Ex Parte Juan et alDownload PDFPatent Trial and Appeal BoardDec 21, 201613179547 (P.T.A.B. Dec. 21, 2016) 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. 13/179,547 07/10/2011 Yun-Fang Juan 26295-17340 1748 87851 7590 12/23/2016 Faoehnnk/Fen wi ok EXAMINER Silicon Valley Center WOO, ANDREW M 801 California Street Mountain View, CA 94041 ART UNIT PAPER NUMBER 2441 NOTIFICATION DATE DELIVERY MODE 12/23/2016 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): ptoc @ fenwick.com fwfacebookpatents @ fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUN-FANG JUAN and MING HUA Appeal 2016-002147 Application 13/179,5471 Technology Center 2400 Before ERIC S. FRAHM, CATHERINE SHIANG, and CARL L. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—21, which are the only claims pending. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. STATEMENT OF THE CASE The invention relates to social networking, particularly creating clusters based on relationships. Abstract. Claim 1, reproduced below, is exemplary of the subject matter on appeal (disputed limitations emphasized): 1 The real party in interest is identified as Facebook, Inc. App. Br. 2. Appeal 2016-002147 Application 13/179,547 1. A method comprising: identifying a plurality of connections of a user, each connection comprising another user of a social networking system with whom the user has established a relationship in the social networking system; determining a measure of affinity for each pair of connections within the identified plurality of connections, each measure of affinity determined based at least in part on a number of friends in common between the pair of connections; grouping at least a subset of the connections into one or more clusters, wherein the connections are assigned to a cluster based on the determined measures of affinity, and outputting a result of the grouping comprising an identification of the clusters and which of the user's connections have been assigned to the clusters. App. Br. 25 (Claims Appendix). THE REJECTIONS Claims 1—8 and 16—20 stand rejected under 35 U.S.C. § 101 as not falling within one of the four statutory categories of invention. Final Act. 3. Claims 1—21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Work et al. (US 2006/0042483 Al; March 2, 2006), (“Work”) in view of Sundaresan (US 2007/0288602 Al; December 13, 2007) and Bosworth et al. (US 2008/0040475 Al; February 14, 2008) (“Bosworth”). Final Act. 5—26. 2 Appeal 2016-002147 Application 13/179,547 ANALYSIS The §101 rejection Appellants argue the Examiner errs because: The Examiner's Answer [and Final Action] fails to apply the two-step analysis as set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), and further elaborated on in Alice Corp. v. CLS Bank International, 134 S.Ct. 2347 (2014) (hereinafter “thq Alice test”). To date, the USPTO has also issued various guidelines for evaluating applications for patent subject matter eligibility based on the Alice test. See, e.g., 2014 Interim Eligibility Guidance, at http://www.uspto.gov/patents/law/exam/2014 eligibility_ qrs.pdf; July 2015 Update: Subject Matter Eligibility, at http://www. uspto. gov / sites/ default/files/ documents/ieg-july- 2015-update, pdf. Rather than follow these, the Examiner's Answer maintains the § 101 rejection on a conclusory statement that the claimed process could be carried out by a human. Since this is a proper legal basis for showing that the claims are directed to a judicial exception to § 101, the rejection cannot be maintained. Reply Br. 10. Appellants argue the Examiner “provides no factual or evidentiary support that the claims are directed to an abstract idea” and, instead, the rejected claims are “necessarily rooted in computer technology” and solves a problem “that only exists in the realm of computer networks.” App. Br. 8 (citing Spec. ^fl[ 3, 20; DDR Holdings, LLC v. Hotels.com, L.P., Case No. 2013-1505 (Fed. Cir. Dec. 5, 2014).). Appellants further argue, assuming arguendo, the claims are directed to an abstract idea, the claims present “significantly more” than this. Id. at 9. In particular, according to Appellants, the claimed invention “does not pre-empt the use of generic steps such as ‘identifying, determining, grouping 3 Appeal 2016-002147 Application 13/179,547 and outputting’ in all fields” and “[t]hus the pending claims are directed toward ‘inventive concepts’ that are ‘significantly more’ than the judicial exception under Alice.” Id. 70-11. The Examiner finds: The method including steps of identifying, determining, grouping and outputting are broad enough that the claim steps could be completely performed mentally, verbally or without a machine nor is any transformation apparent. For example, the method limitations that contain the identifying, determining, grouping and outputting can be performed by a human. Final Act. 3. The Examiner additionally finds: the limitations, identifying ... , determining ..., grouping ..., and outputting ... can be done mentality, physically, or of human ingenuity. Collectively, the limitations result in a mental, physical, or human interaction, wherein the connections are identified, organized in a group or cluster based on a criteria, and the result will be given in a mental, physical, or human form. For example, First, a human can identify a group of users and would like to establish a connection with them (no transformation is occurring here). Next, a human can determine the number of other users that are in common or number of users that have similar interests (no transformation is occurring here). Then, the human can group a number of users into a group or type of category to be organized based on the human's choice (no transformation is occurring here). Fastly, the human can display or write down the group of users who have similar interests, any one with the most interaction (no transformation is occurring here). Examiner reminds the Applicant that these limitations can be done mentally, verbally, or written on a piece of paper conducting these steps. Ans. 3^4. 4 Appeal 2016-002147 Application 13/179,547 We agree with Appellants that Alice sets forth a two-step test; and we note the Examiner’s findings do not cite Alice nor directly address Appellants’ arguments regarding Alice. Alice Corp. Pty. Ltd. v. CLSBank Inti, 134 S.Ct. 2347 (2014). Therefore, we do not sustain the rejection of claims 1—8 and 16—20. NEW GROUND OF REJECTION The following new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). Claims 1—8, 152, and 16—20 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Alice identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under § 101. According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134 S.Ct. at 2355. Regarding step 1, we are not persuaded by Appellants’ arguments and agree, instead, with the Examiner’s findings that claim 1 can be performed by a human and the claim recites an abstract idea. Appellants present no persuasive argument that a computer is required nor that the Examiner’s findings and claim interpretation are unreasonable or overbroad. We note also the claim recites only a plurality of connections and a pair of connections and, based on the record before us, a computer is not required to perform the method of claim 1. Claim terms in a patent application are given the broadest reasonable interpretation consistent with the 2 Claim 15 was not previously rejected under 35 U.S.C. § 101. 5 Appeal 2016-002147 Application 13/179,547 Specification, as understood by one of ordinary skill in the art. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). However, our reviewing court cautions that great care should be taken to avoid reading limitations of the Specification into the claims. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Step two is “a search for an [‘Jinventive concept[’]—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 134 S.Ct. at 2355. Regarding step 2, while the Examiner provides no express finding, the record before us provides no persuasive evidence that the claim is significantly more than the ineligible concept (the abstract idea). As discussed supra regarding step one, the claims do not require a large number of connections and pairs and it is not seen why a computer is required. Moreover, even if the claims require a computer, there is no evidence such a computer would perform anything more than conventional computer processing. In addition, even if Appellants’ arguments regarding no preemption are valid, such arguments are not persuasive as they do not support the argument that the claim presents an inventive concept that is significantly more than the ineligible concept. At best, this argument supports the argument of no preemption. In view of the above, we determine claim 1, independent claim 16 which recites the same limitations and is argued together with claim 1, and dependent claims 2—8 and 16—20, which are not argued separately, are directed to non-statutory subject matter. 6 Appeal 2016-002147 Application 13/179,547 Independent method claim 15 recites substantially the same limitations as claim 1 but recites the phrase is computed: a step for determining a measure of affinity for each pair of connections within the identified plurality of connections, wherein a measure of affinity for the pair of connections is computed based on a number of friends in common between the pair of connections; App. Br. 28—29 (Claims Appendix) (emphasis added). For the same reasons discussed supra, claim 15 is directed to an abstract idea and is non statutory subject matter. As broadly but reasonably interpreted, the phrase is computed would be understood by one of ordinary skill in the art to include computed by a human being. In re Crish, 393 F.3d 1253, 1256. Moreover, even if the phrase is interpreted to require a computer, there is no evidence such a computer would perform anything more than conventional computer processing, supra. Therefore, we enter a new ground of rejection of claims 1—8, 15, and 16-20 under 35 U.S.C. § 101. The § 103(a) rejections Appellants argue, inter alia, that Bosworth does not teach the claim 1 limitation: determining a measure of affinity for each pair of connections within the identified plurality of connections, each measure of affinity determined based at least in part on a number of friends in common between the pair of connections App. Br. 12— 16; Reply Br. 10—11 (emphasis added). According to Appellants, Bosworth teaches affinity based on activities and relationships but does not teach affinity employing “a number of friends in common between any two users.” Id. at 14. In particular, Appellants 7 Appeal 2016-002147 Application 13/179,547 argue the Examiner errs in finding that Bosworth, paragraph 37, teaches “the affinity is measured by the past and present activities and the relationship(s) associated with the past and present activities, which can determine the number of common friends within the activity), which will determine the strength of the affinity.” Reply Br. 5 (citing Ans. 6). Appellants argue: Bosworth contains no explicit disclosure or any sort of implication of a number of common friends being computed between any two users, much less between two users who themselves share a common friend, nor does Bosworth suggest that a number of common friends can be used as a factor that influences an affinity calculation between any two users. Id. We are persuaded by Appellants’ arguments as, in the record before us, the Examiner presents insufficient factual findings regarding this limitation as required for obviousness. As stated by the Supreme Court, the Examiner’s obviousness rejection must be based on some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness .... KSRInt’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). In view of the above, we do not sustain the rejection of claim 1, and independent claims 9, 15, and 16, which recite the same limitation and are argued together with claim 1. We also do not sustain the rejection of dependent claims 2—8, 11—14, and 17—21. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[Dependent claims are nonobvious if the independent claims from which they depend are nonobvious . . . .”). Because our decision with regard to the disputed limitation is dispositive of the rejection of these claims, we do not address additional arguments raised by Appellants. 8 Appeal 2016-002147 Application 13/179,547 DECISION We reverse the Examiner’s decision rejecting claims 1—21 under 35 U.S.C. § 103(a). We reverse the Examiner’s decision rejecting claims 1—8 and 16—20 under 35 U.S.C. § 101 and the following new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). Claims 1—8, 15, and 16—20 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Our decision is not a final agency action. This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R § 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the prosecution will be remanded to the Examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the Examiner, overcomes the new ground of rejection designated in the decision. Should the Examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. 9 Appeal 2016-002147 Application 13/179,547 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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. § 1.136(a)(l)(iv). REVERSED 37 C.F.R, $ 41.50(b) 10 Copy with citationCopy as parenthetical citation