Ex Parte Kendall et al

Patent Trial and Appeal Board

Aug 23, 2017

12853241 (P.T.A.B. Aug. 23, 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.
12/853,241 08/09/2010 Timothy A. Kendall 26295-17242/US 5473
87851 7590 08/25/2017
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center SITTNER, MATTHEW T
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
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 TIMOTHY A. KENDALL, MATTHEW R. COHLER, MARK E.
ZUCKERBERG, YUN-FANG JUAN, ROBERT KANG-XING JIN,
JUSTIN M. ROSENSTEIN, ANDREW G. BOSWORTH,
YISHAN WONG, ADAM D’ANGELO, and CHAMATH M.
PALIHAPITIYA
Appeal 2015-008182
Application 12/853,241
Technology Center 3600
Before ANTON W. FETTING, SHEILA F. Me SHANE, and
MATTHEW S. METERS, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The Appellants request rehearing of our Decision (hereinafter “Dec.”),
entered April 21, 2017, in which we affirmed the Examiner’s rejection of
claims 1—3, 5, 6, 8—11, and 13—20 under 35 U.S.C. § 101 (Request for
Rehearing, filed June 18, 2017, hereinafter “Req. Reh’g”).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, to responses to a
new ground of rejection designated pursuant to § 41.50(b), or presentations
Appeal 2015-008182
Application 12/853,241
of new arguments based upon recent decisions of the Federal Circuit. 37
C.F.R. §41.52.
ISSUES ON REHEARING
The Appellants argue that in our Decision we failed to consider the
issues in this case in light of recent decisions from the Federal Circuit,
namely, Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)
(“Enfish”), McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299 (Fed. Cir. 2016) (“McRO”), and BASCOM Global Internet v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (“BASCOM’). Req. Reh’g 2.
The Appellants request that we perform a review under the more recent case
law and reverse our decision. Id.
DISCUSSION
In their Request, the Appellants argue that in Enfish, the Federal
Circuit found that the claims at issue were not directed to “general-purpose
computer components [that] are added post-hoc to a fundamental economic
practice or mathematical equation,” but rather are “directed to a specific
implementation of a solution to a problem in the software arts.” Id. at 2—3
(citing Enfish, 837 F.3d at 1399). The Appellants assert that, as in Enfish,
the claims at issue are more than merely adding of general-purpose
components to the economic practice of advertising or to a method of
organizing human activity because, for instance,
Claim 1 very specifically defines a step-by-step method starting
with receiving an ad request and the details of the request, all the
way through logging information, generating stories, receiving
bids, and selecting stories to be accelerated. . . [and] it includes
another concept unique at the time in this context of computing
2
Appeal 2015-008182
Application 12/853,241
affinity scores for users and applying those scores in the
acceleration of stories so the advertiser also gets the benefit of
sponsoring a story for a user from a close friend rather than a
distant connection.
Req. Reh’g 4.
The Appellants contend that we did not consider all the steps in “the
overall context of providing organic stories in a social networking context.
This is not a mere adding of general-purpose computer components post-hoc
to a claim to the fundamental economic practice of advertising,” and thus not
directed to an abstract idea. Req. Reh’g 9. It is also alleged that claim 1:
“defines a step-by-step method starting with receiving an ad request and the
details of the request, all the way through logging information, generating
stories, receiving bids, and selecting stories to be accelerated. . . [and]
includes another concept unique at the time in this context of computing
affinity scores for users and applying those scores in the acceleration of
stories so the advertiser also gets the benefit of sponsoring a story for a user
from a close friend rather than a distant connection.” Id. at 4.
The Appellants additionally argue that in Enfish the Federal Circuit
found that the claims at issue were an improvement of existing technology
based on the specification’s teachings where the invention achieved benefits
that the existing technology lacked. Req. Reh’g 4 (citing Enfish, 822 F.3d at
1336). The Appellants assert that “the claimed invention achieves benefits
that existing attempts do not have by allowing advertisers to utilize
connections among members of a social networking website to sponsor posts
by those users and thus provide a more natural way of introducing users to
brands.” Id. at 5 (citing Spec. 1 5).
3
Appeal 2015-008182
Application 12/853,241
Turning to McRO, the Appellants argue that the independent claims at
issue “include specific limitations that prevent preemption of all techniques
for organizing human activity or even for providing social endorsements,”
similar to McRO’s claims, also having non-preemptive limitations. Req.
Reh’g 5 (citing McRO, 837 F.3d at 1315). The Appellants allege that,
although the Board found that preemption is not dispositive as to a finding of
patent eligibility, the lack of preemption “strongly suggests” that the claims
are patent eligible.1 Id. at 6. The Appellants also contend that, similar to
McRO, “the claimed method does not merely automate an existing process
that has historically been performed by humans using the steps humans
would normally perform in that process, and then add a computer to that
process,” and that “the claim are steps that only a computer would perform
in that particular way and in that particular ordering.” Id. at 8—9. As an
example, Appellants argue, “a human providing a celebrity endorsement
would not log actions taken by connections over a period of time or generate
a plurality of stories about those actions, and then collect bid amounts,
compute affinity scores, and use this to accelerate certain stories.” Id. at 10.
The Appellants allege that, in addressing whether the claims are
“significantly more,” our assessment of pre-Internet advertising practices did
not consider how print ads might be accelerated over other stores based on
bid amounts and affinity scores between two users. Id. The Appellants
allege that the insert in a school alumni organization newsletter did not
1 Although the Request states that “Though the Board states that pre-emption
is dispositive as to a finding of patent eligibility . . ,“it appears that this
statement is an inadvertent error, and the statement is assumed to be that
“pre-emption is not dispositive.” See Req. Reh’g 6.
4
Appeal 2015-008182
Application 12/853,241
consider all the steps of the claims that include matching an advertisement
request that includes information related to actions without the need of a
human newsletter drafter, or logging information related to actions taken, or
computation of an affinity score, with acceleration of stories. Id. at 10—11.
Additionally, it is alleged that under the claims, there are “different stories
for different viewing users because different viewing users can have
different connections who have performed different actions,” with
“acceleration] [of] different stories (or acceleration] [of] same stories in
different ways) for different viewing users because affinity scores of
different viewing users can be different.” Id. at 11. The Appellants contrast
this with a human newsletter drafter who “typically would generate stories
that seem interesting to all or most alumni receiving the newsletter.” Id.
The Appellants additionally contend that BASCOM is instructive
because the particular arrangement of the specific limitations concerning
filtering content on the Internet was deemed “something more” under the
second step of Alice. Req. Reh’g 6—7. ft is alleged that, similar to
BASCOM, the instant claims supply “‘an unconventional and non-generic’
application of generating and selecting sponsored stories” and “a specific,
discrete implementation” that includes the logging, generating stories,
matching advertisement requests, computing affinity scores, selecting
stories, and accelerating them, with story display steps. Id. at 8.
We find that, in light of more recent case law and the Appellants’
arguments on their application, there was no misapprehension or issues
overlooked in the Decision. The Appellants argue that the claims represent
more than adding computer components to social endorsements, however,
all the method steps are directed to communicating a social endorsement—
5
Appeal 2015-008182
Application 12/853,241
which is for the purposes of advertising a product and/or selling advertising,
which are fundamental, long-standing, and well-known economic practices.
The issues that the Appellants argue with respect to similarities to McRo and
BASCOM are that the instant claims are specific implementations in the
software arts, and specific techniques for that implementation. Underlying
the argument is the allegation that specific steps of the claims are steps that a
computer would perform in a certain order and this differentiates them from
the steps humans would normally perform, with the Appellants focusing on
the steps of “logging” information, “generating” the “sponsored story,” and
“computing an affinity score” with associated “acceleration” of story
display. Examining the elements of the claims, the Specification broadly
describes communications of the invention in the context of a social network
as follows
Persons skilled in the relevant art can appreciate that many
modifications and variations are possible in light of the above
disclosure. For example, although the foregoing embodiments
have been described in the context of a social network website,
it will apparent to one of ordinary skill in the art that the
invention may be used with any electronic social network
service, even if it is not provided through a website. Any
computer-based system that provides social networking
functionality can be used in accordance with the present
invention even if it relies, for example, on e-mail, instant
messaging, or other form of electronic communications, and
any other technique for communicating between users. The
invention is thus not limited to any particular type of
communication system, network, protocol, format or
application.
6
Appeal 2015-008182
Application 12/853,241
Specification (“Spec.”) 1102.2
The Appellants do not allege that the communications techniques of
the social network, which extend to e-mail and “any other technique for
communicating between users,” are inventive in and of themselves. The
Specification states that the invention is generically related to “social
networking websites and other websites in which users can form connections
with each other,” and refers to “[sjocial networks, or social utilities that
track and enable connections between members (including people,
businesses, and other entities).” Spec. H 2, 3. As such, a “social network”
serves to track and enable connections between users. Thus, the school
alumni organization analogized in the Decision was fairly viewed as a social
network that would serve to facilitate communications, as well as track and
enable connections amongst its alumni users. See Dec. 10—11.
We do not agree with the Appellants’ argument that the claimed
method does not automate an existing process that has historically been
performed by humans, and is a computer-specific method only. More
specifically, the Appellants’ differentiation argument that feeding a
sponsored story without the need of a human newsletter drafter is not
persuasive. Claim 1 recites the selection of data related to user actions that
is used to generate a “sponsored story,” for the feed to viewing users.
“Sponsored stories” include, [as argued by Appellants], include messages
such as “your friend John likes Nike,” which is a simple notification
2 Herein, we refer to the version of the Specification published on Febmary 3,
2011, as US Publication No. 2011/0029388 Al, which is the same as the
originally-filed Specification filed on August 9, 2010, except for some paragraph
numbering variations.
7
Appeal 2015-008182
Application 12/853,241
message. See Dec. 5; App. Br. 11. Creating notice-type advertisements is
not unique to the Internet or computers, but rather is used, more generally, in
targeted marketing and advertising. As discussed in the Decision, we view
this type of “story” as similar to an insert in an alumni newsletter that lists
alumni who have acted to sign up for a trip (i.e., positive responses of other
connected alumni) that is being advertised. Id. at 10-11. Similarly,
different users (recipients) can be sent newsletters with the inserts specific to
signed-up individuals having varying connections, i.e., those who were in
the same graduating class or who had been on previous trips with the
respective users.
Considering the other steps of the claims in toto, none perform
anything beyond well understood, routine, and conventional activities.
There is no showing or rationale provided that the use of a computer to
generate a “story,” that is, simply reporting an action to another, would be
beyond routine use of a computer as a tool to automate regular activity and
“relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice
Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2359 (2014)). As to
another alleged differentiation step that the Appellants argue, that is, that
under the claims information related to user’s actions is logged, there is no
rationale provided as to why logging of actions consisting of recording
actions (for instance, noting on paper that an individual has signed up for a
trip, for instance), would not be routine, short of the logging being
performed automatically by computer. The Appellants do not allege that the
8
Appeal 2015-008182
Application 12/853,241
calculation of an “affinity score”3 was not known or is inventive in and of
itself. Because an “affinity score,” may be based upon any user action,
interest, or characteristic, this step would include, for instance, evaluating
whether to “accelerate” a “story” by, for instance, assessing whether to
preferentially send an alumna newsletter targeted to alumna in the same
class with other alumna (users) who have signed up for a trip and who have
been on previous trips with the users. See Spec. 1 60. Similarly, the
Appellants do not allege that the steps of bidding or using the bids to select
advertising stories to display was not previously known or is inventive.
These steps add nothing that “amounts to significantly more than a patent
upon the [abstract idea] itself.” Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134
S. Ct. 2347, 2355 (2014); see Synopsys, Inc. v. Mentor Graphics
Corporation, 839 F.3d 1138, 1152 (2016). Moreover, merely combining a
series of abstract ideas does not render the combination any less abstract.
Cf. Shortridge v. Found. Constr. Payroll Serv., LLC, No. 14-CV-04850-JCS,
2015 WL 1739256 (N.D. Cal. Apr. 14, 2015), affd, No. 2015-1898, 2016
WL 3742816 (Fed. Cir. July 13, 2016).
Therefore, taking the claim elements separately—logging information
relating to actions performed by social networking system users, generating
3 The Specification discloses that an “affinity score” “takes into account the
set of affinities for the particular member for each type of data field that is in
a candidate story,” where an “affinity” “may merely be a correlation
between something in the candidate story and some information stored in
connection with that member, whether is an action taken by the member, a
communication involving the member, a characteristic, feature or expressed
interest in the member's profile.” Spec. | 60. No quantitative formula for an
“affinity score” is provided in the Specification.
9
Appeal 2015-008182
Application 12/853,241
stories, computing affinity scores of the story for the viewing user, bidding
the story, and providing the story for display— the computer functions
performed in all the steps of the process are conventional. And when
considered as a combined ordered series of steps, the combination adds
nothing that is not also present when the steps are considered separately.
Thus, the claims at issue lack “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,”’ {Alice, 134 S. Ct. at
2355), or represent “a result that overrides the routine and conventional”
aspects of the technology (DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1258—59 (Fed. Cir. 2014)). Rather the claims “simply instruct
the practitioners to implement the abstract idea ... on a generic computer.”
Alice, 134 S. Ct. at 2359.
Appellants overstate the alleged similarities of the claims at issue to
Enfish. The claims at issue in Enfish, and the thrust of its analysis, were
directed to specific improvements in the way that computers operate, which
is not at issue here.4 See Enfish, 822 F.3d at 1336. Nor do the claims solve
a problem unique to the Internet. See DDR, 773 F.3d at 1257.
As such, considering all the claimed steps, we find no
misapprehension or oversight in our Decision.
4 “[T]he key question is ‘whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an ‘abstract idea’ for which computers are invoked merely
as a tool.’” Visual Memory LLC v. NVIDIA Corp., No. 16-2254, 2017 WL
3481288, at *3 (Fed. Cir. August 15, 2017) (quoting Enfish, 822 F.3d at
1335-36).
10
Appeal 2015-008182
Application 12/853,241
CONCLUSION
In view of the foregoing, we are not persuaded of reversible error in
the Examiner’s rejection, or that we misapprehended or overlooked any
points of law or fact in rendering our decision. We therefore deny the
Appellants’ request to modify our Decision and the Examiner’s rejection
remains affirmed.
DECISION
Although we have reconsidered certain aspects of our original
Decision in light of the Appellants’ arguments, we decline to modify our
original Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
11