Ex Parte Juan et al

Patent Trial and Appeal Board

Nov 2, 2018

11893797 (P.T.A.B. Nov. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/893,797 08/16/2007
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
11/06/2018
FIRST NAMED INVENTOR
Yun-Fang Juan
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.
26295-14147 7044
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/06/2018 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 KANG-XING JIN
Appeal2017-000417
Application 11/893, 797
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-29 under 35 U.S.C. § 101 as directed to
non-statutory subject matter. 3 We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Throughout this Decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed June 2, 2016), Reply Brief ("Reply Br.," filed Sept. 29,
2016), and Specification ("Spec.," filed Aug. 16, 2007, amended Nov. 9,
2010), and to the Examiner's Answer ("Ans.," mailed July 29, 2016) and
Final Office Action ("Final Act.," mailed Dec. 4, 2015).
2 According to the Appellants, the real party in interest is Facebook Inc.
Appeal Br. 2.
3 The Appellants requested an oral hearing, but waived appearance at the
hearing that was scheduled for October 23, 2018. See Waiver (filed
Aug. 27, 2018).
Appeal2017-000417
Application 11/893,797
STATEMENT OF THE CASE
The Appellants' "invention relates generally to social networks, and
more particularly to invitations in a social network." Spec. ,r 2.
Claims 1 and 25 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below (with
added lettered bracketing for reference):
1. A method comprising:
[(a)] selecting, by a computer processor, a plurality of pilot
users from a set of users of a social networking system, each of
the users having associated profile information;
[ (b)] selecting, by the computer processor, a reduced set of
keywords from the profile information for the pilot users;
[(c)] sending, by the computer processor, an invitation to
the pilot users;
[( d)] receiving, by the computer processor, responses to
the invitation from the pilot users;
[ ( e)] classifying, by the computer processor, the received
responses as either positive or negative;
[ ( f)] creating, by the computer processor, training data that
is representable as a training set of vector pairs, each vector pair
representing a pilot user and including data representing the
classified response received from the pilot user and a set of
training keywords selected from the reduced set of keywords;
and
[ (g)] for each of one or more of the users of the social
networking system, determining, by the computer processor, a
likelihood that the user will respond to the invitation by
comparing one or more of the training keywords of the training
data with one or more keywords from the user's profile
information.
Appeal Br. 17 (Claims App.).
2
Appeal2017-000417
Application 11/893,797
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, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 588-89 (2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (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, 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. (emphasis
added) ( citing Mayo, 566 U.S. at 79). If so, the second step is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether the additional elements "'transform the nature of the
claim' into a patent-eligible application." Id. ( quoting Mayo, 566 U.S.
at 78-79).
Prima Facie Case
The Appellants first contend that the Examiner's rejection is in error
because "the § 101 rejection is defective for failing to state a prima facie
case and compare the claims to a judicially-recognized ineligible concept."
Appeal Br. 10; see also id. at 6-9; Reply Br. 2-3. We disagree.
3
Appeal2017-000417
Application 11/893,797
The Federal Circuit has repeatedly observed that "the prima facie case
is merely a procedural device that enables an appropriate shift of the burden
of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007)
(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has,
thus, held that the USPTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for the rejection, "together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." See In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original). Thus, all that
is required of the Office is that it sets forth the statutory basis of the rejection
in a sufficiently articulate and informative manner as to meet the notice
requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990) ("Section 132 is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.").
In rejecting the pending claims under § 101, the Examiner analyzed
the claims using the Mayo/Alice two-step framework, in accordance with the
guidance set forth by the USPTO at the time of the Final Action and
Answer. See Final Act. 2-7; Ans. 3-5. Specifically, the Examiner notified
the Appellants that"[ c ]laims 1-29 have been found to be directed towards
abstract ideas, specifically selecting users of a social networking system who
are likely to respond to an invitation" (Final Act. 2; Ans. 5) by the steps
"'selecting', 'sending', 'classifying', 'creating', 'maintaining', 'training',
and 'applying"' data (Final Act. 2; Ans. 6), "which are directed towards: ...
a method of organizing human activities" (Final Act. 5; Ans. 4). The
4
Appeal2017-000417
Application 11/893,797
Examiner further notified the Appellants that, considering the "elements" of
the claim "individually and 'as an ordered' combination, ... [and] as a
whole, no elements or combination of elements in the claims are sufficient to
ensure that the claims amount to significantly more than the abstract idea
itself." Final Act. 6 (citation omitted). The Examiner, thus, notified the
Appellants of the reasons for the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132.
We disagree with the Appellants' contention that "the Examiner failed
to identify a judicial exception and instead relied on a vague general group
[of concepts] cited in Office Guidance." Appeal Br. 7. As discussed above,
the Examiner identified that the claims are directed to an abstract idea that is
a method of organizing human activity. Final Act. 5. We are not persuaded
by the Appellants' argument that "the Examiner's use of a general category
of concepts, rather than individual comparison to prior judicial caselaw [sic],
contravenes Office instructions in the May 2016 Update and is improper as a
matter of law." Appeal Br. 7 (citing July 2015 Update on Subject Matter
Eligibility, 80 Fed. Reg. 45429 (July 30, 2015) ("2015 July Update"), May
2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27381 (May 6, 2016)
("2016 May Update"), provided after the mailing of the Final Action), and
May 19, 2016 Memorandum entitled "Recent Subject Matter Eligibility
Decisions (Enfzsh, LLC v. Microsoft Corp. and TL! Communications LLC v.
A. V. Automotive, LLC)" ("Memo")). There is no such requirement that the
Examiner must compare the claim to specific judicial decisions.
Consideration of evidence in making a determination under the first step of
the Alice framework has merit. See Apple, Inc. v. Ameranth, Inc., 842 F .3d
1229 (Fed. Cir. 2016). But there is no requirement that examiners must
5
Appeal2017-000417
Application 11/893,797
provide evidentiary support in every case before a conclusion can be made
that a claim is directed to an abstract idea. Evidence may be helpful in
certain situations where, for instance, facts are in dispute. But it is not
always necessary, and, as the Appellants note, the Examiner does compare
the claims to at least one judicial decision. See Appeal Br. 8; Final Act. 3.
Further, contrary to the Appellants' assertion (Appeal Br. 9), there is
no specific requirement that each claim be examined individually by the
Examiner in determining that the claims are directed to an abstract idea. See
Alice, 134 S. Ct. at 2355-57 (addressing the claims together). The Examiner
includes the dependent claims in the heading of the rejection (Final Act. 5)
and the analysis (id. at 4--6; Ans. 6). There is no indication that the
Appellants were not put on notice of the Examiner's rejection regarding the
dependent claims.
To the extent the Appellants argue that the Examiner's rejection is in
error because the Examiner fails to follow Office Guidelines, the Office
Guidelines are "not intended to create any right or benefit, substantive or
procedural, enforceable by any party against the Office." 2014 Interim
Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74619, 74622,
(Dec. 16, 2014) ("2014 Interim Guidelines"). The Appellants' argument that
the Examiner failed to follow Office guidelines is not directed to an
appealable issue. "Failure of Office personnel to follow this Interim
Eligibility Guidance is not, in itself, a proper basis for either an appeal or a
petition." Id. The Appellants' recourse for addressing such an alleged
impropriety in the examination procedure would be to either (1) request the
Examiner's SPE to exercise supervisory oversight or (2) file a petition to the
Director to invoke supervisory authority under 3 7 C.F .R. § 1.181 ( a )(3 ).
6
Appeal2017-000417
Application 11/893,797
For these reasons, we are not persuaded the Examiner failed to make a
prima facie case of patent ineligibility under 35 U.S.C. § 101.
The First Step
Turning to the first step of the Mayo/Alice framework, "the 'directed
to' inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether 'their character as a whole is directed to
excluded subject matter."' Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016). With respect to computer-enabled claimed subject
matter, it can be helpful to determine whether "the claims at issue ... can
readily be understood as simply adding conventional computer components
to well-known business practices" or not. Id. at 1338; see also Affinity Labs
of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). In
Enfish, for example, the court noted that "[ s ]oftware can make non-abstract
improvements to computer technology just as hardware improvements can."
Enfzsh, 822 F.3d at 1335. The court put the question as being "whether the
focus of the claims is on [a] 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." Id. at 1335-36. In
Enfzsh, the court found that the "plain focus of the claims" there was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id. at 1336.
Here, the Examiner looks to the language of the claims and
determines that the claims are directed to "selecting users of a social
networking system who are likely to respond to an invitation." Final Act. 2;
see also id. at 5; Ans. 5. The Appellants do not precisely state to what they
7
Appeal2017-000417
Application 11/893,797
consider the claims are directed; rather, they argue that the claims are not
directed to an abstract idea because they are directed to an improvement in
computer functionality. Appeal Br. 11.
The Specification provides evidence as to what the claimed invention
is directed. Here, the Specification is titled "Invitation Targeting in a Social
Networking System," and the Field of the Invention section provides that the
invention relates "particularly to invitations in a social network." Spec. ,r 2.
The Description of Related Art section of the Specification defines
invitations as including advertisements, requests, surveys, "and so forth."
Id. ,r 3; Appeal Br. 2. The Specification discusses that the problem with
prior approaches regarding personalized or targeted invitations to a
particular user, including tracking buying patterns and presenting invitations
based on group membership, is that "none of these approaches automatically
select[ s] users of a social network environment who have an increased
probability of responding positively to an invitation." Id. ,r,r 5, 6. The
invention solves that problem by "provid[ing] a method for selecting users in
a web-based social network who are likely to respond to an invitation," by
sending invitations to a pilot group of users, recording positive and negative
responses, correlating a set of pilot group profiles with reduced keywords
with the responses, using the correlations to determine a probability function
indicating the likelihood of responses based on profiles, and selecting target
users to receive the invitation based on that likelihood. Id. ,r 14.
Claim 1 provides for a method comprising the steps, performed by a
computer processor, of (a) selecting a plurality of pilot users, (b) selecting a
reduced set of keywords, ( c) receiving responses to invitations,
( d) classifying the responses, ( e) creating training data representable as a set
8
Appeal2017-000417
Application 11/893,797
of vector pairs, and ( f) determining a likelihood the user will respond by
comparing the training keywords with profile keywords. See Appeal Br. 17
(Claims App.). The Specification does not contain the term "processor," but
provides for invitation engine 140, comprising a database and modules, i.e.,
a generic computer, to perform the steps. See, e.g., Spec. ,r 20, Figs. 1, 2.
There is no further specification of particular technology for performing the
steps. See Affinity Labs, 838 F.3d at 1263. Dependent claims 2-24 add
limitations of ranking users and sending invitations, and further narrow the
steps of selecting, determining, classifying, creating, and sending. See
Appeal Br. 17-21 (Claims App.). Claim 25 recites a method comprising
maintaining information, selecting pilot users, sending an invitation,
receiving responses, training a model predicting whether a user will respond,
and applying the profile to the model to predict whether a user will respond.
See id. at 21. Dependent claims 26-29 further narrow the type of invitation
data and profile information. See id. at 21-22.
The claims do not recite details on how, i.e., by what algorithm or
method, the training data are created, step ( e) of claim 1, or how the model is
trained, as recited in claim 25. The Appellants direct attention to the
Specification at paragraphs 33 through 40 as support for this limitation.
Appeal Br. 3--4. These paragraphs provide for training set module 240 to
classify responses, correlate the classified responses with keywords, and
"create a training set of data pairs from the correlations." Spec. ,r 33. "The
data pairs may be represented as vector pairs," with each pair including a
response vector, representing a classified response by a pilot user and may
include a binary value, and a keyword vector, representing keywords in the
pilot user's profile and may include a numerical, binary, or categorical
9
Appeal2017-000417
Application 11/893,797
value. Id. ,r 35. Probability function module 250 can generate a probability
function based on the training set "using a supervised learning procedure, or
a machine learning technique such as a support vector machine (SVM), a
neural network, or a boosted tree procedure." Id. ,r 39. Probability function
module 250 can also select users based on rank or the calculated likelihood.
See id. ,r 40. As such, the creating of training data comprises creating data
by assigning values, and the training of the model is by known processes.
In light of Specification's description of the problem and solution, the
purported advance over the prior art by the claimed invention is a way to
present targeted invitations/advertising to users selected based on an analysis
of specific types of data, i.e., a likelihood of responding based on comparing
responses with keywords. This is the heart of the invention and the
"character as a whole" of the claims. See Enfish, 822 F.3d at 1335. In that
context, the Examiner's determination that the claims are directed to
"selecting users of a social networking system who are likely to respond to
an invitation" (Final Act. 2) is supported. The claims are akin to ones our
reviewing court deemed abstract in SAP America, Inc. v. Investpic, LLC, 898
F.3d 1161, 1167 (Fed. Cir. 2018) (claims were directed to performing certain
statistical analysis comprising "selecting certain information, analyzing it
using mathematical techniques, and reporting or displaying the results of the
analysis"), Electric Power Group. LLC v. Alstom S.A., 830 F.3d 1350, 1353-
54 (Fed. Cir. 2016) (claims were directed to a process of gathering and
analyzing information of a specified content and displaying the result),
Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758
F.3d 1344, 1350-51 (Fed. Cir. 2014) (claims of the challenged patent were
directed to the abstract idea of organizing information through mathematical
10
Appeal2017-000417
Application 11/893,797
correlations), Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1369--70 (Fed. Cir. 2015) (customizing and tailoring web page
content based on navigation history and known user information), and
Affinity Labs, 838 F.3d at 1271 (customizing a user interface to have
targeted advertising based on user information). Here, the claims involve
nothing more than selecting, receiving, classifying, and creating data/a
mathematical model, and comparing that data to determine a likelihood,
without any particular inventive technology- an abstract idea. See Elec.
Power Grp., 830 F.3d at 1354. As such, we find unpersuasive the
Appellants' arguments that the claims are not directed to an abstract idea
because they are not directed to "'an idea of itself" or "to human activity."
Reply Br. 4--5.
We also find unpersuasive the Appellants' argument that the claims
are not directed to an abstract idea because they resemble the claims held
patent eligible in Enfzsh and McRO, Inc. v. Bandai Games America, Inc.,
837 F.3d 1299 (Fed. Cir, 2016), in that "the claims herein are directed to an
improvement in computer functionality [ and] their purpose and effect are to
improve the computer's predictive performance." Appeal Br. 10-11; see
also Reply Br. 7. The claims at issue in Enfzsh were directed to a specific
type of data structure, i.e., a self-referential table for a computer database,
designed to improve the way a computer carries out its basic functions of
storing and retrieving data. Enfzsh, 822 F.3d. at 1335-36. There, in
rejecting a § 101 challenge, the court held that "the plain focus of the claims
is on an improvement to computer functionality itself, not on economic or
other tasks for which a computer is used in its ordinary capacity." Id.
at 1336. In McRO, the claims were directed to a specific improvement in
11
Appeal2017-000417
Application 11/893,797
computer animation and used rules to automate a subjective task of humans
to create a sequence of synchronized, animates characters. See McRO,
837F.3dat 1314--15).
The Appellants have not adequately explained how the court's
holdings in Enfzsh and McRO impact the present analysis under the
Mayo/Alice framework. For example, the Appellants do not point to
anything in the claims that resembles the inventive self-referential data
structure at issue in Enfzsh, or the improvement to the technical field of
computer animation that was not simply the use of a generic computer in
McRO. The Appellants also do not direct our attention to anything in the
Specification to indicate that the invention provides an improvement in the
computer's technical functionality. As discussed above, the Specification
provides that the steps are performed by a generic computer operating in its
ordinary capacity. See Spec. ,r 20. The claim improves the tasks of creating
data and determining a likelihood by comparing data, using a generic
computer operating in a conventional manner. Although the likelihood may
be determined using a probability function determined by a known
"supervised learning procedure, or a machine learning technique such as a
support vector machine (SVM), a neural network, or a boosted tree
procedure" (Spec. ,r 39; Appeal Br. 18-19, (Claims App. (claims 10, 11)),
we do not see, and the Appellants do not direct attention to, where or how
the Specification discusses that the claimed invention improves such
procedures. The benefits are not technical or technological improvements,
but rather, are business benefits in selecting people more likely to respond to
an invitation and/or targeted advertising using a conventional computer
operating in its ordinary capacity. See Spec. ,r,r 6, 7.
12
Appeal2017-000417
Application 11/893,797
Thus, we are not persuaded of error in the Examiner's determination
that claims 1-29 are directed to an abstract idea.
The Second Step
The second step is a "search for an 'inventive 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 (alteration in original)
(quoting Mayo, 566 U.S. at 72-73). In this regard, we agree with and find
supported the Examiner's determination that the claims' limitations, taken
individually or as an ordered combination, do not recite an inventive
concept. See Final Act. 6-7; Ans. 6-7. We are unpersuaded by the
Appellants' arguments that the claims' limitations recite significantly more
than the abstract idea. See Appeal Br. 11-14; Reply Br. 7-10.
The Appellants recite the limitations of claim 1 and argue that, as an
ordered combination,
claim 1 does not claim the bare idea of selecting users who are
likely to respond to an invitation, and does not recite merely
applying a computer to perform steps of making such a selection.
Instead, the prediction of a user's response is based on the
reduced set of keywords from the profile information of the pilot
users, and training data is generated as vector pairs to generate
the likelihood. Together with the additional elements of the
claim, these steps provide significantly more than the bare
proposed abstract idea. In particular, these additional elements
in combination perform functions that are not generic, and
provide an inventive application of the proposed abstract idea.
In this case, the solution is necessarily rooted, among other
things, in the computer's application of a reduced set of
keywords using training data.
13
Appeal2017-000417
Application 11/893,797
Appeal Br. 12-13; Reply Br. 9. The Appellants also recite some of the
limitations of the dependent claims and argue that they "include further
elements that confirm they encompass more than just determining the
likelihood that users of a social networking system will respond to an
invitation," without further explanation. See Appeal Br. 14. For
independent claim 25, the Appellants rely on the arguments presented for
claim 1, and argue that "training the model provides an application of the
proposed abstract idea that is more than merely reciting an application of the
abstract idea itself in a conventional way," without further explanation. See
id. at 15. And, the Appellants argue that dependent "claims 26-29 are also
eligible at least by virtue of their dependency from claim 25." Id. We are
not persuaded of error by these arguments.
As discussed above, a generic computer is used to perform the
functions of selecting, creating, and determining. Although there are
particular data created and used to determine the likelihood, and the solution
uses a computer, the claim is not providing a solution "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1257 (Fed. Cir. 2014)
Here, as discussed above, the problem the invention addresses is to be
able to "automatically select users of a social network environment who
have an increased probability of responding positively to an invitation."
Spec. ,r 6. Being able to better select users more likely to respond positively
to invitations/advertisements does not arise from computer networks, but
existed prior to the Internet. See Intellectual Ventures, 792 F.3d at 1370-71.
Further, the purported technical solution comprises the use of a generic
14
Appeal2017-000417
Application 11/893,797
processer operating in its routine and conventional way to select, create, and
determine data. See Spec. ,r 33. There is no further technology for
performing the recited steps. See Affinity Labs, 838 F.3d at 1263; see also
Enfish, 822 F.3d at 1336. "[A ]n invocation of already-available computers
that are not themselves plausibly asserted to be an advance, for use in
carrying out improved mathematical calculations, amounts to a recitation of
what is 'well-understood, routine, [and] conventional."' SAP Am., 898 F.3d
at 1170 (quoting Mayo, 566 U.S. at 73). And, the invocation of the Internet
in narrowing the field of the invention to social networking is not sufficient
to transform the abstract idea into a patent-eligible invention. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014). The
claims recite an invention that is merely the routine or conventional use of a
processor to perform an abstract business/economic practice. DDR
Holdings, 773 F.3d at 1258-59. The Appellants provide no further
argument such as why the claims' particular arrangement and/or integration
of elements is a technical improvement or is a "non-conventional and non-
generic arrangement of known, conventional pieces." See BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016); cf Reply Br. 9-10.
We disagree with the Appellants' contention that the claims recite
significantly more than an abstract idea because the elements of sending
invitations to a pilot user, selecting a reduced set of keywords, and creating
training data as vector pairs to determine a likelihood the user will respond
to the invitation, combined with selecting a user who is likely to respond,
"constitute more than routine or conventional applications in the field of
social networking systems," similar to Example 3 of the Abstract Idea
15
Appeal2017-000417
Application 11/893,797
Examples, issued January 27, 2015 ("Examples")4. Appeal Br. 12-13.
Hypothetical Example 3 is modeled after the technology in Research Corp.
Tech., Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and is not an
actual claim at issue in the case. The Federal Circuit determined, in
Research Corp., that the claims were patent eligible because the claimed
invention presented "functional and palpable applications in the field of
computer technology" and addressed "a need in the art for a method of and
apparatus for the halftone rendering of gray scale images in which a digital
data processor is utilized in a simple and precise manner to accomplish the
halftone rendering." Id. at 868---69. The USPTO posited that hypothetical
example claim 1,
when taken as a whole, does not simply describe the generation
of a blue noise mask via a mathematical operation and receiving
and storing data, but combines the steps of generating a blue
noise mask with the steps for comparing the image to the blue
noise mask and converting the resulting binary image array to a
halftoned image.
Examples 9. This went "beyond the mere concept of simply retrieving and
combining data using a computer." Id. Further, there were improvements to
the functioning of the computer itself in allowing the computer to use less
memory, faster computations without sacrificing quality of resulting images,
and producing an improved digital image. Id. The hypothetical claim was
an "an innovation in computer technology, namely digital image processing,
which in this case reflects both an improvement in the functioning of the
computer and an improvements in another technology." Id. Here, as
4 Available at
https://www. uspto. gov/ sites/ default/files/ documents/ abstract_idea_examples
.pdf
16
Appeal2017-000417
Application 11/893,797
discussed above, there are no such improvements in computer or other
technology, but an improvement in selecting more receptive users and/or
targeted advertising.
Thus, we are not persuaded of error in the Examiner's determination
that claims 1-29 do not contain an inventive concept under the second part
of the Mayo/Alice framework.
Based on the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of claims 1-29.
DECISION
The Examiner's rejection of claims 1-29 under 35 U.S.C. § 101 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)(l )(iv).
AFFIRMED
17