Ex Parte Liu et al

Patent Trial and Appeal Board

Jul 31, 2018

13800633 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/800,633 03/13/2013 XinLiu
107193 7590 08/02/2018
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
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.
19487.408 2158
EXAMINER
AUNG,AYEM
ART UNIT PAPER NUMBER
2452
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
docketing@kjpip.com
gjolley@kjpip.com
tmeid@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIN LIU and WEI XU
Appeal 2018-002434
Application 13/800,633 1
Technology Center 2400
Before JOHN A. EV ANS, JEREMY J. CURCURI, and HUNG H. BUI,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 3-7, 9-13, and 15-18, which are all
the claims pending in the application. Claims 2, 8, and 14 are cancelled.
Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Facebook, Inc. App.
Br. 2.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed June 16,
2017; Reply Brief ("Reply Br.") filed January 2, 2018; Examiner's Answer
("Ans.") mailed November 2, 2017; Advisory Action ("Adv. Act.") mailed
April 5, 2017; Final Office Action ("Final Act.") mailed December 14,
2016; and original Specification ("Spec.") filed March 13, 2013.
Appeal2018-002434
Application 13/800,633
STATEMENT OF THE CASE
Appellants' invention relates to using "a social networking platform to
rank objects based upon user actions within [a] social network and
corresponding user demographic information and to provide timely, socially
relevant, and personalized recommendations based upon the rankings."
Spec. ,r 1.
Claims 1, 7, and 13 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below with disputed limitations in
italics:
1. A computer-implemented method, comprising:
receiving, from a user device associated with a first user,
a first user action within a communication system, the first user
action with respect to a first object displayed or referenced on the
communication system;
receiving, from a user device associated with the first user,
a second user action within the communication system, the
second user action with respect to a second object displayed or
referenced on the communication system;
[ 1] identifying, in response to the first and second user
actions, a counter that tracks a single value representing a
combination of (a) the first user action or a type of the first user
action, (b) the first object, (c) the second user action or a type of
the second user action, and (d) the second object;
[2] incrementing the single value of the identified counter
in response to receiving both of the first and second user actions
from the user device associated with the first user;
[3] receiving a request for a number of objects for a
category, the category including (a) the first user action or a type
of the first user action, (b) the second user action or type of the
second user action, and (c) the second object;
selecting up to the number of objects that correspond to
counters with highest values for the category, the selected objects
including the first object based upon a value of the identified
counter; and
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Application 13/800,633
transm1ttmg, in response to the request, the selected
objects as a ranked list of recommended objects for display by a
user.
App. Br. 17-18 (Claims App'x) (bracketing added).
Evidence Considered
Luo et al. ("Luo") US 2011/0022602 Al Jan. 27, 2011
Shih et al. ("Shih") US 2012/0254198 Al Oct. 4, 2012
Boutin et al. ("Boutin") US 2013/0173368 Al July 4, 2013
EXAMINER'S REJECTIONS
(1) Claims 1, 3-7, 9-13, and 15-18 stand rejected under
35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing
to comply with the written description requirement. Final Act. 2-3.
(2) Claims 1, 3-7, 9-13, and 15-18 stand rejected under
35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as
being indefinite. Final Act. 3--4.
(3) Claims 1, 7, and 13 stand rejected under 35 U.S.C. § I02(a) as
being anticipated by Shih. Final Act. 4--7.
(4) Claims 4--6, 10-12, and 16-18 stand rejected under
35 U.S.C. § I03(a) as being obvious over Shih and Luo. Final Act. 7-10.
(5) Claims 3, 9, and 15 stand rejected under 35 U.S.C. § I03(a) as
being obvious over Shih and Boutin. Final Act. 10-11.
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Application 13/800,633
DISCUSSION
35 US. C. § l l 2(a): Claims 1, 3-7, 9-13, and 15-18
In support of the§ 112(a) rejection, the Examiner finds the limitation:
"identifying ... a counter that tracks a single value representing a
combination of (a) the first user action or a type of the first user action, (b)
the first object, ( c) the second user action or a type of the second user action,
and (d) the second object" recited in claims 1, 7, and 13 is not disclosed or
supported in Appellants' Specification. Final Act. 2-3.
Appellants do not advance any argument against this rejection, albeit
inadvertently. The Examiner does not elaborate upon this rejection in the
Answer. Nevertheless, Appellants' Figure 1 shows "identify[ing] a counter
for a category representing [a] user action, [an] object, and[] demographic
information" at step 115. "[D]rawings alone may provide a 'written
description' of an invention as required by§ 112." Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). Likewise, Appellants'
Specification provides written support for the functions recited in connection
with the counter recited in claims 1, 7, and 13. See Spec. ,r,r 22-23.
For these reasons, we do not sustain the § 112(a) rejection of claims 1,
3-7, 9-13, and 15-18 for failure to comply with the "written description"
requirement.
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Application 13/800,633
35 USC§ 112(b): Claims 1, 3-7, 9-13, and 15-18
The Examiner finds claims 1, 7, and 13 indefinite3 because "[i]t is
unclear that a user device associated with a first user and a user device
associated with the first user is the same." Final Act. 3--4.
Appellants argue (1) "the first and second user actions may be
received from the same user device"; (2) "the user device can be a personal
computer or a mobile phone" and, as such, (3)
a person having ordinary skill in the art would recognize that a
communication system ( e.g., a social network or another
communication system) may receive a first action from a user
using mobile device and a second action from the same user
using her personal computer ( or other device that is distinct
from her mobile device).
App. Br. 7-8 ( citing Spec. 32, Fig. 5).
We agree with Appellants. The user device can be the same or
different devices associated with the same user. Accordingly, we do not
sustain the Examiner's rejection of claims 1, 3-7, 9-13, and 15-18 under
35 U.S.C. § 112(b ).
3 Claims 1, 7, and 13 also recite, inter alia: "a first user" at the beginning of
the claim and "a user" at the end of the claim. The Examiner finds this
limitation indefinite (Final Act. 4). However, the Examiner withdrew the
§ 112(a) rejection regarding that limitation upon an explanation from
Appellants (App. Br. 7-9). As such, we need not address Appellants'
arguments regarding that limitation (Ans. 11 ).
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Application 13/800,633
35 USC§ 102(a): Claims 1, 7, and 13
In support of the anticipation rejection of claim 1 and similarly, claims
17 and 13, the Examiner finds Shih discloses all the claim limitations,
including disputed limitations:
[ 1] "[i]dentifying, in response to the first and second
user actions, a counter that tracks a single value representing a
combination of (a) the first user action or a type of the first user
action, (b) the first object, ( c) the second user action or a type of
the second user action, and [(d)] the second object" [(Shih ,r,r 45,
116, Fig. 7, 704, 714);]
[2] "incrementing the single value of the identified
counter in response to receiving both of the first and second user
actions from the user device associated with the first user" [ (Shih
,r 116, Fig. 7, 704); and]
[3] "receiving a request for a number of objects for a
category, ... the category including (a) the first user action or a
type of the first user action, (b) the second user action or type of
the second user action, and (c) the second object" [(Shih ,r,r 59,
94).]
Final Act. 5---6 (citing Shih ,r,r 45, 59, 94, 116, Fig. 7) (emphasis added and
omitted).
Appellants acknowledge Shih discloses online ranking of digital
resources presented to a plurality of users, via a website, shown on Figures
5A-5C, based on users' actions relative to those resources (e.g., presenting,
adding, deleting, short-deleting, long-adding the resource). App. Br. 9
( citing Shih ,r,r 7, 11 ).
Shih's Figure 5C is reproduced below.
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Application 13/800,633
5C'•~ ................... nx(
50S ; r~~s1..iur.ce?. !
\ 1 :
,,_'. ____________________________ ----------- ------------------- ____ _j
Figure 5C shows customer's website 500 presenting Resource X (504),
Resource Y (506), and Resource X (508) to a plurality of users and ranking
resources based on users' actions relative to resources (e.g., adding Resource
A (518) to website 500).
Shih discloses "[t ]he resources are ranked by determining a long add
click through rate (LACTR) for the resources" and "a LACTR is calculated
for each of the resources in accordance with the received signals reporting
actions for the resources." Shih ,r,r 107-108. As such, "[t]he higher the
LA CTR of a resource, the higher the resource is ranked." Shih ,r,r 111, 116.
According to Shih, "[ e ]xamples of resources include, without limitation,
data representations of real items for sale on a shopping website; software or
data files; images, videos or audio clips; or widgets, gadgets, or modules in a
personalized homepage service." Shih ,r 22.
Appellants contend because "Shih only describes each resource
having an individual counter" in the context of a LACTR, Shih does not
disclose a single counter "that tracks a single value representing a
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combination of (a) the first user action or a type of the first user action, (b)
the first object, ( c) the second user action or a type of the second user action,
and (d) the second object" as recited in claim 1. App. Br. 10-12. In other
words, Appellants argue: (1) "[a] single value that represents a combination
of user actions and objects [as recited in claim 1] is fundamentally different
from a number of ratings or scores ( e.g., the LA CTR score) that each
represent a single resource [as disclosed by Shih]." Reply Br. 3--4.
According to Appellants,
the Examiner's Answer mistakenly conflates two different
concepts of Shih: 1) the overall score of paragraph [0045] which
relates to languages of resources, and 2) the long-addition click-
through rate ("LACTR"). More specifically, the Examiner's
Answer asserts that the LACTR is analogous to Appellant's
claimed counter, and that the overall score in Shih is analogous
to the single value of Appellant's claims. See Examiner's
Answer at 12. However, as recited in Appellant's claims, the
"counter tracks [the] single value," which, according to the
interpretation of the Examiner's Answer, is rendered impossible
in Shih because the LACTR is based on a click through rate of a
resource, which a sub-category of the overall score for the same
resource.
Reply Br. 4.
Because Shih does not disclose "a counter that tracks a single value
representing a combination of (a) the first user action or a type of the first
user action, (b) the first object, ( c) the second user action or a type of the
second user action, and (d) the second object," Appellants argue "Shih [also]
cannot teach or suggest incrementing such a counter 'in response to
receiving both of the first and second user actions from the user device
associated with the first user"' as recited in claim 1. App. Br. 12.
In addition Appellants argue Shih's
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Filtering ranked resources based on characteristics of a user is
not equivalent to "receiving a request for a number of objects
for a category, the category including (a) the first user action or
a type of the first user action, (b) the second user action or type
of the second user action, and ( c) the second object"
as recited in claim 1. App. Br. 12 ( emphasis omitted).
Appellants' arguments are not persuasive and not commensurate with
the scope of the claims. Instead, we find the Examiner has provided a
comprehensive response to Appellants' arguments supported by evidence.
Ans. 12-14. As such, we adopt the Examiner's findings and explanations
provided therein. Id. At the outset, we note claim terms are given their
broadest reasonable interpretation consistent with the Specification. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation, claim terms are given their ordinary
and customary meaning, as would be understood by one of ordinary skill in
the art in the context of the entire disclosure. In re Trans logic Tech., Inc.,
504 F.3d 1249, 1257 (Fed. Cir. 2007).
The term "counter" is not specifically defined by Appellants'
Specification; rather, that term is described in the context of software code
(Spec. ,r 43) "representing the user action, the object, and the demographic
information." Spec. ,r 22. For example,
Counters are defined by one or more of the object, object type,
object description/metadata, action, action type, action metadata
(time, location, etc.), and demographic information about the
user and/or user's connections. For example, a counter may be
defined for listening (action) to the song, Gangnam Style
( object), by a male living in Washington D.C.
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Application 13/800,633
As the counter for an object within a category increases, the
processing system estimates a greater correlation or similarity
between that object and another object, action, and/or
demographic defined by the category. In one embodiment, the
processing system determines that there is a correlation or
similarity between an object and another object, action, and/or
demographic based upon one or more of the counter exceeding a
threshold value, the counter maintaining a value for a particular
amount of time, the counter positioning the object at a threshold
ranking among objects within the category, the counter
maintaining a minimum ranking for an amount of time, etc.
Spec. ,r,r 22, 24 ( emphasis added).
Based on Appellants' Specification, the "counter" can be broadly but
reasonably interpreted as encompassing Shih's disclosure of a "long add
click through rate (LACTR)" calculated for each resource based on the
received signals reporting users' actions for the resource, as correctly
recognized by the Examiner. Ans. 12 (citing Shih ,r,r 38, 45, 105, 116); see
also Shih ,r,r 107-112. Likewise, the phrase "counter that tracks a single
value representing a combination of (a) the first user action or a type of the
first user action, (b) the first object, ( c) the second user action or a type of
the second user action, and (d) the second object," as recited in Appellants'
claim 1 can be broadly, but reasonably interpreted to encompass Shih's
LAC TR and its overall (accumulative) score (i.e., a single value) that
represents a combination of users' actions relative to resources (i.e., objects),
as recognized by the Examiner. Ans. 12-13 (citing Shih ,r,r 34, 105, 116).
The term "combination" of users' actions can be broadly interpreted to
represent multiple users' actions and those users' actions need not occur
concurrently or simultaneously; and instead, the term "combination" can be
accumulative as disclosed by Shih.
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Application 13/800,633
Similarly, the phrase "incrementing the single value of the identified
counter in response to receiving both of the first and second user actions
from the user device associated with the first user" can be broadly but
reasonably interpreted to encompass Shih's LACTR that is calculated for
each resource, i.e., the total number of times the resource was displayed or
the total number of views for the resource is used as the number of times the
resource was displayed. Shih ,r 110.
Appellants do not direct us to evidence to show the Examiner's
interpretations are unreasonable. "[T]he fact that [ A Jppellants can point to
definitions or usages that conform to their interpretation does not make the
PTO' s definition unreasonable when the PTO can point to other sources that
support its interpretation." In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997) ( emphasis added).
For these reasons, we are not persuaded of Examiner error.
Accordingly, we sustain the Examiner's anticipation rejection of
independent claims 1, 7, and 13, as well as their respective dependent claims
2---6, 9--12, and 15-18, which Appellants do not argue separately.
For the same reasons, we also sustain the Examiner's rejection of ( 1)
claims 4--6, 10-12, and 16-18 under 35 U.S.C. § 103(a) as being obvious
over Shih and Luo; and (5) claims 3, 9, and 15 under 35 U.S.C. § 103(a) as
being obvious over Shih and Boutin, which Appellants do not argue
separately.
CONCLUSION
On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting: (1) claims 1, 3-7, 9--13, and 15-18 under
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35 U.S.C. § 112(a) as failing to comply with the written description
requirement; and (2) claims 1, 3-7, 9-13, and 15-18 under
35 U.S.C. § 112(b) as being indefinite. However, Appellants have not
demonstrated the Examiner erred in rejecting (3) claims 1, 7, and 13 under
35 U.S.C. § 102(a) as being anticipated by Shih; (4) claims 4--6, 10-12, and
16-18 under 35 U.S.C. § 103(a) as being obvious over Shih and Luo; and (5)
claims 3, 9, and 15 under 35 U.S.C. § 103(a) as being obvious over Shih and
Boutin.
DECISION
As such, we AFFIRM the Examiner's rejections of claims 1, 3-7, 9-
13, and 15-18 under 35 U.S.C. § 102(a) and§ 103(a). We REVERSE the
Examiner's rejections of claims 1, 3-7, 9-13, and 15-18 under
35 U.S.C. § 112(a) and§ 112(b).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision rejecting
claims 1, 3-7, 9-13, and 15-18. See 37 C.F.R. § 4I.50(a)(l).
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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