Ex Parte Karelin et alDownload PDFPatent Trial and Appeal BoardJun 29, 201812121403 (P.T.A.B. Jun. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/121,403 05/15/2008 Alex Karelin 30636 7590 07/02/2018 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 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. MTV-009 6812 EXAMINER MCCORMICK, GABRIELLE A ART UNIT PAPER NUMBER 3629 MAIL DATE DELIVERY MODE 07/02/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEX KARELIN and EV AN RIFKIN Appeal2016-005215 1 Application 12/121,403 2 Technology Center 3600 BeforeBRADLEYB. BAYAT, TARAL. HUTCHINGS, and ALYSSA A. FINAMORE, Administrative Patent Judges. HUTCHINGS, 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 13--42, 44, 45, 62, and 63. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed Nov. 25, 2015) andReplyBrief("ReplyBr.," filed Apr. 18, 2016), and the Examiner's Answer ("Ans.," mailed Mar. 17, 2016) and Final Office Action ("Final Act.," mailed June 29, 2015). 2 Appellants identify Social Project LLC, which is owned by Viacom International Inc., as the real party in interest. App. Br. 2. Appeal2016-005215 Application 12/121,403 CLAIMED INVENTION Claims 13, 45, and 63 are the independent claims on appeal. Claim 13, reproduced below, is illustrative of the claimed subject matter: 13. A method executed on a core server for providing a disaggregated social network, the method comprising: generating, by the core server, a plurality of core user member identifiers respectively corresponding to a plurality of user members; generating, by the core server, a plurality of community identifiers respectively corresponding to a plurality of social- networking communities linked to the core server, wherein each of the plurality of social-networking communities maintains separate account information for its user members that is inaccessible to other social-networking communities in the plurality of social-networking communities; storing, by the core server, a plurality of core profiles respectively corresponding to the plurality of core user member identifiers, wherein each of the plurality of core profiles includes community information, friend information and content information, wherein the community information includes one or more of the plurality of community identifiers corresponding to respective social-networking communities to which a user member of the core profile is registered, wherein the friend information includes one or more of the plurality of core user member identifiers, and wherein the content information includes respective metadata associated with each of a plurality of content items; retrieving, by the core server, a content item referenced by a core profile corresponding to a core user member identifier, wherein the content item is associated with a first social networking community of the plurality of social-networking communities referenced by the core profile; providing, by the core server, a webpage including the content item, wherein the webpage is associated with a second 2 Appeal2016-005215 Application 12/121,403 social-networking community of plurality of social-networking communities referenced by the core profile that is different than the first social-networking community. REJECTIONS Claims 13--42, 44, 45, 62, and 63 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Claims 13-16, 18, 20, 24, 25, 29, 31, 32, 34, 42, 44, 45, 62, and 63 are rejected under 35 U.S.C. § I03(a) as unpatentable over Hull (US 2005/0177385 Al, pub. Aug. 11, 2005) and Appelman (US 2005/0216300 Al, pub. Sept. 29, 2005). Claims 17, 19, and 21 are rejected under 35 U.S.C. § I03(a) as unpatentable over Hull, Appelman, and Bolnick (US 2002/0023230 Al, pub. Feb. 21, 2002). Claims 22 and 27 are rejected under 35 U.S.C. § I03(a) as unpatentable over Hull, Appelman, and MacNaughton (US 6,433,795 Bl, iss. Aug. 13, 2002). Claims 23 and 30 are rejected under 35 U.S.C. § I03(a) as unpatentable over Hull, Appelman, and Brown (US 2003/0177248 Al, pub. Sept. 18, 2003). Claim 26 is rejected under 35 U.S.C. § I03(a) as unpatentable over Hull, Appelman, and Joshi (US 2002/0091798 Al, pub. July 11, 2002). Claim 28 is rejected under 35 U.S.C. § I03(a) as unpatentable over Hull, Appelman, and Holbrook (US 2002/0188554 Al, pub. Dec. 12, 2002). Claims 33 and 35--41 are rejected under 35 U.S.C. § I03(a) as unpatentable over Hull, Appelman, and Tornabene (US 2002/0023132 Al, pub. Feb. 21, 2002). 3 Appeal2016-005215 Application 12/121,403 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 Bank Int'!, 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, 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 "'transform the nature of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79, 78). In rejecting the pending claims under§ 101, the Examiner analyzed the claims using the Mayo/Alice two-step framework. See Final Act. 2--4. Specifically, the Examiner determined that the claims are directed to "associating information from a first community with a webpage from a second community[,] which is a method of organizing human activity," i.e., 4 Appeal2016-005215 Application 12/121,403 an abstract idea. Id. at 2. Appellants argue that the claimed method instead is directed to "permitting communications between different computer organized social networks each of which prohibits such communications." App. Br. 6. The step-one analysis requires us to consider the claims "in their entirety to ascertain whether their character as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). We, therefore, look to "whether the focus of the claims is on [a] specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Here, the Specification provides that the claimed invention generally relates to online social-networking, and more particularly, to "creating a [computer-implemented] social-networking community and enabling the social-networking community to interoperate with other social-networking communities within a network of social networking communities." Spec. ,r 2. The Specification describes that in conventional, computer- implemented social-networking systems, user members "have online social- networking interactions with other user members of the social-networking community, but not with user members of other social-networking communities." Id. ,r 5. "To have social-networking interactions with user members of another social-networking community, the user member must join the other social-networking community and communicate from within the other social-networking community." Id. For example, a "MySpace® social-networking community enables user members to share content items 5 Appeal2016-005215 Application 12/121,403 within the MySpace® social-networking community only." Id. ,r 6. "If a MySpace® user member wishes to share a content item with a Friendster® user member, the MySpace® user member must join the Friendster® social- networking community." Id. Independent claim 13, for example, recites a "method executed on a core server for providing a disaggregated social network," comprising the following steps, each implemented by the core server: generating a plurality of core user member identifiers; generating a plurality of community identifers corresponding to a plurality of social-networking communities linked to the core server, wherein each of the plurality of social networking communities maintains separate account information for its user members that is inaccessible to the other social-networking communities; storing the plurality of core profiles corresponding to a plurality of core member identifiers; retrieving a content item referenced by a core profile corresponding to a core user member identifier, wherein the content item is associated with a first social-networking community; and providing a webpage associated with the second social-networking community with the content item. In this way, claim 13 enables a content item associated with a first social-networking community to be provided on a webpage associated with a second social-networking community, even though these social-networking communities each maintains separate account information for its users that is inaccessible to the other social-networking community. Claims 45 and 65 recite similar language. Considering the claim language in light of the Specification, we determine that the claims focus on providing a social network. Social networks enable a member to develop relationships with other members by interacting and sharing information. As such, we are 6 Appeal2016-005215 Application 12/121,403 not persuaded that the Examiner erred in determining that the claims are directed to an abstract idea. See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (holding claims for gathering, analyzing, and displaying information to be directed to an abstract idea). Turning to step two, the Examiner determined that "[t]he limitations of generating identifiers for members and communities, storing member profiles, retrieving content and displaying content are well-known, routine and conventional practices that require no more than a generic computer to perform generic computer functions." Final Act. 2-3. Specifically, retrieving a content item associated with a first community and providing it on a webpage of a second community "is a method of collecting information from a first site and displaying it on a second site is merely a re-organization of the information." Id. at 3. The Examiner further determined that the computer merely links the system to a particular technological environment. Id. The Examiner concluded that viewed as a whole the claims do not purport to improve the functioning of the computer itself, or to improve any other technology or technical field. Id. We agree with the Examiner that, considered individually, the limitations appear to perform generic functionalities which are ,vell-understood, routine and conventional ( e.g., generating identifiers, storing information, retrieving information, displaying information). Id. However, the Examiner does not sufficiently establish that the "ordered combination" of the recited elements also fails to "'transform the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355. "[ A ]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces," even if these 7 Appeal2016-005215 Application 12/121,403 pieces constitute generic computer-related components. BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). In the instant claims the arrangement is a core server linked to a plurality of social-networking communities that each maintain separate account information for its user members that is inaccessible to other social- networking communities. As discussed above, Appellants explain in the Specification that the claimed architecture (i.e., the ordered combination and arrangement of the recited elements) provides a particular technical advantage by solving a problem particular to computer-implemented social networks. See Spec. ,r,r 6 ( describing a technical problem in conventional computer-implemented social-networking systems wherein a member of a first social-networking group must join a second social-networking community to share content with members of the second social networking community), 100. Here, the Specification explains that the core server enables user members and content items of a plurality of social-networking communities to be integrated into a network of social-networking communities. Id. ,r 80. The Examiner does not persuasively challenge the Appellants' position on this matter. See App. Br. 8 (arguing that the claimed solution "provide[s] a detailed solution to a problem that did not exist before such computer based social networks came into being"). Accordingly, the Examiner has not sufficiently established, on the record before us, that independent claim 13 does not pass muster under step two of the Alice test. On the record before us, we cannot sustain the Examiner's rejection under 35 U.S.C. § 101 of claims 13--42, 44, 45, 62, and 63. 8 Appeal2016-005215 Application 12/121,403 Obviousness Independent Claims 13, 45, and 63, and Dependent Claims 14-16, 18, 20, 24, 25, 29, 31, 32, 34, 42, 44, and 62 We are persuaded by Appellants' argument that the Examiner erred in rejecting independent claims 13, 45, and 63 under 35 U.S.C. § 103(a) because Appelman does not teach that "generating ... a plurality of community identifiers respectively corresponding to a plurality of social- networking communities linked to the core server, wherin each of the plurality of social-networking communities maintains separate account information for its user members that is inaccessible to the other social- netowrking communities," as recited in claim 13, and similarly recited in claims 45 and 63. App. Br. 11-12; see also Reply Br. 4--6. The Examiner finds that Hull teaches generating a plurality of community identifiers. Final Act. 4 ( citing Hull ,r 64 ). The Examiner acknowledges that Hull does not disclose that the plurality of communities maintain separate account information for its user members that is inaccessible to other communities in the plurality of communities. Id. at 5. And the Examiner relies on Appelman for maintaining account information separately and inaccessible to other communities. Final Act. 5 ( citing Appelman ,r,r 5, 40, 58-68); see also Ans. 6 (citing Appelman ,r 40, Fig. 3D). The Examiner reasons that it would have been obvious to modify Hull to include "sharing content between communities where the communities maintain separate account information for its members that is inaccessible to other communities in the plurality of communities, as disclosed by Appelman." Final Act. 6. Yet, Appelman relates to sharing social network information across online service providers. Appelman ,r 4. For instance, a first online server provider M, which maintains a membership separately from a second online 9 Appeal2016-005215 Application 12/121,403 service provider N, nevertheless "use[s] the social network maintained by the second online service provider N to tailor content and/or services based on such social network information." Id. ,r,r 4, 27; see also id. ,r 11 ("[T]he social network information received from the first online service provider network may include information regarding members of a second social network."). Put differently, account information for user members of one social networking community is accessible to another social networking community, contrary to the claim language recited in claims 13, 45, and 63. In determining that Appelman teaches this aspect of the claim limitation "generating, by the core server," as recited in claim 13, and similarly recited in claims 45 and 63, the Examiner takes the position that the term "inaccessible" would be understood in light of Appellants' Specification as "being met by the disclosure of differing communities." Final Act. 13 (citing Spec. ,r 6). In other words, the Examiner interprets the phrase "maintaining separate account information ... that is inaccessible" as "maintaining separate account information." Yet, we find nothing in the Specification, at cited paragraph 6 or elsewhere, that defines the term inaccessible to have a meaning contrary to its ordinary meaning, 3 such that sharing account information, as described by Appelman, would meet the claim language. 3 Random House Unabridged Dictionary, Random House, Inc. (2018), available at http://www.dictionary.com/browse/inaccessible ( defining "inaccessible" as "not accessible; unapproachable") (last visited June 25, 2018). 10 Appeal2016-005215 Application 12/121,403 In view of the foregoing, we do not sustain the Examiner's rejection of independent claims 13, 45, and 63, and dependent claims 14--16, 18, 20, 24, 25, 29, 31, 32, 34, 42, 44, and 62 under 35 U.S.C. § 103(a). Dependent Claims 17, 19, 21-23, 26--28, 30, 33, and 35-41 Claims 17, 19, 21-23, 26-28, 30, 33, and 35--41 each depend from independent claim 13. The rejections of these dependent claims rely on the deficiency in the Examiner's rejection of independent claim 13. Therefore, we do not sustain the Examiner's rejections of claims 17, 19, 21-23, 26-28, 30, 33, and 35--41 under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to independent claim 13. DECISION The Examiner's rejection of claims 13--42, 44, 45, 62, and 63 under 35 U.S.C. § 101 is reversed. The Examiner's rejections of claims 13--42, 44, 45, 62, and 63 under 35 U.S.C. § 103(a) are reversed. REVERSED 11 Copy with citationCopy as parenthetical citation