Ex Parte Powell et al

Patent Trial and Appeal Board

Jul 27, 2018

13532975 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/532,975 06/26/2012
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
07/31/2018
FIRST NAMED INVENTOR
Spencer Powell
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.
26295-20045/US 5502
EXAMINER
KOLOSOWSKI-GAGER, KATHERINE
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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 SPENCER POWELL and SEAN MICHAEL BRUICH
Appeal2017-004272
Application 13/532,975
Technology Center 3600
Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
ERIC S. FRAHM, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-16, which are all the claims pending in this application. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellants' invention "relates generally to brand promotion in a social
networking system." (Spec. ,r 1 ).
1 According to Appellants, the real party in interest is Facebook, Inc. of
Menlo Park, California. App. Br. 2.
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Application 13/532,975
Exemplary Claim
1. A computer-implemented method comprising:
storing, in a social networking system, a first brand
profile associated with a first brand corresponding to a first
commercial enterprise, a second brand profile
associated with a second brand corresponding to a second
commercial enterprise, and a set of connections between the
first brand and a plurality of users of the social networking
system, the connections indicating expressed interest in the first
brand declared by the plurality of users in the social
networking system;
receiving an endorsement request from the second brand,
the endorsement request comprising an interaction between the
first brand and the second brand describing by the second
brand, affirmative support from the first brand toward the
second brand;
responsive to the endorsement request, establishing a
connection between the first brand and the second brand, the
connection describing support of the second brand by the first
brand;
receiving an advertisement request from the second
brand, the advertisement request comprising advertisement
content for the second brand and a request to communicate the
connection between the first brand and the second brand to
one or more users who have connections to the first brand; and
providing an advertisement for display to at least one
user connected to the first brand, the advertisement including a
description of the connection between the first brand and the
second brand.
App. Br. 19 ( emphasis added to contested limitations).
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Rejections
A. Claims 1-16 are rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2.
B. Claims 1-11 are rejected under pre-AIA 35 U.S.C. § I02(b) as being
anticipated by Steelberg et al. (US 2011/0106632 Al published May 5,
2011) (hereinafter "Steelberg"). 2 Final Act. 5.
C. Claims 12-16 are rejected under pre-AIA 35 U.S.C. § I02(b) as being
anticipated by Trout et al. (US 2009/0276453 Al published Nov. 5,
2009) (hereinafter "Trout"). Final Act. 8.
Grouping of Claims
Claims 1, 7, and 12 are independent claims. Regarding anticipation
rejections Band Cover the cited prior art, and based upon Appellants'
arguments, we decide the appeal of rejection B of claims 1-11 on the basis
of representative independent claim 1. Based on Appellants' arguments, we
decide the appeal of rejection C of claims 12-16 on the basis of
representative independent claim 12. See 37 C.F.R. § 4I.37(c)(l)(iv) (2012).
Issues on Appeal
Did the Examiner err in rejecting claims 1-16 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1-11 under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Steelberg?
2 Although the Examiner relied on 35 U.S.C. § I02(a) for Rejection B (Final
Act. 5), we note Steelberg is a § 102(b) reference, published on May 5,
2011, more than a year prior to Appellants' effective filing date of June 26,
2012. Appropriate correction to Rejection B has been made above.
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Did the Examiner err in rejecting claims 12-16 under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Trout?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Mayo/Alice Analysis under 35 USC§ 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "'long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable."' Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
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fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, at 2355
(quoting Mayo, 566 U.S. at 79, 78). We consider the question of whether
the claims are directed to a specific improvement in the capabilities of the
computing devices, or, instead, "a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
The Examiner's Rejection A under 35 USC§ 101
Regarding the first step of the Alice/ Mayo analysis, the Examiner
concludes claims 1-16 are directed to an abstract idea: 3
3 "Patent eligibility under§ 101 presents an issue of law .... " Accenture
Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed.
Cir. 2013).
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The claimed invention is directed to providing brand affiliated
advertisements to a user, based on a user and brand profile.
Providing brand affiliated advertisements to a user, based on a
user and brand profile is a fundamental economic practice
(targeted advertisements to create more effective delivery).
Final Act. 4 ( emphasis added).
Regarding the second step of the Mayol Alice analysis, the Examiner
finds the claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception,
The steps or acts performed such as storing brand and user
profiles, and delivering an advertisement endorsing one brand
or both brands to the users based on those profiles, ( utilizing a
processor) in independent method claims 1, 7, 12 are not
enough to qualify as "significantly more" than the abstract idea
itself, since the claim is a mere instruction to apply the abstract
idea. Furthermore, there is no improvement to another
technology or technical field, no improvements to the
functioning of the computer itself, and no meaningful
limitations beyond generally linking the use of an abstract idea
to a particular technical environment, and the claims require no
more than a generic computer to perform generic computer
functions that are well-understood, routine and conventional.
Final Act. 4--5 ( emphasis added). 4
For the aforementioned reasons, the Examiner concludes that all
claims 1-16 on appeal are not patent-eligible under 35 U.S.C. § 101.
4 The patent eligibility inquiry may contain underlying issues of fact. Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed.
Cir. 2016). In particular, "[ t ]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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Mayo/Alice Analysis -Step 1
Regarding Alice Step 1, Appellants argue the Examiner has failed
"to provide an analysis or explanation for why the proposed abstract idea is a
judicial exception, [therefore] the Examiner's assertions are unsupported by
the record and should be reversed on this basis alone." Appellants further
contend "the Examiner's identification of an alleged abstract idea fails to
meet the prima facie burden for a § 101 rejection by failing to compare the
proposed abstract idea with abstract ideas identified by the courts."
App. Br. 8.
In response, the Examiner further explains the basis for the rejection:
the Examiner has considered the claims as an ordered
combination of steps and has identified the claimed invention as
being drawn to an abstract idea, that being providing
contractually obligated, brand affiliated advertisements based
on a user and brand profile, which is a concept relating to the
creation of business relations. This also includes the
relationships or transactions created between the endorsing
entities, intended to increase efficiency or effectiveness of the
targeted advertisement, whereby the endorsement is intended as
the creation of a contractual relationship whereby one is
obligated, upon request or acceptance, to endorse or promote
the other entity. Such practices involving creation of
contractual relationships have been held to be "Fundamental
Economic Practices". Further, creation of Contractual
Relationships may also be considered a ''Method of Organizing
Human Activity". Such an idea of contractual endorsement
between brand entities is analogous to the creation of a
contractual relationship, as in buySafe. [5] Further, elements of a
5 The Examiner is referring to buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (The claims are squarely about creating a contractual
relationship---- a "transaction performance guaranty"-that is beyond
question of ancient lineage ... In short, with the approach to this kind of
section 101 issue clarified by Alice, it is a straightforward matter to
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contractual relationship between business entities was found to
be an abstract idea in the holding of Alice itself.
Ans. 3 (emphasis added).
Our reviewing court has concluded that abstract ideas include the
concepts of collecting data, recognizing certain data within the collected data
set, and storing the data in memory. Content Extraction & Transmission
LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014); see
also Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364, 1372 (Fed. Cir. 2017) (concluding "claims directed to the collection,
storage, and recognition of data are directed to an abstract idea.").
Additionally, the collection of information and analysis of information
( e.g., recognizing certain data within the dataset) are also abstract ideas.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). Similarly, "collecting, displaying, and manipulating data" is an
abstract idea. Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1340 (Fed. Cir. 2017); see also SAP Am., Inc. v. InvestPic, LLC,
890 F.3d 1016, 1021 (Fed. Cir. 2018) ("merely presenting the results of
abstract processes of collecting and analyzing information ... is abstract as
an ancillary part of such collection and analysis") ( quotations omitted).
Moreover, our reviewing court recently has concluded that acts of
parsing, comparing, storing, and editing data are abstract ideas. Berkheimer
v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018); see also Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (holding that
"analyzing information by steps people go through in their minds, or by
conclude that the claims in this case are invalid.") ( citation omitted).
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mathematical algorithms, without more, [are] mental processes within the
abstract-idea category" (citation omitted)). As in Electric Power, the
combination of various abstract ideas relating to data collection and analysis
is itself an abstract idea.
Applying this guidance to the claims before us on appeal, we conclude
at least the recited step of "storing, in a social networking system, a first
brand profile associated with a first brand corresponding to a first
commercial enterprise, a second brand profile associated with a second
brand corresponding to a second commercial enterprise, and a set of
connections between the first brand and a plurality of users of the social
networking system" is merely a method of collecting information to facilitate
the result of "providing of an advertisement for display to at least one user
connected to the first brand, the advertisement including a description of the
connection between the first brand and the second brand." Claim 1.
For the aforementioned reasons, we conclude the claims before us on
appeal are directed to a fundamental economic practice, which includes the
use of brands, endorsements, and advertisements. Further, we agree with the
Examiner that the creation of contractual relationships may also be
considered a method of organizing human activity. Ans. 3. Therefore, on
this record, we find Appellants' contentions regarding Alice Step 1 are not
persuasive. Accordingly, we proceed to Alice Step 2.
Mayo/Alice Analysis-Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Final Act. 4 ), we
tum to the second part of the Alice/ Mayo analysis. We analyze the claims to
determine if there are additional limitations that individually, or as an
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ordered combination, ensure the claims amount to "' significantly more"'
than the abstract idea. Alice, at 2357.
Regarding Alice Step 2, Appellants address the purported inventive
concept of the claims by merely reciting the storing, establishing a
connection, and, providing an advertisement claim 1 limitations, and then
asserting:
The limitations above do not simply recite the proposed abstract
idea. Rather, they provide an inventive application by relating
brands together and permitting the relationship to be displayed
to users that like one of the brands. This is not simply "brand-
affiliated advertising" but rather provides for a brand to support
another brand, and display advertisements to users based on the
brand's support. Thus, claim 1 provides significantly more than
"providing brand affiliated advertisements to a user, based on a
user and brand profile," which means it is eligible under§ 101.
App. Br. 11 ( emphasis added).
Appellants recite similar limitations regarding claims 7 and 12. (Id.).
Appellants urge: "The claims, as a whole, recite a method for
advertising an endorsement of a brand connected to the endorsing brand, and
a method for identifying potential endorsers of an advertising brand. The
claims, as a whole, do not generically recite performance of the proposed
abstract idea and are not generic computer functions." App. Br. 13.
In response, the Examiner further explains the basis for the rejection:
the limitations do not recite significantly more than the judicial
exception, merely the generic use of a processor to carry out
the several steps of an abstract idea. Appellant has presented an
incorrect analysis of claim limitations at pages 10-11: "storing a
set of connections ... ", "establishing a connection between
[brands] ... describing support of the second brand by first
brand ... ", "providing an advertisement for display ... including
a description of the connection between the first brand and the
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second brand". Again, as discussed above, Appellant's
advertisement is generated as a means to promote the
contractual/business relationship between the entities. The
steps in particular that Appellant incorrectly argues represent
significantly more are merely a string of abstract ideas, which
does not translate to significantly more.
Ans. 5 (emphasis added).
In the Reply Brief, Appellants cite to two Federal Circuit opinions as
intervening authority:
The Federal Circuit released its decisions in Enfish, LLC v.
Microsoft Corp. and in McRO, Inc. v. Bandai Namco Games
America Inc. on May 12, 2016 and September 13, 2016, after
the Brief field on April 25, 2016. These cases, decided after
filing of the Brief, provide good cause for the Board to also
consider the claims as not directed to any abstract idea under
Step 2A of the Alice Test. Additionally, these arguments are a
continuation of the arguments in the Brief that "many
limitations in the claim do not appear to be directed to the
proposed abstract idea" (Brief at 9), and are also responsive to
the Examiner's assertion in the Answer that the claims are
directed to "contractually obligated, brand affiliated
advertisements based on a user and brand profile." Answer at 3.
Reply Br. 3.
Our reviewing court found Enfzsh 's invention was an "improvement
of an existing technology" that, unlike conventional relational and object-
oriented databases, did not require a programmer to predefine a structure to
which subsequent data entry must conform. Enfzsh, 822 F.3d at 1337.
However, we find Appellants' claims are clearly distinguished from
the claims considered by the court in Enfzsh, 822 F.3d at 1336, because
Appellants' claims are silent regarding any mention of a database, much less
a "self-referential table" that "is a specific type of data structure designed to
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improve the way a computer stores and retrieves data in memory." Enfish,
822 F.3d at 1339. Further, regarding McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1312 (2016), our reviewing court guides: "The
abstract idea exception prevents patenting a result where 'it matters not by
what process or machinery the result is accomplished."' ( quoting O'Reilly v.
Morse, 56 U.S. 62, 113 (1854)) (emphasis added).
Our reviewing court has "repeatedly held that such invocations of
computers and networks that are not even arguably inventive are
'insufficient to pass the test of an inventive concept in the application' of an
abstract idea." Elec. Power Grp., 830 F.3d at 1355 (internal citations
omitted); see also Intellectual Ventures I, 850 F.3d at 1341 ("Rather, the
claims recite both a generic computer element-a processor-and a series of
generic computer 'components' that merely restate their individual functions
.... That is to say, they merely describe the functions of the abstract idea
itself, without particularity. This is simply not enough under step two.").
Because none of Appellants' claims on appeal is directed to an
improvement in a processor, database, or other computer/network
component, we conclude that none of the claim limitations, viewed both
individually and as an ordered combination, amounts to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter.
Applying the aforementioned guidance from our reviewing courts to
the claims before us on appeal, we conclude, in our Mayol Alice analysis, that
each of Appellants' claims 1-16, considered as a whole, is directed to (under
step one), a patent-ineligible abstract idea, and under step two, does not
recite something "significantly more" (Alice, at 2357 (internal citation and
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quotations omitted)) to transform the nature of the claim into a patent-
eligible application.
Accordingly, for at least these reasons, we sustain the Examiner's
rejection A under 35 U.S.C. § 101 of claims 1-16 as being directed to
patent-ineligible subject matter in light of Alice and its progeny. 6
Anticipation Rejection B of Claims 1-11 over Steelberg
Issue: Under pre-AIA 35 U.S.C. § 102(b), did the Examiner err by
finding Steelberg expressly or inherently discloses the contested limitation
of "a set of connections between the first brand and a plurality of users of
the social networking system, the connections indicating expressed
interest in the first brand declared by the plurality of users in the social
networking system," within the meaning of representative independent claim
1? ( emphasis added). 7
Appellants contend:
the target consumers disclosed in Steelberg are associated with
a brand requesting an endorsement from another brand.
The claims, on the other hand, recite "receiving an endorsement
request from the second brand" and "providing an
advertisement request to at least one user connected to the first
brand." In other words, the brand that is requesting an
endorsement is not the same brand that is connected to the users
receiving the advertisement. Since Steelberg's target consumers
are associated with the requesting brand, rather than the brand
6 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
7 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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being requested for an endorsement, Steel berg does not
anticipate the limitations of claim 1.
Furthermore, the claims recite that the connections
between the first brand and the plurality of users "indicat[ e]
expressed interest in the first brand declared by the plurality of
users." As described above, a user can expressly declare interest
in a brand by "liking" or "being a fan" of the brand. See
Specification, ,r 11. Steelberg describes a target consumer as
"the ideal customer for the particular goods being advertised,
from a socio-economic perspective, from a morals and values
perspective, from an age or interest level perspective, or based
on other similar factors." See Steelberg, ,r 3. However, Steel
berg does not disclose a target consumer expressing declared
interest in a brand.
App. Br. 14--15 (emphasis added).
The Examiner's Claim Construction
In response (Ans. 6-7), the Examiner further explains the basis for the
rejection, which is based upon a broader interpretation of the contested claim
language:
As per the limitation of" a set of connections between the first
brand and a plurality of users of the social networking system,
the connections indicating expressed interested in the first
brand declared by the plurality of users in the social networking
system", Examiner has interpreted this limitation as creating
a profile for a user, based on a user's prior interaction with
brand page(s). Further, this element of the limitation is largely
non-structural descriptive material, whereby the connections
themselves are simply descriptive of the type of data being
stored with the profiles for the brands in the system.
A "user" is interpreted as an individual not connected with the
brand beyond some indication of an interest on the part of the
user, or the user being perceived as someone who would react
favorably to an advertisement based on a past profile history.
This interpretation is supported by Appellant's specification at
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[014], wherein a user is an individual is a user of the system,
"represented by user profiles and connections".
A "brand" is interpreted by Examiner as any entity or element
that is a "non-individual entity in a social network", as
supported by Appellant's specification at [O 15]. Paragraph [O 15]
also makes it clear that a "brand" profile functions identically to
a user profile: "A brand shares many attributes of individual
users ... profile pages, ... content, ... connections"
and [016] states that "An endorsement can comprise any
positive relationship between brands in the social network", and
as such Examiner has interpreted "brand endorsements" to be
any "positive interaction" between profiles of users in a social
network.
The "profile" for a user is interpreted to be created based on the
user's interactions with the brand page(s). This is supported by
Appellants specification at 014-016: "an individual is
represented in the social networking system by user profiles and
connections to other individuals ... connections can be explicit
or implicit" [014], [022], both of which disclose alternatives of
determining a relationship between a user and a brand.
An "explicit" relationship is formed via a user liking a brand,
and an implicit relationship is formed via a number of activities
including "performing other actions within the social
networking system associated with the brand" (see Appellant's
specification, 022).
The specification does not provide for any functional difference
in the targeting of advertisements, i.e. the invention, once a
"fan" is identified or "declared" via implicit or explicit
relationships, and further, as the term "declared" is not present
in the specification, Examiner has interpreted that "declared"
relationships may be created implicitly via user interaction
history.
Ans. 6-7 (paragraph breaks added).
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In the Reply Brief (14), Appellants address the Examiner's broader
claim construction and contend it is improper:
It is improper to equate explicit relationships and implicit
relationships, because they are not "functionally identical," as
asserted by the Examiner. Answer at 9. A connection that
represents an explicit relationship between a user and a brand is
a codification of an interest explicitly declared by the user,
whereas an implicit relationship is inferred by the social
networking system and involves a level of uncertainty in the
interest in the brand. Therefore, the Examiner's conflation of
explicit relationships and implicit is improper.
As explained in the Brief, Steelberg does not disclose
explicit relationships between users and brands. Instead,
Steelberg associates target consumers with a brand "from a
socio-economic perspective, from a morals and values
perspective, from an age or interest level perspective, or
based on other similar factors." Steelberg at ,r 3. The Examiner
does not contest whether the relationships between users and
brands in Steelberg is explicit or implicit, and instead focuses
on how claim 1 can supposedly be interpreted to include
connections indicating implicit relationships between users and
brands. This interpretation is improper and, therefore, the
rejection of claim 1 as being anticipated by Steelberg should be
reversed.
Reply Br. 14 (emphasis added).
Based upon our review of the record, we are not persuaded the
Examiner's broader claim interpretation is overly broad, unreasonable, or
inconsistent with the Specification, because the Examiner repeatedly refers
to descriptions of exemplary, non-limiting embodiments found in the
Specification for support. Ans. 6----7. Because "applicants may amend claims
to nmTow their scope, a broad construction during prosecution creates no
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unfairness to the applicant or patentee." In re ICON Health and Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
Therefore, on this record, we are not persuaded of error regarding the
Examiner's broad but reasonable claim interpretation, and resultant finding
of anticipation regarding the contested limitations of representative
independent claim 1. See Final Act. 5-6; Ans. 6-7.
Accordingly, we sustain anticipation rejection B of representative
independent claim 1 over Steelberg. The remaining grouped claims 2-11,
also rejected under anticipation rejection B, and not substantively argued
separately, fall with representative independent claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Anticipation Rejection C of Claims 12-16 over Trout
Regarding anticipation rejection C of claim 12 over Trout, Appellants
urge that "Trout does not disclose identifying one or more candidate brands
to the advertising brand as potential endorsers." App. Br. 16.
In support, Appellants contend: "at the very best, Trout discloses
connections between users and brands, rather than between brands
themselves. However, claim 12 recites "identifying ... one or more
candidate brand connections to the advertising brand as potential endorsers
of the advertising brand" and "modifying the social networking profile
associated with the advertising brand to include a connection to the
designated subset of the selected candidate brand connections." App.
Br. 16-17.
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Appellants point to the corresponding support in the Specification
(i-f 16) for the claim terms "brand" (App. Br. 17), and "endorsement", which
we find merely provides exemplary, non-limiting descriptions:
Brand to brand, or "brand-brand, " connections used for
advertising are referred to herein as endorsements. An
endorsement can comprise any positive relationship between
brands in the social network. The endorsement can comprise a
link between the brands in a social networking system. A brand
can like, be a fan of, want, desire, use, or endorse another
brand. As examples, a restaurant brand may indicate it serves a
brand of liquor or cola. A movie star's public persona may wear
a brand of sunglasses or "want" a new clothing line. A sports
team visits particular away stadiums while a stadium hosts
particular teams. The relationships formed between brands can
be selected from a static list provided by the social networking
system, or can be dynamically created by the brands. The social
networking system may provide static options to define
relationships between brands in order to ensure that
relationships between brands are positive. Endorsements can be
two-way (i.e. initiated by one brand and confirmed by
another) or may be formed as one-way connections without
confirmation.
Spec. ,r 16 ( emphasis added).
Trout's paragraph 54 describes that users of the social network are the
endorsers of the brand: "Embodiments of the present invention enable
brands to be promoted in an online social network environment." As
described in Appellants' Specification (i-f 16), "A brand can like, be a fan of,
want, desire, use, or endorse another brand." ( emphasis added). We find
only a user can want, desire, and use. Therefore, we find Appellants'
arguments regarding rejection C of independent claim 12 (App. Br. 15-17)
are essentially directed to similar claim interpretation issues we have
addressed supra regarding independent claim 1.
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Appeal2017-004272
Application 13/532,975
For similar reasons discussed above, on this record, we are not
persuaded the Examiner's broader claim interpretation is overly broad,
unreasonable, or inconsistent with the Specification. See ICON Health and
Fitness, 496 F.3d at 1379. Therefore, on this record, we are not persuaded of
error regarding the Examiner's finding of anticipation for independent claim
12, under rejection C. The remaining grouped dependent claims 13-16, also
rejected under anticipation rejection C, and not substantively argued
separately, fall with representative independent claim 12. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Conclusions
The Examiner did not err in rejecting claims 1-16 under 35 U.S.C.
§ 101, as being directed to patent-ineligible subject matter.
The Examiner did not err in rejecting claims 1-11, under pre-AIA
35 U.S.C. § 102(b ), as being anticipated by Steelberg.
The Examiner did not err in rejecting claims 12-16, under pre-AIA
35 U.S.C. § 102(b ), as being anticipated by Trout.
DECISION
We affirm the Examiner's decision rejecting claims 1-16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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