Lessin, Samuel et al.

Patent Trials and Appeals Board

Oct 28, 2020

13455047 - (D) (P.T.A.B. Oct. 28, 2020)

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.
13/455,047 04/24/2012 Samuel Lessin 26295-18575 9456
87851 7590 10/28/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
GOODWIN, SCHQUITA D
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
10/28/2020 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):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL LESSIN, AARON SITTIG, and
JUSTIN ALEXANDER SHAFFER
Appeal 2019-003705
Application 13/455,047
Technology Center 2400
Before MICHAEL J. STRAUSS, JAMES B. ARPIN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 15–30 and 35–41. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We refer to the Specification, filed April 24, 2012 (“Spec.”); Final Office
Action, mailed March 8, 2018 (“Final Act.”); Appeal Brief, filed November
2, 2018 (“Appeal Br.”); Examiner’s Answer, mailed March 7, 2019
(“Ans.”); and Reply Brief, filed April 10, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Facebook, Inc.,
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claimed subject matter is directed to evaluating “claims” in a
social networking system. Spec., Title. Claim 15, reproduced below with
claim elements identified as abstract concepts emphasized, formatting
altered, and bracketed labels added, is illustrative of the claimed subject
matter:
15. A method comprising:
[(a)] receiving, at a social networking system, a first claim
made by a first author of the social networking system, the first
claim comprising an assertion, an audience, and a claim type;
[(b)] receiving, at the social networking system, a second
claim made by a second author of the social networking system,
the second claim comprising the assertion of the first claim;
[(c)] retrieving, based on the claim type of the first claim, a
scoring model stored in the social networking system, the scoring
model comprising a function for determining a truth coefficient
for a claim based on a plurality of weighted factors;
[(d)] retrieving information about a particular viewing user,
wherein the particular viewing user is a user of the social
networking system other than the first or second authors, and
wherein the particular viewing user is included in the audience;
[(e)] retrieving additional information about the first author
and the second author, the additional information comprising
information about whether the first author and the second author
are connected in the social networking system to the particular
viewing user;
[(f)] determining, from the perspective of the particular
viewing user using the retrieved scoring model and by a
processor of a computing device, a truth coefficient for the first
claim as a probability that the assertion associated with the first
claim is true from the perspective of the particular viewing user,
the truth coefficient determined based on
[(f)(1)] a first weighted factor comprising the first and
second claims associated with the assertion,
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[(f)(2)] a second weighted factor comprising the
retrieved information about the particular viewing user,
and
[(f)(3)] a third weighted factor comprising the
retrieved additional information about whether the first
author and the second author are connected in the social
networking system to the particular viewing user; and
[(g)] storing the truth coefficient for the first claim in the
social networking system, wherein the truth coefficient for the
particular viewing user is associated with the first author.
REFERENCES
The Examiner relies on the following references:
Name Reference Date
Ryan US 2004/0215793 A1 Oct. 28, 2004
Hoenig US 2007/0276676 A1 Nov. 29, 2007
Sundaresan US 2008/0162265 A1 July 3, 2008
Mathur US 2010/0287033 A1 Nov. 11, 2010
Lumer US 2012/0001919 A1 Jan. 5, 2012
Yin US 2012/0278297 A1 Nov. 1, 2012
REJECTIONS
The Examiner rejects claims 15–30 and 35–41 under 35 U.S.C. § 101
as directed to a judicial exception (i.e., an abstract idea), without
significantly more. Final Act. 8–22.
The Examiner rejects claims 15, 16, 18, 21, 27, 29, 35, and 36 under
35 U.S.C. § 103(a) as unpatentable over the combined teachings of Yin and
Hoenig. Final Act. 23–31.
The Examiner rejects claims 17, 19, 20, 22, 25, and 41 under 35
U.S.C. § 103(a) as unpatentable over the combined teachings of Yin,
Hoenig, and Parsons. Final Act. 32–36.
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The Examiner rejects claims 23 and 24 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Yin, Hoenig, and Ryan. Final
Act. 36–37.
The Examiner rejects claim 26 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Yin, Hoenig, and Lumer. Final
Act. 37–38.
The Examiner rejects claims 28 and 30 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Yin, Hoenig, and McBrearty.
Final Act. 38–40.
The Examiner rejects claims 37 and 38 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Yin, Hoenig, and Mathur.
Final Act. 40–41.
The Examiner rejects claims 39 and 40 under 35 U.S.C. § 103(a) as
unpatentable over the combined teachings of Yin, Hoenig, Mathur, and
Sundaresan. Final Act. 41–43.
STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
REJECTION UNDER 35 U.S.C. § 101
Appellant’s contentions do not show reversible Examiner error in
rejecting the claims under 35 U.S.C. § 101. In connection with that
rejection, we adopt as our own the findings and reasons set forth by the
Examiner (1) in the action from which this appeal is taken and (2) in the
Examiner’s Answer in response to Appellant’s Appeal Brief and concur with
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the conclusions reached by the Examiner. We highlight the following for
emphasis.
The Examiner’s Determinations
The Examiner determines “[c]laims 15 and 27 are directed to the
abstract idea of ‘determining truth coefficients from the perspective of a
user.’” Final Act. 8. The Examiner equates the claimed method to
concepts identified as abstract ideas by the courts, such as
“classifying and storing digital images in an organized manner
([In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607 (Fed. Cir.
2016)]),” “creating an index, and using that index to search for
and retrieve data ([Intellectual Ventures I LLC v. Erie Indemnity
Co., 850 F.3d 1315 (Fed. Cir. 2017)]),” and “Using an algorithm
for determining the optimal number of visits by a business
representative to a client ([In re Maucorps, 609 F.2d 481 (CCPA
1979)]).” All of these concepts relate to indexing content in
categories using an algorithm. The concept described in claim
15 is not meaningfully different than those concepts found by the
courts to be abstract ideas. As such, the description in Claim 15
of “determining truth coefficients from the perspective of a user”
is an abstract idea.
Id. at 9.
In addition to elements identified as corresponding to concepts
determined to constitute abstract ideas, the Examiner finds claim 15 “recites
the additional limitations of ‘at a social networking system’ and ‘by a
processor of a computing device’ to perform the functions of the claim.” Id.
at 10. The Examiner determines
The social networking system, processor, and computing device
are recited at a high level of generality and are recited as
performing generic computer functions routinely used in
computer applications. Generic computer components recited as
performing generic computer functions that are well-understood,
routine and conventional activities amount to no more than
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implementing the abstract idea with a computerized system.
Thus, taken alone, the additional elements do not amount to
significantly more than the above-identified judicial exception
(the abstract idea). Looking at the limitations as an ordered
combination adds nothing that is not already present when
looking at the elements taken individually. There is no indication
that the combination of elements improves the functioning of a
computer or improves any other technology. Their collective
functions merely provide conventional computer
implementation.
Id.
Appellant presents various arguments. Appeal Br. 5–10. We address
these arguments individually in the Analysis section, below.
Principles of Law
A. SECTION 101
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. 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. 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 Court’s two-part framework, described in Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66 (2012), and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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. Kappos, 561
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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 (Gottschalk v. Benson, 409 U.S. 63, 67 (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.
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
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 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. at 191 (citing
Benson and Flook); see also, 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.”).
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If the claim is “directed to” an abstract idea, we turn to the second part
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 (internal 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. (alterations in original) (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.
B. USPTO SECTION 101 GUIDANCE
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55,942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1.
Under the 2019 Guidance, we first look to whether the claim recites
the following:
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(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
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 is not
“well-understood, routine, [and] conventional” in the field (see MPEP
§ 2106.05(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.
2019 Guidance, 84 Fed. Reg. at 56.
Analysis
STEP 2A, PRONG 1
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54. Here, overall,
independent claim 15 reasonably is characterized as evaluating the truth of
statements made by a particular source. Evaluating whether a statement is
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true is an activity associated with managing personal behavior or
relationships or interactions between people, as such evaluating would be
part of social activities engaged in by people. The 2019 Guidance expressly
recognizes certain methods of organizing human activity, including
managing personal behavior or relationship or interactions, as patent-
ineligible abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52. Furthermore,
as detailed below, apart from a social networking system and a processor of
a computing device, each of the recited limitations fits squarely within at
least one of the groupings of abstract ideas according to the 2019 Guidance.
Limitation (a) recites, in relevant part, “receiving . . . a first claim
made by a first author . . . , the first claim comprising an assertion, an
audience, and a claim type;” (hereinafter “receiving limitation (a)”). Appeal
Br. 19, Claim App. Appellant directs attention to paragraphs 18–22 of the
Specification in support of this limitation. Appeal Br. 2. The cited portion
of the Specification discloses an assertion includes a “payload,” such as a
subject which is an object that the assertion is describing or a target of the
assertion. Spec. ¶ 21. The audience is disclosed as users of a social
networking system (Spec. ¶ 31) including “one or more agents . . . selected
in a privacy control setting of the author” (Spec. 102, claim 23) such as “one
or more users of the social networking system [selected] by the author”
(Spec. 102, claim 24). A claim type indicates the payload of a claim. Spec.
¶ 42. Examples of claim types are disclosed as “city” in connection with a
claim that a user lives in San Francisco (Spec. ¶ 21) and “declaring user
profile information, declaring expertise and/or skills for a user, [and]
recommending a product and/or service . . .” (Spec. ¶ 42). Thus, the various
components of the recited “claim” are information or data that is received.
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Receiving information, i.e., collecting/gathering data, reasonably can
be characterized as reciting mental processes, which entails concepts that
can be performed in the human mind, i.e., an observation. The 2019
Guidance expressly recognizes mental processes, including observations that
can be performed in the human mind, as patent-ineligible abstract ideas.
2019 Guidance, 84 Fed. Reg. at 52. Accordingly, limitation (a) reasonably
can be characterized as reciting a judicial exception to patent-eligible subject
matter.
Limitation (b) recites, in relevant part, “receiving . . . a second claim
made by a second author . . . , the second claim comprising the assertion of
the first claim” (hereinafter “receiving limitation (b)”). Appeal Br. 19,
Claim App. Receiving limitation (b) recites receiving a second claim in
addition to the first claim received by receiving limitation (a). Accordingly,
receiving limitation (b) reasonably can be characterized as reciting a judicial
exception to patent-edible subject matter (i.e., a mental process) for the
reasons discussed above in connection with receiving limitation (a).
Limitation (c) recites, in relevant part, “retrieving, based on the claim
type of the first claim, a scoring model . . . the scoring model comprising a
function for determining a truth coefficient for a claim based on a plurality
of weighted factors;” (hereinafter “retrieving limitation (c)”). Appeal Br. 19,
Claim App. Appellant directs attention to paragraphs 100 and 104 of the
Specification in support of retrieving limitation (c). Appeal Br. 2. In
particular, the Specification describes “Different models for evaluating
claims may be used based on the type of the claim. Heuristics analysis and
machine learning may, in one embodiment, be used in refining these models
for evaluating claims.” Spec. ¶ 100. The Specification further explains,
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“Probabilistic models may be used to determine truth coefficients, in one
embodiment. As a result, the truth coefficient of a claim may be a calculated
probability that the claim is true.” Spec. ¶ 104.
Based on the description, a scoring model reasonably can be
characterized as a process of evaluating whether a claim is true that may
include learning. Therefore, retrieving a scoring model reasonably can be
characterized as teaching and/or following rules or instructions that are part
of managing personal behavior or relationships or interactions considered as
certain methods of organizing human activity. Furthermore, determining the
truth of a claim reasonably can be characterized as an evaluation, judgment,
or opinion that can be performed in the human mind, i.e., a mental process.
In addition, retrieval of the model (e.g., retrieval of instructions or rules)
reasonably can be characterized as an observation. The 2019 Guidance
expressly recognizes (i) certain methods of organizing human activity,
including teaching a following rules or instructions, and (ii) mental
processes, including observations, evaluations, judgments, and opinions that
can be performed in the human mind, as patent-ineligible abstract ideas.
2019 Guidance, 84 Fed. Reg. at 52. Accordingly, receiving limitation (c)
reasonably can be characterized as reciting a judicial exception to patent-
edible subject matter.
Limitation (d) recites “retrieving information about a particular
viewing user, wherein the particular viewing user is a user . . . other than the
first or second authors, and wherein the particular viewing user is included
in the audience;” (hereinafter “retrieving limitation (d)”). Appeal Br. 19,
Claim App. As discussed above, receiving (i.e., retrieving) information is
the collection or gathering of data and reasonably can be characterized as
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reciting mental processes that entail concepts that can be performed in the
human mind, i.e., an observation. The requirement that the information be
about a particular viewing user who is in the audience and not the first or
second author involves the selection of information satisfying the stated
criteria. This selection of information reasonably may be characterized as an
observation, evaluation, judgment, or opinion performed in the human mind.
The 2019 Guidance expressly recognizes mental processes, including
observations, evaluations, judgements, and opinions that can be performed
in the human mind, as patent-ineligible abstract ideas. 2019 Guidance, 84
Fed. Reg. at 52. Accordingly, retrieving limitation (d) reasonably can be
characterized as reciting a judicial exception to patent-eligible subject
matter.
Limitation (e) recites “retrieving additional information about the first
author and the second author, the additional information comprising
information about whether the first author and the second author are
connected . . . to the particular viewing user,” (hereinafter “retrieving
limitation (e)”). Appeal Br. 19, Claim App. Retrieving information, i.e.,
collecting data, reasonably can be characterized as reciting a mental process
recognized as a patent-ineligible abstract idea. 2019 Guidance, 84 Fed. Reg.
at 52. Accordingly, limitation (e) reasonably can be characterized as reciting
a judicial exception to patent-eligible subject matter.
Limitation (f) recites, in relevant part,
determining, from the perspective of the particular viewing
user using the retrieved scoring model . . . a truth coefficient the
first claim as a probability that the assertion associated with the
first claim is true from the perspective of the particular viewing
user, the truth coefficient determined based on
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a first weighted factor comprising the first and second
claims associated with the assertion,
a second weighted factor comprising the retrieved
information about the particular viewing user, and
a third weighted factor comprising the retrieved
additional information about whether the first author and
the second author are connected . . . to the particular
viewing user
(hereinafter “determining limitation (f)”). Appeal Br. 19–20, Claim App.
Appellant directs attention to paragraphs 104–106 of the Specification for
determining limitation (f). Id. at 2. Thereat the Specification discloses
“[p]robabilistic models may be used to determine truth coefficients,”
provides examples of factors that may be used to determine truth
coefficients, and describes the use of a viewing agent’s affinities for the
authors used as weighting factors. Spec. ¶ 104–106. As explained above,
determining the truth of a claim reasonably can be characterized as an
evaluation, judgment, or opinion that can be performed in the human mind,
i.e., a mental process. For example, a tribunal might determine that
evidence, e.g., weighted factors, establishes the truth or an assertion by some
metric, e.g., substantial evidence, preponderance of the evidence, clear and
convincing evidence, and beyond a reasonable doubt. See also Ans. 24 (“a
lawsuit/court decision is a calculation of truth determined by
claims.”) (discussed infra.) The 2019 Guidance expressly recognizes mental
processes, including evaluations, judgments, and opinions that can be
performed in the human mind, as patent-ineligible abstract ideas. 2019
Guidance, 84 Fed. Reg. at 52.
Limitation (g) recites, in relevant part, “storing the truth coefficient
for the first claim . . . wherein the truth coefficient for the particular viewing
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user is associated with the first author;” (hereinafter “storing limitation (g)”).
Appeal Br. 20, Claim App. Storing information can be accomplished in the
human mind and/or using pen and paper. The 2019 Guidance expressly
recognizes mental processes that can be performed in the human mind, as
patent-ineligible abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52.
We further note a determination that claim 15 recites a judicial
exception to patent eligibility is consistent with Office Guidance and case
law. See 2019 Guidance, 84 Fed. Reg. at 52; CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011) (concluding claims
directed to “detecting credit card fraud based on information relating past
transactions” can be performed in the human mind and were drawn to a
patent-ineligible mental process); FairWarning IP, LLC v. Iatric Systems,
Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (concluding claims directed to
“collecting and analyzing information to detect misuse and notifying a user
when misuse is detected” to be mental processes within the abstract-idea
category); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378–79 (Fed. Cir. 2017) (processing of payments is a fundamental
economic practice).
For the reasons discussed above, each of limitations (a) through (g)
recites one or more judicial exceptions to patent-eligible subject matter
under step 2A, prong 1, of the 2019 Guidance. See RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract
idea . . . to another abstract idea . . . does not render the claim non-
abstract.”).
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STEP 2A, PRONG 2
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 15 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies
considerations indicative of whether an additional element or combination of
elements integrates the judicial exception into a practical application, such as
an additional element reflecting an improvement in the functioning of a
computer or an improvement to other technology or technical field. Id. at
55; MPEP § 2106.05(a).
The only additional elements beyond the recited abstract ideas are
(i) a social networking system, (ii) a processor of a computing device, and
(iii) an implicit memory or storage device. Ans. 7–8. As explained by the
Examiner:
The social networking system in all the steps is recited at a high-
level of generality (i.e., as a generic online system performing a
generic computer function of connecting users on the Internet)
such that it amounts no more than mere instructions to apply the
exception using a generic computer component. The processor in
the determining step is recited at a high-level of generality (i.e.,
as a generic processor performing a generic computer function
of calculating a probability based on an arbitrary model) such
that it amounts [to] no more than mere instructions to apply the
exception using a generic computer component. Accordingly,
these additional elements do not integrate the abstract idea into a
practical application because they do not impose any meaningful
limits on practicing the abstract idea.
Ans. 8.
Appellant argues, “the instant claims are not directed to any Abstract
idea, but instead to an improvement in computer related technology, namely
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social networking.” Appeal Br. 5. According to Appellant, the claims
address a technical problem with social networking systems in that “while
social networking systems have provided tools for users to share information
about themselves, this information has been accepted as an absolute truth,
even where some uncertainty may exist in the statements.” Id. at 6 (citing
Spec. ¶ 3). Appellant argues, “To address this problem, the instant
Application proposes an additional or alternate way to store information
received by the social networking system, storing received information as
separate ‘claims’ associated with an author, assertion, and audience (as well
as other relevant information).” Id. (citing Spec. ¶¶ 18–24). According to
Appellant, “the Office Action fundamentally errs in considering only the
steps deemed to be part of ‘the abstract idea’ (instead of the claims ‘as a
whole’), as well as ‘oversimplifying the claims’ by ignoring the specific
‘requirements of the individual steps.’” Id. at 7 (citing MPEP § 2106.05(a),
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed.
Cir. 2016)). Appellant further argues the claims are statutory because they
are limited to a computer implementation. Id.
The Examiner responds:
First, social networking is not a computer-related
technology. As per Merriam-Webster, a social network is a
network of individuals (such as friends, acquaintances, and co-
workers) connected by interpersonal relationships. A social
networking system is an application/software that members of a
social network may use to communicate, most likely through the
use of their personal devices. Hence, the social networking
performed in the claims is merely a number of mental processes
performed by humans that are essentially being automated
through the use of processors within computing devices. For
instance, the idea described in independent claims 15 and 27 is
“determining, from the perspective of the particular viewing user
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using the retrieved scoring model . . . , a truth coefficient for the
first claim as a probability that the assertion associated with the
first claim is true []from the perspective of the particular viewing
user.” The mental process enacted is using an arbitrary model
that applies weights to determine truthfulness.
Second, prior to computer intervention, human beings
were able to determine the truthfulness (i.e.[,] truth coefficient)
for claims. As per the subject matter of the claimed invention,
historically, human beings in a social network received a first
claim and a second claim, received information about various
users, mentally processed the claims and the information in some
sort of algorithm (i.e.[,] model), mentally decided the
truthfulness of those claims, and later stored/recalled the
truthfulness calculated. Similar to the abstract idea in Alice, “the
claimed computer-automated process and the prior
[uncomputerized] method were carried out in the same way”
(MPEP 2106.04(a), Section I). For example, a lawsuit/court
decision is a calculation of truth determined by claims. The
lawsuit/court decision considers the claims, incorporates
information regarding those individuals making the claims,
utilizes a decision-making process equivalent to a model, and
issues a final ruling. Merely adding that the determination is
being conducted “by a processor of a computing device” in a
“social networking system” fails to amount to a practical
application.
Ans. 23–25.
Appellant replies, contending
“social networking systems” as disclosed in the specification and
recited by the claims do not merely allow “members of a social
network . . . to communicate,” as alleged by the Examiner. Here,
the Examiner fails to consider that it is the “social networking
system” itself which has previously accepted user shared
information as “absolute truth,” not the members of the social
network as argued by the Examiner (i.e.[,] the “network of
individuals” referenced in the Examiner’s Answer). See
Examiner’s Answer, p. 25.
Reply Br. 4.
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Appellant’s contentions do not show reversible Examiner error. As
found by the Examiner “the claim only recites two additional elements – ‘a
social networking system’ that connects the users in all the steps and ‘using
a processor of a computing device’ to perform the determining step.” Ans.
7. We further agree with the Examiner’s finding that a social networking
system is application/software used by members of a social network to
communicate using, e.g., personal devices. Id. at 8. Thus, the recited social
networking system is a use of technology for member communications.
However, consistent with the Examiner’s findings, the means used to
support that communications, i.e., the technology itself, is recited at a high-
level of generality. Therefore, the requirement for a social networking
system amounts to application of the underlying abstract concepts identified
under prong 1 above using a generic electronic communications, network
and/or computer components. See Ans. 7–8.
We also agree with the Examiner that the recited processor is
described in the Specification at a high-level of generality, again
“amount[ing to] no more than mere instructions to apply the exception using
a generic computer component.” See, e.g., Spec. ¶¶ 189, 190. Id. at 8.
Similarly, the memory or storage device is a generic component. See, e.g.,
Spec. ¶¶ 25, 72. Accordingly, we agree with the Examiner’s determination
that “these additional elements do not integrate the abstract idea into a
practical application because they do not impose any meaningful limits on
practicing the abstract idea.” Id.
Moreover, even if we were to interpret the information receiving/
retrieving steps of limitations (a) through (e) and the information storing step
of limitation (g) narrowly such that the author claims, scoring model, and
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user and author information exist in an electronic format, are provided by a
computer network, and such that the resultant truth coefficient is transmitted
over a computer network and/or stored by a computer or the like, limitations
(a) through (e) and (g) still would not integrate the recited abstract ideas into
a practical application. Even under such a narrow interpretation, limitations
(a) through (e) and (g) merely would constitute insignificant extra-solution
activity, i.e., pre-solution and post-solution activities.
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g). As such, even if we consider limitation (a) through (e)
as reciting additional elements under prong 2, rather than abstract ideas
under prong 1, these limitations at most recite insignificant extra-solution
activities of gathering data.
As explained in the prong 1 analysis above, limitation (g) reasonably
can be characterized as reciting a mental process of storing a truth
coefficient. Limitation (g) additionally can be characterized as merely being
directed to the insignificant extra-solution activity of storing data. Storing
data is merely an insignificant intermediary step between collecting data and
displaying data, both of which courts have held constitute insignificant
extra-solution activity. See, e.g., FairWarning IP, 839 F.3d at 1097–98. As
such, even if we consider it as an additional element under prong 2, rather
than as reciting an abstract idea under prong 1, limitation (g) recites at most
the insignificant extra-solution activity of storing data.
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Appellant’s contention that the claims provide an additional or
alternate way to store information received by the social networking system
by storing claims associated with an author, assertion, and audience (Appeal
Br. 6) is unpersuasive. This is because, as indicated under prong 1 of our
analysis, storing limitation (g) is part of the underlying concept of storing the
truth coefficient, an action that can be accomplished in the human mind
and/or using pen and paper for the reasons discussed above. Thus, we find
unpersuasive Appellant’s argument the Examiner erred by determining
storing information by a social network is part of the underling abstract
concept rather than an additional element. See Appeal Br. 3. Furthermore,
even if storing limitation (g) is narrowly interpreted to require electronic
transmission and/or storage of truth coefficients, for the reasons discussed
above, such activity constitutes insignificant post solution activity rather
than an additional element that integrates the judicial exception into a
practical application.
We are also unpersuaded the Examiner oversimplified the claims. See
Appeal Br. 7. Our reviewing court recognizes that “[a]n abstract idea can
generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in
this case does not, “impact the patentability analysis.” Id. at 1241.
According to Appellant, the claims are directed to an improvement in
social networking. Appeal Br. 5–8, Reply Br. 2–3. Appellant contends the
“technical” problem addressed by the claims is that “while social networking
systems have provided tools for users to share information about themselves,
this information has been accepted as an absolute truth, even where some
uncertainty may exist in the statements.” Appeal Br. 6 (citing Spec. ¶ 3).
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“To address this problem, the instant Application proposes an additional or
alternate way to store information received by the social networking system,
storing received information as separate ‘claims’ associated with an author,
assertion, and audience (as well as other relevant information).” Id.
Nevertheless, Appellant fails to explain why determining whether
statements are true in an electronic network and/or computer environment is
different from such a determination made in the human mind and/or using
pen and paper. Thus, rather than addressing a technical problem, the claims
address a problem of the underlying concept, i.e., evaluating the truth of
statements made by a particular source. In particular, Appellant fails to
explain why the argued alternative way to store information as separate
claims improves the operation of the claimed network or processor or
otherwise is a technological improvement.
For the reasons discussed above, Appellant does not persuade us that
claim 15 is directed to an improvement in the function of a communications
network (including one used to implement a social networking system), a
computer or to any other technology or technical field. MPEP § 2106.05(a).
Nor does Appellant persuasively demonstrate that claim 15 is directed to a
particular machine or transformation, or that claim 15 adds any other
meaningful limitations for the purposes of the analysis under Section 101.
MPEP § 2106.05(b), (c), (e). Accordingly, Appellant does not persuade us
that claim 15 integrates the recited abstract ideas into a practical application
within the meaning of the 2019 Guidance. See 2019 Guidance, 84 Fed.
Reg. at 52–55.
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STEP 2B
Under the 2019 Guidance, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
The Examiner finds “social networking systems, processors, and
computing devices are well-understood, routine, and conventional activity,
as disclosed by US PGPUB 2012/0278297 A1 to Yin et al.” Ans. 27.
Appellant’s argument that the rejection is improper, alleging the
Examiner failed to provide sufficient evidence that the additional elements
are well-understood, routine, and conventional (Appeal Br. 10) is
unpersuasive. Claim 15 simply recites, for example, receiving first and
second claims “at the social networking system,” retrieving a scoring model
stored in the social networking system and information about users or
authors connected in the social networking system, and storing a truth
coefficient in the social networking system. Claim 15 recites no details to
distinguish the receiving, retrieving and storing functions from conventional
performance of those functions. Moreover, the Specification discloses a
system architecture including “conventional computer system[s]” and
“standard communications technologies and/or protocols.” See Spec. ¶ 85.
Appellant does not direct our attention to, nor do we ascertain, anything in
the Specification that indicates the networking system and processor perform
anything other than well-understood, routine, and conventional functions,
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such as receiving information over a network and accessing information
from a database. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (“That a computer receives and sends the information over
a network—with no further specification—is not even arguably inventive”);
In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016)
(server that receives data, extracts classification information from the
received data, and stores the digital images insufficient to add an inventive
concept); Alice, 573 U.S. at 225–26 (receiving, storing, sending information
over networks insufficient to add an inventive concept).
The lack of detail about the structure and functions of the additional
elements in the Specification further evidences they are well-understood,
routine, and conventional. See Berkheimer Memo3 at 3 (explaining that a
specification that describes additional elements “in a manner that indicates
that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well
understood, routine, and conventional); Intellectual Ventures I LLC v. Erie
Indemnity Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile
interface is so lacking in implementation details that it amounts to merely a
generic component (software, hardware, or firmware) that permits the
performance of the abstract idea, i.e., to retrieve the user-specific
resources.”).

3 Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (Apr. 19, 2018) available at: https://www.uspto.gov/sites/default/
files/documents/memo-berkheimer-20180419.PDF (“Berkheimer Memo”).
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For these reasons, we determine that claim 15 does not recite
additional elements that, either individually or as an ordered combination,
amount to significantly more than the judicial exception. 2019 Guidance, 84
Fed. Reg. at 52–55; MPEP § 2106.05(d). Accordingly, we sustain the
Examiner’s rejection of independent claim 15 under 35 U.S.C. § 101 as
directed to a judicial exception together with the rejection of independent
claim 27 and dependent claims 16–26, 28–30, and 35–41 that are not argued
separately.
REJECTION UNDER 35 U.S.C. § 103(a)
The Examine finds Yin’s assertion analyzer and modeling engine
teach or suggest the limitations of claim 15 except for (1) a viewing user
who is included in the audience and is other than the first and second authors
(receiving limitation (d)); (2) retrieving information about whether the first
and second authors are connected in the social networking system to the
viewing user (retrieving limitation (e)); and (3) determining, from the
perspective of the particular viewing user, the truth coefficient determined
based on (i) a second weighted factor comprising the retrieved information
about the particular viewing user (limitation (f)(2)) and (ii) a third weighted
factor comprising the retrieved additional information about whether the first
author and the second author are connected in the social networking system
to the particular viewing user (limitation (f)(3)). Final Act. 24–25. The
Examiner relies on Hoenig’s social information system for teaching the
limitations found to be absent from Yin. Id. at 25–26. According to the
Examiner,
One of ordinary skill in the art would be motivated to
utilize the customized lens of Hoenig with the confidence scores
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of the assertions of the Yin system in order to view data, such as
social media comments, and regulated data concerning similar
topics, and further calculating and analyzing the information for
trends.
Id. at 27.
Appellant contends, inter alia, the third weighted factor of limitation
(f)(3) is absent from the prior art, i.e., neither Yin nor Hoenig teach
determining a truth coefficient based on, inter alia, information about
whether the first author and the second author are connected in the social
networking system to the particular viewing user. In particular, Appellant
argues Hoenig’s trend analysis tool “does not disclose the analysis of trends
based on information about specific users of the system (here the student and
the politician), instead disclosing generic analysis of the database
information or information gathered from outside sources.” Appeal Br. 15
(citing Hoenig ¶¶ 59–60). According to Appellant, Hoenig’s user lenses are
specific to a particular user and are not included in Hoenig’s trend analysis.
Id. Thus, Appellant argues error in the Examiner’s finding that Hoenig’s
trend analysis tool “provides for the ratings for data are shown based on
other opinions from people in the town based on the customized lens of what
is shown to the viewer about this topic.” Id. (citing Final Act. 26).
According to Appellant “disclosing the retrieval of data about the opinion of
two users on a topic having some relevance to a viewing user is not a
disclosure that the two users are ‘connected in the social networking system
to the particular viewing user.’” Id. at 16.
The Examiner responds, finding
In order for the [Hoenig] system to work, the first author and the
second author must be connected to the particular viewing user,
because they are viewing the same unregulated data of the social
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networking system. Hence, access to the same unregulated data
is the connection shared between the two authors and the viewing
use. Even further, paragraph[s] 0059-0060 of Hoenig discuss
utilization of the trend analysis tool, where user 20 can view
opinions of other users who have access to the same data
construct 56. Therefore, [Hoenig] of the Yin/[Hoenig] system
discloses the “third weighted factor.”
Ans. 29–30.
Appellant’s contention is persuasive of reversible Examiner error.
Even if, as alleged by the Examiner, “the first author and the second author
must be connected to the particular viewing user” (id. at 29), such a finding
is neither the same as nor teaches information about whether there is such a
connection. That is, the fact that the authors and user may be placed in a
category does not mean that the recited connection exists. Because we agree
with at least one of the arguments advanced by Appellant, we need not reach
the merits of Appellant’s other arguments. Accordingly, on the record
before us, we do not sustain the obviousness rejection of independent claim
15 or that of independent claim 27 which recites a similar limitation. We
further do not sustain the obviousness rejections of dependent claims 16–26,
28–30, and 35–41, these dependent claims standing with their respective
base independent claims.
DECISION
We affirm the Examiner’s rejection of claims 15–30 and 35–41 as
directed to a judicial exception, without “significantly more.”
We reverse the Examiner’s rejection of claims 15, 16, 18, 21, 27, 29,
35, and 36 as obvious over the combined teachings of unpatentable over Yin
and Hoenig.
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We reverse the Examiner’s rejection of claims 17, 19, 20, 22, 25, and
41 as obvious over the combined teachings of Yin, Hoenig, and Parsons.
We reverse the Examiner’s rejection of claims 23 and 24 as obvious
over the combined teachings of Yin, Hoenig, and Ryan.
We reverse the Examiner’s rejection of 26 as obvious over the
combined teachings of Yin, Hoenig, and Lumer. Final Act. 37–38.
We reverse the Examiner’s rejection of claims 28 and 30 as obvious
over the combined teachings of Yin, Hoenig, and McBrearty.
We reverse the Examiner’s rejection of claims 37 and 38 as obvious
over the combined teachings of Yin, Hoenig, and Mathur.
We reverse the Examiner’s rejection of claims 39 and 40 as obvious
over the combined teachings of Yin, Hoenig, Mathur, and Sundaresan. Final
Act. 41–43.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15–30, 35–41 101 Eligibility 15–30,
35–41

15, 16, 18, 21,
27, 29, 35, 36
103(a) Yin, Hoenig 15, 16, 18,
21, 27, 29,
35, 36
17, 19, 20, 22,
25, 41
103(a) Yin, Hoenig,
Parsons
17, 19, 20,
22, 25, 41
23, 24 103(a) Yin, Hoenig, Ryan 23, 24
26 103(a) Yin, Hoenig, Lumer 26
28, 30 103(a) Yin, Hoenig,
McBrearty
28, 30
37, 38 103(a) Yin, Hoenig,
Mathur
37, 38
39, 40 103(a) Yin, Hoenig,
Mathur, Sundaresan
39, 40
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
15–30,
35–41

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED