Ex Parte Ranjan et al

Patent Trial and Appeal Board

May 31, 2018

14675164 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/675,164 03/31/2015 Nisheeth Ranjan
106752 7590 06/04/2018
Hickman Palermo Becker Bingham /Linkedln/Microsoft
1 Almaden Boulevard, Floor 12
San Jose, CA 95113
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
60352-0105 1046
EXAMINER
WOOD, WILLIAM C
ART UNIT PAPER NUMBER
2193
NOTIFICATION DATE DELIVERY MODE
06/04/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NISHEETH RAN JAN and MICHAEL LEEDS 1
Appeal2017-005271
Application 14/675,164
Technology Center 2100
Before DAVID M. KOHUT, KAMRAN JIVANI, and SCOTT E. BAIN,
Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review, under 35 U.S.C. § 134(a), of the
Examiner's Final rejection of claims 1-18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Linkedin Corporation.
App. Br. 2.
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Application 14/675,164
INVENTION
"The present invention is directed to methods and systems for
providing personal connection alerts." Abstract.
Claim 1 is selected as representative of all claims and reproduced
below. See 37 C.F.R. § 4I.37(c)(l)(iv) (representative claims).
1. A computer system for finding one or more targets for a
particular user comprising:
a storage comprising:
a set of connection data that indicates that the particular
user has joined one or more communities that include a
first community;
a first set of community data that indicates that a first
plurality of users are members of the first community,
wherein the first community includes one or more first
users who are not primary connections of the particular
user;
one or more processors;
one or more storage media storing instructions which, when
executed by the one or more processors, cause:
receiving, from the particular user using a client computer,
a search that specifies one or more search criteria;
identifying, from the storage, the set of connection data
that is associated with the particular user;
based on the set of connection data, identifying the first
community that the particular user has joined;
based on the first community, identifying, within the first
set of community data from the storage, the first plurality
of users;
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in response to receiving the search, determining, based on
comparing the one or more search criteria with a first
plurality of records that are associated with the first
plurality of users, that one or more first records in the first
plurality of records satisfies the one or more search
criteria, and
in response to determining that that one or more first
records in the first plurality of records satisfies the one or
more search criteria, sending, to the client computer, a
notification identifying at least a first target that
corresponds to a first record in the one or more first
records.
REJECTIONS
Claims 1-18 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception of patent-eligible subject matter. Final Act. 2-3; see also
Ans. 3--4
EXAMINER'S FINDINGS
The Examiner finds claim 1 recites only a judicially-recognized
abstract idea-namely the human activity of collecting, recognizing,
organizing, and storing information-and a conventional implementation
thereof. Final Act. 4; see also Ans. 7. In support, the Answer states in part: 2
[T]he "receiving," "identifying," "determining," "comparing"
or "indicating" [claim] steps describe receiving user requests to
identify potential contacts[, which] is a human activity[.]
[Ans. 6.]
Similar examples of abstract ideas identified by the courts
include "[ c ]ollecting data, recognizing certain data within the
collected data set, and storing that recognized data in a
2 As reflected by the bracketed citations, the ensuing quotes are not
contiguous statements of the Answer.
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Application 14/675,164
memory" and "[ u ]sing categories to organize, store, and
transmit information." [Id. at 7.]
The claims amount to no more than performing a human
activity by using a computer and a network. [Id.]
[T]he [argued] limitations ... are merely additional steps that
could be performed by a human within the overall concept of
"identifying users who are more than one degree of separation
away from a particular user using community information[.]"
[Id. at 8 (quoting App. Br. 20).]
The [ argued] improvement [ could be] multiple individuals
[having] sets of Rolodex cards containing their personal
contacts [ and s ]earching through the multiple sets of cards to
identify a user or individual who is more than one degree of
separation from another individual[.] [Id. at 9--10.]
"Receiving user requests to identify potential contacts" clearly
... involves organizing human activity that can easily be
accomplished without the aid of a general-purpose computer.
[Id. at 11.]
[E]ach of the noted limitations amount to steps that a human
could perform in the context of the Rolodex example[.] [Id. at
12.]
PRINCIPLES OF LAW
The Supreme Court interprets 35 U.S.C. § 101 to include an implicit
exception, excluding from patentability "[l]aws of nature, natural
phenomena, and abstract ideas." See e.g., Alice Corp. Pty Ltd. v. CLS Bank
Int'!, 134 S.Ct. 2347, 2354 (2014). In Alice, the Court reiterated the
two-step framework previously set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
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from those that claim patent-eligible applications of those concepts." Alice,
134 S.Ct. at 2355.
The first step is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts," such as an abstract idea. Id. If
the claims are not directed to an abstract idea, the inquiry ends. Id.
Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "individually and 'as an ordered combination"
to determine whether there are additional elements [that] "transform the
nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78). We "look to whether the claims ... focus on a specific
means or method that improves the relevant technology or are instead
directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." See Smart Sys. Innovations, LLC v.
Chicago Transit Auth., 873 F.3d 1364, 1371 (Fed. Cir. 2017) (quoting
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed.
Cir. 2016)). "[S]imply appending generic computer functionality to lend
speed or efficiency to the performance of an otherwise abstract concept does
not meaningfully limit claim scope for purposes of patent eligibility." CLS
Bank Int 'l v. Alice Corp. Pty., 717 F.3d 1269, 1286 (Fed. Cir. 2013), aff'd by
Alice.
ANALYSIS
Appellants' arguments do not persuade us the Examiner erred
in rejecting claim 1. Moreover, we adopt the Examiner's findings within the
Final Action and Answer. Final Act. 2--4; see also Ans. 3-12. We add the
following for emphasis.
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The Examiner presents three principle determinations within the
findings addressed above. See supra 3--4 (Examiner's findings). First,
claim 1 is directed to a human activity of identifying contacts with more than
one degree of separation (from him/her), e.g., as could be done with a
Rolodex. Id. Second, this claimed activity is analogous to a
judicially-recognized abstract idea of human activity, particularly collecting,
recognizing, organizing, and storing information. Id. Third, this claimed
activity is implemented via only generic computer technology. Id. We
agree with these findings.
Firstly, we agree claim 1 is directed to a human activity of identifying
new contacts, e.g., as may be performed by borrowing a friend's Rolodex.
Ans. 9--11 (see supra 3--4, Examiner's findings). Claim 1 's preamble recites
the invention as "finding one or more targets for a particular user."
Claim 1 's body recites this search for a target as searching records that
include "users who are not primary connections of the particular user."
Further, all recited operations are directed to these ends.
Secondly, we agree the foregoing human activity is analogous to the
judicially-recognized human activity (abstract idea) of collecting,
recognizing, and storing information (see supra 3--4, Examiner's findings),
e.g., as in Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat. Association, 776 F.3d 1343, 1347 (Fed. Cir. 2014). Claim 1 's
operations receive a search, identify data including records of users lacking a
primary connection to the particular user, search the data, and return a target.
We find no material difference between this claimed activity and collecting
information (claimed receiving of the search and data), recognizing
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information ( claimed identifying of the user, secondary connections, and
target), and storing information (claimed returning of the target).
Claim 1 also requires organizing of the data and search-namely
identifying a "first community" that includes the "particular user" and "users
who are not primary connections" thereof, identifying therein a "first
plurality" of connections, and searching the first plurality for the target
record. Adding such categorical organization to the foregoing human
activity ( e.g., to recognizing and searching information) is, however, also a
judically-recognized human activity. See Intellectual Ventures I LLC v. Erie
Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017); 3 see also Cyberfone Sys.,
3 Intellectual Ventures explains:
[T]he invention is drawn to the abstract idea of "creating an
index and using that index to search for and retrieve data." J.A.
63 .... This type of activity, i.e., organizing and accessing
records through the creation of an index-searchable database,
includes longstanding conduct that existed well before the
advent of computers and the Internet.
We have previously held other patent claims ineligible for
reciting similar abstract concepts that merely collect, classify,
or otherwise filter data. For example, in In re TL!
Communications LLC Patent Litigation, we concluded that the
concept of classifying data ( an image) and storing it based on
its classification is abstract under step one. [TL!
Communications LLC Patent Litigation,] 823 F.3d 607, 611. In
Content Extraction, we similarly held that the concept of data
collection, recognition, and storage abstract as well. 776 F.3d
at 1347. More recently, in Bascom Global Internet Services,
Inc. v. AT&T Mobility LLC, we held that a claim to a "content
filtering system for filtering content retrieved from an Internet
computer network" was directed to an abstract idea. 827 F.3d
1341, 1348--49 (Fed. Cir. 2016). Here, the claimed creation of
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LLC v. CNN Interactive Grp., Inc., 558 F. Appx. 988, 992 (Fed. Cir. 2014)
(nonprecedential) (Abstract idea of "using categories to organize, store, and
transmit information."); Final Act.4 ("Using categories to organize, store,
and transmit information.") (see supra 3--4, Examiner's findings).
Thirdly, we agree claim 1 's additional elements-that is, the claimed
use of computer technology-merely implement the foregoing human
activity via conventional technology. See Smart Systems Innovations, 873
F.3d at 1371 ("[M]erely invoke generic processes and machinery.") (see also
supra 3--4, Examiner's findings). Even Appellants' Specification indicates
the argued improvement of identifying new contacts is not a technological
improvement, but rather an activity of seeking "introduc[tions] ... through a
shared connection, such as a common friend," conducted before the
availability "electronic forms of communication and on-line social
networks." Spec. ,r,r 3--4. Further, the Specification indicates the invention
merely leverages known databases for this purpose and, particularly, to
monitor connections over known forms of electronic communication and
social networking. Id. ,r 6. The record thus evidences that the invention's
use of computer technology merely adds greater speed and efficiency. See
CLS Bank, 717 F.3d at 1286 ("[G]eneric computer functionality to lend
speed or efficiency.").
Appellants argue the Examiner does not address the argued
improvement of "identifying users who are more than one degree of
separation away from a particular user using community information."
an index used to search and retrieve information stored in a
database is similarly abstract.
Intellectual Ventures, 850 F.3d at 1327.
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App. Br. 20; see also Reply Br. 12 ("[A] set of Rolodex cards ... is no
analog for the recited ... community data."). We are unpersuaded for each
of two reasons.
First, the argument is not commensurate with the claim scope. See
Intellectual Ventures, 838 F.3d at 1322, ("The district court erred in relying
on technological details set forth in the patent's specification and not set
forth in the claims to find an inventive concept.") (citing Accenture Global
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir.
2013) ("[T]he important inquiry for a [section] 101 analysis is to look to the
claim.")). Claim 1 does not require identifying of secondary connections,
i.e., users connected to the particular user by two or more degrees of
separation. Claim 1 requires identifying a first plurality of users that are
members of a first community including "users who are not primary
connections," and comparing search criteria to a first plurality of records
associated with the first plurality of users. Under a broadest reasonable
interpretation, these limitations require identifying and searching of records
that include users not having a primary connection to the particular user.
Second, even assuming arguendo claim 1 requires an identifying and
searching of secondary connections, the Examiner finds this activity
analogous to the human activity of sharing contacts, e.g., friends sharing
Rolodexes to acquire new contacts from one another. See supra 3--4
(Examiner's findings). We agree, and find support in Appellants' disclosure
that the invention leverages databases to improve these introductions of
contacts "through a shared connection, such as a common friend, [ that
occurred] before electronic communication and social networks." Spec.
,r,r 3---6. The Examiner also finds this human activity analogous the
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judicially-recognized human activity of collecting, recognizing, organizing
and storing information. See supra 3--4, Examiner's findings. We agree and
find support in Content Extraction and Intellectual Ventures, for the reasons
discussed above. See supra 7-8,fn. 4.
Appellants also argue: "[I]t is clear error to assert that the pending
claims are directed to human activity when all the steps of Claims 1, 8, and
15 are performed by one or more computing devices." App. Br. 21; see also
id. at 23 ( arguing no claim step "involves a person"); and Reply Br. 11. We
are unpersuaded. To the extent Appellants argue a computer-implemented
activity cannot constitute a judicially-recognized human activity, Appellants
misapprehend the controlling precedent. Rather, it is well settled that
claimed computer systems can be directed to "a process that qualifies as an
'abstract idea' for which computers are invoked merely as a tool."
Smariflash LLC v. Apple Inc., 680 F. Appx. 977, 982 (Fed. Cir. 2017)
(nonprecedential) (quoting Eefzsh, LLC v. Microsoft Corp., 822 F.3d 1327,
1335-36 (Fed. Cir. 2016) and parenthetically addressing other
computer-implemented human activity),4 cert. denied, Kun v. State Bar of
California, 138 S.Ct. 687 (2018).
4 Smariflash found a claimed processor and code directed to a human
activity and patent-ineligible. Smariflash, 680 F. Appx. at 983. Smariflash
also provides the following parenthetical description of four published cases
addressing whether a claimed computer-implemented system was directed to
human activity.
[C]ompare Eefzsh, LLC v. Microsoft Corp., 822 F.3d[] at 1336-
37 (finding computer-implemented system for improving
computer search and retrieval systems using self-referential
tables patent-eligible), with Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 716 (Fed. Cir. 2014) (finding
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Appellants also argue: "Logically, limitations that are so specific as
to distinguish all art of record cannot properly be deemed to be so generic as
to qualify as a 'generic computer function.'" App. Br. 12 ( emphasis
omitted); see also id. at 18 ("[ A ]ny situation in which a claim is held to
satisfy the inventiveness standard of 103 and fail the inventiveness standard
of [section] 101 is clearly erroneous."), and 19. We are unpersuaded. To
the extent Appellants argue claim 1 necessarily recites an inventive concept
based on the claim's alleged novelty and non-obviousness over the prior art,
Appellants misapprehend the controlling precedent. Although Alice's
second step is characterized as a search for an "inventive" concept, the
analysis is not an evaluation of novelty or non-obviousness. Rather, second
step is a search for "an element or combination of elements that is 'sufficient
to ensure that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself." Alice, 134 S.Ct. at 2355. A
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. 90.
computer-implemented system for "using advertising as a
currency [on] the Internet" to be ineligible), buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1352, 1355 (Fed. Cir. 2014)
(finding computer-implemented system for guaranteeing
performance of an online transaction to be ineligible), and
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011) (finding computer-implemented system
for "verifying the validity of a credit card transaction over the
Internet" to be ineligible).
Smariflash, 680 F. Appx. at 983.
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Appellants also argue: "Since all of the claims in the present case,
including the dependent claims, have been rejected under [section] 101, the
actual list of 'additional elements' is far longer than those simply contained
in independent Claims 1, 8, and 15." App. Br. 26. We are unpersuaded for
each of two reasons. First, per 37 C.F.R. § 4I.37(c)(l)(iv), we have selected
claim 1 as representative of all claims. 5 Second, the Examiner's failure to
address a claim is not an appealable matter, but rather addressed by a
petition to compel an explanation of the adverse action. See Ex Parte Frye,
94 U.S.P.Q.2d 1072, 1077-78 (PTAB 2010) ("Petitionable Matters"
section); 37 C.F.R. § 1.18 l(a)(l) (Petition from an examiner requirement).;
3 7 C.F .R. § 1.104 ("Nature of examination" includes requirement to provide
"reasons for any adverse action ... in an Office action.").
For the foregoing reasons, we are unpersuaded of error in the rejection
of representative claim 1. We accordingly sustain the rejection of claims 1-
18 under 35 U.S.C. § 101.
5 The Appeal Brief quotes claim 15 's language, but does not address the
alleged additional elements on the merits. App. Br. 16, 25; see also Reply
Br. 11. In the Reply Brief, Appellants additionally argue: "[I]n Claim 15,
one problem addressed is choosing between a system or a client in
identifying secondary connections of a particular user. The particular
solution is .... " Reply Br. 15. These arguments were waived. See Ex
parte Borden, 93 USPQ2d 1473, 1473-74 (BPAI 2010) (informative)
(Absent a showing of good cause, the Board does not address Reply Brief
arguments that could have been made in the Appeal Brief.).
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DECISION
We affirm the rejection of claims 1-18.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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