Ex Parte Schultz et al

Patent Trial and Appeal Board

Jun 28, 2018

13659695 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/659,695 10/24/2012
146113 7590 07/02/2018
FisherBroyles, LLP - Facebook, Inc.
Facebook, Inc.
222 South Main Street, 5th Floor
Salt Lake City, UT 84101
FIRST NAMED INVENTOR
Alexander Paul Schultz
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.
007726.0527Ul 7865
EXAMINER
KIM, PATRICK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
docketing@fisherbroy les .com
fb-docketing@fisherbroy les. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER PAUL SCHULTZ, BRIAN PIEPGRASS,
CHING-CHIH WENG, DANIEL FERRANTE, DEEPTANSHU VERMA,
PETER MARTINAZZI, THOMAS ALISON, and ZIQING MAO
Appeal2017-003955
Application 13/659,695
Technology Center 3600
Before MAHSHID D. SAADAT, CHARLES J. BOUDREAU, and
JASON M. REPKO, Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
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Application 13/659,695
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-5, 7-12, and 24--33. 1 App. Br. 5, 18. 2 Claim 6 was
canceled. Claims 13-23 were withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
Appellants' invention suggests potential connections to users within a
social-networking system. Spec. ,r 1. According to the Specification, social-
networking systems value user connections because better-connected users
tend to increase the systems' use. Id. ,r 2. Increased use, in tum, improves
user-engagement and advertising opportunities for the social network. Id.
The Specification explains that the invention helps users make
meaningful and efficient connections with new contacts. Id. ,r 4. One
embodiment computes a "friendship value" between the user and a potential
new contact-i.e., a "candidate user"-from (1) the friendship's value to the
user, (2) the friendship's value to the candidate user, and (3) the resulting
friendship's probability. Id. ,r,r 5, 17. From the computed friendship value,
the embodiment then determines a change in the user's engagement in the
social network resulting from a successful friendship with the candidate
1 Appellants identify the real party in interest as Facebook, Inc. App. Br. 2.
2 Throughout this opinion, we refer to the Final Rejection ("Final Act.")
mailed September 11, 2015; the Advisory Action ("Adv. Act.") mailed
December 10, 2015; the Appeal Brief ("App. Br.") filed April 11, 2016; the
Examiner's Answer ("Ans.") mailed November 3, 2016; and the Reply Brief
("Reply Br.") filed January 3, 2017.
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user. Id. ,r 17. The system then suggests a connection to the user using this
information. Id. In another embodiment, the system ranks candidate users
using the friendship value. Id. ,r 19.
Claim 1 is reproduced below:
1. A computer-implemented method comprising:
determining a friendship value between a user and a
candidate user, the friendship value computed as a function of
one or more of: a value of a friendship to the user, a value of the
friendship to the candidate user, or a probability of the friendship
resulting between the user and the candidate user; and
computing a difference between a current engagement
level of the user with a social network and a projected
engagement level of the user with the social network,
wherein the difference is computed using a function or
mapping that assumes a successful connection between the user
and the candidate user and provides projected engagement levels
with the social network based on the computed friendship value
of the assumed successful connection.
THE EVIDENCE
The Examiner relies on the following as evidence:
Jagadish et al.
Carmel et al.
US 2009/0271370 Al
US 2010/0281035 Al
THE REJECTIONS
Oct. 29, 2009
Nov. 4, 2010
Claims 1-5, 7-12, and 24--33 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 8-12.
Claims 1-5, 7-12, and 24--33 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Jagadish and Carmel. Final Act. 12-27.
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CLAIM AMENDMENTS
After the Final Rejection, Appellants proposed amendments to claims
5 and 32. 3 See Response to Final Office Action under 37 C.F.R. § 1.116,
filed Dec. 10, 2015. In particular, Appellants proposed adding (1) the word
"user" to claim 5 after each time the word "candidate" appears and (2) the
word "non-transitory" to claim 32 before the phrase "computer-readable
storage medium" in the preamble. Id. at 3, 9. The Examiner did not enter
these amendments. See Adv. Act. In Appendix A of Appellants' Brief,
claims 5 and 32, however, contain the amendments that were denied entry.
See App. Br. 28, 34. For the purpose of this appeal, we will use the last
entered amendment under 3 7 C.F .R. § 1.121 ( c }-i.e., the claims filed on
May 13, 2015.
THE REJECTION UNDER 35 U.S.C. § 101
I
The Supreme Court's two-step framework guides our analysis of
subject-matter eligibility under§ 101. See Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355 (2014). According to step one, "[w]e must first
determine whether the claims at issue are directed to a patent-ineligible
concept," such as an abstract idea. Id. Alice step one "calls upon us to look
at the 'focus of the claimed advance over the prior art' to determine if the
claim's 'character as a whole' is directed to excluded subject matter."
3 The Examiner objects to claim 5 because the term "the candidate" lacks an
antecedent basis in the claim. Final Act. 8. The Examiner has not indicated
that this objection has been withdrawn.
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Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016).
The Examiner concludes that independent claims 1, 24, and 32 are
directed to an abstract idea. Final Act. 8. The Examiner explains that the
claims are similar to those involving collecting and analyzing information
that have previously been held by the Federal Circuit to be abstract. Id.
(citing Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d
1344 (Fed. Cir. 2014) and other cases); see also Ans. 3--4. We agree.
According to the Specification, the invention suggests potential
contacts to the user based on the potential friendship's value. See, e.g.,
Spec. ,r 19. The invention's objectives include helping users make
meaningful and efficient connections with new contacts and improving user
engagement. Id. ,r,r 2, 4; accord App. Br. 12; Reply Br. 2-3 ( discussing user
engagement). The claims' focus is on selecting certain information (i.e., "a
value of a friendship to the user, a value of the friendship to the candidate
user, or a probability of the friendship resulting between the user and the
candidate user") and analyzing the information using mathematical
techniques (i.e., the recited difference calculation).
Similarly, the Federal Circuit has held that "collecting information,
analyzing it, and displaying certain results of the collection and analysis" is
an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In fact, Appellants' claims 1, 24, and 32 do not even
recite displaying or otherwise using the calculation. Rather, the claimed
invention merely collects the information and computes a difference.
Yet "[i]nformation as such is an intangible." Id. The Federal Circuit
has "treated collecting information, including when limited to particular
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content (which does not change its character as information), as within the
realm of abstract ideas." Id. ( citing Digitech, 7 58 F .3d at 13 51 and other
cases). Thus, contrary to Appellants' arguments (App. Br. 11-12), limiting
the information to particular content-in this case, social-network data-
does not make the claims any less abstract. And "analyzing information ...
by mathematical algorithms, without more," as we have here, is abstract.
Id. at 1354; see also Digitech, 758 F.3d at 1351 (explaining that
"mathematical algorithms to manipulate existing information to generate
additional information" is abstract), cited in Final Act. 8.
Appellants argue that the claims are rooted in technology.
App. Br. 7-9. Appellants explain that the claimed features address a
problem that did not exist in the pre-Internet world: determining when to
provide users with social-media content. Id. at 9-10. According to
Appellants, the claims minimize computing resources and solve a
technology-based problem, like the claims in McRO, Inc. v. Bandai Namco
Games America, 837 F.3d 1299 (Fed. Cir. 2016). Reply Br. 4---6.
We disagree that the claims are similar to those in McRO. The claims
in McRO recited a specific way to improve three-dimensional animation.
837 F.3d at 1315. By contrast, Appellants' claims are broadly functional
and result-oriented. For example, the first step broadly and abstractly recites
determining a friendship value without claiming any particular technology-
rooted solution for doing so. The recited determination is only limited by
the data collected and processed. The second limitation in the claims
computes a difference using a "function or mapping," but neither is
expressly claimed. Although Appellants argue the invention minimizes
computing resources (Reply Br. 2--4) and requires "sophisticated server
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software" (App. Br. 12), these technical details are unclaimed. In this way,
Appellants' claims are unlike those in McRO because the claims here are
"directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." McRO, 837 F.3d at 1314.
On this record, we are unpersuaded that the Examiner erred in
concluding that claims 1, 24, and 32 are directed to an abstract idea.
II
Because the claims are "directed to an abstract idea," we consider the
claim limitations "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 Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79
(2012)). The Supreme Court has described this analysis "as a search for an
'inventive concept."' Alice, 134 S. Ct. at 2355.
Appellants argue that the invention provides an Internet-centric
solution rooted in computer technology. App. Br. 10. In this regard,
Appellants explain that the claimed system is rooted in technology like the
system in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). App. Br. 9-12. To support this contention, Appellants point to the
limitations of determining a friendship value and computing a difference.
Id. at 9-10.
Yet all the limitations argued by Appellants (id.) are themselves
abstract as identified in Alice step one. Accord Adv. Act. 2 ("[The] claims
do nothing more than perform steps comparable to [the identified] abstract
ideas."). Appellants argue that the problem only arises in the Internet-based
technology of social networks. App. Br. 10-12. But as discussed above,
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limiting the information to a particular content----e.g., social networking-
does not make the claim less abstract. The "inventive concept" must be
more than the abstract idea itself. Mayo, 566 U.S. at 72-73 (requiring that
"a process that focuses upon the use of a natural law also contain other
elements or a combination of elements, sometimes referred to as an
'inventive concept,' sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the natural law itself') ( emphasis
added).
Apart from the abstract idea itself, claims 24 and 32 only recite a
processor, memory, and a computer-readable storage medium. To be sure,
these devices are physical. But these limitations do not require improved
devices that Appellants claim to have invented. Ans. 6. According to the
Specification, the recited processor covers a general-purpose computing
device that executes the instructions. Spec. ,r 106, cited in Final Act. 11.
The memory and medium can be "any suitable media" for storing those
instructions. Spec. ,r 106. As the Examiner points out (Adv. Act. 2), the
Supreme Court has ruled that such use of general-purpose computing
devices is insufficient under Alice step two. See Alice, 134 S. Ct. at 2358
("[T]he 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."
(citing Mayo, 566 U.S. at 66)).
In summary, nothing in the claim supplies the "inventive concept,"
considering the limitations individually or in combination. Rather, the
limitations themselves fall squarely in the abstract-idea realm.
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Appellants argue that the claimed features are not well-known or
conventional. App. Br. 12-15. According to Appellants, the claims include
features beyond sending and receiving data, such as computing a difference
in engagement levels and using a function to project engagement levels. Id.
at 14.
Appellants' purported improvement is to the mathematical
calculations, not the computers themselves. We note that the Federal Circuit
has recognized that "an invocation of already-available computers that are
not themselves plausibly asserted to be an advance, for use in carrying out
improved mathematical calculations, amounts to a recitation of what is
'well-understood, routine, [and] conventional."' SAP Am., Inc. v. InvestPic,
LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing
Mayo, 566 U.S. at 73). Furthermore, Appellants' claims recite the
mathematical calculations at a high level of abstraction. In essence, the
claims are directed to the results of the functions, instead of the
mathematical calculations themselves.
As discussed above, the limitations in claims 1, 24, and 32, apart from
the abstract idea itself, do not amount to anything more than mere
instructions to implement the abstract concept on a computer. Therefore,
whether or not the Examiner is correct in finding that the claims contain
additional well-understood, routine, and conventional activities previously
known to the industry (Final Act. 10), such reasoning is cumulative.
Therefore, Appellants have not persuaded us of error in the rejection
of independent claims 1, 24, and 32 under 35 U.S.C. § 101, and we sustain
the Examiner's rejection of those claims.
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The Dependent Claims
Appellants' arguments for dependent claims 2, 5, 7-12, and 25-31
raise the same issues as those that we have addressed in discussing
independent claims 1 and 24 above. See App. Br. 15-18. For example, after
quoting claims 2, 5, and 7-12, Appellants argue that the claims "introduce
Internet-centric solutions, necessarily rooted in computer technology."
Id. at 17. Appellants repeat the argument that, under DDR Holdings, the
claims are not abstract and amount to significantly more than the abstract
idea itself. Id. Appellants reiterate that the claims improve a technical field
and are not generic or conventional implementations. Id. We find those
arguments unpersuasive for the reasons previously discussed.
Appellants further argue that the dependent claims provide details on
how to calculate the engagement level, which are neither included in the
abstract idea nor extra-solution activities. Id. at 17-18. But apart from
quoting the claims, Appellants provide little discussion of specific
limitations in connection with this argument. See id. at 15-18. Further,
although we agree that certain of the dependent claims further define the
calculations' basis (e.g., claims 2, 5, and 8-12), those limitations do not
change the claims' focus: analyzing the information using mathematical
techniques, which is abstract as discussed in our Alice step-one analysis
above. By limiting the basis for the calculations, the dependent claims only
further define the abstract idea itself but do not add anything more. So,
under Alice step two, the only alleged "inventive concept" is an abstract
idea.
Accordingly, we sustain the Examiner's rejection of dependent claims
2, 5, 7-12, and 25-31.
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Claim 32
Claim 32 recites, in part, "[a] computer-readable storage medium
storing instructions that" cause the system to perform a method similar to the
one recited in claim 1. 4 The Examiner further rejects claim 32 under
35 U.S.C. § 101 as directed to non-statutory subject mater: a transitory
propagating signal per se. Final Act. 11-12. Appellants do not provide a
substantive argument regarding this rejection. See App. Br.; see also
Reply Br.
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the produced arguments and
evidence. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential). In the absence of such an argument here, we sustain the
Examiner's rejection of claim 32. See id. at 1075-76 (explaining that if
Appellants fail "to present arguments on a particular issue----or, more
broadly, on a particular rejection-the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection"); see also
MPEP § 1205.02 (9th ed. Rev. 08.2017, Jan. 2018) ("If a ground of rejection
stated by the examiner is not addressed in the [Appellants'] brief,
[Appellants] have waived any challenge to that ground of rejection and the
Board may summarily sustain it." (citing 37 C.F.R. § 4I.39(a)(l))).
4 As discussed above, Appellants proposed the language "non-transitory" in
an amendment that was not entered. See Adv. Act.
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THE OBVIOUSNESS REJECTION
The Examiner's Findings
The Examiner finds that Jagadish teaches every limitation recited in
claim 1 except for the computed difference. Final Act. 12-14. In
concluding that claim 1 would have been obvious, the Examiner cites
Carmel as teaching this feature. Id. at 13. In particular, the Examiner finds
that Carmel computes user engagement by determining the rate at which a
user updates a webpage. Id. ( citing Carmel ,r,r 110, 123). According to the
Examiner, Carmel computes the difference between a user's update rate and
a predicted user update rate. Final Act. 13; Ans. 8-9.
Appellants ' Contentions
Appellants argue that Carmel does not teach computing a difference
between a user's current and projected engagement levels. App. Br. 19-20;
Reply Br. 6-7. According to Appellants, Carmel merely predicts how often
the user is likely to update a webpage using the frequency that the user
updates another webpage. App. Br. 20 (citing Carmel ,r,r 87, 95-103, 106-
110, 123). Appellants also dispute whether these page updates correspond to
the recited engagement level. App. Br. 20.
Analysis
The disputed limitation of claim 1 recites, in part, "computing a
difference between a current engagement level of the user with a social
network and a projected engagement level of the user with the social
network" ( emphasis added).
The Examiner finds that Carmel's update rate for user u corresponds
to the recited "current engagement level." Final Act. 13 ( citing
Carmel ,r 11 O); Ans. 8-9. The Examiner further finds that Carmel's virtual
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predicted update rate corresponds to the recited "projected engagement
level." Final Act. 13 (citing Carmel ,r 123); Ans. 8-9. The Examiner,
however, has not shown that Carmel computes a difference between these
values, as Appellants argue (App. Br. 19-20; Reply Br. 6).
In particular, Carmel assumes that a set of users U update a set of
pages P over time. Carmel ,r 105. Carmel measures the update rate of page
p for each user u in Ut(p ). Id. ,r 110. Carmel expresses the general update
rate ofp as Ap(t) = LuEUi(P)Ap u(t). Id. The Examiner finds that a user's
update rate corresponds to the recited current engagement level.
Final Act. 13 (citing Carmel ,r 110).
Even assuming, without deciding, Carmel's update rates are
engagement levels, the Examiner has not shown that Carmel computes a
difference between the current update rate and a projected update rate. See
Final Act. 13. According to the Examiner, Carmel teaches such a difference
in paragraph 123. Id.; Ans. 8. But there, Carmel provides an expression that
uses the similarity between pages to calculate the virtual predicted update
,
rate: LprEPc(u') A~, (t) X simu',t (p, p'). Carmel ,r 123. Specifically, in this
expression, users u' are those that have updated pages p' in Pt(u ') up to time
,
t. Id. ,r 122. The update rate of u' to page p' is A~, (t). Id. So, Carmel
considers the similarity between page p and other pages p' in Pt(u ') that have
some relatedness to user u. Id. ,r 121. At most, the Carmel's similarity
calculation suggests a difference between pages-not rates. See id. ,r 123.
Therefore, contrary to the Examiner's finding (Final Act. 13; Ans. 8), the
cited summation does not compute the difference between Carmel's update
rate and the virtual predicted update rate. Accord App. Br. 19-20.
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Accordingly, we do not sustain the Examiner's rejection of claim 1
and independent claims 24 and 32, which also recite the computing a
difference between a current and projected engagement level. For similar
reasons, we do not sustain the Examiner's rejection of 2-5, 7-12, 25-31, and
33, which depend from claims 1 or 24.
DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's rejection of claims 1-5, 7-
12, and 24--33 is affirmed. See 37 C.F.R. § 4I.50(a)(l).
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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