Ex Parte Zhu et al

Patent Trial and Appeal Board

Sep 27, 2018

13975186 (P.T.A.B. Sep. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/975, 186
87851 7590
Facebook/Fenwick
FILING DATE
08/23/2013
10/01/2018
Silicon Valley Center
801 California Street
Mountain View, CA 94041
FIRST NAMED INVENTOR
Wei Zhu
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.
26295-24409 us 1001
EXAMINER
SWEARINGEN, JEFFREY R
ART UNIT PAPER NUMBER
2445
NOTIFICATION DATE DELIVERY MODE
10/01/2018 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 WEI ZHU, DAVID BROOKES MORIN,
JAMES M. LESZCZENSKI, MICHAEL STEVEN VERNAL,
JOSHUA E. ELMAN, and LUKE JONATHAN SHEPARD
Appeal2018-003305
Application 13/975,186
Technology Center 2400
Before MAHSHID D. SAADAT, JENNIFER L. McKEOWN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-7 and 11-23. We have jurisdiction under
35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is Facebook, Inc. App.
Br. 2.
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Application 13/975,186
STATEMENT OF THE CASE
Appellants' disclosed and claimed invention "relates to social
networking systems and in particular to using information from a social
networking system in interactions with an external website outside of the
social networking system." Spec, ,r 1.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A computer implemented method comprising:
receiving, by a client device, a mark-up language
document from a website external to a social networking
system, the mark-up language document containing one or
more custom tags provided by the social networking
system for retrieving information associated with a user of
the social networking system and for displaying the
retrieved information associated with the user based on the
mark-up language document;
processing, by the client device, the one or more
custom tags contained in the markup language document
using a custom tag library from the social networking
system that provides program logic for each of the one or
more custom tags;
responsive to processing the one or more custom
tags, sending a request to the social networking system for
the information associated with the user;
receiving the requested information associated with
the user from the social networking system in response to
the request for the information; and
generating a displayable web page based on the
mark-up language document that displays the requested
information received from the social networking system
with content of the website.
THE REJECTION
The Examiner rejected claims 1-7 and 11-23 under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. Final Act. 2-9.
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Application 13/975,186
ANALYSIS
THE REJECTION UNDER 35 U.S.C. § 101
Claims 1-7 and 11-23
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 1-7 and 11-23 as directed to patent-ineligible
subject matter.
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82-83 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice Corp. Pty. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014). The first step in that analysis
is to "determine whether the claims at issue are directed to one of those
patent-ineligible concepts" (id.), for example, to an abstract idea. If the
claims are directed to one of the patent-ineligible concepts, the inquiry
proceeds to the second step where the elements of the claims are considered
"individually and 'as an ordered combination'" to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 78, 79).
Under the first step of the eligibility analysis, the Examiner
determines that the claims are directed to an abstract idea, namely
"displaying a web page using gathered data." Final Act. 3. The Examiner
explains that "[g]athering and displaying data is an idea in and of itself'
(Final Act. 3) and notes that the Federal Circuit, in Electric Power Group
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Application 13/975,186
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), finds similar steps
unpatentable. Final Act. 5. With respect to step two of the eligibility
analysis, the Examiner determines that each limitation does not amount to
significantly more than the abstract idea. Final Act. 3--4.
Appellants, however, contend that the claims amount to significantly
more than the judicial exception. App. Br. 9-13; Reply Br. 4--5. For
example, Appellants assert that the Examiner erred for failing to consider the
ordered combination of the claims, which provide a technological
improvement. App. Br. 11. "By incorporating the custom tags into the
markup language document, the information retrieved for the user is
incorporated into the webpage on the client device of the user without the
social networking system needing to share the user's information with the
external system providing the webpage." App. Br. 11; see also Reply Br. 4
(noting that "[t]he examiner [sic] has continued to treat this feature of the
claims as if it does not exist."); App. Br. 11-12 (discussing the Specification
discloses that the invention "allows the external website to present social
networking information in web pages without communicating directly with
the social networking system."). Appellants also identify advantages of the
claimed system as
1) keeps potentially private information of the user maintained
by the social networking system between the social networking
system and the user, 2) obviates the need for additional privacy
settings ( e.g., what information is the external system authorized
to receive and not authorized to receive), and 3) improves
latency in displaying the webpage by obviating the need for the
external system to request the user information via an API, for
example, and incorporate the information into the webpage
before providing the webpage to the user.
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Application 13/975,186
App. Br. 12; Reply Br. 4--5. Appellants additionally assert that the claims
recite a method inherently tied to computer technology and "the problems
addressed by the claims are ones that arise uniquely in the content of the
internet." App. Br. 13.
Appellants next identify limitations as not well-understood, routine,
and conventional. Namely,
the limitations that provide for the incorporation of custom tags
into the markup language document that allow private user
profile information of a user to be incorporated into a webpage
on a client device of the user without having to share this
information with the external system providing the webpage 1)
add specific limitations other than what is well-understood,
routine and conventional in the field, as at least evidenced by the
lack of art rejection, 2) add unconventional steps that confine the
claim to a particular useful application, and 3) add meaningful
limitations that amount to more than generally linking the use of
the abstract idea to a particular technological environment.
App. Br. 12.
The Examiner, here, provides no response to Appellant's arguments
under step two of the eligibility analysis. See, e.g., Ans. 3--4 ( discussing
only that the claims are directed to an abstract idea). We are persuaded of
error by the Examiner's failure to factually support the assertion that certain
limitations are well-understood, routine, and conventional. See Berkheimer
v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018). We are also persuaded that the
Examiner similarly erred by failing to consider the claim limitations both
individually and as an ordered combination. See, e.g., Ans. 3--4; Final Act.
3--4. See Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at
78)( explaining that under step two of the eligibility analysis, "the elements
of each claim both individually and 'as an ordered combination' [should be
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Application 13/975,186
considered] to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application.").
Accordingly, we reverse the Examiner's rejection of claims 1-7 and
11-23 as directed to patent-ineligible subject matter.
DECISION
We reverse the Examiner's decision to reject claims 1-7 and 11-23 as
directed to patent-ineligible subject matter.
REVERSED
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