Ex Parte Huang et al

Patent Trial and Appeal Board

Apr 26, 2017

12649705 (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.
12/649,705 12/30/2009 ANQI ANDREW HUANG 26295-15686 6028
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 2016-002517
Application 12/649,705
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 Non-
Final Rejection of claims 1—4, 8—13, 15—18, 21—25, 27—31, 33, 35—36, and
40-42 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 2016-002517
Application 12/649,705
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. 1). Claim 1, reproduced below
with bracketed numerals added, is illustrative of the subject matter on
appeal.
1. A computer-implemented method comprising:
[1] detecting an event associated with a user of a social
networking system, the event created by another user who is
connected to the user in the social networking system;
[2] referencing a number of previously detected events
associated with the user;
[3] referencing a notification scale that associates the number
of previously detected events for the user with a rate of sending
notifications of events to the user, wherein the notification scale
comprises a plurality of rates of sending notifications, each rate
of the plurality corresponding to a specified event count range
for triggering a notification according to the rate, and wherein
the rates progressively decrease as a function of an increasing
number of previously detected events;
[4] determining, using the referenced notification scale,
which of the plurality of rates of sending notifications to the
user to apply based on:
[5] determining a total count of events for the user, the
total count comprising the referenced number of
previously detected events for the user plus the detected
event, and
[6] determining which rate corresponds to the
specified event count range that the total count of events
falls within on the notification scale;
[7] determining whether the total count of events equals a
number sufficient to trigger a notification at the determined
rate; and
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Application 12/649,705
[8] providing the notification of the detected event subject to
the determination of whether a notification has been triggered.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Smith-Mickelson et al.
(“Smith-Mickelson”)
US 2006/0059568 Al Mar. 16, 2006
Fischer et al.
(“Fischer”)
US 2008/0133638 Al June 5, 2008
Baio et al.
(“Baio”)
US 2008/0162510 Al July 3, 2008
Dorrell US 2010/0257113 Al Oct. 7, 2010
Djabarov et al. US 8,316,382 B1 Nov. 20, 2012
(“Djabarov”)
The following rejections are before us for review:
1. Claims \-A, 8-13, 15-18, 21-25, 27-31, 33, 35, 36, and 40-A21 are
rejected under 35 U.S.C. § 101 as being directed to a judicial exception.
2. Claims \-A, 8-13, 15-18, 21-25, 27-31, 33, 35, 36, and 40-A2 are
provisionally rejected on the ground of nonstatutory double patenting as
being unpatentable over claims 2—38 of copending Application No.
13/620,022.
1 This rejection did not include claims 16 and 27 but this omission is
considered a typographical error as the subject matter of those claims is
similar to those that are listed in this rejection.
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Application 12/649,705
3. Claims 1^1, 8-13, 15, 17, 18, 21-25, 28-31, 33, 38-40, and 41 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Baio, Dorrell,
and Djabarov.
4. Claims 16 and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Baio, Dorrell, Djabarov, and Smith-Mickelson.
5. Claims 35, 36 and 42 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fischer, Dorrell, and Djabarov.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2
ANALYSIS
35 U.S.C. §101
The Examiner has rejected claims 1—4, 8—13, 15, 17, 18, 21—25, 28—
31, 33, 35, 36, and 40-42 under 35 U.S.C. § 101 (Ans. 25—26). In contrast,
the Appellants have argued that this rejection under 35 U.S.C. § 101 is
improper (Reply Br. 2—7).
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
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2016-002517
Application 12/649,705
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
BankInt7, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 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
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. 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 “the present claims recite specific and
concrete steps” (Reply Br. 5). The Appellants’ argument does not apprise us
of error in the rejection. “[I]f a claim is directed essentially to a method of
calculating, using a mathematical formula, even if the solution is for a
specific purpose, the claimed method is nonstatutory.” Parker v. Flook, 437
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Application 12/649,705
U.S. 584, 595 (1978). We find that the claim is directed essentially to
calculating a threshold for triggering notifications.
The Appellants have also argued that the claimed invention
overcomes a problem specifically arising in the realm of computer networks.
Reply Br. 5—7 (citing DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245
(Fed. Cir. 2014) and SiRF Tech. Inc. v. Int’l Trade Commission, 601 F.3d
1319 (Fed. Cir. 2010)). We disagree and find the claims are not rooted in
computer networking technology but rather directed to the abstract idea of
providing notifications associated with events.
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 1 and its dependent claims is
sustained. Independent claim 17 is directed to a system comprising a
processor configured to perform similar steps and performs the same
concept as claim 1. Independent claim 31 is directed to a computer-readable
storage medium storing executable computer program instructions
comprising instructions for performing similar steps and performs the same
concept as claim 1. Independent claim 35 is directed to a method that
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Application 12/649,705
includes similar steps and performs the same concept as claim 1.
Accordingly, the rejection of independent claims 17, 31, and 35, and their
corresponding dependent claims is sustained for the same reasons.
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)
Independent claims 1, 17, and 31
The Appellants argue, inter alia, that the rejection of claim 1 is
improper because the Examiner has not shown that the prior art discloses
“wherein the rates progressively decrease as a function of an increasing
number of previously detected events” as required by claim 1 (App. Br. lb-
24; see also Reply Br. 8—9). According to the Appellants, the portions of
Djabarov cited by the Examiner do not disclose the above limitation.
In contrast, the Examiner has determined that the above limitation is
found in Djabarov at column 3, line 11 through column 4, line 3 and column
4, lines 57—67 (Non-Final Act. 10; Ans. 10, 14—15, 29). According to the
Examiner, “Djabarov discusses how notifications can be sent at 3 events and
again at 30 events in that way a user can experience notifications that are
regulated at different levels” (Ans. 29).
We agree with the Appellants.
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Application 12/649,705
Here, the argued claim limitation requires the notification rate
“progressively decrease as a function of an increasing number of previously
detected events.” The above citations to Djabarov fail to disclose “wherein
the rates progressively decrease as a function of an increasing number of
previously detected events”.
For these reasons the rejection of claim 1 and its dependent claims is
not sustained. Claims 17 and 31 contain a similar limitation and the
Examiner’s findings are the same (see Ans. 14—15). Accordingly, the
rejection of claims 17 and 31 and their dependent claims is not sustained for
the same reasons given above.
Independent claim 35
Claim 35 also contains the limitation “wherein the rates progressively
decrease as a function of an increasing number of previously detected
events” discussed above. The Examiner finds this limitation in Djabarov, as
discussed above, and also in Dorrell at paragraphs 19-20 (Ans. 23).
According to the Examiner, “[t]he Examiner interprets the example taught
by Dorrell to teach decreasing notifications when detected events are
increasing” (Id.)
Appellants dispute these findings (App. Br. 16—24; see also Reply Br.
8—9). According to the Appellants, the portions of Dorrell cited by the
Examiner do not disclose the above limitation.
We agree with the Appellants.
Here, Dorrell at the above citations fails to disclose “wherein the rates
progressively decrease as a function of an increasing number of previously
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Application 12/649,705
detected events.” For these reasons the rejection of claim 35 and its
dependent claims is not sustained.
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 1—4, 8—13, 15—18, 21—25, 27—31,
33, 35, 36, and 40-42 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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