Ex Parte Bhamidipati et al

Patent Trial and Appeal Board

Jun 28, 2018

14788554 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/788,554 06/30/2015 Venkata S.J.R. Bhamidipati
45839 7590 07/02/2018
Schwegman Lundberg & Woessner/ Linkedln/Microsoft
POBOX2938
MINNEAPOLIS, MN 55402
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.D79US 1 8039
EXAMINER
RETTA, YEHDEGA
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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
Exparte VENKATA S.J.R. BHAMIDIPATI,
ANIL KUMAR GUPTA, and ZHIFENG DENG
Appeal2017-003841
Application 14/788,554
Technology Center 3600
Before ST. JOHN COURTENAY III, JENNIFER S. BISK, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7, 9-15, and 17-20, which are all of the claims
pending in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Linkedin Corporation.
App. Br. 2.
2 Claims 8 and 16 have been canceled. See Amended Claims, filed Apr. 22,
2016.
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Application 14/788,554
INVENTION
Appellants' invention relates to automatic approval of advertisements
for a social networking system. Abstract. Claim 1 is illustrative and reads
as follows:
1. A social networking system comprising:
a computer processor and a computer database configured to:
receive an advertisement from a user for posting on the social
networking system;
verify that the advertisement meets a first set of criteria;
in response to verifying that the advertisement meets the first set of
criteria, receive a submission of the advertisement from the user for further
processmg;
verify that the advertisement meets a second set of criteria; and
in response to verifying that the advertisement meets the second set of
criteria, immediately approve the advertisement for display on the social
networking system;
wherein the second set of criteria comprises a reputation of the user;
wherein the user has contracted to pay a maximum amount for the
advertisement based on a contractual number of clicks on the advertisement;
and wherein a determination of the reputation of the user comprises a
comparison of the contractual number of clicks on the advertisement and an
actual number of clicks on the advertisement, such that the reputation of the
user is affected when the actual number of clicks on the advertisement
exceeds the contractual number of clicks on the advertisement.
REJECTIONS 3
Claims 1-7, 9-15, and 17-20 stand rejected under 35 U.S.C. § 101
3 In the Answer, the Examiner withdrew the rejection of claims 1-7, 9-15,
and 17-20 under 35 U.S.C. § 112(a), as failing to comply with the written
description requirement. Ans. 2; see also Final Act. 3-5.
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because the claimed invention is directed to a judicial exception without
significantly more. Final Act. 2-3.
Claims 1-7, 9-15, and 17-20 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Badros et al. (US 2006/00149623 Al,
published July 6, 2006) ("Badros"), Zhou et al. (US 2012/0197711 Al,
published Aug. 2, 2012) ("Zhou"), and Mahadevan et al. (US 2015/0269633
Al, published Sept. 24, 2015) ("Mahadevan"). Final Act. 5-9.
ANALYSIS
We have reviewed the rejections of claims 1-7, 9-15, and 17-20 in
light of Appellants' arguments that the Examiner erred. We have considered
in this decision only those arguments Appellants actually raised in the
Briefs. Any other arguments Appellants could have made, but chose not to
make, in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.
Rejection of Claims 1-7, 9-15, and 17-20 under 35 US.C. § 101
Appellants contend the Examiner erred in concluding the claims are
directed to an abstract idea without significantly more. 4 App. Br. 10-11.
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
4 Appellants argue claims 1-7, 9-15, and 17-20 as a group. App. Br. 10.
We select independent claim 1 as representative of the group. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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step framework, described in Mayo and Alice. Alice Corp. Pty. Ltd. v. CLS
Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 76-77 (2012)). In accordance with
that framework, we first determine whether the claim is "directed to" a
patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. (internal quotations and
citation omitted).
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. 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);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016).
In step one of the Alice analysis, the Examiner concluded claim 1 is
directed to verifying whether an advertisement meets a criteria for posting,
which is similar to the abstract concepts of organizing and comparing data
( citing Cyberfone) and comparing new and stored information ( citing
SmartGene). Final Act. 2-3; Cyberfone Sys., LLC v. CNN Interactive
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Group, Inc., 558 F. App'x. 988, 992 (Fed. Cir. 2014) (nonprecedential);
SmartGene Inc. v. Adv. Bio. Labs. SA, 555 F. App'x 950 (Fed. Cir. 2014)
( nonprecedential).
Appellants first contend the Examiner erred because "the number of
clicks on an advertisement cannot be determined mentally in a human
mind." App. Br. 12-13. Appellants argue the number of clicks can only be
determined using computer hardware. Id. at 13.
We are not persuaded of error. The plain language of claim 1 does
not recite or otherwise require a determination of the number of clicks on an
advertisement, and Appellants have not persuaded us it does.
Appellants next argue Cyberfone is "inapposite and not on point."
App. Br. 13.
We are not persuaded. In Cyberfone, the Federal Circuit held that
"using categories to organize, store, and transmit information is well-
established," and "the well-known concept of categorical data storage, the
idea of collecting information in classified form, then separating and
transmitting that information according to its classification, is an abstract
idea that is not patent-eligible." Cyberfone, 558 F. App'x. at 992. Here, as
in Cyberfone, information is "received" ( collected) and "verified" and
"approved" ( classified or organized).
We also discern no error in the Examiner's reliance on SmartGene. In
SmartGene, the Federal Circuit concluded claims were patent ineligible
because they did "no more than call on a 'computing device,' with basic
functionality for comparing stored and input data and rules, to do what
doctors do routinely." SmartGene, 555 F. App'x at 954. In the instant case,
the recited "advertisement" is nothing more than data used in an algorithm
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process that uses a central system (i.e., "computer processor") to verify and
approve the data using mathematical comparisons and rule-based processes.
The claims at issue in SmartGene relied upon "expert rules" for "'evaluating
and selecting' from a stored 'plurality of different therapeutic treatment
regimens."' SmartGene, 555 F. App'x at 955. The "expert rules" in
SmartGene are analogous to the "criteria" used to verify the advertisement
and the recited limitation "the reputation of the user is affected when the
actual number of clicks on the advertisement exceeds the contractual number
of clicks on the advertisement."
For these reasons, we are not persuaded the Examiner erred in
concluding claim 1 is directed to an abstract idea.
Turning to step two of the Alice analysis, we are, likewise, not
persuaded by Appellants' argument that claim 1 is necessarily rooted in
computer technology in order to overcome an Internet-centric problem
specifically arising in the realm of computer technology. See App. Br.
11-12 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014)). Appellants argue the claimed subject matter addresses a
problem by examining the contractual number of clicks and the actual
number of clicks, and taking the extra step of tying that comparison to the
reputation of the user. Id. at 12. Appellants argue "[a]n economic loss on a
website" is "a business challenge that is particular to the Internet." Id.
In DDR, the Court noted that a claim may amount to more than any
abstract idea recited in the claims when it addresses a business challenge,
where that challenge is particular to a specific technological environment,
such as the Internet. 773 F.3d at 1257. Here, claim 1 addresses the business
problem of advertisements receiving other than a contractual number of
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clicks. This is not a technical problem. The solution does not involve the
improvement of the computer processor or the computer database.
Verifying that advertisements meet certain criteria and approving such
advertising for display, including determining a reputation score, is not a
challenge particular to the Internet, but is instead "merely the routine or
conventional use of the Internet." DDR Holdings, 773 F.3d at 1259. Thus,
Appellants' claim 1 does not attempt to solve a challenge particular to the
Internet.
Claim 1 recites the abstract idea of verifying whether an
advertisement meets criteria for posting. Final Act. 2. The abstract idea
includes the steps of receiving an advertisement, verifying the advertisement
meets sets of criteria, and approving the advertisement. Id. Claim 1
additionally recites in generic terms a "computer processor" and a
"computer database," which are not sufficient to transform the nature of the
claim into a patent-eligible application of the abstract idea. See Alice, 134 S.
Ct. at 2355; see also Spec. ,r,r 20, 53---60 (describing database 16 and
processor 902 generically and describing that a hardware module may
include software encompassed within a general-purpose processor).
Accordingly, we sustain the Examiner's§ 101 rejection of
independent claim 1, as well as the Examiner's § 101 rejection of grouped
claims 2-7, 9-15, and 17-20, not argued separately. See App. Br. 10-11.
Rejection of Claims 1-7, 9-15, and 17-20 under 35 USC§ 103
Appellants contend the Examiner erred because neither Zhou nor
Mahadevan teaches or suggests the limitations "the user has contracted to
pay a maximum amount for the advertisement based on a contractual
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number of clicks on the advertisement" and "a determination of the
reputation of the user comprises a comparison of the contractual number of
clicks on the advertisement and an actual number of clicks on the
advertisement, such that the reputation of the user is affected when the actual
number of clicks on the advertisement exceeds the contractual number of
clicks on the advertisement," recited in claim 1. 5 App. Br. 15. In particular,
Appellant argues the cited portions of Zhou and Mahadevan are not "a
disclosure of the claimed subject matter of affecting a reputation of a user
based on the actual number of clicks on an advertisement exceeding the
contractual amount of clicks for the advertisement." Id.
Appellants attack Zhou and Mahadevan individually, even though the
Examiner relied on the combination of Badros, Zhou, and Mahadevan in
rejecting claim 1. In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012)
(citing In re Keller, 642 F.2d 413,425 (CCPA 1981)) ("The test for
obviousness is what the combined teachings of the references would have
suggested to those having ordinary skill in the art.").
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Here, the Examiner found Badros teaches that a trust score for each
advertiser can be used for influencing the decision of the auto-check, and the
given trust score is based on the performance and approvals of past
advertisement. Final Act. 6 ( citing Badros ,r 68). The Examiner found an
5 Appellants argue claims 1-7, 9-15, and 17-20 as a group. App. Br. 15.
We select independent claim 1 as representative of the group. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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artisan of ordinary skill would have been motivated to modify the teachings
of Badros with those of Zhou and Mahadevan, and provided reasoning with
rational underpinning for doing so. Id. at 6-7. Appellants' arguments do
not address the Examiner's findings with regard to Badros, and thus
Appellants have not persuasively addressed the rejection actually made by
the Examiner.
Moreover, Appellants argue that the references do not "disclose" the
disputed claim language. See App. Br. 15-16. The test for obviousness,
however, is not whether the claimed invention is expressly taught or
suggested in any one or all of the references, but 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). Appellants have not persuaded us that that claimed
subject matter would not have been obvious in light of the cited teachings.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Badros, Zhou, and Mahadevan teaches or
suggests the disputed limitations of claim 1.
Accordingly, we sustain the Examiner's§ 103 rejection of
representative claim 1, as well as the Examiner's§ 103 rejection of grouped
claims 2-7, 9-15, and 17-20. See App. Br. 15.
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DECISION
We affirm the decision of the Examiner rejecting claims 1-7, 9-15,
and 17-20.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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