Ex Parte Ge et al

Patent Trial and Appeal Board

Feb 28, 2019

13970068 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/970,068 08/19/2013
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
03/04/2019
FIRST NAMED INVENTOR
Hong Ge
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.
26295-24132 1048
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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 HONG GE, ROBERT WILLIAM CATHCART,
and NIMROD HOOFIEN
Appeal2017-011440
Application 13/970,068
Technology Center 3600
Before MARC S. HOFF, JENNIFER L. McKEOWN,
and STEVEN M. AMUNDSON, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-12, 14, 17-20, 22, and 23. We have jurisdiction
under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is Facebook, Inc. of
Menlo Park, California. App. Br. 2.
Appeal2017-011440
Application 13/970,068
STATEMENT OF THE CASE
Appellants' disclosed and claimed invention is directed to:
A social networking system prices advertisements
presented to a user of a social networking system via a client
device in a state that provides the user with limited functionality
by applying discount factors to bid amounts associated with
advertisements selected for presentation. A discount factor is
based on the likelihood of the user viewing or interacting with an
advertisement via the social networking system presented while
the client device is in the state providing the user with limited
functionality. This likelihood is determined based on information
including a history of user interaction with the client device and
contextual information indicating whether the client device is in
use.
Abstract.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method comprising:
responsive to an indication that a client device of a user of
a social networking system is in a state that provides limited
functionality to the user, identifying one or more candidate
advertisements from a plurality of advertisements, each
candidate advertisement being associated with one or more
interactions capable of being performed while the client device
is in the state that provides limited functionality to the user, the
limited functionality to the user comprising at least one of:
responding to a reduced set of inputs by the client device
operating in a locked state;
providing limited interactions with the social networking
system by the client device operating in a low power state; and
presenting input to the user through a lock screen of the
client device;
selecting one or more advertisements from the one or more
candidate advertisements for presentation to the user while the
client device is in the state that provides limited functionality to
the user based at least in part on bid amounts associated with each
of the candidate advertisements, wherein the client device in the
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state that provides limited functionality to the user is configured
to present content items in an ambient feed to the user, the
ambient feed including stories or notifications describing actions
performed by additional users of the social networking system
connected to the user viewing the ambient feed; and
computing a price for each of the one or more selected
advertisements based at least in part on discount factors and bid
amounts associated with each of the one or more selected
advertisements, a respective discount factor for a respective
selected advertisement being based on a likelihood of the user
viewing the respective selected advertisement while the client
device is in the state that provides limited functionality to the
user.
THE REJECTIONS
The Examiner rejected claims 1-12, 14, 17-20, and 22-23 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. Non-Final
Act. 2-5.
The Examiner rejected claims 1-5, 8-12, 17-20, and 23 under
35 U.S.C. § 103 as unpatentable over Conant (US 2008/0092182 Al,
published April 17, 2008), Holtz et al. (US 2002/0053078 Al, published
May 2, 2002) ("Holtz"), Blake et al. (US 2011/0093320 Al, published April
21, 2011) ("Blake"), and Frey (US 2013/0227476 Al, published August 29,
2013). Non-Final Act. 5-9.
The Examiner rejected claims 6, 7, and 14 under 35 U.S.C. § 103 as
unpatentable over Conant, Holtz, Blake, Frey, and Peterson et al. (US
2014/0172579, published June 19, 2014). Non-Final Act. 10-11.
The Examiner rejected claim 22 under 35 U.S.C. § 103 as
unpatentable over Conant, Holtz, Blake, Frey, and Selig et al. (US
2013/0283199 Al, published October 24, 2013). Non-Final Act. 11-12.
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Application 13/970,068
ANALYSIS
THE REJECTION UNDER 35 U.S.C. § 101
Claims 1-12, 14, 17-20, and 22-23
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 1-12, 14, 17-20, and 22-23 as directed to patent-
ineligible subject matter.
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 Bankint'l, 573 U.S. 208,216
(2014) ( citation omitted).
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 that 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. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
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);
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Application 13/970,068
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
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eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of§
101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance ("Memorandum"). Under that guidance, we
first look 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 MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a)-(c), (e)-(h) (9th ed., Rev. 08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are 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.
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See Memorandum.
The Examiner determines that the claims are directed to the abstract
idea of a method for selecting and pricing ads that are intended to be
targeted to mobile devices that are in a state of limited functionality. Ans. 2;
see also Ans. 2-3 ( explaining that the claimed concept is similar to the
concepts found ineligible in OIP Techs. Inc. v. Amazon.com, 788 F.3d 1359
(Fed. Cir. 2015); Affinity Labs of Tex., LLC v. Amazon.com, 838 F.3d 1266
(Fed. Cir. 2016), and Elec. Power Grp., LLC v. Alstom, 830 F.3d 1350 (Fed.
Cir. 2016)); Non-Final Act. 3 (relying additionally on SmartGene Inc. v.
Advanced Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014)).
Appellants, on the other hand, argue that the claimed invention is not
directed to an abstract idea. App. Br. 8-12 2; Reply Br. 2-5. Appellants, in
particular, assert that the Examiner oversimplifies the claims and fails to
consider the limitations regarding the calculating of the recited discount
factor. Ans. 3; see also App. Br. 7. According to Appellants, the claimed
invention is distinguishable from OIP Technologies because the claimed
invention takes the proactive steps of including the likelihood of user
viewing in the discount-factor calculation. Ans. 3. Appellants explain that:
the claimed invention limits the claims to a technical means for
performing the functions of the claim that advance the
conventional technology by computing a price based on a
likelihood of the user viewing the respective selected
advertisement while the client device is in the state that
provides limited functionality to the user.
Reply Br. 4.
2 We note that neither Appellants' Appeal Brief nor Reply Brief includes
page numbers.
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We find Appellants' arguments unpersuasive. Namely, we agree with
the Examiner that the claimed invention is directed to a method of
organizing human activity, specifically a method for selecting and pricing
advertisements that are intended to be targeted to mobile devices that are in a
state of limited functionality. As the Examiner explains, the Federal Circuit
in OIP Technologies found ineligible collecting data regarding possible
prices of a product, analyzing the data, and selecting a product price based
on the analyzed data. See OIP Techs., 788 F.3d at 1362---63. The claimed
invention here similarly uses a calculated bid price to select an
advertisement for presentation to a device. While the claims here calculate a
discount value that considers the likelihood of viewing, adding this
mathematical calculation (which is also an abstract idea) fails to render the
claimed invention not abstract. See, e.g., Diehr, 450 U.S. at 191. Moreover,
we note the claims include only a high level of generality without specifying
how the likelihood of viewing is calculated. As such, we are not persuaded
that the Examiner erred in determining that the claimed invention is directed
to an abstract idea.
Nevertheless, based on the record before us, we are persuaded that the
Examiner erred in failing to support the determination that the additional
limitation of identifying advertisements in response to a limited functionality
is conventional. See, e.g., Ans. 3---6. As Appellants point out, the Examiner
erroneously finds that the claims do not require the device to be in the
limited functionality state. See Reply Br. 5. The claims, though, expressly
recite that advertisements are identified in response to a notification of
limited functionality. The Examiner does not consider this limitation, nor
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does Examiner respond to Appellants' argument that this limitation is
unconventional and, thus, adds significantly more to the alleged abstract
idea. See Reply Br. 5---6; see also Reply Br. 8; Ans. 4. As such, based on
the record before us, we are persuaded that the Examiner fails to sufficiently
support the determination that the claimed invention is directed to patent-
ineligible subject matter. See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed.
Cir. 2018).
Accordingly, we reverse the Examiner's decision to reject claims 1-
12, 14, 17-20, and 22-23 as directed to patent-ineligible subject matter.
THE OBVIOUSNESS REJECTIONS UNDER 35 U.S.C. § 103
Claims 1-12, 14, 17-20, and 22-23
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 1-12, 14, 17-20, and 22-23 as unpatentable over
the cited combinations of prior art.
Appellants argue that the Examiner errs in failing to consider the
limitation of "responsive to an indication that a client device of a user of a
social networking system is in a state that provides limited functionality to
the user, identifying one or more candidate advertisements." Reply Br. 12.
More specifically, Appellants assert that the claimed invention identifies
advertisements "responsive to an indication that a client device of a user ...
is in a state that provides limited functionality to the user." App. Br. 20. In
other words, according to Appellants, "after confirming that the client device
is in a state of limited functionality, candidate advertisements are identified
such that a user can perform 'one or more interactions' with the candidate
advertisements." Id. Appellants explain that Blake, in contrast, teaches
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using a lockout mode to limit functions of the device when displaying an
advertisement on the display. App. Br. 19-20.
We agree with Appellants that the Conant and Blake combination fails
to teach or suggest identifying the claimed advertisement in response to an
indication that the device provides limited functionality. Blake generally is
directed to a system that "allows a service provider to offer rates based upon
the user granting permission to receive advertising on the user device."
Blake ,r 32. Blake describes a limited functionality while an advertisement
is presented on a display (Blake ,r 53), but the Examiner fails to identify how
Blake identifies advertisements in response to an indication of limited
functionality of the device. Conant also teaches a limited functionality while
advertisements are displayed (Conant ,r 82), but again the Examiner fails to
explain how Conant either alone or in combination with Blake teaches or
suggests identifying advertisements in response to an indication of limited
functionality of the device. As such, based on the record before us, we are
persuaded that the Examiner erred in determining that the cited combination
teaches or suggests the claimed invention.
Accordingly, we reverse the Examiner's decision to reject claims 1-
12, 14, 17-20, and 22-23 as unpatentable over the cited combinations of
prior art.
DECISION
We reverse the Examiner's decision to reject claims 1-12, 14, 17-20,
and 22-23.
REVERSED
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