Ex Parte Boland et al

Patent Trial and Appeal Board

Apr 4, 2017

13367607 (P.T.A.B. Apr. 4, 2017)

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.
13/367,607 02/07/2012 Brian Thomas Boland 26295-19699 2496
87851 7590 04/06/2017
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center PATEL, DIPEN M
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
04/06/2017 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):
ptoc @ fenwick.com
fwfacebookpatents @ fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex Parte BRIAN THOMAS BOLAND and SEAN MICHAEL BRUICH
Appeal 2015-0052851
Application 13/367,6072
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—5, 8—11, and 13—24. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
November 6, 2014) and Reply Br. (“Reply Br.,” filed April 17, 2015), and
the Examiner’s Answer (“Ans.,” mailed February 20, 2015) and Final Office
Action (“Final Act.,” mailed May 20, 2014).
2 Appellants identify Facebook, Inc. as the real party in interest. App. Br. 2.
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Application 13/367,607
CLAIMED INVENTION
Appellants’ claimed invention “relates generally to social networking,
and in particular to providing display items to users of a social networking
system” (Spec. 11).
Claims 1,18, and 19 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
maintaining an ad campaign in a data store, the ad
campaign comprising a plurality of requests for display items,
the display items including a first plurality of display items of a
first display item type and a second plurality of display items of
a second display item type;
receiving a predetermined display sequence defining a
time-based ordering of display item types for displaying the
display items to be shown to an individual user in connection
with the ad campaign;
identifying a viewing user of an online system;
for each of a plurality of opportunities to provide a content
item to the viewing user, the opportunities occurring serially over
time:
determining, based on the predetermined display
sequence, a display item type to provide to the viewing
user in connection with the ad campaign,
selecting by a processor a display item based at least
in part on the display item type determined for the
opportunity, and
sending the selected display item for display to the
viewing user.
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REJECTIONS
Claims 1—5, 8—11, and 13—24 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1—3, 9—11, 13—16, 18, 19, and 21—24 are rejected under
35 U.S.C. § 103(a) as unpatentable over Novikov et al.
(US 2011/0153377 Al, pub. June 23, 2011, hereinafter “Novikov”) and
Gaelle (WO 2011/061586 Al, pub. May 26, 2011).3
Claims 4, 5, 8, 17, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Novikov, Gaelle, and Behroozi et al.
(US 2011/0131093 Al, pub. June 2, 2011, hereinafter “Behroozi”).
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CIS
BankInt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice , reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim
3 The Examiner identifies claim 20 as among the claims rejected as obvious
over the combination of Novikov and Gaelle (Final Act. 2). However,
claim 20 depends from claim 17, which stands rejected as obvious over the
combination of Novikov, Gaelle, and Behroozi {id. at 14). Therefore, we
treat claim 20 as subject to the same rejection as claim 17.
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laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of these concepts.” Alice Corp., 134 S. Ct. at
2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts” (id.), e.g., to an
abstract idea. If the claims are not directed to a patent-ineligible concept, the
inquiry ends. 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.” Alice
Corp., 134 S. Ct. at 2355 (quotingMayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, 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 Enflsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Appellants argue here that the § 101 rejection cannot be sustained
because “the Office Action lacks the requisite evidence to support its finding
that claim 1 is an abstract idea” (Reply Br. 4). Appellants assert that the
Supreme Court held, in Bilski, that “specific references must be cited to
support a finding that an alleged abstract idea is both (1) long prevalent in
the field (i.e., widely used), and (2) long known in the field” (id. at 5), and
that the Board has adopted this same standard (id. (citing PNC Bank v.
Secure Axcess, CBM2014-00100, 2014 WL 4537440 (PTAB September 9,
2014)). Appellants, thus, maintain that because the Office Action fails to
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cite any supporting references, the Examiner has failed to provide “the
‘substantial evidence’ needed to establish a prima facie case that the claims
are directed to an abstract idea” {id.).
As an initial matter, we find nothing in Bilski that requires the Office
to identify specific references to support a finding that a claim is directed to
an abstract idea. Nor, contrary to Appellants’ assertion, did this Board hold,
in PNC Bank v. Secure Axcess, that there is any such requirement.
Here, in rejecting the pending claims under § 101, the Examiner
analyzed the claims using the Mayo two-step framework, in accordance with
the guidance set forth in the USPTO’s “2014 Interim Guidance on Patent
Subject Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014).
Specifically, the Examiner notified Appellants that independent claims 1,18,
and 19 are directed to “presenting targeted advertisements to a particular
user based on a pre-determined sequence of ads which are
ordered/reordered/updated based on time”; that this is an abstract idea; and
that the claims do not include limitations that are “significantly more” than
the abstract idea because the additional elements merely involve “generic
computer functionalities, which are well-understood, routine, and
conventional activities previously known to the industry” (Ans. 5—6). The
Examiner, thus, set forth a proper rejection under § 101 such that the burden
shifted to Appellants to explain why the claims are patent-eligible.
Appellants argue that even if the claims may be related to the idea of
“presenting targeted advertisements to a particular user based on a pre­
determined sequence of ads which are ordered/reordered/updated based on
time,” the claims “are not essentially ‘directed to if within the meaning of
A lice’'’ because the claims do not preempt or otherwise tie up the use of
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“presenting targeted advertisements to a particular user based on a pre­
determined sequence of ads which are ordered/reordered/updated based on
time” so that others cannot use the idea (Reply Br. 5—6). That argument is
similarly unpersuasive.
Although the Supreme Court has described “the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption,” see Alice Corp., 134 S. Ct.
at 2354, characterizing pre-emption as a driving concern for patent eligibility
is not the same as characterizing pre-emption as the sole test for patent
eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). Although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id.
Turning to the second step of the Alice framework, Appellants assert
that claims 1—5, 8—11, and 13—24 recite “specific inventive concepts that are
not found in the prior art,” and that “[t]hese features constitute ‘inventive
concepts’ that are ‘substantially more’ than the generically alleged
‘presenting targeted advertisements to a particular user based on a pre­
determined sequence of ads which are ordered/re-ordered/updated based on
time’” (Reply Br. 7). Yet to the extent Appellants argue that the claims
necessarily contain an “inventive concept” based on their alleged novelty
and non-obviousness {id.), Appellants misapprehend the controlling
precedent. Although the second step in the Alice/Mayo framework is termed
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a search for an “inventive concept,” the analysis is not an evaluation of
novelty or non-obviousness, but rather, 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, 132 S. Ct.
at 1304
Contrary to Appellants’ assertions, we also find no parallel between
the present claims and those in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Federal Circuit
determined that, although the patent claims at issue involved conventional
computers and the Internet, the claims addressed the problem of retaining
website visitors who, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be transported instantly away from a
host’s website after “clicking” on an advertisement and activating a
hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal Circuit, thus, held
that the claims were directed to statutory subject matter because they claim a
solution “necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.” Id.
Appellants argue that, similar to DDR Holdings, the claimed invention
here addresses a problem (i.e., “a sequencing for targeting advertisements to
the user who is viewing the advertisement”) that arises specifically in the
realm of computer networks, and whose solution is necessarily rooted in
computer technology (Reply Br. 8). Yet, unlike the situation in DDR
Holdings, there is no indication here that a computer network, or the
Internet, in particular, is used other than in its normal, expected, and routine
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manner for requesting, receiving, and processing data. Ad identification is
not a technical problem; it is a marketing problem. And selecting an
advertisement for targeting to a user based on information about the user and
a display sequence is a commercial solution, not a technical solution.
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting claims 1—5, 8—11, and 13—24 under 35U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection.
Obviousness
Independent Claim 1 and Dependent Claims 2, 3, 9—11, and 13 16
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because neither
Novikov nor Gaelle, alone or in combination, discloses or suggests
“receiving a predetermined display sequence defining a time-based ordering
of display item types for displaying the display items to be shown to an
individual user in connection with the ad campaign,” as recited in claim 1
(App. Br. 4-8).
Novikov discloses a social networking system that uses information
from and about its users to select social networking content and advertising
for presentation to users in a way that optimizes one or more optimization
goals, e.g., monetization, user sharing, user engagement, system growth, and
user communication (Novikov, Abstract; see also id. 1 87). Novikov
discloses that a content item selector of the social networking system
determines what type of content item (e.g., an advertisement, a news story, a
photo, a video) to add to an information window based on what optimization
goal is being optimized by the system and the ability of that particular type
of content to promote the optimization goal {id. 65, 86). For example, the
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goal for a new user of the social networking system may be to encourage
growth of a user’s social networking system, i.e., the optimization goal is
increased user communication, leading to the selection of content types
associated with encouraging the user to link to more connections {id. 1 87).
Novikov discloses that the goal also may change over time, e.g., once a user
has formed lots of connections, the goal may be to focus on monetization,
providing ads to the user to increase revenue {id. 189).
Gaelle is directed to a system and method for distributing
advertisements using a wireless communication network, and discloses that
an advertising message identifies a plurality of advertisements and specifies
an order for presentation of the advertisements (Gaelle, Abstract). These
advertisements may include graphics, video, sound, or other media for
conveying information to a user about a product or service {id. at 2,
11. 20-22).
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner asserts
that, under a broadest reasonable interpretation, a person of ordinary skill in
the art would have understood that Novikov teaches the subject matter being
claimed, i.e., the argued limitation, because “Novikov discloses which item
types to present to a user based on optimization goals, see [0007]; [0063];
[0086] and the selection of content changes over time for a particular user,
see [0086]; [0089] . . .” (Final Act. 4; see also id. at 5—6 and Ans. 7—8).
However, the Examiner explains that, in view of compact prosecution, an
additional reference, i.e., Gaelle, is cited that explicitly discloses that content
to be presented to users can be linked in a defined sequential order (Final
Act. 4—6). The Examiner notes that Novikov and Gaelle are in the same
field of endeavor, and the Examiner concludes that it would have been
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obvious to a person of ordinary skill in the art at the time Appellants’
invention was made to have “modified the teachings of Novikov in view of
Gaelle in order to display a plurality of ads in a certain order or sequence (id.
at 6). Specifically addressing Appellants’ arguments, the Examiner further
explains that “both references teach item type,” i.e., different types of
advertisements such as graphics, video, audio, and that the “advertisements
are . . . selected and targeted to the user based on predetermined time-based
sequence (as taught by Gaelle) and targeted based on optimization which
changes over time (as taught by Novikov)” (id. at 19).
As an initial matter, we agree with Appellants that neither Novikov
nor Gaelle discloses or suggests that a predetermined display sequence is
received that defines an ordering of item types (App. Br. 5—6). As described
above, Gaelle discloses an advertising content message that identifies a
plurality of advertisements and specifies an order for presentation of the
advertisements (Gaelle, Abstract). Gaelle also discloses that the
advertisements may include graphics, video, sound, or other media (id. at 2,
11. 20—22). However, we agree with Appellants that there is nothing in the
cited portions of Gaelle that discloses or suggests that Gaelic’s advertising
content message “defm[es] a time-based ordering of display item types,” as
recited in claim 1 (App. Br. 5). There also is no such disclosure or
suggestion in the cited portions of Novikov, which merely disclose that item
types are selected based on the optimization goal being pursued, and not on
a predetermined order of item types, as called for in claim 1.
The Examiner proposes in the rejection, as best understood, to modify
Novikov, in view of Gaelic’s ordering of advertisements in accordance with
its advertising content message, to present content types in a predetermined
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order. Yet Gaelle merely discloses presenting advertisements (that may be
of different types) in a predetermined order — a process that, as Appellants
observe, is different from “a process in which the type is first determined
based on the predetermined order, and then an item is . . . selected based in
part on that determined type,” as called for in claim 1 (App. Br. 10).
Moreover, even putting that deficiency aside, we agree with
Appellants that the rejection cannot stand because modifying Novikov as the
Examiner proposes, i.e., such that selection of a type of content item is based
on a predetermined order of types rather than based on goal optimization,
would impermissibly change the principle of operation of Novikov, which is
to select social networking content, i.e., content item types, for presentation
to users in a way that optimizes for one or more optimization goals (App.
Br. 7 (citing Novikov 7, 9, Abstract)). Combinations that change the
“basic principles under which the [prior art] was designed to operate,” In re
Ratti, 270 F.2d 810, 813 (CCPA 1959), or that render the prior art
“inoperable for its intended purpose,” In re Gordon, 733 F.2d 900, 902
(Fed. Cir. 1984), may fail to support an obviousness determination.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the Examiner’s rejection of dependent claims 2, 3, 9—11, and 13—16.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonob vious”).
Independent Claims 18 and 19
Independent claims 18 and 19 include language substantially similar
to the language of claim 1, and stand rejected based on the same rationale
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applied with respect to claim 1 (Final Act. 2—9). Therefore, we do not
sustain the Examiner’s rejection of independent claims 18 and 19 under
35 U.S.C. § 103(a) for the same reasons set forth above with respect to
independent claim 1.
Dependent Claims 4, 5, 8, 17, and 20
Claims 4, 5, 8, 17, and 20 depend, directly or indirectly, from
independent claim 1. The rejection of these dependent claims does not cure
the deficiency in the Examiner’s rejection of independent claim 1.
Therefore, we do not sustain the Examiner’s rejection of claims 4, 5, 8, 17,
and 20 under 35 U.S.C. § 103(a) for the same reasons set forth above with
respect to independent claim 1.
DECISION
The Examiner’s rejection of claims 1—5, 8—11, and 13—24 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1—5, 8—11, and 13—24 under
35 U.S.C. § 103(a) are reversed.
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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