Abdur R. Chowdhury et al.

Patent Trials and Appeals Board

Nov 20, 2019

12574437 - (D) (P.T.A.B. Nov. 20, 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.
12/574,437 10/06/2009 Abdur R. Chowdhury 19487.204.1 8120
107193 7590 11/20/2019
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
LIN, SHEW FEN
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
11/20/2019 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):
docketing@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ABDUR R. CHOWDHURY, GREGORY S. PASS,
KULRAJ SIDHU, and TRAVIS WALKER
____________________

Appeal 2018-001677
Application 12/574,437
Technology Center 2100
____________________
Before CARL W. WHITEHEAD JR., HUNG H. BUI, and
DANIEL J. GALLIGAN, Administrative Patent Judges.
GALLIGAN, 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 1–22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.2

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 Facebook,
Inc. Appeal Br. 2.
2 Our Decision refers to Appellant’s Appeal Brief filed July 11, 2017
(“Appeal Br.”); Appellant’s Reply Brief filed December 4, 2017 (“Reply
Br.”); Non-Final Office Action mailed January 10, 2017 (“Non-Final Act.”);
and Examiner’s Answer mailed October 4, 2017 (“Ans.”).
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CLAIMED SUBJECT MATTER
Claims 1, 14, and 20 are independent claims. Claim 1, reproduced
below, is illustrative of the claimed subject matter.
1. A method comprising:
accessing information associated with a user;
identifying, using the accessed information, one or more
search topics personalized for the user;
determining that a search topic of the one or more search
topics personalized for the user is popular when a current
volume of search queries related to the search topic exceeds a
baseline volume of search queries related to the search topic by
at least a threshold, wherein the threshold is based on a category
associated with the search topic;
in response to determining that the search topic is
popular, identifying, from among a plurality of electronic
sources of published information, multiple electronic sources
that include content that matches the popular search topic and
that were published less than a threshold period of time prior to
the search topic becoming popular;
determining, using at least one processor, a summary of
the content from the multiple identified electronic sources that
include content that matches the popular search topic; and
presenting, to the user, the determined summary of the
content from the multiple identified electronic sources as a
reason that the search topic is popular.
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REFERENCES
Name Reference Date
Diab et al. US 2006/0230021 A1 Oct. 12, 2006
Yoo et al. US 7,146,416 B1 Dec. 5, 2006
Bharat et al. US 8,090,717 B1 Jan. 3, 2012
Columbia Newsblaster: Summarizing All the News on the Web
(03/25/2005 - 03/28/2005) (http://newsblaster.cs.columbia.edu/
archives/2005-03-28-08-02-11/web/index.html) (“Newsblaster”)

REJECTIONS3
Claims 13 and 16 stand rejected under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
Non-Final Act. 4–5.
Claims 1–22 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Non-Final Act. 5–7.
Claims 1–7 and 9–22 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yoo, Bharat, and Newsblaster. Non-Final Act. 8–14.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Yoo, Bharat, Newsblaster, and Diab. Non-Final Act. 14–
15.

3 The Non-Final Action states that “Claims 21–40 of co-pending application
13/620,237 are rejected on the ground of nonstatutory double patenting as
being unpatentable over claims 1–22 of instant application.” Non-Final
Act. 4. Because the Examiner has not rejected the claims of the instant
application on double patenting grounds, we do not consider this to be a
rejection before us on appeal.
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ANALYSIS
Rejection under 35 U.S.C. § 112, First Paragraph
Appellant acknowledges the rejection of claims 13 and 16 under
35 U.S.C. § 112, first paragraph and intends to amend these claims upon a
decision by the Board addressing the § 101 and § 103 rejections. Appeal
Br. 9 n.1. Because Appellant does not contest this rejection, we sustain it.

Rejection under 35 U.S.C. § 101
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
the following implicit exceptions: laws of nature, natural phenomena, and
abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In Alice, the Supreme Court set forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). The first step in the analysis is to
“determine whether the claims at issue are directed to one of those patent-
ineligible concepts.” Id. at 217. 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.

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USPTO January 7, 2019 Revised Section 101 Memorandum
The USPTO has published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under the 2019 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 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, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.

Discussion
For the § 101 rejection, Appellant argues claims 1–22 as a group,
focusing on subject matter common to independent claims 1, 14, and 20.
See Appeal Br. 10–22. We select independent claim 1 as representative of
Appellant’s arguments for the § 101 rejection of claims 1–22. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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Step 1
Section 101 provides that “[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. Independent
claim 1 recites a method and, thus, is directed to a statutory class of
invention within 35 U.S.C. § 101, i.e., a process.

Step 2A, Prong One
Under Step 2A of the 2019 Guidance, we must determine whether
claim 1, being directed to a statutory class of invention, nonetheless falls
within a judicial exception.
The Examiner determines that independent claim 1 recites a process
for “collecting information, analyzing it, and displaying certain results of the
collection and analysis,” which the Examiner likens to the abstract idea
identified in Electric Power Group, LLC, v. Alstom, 830 F.3d 1350 (Fed.
Cir. 2016). Non-Final Act. 6; see also Ans. 3. Therefore, we understand the
identified abstract idea to be in the category of mental processes. See
October 2019 Patent Eligibility Guidance Update (“October 2019 Update”),
7 (identifying the abstract idea of Electric Power Group in the category of
“mental processes”), referenced at 84 Fed. Reg. 55942–43 (October 18,
2019).
Appellant argues the Examiner “fails to properly identify an abstract
idea that applies to the claims” and “over-generalizes the claims to match the
alleged abstract idea without regard to the actual claim language.” Appeal
Br. 10–11. We disagree.
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The Office has explained that “claims do recite a mental process when
they contain limitations that can practically be performed in the human
mind, including for example, observations, evaluations, judgments, and
opinions” and cites as an example “a claim to ‘collecting information,
analyzing it, and displaying certain results of the collection and analysis,’
where the data analysis steps are recited at a high level of generality such
that they could practically be performed in the human mind.” October 2019
Update, 7 (citing Electric Power Group). Independent claim 1 recites such
subject matter.
Claim 1 recites (1) “accessing information associated with a user” and
(2) “identifying, using the accessed information, one or more search topics
personalized for the user.” We agree with the Examiner that these
limitations describe collecting information. See Ans. 3. Claim 1 further
recites the following three steps:
[(3)] determining that a search topic of the one or more search
topics personalized for the user is popular when a current
volume of search queries related to the search topic exceeds a
baseline volume of search queries related to the search topic by
at least a threshold, wherein the threshold is based on a category
associated with the search topic;
[(4)] in response to determining that the search topic is popular,
identifying, from among a plurality of electronic sources of
published information, multiple electronic sources that include
content that matches the popular search topic and that were
published less than a threshold period of time prior to the search
topic becoming popular;
[(5)] determining . . . a summary of the content from the
multiple identified electronic sources that include content that
matches the popular search topic.
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These are “data analysis steps [that] are recited at a high level of generality
such that they could practically be performed in the human mind.” See
October 2019 Update, 7. In particular, step (3) recites a determination of
popularity based on comparing one quantity (“a current volume of search
queries” less “a threshold”) to another quantity (“a baseline volume of
search queries”), which is an evaluation that can practically be performed in
the human mind by simply subtracting the threshold from the current volume
and comparing that amount to the baseline to see which is greater. Step (4)
recites at a high level of generality a step of identifying sources of
information that include particular information, i.e., “content that matches
the popular search topic and that were published less than a threshold period
of time prior to the search topic becoming popular.” Locating information
by content is a mental process that humans have performed in libraries using
card catalogs for years, and narrowing the results to a specific time period
involves a mental evaluation to identify only content with certain dates.
Step (5) recites “determining . . . a summary of the [identified] content,”
which encompasses a mental evaluation of the content.
Finally, claim 1 recites (6) “presenting, to the user, the determined
summary of the content from the multiple identified electronic sources as a
reason that the search topic is popular.” This limitation involves merely
displaying the results of the analysis, which is also encompassed within the
category of mental processes. See October 2019 Update, 7.
Appellant argues that steps (3)–(5) are “not subsumed by the general
concepts of ‘collecting information, analyzing it, and displaying certain
results of the collection and analysis.’” Appeal Br. 17–18. Appellant also
argues that the Examiner oversimplifies the claim by ignoring particular
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claim terms, such as “current volume of search queries” and “baseline
volume of search queries.” Reply Br. 4. For the reasons explained above,
we disagree, and we find that these limitations recite mental processes.
Appellant also argues that the Examiner’s Answer does not explain
how step (5)—“determining . . . a summary of the content”—corresponds to
an abstract idea. Reply Br. 5. We disagree.
In the Action from which this Appeal is taken, the Examiner finds that
“enabling presentation, to the user, of the customizable summary of the web
data related to the at least one topic” “corresponds to an abstract idea similar
to the concepts that have been identified as abstract idea by the courts, such
as (i) collecting information, analyzing it, and displaying certain results of
the collection and analysis.” Non-Final Act. 6 (emphasis added). Thus, the
Examiner identified the summary of information as part of the abstract idea.
In the Answer, the Examiner explains that “generating a summary from
multiple electronic sources and presenting to the summary to the user” is
directed to the recited abstract idea. Ans. 3. The Examiner further explains
that “Claims 1, 14, 20 merely provide a summary of popular topic
personalized for the user (such as personalized based on location, age,
gender) without impos[ing] any meaningful limitation on the abstract idea.”
Ans. 5. Thus, we disagree with Appellant’s assertion that “the alleged
abstract idea fails to account for a significant claim limitation.” Reply Br. 5.
For the foregoing reasons, we determine claim 1 recites an abstract
idea, namely a mental process, under Step 2A, Prong One of the 2019
Guidance.
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Step 2A, Prong Two
Next, we determine whether the claim is directed to the abstract
concept itself or whether it is instead directed to some technological
implementation or application of, or improvement to, this concept, i.e.,
integrated into a practical application. See, e.g., Alice, 573 U.S. at 223
(discussing Diamond v. Diehr, 450 U.S. 175 (1981)).
Appellant argues that “the pending claims provide a ‘specific
technical solution’ to a technical problem” and that “it is the ‘ordered
combination’ of all elements that results in a unique way of providing a user
with a summary formed from an extensive analysis that identifies a
personalized topic for a user, when the topic is popular, and why the topic is
popular.” Appeal Br. 21 (citing BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016)). According to
Appellant, “the independent claims recite a concrete improvement to
Internet-search technology.” Reply Br. 8. Contrary to Appellant’s assertion,
however, none of the pending claims recites “Internet.” Even if the claims
were directed in particular to Internet searches, we are not persuaded that
this would integrate the claims into a practical application under Step 2A,
Prong Two. Rather, all such a limitation would do “is to confine the abstract
idea to a particular technological environment,” in this case, Internet
searches. See Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1258–59 (Fed. Cir. 2016). “[M]erely limiting the field of use of the
abstract idea to a particular existing technological environment does not”
transform the claim into patent-eligible subject matter. Id. at 1259.
Appellant also argues that “the claimed process uses a combined order
of specific rules that identifies, based on specific information associated with
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a user, one or more search topics personalized for the user.” Appeal Br. 19.
According to Appellant, “when looked at as a whole, the claims are directed
to a patentable technological improvement over any existing techniques.”
Appeal Br. 19–20. But as discussed above, the claims recite mental
evaluations “at a high level of generality.” See October 2019 Update, 7. For
example, Appellant asserts that,
once the search topic is identified as popular, the claimed
process uses a combined order of specific rules to identify
multiple electronic sources that include content that matches the
popular search topic and that were published less than a
threshold period of time prior to the search topic becoming
popular, determine a summary of the content, and present the
summary to the user as a reason why the search topic is
popular.
Appeal Br. 19. Claim 1, however, does not recite “specific rules” to identify
multiple electronic sources. Rather, it recites “identifying, from among a
plurality of electronic sources of published information, multiple electronic
sources that include content that matches the popular search topic and that
were published less than a threshold period of time prior to the search topic
becoming popular.” Thus, the claim does not delineate a specific way to
perform the identification. Rather, it recites the step of “identifying . . .
multiple electronic sources” and lists two criteria of the identified electronic
sources – that they “include content that matches the popular search topic”
and that they “were published less than a threshold period of time prior to
the search topic becoming popular.” How the identification is performed is
not specified.
Accordingly, the claims are not directed to a specific asserted
improvement in computer technological implementation or otherwise
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integrated into a practical application and thus are directed to a judicial
exception.

Step 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 218–219 (quoting Mayo,
566 U.S. at 72–73).
Claim 1 recites “determining, using at least one processor, a summary
of the content.” Emphasis added. The Examiner determines that the
“processor” of claim 1 is “recited at a high level of generality and . . . for
performing the generic functions routinely used in computer applications.”
Non-Final Act. 7. We agree that claim 1’s recitation of using a “processor”
to perform the step of determining a summary does not confer patent-
eligibility on the claimed subject matter. See Alice, 573 U.S. at 223 (“[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.”).
Appellant’s arguments for eligibility under this step of the analysis
focus on the steps of the claim that we have already determined are directed
to the abstract idea. See Appeal Br. 20–22. In particular, Appellant argues
that “it is the ‘ordered combination’ of all elements that results in a unique
way of providing a user with a summary formed from an extensive analysis
that identifies a personalized topic for a user, when the topic is popular, and
why the topic is popular.” Appeal Br. 21. This subject matter, however, is
directed to the claimed mental process discussed above. Appellant also
likens its claims to those in BASCOM. See Appeal Br. 20–22; Reply Br. 9–
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10. Appellant argues that, “similar to BASCOM, the disclosed
communication system enables a ‘more dynamic and efficient’ Internet-
search system with an automatic summary.” Reply Br. 11 (quoting
BASCOM, 827 F.3d at 1351). As discussed above, however, the present
claims do not recite the “Internet” and thus are not so limited. Furthermore,
in BASCOM, the Federal Circuit stated the following: “The claims do not
merely recite the abstract idea of filtering content along with the requirement
to perform it on the Internet, or to perform it on a set of generic computer
components. Such claims would not contain an inventive concept.” 827
F.3d at 3150 (emphasis added). Thus, Appellant’s arguments that its claims
improve “Internet” search technology are not commensurate in scope with
the claims and do not persuade us that the claims recite significantly more
than the abstract idea to provide an “inventive concept.”

§ 101 Conclusion
Accordingly, claim 1 does not recite patent-eligible subject matter;
because claim 1 is representative and because Appellant does not put
forward additional persuasive arguments for the remaining claims, we
conclude that remaining claims 2–22 also do not recite patent-eligible
subject matter.

Rejection under 35 U.S.C. § 103
Appellant contends the combination of Yoo, Bharat, and Newsblaster
does not teach “identifying . . . multiple electronic sources that include
content that matches the popular search topic and that were published less
than a threshold period of time prior to the search topic becoming popular,”
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as recited in independent claims 1, 14, and 20. Appeal Br. 24–26; Reply
Br. 12–14. The Examiner relies on Newsblaster to teach narrowing a search
query to yield results from a particular time frame. Non-Final Act. 10. For
example, Newsblaster shows “Articles from 03/25/2005 to 03/28/2005.”
Newsblaster 1.
Appellant argues “Newsblaster merely appears to teach providing a
search result of news articles within a date range specified by a user in a
user-[initiated] search.” Appeal Br. 25. In the Reply Brief, Appellant
similarly argues that “Newsblaster discloses archived news articles for a
specific time range,” and, according to Appellant, this is “a significantly
different time period than the claimed ‘threshold period of time prior to the
search topic becoming popular.’” Reply Br. 13. The Examiner, however,
concludes that “[i]t would have been obvious to one of ordinary skill in the
art at the time of invention to modify the teachings of Yoo with the
teachings Newsblaster to include date range for query criteria in order to
narrow the search results to the time frame of interest.” Non-Final Act. 10.
Thus, the Examiner’s rejection is that the claimed subject matter would have
been obvious to an artisan of ordinary skill based on Newsblaster’s teaching
that a search may be narrowed to any period of time.
In view of this teaching, we are not persuaded that merely specifying
different time periods by which to narrow search results would have been
“uniquely challenging or difficult for one of ordinary skill in the art.” See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007).
Based on the foregoing, we are not persuaded the Examiner erred in
concluding the subject matter of independent claims 1, 14, and 20 would
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have been obvious based on the combined teachings of Yoo, Bharat, and
Newsblaster. Therefore, we sustain the obviousness rejection of these
claims as well as the obviousness rejections of dependent claims 2–13, 15–
19, 21, and 22, for which Appellant does not present persuasive arguments.
See Appeal Br. 26.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
13, 16 112 ¶ 1 Written
description
13, 16
1–22 101 Eligibility 1–22
1–7, 9–22 103(a) Yoo, Bharat,
Newsblaster
1–7, 9–22
8 103(a) Yoo, Bharat,
Newsblaster,
Diab
8
Overall
Outcome
1–22

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).
AFFIRMED