Ex Parte Karelin et al

Patent Trial and Appeal Board

Jun 29, 2018

12121403 (P.T.A.B. Jun. 29, 2018)

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
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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).
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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.,
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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
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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
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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
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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.
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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
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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).
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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
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