Ex Parte Juan et al

Patent Trial and Appeal Board

Dec 21, 2016

13179547 (P.T.A.B. Dec. 21, 2016)

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.
13/179,547 07/10/2011 Yun-Fang Juan 26295-17340 1748
87851 7590 12/23/2016
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center WOO, ANDREW M
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
12/23/2016 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 YUN-FANG JUAN and MING HUA
Appeal 2016-002147
Application 13/179,5471
Technology Center 2400
Before ERIC S. FRAHM, CATHERINE SHIANG, and
CARL L. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—21, which are the only claims pending. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
STATEMENT OF THE CASE
The invention relates to social networking, particularly creating
clusters based on relationships. Abstract. Claim 1, reproduced below, is
exemplary of the subject matter on appeal (disputed limitations emphasized):
1 The real party in interest is identified as Facebook, Inc. App. Br. 2.
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Application 13/179,547
1. A method comprising:
identifying a plurality of connections of a user, each
connection comprising another user of a social networking
system with whom the user has established a relationship in the
social networking system;
determining a measure of affinity for each pair of
connections within the identified plurality of connections, each
measure of affinity determined based at least in part on a number
of friends in common between the pair of connections;
grouping at least a subset of the connections into one or
more clusters, wherein the connections are assigned to a cluster
based on the determined measures of affinity, and
outputting a result of the grouping comprising an
identification of the clusters and which of the user's connections
have been assigned to the clusters.
App. Br. 25 (Claims Appendix).
THE REJECTIONS
Claims 1—8 and 16—20 stand rejected under 35 U.S.C. § 101 as not
falling within one of the four statutory categories of invention. Final Act. 3.
Claims 1—21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Work et al. (US 2006/0042483 Al; March 2, 2006),
(“Work”) in view of Sundaresan (US 2007/0288602 Al; December 13,
2007) and Bosworth et al. (US 2008/0040475 Al; February 14, 2008)
(“Bosworth”). Final Act. 5—26.
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ANALYSIS
The §101 rejection
Appellants argue the Examiner errs because:
The Examiner's Answer [and Final Action] fails to apply
the two-step analysis as set forth in Mayo Collaborative Services
v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), and
further elaborated on in Alice Corp. v. CLS Bank International,
134 S.Ct. 2347 (2014) (hereinafter “thq Alice test”). To date, the
USPTO has also issued various guidelines for evaluating
applications for patent subject matter eligibility based on the
Alice test. See, e.g., 2014 Interim Eligibility Guidance, at
http://www.uspto.gov/patents/law/exam/2014 eligibility_
qrs.pdf; July 2015 Update: Subject Matter Eligibility, at
http://www. uspto. gov / sites/ default/files/ documents/ieg-july-
2015-update, pdf. Rather than follow these, the Examiner's
Answer maintains the § 101 rejection on a conclusory statement
that the claimed process could be carried out by a human. Since
this is a proper legal basis for showing that the claims are directed
to a judicial exception to § 101, the rejection cannot be
maintained.
Reply Br. 10.
Appellants argue the Examiner “provides no factual or evidentiary
support that the claims are directed to an abstract idea” and, instead, the
rejected claims are “necessarily rooted in computer technology” and solves a
problem “that only exists in the realm of computer networks.” App. Br. 8
(citing Spec. ^fl[ 3, 20; DDR Holdings, LLC v. Hotels.com, L.P., Case No.
2013-1505 (Fed. Cir. Dec. 5, 2014).).
Appellants further argue, assuming arguendo, the claims are directed
to an abstract idea, the claims present “significantly more” than this. Id. at
9. In particular, according to Appellants, the claimed invention “does not
pre-empt the use of generic steps such as ‘identifying, determining, grouping
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and outputting’ in all fields” and “[t]hus the pending claims are directed
toward ‘inventive concepts’ that are ‘significantly more’ than the judicial
exception under Alice.” Id. 70-11.
The Examiner finds:
The method including steps of identifying, determining,
grouping and outputting are broad enough that the claim steps
could be completely performed mentally, verbally or without a
machine nor is any transformation apparent. For example, the
method limitations that contain the identifying, determining,
grouping and outputting can be performed by a human.
Final Act. 3.
The Examiner additionally finds:
the limitations, identifying ... , determining ..., grouping ..., and
outputting ... can be done mentality, physically, or of human
ingenuity. Collectively, the limitations result in a mental,
physical, or human interaction, wherein the connections are
identified, organized in a group or cluster based on a criteria, and
the result will be given in a mental, physical, or human form. For
example, First, a human can identify a group of users and would
like to establish a connection with them (no transformation is
occurring here). Next, a human can determine the number of
other users that are in common or number of users that have
similar interests (no transformation is occurring here). Then, the
human can group a number of users into a group or type of
category to be organized based on the human's choice (no
transformation is occurring here). Fastly, the human can display
or write down the group of users who have similar interests, any
one with the most interaction (no transformation is occurring
here). Examiner reminds the Applicant that these limitations can
be done mentally, verbally, or written on a piece of paper
conducting these steps.
Ans. 3^4.
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We agree with Appellants that Alice sets forth a two-step test; and we
note the Examiner’s findings do not cite Alice nor directly address
Appellants’ arguments regarding Alice. Alice Corp. Pty. Ltd. v. CLSBank
Inti, 134 S.Ct. 2347 (2014). Therefore, we do not sustain the rejection of
claims 1—8 and 16—20.
NEW GROUND OF REJECTION
The following new ground of rejection is entered pursuant to
37 C.F.R. § 41.50(b). Claims 1—8, 152, and 16—20 are rejected under 35
U.S.C. § 101 as directed to non-statutory subject matter.
Alice identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§ 101. According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S.Ct. at 2355.
Regarding step 1, we are not persuaded by Appellants’ arguments and
agree, instead, with the Examiner’s findings that claim 1 can be performed
by a human and the claim recites an abstract idea. Appellants present no
persuasive argument that a computer is required nor that the Examiner’s
findings and claim interpretation are unreasonable or overbroad. We note
also the claim recites only a plurality of connections and a pair of
connections and, based on the record before us, a computer is not required to
perform the method of claim 1. Claim terms in a patent application are
given the broadest reasonable interpretation consistent with the
2 Claim 15 was not previously rejected under 35 U.S.C. § 101.
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Specification, as understood by one of ordinary skill in the art. In re Crish,
393 F.3d 1253, 1256 (Fed. Cir. 2004). However, our reviewing court
cautions that great care should be taken to avoid reading limitations of the
Specification into the claims. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d
1364, 1369 (Fed. Cir. 2003).
Step two is “a search for an [‘Jinventive 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.’” Alice, 134 S.Ct. at 2355.
Regarding step 2, while the Examiner provides no express finding, the
record before us provides no persuasive evidence that the claim is
significantly more than the ineligible concept (the abstract idea). As
discussed supra regarding step one, the claims do not require a large number
of connections and pairs and it is not seen why a computer is required.
Moreover, even if the claims require a computer, there is no evidence such a
computer would perform anything more than conventional computer
processing.
In addition, even if Appellants’ arguments regarding no preemption
are valid, such arguments are not persuasive as they do not support the
argument that the claim presents an inventive concept that is significantly
more than the ineligible concept. At best, this argument supports the
argument of no preemption.
In view of the above, we determine claim 1, independent claim 16
which recites the same limitations and is argued together with claim 1, and
dependent claims 2—8 and 16—20, which are not argued separately, are
directed to non-statutory subject matter.
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Independent method claim 15 recites substantially the same
limitations as claim 1 but recites the phrase is computed:
a step for determining a measure of affinity for each pair
of connections within the identified plurality of connections,
wherein a measure of affinity for the pair of connections is
computed based on a number of friends in common between the
pair of connections;
App. Br. 28—29 (Claims Appendix) (emphasis added).
For the same reasons discussed supra, claim 15 is directed to an
abstract idea and is non statutory subject matter. As broadly but reasonably
interpreted, the phrase is computed would be understood by one of ordinary
skill in the art to include computed by a human being. In re Crish, 393 F.3d
1253, 1256. Moreover, even if the phrase is interpreted to require a
computer, there is no evidence such a computer would perform anything
more than conventional computer processing, supra.
Therefore, we enter a new ground of rejection of claims 1—8, 15, and
16-20 under 35 U.S.C. § 101.
The § 103(a) rejections
Appellants argue, inter alia, that Bosworth does not teach the claim 1
limitation:
determining a measure of affinity for each pair of connections
within the identified plurality of connections, each measure of
affinity determined based at least in part on a number of friends
in common between the pair of connections
App. Br. 12— 16; Reply Br. 10—11 (emphasis added).
According to Appellants, Bosworth teaches affinity based on activities
and relationships but does not teach affinity employing “a number of friends
in common between any two users.” Id. at 14. In particular, Appellants
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argue the Examiner errs in finding that Bosworth, paragraph 37, teaches “the
affinity is measured by the past and present activities and the relationship(s)
associated with the past and present activities, which can determine the
number of common friends within the activity), which will determine the
strength of the affinity.” Reply Br. 5 (citing Ans. 6). Appellants argue:
Bosworth contains no explicit disclosure or any sort of
implication of a number of common friends being computed
between any two users, much less between two users who
themselves share a common friend, nor does Bosworth suggest
that a number of common friends can be used as a factor that
influences an affinity calculation between any two users.
Id.
We are persuaded by Appellants’ arguments as, in the record before
us, the Examiner presents insufficient factual findings regarding this
limitation as required for obviousness. As stated by the Supreme Court, the
Examiner’s obviousness rejection must be based on
some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness ....
KSRInt’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
In view of the above, we do not sustain the rejection of claim 1, and
independent claims 9, 15, and 16, which recite the same limitation and are
argued together with claim 1. We also do not sustain the rejection of
dependent claims 2—8, 11—14, and 17—21. Cf. In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (“[Dependent claims are nonobvious if the
independent claims from which they depend are nonobvious . . . .”).
Because our decision with regard to the disputed limitation is dispositive of
the rejection of these claims, we do not address additional arguments raised
by Appellants.
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DECISION
We reverse the Examiner’s decision rejecting claims 1—21 under 35
U.S.C. § 103(a).
We reverse the Examiner’s decision rejecting claims 1—8 and 16—20
under 35 U.S.C. § 101 and the following new ground of rejection is entered
pursuant to 37 C.F.R. § 41.50(b). Claims 1—8, 15, and 16—20 are rejected
under 35 U.S.C. § 101 as directed to non-statutory subject matter.
Our decision is not a final agency action.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the Examiner, in which event the
prosecution will be remanded to the Examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the Examiner,
overcomes the new ground of rejection designated in the decision. Should
the Examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
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(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request for
rehearing must address any new ground of rejection and state with
particularity the points believed to have been misapprehended or overlooked
in entering the new ground of rejection and also state all other grounds upon
which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
REVERSED
37 C.F.R, $ 41.50(b)
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