Nicholas Galbreath et al.

Patent Trials and Appeals Board

Oct 1, 2019

13309824 - (D) (P.T.A.B. Oct. 1, 2019)

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.
13/309,824 12/02/2011 Nicholas Galbreath 079894.0418 3971
91230 7590 10/01/2019
BAKER BOTTS L.L.P./FACEBOOK INC.
2001 ROSS AVENUE
SUITE 900
DALLAS, TX 75201
EXAMINER
HARPER, ELIYAH STONE
ART UNIT PAPER NUMBER
2166
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
judy.wan@bakerbotts.com
ptomail1@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 NICHOLAS GALBREATH and MIRKO PREDOSIN
____________________

Appeal 2018-008240
Application 13/309,824
Technology Center 2100
____________________

Before THU A. DANG, ELENI MANTIS MERCADER, and
JASON J. CHUNG, Administrative Patent Judges.

MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1–3, 5, 7, 10–19, and 22–26. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 The real party in interest is Facebook, Inc. App. Br. 3.
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Application 13/309,824

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CLAIMED SUBJECT MATTER
The claims are directed to systems and methods for managing product
location information. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A computer-implemented method comprising, by one or
more processors associated with one or more computing
systems:
receiving, from a client device of a first user of an online
social network, a request for a user profile of a second user of
the online social network;
retrieving, using the one or more processors and in
response to the request, information from a user profile
database, the information comprising user profile data of the
second user,
wherein a social graph representing the online social network
comprises a plurality of nodes and edges, each node
representing one of a plurality of users of the online social
network, each edge representing a relationship between two of
the plurality of users and establishing a degree of separation
between each of the plurality of users based on the social graph,
wherein the first user corresponds to a first node of the plurality
of nodes and the second user corresponds to a second node of
the plurality of nodes;
determining, using the one or more processors, a profile
format for the user profile data of the second user based on a
visibility preference of the second user and a degree of
separation between the first node and the second node within
the social graph, the visibility preference of the second user
being included with the information retrieved from the user
profile database, and the visibility preference of the second user
indicating a specified degree of separation between the second
node and another node at which the user is permitted to view
the user profile data of the second user in a full profile format;
and
sending, to the client device for display to the first user,
information representing the user profile data of the second
user, wherein:
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Application 13/309,824

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if the degree of separation between the first node and the
second node is less than or equal to the specified degree of
separation indicated in the visibility preference of the second
user, then sending the information using a full profile format;
and
if the degree of separation between the first node and the
second node is greater than the specified degree of separation
indicated in the visibility preference of the second user, then
sending the information using a mini profile format.

REJECTIONS
Claims 1–3, 5, 7, 10–19, and 22–26 stand rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception without significantly more.

OPINION
Appellant argues that the claims are focused on a particular
application in an online social network of receiving information relating to a
social graph, and determining an appropriate format to display to users based
on a visibility preference and degrees of separation between nodes in the
social graph. App. Br. 10. In addition to determining an appropriate format
to display, the claims also require sending the formatted information to a
display of another user. Id.
According to Appellant, as recited in the claims, one part of the
received information is a user interacting with the online social graph and
setting a visibility preference. App. Br. 11. This received information is not
then analyzed and displayed in graphical form, which would be analogous to
Electric Power Group, instead the information is used for additional
examination to identify different formats, and then ultimately sending
instructions for displaying the formatted information to a second user. Id.
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According to Appellant, claim 1 recites a specific method of tracking
online interactions and degrees of separation of a particular user of an online
social network, determining information about the tracked interactions to
select content that a particular user may view based on a degree of
separation, and sending the formatted content to a user's client device for
display. Id. at 12. The application recites a specific improvement in
network operation and takes advantage of the availability of social
networking graph information to provide more relevant information to its
users. Id. In other words, the claim language recites the invention's specific
improvement to computer technology and overcomes a problem specifically
arising in the realm of computer networks. Id. 12–13.
Appellant argues that tracking online interactions and degrees of
separation of a particular user of an online social network, determining
information about the tracked interactions to select content that a particular
user may view based on a degree of separation, and sending the formatted
content to a user's client device for display requires that a machine play “a
significant part in permitting the claimed method to be performed.” Id. at
13.
Appellant further argues that the claims contain an inventive concept
sufficient to transform the claims into patent-eligible subject matter. App.
Br. 14–19. In particular Appellant argues that, similar to BASCOM, the
claims “recite[d] a specific, discrete implementation of the abstract idea of
filtering content,” because “the patent describes how its particular
arrangement of elements is a technical improvement over prior art ways of
filtering such content.” Id. at 15–16 (citing Bascom Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)). Here,
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consistent with BASCOM, the claims recite a specific, discrete
implementation of tracking online interactions and degrees of separation of a
particular user of an online social network, determining information about
the tracked interactions to select content that a particular user may view
based on a degree of separation, and sending the formatted content to a
user's client device for display. Id.
We are persuaded by Appellant’s argument. 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) (internal quotation
marks and citation omitted).
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. Kappos, 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);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. 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.
252, 267–68 (1853))); 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 176; 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 turn 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-
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eligible application.” Alice, 573 U.S. at 221 (internal citation 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.
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 Manual of Patent Examining
Procedure (MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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 § 2106.05(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.
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See Memorandum.
In the instant case, the claim 1 limitations of
receiving, from a client device of a first user of an online
social network, a request for a user profile of a second user of
the online social network;
retrieving, using the one or more processors and in
response to the request, information from a user profile
database, the information comprising user profile data of the
second user, wherein a social graph representing the online
social network comprises a plurality of nodes and edges, each
node representing one of a plurality of users of the online social
network, each edge representing a relationship between two of
the plurality of users and establishing a degree of separation
between each of the plurality of users based on the social graph,
wherein the first user corresponds to a first node of the plurality
of nodes and the second user corresponds to a second node of
the plurality of nodes;

recite a method of organizing human interactions wherein upon a first
user’s request of a second user’s profile on an online social network one or
more processors retrieve information of the second user’s profile.2
These limitations, as drafted, provide a process under Step 2A, prong
1 that under its broadest reasonable interpretation, recite an abstract idea.
See Memorandum.

2 We note that the Examiner addressed the claimed invention categorizing
the method as a mental process. See Ans. 3–7. Under the mental process
analysis the instant claim would not be an abstract idea under Step 2A,
prong 1 because the retrieving step using one or more processors and the
determining step using one or more processors based on the preset visibility
preference requires action by the processor that cannot be practically applied
by the mind.
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Because the claim recites a method of managing human interactions,
we proceed to Step 2A, prong 2––i.e., we determine whether the method of
organizing human activity is integrated into a practical application.
Claim 1 recites the additional limitations of
determining, using the one or more processors, a profile
format for the user profile data of the second user based on a
visibility preference of the second user and a degree of
separation between the first node and the second node within
the social graph, the visibility preference of the second user
being included with the information retrieved from the user
profile database, and the visibility preference of the second user
indicating a specified degree of separation between the second
node and another node at which the user is permitted to view
the user profile data of the second user in a full profile format;
and
sending, to the client device for display to the first user,
information representing the user profile data of the second
user, wherein:
if the degree of separation between the first node and the
second node is less than or equal to the specified degree of
separation indicated in the visibility preference of the second
user, then sending the information using a full profile format;
and
if the degree of separation between the first node and the
second node is greater than the specified degree of separation
indicated in the visibility preference of the second user, then
sending the information using a mini profile format.

The claim recites a combination of additional elements including
determining using one or more processors a profile format for the user
profile data of the second user based on a visibility preference of the second
user and a degree of separation between the first node and the second node
within the social graph, and the visibility preference of the second user
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indicating a specified degree of separation between the second node and
another node at which the user is permitted to view and
if the degree of separation between the first node and the
second node is less than or equal to the specified degree of
separation indicated in the visibility preference of the second
user, sending the information using a full profile format; and
if the degree of separation between the first node and the
second node is greater than the specified degree of separation
indicated in the visibility preference of the second user, then
sending the information using a mini profile format.

See Claim 1. The claim as a whole integrates the method of managing
human interactions into a practical application. Specifically, the additional
elements similar to BASCOM recite a specific improvement over prior art
systems using one or more processors wherein the claims recite a specific,
discrete implementation of tracking online interactions and degrees of
separation of a particular user of an online social network, determining
information about the tracked interactions to select content that a particular
user may view based on a degree of separation as set by the visibility
preference of the second user, and sending the formatted content to a user’s
client device for display. Id.
Thus, the claim is eligible because it is not directed to the recited
judicial exception (abstract idea). Accordingly, we reverse the Examiner’s
rejection of claims 1–3, 5, 7, 10–19, and 22–26.

DECISION
We reverse the Examiner’s rejection of claims 1–3, 5, 7, 10–19, and
22–26.
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Application 13/309,824

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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).

REVERSED