Ex Parte LIEW

Patent Trial and Appeal Board

Jun 22, 2017

14089677 (P.T.A.B. Jun. 22, 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.
14/089,677 11/25/2013 Jeremy LIEW 10587.0332-02000 9134
100692 7590
AOL Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
06/26/2017 EXAMINER
SENSENIG, SHAUN D
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
06/26/2017 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):
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEREMY LIEW1
Appeal 2016-002896
Application 14/089,677
Technology Center 3600
Before ALLEN R. MacDONALD, AMBER L. HAGY, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
1 This paper is captioned by inventor name according to our pre-AIA
convention. The Applicant/Appellant is AOL Inc. (See App. Br. 3.)
Appeal 2016-002896
Application 14/089,677
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 23, 24, 27—34, and 37-46, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to “[ejnabling access to user-specific
content [including] maintaining data indicating a social network that
indicates a first user and a second user that are connected by one or more
relationships through zero or more intermediary users.” (Abstract.) Claim
23, reproduced below, exemplifies the subject matter on appeal:
23. A computer-implemented method, comprising:
identifying, using at least one processor, based on information
associated with a social network, a plurality of first relationships
between a first user and a second user of the social network, the
first relationships comprising direct relationships through zero
intermediary users;
identifying, using the at least one processor, categories
associated with the first relationships based on the social
networking information;
generating, using the at least one processor, a composite
category representative of the identified categories;
determining, using the at least one processor, a portion of a
contact list of the second user that is accessible to the first user
based on a composite access type associated with the composite
category; and
generating, using the at least one processor, an instruction to
transmit information associated with the contact list portion to a
device of the first user, the information instructing the first user
device to (i) present the contact list portion to the first user and
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(ii) enable the first user to at least one of read or modify the
presented contact list portion in accordance with the composite
access type.
THE REJECTION
Claims 23, 24, 27—34, and 37-46 stand “rejected under 35 U.S.C.
[§] 101 because the claimed invention is directed to a judicial exception (i.e.,
a law of nature, a natural phenomenon, or an abstract idea) without
significantly more.” (Final Act. 2.)
ANALYSIS
In rejecting the claims under Section 101, the Examiner made the
following findings:
Claim(s) 23, 24, 27—34, and 37-46 is/are directed to the abstract
idea of organizing human activities through the identification
and grouping of data. The claim(s) does/do not include addi­
tional elements that are sufficient to amount to significantly more
than the judicial exception because the additional element(s) or
combination of elements in the claim(s) other than the abstract
idea per se amount(s) to no more than: (i) mere instructions to
implement the idea on a computer, and/or (ii) recitation of ge­
neric computer structure that serves to perform generic computer
functions that are well-understood, routine, and conventional ac­
tivities previously known to the pertinent industry. Viewed as a
whole, these additional claim element(s) do not provide mean­
ingful limitation(s) to transform the abstract idea into a patent
eligible application of the abstract idea such that the claim(s)
amounts to significantly more than the abstract idea itself.
(Final Act. 2.) The Examiner further explained that the claims “pertain to
[activities] such as categorizing and organizing data, providing access based
on data, providing file permissions to user, and transmitting data,” “all well
known and routine tasks in the field of art.” {Id. at 3.)
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We agree with and adopt these Examiner findings, as well as the
conclusion that the claims are not patent-eligible. We address Appellant’s
several arguments in the order presented.
Appellant first argues “the Examiner fails to analyze the actual
language recited by [the] independent claims,” “much less the actual
language recited by any of dependent claims,” and that “the Examiner’s
analysis is therefore improper under the Interim Guidance, and the § 101
rejection is legally deficient and should be reversed.” (App. Br. 11—12.) We
do not agree. There is no requirement, in the Interim Guidance or
elsewhere, that an Examiner address every word of every claim, and the
Examiner in this instance did specifically address the claim language
Appellant argues. (See, e.g., Ans. 5—6.) Moreover, the USPTO carries its
procedural burden when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for rejection, ‘“together with
such information and references as may be useful in judging of the propriety
of continuing the prosecution of [the] application.’” In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (brackets in original, quoting 35 U.S.C. § 132).
Here, the Examiner notified Appellant that the claims are directed to an
ineligible abstract idea and, specifically, to the “idea of organizing human
activities through the identification and grouping of data” where, “[v]iewed
as a whole,” the additional claim elements identified by Appellant “do not
provide meaningful limitation(s) to transform the abstract idea into a patent
eligible application of the abstract idea such that the claim(s) amounts to
significantly more than the abstract idea itself.” (Final Act. 2-4; see Ans. 5—
6.) Thus, Appellant has been notified of the reasons for the rejection with
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such information “as may be useful in judging of the propriety of continuing
the prosecution of [the] application.”
Second, Appellant argues the claims are eligible because they recite
“at least one processor” and concern “computerized” techniques. (App. Br.
12—13.) We again do not agree. Appellant’s Specification does not describe
any new or unique computer hardware or software, and the law is clear that
simply programming a computer to perform what would otherwise be an
abstract idea is not sufficient to impart patent eligibility. See Alice Corp.
Pty. v. CLSBankInt 7, 134 S. Ct. 2347, 2359 (2014).
Third, Appellant asserts that the instant claims are like those found
eligible by the Supreme Court in Diamond v. Diehr, 450 U.S. 175 (1981).
(App. Br. 13—14.) We disagree. The Diehr Court found those claims
eligible because they “involve[d] the transformation of an article,. . . raw,
uncured synthetic rubber, into a different state or thing” and “describe[d] in
detail a step-by-step method for accomplishing such, beginning with the
loading of a mold with raw, uncured rubber and ending with the eventual
opening of the press at the conclusion of the cure.” Id. at 184.2 Because
Appellant’s claims are not directed an industrial process, Diehr is inapposite.
Fourth, Appellant asserts that “the pending claims cannot be directed
to an abstract idea because they do not attempt to preempt every application
of the alleged abstract idea of ‘organizing human activities through the
2 Exemplary claims at issue in Diehr are reproduced in note 2 of the opinion
and include limitations such as “constantly determining the temperature (Z)
of the mold at a location closely adjacent to the mold cavity in the press
during molding” and “opening the press automatically when a said
comparison indicates equivalence.”
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identification and grouping of data.’” (App. Br. 14.) This argument is not
persuasive because although “preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). We are instructed that “[wjhere a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
[A lice/Mayo] framework . . . , preemption concerns are fully addressed and
made moot.” Id.
Fifth, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), Appellant argues “any ‘ideas’ recited by [the] independent
claims are in fact drawn to embodiments inextricably tied to computer
networks rather than ethereal ideas or mental processes.” (App. Br. 15.)
Appellant asserts that the claims “solve[] a technical problem using a
technical solution and [are] thus directed to statutory subject matter under
§ 101.” {Id. at 17.) We are not persuaded. The claims in DDR recited a
system in which a user activating a link on a source webpage would be
directed to a new, automatically formed webpage with information about the
subject of the link and, also, visual elements corresponding to those in the
source webpage. See DDR Holdings, 773 F.3d at 1249—50. The customer
experience was modified as compared to the prior art because they were not
transferred to a different online store, and the seller experience was
improved in that customers were retained. We understand that Appellant
purports to have improved the media sharing experience, and wishes to
analogize that to the improvement in DDR. The claims before us, however,
do not capture Appellant’s alleged improvement in the way the DDR claims
captured that improvement. Appellant’s claim 23, for example, recites
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(a) identifying direct relationships, (b) identifying categories associated with
the direct relationships, (c) generating composite categories, (d) determining
a portion of a contact list of a second user, and (e) generating an instruction
to transmit some of the information to a device of the first user. Steps (a)—
(d) simply manipulate data, and although step (e) generates an instruction
that contains certain information, that instruction is not actually put to use in
the claim. So, whereas the DDR claims recited a set of steps that resulted in
presenting a user with what amounted to a new web environment,3 the
instant claims do not recite limitations that would effect any perceptible
change to a user. DDR does not, therefore, provide support for an argument
that Appellant’s claims are patent-eligible.
Sixth, Appellant argues with respect to the second prong of the
Mayo/Alice test that the claims contain an inventive concept because “the
Examiner withdrew the prior rejections under 35 U.S.C. §§ 102(e) and
103(a) in the Office Action mailed January 27, 2014.” (App. Br. 18.) This
argument lacks merit because, even though the Section 101 inquiry and the
Section 102/103 inquiry might sometimes overlap, a novel and nonobvious
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1304
(2012) (rejecting the suggestion that Sections 102, 103, and 112 might
3 For example, claim 19 of the ’399 patent in DDR culminates with “using
the data retrieved, automatically generate and transmit to the web browser a
second web page that displays: (A) information associated with the
commerce object associated with the link that has been activated, and (B) the
plurality of visually perceptible elements visually corresponding to the
source page.” DDR Holdings, 773 F.3d at 1250.
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perform the appropriate screening function and noting that in Mayo such an
approach “would make the ‘law of nature’ exception ... a dead letter”).
Finally, in the Reply, Appellant argues “the rejection is improper
because the Examiner has failed to establish that Appellant’s claims are
directed to an abstract idea that corresponds to an ineligible concept
previously identified by the courts.” (Reply Br. 4.) The Examiner cannot be
faulted for not following the July 2015 Update referenced by Appellant
because the Final Action issued before that Update.4 However, we observe
that a number of Federal Circuit cases have found claims that simply
manipulate data, like those at issue here, ineligible. See, e.g., Intellectual
Ventures ILLC v. Erie Indent. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017)
(“creating an index and using that index to search for and retrieve data”);
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(collection, manipulation, and display of data); Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(customizing information and presenting it to users based on particular
characteristics); Content Extraction and Transmission LLC v. Wells Fargo
Bank, National Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“collecting
data,. . . recognizing certain data within the collected data set, and . . .
storing that recognized data in a memory”).
Because we agree with the Examiner’s analysis and find Appellant’s
arguments insufficient to show error, we sustain the rejection of claims 23,
24, 27—34, and 37-46 under 35 U.S.C. § 101.
4 The Final Action was mailed January 29, 2015, the Appeal Brief was filed
July 29, 2015, and the July 2015 Update issued on July 30, 2015.
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DECISION
The rejection of claims 23, 24, 27—34, and 37-46 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
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