Ex Parte Garcia-Martinez

Patent Trial and Appeal Board

Sep 27, 2017

13566016 (P.T.A.B. Sep. 27, 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.
13/566,016 08/03/2012 Antonio Felipe Garcia-Martinez 26295-20574 5761
87851 7590 09/29/2017
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center MUNSON, PATRICIA H
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/29/2017 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):
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 ANTONIO FELIPE GARCIA-MARTINEZ
Appeal 2016-003081
Application 13/566,0161
Technology Center 3600
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
NABEEL U. KHAN, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-
Final Rejection of claims 1—23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Invention
Appellant discloses using a user’s negative sentiment for an object
maintained by a social networking system—the negative sentiment being
1 Appellant identifies Facebook, Inc., as the real party in interest. App. Br.
2.
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indicated by actions users of the social networking system perform on
various objects. Abstract.
Exemplary Claim
1. A computer-implemented method comprising:
storing a user profile for a first user of a social networking
system;
receiving one or more actions performed by the first user on a
first object maintained by the social networking system;
identifying a topic associated with the first object, wherein the
one or more actions performed by the first user on the first
object do not indicate whether the first user has a negative
sentiment or a positive sentiment for the topic associated with
the first object;
retrieving one or more actions previously performed by second
users of the social networking system on one or more second
objects that are also associated with the topic of the first object,
the second users having user profiles indicating a negative
sentiment for the topic associated with the first object that
received the one or more actions by the first user, the negative
sentiment of the second users for the topic based on the one or
more actions performed by the second users on the second
objects;
determining that the second users previously performed one or
more actions on the first object that received the one or more
actions by the first user;
inferring, by a computer, that the first user has a negative
sentiment for the topic based on the second users previously
performing one or more actions on the first object that received
the one or more actions by the first user and the second users
having user profiles indicating negative sentiment for the topic
associated with the first object;
storing the topic as a negative interest in connection with the
user profile;
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selecting content for presentation to the user based at least in
part of the negative interest; and
presenting the selected content to the user.
Rejections2
The Examiner rejects claims 1—23 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Non-Final Act. 2-4.
The Examiner rejects claims 1—23 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Non-Final Act. 4—5.
The Examiner rejects claims 18—20, 22, and 23 under 35 U.S.C.
§ 102(b) as being anticipated by Novikov et al. (US 2011/0153412 Al;
published June 23, 2011). Non-Final Act. 5—8.
The Examiner rejects claims 1, 2, 4—10, 12, 13, and 15—17 under 35
U.S.C. § 103(a) as being unpatentable over Manolescu et al. (US 2010/
0030648 Al; published Feb. 4, 2010) and Amento et al. (US 2010/0071000
Al; published March 18, 2010). Non-Final Act. 8—16.
The Examiner rejects claims 3 and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Manolescu, Amento, and Nance et al. (US 2010/
0174726 Al; published July 8, 2010). Non-Final Act. 16—18.
The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as being
unpatentable over Manolescu, Amento, and Donneau-Golencer et al. (US
2011/0295612 Al; published Dec. 1,2011). Non-Final Act. 18—19.
2 The Examiner’s 35 U.S.C. § 112, second paragraph, rejection of claims 1—
6 (Non-Final Act. 4) is withdrawn (Ans. 19).
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The Examiner rejects claim 21 under 35 U.S.C. § 103(a) as being
unpatentable over Novikov and Hegeman et al. (US 2011/0106630 Al;
published May 5, 2011). Non-Final Act. 19-20.
ANALYSIS
35 U.S.C. § 112, first paragraph
In rejecting claims 1—23 under 35 U.S.C. § 112, first paragraph, the
Examiner concludes the “claims are directed to generic claims constrained
only by the broad steps of ‘identifying a topic’, ‘inferring a negative
sentiment’ and ‘extracting features’ which steps [sic] are only further limited
by describing details of the intended results of the claimed limitations.”
Non-Final Act. 3. The Examiner find the Specification only discloses “one
method of‘identifying’, ‘inferring’, and ‘extracting,’” indicating Appellants
had “possession of [only] a single procedure to perform the claimed
limitations.” Id.
Appellant contends the Examiner erred because the Specification
describes “multiple ways to identify a topic” (see App. Br. 6 (citing Spec.
128); Reply Br. 2—3), “second users having user profiles indicating negative
sentiment for the topic” (see App. Br. 10 (citing Spec. ^fl[ 34—35); Reply Br.
6 (further citing Spec ^fl[ 32—33)), and “multiple ways to extract features”
(see App. Br. 11 (citing Spec 139); Reply Br. 6).
Appellant’s citations provide sufficient detail such that one skilled in
the art would reasonably conclude that Appellant had possession of the
claimed invention. For example, the Specification discloses numerous
sources for a topic to identify, with an illustrative example given in which “a
post or a page that contains the text ‘Go Sharks! ’” is used to “identify
candidate topics by comparing the text to entries in a dictionary or other
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stored data including entries associated with the term ‘sharks’ such as:
‘Shark (animal),’ ‘San Jose Sharks (hockey team),’ ‘Jumping the Shark,’ and
‘LoanShark.’” Spec. 128. In another cited example, the Specification
discloses that
users liking a page associated with the topic that include[s]
keywords (e.g., dislike, hate, sucks, etc.) indicative of negative
sentiment and also liking a content item associated with the
same is used ... to infer that a user liking the content item has a
negative interest in the topic.
Id. 134. The Specification further discloses “[ejxamples of features
extracted from the advertisement including a landing page for the
advertisement, one or more topics associated with the advertisement, a page
associated with the advertisement, a sender of the advertisement or other
features.” Id. 139. We find that these examples pertain to and provide
sufficient written description support for the identifying, inferring, and
extracting recitations the Examiner finds lack of sufficient written
description support.
In particular, we agree with Appellant the recited technology is
“mature,” and that recitations directed to ‘“identifying a topic,’ ‘inferring a
negative sentiment,[’] and ‘extracting features’ . . . were all present in the
original claims.” App. Br. 9; see also Spec. 27, 32. Multiple species may be
necessary to adequately show possession of an entire genus in unpredictable
fields. See Bilstad v. Wakalopulos, 386 F.3d 1116, 1125 (Fed. Cir. 2004).
However, the Examiner’s findings do not show that the scope of disclosure
is incommensurate with the technology’s level of unpredictability.
Moreover, the Examiner’s rejection does not rely on specific recitations in
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the claims as currently presented that were not part of the original
Specification.
The Examiner further finds the Specification has provided neither “a
meaningful description in such full, clear, concise, and exact terms as to
enable any person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same” nor “the best mode
contemplated by the inventor of carrying out the argued limitations.” Ans.
21. However, we find the Examiner provides insufficient findings or
explanation to support these expanded bases for rejecting the claims under
35 U.S.C. § 112, first paragraph. See also Reply Br. 4—6.
For these reasons, we do not sustain the Examiner’s 35 U.S.C. § 112,
first paragraph, rejection of claims 1—23.
35 U.S.C. § 101
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012). To be
statutorily patentable, the subject matter of an invention must be a “new and
useful process, machine, manufacture, or composition of matter, or [a] new
and useful improvement thereof.” 35 U.S.C. § 101. There are implicit
exceptions to the categories of patentable subject matter identified in § 101,
including: (1) laws of nature, (2) natural phenomena, and (3) abstract ideas.
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). The
Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions “from those that claim patent-
eligible applications of those concepts.” Id. (citing Mayo Collaborative
Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289 (2012)). The evaluation
follows a two-part analysis: (1) determine whether the claim is directed to a
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patent-ineligible concept, e.g., an abstract idea; and (2) if a patent-ineligible
concept is present in the claim, determine whether any element, or
combination of elements, in the claim is sufficient to ensure that the claim
amounts to significantly more than the patent-ineligible concept itself. See
Alice, 134 S. Ct. at 2355.
In rejecting claim 1 under 35U.S.C. § 101, the Examiner finds the
claimed invention is “directed to the abstract idea of the fundamental
economic practice of marketing” and that the “additional elements or
combination of elements in the claim[] . . . amounts to no more than the
application of the abstract idea in the social media environment via the use
of a general purpose computer.” Non-Final Act. 4; see also Ans. 22—23.
Appellant contends the Examiner erred because claim 1 “refers to a
specific way of using inferred negative sentiment to provide content for
presentation to a user,” which “does not pre-empt all use of ‘the fundamental
economic practice of marketing, ’ but merely prevents practicing of the
specific methods claimed with each of the specific claimed limitations.”
App. Br. 16; see also Reply Br. 7—9. That is, Appellant argues that claim 1
is directed to a patent-eligible concept.
We disagree with Appellant. First, preemption is not a separate test,
but is inherently addressed within the Alice framework. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.”). Second,
representative claim 1 is directed to a method that predicts that a first user
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has a negative sentiment regarding a topic based on the first user, and
“second users,”3 taking actions on a first object and by the second users
taking actions on a second object that indicate a negative sentiment for the
topic. Making such inferences or predictions—for reasons such as avoiding
wasting resources on marketing to unreceptive groups or to capitalizing on a
group’s negative sentiment—represents a fundamental economic or
conventional business practice. See DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (citing Bilski v. Kappos, 130 S.
Ct. 3218, 3231 (2010)). That is, marketing routinely entails identifying and
distinguishing among groups that are likely or unlikely to be receptive to a
message. The abstract concept underlying the claimed invention is directed
to identifying members of the group through related actions taken by
members of the group (e.g., actions taken by a first user on a first object
indicating membership with a group comprising second users that also take
action on that first object) and distinguishing that group as having a negative
sentiment on a topic (e.g., based on actions the second users have taken on
one or more additional objects). Thus, claim 1 is directed to a patent-
ineligible abstract concept.
Appellant contends that claim 1 amounts to significantly more than
the patent-ineligible concept itself because claim 1 recites features that are
“novel and patentable distinct over the cited references.” App. Br. 18; see
also Reply Br. 10—11. However, the test under Alice is not simply whether
the claim recitations are distinguishable from the prior art. The test is
3 Although grammatically problematic, we will adopt Appellant’s
convention of using “second users” to refer to one or more additional users.
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whether any element, or combination of elements, in the claim is sufficient
to ensure that the claim amounts to significantly more than the patent-
ineligible concept itself. See Alice, 134 S. Ct. at 2355. That is, while
“novelty in implementation of the idea is a factor to be considered ... in the
second step of thq Alice analysis” (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (emphasis added)), “the addition of merely novel
or non-routine components to the claimed idea [does not] necessarily tum[]
an abstraction into something concrete” (id.). Here, Appellant’s arguments
fail to show the claim recitations, which merely apply the underlying
concept in the context of a social networking system, transform the claim
into something significantly more than the underlying patent-ineligible
concept.
For these reasons, we sustain the Examiner’s 35 U.S.C. § 101
rejection of claim 1, and claims 2—23, which Appellant does not argue
separately with persuasive specificity.
35 U.S.C. § 102(b)—Claims 18-20, 22, and23
35 U.S.C. § 103(a)—Claim 21
In rejecting claim 18 under 35 U.S.C. § 102(b), the Examiner finds
that Novikov’s use of negative feedback on topics or content to provide
more relevant advertisements discloses selecting an advertisement feature—
from advertisement features extracted from an advertisement—based on
actions performed by a user on additional objects that are indicative of a
negative sentiment for the features of the additional objects that match the
extracted advertisement features. Non-Final Act. 6 (citing Novikov H 51,
53); see also Ans. 23—24.
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Appellant contends the Examiner erred because Novikov merely
identifies “a content item that is related to another content item” rather
than “selecting an extracted feature of either the content item or other
content item to associate with a negative sentiment.” App. Br. 21—22; see
also Reply Br. 12—13. Appellant further argues Novikov’s selects a “related
object based on another user’s actions” rather than selecting “an
advertisement feature ... to associate with negative sentiment. . . ‘based on
the actions performed by the user on the additional objects that are
indicative of a negative sentiment....’” App. Br. 23; see also Reply Br. 13.
We find Appellant’s arguments unpersuasive. Novikov determines
that content items are related based on features such as content item topics,
subjects, classification, etc. Novikov 151. Novikov further enables a user
to indicate that an advertisement paired with a related news story was
uninteresting, thus providing feedback that selector 370 can use to provide
more relevant content items to the user, such as “content items on a different
subject, content items that are more closely related, content items that are
related in [a] different way, etc.).” Id. 1 53.
Contrary to Appellant’s contentions, Novikov does not merely
associate a “content item as a whole” with the user’s negative feedback.
App. Br. 23. Rather, Novikov associates features of the content (e.g., the
particular way in which an advertisement was related to a news story) with
the negative feedback, thus enabling selector 370 to avoid selecting content
that shares the features with which the negative feedback is associated (e.g.,
other advertisements related in the same way to the news story).
For these reasons, we agree with the Examiner that Novikov
discloses:
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selecting, by a computer, an advertisement feature from the one
or more advertisement features extracted from the
advertisement to associate with the negative sentiment, the
selection based on the actions performed by the user on the
additional objects that are indicative of a negative sentiment for
the features of the additional objects that match the one or more
advertisement features extracted from the advertisement,
as recited in claim 18.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 102(b) rejection
of claim 18, and claims 19, 20, 22, and 23, which Appellant does not argue
separately. Similarly, we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 21, which Appellant does not argue separately with
persuasive specificity. See App. Br. 33—34.
35 U.S.C. § 103(a)—Claims 1—6
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner finds that
Manolescu’s use of negative and positive reactions to sites and
advertisements in selecting advertisements to display or which
advertisement-enabled sites to advertise on—in combination with Amento’s
use of other user feedback in providing a recommendation to a current
viewer—renders obvious inferring that the first user has a negative
sentiment for the topic based on the second users previously performing one
or more actions on the first object that received the one or more actions by
the first user and the second users having user profiles indicating negative
sentiment for the topic associated with the first object. Non-Final Act. 10—
11 (citing, e.g., Manolescu 122; Amento 146); see also Ans. 24—25 (citing,
e.g., Amento 28, 31).
Appellant argues the Examiner erred because “Amento merely uses
social network data, such as information regarding what a user’s friends are
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watching, to make recommendations to the user about what to watch based
on the programs that the user’s friends are watching.” App. Br. 28.
Appellant contends that such recommendations are merely “an example of
positive sentiment rather than negative sentiment.” Id. Appellant also
argues that “Manolescu merely predicts a user’s sentiment for a topic of
posts based on the authors’ sentiment towards the posts.” Reply Br. 17.
Appellant fails to show error in the Examiner’s reliance on
Manolescu’s negative reactions (Manolescu 122)—rather than the positive
sentiments represented by Amento’s use of what a user’s friends are
watching (Amento 146) or Manolescu’s use of an author’s sentiment
(Manolescu 128)—to render obvious the use of the negative sentiment of
other users. Moreover, Appellant’s contention that “Amento at best
discloses that a multimedia program that has received a threshold level of
negative feedback may be shown inside a silhouette of a thumbs down”
(Reply Br. 19) is conclusory and fails to address the Examiner’s reliance on
Amento in combination with Manolescu (Non-Final Act. 9—11).
For these reasons, we agree with the Examiner that the combination of
Manolescu and Amento renders obvious:
inferring . . . that the first user has a negative sentiment for the
topic based on the second users previously performing one or
more actions on the first object that received the one or more
actions by the first user and the second users having user
profiles indicating negative sentiment for the topic associated
with the first object,
as recited in claim 1.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 1, and claims 2 and 4—6, which Appellant does not argue separately.
Similarly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 3,
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which Appellant does not argue separately with persuasive specificity. See
App. Br. 32—33.
35 U.S.C. § 103(a)—Claims 7-17
In rejecting claim 7 under 35 U.S.C. § 103(a), the Examiner finds that
Manolescu’s detection of topics covered by a post and inference of a
sentiment of the author regarding a topic in the post renders obvious
identifying a same topic associated with each of the objects acted upon by
the user and identifying a negative sentiment for the topic based on the
actions on the objects by the user that indicate the negative sentiment. Non-
Final Act. 13 (citing, e.g., Manolescu Tflf 24, 28, and 36); see also Ans. 25—
26 (citing Manolescu 122).
Appellant contends the Examiner erred because although “Manolescu
can identity topics of multiple objects . . . Manolescu does not identity a
common topic associated with the multiple objects.” App. Br. 29 (emphasis
added). Rather, Appellant argues, Manolescu merely identifies “one or more
topics associated with each of the objects.” Id. Appellant further argues
Manolescu “merely discloses that if a topic is more popular than other topics
but is also receiving more negative sentiment than other topics, ad [sic]
advertisement relating to the topic may not be selected.” Reply Br. 21
(citing Manolescu 122). Appellant contends this basis for excluding
advertisement “is not ‘identifying a same topic associated with each of the
objects acted upon by the user.’” Reply Br. 21; see also App. Br. 29.
Appellant’s arguments do not persuasively distinguish the claimed
identification of a same topic associated with each of the objects from
Manolescu’s identification of one or more topics associated with each of the
objects. As Appellant acknowledges, Manolescu’s teachings include
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identifying one topic associated with each of the objects. See App. Br. 29.
When only one topic associated with each of the objects is identified in
Manolescu, that topic is the same topic for all the objects. Moreover,
Manolescu’s teaches the use of negative reactions to sites or advertisements.
See Manolescu 122 (cited in Ans. 25—26). Use of any particular user’s
negative reactions to sites or advertisements having the same topic would
fall within the scope of the claimed invention. It would have been obvious
to an artisan of ordinary skill to have Manolescu’s process of assessing
negative reactions to sites and advertisements take into consideration a
particular user’s negative reactions to multiples sites or advertisements, each
relating to a common topic, because a particular user, with interest (positive
or negative) in a topic would be likely to react to multiple sites or
advertisements that pertain to that topic, and because Manolescu does not
limit its source of reactions such that only one of a particular user’s reactions
is taken into consideration. Therefore, we agree with the Examiner that the
combination of Manolescu and Amento teaches or suggests “identifying a
same topic associated with each of the objects acted upon by the user,” as
recited in claim 7.
Appellant further argues Manolescu merely identifies “one or more
topics associated with an object rather than identify[ing] ‘a negative
sentiment for the topic based on the actions on the objects by the user
that indicate the negative sentiment’” (App. Br. 30) and that Manolescu
“merely predicts a user’s sentiment for a topic of posts based on the
authors’ sentiment towards the posts rather than actions performed by the
user on the post” {id. at 31). However, as the Examiner correctly finds,
Manolescu’s teachings and suggestions include the use of negative reactions
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to sites or advertisements. See Manolescu 122 (cited in Ans. 25—26). Thus,
Manolescu does not merely identify post topics and the sentiments the
authors of the posts. Rather, Manolescu renders obvious use of a user’s
negative reaction to sites or advertisements to identify that the user has a
negative sentiment regarding a topic of the site or advertisements. See
Manolescu 122. Therefore, we agree with the Examiner that the
combination of Manolescu and Amento renders obvious “identifying, by a
computer, a negative sentiment for the topic based on the actions on the
objects by the user that indicate the negative sentiment,” as recited in claim
7.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of claim 7, and the Examiner’s 35 U.S.C. § 103(a) rejections of claims 8—10,
12, 13, and 15—17, which Appellants do not argue separately with persuasive
specificity. See App. Br. 32—33.
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DECISION
We reverse the Examiner’s decision rejecting claims 1—23 under 35
U.S.C. § 112, first paragraph.
We affirm the Examiner’s decision rejecting claims 1—23 under 35
U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 18—20, 22, and 23
under 35 U.S.C. § 102(b).
We affirm the Examiner’s decision rejecting claims 1—17 and 21
under 35 U.S.C. § 103(a).
Because we affirm at least one of the Examiner’s rejections with
respect to each claim, we affirm the Examiner’s decision rejecting claims 1—
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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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