Ex Parte Hu et alDownload PDFPatent Trials and Appeals BoardJul 2, 201913181307 - (D) (P.T.A.B. Jul. 2, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/181,307 07/12/2011 87851 7590 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 07/05/2019 FIRST NAMED INVENTOR Bo Hu 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 26295-18351 4128 EXAMINER MUNSON, PATRICIA H ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 07/05/2019 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): ptoc@fenwick.com fwfacebookpatents@fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BO HU, KELLY WINTERS, EMILY CLARK WHITE, and EV AN SHARP Appeal2017-009432 Application 13/181,307 Technology Center 3600 Before HUNG H. BUI, BETH Z. SHAW, and AARON W. MOORE, Administrative Patent Judges. MOORE, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-009432 Application 13/181,307 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1-11, 13-19, and 21-22, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. THE INVENTION The application is directed to "[a] social networking system [that] suggests deals relevant to a user." (Abstract.) Claim 1, reproduced below, exemplifies the subject matter on appeal: 1. A computer-implemented method comprising: storing, by a social networking system, information describing users and relations between users, wherein a user related to another user is identified as a connection of the other user; identifying a user of the social networking system; identifying a plurality of candidate deals received from providers; determining, by a processor, a plurality of circles of connections of the user, each circle of connections comprising users with whom the user has established a connection in the social networking system, each circle of connections determined based on affinities among the users in the circle of connections; selecting a circle of connections from the plurality of circles of connections; selecting, by the processor, a set of candidate deals comprising a first deal and a second deal from the plurality of candidate deals received from the providers, wherein the first deal is associated with a first connection and the second deal is associated with a second connection and the first and the 1 Appellants identify Facebook, Inc. as the real party in interest. (See App. Br. 2.) 2 Appeal2017-009432 Application 13/181,307 second deal are selected responsive to determining that the first connection and the second connection are in the same circle of connections; and sending information describing the selected set of candidate deals for presentation to the user with instructions to present the first deal and the second deal together via a user interface. THE REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Kendall et al. Ransom et al. Hiller brand Roeding et al. US 2009/0119167 Al US 2009/0222348 Al US 2010/0257028 Al US 2011/0029364 Al THE REJECTIONS May 7, 2009 Sept. 3, 2009 Oct. 7, 2010 Feb. 3, 2011 1. Claims 1-11, 13-19, and 21-22 stand rejected under 35 U.S.C. § 101 as "not directed to patent eligible subject matter." (See Final Act. 2- 3.) 2. Claims 1-11, 13-19, and 21-22 stand rejected under 35 U.S.C. § 112 for "failing to comply with the enablement requirement." (See Final Act. 3--4. 2) 2 An indefiniteness rejection was withdrawn. (See Ans. 2; August 5, 2016 Advisory Action ("The claim amendments correct the grammatical error of the 112(b) rejection. The remaining rejections are maintained and unaffected by the amendment.").) 3 Appeal2017-009432 Application 13/181,307 3. Claims 1-7, 10-11, 13-19, and 21-22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Roeding and Ransom. (See Final Act. 5-13.) 4. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Roeding, Ransom, and Kendall. (See Final Act. 13-14.) 5. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Roeding, Ransom, and Hillerbrand. (See Final Act. 14-- 15 .) ANALYSIS Patent Eligibility By statue, a patentable invention must be a "new and useful process, machine, manufacture, or composition of matter, or [a] new and useful improvement thereof." 35 U.S.C. § 101. The Courts have identified implicit exceptions to patentability-laws of nature, natural phenomena, and abstract ideas, and the Supreme Court in Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,217 (2014), and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), provided a framework for identifying ineligible claims. The "Mayo/Alice" evaluation has two steps: (1) determining if a claim is directed to an ineligible concept, and, if so, (2) determining if one or more claim elements is sufficient make the claim "significantly more" than the ineligible concept itself. See Alice, 573 U.S. at 217-18. The most recent guidance for applying Mayo/Alice is USPTO 's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50. The Guidance instructs us first to look at whether a claim recites a judicial exception, the broad categories of 4 Appeal2017-009432 Application 13/181,307 which are defined by the Guidance as mathematical concepts, certain methods of organizing human activity, and mental processes. 3 See 84 Fed. Reg. at 54 (Step 2A, Prong One). If we find a judicial exception, we determine whether it is "integrated into a practical application" in the claim. See 84 Fed. Reg. at 54--55 (Step 2A, Prong Two); see also MPEP § 2106.05(a}-(c), (e}-(h) (non-exhaustively listing ways in which a practical application may be found). "Practical application" means that the claim includes "a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." 84 Fed. Reg. at 54. For example, a practical application may exist in an improvement in the functioning of a computer or other technology, a particular machine or manufacture integral to the claim, or transformation or reduction of an article to a different state or thing. See id. at 55. However, merely using a computer to perform an abstract idea, adding insignificant extra-solution activity, or only generally linking to a particular technological environment or field are not sufficient for a practical application. See id. 3 "Mathematical concepts" includes "mathematical relationships, mathematical formulas or equations, [and] mathematical calculations"; "certain methods of organizing human activity" includes "fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)"; "mental processes" includes "concepts performed in the human mind (including an observation, evaluation, judgment, opinion." 84 Fed. Reg. at 52. 5 Appeal2017-009432 Application 13/181,307 If a claim recites a judicial exception not integrated into a practical application, the claim is directed to an abstract idea. In that case, we further look at whether the claim adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional." See 84 Fed. Reg. at 56 (Step 2B); see also MPEP § 2106.05( d). In the absence of such an addition, a claim that has reached this stage of the analysis is ineligible. Abstract Idea Claim 1 recites a method that includes (1) "storing ... information describing users and relations between users"; (2) "identifying" a user and "a plurality of candidate deals received from providers"; (3) "determining ... a plurality of circles of connections of the user ... based on affinities among the users in the circles"; (4) "selecting" a circle; (5) "selecting ... a set of candidate deals," where a "first deal is associated with a first connection" and a "second deal is associated with a second connection" and the deals are selected "responsive to determining that the first connection and the second connection are in the same circle"; and ( 6) "sending" information describing the deals for presentation to the user via a user interface. 4 The Examiner found that "the claims detail steps toward targeting advertising, targeted advertising is a fundamental economic practice and therefore the claims disclose a patent ineligible abstract idea." (Final Act. at 3.) The Examiner further found that "[t]he claims do not include limitations that are 'significantly more' than the abstract idea because the claims do not include an improvement to another technology or technical field, an 4 Following the lead of the Examiner and Appellant, we address subject matter eligibility in the context of claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). 6 Appeal2017-009432 Application 13/181,307 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." (Id.) The Examiner also found that "[t ]he limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry." (Id.) Appellants argue that "[t]he claimed invention is not merely about 'targeted advertisement,' as maintained in the Office Action" because "[i]nstead, the claimed invention provides a specific approach for offering deals to users of a social networking system in a way to get more interaction from the user." (App. Br. 7.) "More specifically," Appellants argue, "the claimed invention selects a set of candidate deals ... comprising a first deal associated with a first connection and a second deal associated with a second connection, such that the first and second connection are in the same circle of connections," that "[b ]y selecting the set of deals in this manner and sending the set of deals for presentation to the user, the user can relate the deals presented together and is provided with a social context," and "[a]s a result, the user is more likely to be interested in the deals." (Id.) Consistent with Appellants' above description of their own claims, we find that the limitations we summarize above describe a particular method for promoting or distributing deals, which is fairly characterized as at least one of "advertising, marketing or sales activities or behaviors," all of which fall into the "certain methods of organizing human activity" category of abstract ideas. See 84 Fed. Reg. at 52. 7 Appeal2017-009432 Application 13/181,307 Because we agree with the Examiner that the claim recites an abstract idea, we proceed to Prong Two of Step 2A to determine if the idea is integrated into a practical application, in which case the claim as a whole would not be "directed to" merely an abstract idea. Practical Application As noted, the "practical application" inquiry looks at whether a claim includes "a meaningful limit on the judicial exception," to ensure that "the claim is more than a drafting effort designed to monopolize the judicial exception." 84 Fed. Reg. at 54. In this case, we have a "computer- implemented" advertising technique. The claim thus recites a method that "merely uses a computer as a tool to perform an abstract idea," id. at 55, and, therefore, lacks integration into a practical application. We do not find "an improvement in the functioning of a computer or other technology," because the generic computer is used for its ordinary purpose. We do not find "a particular machine or manufacture integral to the claim," because a general purpose computer is not enough. And we do not find "transformation or reduction of an article to a different state or thing," because only intangible data is changed or manipulated. Because we conclude that claim 1 lacks additional elements that would allow us to find a practical application, we agree with the Examiner that the claim is directed to an abstract idea and move to Step 2B. Inventive Concept "It is possible that a claim that does not 'integrate' a recited judicial exception is nonetheless patent eligible" as, "[ fJor example the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element." 84 Fed. Reg. at 8 Appeal2017-009432 Application 13/181,307 56. We need not reconsider the issues addressed in Step 2A, but do weigh whether any additional claim elements add something beyond the judicial exception that is not "well-understood, routine, conventional" in the field or, instead, simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Id. at 56. Claim 1 is directed to a computer-implemented technique for targeted advertising. Appellants do not identify, and we otherwise fail to find, any additional elements that evidence an "inventive concept" beyond the abstract idea that might impart eligibility. Cf Parker v. Flook, 437 U.S. 584, 585-86 (1978) (holding claims ineligible because "[t]he only difference between the conventional methods ... and that described in respondent's application rests in [the abstract idea]"). Eligibility Conclusion The claims recite an abstract idea, have not been shown to be integrated into a practical application, and do not include additional recitations that make them significantly more than the underlying abstract idea. The Examiner's rejection of claims 1-11, 13-19, and 21-22 under 35 U.S.C. § 101 is, therefore, sustained. Enablement The Examiner finds that "Applicant's specification gives several examples but does not provide the algorithm that performs the claimed 'determining the plurality of circles of connections' function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed subject matter." (Final Act. 4.) 9 Appeal2017-009432 Application 13/181,307 Appellants argue they are not required "to disclose how to perform steps that are well known in the art to prove that applicant was in possession of the claimed invention" and that "a person skilled in the art would know how to write an algorithm or computer program to determine circles of friends by retrieving user information and comparing user attributes, and thus determine a plurality of circles of friends." (App. Br. 11.) We agree with Appellants that a person of skill in the art would be capable of determining circles of connections, for example by grouping users with common attributes or interests into a circle, and therefore do not sustain the Section 112 rejection of claims 1-11, 13-19, and 21-22. Obviousness Claims 1-11, 13-19, 21, and 22 The Examiner found that Roeding discloses most aspects of Appellants' independent claims 1 and 15, but "does not specifically disclose that information describing the association between the selected set of candidate deals and the one or more users of the selected circle of connections is provided for presentation with the selected set of candidate deals." (Final Act. 6.) The Examiner further found that Ransom discloses both selecting deals and sending the information to the user. (Id. at 6-7.) The Examiner concluded that "[i]t would have been obvious to one having ordinary skill in the art of marketing via a social network at the time of the invention to combine the providing information of a deal of Roeding with the providing information of a deal including describing the association between the deal and the selected users in a circle of friends of Ransom." (Id. at 7.) 10 Appeal2017-009432 Application 13/181,307 Appellants argue that the art does not teach or suggest the claimed deal selecting step, in which a "first deal ... associated with a first connection" and a "second deal ... associated with a second connection," are "selected responsive to determining that the first connection and the second connection are in the same circle of connections." (See App. Br. 12- 15.) Appellants argue that "[t]he example provided by Roeding of the system selecting and sending information to a user are offers based on location-based information" and that "the selection step described in Ransom is based on the participant's social network friends and not the connections being in the same circle of connections." (App. Br. 14--15.) The Examiner responds that "the Roeding reference teaches selecting deals for presenting to users based on an association of the user's friends with the deal." (Ans. 5, citing Roeding ,r,r 119, 123-129, 138-147). The Examiner further responds that "Ransom teaches sending information to present to the user providing information describing the association between the set of deals and the selected users for presentation with the selected deals." (Id., citing Ransom ,r 107). The Examiner finds that Ransom's "list includes multiple promotions associated with multiple friends" and "[t ]he first and second connections (friends) are in the same circle of friends with the user." (Id. at 5---6). We agree with the Examiner. Ransom describes that "the participant is presented with a list of promotions that the participant's social network friends have recently entered and/or interacted with." (Ransom ,r 107.) It thus selects "a set of candidate deals," where the set comprises a first deal and a second deal, "the first deal is associated with a first connection" ( a first friend), the "second deal is associated with a second connection" ( a second 11 Appeal2017-009432 Application 13/181,307 friend), and the deals are selected responsive to determining that the first and second connections "are in the same circle of connections" (the participant's social network friends). We see nothing in the claim that would preclude the participant's friends from being a "circle," as the "affinity" could be, for example, the connection to the participant. Appellants also argue that the art does not teach or suggest "sending information describing the selected set of candidate deals for presentation to the user with instructions to present the first deal and the second deal together via a user interface." The Examiner responds that Roeding "teaches sending information to present to the user providing information describing the selected set of candidate deals for presentation to the user" and "[f]urther, Ransom teaches sending information to present to the user providing information describing the association between the set of deals and the selected users for presentation with the selected deals." (Ans. 6, citing Roeding ,r,r 123-129, 138-147; Ransom ,r 107.) We again agree with the Examiner. As described in Ransom's paragraph 107, "the participant is presented with a list of promotions that the participant's social network friends have recently entered and/or interacted with," which would involve sending the deals (the "list of promotions") to the user (the "participant") for presentation together (in the "list"). Because we find Appellants' arguments regarding the independent claims unpersuasive of error, we sustain the Section 103 rejections of claims 1-5, 7-9, and 15-19. Appellants offer additional arguments concerning dependent claims 6, 10, 11, 13, 14, 21, and 22, which we address below. 12 Appeal2017-009432 Application 13/181,307 Claim 6 Claim 6 requires that the circle of connections is "determined such that [its] users ... have more interactions with each other compared to their interactions with users of another circle of connections." In the Final Action, the Examiner found that "Roeding discloses that the system may suggest a group of friends of the user with a shopping interest related to the users shopping interest." (Final Act. 11 ( citing Roeding ,r,r 80-98, 123-129).) In the Answer, the Examiner adds that "the fashion offers are for friends that the user interacts with more about fashion and the electronic friends are friends that the user interacts with about electronics but not about fashion." (Ans. 7.) The Examiner also adds that "Roeding in [0119-120] teaches that the 'friend shopping feed' includes friends and friends of friends who may receive the offers" and "[t]he user interacts more with friends then with friends of friends." (Id.) We conclude that Roeding's disclosure of grouping friends by interest does not teach or suggest determining a circle according to whether its users "have more interactions with each other compared to their interactions with users of another circle." We therefore do not sustain the Section 103 rejection of claim 6. Claims 10 and 22 Claims 10 and 22 require that a candidate deal is selected "if the information describing the candidate deal matches actions of the one or more users of the selected circle of connections." The Examiner found in the Final Action that "Roeding discloses selecting deals to present based on actions of connections of the user in relation to the deal." (Final Act. 12 (citing Roeding ,r,r 79-98, 101, 123- 13 Appeal2017-009432 Application 13/181,307 129).) The Examiner adds that "Roeding discloses selecting deals to present based on actions of connections of the user in relation to the deal" because "the user's actions have shown that the user interested in at least electronics or fashion." (Ans. 7.) Appellants argue that "Roeding does not disclose selecting a promotion based on actions of the connection of the user in relation to the deal." (App. Br. 17-18.) We conclude that Roeding's description of how "offers ... [may be] personalized via matching" (see Roeding ,r 79) and how a user may send offers and discounts to friends (see id. ,r 128) are insufficient to teach or suggest selecting a deal "if the information describing the candidate deal matches actions of the one or more users of the selected circle of connections" of users because the first is based on actions of the user, not users of the circle, and we fail to see how the second describes selecting "by the processor," as claimed. We thus do not sustain the Section 103 rejection of claims 10 and 22. Claims 11 and 21 Claims 11 and 21 require that a candidate deal is selected "if the information describing the candidate deal matches interests of the one or more users of the selected circle of connections." The Examiner found that "Roeding discloses selecting deals to present based on actions of connections of the user in relation to the deal." (Final Act. 12, citing Roeding ,r,r 79-98, 101, 123-129.) In the Answer, the Examiner adds that "Roeding discloses selecting deals to present based on actions of connections of the user in relation to the deal" because "the user is 14 Appeal2017-009432 Application 13/181,307 interested in at least electronics or fashion and will receive the related deal." (Ans. 8.) Appellants argue that "Roeding does not describe selecting an offer from the selected set of offers based on matching interests of the user's friends in a selected category of friends." (App. Br. 18-19.) As with claims 10 and 22, we conclude that Roeding's description of how "offers ... [maybe] personalized via matching" (see Roeding ,r 79) and how a user may send offers and discounts to friends (see id. ,r 128) are insufficient to teach or suggest selecting a deal "if the information describing the candidate deal matches interests of the one or more users of the selected circle of connections" because the first is based on actions of the user, not users of the circle, and we fail to see how the second describes selecting "by the processor," as claimed. We accordingly do not sustain the Section 103 rejection of claims 11 and 21. Claim 13 Claim 13 requires that sending the information "further comprises sending information describing the one or more users of the selected circle of connections associated with the selected set of candidate deals for presentation to the user along with the selected set of candidate deals." The Examiner finds that both Roeding and Ransom disclose "sending information describing actions of connections of the user in relation to the deal." (Final Act. 12, citing Roeding ,r,r 79-98, 119, 123-129 & Ransom ,r,r 51, 107; Ans. 8.) We do not sustain the Section 103 rejection of claim 13 because the Examiner does not explain, and we do not otherwise see, where the 15 Appeal2017-009432 Application 13/181,307 references disclose sending information "describing the one or more users," as claimed. Claim 14 Claim 14 requires that a candidate deal is selected for presentation "if information describing the candidate deal matches actions of the user performed using the social networking system." The Examiner finds that both Roeding and Ransom disclose "selecting deals to present based on actions of connections of the user in relation to the deal." (Final Act. 13, citing Roeding ,r,r 79-98, 101, 123-129 & Ransom ,r,r 51, 107.) Appellants argue that "Roeding does not describe the features of claim 14, for example, matching click history of the user to click history of a friend of the user" and "Ransom also does not describe matching the information describing interaction of a participant's friend and a promotion to actions performed by the participant." (Reply Br. 17.) We agree with the Examiner that Roeding's description of how "offers ... [maybe] personalized via matching of available individual profile data sets," including "implicitly inferred user preferences, such as favorite product categories or items or stores, based on clicks on items or stores" is sufficient to teach or suggest selecting a deal "if the information describing the candidate deal matches actions" of the user. (Roeding ,r 79.) We accordingly sustain the Section 103 rejection of claim 14. 16 Appeal2017-009432 Application 13/181,307 DECISION The rejection of claims 1-11, 13-19, and 21-22 under 35 U.S.C. § 101 is affirmed. The rejection of claims 1-11, 13-19, and 21-22 under 35 U.S.C. § 112 is reversed. The rejection of claims 1-5, 7-9, and 14--19 under 35 U.S.C. § 103 is affirmed. The rejection of claims 6, 10, 11, 13, 21, 22 under 35 U.S.C. § 103 is reversed. 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). AFFIRMED5 5 Because we sustain at least one ground of rejection with respect to each claim on appeal, the Examiner's decision rejecting claims 1-11, 13-19, and 21-22 is affirmed. See 37 C.F.R. § 4I.50(a)(l). 17 Copy with citationCopy as parenthetical citation