Ex Parte Rait et al

Patent Trial and Appeal Board

Jun 12, 2018

13455506 (P.T.A.B. Jun. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/455,506 04/25/2012
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
06/14/2018
FIRST NAMED INVENTOR
Zachary Ethan Carpen Rait
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.
26295-19877 2130
EXAMINER
RASHID, ISHRAT
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
06/14/2018 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 ZACHARY ETHAN CARPEN RAIT,
BLAKE A. ROSS, and BENJAMIN E. HILLER
Appeal2017-008700
Application 13/455,506 1
Technology Center 2400
Before BRUCE R. WINSOR, ADAM J. PYONIN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-3 and 5-19, which are all of the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to "adding information to user profiles based
on the addition of users to groups of users in the social network." Spec. ,r 1.
1 Appellants state the real party in interest is Facebook, Inc. App. Br. 2.
Appeal2017-008700
Application 13/455,506
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A computer-implemented method comprising:
storing, by a computer system, user profiles for users of a
social networking system, the user profiles describing
characteristics of the users of the social networking system;
storing, by the computer system, a social graph including
nodes connected by edges, each node representing a distinct one
of the users of the social networking system and each edge that
connects a pair of nodes in the social graph describing a
relationship of users represented by the pair of nodes;
creating, by the computer system, a group of other users
of the social networking system who are connected to a user in
the social graph based on the group of other users and the user
all being associated with a common characteristic in the social
networking system, the common characteristic associated with a
geographical location;
storing, by the computer system, group data identifying
the common characteristic and one or more connections included
in the group of other users;
receiving, by the computer system, a request from the user
to add an additional user of the social networking system to
whom the user is connected in the group of other users;
accessing, by the computer system, a user profile for the
additional user from the stored user profiles;
determining, by the computer system, that the user profile
for the additional user lacks the common characteristic
associated with the group of other users;
responsive to the user profile for the additional user
lacking the common characteristic, calculating, by the computer
system, a score for the common characteristic based on
interactions in the social networking system between the
additional user and at least one of the other users included in the
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Application 13/455,506
group of other users, characteristics of other users to whom the
additional user is connected in the social graph, and a comparison
of the geographical location associated with the common
characteristic and a plurality of geographical locations associated
with the additional user, the score indicative of whether to add
the common characteristic to the user profile for the additional
user; and
responsive to the score for the common characteristic
exceeding a threshold value, updating the user profile for the
additional user to include the common characteristic.
Rejections
Claims 1-3 and 5-19 stand rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Final Act. 2---6.
Claims 1, 3, 5, 6, 9-11, 18, and 19 stand rejected under 35 U.S.C.
§ I03(a) as obvious over the combination of Lento et al. (US 2011/0246574
Al; Oct. 6, 2011 ), Chen et al. (US 2011/0314105 Al; Dec. 22, 2011 ),
Priyadarshan et al. (US 2012/0042262 Al; Feb. 16, 2012), Darr (US
2007/0226248 Al; Sept. 27, 2007), and Aceves et al. (US 2010/0041378
Al; Feb. 18, 2010). Final Act. 7-18.
Claims 2, 7, 8, and 12 stand rejected under 35 U.S.C. § I03(a) as
obvious over the combination of Lento, Chen, Priyadarshan, Darr, Aceves,
and Byrnes et al. (US 2002/0002705 Al; Jan. 3, 2002). Final Act. 18-20.
Claim 13 stands rejected under 35 U.S.C. § I03(a) as obvious over the
combination of Lento, Chen, Priyadarshan, Darr, Aceves, Byrnes, and Hull
et al. (US 2011/0289574 Al; Nov. 24, 2011). Final Act. 21-22.
Claims 14, 15, and 17 stand rejected under 35 U.S.C. § I03(a) as
obvious over the combination of Lento, Chen, Priyadarshan, Darr, Aceves,
and Baluja et al. (US 2012/0054205 Al; Mar. 1, 2012). Final Act. 22-23.
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Application 13/455,506
Claim 16 stands rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Lento, Chen, Priyadarshan, Darr, Aceves, Baluja, and
Byrnes. Final Act. 24.
ISSUES
1. Did the Examiner err in concluding that claim 1 was directed to
ineligible subject matter under § 101?
2. Did the Examiner err in finding Lento teaches or suggests
"responsive to the user profile for the additional user lacking the common
characteristic, calculating, by the computer system, a score for the common
characteristic," as recited in claim 1?
ANALYSIS
§ 101
Section 101 defines patentable subject matter: "Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
( quotation omitted). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014).
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"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas" (Mayo, 566 U.S. at 71), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, "the claims are considered 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).
In the second step, we "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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has "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." Id. (quotation omitted).
For computer-related technology, the Federal Circuit has held that a claim
may pass the second step if "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer [technology]." DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (e.g., "a challenge particular to
the Internet").
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"Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts." SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1020
(Fed. Cir. 2018).
Here, for the first step, Appellants argue "the examiner has not
identified how the present claims are similar to the methods of organizing
human activity/mathematical formulas previously identified by the courts."
App. Br. 6. The Examiner responds that the "Examiner did not assert that
the proposed abstract idea is considered a method of organizing human
activity." Ans. 3. Instead, the Examiner relies on the claim being "an idea
of itself," specifically "a mental process (thinking) that can be performed in
the human mind." Id. (quotation marks omitted); see also Final Act. 3--4.
The Federal Circuit treats "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016). We
agree with the Examiner that "with the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper."
Intellectual Ventures I LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016). In Intellectual Ventures, the Federal Circuit held the claimed
filtering of email was the same abstract idea as the "long-prevalent practice
for people receiving paper mail to look at an envelope and discard certain
letters, without opening them, from sources from which they did not wish to
receive mail based on characteristics of the mail." Id. at 1314. Moreover,
"[t]he list of relevant characteristics could be kept in a person's head." Id.
The same is true here where humans mentally keep track of different circles
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of friends and their common characteristics. See Ans. 3, 6-9. For example,
if you go to a party at Bob's house and you don't know where Bob went to
college but all of Bob's friends went to the University of Wisconsin, it
would be reasonable to conclude there is a high probability that Bob also
went to the University of Wisconsin (i.e., calculating as in claim 1) and,
when you talk to Bob, to ask him if he went to the University of Wisconsin
(i.e., the suggestion process in claim 2). See also Ans. 7 (providing an
example of running into Jack multiple times at locations near a college
leading to a deduction that Jack may be a student at that college).
For the second step, Appellants argue that the claims recite
significantly more because "the claims clearly do not tie up all possible ways
of updating a user profile of a user in a social network system to include a
common characteristic[] of a group to which the user was added." App. Br.
8. However, we agree with the Examiner (Ans. 4) that"[ w ]hile preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Id.
Appellants argue that the "calculating" step in particular adds
significantly more. App. Br. 9. But as discussed above, we agree with the
Examiner that other than a generic "computer system," Appellants fail to
explain "how the argued limitation cannot be performed mentally by a
human being." Ans. 6.
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Appellants also analogize to DDR Holdings in arguing that "[t]he
claims of this application address the problem of updating user profiles of
users in a social networking system." App. Br. 10. But we agree with the
Examiner that claim 1 merely is "automating the process of human thinking"
by using a computer. Ans. 8. "[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention." Alice, 134 S. Ct. at 2358.
Accordingly, we sustain the Examiner's rejection under§ 101 of
claim 1, and claims 2, 3, and 5-19, which Appellants do not argue
separately. See App. Br. 5-11; 37 C.F.R. § 4I.37(c)(l)(iv).
§ 103
Claim 1 recites "responsive to the user profile for the additional user
lacking the common characteristic, calculating, by the computer system, a
score for the common characteristic." Independent claims 7 and 14 recite
commensurate limitations.
The Examiner relies on Lento for teaching or suggesting this
limitation. Final Act. 9. Lento relates to "facilitating a user's creation of a
group of other users from among the user's connections in the user's social
network." Lento ,r 1. In particular, Lento discloses:
[ A ]fter a user has started to create a new group of connections,
other existing connections of that user are suggested while the
user continues to add connections to the group. The connections
to suggest to the user are selected based on their similarity to a
common characteristic among the connections that have already
been added to the group .... The common characteristic is
determined . . . based on the characteristic having the highest
degree of similarity among the users in the new group .... As
additional connections are added to the group, the social
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networking system may update the suggestions of connections to
add to the group.
Lento ,r 4. Thus, Lento discloses an iterative process in which every time a
user adds a new connection to a group, the social networking system looks
for common characteristics in the revised group and suggests other
connections based on those common characteristics.
The Examiner relies on paragraph 26 of Lento, which discloses "[t]he
common characteristic may be defined as the characteristic shared by a
majority of the selected connections" (as opposed to a characteristic
"absolutely shared by the entire set"). Lento ,r 26 ( emphasis added); Ans.
27. Thus, there may be instances when not every connection in the group
has the common characteristic, but that characteristic nonetheless is "the
characteristic shared by a majority of the selected connections." Lento ,r 26.
The Examiner further finds "Lento [0033] provides for determining a
common characteristic or lack of between a group of users, and in response
to that and based on weights [0035] making a calculation." Final Act. 9.
Specifically, paragraph 35 of Lento discloses "the determined common
characteristics may be defined to select a subset of the shared
characteristics" and "[t]he selection of the subset may be based on weights."
Thus, paragraph 35 of Lento applies when there are multiple common
characteristics and the social networking system wants to select only a
subset of them.
However, the use of weights in Lento is responsive to there being
multiple common characteristics, not "responsive to the user profile for the
additional user lacking the common characteristic" as claimed. For
example, suppose a user creates a group of connections that are (A) aged
18-25 and (B) with "Green Bay Packers" listed in their interests. See Lento
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,r,r 34--35. If the user adds another connection whose profile indicates she is
aged 18-25 but does not indicate whether she is interested in the Packers,
then the new sole common characteristic is "aged 18-25" and the system
does not calculate any weights. Thus, there is no calculating a score for the
Packers characteristic "responsive to the user profile for the additional user
lacking the common characteristic." Moreover, the same weighting would
occur if the profile of the added connection either matched all the prior
common characteristics or none of them. Thus, the calculating of weights is
responsive to multiple common characteristics, regardless of whether the
new connection's profile indicated an interest in the Packers.
The Examiner therefore has not shown that Lento teaches or suggests
"responsive to the user profile for the additional user lacking the common
characteristic, calculating, by the computer system, a score for the common
characteristic," as recited in claim 1.
Accordingly, we do not sustain the Examiner's rejections under§ 103
of independent claims 1, 7, and 14, and their dependent claims 2, 3, 5, 6, 8-
13, and 15-19.
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DECISION
For the reasons above, we affirm the decision rejecting claims 1-3 and
5-19 under§ 101.
We reverse the decision rejecting claims 1-3 and 5-19 under§ 103.
Because we affirm at least one rejection for every appealed claim, we
designate this Decision an affirmance.
No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 4I.50(f).
AFFIRMED
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