Ex Parte Gupta et al

Patent Trials and Appeals Board

Mar 21, 2019

14479127 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/479, 127 09/05/2014 Abhishek Gupta
45839 7590 03/25/2019
Schwegman Lundberg & Woessner/ Linkedln/Microsoft
POBOX2938
MINNEAPOLIS, MN 55402
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.
3080.326US1 4364
EXAMINER
MCATEE,PATRICK
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/25/2019 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):
USPTO@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABHISHEK GUPTA, TING TING CUI, ZANG LI,
ANMOL BHASIN, and SACHIN REKHI
Appeal2017-003689 1
Application 14/479,1272
Technology Center 3600
Before JASON V. MORGAN, JEREMY J. CURCURI, and
SHARON PENICK, Administrative Patent Judges.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-7 and 10-20. We have jurisdiction under 35 U.S.C.
§ 6(b)(l).
We affirm.
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
Apr. 15, 2016), and the Examiner's Answer ("Answer," mailed Aug. 24,
2016) and Final Office Action ("Final Action," mailed Nov. 20, 2015).
2 Appellants identify Linkedin Corporation as the real party in interest. App.
Br. 2.
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Application 14/479,127
Appellants' Specification
Appellants' Specification relates to onboarding a user to a sales tool,
retrieving usage information related to that user from a social networking
service, and generating entities based on the usage information. Spec.,
Abstract. These entities may include companies, other organizations,
accounts, contacts, or sales leads. Spec. ,r,r 36, 68; p. 28 ( originally filed
claim 7). A score is calculated for each entity, "indicating a likelihood that
the first user will wish to receive insights" regarding the entity from the sales
tool. Id., Abstract. The entities are ranked based on the scores. Id.
Representative Claim
The claims are directed to determining financial risk based on the
items purchased in a transaction. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A computer-implemented method comprising:
receiving a request to onboard a first user to a software
tool;
obtaining usage information related to the first user from
a social networking service;
wherein the usage information includes information on
which profile web pages within the social networking site the
first user viewed and how many times each of the profile web
pages was viewed by the first user, the social networking site
having a plurality of different profile web pages;
generating one or more entities in the software tool based
on the usage information from the social networking site;
calculating a score for each of the one or more entities, the
score for a particular entity being calculated based on the number
of times a profile web page in the social networking site for the
particular entity was viewed by the first user, an amount of time
the profile web page was viewed by the first user, one or more
computer commands executed by the first user while viewing the
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profile web page, and a number of communications sent between
the first user and the particular entity;
ranking the one or more entities based on the calculated
score for each of the one or more entities;
adding the one or more entities as entries in the software
tool based on the ranking;
performing a database search, on a news article database,
for each of the one or more entities to identify any recent news
articles tracked by the social networking site that mention
any of the one or more entities; and
providing results of the news article database search to the
first user.
App. Br. 31 (Claims Appendix).
REJECTIONS
Claims 1-7 and 10-20 stand rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Final Action 6-13.
Claims 1-7, 10-12, 18, and 19 stand rejected under 35 U.S.C. § 103
as being unpatentable over Brydon et al. (US 2006/0026033 Al; Feb. 2,
2006) ("Brydon '033"); Brydon et al. (2006/0136419 Al; June 22, 2006)
("Brydon '419"); Singh (US 2010/0131339 Al; May 27, 2010); and Neil
Mansilla, Comment to With Google News AP! Going Away, What Is The
Best Option for Company News Search/Feed, QUORA (Aug. 15, 2012),
https://www.quora.com/With-Google-News-API-going-away-what-is-the-
best-option-to-add-a-company-news-search-feed-to-a-website ("Mansilla").
Final Action 14--30.
Claims 13 and 20 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Brydon '033, Brydon '419, Singh, Mansilla, and
McCormack et al. (US 2012/0084340 Al; Apr. 5, 2012) ("McCormack").
Final Action 30-32.
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Claims 14, 16, and 17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Brydon '033, Brydon '419, and Singh. Final Action 33-
43.
Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Brydon '033, Brydon '419, Singh, and McCormack. Final Action 43-
46.
REJECTION UNDER 35 U.S.C. § 101
Standard for Patent Eligibility
To be statutorily patentable, the subject matter of an invention must be
a "new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." 35 U.S.C. § 101. In issues
involving subject matter eligibility, our inquiry focuses on whether the
claims satisfy the two-step test set forth by the Supreme Court in Alice Corp.
v. CLS Bank Int'!, 573 U.S. 208 (2014). The Supreme Court instructs us to
"first determine whether the claims at issue are directed to a patent-ineligible
concept." Id. at 217. If the initial threshold is met, we then move to the
second step, in which we "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." Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme Court describes the second
step 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."' Id.
( quoting Mayo, 566 U.S. at 72-73).
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The USPTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum").
Under that guidance, we first look to whether the claim recites:
( 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) (see Memorandum, 84 Fed. Reg. at 54 (Step 2A-Prong
One)); and
(2) additional elements that integrate the judicial exception into a
practical application (see Memorandum, 84 Fed. Reg. at 54--55 (Step
2A-Prong Two); 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 Memorandum, 84 Fed. Reg. at 56 (Step 2B).
Examiner's Determinations and Conclusion
In the first step of the Alice inquiry, the Examiner determines the
claims are directed to an abstract idea, namely, "the abstract idea of
organizing, storing, and presenting information to carry out comparing new
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and stored information and using rules to identify options." Final Action 9.
The Examiner reasons that the recited steps in the claims are "similar to
abstract ideas identified by the Federal Circuit in SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 Fed. Appx. 950 (Fed. Cir. 2014)
(nonprecedential)." Id. at 9-10.
Additionally, the Examiner determines that the claims "could equally
be characterized" as one of "certain methods of organizing human activity"
which are also abstract. Id. at 10-11 (citing July 2015 Update on Subject
Matter Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015)). The Examiner
finds that, while the word "sales" was removed from the claims, the claimed
invention "is directed to a computer-based tool to generate sales leads for
marketing or sales purposes." Id. at 11. The Examiner emphasizes that
"certain methods of organizing human activity" is discussed as relating to
"interpersonal and intrapersonal activities," "social activities," and
"advertising, marketing, and sales activities or behaviors." Id. at 10-11.
The Examiner then determines that additional elements in the claims
do not amount to significantly more than the abstract idea itself. Id. at 11-
13. The Examiner finds, echoing language from MPEP 2106.05(d), "the
invention merely relies on a generic computer to perform computer
functions that are well-understood, routine and conventional activities
previously known to the industry. Id. at 12. The Examiner additionally
finds, echoing language found in MPEP 2106.05(d) and (h), that the claims
do not provide meaningful limitations beyond generally linking an abstract
idea to a particular technological environment and a particular context." Id.
at 12-13.
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Appellants ' Contentions
Appellants present several arguments in favor of eligibility. First,
Appellants argue that the Examiner improperly "seems to consider any
activities performed by a computer to be somehow 'conventional'" and that
this is contrary to precedent, in which even claims implemented using "well-
known, routine, and conventional" may be patent-eligible. App. Br. 19-20
(citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014)). Appellants argue that the Examiner failed to provide evidence that
the "actual effect" of the recited elements is conventional. Id. at 20.
Appellants additionally argue that the Examiner is incorrect in finding
that the claims are directed to a computer-based tool to generate sales leads.
Id. at 21. Appellants contend that while they "recognize[] that the
specification mentions one disclosed possible use of the software tool ... as
being to generate sales leads," the claims do not actually recite the sales
aspect and "one possible use of a damed invention is not a description of
what the invention is 'directed to."' Id. at 21-22.
Appellants aver that the claim includes two processes - first that of
onboarding a user (including adding entities to a software tool), and second,
using the entities in the software tool (including performing a database
search and providing the results to the user). Id. at 22. The first, at least,
Appellants argue, is not abstract. Id. "Put another way, the presence of a
potentially abstract use of an otherwise non-abstract invention does not
render the entire claim abstract." Id.
Appellants argue that the Examiner further erred, having found that
the claims are directed to an abstract idea, that they are not nonetheless
directed to patentable subject matter, in the second step of the Alice/Mayo
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determination. Id. at 23-24. Appellants argue that the claims recite a
specially-configured computer, solve a technological problem in
conventional industry practice, and contain a limitation (that of "calculating
a score for each of the one or more entities ... ") which is not purely
conventional. Id. at 24--27. Appellants further contend that the claims
overcome a problem specifically arising in a particular computer realm,
noting that social networking did not exist prior to "the rice in prominence of
the Internet and the proliferation of computer technology." Id. at 28.
Appellants further argue that the claims would not preempt any
abstract ideas. Id. at 29.
Our Review
Applying the guidance set forth in the Memorandum, we are not
persuaded of Examiner error. The Memorandum instructs us first to
determine whether any judicial exception to patent eligibility is recited in the
claim. The guidance identifies three judicially-excepted groupings: (1)
mathematical concepts, (2) certain methods of organizing human activity
such as commercial or legal interactions (including "marketing or sales
activities or behaviors") fundamental economic practices and "managing
personal behavior or relationships or interactions between people", and (3)
mental processes. We focus here on the second grouping.
Claim 1 recites [AJ a computer-implemented method comprising the
following steps: "[BJ receiving a request to onboard a first user to a software
tool"; "[CJ obtaining usage information related to the first user from a social
networking service ... "; "[DJ "generating one or more entities in the
software tool based on the usage information from the social networking
site"; "[EJ calculating a score for each of the one or more entities ... "; "[FJ
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ranking the one or more entities based on the calculated score for each of the
one or more entities"; "[GJ adding the one or more entities as entries in the
software tool based on the ranking"; "[HJ performing a database search, ...
for each of the one or more entities"; and "[IJ providing results of the news
article database search to the first user."
We agree with the Examiner that these limitations, under their
broadest reasonable interpretation, recite the fundamental economic practice
of generating sales leads for marketing or sales purposes. Final Action 10-
11. The limitations all recite the operations that would ordinarily take place
in generating such sales leads. For example, limitations [CJ and [DJ
identify potential leads from among a user's social network. Limitations [EJ
through [GJ filter the leads based on information about the user's
interactions with them. Limitations [HJ and [IJ provide the user with
additional information regarding the identified and filtered leads.
Appellants are correct that the specific use of the claimed method in
sales lead generation is not included in the claim (App. Br. 21-22).
However, we agree with the Examiner that consideration of the claims in
light of the specification is proper. "A determination of what the claims are
directed to is often aided by a consideration of the specification and its
description of the problem to be solved and the discovered solution to that
problem. The specification is a useful aid in the court's determination of the
thrust of the invention or what the inventors 'characterize [ as J their
contribution to the art."' Smart Sys. Innovs., LLC v. Chicago Transit
Authority, 873 F.3d 1364, 1379 (Fed. Cir. 2017) (citing In re Diehr, 602
F.2d 982,983 (CCPA 1979)). We therefore agree with the Examiner's
consideration of the claims as directed to sales lead generation.
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The use of a user's social network information to identify sales leads
is a practice found in sales and marketing activities, which involves the
stream of commerce. Thus, like the concept of intermediated settlement in
Alice, and the concept of hedging in Bilski v. Kappas (561 U.S. 593 (2010)),
the concept of sales lead generation recited in Appellants' claims "is a
fundamental economic practice long prevalent in our system of commerce."
Alice, 573 U.S. at 216 (citations and internal quotation marks omitted).
Accordingly, we conclude the claims recite a fundamental economic
practice, which is one certain methods of organizing human activity
identified in the Revised Guidance, and thus an abstract idea.
Having determined that the claims recite a judicial exception, our
analysis under the Memorandum turns to determining whether the claims
"amount to significantly more" - whether there are "additional elements that
integrate the judicial exception into a practical application." MPEP
§ 2106.05(a}-(c), (e}-(h)); Memorandum, 84 Fed. Reg. at 54--55.
Appellants argue that the claim limitation directed to "obtaining usage
information related to the first user from a social networking service ... "
relates to "operations ... that simply did not exist prior to the rise in
prominence of the Internet." Appeal Br. 28. We agree with the Appellants
that the claims at issue are not generic automation of a traditional technique.
See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1351
(Fed. Cir. 2016). Instead, the claims recite using specific information from
usage information from a social networking service to calculate a score,
which is significantly more than the judicial exception regarding certain
methods of organizing human activity. See McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1314--1316 (Fed. Cir. 2016).
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As such, we conclude the judicial exception in claim 1 is integrated
into a practical application, and therefore we reverse the rejection of claim 1,
and claims 2-7 and 10-20, rejected on a similar basis, under 35 U.S.C.
§ 101.
REJECTION UNDER 35 U.S.C. § 103(a)
We affirm the rejection under 35 U.S.C. § 103(a). In rejecting claim 1
as obvious over a combination of Brydon '033, Brydon '419, Singh and
Mansilla, the Examiner finds, inter alia, that Singh teaches obtaining usage
information from a social networking service, including information on
which profile web pages within the social networking service the user
viewed, how many times each profile web page was viewed and how much
time the user spent viewing a profile web page. Final Action 20 ( citing
Singh claim 3).
Appellants argue that Singh is "a reference wholly lacking in
description" and that it does not teach the elements the Examiner finds to be
taught therein. Appeal Br. 11-14. Appellants additionally argue that claim
3 of Singh, which the Examiner relies upon, is not supported by the written
description of Singh. Id. at 12. With respect to this latter argument, we
agree with the Examiner that Singh as a prior art reference is not subject to
the requirements of 35 U.S.C. § 112(a), and that the proper evaluation of
Singh centers on what would Singh would reasonably have made known to a
person of ordinary skill in the art. Answer 5---6.
Appellants specifically argue that Singh's disclosure does not teach,
as part of a user's browsing information, the number of repeat visits to a
page. Appeal Br. 12-13. Appellants argue that "number of repeat visits" in
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Singh's claim 3 must refer to number of repeat visits to a particular website
and not to a particular page. Id. However, we agree with the Examiner that
Singh' s claim 3 limitation relating to the tracking of "number of repeat
visits" teaches or suggests to the tracking of repeat visits to a page. See
Answer 9-10. Singh's claim teaches collecting information about website
users (Claim 1, from which claim 3 indirectly depends) including browing
information relating to the date, time, and "title and meta-tags of pages
visited by user," and that "similar (including the above information)
information from previous visits to this website by the same user." Singh,
Claims 1, 3. Thus Claim 3 specifically relates to the collection of data
including title of pages visited by a user on a specific visit and previous
visits. We agree with the Examiner that one of ordinary skill in the art
would find in Claim 3 the teaching or suggestion of the tracking of the
number of repeat visits to a page.
Appellants additionally argue that Singh fails to teach or suggest
calculating "an amount of time" a web page was viewed. Appeal Br. 13.
Appellants argue that Singh's claim limitation of tracking, for a user's visit
to pages on a website, "time spent" does not teach or suggest the time spent
on each page, as "there are numerous possible interpretations of 'time
spent"' and that any ambiguity is fatal to the Examiner's findings. Id. We
disagree. Singh discusses tracking for information about the user's browing
on a website, including, for example, "time spent hovering over a
hyperlink." Singh Claim 3. In the context of a claim relating in part to such
tracking of granular information relating to a user's visit to pages on a
website, we disagree with Appellants that one of ordinary skill in the art
would read "repeat visits" to be devoid of context. See App. Br. 13
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("[T]here is nothing even tying the 'time spent' to anything computer related
other than the assumption that it is so merely because this metric is clustered
in with metrics that are computer related.") We note that Singh's claim 3
( directly or through dependency) recites "collecting information about [a]
website user" including "user's browing information" which includes "time
spent hovering over a hypelink/hypertext/anchor text, over other text, and
over non-text elements," "number of pages visited, [and] time spent." Singh
Claims 1-3. We acknowledge the ambiguity argued by the Appellants,
although we do not agree that the term is as ambiguous as Appellants argue.
See App. Br. 13 ("There is nothing even tying the 'time spent to anything
computer related other than the assumption that it is so merely because this
metric is clustered in with metrics that are computer related.") We look to
the reference "to take into account not only specific teachings of the
reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826
(CCPA 1968). We agree with the Examiner (Answer 6-13), adopting the
Examiner's reasoning and analysis, that one of ordinary skill in the art at the
time of the invention, reading the entirety of Singh' s Claim 3 and the claims
from which that claims depend, would have found the teaching or suggestion
of the tracking of time spent on a specific web page.
Appellants argue that the rejection of claim 1 "is deficient as it
pertains to an outdated version of the claims," relating to a "sales tool"
rather than a "software tool." Appeal Br. 13-14. However, we disagree that
the Examiner's rejection does not show how the changed claim language is
taught or suggested in the prior art, and additionally note that the change in
claim language is addressed by the Examiner in the rejection. See Final
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Action 17. Thus, we find no error in the Examiner's obviousness rejection
of claim 1, or claims 2-7, 10-13, and 18-20, argued on the same basis
(Appeal Br. 14, 16).
Appellants argue that the rejection of claim 14 is additionally flawed
because Singh does not teach or suggest "a social networking information
analyzer configured to ... calculate a score." Appeal Br. 15. However, we
agree with the Examiner that this argument does not address the combination
of art cited by the Examiner. See Final Action 33--41; Answer 15-16. Thus,
we also find no error in the Examiner's obviousness rejection of claim 14 or
claims 15-17, argued on the same basis (Appeal Br. 15).
DECISION
We reverse the Examiner's rejection of claims 1-7 and 10-20 under
35 U.S.C. § 101.
We affirm the Examiner's rejection of claims 1-7 and 10-20 under
35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection for each
claim on appeal, we affirm the Examiner's decision rejecting the claims.
37 C.F.R. § 4I.50(a)(l).
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)(l )(iv).
AFFIRMED
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