Ex Parte Work et al

Patent Trial and Appeal Board

Nov 28, 2018

13852696 (P.T.A.B. Nov. 28, 2018)

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;
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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).
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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
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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).
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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
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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
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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).
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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-
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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.
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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
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