International Business Machines Corporation

Patent Trials and Appeals Board

Dec 28, 2020

2019002749 (P.T.A.B. Dec. 28, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/055,530 10/16/2013 Kelly L. Cook RSW920130101US2 3009
75949 7590 12/28/2020
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
EXAMINER
TORGRIMSON, TYLER J
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
12/28/2020 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KELLY L. COOK, LYDIA M. DO,
EILEEN MIN, and ERIC WOODS
____________________

Appeal 2019-002749
Application 14/055,530
Technology Center 2100
____________________

Before JUSTIN BUSCH, JOHN P. PINKERTON, and
JOHN D. HAMANN, Administrative Patent Judges.

HAMANN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
2 Our Decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Oct. 23, 2018), Reply Brief (“Reply Br.,” filed Feb. 19, 2019), and
Specification (“Spec.,” filed Oct. 16, 2013), as well as the Examiner’s
Answer (“Ans.,” mailed Dec. 21, 2018) and the Final Office Action (“Final
Act.,” mailed Feb. 8, 2018).
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CLAIMED SUBJECT MATTER
Appellant’s claimed invention “relates to utilizing social information
for recommending applications, and more specifically, to recommending
applications ordered by a social proximity factor.” Spec. ¶ 2. Claim 1 is
representative of the subject matter on appeal and is reproduced below.
1. A method of augmenting a search engine for an application
store by utilizing social information from a social media website,
said method comprising:
receiving user input from a user that includes a number of
search terms;
responsive to receiving the user input, searching, with the
search engine and using the number of search terms, for an
application in the application store meeting the number of search
terms input by the user and generating a list of applications from
the application store meeting the number of search terms input
by the user;
interfacing the search engine with the social media website
to identify any of the applications in the list with which a person
who has an established relationship with the user on the social
media website has experience;
characterizing said applications according to a social
proximity factor to said user, wherein the social proximity factor
is based on how close is the established relationship between the
user and another person on the social media website who has
experience with that application from the list; and
determining search results from the list of applications to
be presented by the search engine based on the social proximity
factor.
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REJECTIONS3
(1) The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter.
(2) The Examiner rejected claims 1, 2, 6, and 16–19 under
35 U.S.C. § 103 as being unpatentable over the combination of Futty (US
2012/0116905 A1; published May 10, 2012), van Hoff (US 9,372,878 B2;
issued June 21, 2016), and Berman (US 8,095,432 B1; issued Jan. 10, 2012).
(3) The Examiner rejected claims 3–5 under 35 U.S.C. § 103 as
being unpatentable over the combination of Futty, van Hoff, Berman, and
admitted prior art (“APA”).
(4) The Examiner rejected claims 7–12, 14, 15, and 20 under
35 U.S.C. § 103 as being unpatentable over the combination of Futty, van
Hoff, Berman, and Rowan (US 2006/0015722 A1; published Jan. 19, 2006).
(5) The Examiner rejected claim 13 under 35 U.S.C. § 103 as being
unpatentable over the combination of Futty, Berman, Rowan, and APA.
OPINION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner errs. We address the Examiner’s findings and
Appellant’s arguments below.

3 The Examiner also provisionally rejected claims 1–20 for obviousness-type
double patenting over claims 1–20 of copending Application
No. 14/053,395. No patent has issued yet from that copending Application,
nor does Appellant present arguments traversing this provisional rejection.
We find it is premature to address this provisional rejection. See In re
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential).
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A. § 101 REJECTION
1. Claim Grouping
Appellant argues the pending claims as a group, and specifically
refers to claim 1, for the Examiner’s § 101 rejection. See Appeal Br. 19–27.
Accordingly, we select independent claim 1 as representative of the pending
claims, and we decide the appeal of the § 101 rejection on the basis of
representative claim 1. See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d
1324, 1325 (Fed. Cir. 1986). We refer to the rejected claims collectively
herein as “the claims.”
2. Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
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If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-eligible
invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).4 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
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(2) additional elements that integrate the judicial exception into a
practical application, i.e., elements that apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception (see MPEP
§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step
2A, Prong Two”).5
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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3. The Judicial Exception – Prong One of Step 2A
The Examiner determines that the claims recite the abstract idea of
“searching for and presenting applications ordered according to social
proximity of a requesting user,” which is an “idea of itself.” Final Act. 5. In
other words, the Examiner finds that the claims recite “a mental process
(thinking) that ‘can be performed in the human mind, or by a human using a
pen and paper.’” July 2015 Update: Subject Matter Eligibility at 5 (footnote
omitted) (explaining the meaning of the phrase “an idea ‘Of Itself’”). In
particular, the Examiner determines that the claims recite “the concept of
searching for and presenting applications ordered according to social
proximity of a requesting user,” akin to “tailoring content based on
information about the user” for presenting “user specific customizations.”
Final Act. 6. As we discuss below, we agree with the Examiner that the
claims recite an abstract idea.
Generally, Appellant’s claims concern “utilizing social information
for recommending an application.” Spec. ¶ 4; see also code (57) (same).
More specifically, claim 1 recites the steps of “receiving user input from a
user that includes a number of search terms”; “responsive to receiving the
user input, searching, . . . using the number of search terms, for an
application . . . meeting the number of search terms input by the user and
generating a list of applications . . . meeting the number of search terms
input by the user”; “identify[ing] any of the applications in the list with
which a person who has an established relationship with the user . . . has
experience”; “characterizing said applications according to a social
proximity factor to said user, wherein the social proximity factor is based on
how close is the established relationship between the user and another
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person . . . who has experience with that application from the list”; and
“determining search results from the list of applications to be presented . . .
based on the social proximity factor.” Appeal Br. 28 (reciting claim 1).
We agree with the Examiner that these limitations recite a mental
process, which is an abstract idea within grouping (c) under the guidance.
2019 Revised Guidance, 84 Fed. Reg. at 52 (“(c) Mental processes—
concepts performed in the human mind (including an observation,
evaluation, judgment, opinion)”); see also Final Act. 5–6. For example,
claim 1’s above limitations relate to collecting information (receiving user
input of search terms), comparing the collected information (search terms)
with known information (applications’ terms) to generate further
information (a list of applications), comparing the further information with
known information (which people have an established relationship with the
user and experience with the applications on the list), analyzing the
intersection of this comparison of information (characterizing closeness of
the established relationship between the user and the people that have
experience with listed applications), and determining resultant information
for presentation. Appeal Br. 28 (reciting claim 1). These steps allow for
performance manually or mentally (but for a generic “search engine,”
“application store,” and a “social media website”), and thus, fall within the
mental processes category. 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.”); see also Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353–54 (Fed. Cir. 2016) (citations omitted) (finding that
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“analyzing information by steps people go through in their minds . . .
without more, as essentially mental processes within the abstract-idea
category”).
4. Integration into a Practical Application – Prong Two of Step 2A
Claim 1 recites, in addition to the abstract idea discussed above, a
“search engine,” “application store,” and “social media website.” Appeal
Br. 28 (reciting claim 1). As we discuss below, these components do not
integrate the judicial exception into a practical application. See 2019
Revised Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)–(c), (e)–
(h)).
Appellant argues that claim 1 provides “the ability to improve the
‘intelligence’ of a search engine so as to more likely return a result that the
user actually wants,” which Appellant asserts “is a significant improvement
in computer-related technology.” Appeal Br. 20; see id. (quoting Spec. ¶ 30)
(arguing that the Specification explains the problem “of searching for an app
in an app store”); Reply Br. 13. Put differently, Appellant argues that the
claimed “technology is an improvement to the computer itself in that the
search engine’s ability to return search results that a user is likely to actually
want is significantly enhanced.” Appeal Br. 21. According to Appellant,
“[m]aking a tool more effective than it has been previously is not an
abstraction, but a concrete technological advance.” Id. at 24; see also Reply
Br. 15 (arguing that improvements include mathematical relationships that
improve computer-related technology) (citation omitted).
We are not persuaded by Appellant’s arguments. Appellant’s
purported improvements relate to the abstract idea (the mental process of
analyzing and presenting information using social proximity information),
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and do not improve a computer, technology, or a technical field. See McRO,
Inc. v. Bandai Namco Games America, 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)). Moreover, Appellant’s
purported improvements merely automate the above described mental
processes, which does not constitute a patentable improvement in computer
technology. See Trading Techs. Int’l Inc. v. IBG LLC, 921 F.3d 1378, 1384
(Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1055 (Fed. Cir. 2017) (“‘[M]ere automation of manual processes
using generic computers’ . . . ‘does not constitute a patentable improvement
in computer technology.’”)).
We also are not persuaded by Appellant’s reliance on Enfish. E.g.,
Appeal Br. 24–25; Reply Br. 18. Unlike the claims in Enfish — systems
comprising means for configuring memory according to a self-referential
table — that were found to be directed to “an improvement to [the] computer
functionality itself” (Enfish, 822 F.3d at 1336), the instant claims are more
akin to the claims for collecting, analyzing, and displaying information
found to be patent ineligible in Electric Power, 830 F.3d at 1353, or the
claims directed to image data processing discussed in Digitech Image
Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) (finding “a process that employs mathematical algorithms
to manipulate [data or information] to generate additional information is not
patent eligible”). Furthermore, nothing in the claims, understood in light of
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the Specification, requires anything other than an off-the-shelf, generic
computer used for collecting and processing/analyzing various
information/data. Therefore, unlike in Enfish, the claims are not directed to
improvements in computer functionality. Accordingly, the additional
elements do not integrate the judicial exception into a practical application
under MPEP § 2106.05(a).
Furthermore, the claims do not “recite the use of a particular
machine,” but rather describe steps (e.g., “receiving,” “searching,”
“generating,” “interfacing,” and “determining”) to be carried out by the
equivalent of generic computer hardware and software components and
devices (i.e., a search engine, application store, and website). See Appeal
Br. 28. “[A] general purpose computer that applies a judicial exception,
such as an abstract idea, by use of conventional computer functions does not
qualify as a particular machine.” MPEP § 2106.05(b) (citing Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014)).
Nor do “the claim[s] effect[] a transformation or reduction of a
particular article to a different state or thing.” See id. § 2106.05(c). Instead,
the claims concern utilizing social information for recommending
applications ordered by a social proximity factor. E.g., Spec. ¶ 2. We
disagree with Appellant’s argument that the claimed “determining search
results to be presented by the search engine based on the social proximity
factor” means that “the initial search results are transformed to a different
state by the operation of the claimed method.” Appeal Br. 26. Rather, this
step merely relates to manipulating information to generate additional
information, which is not patent eligible. E.g., Digitech, 758 F.3d at 1351.
Moreover, Appellant does not identify, nor do we find, that the claims
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impose other meaningful limitations on the above identified judicial
exceptions. MPEP § 2106.05(e).
Moreover, the claims, at best, amount to nothing more than applying
the abstract idea using generic computer components and functions, which
does not render the abstract idea eligible. See Alice, 573 U.S. at 222;
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1332 (Fed. Cir.
2015) (quoting Alice, 134 S. Ct. at 2358) (finding an inventive concept
“requires more than simply stating an abstract idea while adding the words
‘apply it’ or ‘apply it with a computer’”); MPEP § 2106.05(f).
Thus, the claims do not integrate the judicial exception into a practical
application.
5. The Inventive Concept – Step 2B
The claims also lack an inventive concept. To determine whether the
claims provide an inventive concept, we consider the additional elements,
individually and in combination, to determine whether (1) they add a
specific limitation beyond the judicial exception that is not well-understood,
routine, conventional activity in the field or (2) simply append
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Outside of the abstract idea, the additional elements only recite
generic computer components and functions that are well-understood,
routine, and conventional. See Spec. ¶¶ 22–29; Alice, 573 U.S. at 226.
Again, the Specification describes a generic search engine, application store,
and social media website. Spec. ¶¶ 22–29, 41, 79. But simply adding
generic computer components to perform abstract ideas does not integrate
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those ideas into a practical application, because the “mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.” Alice, 573 U.S. at 223.
Additionally, we are not persuaded by Appellant’s argument (Appeal
Br. 21, 26–27) that the claimed subject matter must be “significantly more”
because it is not found in the prior art. A finding of novelty or
nonobviousness does not necessarily lead to the conclusion that subject
matter is patentable eligible. “Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Accordingly, we agree with the Examiner that the claims are patent
ineligible. For the above reasons, we sustain the Examiner’s § 101 rejection
of representative claim 1, as well as claims 2–20, grouped therewith.
B. § 103 REJECTIONS
1. Rejection over Futty, van Hoff, and Berman
a. Claims 1, 2, and 16–19
Appellant argues that the combination of Futty, van Hoff, and Berman
fails to teach or suggest “characterizing said applications according to a
social proximity factor to said user, wherein the social proximity factor is
based on how close is the established relationship between the user and
another person on the social media website who has experience with that
application from the list” and “determining search results from the list of
applications to be presented by the search engine based on the social
proximity factor,” as recited in claim 1. Appeal Br. 11–16. More
specifically, Appellant argues that Futty instead “describes filtering search
results based on a pool of social acquaintances with no consideration of the
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proximity of the relationships involved.” Appeal Br. 12–13; see id. at 12
(citing Futty ¶ 15). As to van Hoff, Appellant argues that van Hoff teaches
“grading or scoring social proximity,” but “merely describes that, once a
minimum threshold is met, ‘content items that one of the users interacted
with or viewed are recommended to the other user.’” Appeal Br. 13 (citing
van Hoff, 2:18–24). Appellant adds that in van Hoff “the content described
is for an electronic magazine, not from a search and not search results in an
app store.” Id. (citing van Hoff, code (57)). As to Berman, Appellant argues
that Berman teaches that recommendations for items may be obtained from
social networks and may be ranked “based on the proximity of relationships
between the members that provided recommendations and an inquiring
member of the social network.” Appeal Br. 14 (citing Berman, 4:63–5:2,
quoting id. at 5:6–12). However, Appellant argues that Berman teaches
“obtaining and ranking recommendations for items (Steps 205 and 210)
before a user has even executed a search[, and t]hen, after the user searches
for and identifies an item of interest (Step 215), relevant recommendations
are ranked and then displayed (Step 220).” Id. at 14–15 (citing Berman, Fig.
2). According to Appellant, “[t]he ranking of recommendations, by
relationship proximity, has no impact on what search results are displayed
when searching for the item.” Id. at 15 (emphasis omitted). Thus, Appellant
argues that when “Berman is added to the combination, . . .
recommendations regarding [an] item would be displayed, where the
recommendations (not the search results) are ranked by the relationship
proximity to the searching user of the user making each recommendation.”
Id.
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We are not persuaded that the Examiner errs. Rather, we agree with
the Examiner that the combined teachings of Futty, van Hoff, and Berman
teach the disputed limitations, and we adopt the Examiner’s findings for
these disputed limitations. Final Act. 9–11; Ans. 3–5. For example, we
agree with the Examiner that Futty teaches “interfacing the search engine
with the social media website to identify any of the applications in the list
with which a person who has an established relationship with the user on the
social media website has experience.” Ans. 3–4 (citing Futty, Fig. 3, ¶ 34).
More specifically, Futty teaches that “process 300 may query an application
store account of or a device of a user’s social acquaintance to determine
what mobile applications the social acquaintance has installed . . . on their
device,” and that “this information may be used to determine a
recommendation for mobile applications . . . and/or ranking a mobile
application collection.” Futty ¶ 34. We also agree with the Examiner that
van Hoff teaches “determining social proximity via a social networking
system.” Ans. 4 (citing van Hoff, code (57)). As to Berman, we agree with
the Examiner that Berman “teaches determining a ‘relationship proximity’
for ‘item(s) for sale that may be a good, a service, an organization, an event,
a concept, etc.’” Id. (quoting Berman, 4:59–63. code (57)). We find that
Berman teaches performing a search for an item, and displaying the
recommendations associated with the items in an order ranked based on
relationship proximity in social networking. Berman, code (57).
Appellant’s arguments incorrectly focus on the references’ individual
teachings, rather than what their combined teachings would have conveyed
to one of ordinary skill in the art. See In re Merck & Co. Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by
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attacking references individually where the rejection is based upon the
teachings of a combination of references”); In re Keller, 642 F.2d 413, 425
(CCPA 1981). The relevant inquiry is whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420–21
(2007) (finding the skilled artisan would “be able to fit the teachings of
multiple patents together like pieces of a puzzle” because the skilled artisan
is “a person of ordinary creativity, not an automaton”). Here, Futty teaches
searching an application store’s account of a user’s social acquaintance to
determine what mobile applications the social acquaintance has installed and
ranking a mobile application collection. Futty ¶ 34. Van Hoff teaches
determining social proximity via a social networking system. Van Hoff,
code (57). And, Berman teaches displaying information in an order ranked
based on relationship proximity in social networking. Berman, code (57).
We agree with the Examiner that the combined teachings disclose the
disputed limitations.
We are not persuaded by Appellant’s argument that the Examiner uses
impermissible hindsight. Rather, the Examiner relies on a reasonable
reading of the cited references, and provides detailed reasoning for why one
of ordinary skill in the art would have combined the relevant teachings.
Ans. 3–5; see also In re McLaughlin, 443 F.2d 1392, 1313–14 (CCPA 1971)
(“Any judgment on obviousness is in a sense necessarily a reconstruction
based upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill . . . and does not
include knowledge gleaned only from applicant’s disclosure, such a
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reconstruction is proper.”). Appellant does not provide specific arguments
as to why the Examiner’s offered reasoning (e.g., improving the relevancy of
results to a given user) for combining the references is error. See Ans. 10–
11; Appeal Br. 15; Reply Br. 6.
Accordingly, we sustain the Examiner’s § 103 rejection of
independent claim 1. Appellant’s arguments with respect to independent
claim 16 are of commensurate scope to its arguments for claim 1, and thus,
we also sustain the Examiner’s § 103 rejection of independent claim 16.
Appellant does not provide separate arguments for the patentability of
dependent claims 2 and 17–19, and thus, we also sustain the Examiner’s
§ 103 rejection of these claims.
b. Claim 6
Appellant argues that the combination of Futty, van Hoff, and Berman
fails to teach or suggest “annotating displayed search results from said list of
applications based on said social proximity factor,” as recited in dependent
claim 6. Appeal Br. 17. More specifically, Appellant argues that the
Examiner errs in finding that the following passage from Berman teaches
this limitation:
When a recommendation is selected, the system may keep track
of information associated with the transaction, such as ranking
(in this case first), number of total recommendations, how many
times a specific user selects recommendations provided by other
members, average recommendation ranking, and the like. This
information may be used to fine-tune the system for improved
future performance.
Appeal Br. 17 (quoting Berman, 7:41–46); Ans. 7.
We are persuaded of Examiner error. Simply put, we find that
Berman’s teaching that its system may “keep track” of information fails to
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teach that the displayed search results are annotated. Berman, 7:41–46. We
further note that the Examiner cites this passage from Berman without fully
explaining how keeping track of the information teaches annotating the
displayed results. Ans. 7. Accordingly, we do not sustain the Examiner’s
§ 103 rejection of dependent claim 6.
2. Rejection over Futty, van Hoff, Berman, and APA
The Examiner rejected dependent claims 3–5 under § 103 over the
combination of Futty, van Hoff, Berman, and APA. Final Act. 14–15.
Appellant did not provide separate arguments for the patentability of
dependent claims 3–5, and instead relied on its arguments for independent
claim 1. Appeal Br. 18. Accordingly, based on our findings above, we
sustain the Examiner’s § 103 rejection of claims 3–5.
3. Rejection over Futty, van Hoff, Berman, and Rowan
a. Claims 7 and 8
Claims 7 and 8 depend from claim 6. Appeal Br. 29. The Examiner’s
rejection of claims 7 and 8 does not cure the deficiencies in the rejection of
claim 6, discussed above. Final Act. 15–16. Accordingly, we do not sustain
the Examiner’s § 103 rejection of claims 7 and 8.
b. Claim 9
Appellant argues that the combination of Futty, van Hoff, and Berman
fails to teach or suggest “characterizing said applications according to a
social proximity factor to said user wherein said proximity factor includes
said user’s proximity to other users on a social media website, said user’s
relationship strength with said other users on said social media website, or
combinations thereof,” and “presenting a list of said applications ordered by
said social proximity factor wherein presenting said application comprises
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presenting said applications with a higher social proximity factor before said
applications with a lower social proximity factor,” as recited in claim 9.
Appeal Br. 18–19; Reply Br. 9–11. First, Appellant incorporates its
arguments for claim 16 and argues that the combination fails to teach or
suggest “presenting a list of said applications ordered by said social
proximity factor.” Reply Br. 10. For example, Appellant argues that
“Berman describes ranking recommendations, not ordering a list of
applications by a social proximity factor.” Appeal Br. 18 (citing Berman,
5:6–12). As we discussed above, we are not persuaded by these arguments
that focus on the references’ individual teachings. Rather, the combined
teachings of Futty, van Hoff, and Berman teach or suggest ranking
applications by social networking relationship proximity. E.g., Futty ¶ 34;
van Hoff, code (57); Berman, code (57).
Second, Appellant argues “that claim 9 is not expressly rejected based
on prior art in the Action.” Appeal Br. 18–19. More specifically, Appellant
argues that “claim 9 was only addressed as being the same as claim 8, which
is manifestly incorrect,” and that “[t]he specific language of independent
claim 9, . . . was not addressed in the Action relative to the prior art.” Reply
Br. 11 (citing Final Act. 20).
We are not persuaded by Appellant’s argument. Rather, the
Examiner’s rejection expressly recites that claim 9 was rejected “as being
unpatentable over Futty in view of van Hoff in view of Berman as applied to
claims 1 and 16 above, and further in view of Rowan.” Final Act. 15
(emphasis added). Moreover, claims 9 and 16 are of substantially the same
claim scope. Compare Appeal Br. 29–30 (reciting claim 9), with id. at 32
(reciting claim 16). We are unpersuaded that the Examiner fails to
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sufficiently explain the basis for the rejection of claim 9. See Final Act. 9–
12, 15. It is only “when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for rejection”
that the prima facie burden has not been met and the rejection violates the
minimal requirements of 35 U.S.C. § 132. Chester v. Miller, 906 F.2d 1574,
1578 (Fed. Cir. 1990).
Accordingly, we sustain the Examiner’s § 103 rejection of claim 9.
c. Claims 10–12, 15, and 20
The Examiner rejected dependent claims 10–12, 15, and 20 under
§ 103 over the combination of Futty, van Hoff, Berman, and Rowan. Final
Act. 15–17. Appellant did not provide separate arguments for the
patentability of these claims. See generally Appeal Br. 18–19. Accordingly,
based on our findings above, we sustain the Examiner’s § 103 rejection of
claims 10–12, 15, and 20.
d. Claim 14
Claim 14 recites “[t]he method of claim 9, wherein characterizing said
applications according to said social proximity factor comprises analyzing
said criteria against said social proximity factor.” Appeal Br. 31. First,
Appellant argues that “no prima facie case of unpatentability has been made
against claim 14.” Id. at 19. More specifically, Appellant argues that the
Examiner’s rejection is insufficient because it merely states for “claim 14,
see remarks regarding claim 1.” Appeal Br. 19 (quoting Final Act. 16).
Appellant argues that “[c]laim 14 does not depend from claim 1,” and “claim
1 does not recite analyzing search terms or criteria against a social proximity
factor.” Reply Br. 11.
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Second, Appellant argues that the Examiner errs in finding that the
“claim does not require it to be criteria input by the user.” Id. (quoting Ans.
8). According to Appellant, “‘said criteria’ in claim 14 is the criteria used
by the user to search for an application.” Id. And, Appellant argues that
“[t]he social graph of Putty, paragraph 0034, has nothing to do with
analyzing the search ‘criteria against said social proximity factor.’” Id. at
12.
We are not persuaded that the Examiner errs. We agree with the
Examiner that the broadest reasonable interpretation of the claimed “criteria”
“does not require it to be criteria input by the user, and therefore it can be
properly construed as any queryable criteria of an application.” Ans. 8; see
also Appeal Br. 29–30 (reciting claim 9, from which claim 14 depends). We
also agree with the Examiner that Futty teaches a “social graph of the user”
which may be “‘analyzed against said social proximity factor’ in order to
filter results that do not meet the social proximity factor.” Ans. 8 (citing
Futty ¶ 34). In other words, criteria can include being an acquaintance (e.g.,
being on a social graph) that is analyzed against the social proximity factor
(e.g., analyzing the strength of the relationship). Futty ¶ 34. Thus, we also
find that the Examiner sets forth a prima facie case of unpatentability.
Accordingly, we sustain the Examiner’s § 103 rejection of claim 14.
4. Rejection over Futty, Berman, Rowan, and APA
The Examiner rejected dependent claim 13 under § 103 over the
combination of Futty, Berman, Rowan, and APA. Final Act. 17–18.
Appellant did not provide separate arguments for the patentability of
dependent claim 13, and instead relied on its arguments for independent
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claim 1. Appeal Br. 19. Accordingly, based on our findings above, we
sustain the Examiner’s § 103 rejection of claim 13.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1, 2, 6, 16–
19
103 Futty, van Hoff,
Berman
1, 2, 16–19 6
3–5 103 Futty, van Hoff,
Berman, APA
3–5
7–12, 14, 15,
20
103 Futty, van Hoff,
Berman, Rowan
9–12, 14,
15, 20
7, 8
13 103 Futty, Berman,
Rowan, APA
13
Overall
Outcome
1–20
TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED