Ex Parte Kendall et al

Patent Trial and Appeal Board

Apr 19, 2017

13447102 (P.T.A.B. Apr. 19, 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.
13/447,102 04/13/2012 Timothy A. Kendall 26295-20908 3898
87851 7590 04/21/2017
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center SITTNER, MATTHEW T
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
04/21/2017 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 TIMOTHY A. KENDALL, MATTHEW R. COHLER,
MARK E. ZUCKERBERG, YUN-FANG JUAN, ROBERT KANG-XING
JIN, JUSTIN M. ROSENSTEIN, ANDREW G. BOSWORTH,
YISHAN WONG, ADAM D’ANGELO, and
CHAMATH M. PALIHAPITIYA
Appeal 2015-008149
Application 13/447,1021
Technology Center 3600
Before ANTON W. FETTING, SHEILA F. McSHANE, and
MATTHEW S. MEYERS, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision to reject claims 1—28. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Facebook, Inc.
Appeal Brief filed May 5, 2015, hereafter “Appeal Br.,” 1.
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Application 13/447,102
BACKGROUND
The invention relates to social networking websites and using
connections amongst users to generate and communicate social
advertisements. Specification, hereafter “Spec.,” 12.2 Embodiments of the
invention may “present advertisements that communicate information about
actions taken by others in the member’s network” that “may inform a
member that a friend . . . has purchased a particular item made by an
advertiser, will attend an event sponsored by an advertiser, or has added a
connection to a profile for a business or other entity.” Id. | 6.
Representative method claim 1 is reproduced from pages 17 and 18 of
the Appeal Brief (Claims App.) as follows:
1. A computer-implemented method comprising:
logging, by a social networking computer system, information
related to actions performed by users of a social networking
system;
receiving, by the social networking computer system, an
advertisement request from an advertiser for providing a
sponsored story, the sponsored story comprising:
a message to a viewing user of the social networking
system that includes information related to an action
performed by one or more users with whom the viewing
user is connected in the social networking system,
wherein the action is selectable by the advertiser from a
plurality of actions provided to the advertiser by the
social networking computer system;
selecting, by the social networking computer system,
information about one or more actions performed by one or
2 Herein, we refer to version of the Specification as published on August 9,
2012, in US Publication No. 2012/0203847 Al, which is the same as the
originally-filed Specification, filed on April 13, 2012, except for some
paragraph numbering variations.
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more users with whom a viewing user is connected in the social
networking system to identify one of a plurality of candidate
information for a sponsored story;
selecting, as the one of a plurality of candidate information for a
sponsored story, information about a selected action of the
advertisement request that was determined by the social
networking computer system to have been performed by the
one or more users;
generating, by a computer processor of the social networking
computer system, the sponsored story for providing to the
viewing user;
generating, by the social networking computer system, a feed
that comprises:
the generated sponsored story; and
a plurality of news stories about one or more users of the
social networking system with whom the viewing user is
connected in the social networking system; and
providing, by the social networking computer system, the feed
for display to the viewing user.
In a Final Rejection, the Examiner rejects claims 1—28 under 35
U.S.C. § 101 as directed to non-statutory subject matter. Final Action,
hereafter “Final Act.,” 2—7, mailed November 21, 2014; Answer, hereafter
“Ans.,” 2—15, mailed August 26, 2015.
DISCUSSION
The Appellants argue the rejections under § 101 using independent
claims 1,15, and 23 as representative. See App. Br. 10-16. We select claim
1 as representative.
The Examiner finds that claims 1—28 are directed to non-statutory
subject matter that does not amount to significantly more than an abstract
idea because the claims are directed to communicating actions within a
social network for the purpose of advertising a product and/or for the
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purpose of selling advertising which is a fundamental economic practice
(advertising) and “employ[] methods of organizing human activities
(sending/receiving information, logging or recording information, selecting
information, generating an advertisement (sponsored story), [] to achieve
this outcome.” Final Act. 4. Additional claim elements are found to not be
significantly more than an abstract idea because the claims “are a mere
instruction to apply the abstract idea;” require no more than a generic
computer to perform generic computer functions that are well-understood,
routine and conventional, and there is no improvement to another technology
or to the functioning of the computer itself; and “no meaningful limitations
beyond generally linking the use of an abstract idea to a particular technical
environment.” Id. at 5. The Examiner refers to the Specification, which
states “[a]ny computer-based system that provides social networking
functionality can be used in accordance with the present invention,” and is
“not limited to any particular type of communication system, network,
protocol, format or application.” Id. (citing Spec. 1102).
The Appellants argue that the claims at issue are not directed to an
abstract idea because they are “more aptly described as directed to the
receipt, analysis, and processing of data generated with or received by a
social networking system, and not ‘communicating actions’ as alleged.”
App. Br. 7. The Appellants refer to the “U.S. Patent Office Examples of
Abstract Ideas,” and its Example 2 that describes an “e-commerce
outsourcing system” that is alleged to be analogous to the instant claims,
where Example 2 was found to patent eligible. Id. at 7—8.3 It is further
3 Example 2 articulates the decision in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014) (“DDR”). U.S. Patent Office Examples
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contended that the instant claims are similar to those of Example 2 because
“they both recite methods for storing various forms of data and data objects,
processing the data and data objects, and providing a product of the
processing to computer users (e.g., the feed of stories).” Reply Brief,
hereafter “Reply Br.,” 5, mailed September 15, 2015. The Appellants also
argue that the claims are directed to specific methods “tied to an online
social networking environment,” and, therefore, “overcome a problem
specifically arising in the realm of computer networks.” Id. The Appellants
further contend that “the pending claims are directed to a ‘business challenge
. . . that is particular to the Internet, ’ namely the management and
distribution of electronic advertising to users based on specific criteria
known only to a social networking system.” App. Br. 10. It is argued that
the invention addresses problems with providing effective online advertise,
that draws attention “by providing an online ad to a user that includes a
message about an action of the user’s social networking connection (e.g.,
your friend John likes Nike), making it more likely that the advertiser will
entice the user to read the ad.” Id.
The Appellants additionally contend that the claims are not drawn to
all applications of the alleged abstract idea, and therefore, do not preempt
“communicating actions” or “selling advertising,” such that others cannot
use those ideas. App. Br. 8—9. It is further argued that the claims have to be
considered as a whole, with all limitations considered, but the Examiner
instead dissects the claim limitations. Id. at 6—7. The Appellants further
of Abstract Ideas (January 2014), issued in conjunction with Interim
Eligibility Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg.
74,618 (Dec. 16, 2014), available at
https://www.uspto.gov/patents/law/exam/abstract_idea_examples.pdf.
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allege that the claims are not directed to an idea itself, but rather the
elements have a concrete and tangible form such as the “sponsored story”
and the “feed.” Reply Br. 2—3. The Appellants also allege that the claims
are not directed to “fundamental economic practices” or to “certain methods
of organizing human activity” because they are distinguishable from the
types of practices described in the USPTO’s Interim Guidance on Patent
Subject Matter Eligibility (July 2015). Reply Br. 3^4.
The Appellants further argue that, even if the Examiner’s findings
regarding an abstract idea are adopted, the claims represent significantly
more than an abstract idea. App. Br. 10-14. In support, the Appellants
compare the claims at issue with those in DDR, arguing that they “are
similar in that they both recite methods for storing various forms of data and
data objects, processing the data and data objects, and providing a product of
the processing to computer users (e.g., the feed of stories).” Id. at 11—12.
The Appellants further contend that there is no traditional analog for the
claimed invention, and, more specifically, “[tjhere is no traditional business
analog for the claimed ‘feed’ outside of interconnected computer networks,
let alone outside of social networking systems.” Id. at 12—13. The
Appellants argue that an example of these steps using a non-online
environment, such as advertising in a paper magazine, would be “a
nonsensical example” that is based on impermissible hindsight. Id. at 13.
Finally, the Appellants argue that the rejection under § 101 is
improper because the Examiner fails to provide factual support for the
allegation that providing social endorsements within a social network and
sending information is a method of organizing human activity and an
abstract idea. App. Br. 14—16.
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After considering the Appellants’ arguments and the evidence
presented in this Appeal for the § 101 rejection, we are not persuaded that
the Appellants identify reversible error. To provide context, 35U.S.C. § 101
provides that a new and useful “process, machine, manufacture, or
composition of matter” is eligible for patent protection. The Supreme Court
has made clear that the test for patent eligibility under Section 101 is not
amenable to bright-line categorical rules. See Bilski v. Kappos, 130 S. Ct.
3218, 3229-30 (2010). There are, however, three limited, judicially-created
exceptions to the broad categories of patent-eligible subject matter in § 101:
laws of nature; natural phenomena; and abstract ideas. See Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
(2012).
In Alice Corporation Party, Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) (“Alice’''), the Supreme Court reiterated the framework set forth
previously in Mayo, “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355 (citation omitted).
Under Alice, the first step of such analysis is to “determine whether the
claims at issue are directed to one of those patent-ineligible concepts.” Id.
(citation omitted). If determined that the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims “individually and ‘as an ordered combination”’ to determine
whether the additional elements “‘transform the nature of the claim’ into a
patent-eligible application.” Id. (citing Mayo, 132 S. Ct. at 1291, 1297). In
other words, the second step is to “search for an ‘inventive concept’—i.e., an
element or combination of elements that is ‘sufficient to ensure that the
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patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. (citingMayo, 132 S. Ct. at 1294).
With this context in mind, we evaluate the Examiner’s rejection of
representative claim 1.
Claim 1 requires logging information relating to actions performed by
users of a social networking system, receiving an advertising request from
an advertiser for providing a sponsored story, selecting some information to
identify candidate information for the sponsored story, generating the
sponsored story, and feeding it to the viewing user. See Claims App. 17—18.
We agree with the Examiner that the claim as a whole is directed to the
purpose of advertising a product and/or for the purpose of selling
advertising, which is the fundamental economic practice of advertising.
More specifically, we agree with the Examiner that “[sjocial endorsements
are a type of advertisement.”4 Ans. 4. All of the steps of the claim that the
Appellants allege are specific to the internet and the use of social media,
including promoting products by the use of a “sponsored story,” are, without
exception, directed to the overall purpose of advertising. As such, the
representative claim is directed to a fundamental business purpose, which is
distinguishable from claims of DDR. See DDR, 773 F.3d at 1257 (“the . . .
asserted claims do not recite a mathematical algorithm. Nor do they recite a
fundamental economic or longstanding commercial practice.”). As
discussed further below, we determine that, unlike DDR, the claim at issue
4 On this issue, the Specification explains the alleged advantage of social
advertisements: “[sjocial ads thus allow advertisers to enjoy the credibility
that consumers naturally give to their friends through word of mouth
advertising. Beyond simple targeting of ads that merely chase demand,
therefore, this approach is better able to create or generate demand . . . .”
Spec. 17.
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does not address a business issue that arises from and is specific only to the
Internet. See id.
We are also not persuaded by the Appellants’ allegation on
patentability based on the argument that the claims will not preempt other
types of advertising that do not employ the specific claimed steps. Although
it may be true that there are other methods of advertising, that issue is not
dispositive as to whether the claims are patent eligible. 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.”). We also
do not agree that the rejection under § 101 is improper because the Examiner
fails to provide factual support for the allegation that providing social
endorsements within a social network and sending information is a method
of organizing human activity and an abstract idea. Contrary to the
Appellants’ assertion, we find that the Examiner was not required to proffer
additional extrinsic evidence in support of the finding of an abstract idea.
See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
1314, 1325 (Fed. Cir. 2016).
Finally, as to the first step of the Alice analysis, we are not persuaded
by the Appellants’ argument that the claims are not directed to an idea itself,
but rather the elements have a concrete and tangible form. Our reviewing
court has found that if a method can be performed by human thought, these
processes remain unpatentable even when automated to reduce burden to the
user. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375
(Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even
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when performed by a computer, was precisely the holding of the Supreme
Court in Gottschalkv. Benson, [409 U.S. 63 (1972)].”).
As to the second step of the Alice analysis, we are not persuaded by
the Appellants’ arguments that the claims represent “significantly more”
than the abstract idea exception. On this issue, we agree that the Examiner’s
finding that the claim has no meaningful limitations beyond linking the use
of an abstract idea to a technical environment. See Final Act. 5. The
Examiner acknowledges that claim 1 is related to actions performed on a
social network, but finds that “the appealed claims are simply reciting steps
to solve the problem of communicating actions of one party to one or more
socially connected users.” Ans. 13. Further, the Examiner analogizes the
social endorsements objectives of the claims to known non-computer-based
social endorsements, such as celebrity endorsements. Id. at 14—15. Here,
we agree with the Examiner that advertising products by the use of social
endorsements was known, and contrary to the allegations of the Appellants,
the objectives of this type of non-internet advertising would be the same as
that of the claims— that is, to draw attention to the ad and entice the user to
read it. Considering the steps of the claims, the claims can be analogized to
pre-internet advertising practices. For instance, for a social network such as
a school alumni organization, actions logged could be the positive responses
of other connected alumni to, say, a print ad for an alumni trip, and that
information could then be used in an insert of a newsletter to other alumni,
with the “feed” to include information on the trip and identification of the
alumni in the organization who already booked, with the objective to attract
others to read the insert and entice them to consider signing up for the trip.
This is similar to the Appellants’ view of the invention as providing an ad to
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a user “that includes a message about an action of the user’s social
networking connection (e.g., your friend John likes Nike).” App. Br. 10.
The claims at issue are also distinguishable from those in DDR. In
DDR, the Federal Circuit found that the challenged patent was valid because
it “specif[ied] how interactions with the Internet are manipulated to yield a
desired result—a result that overrides the routine and conventional” aspects
of the technology. DDR, 773 F.3d at 1258—59. However, as the Federal
Circuit also stated: “after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible.” Id. at 1256 (citing Alice, 134 S. Ct. at 2358). The bare fact
that a computer exists in the physical rather than purely conceptual realm “is
beside the point.” Id. Here, we do not discern that these claims “stand
apart,” as those of DDR did, because they merely recite the performance of
some business practice known from the pre-Internet world, along with the
requirement to perform it on the Internet. See DDR, 773 F.3d at 1257. Nor
are the instant claims “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
Id.
We, therefore, sustain the Examiner’s rejection of representative claim
1 under § 101.
SUMMARY
The rejection of claims 1—28 under 35 U.S.C. § 101 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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