Ex Parte Tseng et al

Patent Trial and Appeal Board

Dec 11, 2018

12977027 (P.T.A.B. Dec. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/977,027 12/22/2010
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
12/13/2018
FIRST NAMED INVENTOR
Erick Tseng
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.
26295-17318 8537
EXAMINER
HARPER, ELIY AH STONE
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
12/13/2018 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 ERICK TSENG and DAVID BRAGINAKY
Appeal2018-005708
Application 12/977,027 1
Technology Center 2100
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1, 2, 4--14, 16, and 17, which are all claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is Facebook, Inc. App.
Br. 1.
Appeal2018-005708
Application 12/977 ,027
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate to
"providing relevant notifications for a user of a social networking system
based on user location and social information." Spec. ,r 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method comprising:
maintaining information about a first user in a social networking
system, the information comprising one or more connections
established between the first user and one or more other users of
the social networking system;
receiving a first location of the first user from a first mobile
device at a first time point;
receiving a second location of a second user of the social
networking system from a second mobile device at a second time
point, the second user having a connection established with the
first user in the social network system;
determining that the first user and the second user are in close
proximity at a current time point by comparing the first location
at the first time point with the second location at the second time
point, the first time point and the second time point within a
predetermined threshold of the current time point;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Nov. 15, 2017); ReplyBrief("ReplyBr.," filed May 17, 2018); Examiner's
(Subsequent) Answer ("Ans.," mailed April 11, 2018); Non-Final Office
Action ("Non-Final Act.," mailed June 15, 2017); and the original
Specification ("Spec.," filed Dec. 22, 2010).
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Application 12/977 ,027
determining one or more content objects of which assigned
object locations match the first location and the second location;
determining a relevance score for each of the one or more content
objects to the first user, the determining comprising:
determining a location value that represents a proximity of
the content object at the current time point to the first
location;
determining an interest value for the content object, the
interest value based on whether a category assigned to the
content object is included in the one or more categories
associated with the interest information for the second
user;
combining the location value and the interest value to determine
a combined score; and
modifying the combined score by a weighting factor to
determine the relevance score, the weighting factor indicating a
likelihood of the first user sharing interest in the content item
with the second user;
selecting a set of content objects from the one or more content objects,
each selected content object associated with a relevance score greater
than a threshold;
ranking the set of content objects based at least in part on their
relevance scores; and
providing the ranked set of content objects to a notification
controller for transmission to the first user while the first user and
the second user are determined to be in close proximity at the
current time point.
Rejection on Appeal
Claims 1, 2, 4--14, 16, and 17 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Non-Final Act. 2.
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Application 12/977 ,027
ISSUE
Appellants argue (App. Br. 7-14; Reply Br. 2-9) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellants with respect
to claims 1, 2, 4--14, 16, and 17 for the specific reasons discussed below.
We highlight and address specific findings and arguments for emphasis as
follows.
Section 101 of the Patent Act provides " [ w ]hoever 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. That provision '"contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
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Application 12/977 ,027
patentable. "' Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354
(2014) (quoting Ass'nfor Molecular Pathology v. Myriad Genetics, Inc., 133
S. Ct. 2107, 2116 (2013)).
The Federal Circuit has described the Alice step one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-1336 (Fed. Cir. 2016); Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
According to the Federal Circuit, "[t]he second step of the Alice test is
satisfied when the claim limitations 'involve more than performance of 'well-
understood, routine, [and] conventional activities previously known to the
industry."' Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018)
(quoting Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat.
Ass'n, 776 F.3d 1343, 1347-1348 (Fed. Cir. 2014) and Alice, 134 S. Ct.
at 2359).
In this case, the Examiner found:
The instantly claimed invention collects information about a
user and content objects analyzes the information to produce
rankings for content object and displays for display the results
of the analysis of the content object. The mere collecting of
information, analyzing of the information and
displaying/storing certain results of the collection and analysis
do not amount to significantly more than the judicial exception.
All of these computer functions are well understood routine
conventional activities previously known to the industry,
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Application 12/977 ,027
therefore each step does no more than require a generic
computer to perform generic computer functions.
Non-Final Act. 5---6 (emphasis added).
However, in the Reply Brief, Appellants argue the Examiner's
analysis was deficient with respect to Step two of Alice:
[A] trio of recent cases issued after filing of the Brief has made
clear that the step 2B inquiry for "well-understood, routine, and
conventional" is a factual question. See Berkheimer v. HP Inc.,
Case No. 2017-1437 (Fed. Cir. 2018) (reversing summary
judgement of claims as ineligible because question of fact
remained to determine conventionality), Aatrix v. Green Shades
Software, Inc., Case No. 2017-1452 (Fed. Cir. 2018) (reversing
motion to dismiss and holding abuse of discretion to reject
amended complaint that included factual support of
unconventionality), Exergen Corp. v. Kaz USA, Inc., Case Nos.
2016-2315, 2016-2341 (Fed. Cir. 2018) ("[t]here are many
obscure references that nonetheless qualify as prior art ... [t]his
type of evidence ... would not suffice to establish that
something is 'well-understood, routine, and conventional
activity.")
Reply Br. 8.
In particular, Appellants point out the Examiner has not provided
evidence of the well-known, routine, and conventional nature of the claimed
elements:
The Answer have not provided any factual basis for the
conclusion that the additional elements in the claims are well-
understood, routine, or conventional. In particular, the initially-
selected content items, the method of determining relevance
based on location value, interest value, and weighing factor, and
providing the content items for transmission "while the first
user and the second user are determined to be in close
proximity" have not been demonstrated by the examiner to be
conventional activity. Unlike EPG, the presented claims do
recite more than the generic concept of "analyzing" - instead,
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Application 12/977 ,027
the claimed particular way of selecting and presenting content
items were not demonstrated by the examiner to be
conventional and the rejection thus fails to provide a sufficient
factual basis.
Reply Br. 9.
We note Appellants' Appeal Brief was filed on Nov. 15, 2017, and
Appellants' Reply Brief was filed on May 17, 2018. In reviewing the
record, we recognize that Appellants had no opportunity to argue
Berkheimer until after it was decided by the Federal Circuit on
February 8, 2018. Thus, Appellants' first opportunity to argue Berkheimer
as an intervening authority was in the Reply Brief. In the Reply Brief (9),
Appellants also address the changes to patent examination practice that were
set forth in the April 19, 2018 USPTO Berkheimer Memorandum ("The
Examiner has not sufficiently shown a conventional application of an
abstract idea 'unless the examiner finds, and expressly supports a rejection
in writing' with one of a set of enumerated factual bas[ e ]s. Berkheimer
Memo, p. 3.").
Accordingly, Appellants' new arguments citing Berkheimer (881 F.3d
at 1369) and the USPTO Berkheimer Memorandum as intervening
authorities (Reply Brief 8-9) are permitted under our procedural rule, 37
C.F.R. § 4I.52(a)(2) ("Appellant may present a new argument based upon a
recent relevant decision of either the Board or a Federal Court.").
Based upon our review of the record, and as guided by the mandatory
changes to patent examination practice, as set forth in USPTO Berkheimer
Memorandum, we are persuaded by and agree with Appellants' argument
that the Examiner has not set forth a sufficient evidentiary basis to find the
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Application 12/977 ,027
additional element ( or combination of elements) of the independent claims
is/are well-understood, routine, or conventional.
On this record, we find the Examiner provides no evidentiary support
to show that any of the claimed method steps recited in independent claims 1
and 14 were well-understood, routine, and conventional Therefore, we
agree with Appellants that the Examiner's determination is not in accord
with our binding case law because, as Berkheimer held, 11 [ w ]hether
something is well-understood, routine, and conventional to a skilled artisan
at the time of the patent is a factual determination. 11 Berkheimer, 881 F .3d
at 1369.
Here, the Examiner has not provided any of the four types of factual
evidence required under the USPTO Berkheimer Memorandum.
Accordingly, we are constrained on this record to reverse the Examiner's
rejection of claims 1, 2, 4--14, 16, and 17.
CONCLUSION
The Examiner erred with respect to patent-ineligible subject matter
Rejection of claims 1, 2, 4--14, 16, and 17 under 35 U.S.C. § 101, and we do
not sustain the rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1, 2, 4--14, 16,
and 17.
REVERSED
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