Ex Parte Baldwin et al

Patent Trial and Appeal Board

Oct 24, 2018

14015695 (P.T.A.B. Oct. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/015,695 08/30/2013 Tyler Baldwin
45839 7590 10/26/2018
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.
3080.144US2 6332
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/26/2018 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
Appeal2017-001772 1
Application 14/015,6952
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-11, 13-17, and 19-22. We have jurisdiction under
35 U.S.C. § 6(b ).
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed July 7,
2016), Reply Brief ("Reply Br.," filed Nov. 10, 2016), and Specification
("Spec.," US 2014/0244530 Al, pub. Aug. 28,201), and the Examiner's
Answer ("Ans.," mailed Sept. 16, 2016) and Final Office Action ("Final
Act.," mailed Dec. 21, 2015).
2 Appellants identify Linkedin Corporation as the real party in interest.
App. Br. 2.
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Application 14/015,695
We AFFIRM.
CLAIMED INVENTION
Claims 1, 6, 11, and 17 are the independent claims on appeal.
Claim 11, reproduced below, is illustrative of the claimed subject matter:
11. A method comprising:
using at least one computer processor to:
receive a search query;
identify a first plurality of members of a social
networking service having member profile attributes
satisfying the search query;
for each member in the first plurality, compute
individual social proximity scores for a set of
organizations representing customer accounts of a
particular business entity on whose behalf the search query
hasbeeninvoked;and
for each member in the first plurality, combine the
individual social proximity scores of the member to form
an aggregate social proximity score; and
on a display unit, displaying member profile information
of the first plurality of members in an order that is determined
based at least in part on the aggregate social proximity score of
the respective members.
REJECTIONS
Claims 1-11, 13-17, and 19-22 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1-11, 13-17, and 19-22 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Yuster et al. (US 2006/0004869 Al, pub. Jan. 5, 2006)
("Yuster"), Ho et al. (US 2005/0283753 Al, pub. Dec. 22, 2005) ("Ho"),
and Work et al. (US 2006/0042483 Al, pub. Mar. 2, 2006) ("Work").
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ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int'!, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
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McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to the abstract idea of "identifying
members with connections to current employees at target organizations" by
"comparing new and stored information[,] and us[ing] rules to generate
options." Final Act. 2. The Examiner ascertained that the claims "also
include computing aggregate social proximity scores based on individual
scores between member/organization pairings and comparing them to a
threshold to produce the result set," which is a "mathematical relationship,"
i.e., an abstract idea. Id. at 2-3. Applying step two of the analysis, the
Examiner determined that the claims do not include additional elements or a
combination of elements sufficient to ensure that the claims amount to
significantly more than the abstract idea itself. Id. at 3.
Addressing the first step of the Mayo/Alice framework, Appellants
argue that the claims are not directed to an abstract idea, because the claims
"improve the function of a computer itself' by "caus[ing] the computer to
act as a recruiting tool and/or a hiring tool, such as by receiving a search
query, accessing information within a social network in response to the
search query, and displaying results from the accessed information." App.
Br. 16. Appellants contend that "a mere generic computer (e.g., a computer
that does not execute the recitations of claim 1) does not function as a
recruiting tool and/or hiring tool," and "would not be able to manipulate data
obtainined from the social network to function as a recruiting tool." Id.; see
also Reply Br. 2 ("[C]ausing a computer to have a new function is the very
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definition of improving the functionality of the computer."). Appellants
conclude that the Examiner describes the language "at a high level of
abstraction untethered from the language of the claim[ s]." Id. But, we are
not persuaded that receiving a search query, accessing information in
response to the query, and display results from the accessed information to
cause the computer to act as a recruiting tool and/or hiring tool amounts to
an improvement to the function of a computer itself. Instead, this concept is
similar to patent-ineligible claims focused on "collecting information,
analyzing it, and displaying certain results of the collection and analysis."
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016).
The question at step one is whether the "focus of the claims" is on a
"specific asserted improvement in computer capabilities ... , or, instead, on
a process that qualifies as an 'abstract idea' for which computers are invoked
merely as a tool." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016). Here, claim 11 recites a method that includes five steps:
(1) receive a search query; (2) identify a first plurality of members of a
social networking service having member profile attributes satisfying the
search query; (3) for each member in the first plurality, compute individual
social proximity scores for a set of organizations organization; ( 4) for each
member in the first plurality, combine the individual social proximity scores
of the member to form an aggregate social proximity score; and ( 5) display
the aggregate social proximity scores of the second plurality of members.
Although of differing scope, claims 1, 6, and 17 recite language similar to
claim 11.
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Appellants' Specification describes that the claimed invention derives
and uses social proximity scores as an aid in the decision making processes
associated with the recruiting and/or hiring of employees. See, e.g., Spec.
,r 2. The Background section of Appellants' Specification ties the success of
an organization to the effectiveness of its sales team, and describes that
current processes attempt to more effectively allocate existing members of a
sales team, but do not address recruiting and hiring shortcomings. Id. ,r 3.
In light of these business concerns, Appellants' invention seeks to
"facilitat[e] the recruiting and/or hiring of sales representative candidates
based at least in part on deriving and presenting an overall score for each
candidate that reflects the extent to which the respective candidate is socially
connected to a set of existing and/or potential customer accounts of the
hiring organization." Id. ,r 19; see also App. Br. 16 (arguing that claim 1
causes a computer to act as a recruiting and/or hiring tool by receiving a
search query, accessing information within a social network in response to
the search query, and displaying results).
Understood in light of the Specification, Appellants' claims focus on
an improvement to a process for recruiting and hiring, i.e., an improvement
that qualifies as an abstract idea for which computers are invoked as a tool.
Like the claims in Electric Power, Appellants' claims perform the steps of
collecting information ( e.g., claim 11, step 1 ), analyzing the information
(e.g., claim 11, steps 2--4), and displaying certain results (e.g., claim 11, step
5). See Elec. Power, 830 F.3d at 1354 (finding claims directed to an abstract
idea where "[t]he advance they purport to make is a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular assertedly inventive technology for performing those
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functions"). Accordingly, we are not persuaded that the Examiner erred in
determining that the claims are directed to an abstract idea.
Turning to step two of the Mayo/Alice framework, we are not
persuaded that there are additional elements that transform the nature of the
claim into a patent-eligible application. App. Br. 16-17. Appellants argue
that the Examiner "improperly characterizes 'performing calculations on
data' in isolation, removed from other elements in the claims." Id. at 16.
Yet, Appellants do not identify, and we do not find, any non-conventional,
non-generic arrangement of elements that is recited in the present claims and
is in the realm of the non-abstract. SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1170 (Fed. Cir. 2018) ("[P]atent law does not protect such
claims [i.e., claims to an asserted advance in the realm of abstract ideas] ...
no matter how groundbreaking the advance.").
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-11, 13-17, and 19-22 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection.
Obviousness
Independent Claim 1, and Dependent Claims 2-5
We are persuaded by Appellants' argument that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because Yuster does not disclose
or suggest "for each member in the first plurality [ of members of a social
networking service], compute individual social proximity scores ... based
on established connections within the social networking service between
said member and other members having member profiles indicating current
employment at the particular organization," as recited in claim 1. We have
reviewed the portions of Yuster cited by the Examiner for this limitation.
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See Final Act. 5 ( citing Yuster ,r,r 59, 66-69). Yet, we find nothing that
discloses or suggests computing individual social proximity scores based on
established connections between the member and other members of the
social networking service, as required by claim 1.
Yuster describes identifying individuals within an organization who
are familiar with a target person outside of the organization. Yuster ,r 10.
Yuster's system couples to an organization's email server, accesses the
organization's e-mail server, and catalogs relationship information contained
in the header of each e-mail that is sent or received. Id. ,r,r 47, 50.
Exemplary relationship information includes the identity of the sender and
recipient, the date and time of the email, and the identity of the person
replying to the email. Id. The system analyzes the emails and calculates a
link-strength between an individual within the company and an individual
outside the company. Id. ,r 51. Link-strength is estimated based on
frequency and recentness of the interaction, address book completeness, and
so on. Id. ,r 69. The information then may be searched to identify
employees of the organization having a relationship with a target individual
at a target organization. Id. ,r,r 58-59.
Appellants contend that Yuster does not operate in a typical social
networking service, but rather is an email based system. App. Br. 19-21.
The Examiner takes the position that Yuster' s "system itself is the
[claimed] social networking service as it relates to enterprise relationship
management." Ans. 3. The difficulty with the Examiner's position is that
there is no indication that Yuster's target individual is a "member" of
Yuster's system, as required by claim 1. Instead, Yuster's system couples
with the organization's email server; mines information from emails sent
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from and received by individuals within the organization to establish
relationship information with the target individuals at a target organization;
and provides system access to individuals within the organization ( e.g.,
employees) to identify links to target individuals at the target organization
(see, e.g., Yuster ,r,r 20, 58-59), suggesting its members include, at most, the
individuals within the organization coupling with Yuster's system, not the
target individual at a target corporation.
Therefore, we do not sustain the Examiner's rejection of claim 1 and
its dependent claims under 35 U.S.C. § 103(a).
Independent Claims 6, 11, and 17, and Dependent Claims 7-10, 13-16, and
19-22
Independent claims 6, 11, and 1 7 recite language substantially similar
to the language of claim 1, and stand rejected based on the same rationale
applied with respect to claim 1. Final Act. 4---6. Therefore, we do not
sustain the Examiner's rejection under 35 U.S.C. § 103(a) of independent
claims 6, 11, and 17, and their dependent claims, for the same reason set
forth above with respect to claim 1.
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DECISION
The Examiner's rejection of claims 1-11, 13-17, and 19-22 under
35 U.S.C. § 101 is affirmed
The Examiner's rejection of claims 1-11, 13-17, and 19-22 under
35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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