Ex Parte Hu et al

Patent Trials and Appeals Board

Jul 2, 2019

13181307 - (D) (P.T.A.B. Jul. 2, 2019)

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.)
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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.").)
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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
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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.
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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).
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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.
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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
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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.)
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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.)
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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
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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.
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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-
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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
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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
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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.
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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).
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