Ex Parte Badros et al

Patent Trial and Appeal Board

Jan 30, 2017

13095899 (P.T.A.B. Jan. 30, 2017)

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.
13/095,899 04/28/2011 Gregory Badros 26295-17283 3502
87851 7590 02/01/2017
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center SCHMUCKER, MICHAEL W
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY BADROS, RAJAT RAINA, HONG GE,
DING ZHOU, NUWAN SENARATNA, and
TUDOR A. ALEXANDRESCU
Appeal 2014—007180
Application 13/095,899
Technology Center 3600
Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
AMEE A. SHAH, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Gregory Badros, Raj at Raina, Hong Ge, Ding Zhou, Nuwan
Senaratna, and Tudor A. Alexandrescu (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1—26, the only claims pending
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed March 10, 2014) and Reply Brief (“Reply Br.,” filed June 12,
2014), and the Examiner’s Answer (“Ans.,” mailed April 24, 2014) and
Final Action (“Final Act.,” mailed October 24, 2013).
Appeal 2014-007180
Application 13/095,899
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellants invented a way of providing information items,
including advertisements, to users of a social networking system based on
the inferred temporal relevance of that information to the users.
Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[1] determining a plurality of interests for a user of a social
networking system
based on an action of the user;
[2] discounting the interests
based at least in part on an amount of time since the
performance of the action from which the interests were
determined;
[3] receiving a plurality of information items
for display to the user of the social networking system;
[4] determining a plurality of concepts
associated with each of a plurality of information items;
[5] matching, by a processor,
the discounted interests for the user
with
the concepts determined for each of the information
items;
[6] selecting one or more of the information items to display to
the user,
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the selecting based at least in part on the matching of the
discounted interests with the concepts;
and
[7] sending the selected information items for display to the
user.
The Examiner relies upon the following prior art:
Parsons
Gross
Chien
Iyer
US 2007/0214097 A1
US 2009/0048928 A1
US 2009/0055257 A1
US 2011/0066507 A1
Sept. 13, 2007
Feb. 19, 2009
Feb. 26, 2009
Mar. 17,2011
Claims 1—13 and 23—26 stand rejected under 35 U.S.C. § 101 as
directed to non—statutory subject matter.
Claims 1, 2, 4, 6, 8—10, 14, 15, 17, 19, 20, 23, 24, and 26 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Gross and Parsons.
Claims 3, 5, 7, 16, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gross, Parsons, and Chien.
Claims 11—13, 21, 22 and 25 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Gross, Parsons, and Iyer.
ISSUES
The issues of statutory subject matter turn primarily on whether the
claims recite implementations of abstract ideas or just the concepts behind
the abstract ideas. The issues of obviousness turn primarily on whether the
art describes discounting interests based on time since a user’s action.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Gross
01. Gross is directed to advertising and search which exploit
temporal aspects of documents and events. Gross, para. 10.
02. Gross describes automated advertising that relies upon and uses
temporal information to enhance online ad auctions, advertising
placement, and search engine behavior. Id. at para. 34.
03. Gross describes a ranked set being presented as desired to
persons viewing aggregated news content at a conventional web
page, and the content may be presented based on the relevant
factors identified by Google along with the temporal ranked style.
Id. at para. 89.
04. Gross describes how the age of the temporal content snippet
can be used to determine a relevancy. That is, a snippet which is
very old may be afforded less weight because it is not matched
with other temporal content in subsequent documents. Id. at
para. 108.
Parsons
05. Parsons is directed to techniques to analyze conversations
within a conversational network. More particularly, the present
invention is directed to analyzing the influence of social media
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content and its publishers within a conversational network.
Parsons, para. 2.
06. Parsons describes a system that analyzes social media
distributed on the Internet. A conversation-monitoring module
monitors conversations in the social media. A social-analysis
module analyzes content associated with a conversation for social
relationships indicative of the evolution of the conversation. An
influence-engine determines the influence of postings in a selected
conversation. Parsons describes generating a conversation index
of posts published in an online social media around trusted
relationships. The influence of posts and publishers within the
selected conversation is determined. Id. at paras. 18—19.
ANALYSIS
Claims 1—13 and 23—26 rejected under 35 U.S.C. § 101 as directed to non—
statutory subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent—eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent—ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent—eligible application. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
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that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent—ineligible concept.
While the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim does not recite what the method is for, but the
steps in claim 1 result in displaying information of interest to someone. The
Specification at paragraph 1 recites that the invention relates to providing
information items, including advertisements, to users of a social networking
system. Thus, all this evidence shows that claim 1 is directed to displaying
advertisements, i.e., advertising.
It follows from prior Supreme Court cases, and Bilski in particular,
that the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of advertising is a fundamental commercial
practice long prevalent in our system of commerce. The use of advertising
is also a building block of our economy. Thus, advertising, like hedging, is
an “abstract idea” beyond the scope of § 101. See Alice Corp. Pty. Ltd., 134
S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. It is enough to
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recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of advertising
at issue here. Both are squarely within the realm of “abstract ideas” as the
Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
The remaining claims merely describe how to determine what items to
display. We conclude that the claims at issue are directed to a patent-
ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent—ineligible abstract idea into a patent—eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement^]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our §101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
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Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to determine interests and concepts somehow discount the value of
those interests and match interests and concepts, and select and display items
for display amounts to electronic data query and retrieval—one of the most
basic functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of selecting an ad to display as performed by a
generic computer. The method claims do not, for example, purport to
improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instruction to apply the
abstract idea of advertising using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent—eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellants’ argument that
[a]s a whole, the claimed invention is directed toward a
practical application of determining and displaying relevant
information items to users, at least partially by using a
processor to compute scores. Since the claimed invention has a
particular practical application having the real world use of
providing relevant information items to users, the claimed
invention is not directed to an abstract idea.
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App. Br. 13. This argument is no more than contending that advertising per
se is directed toward a practical application of determining and displaying
relevant information items to users. That is like contending that the hedging
in Bilski was directed to the practical application of reducing risk. The
claims are devoid of specific implementation details that would avoid
preemption of all possible implementations. As such, the claims are
conceptual advice of a result to be achieved, rather than specific
implementations for how to achieve the results.
Claims 1, 2, 4, 6, 8—10, 14, 15, 17, 19, 20, 23, 24, and 26 rejected
under 35 U.S.C. § 103(a) as unpatentable over Gross and Parsons
We are persuaded by Appellants’ argument that “[n]one of the
references teach ‘discounting the interests based at least in part on an
amount of time since the performance of the action from which the interests
were determined.’” Reply Br. 2. Appellants contend that
the features of Gross and Parsons cannot operate in
combination to disclose the claim element, at least because the
two claim element portions “discounting the interests based at
least in part on...were determined” and “an amount of time
since the performance of the action from which the interests
were determined” cannot be separated. The term “based at least
in part on” requires that the first portion of the element be
executed based on the second portion.
Id. at 3 (emphasis omitted). Both references describe affording less weight
to older content than newer content. To discount means essentially to lessen
the afforded weight. To do so for older content is to do so based on age, or
how recent or non-recent the content is. Thus to the extent Appellants argue
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the lack of both the discounting and the basis for doing so, both references
explicitly describe this.
The recited basis, however, is that of the user’s actions, rather than
content the user now has available. The Examiner finds that
[i]t would have been obvious to a person of ordinary skill in the
art at the time of the invention to modify the method taught by
Gross by analyzing and discounting the recency of an interest
as taught by Parsons in order to have the content be temporally
ranked and relevant temporally to the user in order to optimize
user interest and interaction.
Ans. 9. Although we agree with this conclusion, it is not on point. The
Examiner bases the discount on recency of interest, rather than of user
action. Indeed, both references discount the user’s interests based on how
recent the text content was originated by others, rather than the user’s
actions per se.
Claims 3, 5, 7, 16, and 18 rejected under 35 U.S.C. § 103(a) as unpatentable
over Gross, Parsons, and Chien
These claims depend from the above claims.
Claims 11—13, 21, 22 and 25 rejected under 35 U.S.C. § 103(a) as
unpatentable over Gross, Parsons, and Iyer
These claims depend from the above claims.
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CONCLUSIONS OF LAW
The rejection of claims 1—13 and 23—26 under 35 U.S.C. § 101 as
directed to non—statutory subject matter is proper.
The rejection of claims 1, 2, 4, 6, 8—10, 14, 15, 17, 19, 20, 23, 24, and
26 under 35 U.S.C. § 103(a) as unpatentable over Gross and Parsons is
improper.
The rejection of claims 3, 5, 7, 16, and 18 under 35 U.S.C. § 103(a) as
unpatentable over Gross, Parsons, and Chien is improper.
The rejection of claims 11—13, 21, 22 and 25 under 35 U.S.C. § 103(a)
as unpatentable over Gross, Parsons, and Iyer is improper.
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 14—22 are rejected under 35 U.S.C. § 101 as
directed to non—statutory subject matter. These claims are drawn to systems
performing the steps recited in the method claims rejected under this statute.
Although these claims nominally recite various types of processors, the
types are no more than functional description shorthand for what each of the
steps does, and do not otherwise recite specific structure.
As to such system claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice Corp. Pty. Ltd. 134 S. Ct. at 2360.
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DECISION
The rejection of claims 1—13 and 23—26 is affirmed.
The rejection of claims 14—22 is reversed.
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 14—22 are rejected under 35 U.S.C. § 101 as
directed to non—statutory subject matter.
Our decision is not a final agency action.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(i) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
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designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can
be found in the Manual of Patent Examining Procedure § 1214.01.
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)(l)(iv) (2011).
AFFIRMED-IN—PART; 37 C.F.R, $ 41.50(b)
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