Ex Parte Hannan

Patent Trial and Appeal Board

Aug 31, 2016

13105708 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/105,708 05/11/2011
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
09/02/2016
FIRST NAMED INVENTOR
Scott Hannan
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.
26295-18416 3780
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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 SCOTT HANNAN
Appeal2014-005820
Application 13/105,708
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEivIENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 13-20, 26-29, and 31--43. We have jurisdiction
under 35 U.S.C. § 6(b ).
STATEMENT OF THE DECISION
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed Jan. 6,
2014), Reply Brief ("Reply Br.," filed Apr. 7, 2014), the Examiner's Answer
("Ans.," mailed Feb. 7, 2014), and the Final Rejection ("Final Act.," mailed
Aug. 6, 2013).
2 Appellant identifies the real party in interest as Facebook, Inc. (App. Br.
1 ).
Appeal2014-005820
Application 13/105,708
CLAHvIED TI'-JVENTION
The claimed invention relates to "targeting advertisements to users of
mobile devices sharing geographic location events with service providers"
(Spec. i-f 6). Claims 13 and 40 are independent and recite substantially
similar subject matter (see App. Br. 14--19). Claim 13, reproduced below
with bracketed matter added, is illustrative of the subject matter on appeal.
13. A method comprising:
[ 1] providing an interface to a device associated with an
advertiser;
[2] receiving from the device a selection of targeting criteria for
an advertisement campaign;
[3] determining from the targeting criteria, a query for one or
more places objects;
[ 4] [a] determining by a computer system a candidate set of one
or more places objects [b] meeting the targeting criteria based on
the query;
[5] receiving information regarding location events generated by
user actions at the one or more places associated with the
candidate set of one or more places objects; and
[ 6] serving advertisements for the advertisement campaign to one
or more users generating the location events at the one or more
places associated with the candidate set of one or more places
objects.
App. Br. 14, Claims App.
REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Hamilton
MacN aughtan
US 2010/0036718 Al
US 2010/0291907 Al
2
Feb. 11, 2010
Nov. 18, 2010
Appeal2014-005820
Application 13/105,708
The following rejection is before us for review:
Claims 13-20, 26-29, and 31--43 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over MacNaughtan and Hamilton.
ANALYSIS
In rejecting independent claim 13, the Examiner makes explicit
findings regarding the elements taught by the prior art, and explains how
those elements are mapped to the respective claim elements (see Final Act.
2--4). The Examiner finds that MacNaughtan discloses limitations [1], [2],
[4a], [5], and [6], and Hamilton discloses limitations [3] and [4b] (id.). The
Examiner determines that it would have been obvious to modify
MacNaughtan's system to determine a query based on the advertiser's
campaign criteria as taught by Hamilton in order to make "the advertiser's
selection of places objects more convenient and tailored to the advertiser's
needs" (id. at 4).
Appellant contends that the references cited fail to disclose or suggest
"receiving information regarding location events generated by user actions at
the one or more places associated with the candidate set of one or more
places objects" (App. Br. 4--7), as recited in limitation [5] of claim 13. In
particular, Appellant asserts that although MacNaughtan discloses using a
"zone profile" to deliver targeted advertisements, "[i]t does not describe any
'user actions' as recited in the claims" (id. at 6, citing MacNaughtan i-f 181),
because the geolocation of the user's mobile terminal is based "on the
automated function of an ad server and a zone server" (Reply Br. 6, citing
MacNaughtan i-fi-1159, 176, 181).
3
Appeal2014-005820
Application 13/105,708
We are not persuaded of error because Appellant does not address the
Examiner's finding that the claimed "user actions" correspond to various
events or actions by a subscriber (e.g., initiating a call, unlocking the mobile
terminal keypad, or selecting a menu item on the terminal) that "may be
used to trigger the transmission of the zone status message to the network"
(Ans. 14--15, quoting MacNaughtan i-f 158).
Appellant also contends that MacNaughtan does not disclose
"information regarding location events" as required by claim 1 because
MacNaughtan's "automatic interactions" "indicate only the presence of a
mobile radio terminal within a zone" (App. Br. 7). The Examiner finds this
limitation in paragraph 181 of MacN aughtan which discloses that the mobile
terminals send a "zone status change notification" (Final Act. 3). As
discussed above, paragraph 158 of MacNaughtan discloses that these zone
status messages may also be triggered by the subscriber actions listed there.
We agree with the Examiner that these zone status messages constitute
"information regarding location events," as required by claim 1.
Appellant further argues that the references do not disclose "places
objects" as recited in claim 1 (App. Br. 10-11). According to Appellant,
"the virtual 'land' and virtual advertising locations of Hamilton are not
'places objects"' (App. Br. 11 ).
The Examiner responds that:
The Examiner is not relying on Hamilton per se for "places
objects." MacNaughtan is also relied on by the Examiner for
the claimed "places objects" (i.e., zones with corresponding
profiles). Hamilton was merely used to show that it would be
obvious for MacNaughtan's zones, defined by zone profiles,
(i.e., "places objects") to be determined based on
MacN aughtan' s advertiser criteria, just as Hamilton's
4
Appeal2014-005820
Application 13/105,708
advertising locations are determined based on Hamilton's
advertiser criteria.
(Ans. 21-22; see also Ans. 5---6, Final Act. 3).
In the Reply Brief, Appellant argues that the Examiner's interpretation
of "places objects" is unreasonable and inconsistent with the Specification
(Reply Br. 4--5). Appellant also argues that "there is no 'candidate set of
one or more places object' from which a user can generate a 'location
event"' in MacNaughtan (id. at 6).
We agree with the Examiner that "zone profiles" as disclosed in
MacNaughtan correspond to "places objects" under the broadest reasonable
interpretation in view of the Specification. Appellant's Specification does
not provide an express definition for "places objects." The Specification
indicates that "places store 112 indexes places objects 110 that represent the
places in the location events 106 received by the ad targeting system 100"
(Spec. i-f 19). Regarding these places in the location events, the Specification
states that the location can include "a pair of coordinates that include the
geospatial position of the user device 102 in longitude and latitude" (id.).
MacNaughtan "defin[es] one or more zones in terms of zone profiles"
that are stored in various network components (MacNaughtan i-f 48; see also
Ans. 18). MacNaughtan discloses that the zone profiles may include radio
parameters and in devices equipped with GPS "may also include a definition
of the zone in terms of location coordinates and extent" (MacNaughtan
i-f 49). Furthermore, MacNaughtan discloses "where the zone is designed to
cover a certain location, the location may be specified as the latitude and/or
longitude of that address" (id. i-f 63). Given that MacNaughtan's zone profile
may comprise latitude and longitude coordinates, like the places objects
described in the Specification, the Examiner's interpretation of "places
5
Appeal2014-005820
Application 13/105,708
objects" as corresponding to "zone profiles" of ivfacNaughtan is not
inconsistent with the Specification. We therefore disagree that the
Examiner's finding is unreasonable and improper.
Appellant also argues that MacN aughtan does not disclose "a
candidate set of one or more places objects" as recited in claim 13 "because
MacNaughtan does not describe storing information about location events
occurring in the zones" (App. Br. 7). We find this argument unpersuasive
because it's not commensurate with the scope of the claim. Claim 13
requires "receiving information regarding location events," not "storing
information about location events." Therefore, we decline to read this
argued limitation into the claim, because limitations not appearing in the
claims cannot be relied upon for patentability. See In re Self, 671 F .2d 1344,
1348(CCPA1982).
Appellant's allegation that "the techniques described in Hamilton for
presenting advertising within a virtual universe are not combinable with
MacN aughtan' s description of identifying a geographic location of a mobile
radio terminal because the 'virtual universe' of Hamilton does not include
physical locations or physical mobility of users, let alone mobile radio
terminals" (App. Br. 8; Reply Br. 7) similarly fails at least because it appears
to be based on bodily incorporation, which is not the test for obviousness.
See In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) ("[I]t is not necessary
that the inventions of the references be physically combinable to render
obvious the invention under review."); In re Nievelt, 482 F.2d 965 (CCPA
1973) ("Combining the teachings of references does not involve an ability to
combine their specific structures."). In the absence of a more detailed
explanation, we are not persuaded of error on the part of the Examiner.
6
Appeal2014-005820
Application 13/105,708
On the record, we find Appellant's arguments unpersuasive of
Examiner error. Accordingly, we sustain the rejection of claim 13 under 35
U.S.C. § 103(a) as unpatentable over MacNaughtan and Hamilton.
Appellant relies on arguments presented with respect to claim 13 in
contesting the rejection of independent claim 40 (see App. Br. 11 ).
Therefore, we sustain the rejection of claim 40 for the same reasons as claim
13. We also sustain the rejection of dependent claims 14--20, 26-29, 31-39,
and 41--43, which are not separately argued except for their dependency on
their respective independent claims (see id. at 9, 11-12).
DECISION
The Examiner's decision to reject claims 13-20, 26-29, and 31--43 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
7