Ex Parte Cathcart et al

Patent Trials and Appeals Board

Feb 25, 2019

13295002 - (D) (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/295,002 11/11/2011
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
02/27/2019
FIRST NAMED INVENTOR
Robert William Cathcart
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.
26295-19418 2033
EXAMINER
NGUYEN, LINH T
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT WILLIAM CATHCART,
RAFAEL LINDEN SAGULA, CAMERON ALEXANDER MARLOW,
JONATHAN CHANG, SIDDHARTH KAR, and ERIC SUN
Appeal2018-006543
Application 13/295,002 1
Technology Center 2400
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, and 4--17, which constitute all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Facebook, Inc. as the real party in interest. App. Br. 2.
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Application 13/295,002
THE INVENTION
The disclosed and claimed invention is directed to "providing
universal social context for concepts in a social networking system." Spec.
,r 1. 2
Claim 1, reproduced below with the disputed limitations italicized, is
illustrative of the claimed subject matter:
1. A method comprising:
maintaining, in a graph database by a social networking
system, a plurality of metapage objects, where each metapage
object represents a unique entity and is connected in the graph
database to a plurality of page objects that each represents a web
page having a different website domain and is attributed to the
same unique entity of the connected metapage object;
maintaining a plurality of connections between users of
the social networking system;
logging actions performed by the plurality of users on the
plurality of page objects;
receiving, from a viewing user of the plurality of users, a
request for social context information for a first page object of
the plurality of page objects;
querying the graph database for a set of page objects that
are connected to the same metapage object as the first page
object;
determining a plurality of actions performed on one or
more of the plurality of page objects in addition to the first page
object by other users of the social networking system who are
connected to the viewing user in the social networking system;
2 We refer to the Specification filed November 11, 2011 ("Spec."); the Final
Office Action mailed July 18, 2016 ("Final Act."); the Appeal Brief filed
June 19, 2017 ("App. Br."); the Examiner's Answer mailed April 4, 2018
("Ans."); and the Reply Brief filed June 4, 2018 ("Reply Br.").
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aggregating the determined plurality of actions performed
by other users of the social networking system who are connected
to the viewing user in the social networking system;
determining the requested social context information
based on the aggregated actions, the social context information
comprising a textual description of the aggregated actions; and
providing the social context information to the viewing
user in connection with the first page object.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Lo et al. US 2006/0195461 Al Aug. 31, 2006
("Lo")
Luo et al. US 2011/0022602 Al Jan.27,2011
("Luo")
Howes et al. US 2012/0215846 Al Aug. 23, 2012
("Howes")
Frankel et al. US 2013/0046781 Al Feb.21,2013
("Frankel")
Singleton et al. US 8,996,625 B 1 Mar. 31, 2015
("Singleton")
REJECTIONS
Claims 1, 6, 7, 9, 13, 14, 16, and 17 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Singleton and Lo. Final Act. 5.
Claims 2 and 10 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Singleton, Lo, and Frankel. Final Act. 10.
Claims 4 and 11 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Singleton, Lo, and Howes. Final Act. 11.
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Claims 5, 8, 12, and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Singleton, Lo, and Luo. Final Act. 13.
Claims 1-2 and 4--17 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Ans. 2. 3
ANALYSIS
Section 1 OJ Rejection
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites "[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title."
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208, 215-17 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70-71 (2012). Although an abstract idea, itself, is patent-
ineligible, an application of the abstract idea may be patent-eligible. Alice,
573 U.S. at 217. Thus, we must 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." Id. ( citing Mayo, 566 U.S. at 79, 78). The claim must contain
elements or a combination of elements that are "sufficient to ensure that the
3 The rejection under Section 101 is a new ground of rejection. Ans. 2.
Appellants elected to respond to the new ground in the Reply. See generally
Reply Br.
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patent in practice amounts to significantly more than a patent upon the
[abstract idea] itself." Id. ( citing Mayo, 566 U.S. at 72-73).
The Supreme Court set forth a two-part "framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Id.
at 217.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo, 566 U.S. at 75-
77] .... If so, we then ask, "[ w ]hat else is there in the claims
before us?" Id . ... To answer that question, we 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. Id. [at 79, 77-78]. ... We have 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." Id. [at 72-73] ....
Id. at217-18.
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). There is no definitive rule to determine what constitutes an
"abstract idea." Rather, the Federal Circuit has explained that "both [it] ...
and the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases." Enfish, 822 F.3d at 1334; see also Amdocs (Isr.) Ltd. v. Openet
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Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent-ineligible under§ 101, "the
decisional mechanism courts now apply is to examine earlier cases in which
a similar or parallel descriptive nature can be seen-what prior cases were
about, and which way they were decided").
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 v. Kappas, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594--95 (1978)); and mental processes (Gottschalkv. 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 water-proof cloth,
vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267---68 (1853))); 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
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environment." Id. (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.").
If the claim is "directed to" an abstract idea, we tum to the second
step 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 (internal citation
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.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Memorandum"). Under that guidance, 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
orgamzmg human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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See Memorandum at 5 2, 5 5-56. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then look 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.
See id. at 56.
Furthermore, the Memorandum "extracts and synthesizes key
concepts identified by the courts as abstract ideas to explain that the abstract
idea exception includes the following groupings of subject matter, when
recited as such in a claim limitation(s) (that is, when recited on their own or
per se)":
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Id. at 52 (footnotes omitted).
The Examiner concludes that claims are similar to those found to be
patent-ineligible in Electric Power and identifies the abstract idea as
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"collecting information, analyzing it, and displaying certain results of the
collection and analysis." Ans. 4 (citing Electric Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
Appellants argue that the claims are not directed to an abstract idea;
instead, Appellants argue the claims are directed to "a specific type of data
structure-a graph database-that stores metapage objects and page
objects," and provide "a specific implementation to a solution to a problem
in the software arts-how to organize [the] user preference information
expressed through actions taken across multiple domains and use this data to
provide social context information." Reply Br. 7-8 ( citing Spec. ,r,r 4, 5);
see Reply Br. 6-7.
On the current record, we are persuaded that the Examiner failed to
identify a patent-ineligible abstract idea. In Electric Power, relied on by the
Examiner, the Federal Circuit recognized that "analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Electric Power, 830 F.3d at 1354. For example, claim 12 in
Electric Power involved analyzing events based on measurements. See id. at
1351-52. That is the type of activity that can be, and often is, performed in
the human mind.
In contrast, the instant claims involve "a graph database by a social
networking system" and "a plurality of metapage objects, where each
metapage object represents a unique entity and is connected in the graph
database to a plurality of page objects that each represents a web page
having a different website domain and is attributed to the same unique entity
of the connected metapage object." The collection and analysis of such data
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cannot easily be performed by a human being, either mentally or with pen
and paper.
Instead, the claims are more similar to those found patent-eligible in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). In
DDR, the Federal Circuit held that the claims were patent-eligible "because
they do not merely recite the performance of some business practice known
from the pre-Internet world along with the requirement to perform it on the
Internet." DDR, 773 F.3d at 1257. Unlike claims courts had previously
found patent-ineligible, the Federal Circuit found that DDR's claims
"overcome a problem specifically arising in the realm of computer"
technology. Id.
Like the claims in DDR, the instant claims are not patent-ineligible
because they do not "recite a commonplace business method aimed at
processing business information, applying a known business process to the
particular technological environment of the Internet, or creating or altering
contractual relations using generic computer functions and conventional
network operations." Id. at 1259. Instead, the claims are directed to solving
a problem related to computer technology associated with social networking
systems, for which there is no pre-Internet analogy.
In light of the above analysis, and because organizing user preference
information expressed through actions taken across multiple domains as
metapage objects connected to page objects and using the metapage objects
to provide social context information is not a mathematical concept, an
identified method of organizing human activity, or a mental process, we
conclude the claimed invention is not directed to an abstract idea. See
Memorandum at 52; see also id. at 53 ("Claims that do not recite matter that
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falls within these enumerated groupings of abstract ideas should not be
treated as reciting abstract ideas, except" in rare circumstances.).
Accordingly, we do not sustain the Examiner's rejection.
Section 103 Rejections
Appellants contend "Lo does not show a metapage object that
represents a unique entity and is connected to page objects that are attributed
to the same unique entity." App. Br. 6-7. Specifically, Appellants argue
"Lo' s 'topic connection mode' links disparate keywords to create a single
topic, for which the disparate keywords cannot be attributed as representing
the same unique entity." App. Br. 7. According to Appellants, Lo's
examples "demonstrate that Lo's keywords (e.g., 'ice') are not attributed to
the same unique entity as the topics in the topic connection node (e.g., 'ice
cream' and 'ice skate rink')." App. Br. 7 ( emphases omitted). Appellants
further argue "Lo' s Contexts and topics are not attributed to the same unique
entity" (App. Br. 9), and instead Lo's "context connecting node (e.g.,
'chocolate ice cream recipe') collects together disparate topics (e.g., 'ice
cream' and 'recipe') and does not represent a single entity attributed to these
topics." App. Br. 8-9 ( emphases omitted).
We agree with the Examiner's findings that Lo' s connecting nodes
presenting "context and linking members," and "content members relat[ing]
to a topic," teaches the claimed metapage objects representing unique
entities and connected to page objects that are attributed to the same unique
entities of the connected metapage objects. Final Act. 7 (citing Lo Fig. 2,
,r,r 68, 115-123, 130-131, 139-143). As cited by the Examiner (Final
Act. 7), Lo teaches
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interrelated members ( topics, content members, preexisting
Contexts, and the combination thereof) may be cross-linked
together into a single Context connecting node to form a Context
. . . connecting node C 1 relates to the topics "ice cream" ( from
topic connecting node Tl), "recipe" and "chocolate" (from topic
connecting nodes T2 and T3, each comprises of a single
keyword) to form the meaning of "chocolate ice cream recipe"
for the Context.
Lo ,r 130 (emphases omitted). Lo further discloses "content members 51,
53, and 55, cross-linked to the node Cl," which may each "be of any type or
format, for instance ... a web page." Lo ,r 131 ( emphases omitted). In
other words, Lo teaches a Context (i.e., "chocolate ice cream recipe")
represented by connecting node C 1 and web pages (i.e., content members
51, 53, 55, as web pages) each connected to the Context (i.e., "chocolate ice
cream recipe") by Context connecting node C 1. Appellants have not
persuasively argued why Lo' s Context represented by connecting node C 1
does not teach the claimed "metapage objects," each representing "a unique
entity," or why Lo's content members 51, 53, 55, as web pages, each
connected to Context by connecting node C 1, do not teach the claimed
plurality of page objects that is each attributed to the same unique entity of
the connected metapage object.
Accordingly, we sustain the Examiner's rejection of claim 1, along
with the rejections of commensurate claim 9, for which Appellants rely on
the same arguments as discussed above for claim 1, along with dependent
claims 2, 4--8, and 10-17, which are not argued separately.
DECISION
We reverse the Examiner's rejection of claims 1, 2, and 4--17 under 35
U.S.C. § 101.
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We affirm the Examiner's rejection of claims 1, 2, and 4--17 under 3 5
U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject all of the
pending claims.
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. § 41.50(±).
AFFIRMED
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