Ex Parte Blue et al

Patent Trial and Appeal Board

Mar 15, 2018

13303812 (P.T.A.B. Mar. 15, 2018)

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.
13/303,812 11/23/2011 Allen Blue 3080.005US1 2081
45839 7590 03/19/2018
SrTiweaman T linHhera Rr Wnesisiner / T inkeHTn/Miornsinft
EXAMINER
PO BOX 2938
MINNEAPOLIS, MN 55402
TRUONG, CAM Y T
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
03/19/2018 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 ALLEN BLUE, JOFF REDFERN,
PAUL TAYLOR OGILVIE, and JOSEPH PAUL BETZ
Appeal 2017-009022
Application 13/303,8121
Technology Center 2100
Before JEAN R. HOMERE, IRVIN E. BRANCH, and
AARON W. MOORE, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-6, 8-16, and 18-20, which are all of the claims pending in the
application.
We AFFIRM.
Technology
The application relates to presenting a ranked listing of articles, by
popularity, in response to a query. Spec. Abstract.
1 According to Appellants, the real party in interest is Linkedin Corporation.
App. Br. 2.
Appeal 2017-009022
Application 13/303,812
Illustrative Claim
Claim 1 is illustrative and reproduced below with the limitations at
issue emphasized:
1. A method comprising:
responsive to a query of a database, receiving a
selection of articles and respective selection action data at
a networking site, the articles being selected by users of
the site and submitted to a networking update stream;
according to a number of the users belonging to a
category that initiate each respective selection action,
scoring each article to produce a corresponding
popularity score;
arranging the selection of articles according to the
respective popularity scores to produce a ranked listing of
the articles; and
responsive to receiving an indication of a user
accessing the networking site, transmitting the ranked
listing of the articles to a client device of a viewing user,
the viewing user having chosen to follow the category.
Rejections2
Claims 1-6, 8-16, and 18-20 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Gerace (US 2007/0118802 Al, published May
24, 2007) and Hull (US 2011/0289011 Al, published Nov. 24, 2011). Final
Act. 8-25.
Claims 1-6, 8-16, and 18-20 stand 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. Ans. 3-39.
2 The Examiner withdrew additional obviousness rejections of the pending
claims. Ans. 2.
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Application 13/303,812
ANALYSIS
Obviousness Rejection of Claims 1—6, 8—16, and 18—20
Claim 1 recites “according to a number of the users belonging to a
category that initiate each respective selection action, scoring each article to
produce a corresponding popularity score.” Appellants argue the
combination of Gerace and Hull does not disclose this limitation.
We are not persuaded of error, for the reasons stated by the Examiner.
Final Act. 7-9; Ans. 25-26. In particular, we find that the argued limitation
reads on Gerace’s disclosure of a system that “rank[s] authored works and
authors by popularity within categories,” that “measures popularity of an
authored work by how many times the authored work is read, bookmarked,
recommended, forwarded, commented on and/or subscribed to,” and that
uses “[s]ome weighted combination of any of these factors ... to determine
popularity.” Gerace]} 16.
Accordingly, we sustain the rejection of claim 1 as obvious over the
combination of Gerace and Hull and also of claims 2-6, 8-16, and 18-20,
argued on the same basis. App. Br. 10.
35 U.S.C. § 101 Rejection of Claims 1—6, 8—16, and 18—20
Section 101 defines patentable subject matter: “Whoever 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. The Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[ljaws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
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Application 13/303,812
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
Step 1 — Whether the Claims Are Directed to an Abstract Idea
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014).
“The inquiry often is whether the claims are directed to ‘a specific means or
method’ for improving technology or whether they are simply directed to an
abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017).
A court must be cognizant that “all inventions at some level embody,
use, reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas” {Mayo, 566 U.S. at 71), and “describing the claims at... a
high level of abstraction and untethered from the language of the claims all
but ensures that the exceptions to § 101 swallow the rule.” Enflsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “the claims
are considered in their entirety to ascertain whether their character as a
whole is directed to excluded subject matter.” Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
The Examiner concludes that claim 1
describes receiving data (responsive to a query of a database,
receiving a selection of articles and respective selection action
data at a networking site), scoring data (according to a number
of the users belonging to a category that initiate each respective
selection action, scoring each article to produce a corresponding
popularity score), arranging of data (arranging the selection of
articles according to the respective popularity scores to produce
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Application 13/303,812
a ranked listing of the articles), transmitting data (responsive to
receiving an indication of a user accessing the networking site,
transmitting the ranked listing of the articles to a client device of
a viewing user) which correspond to [an abstract idea].
Ans. 3—4.
We have considered Appellants’ arguments (Reply Br. 3-5) but are
not persuaded the Examiner erred in concluding the claims are directed to an
abstract idea. “In addressing the first step of the section 101 inquiry, as
applied to a computer-implemented invention, it is often helpful to ask
whether the claims are directed to ‘an improvement in the functioning of a
computer,’ or merely ‘adding conventional computer components to well-
known business practices.’” Affinity Labs of Texas, LLC v. Amazon.com
Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016) (quoting Enfish, 822 F.3d at
1338). Here, we agree with the Examiner that the claims “do[] not recite an
improvement to another technology or technical field, an improvement to the
functioning of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment.” Ans. 4. Fooking at the claims as an ordered combination to
present to a user a ranked listing of articles according to a category, the
claims receive, score data, arrange data, and transmit data. See claim 1; Ans.
3. Yet the Federal Circuit has “previously held other patent claims ineligible
for reciting similar abstract concepts that merely collect, classify, or
otherwise filter data.” Intellectual Ventures I LLC v. Erie Indem. Co., 850
F.3d 1315, 1327 (Fed. Cir. 2017); see also BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“filtering
content is an abstract idea because it is a longstanding, well-known method
of organizing human behavior, similar to concepts previously found to be
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Application 13/303,812
abstract”). For example, in one recent case, the Federal Circuit affirmed the
ineligibility of claims involving “acquiring identification data . . . , using the
data to verify the validity . . . , and denying access . . . if. . . invalid.” Smart
Sys. Innovations, LLCv. Chicago Transit Auth., 873 F.3d 1364, 1371 (Fed.
Cir. 2017). In Smart Systems, the Federal Circuit held:
The Asserted Claims are not directed to a new type of bankcard,
turnstile, or database, nor do the claims provide a method for
processing data that improves existing technological processes.
Rather, the claims are directed to the collection, storage, and
recognition of data. We have determined that claims directed to
the collection, storage, and recognition of data are directed to an
abstract idea.
Smart Sys., 873 F.3d at 1372. The claims here are analogous in that they are
directed to the collection, scoring, arranging, and transmitting of data, rather
than an improvement in technology.
In their briefs, Appellants recite the claim language but have not
sufficiently explained what specifically about the limitations renders the
claims “an improvement in computers as tools.” See Reply Br. 4 (referring
to Elec. Power Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016)). “Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.” Id.
“[MJerely selecting information, by content or source, for collection,
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes, whose implicit exclusion from § 101 undergirds
the information-based category of abstract ideas.” Id. at 1355; see also
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Application 13/303,812
FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097-98 (Fed. Cir.
2016).
We therefore agree with the Examiner that the claims are directed to
an abstract idea.
Step 2 — Whether the Claims Amount to Significantly More
In the second step, we “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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has “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 that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself.” Id. (quotation omitted).
For computer-related technology, the Federal Circuit has held that a
claim may pass the second step if “the claimed solution is necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer [technology].” DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (e.g., “a challenge particular to
the Internet”). Appellants argue the claimed invention “recites ‘significantly
more’ because it provides a solution to a problem that arises from the field
of computerized searching.” Reply Br. 4-5. Yet we agree with the
Examiner that the claims instead recite “receiving data, scoring data,
arranging data and transmitting data . . . based on rules executed by generic
computing devices.” Ans. 4-5. “When claims like the Asserted Claims are
directed to an abstract idea and merely require generic computer
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implementation, they do not move into section 101 eligibility territory.”
Smart Sys., 873 F.3d at 1374) (quotations omitted).
Appellants argue the limitations of claims 3 and 13 “further improve[]
upon the traditional computerized search because [they include] the selection
actions performed by other users rather than just the article text from the
article. By including the selection action data, a computerized search of the
articles yields those articles that have been previously selected by other
users, unlike a traditional computerized search which focuses on whether
provided keywords appear in the searched articles.” Reply Br. 5. Yet we
agree with the Examiner that “[t]he use of generic computer components to
index data by using categories corresponding metadata does not impose any
meaningful limit on the computer implementation of the abstract idea.” Ans.
11.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claims 1-6, 8-16, and 18-20.
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 1-6, 8-16, and 18-20.
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.
§ 41.50(f).
AFFIRMED
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