International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardDec 28, 20202019002749 (P.T.A.B. Dec. 28, 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. 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). Appeal 2019-002749 Application 14/055,530 2 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. Appeal 2019-002749 Application 14/055,530 3 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). Appeal 2019-002749 Application 14/055,530 4 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.”). Appeal 2019-002749 Application 14/055,530 5 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.”). Appeal 2019-002749 Application 14/055,530 6 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). Appeal 2019-002749 Application 14/055,530 7 (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. Appeal 2019-002749 Application 14/055,530 8 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 Appeal 2019-002749 Application 14/055,530 9 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 Appeal 2019-002749 Application 14/055,530 10 “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), Appeal 2019-002749 Application 14/055,530 11 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 Appeal 2019-002749 Application 14/055,530 12 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 Appeal 2019-002749 Application 14/055,530 13 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 Appeal 2019-002749 Application 14/055,530 14 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 Appeal 2019-002749 Application 14/055,530 15 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. Appeal 2019-002749 Application 14/055,530 16 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 Appeal 2019-002749 Application 14/055,530 17 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 Appeal 2019-002749 Application 14/055,530 18 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 Appeal 2019-002749 Application 14/055,530 19 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 Appeal 2019-002749 Application 14/055,530 20 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 Appeal 2019-002749 Application 14/055,530 21 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. Appeal 2019-002749 Application 14/055,530 22 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 Appeal 2019-002749 Application 14/055,530 23 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 Copy with citationCopy as parenthetical citation