Ex Parte PITELKA et al

Patent Trials and Appeals Board

Jun 28, 2019

15080169 - (D) (P.T.A.B. Jun. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/080,169 03/24/2016 Hunter PITELKA
132145 7590 07/02/2019
SL W / Palantir Technologies
P.O. Box 2938
Minneapolis, MN 55402
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.
4296.046US 1 6284
EXAMINER
PATEL, HITESHKUMARR
ART UNIT PAPER NUMBER
2441
NOTIFICATION DATE DELIVERY MODE
07/02/2019 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):
uspto@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUNTER PITELKA, JOHN MCKINSTRY DOYLE,
DANE HENSHALL, ROBERT IMIG, and ALEXANDER FELDMAN 1
Appeal2018-007356
Application 15/080, 169
Technology Center 2400
Before JASON V. MORGAN, DANIEL N. FISHMAN, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-12, 14--16, 18, 19, 21-23, and 25-28. Claims 13, 17,
20, and 24 are canceled. Final Act. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellant is the applicant and real party in interest, Palantir Technologies
Inc. (referred to as Palantir in the Appeal Brief). Appeal Br. 2.
Appeal 2018-007356
Application 15/080, 169
Summary of disclosure
The Specification discloses receiving and analyzing a plurality of
communications associated with a primary individual to ascertain a location
associated with the primary individual. Abstract. The Specification further
discloses identifying and obtaining information regarding other individuals
associated with the primary individual. Id.
Exemplary claim (key limitations emphasized)
1. A system comprising:
one or more computer processors;
one or more computer memories;
one or more modules incorporated into the one or more computer
memories, the one or more modules configuring the one or more
computer processors to generate a graphical user interface ( GUI) for
facilitating associating of location information with at least one
communication of a plurality of communications associated with a
primary individual, the generating comprising:
receiving, over an electronic network, the plurality of
communications associated with the primary individual;
determining, based on analysis of the plurality of
communications, at least one location associated with the
primary individual;
identifying other individuals associated with the primary
individual, the other individuals associated with the primary
individual being identified based on a number of mutual
contacts between the primary individual and each of the other
individuals exceeding a threshold value;
ranking the other individuals based on quantity and type of
communications between each other individual and the primary
individual to compute a rank score for each other individual, the
rank score being computed by assigning a weighting factor to
each communication based on a type of the communication and
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based on a type of relationship and number of mutual contacts
between the primary individual and the other individual;
retrieving, from one or more databases, information relating to
the other individuals; and
generating the GUI, the GUI comprising a first panel for
presenting the at least one location associated with the primary
individual, a second panel for presenting the retrieved
information related to the other individuals, and a third panel
for presenting the at least one communication from the plurality
of communications, the retrieved information related to the
other individuals being arranged, in the second panel of the
GUI, according to the computed rank score, the GUI
comprising an interactive pinning element for associating the
location information with the at least one of the plurality of
communications.
Re} ections2
The Examiner rejects claims 1-12, 14--16, 18, 19, 21-23, and 25-28
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Final Act. 3-11.
The Examiner rejects claims 1--4, 6-12, 14--16, 18, 19, 21-23, and
25-28 3 under 35 U.S.C. § 103 as being unpatentable over Abrol et al. (US
2013/0218965 Al; published 2013/0218965 Al) ("Abrol") and Day et al.
(US 2015/180746 Al; published June 25, 2015) ("Day"). Final Act. 11-33.
The Examiner rejects claim 5 under 35 U.S.C. § 103 as being
unpatentable over Abrol, Day, and Garcia et al. (US 2015/0163258 Al;
published June 11, 2015) ("Garcia"). Final Act. 33-35.
2 The Examiner withdraws the 35 U.S.C. § 112(b) rejection of claims 25-
27. See Ans. 21; Final Act. 3.
3 The Examiner erroneously includes claim 20 in the statement of the
rejection (Final Act. 11) even though claim 20 is canceled (id. at 2).
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35 U.S.C. § 101
Principles of law
To be statutorily patentable, the subject matter of an invention must be
a "new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." See 35 U.S.C. § 101. There
are implicit exceptions to the categories of patentable subject matter
identified in § 101, including: ( 1) laws of nature; (2) natural phenomena;
and (3) abstract ideas. Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216
(2014). The Supreme Court has set forth a framework for distinguishing
patents with claims directed to these implicit exceptions "from those that
claim patent-eligible applications of those concepts." Id. at 217 (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
The evaluation follows a two-part analysis: (1) determine whether the claim
is directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so,
then determine whether any element, or combination of elements, in the
claim is sufficient to ensure that the claim amounts to significantly more
than the patent-ineligible concept itself. See id. at 217-18.
"[ A ]11 inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. We "'must be careful to avoid oversimplifying the claims' by looking
at them generally and failing to account for the specific requirements of the
claims." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016) (quoting TL! Commc'ns LLC Patent Litig., 823 F.3d
607, 611 (Fed. Cir. 2016)). We, therefore, look to whether: (1) the claims
focus on a specific means or method that improves the relevant technology
or (2) the claims are instead directed to a result or effect that itself is the
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abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016).
That is, we look to whether the claims are "specifically designed to achieve
an improved technological result in conventional industry practice." McRO,
837 F.3d at 1316 (citing Alice, 573 U.S. at222-24) (emphasis added).
If a claim proves to be unpatentable as a result of the two-part
analysis, no additional determination regarding preemption is necessary.
"While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility," as
"questions on preemption are inherent in and resolved by the § 101
analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) (quotation marks and citation omitted).
The U.S. Patent and Trademark Office (USPTO) recently published
revised guidance on the application of the two-part analysis. USPTO
Memorandum of January 7, 2019, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes) (see id. at 54 (step 2A, prong
one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54--55 (step 2A,
prong two); MPEP § 2106.05(a}-(c), (e}-(h)).
See Memorandum, 84 Fed. Reg. at 52-55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not "well-understood, routine, conventional"
in the field (see MPEP § 2106.05(d)); or
( 4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 56.
Memorandum step 2A, prong one
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner determines claim 1 is similar to patent-ineligible
processes that can be performed by the human mind and therefore are
abstract. See Final Act. 5. Appellant contends the Examiner erred by not
articulating what claim 1 is "directed to with enough specificity to ensure the
step one inquiry is meaningful." Appeal Br. 26; see also Reply Br. 6-7.
Appellant's argument is unpersuasive because the Examiner's
determination that claim 1 is directed to mental processes (i.e., concepts
performed in the human mind) is supported by the recitations of claim 1. In
particular, claim 1 recites: (1) "determining, based on analysis of the
plurality of communications, at least one location associated with the
primary individual"; (2) "identifying other individuals associated with the
primary individual ... based on a number of mutual contacts between the
primary individual and each of the other individuals"; (3) "ranking the other
individuals based on quantity and type [sic] of communications between
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each other individual and the primary individual"; and (4) "retrieving ...
information relating to the other individuals." In other words, claim 1
recites ascertaining a location associated with a primary individual, finding
other individuals associated with the primary individual through analysis of
the connections between individuals (i.e., mutual contacts), ascertaining how
close the other individuals are to the primary individual, and obtaining
information about the other individuals.
The claim 1 approach to analyzing a group associated with an
individual represents a variant on group analysis methods long practiced in
the mind with the aid of pen and paper. See, e.g., J.L. Monroe, Who Shall
Survive? A New Approach to the Problem of Human Interactions, p. 30 et
seq., Nervous and Mental Disease Publishing Co., Washington, D.C. (1934),
digitized copy available at https://archive.org/details/
whoshallsurvivenOOjlmo (providing a key for and illustrating sociograms
used to map interactions within a group). Although claim 1 recites generic
computer components such as databases and a graphical user interface (i.e.,
sources of information and a mechanism for outputting the results of the
analysis), the analysis could nonetheless be practically performed in the
mind with reference to manually retrieved information and results manually
produced. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1318 (Fed. Cir. 2016); see also Memorandum, 84 Fed. Reg. at 52
n.14.
For these reasons, claim 1 recites mental processes (i.e., observation,
evaluation, opinion) that are abstract. See Memorandum, 84 Fed. Reg. at 52.
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Memorandum step 2A, prong two
Appellant contends the Examiner erred in rejecting claim 1 as being
directed to patent-ineligible subject matter because claim 1 is directed to an
improved user interface. See Appeal Br. 28-29. In particular, Appellant
argues the claimed graphical user interface "'provide[ s] more efficient
visualization, manipulation, and export of data regarding users' Internet
communications,' while addressing one or more of the drawbacks and
disadvantages identified in the [S]pecification." Id. at 29 (citing Spec. ,r 4)
(first alteration in original).
The drawbacks and disadvantages, however, are related to "[t]he large
volume of data available regarding Internet users' communications and data
consumption [being] difficult or, in most cases, impossible for analysts to
digest." Spec. ,r 4. Nothing in claim 1 limits the system to applications with
a large volume beyond the mental facilities of a human working with pen
and paper. Even use of the system to analyze a handful of communications
and individuals falls within the scope of the claimed invention. Moreover,
the improvements Appellant identifies, such as being able to identify a
location by dropping a pin on a map and specifying the accuracy of a
location, are basic communication techniques, not particular improvements
to a graphical user interface or computer system that would make the
claimed invention patent-eligible. See Appeal Br. 29.
Furthermore, in reviewing claim 1 we are unable to identify any
additional element or combination of elements that uses the underlying
abstract idea (i.e., the underlying mental processes) in some way beyond
merely using the abstract idea on a particular technological environment.
See Memorandum, 84 Fed. Reg. at 55. Accordingly, we determine the
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additional recitations of claim 1 fail to integrate the underlying abstract idea
into a practical application. Id. Thus, claim 1 is directed to the recited
abstract idea. See Memorandum, 84 Fed. Reg. at 54.
Memorandum step 2B
Appellant contends the additional recitations of claim 1 amount to
significantly more than the underlying abstract idea. Appeal Br. 32.
Specifically, Appellant argues the recited graphical user interface,
"including the panels and interactive pinning element is not conventional."
Id.; see also Reply Br. 8-9. Using pins in a map to identify locations and
placing information in panels are conventional practices. The maps with
pinning elements and the panels illustrated in the Specification closely
resemble a map, pins, and notes placed on a corkboard. See Spec., Figs. 3,
7. Thus, the invention of claim 1 is unlike, for example, the patent-eligible
technology of DDR Holdings, which was "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); see also id. at 1258 (a pre-computer analogue
to the claimed invention because there was no possibility a customer
walking up to a kiosk would "be suddenly and completely transported
outside the warehouse store and relocated to a separate physical venue
associated with the third-party"). That is, even without the use of computer
technology, pins in a map and information organized in panels could have
been used for communications.
Furthermore, the additional recitations such as "one or more computer
processors," "one or more computer memories," and "an electronic network"
are claimed and disclosed generically. See Final Act. 7-11; see also Ans. 6-
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7. The Specification discloses, for example, that "special-purpose
computing devices can be desktop computer systems, portable computer
systems, handheld devices, networking devices, or any other device that
incorporates hard-wired and/or program logic to implement the techniques
and other features of the present disclosure." Spec. ,r 19. "Computing
device 110 also includes a main memory 106, such as a random access
memory (RAM) or other dynamic storage device, coupled to bus 102 for
storing information and instructions to be executed by processor 104." Id.
,r 23. "Such instructions ... render computing device 110 into a special-
purpose machine that is customized to perform the operations specified in
the instructions." Id. The Specification also discloses that:
Network link 120 typically provides data communication
through one or more networks to other data devices. For
example, network link 120 can provide a connection through
local network 122 to a host computer 124 or to data equipment
operated by an Internet Service Provider (ISP) 126. ISP 126 in
tum provides data communication services through the world
wide packet data communication network now commonly
referred to as the "Internet" 128. Local network 122 and
Internet 128 both use electrical, electromagnetic or optical
signals that carry digital data streams.
Id. ,I 33.
These broad, general descriptions of the additional recitations of claim
1 show that the technologies recited were well-understood, routine, and
conventional. See Memorandum, 84 Fed. Reg. at 56. Therefore, they
support the Examiner's determination that the additional recitations of claim
1 do not provide significantly more than the underlying abstract idea so as to
transform claim 1 into patent-eligible subject matter.
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Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claim 1, and claims 15 and 18, which Appellant does not argue separately
with respect to this issue.
Dependent claims 2-12, 14, 16, 19, 21-23, and 25-28
Appellant contends the additional recitations of the dependent claims
"go beyond any alleged abstract idea with even further specificity than the
additional elements discussed ... with respect to the independent claims."
Appeal Br. 35. Appellant, however, does not support this conclusory
contention with arguments or evidence that persuasively rebut the
Examiner's determination that the dependent claims "do[] not provide
anything beyond what [was] known and conventional" (Final Act. 10) and
that each dependent claim fails "to transform the character of the claims as a
whole nor recite[ s] anything beyond routine computer functions necessary to
perform the abstract idea" (Ans. 11 ). Rather Appellant merely reproduces
the recitations of the dependent claims. See Appeal Br. 33-35.
Accordingly, we also sustain the Examiner's 35 U.S.C. § 101
rejection of dependent claims 2-12, 14, 16, 19, 21-23, and 25-28.
35 U.S.C. § 103
In rejecting claim 1 as obvious, the Examiner finds that Day's analysis
of communications based on frequency or duration teaches or suggests a
"rank score being computed by assigning a weighting factor to each
communication based on a ... number of mutual contacts between the
primary individual and the other individual." See Final Act. 15-16 ( citing
Day ,r,r 218, 226-29, Figs. 37, and 41); see also Ans. 14--15. Appellant
contends the Examiner erred because:
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although Day broadly discusses that "the safety system 110 can
assign weights to certain types of communication to determine
a representative amount of interaction for comparison," Day
. . . does not teach or suggest "assigning a weighting factor to
each communication based on a type of the communication and
based on a type of relationship and number of mutual
contacts between the primary individual and the other
individual."
Appeal Br. 3 8; see also Reply Br. 10.
Appellant's argument is persuasive because the teachings of Day cited
by the Examiner relate to enabling the determining and displaying of "a
group of people that a child communicates with most frequently." Final Act.
16; see also Day ,r 218. The claimed "number of mutual contacts between
the primary individual and the other individual," however, does not
represent the number of times the primary individual and the other
individual communicated with each other. Rather, the broadest reasonable
interpretation of "mutual contacts," when read in light of the Specification,
represents the number of third-parties with whom both the primary
individual and the other individual share a direct connection, such as being
friends or followers. This is evident in the Specification's disclosure that
"the computing device may designate another individual as associated with
the primary individual if the number of mutual friends or contacts of the two
individuals exceeds a threshold value" and "the number of mutual contacts
(e.g., friends, followers) between two individuals may also be used to
determine the score for an association between those two individuals."
Spec. ,r,r 47, 50.
The interpretation of "mutual contacts" as referring to shared friends,
followers, etc.-rather than the number of communications between the
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primary individual and the other individual-is further supported by the
other recitations of claim 1. Specifically, the claimed rank score is
"computed by assigning a weighing factor to each communication" based, in
part, on the number of mutual contacts. See Appeal Br. 44, Claims App.
( emphasis added). That is, the number of mutual contacts between the
primary individual and the other individual affects how much weight to give
to any particular communication in the set of analyzed communications,
which are considered in aggregate to rank "the other individuals based on
quantity and type [sic] of communications," as recited in claim 1.
For these reasons, we agree with Appellant that the Examiner's
findings do not show that Day teaches or suggests a "rank score being
computed by assigning a weighting factor to each communication based on a
... number of mutual contacts between the primary individual and the other
individual," as recited in claim 1. The Examiner does not rely on Abrol or
Garcia to teach or suggest the disputed recitation. Accordingly, we do not
sustain the Examiner's 35 U.S.C. § 103 rejection of claim 1, or the
Examiner's 35 U.S.C. § 103 rejections of claims 2-12, 14--16, 18, 19, 21-
23, and 25-28, which contain similar recitations. We do not reach
Appellant's additional arguments with respect to dependent claims 2, 5-7,
10-12, 14, 21, 26-28. Appeal Br. 39--41.
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DECISION
We affirm the Examiner's decision rejecting claims 1-12, 14--16, 18,
19, 21-23, and 25-28 under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-12, 14--16, 18,
19, 21-23, and 25-28 under 35 U.S.C. § 103.
Because we affirm at least one rejection of each claim, we affirm the
Examiner's decision rejecting claims 1-12, 14--16, 18, 19, 21-23, and 25-
28.
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.
§ 41.50(±).
AFFIRMED
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