Ex Parte Kendall et al

Patent Trial and Appeal Board

Aug 23, 2017

13447102 (P.T.A.B. Aug. 23, 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 08/25/2017
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
08/25/2017 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 13/447,102
Technology Center 3600
Before ANTON W. FETTING, SHEILA F. McSHANE, and
MATTHEW S. METERS, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The Appellants request rehearing of our Decision (hereinafter “Dec.”),
entered April 21, 2017, in which we affirmed the Examiner’s rejection of claims 1—
28 under 35 U.S.C. § 101 (Request for Rehearing, filed June 18, 2017, hereinafter
“Req. Reh’g”).
Requests for Rehearing are limited to matters misapprehended or overlooked
by the Board in rendering the original decision, to responses to a new ground of
rejection designated pursuant to § 41.50(b), or presentations of new arguments
based upon recent decisions of the Federal Circuit. 37 C.F.R. § 41.52.
Appeal 2015-008149
Application 13/447,102
ISSUES ON REHEARING
The Appellants argue that in our Decision we failed to consider the issues in
this case in light of recent decisions from the Federal Circuit, namely, Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (“Enfish”), McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (“McRO”),
and BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016) (“BASCOM”). Req. Reh’g 2. The Appellants request that we perform a
review under the more recent case law and reverse our decision. Id.
DISCUSSION
In their Request, the Appellants argue that in Enfish, the Federal Circuit
found that the claims at issue were not directed to “general-purpose computer
components [that] are added post-hoc to a fundamental economic practice or
mathematical equation,” but rather are “directed to a specific implementation of a
solution to a problem in the software arts.” Id. at 2—3 (citing Enfish, 837 F.3d at
1399). The Appellants assert that, as in Enfish, the claims at issue are more than
merely adding general-purpose components to the economic practice of advertising
or to a method of organizing human activity because, for instance,
claim 1 very specifically defines a step-by-step method starting with
logging information related to user actions and receiving an ad request
and the details of the request, all the way through selecting
information related to a selected action performed by users, and
generating a sponsored story that includes the selected information.
Req. Reh’g at 3^4.
The Appellants contend that we did not consider the steps in “the overall
context of providing organic stories in a social networking context. . . [t]his is not
a mere adding of general-purpose computer components post-hoc to a claim to the
fundamental economic practice of advertising,” and thus, not directed to an
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abstract idea. Req. Reh’g 8. It is also alleged that the claims include “another
concept unique at the time in this context of generating a feed that includes not
only the sponsored story but also other new stories about connections of the
viewing user” that is presented “in a more natural way.” Id. at 4.
The Appellants additionally argue that in Enfish the Federal Circuit found
that the claims at issue were an improvement of existing technology based on the
specification’s teachings where the invention achieved benefits that the existing
technology lacked. Req. Reh’g 4 (citingEnfish, 822 F.3d at 1336). The
Appellants assert that “the claimed invention achieves benefits that [] existing
attempts do not have by allowing advertisers to utilize connections among
members of a social networking website to sponsor posts by those users and thus
provide a more natural way of introducing users to brands.” Id. at 4—5 (citing
Spec. 1 5).
Turning to McRO, the Appellants argue that the independent claims at issue
“include specific limitations that prevent preemption of all techniques for
organizing human activity or providing social endorsements,” similar to McRO’s
claims, also having non-preemptive limitations. Req. Reh’g 5 (citing McRO, 837
F.3d at 1315). The Appellants allege that, although the Board found that
preemption is not dispositive as to a finding of patent eligibility, the lack of
preemption “strongly suggests” that the claims are patent eligible.1 Id. at 6. The
Appellants also contend that, similar to McRO, “the claimed method does not
merely automate an existing process that has historically been performed by
humans using the steps humans would normally perform in that process, and then
1 Although the Request states that “Though the Board states that pre-emption is
dispositive as to a finding of patent eligibility . .,” it appears that this statement is
an inadvertent error, and the statement is assumed to be that “pre-emption is not
dispositive.” See Req. Reh’g 6.
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add a computer to that process,” and that “the claim are steps that only a computer
would perform in that particular way and in that particular ordering.” Id. at 8—9.
As an example, Appellants argue, “a human providing a celebrity endorsement
would not log actions taken by connections over a period of time, select
information related to a selected action performed by online connections, generate
a sponsored story that includes the selected information, and then generate a feed
that includes the sponsored story and other new (organic) stories.” Id. at 9. The
Appellants similarly allege that, in addressing whether the claims are “significantly
more,” our assessment of either the celebrity endorsement or an insert in a school
alumni organization newsletter did not consider the details of the claims. Id. at
9-10. In the case of the celebrity endorsement, it is argued that there would be no
logged set of actions taken by celebrities, with stories created. Id. at 10. For the
school newsletter insert, the Appellants contend that the claims provide for a feed
of a sponsored story without the need of a human newsletter drafter, and there is no
evidence of such a drafter logging information. Id. Additionally, it is alleged that
under the claims, there are “different sponsored stories and different feeds for
different viewing users because different viewing users can have different
connections who have performed different actions,” which differentiate the claims
from those performed by humans. Id. at 10—11.
The Appellants additionally contend that BASCOM is instructive because the
particular arrangement of the specific limitations concerning filtering content on
the Internet was deemed “something more” under the second step of Alice. Req.
Reh’g 6—7. It is alleged that, similar to BASCOM, “the claim here is not to a high
level concept, but to a specific technique for implementing a concept.” Id. at 8.
We find that, in light of more recent case law and the Appellants’ arguments
on their application, there was no misapprehension or issues overlooked in the
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Decision. The Appellants argue that the claims represent more than adding
computer components to social endorsements, however, all the method steps are
directed to generating feed for the sponsored story— which is for the purpose of
advertising a product and/or selling advertising, which are fundamental, long­
standing, and well-known economic practices. The issues that the Appellants
argue with respect to similarities to McRo and BASCOM are that the instant claims
are specific implementations in the software arts, and specific techniques for that
implementation. Underlying the argument is the allegation that specific steps of
the claims are steps that a computer would perform in a certain order and this
differentiates them from the steps humans would normally perform, with the
Appellants focusing on the “logging” information and “generating” the “sponsored
story” steps. Examining the elements of the claims, the Specification broadly
describes communications of the invention in the context of a social network as
follows
Persons skilled in the relevant art can appreciate that many
modifications and variations are possible in light of the above
disclosure. For example, although the foregoing embodiments have
been described in the context of a social network website, it will
apparent to one of ordinary skill in the art that the invention may be
used with any electronic social network service, even if it is not
provided through a website. Any computer-based system that
provides social networking functionality can be used in accordance
with the present invention even if it relies, for example, on e-mail,
instant messaging, or other form of electronic communications, and
any other technique for communicating between users. The invention
is thus not limited to any particular type of communication system,
network, protocol, format or application.
Specification (“Spec.”) 1102.2
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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The Appellants do not allege that the communications techniques of the
social network, that extend to e-mail and “any other technique for communicating
between users,” are inventive in and of themselves. The Specification states that
the invention is generically related to “social networking websites and other
websites in which users can form connections with each other,” and refers to
“[sjocial networks, or social utilities that track and enable connections between
members (including people, businesses, and other entities).” Spec. H 2, 3. As
such, a “social network” serves to track and enable connections between users.
Thus, the school alumni organization analogized in the Decision was fairly viewed
as a social network that would serve to facilitate communications, as well as track
and enable connections amongst its alumni users. See Dec. 10—11.
We do not agree with the Appellants’ argument that the claimed method
does not automate an existing process that has historically been performed by
humans, and is a computer-specific method only. More specifically, the
Appellants’ differentiation argument that feeding a sponsored story without the
need of a human newsletter drafter is not persuasive. Claim 1 recites the selection
of data related to user actions that is used to generate a “sponsored story,” for the
feed to viewing users. “Sponsored stories” include, [as argued by Appellants],
include messages such as “your friend John likes Nike,” which is a simple
notification message. See Dec. 5. Creating notice-type advertisements is not
unique to the internet or computer technology, but rather is used, more generally,
in targeted marketing and advertising. As discussed in the Decision, we view this
type of “story” as similar to an insert in an alumni newsletter that lists alumni who
have acted to sign up for a trip (i.e., positive responses of other connected alumni)
that is being advertised. Id. at 10—11. Similarly, different users (recipients) can be
sent newsletters with inserts specific to signed-up individuals having varying
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connections, i.e., those who were in the same graduating class or who had been on
previous trips with the respective users.
Considering the other steps of the claims in toto, none perform anything
beyond well understood, routine, and conventional activities. There is no showing
or rationale provided that the use of a computer to generate a “story,” that is,
simply reporting an action to another, would be beyond routine use of a computer
as a tool to automate regular activity and “relying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015) (citing Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2359
(2014)). As to another alleged differentiation step that the Appellants argue, that
is, that under the claims information related to user’s actions is logged, there is no
rationale provided as to why logging of actions consisting of recording actions (for
instance, noting on paper that an individual has signed up for a trip, for instance),
would not be routine, short of the logging being done automatically by computer.
These steps add nothing that “amounts to significantly more than a patent upon the
[abstract idea] itself.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. at 2355;
see Synopsys, Inc. v. Mentor Graphics Corporation, 839 F.3d 1138, 1152 (2016).
Moreover, merely combining abstract ideas does not render the combination any
less abstract. Cf. Shortridge v. Found. Constr. Payroll Serv., LLC, No. 14-CV-
04850-JCS, 2015 WL 1739256 (N.D. Cal. Apr. 14, 2015), affd, No. 2015-1898,
2016 WL 3742816 (Fed. Cir. July 13, 2016).
Therefore, taking the claim elements separately—logging information
relating to actions performed by social networking system users of, receiving an
advertising request from an advertiser, selecting some information to identify
candidate information, generating the sponsored story, and feeding it to the
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viewing user—the computer functions performed in all the steps of the process are
conventional. And when considered as a combined, ordered series of steps, the
combination adds nothing that is not already present when the steps are considered
separately. Thus, the claims at issue lack “an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself,”’ {Alice, 134 S. Ct. at 2355), or
represent “a result that overrides the routine and conventional” aspects of the
technology (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258—59
(Fed. Cir. 2014)). Rather the claims “simply instruct the practitioners to
implement the abstract idea ... on a generic computer.” Alice, 134 S. Ct. at 2359.
Appellants overstate the alleged similarities of the claims at issue to Enfish.
The claims at issue in Enfish, and the thrust of its analysis, were directed to
specific improvements in the way that computers operate, which is not at issue
here.3 See Enfish, 822 F.3d at 1336. Nor do the claims solve a problem unique to
the Internet. See DDR, 773 F.3d at 1257.
As such, considering all the claimed steps, we find no misapprehension or
oversight in our Decision.
CONCLUSION
In view of the foregoing, we are not persuaded of reversible error in the
Examiner’s rejection, or that we misapprehended or overlooked any points of law
3 “[T]he key question is ‘whether the focus of the claims is on the 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.’” Visual
Memory LLC v. NVIDIA Corp., No. 16-2254, 2017 WL 3481288, at *3 (Fed. Cir.
August 15, 2017) (quoting Enfish, 822 F.3d at 1335—36).
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or fact in rendering our decision. We therefore deny the Appellants’ request to
modify our Decision and the Examiner’s rejection remains affirmed.
DECISION
Although we have reconsidered certain aspects of our original Decision in
light of the Appellants’ arguments, we decline to modify our original Decision.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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