Microsoft Technology Licensing, LLCDownload PDFPatent Trials and Appeals BoardMar 18, 20212020005954 (P.T.A.B. Mar. 18, 2021) Copy Citation 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. 14/644,827 03/11/2015 Haipeng Li 60352-0667 7051 106752 7590 03/18/2021 HICKMAN BECKER BINGHAM LEDESMA /LinkedIn/Microsoft 1 Almaden Boulevard, Floor 12 San Jose, CA 95113 EXAMINER HENRY, MATTHEW D ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 03/18/2021 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 HAIPENG LI, PAUL HYUNWOO KO, and VALTER ERNESTO SCIARRILLO ____________ Appeal 2020-005954 Application 14/644,827 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and TARA L. HUTCHINGS, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–5, 8, 10–12, 21–25, and 27–31. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Microsoft Technology Licensing, LLC. (Appeal Br. 3). Appeal 2020-005954 Application 14/644,827 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to the field of social networks and to a system for analyzing content impact (Spec., para. 1). Claim 1, reproduced below with the italics added, is representative of the subject matter on appeal. 1. A method comprising: storing organization data for a plurality of organizations in a database located at a social networking system, each organization from the plurality of organizations being a business having at least two employees, the organization data describing each of the plurality of organizations, including members associated with each of the plurality of organizations and connections of each of the members associated with each of the plurality of organizations with other members of the social networking system; receiving a content marketing score request from a client device associated with a first organization of the plurality of organizations, the content marketing score request requesting a set of content marketing scores indicating a degree of similarity between a set of peer organizations and the first organization; retrieving, from the database located at the social networking system, organization data for the first organization and other organizations from the plurality of organizations; determining, for the first organization, the set of peer organizations based on the organization data retrieved from the database located at the social networking system, the set of peer organizations determined by: calculating, for each of the other organizations from the plurality of organizations, a closeness score based on a determined number of members of the first organization that are connected to members of the respective other organization on the social networking system, yielding closeness scores for the other organizations, wherein each closeness score is a numerical value indicating a determined number of members associated with the respective other organization that have Appeal 2020-005954 Application 14/644,827 3 social connections with members associated with the first organization; and selecting a subset of the other organizations based on the closeness scores for the other organizations, yielding the set of peer organizations; automatically generating content marketing scores for the first organization and the set of peer organizations, wherein automatically generating the content marketing scores for the first organization and the set of peer organizations comprises: determining a number of engagement events associated with social content associated with a peer organization; determining a number of members in an active target audience; and determining a ratio of unique engagement events to unique members in an active target audience; and transmitting the content marketing scores for the first organization and the set of peer organizations to the client device associated with the first organization. THE REJECTION The following rejection is before us for review: Claims 1, 3–5, 8, 10–12, 21–25, and 27–31 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.2 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2020-005954 Application 14/644,827 4 ANALYSIS Rejection under 35 U.S.C. § 101 The Appellant argues that the rejection of claim 1 is improper because the claim is not directed to an abstract idea (Appeal Br. 12). The Appellant argues further that the claim is integrated into a practical application (Appeal Br. 12–14). The Appellant also argues that the claim is “significantly more” than the alleged abstract idea (Appeal Br. 14, 15; Reply Br. 2–9). In contrast, the Examiner has determined that the rejection of record is proper (Final Act. 3–12; Ans. 3–8). We agree with the Examiner. An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk . . . .”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental Appeal 2020-005954 Application 14/644,827 5 economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). In January 2019, the USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: Appeal 2020-005954 Application 14/644,827 6 (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application, i.e., evaluate whether the claim “appl[ies], rel[ies] on, or use[s] 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.” (see Guidance, 84 Fed. Reg. at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Appeal 2020-005954 Application 14/644,827 7 The Specification at paragraph 1 states that the invention generally relates to the field of social networks and to a system for analyzing content impact. The Examiner has determined that the claim sets forth an abstract concept (Final Act. 7–9). We substantially agree with the Examiner. We determine that the claim sets forth the subject matter in italics above which describes the concept of: [1] “storing organization data for a plurality of organizations . . . the plurality of organizations, including members associated with each of the plurality of organizations and connections of each of the members associated with each of the plurality of organizations with other members of the social networking system”; [2] “receiving a content marketing score request from a client”; [3] “retrieving . . . organization data for the first organization and other organizations from the plurality of organizations; [4] “determining, for the first organization, the set of peer organizations based on the organization data retrieved . . . .. the set of peer organizations determined by:”; [5] calculating . . . a closeness score based on a determined number of members of the first organization that are connected to members of the respective other organization . . . yielding closeness scores for the other organizations, wherein each closeness score is a numerical value indicating a determined number of members associated with the respective other organization that have social connections with members associated with the first organization; [6] “selecting a subset of the other organizations based on the closeness scores for the other organizations, yielding the set of peer organizations”; [7] “automatically generating content marketing scores for the first organization . . . automatically generating the content marketing scores for the first organization and the set of peer organizations comprises:”; [8] “determining a number of engagement events associated with social content associated with a peer organization”; Appeal 2020-005954 Application 14/644,827 8 [9] “determining a number of members in an active target audience”; [10] “determining a ratio of unique engagement events to unique members in an active target audience”; and [11] “transmitting the content marketing scores for the first organization and the set of peer organizations to the client device associated with the first organization” which sets forth determining a marketing score for an organization and peer organizations based on data which is a mathematical concept, and method of organizing human activities in being a fundamental economic practice, i.e., a judicial exception. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it, and displaying results from certain results of the collection and analysis was held to be an abstract idea. A method, like the claimed method, “a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). In OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, (Fed. Cir. 2015) at 1363 it was held that offer-based price optimization was directed to an abstract idea. We next determine whether the claim recites additional elements in the claim to integrate the judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h). Here, the claims do not improve computer functionality, improve another field of technology, utilize a particular machine, or effect a particular physical transformation. Rather, we determine that nothing in the Appeal 2020-005954 Application 14/644,827 9 claims imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort to monopolize the judicial exception. The claimed functional limitations of “organizing”, “receiving”, “determining”, “calculating”, “selecting”, “generating”, and “transmitting” in the claim “do not purport to improve the functioning of the computer itself,” do not improve the technology of the technical field, and do not require a “particular machine.” Rather, they are performed using generic computer components. Further, the claim as a whole fails to effect any particular transformation of an article to a different state. The recited steps in the claim fail to provide meaningful limitations to limit the judicial exception. In this case, the claim merely uses the claimed computer elements as a tool to perform the abstract idea. Considering the elements of the claim both individually and as “an ordered combination” the functions performed by the computer system at each step of the process are purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. Thus, the claimed elements have not been shown to integrate the judicial exception into a practical application as set forth in the Revised Guidance which references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h). Turning to the second step of the Alice and Mayo framework, we determine that the claim does not contain an inventive concept sufficient to “transform” the abstract nature of the claim into a patent-eligible application. Considering the claim both individually and as an ordered combination fails to add subject matter beyond the judicial exception that is not well- understood, routine, and conventional in the field. Rather, the claim uses well-understood, routine, and conventional activities previously known in Appeal 2020-005954 Application 14/644,827 10 the art and they are recited at a high level of generality. The Specification at paragraphs 46–50 for example describes using conventional computer components, such as conventional central processing units, network interfaces, memory, the Internet, and networks, in a conventional manner. Here, the claimed functions which are used to implement the claimed method are well understood, routine, or conventional in the field. Here, the claim has not been shown to be “significantly more” than the abstract idea. For these above reasons the rejection of claim 1 is sustained. The Appellant has provided the same arguments for the remaining claims which are drawn to similar subject matter as claim 1, and the rejection of these claims is sustained for the same reasons given above. CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1, 3–5, 8, 10–12, 21–25, and 27–31 under 35 U.S.C. § 101. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 8, 10–12, 21– 25, 27–31 101 Eligibility 1, 3–5, 8, 10–12, 21– 25, 27–31 Appeal 2020-005954 Application 14/644,827 11 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation