Ex Parte CHENG et al

Patent Trial and Appeal Board

May 31, 2018

12272225 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/272,225 11/17/2008 TSZS.CHENG
73109 7590 06/04/2018
Cuenot, Forsythe & Kim, LLC
20283 State Road 7
Ste. 300
Boca Raton, FL 33498
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.
CHA920080011US1_8134-0118 5895
EXAMINER
BURKE, JEFF A
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TSZ S. CHENG
and
GREGORY P. FITZPATRICK
Appeal2017-010541
Application 12/272,225
Technology Center 2100
Before CARLA M. KRIVAK, JASON V. MORGAN, and
SHARON PENICK, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 24--41. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Appellants' invention is directed to social networking, "particularly,
to obtaining trusted recommendations through discovery of common
contacts in contact lists" (Spec. ,r 1 ).
1 Appellants identify IBM Corporation as the real party in interest (App. Br.
1 ).
Appeal2017-010541
Application 12/272,225
Independent claim 24, reproduced below, is exemplary of the subject
matter on appeal.
24. A computer-implemented method, comprising:
receiving, from a user, a query for a recommendation
including a search criteria;
receiving, from a plurality of different users, one or more
different contact lists respectively associated with each of the
plurality of different users;
generating, from the received plurality of different
contact lists, a shared contact list;
generating, from the shared contact list and using the
search criteria, a recommendation result; and
forwarding, to the user, the recommendation result.
REFERENCES and REJECTIONS
The Examiner rejected claims 24--41 as patent ineligible under 35
U.S.C. § 101 as directed to an abstract idea.
The Examiner rejected claims 24--41 as obvious under 35 U.S.C.
§ I03(a) based upon the teachings ofManolescu (US 2010/0057772 Al;
publ. Mar. 4, 2010) and Jagadish (US 2009/0271370 Al; publ. Oct. 29,
2009).
ANALYSIS
Rejection under 35 USC§ 101
The Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134
S. Ct. 2347, 2354--55 (2014) reaffirmed the framework set forth previously
in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72
(2012) "for distinguishing patents that claim laws of nature, natural
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Application 12/272,225
phenomena, and abstract ideas from those that claim patent-eligible
applications of these 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." Alice, 134 S.
Ct. at 2355. If the claims are directed to a patent-ineligible concept, then 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 elements that "'transform the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79, 78). That is,
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."' Alice, 134 S. Ct. at 2355 (brackets in original) (quoting
Mayo, 566 U.S. at 72-73). "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]."' Alice, 134 S.
Ct. at 2357 (brackets in original) (quoting Mayo, 566 U.S. at 77-78). 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). The Court
in Alice noted that "' [ s ]imply appending conventional steps, specified at a
high level of generality,' was not 'enough' [in Mayo] to supply ... [the]
'inventive concept."' Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at
82, 77, 72).
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Application 12/272,225
Step one: Are the claims at issue directed to a patent-ineligible concept?
The Examiner finds Appellants' claims are directed to the "abstract
idea of collecting contacts from other people and generating a
recommendation based on the collection" without additional elements
"sufficient to amount to significantly more than the judicial exception"
(Final Act. 3; Ans. 3).
Appellants contend their "claims ... do more than 'simply instruct'
one to implement 'collecting contacts from other people and generating a
recommendation based on the collection' on a generic computer" (App. Br.
9--10). Thus, they "are not 'directed to"' an abstract idea (App. Br. 10).
Specifically, Appellants contend the Examiner ignores the claim language
"' a query ... including a search criteria,' 'a shared contact list,' and using
the search criteria and the shared contact list to generate the recommendation
result" (id.). Appellants then assert the Examiner's identifying the claims as
referring to "using categories to organize, store, and transmit information" is
"pulled directly from page 5 of the 2015 Guidelines update and refers [to]
Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x 988,
993 (Fed. Cir. 2014)," a case Appellants note is nonprecedential (App. Br.
12).
However, as the Examiner finds, and we agree, the claim limitations
are similar to those in Electric Power Group, LLC v. Alstom S.A., 830 F.3d
13 50 (Fed. Cir. 2016)2 ("collecting information, analyzing it, and displaying
2 "Information as such is an intangible. See Microsoft Corp. v. AT&T Corp.,
550 U.S. 437,451 n.12, 127 S. Ct. 1746, 167 L.Ed.2d 737 (2007); Bayer AG
v. Housey Pharm., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003). Accordingly,
we have treated collecting information, including when limited to particular
content (which does not change its character as information), as within the
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Application 12/272,225
certain results of the collection and analysis") (Ans. 3-5). Appellants'
claims "without more, (such as identifying a particular tool for
presentation)," are "abstract as an ancillary part of such collection and
analysis" (Electric Power Group, 830 F.3d at 1353).
We are also unpersuaded by Appellants' assertion that the
"Examiner's reliance upon Cyber[S]ource is also misplaced" (App. Br. 15)
and that a "process employed by a person would not correspond to the
claimed process" is factually unsupported (Reply Br. 4). The Examiner's
Answer sets forth what a person would do to obtain recommendations for a
good or service (Ans. 4). Further, "relying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible." OIP Techs., 788 F.3d at 1363; see also Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
realm of abstract ideas. See, e.g., Internet Patents, 790 F.3d at 1349; OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015);
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n,
776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech Image Techs., LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (Electric
Power Group, 830 F.3d at 1353). In a similar vein, we have treated
analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category. See, e.g., TL! Commc 'ns, 823 F.3d at 613;
Digitech, 758 F.3d at 1351; SmartGene, Inc. v. Advanced Biological Labs.,
SA, 555 Fed.Appx. 950, 955 (Fed. Cir. 2014)."
Electric Power Group, 830 F.3d at 1353-54 (some citations omitted).
"[M]erely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.
See, e.g., Content Extraction, 776 F.3d at 1347; Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)" (id. at 1354).
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Application 12/272,225
("[O]ur precedent is clear that merely adding computer functionality to
increase the speed or efficiency of the process does not confer patent
eligibility on an otherwise abstract idea"); CLS Bank Int 'l v. Alice Corp. Pty.
Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013).
Appellants' arguments that the claims go beyond requiring collection,
analysis, and display of information in a particular field (Reply Br. 2) and
the Examiner "has not established that the claimed invention involves that
the alleged analyzing steps are essentially 'mental processes"' (Reply Br. 3)
are also unconvincing. Appellants have made assertions without evidence to
support those assertions. The Examiner explains, and we agree, Appellants'
claims are directed to an abstract idea (Ans. 3-5) and are similar to a mental
process (Ans. 4).
Therefore, we agree the claims are directed to an abstract idea.
Step two: Is there something else in the claims that ensures they are directed
to significantly more than a patent-ineligible concept?
Appellants assert the Examiner has not identified "additional elements
beyond 'additional computer elements"' and "has not explained why the
additional elements do not add significantly more to the alleged exception"
(App. Br. 17-18).
Contrary to these assertions, the Examiner finds, "in the current
claims, no new source or type of information is required, nor is there
explicitly claimed a new technique for analyzing it" (Ans. 6). The Examiner
further finds the claims require nothing more than a generic computer having
conventional computing components, "which does not transform the claim
into patent eligible subject matter" (Ans. 6) (see also Spec. ,r,r 8-11,
specifically ,r 11, "[ t ]hese computer program instructions may be provided to
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a processor of a general purpose computer" ( emphasis added)). Appellants'
Reply Brief assertions are also unpersuasive (Reply Br. 4 ).
Therefore, we concur with the Examiner that claim 24 and claims
25--41, argued therewith, are patent ineligible.
35 US.C. § 103(a)
The Examiner finds Manolescu teaches all the limitations of claim 24
except for "generating, from the received plurality of different contact lists, a
shared contact list" and "generating, from the shared contact list and using
the search criteria, a recommendation result" and relies on Jagadish for
teaching these limitations (Final Act. 9).
Appellants contend the "Examiner has not established that the 'list of
candidate friends' described in paragraphs [0051 ]-[00052] of Jagadish is a
shared contact list" (App. Br. 20-21 ). Appellants state Jagadish does not
teach a "'recommendation' separate from the shared contact list," therefore,
"Jagadish cannot be used to teach that the shared contact list is used to create
a separate recommendation"-thus, the "Examiner is relying upon the same
teaching for two different limitations, which is impermissible" (App. Br.
23). Appellants also assert the Examiner does not address these arguments
(Reply Br. 6-7). We do not agree.
The Examiner does not rely on the same teachings in J agadish to teach
two different limitations, as Appellants contend (Ans. 7). As the Examiner
states, and we agree, the Examiner relies on the combination of the
references; whereas Appellants are arguing the references separately and not
as a combination (id.). The Examiner's arguments on pages 7 and 8 of the
Answer are reasonable and persuasive in addressing Appellants' contention.
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The Examiner also finds, in the Final Office Action, and we agree,
Jagadish's paragraph 21 states, "[a]s used herein, the term 'contact list'
refers to any source of information about members in a person's list of
contacts. As such a contact list includes email address books, buddy lists,
text messaging address lists, and the like" (see Final Act. 9). Additionally,
Jagadish's paragraphs 51 and 52 state a user may create a list from other's
contact lists (Final Act. 9; Ans. 6). The Examiner also finds there is "no
specific definition of the term 'shared contact list"' in Appellants'
Specification (Ans. 6). Therefore, the Examiner reasonably interprets this
term to mean the shared contact list is "composed of contacts that share a
relationship with the user requesting the contact list" (id.). We agree.
Appellants' Reply Brief merely states the "'shared contact list' is a list of
'shared contacts'-not a 'contact list' that is shared" (Reply Br. 5), which is
consistent with the Examiner's interpretation. Thus, we find no error in the
Examiner's findings with respect to independent claim 24 and independent
claims 30 and 36, argued together, along with their respective dependent
claims 25, 27, and 29-41 (App. Br. 19).
Appellants separately argue claim 26 's limitation "wherein each of the
[at] least one name is respectively associated with a confidence rating" is not
taught or suggested by Jagadish's paragraph 74 (App. Br. 25-26).
Paragraph 7 4 states "CFF [ ( client friend finder)] 246 may further order
and/or group the resulting candidate friends using any of a variety of ranking
or ordering mechanisms, including, but not limited to a most common
friends of friends" ( emphasis added). Thus, the Examiner finds, "[ t ]hese
ordering or rankings represent the confidence, of the system, that the
candidate friend will provide the best contact list recommendation" (Ans. 8).
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We agree Jagadish suggests a ranking system based on confidence can be
used so that each of the at least one name is associated with a confidence
rating as claimed.
Appellants separately argue claim 28's limitation "wherein the
confidence rating for the associated name is based upon degrees of
separation between contacts [sic] lists in which the associated name was
found" is not taught or suggested by Jagadish's paragraph 73 (App. Br. 26).
Paragraph 73 of Jagadish states the CFF may "iteratively search each
available contact list, starting with those of at least the subset of friends, and
continuing over the identified degrees of separation" ( emphasis added).
Appellants' contend Jagadish's teaching that "the user may provide a
degree over which to conduct a search" does not teach the degree of
separation is assigned to the search (App. Br. 26). The Examiner in the
Answer, however, further asserts the rejection is also with respect to
Jagadish's paragraph 74 ("Jagadish discloses that the CFF generates a list of
candidate friends based on the iterative search ([0074]). Jagadish discloses
that the CFF may further group or order the candidate friends using a variety
or ranking or ordering mechanisms, including most common friends of
friends, diffusion and/or a weighted graph approach"), thus teaching and
suggesting the ranking or ordering in Jagadish is based on degrees of
separation provided by the user (Ans. 8-9; Jagadish ,r 74). We agree with
the Examiner's findings with respect to the teachings of Jagadish.
Appellants' statement in the Reply Brief that "[ n ]othing within the
Examiner's cited passage refers to degrees of separation between contact
lists" (Reply Br. 9) does not persuade us the Examiner erred in light of
Jagadish's teachings and suggestions (Ans. 8-9).
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Thus, we sustain the Examiner's rejection of dependent claims 26 and
28.
DECISION
The Examiner's decision rejecting claims 24--41 as patent ineligible
under 35 U.S.C. § 101 is affirmed.
The Examiner's decision rejecting claims 24--41 as obvious under 35
U.S.C. § 103(a) is affirmed.
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).
AFFIRMED
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