Ex Parte Zhou

Patent Trial and Appeal BoardMar 28, 2019

14680984 (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/680,984 04/07/2015 87851 7590 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 04/01/2019 FIRST NAMED INVENTOR Ding Zhou 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. 26295-28682/US 9471 EXAMINER ANDERSON, SCOTT C ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): ptoc@fenwick.com fwfacebookpatents@fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte DING ZHOU 1 Appeal2018-000552 Application 14/680,984 Technology Center 3600 Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and PHILIP J. HOFFMANN, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. Â§ 134 of the Examiner's final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellant claims is directed to creating targeting criteria for advertisements using a search for objects in social graph to define targeting criteria. (Spec. , 2). 1 According to Appellant, the real party in interest is Facebook, Inc. See Appeal Br. 2. Appeal 2018-00552 Application 14/680,984 Claim 1 is representative of the subject matter on appeal. 1. A method comprising: identifying one or more seed objects based on one or more seeds for suggesting targeting criteria for an advertisement; identifying a plurality of other objects stored in a database of a social networking system based on connections between the one or more seed objects and the identified other objects; computing a similarity between one or more of the seed objects and the plurality of other objects, the similarity between a seed object and each of the plurality of other objects determined based at least in part on a comparison of objects in the social networking system having connections to both the other object and to the seed objects and objects not having connections to both the other object and to the seed objects; presenting one or more candidate objects for use in targeting criteria for the advertisement, the one or more candidate objects selected from the plurality of other objects based on the computed similarities; and responsive to a selection of one or more target objects from the one or more candidate objects, determining one or more targeting criteria for the advertisement based on the selected target objects. THE REJECTION Claims 1-20 are rejected under 35 U.S.C. Â§ 101 as directed to a judicial exception without significantly more. 2 Appeal 2018-00552 Application 14/680,984 35 U.S.C. Â§ 101 REJECTION ANALYSIS We will sustain the rejection of claims 1-20 under 35 U.S.C. Â§ 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, ... determine whether the claims at issue are directed to one of those patent-ineligible concepts .... If so, ... then ask, "[ w ]hat else is there in the claims before us?" . . . To answer that question, . . . 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. . . . [The Court] 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." Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)) (citations omitted). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Federal Circuit has explained that "the 'directed to' inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether 'their character as a whole is directed to excluded subject matter."' See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an "abstract idea" for which computers are invoked merely as a tool. See id. at 1335-36. 3 Appeal 2018-00552 Application 14/680,984 In so doing we apply a "directed to" two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50-57 (Jan. 7, 2019). ("Guidance"). The Specification discloses that the claimed invention is directed to creating targeting criteria for advertisements. (Spec. ,r 2). The Specification discloses that the extent to which an ad reaches a target group of users depends on the targeting critera. Claim 1 recites, for example, "identifying ... seed objects ... for suggesting targeting criteria for an advertisement," "computing a similarity between one or more seed objects," "presenting one or more candidate objects for use in targeting criteria" and "responsive to a selection of one or more target objects ... determining one or more targeting criteria for the advertisement." Therefore, we determine that the claims are directed to determining criteria for targeting advertisements. Certain methods for organizing human activity including commercial interactions including advertising are considered a judicial exception. Guidance 52. Also, we find the steps of identifying seed objects, computing similarity between one or more seed objects, presenting one or more candidate objects for use in targeting criteria, determining one or more targeting criteria for advertisement candidate objects is in essence comparing and organizing information which constitutes analyzing information by steps people go through in their minds and therefore is a mental process. Mental processes are considered a judicial exception. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014). Thus, we find that 4 Appeal 2018-00552 Application 14/680,984 the claim 1 is directed to a fundamental economic practice and in the alternative a mental process. Fundamental economic practices and mental processes are abstract ideas. Guidance, 84 Fed. Reg. at 52. We thus agree with the Examiner that the claims is directed to a judicial exception. Turning to the second prong of the "directed to test", claim 1 merely requires a "database" of a social networking system. The recitation of the word "database" does not impose "a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." Guidance, 84 Fed. Reg. at 53. In this regard, the recitation does not affect an improvement in the functioning of the database or other technology, does not recite a particular machine or manufacture that is integral to the claims, and does not transform or reduce a particular article to a different state or thing. Id. Thus, claim 1 is directed to a judicial exception an "abstract idea." Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas/judicial exceptions, the claims must include an "inventive concept" in order to be patent-eligible, i.e., there must be an element or combination of elements that is sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). The introduction of a computer or a database into the claims does not alter the analysis at Alice step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea "while adding the words 'apply it"' is not enough for patent eligibility. Nor is limiting the use of an abstract idea "'to a particular technological environment."' 5 Appeal 2018-00552 Application 14/680,984 Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to "implemen[ t ]" an abstract idea "on . . . a computer," that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our Â§ 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of "additional featur[ e ]" that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [ abstract idea] itself." Alice, 134 S. Ct. at 2358 (alterations in original) (citations omitted). Instead, "the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea ... on a generic computer." Id. at 2359. They do not. The only recitation in claim 1 that is not part of the abstract idea of certain methods of organizing human activities ( advertising) is the recitation of the database of a social networking system. We note that claim 1 does not recite a computer or processor but in any case. Even if a computer or processor was positively recited in the claims to perform the steps of the claim, the function performed in the claim at each step of the process are purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval----one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ... those 6 Appeal 2018-00552 Application 14/680,984 functions can be achieved by any general purpose computer without special programming."). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018). The claims do not purport to improve the functioning of the database itself. As we stated above, the claims do not affect an improvement in any other technology or technical field. Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea using an unspecified database. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360. \Ve have reviewed all the arguments (Appeal Br. 4---12; Reply Br. 2---- 10). Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. Â§ 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same. We are not persuaded of error on the part of the Examiner by Appellant's argument that claim 1 is directed to an improvement in the relevant technology analogous to the claims in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). (App. Br. 7). Appellant contends that claim 1 is limited to a specific way for detennining targeting criteria. In our view, the claimed invention is not analogous to the claimed 7 Appeal 2018-00552 Application 14/680,984 invention in AicRO. The claims in AicRO were directed to a specific asserted improvement in computer animation, i.e., the automatic use of nlles of a particular type. AicRO, 837 F.3d at 1313. By contrast, the independent claims under appeal recite only determining criteria for targeting advertisements. Claim l does not recite an improvement to any technology. Rather, the only technology that is recited in the claim is a database of a social networking system. There is no recitation in the claim and Appellant has not directed us to a disclosure in the Specification of any improvement to the database or the social networking system. Vv e agree with the Examiner that claim 1 is purely functional and does not specify how the steps are done, but only that a result is achieved based on various data acted upon in no specific way. (Ans. 3). \Ve also are not persuaded of en-or on the part of the Examiner by Appellant's argument that the claims do not preempt all approaches to organizing information for presentation. (App. Br. 8). \Vhile preemption may signal patent ineligible subject matter, "the absence of complete preernption does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015), cert., denied, 136 S. Ct. 701, 193 (2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e- commerce setting do not make them any less abstract."). And, "[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the lvfc~yo framework, as they are in this case, preemption concerns are fully addressed and made moot." Ariosa, 788 F.3d at 1379. We are not persuaded that claim 1 is analogous to the claims in BASCOAf Glob. Internet Servs. Inc. v. AT&T Mobility LLC, 827 F.3d 1341 8 Appeal 2018-00552 Application 14/680,984 (Fed. Cir. 2016). (App. Br. 11). l'viore paiiicularly, Appellant contends that claim 1 recites a specific ordered combination of limitations. Contrary to Appellant's arguments, the Federal Circuit did not find that the claims in BASCOlvf recited an inventive concept because the claims recited a specific implementation of the abstract idea of filtering content. Rather, in BASCOlv1, the Federal Circuit followed the Supreme Court's guidance for determining whether the claims recite an inventive concept set forth in Alice, 134 S. Ct. 2347, 2357---60 (2014). In Alice, the Supreme Court explained that, under the second step of the patent-eligibility analysis, "the relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer." Alice 134 S. Ct. 234 7, 23 59 (2014 ). The Supreme Court also provided examples of claims that represent more than instructions to implement an abstract idea on a generic computer, such as claims that purport to improve the functioning of the computer itself and claims that effect an improvement in any other technology or technical field. Id. at 2359---60. Turning to BASCOlvf, the Federal Circuit held "[t]he inventive concept described and claimed in the '606 patent is the installation of a filtering tool at a specific location, remote from end-users, with customizable filtering features specific to each end user." BASCOA{ 827 F.3d at 1350. In determining this feature to be an inventive concept, the Federal Circuit explained that the remote location of a filtering tool having customizable user-specific filtering features provides the filtering tool both the benefits of a filter on a local computer and the benefits of a filter on the ISP server, and is a technical improvement over prior art ways of filtering content. Id. at 1350-51. Notably, the Federal Circuit specifically 9 Appeal 2018-00552 Application 14/680,984 determined that "the claims may be read to 'improve[] an existing technological process."' Id. at 1351 (citing Alice, 134 S. Ct. at 2358). As found above, claim 1 does not recite an improvement to existing technology. \Ve are not persuaded of error on the pmi of the Examiner by Appellant's argument that the lack of art rejecting provides an indication that the claims recite a specific means that as in allows a computer to perform a function not previously performable by a computer. (Reply Br. 5). However, claim 1 does not recite a computer. In addition, to the extent Appellant maintains that the limitations of claim l necessarily amount to "significantly more" than an abstract idea because the claimed apparatus is allegedly patentable over the prior art, Appellant misapprehended the controlling precedent. Although the second step in the Alice/lfayo framework is termed a search for an "inventive concept," the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for '"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. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent- ineligible. See Mayo, 132 S. Ct. at 1304. We are also not persuaded by Appellant's argument that claim 1 require a specific storage structure because this argument is not commensurate in scope with the recitations in claim 1 which does not include any recitations related to the structure of the database of the social networking system. (Reply Br. 6). In view of the foregoing, we will sustain the Examiner's rejection of claim 1. We will also sustain the rejection as it is directed to the remaining 10 Appeal 2018-00552 Application 14/680,984 claims because the Appellant's have not argued the separate eligibility of these claims. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1-20 under 35 U.S.C. Â§ 101. DECISION The decision of the Examiner to reject claims 1-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 11