Facebook, Inc.

Patent Trials and Appeals Board

Jan 24, 2022

2021002683 (P.T.A.B. Jan. 24, 2022)

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. 16/054,367 08/03/2018 Tsuwei Chen 079894.5442 7875 91230 7590 01/24/2022 BAKER BOTTS L.L.P./FACEBOOK INC. 1001 Page Mill Road Building One, Suite 200 Palo Alto, CA 94304-1007 EXAMINER VANDERHORST, MARIA VICTORIA ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 01/24/2022 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): Cal-PTOmail@bakerbotts.com ptomail1@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TSUWEI CHEN, QIZHEN RUAN, ROY KOONAMMAVE JOSE, SCOTT J. BRATSMAN, WILLIAM BULLOCK, AUDE HOFLEITNER, YOAV SHAPIRA, and MOSTAFA KEIKHA ____________ Appeal 2021-002683 Application 16/054,367 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and KENNETH G. SCHOPFER, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3-11, and 13-20. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Facebook, Inc. (Appeal Br. 3). Appeal 2021-002683 Application 16/054,367 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to using information gathered from a user’s interaction with a social-networking system to generate a prediction of a location of special relevance for a user (Spec., para. 4). Claim 1, reproduced below with the italics added, is representative of the subject matter on appeal. 1. A method comprising: by a computing system, analyzing social graph information associated with users of a social-networking system; by the computing system, developing feature vectors representing elements of the social graph information, wherein the elements of the social graph information are associated with locations that are of special relevance to the users of the social- networking system; by the computing system, applying the feature vectors to determine that the elements of the social graph information are relevant for predicting a location of special relevance associated with a user; by the computing system, receiving one or more data items from a networked device associated with a first user of the social- networking system; by the computing system, applying the feature vectors to each of the data items to determine relevance of the data item to a location of special relevance associated with the first user; by the computing system, assigning weight to each data item based on the determined relevance of the data items, respectively; by the computing system, processing each of the data items according to its assigned weight; by the computing system, forming a prediction, based on the processed data items, indicating the location of special relevance associated with the first user; by the computing system, determining an advertisement relevant to the first user based on the predicted location of special relevance; and Appeal 2021-002683 Application 16/054,367 3 by the computing system, transmitting the advertisement to the networked device associated with the first user. Appeal Br. 13 (Claims App.). THE REJECTIONS The following rejections are before us for review: 1. Claims 1, 3-11, and 13-20 are rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. 2. Claims 1, 3, 4, 9, 11, 13, 14, 18 and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Waupotitsch (US 2014/0052718 A1, published Feb. 20, 2014) and Liu (US 2019/0392396 A1, published Dec. 26, 2019). 3. Claims 5-8, 10, 15-17, and 19 are rejected under 35 U.S.C. § 103 as unpatentable over Waupotitsch, Liu, and Zifroni (US 2013/0097246 A1, published Apr. 18, 2013). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.2 ANALYSIS Rejection under 35 U.S.C. § 101 The Appellant argues that the rejection of claim 1 is improper because the claim is not directed to an abstract idea (Appeal Br. 7, 8, Reply Br. 2, 3). 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2021-002683 Application 16/054,367 4 The Appellant also argues that the claim integrates any judicial exception into a “practical application” (Appeal Br. 8, 9). The Appellant argues further that the claim is “significantly more” than the alleged abstract idea (Appeal Br. 7, 8; Reply Br. 2, 3). In contrast, the Examiner has determined that the rejection of record is proper (Final Act. 2-8; Ans. 3-9, 29-32). We agree with the Examiner. An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk . . . .”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and Appeal 2021-002683 Application 16/054,367 5 mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). In January 2019, the USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of Appeal 2021-002683 Application 16/054,367 6 organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application, i.e., evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (see Guidance, 84 Fed. Reg. at 54; see also MPEP § 2106.05(a)-(c), (e)-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The Specification at paragraph 4 states that the invention generally relates to generating a prediction of a location. Here, the Examiner has Appeal 2021-002683 Application 16/054,367 7 determined that claim 1 sets forth a method of organizing human activities and an abstract concept (Final Act. 3, 4, Ans. 4). We substantially agree with the Examiner. We determine that the claim sets forth the subject matter in italics above which describes the concept of: [1] “analyzing social graph information associated with users of a social-networking system”; [2] “developing feature vectors representing elements of the social graph information, wherein the elements of the social graph information are associated with locations that are of special relevance to the users of the social-networking system”; [3] “applying the feature vectors to determine that the elements of the social graph information are relevant for predicting a location of special relevance associated with a user”; [4] “receiving one or more data items from a networked device associated with a first user of the social-networking system”; [5] “applying the feature vectors to each of the data items to determine relevance of the data item to a location of special relevance associated with the first user”; [6] “assigning weight to each data item based on the determined relevance of the data items, respectively”; [7] “processing each of the data items according to its assigned weight”; [8] “forming a prediction, based on the processed data items, indicating the location of special relevance associated with the first user”; [9] “determining an advertisement relevant to the first user based on the predicted location of special relevance”; and [10] “transmitting the advertisement to the networked device associated with the first user,” which sets forth a method of using data to form a prediction indicating a location of relevance to a user and determining an advertisement for the user based on that location which Appeal 2021-002683 Application 16/054,367 8 is a certain method of organizing human activities and fundamental economic practice, i.e., a judicial exception. In Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F. 3d 1363, 1369 (Fed. Cir. 2015) tailoring content on a website based on a user’s location and the time of day was held to be a fundamental economic practice and directed to an abstract idea. A method, like the claimed method, “a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). See also Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it, and displaying results from certain results of the collection and analysis was held to be an abstract idea. We next determine whether the claim recites additional elements in the claim to integrate the judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 54-55. The Revised Guidance references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)-(c) and (e)-(h). Here, the claims do not improve computer functionality, improve another field of technology, utilize a particular machine, or effect a particular physical transformation. Rather, we determine that nothing in the claims imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort to monopolize the judicial exception. For example, in the claim, the additional elements beyond the abstract idea are the recited computing system. The claimed limitations of the computer system for “developing”, “applying”, “receiving”, “assigning”, Appeal 2021-002683 Application 16/054,367 9 “processing”, “forming”, “determining”, and “transmitting” as recited in the claim “do not purport to improve the functioning of the computer itself,” do not improve the technology of the technical field, and do not require a “particular machine.” Rather, they are performed using generic computer components. Further, the claim as a whole fails to effect any particular transformation of an article to a different state. The recited steps in the claim fail to provide meaningful limitations to limit the judicial exception. In this case, the claim merely uses the claimed computer elements as a tool to perform the abstract idea. Considering the elements of the claim both individually and as “an ordered combination” the functions performed by the computer system at each step of the process are purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. Thus, the claimed elements have not been shown to integrate the judicial exception into a practical application as set forth in the Revised Guidance which references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)-(c) and (e)-(h). Turning to the second step of the Alice and Mayo framework, we determine that the claim does not contain an inventive concept sufficient to “transform” the abstract nature of the claim into a patent-eligible application. Considering the claim both individually and as an ordered combination fails to add subject matter beyond the judicial exception that is not well- understood, routine, and conventional in the field. Rather the claim uses well-understood, routine, and conventional activities previously known in the art and they are recited at a high level of generality. The Specification at paragraphs 71-78 for example describes using conventional computer Appeal 2021-002683 Application 16/054,367 10 components such as a computer system, processor, memory, and storage in a conventional manner. The claim specifically includes recitations for computers to implement the method but these computer components are all used in a manner that is well-understood, routine, and conventional in the field. Here, the claimed generic computer components which are used to implement the claimed method are well understood, routine, or conventional in the field. Here, the claim has not been shown to be “significantly more” than the abstract idea. For these above reasons the rejection of claim 1 is sustained. The remaining claims are directed to similar subject matter and the rejection of these claims is sustained for the same reasons given above. Rejection under 35 U.S.C. § 103 The Appellant argues that the rejection of claim 1 is improper because the cited prior art fails to disclose the claim limitations for “applying the feature vectors to determine that the elements of the social graph information are relevant for predicting a location of special relevance associated with a user” (Appeal Br. 10, Reply Br. 4). In contrast, the Examiner has determined that the cited claim limitations are found in Waupotitsch at paras. 21, 36, 45, and Fig. 3 (Ans. 34). We agree with the Examiner. Waupotitsch at para. 21 discloses a query for “hot” (currently popular) clubs with friends checking into an establishment and the use of such a factor in choosing a bar or restaurant. Here, the application of the social graph information of “friends” is tied to a specific “hot” or popular club which would be at a specific location and is Appeal 2021-002683 Application 16/054,367 11 identified as having relevance to the specific user, thus meeting the cited claim limitation. Waupotitsch at para. 45 also discloses an application that is specific to determining “Eat & Drink places” which would be at specific locations. Waupotitsch at para. 44 also discloses that the relevance engine can be located within the social networking website. Thus, the argued claim limitation has been shown in the cited prior art. Accordingly, this rejection of claim 1 is sustained. The Appellant has provided the same arguments for the remaining claims directed to similar claim language and the rejection of these claims is sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1, 3-11, and 13-20 under 35 U.S.C. § 101. We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1, 3, 4, 9, 11, 13, 14, 18 and 20 under 35 U.S.C. § 103 as unpatentable over Waupotitsch and Liu . We conclude that Appellant has not shown that the Examiner erred in rejecting claims 5-8, 10, 15-17, and 19 under 35 U.S.C. § 103 as unpatentable over Waupotitsch, Liu, and Zifroni. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-11, 13- 20 101 Eligibility 1, 3-11, 13- 20 Appeal 2021-002683 Application 16/054,367 12 1, 3, 4, 9, 11, 13, 14, 18, 20 103 Waupotitsch, Liu 1, 3, 4, 9, 11, 13, 14, 18, 20 5-8, 10, 15- 17, 19 103 Waupotitsch, Liu, Zifroni 5-8, 10, 15- 17, 19 Overall Outcome 1, 3-11, 13- 20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2020). AFFIRMED