Ex Parte Pearlman et al

Patent Trial and Appeal Board

Sep 17, 2018

12485856 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/485,856 06/16/2009
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
09/19/2018
FIRST NAMED INVENTOR
Leah Pearlman
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.
26295-15543 4004
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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 LEAH PEARLMAN,
ALOK MENGHRAJANI,
and MARK SLEE
Appeal2016-007887
Application 12/485,856
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY,
and NINA L. MEDLOCK, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Leah Pearlman, Alok Menghrajani, and Mark Slee (Appellants2) seek
review under 35 U.S.C. § 134 of a final rejection of claims 1-30, the only
1 Our Decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed January 5, 2016) and Reply Brief ("Reply Br.," filed August 15,
2016), and the Examiner's Answer ("Ans.," mailed June 15, 2016), and
Final Office Action ("Final Act.," mailed March 5, 2015).
2 According to Appellants, Facebook, Inc. is the real party in interest. See
App. Br. 2.
Appeal 2016-007887
Application 12/485,856
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of providing users of a social network
service the ability to selectively designate content with varying levels of
accessibility. Spec. para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method comprising:
[ 1] sending, by a processor, a composer interface for display to a
user,
the composer interface configured to allow the user to
provide content items and a selection of privacy settings
for each content item provided via the composer interface;
[2] receiving, by the processor, via the composer interface, a
content item from the user of the social networking service;
[3] receiving, by the processor, via the composer interface, a
selection of a privacy setting to be associated with the content
item from the user,
the privacy setting establishing one or more connections
allowed to access the content item;
[ 4] placing, by the processor, the content item into an electronic
communication channel of the social networking service;
and
[ 5] making the content item accessible, by the processor, to one
or more connections via the communication channel,
where accessibility to the one or more connections is
determined by the privacy setting selected by the user;
[ 6] sending the content item to a connection permitted access to
view
the content item
and
an indication for display with the content item indicating
that the content item has a modified privacy setting;
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[7] receiving a comment to the content item from the connection
that the content item was sent to for display;
and
[8] associating the comment with the modified privacy settings
indicated by the indication.
Claims 1-30 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
ANALYSIS
Method claim 1 recites sending data for a composer interface,
receiving content data, receiving privacy settings, placing the content data in
an electronic communication channel, making the content accessible based
on the privacy settings, sending the content data for display based on such
accessibility, receiving comment data, and associating the comment data
with the privacy settings. Thus, claim 1 recites transmitting, receiving,
analyzing, modifying, transmitting, displaying, receiving, and modifying
data. None of the limitations recites implementation details for any of these
steps, but instead recite functional results to be achieved by any and all
possible means. Data reception, analysis, modification, transmission,
display, reception, and modification are all generic, conventional data
processing operations to the point they are themselves concepts awaiting
implementation details. The sequence of data reception-analysis-
modification-transmission-display-reception-and modification is equally
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generic and conventional. The ordering of the steps is, therefore, ordinary
and conventional. The remaining dependent claims merely describe process
parameters, with no implementation details. The other independent process
claim 23 is essentially a broader form of claim 1, but that also recites using
databases and streams. Databases and streams have been part and parcel of
web servers since the advent of the World Wide Web.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of those
patent-ineligible concepts .... If so, we then ask, "[ w ]hat else is
there in the claims before us? ... To answer that question, ...
consider the elements of each claim both individually and "as an
ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application .... [The Court] described step two of this
analysis as a search for an "'inventive concept"'-i.e., 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 Corp., Pty. Ltd. v CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner determines
the claims to be directed to providing users of a social network service the
ability to selectively designate content with varying levels of accessibility.
Final Act. 2.
Although the Court in Alice made a determination as to what the
claims were directed to, we find that this case's claims themselves and the
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Application 12/485,856
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in associating a comment with modified privacy
settings indicated by an indication, by selectively designating content with
varying levels of accessibility, absent any technological mechanism other
than a conventional computer for doing so. The Specification at paragraph 1
recites that the invention relates to providing users of a social network
service the ability to selectively designate content with varying levels of
accessibility. Thus, all this evidence shows that claim 1 is directed to
selectively designating content with varying levels of accessibility, i.e.,
publishing to selected audiences. This is consistent with the Examiner's
determination.
It follows from prior Supreme Court cases, and Bilski (Bilski v.
Kappas, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
publishing to selected audiences is a fundamental business practice long
prevalent in our system of commerce. The use of publishing to selected
audiences is also a building block of ingenuity in publishing. Thus,
publishing to selected audiences, like hedging, is an "abstract idea" beyond
the scope of§ 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of publishing
to selected audiences at issue here. Both are squarely within the realm of
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Application 12/485,856
"abstract ideas" as the Court has used that term. See Alice Corp. Pty. Ltd.,
134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F .3d
1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing
it, and displaying certain results of the collection and analysis" are "a
familiar class of claims 'directed to' a patent-ineligible concept"); see also
In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis,
modification, transmission, display, reception, and modification and does
not recite an improvement to a particular computer technology. See, e.g.,
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15
(Fed. Cir. 2016) (finding claims not abstract because they "focused on a
specific asserted improvement in computer animation"). As such, claim 1 is
directed to the abstract idea of transmitting, receiving, analyzing, modifying,
transmitting, displaying, receiving, and modifying data.
The remaining claims merely describe process parameters. We
conclude that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is not
enough for patent eligibility. Nor is limiting the use of an abstract
idea "'to a particular technological environment."' Stating an
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abstract idea while adding the words "apply it with a computer"
simply combines those two steps, with the same deficient result.
Thus, if a patent's recitation of a computer amounts to a mere
instruction to "implemen[ t ]" an abstract idea "on . . . a
computer," that addition cannot impart patent eligibility. This
conclusion accords with the preemption concern that undergirds
our § 101 jurisprudence. Given the ubiquity of computers, wholly
generic computer implementation is not generally the sort of
"additional featur[ e ]" that provides any "practical assurance that
the process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (internal citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for transmitting, receiving, analyzing, modifying, transmitting,
displaying, receiving, and modifying data amounts to electronic data query
and retrieval----one of the most basic functions of a computer. The limitation
of "to view the content item and an indication for display with the content
item indicating that the content item has a modified privacy setting" is not a
step, but a recitation of an intended purpose, which is aspirational rather than
functional. The limitation of sending a composer interface is conventional
web page data or the like transmission. 3
3 See, e.g., Spec. para. 25.
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All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp. v. Alstom S.A., supra. See also see In re Katz, 639 F.3d 1303, 1316
(Fed. Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP Am. Inc. v. InvestPic LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (internal citation omitted).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-transmission-display-reception-and modification is equally
generic and conventional or otherwise held to be abstract. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of
receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of
data retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and
monitoring). The ordering of the steps is, therefore, ordinary and
conventional.
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Viewed as a whole, Appellants' method claims simply recite the
concept of publishing to selected audiences as performed by a generic
computer. To be sure, the claims recite doing so by advising one to apply ad
hoc security settings for data accessibility, and otherwise perform the
conventional steps for posting data and receiving comments. But this is no
more than abstract conceptual advice on the parameters for such publishing
to selected audiences and the generic computer processes necessary to
process those parameters, and do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 19 pages of Specification do
not bulge with disclosure, but only spell out different generic equipment4
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
publishing to selected audiences under different scenarios. They do not
describe any particular improvement in the manner a computer functions.
Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of publishing to selected audiences
using some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
4 The Specification describes using a computer processor, which is a generic
general purpose computer. Spec. para. 51.
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are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long "warn[ ed] ... against" interpreting § 101 "in ways that
make patent eligibility 'depend simply on the draftsman's art."'
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360 (internal citation omitted).
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from the Final Office Action and Examiner's
Answer and reach similar legal conclusions. We now tum to the Reply
Brief.
We are not persuaded by Appellants' argument that the Examiner
failed to explain why claim 1 is directed to an abstract idea. Reply Br. 2--4.
The Examiner determined the claims are similar to the court identified
abstract idea of comparing new and stored information and using rules to
identify options. Ans. 2. Further, the Federal Circuit has found claims
directed to receiving, authenticating, and publishing data to be directed to an
abstract idea, citing Electric Power, supra.
Beginning with the first step, we conclude that claim 1 is directed
to an abstract idea. Claim 1 merely recites the familiar concepts
of receiving, authenticating, and publishing data. As we have
explained in a number of cases, claims involving data collection,
analysis, and publication are directed to an abstract idea.
EasyWeb Innovations, LLC v. Twitter, Inc., 689 F. App'x 969, 971 (Fed. Cir.
2017) (non-precedential). We determine supra that the independent claims
are directed to such publishing of data.
We are not persuaded by Appellants' argument that the claims are
analogous to those in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 4---6. The claims differ from those found patent
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eligible in Enfzsh, where the claims were "specifically directed to a self-
referential table for a computer database." Enfis h, 822 F .3 d at 13 3 7. The
claims, thus, were "directed to a specific improvement to the way
computers operate" rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the claims are not directed to
an improvement in the way computers operate. Though the claims
purport to accelerate the process of selecting products for sale, our
reviewing court has held that speed and accuracy increases stemming
from the ordinary capabilities of a general purpose computer "do[] not
materially alter the patent eligibility of the claimed subject
matter." Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (US.),
687 F.3d 1266, 1278 (Fed. Cir. 2012). Instead, the claims are more
analogous to those in FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089 (Fed. Cir. 2016), wherein claims reciting "a few possible rules to
analyze audit log data" were found directed to an abstract idea because
they asked "the same questions (though perhaps phrased with different
words) that humans in analogous situations detecting fraud have asked for
decades." FairWarning, 839 F.3d at 1094, 1095.
We are not persuaded by Appellants' argument that "the claims are
not directed to merely any form of designating levels of accessibility, but
instead are specifically directed to designating privacy settings in a
composer interface for a content item that also controls display of the
modified settings and further comments to the content item." Reply Br. 5.
Appellants do not recite how the composer interface is implemented or
controls the display, but only recite the concept of doing so. Absent such
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technological detail recital, the limitations argued is abstract conceptual
advice.
At that level of generality, the claims do no more than describe
a desired function or outcome, without providing any limiting
detail that confines the claim to a particular solution to an
identified problem. The purely functional nature of the claim
confirms that it is directed to an abstract idea, not to a concrete
embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269
(2016).
We are not persuaded by Appellants' argument that "the Examiner
once again failed to analyze the claim limitations in their entirety and still
analyzed the claim limitations separately." Reply Br. 6. Such analysis is
described supra.
We are not persuaded by Appellants' argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in Bascom
(Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016)). Reply Br. 7. Initially, we remind Appellants that Bascom
did not find claims eligible on the substance, but rather that the Appellees
did not provide sufficient evidence to support a 12(b)(6) motion to dismiss
in which facts are presumed in the non-movant's favor.
The key fact in Bascom was the presence of a structural change in
"installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
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and the benefits of a filter on the ISP server." Bascom, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
CONCLUSIONS OF LAW
The rejection of claims 1-30 under 35 U.S.C. § 101 as directed to
non-statutory subject matter is proper.
DECISION
The rejection of claims 1-30 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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