Ex Parte Huang et al

Patent Trial and Appeal Board

Apr 26, 2017

13620022 (P.T.A.B. Apr. 26, 2017)

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.
13/620,022 09/14/2012 Anqi Andrew Huang 26295-21780 8819
87851 7590 04/28/2017
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center WHITAKER, ANDREW B
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
04/28/2017 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 ANQI ANDREW HUANG, JONATHAN WARMAN,
JOSH WISEMAN, and EUGENE LETUCHY
Appeal 2015-004603
Application 13/620,022
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134(a) of the Final
Rejection of claims 2—8, 10-16, 18—29, 31—36, and 38 which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-004603
Application 13/620,022
THE INVENTION
The Appellants’ claimed invention is directed to managing
notifications provided to a user of events occurring in a social networking
system that relate to the user. (Spec. para. 2). Claim 2, reproduced below
with bracketed numerals added, is illustrative of the subject matter on
appeal.
2. A computer-implemented method comprising:
[1] detecting an event associated with a user of a social
networking system, the event being of an event type from a
plurality of different event types;
[2] determining that a plurality of other events associated
with the user of the same event type as the event have occurred;
[3] aggregating the event with the plurality of other events of
the same event type;
[4] determining whether the aggregated events have reached
a threshold to trigger a notification, the threshold corresponding
to a notification rate comprising a continuous non-linear
function that progressively decreases as a function of an
increasing number of previously detected aggregated events of
the same event type; and
[5] providing a notification of the aggregated events at the
notification rate for the threshold to the user subject to the
determination of whether the threshold has been reached.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Smith-Mickelson et al. US 2006/0059568 A1 Mar. 16, 2006
(“Smith-Mickelson”)
Baio et al. US 2008/0162510 Al July 3, 2008
(“Baio”)
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Appeal 2015-004603
Application 13/620,022
Kramer et al. US 2008/0306826 A1 Dec. 11, 2008
(“Kramer”)
Spiegelman et al. US 7,937,380 B2 May 3, 2011
(“Spiegelman”)
The following rejections are before us for review:1
1. Claims 2—8, 10-16, 18—29, 31—36, and 38 are rejected under 35
U.S.C. § 101 as being directed to ineligible subject matter.
2. Claims 2—8, 10-16, 18—29, 31—36, and 382 are provisionally rejected
under the judicially created doctrine of obviousness-type double patenting as
unpatentable over claims 1—4, 6, 8—13, 15—18, 21—25, 27—31, 33, 35—36 and
40-42 in copending Application No. 12/649,705.
3. Claims 2—5, 9—15, 17—21, 25—36, and 38 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Baio, Spiegelman, and Smith-
Mickelson.
4. Claims 6—8, 16, and 22—24 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Baio, Spiegelman, Smith-Mickelson, and Kramer.
1 The rejection made under 35 U.S.C. § 112, second paragraph, has been
withdrawn and is not present in the Answer. See Ans. 26.
2 The heading of the rejection lists claims 2—38, but claims 9, 17, 30, and 37
are canceled. See Appeal Br. 17—23, Claims Appendix.
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Appeal 2015-004603
Application 13/620,022
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.3
ANALYSIS
35U.S.C.§ 101
The Examiner has rejected claims 2—8, 10-16, 18—29, 31—36, and 38
under 35U.S.C. § 101 (Ans. 25—26). In contrast, the Appellants have
argued that this rejection under 35U.S.C. § 101 is improper (Reply Br. 2—
10).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “laws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 2 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as “an ordered
3 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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Appeal 2015-004603
Application 13/620,022
combination” to determine whether the additional elements “transform the
nature of the claim” into a patent-eligible application of the abstract idea. Id.
This is a search for an “inventive concept” — an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id. at 2358.
Here, we find that the claim is directed to the concept of providing
notifications using a mathematical formula. In this case, the process of
providing notifications is directed to providing notifications associated with
events and is a method of organizing human activities and an abstract idea
beyond the scope of § 101.
The Appellants argue that claim 2 involves a mathematical formula,
but is not “directed to” a mathematical formula or abstract idea. We
disagree and find that the claim is directed to calculating a threshold for
triggering notifications. Cf. Parker v. Flook, 437 U.S. 584, 592—96 (1978)
(holding a claim directed to a method for updating the value of an alarm
limit in the catalytic chemical conversion of hydrocarbons invalid under
Section 101).
The Appellants have also argued that claim 2 is an improvement in the
technical field of computer technology and online communications. Reply
Br. 9-10. We disagree and find the claim is not rooted in technology but
rather directed to the abstract idea of providing notifications associated with
events.
We note the point about pre-emption. Reply Br. 5. While pre­
emption “might tend to impede innovation more than it would tend to
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Appeal 2015-004603
Application 13/620,022
promote it, ‘thereby thwarting the primary object of the patent laws’” {Alice,
134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012)), “the absence of complete preemption
does not demonstrate patent eligibility” (Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015)(“[T]hat the claims do not preempt
all price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”).
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. Considering each of the claim elements both individually and as an
ordered combination, the function performed by the computer at each step of
the process is purely conventional. Although the method is nominally
“computer-implemented,” each step of the claimed method does no more
than require a generic computer to perform generic computer functions.
For these reasons the rejection of claim 2 and its dependent claims is
sustained. Independent claims 11, 19, and 32 are directed to methods that
include similar steps and perform the same concept as claim 2. Accordingly,
the rejection of independent claims 11, 19, and 32, and their corresponding
dependent claims is sustained for the same reasons.
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Appeal 2015-004603
Application 13/620,022
Provisional Rejection under Nonstatutory Obviousness-Type Double
Patenting
The Appellants have provided no arguments in response to the
provisional nonstatutory obviousness-type double patenting rejection and
this provisional rejection is therefore summarily affirmed.
35 U.S.C. § 103(a)
The Appellants argue, inter alia, that the rejection of claim 2 is
improper because the Examiner has not shown that the prior art discloses “a
continuous non-linear function” as required by claim 2 in limitation [4]
(App. Br. 6—12; see also Reply Br. 10-14). According to the Appellants, the
portions of Smith-Mickelson cited by the Examiner refer to decaying the
weight of a detected event as a function of time (App. Br. 8).
In contrast, the Examiner has determined that the above limitation is
found in Smith-Mickelson at Figure 4 and at paragraphs 24 and 28—31 (Final
Act. 8—9; Ans. 8, 27). According to the Examiner, “[i]t is the decay of the
incrementing value as shown below which is the progressively decreasing
function as the number of increasing previously detected events occur” (Ans.
27).
We agree with the Appellants.
Here, the argued claim limitation requires “a notification rate
comprising a continuous non-linear function that progressively decreases as
a function of an increasing number of previously detected aggregated events
of the same event type.” The above citations to Smith-Mickelson fail to
disclose this. The metric “m” of Smith-Mickelson increases as a function of
the number of events, and decays as a function of time. When the metric
“m” is above a threshold “M,” messages are blocked. Although Smith-
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Application 13/620,022
Mickelson discloses a decay function that decreases the metric “m” as a
function of time in order to clear a block state, the cited portions do not
disclose a notification rate “that progressively decreases as a function of an
increasing number of previously detected aggregated events.”
For these reasons the rejection of claim 2 and its dependent claims is
not sustained. The remaining claims contain a similar limitation and the
rejection of these claims is not sustained for the same reasons given above.
CONCLUSIONS OF LAW
We conclude that the Appellants have not shown that the Examiner
erred in rejecting the claims under 35U.S.C. § 101.
We conclude that the provisional nonstatutory obviousness-type
double patenting rejection is summarily affirmed as no arguments have been
presented.
We conclude that the Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a) as listed in the rejections
section above.
DECISION
The Examiner’s rejection of claims 2—8, 10-16, 18—29, 31—36, and 38
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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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