Facebook, Inc.Download PDFPatent Trials and Appeals BoardApr 13, 202013759976 - (D) (P.T.A.B. Apr. 13, 2020) 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. 13/759,976 02/05/2013 William Bullock 26295-21621 2253 87851 7590 04/13/2020 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER REFAI, SAM M ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 04/13/2020 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 WILLIAM BULLOCK and SEAN MICHAEL BRUICH ____________________ Appeal 2019-002241 Application 13/759,976 Technology Center 3600 ____________________ Before ERIC S. FRAHM, JUSTIN BUSCH, and STACEY G. WHITE, Administrative Patent Judges. BUSCH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, 5, 7–12, 15, 17, and 19–22, which constitute all the claims pending in this application. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2016). Appellant identifies the real party in interest as Facebook, Inc. Appeal Br. 2. Appeal 2019-002241 Application 13/759,976 2 CLAIMED SUBJECT MATTER Appellant’s disclosure generally relates to “predict[ing] values of a target characteristic for users in a set of users based on a reference group of users having known values for the target characteristic.” Spec. ¶ 6. More specifically, Appellant’s claimed invention relates to generating a model based on a reference group’s descriptive characteristics and target characteristic values by applying constraints to the target characteristic in order to impute a value for a user’s unknown target characteristic based on the user’s descriptive characteristic(s). Spec. ¶ 6. Claims 1 and 11 are independent claims, and claim 1 is reproduced below: 1. A method comprising: retrieving a reference group of users of an online system, each user of the reference group having a known value of a plurality of known values for a target characteristic and being associated with one or more descriptive characteristics; determining one or more constraints associated with the target characteristic from a larger population of users that includes a greater number of users than the reference group of users, the one or more constraints defining one or more limiting values of the target characteristic from the larger population of users that includes the greater number of users than the reference group of users; generating a model for predicting values of the target characteristic from the one or more descriptive characteristics, the generating comprising: determining a likelihood that each user in the reference group of users is included in the reference group based at least in part on the one or more descriptive characteristics of the reference group of users; and applying the one or more constraints associated with the target characteristic from the larger population of users to the reference group of users, each of the one or more constraints limiting an aggregate number of users in the reference group of user having a particular value of the target characteristic based Appeal 2019-002241 Application 13/759,976 3 on values of the target characteristic in the larger population of users; identifying one or more users of the online system not included in the reference group of users that are associated with at least descriptive characteristic of the one or more descriptive characteristics and that have an unknown value associated with the target characteristic; and determining an imputed value for the target characteristic for each of the one or more users of the online system not included in the reference group of users by applying the model to the at least one descriptive characteristic associated with each of the one or more users of the online system not included in the reference group of users, the model constraining imputed values of the target characteristic for the one or more users of the online system not included in the reference group of users based on the values of the target characteristic in the larger population of users. REJECTION Claims 1, 3, 5, 7–12, 15, 17, and 19–22 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2–9. ANALYSIS Appellant argues the claims as a group. See Appeal Br. 5–7; Reply Br. 2–4. Accordingly, we select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). The Supreme Court’s two-step framework guides our analysis of patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). In addition, the United States Patent and Trademark Office published revised guidance for evaluating subject matter eligibility under 35 U.S.C. § 101, specifically with respect to applying the Alice framework. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”); USPTO, October Appeal 2019-002241 Application 13/759,976 4 2019 Patent Eligibility Guidance Update (Oct. 18, 2019), https://www.uspto.gov/PatentEligibility (“Guidance Update”). If a claim falls within one of the statutory categories of patent eligibility (i.e., a process, machine, manufacture, or composition of matter), we determine whether the claim is directed to one of the judicially recognized exceptions (i.e., a law of nature, a natural phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of our inquiry, we “look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). The Guidance directs us to address this inquiry using the following two prongs of analysis: (i) does the claim recite a judicial exception (e.g., an abstract idea), and (ii) if so, is the judicial exception integrated into a practical application. Guidance, 84 Fed. Reg. at 54. Under the Guidance, if the judicial exception is integrated into a practical application, the claim is patent eligible under § 101. Guidance, 84 Fed. Reg. at 54–55. If the claim is directed to a judicial exception (i.e., the claim both recites a judicial exception and fails to integrate the exception into a practical application), we next determine whether the claim provides an inventive concept, which includes determining whether any element, or combination of elements, amounts to significantly more than the judicial exception. Alice, 573 U.S. at 217; Guidance, 84 Fed. Reg. at 56. Here, we conclude representative claim 1 is directed to mental processes (i.e., a concept performed in the human mind, such as, an observation, evaluation, judgment, and opinion), which are abstract ideas. See Guidance, 84 Fed. Reg. at 52. We generally agree with the Examiner’s Appeal 2019-002241 Application 13/759,976 5 characterization regarding the subject matter to which the claims are directed. See Final Act. 2 (concluding the claims “are directed towards the abstract idea of generating a model for predicting values of a target characteristic from one or more descriptive characteristics, and determining an imputed value for a target characteristic by applying the model”). In particular, claim 1 generally is directed to generating a model using statistical analysis of a reference group of users’ target characteristics and descriptive characteristics by applying constraints to the target characteristic and applying the model to assign a value to a user’s unknown target characteristic based on the user’s descriptive characteristic(s) (hereinafter, “generating a model and applying the model to determine a target characteristic”). Appellant does not dispute that the claims recite this abstract idea, but Appellant contends claim 1 recites more than just that abstract idea, including a particular way of carrying out the identified abstract idea. Appeal Br. 6–7; Reply Br. 2–3. Moreover, our characterization of the claims is consistent with the Specification, which describes the invention as “inferring a target characteristic of a set of users of the online system based on characteristics of a reference group of users of the online system.” Spec. ¶ 1. The Specification explains that conventional techniques “basing estimation of missing values on online activity without other information” provided inaccurate results. Spec. ¶ 5. Appellant’s claimed invention allegedly solves this problem by generating and using a model that “applies one or more constraints on the target characteristic . . . so the model extrapolates from the reference data while achieving aggregate results for Appeal 2019-002241 Application 13/759,976 6 values of the target characteristic that are consistent with the constraint.” Spec. ¶ 6. The constraints are obtained from a larger set of users than a reference group (e.g., census data or other survey of all the online system’s users), and using the constraints allegedly “avoids inaccuracies in reporting of user metrics.” Spec. ¶ 6. Claim 1 is reproduced below, with the claim limitations that recite elements of the abstract idea of generating a model and applying the model to determine a target characteristic emphasized in italics: 1. A method comprising: retrieving a reference group of users of an online system, each user of the reference group having a known value of a plurality of known values for a target characteristic and being associated with one or more descriptive characteristics; determining one or more constraints associated with the target characteristic from a larger population of users that includes a greater number of users than the reference group of users, the one or more constraints defining one or more limiting values of the target characteristic from the larger population of users that includes the greater number of users than the reference group of users; generating a model for predicting values of the target characteristic from the one or more descriptive characteristics, the generating comprising: determining a likelihood that each user in the reference group of users is included in the reference group based at least in part on the one or more descriptive characteristics of the reference group of users; and applying the one or more constraints associated with the target characteristic from the larger population of users to the reference group of users, each of the one or more constraints limiting an aggregate number of users in the reference group of user having a particular value of the target characteristic based on values of the target characteristic in the larger population of users; Appeal 2019-002241 Application 13/759,976 7 identifying one or more users of the online system not included in the reference group of users that are associated with at least descriptive characteristic of the one or more descriptive characteristics and that have an unknown value associated with the target characteristic; and determining an imputed value for the target characteristic for each of the one or more users of the online system not included in the reference group of users by applying the model to the at least one descriptive characteristic associated with each of the one or more users of the online system not included in the reference group of users, the model constraining imputed values of the target characteristic for the one or more users of the online system not included in the reference group of users based on the values of the target characteristic in the larger population of users. More particularly, the abstract idea of generating a model and applying the model to determine a target characteristic comprises (i) determining constraints that define limiting values for a target characteristic from a larger set of users (i.e., evaluating or judging); (ii) generating a model, which includes determining a likelihood a user’s descriptive characteristics result in the user being included in the reference group (i.e., evaluating) and applying constraints from the larger group to the reference group (i.e., evaluating and observing); (iii) identifying a user (i.e., observing and evaluating); and (iv) determining an imputed value by applying the model (i.e., evaluating). Although we agree with the Examiner both that generating the model involves underlying mathematical relationships (i.e., the likelihood that certain descriptive characteristics result in a user’s membership in the reference group) and that the invention’s purpose (improving targeted advertising) relates to certain methods of organizing human activity, we find that Appellant’s claims most closely align with the mental processes category of abstract ideas. Guidance, 84 Appeal 2019-002241 Application 13/759,976 8 Fed. Reg. at 52; accord Final Act. 3–4 (characterizing Appellant’s claims as consisting of a series of mental steps). Specifically, the identified steps— determining constraints, generating a model, identifying a user, and imputing a value based on the model—fall squarely within the types of mental processes considered abstract. See Guidance, 84 Fed. Reg. at 52 (explaining that mental processes include observations, evaluations, judgments, and opinions). The limitations that make up the concept recited in representative claim 1 are simply a series of observations, evaluations, and judgements for receiving and analyzing user characteristics to generate a model and applying that model to predict a value for a user’s unknown target characteristic based on that user’s descriptive characteristic(s). Consistent with our Guidance and case law, we conclude this concept is a mental process and, therefore, an abstract idea. Guidance, 84 Fed. Reg. at 52; Guidance Update, 7–9; Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (2014) (concluding claims reciting receiving two data sets, and combining those data sets into a single data set is “an ineligible abstract process of gathering and combining data”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (concluding claims reciting obtaining a data transaction set affiliated with a particular Internet address, generating a map based on those transaction, and using the map to determine whether a transaction is valid were abstract because they were directed to steps a person could perform mentally); Elec. Power Group, LLC v. Alstrom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (concluding claims directed to “collecting information, analyzing it, and displaying certain results of the collection and analysis” were Appeal 2019-002241 Application 13/759,976 9 abstract); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (concluding claims were directed to the abstract idea of “selecting certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1361–62 (Fed. Cir. 2015) (determining claims reciting obtaining statistics, analyzing those statistics to determine another piece of information—i.e., a price at which to sell a product—was directed to the abstract idea of offer-based price optimization). Because the claims recite a judicial exception, we next determine whether the claims integrate the judicial exception into a practical application. Guidance, 84 Fed. Reg. at 54. To determine whether the judicial exception is integrated into a practical application, we identify whether there are “any additional elements recited in the claim beyond the judicial exception(s)” and evaluate those elements, along with the limitations that recite the abstract idea, to determine whether the claim as a whole integrates the abstract idea into a recognized practical application. Guidance, 84 Fed. Reg. at 54–55 (emphasis added); see also Manual of Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018); Guidance Update, 11–12. Here, the additional limitations recited beyond the judicial exception itself fail to integrate the exception into a practical application. More particularly, representative claim 1 does not recite: (i) an improvement to the functionality of a computer or other technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other Appeal 2019-002241 Application 13/759,976 10 meaningful limitation (see MPEP § 2106.05(e)). See also Guidance, 84 Fed. Reg. at 55. Rather, the additional elements simply recite insignificant pre-solution activity. As emphasized above, each of claim 1’s steps other than retrieving a reference group are mental steps that contribute to the abstract idea of generating a model and applying the model to determine a target characteristic. Each of the steps may be performed completely in a person’s mind or by a person using pen and paper. Notably, the retrieving a reference group step could be considered part of the abstract idea because retrieving a list of users having particular characteristics could be done mentally or, for example, by receiving a piece of paper containing the information, and receiving that list of users whose information is evaluated as part of the abstract idea is necessary to performing the idea itself. Nevertheless, we consider this retrieving step to be a step in addition to the abstract idea that, considered in light of the claim as a whole, fails to integrate the abstract idea into a practical application. Specifically, this step adds only insignificant extra-solution activity because it merely receives an initial set of data to enable executing the mental steps making up the abstract idea. Guidance, 84 Fed. Reg. at 55; see Bilski v. Kappos, 561 U.S. 593, 612 (2010) (holding the use of well-known techniques to establish inputs to the abstract idea as extra-solution activity that fails to make the underlying concept patent eligible); CyberSource, 654 F.3d at 1372 (finding that, even to the extent certain “physical steps are required to obtain information from the database . . . such data-gathering steps cannot alone confer patentability”); Elec. Power, 830 F.3d at 1355 (explaining that “selecting information, by content or source, for collection, analysis, and display does Appeal 2019-002241 Application 13/759,976 11 nothing significant to differentiate a process from ordinary mental processes”). In other words, this additional data-gathering step merely obtains information needed to perform the recited abstract idea. Appellant asserts that the claims solve a problem with conventional methods for predicting target characteristic values that “over-represent the target characteristic in the large set of users and, thus, creat[e] an inaccurate picture of reality.” Reply Br. 2. Appellant alleges the claims solve this problem by applying a global constraint on the target characteristic so “the model will extrapolate from the reference data but achieve aggregate results that are consistent with the global constraint,” which “avoids inaccuracies in reporting of users’ metrics.” Reply Br. 2–3. Appellant contends the particular recited method of generating a model (i.e., the determining a likelihood and applying constraints steps) “is a specific and significant improvement over prior methods for imputing these values that led to inaccurate results.” Reply Br. 3; see also Appeal Br. 7 (arguing the details of the generating a model step “limit the claimed invention to a particular way for how to carry out the alleged abstract idea, not just a technical environment in which it is carried out”). Even to the extent the claims embody this alleged improvement, we agree with the Examiner that Appellant’s claims merely improve an abstract idea (i.e., generating a model and applying the model to determine a target characteristic) not a technology or technical field. See Ans. 11 (finding the focus of the claims is on an improved mathematical technique (quoting SAP, 898 F.3d at 1168 (“Here, the focus of the claims is not any improved computer or network, but the improved mathematical analysis.”))). Specifically, Appellant’s alleged improvement is an improvement to an Appeal 2019-002241 Application 13/759,976 12 abstract idea because it merely uses different information and/or different mental steps to analyze users’ characteristics. The fact that the claims generate the model by particular analytical techniques does not change the fact that generating the model is part of the abstract idea. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“We . . . look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016))); Guidance, 84 Fed. Reg. at 54–55 (explaining that we determine whether a claim integrates the abstract idea into a practical application by “[i]dentifying whether there are any additional elements recited in the claim beyond the” abstract idea and, if so, “evaluating those additional elements individually and in combination” in light of the claim as a whole (emphases added)). Similarly, providing details regarding the particular content being analyzed does not change the character of the claims as a whole from being directed to an abstract idea. See Elec. Power, 830 F.3d at 1353 (limiting information collected and analyzed to particular content “does not change its character as information”). For at least the foregoing reasons, the claims do not integrate the judicial exception into a practical application and, therefore, are directed to an abstract idea. Because we determine the independent claims are directed to abstract ideas, we analyze the claims under step two of Alice to determine whether there are additional limitations that individually, or as an ordered Appeal 2019-002241 Application 13/759,976 13 combination, ensure the claims amount to “significantly more” than the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73, 77–79 (2012)). As stated in the Guidance, many of the considerations to determine whether the claims amount to “significantly more” under step two of the Alice framework are already considered as part of determining whether the judicial exception has been integrated into a practical application. Guidance, 84 Fed. Reg. at 56. Thus, at this point of our analysis, we determine if the claims add a specific limitation, or combination of limitations, that is not well-understood, routine, conventional activity in the field, or simply appends well-understood, routine, conventional activities at a high level of generality. Guidance, 84 Fed. Reg. at 56. Appellant argues the Examiner failed to address any elements other than the recited “online system” and the Examiner makes an “unsupported conclusion that the additional elements ‘merely provide conventional computer implementation.’” Appeal Br. 5. Appellant contends the Examiner fails to meet the burden of providing evidence to support a finding that the additional elements were well-understood, routine, and conventional. Appeal Br. 5–6. In particular, Appellant argues the Examiner failed to support a finding that the particular steps for generating the model were well-understood, routine, and conventional. Appeal Br. 6–7. Appellant’s arguments are not persuasive of error because the particular steps for generating the model are part of the abstract idea. Although we evaluate the claims as whole for an inventive concept by considering how the additional elements interact with the abstract idea, the inventive concept “cannot be furnished by the unpatentable law of nature (or Appeal 2019-002241 Application 13/759,976 14 natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the claims before us?’” (emphasis added, brackets in original) (quoting Mayo, 566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to the judicial exception and sufficient to ensure the claim as a whole amounts to significantly more than the judicial exception itself. Alice, 573 U.S. at 218– 19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in Alice “only assessed whether the claim limitations other than the invention’s use of the ineligible concept to which it was directed were well-understood, routine and conventional,” (emphasis added)). As discussed above, the only additional element (i.e., elements that are not part of the abstract idea) recited in representative claim 1 is the retrieving a reference group step. The Examiner considered the “online system” itself the only additional element and provided support for this finding. Final Act. 4–5 (citing Spec. ¶¶ 38–41); Ans. 4–8 (citing Spec. ¶¶ 1–5, 38–41; MPEP § 2016.05(d)). We note that the “online system” is not actually part of the claimed methods. Rather, the recited “online system” merely describes the source from which the claims retrieve the reference group of users. See Appeal Br. 9 (reciting, in part, “retrieving a reference group of users of an online system,” emphasis added). Receiving a set of data on which to operate, regardless of the particular source or content of the data, was well-understood, routine, and Appeal 2019-002241 Application 13/759,976 15 conventional in the field because it merely limits the analysis to particular content. See OIP Techs., 788 F.3d at 1363 (finding routine data-gathering steps were well-understood, routine, and conventional activities). The claims fail to recite specific limitations (or a combination of limitations) that are not well-understood, routine, and conventional. For the above reasons, Appellant has not persuaded us of Examiner error, and we sustain the Examiner’s rejection of representative claim 1 or claims 1, 3, 5, 7–12, 15, 17, and 19–22, which were not argued separately with particularity, under 35 U.S.C. § 101. CONCLUSION Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 3, 5, 7–12, 15, 17, 19–22 101 Ineligibility 1, 3, 5, 7–12, 15, 17, 19–22 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation