Ex Parte Rich

Patent Trials and Appeals Board

Jun 27, 2019

14556854 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/556,854 12/01/2014 Mark Andrew Rich
91230 7590 07/01/2019
Baker Botts L.L.P./Facebook Inc.
2001 ROSS A VENUE
SUITE 900
Dallas, TX 75201
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.
079894.2355 8368
EXAMINER
ZIDANIC, MICHAEL
ART UNIT PAPER NUMBER
2122
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
judy.wan@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ANDREW RICH
Appeal2018-008132
Application 14/556,854 1
Technology Center 2100
Before ALLEN R. MACDONALD, MICHAEL J. ENGLE, and
IFTIKHAR AHMED, Administrative Patent Judges.
AHMED, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-20, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Technology
The application relates generally "to online social networks, and in
particular to classifying objects within a social-networking environment."
Spec. ,r 1.
1 According to Appellant, the real party in interest is Facebook, Inc. App.
Br. 3.
Appeal2018-008132
Application 14/556,854
Illustrative Claim
Claim 1 is illustrative and reproduced below with certain limitations at
issue emphasized:
1. A method comprising, by one or more computing devices
associated with an online social network:
accessing, by one or more of the computing devices, a first
set of objects posted to the online social network by a plurality
of client systems associated with a plurality of users of the
online social network, the objects being stored in one or more
data stores associated with the online social network, each object
being associated with one or more comments, wherein each
comment is posted to the online social network with respect to
the corresponding object by a client system associated with a user
of the online social network;
generating, by one or more of the computing devices, a
second set of objects by adding one or more objects in the first
set of objects meeting a first filtering criteria to the second set;
scoring, by one or more of the computing devices, each
object in the second set of objects by comparing the comments
associated with each object to a pre-determined set of terms
associated with a first object-classification;
generating, by one or more of the computing devices, a
training set of objects from the second set of objects by selecting
each object from the second set of objects having a score greater
than a first threshold score, each object in the training set being
pre-classified with the first object-classification;
generating, by one or more of the computing devices, an
object-classifier algorithm for the first object-classification, the
object-classifier algorithm comprising one or more features
each comprising a text expression and stored in association with
a feature score indicating a level of correlation between the
corresponding feature and the first object-classification and
being determined through an iterative training process
performed one or more times, each iteration of the iterative
training process comprising:
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Application 14/556,854
training an initial object-classifier algorithm based on
the comments associated with the objects in the training
set of objects;
accessing a third set of objects posted to the online social
network by a plurality of client systems associated with a
plurality of users of the online social network, the objects
being stored in one or more data stores associated with the
online social network, each object being associated with
one or more comments, wherein each comment is posted
to the online social network with respect to the
corresponding object by a client system associated with a
user of the online social network;
classifying, using the initial object-classifier algorithm,
each object in the third set of objects based on an analysis
of the comments associated with each object, one or more
of the objects in the third set of objects being classified
with the first object-classification, wherein the analysis
comprises comparing the comments with the features;
training a revised object-classifier algorithm based on the
comments associated with the objects in the third set of
objects having the first object-classification, wherein the
training comprises revising one or more features of the
initial object-classifier algorithm;
accessing a fourth set of objects stored in one or more data
stores associated with the online social network, the fourth
set of objects being generated by applying a second
filtering criteria to a fifth set of objects posted to the online
social network by a plurality of client systems associated
with a plurality of users, the objects being stored in one or
more data stores associated with the online social network,
each object being associated with one or more comments,
wherein each comment is posted to the online social
network with respect to the corresponding object by a
client system associated with a user of the online social
network;
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Application 14/556,854
classifying, using the revised object-classifier algorithm,
each object in the fourth set of objects based on an analysis
of the comments associated with each object, one or more
objects in the fourth set of objects being classified with the
first object classification, wherein the analysis comprises
comparing the comments with the modified features;
determining a level of precision associated with the object-
classifier algorithm; and
if the determined level of precision does not satisfy
a specified threshold level of precision:
then, generating a sixth set of objects from
the fourth set of objects by selecting each object
from the fourth set of objects having a score greater
than a second threshold score, each object in the
sixth set of objects being classified with the first
object-classification, wherein the sixth set of
objects is to be used as the training set in a next
iteration of the iterative training process;
else, terminating the iterative training process
and storing the revised object-classifier algorithm;
and
classifying, usmg the generated object-classifier
algorithm, a particular object posted by a client system
associated with a particular user, wherein the particular object
is classified with the first object-classification; and
determining a status of the particular user posting the
particular object based at least in part on the classification of the
particular object.
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Application 14/556,854
REJECTION2
Claims 1-20 stands rejected under 35 U.S.C. § 101 as being directed
to ineligible subject matter without significantly more. Final Act. 2--4.
ISSUE
Did the Examiner err in concluding that claim 1 was directed to
ineligible subject matter without significantly more under § 101?
ANALYSIS
1. Principles of Law
Section 101 defines patentable subject matter: "Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). "Eligibility under 35 U.S.C. § 101 is a question of law,
based on underlying facts." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
2 Separate patentability is not argued for claims 2-20. Therefore, we select
independent claim 1 as representative. Except for our ultimate decision, we
do not discuss the § 101 rejection of claims 2-20 further herein.
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abstract ideas." Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,217 (2014).
"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas" (Mayo, 566 U.S. at 71), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, "the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and "consider the elements of
each claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). The Supreme Court has "described step two of this analysis as a
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. at
217-18 (quotation omitted).
The U.S. Patent & Trademark Office recently published revised
guidance on the application of§ 101. USPTO, 2019 Revised Patent Subject
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Application 14/556,854
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance").
Under that guidance, we look to whether the claim recites
( 1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
( c) mental processes, such as an observation or evaluation
performed in the human mind;
(2) any additional limitations that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a}-(c), (e}-(h));
and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05(d)).
See Guidance 52, 55, 56. Under the Guidance, if the claim does not recite a
judicial exception, then it is eligible under § 101 and no further analysis is
necessary. Id. at 54. Similarly, under the Guidance, "if the claim as a whole
integrates the recited judicial exception into a practical application of that
exception," then no further analysis is necessary. Id. at 53, 54.
2. The Examiner's Determination and Appellant's Contentions 3
Here, the Examiner determines that claim 1 is directed to the abstract
idea of "generating and training an object classifier algorithm and using it to
3 The contentions we discuss herein are determinative as to the § 101
rejection on appeal. Therefore, we do not discuss Appellant's other§ 101
contentions herein.
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classify objects." Ans. 2. The Examiner further determines that claim 1
"does not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the additional
computer elements, which are recited at a high level of generality, provide
conventional computer functions that do not add meaningful limits to
practicing the abstract idea." Id.
Appellant argues that "[ c ]laims 1-20 do not recite either a
fundamental economic practice, a method of organizing human activity, an
idea of itself, or a mathematical relationship or formula, and therefore are
not directed to an abstract idea." App. Br. 10. Instead, Appellant argues, the
claimed invention addresses a problem specifically arising in the realm of
computer networks (id. at 10-11) through an "object-classifier algorithm,
... a computer-based tool for performing the functionality of object
classification," and an "iterative training process ... for improving such a
computer-based tool." Id. at 18.
3. Our Analysis
We are persuaded by Appellant's arguments that the Examiner has not
satisfied the proper burden for making a prima facie case for patent
ineligibility under 35 U.S.C. § 101.
A) USPTO Step 2A, Prong 1
Claim 1 recites, in part, (A) "accessing ... a first set of objects posted
to the online social network"; (B) "generating ... a second set of objects by
adding one or more objects in the first set of objects meeting a first filtering
criteria to the second set"; (C) "scoring ... each object in the second set of
objects"; (D) "generating ... a training set of objects from the second set of
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objects"; (E) "generating ... an object-classifier algorithm for the first
object-classification, the object-classifier algorithm comprising one or more
features each comprising a text expression and stored in association with a
feature score ... being determined through an iterative training process ...
comprising" steps of training the object-classifier algorithm, accessing
additional sets of objects and classifying objects in those additional sets until
a threshold level of precision is achieved for the object-classifier algorithm;
(F) "classifying, using the generated object-classifier algorithm, a particular
object posted by a client system associated with a particular user"; and
(G) "determining a status of the particular user ... based at least in part on
the classification of the particular object."
The Examiner concludes that claim 1 is directed to the abstract idea of
"generating and training an object classifier algorithm and using it to classify
objects," which is similar to "collecting information, analyzing it, and
displaying certain results of the collection and analysis." Ans. 2 ( citing Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The
Examiner broadly characterizes certain steps recited in claim 1 as collecting
and analyzing information and states that these "are similar to concepts and
ideas that have been identified as abstract by the courts." Id. at 2-3.
However, the Examiner neither accounts for all the limitations recited in
claim 1, nor adequately articulates why the claimed concepts are analogous
to the facts of Electric Power Group, which involved claims directed toward
"detecting events on an interconnected electric power grid in real time over a
wide area and automatically analyzing the events." 830 F.3d at 1351.
Accordingly, we are persuaded by Appellant's arguments that while
the Examiner attempts "to categorize claim elements as either collecting
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information or analyzing information," "the Examiner overlooks and fails to
address various limitations of the claims" and "fails to recognize the detailed
and specific nature of the claim language" (Reply Br. 2) in asserting
generally that the steps recited in claim 1 are merely directed to a
mathematical concept (Ans. 6), and thus an abstract idea. See Enfzsh, 822
F.3d at 1337 ("describing the claims at such a high level of abstraction and
untethered from the language of the claims all but ensures that the
exceptions to § 101 swallow the rule"); see also McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) (cautioning to
"'be careful to avoid oversimplifying the claims' by looking at them
generally and failing to account for the specific requirements of the claims"
(quoting In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed.
Cir. 2016))). Therefore, on the record before us, we determine that the
Examiner's articulated reasoning is insufficient on USPTO Step 2A,
Prong 1.
B) USPTO Step 2A, Prong 2
Even if we agreed with the Examiner that claim 1 is directed to the
mathematical concept of "generating and training an object classifier
algorithm and using it to classify objects" (Ans. 2), the Examiner has not
shown that the claim, as a whole, fails to "integrate[] the recited judicial
exception into a practical application of the exception," i.e., the claim does
not "apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception." Guidance
54 ( emphasis added).
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Here, Appellant argues that, as recited in claim 1, "generating and
training an object-classifier algorithm that can be used to classify a particular
object is creating a technology-based tool or computer functionality that
can at least be used for analyzing data," and "thereby improving an online
social network's ability to classify objects." App. Br. 12. Appellant points
to the Specification as describing the resulting "benefits over existing
technology, such as improving the accuracy of object classification by
training an object-classifier that 'looks beyond the content of a post to
examine metadata or other objects associated with the object being
classified."' Id. ( quoting Spec. ,r 3 6).
Moreover, Appellant argues, "the need to classify a particular object
posted by a client system to an online social network in order to determine a
status of the particular user posting the particular object is a problem
'specifically arising in the realm of computer networks' and the solution of
training an object-classifier algorithm for classifying such an object through
an iterative training process is 'necessarily rooted in computer technology."'
Id. at 11 ( emphasis omitted). According to Appellant, the objects to be
classified by the object-classifier algorithm are of the type that "are created,
posted, stored, shared on computer networks (e.g., an online social
network)," and data to be used in the analysis of the objects as well as "their
relationships with the analyzed objects are only established on computer
networks." Id. ( citing Spec. ,r,r 33, 37-58, Fig. 3).
In response, the Examiner finds that claim 1 "purport[ s] to solve a
data problem, ... not a computer problem," and"[ n ]either the problem nor
the solution is rooted in computer technology." Ans. 5. According to the
Examiner, the claims are directed merely to "an advance in mathematical
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techniques in generating and training an object classifier algorithm." Id.
at 6. The Examiner determines "[ t ]here is nothing in the claim to suggest
that, once an object classifier algorithm is generated and trained, the
computer system will be any more efficient." Id. at 5. The Examiner finds
that "[t]he computing environment to generate and train an object classifier
algorithm is recited at a high level of generality and only comprises a
'processor,' 'memory' and 'data stores' to simply perform the functions of
receiving, processing and transmitting information," i.e., "[g]eneric
computers performing generic computer functions." Id. at 4. The Examiner
dismisses the "online social network" limitation as "simply a field of use
that is an attempt to limit the abstract idea to a particular technological
environment." Id. Instead, the Examiner finds, "like the patents in Electric
Power Group, the instant claims may only be an advancement in uses for
existing computer capabilities, not new or improved computer capabilities."
Id.
In the context of revised Step 2A, claim limitations "that reflect an
improvement in the functioning of a computer, or an improvement to other
technology or technical field" are indicative of a recited judicial exception
being integrated into a practical application. See Guidance 55 (citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014));
MPEP § 2106.05(a). A limitation that "applies or uses the judicial exception
in some other meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment" similarly
integrates the exception into a practical application. See Guidance 55 (citing
Diamondv. Diehr, 450 U.S. 175, 184 (1981)); MPEP § 2106.05(e).
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Here, claim 1 is specifically directed to generating and training an
object-classifier algorithm that can be used for analyzing "objects posted to
the online social network" and "associated with a particular user." The
Specification also explains how the claimed use of comments, associated
with the online social network objects, in training the object-classifier
algorithm results in an improvement:
Particular embodiments of this disclosure address some of the
shortcomings of previous techniques by training an object-
classifier that looks beyond the content of a post to examine
metadata or other objects associated with the object being
classified. As an example and not by way of limitation, an
object-classifier may be trained to classify a post based at least
in part on comments associated with the post. An object-
classifier trained to consider other objects or metadata associated
with an object may result in an improved or more accurate
object-classifier.
Spec. ,r 36 (emphasis added). The method recited in claim 1 is aimed at
"determining a status of the particular user posting the particular object,"
based on the object classification. The claim language and Specification
therefore support that claim 1 is not only limited to the technical field of
online social network data analysis, but also improves the functioning of an
online social network. The Examiner agrees that the claimed method results
in "a computer system that may be able to efficiently classify objects" (Ans.
5), but fails to explain why that does not improve the efficient functioning of
the computer. 4 See, e.g., Data Engine Techs. LLC v. Google LLC, 906 F.3d
4 In contrast, the Electric Power claims that the Examiner finds analogous to
the claim 1 "were drawn to using computers as tools to solve a power grid
problem, rather than improving the functionality of computers and computer
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999, 1009 (Fed. Cir. 2018) (holding that an improved manner of navigating a
three-dimensional spreadsheet improves the efficient functioning of
computers); Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d
1356, 1363 (Fed. Cir. 2018) (holding that an improved user interface that
allows users to more quickly access stored data and programs improves the
functioning of a computer).
We are therefore persuaded that the Examiner erred in rejecting
independent claim 1; independent claims 19 and 20, which recite
commensurate limitations; and dependent claims 2-18 as being patent-
ineligible for the same reasons.
Accordingly, given the record before us, we do not sustain the
Examiner's rejection of claims 1-20 under§ 101.
DECISION
For the reasons above, we reverse the Examiner's decision rejecting
claims 1-2 0.
REVERSED
networks themselves." SRI Int'!, Inc. v. Cisco Sys., Inc., 918 F.3d 1368,
1375 (Fed. Cir. 2019).
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