Ex Parte Work et alDownload PDFPatent Trial and Appeal BoardNov 28, 201813852696 (P.T.A.B. Nov. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/852,696 03/28/2013 James Duncan Work 106752 7590 11/30/2018 Hickman Palermo Becker Bingham /Linkedln/Microsoft 1 Almaden Boulevard, Floor 12 San Jose, CA 95113 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. 60352-0015 3003 EXAMINER SENSENIG, SHAUN D ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 11/30/2018 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): usdocket@h35g.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES DUNCAN WORK, ALLEN BLUE, and REID HOFFMAN Appeal2017-008140 Application 13/852,696 Technology Center 3600 Before MAHSHID D. SAADAT, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1-5, 7-12, 14--19, and 21-27, which are all the claims pending in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is Linkedin Corporation. App. Br. 1. 2 Claims 6, 13, and 20 have been canceled. Appeal2017-008140 Application 13/852,696 STATEMENT OF THE CASE Introduction Appellants' disclosure describes "systems and methods for reputation evaluation of online users in a social networking scheme." Spec. ,r 2. Exemplary claim 1 under appeal reads as follows: 1. A computer-implemented method for determining a measure of influence of a particular member of an online social network, the method comprising: receiving, from a set of endorsers, a plurality of endorsements of a plurality of skills of members in the online social network; storing, in a database, endorsement data that indicates, for each member of said members, one or more endorsements regarding one or more skills that one or more endorsers endorsed; wherein the endorsement data for the particular member of the online social network indicates a plurality of endorsers; for each endorser of the plurality of endorsers: determining a number of connections that said each endorser has with other members in the online social network; comparing the number of connections with a threshold minimum; if the number of connections is less than the threshold minimum, then adding said each endorser to an excluded set of endorsers; determining a collective influence of endorsers of the particular member of the online social network, wherein determining the collective influence of endorsers of the particular member of the online social network includes excluding measures of influence of endorsers in the excluded set of endorsers; 2 Appeal2017-008140 Application 13/852,696 calculating, by one or more processors, the measure of influence of the particular member of the online social network based on the collective influence of endorsers of the particular member. The Examiner's Rejection Claims 1-5, 7-12, 14--19, and 21-27 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. See Final Act. 2--4, Ans. 2. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' arguments in the Briefs. For the reasons discussed below, we are not persuaded by Appellants' arguments that the Examiner erred in rejecting the claims under 35 U.S.C. § 101. Unless otherwise indicated, we incorporate by reference herein, and adopt as our own, the findings and reasons set forth by the Examiner in the Office Action from which this appeal is taken and in the Examiner's Answer in response to Appellants' Appeal Brief. See Final Act. 2-5, Ans. 2-17. We also concur with the legal conclusions reached by the Examiner. For emphasis, we consider and highlight specific arguments as presented in the Briefs. Principles of Law Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." The Supreme Court, however, has long interpreted § 101 to include an implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas are not patentable." See, e.g., Alice Corp. Pty Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (internal quotation marks and citation omitted). 3 Appeal2017-008140 Application 13/852,696 The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 75-77 (2012), "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. The first step in the analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. For example, abstract ideas include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355-57. The "directed to" inquiry asks not whether "the claims involve a patent-ineligible concept," but instead whether, "considered in light of the specification, ... 'their character as a whole is directed to excluded subject matter.'" Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal citations omitted). In that regard, we determine whether the claims "focus on a specific means or method that improves the relevant technology" or are "directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). If, in applying the first step of the Alice analysis, we conclude that the claims are not directed to a patent-ineligible concept, they are considered patent eligible under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016). If 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 there are additional 4 Appeal2017-008140 Application 13/852,696 elements that "'transform the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). 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. (brackets in original) ( quoting Mayo, 566 U.S. at 72-73). The prohibition against patenting an abstract idea "'cannot be circumvented by attempting to limit the use of the formula to a particular technological environment' or adding 'insignificant post solution activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (internal citation omitted). Mayo/Alice Step One The Examiner determines the claims are directed to: determining a measurement of influence for a user by collecting and comparing connection and profile information of users which represent the abstract ideas of "comparing new and stored information and using rules to identify options", "organizing information through mathematical correlations", and "collecting and comparing known information". Final Act. 2. Appellants contend the Examiner's assessment that the claims are directed to an abstract idea is in error. App. Br. 4. 3 Appellants argue the recited "concept of 'collecting, computing, and analyzing data' is not a judicial exception." Id. Appellants also argue: Now here in Appellants' claims is there any reference to collecting and comparing either connection information or 3 Independent claim 1 recites a method and independent claims 8 and 15 recite a system and an apparatus. Appellants argue claims as a group. App. Br. 3-16. We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv). 5 Appeal2017-008140 Application 13/852,696 profile information of users. Appellants' claims recite receiving endorsements, not connection information. Furthermore, connection information is compared to a threshold, not another user's connection information. Still further, "profile information" is not even recited anywhere in the rejected claims. Thus, Appellants' claims are not directed to anything that resembles or represents any of the judicial exceptions in the "an idea of itself' category. App. Br. 5. In this regard, Appellants assert the Examiner's reliance on Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014) lacks proper explanation as to why the appealed claims are directed to "organizing information through mathematical correlations," whereas these claims cannot be performed entirely as mental steps because they recite a database and the related processors. App. Br. 7; see also Reply Br. 5-6 ( reiterating that the recited steps relate to the functionalities present in social network which are rooted in computer technology). Appellants also compare their claims with those in Enfzsh and assert the recited steps of measuring the influence for a member require "the present technological- enabled social network of members." Reply Br. 7-8. Appellants' arguments do not persuade us of Examiner error. The claims are not directed to improvements to computer-related technology, as in Enfzsh and DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1257 (Fed. Cir. 2014). Rather, the claims as a whole are directed to receiving and comparing endorsement data based on inputs from users, which are recognized as an abstract idea. See Answer 3--4 ( citing Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017) and Digitech ). Appellants fail to point to any language in the claims directed to improving the technology of, for example, the user 6 Appeal2017-008140 Application 13/852,696 interface or the database structure in a social network. We agree with the Examiner's analysis on pages 4--6 of the Answer that the claimed steps involve collecting and processing data, and more specifically, collecting connection information and determining the influence of the endorsers according to their skills. The Examiner also correctly explains that the recited steps, including obtaining endorsement data, determining and comparing a number of connections among endorsers, and determining a collective influence of endorsers, could be performed "mentally" and "outside of a computer system" or "prior to the technology being available." Ans. 6-7. As the Examiner determines, the claims are directed to a process that qualifies as an abstract idea for which computers are invoked merely as a tool in order to collect and compare connection and profile information of users. Therefore, we agree with the Examiner that claim 1 is directed to the abstract idea of "receiving data, storing data, comparing data to thresholds, excluding/removing data, and determining/calculating measurements." Final Act. 2-3; Ans. 2-7. Mayol Alice Step Two The Examiner determines the claims "do not recite an improvement to another technology or technical field, an 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." Final Act. 3. The Examiner further determines that carrying out the claimed steps requires no more than the existing computers without any specific hardware which "offers a meaningful limitation beyond generally linking the system to a particular technological environment, that is, implementation via 7 Appeal2017-008140 Application 13/852,696 computers." Id. According to the Examiner, the claims "do not purport to improve the functioning of the computer itself, or to improve any other technology or technical field. Use of an unspecified, generic computer does not transform an abstract idea into a patent-eligible invention." Id. 4 Appellants contend, similar to Digitech, "[ e ]ven if claims are directed to a mathematical algorithm, the claims can be patent-eligible based on reciting an application of the mathematical algorithm to a known structure or process." App. Br. 8. Appellants point to the holding in Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010) and argue that Appellants' claims reciting storing data and comparing to thresholds are patent eligible "because they did not seek to patent algorithms or formulas," rather, they seek "to patent measures of influence that are calculated based on excluding the measures of influence of certain endorsers" and "to exclude the measures of influence of fraudulent nodes that provide fraudulent endorsements." App. Br. 8-9. Appellants also assert their claims "amount to 'significantly more' than any judicial exception" by reciting "online social networking activities as a proxy for a person's measure of influence" which is unconventional both in the realm of computer networks and the real world. App. Br. 14. Appellants' assertions do not persuade us of Examiner error. As the Examiner explains, the claims are directed to data comparison using mathematical relationships including storing endorsement data, determining a number of connections of the endorser with other members, comparing the 4 Merely automating previously manual processing by using computers does not qualify as an eligibility-rejection-defeating improvement. Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017). 8 Appeal2017-008140 Application 13/852,696 number of connections with a threshold, and calculating the measure of influence of a member based on the determined collective influence of endorsers. See Ans. 3. The purported "unconventional" measure of influence is not claimed ( or even described) as an improvement in the way a computer operates, as in Enfzsh. See Enfzsh, 822 F.3d at 1336, 1339 (concluding that the self-referential table recited in the claims is designed to improve the way a computer stores and retrieves data in memory). Here, we also agree with the Examiner that Appellants' claims, unlike the claims in DDR, do not include "elements that were significantly more than just using the generic computer." Ans 14. Moreover, Appellants fail to point to any language in the claims directed to improving the way the computer system operates. Rather, claim 1 broadly recites "determining a number of connections ... , comparing the number of connections with a threshold minimum ... , determining a collective influence of endorsers" and "calculating, ... , the measure of influence of the particular member ... based on the collective influence of endorsers" with the generic, programmed computer systems. See Spec. ,r,r 15-20 ( describing the processor's role). We further observe that the recited subject matter is similar to the concepts found to be patent-ineligible in Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). Similar to the claimed subject matter in Electric Power Group, the claims' invocation of a computer system ( or a processor, a network interface and a storage medium) does not transform the claimed subject matter into patent-eligible applications. Electric Power Grp., 830 F.3d at 1355. Nothing in the claims, understood in light of the specification, requires anything other than off-the- 9 Appeal2017-008140 Application 13/852,696 shelf, conventional computer technology and software modules for performing the claimed determining and calculating. See id.; Spec. ,r,r 15- 20. Similarly, Appellants' argument (see Reply Br. 4--5) that their claims are similar to the claims in McRO because the claims improve the technological process of determining the measure of influence is not persuasive. Unlike the claims in Enfish and McRO, the claims in the present application fail to recite the technical details that describe the alleged improvement of the technical process of computerized measure of the influence of the endorsers in a social network and instead relate to processes performed on a generic computer system, as described in Appellants' Specification (see, e.g., Spec. ,r,r 15-20). Such an "improvement" is not a patentable improvement in computer technology and does not transform the abstract idea into a patent-eligible invention. CONCLUSION For the reasons discussed above, Appellants' arguments have not persuaded us of any error in the Examiner's findings or conclusions under Mayo/Alice step one or step two that the claims are directed to patent- ineligible subject matter. Accordingly, we sustain the Examiner's rejection of claim 1, as well as claims 2-5, 7-12, 14--19, and 21-27 falling therewith, under 35 U.S.C. § 101. DECISION We affirm the decision of the Examiner to reject claims 1-5, 7-12, 14--19, and 21-27 under 35 U.S.C. § 101. 10 Appeal2017-008140 Application 13/852,696 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). See 37 C.F.R. § 41.50(±). AFFIRMED 11 Copy with citationCopy as parenthetical citation