Ex Parte Shevelenko et al

Patent Trial and Appeal Board

Jul 31, 2018

13437823 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/437,823 04/02/2012
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
08/02/2018
FIRST NAMED INVENTOR
Dmitry Shevelenko
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.
26295-19700 1981
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
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 DMITRY SHEVELENKO, LOREN ALFRED CHENG,
YEGNASHANKAR P ARASURAM, CHRISTOPHER TRIOLO,
RESHMA KHILNANI, and EDWARD ZAGAT 1
Appeal2017-001536
Application 13/437,823
Technology Center 3600
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
JOYCE CRAIG, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-12, which are all the claims pending
in this application. Final Act. 1, 2. 2 We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
1 According to Appellants, the real party in interest is Facebook, Inc.
Appeal Br. 2.
2 We refer to Appellants' Specification ("Spec.") filed Apr. 2, 2012; Appeal
Brief ("Appeal Br.") filed June 2, 2016; and Reply Brief ("Reply Br.") filed
Nov. 8, 2016. We also refer to the Examiner's Final Office Action (Final
Appeal2017-001536
Application 13/437,823
Appellants 'Invention
The invention relates generally to "social networking," and
particularly to providing "social punch cards to users of a social networking
system." Spec. ,r 1. More particularly, the invention relates to methods of
maintaining a set of social punch cards utilizing a computer (processor). See
Spec. ,r,r 3---6; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A method comprising:
maintaining, by a processor, a set of social punch cards in
a social networking system, each social punch card in the set
describing an electronic count of punches associated with the
social punch card that have been performed by a plurality of
users, the social punch card including a definition of an action
that will credit the electronic count of punches, a target count of
punches for completing the social punch card, and a reward to be
provided to each user for reaching the target count of punches;
identifying a subject user of the social networking system
to join a punch card of the set;
generating, by the processor, a numeric affinity score for
each of the social punch cards of the set, by:
identifying users associated with each social punch
card,
determining an affinity coefficient of the identified
subject user for each of the users associated with the social punch
card based on previous interactions in the social networking
system between the identified subject user and the user
associated with the social punch card, and
Rejection) ("Final Act.") mailed Aug. 20, 2015, and Answer ("Ans.") mailed
Sept. 12, 2016.
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determining the numeric affinity score for the social
punch card based on the determined affinity coefficients for the
users associated with the social punch card;
selecting a social punch card from the set based on the
generated affinity scores;
associating the identified subject user with the selected
social punch card;
receiving information indicating that one or more of the
users associated with the social punch card have performed the
action;
crediting the count of punches on the social punch card
based on the actions performed; and
responsive to the target count of punches being reached for
the social punch card, providing, by the processor, the reward to
each user associated with the social punch card.
Rejections on Appeal
1. The Examiner rejects claims 1-12 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. The Examiner rejects claims 1 and 12 under pre-AIA 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement.
3. The Examiner rejects claims 1, 2, and 12 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Pacheco E Murta et al. (US
2011/0270617 Al, published Nov. 3, 2011) ("Pacheco E Murta"), Eldred et
al. (US 2006/0059040 Al, published Mar. 16, 2006) ("Eldred"), Joa et al.
(US 2011/0246272 Al, published Oct. 6, 2011) ("Joa"), Clyne (US
2011/0264497 Al, published Oct. 27, 2011), and Chudnovsky et al. (US
7,881,963 B2, issued Feb. 1, 2011) ("Chudnovsky").
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4. The Examiner rejects claim 3 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Pacheco E Murta, Eldred, Joa, Clyne,
Chudnovsky, and Looney et al. (US 2011/0208852 Al, published Aug. 25,
2011) ("Looney").
5. The Examiner rejects claims 4--7 under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Pacheco E Murta, Eldred, Joa, Clyne,
Chudnovsky, and Walker et al. (US 2003/0018530 Al, published Jan. 23,
2003) ("Walker").
6. The Examiner rejects claims 8, 9, and 11 under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Pacheco E Murta, Eldred,
Joa, Clyne, Chudnovsky, and Wilens (US 7,092,952 Bl, issued Aug. 15,
2006). 3
7. The Examiner rejects claims 1-12 under pre-AIA 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
ISSUES
Based upon our review of the record, Appellants' contentions, and the
Examiner's findings and conclusions, the issues before us are as follows:
3 The Examiner's ground of rejection lists Pacheco E Murta, Eldred, Joa, and
Clyne, but omits Chudnovsky. See Final Act. 22. The Examiner, however,
discusses Chudnovsky in the substantive rejection. See Final Act. 22.
Because this ground of rejection includes claims dependent from claim 1,
which is rejected over Pacheco E Murta, Eldred, Joa, Clyne, and
Chudnovsky (supra), and the Examiner discusses Chudnovsky (supra), we
find the Examiner's typographical error (omission) to be harmless and
correct the typographical error for clarity and consistency. We also note that
claim 10 is not included in this ground of rejection or any other prior art
rejection before us.
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1. Did the Examiner err in finding claims 1-12 were directed to
patent ineligible subject matter under 35 U.S.C. § 101?
2. Did the Examiner err in finding claims 1 and 12 failed to
comply with the enablement requirement under 35 U.S.C. § 112, first
paragraph?
3. Did the Examiner err in finding claims 1-12 failed to comply
with the written description requirement under 35 U.S.C. § 112, first
paragraph?
4. Did the Examiner err in finding that the combination of
Pacheco E Murta, Eldred, Joa, Clyne, and Chudnovsky collectively would
have taught or suggested:
determining an affinity coefficient of the identified subject
user for each of the users associated with the social punch card
based on previous interactions in the social networking system
between the identified subject user and the user associated with
the social punch card, and
determining the numeric affinity score for the social punch
card based on the determined affinity coefficients for the users
associated with the social punch card
as recited in Appellants' claim 1?
ANALYSIS
The 35 USC§ 101 Rejection of Claims 1-12
Appellants argue independent claim 1, independent claim 12, and
dependent claims 2-11 together as a group with respect to the § 101
rejection. See Appeal Br. 7-18.
The Examiner rejects claim 1 (and claims 2-12) as being directed to
patent-ineligible subject matter (see generally Final Act. 2--4; Ans. 4---6) in
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that the claimed invention "is directed to a judicial exception (i.e., ... an
abstract idea) without significantly more" because the claim is "directed to
maintaining social punch cards in a social networking system," which is "a
method of organizing human activity." Final Act. 4. The Examiner also
explains, the claims:
do not include additional elements that are sufficient to amount
to significantly more that the judicial exception because the
claims do not recite an improvement to another technology or
technical field, nor do they recite an improvement to the
functioning of the computer itself. The claims 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
Final Act. 4. Additionally, the Examiner explains how the limitations of
claim 1 are directed to a method of organizing human activity, analogous to
the claims found patent ineligible (as abstract) in Planet Bingo. 4 See Final
Act. 2-3.
Specifically, the Examiner explains that "[a]ll of the steps [(of the
method of claim 1 )] are steps for maintaining social punch cards that could
be executed mentally or on paper." The "claims recite an abstract idea[,]
. . . . [g]athering data and manipulating data using a computer processor is
well known and routine." Further, the "invention is not rooted in computer
technology-social networking exists outside of computers. Graphs,
including social graphs, existed long before computers and now popular
social networking websites." Final Act. 3.
4 Planet Bingo LLC v. VKGS LLC, 576 Fed. Appx. 1005, 1006 (Fed. Cir.
2014) (determining that claims to a computer-aided management system for
bingo games were directed to an abstract idea).
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Appellants contend that the claims are not directed to an improper
judicial exception or abstract idea because: (1) "the Examiner does not
explain why maintaining social punch cards is a method of organizing
human activity or would otherwise qualify as an abstract idea" (Appeal Br.
10), and the Examiner "neglect[ ed] to compare the proposed abstract idea
with abstract ideas identified by the courts and explain how the proposed
concept is similar to those found by the courts to be exceptions to the
eligible categories specified in section 101" (Appeal Br. 10; see Appeal Br.
10-12); (2) the Examiner's "definition of the alleged abstract idea is
problematic" because the identified purportedly abstract idea-maintaining
social punch cards in a social networking system-"cannot be an abstract
idea when it encompasses only one specific method for encouraging
behavior from users when there are many other ways of doing so" (Ans. 13);
(3) the Examiner misconstrues the claim and proposes an overly broad
concept as the purported abstract idea to which the claim is directed in that
the claim "contain[ s] numerous limitations that are not directed to
'maintaining a social punch card in a social networking system"' (Appeal
Br. 15; see Appeal Br. 14--15); and ( 4) the claim recites significantly more
than the proposed abstract idea in that the claim "limitations are not merely
generic steps in the process of 'maintaining social punch cards in a social
networking system[,]'" ( Appeal Br. 16) but instead "specify a particular and
unconventional method of assigning a user to a social punch card, namely by
determining a numeric affinity score for the social punch card based on the
affinity coefficients" (Appeal Br. 16-17; see Appeal Br. 16-18). See Appeal
Br. 7-18; Reply Br. 7-14.
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Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77-80 (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, 134 S. Ct.
at 2355. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. For example, abstract ideas include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If
the claims are not directed to an abstract idea, 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 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 78, 79). This second step is described as "a search for an "'inventive
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concept"'-i.e., an element or combination of elements that is ' ...
significantly more than ... the [ineligible concept] itself."' Id. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
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, 566 U.S. at 71. 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
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Alice Step 1 Analysis
Turning to the first step of the eligibility analysis, "[ t ]he first step in
the Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfzsh, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting
O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)). "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."
McRO, 837 F.3d at 1314.
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Instead of using a fixed definition of an abstract idea and analyzing
how claims fit (or do not fit) within the definition, "the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen - what prior cases were about,
and which way they were decided." Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Electric Power Group.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)). As part of
this inquiry, we must "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." Affinity Labs of Texas, LLC v. DirecTV, LLC, 838
F.3d 1253, 1257 (Fed. Cir. 2016).
The Examiner determines claim 1 is directed to the abstract idea of
"maintaining social punch cards in a social networking system," which is "a
method of organizing human activity." Final Act. 4. The Examiner also
finds the limitations of claim 1 are analogous to claims found patent
ineligible in Planet Bingo. See Final Act. 2-3. The Examiner further
counters Appellants' arguments concerning the Examiner's prima facie case
and the allegedly improper proposed abstract idea. See Ans. 4--5.
Conversely, Appellants attack the Examiner's findings of fact and legal
conclusions on numerous grounds (supra) without explaining why
Appellants' claims are not analogous to those in Planet Bingo or how the
claims are analogous to claims deemed not to be abstract by the courts. See
Appeal Br. 8-15; Reply Br. 7-14.
Initially, we agree that the Examiner's determination that Appellants'
claim 1 is directed to "maintaining social punch cards in a social networking
system," which is "a method of organizing human activity." Final Act. 4.
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We also agree that the claims are analogous to those in Planet Bingo. See
Final Act. 2-3.
With respect to the proposed abstract concept, although the Examiner
could have characterized Appellants' claim 1 with more detail, for example,
as being directed to maintaining social punch cards in a social networking
system including generating a numeric affinity score for each of the social
punch cards and determining an affinity coefficient for each of the users
associated with each social punch card (see Appeal Br. 15), such a
characterization does not change the patent-eligibility analysis. See Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir. 2016) ("An
abstract idea can generally be described at different levels of abstraction.").
The inclusion of additional limitations (resulting in a more detailed
characterization) proffered by Appellants (see Appeal Br. 14--15) still
amounts to organizing human activity and data collection, analysis, and
manipulation (as discussed infra).
With respect to the Examiner's prima facie case, as explained in our
Frye decision, the Examiner has the initial burden-"to set forth the basis
for any rejection so as to put the patent applicant on notice of the reasons
why the applicant is not entitled to a patent on the claim scope that he
seeks-the so-called 'prima facie case."' Ex Parte Frye, 94 USPQ2d 1072,
107 5 (BP AI 2010) (Precedential). 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 the propriety of continuing [the]
prosecution of [the] application." See In re Jung, 637 F.3d 1356, 1363 (Fed.
Cir. 2011) ( alteration in original). It is well-established that the Board may
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affirm an Examiner's rejection so long as Appellants have had "a fair
opportunity to react to the thrust of the rejection." In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (quoting In re Kronig, 539 F.2d 1300, 1302---03
(CCPA 1976)) (internal quotation marks omitted). The Examiner explains
(supra) why the Appellants' claims are directed to ineligible subject matter,
and even analogizes claim 1 to the claims in Planet Bingo. We find the
Examiner has met the notice requirements of§ 132. Accordingly,
Appellants' contentions concerning the Examiner's prima facie case are
unpersuasive of Examiner error. Additionally, we note that Appellants
mischaracterize the Examiner's rejection and the relevant precedent. The
Examiner's rejection does not "summarily reject" or "simply conclude"
"without providing a rationale or citing to facts on the record" that the claim
is directed to "maintaining social punch cards in a social networking
system," which is "'a method for organizing human activity"' Appeal. Br. 7;
see Appeal Br. 8-11; Reply Br 14. Further, we are unaware of any
precedent requiring the Examiner to "identify any precedential opinions to
which the claimed subject matter was allegedly similar" (Appeal Br. 12).
See also Reply Br. 14.
The Examiner provides a summary of the relevant claim limitations
(see Final Act. 2-3), finds these limitations "are steps for maintaining social
punch cards that could be executed mentally or on paper," and explains that
such processes are "a method of organizing human activity" similar to the
claims of Planet Bingo. Ans. 2.
Here, Appellants' claim 1 relates to maintaining ( utilizing a processor)
a set of social punch cards in a social networking system, where the punch
cards are a (electronic) record of punches (punch counts). A user or users
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perform (credit) the punches based on the punch card holder performing an
action or fulfilling a requirement. The punch card includes a definition of an
action that will cause punches to be credited, punch count for completing the
punch card, and a reward for completing the punch card. See claim 1;
Appeal Br. 2; Spec. ,r,r 2, 3, 14, 50. In other words, maintaining data
structures, including a count, a definition of an action for crediting the count;
and a limit or threshold, in a social networking system.
The claim also relates to identifying a user of the social networking
system to associate with (join) a punch card; generating a numeric affinity
score (by an undisclosed algorithm) for each punch card based on an affinity
coefficient for each associated user, which in tum is based on previous
interactions in the social networking system with other users associated with
the social punch card; and selecting a social punch card based on the
generated affinity scores. See claim 1; Appeal Br. 2-3; Spec. ,r,r 14, 28, 33,
36, 48, 54, 56, 57. In other words, associating a user with a data structure
based on previous interactions within the social media system between a
user to be associated with a punch card and other users previously associated
with a punch card. In summary, associating a user with a data structure
(punch card) based on collected, analyzed, and manipulated data, which is
organizing information relating to human activity.
Therefore, the claims broadly recite collecting, analyzing, organizing,
and manipulating information (data) similar to known punch cards. See
Abstract; Spec. ,r,r 1-7, 13-17; Fig, 1. This is consistent with how
Appellants describe the claimed invention. See id.; Spec. ,r,r 60-62.
Accordingly, we agree with the Examiner's summary of the claim
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limitations (for the collection, analysis, organization, and manipulation of
punch card related data and social media information) as being directed to
maintaining social punch cards in a social networking system.
Contrary to Appellants' assertions (supra), the present claims are
directed to an abstract idea, in that the instant claims are analogous to a
number of cases in which courts have identified similar claims as
encompassing abstract ideas. See Final Act. 2-3; Ans. 4--5 ( discussed
supra).
Our reviewing court has held that abstract ideas include gathering,
analyzing, organizing, and displaying information. See Electric Power
Group, 830 F.3d at 1354 (finding "gathering and analyzing information of a
specified content, then displaying the results," to be directed to an abstract
idea). Similarly, our reviewing court has held that abstract ideas include
gathering, analyzing, organizing, and storing information. See Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n., 776
F.3d 1343, 1345, 1347 (Fed. Cir. 2014) (finding the "claims generally recite
... recognizing specific information from the extracted data, and ... storing
that information in a memory" (id. at 1345) and that the "claims are drawn to
the basic concept of data recognition and storage" (id. at 134 7) ). Also,
collecting, analyzing, organizing, and manipulating information has been
found to be a collection of abstract ideas. See Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC., 874 F.3d 1329, 1337-38 (Fed. Cir. 2017)
(finding claims directed to the functional results of accumulating,
converting, and monitoring records manipulate data "but fail[] to do so in a
non-abstract way" (id. at 1338)); Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (holding that the claimed
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invention is directed to the abstract idea of "collecting, displaying, and
manipulating data of particular documents"); Fair Warning IP, LLC v. Iatric
Systems, Inc., 839 F.3d 1089, 1093-95 (Fed. Cir. 2016) (finding the claims
were directed to a combination of abstract ideas including collecting and
analyzing information and utilizing rules to determine fraud).
Here, the collection and analysis of punch card information and social
media information is similar to the abstract idea of collecting, analyzing,
organizing, and manipulating information discussed in Electric Power
Group., Content Extraction, Two-Way Media, Intellectual Ventures I, and
Fair Warning. Accordingly, we agree with the Examiner that the claims are
directed to an abstract idea of collecting, analyzing, organizing, and
manipulating information.
We also agree with the Examiner that the steps recited in claim 1
could be "performed mentally or on paper" similar to claims in Planet
Bingo. Ans. 4--5. Claim 1, as explained supra, describes maintaining punch
cards ( data structures), including a count, a definition of an action for
crediting the count, and a limit or threshold similar to well-known physical
punch cards. The claim also includes additional limitations describing
associating a user with a punch card based on affinity-previous interactions
within the social media system between a user to be associated with a punch
card and other users previously associated with a punch card. Although the
affinity is determined utilizing a processor based on collected and analyzed
data, human behavior also makes associations based on familiarity, affinity,
and social interactions.
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In that regard, our reviewing court has held that "analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category." Elec. Power Grp., 830 F.3d at 1354; see also
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir.
2016) ("'Methods which can be performed entirely in the human mind are
unpatentable"' (id., quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)));
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson). "[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter." Bancorp Servs., LLC v. Sun
Life Assurance Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
Therefore, we find Appellants' arguments (Appeal Br. 13; Reply Br. 8-10)
unpersuasive and agree with the Examiner that a person could perform each
process (step or function) in Appellants' claim 1, either mentally, or using
pen and paper. Thus, we agree with the Examiner that Appellants' claims
are directed to an abstract idea of collecting, analyzing, and manipulating
information, which could be performed by purely mental processes.
Alice Step 2 Analysis
Having concluded Appellant's claims are directed to an abstract
concept under Alice's step 1 analysis, we next address whether the claims
add significantly more to the alleged abstract idea. As directed by our
reviewing Court, we search for an "'inventive concept' sufficient to
'transform the nature of the claim into a patent-eligible application."'
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McRO, 837 F.3d at 1312 (quoting Alice, 134 S. Ct. at 2355). The
implementation of the abstract idea involved must be "more than
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (alteration in original) ( quoting Alice, 134 S. Ct. at 2359). The "inventive
concept" "must be significantly more than the abstract idea itself, and cannot
simply be an instruction to implement or apply the abstract idea on a
computer." Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1349 (Fed. Cir. 2016).
Here, the Examiner found that Appellants' claims do not add
significantly more. See Final Act. 2--4; Ans. 5---6. Appellants, on the other
hand, contend that the Examiner's analysis was faulty, in that "[n]one of the
claim elements are similar in generality to the functions" (Appeal Br. 17)
identified as well-understood, routine, and conventional activities by the
USPTO, and "the claim, as a whole, is not a generic computer
implementation of 'maintaining social punch cards' but provide[ s] an
innovative application of punch cards in a social networking system"
(Appeal Br. 18). See Appeal Br. 15-18.
Appellants fail to persuade us of error in the Examiner's rejection
with respect to the second Alice step. Here Appellants repeat the limitations
of claim I-asserting that the limitations are not "generic steps in the
process" but instead "specify a particular and unconventional method of
assigning a user to a social punch card" (Appeal Br. 16}-but do not explain
why these data analysis and manipulation functions are more than well-
understood, routine, and conventional activities previously known in social
media.
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To the extent Appellants' arguments might be interpreted as invoking
DDR Holdings (see Appeal Br. 15-18}-in that the instant claims improve
the operation of a computer system-we disagree. In DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the court held that a claim
may amount to more than an abstract idea recited in the claims when it
addresses and solves problems only encountered with computer technology
and online transactions, e.g., by providing (serving) a composite web page
rather than adhering to the routine, conventional functioning of Internet
hyperlink protocol. See DDR Holdings, 773 F.3d at 1257-59. In contrast,
claim 1 performs a process of collecting, analyzing and manipulating
information, utilizing conventional computer networks and systems. See
Spec. ,r,r 60-62; Fig 1. As we previously explained, the instant claims are
more akin to the claims for analyzing and manipulating information found to
be abstract in Electric Power Group, 830 F.3d at 1353.
We agree with the Examiner that the additional limitations, separately,
or as an ordered combination, do not provide meaningful limitations (i.e., do
not add significantly more) to transform the abstract idea into a patent
eligible application. See e.g., Final Act. 2--4; Ans. 5-6. Indeed, the claim
merely recites collecting, analyzing, organizing, and manipulating
information (data) similar to known punch cards using social media affinity
measurements to associate users with punch cards. See Abstract; Spec.
,r,r 1-7, 13-17; Fig, 1. Such steps are all routine and conventional and well-
understood computer functions of a general processor. The Specification
supports this view in discussing the processes implemented in software
which operates on generic computers to perform the recited data
manipulation steps. See Spec. ,r,r 60-62. Such conventional computer
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processes "do not alone transform an otherwise abstract idea into patent-
eligible subject matter." FairWarning IP, 839 F.3d at 1096 (citing DDR
Holdings, 773 F.3d at 1256). In addition, Appellants' own arguments (see
Appeal Br. 6-7 (discussing US 12/978,265)) support that social media
affinity measurements are known and well-understood:
Since a measure of affinity can reflect a user's interest in "other
users, content, actions, advertisements, or any other objects in the
social networking system," the measure of affinity from U.S.
Application No. 12/978,265 can be used as either the claimed
affinity coefficients or the claimed affinity scores.
Appeal Br. 6.
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner's rejection under§ 101 of independent claims 1 and 12, and
dependent claims 2-11, which were not argued separately.
The Enablement Rejection of Claims 1 and 12
The Examiner rejects claims 1 and 12 as failing to comply with the
enablement requirement. See Final Act. 4--5; Ans. 3--4. Appellants contend
that their Specification, as originally filed, supports the disputed claim
language. See Appeal Br. 5-7; Reply Br. 2-5. For example, Appellants
contend that the recited "affinity score" and "affinity coefficients" in claim 1
are described in the originally filed Specification. App. Br. 5---6 ( citing, e.g.,
Spec. ,r,r 28, 33, and 56).
Appellants also discuss at length US 12/978,265. See Appeal Br. 6-7;
Reply Br. 4--5. It is unclear how US 12/978,265 is related to the present
application. To the extent Appellants incorporate US 12/978,265 as
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knowledge within the skill of one skilled in the art, we need not (and do not)
address the disclosures of US 12/978,265.
We agree with Appellants. Appellants' Specification discusses the
disputed language and its functionality. See Appeal Br. 5-7; Reply Br. 2-5.
Accordingly, Appellants persuasively argue that the Specification describes,
supports, and enables the disputed language. The Examiner, on the other
hand, merely states "[i]t is unclear how the determinations are made"
because "[ n Jo algorithm or formula is provided." Final Act. 5. The
Examiner appears to conflate § 112, first paragraph, enablement analysis
with§ 112, first paragraph, written description analysis. Therefore, the
Examiner has not clearly articulated either a§ 112, first paragraph,
enablement rejection or a§ 112, first paragraph, written description
rejection. Consequently, we are constrained by the record before us to find
that the Examiner erred in rejecting claims 1 and 12 as failing to comply
with the enablement requirement. Accordingly, we reverse the Examiner's
§ 112, first paragraph, rejection of claims 1 and 12.
The Written Description Rejection of Claims 1-6 and 13-21
The Examiner rejects claims 1-12 as failing to comply with the
written description requirement. See Ans. 2-3. Appellants contend that at
least their Paragraph 33 of their Specification, as originally filed, supports
the disputed claim language. See Reply Br. 5-7. The cited portion of the
Specification describes "affinity," "affinity scores" and "affinity
coefficients" (Spec. ,r 33). Appellants also reiterate the discussion of US
12/978,265. See Reply Br. 6-7.
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We agree with Appellants. Appellants' Specification discusses the
disputed language and generally describes how the values are calculated.
See Reply Br. 5-7 (citing Spec. ,r 33); see also Fig. 4. Accordingly,
Appellants persuasively argue that the Specification describes and supports
the disputed language.
Consequently, we are constrained by the record before us to find that
the Examiner erred in rejecting claims 1-12 as failing to comply with the
written description requirement. We reverse the Examiner's written
description rejection of claims 1-12.
The 35 USC§ 103 Rejections
The Examiner rejects independent claim 1 (and independent claim 12)
as being obvious in view of Pacheco E Murta, Eldred, Joa, Clyne, and
Chudnovsky. See Final Act. 5-11; Ans. 6-7.
Appellants contend that Pacheco E Murta, Eldred, Joa, Clyne, and
Chudnovsky do not teach the disputed features of claim 1 ( or claim 12). See
Appeal Br. 18-21; Reply Br. 15-18. More specifically, Appellants contend
that Clyne and Pacheco E Murta fail to teach or suggest the affinity features
of claim !-"determining an affinity coefficient of the identified subject
user for each of the users associated with the social punch card" and
"determining the numeric affinity score for the social punch card based on
the determined affinity coefficients." Appeal Br. 19 ( quoting claim 1 ); see
Appeal Br. 19-21; Reply Br. 15-18.
The Examiner relies on Clyne to teach "social distance," which the
Examiner equates with both affinity coefficients (the "[s]ocial distance to
one user" (Final Act. 8)) and affinity score (the "[s]ocial distance between
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multiple users" (Final Act. 8)). See Final Act. 8-9 (citing Clyne ,r,r 84,273,
290).
We disagree with the Examiner's interpretation of claim 1, which fails
to give weight to, or properly consider, the terminology recited in the claim.
We find the Examiner-cited portions of Clyne, at best, generally describe an
undefined "social distance" term (see Clyne ,r 84) and incentives or benefits
(rewards) (see Clyne ,r,r 273, 290). Accordingly, we agree with Appellants
that Clyne and Pacheco E Murta fail to teach or suggest the affinity features
of claim 1. See Appeal Br. 19-21; Reply Br. 15-18.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding Pacheco E Murta, Eldred, Joa, Clyne, and
Chudnovsky teach the disputed features of Appellants' claim 1. Independent
claim 12 includes limitations of commensurate scope. Dependent claim 2
depends from and stands with independent claims 1. Accordingly, we do
not sustain the Examiner's obviousness rejection of claims 1, 2, and 12.
The Examiner rejects dependent claims 3-9 and 11 as obvious in view
of Pacheco E Murta, Eldred, Joa, Clyne, and Chudnovsky in combination
with Looney, Walker, or Wilens. See Final Act. 18-27. The Examiner does
not suggest, and we do not find, that the additional references (Looney,
Walker, or Wilens) cure the deficiencies of Pacheco E Murta and Clyne
(supra). Therefore, we reverse the Examiner's obviousness rejections of
dependent claims 3-9 and 11, for the same reasons set forth with respect to
claim 1 (supra).
CONCLUSIONS
Appellants have not shown that the Examiner erred in rejecting claims
1-12 under 35 U.S.C. § 101.
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Appellants have shown that the Examiner erred in rejecting claims 1
and 12 under 35 U.S.C. § 112, first paragraph (with respect to enablement).
Appellants have shown that the Examiner erred in rejecting claims
1-12 under 35 U.S.C. § 112, first paragraph (with respect to written
description).
Appellants have shown that the Examiner erred in rejecting claims
1-9, 11, and 12 under 35 U.S.C. § 103(a).
DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision rejecting claims
1-12 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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