Ex Parte Sutton-Shearer

Patent Trial and Appeal Board

Feb 24, 2017

12770471 (P.T.A.B. Feb. 24, 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.
12/770,471 04/29/2010 Drake Sutton-Shearer 113096.001US1 9793
79804 7590 02/28/2017
Duncan Galloway Egan Greenwald, PLLC
9750 Ormsby Station Road, Suite 210
Louisville, KY 40223
EXAMINER
OFORI-AWUAH, MAAME
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
kduncan@dgeglaw.com
c arnold @dgeglaw.com
jlindner@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DRAKE SUTTON-SHEARER
Appeal 2015-003977
Application 12/770,4711
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Drake Sutton-Shearer (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-19. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
1 The Appellant identifies Bimodall LLC as the real party in interest.
Appeal Br. 2.
Appeal 2015-003977
Application 12/770,471
THE INVENTION
Claim 8, reproduced below, is illustrative of the subject matter on
appeal.
8. A computer-implemented method of hosting a social network,
wherein the method is implemented in a server configured to host
webpages that define views of the social network, and to transmit the
webpages to client computing platforms that request the webpages
over a network, the server comprising one or more processors
configured to execute one or more computer program modules, the
method comprising:
executing, on the one or more processors of the server, one or
more computer program modules configured to assemble webpages
defining views of a wall associated with a first entity;
executing, on the one or more processors of the server, one or
more computer program modules configured to maintain associations
between entities that use the social network;
executing, on the one or more processors of the server, one or
more computer program modules configured to transmit a certificate
from a second entity to the first entity;
executing, on the one or more processors of the server, one or
more computer program modules configured to make, responsive to
the certificate being a private certificate, the certificate viewable on
the wall of the first entity by other entities that are associated with the
second entity and to make the certificate hidden on the wall of the
receiving entity from other entities that are not associated with the
second entity; and
executing, on the one or more processors of the server, one or
more computer program modules configured to make, responsive to
the certificate being a public certificate, the certificate viewable by
other entities on the wall of the first entity without regard for
associations with the second entity.
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Appeal 2015-003977
Application 12/770,471
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Morgenstem US 2008/0189188 A1 Aug. 7,2008
Fuste Vilella US 2010/0208662 A1 Aug. 19,2010
Calderon, Sara Ines, “How to Protect Your Privacy with Facebook’s
New Privacy Settings in 17 Easy Steps.” Jan. 2010.
http://www.insidefacebook.com/2010/01 /19/how-to-protect-your-
privacy-withfacebook%E2%80%99s-new-privacy-settings-in-17-
easy-steps/ [Calderon].
The following rejections are before us for review:
1. Claims 1—19 are rejected under 35 U.S.C. §101 as being directed to
non-statutory subject matter.
2. Claims 1—4, 6—11, 13—17, and 19 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Morgenstem and Calderon.
3. Claims 5, 12 and 18 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Morgenstem, Calderon, and Fuste Vilella.
ISSUES
Did the Examiner err in rejecting claims 1—19 under 35 U.S.C. §101
as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1—4, 6—11, 13—17, and 19
under 35 U.S.C. § 103(a) as being unpatentable over Morgenstem and
Calderon?
Did the Examiner err in rejecting claims 5, 12 and 18 under 35 U.S.C.
§103 (a) as being unpatentable over Morgenstem, Calderon and Fuste
Vilella?
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Appeal 2015-003977
Application 12/770,471
ANALYSIS
The rejection of claims 1-19 under 35 U.S.C. §101 as being directed to non-
statutory subject matter.
All the claims on appeal are rejected. But no claim with all its
limitations is specifically analyzed. Rather, the claims are treated as a group
and generally found to be “directed to . . . managing the privacy of content
posted on a social network . . . [and thus] drawn to an abstract idea [and] do
not recite limitations that are ‘significantly more’ than the abstract idea.”
Ans. 8. We agree with the Appellant that “[t]he present invention describes
a much more detailed system than is suggested by the Examiner’s ...
shorthand description and analysis.” Reply Br. 4. A plain reading of the
claims bears this out.
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355. Emphasis added.
The “directed to” inquiry [ ] cannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every routinely
patent-eligible claim involving physical products and actions involves
a law of nature and/or natural phenomenon—after all, they take place
in the physical world. See Mayo, 132 S. Ct. at 1293 (“For all
inventions at some level embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas.”) Rather, 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.” Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see
Genetic Techs. Ltd. v. Merial L.L.C., 2016 WF 1393573, at *5 (Fed.
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Appeal 2015-003977
Application 12/770,471
Cir. 2016) (inquiring into “the focus of the claimed advance over the
prior art”).
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
In addressing the first step of the section 101 inquiry, as applied
to a computer-implemented invention, it is often helpful to ask
whether the claims are directed to “an improvement in the functioning
of a computer,” or merely “adding conventional computer
components to well-known business practices.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1338 (Fed. Cir. 2016).
Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016). The Specification supports viewing the claims as being directed
more toward the former category than the latter.
The Specification (para. 1) explains:
The invention relates to a system and method for hosting a
social network that recognizes associations other than social
relationships separately from social relationships for purposes of
information privacy management, and that provides control over the
privacy of individual pieces of information released over the social
network to facilitate use of the social network by entities like
corporations or companies, schools, charitable organizations,
government departments, and/or other entities.
According to the Specification, the invention is directed to social networks
and seeks to solve a problem of information privacy management with
respect to them. The inventor has solved this problem by including a
mechanism to control privacy. “One aspect of the invention relates to a
system and method for hosting a social network that enables entities to
particularly manage the privacy level of content posted on the social
network.” Spec. para. 4. Specifically, all the claims call for, inter alia,
“modules configured to make, responsive to [a] certificate being a private
certificate, the certificate viewable on [a] wall of [a] first entity by other
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Application 12/770,471
entities that are associated with [a] second entity and to make the certificate
hidden on the wall of the receiving entity from other entities that are not
associated with the second entity.” Independent claim 8 (the other
independent claims 1 and 15 include similar limitations).
The record supports finding the focus of the invention — that is, when
reading the claims as a whole in light of the Specification — to be solving a
problem with the way social networks handle private information, not
privacy per se. The problem with controlling private information in social
networks is not itself necessarily patent-ineligible. And the advance over the
prior art is not simply “managing the privacy of content posted on a social
network” (Ans. 8) but in an improvement in the mechanism by which social
networks manage information privacy. For these reasons, we do not find the
record to adequately support a determination that “the claims at issue are
directed to one of those patent-ineligible concepts,” such as an abstract idea
{Alice, 134 S. Ct. at 2355) as the Examiner found.
Having made this threshold determination under step one of the Alice
framework, we need not move to the second step.
For the foregoing reasons, the record does not support the
determination that the claimed subject matter is judicially-excepted from
patent eligibility under § 101. Accordingly, the rejection is not sustained.
The rejection of claims 1-4, 6-11, 13-17 and 19 under 35 U.S.C. §103(a) as
being unpatentable over Morgenstern and Calderon.
All the claims require “modules configured to make, responsive to [a]
certificate being a private certificate, the certificate viewable on [a] wall of
[a] first entity by other entities that are associated with [a] second entity and
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Application 12/770,471
to make the certificate hidden on the wall of the receiving entity from other
entities that are not associated with the second entity.” Independent claim 8
(the other independent claims 1 and 15 include similar limitations).
According to the Examiner, said claim limitations are disclosed in
Calderon.
Calderon teaches privacy settings of the Facebook website, where a
user can select “friend of friends” to view posts by friends on the
receiving user's wall (see page 3). Therefore, when a friend posts (the
gift" on the user's wall, the friend of the posting friend can view the
"gift" on the receiving user's wall.
Final Rej. 4.
We have reviewed Calderon but do not find there disclosure of said
claim limitations. Calderon discloses a privacy setting ranging from
“Everyone” to more restrictive groups like “Only Friends” or “Friends of
Friends.” The setting can be customized. But this simply restricts the
people viewing content posted on a wall.
The claims, however, describe a privacy management mechanism
whereby certificates are transmitted by a first entity to a wall of a second
receiving entity. When the certificate is private, the entities associated with
the second receiving entity can view it on the wall but entities not associated
with the second receiving entity cannot. Nothing in Calderon would lead
one to this; that is, to control privacy on a receiving entity’s wall by way of a
transmitting entity’s private certificate, as claimed.
For the foregoing reasons, a prima facie case of obviousness for the
claimed subject matter has not been made out in the first instance by a
preponderance of the evidence. Accordingly, the rejection is not sustained.
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Appeal 2015-003977
Application 12/770,471
The rejection of claims 5, 12 and 18 under 35 U.S.C. §103(a) as being
unpatentable over Morgenstern, Calderon and Fuste Vilella.
The claims here rejected depend from claims whose rejection has not
been sustained as discussed above. The rejection of these claims is also not
sustained for the same reasons.
CONCLUSIONS
Claims 1-19 are rejected under 35 U.S.C. §101 as being directed to
non-statutory subject matter is not sustained.
The rejection of claims 1—4, 6—11, 13—17, and 19 under 35 U.S.C.
§103 (a) as being unpatentable over Morgenstern and Calderon is not
sustained.
The rejection of claims 5, 12 and 18 under 35 U.S.C. §103(a) as being
unpatentable over Morgenstern, Calderon, and Fuste Vilella is not sustained.
DECISION
The decision of the Examiner to reject claims 1—19 is reversed.
REVERSED
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