Microsoft Technology Licensing, LLC

Patent Trials and Appeals Board

Mar 18, 2021

2020005954 (P.T.A.B. Mar. 18, 2021)

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).
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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
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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).
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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
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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:
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(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.
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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”;
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[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
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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
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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

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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