Samuel Lessin et al.

Patent Trials and Appeals Board

Apr 16, 2020

13455054 - (D) (P.T.A.B. Apr. 16, 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.
13/455,054 04/24/2012 Samuel Lessin 26295-20825 2317
87851 7590 04/16/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
FLEISCHER, MARK A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
04/16/2020 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, MICHAEL HUDACK, AARON SITTIG,
DANIEL KLATZKO GIBSON, BENJAMIN E. HILLER, THOMAS
ANDREW WATSON, and WEI YEH
Appeal 2018-002714
Application 13/455,054
Technology Center 3600
Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
BRADLEY B. BAYAT, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–11 and 30–39. See Non-Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Facebook, Inc. Appeal Br. 2.
Appeal 2018-002714
Application 13/455,054

2
CLAIMED SUBJECT MATTER
The claims are directed to collaborative management of contacts
across multiple platforms. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method comprising:
receiving, in a contact card application, a plurality of
information items about a plurality of contacts associated with a
viewing user of one or more contact management systems, where
the viewing user is a user of a social networking system;
generating a plurality of claims about each of one or more
of the plurality of contacts based on the received plurality of
information items from the one or more contact management
systems, each claim of the plurality of claims having an assertion
and an audience;
receiving, from the viewing user, a request for a contact
card for a given contact of the plurality of contacts;
responsive to the received request:
selecting, by a processor, for each claim type in the
requested contact card, a respective claim about the given contact
of the viewing user, the selection based on the viewing user being
in respective audiences for each of the selected claims;
generating, by the processor, for the viewing user, the
requested contact card for the given contact by organizing the
selected claims for the viewing user by claim type; and
providing, to the viewing user, the generated contact card
in the contact card application.
Appeal Br. 18 (Claims App.)
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Vander Mey US 7,822,631 B1 Oct. 26, 2010
Cable US 2010/0144318 A1 June 10, 2010

Appeal 2018-002714
Application 13/455,054

3
REJECTIONS
Claims 1–11 and 30–39 are rejected under 35 U.S.C. § 101 as directed
to nonstatutory subject matter.
Claims 1–11 and 30–39 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Vander Mey and Cable.
Claims 1–11 and 30–38 are provisionally rejected on the ground of
nonstatutory double patenting over claims 1–40 of co-pending U.S.
Application No. 13/455,047 in view of Vander Mey.
OPINION
Claims 1–11 and 30–39:
Rejected as Directed to Nonstatutory Subject Matter
Principles of Law
To determine whether a claim falls within a judicially recognized
exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step
framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), and reaffirmed in Alice Corporation
Proprietary Ltd,. v. CLS Bank International, 573 U.S. 208 (2014). For the
first Alice step (Step 2A of the USPTO’s Patent Subject Matter Eligibility
guidance, MPEP § 2106), we determine whether the claims at issue are
directed to a patent-ineligible concept such as an abstract idea, law of nature,
or natural phenomenon. Alice, 573 U.S. 208 (citing Mayo, 566 U.S. at 78–
79). If so, we advance to the second Alice step (Step 2B of the USPTO’s
Patent Subject Matter Eligibility guidance) where “we consider the elements
of each claim both individually and ‘as an ordered combination’ to
determine whether the additional elements ‘transform the nature of the
Appeal 2018-002714
Application 13/455,054

4
claim’ into a patent-eligible application” of the otherwise patent-ineligible
concept. Id. (quoting Mayo, 566 U.S. 78–79).
We also apply the USPTO’s additional guidance on applying step 2A.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“Revised Guidance”).2 The Revised Guidance establishes
a “two-prong inquiry” for determining whether a claim is directed to a
judicial exception. Id. at 54. In prong one, we determine whether the claim
recites a judicial exception, such as a law of nature, natural phenomenon, or
abstract idea. Id. If so, we look to whether the claim recites additional
elements that integrate the judicial exception into a practical application.
Id. at 50. Thus, a claim is directed to a judicial exception only if the claim
recites a judicial exception and does not integrate that exception into a
practical application. Id. At that point we look to whether the claim adds a
specific limitation beyond the judicial exception that is not well-understood,
routine, and conventional activity in the field or whether the claim simply
appends well-understood, routine, and conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. Id. at 56.3

2 Available at https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf.
3 The Revised Guidance supersedes Manual of Patent Examining Procedure
(“MPEP”) § 2106.04(II) and also supersedes prior USPTO patent-eligibility
guidance. See Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”).
Appeal 2018-002714
Application 13/455,054

5
The Revised Guidance also clarifies what constitutes an “abstract
idea.” Under this guidance, a matter will be treated as an abstract idea if it
falls within the following specific groupings:
(a) Mathematical concepts—mathematical relationships, mathematical
formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions); and
(c) Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Id. at 52 (footnotes omitted). “Claims that do not recite matter that
falls within these enumerated groupings of abstract ideas should not be
treated as reciting abstract ideas” except in rare circumstances. Id. at 53.
Discussion
Appellant argues as a group the claims at issue in this rejection.
Appeal Br. 5–9. We select claim 1 as representative of the group, and
decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner’s Conclusions and Appellant’s Arguments
The Examiner determines that claim 1 is directed to “managing
interpersonal relationships and certain methods of organizing human
activities,” and “hence [is] directed to abstract ideas.” Non-Final Act. 7.
Appeal 2018-002714
Application 13/455,054

6
The Examiner also determines that the additional elements of claim 1—e.g.,
a “processor”—do not amount to significantly more than the abstract idea
itself because the additional elements are well-understood, routine and
conventional activities previously known to the industry and specified at a
high level of generality. Id. at 8.
Appellant argues that claim 1 is not directed to an abstract idea
because, as in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d
1299 (Fed. Cir. 2016), “the instant claims ‘improve computer-related
technology by allowing computer performance of a function not previously
performable by a computer,’ in this case allowing computer automation of
generating a contact card specific to the viewing user and audiences of
which it is a part, and providing the viewing user the same.” Appeal Br. 6.
Appellant further argues that even if claim 1 was directed to an abstract idea,
the claim is still patent-eligible because “the manner in which the contact
card is customized using the various claim types is . . . a non-conventional
and non-generic approach,” and therefore provides an inventive concept
under BASCOM Global Internet Services, Inc. v. AT&T Mobility Services,
Inc., 827 F.3d 1341 (Fed. Cir. 2016). Id. at 7–8.
Step 2A, prong 1
We first consider whether claim 1 recites a judicial exception.
Claim 1 recites, inter alia, “generating a plurality of claims about each
of . . . the plurality of [the viewing user’s] contacts based on the received
plurality of information items . . ., each claim . . . having an assertion and an
audience.” The “core” of a claim’s assertion is its “payload of content.”
Spec. ¶ 42. Because the claims are generated “based on the received
plurality of information items,” a given claim’s assertion is apparently
Appeal 2018-002714
Application 13/455,054

7
derived from the received information items. Further, a claim’s “audience”
is those users who “can access, or view,” inter alia, the claim’s assertion.
Id. ¶¶ 61, 66–69. Thus, “generating” a claim amounts to reviewing the
received information items and determining which users are permitted
access to them. This analysis could practically be performed in the human
mind, and thus falls within the mental-process grouping of abstract ideas.
Revised Guidance, 84 Fed. Reg. at 52.
Claim 1 also recites “receiving, from the viewing user, a request for a
contact card,” “selecting” a “claim about the given contact of the viewing
user” for each claim type in the requested contact card, “generating . . . the
requested contact card . . . by organizing the selected claims . . . by claim
type,” and “providing . . . the generated contact card.” The “selecting” and
“generating” steps of the claim indicate that a contact card contains one or
more claims pertaining to contact information for a user of a social
networking system, the claims arranged in a particular way. See also Spec.
¶ 155 (disclosing that “a contact card application may be provided by the
social networking system 100 to enable users to manage contact information
about other users on the social networking system 100”). Under the broadest
reasonable interpretation, the step of selecting the appropriate claims to
include in the requested contact card involves the analysis of particular
information: identifying the requesting viewing user, identifying the contact
for whom the contact card is requested, identifying the claims relevant to
that contact, and identifying which of those claims the viewing user is
permitted to view. This analysis, too, can practically be performed in the
human mind, and is thus also a mental process. Likewise, “generating” the
requested contact card amounts to simply arranging the claims by “claim
Appeal 2018-002714
Application 13/455,054

8
type” (which may not even be necessary because the claim does not require
that there be more than one claim for any given claim type), which is also a
mental process because it can practically be performed in the human mind.
Accordingly, we determine that claim 1 recites a judicial exception.
Step 2A, prong 2
Having determined that claim 1 recites a judicial exception, we next
consider whether claim 1 recites additional elements that integrate the
judicial exception into a practical application. Here, beyond the judicial
exception, the claim recites the use of a “processor” to perform the
“selecting” and “generating” steps. Neither the claim nor the Specification
imposes any particular structural limitations on the claimed processor. On
the contrary, the Specification makes clear that the claimed method may be
performed on a “general-purpose computing device.” Spec. ¶¶ 189–190.
Thus, the claim’s recitation of a “processor” amounts to the mere instruction
to implement the recited abstract idea on a general-purpose computer, which
does not integrate the judicial exception into a practical application. Revised
Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(e).
Claim 1 also recites receiving data (“receiving . . . a plurality of
information items,” “receiving . . . a request for a contact card”), and
sending data (“providing . . . the generated contact card”). The sending and
receiving of data is insignificant extra-solution activity, which does not
integrate the judicial exception into a practical application. See Revised
Guidance 84 Fed. Reg. at 55; MPEP § 2106.05(g); Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (finding abstract steps for
“gathering and analyzing information of a specified content, then displaying
the results”).
Appeal 2018-002714
Application 13/455,054

9
Appellant argues that claim 1 is not directed to an abstract idea
because, “as in McRO,[4] the instant claims ‘improve computer-related
technology by allowing computer performance of a function not previously
performable by a computer,’ in this case allowing computer automation of
generating a contact card specific to the viewing user and audiences of
which it is a part, and providing the viewing user the same.” Appeal Br. 6.
According to Appellant, “the instant claims recite a detailed process
including, for example, generating the claims, selecting a claim for each
claim type based on the viewing user being in the audience for each, and
generating the contact card with the selected claims.” Id. Therefore,
Appellant asserts, “it is the incorporation of the claim rules, not the use of
the computer, that improved the existing technological process by allowing
the automation of further tasks.” Id. (citing McRO, 837 F.3d at 1314
(internal citations, quotation marks, and emphasis omitted)).
We are not persuaded that the “detailed process” that Appellant
describes can be characterized as an improvement in computer-related
technology. Appellant does not adequately explain how the “generating”
and “selecting” steps represent a technological improvement, given that they
do not specify any particular computer technology needed to carry them out,
other than the use of a generic “processor.” “The Court in Alice made clear
that a claim directed to an abstract idea does not move into section 101
eligibility territory by ‘merely requir[ing] generic computer
implementation.’” buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 1354

4 McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
Appeal 2018-002714
Application 13/455,054

10
(Fed. Cir. 2014) (quoting Alice, 573 U.S. at 220–21). Thus, we agree with
the Examiner that claim 1 is directed to a judicial exception.
Step 2B
Having determined that claim 1 is directed to a judicial exception, we
next consider under Step 2B whether claim 1 includes additional elements or
a combination of elements that provide an “inventive concept,” i.e., whether
claim 1 includes specific limitations beyond the judicial exception that are
not “well-understood, routine, conventional” in the field. Revised Guidance,
84 Fed. Reg. at 56. In doing so, we recognize that “[t]he inventive concept
inquiry requires more than recognizing that each claim element, by itself,
was known in the art,” because “an inventive concept can be found in the
non-conventional and non-generic arrangement of known, conventional
pieces.” BASCOM, 827 F.3d at 1350.
As discussed above, claim 1 recites using a “processor” to perform
claim 1’s “selecting” and “generating” steps. However, a limitation
requiring a generic processor does not provide an inventive concept to a
claimed judicial exception. See FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[T]he use of generic computer
elements like a microprocessor or user interface do not alone transform an
otherwise abstract idea into patent-eligible subject matter”).
Appellant relies on BASCOM to support its argument that
“[c]onsidering the additional elements of the claimed invention as an
ordered combination of limitations reveals that the claims recite
‘significantly more’ beyond merely applying the alleged abstract idea to a
generic computer.” Appeal Br. 8. The claims at issue in BASCOM were
directed to a “content filtering system for filtering content retrieved from an
Appeal 2018-002714
Application 13/455,054

11
Internet computer network,” and to an “ISP server for filtering content.”
827 F.3d at 1348. The Federal Circuit “agree[d] with the district court that
filtering content is an abstract idea because it is a longstanding, well-known
method of organizing human behavior,” id., but disagreed with the district
court that the “ordered combination of limitations” did not recite an
inventive concept, id. at 1349–50. The court specifically found that, when
considered as a whole, the claims recited the inventive concept of “the
installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user.” Id. at
1350. The court explained that “[t]his design gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server.” Id.
In contrast to the BASCOM claims, claim 1 recites using a generic
processor to perform the judicial exception. Appellant does not identify any
specific arrangement of computer software or hardware, or otherwise specify
technical details that would indicate the use of computer technology beyond
that which is well-understood, routine, and conventional. Therefore, we find
Appellant’s arguments unpersuasive.
In sum, we agree with the Examiner that claim 1 is directed to patent-
ineligible subject matter, and sustain the Examiner’s rejection of claims 1–
11 and 30–39.
Claims 1–11 and 30–39:
Rejected as Unpatentable over Vander Mey and Cable
In concluding that claim 1 is unpatentable over Vander Mey and
Cable, the Examiner finds, inter alia, that Vander Mey teaches the step of
“generating a plurality of claims about each of one or more of the plurality
Appeal 2018-002714
Application 13/455,054

12
of contacts based on the received plurality of information items from the one
or more contact management systems.” Non-Final Act. 10. According to
the Examiner, “Vander Mey [16,23] states ‘The CQA system then obtains
indications of one or more assessed trust scores for each of the associated
users for a piece of content, such as from information 722 on storage or by
interacting with the UTSA system to obtain dynamically generated
information . . .’” Id. (citing Vander Mey, 16:23–27).
Appellant responds that “[i]t appears from [the Examiner’s] emphasis
that the examiner is relying on ‘associated users for a piece of content’ as the
claimed ‘audience,’ and ‘to obtain generated information’ as the ‘generating
of claims.’” Appeal Br. 15. But, according to Appellant, “[t]he ‘associated
users’ of the quoted section are users who have evaluated the piece of
content,” rather than the claimed audience, which is those entities ‘who may
view’ the content.” Id. Appellant further argues that “[i]t does not appear
from Vander Mey’s articulation in this section of determining trust scores
for users for pieces of content, from those user’s interactions with the
content, that any generation of claims occurs whatsoever, much less
generating of claims each having an assertion and an audience.” Id.
In the Answer, the Examiner counters that the passage of Vander Mey
relied on in the Non-Final Action “indicated that specified information is
provided to specified persons and that involve ‘assertions’ or ‘claims’
analogous to those claimed in the instant invention.” Ans. 11.
We agree with the Appellant (and the Examiner does not appear to
dispute) that the Examiner is relying on Vander Mey’s disclosure that
“associated users for a piece of content” teaches the claimed “audience,” and
“to obtain dynamically generated information” teaches the “generation of a
Appeal 2018-002714
Application 13/455,054

13
plurality of claims” for the viewing user’s plurality of contacts. We are not
persuaded, however, that the Examiner is correct in this regard. First,
Vander Mey’s “associated users for a piece of content” are the users who
authored, supplied, or evaluated the content piece. Vander Mey, 16:11–21.
This group of users does not define the “audience” of the content piece,
because there may be other users who are permitted access to it. Second, we
are not persuaded that the excerpt of Vander Mey noted above teaches
“generating a plurality of claims” regarding a viewing user’s contacts. We
acknowledge, as the Examiner found, that the content piece itself may be a
“user profile” from a social networking site, which suggests some
connection with a “claim” about a viewing user’s contacts. See Vander
Mey, 3:4–11. But the “information” that is “dynamically generated” is not a
content piece. Instead, it is the “assessed trust scores” of the associated
users. Id. at 16:23–27. Further, we do not discern any teaching in Vander
Mey that the “associated users” of a content piece have access to their trust
scores; thus, they would not be reasonably considered an “audience” for the
information that is “dynamically generated.”
In the Answer the Examiner alleges that another excerpt from Vander
Mey supports “the notion of making assertions or claims that can be ‘used
with respect to other users,’ and thus a select audience.” Ans. 12 (citing
Vander Mey, 12:11–31). This excerpt states in pertinent part that “in some
embodiments information from a user (e.g., supplied pieces of content
and/or evaluations) may only be used with respect to other users in the same
group, such as to be provided to them and to receive evaluations from them.”
Vander Mey, 11:20–25. Accepting the Examiner’s characterization of this
excerpt at face value, it leaves unanswered the problem that the
Appeal 2018-002714
Application 13/455,054

14
“information” that is “dynamically generated” are trust scores for users
associated with a content piece, not the content piece itself. Thus, we
remain unpersuaded that the information that is dynamically generated is
relevant to contact information for one of a viewing user’s contacts.
For the above reasons, we are not persuaded that Vander Mey and
Cable teach or suggest all of the limitations of claim 1, and thus do not
sustain the Examiner’s rejection of claims 1–11 and 30–39 as unpatentable
over Vander Mey and Cable.
Claims 1–11 and 30–38: Provisionally Rejected on the Ground of
Nonstatutory Double Patenting over Claims 1–40 of Copending Application
No. 13/455,047 and Vander Mey.
Appellant has not responded to this rejection. Therefore, it is
summarily affirmed. See In re Berger, 279 F.3d 975, 984–85 (Fed. Cir.
2002) (Board did not err in sustaining a rejection under 35 U.S.C. § 112 ¶ 2
when the Examiner refused to enter an Amendment filed with Appeal Brief
and applicant failed to contest the rejection as to the non-amended claims on
appeal); see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (“If an appellant fails to present arguments on a particular
issue—or , more broadly, on a particular rejection—the Board will not, as a
general matter, unilaterally review those uncontested aspects of the
rejection”) and Manual of Patent Examining Procedure § 1205.02 (“If a
ground of rejection stated by the examiner is not addressed in the appellant’s
brief, appellant has waived any challenge to that ground of rejection and the
Board may summarily sustain it, unless the examiner subsequently withdrew
the rejection in the examiner’s answer.”).
Appeal 2018-002714
Application 13/455,054

15
CONCLUSION
For the foregoing reasons, we affirm the Examiner’s rejection of
claims 1–11 and 30–39 as directed to ineligible subject matter, and
summarily affirm the Examiner’s provisional rejection of claims 1–11 and
30–38 on double-patenting grounds. We reverse the Examiner’s rejection of
claims 1–11 and 30–39 as unpatentable over Vander Mey and Cable.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11, 30–39 101 Eligibility 1–11, 30–39
1–11, 30–39 103(a) Vander Mey, Cable 1–11, 30–39
1–11, 30–39 Nonstatutory Double
Patenting
1–11, 30–39
Overall
Outcome:
1–11, 30–39

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