Ex Parte Dey et al

Patent Trial and Appeal Board

Aug 9, 2017

13597339 (P.T.A.B. Aug. 9, 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.
13/597,339 08/29/2012 Kuntal Dey IN920110031US2 9950
29154 7590 08/11/2017
FREDERICK W. GIBB, III
GIBB & RILEY, LLC
844 West Street
SUITE 200
ANNAPOLIS, MD 21401
EXAMINER
OFORI-AWUAH, MAAME
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/11/2017 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):
support @ gibbiplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUNTAL DEY, RITESH GUPTA, NATWAR MODANI,
SEEMA NAGAR, and AMIT A. NANAY ATI
Appeal 2016-008063
Application 13/597,3391
Technology Center 3600
Before HUNG H. BUI, AARON W. MOORE, and JASON M. REPKO,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s non-final rejection of claims 1—20, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed December 28, 2015
(“App. Br.”); Reply Brief filed August 11, 2016 (“Reply Br.”); Examiner’s
Answer mailed June 16, 2016 (“Ans.”); Non-Final Office Action mailed
July 28, 2015 (“Non-Final Act.”); and original Specification filed August 29,
2012 (“Spec.”).
Appeal 2016-008063
Application 13/597,339
STATEMENT OF THE CASE
Appellants’ invention relates to a “method for finding actionable
communities within social networks” “based on (a) a number of primitive
communities a group of entities belong to, and (b) the number of products
that the group of entities has purchased together.” Spec., Title, 12.
Claims 1, 9, and 16 are independent claims. Claim 1 illustrates
Appellants’ invention, as reproduced below:
1. A computer-implemented method comprising:
identifying, by a computing device, a social network of a
plurality of entities, each entity of said plurality of entities being
associated with at least one other entity in said social network;
identifying, by said computing device, a first group of
entities from said plurality of entities, each entity of said first
group of entities having expressed an interest in a first item;
determining, by said computing device, first social
associations within said first group of entities and grouping said
first group of entities into first primitive-communities based only
on said first social associations, all entities in each of said first
primitive communities having a direct association with every
other entity in its first primitive community;
identifying, by said computing device, a second group of
entities from said plurality of entities, each entity of said second
group of entities having expressed an interest in a second item;
determining, by said computing device, second social
associations within said second group of entities and grouping
said second group of entities into second primitive-communities
based only on said second social associations, all entities in each
of said second primitive-communities having a direct association
with every other entity in its second primitive-community;
determining, by said computing device, sets of entities of
said first primitive-communities that are also present in at least
one of said second primitive-communities to identify common
sets of entities; and
2
Appeal 2016-008063
Application 13/597,339
outputting, by said computing device, at least one
community of entities comprising all entities within said
common sets of entities.
App. Br. 32—33 (Claims App.).
Examiner’s Rejections and References
(1) Claims 1—20 stand provisionally rejected on the ground of non-
statutory double patenting as being unpatentable over claims 21—31 and 33—
38 of co-pending Application No. 13/171,594. Non-Final Act. 3—9.
(2) Claims 1—20 stand rejected under 35U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Id. at 9—10.
(3) Claims 1—4 and 7—8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jain et al. (US 2009/0006469 Al, published Jan. 1
2009, “Jain”) and Li et al., Discovering Overlapping Communities of Named
Entities, 593—600, © Springer-Verlag Berlin Heidelberg 2006, Department
of Computer Science, University of Illinois (“Li”). Id. at 11—14.
(4) Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jain, Li, and Zhou et al. (US 2008/0127043 Al, published
May 29, 2008, “Zhou”). Id. at 14-15.
(5) Claims 9-20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jain, Li, and Zhou. Id. at 15—19.
3
Appeal 2016-008063
Application 13/597,339
ANALYSIS
At the outset, we note Appellants do not address the non-statutory
obviousness-type double patenting rejection of claims 1—20 based on claims
21—31 and 33—38 of co-pending Application No. 13/171,594. As such, the
rejection of these claims on the ground of non-statutory obviousness-type
double patenting over claims 21—31 and 33—38 of co-pending Application
No. 13/171,594 is sustained pro forma. However, a terminal disclaimer can
be filed once a claim in either application is allowed.
35 U.S.C. § 101: Claims 1-20
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S.Ct. 2347
(2014), the Supreme Court reiterates an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289 (2012), “for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those 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,” such as an
abstract idea. Id. If the claims are directed to a patent-ineligible concept,
the second step in the analysis is to consider 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. (citing Mayo, 132 S. Ct. at 1297). 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
4
Appeal 2016-008063
Application 13/597,339
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. (citing Mayo, 132 S. Ct. at 1294).
In rejecting claims 1—20 under 35U.S.C. § 101, the Examiner finds
these claims are directed to an abstract idea of “analyzing data of entities,
grouping entities into communities and determining common sets of entities
present in a first community and a second community.” Non-Final Act. 9—
10. The Examiner also finds
[t]he additional elements [such as a computing device including
a generic computer to perform generic computing functions] are
not sufficient to amount to significantly more than the judicial
exception because the additional elements or combination of
elements in the claims are mere instructions to implement the
idea on a computer, and recitation of generic computer structure
serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously
known to the pertinent industry.
Id. at 10.
As to the first step of the Alice inquiry, Appellants contend “the
claims ... are not directed to fundamental economic practices, methods of
organizing human activity or mathematical relationships” and, instead,
“are directed to a method for finding tight communities, performing frequent
itemset mining to find core members of the like-minded communities, and
finding the community structures amongst the core community members.”
App. Br. 12. According to Appellants, “[t]he method uses a computerized
device that accesses social networks to analyze individual behavior at a meta
level based on common community interests.” Id. at 12; Reply Br. 2. In the
Reply, Appellants further argue
the concept of accessing social networks to analyze individual
behavior at a meta level based on common community interests
as set forth in the present claims is inextricably tied to computer
5
Appeal 2016-008063
Application 13/597,339
technology (i.e., requires the use of computer technology to
access, search and process medical domain knowledge contained
in evidence sources, to generate outputs, to generate alerts, etc.),
which in this case reflects both an improvement in the
functioning of the computer and an improvement in another
technology.
Reply Br. 2—3.
We are not persuaded by Appellants’ arguments. As correctly
recognized by the Examiner,
The claims are directed to an abstract idea of analyzing data of
entities, grouping entities into communities and determining
common sets of entities present in a first community and a
second community. Thus, the claim simply describes the
concept of gathering and analyzing information through
mathematical relationships . . . The use of a computerized
device to access social networks to analyze individual behavior
at a meta level based on common community interests does not
render the claims less abstract.
Ans. 20—21. Contrary to Appellants’ arguments, none of the steps recited in
claims 1, 9, and 16 provides: (1) a “solution . . . necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks,” DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014); (2) “a specific improvement to the
way computers operate,” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1336 (Fed. Cir. 2016); or (3) an “unconventional technology solution ... to
a technological problem” that “improve [s] the performance of the system
itself,” Am docs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1302
(Fed. Cir. 2016).
As to the second step of the Alice inquiry, Appellants argue all the
limitations recited in claims 1, 9, and 16 “add significantly more because
they add a specific limitation other than what is well-understood.
6
Appeal 2016-008063
Application 13/597,339
routine and conventional in the field and because they add
unconventional steps that confine the claim to a particular useful
application.” App. Br. 17—18 (citing Mayo, 132 S. Ct. at 1302); see also
Reply Br. 4—8. According to Appellants,
the concept of accessing social networks to analyze individual
behavior at a meta level based on common community interests
as set forth in the present claims is inextricably tied to computer
technology (i.e., requires the use of computer technology to
access, search and process medical domain knowledge contained
in evidence sources, to generate outputs, to generate alerts, etc.),
which in this case reflects both an improvement in the
functioning of the computer and an improvement in another
technology.
Reply Br. 2—3. In addition, Appellants argue the limitations of claims 1, 9,
and 16 “add significantly more because they effect transformation or
reduction of a particular article to a different state or thing.” App. Br. 16—17
(emphasis omitted).
We remain unpersuaded by Appellants’ arguments. In particular, we
find nothing in Appellants’ claims 1,9, and 16 that adds anything
“significantly more” to transform the abstract concept of accessing social
networks to analyze individual behavior at a meta level based on common
community interests into a patent-eligible application. Alice, 134 S. Ct. at
2357. Appellants argue each of the elements of claims 1, 9, and 16 is
individually inventive and the ordered combination of these elements is
inventive, but do not explain why these elements are inventive. App. Br.
15-16.
As recognized by the Examiner, “[t]he use of a computerized device
to access social networks to analyze individual behavior at a meta level
based on common community interests does not render the claims less
7
Appeal 2016-008063
Application 13/597,339
abstract” because “[t]he computer merely performs well-understood, routine
and conventional computer functions.” Ans. 21. None of Appellants’
arguments show that some inventive concept arises from the ordered
combination of these steps, which, even if true, would be unpersuasive given
that they are ordinary steps in data analysis and are recited in an ordinary
order.
As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014), Bilski’s “machine-or-
transformation” (MoT) test can provide a “useful clue” in the second step of
the Alice framework. Under Bilski’s MoT test, a claimed process is patent-
eligible under § 101 if: (1) it is tied to a particular machine or apparatus; or
(2) it transforms a particular article into a different state or thing. In re
Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008) (citing Gottschalk v. Benson, 93
S. Ct. 253 (1972)). However, contrary to Appellants’ arguments,
Appellants’ “computer readable medium” claims 1, 9, and 16 are neither
sufficiently “tied to a particular machine or apparatus” nor involved in any
type of transformation of any particular article.
For example, limiting such an abstract concept of “accessing social
networks to analyze individual behavior at a meta level based on common
community interests” to generic components such as “a computer” for
operation over a social network recited in Appellants’ claims 21 and 26 does
not make the abstract concept patent-eligible under 35 U.S.C. § 101. Ans.
20—22. As recognized by the Supreme Court, “the mere recitation of a
generic computer cannot transform a patent ineligible abstract idea into a
patent-eligible invention.” See Alice, 134 S. Ct. at 2359 (concluding claims
“simply instructing] the practitioner to implement the abstract idea of
8
Appeal 2016-008063
Application 13/597,339
intermediated settlement on a generic computer” not patent eligible); see
also Ultramercial, 772 F.3d at 715—16 (Claims merely reciting abstract idea
of using advertising as currency as applied to particular technological
environment of the Internet not patent eligible.); Accenture Global Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir.
2013) (Claims reciting “generalized software components arranged to
implement an abstract concept [of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer” not patent eligible.); Dealertrack, Inc. v. Huber, 674 F.3d 1315,
1333—34 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a
claim covering an abstract concept, without more, is insufficient to render
[a] claim patent eligible.”).
Lastly, we note Appellants’ claims 1—20 are neither rooted in
computer technology, as outlined in DDR Holdings, nor do they seek to
improve any type of computer capabilities, such as a “self-referential table
for a computer database,” as outlined in Enfish. Instead, Appellants’ claims
1—20 simply recite an abstract concept of “accessing social networks to
analyze individual behavior at a meta level based on common community
interests.”
Because Appellants’ claims 1—20 are directed to a patent-ineligible
abstract concept and do not recite something “significantly more” under the
second prong of the Alice analysis, we sustain the Examiner’s rejection of
these claims under 35 U.S.C. § 101.
9
Appeal 2016-008063
Application 13/597,339
35 U.S.C. § 103(a): Claims 1—4 and 7—8
With respect to independent claim 1, the Examiner finds (1) the
combination of Jain and Li teaches all limitations of Appellants’ claim 1;
and (2) the Examiner has articulated reasoning with underpinning to support
the combination of Jain and Li. Final Act. 11—12 (citing Jain H 31, 40, 47,
50; Li pp. 596-597).
Appellants do not dispute the Examiner’s reasoning for making the
combination. Rather, Appellants argue (1) Jain does not determine “an
overlap of cluster of users based on a common user belonging to both
clusters” and (2) Li does not determine “common sets of those elements”
i.e., (i) “all entities in each of said [] primitive communities hav[e] a direct
association with every other entity in its [] primitive-community,” (ii) “at
least one community of entities from said social network of said plurality of
entities based on said union of all distinct entities applied to said network”
and (iii) “each entity in said at least one community of entities having a
direct association with at least one other entity in said at least one
community of entities,” as recited in claim 1. App. Br. 24—28.
We do not find Appellants’ arguments persuasive or commensurate
with the scope of claim 1. Instead, we find the Examiner provides a
comprehensive response to Appellants’ arguments supported by a
preponderance of evidence. Ans. 27—28. As such, we adopt the Examiner’s
findings and explanations. Id. For example, Appellants’ claim 1 does not
recite “an overlap of cluster of users based on a common user belonging to
both clusters.” Contrary to Appellants’ arguments, Jain teaches:
the evaluation component 106 can also make determinations
whether more than one object has had interactions with a
particular user. The evaluation component 106 can facilitate
10
Appeal 2016-008063
Application 13/597,339
creating a link 108 between objects when each of the objects has
had one or more interactions with a particular user. The
evaluation component 106 can utilize the link(s) 108 between
objects that have at least one interaction in common with a
particular user to facilitate creating a link (s) 108 between the
cluster 108 (e.g., group) of users that have interacted with one
such object linked to the particular user and the cluster 108 of
users that have interacted with another such object(s) linked to
the particular user.
Jain 147. As recognized by the Examiner, Jain’s disclosure of a link
represents an overlap “between a cluster of users that have interacted with
one object and another cluster of users that have interacted with another
object by evaluating a common user that interacted with both objects.” Ans.
28.
Likewise, contrary to Appellants’ arguments, Li teaches two core
communities Cl and C2 where each vertex (entity) has a direct edge
(relationship) with each other and, as such, teaches “sets of entities of said
first primitive communities that are also present in said at least one of said
second primitive communities to identify common sets of entities.” Ans. 29.
Lor the reasons set forth above, Appellants have not persuaded us of
Examiner error. Accordingly, we sustain the Examiner’s anticipation
rejection of independent claim 1 and its dependent claims 2-4 and 7—8,
which Appellants do not argue separately. App. Br. 27.
35 U.S.C. § 103(a): Claims 9-20
With respect to independent claims 9 and 16, the Examiner finds (1)
the combination of Jain, Li, and Zhou teaches all limitations of Appellants’
claims 9 and 16; and (2) the Examiner has articulated sufficient reasoning
11
Appeal 2016-008063
Application 13/597,339
with underpinning to support the combination of Jain, Li, and Zhou. Final
Act. 15—19 (citing Jain H 31, 40, 47, 50; Li 596—597; and Zhou 125).
Appellants reiterate the same arguments presented against claim 1.
For the same reasons discussed, we sustain the Examiner’s obviousness
rejection of claims 9—20.
With respect to dependent claims 5 and 6, Appellants present no
separate patentability arguments. App. Br. 27. For the same reasons
discussed, we also sustain the Examiner’s obviousness rejection of claims 5
and 6.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1—20 under 35 U.S.C.
§§ 101, 102, and 103(a).
DECISION
As such, we affirm the Examiner’s final rejections 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
12