Moharrami, Mohammad et al.

Patent Trials and Appeals Board

Dec 4, 2019

14695540 - (D) (P.T.A.B. Dec. 4, 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.
14/695,540 04/24/2015 Mohammad Moharrami 079894.2542 5606
91230 7590 12/04/2019
BAKER BOTTS L.L.P./FACEBOOK INC.
2001 ROSS AVENUE
SUITE 900
DALLAS, TX 75201
EXAMINER
LELAND III, EDWIN S
ART UNIT PAPER NUMBER
2677
NOTIFICATION DATE DELIVERY MODE
12/04/2019 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):
judy.wan@bakerbotts.com
ptomail1@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MOHAMMAD MOHARRAMI, MARKUS CHRISTIAN
MESSNER CHANEY, LI-TAL MASHIACH, and YUVAL KESTEN
Appeal 2019-001034
Application 14/695,540
Technology Center 2600
BEFORE LARRY J. HUME, BETH Z. SHAW, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant,1 Facebook, Inc., appeals
from the Examiner’s decision to reject claims 1–14, 17–20, and 22–38,
which constitute all the claims pending in this application. Final Act. 1.
Claims 15, 16, and 21 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

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.
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CLAIMED SUBJECT MATTER
The claims are directed to live-conversation modules on online social
networks. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising, by one or more computing devices:
accessing one or more posts of an online social network,
each post comprising a content of the post and a metadata
associated with the post;
extracting, for each post, one or more n-grams from the
content of the post and the metadata associated with the post;
determining, for each post, whether the post is associated
with a trending topic based on whether one or more of the
extracted n-grams are associated with the trending topic;
caching, for each post determined to be associated with the
trending topic, the post in a conversation cache associated with
the trending topic, wherein the conversation cache is comprised
in one or more data stores associated with a social-networking
system of the online social network;
calculating a quality-score for each cached post based on
information associated with an author of the cached post,
wherein the information associated with the author of the cached
post comprises information about an amount of time for which
the author of the cached post has been registered as a user on the
online social network, and wherein the quality-score for the
cached post is reduced by a particular amount when it is
determined that the cached post was made by the author during
a probationary period, the probationary period being a predefined
period of time from the time the author of the cached post first
registered as a user on the online social network;
generating a live-conversation module comprising one or
more of the cached posts retrieved from the conversation cache
having a quality-score greater than a predetermined threshold
quality-score;
sending, to a client system of a first user of the online
social network, the live -conversation module for display to the
first user; and
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sending, to the client system of the first user, update-
information configured to update the live-conversation module
by replacing the one or more posts in the live-conversation
module with one or more other cached posts retrieved from the
conversation cache, wherein the sending of the update-
information occurs automatically without input from the first
user.
REJECTION
Claims 1–14, 17–20, and 22–38 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more. Final Act. 2.
OPINION
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) (quotation marks and citation omitted).
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
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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 183 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, 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. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. at
187 (“It is now commonplace that an application of a law of nature or
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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. (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 U.S. Patent and Trademark Office (“USPTO”) has published
revised guidance on the application of § 101. USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”). Under that Revised 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
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, Jan.
2018)).
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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 Revised Guidance.
In this case, the claims do not recite any of the judicial exceptions.
Specifically, taking claim 1 as representative, under its broadest reasonable
interpretation, claim 1 does not cover performance in the mind but for the
recitation of generic computer components. In particular, the steps of:
caching, for each post determined to be associated with the
trending topic, the post in a conversation cache associated with
the trending topic, wherein the conversation cache is comprised
in one or more data stores associated with a social-networking
system of the online social network;
generating a live-conversation module comprising one or
more of the cached posts retrieved from the conversation cache
having a quality-score greater than a predetermined threshold
quality-score;
sending, to a client system of a first user of the online
social network, the live-conversation module for display to the
first user; and
sending, to the client system of the first user, update-
information configured to update the live-conversation module
by replacing the one or more posts in the live-conversation
module with one or more other cached posts retrieved from the
conversation cache, wherein the sending of the update-
information occurs automatically without input from the first
user
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require action by a processor that cannot be practically performed in the
mind. The same or similar limitations are found in independent claims 19
and 20. The claimed steps recited above are not practically performed in the
human mind, at least because they require caching posts, generating a live
conversation module, sending the live conversation module for display, and
sending update-information to update the live-conversation module by
replacing the one or more posts in the live-conversation module with one or
more other cached posts retrieved from the conversation cache, wherein the
sending of the update-information occurs automatically without input from
the first user.
Further, the claim does not recite any method of organizing human
activity, such as a fundamental economic concept or managing interactions
between people. Finally, the claim does not recite a mathematical
relationship, formula, or calculation.2 Therefore, the claim is patent eligible
because it is not directed to an abstract idea or any other judicial exception.
For these reasons, we do not sustain the Examiner’s rejection of claims 1–
14, 17–20, and 22–38 under 35 U.S.C. § 101.

2 Claim 1 recites “calculating a quality-score for each cached post based on
information associated with an author of the cached post.” Even if we were
to conclude that this limitation recites an abstract idea (i.e., a mental process
or a mathematical algorithm), we would still conclude the claim recites
patent eligible subject matter because the limitations discussed above (i.e.,
“caching,” “generating,” and the two “sending” limitations) integrate this
calculation into a practical application. See Revised Guidance (Step 2A,
prong 2).
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CONCLUSION
We reverse the rejection of claims 1–14, 17–20,
and 22–38.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. §  Reference(s)/Basis Affirmed Reversed
1–14, 17–
20, 22–38
101  Subject Matter
Eligibility
1–14, 17–
20, 22–38
REVERSED