Claims to managing privacy in a social network survive the Mayo/Alice patent-eligibility test, says the PTAB, reversing an Examiner’s rejection under 35 U.S.C. § 101. Ex parte Drake Sutton-Shearer, Appeal 2015-003977, Application 12/770,4711, Technology Center 3600 (PTAB Feb. 28, 2017). Citing Federal Circuit decisions in Enfish, LLC v. Microsoft Corp. and Affinity Labs of Tex., LLC v. DIRECTV, LLC, the PTAB panel thought that the present claims improved the functioning of a computer, rather than simply implementing known practices in a conventional computer, and thus were more than an abstract idea under the familiar Mayo/Alice test.
Pending independent claim 8 was taken as representative:
A computer-implemented method of hosting a social network, wherein the method is implemented in a server configured to host webpages that define views of the social network, and to transmit the webpages to client computing platforms that request the webpages over a network, the server comprising one or more processors configured to execute one or more computer program modules, the method comprising:
executing, on the one or more processors of the server, one or more computer program modules configured to assemble webpages defining views of a wall associated with a first entity;
executing, on the one or more processors of the server, one or more computer program modules configured to maintain associations between entities that use the social network;
executing, on the one or more processors of the server, one or more computer program modules configured to transmit a certificate from a second entity to the first entity;
executing, on the one or more processors of the server, one or more computer program modules configured to make, responsive to the certificate being a private certificate, the certificate viewable on the wall of the first entity by other entities that are associated with the second entity and to make the certificate hidden on the wall of the receiving entity from other entities that are not associated with the second entity; and
executing, on the one or more processors of the server, one or more computer program modules configured to make, responsive to the certificate being a public certificate, the certificate viewable by other entities on the wall of the first entity without regard for associations with the second entity.
The PTAB criticized the Examiner for failing to specifically address any of the claim limitations. Instead, the Examiner “generally found” that the claims were “directed to . . . managing the privacy of content posted on a social network . . . [and thus] drawn to an abstract idea [and] do not recite limitations that are ‘significantly more’ than the abstract idea.” To the contrary, said the PTAB: as the Appellant had argued, “[t]he present invention describes a much more detailed system than is suggested by the Examiner’s … shorthand description and analysis.”
In particular, claim 8 survived Alice step 1 (abstract idea). The Specification described “a problem of information privacy management with respect to” social networks. Moreover, “[t]he inventor has solved this problem by including a mechanism to control privacy.” What was this solution? Well, like claim 8, all claims recited “one or more computer program modules” for managing private certificates.
Just as there is no prohibition against patent-eligibility of “software per se,” this PTAB panel thought that “[t]he problem with controlling private information in social networks is not itself necessarily patent-ineligible.” The Examiner contended that the claims were merely directed to “managing the privacy of content posted on a social network,” but the PTAB found there was more. Specifically, the claims provided “an improvement in the mechanism by which social networks manage information privacy.” Therefore, the claims were not directed to an abstract idea, and Alice step 2 did not even need to be considered.
Rejections under 35 U.S.C. were also reversed.
Lessons for Practice
What lessons can we draw from a non-precedential PTAB decision that – let’s be honest – easily could have been decided differently by a different panel? In fact, there are at least two good lessons here.
First, when the Examiner makes a general assertion that a claim is “abstract,” and fails to specifically address the rejected claim limitations, as the Examiner did here, that’s a problem (for the examiner). True, the PTAB can make sua sponte rejections and findings of fact, but this panel had no problem accepting the Applicant’s invitation to look beyond the Examiner’s superficial reasoning.
Second, not only can claims often be saved by showing a solution to a technical problem, but, if this case is any guide, the problem-solution approach has traction in overcoming Section 101 rejections even where the claimed solution is not so “technical.” At least to me, claim 8 (above) certainly does not seem to improve the functioning of a computer. Even if Section 112(f) was nowhere mentioned, the purportedly innovative claim element, “computer program modules configure to” manage privacy certainly seem to be functional limitations. But they were narrow enough, and enough different from the prior art, that they survived the Alice challenge. At least before this panel.