Ex Parte Cheng et al

Patent Trial and Appeal Board

Aug 31, 2017

13780198 (P.T.A.B. Aug. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/780,198 02/28/2013 Heyning Cheng 3080.097US2 3346
45839 7590 09/05/2017
SCHWEGMAN LUNDBERG & WOESSNER/ LINKEDIN
PO BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
CALDERON IV, ALVARO R
ART UNIT PAPER NUMBER
2173
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
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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 2017-004209
Application 13/780,198
Technology Center 2100
Before ERIC B. CHEN, JON M. JURGOVAN, and SHARON FENICK,
Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-004209
Application 13/780,198
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1—12 and 16—22. Claims 13—15 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants’ invention relates to providing career recommendations to
a member of a social network. (Abstract.)
Claim 1 is exemplary:
1. A method, comprising:
receiving input from a member of a social network identifying a
target member of the social network;
determining a professional goal from attributes of a profile of
the target member stored by the social network;
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
quantity M(~R) denotes a number of members of the
social network who report to the social network that they lack
attribute R;
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Application 13/780,198
determining a recommendation of the attribute based on the
professional goal, based on the calculated score, and based on
information stored by the social network; and
presenting the recommendation to the member via a user
interface displayed by the social network.
Claims 1—12 and 16—22 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
ANALYSIS
We are not persuaded by Appellants’ arguments (App. Br. 14—21; see
also Reply Br. 2) that independent claims 1,17, and 20 comply with 35
U.S.C. § 101 as statutory subject matter.
The Examiner concluded that “[cjlaims 1,17, and 20 are directed to
abstract ideas of calculating a score based on a comparison of attributes
related to a professional goal via a social networking environment in order to
determine a recommendation by means of a mathematical formula.” (Final
Act. 3.) In particular, the Examiner stated:
1) it is reasonable to interpret “calculating a score based on a
comparison of attributes related to a professional goal via a social
networking environment in order to determine a
recommendation by means of a mathematical formula” as an
abstract idea, 2) the examiner did identify “at least one concept
that the courts have identified as an abstract idea” (see, e.g., . . .
“An Idea ‘Of Itself” [CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011)], “Mathematical
relationships/formulas”, etc.) [Digitech Image Techs., LLC v.
Elecs. for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014)] and 3)
the claims do not include additional elements that amount to
significantly more than the judicial exception because they
address the one or more abstract ideas along with a generic
computer performing generic computer functions that were well
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Application 13/780,198
understood, routine and conventional activities previously
known to the industry.
(Ans. 7 (footnotes omitted); see also Final Act. 3 4.) We agree with the
Examiner.
A patent may be obtained for “any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws of nature, natural phenomena,
and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank
Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67
(1972) (“Phenomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work”). Notwithstanding that a law of
nature or an abstract idea, by itself, is not patentable, the application of these
concepts may be deserving of patent protection. Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 71—72 (2012). In Mayo, the Court
stated that “to transform an unpatentable law of nature into a patent-eligible
application of such a law, one must do more than simply state the law of
nature while adding the words ‘apply it.’” Mayo, 566 U.S. at 72 (internal
citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
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Application 13/780,198
the elements of the claims “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S.
at 79, 78). In other words, the second step is to “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. (brackets in original) (quoting
Mayo, 566 U.S. at 72—73). “A claim that recites an abstract idea must
include ‘additional features’ to ensure ‘that the [claim] is more than a
drafting effort designed to monopolize the [abstract idea].”’ Id. at 2357
(brackets in original) (quoting Mayo, 566 U.S. at 77—78). The prohibition
against patenting an abstract idea “cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment or
adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593,
610—11 (2010) (internal citation and quotation marks omitted). The Court in
Alice noted that ‘“[s]imply appending conventional steps, specified at a high
level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive
concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 82—83, 77—
78, 72-73).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 1 is a method claim comprising five steps, each of which: (i)
can be performed in the human mind or by a human using pen and paper; or
(ii) employs mathematical algorithms to manipulate existing information to
generate additional information.
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The first step, “receiving input from a member of a social network
identifying a target member of the social network,” can be performed by
human members of a social network via written communication to the social
network, such that the written communication indicates a professional goal
G or an attribute R. The second step, “determining a professional goal from
attributes of a profile of the target member stored by the social network,”
can be performed by another human reading the database of written
communications and comparing the professional goals G and attributes R for
each member of the social network. The third step, “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)),” including the four sub-steps,
is the use of mathematical algorithms to manipulate professional goals G and
attributes R information to generate additional information, a score based on
a statistical relationship. Alternatively, the third step can also be performed
by a human using pen and paper after reading the database of written
communications from members of the social network and comparing
professional goals G and attributes R. The fourth step, “determining a
recommendation of the attribute based on the professional goal, based on the
calculated score, and based on information stored by the social network,”
can be performed in the human mind by matching particular scores with
members of the social network. The fifth step, “presenting the
recommendation to the member via a user interface displayed by the social
network,” can be performed by written communication to the members of
the social network.
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Because all five method steps of claim 1 can either be performed: (i)
by human thought alone, or by a human using pen and paper, CyberSource,
654 F.3d 1366 at 1372—73 (“unpatentable mental processes” include “steps
[that] can be performed in the human mind, or by a human using a pen and
paper”); or (ii) employs mathematical algorithms to manipulate existing
information to generate additional information, Digitech, 758 F.3d at 1351
(“a process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible”),
claim 1 is directed to a patent-ineligible abstract idea. Claims 17 and 20
recite limitations similar to those discussed with respect claim 1. Thus,
claims 17 and 20 are also directed to a patent-ineligible abstract idea.
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
Because claims 1,17, and 20 are directed to an abstract idea, the
question to be settled next, according to Alice, is whether claims 1,17, and
20 recite an element, or combination of elements, that is enough to ensure
that the claim is directed to significantly more than an abstract idea.
Claim 1 is a method claim, which includes “a user interface.”
Claim 17 is a system claim, which includes the limitations “a processor,”
“memory,” and “a graphical user interface element.” Claim 20 is a
“computer-readable storage medium” claim, which includes the limitations
“a computing system” and “a user interface.” The claimed hardware
components, including “a user interface” (or “a graphical user interface
element”), “a processor,” “memory,” “computer-readable storage medium,”
and “a computing system” are generic, purely conventional computer
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Application 13/780,198
elements. Thus, the claims do no more than require generic computer
elements to perform generic computer functions, rather than improve
computer capabilities.
Accordingly, appending a conventional “user interface,” “a
processor,” “memory,” “computer-readable storage medium,” or “computing
system” to an abstract idea is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 134 S. Ct. at 2358 (“[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention”).
First, Appellants argue that “[t]he Examiner does not identify any
concepts that the courts have identified as an abstract idea” and “respectfully
submit that the alleged abstract idea cited by the Examiner is not ‘similar to
at least one concept that the courts have identified as an abstract idea’.”
(App. Br. 14; see also id. at 21.) Contrary to Appellants’ arguments, the
Examiner referred to “An Idea ‘Of Itself’,” a citation to CyberSource, and
also referred to “Mathematical relationships/formulas,” a citation to
Digitech. (Ans. 7; see also Final Act. 3 4.)
Second, Appellants argue that “the Examiner’s own alleged abstract
idea is not abstract because it is specific to a social networking service and
because it constitutes an improvement to the functioning of a computer
system — the social networking service” with a citation to Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). (App. Br. 15.) However,
other than providing a conclusory statement that claims 1,17, and 20
“constitute[] an improvement to the functioning of a computer system”
Appellants have not provided any additional explanation or evidence to
support this position. For example, Appellants have not provided citations
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Application 13/780,198
to the Specification to demonstrate that the claimed invention is an
improvement of an existing technology or demonstrated a deficiency in the
prior art. See Enfish, 822 F.3d at 1337 (“Moreover, our conclusion that the
claims are directed to an improvement of an existing technology is bolstered
by the specification’s teachings that the claimed invention achieves other
benefits over conventional databases, such as increased flexibility, faster
search times, and smaller memory requirements”).
Third, Appellants argue that “independent claims 1,17, and 20 recite
significantly more than ‘calculating a score based on a comparison of
attributes related to a professional goal via a social networking environment
in order to determine a recommendation by means of a mathematical
formula.’” (App. Br. 15.) In particular, Appellants argue
[t]he recitations of claim 1 involve retrieving data from an online
database, analyzing the retrieved data, performing calculations
on the retrieved data, extracting a recommendation from the
calculations and the analysis (in other words, not basing the
recommendation exclusively on the calculations), and displaying
the recommendation on a user interface, none of which can be
performed in the human mind or by a human using a pen and
paper.
(Id.; see also id. at 21.) However, Appellants’ arguments are not
commensurate in scope with claim 1, because the claim does not require an
“online database.” Even if Appellants are correct that independent claims 1,
17, and 20 require computer hardware (e.g., “user interface”), under step two
of the Alice inquiry, such hardware components are generic, purely
conventional computer elements.
Last, Appellants argue that “[regarding the Digitech case, Appellants
respectfully submit that the present claims differ from those in Digitech, for
at least the reason that the present claims tie the method to a tangible device,
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such as a user interface.” (App. Br. 18.) Again, under step two of the Alice
inquiry, such hardware components (e.g., “user interface”) are generic,
purely conventional computer elements.
Accordingly, we sustain the rejection of independent claim 1,17, and
20 under 35 U.S.C. § 101. Claims 2—12, 16, 18, 19, 21, and 22 depend from
claims 1,17, and 20, and Appellants have not presented any additional
substantive arguments with respect to these claims. Therefore, we sustain
the rejection of claims 2—12, 16, 18, 19, 21, and 22 under 35 U.S.C. § 101,
for the same reasons discussed with respect to independent claims 1,17, and
20.
DECISION
The Examiner’s decision rejecting claims 1—12 and 16—22 under 35
U.S.C. § 101 is affirmed.
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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