with the interest of the second user in an account associated with the first user. Rejections Claims 1–20 stand rejected under 35 U.S.C. § 101 as being patent ineligible. Final Act. 2. Appeal 2018-007530 Application 14/729,705 3 Claims 1 and 12 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, and 18 of U.S. Patent No. 9,083,767. Final Act. 6. ANALYSIS We have reviewed the Examiner’s rejection in light of Appellant’s arguments. Arguments Appellant could have made but chose not to make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). A. Double Patenting Appellant does not dispute the double patenting rejection. See App. Br. 4–10. We, therefore, summarily affirm the rejection. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground of rejection to the Board, . . . . the Board may treat any argument with respect to that ground of rejection as waived.”). B. Patent Eligibility The Examiner determines claim 1 is patent ineligible under 35 U.S.C. § 101 because it is directed to an abstract idea and does not include additional elements that are sufficient to amount to significantly more than the abstract idea. See Final Act. 2–5; see also Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (describing the two-step framework “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.”). Appeal 2018-007530 Application 14/729,705 4 After the mailing of the Answer and the filing of the Briefs in this case, the USPTO published revised guidance on the application of § 101 (“Guidance”). See USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Pursuant to the Guidance “Step 2A,” the office first looks to whether the claim recites: (1) Prong One: 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); and (2) Prong Two: additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)– (c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then (pursuant to the Guidance “Step 2B”) look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); 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. See Memorandum. We are not persuaded the Examiner’s rejection is in error. We adopt the Examiner’s findings and conclusions as our own, and add the following primarily for emphasis and clarification with respect to the Guidance. Appeal 2018-007530 Application 14/729,705 5 I. Independent Claim 1 Step 2A: Prong One Pursuant to the Guidance, we agree with the Examiner that claim 1 recites “a computer implemented method performing the steps of social networking, identifying interests and calculating scores and storing them,” and “describes procedures that an intermediary (social network) takes in managing interaction between parties based on their interest, the interaction being basic human connection, which is a longstanding practice of basic human interaction (a method of organizing human activity)”. Final Act. 2– 3; see Spec. ¶ 3; see also Memorandum, Section III (A)(1) (Prong One: Evaluate Whether the Claim Recites a Judicial Exception), 84 Fed. Reg. at 54. Specifically, claim 1 recites limitations [1], [2], [3], [4], [5], and [6]. Limitations [1], [2], and [3] are steps of “social activities . . . and following rules or instructions,” which are classified by the Guidance as “managing personal behavior or relationships or interactions between people.” Memorandum at 52. Limitations [4], [5], and [6] are also “social activities . . . and following rules or instructions,” as well as “advertising, marketing or sales activities or behaviors; business relations,” such that these limitations are classified by the Guidance as “commercial or legal interactions” and “managing personal behavior or relationships or interactions between people.” Id. Thus, pursuant to the Guidance, these limitations recite the abstract concept of “[c]ertain methods of organizing human activity.” Id. Further, limitations [2], [3], [4], and [5] are also steps of “observation, evaluation, judgment, [and] opinion,” which are “concepts performed in the Appeal 2018-007530 Application 14/729,705 6 human mind.” Id. Pursuant to the Guidance, such limitations are the abstract concept of “[m]ental processes.” Id.2 Based on the foregoing discussion, we determine claim 1 recites a judicial exception according to the Guidance. See Memorandum at 54. Step 2A: Prong Two Appellant contends that “claim 1 improves upon the computer-related technology of automatic content recommendation systems.” App. Br. 7. Particularly, Appellant argues “[c]laim 1 recites a specific process of how to recommend a third party content object to a first user when the third party content object is associated with a connection (e.g., a second user) of the first user in the social networking system (i.e., the solution)” and thus “improves the computer system’s ability to find relevant content for user’s quickly and efficiently using the social networking connections and score calculations.” App. Br. 7. Appellant further argues the claimed “computer- focused method is not performed in the same way a human would do steps to determine interests of other people.” Reply Br. 2. We are not persuaded the Examiner’s rejection is in error pursuant to Step 2A, Prong Two of the Guidance. The limitations argued by Appellant 2 That the limitations reach both certain methods of organizing human activity and mental processes can be seen as stemming from the human behavior of decision making: “[i]n the absence of face-to-face interactions, perception of oneself as belonging to a certain virtual group leads one to act on information obtained from this group while making purchasing decisions.” Pentina et al, “The Role of Virtual Communities as Shopping Reference Groups,” Journal of Electronic Commerce Research, VOL 9, NO 2, 2008, at 127, available at https://www.researchgate.net/profile/VR_Prybutok/publication/228371815_ The_Role_of_Virtual_Communities_As_Shopping_Reference_Groups/links /02e7e52374dd813951000000.pdf (last accessed July 3, 2019). Appeal 2018-007530 Application 14/729,705 7 are part of a recited judicial exception, and thus do not comprise additional elements that integrate the exceptions into a practical application. See Memorandum at 54–55. Further, the claimed limitations, at most, improve a user or third party content provider’s social networking experience, rather than improving an underlying computer or other technology. See Spec. ¶¶ 3–4. To the extent the claim requires a computer implementation (based on the sole computer mention in the preamble), claim 1 merely links the judicial exception to a particular technological environment. See Memorandum at 55; Alice, 573 U.S. at 226 (“[N]one of the hardware recited by the system claims ‘offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers.”) (citation omitted)); see also Memorandum n.14 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011)). Accordingly, we determine the claim does not integrate the judicial exception into a practical application. See Memorandum, 84 Fed. Reg. at 54. We determine the “claim recites a judicial exception and fails to integrate the exception into a practical application,” therefore we proceed with “further analysis pursuant to the second step of the Alice/Mayo test (USPTO Step 2B).” Memorandum, 84 Fed. Reg. at 51. Step 2B Appellant argues “[t]he Examiner has not satisfied the newly revised procedure with respect to why the examiner considers the recited ‘calculating’ limitation or any of the other limitations to be well-understood, routine, or conventional.” Reply Br. 5. Appeal 2018-007530 Application 14/729,705 8 We are not persuaded by Appellant’s argument. As discussed above, limitation [5] recites the identified judicial exception, and thus is not an additional element, individually and in combination, that provides an inventive concept. See Memorandum at 56 (“[E]valuate the additional elements individually and in combination” in step 2B.); Memorandum fn. 24 (“USPTO guidance uses the term ‘additional elements’ to refer to claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception.”) (emphasis omitted). Further, the Specification provides the “computer implemented” recitation is well- understood, routine, and conventional. See Final Act. 4; see also Spec. ¶¶ 20–23, 146–150; Alice, 573 U.S. at 226; and OIP Techs., v. Amazon.com, 788 F.3d 1359, 1363 (Fed. Cir. 2015). Accordingly, we agree with the Examiner that independent claim 1 is patent ineligible, as well as independent claim 12 and dependent claims 2–4, 7–11, and 13–20 not argued separately. See Final Act 2–5, App. Br. 4–7. II. Dependent Claims 5 and 6 Appellant further argues that dependent claim 5 “recites a specific process for calculating the relevance score based on a location value, an interest value, a time value, and a connection value” whose “rules” further improve “upon conventional methods for recommending content to users as described above with respect to claim 1.” App. Br. 8. Appellant makes a similar argument with respect to dependent claim 6. App. Br. 9. We are not persuaded of Examiner error. Other than stating “claim 5 describes a “set of rules,” Appellant does not explain how claims 5 or 6 recite “an improvement to computer-related technology” or otherwise Appeal 2018-007530 Application 14/729,705 9 “recite[] significantly more than the alleged abstract idea.” App. Br. 8–9. Thus, we are not persuaded the dependent limitations are meaningfully different from the independent claims for purposes of the Alice analysis. Similar to the discussion above with respect to claim 1, a set of rules for calculating the relevance score (as in claim 5) and changing a weight of the relevance score (as in claim 6) are part of the identified judicial exceptions. See Ans. 5; cf. Trading Techs. Int’l, Inc. v. IBG LLC, No. 2017-2323, 2019 WL 1907236, at *4 (Fed. Cir. Apr. 30, 2019) (“[T]he purported advance is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.”) (quotations omitted); Alice, 573 U.S. at 222 (“[W]e rejected the argument that implement[ing] a principle in some specific fashion will automatically fal[l] within the patentable subject matter of § 101.”) (quotations omitted). Accordingly, we are not persuaded the Examiner errs in rejecting dependent claims 5 and 6 under 35 U.S.C. § 101. We sustain the Examiner’s rejection of these claims. DECISION The Examiner’s decision rejecting claims 1 and 12 on the ground of non-statutory double patenting is affirmed. The Examiner’s decision rejecting claims 1–20 as patent ineligible 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)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation