Ex Parte Huang et alDownload PDFPatent Trial and Appeal BoardApr 26, 201712649705 (P.T.A.B. Apr. 26, 2017) Copy Citation 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 2 Appeal 2016-002517 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. 3 Appeal 2016-002517 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). 4 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 5 Appeal 2016-002517 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 6 Appeal 2016-002517 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. 7 Appeal 2016-002517 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 8 Appeal 2016-002517 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 9 Copy with citationCopy as parenthetical citation