Ex Parte Baldwin et al

Patent Trial and Appeal Board

Nov 6, 2018

13781569 (P.T.A.B. Nov. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/781,569 02/28/2013 Tyler Baldwin
45839 7590 11/08/2018
Schwegman Lundberg & Woessner/ Linkedin/Microsoft
POBOX2938
MINNEAPOLIS, MN 55402
UNITED ST A TES OF AMERICA
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
3080.124US2 5070
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
11/08/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TYLER BALDWIN, CHEN CHANG,
JOSHUA RICHARD VANGEEST,
and MIKE DEREZIN 1
Appeal2017---006243
Application 13/781,569
Technology Center 3600
Before ANTON W. PETTING, MICHAEL W. KIM, and AMEE A. SHAH,
Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to the Appeal Brief, the Real Party in Interest is Linkedin Corp.
App. Br. 2.
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Application 13/781,569
STATEMENT OF THE CASE2
Tyler Baldwin, Chen Chang, Joshua Richard VanGeest, and Mike
Derezin (Appellants) seek review under 35 U.S.C. § 134 of a final rejection
of claims 1-21, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of analyzing a social graph of a social
networking service for the purpose of deriving, for each member in a group
of members, a social proximity score representing a measure of how socially
connected an individual member is to a particular entity or organization.
Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for
displaying assignments of a set of compames,
representing potentially new or existing customer
accounts of a business organization, to individual sales
representatives of a team of sales representatives for the
business organization,
the method comprising:
[ 1] with a processor, calculating a social proximity score for
each combination of sales representative,
from the team of sales representatives,
and company, from the set of companies,
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed October 5, 2016) and Reply Brief ("Reply Br.," filed March 6,
2017), and the Examiner's Answer ("Ans.," mailed January 4, 2017), and
Final Action ("Final Act.," mailed July 5, 2016).
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the social proximity score representing a measure of
connection strength between the sales representative and
the company,
the social proximity score being based on social
networking data and derived by analyzing a social graph
of a social networking service;
[2] with the processor, allocating each company in the set of
companies to an individual sales representative with the highest
social proximity score for the respective company that also
satisfies each constraint in a set of rule-based constraints;
and
[3] on a display unit, displaying a mapping of each company in
the set of companies to the individual sales representative to
whom the respective company is allocated.
The Examiner relies upon the following prior art:
Morio US 2010/0121684 Al May 13, 2010
Narvaez US 2010/0332290 Al Dec. 30, 2010
Godwin US 2012/0166303 Al June 28, 2012
Pendergraft US 8,249,903 B2 Aug. 21, 2012
Fisher US 2014/0179354 Al June 26, 2014
Claims 1-21 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1, 2, 3, 6, 8, 9, 11-13, 16, 18, 19, and 21 stand rejected under
35 U.S.C. § I02(e) as anticipated by Pendergraft.
Claims 4 and 14 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Pendergraft and Godwin.
Claims 5 and 15 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Pendergraft and Fisher.
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Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pendergraft and Morio.
Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pendergraft and Narvaez.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
The issues of novelty matter tum primarily on whether the prior art
describes salespeople and computing scores for each combination.
The issues of obviousness tum primarily on the anticipation rejection.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Pendergraft
01. Pendergraft is directed to generating a business relationship
network for developing business relationships. Pendergraft 1 :52-
55.
02. Pendergraft does not describe sales people or calculating a
score for each combination of entities.
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ANALYSIS
Claims 1-21 rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more
Method claim 1 recites calculating social proximity score data,
allocating ( assigning) each company in a set of companies to an individual
sales representative, and displaying a mapping of each company in the set of
companies to the individual sales representative to whom the respective
company is allocated. Thus, claim 1 recites analyzing, modifying, and
displaying data. None of the limitations recite implementation details for
any of these steps, but instead recite functional results to be achieved by any
and all possible means. Data analysis, modification, display are all generic,
conventional data processing operations to the point they are themselves
concepts awaiting implementation details. The sequence of data analysis-
modification-display is equally generic and conventional. The ordering of
the steps is therefore ordinary and conventional. The remaining claims
merely describe process parameters, with no implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[w]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an "'inventive concept'"-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
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Alice Corp. Pty. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner determines
the claims to be directed to "displaying assignments of a set of companies
( as evidenced by the preamble of exemplary claim 1 ), a method of
organizing human activity and an abstract idea." Final Act. 4.
Although the Court in Alice made a determination as to what the
claims were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is "[a] method for displaying
assignments of a set of companies, representing potentially new or existing
customer accounts of a business organization, to individual sales
representatives of a team of sales representatives for the business
organization." The steps in claim 1 result in displaying a mapping of each
company in a set of companies to the individual sales representative to
whom the respective company is allocated absent any technological
mechanism other than a conventional computer for doing so. The
Specification at paragraph 2 recites that the invention relates to "analyzing a
social graph of a social networking service for the purpose of deriving, for
each member in a group of members, a social proximity score representing a
measure of how socially connected an individual member is to a particular
entity or organization." Thus, all this evidence shows that claim 1 is
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directed to assigning sales representatives to companies, i.e., sales staffing.
This is consistent with the Examiner's determination.
It follows from prior Supreme Court cases, and Bilski (Bilski v.
Kappas, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
sales staffing is a fundamental business practice long prevalent in our system
of commerce. The use of sales staffing is also a building block of ingenuity
in sales management and delegation of work. Thus, sales staffing, like
hedging, is an "abstract idea" beyond the scope of§ 101. See Alice Corp.
Pty., 134 S. Ct. at 2356.
As in Alice Corp. Pty., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of sales
staffing at issue here. Both are squarely within the realm of "abstract ideas"
as the Court has used that term. See Alice Corp. Pty., 134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing
it, and displaying certain results of the collection and analysis" are "a
familiar class of claims 'directed to' a patent ineligible concept"); see also In
re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data analysis, modification, and
display and does not recite an improvement to a particular computer
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technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 1 is directed to the abstract idea of analyzing, modifying, and
displaying data.
The remaining claims merely describe process parameters. We
conclude that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two. The Court in Alice held that
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it'" is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty., 134 S. Ct. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
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computer for analyzing, modifying, and displaying data amounts to
electronic data query and retrieval----one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See id.; see also
Elec. Power Grp., 830 F.3d at 1355; In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms "processing," "receiving," and "storing,"
. . . those functions can be achieved by any general purpose computer
without special programming"). In short, each step does no more than
require a generic computer to perform generic computer functions. As to the
data operated upon, "even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract."
SAP Am. Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data analysis-modification-
display is equally generic and conventional or otherwise held to be abstract.
See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission); Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 87 4
F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
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controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
Viewed as a whole, Appellants' method claims simply recite the
concept of sales staffing as performed by a generic computer. To be sure,
the claims recite doing so by advising one to perform the assignment of sales
staff by certain computations. But this is no more than abstract conceptual
advice on the parameters for such sales staffing and the generic computer
processes necessary to process those parameters, and do not recite any
particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 22 pages of Specification spell
out different generic equipment3 and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of sales staffing under different scenarios. They
do not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of sales staffing using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty., 134 S. Ct. at 2360.
3 The Specification describes personal computer (PC), a tablet PC, a set-top
box (STB), a Personal Digital Assistant (PDA), a mobile telephone, a web
appliance, a network router, switch or bridge, or any machine capable of
executing instructions (sequential or otherwise) that specify actions to be
taken by that machine. Spec. para. 49.
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As to the structural claims, they
are no different from the method claims m substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] . . . against" interpreting §
101 "in ways that make patent eligibility 'depend simply on the
draftsman's art. '"
Alice Corp. Pty., 134 S. Ct. at 2360.
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 4--5 and Answer 2-3 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that "the steps of
claim 1, ... , simply cannot be executed mentally or on paper, and therefore
cannot be considered reciting human activity." Reply Br. 2. Appellants
contend the steps cannot be performed mentally because the claims recite the
use of computer equipment. This is not an argument that the underlying
process cannot be performed mentally, but only that the claims recite a
computer context. Simply reciting such a context is insufficient to get past
being an abstract idea. "The Supreme Court and this court have repeatedly
made clear that merely limiting the field of use of the abstract idea to a
particular existing technological environment does not render the claims any
less abstract."
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016).
We are not persuaded by Appellants' argument that "the recited
method for 'displaying assignments of a set of companies' is significantly
more complicated, and specific, than hedging, is not a longstanding
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commercial practice (in contrast with hedging), and is therefore significantly
more than a mere abstract idea." Reply Br. 2. The claims are specific only
in the sense they are specified using words. The level of complexity is not
dispositive. "The difficulty of the programming details for this functionality
is immaterial because these details are not recited in the actual claims. The
degree of difficulty in implementing an abstract idea in this circumstance
does not itself render an abstract idea patentable." Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016). Beyond that, as we determine
supra, the claims are directed to using some computation to assign sales
staff. Assigning sales staff is as old as organizational commerce.
We are not persuaded by Appellants' argument that "the Examiner's
comparison of the present claims to Digitech4 is erroneous." Reply Br. 2.
Appellants contend that Digitech did not have a step analogous to displaying
the results. App. Br. 14. As we determine supra, simply displaying data is
generic and conventional. This is borne out by our reviewing court.
[R]epresentative claim 14 is written in largely functional terms,
claiming "a collection of instructions" that perform the
functions of displaying a selection of available content on a
graphical user interface and allowing the user to request
streaming of that content. The claims thus do not go beyond
"stating [the relevant] functions in general terms,
without limiting them to technical means for performing the
functions that are arguably an advance over conventional
computer and network technology."
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed.
Cir. 2016) ( emphasis added) ( citation omitted).
4 Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344
(Fed. Cir. 2014).
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Claims 1, 2, 3, 6, 8, 9, 11-13, 16, 18, 19, and21 rejectedunder35 U.S.C.
§ 102(e) as anticipated by Pendergraft
We are persuaded by Appellants' argument that "Pendergraft does not
teach that the 'resources' stated in Pendergraft are sales representatives.
"Further, ... Pendergraft considers links that connect various nodes.
However, Pendergraft does not explicitly form links between each
combination of nodes." App. Br. 17. The Examiner responds that
Pendergraft teaches sources and targets may be individuals that
may be leveraged to generate business relationships and
identify new opportunities for sales. See col 2, ln 36-56.
Therefore, the sources are sales representatives. Furthermore,
the identity or job function of a person does not change the
functionality of the invention recited in the claims - any person
with any job function or description could be substituted. A
'person' or 'individual' does not change the functionality of the
claims based on job title. As stated in MPEP § 2131.02, a
generic disclosure will anticipate a claimed species when the
species can be at once envisaged from the disclosure. 'Sales
representatives' are a species in the genus of 'individuals.'
Therefore, the 'individuals' recited in Pendergraft anticipate the
sales representatives recited in claims. The Appellant
additionally contends that the recitation of "each combination"
of sales representative distinguishes the claims from
Pendergraft. Pendergraft generally teaches that the disclosed
method could be applied to 'one or more paths' (see abstract),
which is more than enough to read on "each combination."
Ans. 4. Pendergraft describes business relationships but not sales
representatives. The Examiner determines that individuals that may be
leveraged to generate business relationships and identify new opportunities
for sales are sales representatives. This is facially incorrect. Sales
representatives may be species of such individuals, but the species is not the
genus.
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As to the contention that "any person with any job function or
description could be substituted," this is a finding for obviousness rather
than anticipation, and more than that, the issue even in obviousness is
whether any person would be, not could be, substituted. "[O]bviousness
concerns whether a skilled artisan not only could have made but would have
been motivated to make the combinations or modifications of prior art to
arrive at the claimed invention." Belden Inc. v. Berk-TekLLC, 805 F.3d
1064, 1073 (Fed. Cir. 2015).
Examiner invokes MPEP § 2131.02 supra to show a generic
disclosure will anticipate a claimed species when the species can be at once
envisaged from the disclosure. The Examiner cites people as the disclosure
and sales representatives as the species. The Examiner provides no
reasoning as to why sales representatives would be immediately envisaged
from a description of people. The genus of people is a population of 8
billion. We do not see how the species of sales representatives would be
immediately envisaged from such a population.
Finally, the Examiner's determination that Pendergraft generally
teaches that the disclosed method could be applied to "one or more paths,"
which is more than enough to read on "each combination" is a non-sequitur.
Plural entities do not read on all entities.
Claims 4 and 14 rejected under 35 U.S.C. § 103(a) as unpatentable over
Pendergraft and Godwin
These claims depend from the claims rejected under anticipation. The
Examiner makes no determinations that the claims rejected under
anticipation would be obvious in the alternative.
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Claims 5 and 15 rejected under 35 U.S.C. § 103(a) as unpatentable over
Pendergraft and Fisher
These claims depend from the claims rejected under anticipation. The
Examiner makes no determinations that the claims rejected under
anticipation would be obvious in the alternative.
Claims 7 and 17 rejected under 35 U.S.C. § 103(a) as unpatentable over
Pendergraft and Mario
These claims depend from the claims rejected under anticipation. The
Examiner makes no determinations that the claims rejected under
anticipation would be obvious in the alternative.
Claims 10 and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over
Pendergraft and Narvaez
These claims depend from the claims rejected under anticipation. The
Examiner makes no determinations that the claims rejected under
anticipation would be obvious in the alternative.
CONCLUSIONS OF LAW
The rejection of claims 1-21 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1, 2, 3, 6, 8, 9, 11-13, 16, 18, 19, and 21 under
35 U.S.C. § 102(e) as anticipated by Pendergraft is improper.
The rejection of claims 4 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Pendergraft and Godwin is improper.
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The rejection of claims 5 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Pendergraft and Fisher is improper.
The rejection of claims 7 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Pendergraft and Morio is improper.
The rejection of claims 10 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Pendergraft and Narvaez is improper.
DECISION
The rejection of claims 1-21 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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