Alison, Thomas et al.

Patent Trials and Appeals Board

Jun 4, 2020

13277180 - (D) (P.T.A.B. Jun. 4, 2020)

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.
13/277,180 10/19/2011 Thomas Alison 26295-19701 1281
87851 7590 06/04/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
MCCRAY, CLARENCE D
ART UNIT PAPER NUMBER
2458
NOTIFICATION DATE DELIVERY MODE
06/04/2020 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):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS ALISON, KIRANJIT S. SIDHU,
CAROL CHIA-FAN PAI, PETER H. MARTINAZZI,
FLORIN RATIU, and JENNIFER BURGE

Appeal 2019-002103
Application 13/277,180
Technology Center 2400
Before KRISTEN L. DROESCH, JOHNNY A. KUMAR, and
LINZY T. McCARTNEY, Administrative Patent Judges.
DROESCH, 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 rejecting claims 1–20 and 24–29. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant indicates the real party-in-interest is
Facebook, Inc. Appeal Br. 2.
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BACKGROUND
The disclosed invention relates to filtering and ranking recommended
users on a social networking system. Spec. ¶ 1.
CLAIMED SUBJECT MATTER
Claim 1, which is representative of the subject matter of the appeal
and is reproduced from the Claims Appendix of the Appeal Brief, reads as
follows:
1. A method comprising:
maintaining a user profile for each of a plurality of users of a social
networking system;
maintaining a plurality of connections established between users of
the plurality of users of the social networking system;
for a viewing user of the plurality of users, receiving a request to
recommend one or more other users with whom to establish a
connection in the social networking system from the viewing
user, the request comprising a user profile characteristic for
recommending the one or more other users;
responsive to the request, identifying a plurality of candidate
recommended users using profile information, comprising:
determining a plurality of the users of the social networking system
with whom the viewing user has not already established a
connection; and
filtering the determined plurality of users to eliminate users with
profile information that does not match the user profile
characteristic, the filtering resulting in the plurality of candidate
recommended users;
generating a prediction value for each of the plurality of candidate
recommended users, each prediction value estimating a
likelihood that the viewing user will initiate a request to the
candidate recommended user;
ranking the candidate recommended users based on the prediction
values;
selecting one or more of the candidate recommended users based on
the ranking; and
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providing the selected candidate recommended users for display to the
viewing user in an interface enabling the viewing user to
establish a connection with the selected candidate
recommended users.
REJECTION ON APPEAL
Claims 1–20 and 24–29 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 3–7.
ANALYSIS
Appellant disputes the Examiner’s determination that claims 1–20 and
24–29 are directed to patent-ineligible subject matter. See Appeal Br. 5–12.
Appellant argues claims 1–20 and 24–29 together as a group. See id.
Consequently, we choose claim 1 as representative of the group consisting
of claims 1–20 and 24–29. 37 C.F.R. § 41.37(c)(1)(iv).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014). In addition, the Office published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). If a claim falls within one of the statutory categories of
patent eligibility (i.e., a process, machine, manufacture, or composition of
matter) then the first inquiry is whether the claim is directed to one of the
judicially recognized exceptions (i.e., a law of nature, a natural phenomenon,
or an abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must
“look at the ‘focus of the claimed advance over the prior art’ to determine if
the claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
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Cir. 2016). According to the Guidance, this first inquiry has two prongs of
analysis (i) does the claim recite a judicial exception (e.g., an abstract idea)
and (ii) if so, is the judicial exception integrated into a practical application.
See Guidance, 84 Fed. Reg. at 54. Under the Guidance, if the judicial
exception is integrated into a practical application, the claim is patent
eligible under § 101. See id. at 54–55. If the claims are not directed to a
judicial exception, the inquiry ends. See McRO Inc. v. Bandai Namco
Games Amer. Inc., 837 F.3d 1299, 1312 (Fed Cir. 2016). However, if the
claim is directed to a judicial exception (i.e., recites a judicial exception and
does not integrate the exception into a practical application), the next step is
to determine whether any element, or combination of elements, amounts to
significantly more than the judicial exception. See Alice, 573 U.S. at 217;
Guidance, 84 Fed. Reg. at 56.
Here, we determine that claim 1 recites:
determining a plurality of the users of the social networking
system with whom the viewing user has not already established
a connection, filtering the determined plurality of users to
eliminate users with profile information that does not match the
user profile characteristic; generating a prediction value for
each of the candidate recommended users, each prediction
value estimating a likelihood that the viewing user will initiate
a request to the candidate recommended user; ranking the
candidate recommended users based on the prediction values;
selecting one or more of the candidate recommended users
based on the ranking; and providing the selected candidate
recommended users for display to the viewing user.

This is consistent with how Appellant describes the claimed invention. See,
e.g., Spec. ¶¶ 38–41, Fig. 3. Consistent with the Guidance and case law, we
conclude the steps of:
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determining a plurality of the users with whom a viewing user has not
already established a connection, filtering the determined plurality of users
to eliminate users with profile information that does not match a user profile
characteristic; generating a prediction value for each of the candidate
recommended users; ranking the candidate recommended users based on the
prediction values; selecting one or more of the candidate recommended
users based on the ranking, and providing the selected candidate users for
display could be performed as mental processes with the aid of pen and
paper and, thus, is an abstract idea. See Guidance, 84 Fed. Reg. at 52; see
also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139 (Fed.
Cir. 2016) (holding that claims to “translating a functional description of a
logic circuit into a hardware component description of the logic circuit” are
directed to an abstract idea, because the claims “read on an individual
performing the claimed steps mentally or with pencil and paper”);
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324
(Fed. Cir. 2016) (holding that computer-implemented method for
“anonymous loan shopping” was an abstract idea because it could be
“performed by humans without a computer”); Versata Dev. Grp. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”).
We are not persuaded by Appellant’s argument that “the claims are
directed to a specific manner of determining one or more users to
recommend to a social networking system user for a connection through
predicting a likelihood of the social networking system user to initiate a
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connection request to set of filtered candidate users, which is not an abstract
idea.” See Appeal Br. 7. Appellant’s characterization of the claims also
describes a mental process.
In response to the Examiner’s finding that the claims are directed to a
mental process (Ans. 4), Appellant argues that claim 1 does not recite steps
that may be simply performed in one’s mind. See Reply Br. 8, see also id. at
11 (the limitations of claim 1 are not “feasibly accomplished by any human
mind”). According to Appellant, “[a] user’s mind knowing only which
connections exist could not possibl[y] imagine connections that have not yet
been established with others.” Id. at 8–9. Appellant further contends “it’s
practically implausible that there exists a single physical database that
catalogs each and every connection between humans which can then easily
be parsed through by a human mind.” Id. at 9.
Appellant’s arguments are not persuasive because they are not
commensurate in scope with the claim limitations. Appellant’s arguments
are premised on an infinite number of users and possible social connections
between users, when claim 1 does not recite or require a specific number of
users or connections between users of the social networking system. The
scope of claim 1 may include relatively small numbers of users, established
connections between users, and users with whom the viewing user has not
already established a connection, for example, in a social network for a
neighborhood comprising 100 housing units, such that the human mind is
capable of performing the mental processes recited in claim 1 with the aid of
pen and paper.
Because claim 1 recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
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application. See Guidance, 84 Fed. Reg. at 54. To determine whether the
judicial exception is integrated into a practical application, we identify
whether there are “any additional elements recited in the claim beyond the
judicial exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
Guidance, 84 Fed. Reg. at 54–55 (emphasis added); see Manual of Patent
Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018).
The additional elements recited in claim 1 are: (1) “maintaining a
user profile for each of a plurality of users of a social networking system;
maintaining a plurality of connections established between the users of the
plurality of users of the social networking system;” (2) “receiving a request
[from a viewing user] to recommend one or more other users with whom to
establish a connection in the social networking system from the viewing
user, the request comprising a user profile characteristic;” and (3) “an
interface enabling the viewing user to establish a connection with the
selected candidate recommended users.” Considering these additional
elements along with the limitations that recite a judicial exception, we
determine that claim 1 does not integrate the judicial exception into a
practical application. Contrary to Appellant’s arguments, see Appeal Br. 8–
11; Reply Br. 8, the additional elements in combination with the limitations
that recite a judicial exception do not: (1) reflect an improvement to the
functionality of a computer or other technology or technical field (see
MPEP § 2106.05(a)); (2) implement a “particular machine” to apply or use
the judicial exception (see MPEP § 2106.05(b)); (3) effect a particular
transformation of an article to a different thing or state (see MPEP
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§ 2106.05(c)); or (4) apply the judicial exception in some other meaningful
limitation beyond generally linking the use of the judicial exception to a
particular technological environment, such that the claim as a whole is more
than a drafting effort to designed to monopolize the exception (see MPEP
§ 2106.05(e)). See Guidance, 84 Fed. Reg. at 55.
The additional elements of: (1) “maintaining a user profile for each of
a plurality of users of a social networking system; maintaining a plurality of
connections established between the users of the plurality of users of the
social networking system” and (2) “receiving a request [from a viewing
user] to recommend one or more other users with whom to establish a
connection in the social networking system from the viewing user, the
request comprising a user profile characteristic,” recited in claim 1, are the
types of extra-solution activity (i.e., in addition to the judicial exception) the
courts have determined insufficient to transform judicially excepted subject
matter into a patent-eligible application. See MPEP § 2106.05(g); OIP
Techs., Inc. v. Amazon.com, 788 F.3d 1359, 1363–64 (Fed. Cir. 2015)
(determining additional elements of storing information, and gathering
information were insufficient to transform the abstract idea into a patent
eligible application). The additional element “an interface enabling the
viewing user to establish a connection with the selected candidate
recommended users” amounts to the use of the claimed interface as a tool for
“providing the selected candidate recommended users for display to the
viewing user” of the abstract idea recited in claim 1. See MPEP 2106.05(f);
Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315 (Fed. Cir.
2017) (determining the claimed mobile interface provides little more than a
generic technological environment to allow users to access information
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because the claims merely recite retrieving information through the mobile
device).
Because we determine claim 1 is directed to a judicial exception, next
we analyze the claims under step two of Alice to determine if there are
additional elements that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., 566
U.S. 66, 77–79 (2012)). As stated in the Guidance, many of the
considerations to determine whether the claims amount to “significantly
more” under step two of the Alice framework are already considered as part
of determining whether the judicial exception has been integrated into a
practical application. See Guidance, 84 Fed. Reg. at 56. Therefore, at this
point of our analysis, we determine if the claims add a specific element, or
combination of elements, that is not well-understood, routine, conventional
activity in the field, or simply append well-understood, routine, conventional
activities at a high level of generality. See id. “Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018).
Here, Appellant’s claims append well-understood, routine,
conventional activities previously known in the industry and do not recite
specific elements or a combination of elements that are not well-understood,
routine, and conventional. Again, the additional elements of claim 1
are: (1) “maintaining a user profile for each of a plurality of users of a social
networking system; maintaining a plurality of connections established
between the users of the plurality of users of the social networking system;”
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(2) “receiving a request [from a viewing user] to recommend one or more
other users with whom to establish a connection in the social networking
system from the viewing user, the request comprising a user profile
characteristic;” and (3) “an interface enabling the viewing user to establish a
connection with the selected candidate recommended users.” Our reviewing
courts have determined that receiving and storing information are
conventional computer functions. See OIP, 788 F.3d at 1363–64 (gathering
statistics generated during testing and storing test results); Versata, 793 F.3d
at 1334 (Fed. Cir. 2016) (storing information was among several claim
limitations that are well-understood, routine, and conventional activities
previously known in the industry).
As to the additional element “an interface enabling the viewing user to
establish a connection with the selected candidate recommended users,” the
Specification indicates that this additional element is sufficiently well-
known that it need not be described in technical detail to satisfy the
requirements of 35 U.S.C. §112(a). See e.g. Spec. ¶¶ 20 (disclosing
providing selected candidate recommended users to a viewing user device),
40–41 (disclosing providing a user interface to a viewing user for requesting
a new connection, and disclosing an advertisement, email message, instant
message, a pop-up dialog box, and the like as examples); see also USPTO,
Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) at 3 (Apr. 19, 2018), available at https://www.uspto.gov/sites
/default/files/documents/memo-berkheimer-20180419.PDF (explaining that
a specification that describes additional elements “in a manner that indicates
that the additional elements are sufficiently well-known that the
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specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well
understood, routine, and conventional); Intellectual Ventures I LLC, v.
Capital One Bank (USA), 792 F.3d 1363, 1370–1371 (Fed Cir. 2015)
(finding “interactive interface” is a generic computer element).
We are not persuaded by Appellant’s argument that the following
limitations of claim 1 provide an inventive concept: “determining a plurality
of the users of the social networking system with whom the viewing user has
not already established a connection,” “filtering the determined plurality of
users to eliminate users with profile information that does not match the user
profile characteristic, the filtering resulting in the plurality of candidate
recommended users,” and “generating a prediction value for each of the
plurality of candidate recommended users, each prediction value estimating
a likelihood that the viewing user will initiate a request to the candidate
recommended user.” See Appeal Br. 9. According to Appellant, “claim 1
specifically orders its limitations with language to tie each subsequent
limitation to the prior limitations thereby crafting an ordered combination
wherein lies the ‘inventive concept.’” Id. at 9–10. We also are not
persuaded by Appellant’s argument that the Final Office Action improperly
relegates the limitations of the claims to activities that are considered to be
well-understood, routine, and conventional. See Appeal Br. 11–12 (quoting
Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) 3–4;
citing Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018)). Appellant’s
arguments focus on the abstract idea recited in claim 1, and do not address
the aforementioned additional elements recited in claim 1. See Final Act. 6–
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7; Appeal Br. 11–12; Ans. 4–5; Reply Br. 6–7. “What is needed is an
inventive concept in the non-abstract application realm.” SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). For the foregoing
reasons, we determine that the additional elements individually or as an
ordered combination do not provide an inventive concept such that claim 1
amounts to significantly more than the recited judicial exception.
Accordingly, for the foregoing reasons we are not persuaded the
Examiner erred in rejecting claims 1–20 and 24–29 under 35 U.S.C. § 101.
Therefore, we sustain the rejection of claims 1–20 and 24–29 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter.
CONCLUSION
We affirm the Examiner’s rejection of claims 1–20 and 24–29 under
35 U.S.C. § 101.
In summary:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1–20, 24–29 101 Eligibility 1–20, 24–29
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)(1)(iv).
AFFIRMED