Ex Parte Lessin et al

Patent Trial and Appeal Board

Feb 20, 2018

13681161 (P.T.A.B. Feb. 20, 2018)

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.
13/681,161 11/19/2012 Samuel Lessin 26295-20856/US 2908
87851 7590 02/22/2018
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center EZEWOKO, MICHAEL I
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
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 SAMUEL LESSIN and JUSTIN ALEXANDER SHAFFER
Appeal 2016-0047171
Application 13/681,1612
Technology Center 3600
Before NINA L. MEDLOCK, TARA L. HUTCHINGS, 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, 11, 19, and 21-25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
June 29, 2015) and Reply Brief (“Reply Br.,” filed April 4, 2016), and the
Examiner’s Answer (“Ans.,” mailed February 2, 2016) and Final Office
Action (“Final Act.,” mailed December 29, 2014).
2 Appellants identify Facebook, Inc. as the real party in interest. App. Br. 2.
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CLAIMED INVENTION
Appellants’ claimed invention “relates generally to social networking,
and in particular to advertising based on user trends in an online system”
(Spec. H 1).
Claims 1 and 21 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
maintaining profiles for a plurality of users of a social
networking system;
maintaining a social graph of nodes representing objects
in the social networking system connected by edges;
receiving a request from an advertiser to target a subset of
the plurality of users of the social networking system, the request
comprising at least one profile attribute for the subset of users
and a query for a trend corresponding to a first action type;
retrieving social graph information for the targeted subset
of users of the social networking system for an edge
corresponding to the first action type;
determining, by a processor, a user trend for the targeted
subset of users based on the social graph information for the
targeted subset of users, the user trend comprising the first action
type being followed by a second action type by the subset of
users;
generating an advertisement offer based on the determined
user trend for the advertiser for the targeted subset of users, the
advertisement offer corresponding to the second action type; and
providing the generated advertisement offer to the
advertiser responsive to the request.
REJECTIONS
Claims 1-5, 11, 19, and 21-25 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1-5, 11, 19, and 21-25 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Kramer et al. (US 2011/0093340 Al,
2
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pub. Apr. 21, 2011) (hereinafter “Kramer”), Saldanha et al.
(US 2013/0238425 Al, pub. Sept. 12, 2013) (hereinafter “Saldanha”), and
Goeldi (US 7,974,983 B2, iss. July 5, 2011).
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: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CIS
Bank Inti, 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
Laboratories., Inc., 566 U.S. 66 (2012), “for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those 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. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
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.” Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
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or abstract ideas.” Mayo, 566 U.S. at 71. 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, LLCv. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Addressing the first step of the Mayo!Alice framework, Appellants
argue, and we agree, that the appropriate inquiry is not whether the claims
include a patent-ineligible abstract idea (App. Br. 5-6). “Rather, the
‘directed to’ inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether ‘their character as a whole is directed
to excluded subject matter.’” Enflsh, 822 F.3d at 1335 (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Appellants criticize the Examiner’s indication that the method steps in
claim 1 “include” an abstract idea and fundamental economic practices
(App. Br. 5-6) when the question is more appropriately whether the claims
at issue are “directed to” an abstract idea. See Alice Corp., 134 S. Ct.
at 2355. But, Appellants cannot reasonably deny that the claims are directed
to targeted advertising (see, e.g., Spec. 1, 5), i.e., to a fundamental, long­
standing, and well-known economic practice and, therefore, to an abstract
idea. See Tuxis Techs., LLC v. Amazon.com, Inc., No. CV 13-1771-RGA,
2014 WL 4382446, at *5 (D. Del. Sept. 3, 2014) (Matching consumers with
a given product or service “has been practiced as long as markets have been
in operation.”).
We also are not persuaded of Examiner error by Appellants’ argument
that the pending claims do not preempt or otherwise tie up the alleged
abstract idea such that others cannot use the idea (App. Br. 6-7 (noting that
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the various methods of targeted advertising described in the references cited
by the Examiner during prosecution would not be preempted by the pending
claims)). There is no dispute that the Supreme Court has described “the
concern that drives [the exclusion of abstract ideas from patent eligible
subject matter] as one of pre-emption.” Alice Corp., 134 S. Ct. at 2354.
Yet, characterizing preemption as a driving concern for patent eligibility is
not the same as characterizing preemption 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, 134 S. Ct. at 2354). “[Preemption may
signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
Appellants further charge that the rejection is improper because the
Examiner focused on one portion of the claims, and ignored various other
claim elements (App. Br. 7-8). But, even accepting Appellants’ argument,
Appellants do not explain how these “various other elements relating to the
analysis of social networking system user data, analysis of an advertiser
request, and the generation of an advertisement offer” render the claims
patent-eligible. For example, we find nothing in the Specification, nor do
Appellants point us to anything in the Specification, to indicate that any
specialized computer hardware or inventive computer components or
programming is required, or that the claimed invention is implemented using
other than generic computer components. Although the claims call for
“generating an advertisement offer,” the claims recite a result without
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meaningfully limiting how the claimed method achieves that result. “[T]he
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.” Alice Corp., 134 S. Ct.
at 2358.
Appellants point to the “U.S. Patent Office Examples of Abstract
Ideas,”3 and, more particularly to Example 2, and argue that the pending
claims are analogous to the claim in Example 2, which is described as
patent-eligible (App. Br. 8-9). Yet, we find no parallel between the present
claims and the claim in Example 2 nor any parallel between the pending
claims and those in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014) from which the claim in Example 2 was taken.
The claims at issue in DDR Holdings were directed to retaining
website visitors, and, in particular, to a system that modified the
conventional web browsing experience by directing a user of a host website,
who clicks an advertisement, to a “store within a store” on the host website,
rather than to the advertiser’s third-party website. DDR Holdings, 773 F.3d
at 1257-58. The court determined that “the claims address a business
challenge (retaining website visitors) [that] is a challenge particular to the
Internet.” Id. at 1257. The court also determined that the invention was
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks,” and that the claimed
invention did not simply use computers to serve a conventional business
purpose. Id. Rather, there was a change to the routine, conventional
functioning of Internet hyperlink protocol. Id.
3 Available at https://www.uspto.gov/sites/default/files/documents
/abstractideaexamples.pdf.
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Appellants maintain here that the pending claims, like Example 2, i.e.,
the claim in DDR Holdings, are directed to a business challenge particular to
the Internet, i.e., “determining user trends and identifying user actions within
a social networking system, which can be used to optimize revenue for an
advertiser” (App. Br. 9). Yet, unlike the situation in DDR Holdings, we fail
to see how, and Appellants do not adequately explain how, using user trends
to target advertisements is “a challenge particular to the Internet.”
Appellants ostensibly do not dispute that targeted advertising existed before
and still exists outside of computer technology and computer networks.
And, 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 manner, e.g., for receiving and transmitting
information.
Appellants maintain that rather than merely reciting the performance
of a business practice known in the pre-Internet world, the claimed invention
“addresses problems with providing advertisements in an online
environment” and “provides a solution specifically customized to address
this online social networking environment in which advertisements can be
conveniently selected and served to users based on user trends” (App. Br. 9).
However, as the court cautioned in DDR Holdings, “not all claims
purporting to address Internet-centric challenges are eligible for patent.”
DDR Holdings, 773 F.3d at 1258. Thus, in Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed. Cir. 2014), although the patentee argued that its claims
were “directed to a specific method of advertising and content distribution
that was previously unknown and never employed on the Internet before,”
772 F.3d at 714, the court found that this alone could not render the claims
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patent-eligible where the claims merely recited the abstract idea of “offering
media content in exchange for viewing an advertisement,” along with
“routine additional steps such as updating an activity log, requiring a request
from the consumer to view the ad, restrictions on public access, and use of
the Internet.” Id. at 715-16.
Similarly here, we find that the invocation of the Internet is not
sufficient to transform Appellants’ otherwise patent-ineligible abstract idea
into patent-eligible subject matter. We determine, as did the Examiner, that
the claims are directed to the abstract idea of targeting advertisements based
on observed user trends. Narrowing that abstract idea to an online social
networking system merely limits the use of the abstract idea to a particular
technological environment, which the Court made clear in Alice is
insufficient to transform an otherwise patent-ineligible abstract idea into a
patent-eligible subject matter. See Alice Corp., 134 S. Ct. at 2358.
Turning to the second step of the Mayo!Alice framework, Appellants
further argue, with continued reference to Example 2 and DDR Holdings,
that even if the pending claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because they recite “significantly more” than the
abstract idea itself (App. Br. 9-12). Appellants assert that the claimed
invention addresses problems that are specific to the online environment
with a solution that only makes sense within an online environment {id.
at 11). But Appellants do not identify any problems “specific to the online
environment” that the pending claims allegedly overcome. And, as
described above, merely limiting the abstract idea of presenting
advertisements based on observed user trends to an online environment is
not enough for patent-eligibility.
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Appellants also assert that, similar to DDR Holdings, the present
claims solve a problem that has no traditional business analog {id. at 11-12).
But, the court did not conclude in DDR Holdings that the claims were
patent-eligible merely because the claims did not recite the performance of a
business practice known from the pre-Internet world along with the
requirement to perform it on the Internet. Instead, the Federal Circuit held
that the claims were directed to statutory subject matter because they
claimed a solution “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,”
and effected a change to the routine, conventional functioning of Internet
hyperlink protocol. DDR Holdings, 773 F.3d at 1257. As described above,
there is no indication here that a computer network, or the Internet, in
particular, is used other than in its normal, expected, and routine manner.
We also are not persuaded that the claimed invention has no
traditional business analog. For example, we fail to see why the Examiner’s
proposed scenario (where a shopkeeper receives and tracks user queries and
interactions and observes user actions, and then suggests, e.g., advertises, an
item or service based on that information {see Ans. 8)) would not constitute
a traditional business analog.
Appellants further maintain here that the § 101 rejection cannot be
sustained, because the “Office Action fails to provide ‘substantial evidence’”
in support of the rejection, and fails to establish a prima facie case of patent-
ineligibility (App. Br. 12-13). More particularly, Appellants argue that the
Office Action provides “no factual support” for the conclusion that the
claims recite an abstract idea or a fundamental economic principle, and “[no]
supporting reasoning to satisfy the requirements of the MPEP” (id. at 13).
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Appellants note that the Supreme Court, in Bilski v. Kappos, 561 U.S. 593
(2010), and also in Alice, cited specific references to support its finding that
the alleged abstract idea was long prevalent in the field (App. Br. 13-14).
And Appellants ostensibly maintain that the Examiner is likewise required to
provide factual evidence here in order to establish a prima facie case of
patent-ineligibility (id.). We disagree.
As an initial matter, we find nothing in Bilski ox Alice that requires an
examiner to provide evidentiary support in every case before a conclusion
can be made that a claim is directed to an abstract idea. Nor have Appellants
articulated sufficiently their assertion (id. at 12-13) that the Administrative
Procedure Act imposes such a requirement. Contrary to Appellants’
assertion (id. at 14), this Board also did not hold in PNC Bank N.A. v. Secure
Axcess, LLC, CBM2014-00100, 2014 WL 4537440 (PTAB Sept. 9, 2014)
that there is any such requirement.4 Although evidence may be helpful, e.g.,
where facts are in dispute, it is not always needed. See Mortgage Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325-26 (Fed. Cir.
2016) (“[I]t is also possible, as numerous cases have recognized, that a § 101
analysis may sometimes be undertaken without resolving fact issues.”).
Appellants’ bare assertion that evidence is needed here, without any
supporting reasoning as to why, is insufficient to require the Examiner to
provide evidentiary support.5
4 We would not be bound, in any event, by a non-precedential decision of a
different panel of the Board.
5 We note that the Appellants have put forward no rebuttal evidence
showing the claims are not directed to an abstract idea.
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Moreover, the Federal Circuit has repeatedly observed that “the prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The court has, thus, held that the USPTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the applicant of the reasons for the rejection,
“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application.”
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original).
Thus, all that is required of the Office is that it sets forth the statutory basis
of the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of § 132. Id.; see also Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) (“Section 132 is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
In rejecting the pending claims under § 101, the Examiner analyzed
the claims using the Mayo!Alice 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), in effect at
the time the Final Office Action was mailed (Final Act. 2-6). Specifically,
the Examiner notified Appellants that the claims are directed to “classifying
an individual user such as a consumer of information by analyzing said
user’s general behavioral characteristics, doing so by agglomerating user
behavior as embodied in the profile of said user, and selecting services of
benefit and corresponding to said user’s profile,” which the Examiner
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determined is a fundamental economic practice and, therefore, an abstract
idea; and that there are no meaningful limitations in the claims that
transform the abstract idea into a patent-eligible application of the abstract
idea {id. at 5-6). The Examiner, thus, notified Appellants of the reasons for
the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of § 132. And we find that the Examiner, in doing
so, set forth a prima facie case of patent-ineligibility such that the burden
shifted to Appellants to demonstrate that the claims are patent-eligible.
Appellants do not contend that the § 101 rejection was not understood
or that the rejection otherwise fails to meet the notice requirements of
35 U.S.C. § 132. Instead, Appellants’ understanding of the rejection is
clearly manifested by Appellants’ response as set forth in the briefs.
Responding to the Examiner’s Answer, and referencing the USPTO’s
“July 2015 Update: Subject Matter Eligibility,”6 Appellants argue that the
Examiner has failed to identify the abstract idea, i.e., providing
advertisements to users of a social network, “by way of comparison to
concepts already found to be abstract” and that “[tjhis lack of comparison to
any analysis by the courts is not sufficient to provide a prima facie case for
subject matter ineligibility” (Reply Br. 2-3 (quoting July 2015 Update:
Subject Matter Eligibility, p. 3)).7 Yet, providing advertisements is a
6 Available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update.pdf.
7 The July 2015 Update instructs examiners to refer to the body of case law
precedent in order to identify abstract ideas by way of comparison to
concepts already found to be abstract {id. at 3), and explains that “[tjhis
discussion is meant to . . . ensure that a claimed concept is not identified as
an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea” (id.). Examiners also are instructed to
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fundamental economic practice — a concept identified by the Examiner and
recognized by the courts as an abstract idea. See Final Act. 5. To the extent
that Appellants argue that the Guidelines require something more, that
argument is not persuasive at least because an Examiner’s failure to follow
the Director’s guidance is appealable only to the extent that the Examiner
has failed to follow the relevant statutes or case law. To the extent the
Director’s guidance goes beyond the case law and is more restrictive on the
Examiner than the case law, the failure of the Examiner to follow those
added restrictions is a matter for petition to the Director.
Further responding to the Examiner’s Answer, and specifically
addressing step two of the Mayo!Alice framework, Appellants reproduce the
method steps of claim 1 (but for the step of “providing the generated
advertisement offer to the advertiser responsive to the request”) and argue
that these steps amount to “significantly more” than the abstract idea (Reply
Br. 3-5). Appellants maintain that “receiving a request from an advertiser to
target a subset of the plurality of users of the social networking system” and
“determining ... a user trend for the targeted subset of users based on the
social graph information for the targeted subset of users” add
unconventional steps that confine the claim to a particular application and
that “generating an advertisement offer based on the determined user trend
for the advertiser for the targeted subset of users” effects a transformation or
reduction of a particular article to a different state or thing (id. at 3—4).
clearly articulate “the reason(s) why the claimed invention is not eligible, for
example, by providing a reasoned rationale that identifies the judicial
exception recited in the claim and why it is considered an exception, and that
identifies the additional elements in the claim (if any) and explains why they
do not amount to significantly more than the exception” (id. at 6).
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However, the mere recitation of a practical application for an abstract idea is
insufficient to transform the abstract idea into a patent-eligible invention.
Cf. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371
(Fed. Cir. 2011) (“The Court [in Parker v. Flook, 437 U.S. 584 (1978)]
rejected the notion that the recitation of a practical application for the
calculation could alone make the invention patentable.”). And we fail to see
how, and Appellants do not explain how, generating an advertisement offer
“effects a transformation or reduction of a particular article to a different
state or thing.”
We are not persuaded for the foregoing reasons that the Examiner
erred in rejecting claims 1-5, 11, 19, and 21-25 under 35 U.S.C. § 101.
Therefore, we affirm the Examiner’s rejection.
Obviousness
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claims 1 and 21 under 35 U.S.C. § 103(a) at least
because none of Kramer, Saldanha, and Goeldi discloses or suggests
“receiving a request from an advertiser to target a subset of the plurality of
users of the social networking system . . . comprising ... a query for a trend
corresponding to a first action type,” as recited in claim 1, and similarly
recited in claim 21 (App. Br. 15-18; see also Reply Br. 6-9). The Examiner
cites Saldanha as disclosing the argued feature (see Final Act. 8 (citing
Saldanha 5-8); see also Ans. 10). But we find nothing in the cited
portions of Saldanha that discloses or suggests receiving a request
comprising a query for a trend corresponding to a particular action type, as
called for in claim 1, and similarly called for in claim 21.
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Saldanha is directed to an advertising system that identifies behaviors
from user activity (e.g., from the webpages the user is accessing, the user’s
search queries, purchases, and/or other online transactions) and maintains
information about these behaviors in a user profile (see Saldanha ^ 5,
Abstract). Advertisers provide the advertising system with information on
conversion rates of users associated with user profiles, and the user profiles
and conversion information are used to calculate the effect that specific
behaviors have on conversion for individual advertisers relative to the
average user (id. ).
The ratio of a specific behavior’s conversion rate or the conversion
rate of a set of co-occurring behaviors (“behavior tuples”) relative to the
average conversion is termed the “lift” of that behavior or behavior tuple (id.
5-6). Saldanha’s lift is, thus, a measure of the impact of a single behavior
or behavior tuple on the conversion rate, i.e., the success of a particular
advertising campaign.
Saldanha discloses that a behavior model can be developed for each of
the advertisers in the system (id. ^ 7), and further discloses that when the
system receives a request for an advertisement from a particular user, the
behaviors indicated by the user profile are accessed (id.). The user’s
behaviors are then compared to the behavioral models for each advertiser to
identify the lift provided by this user’s behavior for an advertisement shown
by the advertiser (id.). Saldanha, thus, discloses that each advertiser can
determine the value of bidding to place an advertisement to this particular
user (id.).
In addressing the argued limitation in the Final Office Action, the
Examiner acknowledges that Kramer does not explicitly disclose “receiving
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a request from an advertiser . . . comprising ... a query for a trend
corresponding to a first action type” (Final Act. 8). And the Examiner cites
Saldanha as disclosing “having advertiser needs associated with a [sic]
behavior tuples and user profiles” {id. (emphasis omitted) (citing Saldanha
5-8)). But, we agree with Appellants that the fact that an advertiser can
identify the value of bidding to place an advertisement to a particular user
based on the user’s behavior does not disclose or suggest a “query for a
trend corresponding to a first action type,” as called for in claims 1 and 21
(Reply Br. 8).
Further responding, in the Answer, to Appellants’ argument that
Saldanha does not disclose or suggest “a trend corresponding to a first action
type,” the Examiner notes that Saldanha discloses that user behaviors can be
derived from the webpages a user is accessing and from users’ search
queries, and points to Saldanha’s disclosure that a model for consumer
conversion is built, using behaviors and conversion rates, to calculate the
cumulative lift of behaviors relative to a norm (Ans. 10). The Examiner
states, “[t]his lift is used ‘iteratively’ to ‘determine the next behavior tuple
providing the highest lift’; in other words, user query and ‘co-occurring
behaviors (behavior tuples)’ are used to predict a next action and associated
advertisement” {id.).
Saldanha discloses, in paragraph 6 to which the Examiner ostensibly
refers, that in calculating a model for consumer conversions, the lift of each
behavior (or set of co-occurring behaviors) is calculated with respect to a
population of users; the behavior tuple with the highest lift is identified, and
users identified with that behavior tuple are removed from the user
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population (Saldanha ^ 6).8 The lift for the remaining behaviors is
recalculated on the new population pool to determine the next behavior tuple
providing the highest lift for the remaining population; in this way, the lift
values for all behavior tuples are iteratively computed to identify a model
indicating the lift provided by behavior tuples relative to the incremental
population reached by the behavior tuples (id.).
The Examiner ostensibly relies on Saldanha’s use of behavior tuples
to predict “a next action” as disclosing the claimed trend. However, as
described above, and as Appellants also point out, Saldanha merely discloses
iteratively computing the lift provided by behavior tuples relative to an
incremental population (Reply Br. 7). “Lift” is defined as the ratio of a
specific behavior’s conversion rate relative to the average conversion
(Saldanha ^ 5). In other words, “lift” is a measure of the impact of a
particular behavior or behavior tuple on the success of an advertising
campaign, and is specific to that behavior or behavior tuple. We agree with
Appellants that Saldanha’s lift cannot reasonably be considered a “trend,”9
let alone a “trend corresponding to a first action type,” as called for in claims
1 and 21 (Reply Br. 7-8).
8 By removing users, Saldanha ensures that lift of each behavior is
independent of other behaviors. For example, if behavior 1 is selected
before behavior 2, users who exhibit both behavior 1 and behavior 2 are
excluded from consideration in the lift for behavior 2. In other words, each
user is counted only once. See Saldanha ^ 55.
9 I.e., “[a] pattern of user behavior that may be predicted by [a] social
networking system [ ] after a particular action is performed by a user based
on a past history of actions performed after the particular action is performed
by the user” (Spec. ^ 46).
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Appeal 2016-004717
Application 13/681,161
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1 and 21 under 35 U.S.C. § 103(a). For the same reasons, we also
do not sustain the Examiner’s rejection of dependent claims 2-5, 11, 19, and
22-25. 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
nonobvious”).
DECISION
The Examiner’s rejection of claims 1-5, 11, 19, and 21-25 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1-5, 11, 19, and 21-25 under
35 U.S.C. § 103(a) is 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
18