Ex Parte Whitnah et al

Patent Trial and Appeal Board

May 15, 2017

12194511 (P.T.A.B. May. 15, 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.
12/194,511 08/19/2008 Thomas Scott Whitnah 26295-14293 6765
87851 7590
F acebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
05/17/2017 EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
05/17/2017 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):
ptoc @ fenwick.com
fwfacebookpatents @ fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS SCOTT WHITNAH,
ALEXANDER MATTHEW RUSH,
DING ZHOU, and RUCHI SANGHVI
Appeal 2015-001165
Application 12/194,511
Technology Center 3600
Before ANTON W. FETTING, JAMES A. WORTH, and
BRUCE T. WIEDER, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Thomas Scott Whitnah, Alexander Matthew Rush, Ding Zhou, and
Ruchi Sanghvi (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 1—7, 9-17, and 19—31, the only claims pending in the
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 24, 2014) and Reply Brief (“Reply Br.,” filed October 23,
2014), and the Examiner’s Answer (“Ans.,” mailed August 27, 2014), and
Final Action (“Final Act.,” mailed April 17, 2014).
Appeal 2015-001165
Application 12/194,511
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellants invented social networking websites that allow third
party application developers to provide applications for users of the social
networking website to install and run. Spec. para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer implemented method comprising:
[1] providing access to a plurality of applications provided by
third-party developers on a social networking system;
[2] receiving information about a plurality of interactions of a
plurality of users of the social networking system,
the interactions relating to one or more of the
applications,
each interaction associated with one of a plurality of
action types,
each action type associated with a measure of affinity of
a user for an application;
[3] aggregating the interactions of the plurality of users for a
subject application of the plurality of applications based on the
action types;
[4] calculating, by the social networking system, a user affinity
score for the subject application
indicating affinity of the users of the social networking
system for the application,
the user affinity score based at least in part on the
aggregated interactions, weighted based on the action
types of the interactions;
and
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[5] storing the user affinity score of the application in a
computer readable medium.
The Examiner relies upon the following prior art:
Goodwin
Nilsen
Schirmer
Tuttle
Bovenschulte
Gassewitz
US 2003/0135818 A1
US 2005/0228775 A1
US 2006/0149731 A1
US 2006/0218141 A1
US 2007/0136753 A1
US 2009/0193097 A1
July 17, 2003
Oct. 13, 2005
July 6, 2006
Sept. 28, 2006
June 14, 2007
July 30, 2009
Groebner Business Statistics: A Decision Making Approach, Charles E.
Merrill Publishing Co., Columbus, Ohio, 1981
Boslet "Two different neighborhoods in cyberspace: Virtual worlds,
social networks may intersect". Knight Ridder Tribune News Service,
Washington: Aug 7, 2007. pg. 1
Claims 1—7, 9—17, and 19-31 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1—4, 9, 10, 14—16, 20-22, and 26—28 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Nilsen, Schirmer, Boslet, and
Bovenschulte.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Nilsen, Schirmer, Boslet, Bovenschulte, and Groebner.
Claims 11—13 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nilsen, Schirmer, Boslet, Bovenschulte, and Tuttle.
Claims 23—25 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Nilsen, Schirmer, Boslet, Bovenschulte, and Gassewitz.
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Claims 29-31 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Nilsen, Schirmer, Boslet, Bovenschulte, and Goodwin.
Claims 6, 7, and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nilsen, Schirmer, Boslet, Bovenschulte, Goodwin, and
Groebner.
ISSUES
The issues of statutory subject matter turn primarily on whether the
claims are directed to more than a mathematical algorithm for computing a
score. The issues of obviousness turn primarily on the patentable weight
afforded the data labels, and to the extent such weight is afforded, whether
the references describe steps within the scope of the claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Nilsen
01. Nilsen is directed to providing personalized web site
navigation. Nilsen para. 2.
02. Nilsen describes dynamically adaptively personalizing a
navigation control for navigating a web site. Based on collected
behaviors for a user, a navigation control is dynamically updated
to link to that portion of the web site that may be of most interest
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to the user. Three personalized navigation controls for accessing
portions of the web site are dynamically arranged on a web page
displayed to the user. Nilsen para. 22.
03. Nilsen describes a personalized header provided on each web
page of a web site for a user whenever the user is logged in to the
web site. The web site may include several different portions,
herein referred to as properties. Each of the properties may be
associated with a particular category. Further, each of the
navigation links may be a link to one of the properties of the web
site. Properties may include categories such as address book,
calendar, chat, city guides, education, finance, groups, movies,
news, photos, sports, weather, and the like. Each property may
have its own associated web server. Nilsen para. 24.
04. Nilsen describes for each user, a determination being made for
each property as to whether the usage of the property by the user
reached a threshold that is associated with the property. In one
embodiment, “usage” is measured as the number of days over the
last thirty days that the user visited the property. In this
embodiment, the threshold for each property may be defined as
the number of days in the last thirty days that user must have
visited the property while logged in, in order for the threshold to
be met. In one embodiment, the determination is made every
three days covering a thirty day rolling window. Nilsen para. 48.
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Schirmer
05. Schirmer is directed to deriving an affinity relationship between
two or more objects based on their interaction with each other.
Schirmer para. 2.
06. Schirmer is used to discover relationships that may otherwise
be undetected by building on any type of implicit relationship and
using thresholds to achieve a higher level of confidence about the
proposed relationship. Extended relationship information may be
obtained by aggregating affinity results for one or more object
properties. Schirmer para. 8.
07. Schirmer describes deriving affinity relationships between a
plurality of objects. As the objects interact with each other, the
system learns which objects interact most. According to various
embodiments of the invention, an affinity score may be kept for
each object indicating its level of interaction with other objects
across an organization. Schirmer para. 20.
08. Schirmer describes observed interactions being viewed in the
aggregate based on a shared attribute of one of the interacting
objects. For example, a document object may be aggregated on
attributes such as topic, author, printing location, storage location,
and/or other attributes. From this aggregation, extended
relationship information may be obtained. For example,
aggregation on a storage location, such as a building number, may
indicate that computers in a particular building have an affinity for
a certain topic. Schirmer para. 33.
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09. Schirmer describes how the information stored in a relationship
database may be queried to find resources related to a certain
topic. For example, a user may wish to find an expert on
programming languages. A search of the relationship database
may indicate that objects about programming languages are often
printed at a particular printer. Thus, the user can frequently visit
the printer location to read documents about programming or to
meet people who frequently print documents about programming.
Schirmer para. 34.
Boslet
10. Boslet is directed to describing how virtual worlds and social
networks intersect. Boslet Title.
11. Boslet describes providing access to a plurality of applications
provided by third-party developers on the Facebook social
networking system. Boslet 1.
Bovenschulte
12. Bovenschulte is directed to cross-platform predictive popularity
ratings for use in interactive television applications. Bovenschulte
para. 1.
13. Bovenschulte describes more sophisticated algorithms being
used to analyze the cross-platform. For example, some user
interactions may be more indicative of user interest in a particular
program than others and may therefore be more significant in
determining predictive popularity ratings. Different weights or
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significance may be assigned to various elements of the collected
cross-platform data. Bovenschulte para. 47.
14. Bovenschulte describes user interaction data being weighted
based on the type user interactions that are monitored. For
example, selecting a program listing to access the program's
description may be less significant than setting up a program
reminder or recording. As another example, selecting a single
program listing at particular time slot may be more significant
than selecting two or more program listings for the same time slot.
Bovenschulte para. 48.
15. Bovenschulte describes user interaction data being weighted
based on the time the monitored interaction takes place, the
particular interactive television application in which user
interactions are monitored, the type of platform on which user
interactions are monitored, and the type of user that is monitored.
Bovenschulte paras. 49-52.
ANALYSIS
Claims 1—7, 9—17, and 19—31 rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
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those patent-ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132
S. Ct. 1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case’s claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
The preamble to claim 1 does not recite what the claim is to. The four
steps in claim 1 result in computing and storing a score. The Specification at
para. 10 recites that the invention relates to ability to determine a numeric
value as the user affinity metric for an application. Thus, all this evidence
shows is that claim 1 is directed to creating a metric, i.e. a mathematical
algorithm.
It follows from prior Supreme Court cases, and Bilski in particular, that
the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of a mathematical algorithm is a fundamental
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intellectual practice long prevalent in our system of mathematics. The use of
algorithms is also a building block of abstract thinking. Thus, mathematical
algorithms, like hedging, is an “abstract idea” beyond the scope of §101.
See Alice Corp. Pty. Ltd., 134 S. Ct. at 2355—56. See also Gottschalkv
Benson, 409 U.S. 63 (1972).
As in Alice Corp. Pty. Ltd., we need not delimit the precise contours of
the “abstract ideas” category in this case; it is enough to recognize that there
is no meaningful distinction in the level of abstraction between the concept
of risk hedging in Bilski and the concept of a mathematical algorithm at
issue here. Both are squarely within the realm of “abstract ideas” as the
Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
The remaining claims merely describe parameters and algorithm details.
We conclude that the claims at issue are directed to a patent-ineligible
concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
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ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Id. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, aggregate, compute and store data amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of computing a score as performed by a generic
computer. The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. Instead, the claims at issue amount
to nothing significantly more than an instruction to apply the abstract idea of
computing a score using some unspecified, generic computer. Under our
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precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See id. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Id.
Claims 1—4, 9, 10, 14—16, 20—22, and 26—28 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nilsen, Schirmer, Boslet, and Bovenschulte
Claims 1—7, 9—13, and 21—29 are method claims and the remaining are
apparatus claims.
Claims 14 and 21 are apparatus claims with three recited parts, a
computer-readable medium, an action type score server module, and a user
affinity score server module. Although two of these parts are labeled as
modules, the claim does not recite any manner in which the word module
affects the structure or function of the parts.
As to structural inventions, such claims must be distinguished from the
prior art in terms of structure rather than function, see, e.g., In re Schreiber,
128 F.3d 1473, 1477—78 (Fed. Cir. 1997). In order to satisfy the functional
limitations in an apparatus claim, however, the prior art apparatus as
disclosed must be capable of performing the claimed function. Id. at 1478.
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When the functional language is associated with programming or some other
structure required to perform the function, that programming or structure
must be present in order to meet the claim limitation. Typhoon Touch
Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing
Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d
1367 (Fed. Cir. 2008)). In some circumstances generic structural disclosures
may be sufficient to meet the functional requirements, see Ergo Licensing,
LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing
Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376—77 (Fed. Cir.
2010)).
No patentable weight is accorded the modifiers “action type score” and
“user affinity score” therefore because they are at best a description of the
use to which the parts are put and do not limit the structure of the parts.
Also, a structural invention is not distinguished by the work product it
operates upon, such as data in a computer. “[Expressions relating the
apparatus to contents thereof during an intended operation are of no
significance in determining patentability of the apparatus claim.” Ex parte
Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “inclusion of
material or article worked upon by a structure being claimed does not impart
patentability to the claims.” In re Otto, 312 F.2d 937, 940 (CCPA 1963).
Claim 1 recites five steps, viz., providing access to a plurality of
applications; receiving information about X; aggregating X; calculating Y;
and storing Y, where X is labeled as a plurality of interactions of a plurality
of users of the social networking system, the interactions relating to one or
more of the applications, each interaction associated with one of a plurality
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of action types, and each action type associated with a measure of affinity of
a user for an application, and Y is labeled as a user affinity score for the
subject application indicating affinity of the users of the social networking
system for the application. The calculation of Y is based on the aggregated
X, weighted based on Z, and Z is labeled as action types of the interactions.
Thus the claim is really to providing access and then receiving and
aggregating data, computing some result based on the aggregations weighted
by some other input, and storing the result. Nothing in the claim depends on
or enforces the perceptual labels the claim suggests. Mental perceptions of
what data represents are non—functional and given no weight. King Pharm.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“[T]he
relevant question is whether ‘there exists any new and unobvious functional
relationship between the printed matter and the substrate.’”) (citations
omitted). See also In re Lowry, 32 F.3d 1579, 1583 (Fed.Cir.1994)
(describing printed matter as “useful and intelligible only to the human
mind”) (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969)). Data
labels are just examples of such mental perceptions. Data, being a
succession of binary digits, are just those digits, not perceptual labels of
those digits. The binary digits may impose some functional consequence,
but absent some recitation of how so, such consequence is not an issue.
As to the apparatus claims, the Examiner finds that Nilsen provides the
access, and receives and aggregates the data. Schirmer describes scoring to
rank affinity relationships and Bovenschulte describes the benefits of
weighting parameters for scoring statistics. Final Act. 2—5. The above facts
support this, and Appellants do not argue this so far as this goes. Appellants
argue the perceptual nature of the data. As we find supra, as to the apparatus
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claims, these findings are sufficient to show the prior art has the capacity to
perform the recited functions and therefore the prior art describes the
structural limitations of those claims. As to the method claims, again no
patentable weight is afforded perceptual data labels.
But even were we to afford such weight, the claim limitations are
sufficiently broad to encompass the prior art applied. As to the recited
interactions relating to one or more of the applications, each interaction
associated with one of a plurality of action types, each action type associated
with a measure of affinity of a user for an application, the manner, degree,
and implementation of such relating and associations are neither recited nor
narrowed. They are not necessarily explicit or recorded, but may be implicit
in the nature of the data.
Schirmer describes deriving affinity relationships between a plurality of
objects and aggregates based on a shared attribute of one of the interacting
objects. For example, a document object may be aggregated on attributes
such as topic, author, printing location, storage location, and/or other
attributes. Thus, Schirmer describes receiving information about a plurality
of interactions of a plurality of users upon document objects of the social
networking system, the interactions relating to one or more of the
applications that affect document objects, each interaction associated with
one of a plurality of action types such as describing a topic, identifying an
author, designating a printing location or storage location, each action type
associated with a measure of affinity of a user for an application.
Schirmer then describes aggregating the interactions of the plurality of
users for a subject application of the plurality of applications based on these
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action types. Schirmer describes as an example a user may wish to find an
expert on programming languages. A search of the relationship database
may indicate that objects about programming languages are often printed at
a particular printer. Thus, the user can frequently visit the printer location to
read documents about programming or to meet people who frequently print
documents about programming. Thus the aggregation totals become scores
that are compared to find the users’ affinities for most promising
interactions. As Bovenschulte describes the value of weighting statistics
based on user interest, one of ordinary skill would have immediately
foreseen the benefits of weighting the interactions in Schirmer by the nature
or types of interactions as they characterize such interests.
Claim 5 rejected under 35 U.S.C. § 103(a) as unpatentable over Nilsen,
Schirmer, Boslet, Bovenschulte, and Groebner
Claim 5 further recites the user affinity score represents a probability of
a user taking an action of a specific action type when presented with a
specific application. Claim 5 recites no further step, but only characterizes
the mental perception of the data label. Again, mental perception from a
data label is afforded no patentable weight. Even granting such weight,
claim 5 does not recite or narrow the manner of representation, how a
probability is expressed, or the degree of precision and accuracy of such a
probability. More importantly, no degree or manner of specificity is recited.
As Schirmer aggregates the instances of user interactions with objects, such
aggregates form a collection of likelihoods that actions involving those
objects are performed. All objects with a specific object may be
characterized as a specific action type where type relates to the object.
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Claims 11—13 and 19 rejected under 35 U.S.C. § 103(a) as unpatentable
over Nilsen, Schirmer, Boslet, Bovenschulte, and Tuttle
These claims are not separately argued.
Claims 23—25 rejected under 35 U.S.C. § 103(a) as unpatentable over
Nilsen, Schirmer, Boslet, Bovenschulte, and Gassewitz
These claims are not separately argued.
Claims 29—31 rejected under 35 U.S.C. § 103(a) as unpatentable over
Nilsen, Schirmer, Boslet, Bovenschulte, and Goodwin
These claims are not separately argued.
Claims 6, 7, and 17 rejected under 35 U.S.C. § 103(a) as unpatentable over
Nilsen, Schirmer, Boslet, Bovenschulte, Goodwin, and Groebner
These claims are not separately argued.
CONCLUSIONS OF LAW
The rejection of claims 1—7, 9-17, and 19-31 under 35 U.S.C. § 101 as
directed to non-statutory subject matter is proper.
The rejection of claims 1—4, 9, 10, 14—16, 20-22, and 26—28 under 35
U.S.C. § 103(a) as unpatentable over Nilsen, Schirmer, Boslet, and
Bovenschulte is proper.
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The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable over
Nilsen, Schirmer, Boslet, Bovenschulte, and Groebner is proper.
The rejection of claims 11—13 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Nilsen, Schirmer, Boslet, Bovenschulte, and Tuttle is
proper.
The rejection of claims 23—25 under 35 U.S.C. § 103(a) as unpatentable
over Nilsen, Schirmer, Boslet, Bovenschulte, and Gassewitz is proper.
The rejection of claims 29-31 under 35 U.S.C. § 103(a) as unpatentable
over Nilsen, Schirmer, Boslet, Bovenschulte, and Goodwin is proper.
The rejection of claims 6, 7, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Nilsen, Schirmer, Boslet, Bovenschulte, Goodwin, and
Groebner is proper.
DECISION
The rejection of claims 1—7, 9-17, and 19-31 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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