Ex Parte Liu et al

Patent Trial and Appeal Board

Jul 17, 2018

13749557 (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/749,557 01/24/2013
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
07/19/2018
FIRST NAMED INVENTOR
Deborah Liu
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.
26295-21138 6890
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
07/19/2018 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 DEBORAH LIU, NIPUN MATHUR,
JEFFREY ANDREW KANTER, and VIJA YE RAJI
Appeal2017-004546
Application 13/749,557 1
Technology Center 3600
Before JUSTIN BUSCH, JASON J. CHUNG, and
SCOTT B. HOWARD, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 4--8, and 11-14. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is directed to providing suggested content items to users
in a social networking system. Spec. ,r 1. Claim 1 is illustrative of the
invention and is reproduced below:
1 According to Appellants, the real party in interest is Facebook, Inc. App.
Br. 1.
2 Claims 2, 3, 9, and 10 have been cancelled. App. Br. 20-21.
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Application 13/749,557
1. A method comprising:
identifying a user of a social networking system;
maintaining a plurality of data stores including a content
data store comprising a plurality of objects and an edge data store
comprising plurality of connections therebetween;
receiving a plurality of recommendation units for the user,
each recommendation unit including a link to a recommendation
that suggests the user perform an action in the social networking
system on an object in the content data store identified by the
recommendation unit, the action performed by the user,
responsive to the user accessing the link, being stored in the edge
data store by the social networking system;
retrieving, from the edge data store, information
describing one or more connections in the edge data store
between the user and the object identified by each of the
recommendation units;
determining the user's prior interactions with the object
identified by each recommendation unit based on the retrieved
information describing one or more connections in the edge data
store between the user and the object identified by each of the
recommendation units;
calculating a score for each of the plurality of
recommendation units based at least in part on the determined
prior interactions of the user with the object identified by each
recommendation unit;
receiving a bid amount from a content provider associated
with a sponsored recommendation unit of the plurality of
recommendation units;
increasing a score for the sponsored recommendation unit
relative to one or more of the other recommendation units based
on the bid amount;
ranking the plurality of recommendation units based on
the scores;
selecting one or more recommendation units based at least
in part on the ranking; and
providing the selected recommendation units for display
to the user.
App. Br. 19 (Claims Appendix).
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Application 13/749,557
REJECTIONS
Claims 1, 4--8, and 11-14 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception to patentable subject matter. Final
Act. 2-3. 3
Claims 1, 4--8, and 11-14 stand rejected under 35 U.S.C. § I02(e) as
being anticipated by Goder (US 2014/0019233 Al; published Jan. 16, 2014).
Final Act. 3-10.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
ANALYSIS
35 U.S.C. § 101: Claims 1, 4--8, and 11-14
The Examiner concludes the concept of providing offers and
recommendation units based on scores and ranking is a fundamental
economic practice. Final Act. 2. The Examiner also concludes the claims
map to the abstract idea of "targeted marketing." Id. The Examiner
concludes "the only other element in the claims ... is a generic computer
structure." Id. at 2-3. The Examiner concludes that the cases most relevant
to the contested claims are Alice Corp. Pty. Ltd. v. CLS Bank International,
134 S. Ct. 2347 (2014), Bilski v. Kappas, 561 U.S. 593 (2010), buySAFE,
3 We herein refer to the Specification filed Jan. 24, 2013 ("Spec."); Final
Office Action mailed Mar. 11, 2016 ("Final Act."); Appeal Brief filed Aug.
11, 2016 ("App. Br."); and the Examiner's Answer, mailed Nov. 18, 2016
("Ans."). It is noted a Reply Brief was filed on Jan. 17, 2017.
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Application 13/749,557
Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014), Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), SmartGene, Inc. v Advanced
Biological Laboratories, 555 F. App'x 950 (Fed. Cir. 2014) (non-
precedential), Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558
F. App'x 988 (Fed. Cir. 2014) (non-precedential), and Digitech Image
Technologies, LLC v Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014). Final Act. 2.
Moreover, the Examiner determines the claims do not recite
significantly more than the abstract idea because generic computer
components are claimed as performing the basic functions of receiving,
generating, and transmitting. Id. at 2-3.
Appellants argue the Examiner's conclusion that the present claims
are directed to an abstract idea is incorrect because
[t]he process of "receiving a recommendation unit, retrieving
information describing a connection, calculating a score,
receiving a bid, increasing and ranking a recommendation unit,
selecting a recommendation unit, and providing a
recommendation unit" cannot be a fundamental economic
practice when it encompasses a specific type of content ( a
recommendation unit), obtaining specific information
(information describing a connection), and performing various
specific actions ( calculating a score, increasing the score), when
there are various other ways to distribute content.
App. Br. 7.
Appellants further argue the claims do not recite an abstract idea; but,
even if the claims were directed to an abstract idea, the combination of steps
amount to significantly more than the abstract idea because
the additional elements add specific limitations other than what
is well-understood, routine and conventional in the field ... and
add[] meaningful limitations that amount to more than generally
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linking the use of the abstract idea to a particular technological
environment.
Id. at 11. Moreover, Appellants argue "the pending claims are directed to a
'business challenge that is particular to the Internet,"' and therefore, "do not
'merely recite the performance of some business practice known from the
pre-Internet world."' Id. at 13.
Following the decision in Alice Corp., ( citing Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 82-84 (2012)), we
analyze claims where the abstract idea judicial exception to the categories of
statutory subject matter is at issue using the following two-part analysis set
forth in Mayo: 1) determine whether the claim is directed to an abstract
idea; and 2) if an abstract idea is present in the claim, determine whether any
element, or combination of elements, in the claim is sufficient to ensure that
the claim amounts to significantly more than the abstract idea itself. See
Alice, 134 S. Ct. at 2350.
As to the first part of the analysis, examples of abstract ideas
referenced in Alice include: fundamental economic practices; 4 certain
methods of organizing human activities; 5 "[a]n idea ofitself'; 6 and,
mathematical relationships or formulas. 7 Claims that include abstract ideas
4 Alice Corp., 134 S. Ct. at 2350: e.g., intermediated settlement, i.e., the use
of a third party intermediary to mitigate settlement risk.
5 Id. at 2356: e.g., a series of steps instructing how to hedge risk ( citing
Bilski, 561 U.S. at 599).
6 Id. at 2355: e.g., a principle, an original cause, a motive (citing Gottschalk
v. Benson, 409 U.S. 63, 67 (1972) and Le Roy v. Tatham, 14 How. 156, 175
(1852)).
7 Id. at 2350: e.g., a mathematical formula for computing alarm limits in a
catalytic conversion process (Parker v. Flook, 437 U.S. 584, 594--95
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like these are examined under the second part of the analysis to determine
whether the abstract idea has been applied in an eligible manner.
As to the second part of the analysis, we consider the claim as a whole
by considering all claim elements, both individually and in combination. Id.
at 2355. Limitations referenced in Alice that may be enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: improvements to another
technology or technical field; 8 improvements to the functioning of the
computer itself; 9 and meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment. 10
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea; 11 mere instructions to implement an
abstract idea on a computer; 12 or requiring no more than a generic computer
(1978)), or a formula for converting binary-coded decimal numerals into
pure binary form (Benson, 409 U.S. at 71-72).
8 Id. at 2358: e.g., a mathematical formula applied in a specific rubber
molding process (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)).
9 Id. at 2359.
10 Id. at 2360: noting that none of the hardware recited "offers a meaningful
limitation beyond generally linking 'the use of the [ method] to a particular
technological environment,' that is, implementation via computers" ( citing
Bilski, 561 U.S. at 610-11).
11 Id. at 2357-58.
12 Id.: e.g., simply implementing a mathematical principle on a physical
machine, namely a computer ( citing Mayo, 566 U.S. at 84--85).
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to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 13
If there are no meaningful limitations in the claim that transform the
abstract idea into a patent eligible application such that the claim amounts to
significantly more than the abstract idea itself, the claim is directed to non-
statutory subject matter under 35 U.S.C. § 101.
The Federal Circuit held "merely selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
exclusion from § 101 undergirds the information-based category of abstract
ideas." Elec. Power Gp., LLC v. Alstom, 830 F.3d 1350, 1355 (Fed.
Cir. 2016). In addition, "merely presenting the results of abstract processes
of collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis." Id. at 1354. The Federal Circuit further stated:
[ t ]he claims in this case do not even require a new source or type
of information, or new techniques for analyzing it. ... As a result,
they do not require an arguably inventive set of components or
methods, such as measurement devices or techniques, that would
generate new data. They do not invoke any assertedly inventive
programming. Merely requiring the selection and manipulation
of information-to provide a "humanly comprehensible" amount
of information useful for users ... by itself does not transform
the otherwise-abstract processes of information collection and
analysis.
Id. at 1355 (internal citations omitted).
13 Id. at 2359: e.g., using a computer to obtain data, adjust account balances,
and issue automated instructions.
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Step 2A
On this record, we see no error in the Examiner's analysis and
conclusion that claims 1, 4--8, and 11-14 are directed to an abstract idea.
Ans. 2-3. That is, we agree with the Examiner that the concept of providing
offers and recommendation units based on scores and ranking is a
fundamental economic practice. Id. at 2.
Moreover, we note that Electric Power cites to buySAFE and
SmartGene (the Examiner relied on both buySAFE and SmartGene);
therefore, we will analyze the claims using Electric Power. Elec. Power,
830 F.3d at 1354--1355. Similar to the claims in Electric Power, claims 1,
4--8, and 11-14 of the present case are directed to presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular recommendation for presentation), and are
abstract as an ancillary part of such collection and analysis. Additionally,
like Electric Power, claims 1, 4--8, and 11-14 of the present case merely
require the selection and manipulation of information to provide a "humanly
comprehensible" amount of information useful for users, which by itself
does not transform the otherwise-abstract processes of information
collection and analysis.
With regards to Appellants' argument that the claim cannot be
directed to an abstract idea because there are claim limitations related to the
"recommendation unit" (see App. Br. 6-7), Appellants appear to conflate
improperly the requirements for determining an abstract idea (step 2A) with
determining additional elements that amount to significantly more (step 2B).
Nonetheless, we concluded supra, the present claims recite an abstract idea
for similar reasons articulated by the Federal Circuit in Electric Power. And
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to the extent Appellants are arguing the claims in the present case amount to
significantly more than an abstract idea, the claims here do not require
additional elements that amount to significantly more because similar to
Electric Power "[ n ]othing in the claims, understood in light of the
specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information." Elec. Power, 830 F.3d at 1355.
Because claims 1, 4--8, and 11-14 are directed to an abstract idea, we
proceed to step (2B) of the Alice, two-part test.
Step 2B
Regarding step (2B) of the Alice two-part test, claims 1, 4--8, and 11-
14 do not amount to significantly more than an abstract idea.
With regard to Appellants' argument that the pending claims are
patent eligible because the claims recite unconventional features, (see App.
Br. 10-12 ), Appellants appear to conflate improperly the requirements for
eligible subject matter(§ 101) with the independent requirements of novelty
(§ 102) and non-obviousness(§ 103). "The 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond, 450 U.S. at
188-89; see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376
(Fed. Cir. 2016) (stating that, "under the Mayo/Alice framework, a claim
directed to a newly discovered law of nature ( or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility").
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Regarding Appellants' argument that "the pending claims are directed
to a 'business challenge that is particular to the Internet,"' and therefore, "do
not 'merely recite the performance of some business practice known from
the pre-Internet world"' (see App. Br. 13), we disagree for the following
reasons. Even if claims 1, 4--8, and 11-14 cannot be divorced from
technology as Appellants contend (App. Br. 12-14), this does not mean
claims 1, 4--8, and 11-14 recite patent eligible subject matter because the
Federal Circuit held that claims directed to "selecting information, by
content or source, for collection, analysis, and display does nothing
significant to differentiate a process from ordinary mental processes, whose
implicit exclusion from § 101 undergirds the information-based category of
abstract ideas." Elec. Power at 1355.
Similarly, claims 1, 4--8, and 11-14 of the present case describe the
concept of receiving a recommendation, retrieving information describing a
connection, calculating a score, receiving a bid, increasing and ranking a
recommendation unit, selecting a recommendation unit, and providing a
recommendation unit, which is not significantly more than an abstract idea.
In addition, the present claims are directed to a targeted marketing
computing environment, which is implemented through the generic
components described as "social networking system," "edge data store,"
"content data store," and "providing[ ... ] for display." There is neither a
modification to the underlying conventional technology, nor is there a new
technique claimed. Instead, we agree with the Examiner that Appellants'
claims are directed to generic components, claimed at a high level of
generality, and lacking in implementation details. Final Act. 3. Claims 1,
4--8, and 11-14, therefore, do not amount to significantly more than an
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abstract idea. Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044,
1056 (Fed. Cir. 2017) (generic computer elements did not represent
improvement in computer technology but rather were invoked merely as
tools, and did not transform the claims into significantly more than claims to
abstract idea itself).
Accordingly, for the reasons stated supra, we sustain the Examiner's
rejection of: (1) independent claims 1 and 8; and (2) dependent claims 4--7
and 11-14.
35 U.S.C. § 102(e): Claims 1, 4--8, and 11-14
The Examiner finds that Goder teaches social networking system 100
converts the score and the expected value into a common unit of
measurement, allowing both the recommendation units and the
advertisements to be ranked together based on benefit to social networking
system 100, which the Examiner maps to "increasing a score for the
sponsored recommendation unit relative to one or more of the other
recommendation units based on the bid amount" as recited in independent
claim 1 (and similarly recited in claim 8). Ans. 4 (citing Goder ,r,r 8, 24);
Final Act. 5, 11 ( citing Goder ,r,r 8, 44, claim 1 ).
Appellants argue Goder does not disclose "receiving a bid amount
associated with a recommendation unit, much less of increasing a score of a
recommendation unit for which a bid amount was received relative to scores
of other recommendation units." App. Br. 15-16 ( emphasis added).
Specifically, Appellants argue "Goder explicitly discloses determining a
score for a recommendation unit that is unrelated to bid amounts and
determining a separate expected value for advertisements that are associated
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with bid amounts," which does not anticipate "increasing a score for the
sponsored recommendation unit relative to one or more of the other
recommendation units based on the bid amount" as recited in independent
claim 1 (and similarly recited in claim 8). Id. at 16.
We agree with Appellants' argument (see App. Br. 14--17; Reply Br.
10-14) that the cited portions of Goder relied upon by the Examiner fail to
disclose "increasing a score for the sponsored recommendation unit relative
to one or more of the other recommendation units based on the bid amount,"
as recited in independent claim 1 (and similarly recited in claim 8). The
Examiner primarily relies on paragraph 24 of Goder. Ans. 4. Paragraph 24
of Goder discloses social networking system 100 converts the score and the
expected value into a common unit of measurement, allowing both the
recommendation units and the advertisements to be ranked together based on
benefit to social networking system 100. Id. ( citing Goder ,r 24). Stated
differently, paragraph 24 of Goder does not show how the bid amount causes
a recommendation score to increase. Goder ,r 24. We also find the other
cited portions of Goder do not remedy the shortcomings of Goder's
paragraph 24. Ans. 4 (citing Goder ,r,r 8, 24); Final Act. 5, 11 (citing Goder
,r,r 8, 44, claim 1 ).
Accordingly, for the reasons stated supra, we do not sustain the
Examiner's anticipation rejection of claims 1, 4--8, and 11-14.
DECISION
We affirm the Examiner's decision rejecting claims 1, 4--8, and 11-14
under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1, 4--8, and 11-
14 under 35 U.S.C. § 102(e).
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Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's decision to reject all of the
pending claims.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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