Ex Parte Kanter et al

Patent Trial and Appeal Board

Jul 9, 2018

13307500 (P.T.A.B. Jul. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/307,500 11/30/2011
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
07/11/2018
FIRST NAMED INVENTOR
Jeffrey Andrew Kanter
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.
26295-18778 2053
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
07/11/2018 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):
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 JEFFREY ANDREW KANTER, ERIC FALLER,
PETER XIU-DENG, NICHOLAS HAGE SCHROCK, and
OLAOLUW A OKELOLA
Appeal2016-007040 1
Application 13/3 07 ,5002
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEDLOCK, 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, 3-7, 9-12, 14--18, 20, and 22. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
October 29, 2015) and Reply Brief ("Reply Br.," filed July 6, 2016), and the
Examiner's Answer ("Ans.," mailed May 6, 2016) and Final Office Action
("Final Act.," mailed January 8, 2015).
2 Appellants identify Facebook, Inc. as the real party in interest. App. Br. 1.
Appeal2016-007040
Application 13/307,500
CLAIMED INVENTION
Appellants' claimed invention "relate[s] generally to social
networking systems, and in particular to changing the identity of a user in a
social networking system" (Spec. ,r 1 ).
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A computer-implemented method comprising:
[(a)] initiating a login session for a user with a social
networking system, the user comprising a representation in the
social networking system of a person, the social networking
system storing a social network that includes a plurality of users
and a plurality of non-user pages, each of the plurality of non-
user pages administered by at least one of the plurality of users;
[(b)] sending to a user device for display to the user,
social information personalized for the user that comprises a
description of one or more social interactions performed by a first
set of entities that are connected to the user in the social
networking system;
[ ( c)] responsive to receiving a request from the user via
the login session to change identities within the social
networking system from the user to a non-user page administered
by the user, changing, by a processor of the social networking
system while staying within the login session, an identity within
the social networking system from the user to the non-user page,
the non-user page comprising a representation in the social
networking system of an entity other than a person;
[ ( d)] identifying based on the request to change identities
from the user to the non-user page, social information
personalized for the non-user page that comprises a description
of one or more social interactions performed by a second set of
entities with content posted by one or more administrators of the
non-user page to the social networking system as representatives
of the entity, the second set of entities connected to the non-user
2
Appeal2016-007040
Application 13/307,500
page in the social networking system, the second set of entities
different than the first set of entities;
[(e)] sending, to the user device for display to the user,
the identified social information personalized for the non-user
page;
[(f)] receiving from the user a request to perform a social
interaction within the social networking system; and
[ (g)] performing the social interaction within the social
networking system with an indication that the social interaction
was performed by the non-user page.
REJECTIONS
Claims 1, 3-7, 9-12, 14--18, 20, and 22 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
Claims 1, 3, 6, 7, 12, 14, 17, 18, and 22 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over the public activities of Hootsuite, i.e.,
Kimberly Yow, "Facebook Fan Pages Now Integrated With Hootsuite!"
available at http ://www.howtousefacebookforbusiness.com/2009/ 12/
hootsuite-adds-facebook-fan-page-integration/ (last visited Feb. 6, 2013)
("Yow"), "SwitchTip: Manage Multiple Facebook Pages with Hootsuite,"
available at http://web.archive.org/web/20100925040337 /
http ://freelanceswitch.com/freebies/ add-your-facebook-page-to-hootsuite
(last visited Feb. 6, 2013) ("SwitchTip"), and Hull et al.
(US 2011/0289574 Al, pub. Nov. 24, 2011) ("Hull").
Claims 4 and 15 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Yow, SwitchTip, Hull, and Leonardo Von Navorski, "How to Change a
Business Profile on Facebook," available at http://web.archive.org/web/
20101223155209/http://www.ehow.com/how 7539600_change-business-
profile-on-facebook (last visited Jan. 31, 2013) ("Navorski").
3
Appeal2016-007040
Application 13/307,500
Claims 5, 9--11, 16, and 20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Yow, Switch Tip, Hull, and Jacob Clifton, "How to Make
a Fan Page on Facebook," available at https://computer.howstuffworks.com/
internet/tips /how-to-make-fan-page-on-facebook.htm (last visited Jan. 31,
2013) ("Clifton").
ANALYSIS
Non-Statutory 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. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 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
4
Appeal2016-007040
Application 13/307,500
"'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."
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)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that that claims are directed to "changing identities in
a social networking system," which the Examiner determined is "a
fundamental manipulation of data and is simply changing the way data is
[sic] displayed to a user" and, therefore, an abstract idea (Final Act. 2 ). The
Examiner also determined that the claims do not recite limitations that are
"significantly more" than the abstract idea because the claims do not recite
"an improvement to another technology or technical field, an improvement
to the functioning of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment" (id.). Instead, according to the Examiner, "[ t ]he limitations
are merely instructions to implement the abstract idea on a computer and
require no more than a generic computer to perform generic computer
functions that are well-understood, routine and conventional activities
previously known to the industry" (id.).
5
Appeal2016-007040
Application 13/307,500
Citing the USPTO's July 2015 Update: Subject Matter Eligibility,
Appellants first charge that the§ 101 rejection cannot be sustained because
the Examiner has failed to meet "the examiner's burden under 35 U.S.C.
§ 132 to provide notice and reasons for the rejection" (App. Br. 11 ). In fact,
the Examiner provided a reasoned analysis that identifies the judicial
exception recited in the claims, i.e., an abstract idea, and explains why it is
considered a judicial exception, and also explains why the additional
elements in the claim do not amount to significantly more than the judicial
exception (Final Act. 2). In doing so, we find that the Examiner set forth a
proper rejection under§ 101 such that the burden shifted to Appellants to
demonstrate that the claims are patent-eligible. Appellants cannot
reasonably maintain that the bases for the rejection were not understood.
Indeed, Appellants' understanding is clearly manifested by their response, as
set forth in the briefs.
We also are not persuaded of Examiner error to the extent that
Appellants argue that the claims are patent-eligible because, when viewed as
a whole, the claims "do not tie up all possible ways of changing identities"
(App. Br. 12). There is no dispute that the Supreme Court has described
"the concern that drives [ the exclusion of abstract ideas from patent eligible
subject matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354. But
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ fJor this reason,
questions on preemption are inherent in and resolved by the § 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
6
Appeal2016-007040
Application 13/307,500
2015) (citing Alice, 134 S. Ct. at 2354). "[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility." Id.
Addressing step two of the Mayol Alice framework, Appellants argue
that even if the claims are directed to an abstract idea, the claims are,
nonetheless, patent-eligible because the claims recite additional elements
that amount to significantly more than the judicial exception (App. Br. 12).
Appellants note that claim 1, for example, requires initiating a login session
for a user, sending social information personalized for the user, staying
within the login session during changing of identities to the non-user page,
identifying social information personalized for the non-user page, and
performing a social interaction as the non-user page (id. at 13). And
Appellants argue that "[ e Jach of these steps alone and when taken as a whole
provide[s] more than the proposed abstract idea of 'changing identifies in a
social networking system"' (id.). Yet, we are not persuaded that these steps
are additional limitations to be considered under step two of the Mayo/Alice
test, as opposed to being merely part of the abstract idea itself. See Mayo,
566 U.S. at 72-73 (requiring that "a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an 'inventive concept,' sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself' ( emphasis added) (internal citation omitted)).
We also cannot agree with Appellants that the present claims are
analogous to the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). The claims at issue in DDR Holdings were
directed to retaining website visitors, and in particular to a system that
7
Appeal2016-007040
Application 13/307,500
modified the conventional web browsing experience by directing a user of a
host website who clicks an advertisement to a "store within a store" on the
host website, rather than to the advertiser's third-party website. DDR
Holdings, 773 F.3d at 1257-58. The court determined "the claims address a
business challenge (retaining website visitors) [that] is a challenge particular
to the Internet." Id. at 1257. The court also determined that the invention
was "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks," and that the
claimed invention did not simply use computers to serve a conventional
business purpose. Id. Rather, there was a change to the routine,
conventional functioning of Internet hyperlink protocol. Id.
Appellants argue that the present claims, like those in DDR Holdings,
overcome a problem (i.e., allowing a user to change identities within a social
networking system while staying within the same login session) only
encountered with computer technology and online transactions (App. Br.
13-14; see also Reply Br. 3--4). Yet, we can find no parallel between the
present claims and those in DDR Holdings.
Changing computing sessions by logging out and then logging back
into a computer system may well be inconvenient. But we are not persuaded
that this is a technical problem arising in the realm of computer networks in
the same manner as the claims in DDR Holdings.
The court, moreover, cautioned in DDR Holdings that "not all claims
purporting to address Internet-centric challenges are eligible for patent."
DDR Holdings, 773 F.3d at 1258. Thus, in Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed. Cir. 2014), although the patentee argued that its claims
were "directed to a specific method of advertising and content distribution
8
Appeal2016-007040
Application 13/307,500
that was previously unknown and never employed on the Internet before"
(772 F.3d at 714), the court found that this alone could not render its claims
patent-eligible where the claims merely recited the abstract idea of "offering
media content in exchange for viewing an advertisement," along with
"routine additional steps such as updating an activity log, requiring a request
from the consumer to view the ad, restrictions on public access, and use of
the Internet." Id. at 715-16.
Similarly here, we find that the invocation of the Internet is not
sufficient to transform Appellants' otherwise patent-ineligible abstract idea
into patent-eligible subject matter. We find, as did the Examiner, that the
claims are directed to the abstract idea of "changing identities," and involve
no more than changing the data that are displayed to a user. We are not
persuaded that displaying particular data to a user depending on the identity
of that user is a new problem or that it is unique to the Internet. Narrowing
the abstract idea of "changing identities" to implementation in a social
networking system, moreover, merely limits the use of the abstract idea to a
particular technological environment, which the Court made clear in Alice is
insufficient to transform an otherwise patent-ineligible abstract idea into a
patent-eligible subject matter. See Alice Corp., 134 S. Ct. at 2358.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1, 3-7, 9-12, 14--18, 20, and 22 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner's rejection. 3
3 We need not, and do not reach the Examiner's new ground of rejection
under 35 U.S.C. § 101, entered in the Examiner's Answer (see Ans. 3-5).
9
Appeal2016-007040
Application 13/307,500
Obviousness
Independent Claims 1 and 12 and Dependent Claims 3, 6, 7, 14, 17, 18, and
22
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 1 and 12 under 35 U.S.C. § 103(a) because
Hull, on which the Examiner relies, does not disclose or suggest
identifying based on the request to change identities from the
user to the non-user page, social information personalized for the
non-user page that comprises a description of one or more social
interactions performed by a second set of entities with content
posted by one or more administrators of the non-user page
and "sending, to the user device for display to the user, the identified social
information," as recited in claim 1, and similarly recited in claim 12 (App.
Br. 5-8).
Hull is directed to a method and system for seeding contacts for a
user's online social network (Hull ,r 2), and discloses that, in one
embodiment of the social networking system, several users, e.g., persons
within one household or within one family, can be encompassed under a
single master ID; each member of the group also can have an alias under the
single master ID, which allows the group to utilize a single master ID while
retaining individuality between the individual users (id. ,r 86). Hull
discloses that within the social network, an area is provided for users to
receive and send messages to other users in their network (id. ,r 122) and
also discloses the concept of personas, i.e., that viewing of the social
network user's personal information can be customized based on the user's
relationship with the prospective viewer (id. ,r,r 75, 84, 135--45). However,
we agree with Appellants that there is nothing in the cited portion of Hull
that discloses or suggests enabling a user to change between aliases and
10
Appeal2016-007040
Application 13/307,500
more specifically that, based on a request to change identities from a user to
a non-user page, social information personalized for the non-user page is
identified and sent for display to the user, as called for in claims 1 and 12
(App. Br. 7).
Responding to Appellants' argument in the Answer, the Examiner
states that the Yow reference is relied on to teach the changing of identities
from a specific user to a non-user page (Ans. 5), and explains that the argued
limitations have been broadly interpreted as "the custom tailoring of the
social networking activities based on a selected persona or alias (the
changing of identities as taught by Yow), as described by Hull" (id. at 5---6
(citing Hull ,I 22)). Yet, as Appellants observe, in paragraph 22, Hull merely
discloses a social networking area where a user can receive and send
messages; there is no disclosure or suggestion in that paragraph that the
messages displayed to the user are tailored according to a selected persona
or alias (Reply Br. 6).
We note that Hull discloses the concept of personas in paragraph 7 5.
But, that disclosure concerns a user's ability to limit or customize the
viewing of his or her own personal information by other users, e.g., the user
can set up one view for his/her personal contacts and a different view for
his/her business associates (Hull ,r 7 5). It does not concern what information
is displayed to the user based on the user changing identities, as called for in
the claims.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1 and 12 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner's rejection of dependent
claims 3, 6, 7, 14, 17, 18, and 22.
11
Appeal2016-007040
Application 13/307,500
Dependent Claims 4, 5, 9--11, 15, 16, and 20
Claims 4, 5, and 9--11 and claims 15, 16, and 20 depend, directly or
indirectly, from claims 1 and 12, respectively. The rejections of these
dependent claims do not cure the deficiency in the rejection of independent
claims 1 and 12. Therefore, we do not sustain the Examiner's rejections of
claims 4, 5, 9-11, 15, 16, and 20 under 35 U.S.C. § 103(a) for the same
reasons set forth above with respect to the independent claims.
DECISION
The Examiner's rejection of claims 1, 3-7, 9-12, 14--18, 20, and 22
under 35 U.S.C. § 101 is affirmed.
The Examiner's rejections of claims 1, 3-7, 9--12, 14--18, 20, and 22
under 35 U.S.C. § 103(a) are 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
12