Ex Parte Shah et al

Patent Trial and Appeal Board

Feb 8, 2017

13027738 (P.T.A.B. Feb. 8, 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.
13/027,738 02/15/2011 Shesha Shah DC-18693 7365
33438 7590 02/10/2017
TERRILE, CANNATTI, CHAMBERS & HOLLAND, LLP
P.O. BOX 203518
AUSTIN, TX 78720
EXAMINER
BANTHRONGSACK, JEFF
ART UNIT PAPER NUMBER
2462
NOTIFICATION DATE DELIVERY MODE
02/10/2017 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):
tmunoz @ tcchlaw. com
kchambers@tcchlaw.com
heather@tcchlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHESHA SHAH and RAJIV NARANG
Appeal 2016-007256
Application 13/027,738
Technology Center 2400
Before ALLEN R. MacDONALD, JON M. JURGOVAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-007256
Application 13/027,738
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 5—7, 11—13, and 17—23. We have jurisdiction under 35 U.S.C.
§ 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphasis added):
1. A computer-implementable method for monitoring
user interactions and generating proactive responses thereto
within a social media environment comprising:
performing conversation monitoring operations within a
social media environment to detect an individual conversation
of a plurality of conversations comprising a target subject, the
individual conversation comprising a set of comments in a
thread of user interactions within the social media environment;
collecting conversation data elements associated with the
individual conversation;
processing the conversation data elements to generate a
contextual text analysis of the conversation data elements;
processing the conversation data elements to generate
social network advocacy data;
processing the contextual text analysis with the social
network advocacy data to generate conversation segment data,
the conversation segment data identifying customer profiles for
social segmentation; and
processing the contextual text analysis to generate a
social network advocacy metric associated with the individual
conversation, the social network advocacy metric providing an
indicator of an affect of interactions within the social media
environment and an effectiveness of proactive responses; and
wherein
2
Appeal 2016-007256
Application 13/027,738
the conversation segment data is further processed with
the social network advocacy data to generate a social network
advocacy conversation index table, the social network
advocacy conversation index table comprising a user ID, a
plurality of conversation segments, external social media
behavior data, online behavior data, registered user data, and
associated SNA data.
Rejections
The Examiner rejected claims 1, 5—7, 11—13, and 17—23 under
35 U.S.C. § 101 because the claimed invention is directed to non-statutory
subject matter.1
The Examiner rejected claims 1, 5—7, 11—13, and 17—23 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Parsons et
al. (US 2007/0214097 Al; pub. Sept. 13, 2007) and Vonarburg et al. (US
2008/0010319 Al; pub. Jan. 10, 2008).2
Section 101 Case Law
Eligibility under 35 U.S.C. § 101 is determined using the Alice/Mayo
framework. Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014).
The first step involves determining whether the claims at issue are directed
to a patent-ineligible concept. Id. at 2355. The second step involves
1 We select claim 1 as representative. Separate patentability is not argued
for claims 5—7, 11—13, and 17—23. Except for our ultimate decision, the
§101 rejection of claims 5—7, 11—13, and 17—23 is not discussed further
herein.
2 We select claim 1 as representative. Separate patentability is not argued
for claims 5—7, 11—13, and 17—23 (all grouped with claim 1). Except for our
ultimate decision, these claims are not discussed further herein.
3
Appeal 2016-007256
Application 13/027,738
determining whether the elements of the claim contain an inventive concept
sufficient to transform a claimed abstract idea into a patent-eligible
application. Mat2357.
The Federal Circuit held that the second step in the Alice/Mayo
framework requires determination of whether the claimed inventive concept
is a technical improvement:
The district court thus concluded f wrongly] that
BASCOM had not asserted adequately that the claims disclose
an inventive concept because the limitations, “considered
individually, or as an ordered combination, are no more than
routine additional steps involving generic computer components
and the Internet, which interact in well-known ways to
accomplish the abstract idea of filtering Internet content.”
[District Court Order, 107 F. Supp. 3d at 655.]
We agree with the district court that the limitations of the
claims, taken individually, recite generic computer, network and
Internet components, none of which is inventive by itself.
BASCOM does not assert that it invented local computers, ISP
servers, networks, network accounts, or filtering. Nor does the
specification describe those elements as inventive.
However, we disagree with the district court’s analysis of
the ordered combination of limitations. ... As is the case here,
an inventive concept can be found in the nonconventional and
non-generic arrangement of known, conventional pieces.
. . . [T]he patent describes how its particular arrangement of
elements is a technical improvement over prior art ways of
filtering such content.
BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349-50 (Fed. Cir. 2016), bracket and emphasis added.
4
Appeal 2016-007256
Application 13/027,738
Appellants ’ Contentions
1. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
When discussing the element of processing the
conversation data elements to generate a contextual text
analysis of the conversation data elements, the examiner cites
to a portion of Parsons which sets forth:
[Appellants quote Parsons, Para. 0046, lines 3 — 8.]
However, it is respectfully submitted that the contextual
text analysis of the conversation data elements as disclosed and
claimed is patentably distinct from the metadata disclosed by
Parsons. More specifically, the Parsons does not disclose or
suggest processing the conversation data elements to generate
social network advocacy data, much less processing the
contextual text analysis with the social network advocacy data to
generate conversation segment data, the conversation segment
data identifying customer profiles for social segmentation, as
required by claims 1, 7, and 13.
App. Br. 4—5, emphasis added.
2. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Additionally, when discussing the element of processing
the contextual text analysis to generate a social network
advocacy metric associated with the individual conversation,
the examiner cites to a portion of Parsons which sets forth:
[Appellants quote Parsons, Para. 0093.]
However, it is respectfully submitted that the social
network advocacy metric associated with the individual
conversation as disclosed and claimed is patentably distinct from
the mapping and measurements disclosed by Parsons. More
specifically, the mapping and measurements of Parsons do not
disclose or suggest a social network advocacy metric which
provides an indicator of an affect of interactions within the social
media environment and an effectiveness of proactive responses,
as required by claims 1,7, and 13.
5
Appeal 2016-007256
Application 13/027,738
App. Br. 5, emphasis added.
3. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Additionally, when discussing the element of processing
the contextual text analysis with the social network advocacy
data to generate conversation segment data, the conversation
segment data identifying customer profiles for social
segmentation, the examiner cites to Vonarburg. More
specifically, the examiner cites to the following portion of
Vonarburg:
[Appellants quote Vonarburg, Para. 0075.]
However, it is respectfully submitted that the mere
disclosure of customer profiles to identify information about a
user is not a disclosure or suggestion of the contextual text
analysis with the social network advocacy data to generate
conversation segment data, much less where the conversation
segment data identifying customer profiles for social
segmentation. Accordingly, nowhere within the cited portion of
Vonarburg (nor anywhere else in Vonarburg) is there any
disclosure or suggestion of processing the contextual text
analysis with the social network advocacy data to generate
conversation segment data, much less where the conversation
segment data identifying customer profiles for social
segmentation, as required by claims 1, 7 and 13.
App. Br. 5—6, emphasis added.
4. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
Additionally, when discussing the element of the
conversation segment data is further processed with the social
network advocacy data to generate a social network advocacy
conversation index table, where the social network advocacy
conversation index table comprises a user ID, a plurality of
conversation segments, external social media behavior data,
online behavior data, registered user data, and associated SNA
data, the examiner cites to a plurality of portions of Parsons,
many of which are referenced in Figure 2A of Parsons.
6
Appeal 2016-007256
Application 13/027,738
However, these portions of Parsons merely disclose and discuss
examples of social media which are included within an Online
Content Universe (see e.g., Parsons, Paragraph [0044]). There is
no disclosure or suggestion within the cited portions of Parsons
(or anywhere else in Parsons) of generating a social network
advocacy conversation index table, much less such a table which
comprises a user ID, a plurality of conversation segments,
external social media behavior data, online behavior data,
registered user data, and associated SNA data. This deficiency of
Parsons is not cured by Vonarburg.
Accordingly, nowhere within Parsons nor Vonarburg,
taken alone or in combination, is there any disclosure or
suggestion of the conversation segment data is further processed
with the social network advocacy data to generate a social
network advocacy conversation index table, much less where the
social network advocacy conversation index table comprises a
user ID, a plurality of conversation segments, external social
media behavior data, online behavior data, registered user data,
and associated SNA data, all as required by claims 1, 7 and 13.
App. Br. 6—7, emphasis added.
5. Appellants contend that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 101 because:
The claims are directed to novel and non-obvious
technology and go far beyond an abstract idea and simply
implementing the abstract idea on general purpose computer.
The present claims are directed toward something much
narrower than an abstract concept and include an inventive
concept.
Reply Br. 2, emphasis added.
[T]he Examiner ignores the specific details of the claim
elements and states “[t]he claimed invention as whole is directed
to detailed monitoring and analysis of human conversations in a
social media environment.” The Examiner then quotes to each
element of the claims and sets forth that these elements “are
similar to the concepts that have been identified as abstract ideas
7
Appeal 2016-007256
Application 13/027,738
in Cyberfone (i.e., using categories to organize, store and
transmit information).” Examiner’s Answer, Page 3.
Reply Br. 2, emphasis added.
As with Bascom, the inventive concept is a technological
improvement that has been found to be both novel and
non-obvious aside from the implementation on a computer.
The inventive concept in claims 1, 7, 13 and 21 monitors user
interactions and generates proactive responses thereto within a
social media environment and includes the significant limitations
of:
[Appellants quote the entire body of claim 1.]
Thus, clearly claims 1,7, 13 and 21 do not merely apply
the concept of “monitoring user interactions and generating
proactive responses thereto within a social media environment”
on a computer. Thus, as with Bascom, the claims herein are
“more than a drafting effort designed to monopolize the [abstract
idea].” Alice, 134 S. Ct. at 2357. Instead, the claims may be read
to “improve]] an existing technological process A Id. at 2358
(discussing the claims in Diehr, 450 U.S. 175). Bascom, p. 17.
Reply Br. 4, emphasis added.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to
non-statutory subject matter?
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
Appeal Brief arguments (Appeal Brief and Reply Brief) that the Examiner
has erred.
As to Appellants’ above contentions 1—4, we disagree. We do not
find where Appellants actually explain the cited claim language and why
8
Appeal 2016-007256
Application 13/027,738
that limitation is not disclosed or suggested by the cited prior art. Rather,
Appellants merely recite the language of claim 1 and assert the cited prior art
reference does not disclose or suggest the claim limitations. Without more,
this fails to constitute a sufficient argument on the merits. See 37 C.F.R.
§ 41.37(c)(l)(iv); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
As to Appellants’ above contention 5, Appellants begin by arguing, as
second step of the Alice test, that the Examiner has ignored the specific
details of the claim which is a technological improvement. We disagree.
Appellants assert “[t]he inventive concept. . . monitors user
interactions and generates proactive responses thereto within a social media
environment.” Reply Br. 4, emphasis added. Appellants then recite the
entire body of claim 1 without further elaboration as to (a) how the asserted
inventive concept of generating proactive responses3 is set forth in the body
of claim 1, and (b) why either the monitoring user interactions or generating
proactive responses is the required technological improvement.
Although the phrase “generating proactive responses” appears in the
preamble of claim 1, we deem this to be solely a statement of intended use
as none of the steps, in the body of claim 1, individually or in any
combination yield this as their result. Rather, the steps in the body of claim
1 are directed to monitoring and collecting user social media interactions and
therefrom generating a metric and data table. Claim 1 does not recite
performing steps to yield proactive responses based on the metric. As we
conclude claim 1 does not recite steps to generate proactive responses, we do
not reach whether generating such proactive responses is a technical
3 We deem Appellants’ monitoring user interactions to be self-evident in the
body of claim 1.
9
Appeal 2016-007256
Application 13/027,738
improvement sufficient to render claim 1 “amounts to significantly more
than a patent upon the [abstract idea] itself.” Alice, 134 S. Ct. at 2355
(citation omitted).
As to the “monitoring user interactions” of claim 1, we conclude that
the improvement is an improved metric quantifying the affect of social
interaction, that is, an improved abstract idea. See Spec. 9. Further, in
contrast to BASCOM, we conclude claim 1 contains no technical solution.
To the extent claim 1 adds anything to the abstract idea (i.e., monitoring and
collecting user social media interactions and therefrom generating a metric
and data table), it is a statement of the intended use of the abstract idea.
Unlike the claims at issue in BASCOM, claim 1 does not introduce a
technical advance or improvement. It contains nothing that “amounts to
significantly more than a patent upon the [abstract idea] itself.” Id. See
Synopsys, Inc. v. Mentor Graphics Corporation, 839 F.3d 1138, 1152
(2016).
CONCLUSIONS
(1) The Examiner did not err in rejecting claims 1, 5—7, 11—13, and
17—23 under 35 U.S.C. § 101, as being directed to non-statutory subject
matter.
(2) The Examiner did not err in rejecting claims 1, 5—7, 11—13, and
17—23 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1, 5—7, 11—13, and 17—23 are not patentable.
10
Appeal 2016-007256
Application 13/027,738
DECISION
The Examiner’s rejection of claims 1, 5—7, 11—13, and 17—23 under
35 U.S.C. § 101, as being directed to non-statutory subject matter, is
affirmed.
The Examiner’s rejection of claims 1, 5—7, 11—13, and 17—23 as being
unpatentable under 35 U.S.C. § 103(a) 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
11