Ex Parte Kendall et al

Patent Trial and Appeal Board

Aug 23, 2017

13804150 (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.
13/804,150 03/14/2013 Timothy A. Kendall 26295-23399 8705
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 2016-002048
Application 13/804,1501
Technology Center 3600
Before ANTON W. FETTING, SHEILA F. McSHANE, and
MATTHEW S. MEYERS, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision to reject claims 9—20 and 30-42. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Facebook, Inc.
Appeal Brief filed May 5, 2015, hereafter “Appeal Br.,” 1.
Appeal 2016-002048
Application 13/804,150
BACKGROUND
The invention relates to social networking websites and using
connections amongst users to generate and communicate social
advertisements. Specification, hereafter “Spec.,” 12.2
Representative method claim 9 is reproduced from page 18 of the
Appeal Brief (Claims App.) as follows:
9. A computer-implemented method comprising:
accessing a profile for a plurality of users of the social
networking system, each profile identifying a connection to
each of a plurality of other users of the social networking
system, the plurality of users comprising a viewing user;
receiving a message from a third party system that is in a
different domain than the social networking system, the
message identifying the third party system and describing an
action performed on the third party system by the viewing user;
generating, by a computer of the social networking
system, a confirmation message for display to the viewing user
on the third party system, the confirmation message providing
information about a story that could be provided to one or more
connections of the viewing user, the story describing the action
performed on the third party system by the viewing user;
receiving an indication of whether the viewing user opts
in or opts out of allowing the story describing the action
performed on the third party system by the viewing user to be
provided to the one or more connections; and
based on the viewing user opting in to allowing the story
to be provided to the one or more connections, providing for
2 Herein, we refer to the version of the Specification published on August 1,
2013, as US Publication No. 2013/0198008 Al, which is the same as the
originally-filed Specification filed on March 14, 2013, except for some
paragraph numbering variations.
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display to the one or more connections the story describing the
action performed on the third party system by the viewing user.
In a Final Rejection, the Examiner rejects claims 9—20 and 30-42
under 35 U.S.C. § 101 as directed to non-statutory subject matter. Final
Action, hereafter “Final Act.,” 3—9, mailed November 25, 2014; Answer,
hereafter “Ans.,” 2—16, mailed October 2, 2015.
DISCUSSION
The Appellants argue the rejections under § 101 using independent
claims 9, 30, and 42 as representative. See App. Br. 6—17. We select claim
9 as representative.
The Examiner finds that claims 9—20 and 30-42 are directed to
non-statutory subject matter that does not amount to significantly more than
an abstract idea because the claims are directed to “collecting/recording
actions (on a third party system) taken by a user of a social network for the
purpose of communicating those actions to the user’s social network,” where
the “collecting/recording actions. . . for the purpose of communicating those
actions to the user’s social network is an idea of itself (communicating) and
employs methods of organizing human activities (collecting, storing, and
communicating information) to achieve this outcome,” and are examples of
abstract ideas. Final Act. 5. Additional claim elements are found to not be
significantly more than the abstract idea because the “claims are a mere
instruction to apply the abstract idea;” require no more than a generic
computer to perform generic computer functions that are well-understood,
routine and conventional, and there is no improvement to another technology
or to the functioning of the computer itself; with “no meaningful limitations
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beyond generally linking the use of an abstract idea to a particular technical
environment.” Id. at 5—6; see also Ans. at 10—12. The Examiner refers to
the Specification, which states “[a]ny 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 is “not limited to any
particular type of communication system, network, protocol, format or
application.” Id. at 6 (citing Spec. 1102).
The Appellants argue that the claims at issue do not represent an
application of abstract ideas because they are not directed to the idea of
“collecting/recording actions,” but rather are to “the display of stories to one
or more connections describing an action performed on a third party system
performed by a viewing user is the product of a computer-based analysis of
data stored within and provided to the social networking system.” App. Br.
8. The Appellants refer to the “U.S. Patent Office Examples of Abstract
Ideas,” and its Example 2 that describes an “e-commerce outsourcing
system” that is alleged to be analogous to the instant claims, where Example
2 was found to patent eligible. Id. at 8—9.3 It is further contended that the
instant claims relate to “generating a confirmation message for display to a
viewing user on a third party system, the confirmation message providing
information about a story that could be provided to one or more connections
3 Example 2 articulates the decision in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014) (“DDR”). U.S. Patent Office Examples
of Abstract Ideas (January 2014), issued in conjunction with Interim
Eligibility Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg.
74,618 (Dec. 16, 2014), available at
https://www.uspto.gov/patents/law/exam/abstract_idea_examples.pdf.
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of the viewing user,” and “providing for display to the one or more
connections the story,” which do not recite a foundational or basic economic
practice such as advertising or organizing human activity. Reply Brief,
hereafter “Reply Br.,” 5—6, mailed November 30, 2015. The Appellants
further contend that similar to Example 2, “the pending claims are directed
to a ‘business challenge . . . that is particular to the Internet,’ namely the
management and distribution of electronic advertising to users based on
specific criteria known only to a social networking system.” App. Br. 10—
11. It is argued that the invention addresses problems with providing
effective online advertise, that draws attention “by providing an online ad to
a user that includes a message about an action of the user’s social
networking connection (e.g., your friend John likes Nike), making it more
likely that the advertiser will entice the user to read the ad.” Id. at 11. It is
argued that the invention addresses problems specific to an online
environment, which only “make sense in this only this online environment.”
Reply Br. 7.
The Appellants additionally contend that the claims are not drawn to
all applications of the alleged abstract idea, and therefore do not preempt
“communicating actions or recording actions,” such that others cannot use
those ideas. App. Br. 10. It is further argued that the claims have to be
considered as a whole, with all limitations considered, but the Examiner
instead dissects the claim limitations. Id. at 7—8. The Appellants also allege
that the claims are not directed to an idea itself, but rather the elements have
a concrete and tangible form such as the “confirmation message for display”
and the “story.” Reply Br. 2—5.
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The Appellants further argue that, even if the Examiner’s findings
regarding an abstract idea are adopted, the claims represent significantly
more than an abstract idea. App. Br. 11—14. In support, the Appellants
compare the claims at issue with those in DDR, arguing that they “address
the problem extending a social networking system social graph to actions
performed outside of the social networking system itself,” which has “no
traditional business analog outside of interconnected computer networks, let
alone outside of social networking systems.” Id. at 13. The Appellants
further contend that “all of these steps [are] specifically designed to address
problems with providing effective online advertising by providing social
advertisements for which it is possible to leverage . . . the user’s connections
who might be interested in that information.” Id. (citing Spec. 17). The
Appellants argue that an example of these steps using a non-online
environment, such as advertising in a paper magazine, would be “a
nonsensical example” based on the knowledge of the instant claims. Id. at
13-14.
Finally, the Appellants argue that the rejection under § 101 is
improper because the Examiner fails to provide factual support for the
allegation that providing social endorsements within a social network and
sending information is a method of organizing human activity and an
abstract idea. App. Br. 14—17.
After considering the Appellants’ arguments and the evidence
presented in this appeal for the § 101 rejection, we are not persuaded that the
Appellants identify reversible error. To provide context, 35U.S.C. § 101
provides that a new and useful “process, machine, manufacture, or
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composition of matter” is eligible for patent protection. The Supreme Court
has made clear that the test for patent eligibility under Section 101 is not
amenable to bright-line categorical rules. See Bilski v. Kappos, 130 S. Ct.
3218, 3229—30. There are, however, three limited, judicially-created
exceptions to the broad categories of patent-eligible subject matter in § 101:
laws of nature; natural phenomena; and abstract ideas. See Mayo
Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
(2012).
In Alice Corporation Party, Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) (“Alice’’), the Supreme Court reiterated the framework set forth
previously in Mayo, “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. Under Alice, the
first step of such analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If determined that
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 the additional elements
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(citing Mayo, 132 S. Ct. at 1291, 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 patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id.
(citing Mayo, 132 S. Ct. at 1294).
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With this context in mind, we evaluate the Examiner’s rejection of
representative claim 9.
Claim 9 recites accessing a profile for viewing users of a social
networking system, receiving a message from a third party system and
describing an action performed by the viewing user on that system,
generating a confirmation message generating stories related to those actions
that contains information about a story that could be provided to one or more
connections of the viewing user, receiving an indication of whether the
viewing user opts in or opts out of allowing the story to be provided to the
connections, and, if there is opt-in, providing a display to the connections of
the story describing the action performed on the third party system by the
viewing user. See Claims App. 18. The Appellants themselves indicate that
this invention allows advertisers to “provid[e] an online ad to a user that
includes a message about an action of the user's social networking
connection (e.g., your friend John likes Nike), making it more likely that the
advertiser will entice the user to read the ad, and further allows users to
consent to or decline the use of messages about their actions.” See App. Br.
at 11.
The elements of the claims include the application of the steps within
a “social networking system,” where the Specification broadly describes this
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
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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.
Spec. 1102.
The Appellants do not allege that the communications techniques of
the social network, that 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 “[s]ocial 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.
We agree with the Examiner that when specific steps of the claim are
considered—that is, accessing a profile, receiving a message, generating a
confirmation message, generating stories related to actions, receiving an
indication of opts in or opts out—they are directed to methods of organizing
human activities, which are abstract ideas. See Final Act. 5; Ans. 3—7. More
specifically, we agree with the Examiner’s findings related to the steps of the
claims are similar to cases where it was determined that steps of claims were
directed to abstract ideas, including the display of advertising. See Ans. 4—6.
Additionally, all of the steps of the claim that the Appellants allege are
specific to the Internet and the use of social media, including promoting
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products by the use of a “story,” are directed to the overall purpose of
organizing human activities, including advertising. See id. The generation
of a “story” is simply the notice of an action to another, and there is no
showing or rationale that the use of a computer to generate a “story,” 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. CISBanklnt’l, 134 S. Ct. at 2359). Moreover, creating
notice-type advertisements is not unique to the internet or computer
technology, but rather is used, more generally, in targeted marketing and
advertising. As such, the representative claim is directed to a fundamental
business purpose, which is distinguishable from claims of DDR. See DDR,
773 F.3d at 1257 (“the . . . asserted claims do not recite a mathematical
algorithm. Nor do they recite a fundamental economic or longstanding
commercial practice.”). As discussed further below, we also determine that,
unlike DDR, the claim at issue does not address a business issue that arises
from and is specific to the Internet. See id.
We are also not persuaded by the Appellants’ allegation for support of
patentability based on the argument that the claims will not preempt other
types of advertising that do not employ the specific claimed steps. Although
it may be true that there are other methods of advertising, that issue is not
dispositive as to whether the claims are patent eligible. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377 (Fed. Cir. 2015)
(“While preemption may signal patent ineligible subject matter, the absence
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of complete preemption does not demonstrate patent eligibility.”). We also
do not agree that the rejection under § 101 is improper because the Examiner
fails to provide factual support for the allegation that providing social
endorsements within a social network and sending information is a method
of organizing human activity and an abstract idea. Contrary to the
Appellants’ assertion, we find that the Examiner was not required to proffer
additional extrinsic evidence in support of the finding of an abstract idea.
See, e.g., Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
1314, 1325 (Fed. Cir. 2016).
Finally, as to the first step of the Alice analysis, we are not persuaded
by the Appellants’ argument that the claims are not directed to an idea itself,
but rather the elements have a concrete and tangible form. Our reviewing
court has found that if a method can be performed by human thought, these
processes remain unpatentable even when automated to reduce burden to the
user. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375
(Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even
when performed by a computer, was precisely the holding of the Supreme
Court in Gottschalk v. Benson, [409 U.S. 63 (1972)].”).
As to the second step of the Alice analysis, we are not persuaded by
the Appellants’ arguments that the claims represent “significantly more”
than the abstract idea exception. On this issue, we agree that the Examiner’s
finding that the claim has no meaningful limitations beyond mere instruction
to apply the abstract idea. See Final Act. 5—6. We also agree with the
Examiner’s findings that none of the claimed steps improve technology or
the function of computers. Ans. 8. Further, we are persuaded by the
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Examiner’s finding that the steps of the claims are performed by generic
computers performing generic computer functions, and therefore do not
represent significantly more than an abstract idea. Id. at 8—10.
We are not persuaded by the Appellants’ allegation that the claimed
steps have “no traditional business analog outside of interconnected
computer networks, let alone outside of social networking systems.” App.
Br. 13. For instance, under a traditional business analog, a social network
could be a school alumni organization, which keeps records of alumna, and
offers trips through a third party travel company. Messages received from
the travel company could consist of a notice that connected alumni have
signed up for an alumni trip, and that information could then be used in an
insert of a newsletter to other alumni, with the objective to attract others to
read the insert and entice them to consider signing up for the trip. Alumna
signing up for a trip could advise whether they would allow their names to
be used in the insert (opting in or opting out). This is similar to the
Appellants’ view of the invention as providing an ad to a user “that includes
a message about an action of the user’s social networking connection (e.g.,
your friend John likes Nike).” App. Br. 11.
The claims at issue are also distinguishable from those in DDR. In
DDR, the Federal Circuit found that the challenged patent was valid because
it “specif[ied] how interactions with the Internet are manipulated to yield a
desired result—a result that overrides the routine and conventional” aspects
of the technology. DDR, 773 F.3d at 1258—59. However, as the Federal
Circuit also stated: “after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
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patent-eligible.” Id. at 1256 (citing Alice, 134 S. Ct. at 2358). The bare fact
that a computer exists in the physical rather than purely conceptual realm “is
beside the point.” Id. Here, we do not discern that the steps of the claims
“stand apart,” as those of DDR did, because they merely recite the
performance of a business practice known from the pre-Internet world. See
id. at 1257. Nor are the instant claims “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Id.
We therefore sustain the Examiner’s rejection of claims 9—20 and
30-42 under § 101.
SUMMARY
The rejection of claims 9—20 and 30-42 under 35 U.S.C. § 101 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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