Ex Parte Jia et al

Patent Trials and Appeals Board

Jan 28, 2019

14078393 - (D) (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/078,393 11/12/2013
34051 7590
Stevens Law Group
1754 Technology Drive
Suite #226
San Jose, CA 95110
01/30/2019
FIRST NAMED INVENTOR
Jack Shilian Jia
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TSPR-00201 4346
EXAMINER
ROSEN, NICHOLAS D
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
uspto@stevenslawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK SHILIAN JIA, ROBERT DAVID BRADSHAW JR.,
YAN CARRIE JIAO, YUWEI GUI, and SCOTT BRENNER BRA VE
Appeal2018-000490
Application 14/078,393
Technology Center 3600
Before JAMES R. HUGHES, JOHN A. EVANS, and LARRY J. HUME,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 1, 10, and 21. App. Br. 6. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 Appellants state the real party in interest is Trosper, Inc. App. Br. 2.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed March 8, 2017, "App. Br."), the Reply Brief
(filed October 17, 2017, "Reply Br."), the Examiner's Answer (mailed
September 14, 2017, "Ans."), the Final Action (mailed January 10, 2017,
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Application 14/078,393
STATEMENT OF THE CASE
The claims relate to methods, systems, and computer program
products for trusted social networking. See Abstract.
Invention
Claims 1, 10, and 21 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below with some formatting added:
1. A method of determining which member-submitted
postings within a computerized social network are of a higher
quality and should be served more often than other member-
submitted postings within the computerized social network, the
method comprising:
storing, by a computerized server, a plurality of items
within a database, each item of the plurality of items
comprising a member-submitted posting within a computerized
social network and potentially being of interest to a human
member of the computerized social network;
determining, by the computerized server, an initial
distribution of a quality belief curve for each item of the
plurality of items based on one or more distributions of quality
belief curves corresponding to one or more similar items
contained within the database;
replacing, by the computerized server, the initial
distribution of the quality belief curve for each item of the
plurality of items with an updated distribution of the quality
belief curve for the item based on member behavior with
"Final Act."), and the Specification (filed November 12, 2013, "Spec.") for
their respective details.
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respect to the item after the item is served to one or more
human members of the computerized social network;
generating, by the computerized server, a quality score
for each item in the plurality of items, the quality score being at
least partially derived from a most recent distribution of the
quality belief curve for the item and being indicative of a
likelihood that the item is of interest to the human member of
the computerized social network;
for each item of a subset of items included in the plurality
of items, biasing, by the computerized server, a chance of
selecting the item upward as a function of the corresponding
quality score for the item so as to increase the chance of
selecting the item during a random selection process;
subsequent to the biasing, randomly selecting, by the
computerized server, one or more items from among the
plurality of items; and
serving, by the computerized server, the one or more
items to a computing device in the possession of the human
member of the computerized social network.
Rejection3
Claims 1, 10, and 21 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter without significantly more. 4 Final Act. 3-8.
3 The present application, filed November 12, 2013, i.e., after March 16,
2013, claims the priority of Provisional Application US 61/724,877, filed
prior to March 16, 2013. Therefore, the present application was examined
under the pre-AIA first to invent provisions. Final Act. 2.
4 The Examiner finds each claim recites non-obvious subject matter. Final
Act. 8-11.
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ANALYSIS
We have reviewed the rejections of Claims 1, 10, and 21 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We
are not persuaded that Appellants identify reversible error. Upon
consideration of the arguments presented in the Appeal Brief and Reply
Brief, we agree with the Examiner that all the pending claims are
unpatentable. We adopt as our own the findings and reasons set forth in the
rejection from which this appeal is taken and in the Examiner's Answer, to
the extent consistent with our analysis below. We provide the following
explanation to highlight and address specific arguments and findings
primarily for emphasis. We consider Appellants' arguments seriatim, as
they are presented in the Brief, pages 6-11.
CLAIMS 1, 10, AND 21: INELIGIBLE SUBJECT MATTER
Appellants argue all claims as a group in view of the limitations of
Claim 1 and the commensurate limitations of Claims 7 and 13. See App.
Br. 6-11. Therefore, we decide the appeal of the§ 101 rejections with
reference to Claim 1, and refer to the rejected claims collectively herein as
"the claims." See 37 C.F.R. § 4I.37(c)(l)(iv); In re King, 801 F.2d 1324,
1325 (Fed. Cir. 1986).
Appellants do not "concede that claims 1, 10, and 21 are 'directed to'
the abstract idea identified by the Office," but contend their "arguments are
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better expressed in the context of the second step of [the Alice] analysis."
App. Br. 7. In view of the 2019 Revised Guidance, 5 we conduct a full
analysis, including each step.
35 USC§ 101
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes "[l]aws of nature,
natural phenomena, and abstract ideas" from the realm of patent-eligible
subject matter, as monopolization of these "basic tools of scientific and
technological work" would stifle the very innovation that the patent system
aims to promote. Alice Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208,216
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S.66, 72-78 (2012); Diamond v. Diehr, 450
U.S. 175,185 (1981).
Under the mandatory Revised Guidance, we reconsider whether
Appellants' claims recite:
1. any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human
interactions such as a fundamental economic practice, or mental
processes), and
5 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4)
Fed. Reg. 50-57 (January 7, 2019) ("Revised Guidance").
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2. 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, do we then reach the issue of
whether the claim:
3. adds a specific limitation beyond the judicial exception that is 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.
Judicial Exceptions.
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas to explain that the abstract idea
exception includes the following groupings of subject matter, when recited
as such in a claim limitation(s) (that is, when recited on their own or per se):
(a) mathematical concepts, 6 i.e., mathematical relationships, mathematical
formulas, equations, 7 and mathematical calculations8; (b) certain methods of
6 Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of hedging ...
reduced to a mathematical formula ... is an unpatentable abstract idea.").
7 Diehr, 450 U.S. at 191 ("A mathematical formula as such is not accorded
the protection of our patent laws"); Parker v. Flook, 437 U.S. 584, 594
(1978) ("[T]he discovery of [ a mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.").
8 SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
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organizing human activity-fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions)9; and (c) mental processes 10----concepts performed in the human
mind (including observation, evaluation, judgment, opinion). 11
Claim 1 recites, inter alia, (a) "determining, by the computerized
server, an initial distribution of a quality belief curve for each item," and
(holding that claims to a "series of mathematical calculations based on
selected information" are directed to abstract ideas).
9 Alice, 573 U.S. at 219--20 (concluding that use of a third party to mediate
settlement risk is a "fundamental economic practice" and thus an abstract
idea); see Revised Guidance, p. 52, n.13 for a more extensive listing of
"certain methods of organizing human activity" that have been found to
abstract ideas.
10 If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind. See Revised Guidance, p. 52,
n. 14; see Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) ("[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.").
11 Mayo, 566 U.S. at 71 ("'[M]ental processes[] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work"' (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972))).
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(b) "generating, by the computerized server, a quality score for each item in
the plurality of items." In accordance with the Revised Guidance, we
conclude these "determining" and "generating" steps are mental processes
which are recited as such in the claims. Thus, Claim 1 recites a judicial
exception.
Integration of the judicial exception into a practical application.
Where, as here, we determine the claims recite a judicial exception,
we look to determine the presence of additional elements that integrate the
judicial exception into a practical application. The Revised Guidance is
"designed to more accurately and consistently identify claims that recite a
practical application of a judicial exception [] and thus are not 'directed to' a
judicial exception." Revised Guidance, at 53.
The claims recite a practical application where an additional element
reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field. 12 Revised Guidance,
at 55. The Examiner finds claim 1 recites storing, by a computerized server,
a plurality of items within a database, which is a routine computer operation,
and does not become a technological improvement by reason of the nature of
the items stored. Final Act. 4.
12 The Revised Guidance also finds integration into a practical application
where the judicial exception is used in medical treatment or to transform an
article to a different state. Revised Guidance, at 55. Such considerations are
not before us.
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Appellants contend Claims 1, 10, and 21 recite detailed methods
and/or systems for determining which member-submitted postings within a
computerized social network are of a higher quality and will be served more
often than other member-submitted postings within the computerized social
network. App. Br. 9. "[M]ethods and/or systems for determining which
member-submitted postings within a computerized social network are of a
higher quality and will be served more often than other member-submitted
postings within the computerized social network," as Appellants characterize
their claims, are merely "managing personal behavior or relationships or
interactions between people (including social activities") and are included in
the category of abstract ideas. Id.; Revised Guidance, p. 52. Appellants
argue, Claims 1, 10, and 21 are analogous to the claims at issue in DDR
Holdings 13 that were found to be patent eligible under Alice because,
according to Appellants, "[b ]oth the claims in DDR Holdings and claims 1,
10, and 21 provide a specific way to solve the problem that arises in the
realm of computer networks." App. Br. 9. Appellants argue "like the claims
in DDR Holdings, claims 1, 10, and 21 can be distinguished from those
patent-ineligible claims because 'the claimed solution is necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks."' Id.
For the reasons which follow, we conclude that Appellants' claims do
not integrate the judicial exception into a practical application. See MPEP
§§ 2106.05(a)-(c) and (e)-(h). We address these "practical application"
13 DDR Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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MPEP sections seriatim:
MPEP § 2106.05(a) "Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field."
"In determining patent eligibility, examiners should consider whether
the claim 'purport( s) to improve the functioning of the computer itself"' or
"'any other technology or technical field."' MPEP § 2106.05(a).
With respect to technological improvements, Appellants contend:
First, the pending claims address entirely different
technological subject matter than the claims in TL!
Communications, LLC- claim 1 is directed to techniques for
"determining which member-submitted postings within a
computerized social network are of a higher quality and should
be served more often than other member-submitted postings
within the computerized network."
Reply Br. 4. We conclude determining the quality of a social-media posting
is not an improvement to the functioning of a computer, nor of any other
technology.
MPEP § 2106.05(b) Particular Machine.
At the outset, we note that the Bilski machine-or-transformation test is
only applicable to the method (process) claims on appeal. This section of
the MPEP guides: "When determining whether a claim recites significantly
more than a judicial exception, examiners should consider whether the
judicial exception is applied with, or by use of, a particular machine." See
Bilski v. Kappas, 561 U.S. 593, 604 (2010) ("[T]he machine-or-
transformation test is a useful an important clue, and investigative tool" for
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determining whether a claim is patent eligible under § 101 ). MPEP
§ 2106.05(b).
MPEP § 2106.05(b) provides further guidance regarding what
constitutes a particular machine:
[A]s described in MPEP §2106.05(±), additional elements that
invoke computers or other machinery merely as a tool to
perform an existing process will generally not amount to
significantly more than a judicial exception. See, e.g., Versata
Development Group v. SAP America, 793 F.3d 1306, 1335, 115
USPQ2d 1681, 1702 (Fed. Cir. 2015) (explaining that in order
for a machine to add significantly more, it must "play a
significant part in permitting the claimed method to be
performed, rather than function solely as an obvious mechanism
for permitting a solution to be achieved more quickly").
We find the claims on appeal are silent regarding specific limitations
directed to an improved computer system, processor, memory, network,
database, or Internet, nor do Appellants direct our attention to such specific
limitations. "[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Alice, 573
U.S. at 223; see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract idea on 'an
Internet computer network' or on a generic computer is still an abstract
idea"). Applying this reasoning here, we conclude Appellants' claims are
not directed to a particular machine, but rather merely implement an abstract
idea using generic computer components. Thus, we conclude Appellants'
method claims fail to satisfy the "tied to a particular machine" prong of the
Bilski machine-or-transformation test.
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MPEP § 2106.05(c) Particular Transformation.
This section of the MPEP guides: "Another consideration when
determining whether a claim recites significantly more is whether the claim
effects a transformation or reduction of a particular article to a different state
or thing." "[T]ransformation and reduction of an article 'to a different state
or thing' is the clue to patentability of a process claim that does not include
particular machines." Bilski v. Kappas, 561 U.S. at 658 (quoting Benson,
409 U.S. at 70).
The claims operate to select certain electronic data, i.e., social media
posts. The selection of electronic data is not a "transformation or reduction
of an article into a different state or thing constituting patent-eligible subject
matter[.]" See In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (emphasis
added). See also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1375 (Fed. Cir. 2011) ("The mere manipulation or reorganization of
data ... does not satisfy the transformation prong."). Applying this
guidance here, we conclude Appellants' method claims fail to satisfy the
transformation prong of the Bilski machine-or-transformation test.
MPEP § 2106.05(e) Other Meaningful Limitations.
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment.
450 U.S. 175,209 USPQ 1 (1981). In Diehr, the claim was
directed to the use of the Arrhenius equation ( an abstract idea or
law of nature) in an automated process for operating a rubber-
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molding press. 450 U.S. at 177-78, 209 USPQ at 4. The Court
evaluated additional elements such as the steps of installing
rubber in a press, closing the mold, constantly measuring the
temperature in the mold, and automatically opening the press at
the proper time, and found them to be meaningful because they
sufficiently limited the use of the mathematical equation to the
practical application of molding rubber products. 450 U.S. at
184, 187, 209 USPQ at 7, 8. In contrast, the claims in Alice
Corp. v. CLS Bank International did not meaningfully limit the
abstract idea of mitigating settlement risk. 573 U.S._, 134 S.
Ct. 2347, 110 USPQ2d 1976 (2014). In particular, the Court
concluded that the additional elements such as the data
processing system and communications controllers recited in
the system claims did not meaningfully limit the abstract idea
because they merely linked the use of the abstract idea to a
particular technological environment (i.e., "implementation via
computers") or were well-understood, routine, conventional
activity.
MPEP § 2106.05(e).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 573 U.S. at 225. Similarly as for Alice, we find
that "[t]aking the claim elements separately, the function performed by the
computer at each step of the process is '[p ]urely conventional."' Id. "In
short, each step does no more than require a generic computer to perform
generic computer functions." Id.
We agree with the Examiner's conclusion (Ans. 13) that Appellants'
claims do not add meaningful limitations beyond generally linking the use of
the judicial exception to a particular technological environment.
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MPEP § 2106.05([) Mere Instructions To Apply An Exception.
Appellants are not persuasive that their claims do any more than to
merely invoke generic computer components merely as a tool in which the
computer instructions apply the judicial exception.
MPEP § 2106.05(g) Insignificant Extra-Solution Activity.
The claims operate to rank social media posts, i.e., "items."
Following a determination of preferred items there is "extra-solution
activity," i.e., "serving, by the computerized server, the one or more items to
a computing device in the possession of the human member of the
computerized social network." We find the "serving" of data to be a classic
example of insignificant extra-solution activity. See, e.g., Bilski, 545 F .3d at
963 (en bane), aff'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010).
MPEP § 2106.05(h) Field of Use and Technological Environment.
[T]he Supreme Court has stated that, even if a claim does not
wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or
post-solution activity-such as identifying a relevant audience,
a category of use, field of use, or technological environment.
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013). We
find the "computer" and "server" limitations are simply a field of use that
attempts to limit the abstract idea to a particular technological environment.
We do not find Appellants' argument to be persuasive because "[ t ]he
courts have also identified examples in which a judicial exception has not
been integrated into a practical application." Revised Guidance, at 55. The
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claims fail to recite a practical application where the additional element does
no more than generally link the use of a judicial exception to a particular
technological environment or field of use. Id. The mere application of an
abstract idea in a particular field is not sufficient to integrate the judicial
exception into a practical application. See id. at n. 32. In view of the
foregoing, we conclude the claims are "directed to" a judicial exception.
Well-understood, routine, conventional.
Because the claims recite a judicial exception and does not integrate
that exception into a practical application, we must then reach the issue of
whether the claim adds a specific limitation beyond the judicial exception
that is not "well-understood, routine, conventional" in the field. Revised
Guidance, at 56. The Examiner finds the further limitations are "well-
understood, routine, conventional" because an "ordinary computer can be
programmed to perform these steps given rules for the determining,
replacing, and generating." Final Act. 5. The Examiner finds "even reading
into this actual transmission of the one or more items from one computer,
likely a server, to the computer device in possession of the human member,
this amounts only to routine use of computer and communications
technology." Final Act. 6.
Appellants describe the computer and communications system
environment of their invention consistent with its being "well-understood,
routine, [and] conventional":
Those skilled in the art will appreciate that the invention
may be practiced in network computing environments with
many types of computer system configurations, including,
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personal computers, desktop computers, laptop computers,
message processors, hand-held devices, multi-processor
systems, microprocessor-based or programmable consumer
electronics, network PCs, minicomputers, mainframe
computers, mobile telephones, PDAs, tablets, pagers, routers,
switches, various storage devices, and the like.
Spec. ,r 49.
We find such "well-understood, routine, [and] conventional"
limitations fail to indicate the presence of an inventive concept.
Specified at a high level of generality.
It is indicative of the absence of an inventive concept where the
claims simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance, at 56.
Appellants contend the "biasing" algorithm of claim 1 provides the
"significantly more" and thus, an inventive concept. See Reply Br. 5.
Claim 1 recites the "biasing" limitation:
for each item of a subset of items included in the plurality
of items, biasing, by the computerized server, a chance of
selecting the item upward as a function of the corresponding
quality score for the item so as to increase the chance of
selecting the item during a random selection process;
However, claim 1 fails to recite any specific steps for a biasing algorithm,
nor do Appellants cite Specification disclosure for the required specificity.
We find the biasing limitation is specified at such a high level of
generality consistent with the absence of an inventive concept. Therefore,
we conclude that none of the claim limitations, viewed "both individually
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and as an ordered combination," amount to significantly more than the
judicial exception in order to sufficiently transform the nature of the claims
into patent-eligible subject matter. See Alice, 573 U.S. at 217 (internal
quotations omitted) (quoting Mayo, 566 U.S. at 79).
In view of the foregoing, we sustain the rejection of claims 1, 10, and
21 under 35 U.S.C. § 101.
DECISION
We affirm the rejection of Claims 1, 10, and 21 under 35 U.S.C.
§ 101.
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.
§ 41.50(±).
AFFIRMED
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