Ex Parte Fuloria et al

Patent Trial and Appeal Board

Nov 14, 2017

13194507 (P.T.A.B. Nov. 14, 2017)

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.
13/194,507 07/29/2011 Prashant Chandra Fuloria 079894.0281 1036
91230 7590 11/16/2017
Raker Rntts; T T P /Faeehnnk Tne
EXAMINER
2001 ROSS AVENUE WHITAKER, JONATHAN J
SUITE 700
Dallas, TX 75201 ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
ptomaill @bakerbotts.com
ptomai!2 @ bakerbotts .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRASHANT CHANDRA FULORIA and GOKUL RAJARAM
Appeal 2016-005633
Application 13/194,5071
Technology Center 3600
Before JOHN A. EVANS, JOHN P. PINKERTON, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—3, 5—11, 13—19, and 21—23. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE CLAIMED INVENTION
Appellants’ claimed invention “relates generally to social networking
systems and other systems in which users can form connections with other
users, and in particular, providing a mechanism for users to promote social
1 According to Appellants, the real party in interest is Facebook, Inc. App.
Br. 2.
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networking objects to other users.” Spec. 11. Claim 1 is illustrative of the
subject matter of the appeal and is reproduced below.
1. A method comprising, by one or more computing
systems:
presenting content to a first user in a news feed
associated with a social networking system;
for a selected item in the news feed associated with a
second user, determining a degree of closeness between the first
user and the second user;
based on determination of a high degree of closeness
between the first user and the second user, providing an
interface to the first user to allow the first user to sponsor the
selected item associated with the second user;
receiving, from the first user of the social networking
system via the interface, a request to sponsor the selected item
from the content presented in the news feed for promotion to
one or more other users of the social networking system;
determining affinity scores for a plurality of other users
of the social networking system, each affinity score determining
a degree of closeness between a selected one of the plurality of
other users and the first user and the second user;
promoting the one or more social networking objects to a
subset of the plurality of other users of the social networking
system that are determined to have a high degree of closeness to
at least one of the first user and the second user until the one or
more social networking objects have been viewed a
predetermined number of times by the subset of the plurality of
other users on the social networking system; and
debiting an account of the first user based on the
promoting of the one or more social networking objects.
REJECTIONS ON APPEAL
(1) The Examiner rejected claims 1—3, 5—11, 13—19, and 21—23
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
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(2) The Examiner rejected claims 1—3, 5—11, 13—19, and 21—23
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Nicholas et al. (US 2008/0126476 Al; published May 29, 2008) (hereinafter
“Nicholas”) and Svendsen et al. (US 2012/0123830 Al; published May 17,
2012) (hereinafter “Svendsen”).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellants.
We disagree with Appellants’ arguments and we incorporate herein
and adopt as our own the findings, conclusions, and reasons set forth by the
Examiner in the (1) May 20, 2015 Final Office Action (“Final Act.” 2—26)
and (2) March 10, 2016 Examiner’s Answer (“Ans.” 2—30). We highlight
and address for emphasis, however, specific findings and arguments below
relating to (1) statutory subject matter eligibility and (2) the art based
rejection.
(1) Arguments relating to f101 rejection
Appellants contend the Examiner improperly rejected claims 1—3, 5—
11, 13-19, and 21-23 under 35 U.S.C. § 101. See App. Br. 12-14; Reply
Br. 2-4. As to the specific arguments we address below, Appellants argue
the rejected claims as a group. Thus, we decide the appeal of the § 101
rejection on the basis of representative claim 1, and refer to the rejected
claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(l)(iv);
In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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According to Appellants, the claims do not concern an abstract idea,
and even if they did, the claims would be patent eligible because the claims
amount to significantly more than an abstract idea. See App. Br. 13—14;
Reply Br. 2—3. We find Appellants’ arguments unpersuasive.
Section 101 of the Patent Act provides that “[wjhoever 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.” 35 U.S.C. § 101. The Supreme Court has explained that this
provision is subject to a long-standing, implicit exception: “[ljaws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014). The Court has set
forth a two-part inquiry to determine whether this exception applies. First,
we must determine if the claim at issue is directed to one of those patent-
ineligible concepts. Alice, 134 S. Ct. at 2355. Second, if the claim is
directed to one of those patent-ineligible concepts, we must consider the
elements of the 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.” Alice, 134 S. Ct. at 2355 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78—79
(2012)).
(i) Abstract idea
We first consider whether the Examiner properly concluded the
claims are directed to one or more abstract ideas. For example, the
Examiner concluded that the claims on appeal “are directed to the abstract
idea of sponsoring published content, which is a fundamental economic
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practice and/or a method of organizing human activities.” Ans. 21; see also
Final Act. 3^4. More specifically, the Examiner finds the claims are for a
“concept relating to interpersonal and intrapersonal activities, such as
managing transactions between people, social activities, advertising, and
sales activities and/or a concept relating to commerce, such as agreements
between people in the form of contracts and business relations and/or [is] an
idea standing alone such as a mental process.” Ans. 21.
The Examiner finds that these concepts are similar to (i) SmartGene’s
“comparing new and stored information and using rules to identify options,”
(ii) buy SAFE’S “creating a contractual relationship,” and (iii) Ultramercial’s
“soliciting and publishing a sponsored message,” for which concepts the
Federal Circuit found to be directed to abstract ideas. See Ans. 21 (citing
SmartGene Inc. v. Adv. Bio. Labs. SA, 555 F. App’x 950, 954 (Fed. Cir.
2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353-55 (Fed. Cir.
2014); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed. Cir.
2014)).
Appellants argue the claims are not directed to an abstract idea,
including not being directed to “a fundamental economic practice and/or a
method of organizing human activities.” App. Br. 13. Rather, according to
Appellants, claim 1 recites specific limitations and is not an abstract idea.
App. Br. 13—14. Appellants also argue “the idea of ‘sponsoring published
content’ is far from being a ‘fundamental practice’ or a ‘method of
organizing human activities.’” App. Br. 14; see also Reply Br. 2—3.
Appellants have not persuaded us that the Examiner erred. The
Federal Circuit has explained that the abstract-idea inquiry requires “looking
at the ‘focus’ of the claims, their ‘character as a whole,”’ to determine if the
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claims are directed to an abstract idea. Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
We agree with the Examiner that the claims are directed to abstract
ideas of (i) managing interpersonal and intrapersonal activities, such as
managing transactions between people, social activities, advertising, and
sales activities, and (ii) managing commercial relationships, such as
agreements between people in the form of contracts and business relations.
In this regard, the claims of the instant application are similar to the claims
found to be abstract ideas in SmartGene, buySAFE, and Ultramercial, as
cited by the Examiner (i.e., “comparing new and stored information and
using rules to identity options,” “creating a contractual relationship,” and
“soliciting and publishing a sponsored message,” respectively).
These cases are sufficiently analogous to establish that the instant
claims are directed to an abstract idea. See Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1334 (Fed. Cir. 2016) (explaining that when determining
whether claims are directed to an abstract idea, “both this court and the
Supreme Court have found it sufficient to compare [the] claims at issue to
those claims already found to be directed to an abstract idea in previous
cases”).
(ii) Inventive concept
We next consider whether the Examiner correctly concluded the
claims do not include 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.’” Alice, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo, Inc., 566 U.S. at 12—IS). The Examiner explains:
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The claims as a whole, considering all claim elements both
individually and in combination, do not amount to significantly
more than an abstract idea. [Claim l’s] website
limitations/social network limitations do not add significantly
more because they are simply an attempt to limit the abstract
idea to a particular technological environment. The published
content sponsoring is simply being performed using a social
networking system. The social networking system is
performing the generic functions standard to social networks in
order to implement the abstract idea (news feed content
publication, determining social relationships, providing
interface for publishing content, receiving requests to publish
content, promoting content to users based on social network
connections).
Ans. 24; see also Final Act. 4—6.
Appellants argue the claims “contain an inventive concept sufficient
to transform the claimed abstract idea into a patent-eligible application.”
App. Br. 14. Appellants point to limitations in the claims to support this
contention that the claims amount to significantly more. Id. Appellants also
argue that the limitations “are not steps that are analogous to purely generic
computer functions.” Reply Br. 4.
We agree with the Examiner that the claims do not amount to
significantly more than the abstract idea. Appellants fail to refute
sufficiently the Examiner’s finding, with which we agree, that the claims
perform functions for a particular technological environment (i.e., social
networking systems), rather than being an inventive concept. See
Ultramercial, 772 F.3d at 716 (finding using known elements to perform
“conventional steps, specified at a high level of generality, ’ which is
insufficient to supply ‘an inventive concept’” (quoting Alice, 134 S. Ct. at
2357)). Furthermore, the claims do not specify a special purpose computer,
but rather describe routine and conventional steps to be carried out by the
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equivalent of a generic computer (i.e., “apply it with a computer”), and, thus,
fail to provide an inventive concept. See 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’”). The fact that a generic computer requires relevant
programming (i.e., the recited claim steps) does not change the programmed
generic computer into a special purpose computer. See id.
For the above reasons, we sustain the Examiner’s rejection of claims
1-3, 5-11, 13-19, and 21-23 under 35 U.S.C. § 101.
(2) Arguments relating to § 103 rejection
(i) Nexus between relationship and yrovidins an interface
Appellants argue the combination of Nicholas and Svendsen fails to
teach or suggest “for a selected item in the news feed associated with a
second user, determining a degree of closeness between the first user and the
second user” and “based on determination of a high degree of closeness
between the first user and the second user, providing an interface to the first
user to allow the first user to sponsor the selected item associated with the
second user,” as recited in claim 1. App. Br. 17—18. More specifically,
Appellants argue Nicholas only teaches “when determining the particular
content to be delivered to a user,. . . relationship information^ may be used
to determine what content to deliver.” App. Br. 17—18 (citing Nicholas
1316). As to sponsorships, Appellants argue Nicholas teaches that they
“may be provided for entire feeds, for aggregate feeds, for individual feed
items or subsets of a feed, or for groups of feed formatted content.” App.
Br. 18 (citing Nicholas 1132). Importantly, however, Nicholas fails to teach
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“providing an interface to allow a user to sponsor content based on a high
degree of closeness between users,” according to Appellants. Id. Rather,
Appellants argue Nicholas teaches that users can “access[] a sponsorship
interface to browse and filter content for selection by the sponsor.” Id.
(citing Nicholas 1137). There is no “sort of nexus between the determined
relationship and providing the sponsorship interface.” Id.', see also Reply
Br. 6 (arguing Nicholas may teach a potential sponsor can use subscription
information to select what to sponsor, but Nicholas does not “provide a
specific example for the opposite scenario where the sponsorship is solicited
using subscription information”).
The Examiner finds that the combination, and Nicholas in particular,
teaches or suggests the disputed limitation. Ans. 25—26; Final Act. 7. The
Examiner finds Nicholas teaches “determining a degree of closeness
between users for the purpose of providing items” and “that the likelihood
that an item is delivered to a user is affected by ‘the closeness of the
relationship they maintain with the person.’” Ans. 25 (citing Nicholas
11315—317, 320-321); see also id. (citing 1320 (finding “that
recommendations sent to [a] user may be ‘weighted based upon closeness of
relationship’”)).
As to sponsorship, the Examiner finds Nicholas teaches or suggests
“providing a sponsorship interface to a first user to allow the first user ... to
sponsor a selected item associated with a second user.” Ans. 25 (citing
Nicholas 11 121, 131, 133—134, 137); id. (quoting Nicholas 1133 (“[T]he
request and/or reply may be provided via an online sponsorship interface.”)).
More specifically, the Examiner finds Nicholas teaches “current subscription
information associated with the feed formatted content may also be used to
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select or solicit sponsorships of certain feed formatted content.” Ans. 25—26
(emphasis added) (quoting Nicholas 1137). The Examiner further finds
“[bjasing the sponsorship solicitation on the degree of closeness between
users is a longstanding commercial practice seen previously in various forms
of advertising,” and is reinforced by Nicholas’ teaching that “sponsorships
can be offered to local businesses to sponsor talent shows, science fairs,
school dances, sporting events and other school events” — “local” is a
measure of closeness considered in the sponsorship solicitation. Ans. 26
(citing Nicholas 1400).
We agree with the Examiner’s findings and adopt them as our own.
For example, we agree Nicholas teaches or suggests using closeness between
users to provide items (e.g., feed formatted content) to a user. See Nicholas
Tflf315—317, 320—321. We also agree Nicholas teaches or suggests
providing a sponsorship interface to a user which allows the user to sponsor
an item associated with another user. See Nicholas H 121, 131
(“Individuals may contact each site individually to have their content
published on those sites, or there could be an interface displaying the end
site options and, for example, the amount each costs or the consideration
required.”), 133 (“One or more clients provide a request for sponsorship of
feed formatted content and provide a reply to sponsorship request.”), 134
(“The request for sponsorship is received ... by a sponsor. A reply is
provided by the sponsor in response to the request. . . .”), 137. Contrary to
Appellants’ arguments, Nicholas at least suggests providing an interface to
“solicit sponsorships of certain feed formatted content.” Nicholas 1137.
It would have been obvious to one of ordinary skill in the art to
combine Nicholas’ above cited teachings to teach or suggest the disputed
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limitation. See KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(“[T]he [obviousness] analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.”); In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]t
is proper to take into account not only specific teachings of the references
but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”). Furthermore, we find Appellants’ argument
that the combination fails to teach the “specific example” of the specific
solicitation unpersuasive. KSR, 550 U.S. at 417 (“If a person of ordinary
skill can implement a predictable variation, § 103 likely bars its
patentability.”)
(ii) Debiting by a predetermined amount of credits
Appellants argue the combination of Nicholas and Svendsen fails to
teach or suggest “debiting the account of the first user by a predetermined
amount of credits,” as recited in claims 5 and 13. App. Br. 19—20 (emphasis
added). More specifically, Appellants argue Nicholas teaches that
“[p]ayment or consideration” (e.g., a monthly fee or publishing
requirements) may be required from a user to publish the user’s content, but
does not teach debiting by a predetermined amount of credits. App. Br. 20
(alteration in original) (citing Nicholas 1131); Reply Br. 7.
The Examiner finds, and we agree, the combination teaches or
suggests the disputed limitation. See Ans. 27—28. For example, the
Examiner finds, and we agree, Nicholas teaches or suggests debiting the
account of a first user based on sponsoring an item. Ans. 27 (citing Nicholas
1250). We also agree with the Examiner that Nicholas teaches or suggests
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requiring “consideration [or] payment to publish content” and “displaying
the] amount of costs and consideration required for publishing . . . before
selection and publishing [(i.e., a predetermined amount)].” Ans. 27 (citing
Nicholas 1131 (“[P]ayment or consideration may be required based on the
selection input,” and “there could be an interface displaying the end site
options and, for example, the amount each costs or the consideration
required.”). We also note that Appellants’ Specification describes “credits”
broadly (e.g., as being “equivalent to real-world currency,” or as being
“valueless electronic currency that may only be used on the social
networking system”). See Spec. 138.
Accordingly, it would have been obvious to one of ordinary skill in
the art to combine Nicholas’ above cited teachings to teach or suggest the
disputed limitation. See KSR, 550 U.S. at 417—18.
(Hi) Weighing objects more heavily
Appellants argue the combination of Nicholas and Svendsen fails to
teach or suggest “weighing the one or more social networking objects more
heavily in a content ranking algorithm,” as recited in claims 6 and 14. App.
Br. 21—22. Appellants argue Nicholas “merely discloses that a user who
views feed formatted content may rank the viewed content as good or bad,”
rather than disclosing the disputed limitation. Id. (citing Nicholas 1217).
Appellants also argue that even if Nicholas teaches using rating information,
inter alia, in providing feed formatted content, “there is no disclosure that
the rating information is used to rate feed formatted content more highly in a
content ranking algorithm.” Id. (citing Nicholas 1316).
The Examiner finds, and we agree, that the combination teaches or
suggests the disputed limitation. Ans. 28—30. More specifically, the
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Examiner finds, and we agree, Nicholas teaches or suggests that a user can
rank content and “the content is promoted based on the recorded ranking
data.” Ans. 28—29 (citing Nicholas 304—307 (finding “Nicholas describes
a ranking mechanism (equivalent to a ranking algorithm) which uses ranking
data to raise content higher on a display list (equivalent to weighing more
heavily)”), 316—317, 320 (“Recommendations may be weighted based upon
closeness of relationship, a user’s reaction to prior recommendations from
the same source, as well as whether it was a direct recommendation to the
user, a recommendation to friends, or a general recommendation.”)).
CONCLUSION
Based on our above findings, we sustain the Examiner’s § 101
rejection of claims 1—3, 5—11, 13—19, and 21—23. We also sustain the
Examiner’s § 103 rejection of claims 1, 5, 6, 13, and 14, as well as claims 2,
3, 7—11, 15—19, and 21—23, as Appellants do not provide separate arguments
for their patentability.
DECISION
We affirm the Examiner’s decision rejecting claims 1—3, 5—11, 13—19,
and 21-23.
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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