Ex Parte Cook et al

Patent Trial and Appeal Board

Mar 27, 2017

14055530 (P.T.A.B. Mar. 27, 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.
14/055,530 10/16/2013 Kelly L. Cook RSW920130101US2 3009
75949 7590
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
03/29/2017 EXAMINER
HICKS, MICHAEL J
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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):
patents @ fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KELLY L. COOK, LYDIA M. DO,
EILEEN MIN, and ERIC WOODS
Appeal 2016-006171
Application 14/055,5301
Technology Center 2100
Before JUSTIN BUSCH, JOHN P. PINKERTON, and
JOHN D. HAMANN, Administrative Patent Judges.
HAMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b). We affirm-in-part.
THE CLAIMED INVENTION
Appellants’ claimed invention “relates to utilizing social information
for recommending applications, and more specifically, to recommending
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
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Application 14/055,530
applications ordered by a social proximity factor.” Spec. 2. Claim 1 is
illustrative of the subject matter of the appeal and is reproduced below.
1. A method for utilizing social information for
recommending an application, said method comprising:
providing an application recommendation system based
on social characterizations; and
responsive to a user searching for an application meeting
a criteria, utilizing said application recommendation system by:
searching for applications meeting said criteria;
characterizing said applications according to a social
proximity factor to said user; and
presenting said applications ordered by said social
proximity factor.
REJECTIONS2 ON APPEAL
(1) The Examiner rejected claims 1—83 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
(2) The Examiner rejected claims 1—20 under 35 U.S.C.
§ 102(a)(1) as being anticipated by Futty et al. (US 2012/0116905 Al;
published May 10, 2012) (hereinafter “Futty”).
2 The Examiner also provisionally rejected claims 1—20 for obviousness-type
double patenting over claims 1—20 of copending Application
No. 14/053,395. Final Act. 6—7. No patent has issued yet from that
copending Application, nor do Appellants present arguments traversing this
provisional rejection. We find it is premature to address this provisional
rejection. See In reMoncla, 95 USPQ2d 1884, 1885 (BPAI 2010)
(precedential).
3 From the record, it is unclear whether claims 9—20 also were rejected as
being directed to non-statutory subject matter. See Final Act. 8—9; Ans. 4;
App. Br. 11.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner erred. In reaching our decision, we consider
all evidence presented and all arguments made by Appellants. We below
address specific findings and arguments.
(1) Abstract idea
Appellants argue the subject matter of claim 1 is directed to statutory
subject matter, contrary to the Examiner’s findings. App. Br. 11—13; Reply
Br. 4—8. More specifically, Appellants argue claim 1 (i) introduces “the idea
of ‘a social proximity factor,”’ which is both unconventional and tied to a
particular, useful application (i.e., “the recommendation for purchase of an
application in an app store based on the actions of other social proximate
users within a social network ‘ordered by said social proximity factor’”);
(ii) is transformative in that it produces a new construct (i.e., presenting
applications from a search ordered by a social proximity factor); and (iii) is
tethered to specific technology, including requiring a computer network, an
app store server, and social media websites. See App. Br. 11—13; Reply Br.
4—8; see also Reply Br. 5 (citing Spec. 134 (arguing the Specification
defines a social proximity factor based on accessing relevant social
networks)).
The Examiner finds claim 1 is directed to non-statutory subject matter
(i.e., an abstract idea). Ans. 17—18. More specifically, the Examiner finds
claim 1 relies on the conventional steps of searching, results ranking, and
preferential weighting, which are generally accepted abstract ideas “of
comparing new and stored information and using rules to identify options,
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and data recognition and storage.” Id. Further, the Examiner finds “social
proximity factor,” as used in claim 1, is a generic ranking criteria. Id. at 18.
The Examiner also finds claim 1 is not limited to using a computing
device or tied to a social network. Ans. 17. Rather, claim 1 allows for
searching of non-digital resources and “one skilled in the art could interpret
the claim elements of search results, criteria, proximity factors, etc. as data
written out on paper and notes that the storage environments may be non­
digital physical environments.” Ans. 18.
We are not persuaded by Appellants’ arguments. The Supreme Court
has long held that abstract ideas are not patentable. Alice Corp. v. CIS Bank
Inti, 134 S. Ct. 2347, 2354 (2014). Alice provides a two step analysis for
determining patent subject matter eligibility: (i) determining whether a
claim at issue is directed to an abstract idea, and if so, (ii) considering the
elements of the claim “individually and ‘as an ordered combination’” to
determine whether they “‘transform the nature of the claim’ into a patent-
eligible application.” Id. at 2355 (quoting Mayo Collaborative Serv. v.
Prometheus Lab., Inc., 132 S. Ct. 1289, 1298, 1297). In other words, the
second step is to decide whether the claim amounts to “significantly more”
than the idea itself. Id.
We agree with the Examiner’s findings and adopt them as our own.
Turning to Alice's first step, we agree with the Examiner that claim 1 is
directed to an abstract concept (e.g., searching and ranking search results).
As to the second step, we find nothing in claim 1 that adds anything
“significantly more” to transform the abstract concept of searching and
ranking search results into a patent-eligible application. Alice, 134 S. Ct. at
2357. We also agree with the Examiner that the social proximity factor is a
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generic ranking criteria (e.g., strength of a parameter) and does not serve to
transform claim l’s abstract concept into something substantially more.
Furthermore, we agree with the Examiner that claim 1 does not
require a computer or a social networking website, as Appellants allege —
each of the steps can be performed manually with non-digital resources. We
also find Appellants’ Specification describes the source of the social
proximity factor permissively (e.g., “may be a characterization of a user's
proximity to other users on a social media website”), including that “the
social proximity factor may be how one user is related to another user” (e.g.,
sibling, best friend) — determining such relationships does not require a
website. Spec. 134 (emphasis added).
Accordingly, we sustain the Examiner’s § 101 rejection of claim 1, as
well as claims 2—8, which depend therefrom, and for which Appellants did
not provide separate patentability arguments.
(2) Ordered by social proximity factor
Appellants argue the Examiner erred in finding Futty discloses
presenting “applications ordered by [the] social proximity factor,” as recited
in claims 1, 9, and 16. App. Br. 14—17; Reply Br. 9—12. Specifically,
Appellants argue Futty instead discloses ordering (i.e., ranking) applications
based on the quality of the applications (i.e., “based on reviews or blog posts
written by social acquaintances that are considered tastemakers,” whether an
application was uninstalled or never installed, polling social acquaintances,
recommendations, or a combination thereof). App. Br. 16 (citing Futty
115). In other words, “Futty never considers how close is the relationship
between the searching user and any of the social acquaintances” — a “user’s
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best friend or someone that [] user barely even knows” would impact the
ordering equally. Id.
In contrast, Appellants argue the claim language (i.e., ordered by the
“social proximity factor”) requires that the ordering reflect the closeness of
the user’s relationships. App. Br. 15—17. According to Appellants, the
Specification clearly explains that the social proximity factor relates to the
strength of a user’s relationship with others (e.g., siblings, best friends, or a
characterization of a user’s relationship strength with other users). Id. at 14—
15 (citing Spec. 134). Accordingly, Appellants argue Futty fails to disclose
the disputed limitation. App. Br. 14—17; Reply Br. 9—12.
The Examiner finds Futty discloses the disputed limitation. Ans. 19—
20; Final Act. 13. Focusing on the claim language, the Examiner finds
“social proximity is not defined . . . within the claims or within Appellants’]
Specification, but that social proximity is only described by way of
example.” Ans. 19. Similarly, the Examiner finds “no detail is given within
the claims as to . . . ordering and, as such, any process which can be
reasonably construed as ordering the set of presented applications based, in
some way, on the social proximity factor” discloses the disputed limitation.
Id.
As to Futty, the Examiner finds it discloses “what may be reasonably
construed as a measure of social proximity.” Ans. 19 (citing Futty || 12,
15). More specifically, the Examiner finds Futty discloses “a set of
applications which may potentially be presented to a user in response to a
search query . . . such that applications which are . . . within a defined social
proximity of the particular user may be included and/or . . . may be
excluded from the presentation.” Ans. 19—20 (citing Futty 115). The
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Examiner concludes that “inclusion into a list of presented results based on
[] factors related to user who must be within a defined social proximity may
be construed as a binary form of ranking or ordering based on the social
proximity.” Id. at 20.
We are persuaded by Appellants’ arguments. Although “the PTO
must give claims their broadest reasonable construction consistent with the
specification[,] . . . claims should always be read in light of the specification
and teachings in the underlying patent.” In re Suitco Surface, Inc., 603 F.3d
1255, 1259—60 (Fed. Cir. 2010) (citation omitted); Microsoft Corp. v.
Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). We find one of
ordinary skill in the art, in light of the Specification and claim language,
would have understood “social proximity factor” to relate to the strength of
relationships. Spec. Tflf 34, 49. We also find the Examiner construes
“ordered by” too broadly so as to incorrectly equate it with filtering (i.e., a
binary condition of including or not including). Moreover, the Examiner has
not cited to any portion of the Specification to allow for broadening the
ordinary meaning of ordering by (e.g., arranging by or organizing by) with
respect to search results — we disagree “ordering by” covers being included
in a list, as opposed to not. Accordingly, we find Futty’s disclosure of (i)
rankings relating to the strength of the applications (e.g., reviews) and (ii)
filtering of results, does not disclose the disputed limitation. Futty 115.
Accordingly, we do not sustain the Examiner’s § 102 rejection of
claims 1, 9, and 16, or the remaining claims on appeal, each of which
depends, at least indirectly, from one of these independent claims.
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DECISION
We affirm the Examiner’s § 101 rejection of claims 1—84 for being
directed to non-statutory subject matter.
We reverse the Examiner’s § 102 rejection of claims 1—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)(l)(iv).
AFFIRMED-IN-PART
4 In the event of further prosecution, we invite the Examiner to consider
whether our findings here are relevant to claims 9—20 in light of
the Alice decision’s treatment of similar method and system claims having
generic technology. See Alice, 134 S. Ct. at 2360.
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