Ex Parte REDMOND

Patent Trials and Appeals Board

May 6, 2019

11835415 - (D) (P.T.A.B. May. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/835,415 08/07/2007
27052 7590
STEPHEN E. ZWEIG
224 VISTA DE SIERRA
LOS GATOS, CA 95030
05/08/2019
FIRST NAMED INVENTOR
Scott REDMOND
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.
REDMD-00100 1403
EXAMINER
HENRY, RODNEY M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
05/08/2019 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):
szweig@patentassociate.com
stevezweig@comcast.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT REDMOND 1
Appeal2018-003127
Application 11/835,415
Technology Center 3600
Before LINDA E. HORNER, JAMES P. CAL VE, and LEE L. STEPINA,
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Office Action
rejecting claims 1--4, 6-13, 16, 17, 19-21, 32-35, and 37-39. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Mr. Redmond is identified as the real party in interest. Br. 3.
Appeal2018-003127
Application 11/835,415
CLAIMED SUBJECT MATTER
Claims 1, 16, 37, 38, and 39 are independent. Claim 1 is reproduced
below.
1. A method of operating a computerized multi-function
social network to provide location based data files, said method
compnsmg:
using a computer system to automatically create links to
other users of other mobile wireless communications devices
using information from at least one of a first user's other
existing Internet social network sites;
wherein said computer system is at least one server
connected to the Internet;
using said computer system to locate one or more mobile
wireless communication devices operated by said first user;
using said computer system to capture activities on the
one or more mobile wireless communication devices operated
by either said first user or said other users; and
using said computer system to automatically provide data
files to the one or more mobile wireless communication devices
operated by either said first user or said other users,
independent of types of the one or more mobile wireless
communication devices, communication protocol and
communication network providers associated with the one or
more mobile wireless communication devices, wherein the data
files are provided based on the activities of said first user or
said other users while operating said one or more mobile
wireless communication devices;
wherein said activities comprise previously uploaded or
downloaded data;
wherein said data files to comprise information relevant
to the location of the first user.
Br. 22 (Claims App.).
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REJECTIONS
Claims 1--4, 6-13, 16, 17, 19-21, 32-35, and 37-39 are rejected as
directed to patent-ineligible subject matter under a judicial exception to
35 U.S.C. § 101.
Claims 1--4, 6-13, 16, 17, 19-21, 32-35, and 37-39 are rejected under
35 U.S.C. § I03(a) as unpatentable over Kramer (US 2008/0306826 Al,
pub. Dec. 11, 2008) and Xiong (US 2007/0233736 Al, pub. Oct. 4, 2007).
ANALYSIS
Claims 1--4, 6--13, 16, 17, 19-21, 32-35, and 37-39
As Directed to a Judicial Exception
Appellant argues the claims as a group. See Br. 12-13 (arguing
claims 16 and 38 for substantially the same reasons as claims 1, 37, and 39).
We select claim 1 as representative. The Examiner determines claim 1
recites a method of automatically linking users, locating users, capturing
user activity, and providing content to the users, which provides location
based content to a social community. Non-Final Act. 3--4. The Examiner
also determines claim 1 recites steps of collecting information, analyzing it,
and displaying certain results of the collection and analysis, which is an
abstract idea. Id. The Examiner determines that "a computer system,"
"mobile wireless communications devices," and "server" recite generic
computer technology that performs standard electronic recordkeeping and
transmission of data functions that do not impose any meaningful limit on
the computer implementation of the abstract idea. Id. at 5.
Appellant argues that the claims cannot be performed with a pen and
paper as a mental process. Br. 12. Appellant argues conventional pieces can
supply something more if arranged in a non-conventional way. Id. at 13.
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Application 11/835,415
The patent laws provide that "[ w ]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." 35 U.S.C. § 101. However,
"this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Int'!, 573 U.S. 208,216 (2014) (citation omitted).
Mayo Collaborative Services set forth a framework to distinguish
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts. Alice,
573 U.S. at 217 (citing Mayo Collaborative Servs v. Prometheus Labs, Inc.,
566 U.S. 66, 77 (2012)). First, we determine whether the claims are directed
to a patent-ineligible concept. Id. If so, we next consider the claim elements
individually and as an ordered combination to determine whether additional
elements transform the claims into a patent-eligible application. Id. This
search for an inventive concept seeks an element or combination of elements
"sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself." Id. at 217-218.
Recently, the PTO published guidance for evaluating subject matter
eligibility. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 ("Revised Guidance"). Under Step One, a determination is
made whether the claims are in a statutory category of patentable subject
matter, i.e., do they recite a process, machine, manufacture, or a composition
of matter, identified in 35 U.S.C. § 101. Revised Guidance, 84 Fed. Reg. 50,
53-54; See Alice, 573 U.S. at 216; Mayo, 566 U.S. at 70.
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Next, at Revised Step 2A, Prong One, an evaluation is made whether
a claim recites a judicial exception, i.e., an abstract idea set forth in Section I
of the Revised Guidance, a law of nature, or a natural phenomenon. Id. at
54. To determine if a claim recites an abstract idea, specific limitations that
recite an abstract idea must be identified (individually or in combination),
and a determination made whether the limitation(s) falls within one or more
of the subject matter groupings in Section I of the Revised Guidance. Id.
(III.A. Revised Step 2A). The three groupings are (1) mathematical concepts,
relationships, formulas, or calculations, (2) certain methods of organizing
human activity, fundamental economic principles and practices, commercial
interactions, managing personal behavior, relationships, or interactions and
(3) mental processes and concepts formed in the human mind. Id. at 52.
If a claim recites a judicial exception, Prong Two of Revised Step 2A
requires a determination to be made whether the claim as a whole integrates
the judicial exception into a practical application. Id. "A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." Id. If a judicial exception is
integrated, the claim is patent eligible. See id. at 54--55.
If a claim does not "integrate" a recited judicial exception, the claim is
directed to the judicial exception and further analysis is required under Step
2B to determine whether the claim contains additional elements, considered
individually or in combination, that provide an inventive concept, such that
the additional elements amount to significantly more than the exception
itself. Id. at 56; see Alice, 573 U.S. at 217-218.
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Step One: Does Claim 1 Fall Within a Statutory Category of§ 1 OJ?
The Examiner finds that claim 1 is directed to a method. Non-Final
Act. 3. Appellant does not dispute this determination. Br. 4--11 ( asserting
that independent claims 1, 3 7, and 3 9 recites a method of operating a social
network linked computer system, and independent claims 16 and 3 8 recite
systems claims) (Summary of the Claimed Subject Matter). We agree that
claim 1 falls within statutory categories of 35 U.S.C. § 101, i.e., a method.
Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception?
We agree with the Examiner that claim 1 recites a method of linking
users, locating users, capturing user activity, and automatically providing
location-based content to users as part of a social community. Non-Final
Act. 3. This method recites an abstract idea involving certain methods of
organizing human activity under the Revised Guidance by ( 1) managing
personal behavior or relationships or interactions between people including
social activities and following rules and instructions and (2) a fundamental
economic practice such as advertising or marketing activities. See Revised
Guidance, 84 Fed. Reg. 50, 52. The Specification describes this method as
managing a multi-function social network where the social networks map
relationships between individuals and connect them in different ways. Spec.
,r,r 1--4. The social networks also provide a way to target customers for
economic practices such as advertising over social media. Id. ,r,r 5, 42--47.
In view of this determination, Appellant's arguments that the claims
are not directed to a mental process and none of the claims can be performed
by a human with pen and paper (Br. 12, id. at 13 (asserting this argument for
independent claims 16 and 38)) are not persuasive. They do not address the
Examiner's determination in the Office Action. See Ans. 3.
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In claim 1, the step of "using a computer system to automatically
create links to other users of other mobile wireless communications devices
using information from at least one of a first user's other existing Internet
social network sites" is a method of organizing human activity by creating
relationships and interactions between people. The Specification describes a
social network as "a map of relationships between individuals, indicating
ways in which they are connected through various social familiarities
ranging from casual acquaintance to close familial bonds." Spec. ,r 2.
The steps of "using said computer system to locate one or mobile
wireless communication devices operated by said first user" and "using said
computer system to capture activities on the one or more mobile wireless
communication devices operated by either said first user or said other users"
also involve methods of organizing human activity and managing personal
behavior by tracking the location of people and their activities to share with
other members of their social network or advertisers for targeted advertising.
"[U]sing said computer system to automatically provide data files to
one or more mobile wireless communication devices operated by either said
first user or said other users .... wherein the data files are provided based
on the activities of said first user or said other users while operating said one
or more mobile wireless communication devices" further organizes human
activity and personal behavior and interactions by sharing files and activities
among members of a social network to promote personal interactions and
social activities among members of the social network. See id. ,r 44.
The additional limitation "wherein said activities comprise previously
uploaded or downloaded data" addresses this previous point of organizing
activity by sharing information among members of the social network.
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The final limitation "[W]herein said data files to comprise information
relevant to the location of the first user" organizes activity of members of the
social network and provides targeted, location-based advertising to members
(a fundamental economic practice). The Specification discloses that social
networks offer a way to target specific customers with advertising on social
media. Id. ,r 5. Thus, a database of current promotional incentives can be
cross referenced to current customer location, interest, profile, and other data
to execute large targeted promotions to specific customers. Id. ,r 46.
Step 2A, Prong Two: Does Claim 1 Recited an Integrated Application?
Appellant's arguments that the claims do not preempt all methods of
acquiring users, sending messages, and providing data files and include
limitations and additional elements that individually or in combination
amount to significantly (Br. 12-13) pertain to Step 2B, discussed below.
Appellant argues that the claims do not involve mental steps or purely
mental processes because they recite a computer system that automatically
provides data files to mobile wireless communications devices and creates
links automatically and therefore the claims do not preempt all solutions to
the problem. Br. 12. Appellant also argues that the claims recite additional
hardware elements that offer meaningful limitations and are arranged in a
non-generic, non-conventional way. Id. at 13.
The arguments regarding mental processes are not persuasive because
we determine that claim 1 recites methods of organizing human activity by
managing personal behavior or relationships or interactions between people
including social activities and following rules and instructions plus the
fundamental economic practice of advertising and marketing activities as
discussed above. See Non-Final Act. 3--4, 6.
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In claim 1, using a generic computer system to provide data files to
mobile wireless communication devices of users based on activities of the
users and information relevant to the location of the first user does not
integrate the above abstract idea into a practical application. See Affinity
Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir.
2016); see also Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1258 (Fed. Cir. 2016) (conveying regional content to out-of-region
electronic devices involves the concept of information distribution, which
has been performed by nearly every form of media with a local distribution,
because it is not tied to a particular technology but can be implemented in
many ways and therefore is not an integration into a practical application);
Evolutionary Intelligence LLC v. Sprint Nextel Corp., 677 F. App'x 679, 680
(Fed. Cir. 2017) (non-precedential) (finding no integration where "tailoring
of content based on information about the user-such as where the user lives
or what time of day the user views the content-is an abstract idea" and
merely "selecting and sorting information by user interest or subject matter
[is] a longstanding activity of libraries and other human enterprises.").
Reciting steps of organizing human activity for advertising in a social
network over the Internet does not impose a meaningful limitation on the
judicial exceptions. The steps are akin to the fundamental practices of print
media (newspapers) to tailor advertising inserts to a customer's location or
the time of day. Intellectual Ventures I LLC v. Capitol One Bank (USA),
792 F.3d 1363, 1369-70 (Fed. Cir. 2015). Steps of collecting and sharing
information, even when limited to particular content, without more, is not
sufficient to make an abstract idea patent-eligible. Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see Non-Final Act. 3--4.
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Steps of capturing social activity and human behavior from mobile
wireless communications devices and automatically providing data files to
other devices are recited at a high, generalized level and not tied sufficiently
to a particular machine or technology. They fail to integrate the abstract
ideas into a practical application. See id. at 1353-54; In re Eberra, 730 F.
App'x 916, 917-18 (Fed. Cir. 2018) (non-precedential) (holding that claims
reciting abstract idea of promoting the purchase of a product by providing a
spot in a television program as an incentive recited a fundamental economic
practice long prevalent in our system of commerce and lacked a degree of
particularity sufficient to make the abstract ideas patent-eligible); West View
Research, LLC v. Audi AG, 685 F. App'x 923, 926 (Fed. Cir. 2017) (non-
precedential) (holding that selection of advertising content and presentation
of the received content based on a user-selection topical areas were abstract
ideas lacking integration into a practical application by other recited steps of
receiving or collecting data, retrieving and processing information in
response to a data query, and generating a visual or audio response to the
data query). No meaningful limitations are imposed on the abstract ideas.
The mere use of the Internet does not integrate the abstract ideas into
a practical application. Ultramercial, Inc. v. Hulu, LLC, 772 F .3d 709, 716
(Fed. Cir. 2014) ("[T]he use of the Internet is not sufficient to save otherwise
abstract claims from ineligibility under § 101."). In Ultramercial, the claims
were directed to using advertising as an exchange where a user could watch
an ad in return for being able to access copyrighted media. Id. at 714--15.
Showing an advertisement before delivering free content lacked a concrete
or tangible integrated application. See id. at 715. Here, claim 1 recites a
generic environment to implement abstract ideas without meaningful limits.
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Step 2B: Does Claim 1 Recite an Inventive Concept?
We next consider whether claim 1 recites any elements, individually
or as an ordered combination, that transforms the abstract idea into a patent-
eligible application, e.g., by providing an inventive concept. Alice, 573 U.S.
at 217-18. Appellant does not identify an inventive concept in the claims,
except to argue that the claims do not read on a purely mental process and do
not preempt any solution to the identified problem because others can use
different methods to acquire users, send messages and provide data files. Br.
12. Appellant argues that conventional pieces can supply "something more"
under step 2 of the Alice test if arranged in a non-conventional way, and the
Examiner should consider the additional elements in combination. Id. at 13
( arguing the Examiner failed to consider preemption as to claims 16 and 3 8).
We agree with the Examiner that claim 1 recites generic components
such as "a computer system," "mobile wireless communication devices,"
and "a server." Non-Final Act. 5. We also agree that claim 1 recites these
components performing generic functions of receiving, processing, storing,
and transmitting data. Id.; Ans. 3--4. Appellant's arguments do not identify
an inventive step or "something more" in claim 1 's method steps, nor does
Appellant apprise us of error in the Examiner's determination that claim 1
recites generic components performing generic functions. See Br. 12-13.
Claim 1 recites that the computer system creates links to other users of
other mobile wireless communications devices using information from a first
user's other Internet social networking sites. Claim 1 does not recite how
this step of expanding a network is performed. The Specification discloses
only that users can enter links to personal websites they created on other
social network sites or the links may be captured automatically. Spec. ,r 30.
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The Specification also discloses that a service provider captures data
from each of the top social network links and merges or melts the data into a
single page viewable on a handset, e.g., by acquiring Hypertext Markup
Language (HTML) and images from target pages. Id. ,r 31. Notably absent
is any indication of how the computer system automatically links to other
users and other mobile wireless communications devices from a first user's
existing Internet social network sites. Thus, we find no inventive step here.
The Specification also discloses that the locations of mobile wireless
communications devices can be acquired with a Global Location Resource
that is not described in the Specification except to indicate an exemplary
GLR code. Id. ,r 33. The Specification also discloses that other protocols
may be used within the spirit of the invention. The Specification provides
no further details of this component or process, nor any indication that this
function is inventive. Nor does claim 1 recite inventive features of this step.
The Specification also discloses generally that "activities on one or
more mobile phones are captured." Id. ,r 35. Neither the Specification nor
claim 1 recite any other functions or features of this process. Nor does the
Specification describe an inventive step in the way data files are provided to
a mobile wireless communications device user. As a user walks in an area,
they may receive a colorful message from an advertiser such as "Welcome
to the neighborhood! Stop in and pick up this CD to avail 20% off. Send
this message to 5 friends right now to avail another 10% off and two of your
favorite songs free! See you in 15 minutes for 50 reward points." Id. ,r 47.
There is no further disclosure of this information transmission process nor
any indication that inventive software, hardware, communications protocols,
or database operations are used to perform this generic, generalized function.
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As a result, we determine that claim 1 recites the elements in a way
that merely provides a generic environment to carry out the abstract idea of
providing location-based advertising to a mobile device of a first user and to
other users in the first user's social networks. See Affinity Labs, 838 F.3d at
1269 (citing In re TL! Communications LLC Patent Litigation, 823 F.3d
607, 611 (Fed. Cir. 2016)).
Whether analyzed individually or as an ordered combination, claim 1
recites the generic components and functions at too high a level of generality
to provide an inventive concept. E.g., Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d at 1368 (holding that instructing one to apply an
abstract idea while reciting no more than generic computer elements that
perform generic computer tasks does not make the abstract idea patent-
eligible) (citing Alice, 573 U.S. at 225); Ultramercial, 772 F.2d at 716
(holding that "each of those eleven steps merely instructs the practitioner to
implement the abstract idea 'with routine, conventional activit[ies ], ' which is
insufficient to transform the patent-ineligible abstract idea into patent-
eligible subject matter.").
The decision in Bascom Global Internet Services is instructive. In
that case, the claims recited a hybrid Internet filtering system that provided
the benefits of a filter on a local computer with the benefits of a filter on the
Internet Service Provider server as an improvement to existing technological
filtering processes by adapting many different users' preferences while being
installed remotely in a single location. Bascom Global Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51 (Fed. Cir. 2016) (finding
an inventive concept in a filtering system that associates individual accounts
with their own filtering scheme while locating the system on an ISP server).
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The court emphasized in that case that "[t]he claims do not merely
recite the abstract idea of filtering content along with the requirement to
perform it on the Internet, or to perform it on a set of generic computer
components." Id. at 1350 ("Such claims would not contain an inventive
concept."); see Non-Final Act. 5-6.
Even if we assume that claim 1 recites a new ordered combination of
steps for organizing human activity and sending focused advertising over
social networks and the Internet, the result is the same because all of the
steps individually and as an ordered combination are in the realm of abstract
ideas. E.g., SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed.
Cir. 2018) ("The claims here are ineligible because their innovation is an
innovation in ineligible subject matter."); Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) ("But, a claim for a new
abstract idea is still an abstract idea."); Versata Develop. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (affirming unpatentability of
claims that improved an abstract idea, but not a computer's performance).
Whether its limitations are considered individually or as an ordered
combination, claim 1 lacks an inventive step. It recites generic components
that perform generic functions at a high level of generality involving data
collection and transmission for the abstract idea of linking users via social
networks and targeting them with advertising. See RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract
idea ... to another abstract idea ... does not render the claim non-
abstract."); see also Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093-94 (Fed. Cir. 2016) (patent-ineligible claims were directed to a
combination of abstract ideas). The systems of claims 16 and 3 8 do as well.
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Arguments about preemption (Br. 12-13) are resolved by our§ 101
analysis. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); see also Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (where patent claims
are deemed patent ineligible, "preemption concerns are fully addressed and
made moot").
For the foregoing reasons, we sustain the rejection of claims 1--4, 6-
13, 16, 17, 19-21, 32-35, and 37-39.
Claims 1--4, 6--13, 16, 17, 19-21, 32-35, and 37-39
As Unpatentable Over Kramer and Xiong
The dispute in this rejection is whether Xiong teaches "using a
computer system to automatically create links to other users of other mobile
wireless communications devices using information from at least one of a
first user's other existing Internet social sites" as recited in independent
claims 1, 37, and 39. 2
The Examiner finds that Xiong teaches this step at paragraphs 1 71-
171 and 203 for claims 1, 37, and 39, and at Figure 19 for claims 16 and 38.
See Non-Final Act. 11, 14, 18, 22, 26. Appellant argues that Xiong teaches
to link existing friends that already are registered on Xiong's site, but Xiong
does not use other existing Internet social network sites to create links to
other users from its social network site as claimed. Br. 15. We agree.
2 Independent claims 16 and 38 similarly recite "said computer database
comprising a list of at least some other existing Internet social network sites
of the users of said multi-function social network system, and a list of at
least some other existing social networking links between the users of said
multi-function social network system."
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Xiong teaches that when a user of Xiong's site invites a friend to join
that site, the user can identify and suggest friends of the user to connect with
the new user who is joining Xiong's site. Xiong ,r 171, Fig. 23. The friend
connection can be created automatically through an invite option containing
a list of the user's friends for the new joining friend to choose from. Id. A
group of friends can be invited to connect to each other when they log onto
Xiong's site and users can be invited to join specific group. Id. ,r,r 172, 173.
We find no indication in these teachings of Xiong's site automatically
linking to other social networking sites of a user or even listing other social
networking sites that are separate and independent of Xiong's site. There is
no indication that the groups described in paragraph 1 73 and illustrated in
Figure 23 involve "other existing Internet social network sites" as recited in
all independent claims. These groups on Xiong provide "another way for
people to look up people they already known in that group." Id. ,r 173. The
Examiner has not explained sufficiently how any of these teachings describe
the claimed "other existing Internet social network sites." The Examiner's
statement that Xiong teaches this feature in the embodiment of Figure 19
does not address how the disclosures in paragraphs 171-173 of Xiong teach
this feature for claims 1, 3 7, and 3 9 as the Office Action indicated.
Paragraph 203 of Xiong supports our analysis. It teaches that Xiong's
system makes it easy to invite people to a group by allowing a user to invite
others to join a group on the site, i.e., Xiong's site. A user can suggest the
group to a friend and the system can recommend groups to a user based on
email or show the most popular groups among friends. Id. ,r 203. There is
no indication that these groups reside on other social network sites different
from Xiong's website. Rather, they are groups on Xiong's website.
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The Examiner has not made a sufficient showing that these teachings
involve creating links to other users from a first user's other existing Internet
social network sites. We find no teaching in these paragraphs that Xiong
captures a user's other existing Internet social network sites or lists other
existing Internet social network sites of a user. Nor has the Examiner
explained how the embodiment of Figure 19 of Xiong teaches a list of other
existing Internet social network sites.
Figure 19 of Xiong illustrates a Personalized Weekly Update email
that helps users of Xiong's site find interesting things to do and make plans.
Id. ,r 150. It includes Editorial Picks of interesting events and events posted
by friends of users with their friends' top picks based on the most number of
friends who list an event. Id. ,r,r 152-155.
The Examiner's finding that Figure 19 teaches top pick social sites
with 23 friends (Salsa Sundays) and 11 friends (Masterpieces of Graphic
Design) (Ans. 5) does not explain how Figure 19 teaches "a list of at least
some existing Internet social network sites" as recited in claims 16 and 38 or
creating links automatically to such sites as recited in claims 1, 37, and 39.
This section of top picks among your friends provide "Activities for Next 7
Days." Therefore, it is not clear that these recommended activities also link
to or involve other Internet social networks as claimed, nor has the Examiner
made any findings in this regard. See Final Act. 11, 14; Ans. 5.
Accordingly, we do not sustain the rejection of claims 1, 16, or 37-39
or their dependent claims 2--4, 6-13, 17, 19-21, and 32-35 as unpatentable
over Kramer and Xiong.
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Other Matters
Arguments that the Examiner's actions during prosecution violate the
Administrative Procedures Act (Br. 20-21) are not matters appealable to the
Board. The Board reviews only "adverse decisions of examiners upon
application for patent," that is claim rejections. See 35 U.S.C. § 6(b ). The
Board does not exercise supervisory authority over patent examiners.
Appellant can, among other things, request the Examiner's
Supervisory Patent Examiner to exercise supervisory oversight, or Appellant
can petition the Director to invoke supervisory authority under 37 C.F.R.
§ 1.181(a)(3).
DECISION
We affirm the rejection of claims 1--4, 6-13, 16, 17, 19-21, 32-35,
and 37-39 as directed to a judicial exception under 35 U.S.C. § 101.
We reverse the rejection of claims 1--4, 6-13, 16, 17, 19-21, 32-35,
and 37-39 as unpatentable over Kramer and Xiong.
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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