Ex Parte Cheng et al

Patent Trial and Appeal Board

Oct 31, 2017

13780116 (P.T.A.B. Oct. 31, 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.
13/780,116 02/28/2013 Heyning Cheng 3080.097US1 6737
45839 7590 11/02/2017
Schwegman Lundberg & Woessner / Linkedln
PO BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
CALDERON IV, ALVARO R
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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
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 HEYNING CHENG, NAVNEET KAPUR, ABHIMANYU LAD,
and MONICA ROGATI
Appeal 2017-003921
Application 13/780,116
Technology Center 2100
Before ROBERT E. NAPPI, THU A. DANG, and JASON M. REPKO,
Administrative Patent Judges.
REPKO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4, and 7—24. App. Br. I.2 Claims 3, 5, and 6
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
1 Appellants identify the real party in interest as Linkedln Corporation.
App. Br. 2.
2 Throughout this opinion, we refer to (1) the Final Rejection (“Final Act.”)
mailed May 11, 2016, (2) the Appeal Brief (“App. Br.”) filed August 11,
2016, (3) the Examiner’s Answer (“Ans.”) mailed November 4, 2016, and
(4) the Reply Brief (“Reply Br.”) filed January 4, 2017.
Appeal 2017-003921
Application 13/780,116
THE INVENTION
Appellants’ invention relates to using social-network information to
provide recommendations to social-network members. Spec. 11.
Recommendations can be career-based, aspirational, or professional.
Id. 113. One embodiment receives a member’s professional goal and
compares that member’s attributes to those of other members that have
achieved the professional goal. Id. 114.
Claim 1 is representative of all claims and is reproduced below:
1. A method, comprising:
receiving input associated with a professional goal from a
member of a social network;
identifying other members within the social network that
have achieved the professional goal;
comparing social network-related attributes of the member
to social network-related attributes of the other members within
the social network that have achieved the professional goal;
determining at least one difference between the attributes
of the member and the attributes of the identified other members;
calculating a score that indicates a strength of a statistical
relationship between obtaining an attribute and achieving the
professional goal, the score based at least upon a quantity
(M(G,R) / M(R)) / ( M(G,~R) / M(~R)), wherein:
quantity M(G,R) denotes a number of members of
the social network who report to the social
network that they have attribute R and report
to the social network that they have achieved
the professional goal G;
quantity M(R) denotes a number of members of the
social network who report to the social
network that they have attribute R;
quantity M(G,~R) denotes a number of members of
the social network who report to the social
network that they lack attribute R and report
to the social network that they have achieved
the professional goal G; and
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Application 13/780,116
quantity M(~R) denotes a number of members of
the social network who report to the social
network that they lack attribute R;
determining a recommendation based on the determined
difference and based on the calculated score; and
providing the recommendation to the member of the social
network via a graphical user interface element displayed by a
user interface of the social network.
THE REJECTION
Claims 1, 2, 4, and 7—24 stand rejected under 35U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 3—6.
ANALYSIS
The Examiner has rejected claims 1, 2, 4, and 7—24 under 35 U.S.C.
§101 because the claims (1) are directed to an “abstract idea” and (2) do not
contain an “inventive concept” sufficient to transform the claimed “abstract
idea” into a patent-eligible application. Final Act. 3—6.
Appellants argue claims 1, 2, 4, and 7—24 together. See App. Br. 17.
We select claim 1 as representative. For the reasons discussed below,
Appellants have not persuaded us of error.
I
Appellants argue that the Examiner has not followed the examination
guidelines, which shows the Examiner has not made a prima facie case of
unpatentability and has not supported the rejection by substantial evidence.
App. Br. 15. Appellants argue that the Examiner describes the claims at a
high level of abstraction untethered from the claim language. Id. at 19. In
Appellants’ view, the Examiner has not identified any concepts that the
courts have identified as abstract ideas. Id. at 15. We disagree. The
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Application 13/780,116
Examiner has provided a rationale that identifies the abstract idea recited in
the claim and has explained why it is considered an exception. Final Act. 3—
4. In the rejection, the Examiner has identified several concepts and the
corresponding Federal Circuit decisions. Id. The Examiner has also
explained why Appellants’ claims are directed to a concept like those found
by the courts to be abstract. See, e.g., id. The Examiner’s findings are
discussed below.
We further note that, as stated in the guidance, “[fjailure of Office
personnel to follow the USPTO’s guidance materials is not, in itself, a
proper basis for either an appeal or a petition.” May 2016 Subject Matter
Eligibility Update, 81 Fed. Reg. 27,381, 27,382 (May 6, 2016). Rather,
“[Rejections will continue to be based upon the substantive law, and it is
these rejections that are appealable.” Id. Considering the relevant
substantive law, the Examiner has provided a prima facie case of
ineligibility. The Supreme Court’s two-step framework guides the eligibility
analysis here. See Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347,
2355 (2014). We discuss the Examiner’s application of these two steps in
detail in the sections that follow.
II
According to step one, “[w]e must first determine whether the claims
at issue are directed to a patent-ineligible concept,” such as an abstract idea.
Id.
Claim 1 is directed to a method that collects social-network data
(“receiving”), compares certain information within that data (“comparing”
and “determining” differences between attributes), calculates a score, and
provides a recommendation based on the score. Essentially, this method acts
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as a “data driven career advisor” that receives a user’s goal and makes
recommendations to help the user achieve that goal. Spec. 116.
Considering the claim’s character as a whole, the method is not an
improvement to computer functionality itself. Instead, the method uses a
computer in its ordinary capacity to provide career-related
recommendations. See Final Act. 3—5. This claimed concept is similar to
several concepts that the courts have identified to be abstract ideas. See id.
For example, the Examiner finds that claim 1 could be carried out by a
human being performing manual and mental calculations. Id. at 5.
Appellants disagree with the Examiner and note that claim 1 recites,
in part, “identifying other members within the social network that have
achieved the professional goal.” In Appellants’ view, this requires searching
and analyzing a database for suitable members that may be connected to the
user. App. Br. 15, 18. Appellants contend that this can involve accessing
and processing social-network information, which cannot be performed in
the human mind or by a human using pen and paper. Id. at 15—16.
Appellants argue that claim 1 is not abstract because the claimed subject
matter is an improvement to the functioning of a computer—i.e., the social
networking service. Id. at 14—15; see also id. at 17; Reply Br. 2. According
to Appellants, the claimed method provides online career guidance to social-
network members, which is a computer-based solution to a problem that
exists entirely within the realm of computers. App. Br. 15. We are
unpersuaded.
Although Appellants argue that claim 1 involves a database, claim 1 is
not directed to a specific asserted improvement to that database’s
capabilities. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335—36
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Application 13/780,116
(Fed. Cir. 2016); see also McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (finding subject-matter eligible when the
claimed process was an improvement to the way computers create
animation). For example, Appellants use the term “social network” in a
broad sense. Spec. 13. Thus, the claimed social network is not limited to
any particular improved computer implementation. Rather, the recited
identifying step can be performed by a person manually reviewing the other
members in search of matching goals. Furthermore, the claimed method
uses the graphical user interface as an ancillary part of the method to
communicate a recommendation. In fact, the character of the method would
not be changed by providing a hand-written recommendation. Indeed, the
Federal Circuit has considered whether a claim covers a method that human
beings can perform without a computer in determining that the claim was
directed to an abstract idea. See Mortgage Grader, Inc. v. First Choice Loan
Servs., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (explaining “[t]he series of
steps covered by the asserted claims . . . could all be performed by humans
without a computer”). Here, the claims merely invoke generic processes and
machinery as a tool to automate an otherwise manual comparison and
determination.
To the extent that the claims require a computer network, we note that
“[a]n abstract idea on ‘an Internet computer network’ or on a generic
computer is still an abstract idea.” BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016). At most, claim
1 uses the computer as a tool to gather information from a social network
(“receiving input” and “identifying” members), compare the data
(“comparing” attributes and “determining” differences), and calculate a
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Application 13/780,116
score. Similarly, the Federal Circuit has held that claims directed to
collecting information, analyzing it, and displaying certain results of the
collection and analysis were directed to an abstract idea. Electric Power
Grp. v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
Regarding the calculated score, Appellants argue the claims do not
involve organizing information through mathematical correlation as the
Examiner finds. App. Br. 19. But the Examiner’s conclusion does not rely
on the characterization of the method as a “correlation.” Here, the Examiner
simply finds that claim 1 is similar to ineligible claims that involved
mathematical algorithms, calculations, and the like. See, e.g., Ans. 4. We
agree with the Examiner on this point. Specifically, the score calculation
uses a formula that is based on a tally of members that have or lack a
particular attribute and professional goal. But “[a]dding one abstract idea
(math) to another abstract idea . . . does not render the claim non-abstract.”
RecogniCorp, LLCv. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
As a whole, claim 1 does not focus on a specific technical means or
method. Apart from the score calculation, the claims generically recite
broad and abstract comparisons and determinations. For example, claim 1
does not recite specific details of how to determine the recommendation or
specialized equipment to carry out the calculations. Rather, claim 1
abstractly recites determining the recommendation “based on” the calculated
score.
In summary, claim 1 is focused on the combination of the above
discussed abstract ideas. Appellants’ purported advance is a process of
gathering and analyzing information of a specified content (e.g., a social
network), calculating a score, then displaying a recommendation in a user
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interface, instead of a particular inventive technology for performing those
functions. On this record, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Ill
Because the claims are “directed to an abstract idea,” we analyze the
claims to determine if the limitations, when considered both “individually
and as an ordered combination’” contain an “inventive concept” sufficient to
transform the claimed “abstract idea” into a patent-eligible application.
Alice, 134 S. Ct. at 2355-58.
Appellants argue that the claims were found to be novel and non-
obvious over the cited references, and therefore, recite significantly more
than the concept identified by the Examiner. App. Br. 21—22. “But, a claim
for a new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Although
Appellants point to § 102 novelty to support their argument here
(App. Br. 21—22), the search for a § 101 inventive concept is different. See
id. Here, the question in step two of the Alice framework is not whether an
additional feature is novel or non-obvious under §§ 102 or 103
(App. Br. 21—22), but whether the implementation of the abstract idea on a
computer involves “more than performance of ‘well-understood, routine,
[and] conventional activities previously known to the industry,’” Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A. Ass ’n, 776 F.3d
1343, 1347-48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359).
Appellants argue that the Examiner relies on personal knowledge to
conclude the claims involve well-understood, routine, and conventional
functions. App. Br. 20—21. According to Appellants, the Examiner has not
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explained why the claimed invention as a whole do not recite significantly
more than an abstract idea. Id. at 20. On the contrary, the Examiner bases
these findings, in part, on the functions that the courts have recognized to be
well-understood, routine, and conventional functions. See Final Act. 4—6.
For the reasons discussed below, we agree with the Examiner.
To the extent that a computer is involved, claim 1 ’s method uses a
computer to perform repetitive calculations. In particular, claim 1 recites, in
part, “determining at least one difference between the attributes of the
member and the attributes of the identified other members.” Appellants
argue that this limitation provides significantly more than the concept that
the Examiner has identified as an abstract idea. App. Br. 16. Yet the
“identifying,” “comparing,” and “determining” steps merely involve data
comparison. Similarly, calculating the recited score involves no more than
generic hardware. Indeed, these functions can be carried out on “any
machine capable of executing instructions.” See Spec. 194. To be sure, a
computer can process large amounts of social-network data faster than a
human. But, this use of a computer—performing repetitive calculations—is
well-known and routine. See Bancorp Servs., L.L.C. v. Sun Life Assurance
Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“The computer
required by some of Bancorp’s claims is employed only for its most basic
function, the performance of repetitive calculations, and as such does not
impose meaningful limits on the scope of those claims.”).
Furthermore, the recited user interface merely presents the results of
an abstract process. Specifically, claim 1 recites, in part, “providing the
recommendation to the member of the social network via a graphical user
interface element displayed by a user interface of the social network.”
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Appellants argue that this limitation requires changing a user interface’s
state, which a human cannot perform using a pen and paper. App. Br. 16,
18—19. We, however, disagree that this extra-solution activity is sufficient
to render the claim patent eligible. For example, the Federal Circuit has
“recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis.” Electric Power Grp., 830 F.3d at 1354.
Taken as a whole, the claimed steps are recited at a high level of
generality, with further limitations only to a mathematical formula and the
social-network data acted upon. Overall, apart from reciting that the method
recommendation is provided by a graphical-user-interface element, claim 1
does not recite additional computing components. Indeed, the Specification
supports the Examiner’s finding that only well-known components are
needed to carry out the method. See Final Act. 6. For example, the
Specification states that the network “may be any communications network
utilizing any one of a number of well-known transfer protocols.” Spec. 23
(emphasis added). And according to the Specification, the method can be
executed by “any machine capable of executing instructions.” See id. 194.
Essentially, claim 1 recites an abstract idea “while adding the words ‘apply it
with a computer.’” Alice, 134 S. Ct. at 2358.
On this record, the limitations individually, and as an ordered
combination, do not contain an “inventive concept” sufficient to transform
the claimed “abstract idea” into a patent-eligible application. Therefore, we
sustain the rejection of representative claim 1 under 35 U.S.C. § 101, and
claims 2, 4, and 7—24, which fall with claim 1.
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DECISION
We affirm the Examiner’s rejection of claims 1, 2, 4, and 7—24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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