Kim, Hyung Jin et al.

Patent Trials and Appeals Board

Oct 2, 2019

14565112 - (D) (P.T.A.B. Oct. 2, 2019)

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.
14/565,112 12/09/2014 Hyung Jin Kim 3080.270US1 4909
45839 7590 10/02/2019
Schwegman Lundberg & Woessner / LinkedIn/Microsoft
PO BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
SPIELER, WILLIAM
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
USPTO@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte HYUNG JIN KIM, SAMIR M. SHAH, and
MITUL TIWARI
________________

Appeal 2019-000194
Application 14/565,112
Technology Center 2100
________________

Before CARL W. WHITEHEAD JR., JEREMY J. CURCURI, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20. Final Act. 1. We have jurisdiction under 35 U.S.C.
§ 6(b).
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. Final Act. 4–8.
Claims 11–20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Ans. 6.
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. App. Br. 2.
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STATEMENT OF THE CASE
Appellant’s invention relates to “utilizing a multi-objective
optimization for new members of a social network.” Spec. ¶ 2. Claim 1 is
illustrative and reproduced below:
1. A method, comprising:
obtaining, with a processor, an optimization criterion based on at least
two constraints related to interaction of members of a social network, the
members including new members who have been members of the social
network less than a predetermined time and established members who have
been members of the social network greater than the predetermined time;
determining, with the processor, a plurality of proposed interaction
values based on data stored in an electronic database, the data being
indicative of at least some of profile data of members of a social network, a
social graph indicative of connections between the members, and of
activities of the members in the social network, each individual one of the
plurality of proposed interaction values corresponding to between one of a
plurality of pairs of members, the plurality of proposed interaction values
including a new member proposed interaction value between at least one
established member and at least one new member;
modifying, with the processor, the new member proposed interaction
value based on an adjustment factor related to the optimization criterion; and
providing, with the processor, to at least some of the user devices via
the network interface, proposed interactions based on the new member
proposed interaction value as modified and the plurality of proposed
interaction values.
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PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
THE JUDICIAL EXCEPTION REJECTION
The Examiner determines claims 1–20 are directed to a judicial
exception without significantly more. Final Act. 4–8. The Examiner
determines:
Independent claims 1 and 11 recite, in part, steps for
determining the strength of potential connections between pairs
of users of a social network, adjusting the strength of potential
connections involving a new member, and proposing new
connections to users based on the strengths of the proposed
connections. These steps describe the concept of suggesting
interactions to users of a social network, which corresponds to
concepts identified as abstract ideas by the courts.
Final Act. 5; see also Final Act. 6–8 (citing Spec. ¶¶ 12–14, 48–51)
(determining the claims do not recite significantly more than the abstract
idea); Ans. 6–8.
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 U.S. 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) (citation omitted).
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In determining whether a claim falls within an excluded category, we
are guided by the 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
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, 191
(1981)); “tanning, dyeing, making water-proof 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 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
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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. (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.”).
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. (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 USPTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that 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
organizing human activity such as a fundamental economic
practice, or mental processes); and
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2018)).
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 Memorandum 84 Fed. Reg. at 56.
Are the claims at issue directed
to a patent-ineligible concept?
Step One
Claim 1 is a method claim, which falls within the “process” category
of 35 U.S.C. § 101. Claim 11 is a computer-readable medium claim. For our
analysis of the judicial exception rejection, we treat claim 11 as falling
within the “manufacture” category of 35 U.S.C. § 101.
Although these claims fall within the statutory categories, we still
must determine whether the claim is directed to a judicial exception, namely
an abstract idea. See Alice, 573 U.S. at 217–18. Thus, we must determine
whether the claim recites a judicial exception, and fails to integrate the
exception into a practical application. See Memorandum 84 Fed. Reg. at 54–
55. If both elements are satisfied, the claim is directed to a judicial exception
under the first step of the Alice/Mayo test. See id.
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Step 2A, Prong One
Independent claim 1 is a method claim, and recites the following
limitations:
[i] obtaining . . . an optimization criterion based on at least
two constraints related to interaction of members of a social
network, the members including new members who have been
members of the social network less than a predetermined time
and established members who have been members of the social
network greater than the predetermined time;
[ii] determining . . . a plurality of proposed interaction
values based on data stored in an electronic database, the data
being indicative of at least some of profile data of members of a
social network, a social graph indicative of connections between
the members, and of activities of the members in the social
network, each individual one of the plurality of proposed
interaction values corresponding to between one of a plurality of
pairs of members, the plurality of proposed interaction values
including a new member proposed interaction value between at
least one established member and at least one new member;
[iii] modifying . . . the new member proposed interaction
value based on an adjustment factor related to the optimization
criterion; and
[iv] providing . . . to at least some of the user devices via
the network interface, proposed interactions based on the new
member proposed interaction value as modified and the plurality
of proposed interaction values.
The overall process of steps [i]–[iv] describes “social activities” as described
by Appellant’s Specification:
[N]ew members of the social network may be made more likely
to be presented to existing members of the social network as
people that the existing members may know. Upon being
presented to existing members as someone who the existing
members may know, the existing members may be more likely
than may otherwise be the case to invite the new member to
connect in the social network.
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Spec. ¶ 14. These “social activities” are the same steps that humans perform.
See Ans. 7 (“[I]f I’m at a meeting of a social organization of which I'm a
member, such as a house of worship, and I notice someone new in
attendance, I may go out of my way to get other members to introduce
themselves to the new person in the hopes that the new person will keep
coming around.”). Such activities are an example of “managing personal
behavior or relationships or interactions between people.” Memorandum 84
Fed. Reg. at 52. These recitations are thus the abstract concept of “[c]ertain
methods of organizing human activity.” Id.
In addition, when considering each of steps [i]–[iv] individually, these
steps each recite the abstract concept of “[m]ental processes.”
For example,
[i] obtaining . . . an optimization criterion based on at least
two constraints related to interaction of members of a social
network, the members including new members who have been
members of the social network less than a predetermined time
and established members who have been members of the social
network greater than the predetermined time
covers a human in a social organization considering the importance of
encouraging interactions with new members, which is one or more of
“observation, evaluation, judgment, opinion,” which are examples of
“concepts performed in the human mind.” Memorandum 84 Fed. Reg. at 52.
This recitation is thus the abstract concept of “[m]ental processes.” Id.
For example,
[ii] determining . . . a plurality of proposed interaction
values based on data stored in an electronic database, the data
being indicative of at least some of profile data of members of a
social network, a social graph indicative of connections between
the members, and of activities of the members in the social
network, each individual one of the plurality of proposed
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interaction values corresponding to between one of a plurality of
pairs of members, the plurality of proposed interaction values
including a new member proposed interaction value between at
least one established member and at least one new member;
[iii] modifying . . . the new member proposed interaction
value based on an adjustment factor related to the optimization
criterion
covers a human in a social organization considering interactions between
specific pairs of members, and further considering interactions between an
established member and a new member, which are one or more of
“observation, evaluation, judgment, opinion,” which are examples of
“concepts performed in the human mind.” Memorandum 84 Fed. Reg. at 52.
These recitations are thus the abstract concept of “[m]ental processes.” Id.
For example,
[iv] providing . . . to at least some of the user devices via
the network interface, proposed interactions based on the new
member proposed interaction value as modified and the plurality
of proposed interaction values
covers a human in a social organization who, after considering the
importance of encouraging interactions with new members, considering
interactions between specific pairs of members, and further considering
interactions between an established member and a new member, decides on
interactions to propose among the established and new members. Such
decision making is one or more of “observation, evaluation, judgment,
opinion,” which are examples of “concepts performed in the human mind.”
Memorandum 84 Fed. Reg. at 52. This recitation is thus the abstract concept
of “[m]ental processes.” Id.
Independent claim 11 recites limitations that correspond to the
limitations of claim 1 discussed above. For the same reasons discussed
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above, we determine the recitations of claim 11 are the abstract concepts of
“[c]ertain methods of organizing human activity” and “[m]ental processes.”
Id.
Step 2A, Prong Two
Because claims 1 and 11 recite a judicial exception, we next
determine if the claims recite additional elements that integrate the judicial
exception into a practical application. In addition to the limitations of claim
1 discussed above that recite abstract concepts, claim 1 further recites
various computer-related hardware items. For example, claim 1 recites a
“processor,” an “electronic database,” “user devices,” and a “network
interface.”
The Specification does not provide additional details about the
computer-related hardware items that would distinguish their
implementation from a generic implementation. See Spec. ¶¶ 20, 25, 48–59.
We do not find the recited computer-related limitations are sufficient
to integrate the judicial exception into a practical application. For example,
the “processor,” “electronic database,” “user devices,” and “network
interface” are not improved in their functioning, but, instead, merely perform
the abstract idea. In this case, we do not see any particular machine or
manufacture that is integral to the claim; nor do we see any transformation.
We do not see any recited elements applying or using the judicial exception
in any meaningful way beyond generally linking the judicial exception to the
recited elements.
Accordingly, we determine that claim 1 is directed to a judicial
exception because it does not recite additional elements that integrate the
recited judicial exception into a practical application. Claim 11 recites
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similar computer-related hardware devices, and is, therefore, also directed to
a judicial exception.

Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Step 2B
Because claims 1 and 11 are directed to a judicial exception, we next
determine, according to Alice, whether these claims recite an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than a judicial exception. The various computer-related
hardware items recited by claims 1 and 11 include, for example, a
“processor,” an “electronic database,” “user devices,” and a “network
interface.”
Memorandum, Section III (B) (footnote 36) states:
In accordance with existing guidance, an examiner’s
conclusion that an additional element (or combination of
elements) is well understood, routine, conventional activity must
be supported with a factual determination. For more information
concerning evaluation of well-understood, routine, conventional
activity, see MPEP 2106.05(d), as modified by the USPTO
Berkheimer Memorandum.
The Berkheimer Memorandum, Section III (A)(1) states:
A specification demonstrates the well-understood, routine,
conventional nature of additional elements when it describes the
additional elements as well-understood or routine or
conventional (or an equivalent term), as a commercially
available product, or in a manner that indicates that the additional
elements are sufficiently well-known that the specification does
not need to describe the particulars of such additional elements
to satisfy 35 U.S.C. § 112(a). A finding that an element is well-
understood, routine, or conventional cannot be based only on the
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fact that the specification is silent with respect to describing such
element.
Regarding the “processor,” the Specification describes “[f]or example,
a hardware module may include software encompassed within a general-
purpose processor or other programmable processor.” Spec. ¶ 54 (emphasis
added); see also Final Act. 6–7 (“The specification states that the system
requires no more than a generic computer to perform generic functions that
are well-understood, routine, and conventional activities previously known
in the industry.”). Thus, the Specification describes the “processor” as
“general-purpose,” which supports the finding that the “processor” is well-
understood or routine or conventional.
Regarding the “electronic database,” “user devices,” and “network
interface,” these elements are not positively recited as part of the claims. See
Claims 1 and 11 (“determining, with the processor, a plurality of proposed
interaction values based on data stored in an electronic database,”
(emphasis added) and “providing, with the processor, to at least some of the
user devices via the network interface” (emphasis added)). Further, these
elements are reasonably described in a manner that indicates that these
elements are sufficiently well-known that the Specification does not need to
describe the particulars of such additional elements to satisfy 35 U.S.C. §
112(a). See Spec. ¶¶ 20 (“the data layer 105 includes, but is not necessarily
limited to, several databases 110, 112, 114, such as a database 110”), 25 (“a
user device associated with a member of the social network 100”), 48 (“The
machine 600 may be... any machine capable of executing the instructions”),
49 (“The machine 600 includes... a network interface device 620”); see also
Final Act. 6–7 (“The specification states that the system requires no more
than a generic computer to perform generic functions that are well-
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understood, routine, and conventional activities previously known in the
industry.”).
In view of Appellant’s Specification, the claimed hardware
components, including the “processor,” “electronic database,” “user
devices,” and “network interface” reasonably may be determined to be
generic, purely conventional computer elements. Thus, the claims do no
more than require generic computer elements to perform generic computer
functions, rather than improve computer capabilities.
Accordingly, we determine that claims 1 and 11 are not directed to
significantly more than a patent ineligible concept.

Appellant’s principal arguments
Appellant argues the Examiner does not address the subject matter as
claimed, and does not analyze the substance of the claims. See App. Br. 12–
14. Appellant further argues the claims are not abstract because “[c]laim 1
specifies specific operations that do not broadly preempt a particular effect.”
App. Br. 14; see also App. Br. 16 (“[T]he instant claims, which obtain at
least three types of data and perform[] at least two operations on the data,
[are] readily within the scope of the operations of McRO.”); Reply Br. 2–4.
These arguments do not show any error because, as we explain above,
the elements of claims 1 and 11 are the abstract concepts of “[c]ertain
methods of organizing human activity” and “[m]ental processes.”
Memorandum 84 Fed. Reg. at 52. As also explained above, the remaining
claim limitations fail to integrate the abstract idea into a practical
application.
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Although we do not dispute that the various hardware components
include specific logic for performing the recited steps, Appellant does not
persuasively explain why the claimed steps improve technology as a whole.
See MPEP § 2106.05(a). Rather, the claims merely adapt the method of
“social activities” that humans perform to an execution of steps performed
by generic computing devices linked together in a network. See Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)
(“Our prior cases have made clear that mere automation of manual processes
using generic computers does not constitute a patentable improvement in
computer technology.”); see also Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (A
computer “employed only for its most basic function . . . does not impose
meaningful limits on the scope of those claims.”). Further, Appellant’s
identified improvements are improvements to the abstract idea, not
improvements to a technology or computer functionality. Thus, on the
record before us, the cited claim limitations do not improve the functionality
of the various hardware components, nor do they achieve an improved
technological result in conventional industry practice. McRO, Inc. v. Bandai
Namco Games Am., Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016).
Appellant further argues “[t]he Examiner offers no citation to any
authority to show that the claimed subject matter is well-understood,
conventional, or routine.” App. Br. 17; see also Reply Br. 4–5.
This argument does not show any error because, as we explain above,
the elements of claims 1 and 11 beyond the abstract idea may be determined
to be generic, purely conventional computer elements. Thus, the claims do
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no more than require generic computer elements to perform generic
computer functions, rather than improve computer capabilities. See Spec.
¶¶ 20, 25, 48–59.
Finally, Appellant further argues:
The problem, as noted in the instant specification and herein,
stems from the need to address the technical issues detailed,
e.g[.], in paragraph [0013] of the specification, including the
inefficient consumption of social network resources. The claims
are specifically directed to a social networking system, with
which traditional media do not share data nor the ability to
customize content placements. Such an online environment has
no relevance or comparison to conventional media.
App. Br. 18; see also Reply Br. 5.
Appellant’s Specification describes:
Thus, the technical activities performed by the social
network to increase membership and activity may produce
inefficiencies in the operations and goals of the social network.
Such activities may consume both the active resources of the
social network, in that superfluous or unproductive invitations
may be generated and transmitted to potential new members.
Further, the storage resources of the social network may be
inefficiently utilized in storing the necessary information related
to the maintenance of member profiles and content of members
who do not ultimately become productive members of the social
network.
Spec. ¶ 13.
Contrary to Appellant’s argument, as we explain above, the claims
merely adapt the method of “social activities” that humans perform to an
execution of steps performed by generic computing devices linked together
in a network. Put another way, we do not see a technological improvement,
as further explained above.
We, therefore, sustain the Examiner’s rejection of claims 1–20.
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THE NON-STATUTORY SUBJECT MATTER REJECTION
The Examiner determines claims 11–20 are directed to non-statutory
subject matter. Ans. 6. The Examiner determines “[t]he claim(s) does/do not
fall within at least one of the four categories of patent eligible subject matter
because the claimed medium, not being explicitly limited from being a
transitory signal, is directed to an unpatentable subject matter. See In re
Nuijten, 500 F.3d 1346 (Fed. Cir. 2007). Ans. 6.
Appellant argues “the broadest reasonable interpretation of ‘computer
readable medium’ consistent with the specification does not include
transitory signals.” Reply Br. 6.
Appellant’s Specification describes “[t]he term ‘machine-readable
medium’ shall accordingly be taken to include, but not be limited to, one
or more data repositories in the form of a solid-state memory, an optical
medium, a magnetic medium, or any suitable combination thereof.” Spec.
¶ 51 (emphasis added).
Because of the open-ended language in the Specification, we conclude
that the broadest reasonable interpretation of the recited “computer readable
medium” includes transitory media.
We, therefore, sustain the Examiner’s rejection of claims 11–20.

ORDER
The Examiner’s decision rejecting claims 1–20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED