Xiao ZHU et al.

Patent Trials and Appeals Board

Oct 22, 2020

12748145 - (D) (P.T.A.B. Oct. 22, 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.
12/748,145 03/26/2010 Xiao Ming ZHU 8011-6234-D1-C1 4581
168743 7590 10/22/2020
Jordan IP Law, LLC (Facebook)
12501 PROSPERITY DRIVE
SUITE 401
SILVER SPRING, MD 20904
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
10/22/2020 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):
admin@jordaniplaw.com
info@jordaniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XIAO MING ZHU and CHRISTOPHER LUNT
____________

Appeal 2020-003201
Application 12/748,145
Technology Center 3600
____________

Before CAROLYN D. THOMAS, KARA L. SZPONDOWSKI, and
PHILLIP A. BENNETT, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12, 17, 18, and 20. Claims 13–16
and 19 are canceled. See Claim Appendix. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
As an initial matter, we note that we previously issued a decision with
respect to this application. Specifically, we affirmed the Examiner’s
rejection of claims 1–12, 15, 17, 18, and 20. See Decision in Appeal 2017-
011756 mailed April 26, 2019, hereinafter “Previous Decision.” In the
Previous Decision, we affirmed the Examiner’s § 112 and § 101 rejections,

1 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. 3.
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and reversed the Examiner § 103(a) rejection. See Previous Decision 16. In
the present Appeal, only a rejection under § 101 remains.
We AFFIRM.
The present invention relates generally to computing a compatibility
score of individuals in a social network. See Spec. Abstract.
Independent claim 1, reproduced below, is representative of the
appealed claims:
1. A method comprising, by one or more computing devices
associated with an online social network:
receiving, at an application server of the online social
network, from a client device of a first user of the online social
network, a first set of expressed interests of the first user;
receiving, at the application server of the online social
network, from the client device of the first user, a request to search for
compatible users on the online social network, wherein the request
specifies a predetermined degree of separation;
sending, by the application server of the online social
network, a query to a social graph server of the online social network
for identifiers of one or more other users of the online social network,
wherein the social graph server of the online social network maintains
a social network graph comprising a plurality of nodes, each node
corresponding to a respective user of the online social network,
wherein the social graph server of the online social network has one or
more dedicated memory devices for storing an adjacency list
indicating all first degree relationships between the plurality of nodes,
wherein the social graph server of the online social network can
identify a degree of separation between any two nodes based on the
adjacency list stored on the dedicated memory devices, wherein the
first user corresponds to a first node of the plurality of nodes, and
wherein the query requests identifiers of one or more other users
corresponding to one or more nodes of the plurality of nodes that are
within the predetermined degree of separation;
receiving, by the application server of the online social
network, from the social graph server of the online social network,
responsive to the query, an identifier of a second user of the online
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social network, wherein the degree of separation between nodes
corresponding to the first and second users is within the
predetermined degree of separation;
accessing, from a member database of the online social
network, a second set of expressed interests of the second user;
normalizing, by the application server of the online social
network, the first set of expressed interests received from the client
device of the first user to obtain a first set of normalized interests of
the first user;
normalizing, by the application server of the online social
network, the second set of expressed interests accessed from the
member database to obtain a second set of normalized interests of the
second user;
determining, by the application server of the online social
network, for each of one or more combinations of a normalized
interest in the first set of normalized interests of the first user and a
normalized interest in the second set of normalized interests of the
second user, a probability that a user of the online social network will
identify both the normalized interest in the first set of normalized
interests and the normalized interest in the second set of normalized
interests as interests of the user;
calculating, by the application server of the online social
network, an interest compatibility score between the first and second
users based at least in part on the probabilities determined for the
combinations of normalized interests; and
sending, to the client device of the first user responsive to
the request to search for compatible users on the online social
network, information associated with the second user for display to
the first user if the calculated interest compatibility score between the
first and second users is higher than a pre-determined score.

Appellant appeals the following rejection:
Claims 1–12, 17, 18, and 20 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
Non-Final Act. 3–6.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
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thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with the 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.”). For example, 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,
69 (1972)).
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The USPTO published revised guidance on the application of 35
U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised 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) (jointly referred to as “Revised Guidance”); see
also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942
(Oct. 18, 2019) (notifying the public of the availability of the October
update).
Under the Revised Guidance “Step 2A,” the office first looks to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). 84 Fed. Reg. at
51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is 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. 84 Fed. Reg. at 56.
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Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claim 1, and similarly, non-
transitory computer readable storage media claim 7, the Examiner
determines that the claims recite “Certain Methods of Organizing Human
Activity,” particularly “Managing personal behavior or relationships or
interactions between people.” Final Act. 4–5. For at least the following
reasons, we are persuaded that representative claim 1 recites at least this
abstract idea. In our Previous Decision, we agreed with the Examiner that
the claims also recited a mental process. See Previous Decision 6–9. Our
“mental process” determination in the Previous Decision is equally
applicable to the present claims, and is incorporated herein. As such, the
claims encompass plural abstract ideas. This Decision shall focus on the
“certain methods of organizing human activity” abstract idea given that the
Previous Decision has already discussed mental processes.
The Specification discloses:
The present invention bases compatibility of two individuals who are
members of a social network on the compatibility of interests
expressed by these individuals, and provides for methods for
quantifying compatibility of interests, scoring compatibility of
the two individuals in accordance with compatibility of interests
expressed by these individuals, and presenting compatibility results
that include the compatibility scores.
Spec. ¶ 5. In other words, Appellant’s Specification illuminates that the
character of the present invention looks at the interests expressed by
individuals and provides compatibility results based thereon, i.e., certain
methods of organizing human activity, such as managing personal behavior
and/or social activities between people. See also Ericsson Inc. v. TCL
Commc’ns Tech. Holdings Ltd., 955 F.3d 1317, 1325 (Fed. Cir. 2020)
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(“[T]he specification may be helpful in illuminating what a claim is directed
to [but it] must always yield to the claim language when identifying the ‘true
focus of a claim.”’) (citation omitted).
For example, claim 1 recites at least the following limitations:
(1) “receiving . . . a first set of expressed interests of the first user,”
(2) “sending . . . a query . . . for identifiers of one or more other users,”
(3) “receiving . . . an identifier of a second user,” (4) “accessing . . . a second
set of expressed interests of the second user,” (5) “normalizing . . . the first
set of expressed interests . . . to obtain a first set of normalized interests of
the first user,” (6) “normalizing . . . the second set of expressed interests . . .
to obtain a second set of normalized interests of the second user,”
(7) “determining . . . a probability that a user of the online social network
will identify both the normalized interest,” (8) “calculating . . . an interest
compatibility score between the first and second users,” and (9) “sending . . .
information associated with the second user for display to the first user if the
calculated interest compatibility score . . . is higher than a predetermined
score.” These limitations, under their broadest reasonable interpretation,
recite managing personal behavior of individuals, including finding
compatible social activities between individuals, which is an abstract idea
under the Revised Guidance.
Appellant challenges the Examiner’s determinations on the ground
that “the Examiner fails to articulate any reasoning as to why the identified
limitations fall within the asserted subject matter grouping.” Appeal Br. 8.
Here, the Examiner identifies specific claim limitations and makes a
determination as to which abstract idea such limitations fall within. See
Non-Final Act. 4–5; Ans. 6–7. As such, we find that the Examiner provided
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an adequate basis for determining that the claims recite an abstract idea.
Additionally, in the Previous Decision, we illustrated how the claim
limitations recite mental processes (see Previous Decision 6–9), and supra
we illustrate how the claims recite certain methods of organizing human
activity.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 1 recites an abstract idea, which we conclude is at least
certain methods of organizing human activity, i.e., managing personal
behavior between people, including social activities.
Step 2A—Prong 2 (integration into Practical Application) 2
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Here, we consider the claim as a whole, i.e., “the limitations
containing the judicial exception as well as the additional elements in the
claim besides the judicial exception . . . evaluated together to determine
whether the claim integrates the judicial exception into a practical
application.” October 2019 Patent Eligibility Guidance Update, at 12,
available at http://www.uspto.gov/PatentEligibility.
Beyond the abstract ideas noted above in the Prong-1 analysis, claim 1
also recites several additional elements: “computing devices,” “online social
network,” “application server,” “client device,” “a social graph server,” “a

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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plurality of nodes,” “memory devices,” “a member database,” and “display.”
However, these additional elements do not: (1) improve the functioning of a
computer or other technology; (2) are not applied with any particular
machine (except for a generic computer); (3) do not effect a transformation
of a particular article to a different state; and (4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
MPEP §§ 2106.05(a)–(c), (e)–(h). In other words, the aforementioned
additional element (or combination of elements) recited in at least
Appellant’s representative claim 1 do not integrate the judicial exception
into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55
(“Prong 2”).
Appellant contends that “the Examiner’s minimal and conclusory
reasoning fails to provide notice of the reasons for ineligibility that would
enable Appellant to effectively respond.” Appeal Br. 9. Appellant further
contends that “the Examiner fails to ‘identify any additional elements
beyond the judicial exceptions,’ much less ‘evaluate the additional elements
individually and in combination.’” Id. We disagree with Appellant.
Here, the Examiner explicitly highlights claim limitations from claim
1, including “the social graph server,” “memory devices,” and “the plurality
of nodes,” and concludes that the operations performed are “just ordinary
fashion and/or practice” and that “[t]he computer is being used as a tool.”
See Non-Final Act. 5. Furthermore, in our Previous Decision, we also
highlighted the additional elements and provided our analysis on why such
additional elements fail to integrate the judicial exception into a practical
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application. See Previous Decision 9–13. Our previous Prong-2 analysis is
incorporated herein. Thus, we find unavailing Appellant’s aforementioned
contention, given that the additional elements have been identified and
evaluated appropriately.
Appellant further contends that “these claims improve the accuracy
and compatibility of search results provided to the querying user . . . also
improve the functioning of an online social network.” Appeal Br. 10.
Specifically, Appellant analogizes claim 1 to Example 42 from “Subject
Matter Eligibility Examples: Abstract Ideas” released January 7, 2019 and
argues that “much like Example 42, the present claims contain additional
elements directed to normalizing expressed interests received from specific
users, which is directly analogous to converting updated information
received from users into a standardized format.” Id. at 11.
The claimed invention in Example 42, however, was intended to solve
the problem of format inconsistencies in medical records that are stored
locally at various medical offices preventing the records from being shared
easily from one office to another. The format inconsistencies of the medical
records is a technical problem that the claimed invention of Example 42
solves by converting the various medical records into a standardized format.
Unlike Example 42, the claimed invention does not solve a technical
problem related to format inconsistencies. Rather, the problem the invention
is intended to solve is to collect and analyze “interest” information to find
compatible matches. This problem is not technical in nature. Rather, the
invention merely “encourages people to enter interests so that the site can
find other people who share the same or compatible interests.” See Spec. ¶
9. The integration of the judicial exception in Example 42 was based on a
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technical improvement to how information could be standardized when input
in a non-standardized way. The claims here provide no similar improvement
to how data is stored, converted, or otherwise. Rather, the process recited in
claim 1 merely invokes a computer as a tool for carrying out the process of
finding compatible users. See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335–36 (Fed. Cir. 2016) (“[T]he first step in the Alice inquiry in this
case asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities (i.e., the self-referential table for a
computer database) or, instead, on a process that qualifies as an ‘abstract
idea’ for which computers are invoked merely as a tool.”).
For at least the reason noted supra, we determine that claim 1
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Thus, representative claim 1 is directed to the
aforementioned abstract idea.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on whether an additional element or combination of elements:
(1) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field,
which is indicative that an inventive concept may be present; or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.
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See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
Appellant contends “[c]laims 1 and 7 recite unconventional steps at a
high level of specificity . . . [and] Figure 2 and paragraphs 0023 and 0024 of
the Specification further teach a detailed configuration and complex
interaction of specialized computing devices required by the claimed
invention.” Appeal Br. 13. We disagree with Appellant.
As noted in the Previous Decision, and reiterated here, “we find all
claims on appeal merely use a generic computer or processor.” See Previous
Decision 11 (citing Spec. ¶ 23). The claimed steps recite generic functions
of a generic processor that performs basic receiving, calculating, storage,
and transmission functions. See In re TLI Commc’ns LLC Patent Litig., 823
F.3d 607, 614 (Fed. Cir. 2016); Alice, 573 U.S. at 222 (“Simply appending
conventional steps, specified at a high level of generality, [is] not enough to
supply an inventive concept.”).
Furthermore, “[g]roundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Ass’n. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and
non-obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) ( “The ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.”). Thus, Appellant’s contention that “the Office
Action does not include any rejections based on prior art” (see Appeal Br.
14) is unavailing given that such a finding is of no relevance by itself to
satisfy the § 101 inquiry.
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Finally, regarding Appellant’s contention that “[t]he claims here do
not seek to monopolize every solution to the problem being solved” (see
Appeal Br. 14), we note that although pre-emption “‘might tend to impede
innovation more than it would tend to promote it,’ thereby thwarting the
primary object of the patent laws” (Alice, 573 U.S. at 216 (citing Mayo, 566
U.S. at 71)), “the absence of complete preemption does not demonstrate
patent eligibility” (Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015)). Moreover, because we find the claimed
subject matter covers patent-ineligible subject matter, the pre-emption
concern is necessarily addressed. “Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, . . .
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, 788 F.3d at 1379.
Because Appellant’s independent claim 1 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” we sustain the Examiner’s rejection
of the claims 1–12, 17, 18, and 20 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter in light of Alice, its progeny, and the Revised
Guidance.

CONCLUSION
The Examiner’s rejection of claims 1–12, 17, 18, and 20 under
35 U.S.C. § 101 is affirmed.

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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–12, 17, 18,
20
101 Eligibility 1–12, 17,
18, 20

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED