Ex Parte Schoen

Patent Trial and Appeal Board

Apr 19, 2017

13043424 (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.
13/043,424 03/08/2011 Kent Schoen 26295-17323 8838
87851 7590 04/21/2017
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center SCHMUCKER, MICHAEL W
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
3622
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 KENT SCHOEN
Appeal 2015-0058311
Application 13/043,4242
Technology Center 3600
Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—9, 11—23, and 25—27. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
February 5, 2015) and Reply Brief (“Reply Br.,” filed May 18, 2015), and
the Examiner’s Answer (“Ans.,” mailed April 9, 2015) and Final Office
Action (“Final Act.,” mailed November 7, 2014).
2 Appellant identifies Facebook, Inc. as the real party in interest. App.
Br. 2.
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CLAIMED INVENTION
Appellant’s claimed invention “relates generally to online advertising,
and in particular to selecting social endorsement information to provide to a
user of a social networking system in conjunction with an online
advertisement” (Spec. 11).
Claims 1 and 23 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method comprising:
receiving, by a computer, a request to display an
advertisement with social endorsement information to a viewing
user, wherein the viewing user is a user of a social networking
system;
selecting an advertisement in response to the received
request;
identifying, by the computer, one or more objects in the
social networking system related to the selected advertisement;
identifying, by the computer, a plurality of candidate
social endorsements associated with the selected advertisement,
each candidate social endorsement comprising a description of
an associated interaction between an identified object and one or
more associated users who are connected to the viewing user in
the social networking system;
selecting, by the computer, a candidate social endorsement
from the plurality of candidate social endorsements; and
providing, by the computer, the selected advertisement
and the selected candidate social endorsement for display to the
viewing user.
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REJECTIONS
Claims 1—9, 11—23, and 25—27 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1—9, 11, 12, 14—18, 23, and 25—27 are rejected under
35 U.S.C. § 103(a) as unpatentable over Purvy et al. (US 2011/0258042 Al,
pub. Oct. 20, 2011) (hereinafter “Purvy”) and Klish (US 2010/0223119 Al,
pub. Sept. 2, 2010).
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Purvy, Klish, and Busch (US 2008/0248815 Al, pub. Oct. 9, 2008).
Claims 19—22 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Purvy, Klish, and Parsons et al. (US 2010/0070485 Al, pub. Mar. 18,
2010) (hereinafter “Parsons”).
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CIS
BankInt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 134 S. Ct. at
2355. The first step in that analysis is to “determine whether the claims at
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issue are directed to one of those patent-ineligible concepts,” id., e.g., to an
abstract idea. If the claims are not directed to a patent-ineligible concept, the
inquiry ends. Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered “individually and ‘as an ordered
combination”’ to determine whether there are additional elements that
‘“transform the nature of the claim’ into a patent-eligible application.” Alice
Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enflsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Appellant argues here that the § 101 rejection cannot be sustained
because the Examiner has failed to provide “substantial evidence” to support
a finding that the pending claims are directed to an abstract idea (App.
Br. 12—15). Appellant asserts that the Supreme Court made clear, in Bilskf
and Alice, that “specific references must be cited to support a finding that an
alleged abstract idea is both 1) long prevalent in the field (i.e., widely used),
and 2) long known in the field” {id. at 15), and that the Board has adopted
this same standard {id. (citing PNC Bank v. Secure Axcess, CBM2014-
00100, 2014 WL 4537440 (PTAB September 9, 2014)). Appellant, thus,
ostensibly maintains that because the Examiner fails to cite any supporting
3 Bilski v. Kappos, 130 S. Ct. 3218 (2010)
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references, the Examiner has failed to establish a prima facie case of
unpatentability (id. at 14—15).
As an initial matter, we find nothing in Bilski and Alice that requires
the Office to identify specific references to support a finding that a claim is
directed to an abstract idea. Nor, contrary to Appellant’s assertion, did this
Board hold, in PNC Bank v. Secure Axcess, that there is any such
requirement.
The Federal Circuit has repeatedly noted that “the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the USPTO carries its procedural burden when its rejection satisfies
the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons
for rejection, “together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of [the]
application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus,
all that is required of the Office is that it set forth the statutory basis of the
rejection, and the reference or references relied on, in a sufficiently articulate
and informative manner as to meet the notice requirement of § 132. Id.; see
also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132
“is violated when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.”).
Here, in rejecting the pending claims under § 101, the Examiner
analyzed the claims using the Mayo two-step framework, in accordance with
the guidance set forth in the PTO’s June 25, 2014 “Preliminary Examination
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Instructions in view of the Supreme Court Decision in Alice Corporation
Pty. Ltd. v. CLS Bank International, et alC Specifically, the Examiner
notified Appellant that the claims are directed to “the concept of identifying
ads/endorsements to be presented to users based upon interaction of other
users,” i.e., to a fundamental economic practice, and therefore, to an abstract
idea (Final Act. 3). The Examiner further found that “[t]he claims do not
recite limitations that are ‘significantly more’ than the abstract idea because
the claims do not recite an improvement to another technology or technical
field, an improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment” (id.). And the Examiner
additionally noted that “the [claim] limitations ... are performed by the
generically recited computer/processor” and the limitations are “merely
instructions to implement the abstract idea on a computer and require no
more than a generic computer to perform generic computer functions that are
well-understood, routine and conventional activities previously known to the
industry” (id. at 3 4). The Examiner, thus, notified Appellant of the reasons
for the rejection “together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of [the]
application.” 35 U.S.C. § 132. The burden then shifted to Appellant to
explain why the claims are patent-eligible.
Turning to the second step of the Alice framework, and specifically
referring to claim 1, Appellant asserts that even if claim 1 is directed to an
abstract idea, claim 1 recites “specific inventive concepts that are not found
in the prior art,” and “[therefore, by defmition[,] claim 1 recites an
inventive concept that is sufficient to transform the allegedly claimed
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abstract idea into a patent-eligible application” (App. Br. 15—16). Yet to the
extent Appellant argues that the claims necessarily contain an “inventive
concept” based on their alleged novelty and non-obviousness over the cited
references {id. at 16), Appellant misapprehends the controlling precedent.
Although the second step in the Alice/Mayo framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but rather, a search for “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. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Rather than reciting additional elements that amount to “significantly
more” than the abstract idea, the pending claims, at best, “add” only a
“computer,” i.e., a generic component (see Spec. 148 (describing that the
apparatus for performing the disclosed operation may comprise “a general-
purpose computing device selectively activated or reconfigured by a
computer program stored in the computer”)), which does not satisfy the
inventive concept. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal quotation marks omitted)
(“[A]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible. The
bare fact that a computer exists in the physical rather than purely conceptual
realm is beside the point.”)
We are not persuaded that the Examiner erred in rejecting claims 1—9,
11—23, and 25—27 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection.
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Obviousness
Independent Claims 1 and 23 and Dependent Claims 2—9, 11, 12, 14—18,
and 25—27
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 23 under 35 U.S.C. § 103(a) because
Purvy, on which the Examiner relies, does not disclose or suggest
identifying ... a plurality of candidate social endorsements
associated with [a] selected advertisement, each candidate social
endorsement comprising a description of an associated
interaction between an identified object [related to the selected
advertisement] and one or more associated users who are
connected to the viewing user in the social networking system
and “selecting ... a candidate social endorsement from the plurality of
candidate social endorsements,” as recited in independent claim 1, and
similarly recited in independent claim 23 (App. Br. 7—9).
Purvy is directed to a method and system for providing advertisements
(Purvy, Abstract), and discloses that when a user initiates a search query, an
endorsement system identifies the search results and also identifies eligible
advertisements that are responsive to the search query {id. 124). Purvy
discloses that if more than one advertisement is identified by the
endorsement system, the system ranks the advertisements according to a
score calculated based on signals associated with each advertisement {id.
134). These signals may be based, for example, on (1) whether the goods or
services described in advertisement were endorsed; (2) whether the endorser
was recommended by someone in the same social network as the person
who performed the search query; (3) whether the advertisement itself or the
advertiser associated with the advertisement was endorsed; or (4) whether
the endorser was recommended by someone having an acquaintance
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relationship in the same social network as the person who performed the
search query (id. ).
The Examiner cites paragraphs 24—26, 29, 35—40, and 54 of Purvy as
disclosing the argued limitations (Final Act. 11—12). However, we agree
with Appellant that there is nothing in the cited portions of Purvy that
discloses or suggests “identifying ... a plurality of candidate social
endorsements associated with the selected advertisement” and “selecting . . .
a candidate social endorsement from the plurality of candidate social
endorsements,” as recited in claim 1, and similarly recited in claim 23.
Rather than “identifying a plurality of social endorsements associated with
the selected advertisement,” i.e., an advertisement that has already been
selected, and then “selecting a candidate social endorsement from the
plurality of social endorsements,” Purvy discloses identifying a plurality of
candidate advertisements, some or all of which have already been endorsed,
and then selecting an advertisement from the plurality of advertisements.
Responding to Appellant’s argument, the Examiner asserts that Purvy
teaches selecting an advertisement and then selecting an appropriate
endorsement, as called for in the claims, in at least paragraphs 34 and 52 and
Figure 5 (Ans. 3—5). However, we agree with Appellant that there is nothing
in either of paragraphs 34 and 52 that discloses or suggests the argued
limitations (Reply Br. 2—3). Nor is there any such disclosure or suggestion
in Purvy’s Figure 5 (id. at 3).
Paragraph 34 merely discloses that if multiple advertisements are
identified in response to a search query, the advertisements are ranked
according to a score calculated based on signals associated with each
advertisements, e.g., whether the advertisement itself was endorsed. And
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paragraph 52 simply discloses “selecting], for presentation, advertisements
having characteristics matching the characteristics of advertisements slots”
and that “data representing each endorsement associated with an
advertisement as well as the data representing users who have recommended
the endorsers associated with each endorsement” can be stored in a historical
data store. Figure 5 merely discloses the ranking and selection process
described in paragraph 34.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 23 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the rejection of dependent claims 2—9, 11, 12,
14—18, and 25-27. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“dependent claims are nonobvious if the independent claims from which
they depend are nonobvious”).
Dependent Claims 13 and 19—22
Each of claims 13 and 19—22 depends, directly or indirectly, from
independent claim 1. The Examiner’s rejections of these dependent claims
do not cure the deficiency in the Examiner’s rejection of independent
claim 1. Therefore, we do not sustain the Examiner’s rejections of
dependent claims 13 and 19—22 under 35 U.S.C. § 103(a) for the same
reasons set forth above with respect to claim 1.
DECISION
The Examiner’s rejection of claims 1—9, 11—23, and 25—27 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1—9, 11—23, and 25—27 under
35 U.S.C. § 103(a) are reversed.
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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)(l)(iv).
AFFIRMED
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