Ex Parte Wolchok et al

Patent Trials and Appeals Board

May 3, 2019

13601666 - (D) (P.T.A.B. May. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/601,666 08/31/2012 Scott W. Wolchok
91230 7590 05/07/2019
Baker Botts L.L.P./Facebook Inc.
2001 ROSS A VENUE
SUITE 900
Dallas, TX 75201
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.
079894.0681 1044
EXAMINER
JACOBS, EDWARD
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
05/07/2019 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT W. WOLCHOK, JONATHAN P. DANN, and
NICHOLAS HAGE SCHROCK
Appeal2018-004555
Application 13/601,666 1
Technology Center 2100
Before JUSTIN BUSCH, JASON J. CHUNG, and
BETH Z. SHAW, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Non-
Final Rejection of claims 1-15. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
INVENTION
The invention relates to information management, including
information storage, retrieval, and processing. Spec. ,r 1.
1 According to Appellants, Facebook, Inc. is the real party in interest. App.
Br. 3.
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Claim 1 is illustrative of the invention and is reproduced below:
1. A method by one or more computing systems of an
online social network, comprising:
receiving, at the one or more computing systems from a
third-party system, a call to a self-documenting API comprising
a query for a data structure of a specific data type to be retrieved
from one or more graphs associated with a social-networking
system stored in one or more data stores, each of the graphs
comprising a plurality of nodes arranged in a hierarchical
structure, the plurality of nodes corresponding to a plurality of
data items, respectively, the plurality of data items being of a
plurality of data types;
retrieving, by the one or more computing systems, a
definition for the specific data type, the definition specifying the
data structure for the specific data type, the data structure
including (1) a name of the specific data type, and (2) for each of
one or more fields of the data structure, a name and a description
of the field;
sending, from the one or more computing systems to the
third-party system, instruction for presenting the retrieved data
structure at the third-party system in response to the call, wherein
all fields of the retrieved data structure are presented in a
hierarchical list arranged in a specific hierarchical format with
notations corresponding to ( 1) the name of the specific data type
and (2) the names and the descriptions of the fields of the data
structure, and wherein the specific hierarchical format
corresponds to the query of the data structure;
receiving, at the one or more computing systems from the
third-party system, a data query expressed in a format
corresponding to the data structure specified in the definition, the
data query requesting one or more of the data items of the
plurality of data items;
retrieving, by the one or more computing systems using
the data query, the requested data items from the graphs; and
sending, from the one or more computing systems to the
third-party system, the one or more of the retrieved data items in
response to the data query.
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REJECTIONS AT ISSUE2
Claims 1-15 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter. Non-Final Act. 6-11.
Claims 1, 3, 5, 7, 9, 11 and 13-15 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over the combination of Fisher (US
2012/0110560 Al; published May 3, 2012) and Shrufi (US 2007/0174304
Al; published July 26, 2007). Non-Final Act. 11-18.
Claims 2, 6 and 10 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Fisher, Shrufi and Gaw lick (US
6,377,953 Bl; published April 23, 2002). Non-Final Act. 18-19.
Claims 4, 8 and 12 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Fisher, Shrufi and Champion (US
2009/0006429 Al; published January 1, 2009). Non-Final Act. 19-20.
ANALYSIS
I. Claims 1-15 Rejected Under 35 U.S.C. § 1 OJ
A. The Examiner's Conclusions and Appellants' Arguments
The Examiner concludes the present claims are directed to mental
processes-namely, "collecting, recognizing and storing data" and more
specifically using a mental process to "(1) create an index ... (2) use the
index to search for and retrieve data." Non-Final Act. 7-9, 20-23; Ans. 3-9.
The Examiner also determines the present claims do not amount to
significantly more than an abstract idea because the Examiner finds the
abstract idea is implemented on a computer using generic components that
2 The double patenting rejection is withdrawn. Ans. 3.
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are well-understood, routine, and conventional activities previously known
to the industry. Non-Final Act. 7-11, 20-23; Ans. 9-12.
Appellants argue the claims are directed to a specific improvement in
computer capabilities because they recite a particular technical solution for
dealing with an unknown application programming interface ("API") of an
online social network and unknown methods of calling the particular data
structures of the online social network through the application programming
interface. App. Br. 10-12; Reply Br. 1--4. Citing the six step process recited
in claim 1, Appellants argue the steps require that a machine plays "a
significant part in permitting the claimed method to be performed" that
distinguish the claims from abstract ideas identified by the Supreme Court in
Alice (i.e., a fundamental economic practice, a method of organizing human
activity, an idea of itself, or a mathematical relationship or formula). App.
Br. 11-12.
Appellants argue the present claims are directed to providing a
specific technological improvement to the use of an API using social
networking services. App. Br. 12-17; Reply Br. 3--4. Additionally,
Appellants argue that the present claims are patent eligible because they do
not preempt any abstract idea. App. Br. 16-17. In addition, Appellants
argue that the Examiner failed to provide any factual support for the finding
that the abstract idea is implemented on a computer using generic computers
that are well-understood, routine, and conventional activities previously
known to the industry. Reply Br. 4--5 (citing Berkheimer v. HP Inc., 881
F.3d 1360, 1369 (Fed. Cir. 2018)). We are not persuaded by these
arguments.
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B. Legal Principles
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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(15 How.) 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
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The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
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 are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(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.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made but chose not
to make in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
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C. Discussion
1. Step 2A, Prong 1 (Alice Step 1)
We consider claim 1 (with emphasis), reproduced below.
1. A method by one or more computing systems of an online social
network, comprising:
receiving, at the one or more computing systems from a third-party
system, a call to a self-documenting API comprising a query for a data
structure of a specific data type to be retrieved from one or more graphs
associated with a social-networking system stored in one or more data
stores, each of the graphs comprising a plurality of nodes arranged in a
hierarchical structure, the plurality of nodes corresponding to a plurality of
data items, respectively, the plurality of data items being of a plurality of
data types;
retrieving, by the one or more computing systems, a definition for the
specific data type, the definition specifying the data structure for the specific
data type, the data structure including (1) a name of the specific data type,
and (2) for each of one or more fields of the data structure, a name and a
description of the field;
sending, from the one or more computing systems to the third-party
system, instruction for presenting the retrieved data structure at the third-
party system in response to the call, wherein all fields of the retrieved data
structure are presented in a hierarchical list arranged in a specific
hierarchical format with notations corresponding to (1) the name of the
specific data type and (2) the names and the descriptions of the fields of the
data structure, and wherein the specific hierarchical format corresponds to
the query of the data structure;
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receiving, at the one or more computing systems from the third-party
system, a data query expressed in a format corresponding to the data
structure specified in the definition, the data query requesting one or more
of the data items of the plurality of data items;
retrieving, by the one or more computing systems using the data
query, the requested data items from the graphs; and
sending, from the one or more computing systems to the third-party
system, the one or more of the retrieved data items in response to the data
query.
We conclude the emphasized text above recites concepts performed in
the human mind (including an observation, evaluation, judgment, opinion).
These concepts performed in the human mind are mental processes. See
Memorandum. These mental processes are an abstract idea. See id.
Moreover, we conclude the claims at issue here are directed to
receiving a first query for a data structure through use of an API,
retrieving and sending the data structure, the data structure
including a name and description of the data type, receiving a
subsequent query corresponding to the data structure, and
ultimately retrieving and sending the appropriate data item in
response to the second query,
which Appellants also admit (App. Br. 13). The claims at issue are
analogous to the claims in Intellectual Ventures I LLC v. Erie Indemnity Co.,
850 F.3d 1315, 1327 (Fed. Cir. 2017). In Intellectual Ventures, the court
held that the claims were drawn to "creating an index, and using that index
to search for and retrieve data," which is similar to the present claims. Id. at
1327. In both cases, they are drawn to mental processes, which is an
abstract idea.
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Because we conclude the independent claims recite an abstract idea,
we proceed to Prong Two to determine whether the claims are "directed to"
the judicial exception.
2. Step 2A, Prong 2 (Alice Step 1)
Claim 1 does not integrate the abstract idea into a practical application
because it does not impose any meaningful limits on practicing the abstract
idea. In particular, the claim does not recite improvements to the
functioning of a computer or to any other technology or technical field.
Unlike the claims of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016), the present claims are not directed to "a specific
improvement to the way computers operate, embodied in the self-referential
table." Id. at 1336. Instead, as described by the Specification (Spec. ,r,r 22,
39, 45-56), the present claims focus on abstract ideas that merely use
computers as tools.
In particular, Appellants' argue that the claims recite a particular
technical solution for dealing with an unknown API of an online social
network and unknown methods of calling the particular data structures of the
online social network through the APL App. Br. 10-12; Reply Br. 1--4.
This argument is unpersuasive because "a claim for a new abstract idea is
still an abstract idea." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016). "[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature ( or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility .... " Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted). Contrary
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to Appellants' arguments (App. Br. 10-12; Reply Br. 1--4), claim 1 is
directed to an abstract idea-not an improvement to computer functionality.
Additionally, our reviewing court in Intellectual Ventures I
distinguished the claims in that case from Enfzsh because those claims were
"not focused on how usage of the XML tags alters the database in a way that
leads to an improvement in technology of computer databases. Instead, the
claims simply call for XML-specific tags in the index without further
detail." Intellectual Ventures I at 1327.
We disagree with Appellants' argument that the fact the claim
requires a machine to perform the steps renders the claim eligible (App.
Br. 11-12) because, in this case, claim 1 recites generic computer
components such as "one or more computer systems" at a high level of
generality. See Spec. ,r,r 9, 10 ("the API may have any number of
versions"), 22 ("a computing system (e.g., server)"), 45-56 ("this disclosure
contemplates any suitable number of computer systems").
Additionally, we are not persuaded by Appellants' argument that the
present claims are patent eligible because they do not preempt any abstract
idea (App. Br. 16-17); while preemption may denote patent ineligibility, its
absence does not demonstrate patent eligibility. See FairWarning, IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims
covering a patent-ineligible concept, preemption concerns "are fully
addressed and made moot" by an analysis under the Mayo/Alice framework.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Nor are we persuaded by Appellants' argument that the present claims
are directed to providing a specific technological improvement to the use of
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an API using social networking services (App. Br. 12-17; Reply Br. 3--4)
because the present claims do not recite other meaningful limitations that
describes a process or product that applies the exception in a meaningful
way. Rather, we conclude, and Appellants concede (App. Br. 13), the
present claims are directed to
receiving a first query for a data structure through use of an API,
retrieving and sending the data structure, the data structure
including a name and description of the data type, receiving a
subsequent query corresponding to the data structure, and
ultimately retrieving and sending the appropriate data item in
response to the second query requires.
Moreover, we determine the additional elements in claim 1 ( e.g., "one
or more computing systems" and "self-documenting API") are merely
generic components insufficient to integrate the abstract idea into a practical
application. These additional elements in claim 1 are described in the
Specification at a high level of generality insufficient to integrate the
abstract idea into a practical application. Spec. ,r,r 9, 10 ("the API may have
any number of versions"), 22 ("a computing system (e.g., server)"), 27, 45-
56 ("this disclosure contemplates any suitable number of computer
systems").
Appellants do not make any other arguments pertaining to step 2A,
prong 2. Because the present claims are directed to an abstract idea, we
proceed to Step 2B.
3. Step 2B (Alice Step 2)
We are not persuaded by Appellants' argument that the Examiner fails
to provide factual support for the determination that the abstract idea is
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implemented on a computer using generic components that are well-
understood, routine, and conventional activities previously known to the
industry. Reply Br. 4--5. The Examiner supports the determination that the
abstract idea is implemented on a computer using generic components that
are well-understood, routine, and conventional activities. Ans. 9 ( citing
Content Extraction & Transmission v. Wells Fargo Bank, N.A., 776 F.3d
1343, 1359 (Fed. Cir. 2014)); Non-Final Act. 7-11, 20-23. According to
MPEP 2106.05(d), Content Extraction is one of the cases that the Examiner
may use to support a determination of well-understood, routine, and
conventional activities.
Additionally, we determine the additional elements in claim 1 ( e.g.,
"one or more computing systems" and "self-documenting API") are merely
generic components. Spec. ,r,r 9, 10 ("the API may have any number of
versions"), 22 ("a computing system (e.g., server)"), 27, 45-56 ("this
disclosure contemplates any suitable number of computer systems").
Appellants' Specification itself demonstrates the well-understood, routine,
and conventional nature of these additional elements because the
Specification describes the additional elements in a manner that indicates the
additional elements are sufficiently well-known.
Appellants do not argue separately claims 2-15 with particularity, but
assert the rejections of those claims should be withdrawn for at least the
same reasons as argued for independent claim 1. App. Br. 7-19; Reply Br.
1-5. Accordingly, we sustain the Examiner's rejection of: ( 1) independent
claims 1, 5, and 9; and (2) dependent claims 2--4, 6-8, and 10-15 under
35 U.S.C. § 101.
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II. Claims 1-15 Rejected Under 35 U.S. C. § 103
A. Does the combination of Fisher and Shrufi teach receiving a call to an
AP I from a third party system, sending anything in response to the call, and
sending queries related to a particular data of a social graph?
The Examiner finds Fisher teaches a person using a development
device to develop software with element 610 illustrating a self-documenting
aspect of an API, which the Examiner maps to the limitation "receiving ...
from a third-party system, a call to a self-documenting API" recited in claim
1. Non-Final Act. 12 (citing Fisher ,r 30) Ans. 18-19 (citing Fisher ,r 2; Fig.
6A). In addition, the Examiner finds Fisher teaches querying a web-based
semantic store ("WSS") for data identifiers corresponding to a received
reference and method names are a translation of the data identifiers provided
by the WSS in response to the query, which the Examiner maps to the
limitation "sending ... to the third-party system, instruction for presenting
the retrieved data structure at the third-party system in response to the call"
recited in claim 1. Non-Final Act. 14 (citing Fisher ,r,r 7, 8, 65-67).
Additionally, the Examiner finds Shrufi teaches modeling "persons and
relations between them" as graphs with nodes. Non-Final Act. 16. These
modeled graphs are social networks and Shrufi teaches querying the social
networks, which the Examiner maps to the limitation
a query for a data structure of a specific data type to be retrieved
from one or more graphs associated with a social-networking
system stored . . . the graphs comprising a plurality of nodes
arranged in a hierarchical structure, the plurality of nodes
corresponding to a plurality of data items, respectively
recited in claim 1. Non-Final Act. 16-17 (citing Shrufi ,r,r 1, 17, 18, 21, 22,
40, 41, Fig. 1).
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Appellants argue Fisher does not teach receiving a call to an API from
a third party system, sending anything in response to the call, and sending
queries related to a particular data of a social graph. App. Br. 24--25; Reply
Br. 8. We disagree.
As an initial matter, Appellants' argument pertaining to Fisher failing
to teach sending queries related to a particular data of a social graph (App.
Br. 24--25; Reply Br. 8) is unpersuasive because one cannot show
nonobviousness "by attacking references individually" where the rejections
are based on combinations of references. In re Merck & Co., Inc., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,425 (CCPA
1981)). In this case, the Examiner correctly points out that Fisher is not
cited to disclose queries related to a particular data of a social graph because
this feature was cited in the Non-Final Action as being disclosed by Shrufi.
Ans. 17. In particular, as discussed above, the Examiner finds Shrufi' s
modeling of people and their relationships using nodes in graphs are social
networks, and Shrufi teaches querying the graphs, which teaches the
disputed portion of the limitation. Non-Final Act. 16-17 (citing Shrufi ,r,r 1,
17, 18, 21, 22, 40, 41, Fig. 1). Moreover, Shrufi's title is "Querying Social
Networks."
We also disagree that Fisher does not teach receiving a call to an API
from a third party system and sending anything in response to the call.
Fisher teaches a person (i.e., third party system) using a development device
to develop software, with element 610 illustrating a self-documenting aspect
of an API (i.e., call to a self-documenting API), which teaches the limitation
"receiving ... from a third-party system, a call to a self-documenting API"
recited in claim 1. Non-Final Act. 12 (citing Fisher ,r 30); Ans. 18-19
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( citing Fisher ,r 2; Fig. 6A). In addition, Fisher teaches querying the WSS
for data identifiers corresponding to a received reference and method names
are a translation of the data identifiers provided by the WS S in response to
the query, which teaches the limitation "sending ... to the third-party
system, instruction for presenting the retrieved data structure at the third-
party system in response to the call" recited in claim 1. Non-Final Act. 14
( citing Fisher ,r,r 65----67).
Accordingly, we sustain the Examiner's finding that the combination
of Fisher and Shrufi teaches the limitations discussed in this section.
B. Does the Combination of Fisher and Shrufi Teach Providing both:
( 1) a name of the specific data type, and (2) for each of one or more fields of
the data structure, a name and a description of the field?
The Examiner finds that Fisher teaches schema corresponding to
people, which the Examiner maps to the limitation "a name of the specific
data type" recited in claim 1. Non-Final Act. 13 (citing Fisher i-f27). In
addition, the Examiner finds that Fisher teaches field names 606 and an
associated textual description 610 that appears in relation to field names 606,
which the Examiner maps to the limitation "for each of one or more fields of
the data structure, a name and a description of the field" recited in claim 1.
Non-Final Act. 13-14 (citing Fisher ,r 27; Fig. 6A).
Appellants argue the combination of Fisher and Shrufi does not teach
a "description of the specific data type." However, as correctly noted by the
Examiner, claim 1 does not require a "description of the specific data type."
Ans. 15.
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Appellants argue that the Fisher-Shrufi combination fails to teach
providing both "(1) a name of the specific data type, and (2) for each of one
or more fields of the data structure, a name and a description of the field," as
recited in claim 1. App. Br. 21-22; Reply Br. 6-7. We disagree because
Fisher teaches schema corresponding to people (i.e., a name), which teaches
the limitation "a name of the specific data type" recited in claim 1. Fisher
,r 27. In addition, Fisher teaches field names 606 (i.e., for each of one or
more fields of the data structure, a name ... of the field) and an associated
textual description 610 (i.e., for each of one or more fields of the data
structure ... a description of the field) that appears in relation to field names
606, which the Examiner maps to the limitation "for each of one or more
fields of the data structure, a name and a description of the field" recited in
claim 1. Non-Final Act. 13-14 (citing Fisher ,r 27; Fig. 6A).
Accordingly, we sustain the Examiner's finding that Fisher teaches
the limitation "(1) a name of the specific data type, and (2) for each of one or
more fields of the data structure, a name and a description of the field"
recited in claim 1.
C. Did the Examiner Err in Combining Fisher and Shrufi?
The Examiner finds that it would have been obvious to apply the
teachings of Fisher, including queries for specific data types, to Shrufi's
specific data type, namely data types associated with a social network, in
order to obtain the data found therein using Fisher's system. Non-Final Act.
1 7. The Examiner finds that one of ordinary skill in the art would have been
motivated to expand the commercial use of Fisher by applying it to
additional data types found in social networks. Id. The Examiner reasons
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that applying a system such as Fisher, which has the stated purpose of
querying for any available data, to a particular type of data, such as Shrufi's
social networking data, would have been well within the grasp of one of
ordinary skill in the art due to Fisher and Shrufi being overlapping and
complementary technologies such that the resulting combination of known
methods would yield predictable results. Ans. 20-21. Additionally, the
Examiner determines Fisher provides a suggestion for querying social
networking data in paragraphs 3, 27 and 32 because it was well known in the
art that Freebase includes social network profile data and Fisher explicitly
mentions retrieving hierarchical social networking data of a person with
fields of data such as things, events and interests. Id.
Appellants argue the combination of Fisher and Shrufi is improper.
App. Br. 26-28. Specifically, Appellants argue that because the "the
Examiner failed to articulate a finding that there was both a reasonable
expectation of success and a motivation to combine the references, 'th[ e
Examiner's] rationale cannot be used to support a conclusion that the claim
would have been obvious to one of ordinary skill in the art."' App. Br. 26-
28 (citing M.P.E.P. § 2143(G)). Appellants further argue the combination
uses improper hindsight (App. Br. 28) and the Examiner fails to show the
combination would yield predictable results (Rep. Br. 10-11 ). We are not
persuaded by Appellants' arguments.
First, all rejections do not require an explicit finding of a reasonable
expectation of success. Although MPEP § 2143(G) cited by Appellants
requires such a finding, it is only one of several exemplary rationales useable
by an Examiner. For example, MPEP § 2143(D), "applying a known
technique to a known device ready for improvement to yield predictable
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Application 13/601,666
results" has no such requirement. Under MPEP § 2143(D), the Examiner
must articulate:
(1) a finding that the prior art contained a "base" device (method,
or product) upon which the claimed invention can be seen as an
''improvement";
(2) a finding that the prior art contained a known technique that
is applicable to the base device (method, or product);
(3) a finding that one of ordinary skill in the art would have
recognized that applying the known technique would have
yielded predictable results and resulted in an improved system;
and
( 4) whatever additional findings based on the Graham factual
inquiries may be necessary, in view of the facts of the case under
consideration, to explain a conclusion of obviousness.
The Examiner articulates the required rationale by showing that Fisher
is a base device directed to interfacing with and accessing the data of as
many variant data stores and applications as possible to aid third party
programmers and that Shrufi contained a known data type applicable to
Fisher. Furthermore, the Examiner articulates a detailed rationale as to why
applying Shrufi' s known method to Fisher's data interface and access device
would have yielded predictable results, including that both Shrufi' s social
graphs and Fisher's interface were well known, complementary technologies
in the art of computer database access and storage. Ans. 20-21.
Additionally, Appellants' assertion that the conclusion of obviousness
is based on improper hindsight is unavailing.
Any judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of
ordinary skill in the art at the time the claimed invention was
made and does not include knowledge gleaned only from
applicant's disclosure, such a reconstruction is proper.
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Application 13/601,666
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, as discussed
by the Examiner, Fisher provides a suggestion for querying social
networking data including a hierarchy of a data structure related to a
"person" with branches of data related to the person including events and
interests in paragraphs 3, 27 and 32. Ans. 20-21.
Appellants do not argue claims 2-15 separately with particularity, but
assert the rejections of those claims should be withdrawn for at least the
same reasons as argued for independent claim 1. App. Br. 19-29; Reply Br.
6-11. Accordingly, we sustain the Examiner's rejections of:
(1) independent claims 1, 5, and 9; and (2) dependent claims 2--4, 6-8, and
10-15 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's decision rejecting claims 1-15 under
35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-15 under
35 U.S.C. § 103(a).
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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