Ex Parte Hua et al

Patent Trials and Appeals Board

Jun 27, 2019

12978265 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/978,265 12/23/2010
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
07/01/2019
FIRST NAMED INVENTOR
Ming Hua
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.
26295-17339 1891
EXAMINER
PATEL,DHAIRYAA
ART UNIT PAPER NUMBER
2453
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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
Ex parte MING HUA and YUN-FANG JUAN 1
Appeal 2018-006220
Application 12/978,265
Technology Center 2400
Before ST. JOHN COURTENAY III, JAMES R. HUGHES, and
JOYCE CRAIG, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-3, 7-9, 12, 14-18, 21-23, and 25-
27.2 Claims 4-6, 10, 11, 13, 19, 20, and 24 have been canceled. See Final
Act. 1-2; Appeal Br. 9. 3 We have jurisdiction under 35 U.S.C. § 6(b).
1 Facebook, Inc. ("Appellant") is the applicant as provided in 37 C.F.R.
§ 1.46 and is identified as the real party in interest. Appeal Br. 2.
2 The Examiner includes canceled claim 13 in the listing of the pending
claims. We find this typographical error harmless.
3 We refer to Appellant's Specification ("Spec.") filed Dec. 23, 2010;
Appeal Brief ("Appeal Br.") filed Dec. 5, 2017; and Reply Brief ("Reply
Br.") filed May 29, 2018. We also refer to the Examiner's Final Office
Appeal 2018-006220
Application 12/978,265
We affirm.
Appellant's Invention
The invention "relates generally to social networking, and in
particular to computing contextually relevant affinities for users of a social
networking system by predicting different types of actions that users of the
social networking system may perform." Spec. ,-J 1; see Spec. ,-J,-J 5-7;
Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A method for providing a measure of affinity for a
user of a social networking system, the method comprising:
receiving a request for a measure of affinity for a user of a
social networking system from a process, the request specifying
as input one or more weights related to a plurality of actions in
the social networking system;
weighting each of a plurality of predictor functions using
the received weights, wherein each predictor function predicts
whether the user will perform an action associated with the
weight applied thereto, wherein each of the predictor functions
are determined as a ratio of a numerator affine function of
statistics on users' historical activity and a denominator affine
function of statistics on users' historical activity, at least one of
the actions being one of a communication in the social
networking system of the user with other users and an
observation by the user of other users' actions in the social
networking system, and at least one of the actions being a
coincidence action that is further representative of the co-
Action ("Final Act.") mailed May 4, 2017; and Answer ("Ans.") mailed Apr.
4, 2018.
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Application 12/978,265
occurrences of two or more users within content of the social
networking system;
computing a measure of affinity for the user by combining
the weighted plurality of predictor functions; and
providing the computed measure of affinity to the process.
Appeal Br. 17 (Claims App.).
Rejection on Appeal
The Examiner rejects claims 1-3, 7-9, 12, 14-18, 21-23, and 25-27
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
See Final Act. 2-4.
RELATED APPEAL
The instant Appeal is related to Appeal No. 2017-001536 for US
13/437,823 ('"823 Appl."). In the '823 Appl. and Appeal No. 2017-001536,
Appellant incorporated by reference the instant application. See '823 Appl.
Specification ,i 17; Appeal Brief for Appeal No. 2017-001536 (dated June 2,
2016) at 6. In that decision (Appeal No. 2017-001536) ("Decision") mailed
on Aug. 2, 2018, the Board affirmed the Examiner's 35 U.S.C. § 101
rejection of claims 1-12, the Examiner's obviousness rejection of claims 1-
9, 11, and 12, and reversed the Examiner's enablement and written
description rejections of claims 1-12. The scope of the claims in the instant
application are substantially different than the at-issue claims in the '823
Appl. (now abandoned).
ISSUE
Based upon our review of the record, Appellant's contentions, and the
Examiner's findings and conclusion, the issue before us follows:
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Did the Examiner err in determining Appellant's claims were directed
to patent-ineligible subject matter, without significantly more, under
35 U.S.C. § 101?
ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 566 U.S. 66, 77-80 (2012), "for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 573 U.S. at 217.
Assuming that a claim nominally falls within one of the statutory categories
of machine, manufacture, process, or composition of matter, the first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts" (id.), e.g., to an abstract idea. 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 mi ti gate
settlement risk."); see also Bilski v. Kappas, 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
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ideas, and thus patent ineligible include, but are not limited to, certain
methods of organizing human activity, such as fundamental 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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267-68 (1853))); 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 176; 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."). The
Supreme Court continued by qualifying its findings, indicating 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. ( 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.").
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If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step of the Alice and Mayo
framework where the elements of the claims are considered "individually
and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-79).
This second step is described as "a search for an 'inventive concept'-i.e.,
an element or combination of elements that is ' ... significantly more than
... the [ineligible concept] itself."' Id. at 217-218 (alteration 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, 573 U.S.
at 221 (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.
The Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised Guidance").
Under that 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, mental processes, or certain
methods of organizing human activity such as a fundamental
economic practice or managing personal behavior or relationships or
interactions between people) (hereinafter "Step 2A, prong l "); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h))
(hereinafter "Step 2A, prong 2").4
See 2019 Revised Guidance, 84 Fed. Reg. at 51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance 84 Fed. Reg. at 56; Alice, 573 U.S. at 217-18.
For example, we 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 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.5
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Eligibility Analysis-Revised Guidance Steps 1 and 2A, Prong 1
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfzsh, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1853)).
The Examiner rejects Appellant's claims 1-3, 7-9, 12, 14-18, 21-23,
and 25-27 as being directed to patent ineligible subject matter. See Final
Act. 2-4; Ans. 3-18. Although the Examiner discusses each of independent
claims 1, 15, and 22 separately, the reasoning is the same for each
independent claim. See id. Appellant does not separately argue the
independent claims (Appellant does separately argue dependent claim 17
(infra)). See Appeal Br. 9-14. Accordingly, we address the Examiner's
rejection of independent claim 1 and the claims not separately argued by
Appellant as a group based on claim 1.
5 Items (3) and (4) are collectively referred to as "Step 2B" hereinafter and
in the 2019 Revised Guidance.
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The Examiner rejects Appellant's claim 1 as being directed to patent
ineligible subject matter (see Final Act. 2-3) and concludes claim 1 "is
directed to a judicial exception (i.e., ... an abstract idea) without
significantly more because claim 1 is directed to:
a method comprising receiving a request for measure of affinity
for a user of social networking system from a process; weighting
each of a plurality of predictor functions using received weights;
computing a measure of affinity for the user by combining the
weighted plurality of predictor functions and providing the
computed measure of affinity to the process which falls under
abstract idea of organizing information through mathematical
correlations.
Final Act. 2; see Ans. 3. Additionally, the Examiner explains the claim is
similar to the abstract idea in In re Grams, 888 F.2d 835 (Fed.Cir.1989)-
providing "an algorithm for calculating parameters indicating an abnormal
condition"-as well as Bilski-providing a "mathematical formula for
hedging. Further, the Examiner maintains "that claims are directed to the
abstract idea of concepts relating to organizing or analyzing information in a
way that can be performed mentally or is analogous to human mental work
under organizing and manipulating information through mathematical
correlations," similar to Digitech Image Techs., LLC v. Elecs. for Imaging,
Inc., 758 F.3d 1344 (Fed. Cir. 2014). Ans. 3. See Ans. 3-6. The Examiner
also explains, responsive to Appellant's arguments, that claim 1 is "directed
to an abstract idea" because the claim is not "limited to a specific process in
the same manner as the claims in [McRO]." Ans. 6; see Ans. 6-7.
Here, in rejecting the claims (in particular claim 1) under 35 U.S.C.
§ 101, the Examiner analyzed the claims using the Mayo/Alice two-step
framework, consistent with the guidance set forth in the USPTO's "2014
Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618
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(Dec. 16, 2014), in effect at the time the rejection was made, i.e., on May 4,
2017.
Appellant contends that the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 9-16;
Reply Br. 2-8. Specifically, Appellant contends, with respect to the first
step of the Alice analysis, that claim 1 and the other pending claims are
"limited to a specific process in the same manner as the patent-eligible
claims inMcRO" (Appeal Br. 10; see Appeal Br. 10-12; Reply Br. 2-6),
Digitech "is inapplicable is inapplicable to the claims because the claims go
beyond merely organizing existing information into a new form" (Appeal
Br. 1 O; see Appeal Br. 12-13), and the Examiner's eligibility analysis is
incorrect because the claims "go beyond simply 'organizing and analyzing
information"' in that the claims "explicitly state that new information-the
measure of affinity-is generated and provided to the requesting process"
and the claims "cannot reasonably be characterized as being directed to the
abstract idea of 'mathematical relationships/formulas."' Reply Br. 5; see
Reply Br. 5-6. Appellant also separately argues claim 17, which we address
infra.
For the reasons discussed below, we conclude Appellant's claim 1
(and the other pending claims) recites abstract ideas, these abstract ideas are
not integrated into a practical application, nor do they include an inventive
concept. In view of the 2019 Revised Guidance, we clarify and expand the
Examiner's reasoning as follows.
We begin our analysis by broadly but reasonably construing
Appellant's claim 1 (see Appeal Br. 17 (Claims App.)). Claim 1 recites "[a]
method for providing a measure of affinity for a user of a social networking
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system." That is, a process for measuring a user's interest or relationship.
Specifically, Appellants claim a method (process) for measuring affinity for
a user of a social network. See Spec. ,i,i 1, 5-7. In the context of the
Specification: "The measure of affinity for a user may reflect the user's
interest in other users, content, actions, advertisements, or any other objects
in the social networking system." Spec. ,i 5. 6
Claim 1 also recites "receiving a request for a measure of affinity for a
user of a social networking system from a process, the request specifying as
input one or more weights related to a plurality of actions in the social
networking system." In other words, the social networking system receives
a request from a process ( a routine running within the social networking
system (see Spec. ,i,i 5-6)) for an affinity measurement. The request
includes weights relating to actions of interest ( to the requesting process)
occurring within the social networking system (see Spec. ,i 6).
Claim 1 further describes weighting predictor functions used to
calculate affinity measurements. Specifically, claim 1 recites "weighting
each of a plurality of predictor functions using the received weights." That
is, applying the provided weight (bias value) to each predictor function.
Claim 1 also characterizes the purpose of the predictor functions-
"wherein each predictor function predicts whether the user will perform an
action associated with the weight applied thereto." Claim 1 further
characterizes (defines) the structure of the predictor functions-"wherein
each of the predictor functions are determined as a ratio of a numerator
6 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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affine function of statistics on users' historical activity and a denominator
affine function of statistics on users' historical activity." See, e.g., Appeal
Br. 4.
The claim also specifies certain actions. The actions include "at least
one of the actions being one of a communication in the social networking
system of the user with other users and an observation by the user of other
users' actions in the social networking system," i.e., the claim requires that
at least one action ( associated with one of the predictor functions) is
communication, in the social networking system, by the user with other
users, and further requires that the action is an observation (by the user) of
other users' actions in the social networking system. The claim specifies at
least one additional action-"and at least one of the actions being a
coincidence action that is further representative of the co-occurrences of two
or more users within content of the social networking system"-i.e., the
claim requires that the at least one additional action (associated with one of
the predictor functions) is a coincidence action, where two users are
associated with (share affinity with) one another and certain content. See
Spec. ,-i 7; Appeal Br. 4.
Claim 1 continues, reciting "computing a measure of affinity for the
user by combining the weighted plurality of predictor functions." That is,
calculating the affinity measurement utilizing an algorithm, which is the sum
( combination) of the weighted predictor functions. The method of claim 1
also details "providing the computed measure of affinity to the process." In
other words, the social networking system sending (providing) the calculated
affinity measure to the process ( that originally requested the affinity
measurement).
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In summary, claim 1 recites a requesting an affinity measurement,
providing weights (bias factors) to be used in calculating the affinity
measurement, applying the weights to (predictor functions) to be used in
calculating the affinity measurement, calculating the affinity measurement
by adding together the weighted functions, and sending the resulting affinity
measurement to the requestor. Hereinafter, we refer to this process as the
"affinity computation process."
We find that claim 1 recites a "method" (supra)-the affinity
computation process. A process is a statutory category of invention (subject
matter) (USPTO's Step 1 ). Utilizing our interpretation of claim 1 (supra),
we analyze whether the claim is directed to an abstract idea (USPTO's Step
2A).
Here, Appellant's claims generally, and independent claim 1 in
particular ( as summarized, supra), recite a process for computing an affinity
(interest) measurement. This is consistent with how Appellant describes the
claimed invention-"the claims capture a specific process that constitutes a
particular way of computing and providing a measure of affinity to a process
in a social networking environment" (Appeal Br. 11 (emphasis omitted)).
See Appeal Br. 11-13; Spec. ,-J,-J 1, 5-7, 18-20.
Appellant's contentions (supra) focus on the purported technological
improvements or advances provided by the recited affinity computation
process, as well as the specific way ( the specific steps) performed in the
process. Claim 1, however, recites no substantive limitations on how the
affinity computation process derives the constituent parts of the predictor
functions (the affine functions of statistics on users' historical activity), or
how the various weightings provided for the calculation are determined.
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The limitations are entirely functional in nature, characterize the structure of
the algorithm (utilized in the calculation), or characterize various values
utilized in the calculation-for example, claim 1 recites "receiving a
request" (for a measure of affinity) that specifies "one or more weights
related to a plurality of actions in the social networking system,"
"weighting" (i.e., applying the received weights to) the "predictor
functions," and "computing a measure of affinity ... by combining the
weighted ... predictor functions." A person can perform the function of
each of the limitations delineated above mentally, or by using pen and paper
to depict the information to be calculated, assign weights to the information,
and utilizing basic math for the recited calculations. See, e.g., Appellant's
Figs. 2-7, 9-14. Nowhere does Appellant point to specific claim limitations
that distinguish over a human process. To the extent Appellant argues the
various weights, functions, or values are specific technological
improvements, mathematical operations or algorithms (mathematical
concepts), in themselves, are not patent eligible subject matter.
Performing information analysis, and the collection and exchange of
information related to such analysis, may be an abstract concept that is not
patent eligible. See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161,
1165, 1167-68 (Fed. Cir. 2018) (Claims reciting "[a] method for providing
statistical analysis" (id. at 1165) were determined to be "directed to an
abstract idea" (id. at 1168). "As many cases make clear, 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" (id. (quotations omitted)). See also Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017)
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(identifying the abstract idea of collecting, displaying, and manipulating
data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) ( characterizing collecting information, analyzing information by steps
people go through in their minds, or by mathematical algorithms, and
presenting the results of collecting and analyzing information, without more,
as matters within the realm of abstract ideas); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1345,
1347 (Fed. Cir. 2014) (finding the "claims generally recite ... extracting
data ... [ and] recognizing specific information from the extracted data" and
that the "claims are drawn to the basic concept of data recognition");
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.").
In summary, we conclude Appellant's claim 1 recites a judicial
exception (USPTO's Step 2A, Prong l; see 2019 Revised Guidance).
Specifically, claim 1 recites a request and calculation process-the affinity
computation process-for determining, weighting (biasing), and calculating
an interest (affinity) measurement as discussed supra. The affinity
computation process consists of mathematical concepts or mental processes
performed in the human mind ( or utilizing pen and paper) including
observation, evaluation, or judgment. See 2019 Revised Guidance, 84 Fed.
Reg. at 52, 53 (listing "[ m Jental processes-concepts performed in the
human mind (including an observation, evaluation, judgment, opinion)" as
one of the "enumerated groupings of abstract ideas" (footnote omitted)).
The revised guidance explains that "mental processes" include acts that
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people can perform in their minds or using pen and paper, even if the claim
recites that a generic computer component performs the acts. See 2019
Revised Guidance, 84 Fed. Reg. at 52 n.14 ("If a claim, under its broadest
reasonable interpretation, covers performance in the mind but for the
recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.")
Eligibility Analysis-Revised Guidance Step 2A, Prong 2
Appellant's method claim 1 does not recite any actual physical
components or structure-additional elements-beyond the abstract affinity
computation process (the judicial exception) (supra). Moreover, all claims
on appeal are method claims. Appellants' claims are silent regarding any
mention of a computer or processor for carrying out the recited process,
except dependent claim 17 which recites "the process is executed by a server
external to the social networking system" ( emphasis added).
Further, the "social networking system," while implicating computers
generally, is not defined with any specificity either in the claims or the
Specification. For example, Appellant's Figure 2 illustrates a user device
(202) and an external server (204), but no computer components within the
social networking system (200). Appellant's Specification explains that the
limitations of claim 1 may be entirely software-"[t]he described operations
and their associated modules may be embodied in software." Spec. ,-J 43; see
Spec. ,-J 44; Appeal Br. 4-5 ( citing Spec. ,-J,-J 5, 18-20, 28, 30-36, 38-40).
See also claim 1 (Appeal Br. 17 (Claims App.)) and our claim construction
(supra).
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Accordingly, the entirety of claim 1 is part and parcel of the abstract
affinity computation process. Claim 1 does not recite any additional
elements that we might evaluate to determine whether such additional
elements integrate the affinity computation process (the judicial exception)
into a practical application of the exception (USPTO's Step 2A, Prong 2; see
2019 Revised Guidance).
Even so, Appellant contends that the process of claim 1 constitutes "a
specific process that constitutes a particular way of computing and
providing a measure of affinity to a process in a social networking
environment" similar to McRO. Appeal Br. 11; see Appeal Br. 10-12;
Reply Br. 2-5. We disagree-Appellant misconstrues the relevant
precedent. In McRO, the at-issue claims focused on methods of automatic
lip synchronization and facial expression animation. Although the
limitations were embodied in software executed by a generic computer, the
recited rules enabled automation of specific tasks (animation) that previously
could not be automated or accomplished using identical manual procedures.
The Federal Circuit relied on the specification's detailed explanation of the
rules in finding that the subject matter was patent eligible. It was McRO's
rules that (the Federal Circuit found) improved the computer-related
technology allowing the computer to perform a function not previously
performable by a computer. See McRO, 837 F.3d at 1313-16. Such is not
the case in the instant claim.
Similarly, in BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the Federal Circuit found a
specific technology-based solution that improved a technological process
was patent eligible. In BASCOM, the claims recited a "specific method of
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filtering Internet content" requiring "the installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user." BASCOM, 827 F.3d at 1345-46, 1350.
The Federal Circuit reasoned that the claims covered "a technology-based
solution ... to filter content on the Internet that overcomes existing
problems with other Internet filtering systems" and "improve[ d] an existing
technological process." Id. at 1351 ( citing Alice, 573 U.S. at 223). Such is
not the case in the instant claim. Here, as explained supra, no technological
solution is claimed or explained in detail in the Specification.
To the extent Appellant's contentions correspond to the reasoning in
MPEP §§ 2106.05(a)-(c), we note these sections of the MPEP explicitly
correspond to additional elements that integrate the judicial exception into a
practical application. Appellant's claim 1 does not recite any such
additional elements and, accordingly, does not apply or use the affinity
computation process (the judicial exception) in a manner that imposes a
meaningful limit on the judicial exception, such that it is more than a
drafting effort designed to monopolize the exception. See Alice, 573 U.S. at
221-24 (citing Mayo, 566 U.S. at 78-85).
As discussed supra, nothing in claim 1 precludes a human from
performing the affinity computation process. Even if we were to read in
some form of implicated computing device, which we do not, the mere
automation of a process that can be performed by a human is not sufficient
to show an improvement in computer functionality, and the fact that a
computer or processor may increase efficiency-be "more efficient and
reproducible" (Appeal Br. 18)-does not change the abstract-idea analysis.
See Intellectual Ventures, 792 F.3d at 1370 (holding that "merely adding
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computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea"); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
("[R ]elying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016).
Thus, we conclude the claims are directed to an abstract idea that is
not integrated into a practical application.
Step 2B Analysis-"Significantly More"
Having concluded Appellant's claims are directed to an abstract idea
under the 2019 Revised Guidance Step 2A analysis, we next address
whether the claims add significantly more to the alleged abstract idea. As
directed by our reviewing court, we search for an "'inventive concept'
sufficient to 'transform the nature of the claim into a patent-eligible
application."' McRO, 837 F.3d at 1312 (quoting Alice, 573 U.S. at217).
The implementation of the abstract idea involved must be "more than
performance of 'well-understood, routine, [ and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (alteration in original) (quoting Alice, 573 U.S. at 225). The "inventive
concept" "must be significantly more than the abstract idea itself, and cannot
simply be an instruction to implement or apply the abstract idea on a
computer." BASCOM, 827 F.3d at 1349 (citation omitted).
With respect to the § 101 rejection of claim 1, the Examiner maintains
that "the claim[] [does] not include additional elements that are sufficient to
amount to significantly more than the judicial exception." Final Act. 2-3.
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Appellant, on the other hand, contends "even if the independent claims are
taken to be directed to the abstract idea," "the claims are patent-eligible
because they recite limitations that are not a 'well understood, routine or
conventional activity"' and "the claims amount to 'significantly more' than
claiming merely an abstract idea per se." Appeal Br. 14; see Appeal Br. 13-
14.
As we explain supra, claim 1 does not include any additional
elements. Appellant fails to persuade us of error in the Examiner's rejection
with respect to the second Alice step. We agree with the Examiner that
Appellant's claim 1 (and the other pending claims) does not evince an
"inventive concept" that is significantly more than the abstract idea itself. In
particular, Appellant fails to explain what additional elements, beyond the
abstract affinity computation process, are recited in claim 1 or how the such
additional elements (Appellant's "limitations" (supra)) add specific
limitations beyond the judicial exception that are not well-understood,
routine, and conventional in the field.
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner's rejection under§ 101 of independent claim 1, independent
claims 15 and 22, and dependent claims 1-3, 7-9, 12, 14-16, 18, 21-23, and
25-27, which depend from claims 1, 15, and 22 (respectively) and which
were not separately argued with specificity.
Claim 17
Appellant separately argues dependent claim 1 7. See Appeal Br. 14-
16; Reply Br. 6-8. Specifically, Appellant contends "claim 17, forms a non-
conventional and non-generic arrangement of elements that provide a
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technical improvement over prior art ways of organizing contact
information" similar to the claims in BASCOM. Appeal Br. 15; see Appeal
Br. 14-16; Reply Br. 6-8. The Examiner responds that claim 17 simply
"states that process is executed by a server outside of the social networking
system which is not a technical improvement over prior art" because such
processes are known in the art and BASCOM is inapposite. Ans. 16; see
Ans. 16-18.
Claim 17 depends from independent claim 15 and recites "wherein the
process is executed by a server external to the social networking system."
Claim 17 (Appeal Br. 19 (Claim App.)). As with claim 1 (supra), claim 15
recites "sending a request ... from a process." Claim 15 (Appeal Br. 18-19
(Claims App.)).
Claim 15 recites an abstract process-the affinity computation
process-similar to claim 1 (supra), which is (for the purposes of this
analysis) commensurate in scope. Claim 17 recites the additional limitation
of "the process" being "executed by a server external to the social
networking system."
Having concluded Appellant's independent claims 1 and 15 (and the
other pending claims) are directed to an abstract idea under the 2019
Revised Guidance Step 2A analysis and based on Appellant's contention
(supra), we address whether claim 17 adds significantly more to the alleged
abstract idea. As directed by our reviewing court, we search for an
"'inventive concept' sufficient to 'transform the nature of the claim into a
patent-eligible application."' McRO, 837 F.3d at 1312 (quoting Alice, 573
U.S. at 217). The implementation of the abstract idea involved must be
"more than performance of 'well-understood, routine, [ and] conventional
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activities previously known to the industry."' Content Extraction, 776 F.3d
at 1347-48 (alteration in original) (quoting Alice, 573 U.S. at 225). The
"inventive concept" "must be significantly more than the abstract idea itself,
and cannot simply be an instruction to implement or apply the abstract idea
on a computer." BASCOM, 827 F.3d at 1349 (citation omitted).
Claim 17 recites a "server external to the social networking system"
that executes "the process," which in tum sends the request (in claim 15).
Unlike claims 1 and 15 (supra), claim 17 recites a "server," i.e., a computing
device. The recited "server" is an additional non-abstract element that
performs functionality-executing the process-in addition to the previously
identified abstract affinity computation process (the abstract idea).
Therefore, the server is an "additional element" under the second Alice step.
Appellant, however, fails to persuade us of error in the Examiner's
rejection with respect to claim 17 and the second Alice step. We agree with
the Examiner that Appellant's claim 17 does not evince an "inventive
concept" that is significantly more than the abstract idea itself. In particular,
Appellant does not explain how the additional element-the server-adds
specific limitations beyond the judicial exception that are not well-
understood, routine, and conventional in the field.
The server of claim 1 7 executes the process and is characterized as
being external to the social networking system. Claim 17 simply requires a
computing device performing a task-executing a process. Contrary to
Appellant's arguments (see Appeal Br. 14-16; Reply Br. 6-8) "the method
in claim 17" does not provide "benefits similar to the filtering tool in
BASCOM'' (Reply Br. 8). See also our discussion of BASCOM (supra).
Rather, a server executing a process is the epitome of a computer performing
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a routine and conventional task. The task of executing a process does not
evince an inventive concept that is significantly more than the abstract
affinity computation process itself simply because it is external to the social
networking system. Even if "there are ... advantages to executing the
requesting process on the external server rather than on the social
networking system" (Reply Br. 7) as Appellant contends, Appellant provides
no explanation of how or why the execution of a process by a server is not
well-understood, routine, and conventional. Appellant's Specification and
arguments attest to the routine nature of the server executing the process.
For Example, Appellant's Specification describes:
the processes requesting a measure of affinity ... may include
one or more external applications 206 running on an external
server 204. The external applications 206 may interact with the
social networking system 200 via API 212. The external
applications 206 can perform various operations supported by
the API 212, such as enabling users to send each other messages
through the social networking system 200 or showing
advertisements routed through the social networking system 200.
Spec. ,i 3 8. Similarly, Appellant provides a particular example where "the
requesting process is operated by a third party[,] e.g., a social game
application ... implemented on an external server that is controlled by the
same third party." Reply Br. 7. In each instance, the process itself is routine
and conventional. Such conventional computer processes operating on
conventional computer hardware "do not alone transform an otherwise
abstract idea into patent-eligible subject matter." FairWarning, 839 F.3d at
1096 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014)). Thus, we are not persuaded of Examiner error in the
rejection of claim 17 under 35 U.S.C. § 101.
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CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims
1-3, 7-9, 12, 14-18, 21-23, and 25-27 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1-3, 7-9, 12, 14-18,
21-23, and 25-27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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