Ex Parte Schoen et al

Patent Trial and Appeal Board

Mar 22, 2018

13023197 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/023, 197 02/08/2011 Kent Matthew Schoen
91230 7590 03/26/2018
Baker Botts L.L.P./Facebook Inc.
2001 ROSS A VENUE
SUITE 700
Dallas, TX 75201
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.
079894.0119 8200
EXAMINER
SCHMUCKER, MICHAEL W
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENT MATTHEW SCHOEN,
GREGORY LUC DINGLE, and TIMOTHY KENDALL
Appeal2016-003436
Application 13/023, 197 1
Technology Center 3600
Before CAROLYN D. THOMAS, JASON V. MORGAN, and
AMBER L. HAGY, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Non-
Final Rejection of claims 1, 3-9, 17, 21-27, and 30-33. Claims 2, 10-16,
18-20, 28, and 29 are canceled. Non-Final Act. 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Facebook, Inc., as the real party in interest. App. Br. 3.
Appeal 2016-003436
Application 13/023, 197
Invention
Appellants disclose a method "for tracking information about the
activities of users of a social networking system while on another domain."
Abstract.
Exemplary Claim (key limitations emphasized)
1. A method comprising, by one or more processors associated with
one or more computing devices of a social networking system:
maintaining, by one or more of the processors, a profile for each of
one or more users of the social networking system, wherein the profile
for each user comprises information about the user and information
identifying connections to one or more other users of the social
networking system;
tracking, by one or more of the processors, actions taken by one or
more of the users of the social networking system on third-party
websites by:
receiving one or more tracking pixel messages generated by a
browser client associated with one or more of the users of the
social networking system, respectively, the browser client
having accessed a tracking pixel associated with a third-party
website having a different domain than the social networking
system, each tracking pixel message comprising information
about an action taken by one or more of the users of the social
networking system on the third-party website;
validating each tracking pixel message by validating a tracking
identifier of the tracking pixel message using a hash value;
identifying a user of the social networking system associated
with the tracking pixel message by accessing a user identifier
associated with the tracking pixel message, the user identifier
corresponding to the user; and
recording, for each validated tracking pixel message, the action
taken by the user on the third-party website in a pixel-user
association table;
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correlating, by one or more of the processors, each of the actions on
the third-party website recorded in the pixel-user association table
with one or more social advertisements presented to one or more of
the users of the social networking system, wherein each social
advertisement presented to a particular user of the social networking
system comprises information identifying an action taken by one or
more other users of the social networking system on the third-party
website, wherein each of the one or more other users are connected
within the social networking system as friends to the particular user to
whom the social advertisement is presented; and
generating a tracking report for display to an advertiser
associated with the one or more social advertisements, the
tracking report comprising statistical data that associates one or
more user profile attributes to one or more of the social
advertisements and actions on the third-party website that
correlate to respective ones of the social advertisements.
Rejections
The Examiner rejects claims 1, 3-9, 17, 21-27, and 30-33 under
35 U.S.C. § 101 as being directed to non-statutory subject matter. Non-Final
Act. 3--4.
The Examiner rejects claims 1, 3-9, 17, 21-27, and 30-33 under
35 U.S.C. § 103(a) as being unpatentable over Monfried et al. (US
2008/0228537 Al; published Sept. 18, 2008) ("Monfried"), Liu et al. (US
6,839,680 Bl; issued Jan. 4, 2005) ("Liu"), Kendall et al. (US 2009/0119167
Al; published May 7, 2009) ("Kendall"), and Levine et al. (US
2009/0144146 Al; published June 4, 2009) ("Levine"). Non-Final Act. 5-
36.
ANALYSIS
35 us.c. § 101
In rejecting claim 1 under 35 U.S.C. § 101, the Examiner concludes
the claim is either "directed to the [abstract] concept of the effectiveness of
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advertising by location" (Non-Final Act. 3) or to "'comparing new and
stored information and using rules to identify options"' (Ans. 4). The
Examiner further concludes the claimed invention is "performed by [a]
generically recited computer/processor." Non-Final Act. 4; see also Ans. 4--
5. Therefore, the Examiner concludes claim 1 is directed to non-statutory
subject matter.
Appellants contend the Examiner erred because claim 1 "is
'necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks."' App. Br. 9
(citation to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014) omitted in original). Appellants argue "that the use of
tracking pixels to track user actions on third-party websites and then
correlating the actions with social advertisements presented to those users on
the online social network is not a mental process, let alone a 'routine
mental[ ]information-comparison and rule-application process[]."' Reply
Br. 4 (citation to SmartGene, Inc. v. Advanced Biological Labs. SA, 555 F.
App'x 950, 955 (Fed. Cir. 2014) (non-precedential) omitted in original;
second set of brackets in original).
We agree with Appellants the Examiner erred in concluding claim 1 is
directed to an abstract idea representing non-statutory subject matter. Claim
1 includes recitations directed to tracking actions taken by users by steps
that include a browser client having accessed a tracking pixel of a third-
party website having a different domain than the social networking system.
Together, the recitations are directed to "tracking information about the
activities of users of a social networking system while [the users are] on
another domain." Abstract. This tracking goes well beyond merely
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"[m]aximizing the effectiveness of advertising" by location. Non-Final Act.
3--4; see also Ans. 4. However, the Examiner does not show how such
tracking relates to any idea that "was in widespread use well before the
dawn" of social networking systems. See DDR Holdings, 773 F.3d at 1264
(Mayer, J., dissenting). Moreover, the Examiner does not persuasively show
that the claim is directed to a "business solution" (Ans. 5) rather than to
solving "a problem specifically arising in the realm of computer networks"
(DDR Holdings, 773 F.3d at 1257). The Examiner also does not
persuasively show claim 1 merely compares new and stored information and
uses rules to identify options. Ans. 4. Therefore, we do not agree with the
Examiner that claim 1 is directed to an abstract idea representing non-
statutory subject matter.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 101
rejection of claim 1, or claims 3-9, 17, 21-27, and 30-33, which are rejected
together and which similarly directed to statutory subject matter.
35 USC§ 103(a)
With respect to the Examiner's 35 U.S.C. § 103(a) rejection, we agree
with and adopt as our own the Examiner's findings of facts and conclusions
as set forth in the Answer and in the Action from which this appeal was
taken. We have considered Appellants' arguments, but do not find them
persuasive of error. We provide the following explanation for emphasis.
In rejecting claim 1under35 U.S.C. § 103(a), the Examiner finds
Monfried's use of "tags on social websites 320 [to] cause behavior tracking
process 330 in server computer 40 to collect data regarding the behaviors
displayed by user 300 on social websites 320" (Monfried i-f 136) teaches or
suggests most of the recitation directed to receiving one or more tracking
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pixel messages generated by a browser client associated with one or more
users of a social networking system. Non-Final Act. 8-9 (citing Monfried
Fig. 6, i-f 13 6); see also Monfried i-f 87 ("[ o ]ne tracking technique starts with
identifying all possible behaviors that can occur on a social website and
converting each behavior into a tag or pixel"). The Examiner relies on Liu's
identification of web users across domains to render obvious modifying
Monfried by having the tracking pixel be associated with a third-party
website having a different domain than the social networking. Non-Final
Act. 17 (citing Liu Abstract); see also Ans. 7 (although "Monfried implies
tracking activities across the internet as a whole ... the Examiner use[ s] Liu
to explicitly teach what was inferred/implied by Monfried").
Appellants contend the Examiner erred because "Monfried does not,
in fact, teach tracking activity and receiving information from 3rd party
domains or websites." App. Br. 16. However, the Examiner additionally
relies on Liu, rather than Monfried alone, to render obvious implementing
tracking across domains. Moreover, Appellants do not provide persuasive
arguments or evidence showing that "Monfried' s tracking is clearly limited
to a single domain or website (e.g., a 'social website')" in a manner that
precludes or at least teaches away from hosting tracking pixels on a different
domain. Id.
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner further
finds Monfried's tracking of user behavior that involves storing "in profile
storage 360 data regarding [tracked] behaviors in a profile database record
about user 300" (Monfried i-f 13 6) teaches or suggests identifj;ing a user of
the social networking system associated with the tracking pixel message by
accessing a user identifier associated with the tracking pixel message, the
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Application 13/023, 197
user identifier corresponding to the user. Non-Final Act. 9 (citing Monfried
iii! 87' 136).
Appellants contend the Examiner erred because Monfried "does not
disclose identifying any of [the tracked] users personally for any purpose. In
fact, Monfried expressly requires that its tracking processes 'do not contain
any data that could be used to personally identify a user' and that the
'tracking techniques anonymously collect click-stream data."' App. Br. 18
(citing Monfried if 89). However, we agree with the Examiner that claim 1
does not require the identification of a user includes identifying personally
identifiable information. Ans. 9. Appellants submit the Specification
provides support for the disputed recitation by disclosing an entry in action
log 160 for "an identifier (user ID) for the user who performed the action"
(Spec. if 45) and accessing "a user identifier of the user associated with the
tracking pixel message" (Spec. if 108). See App. Br. 4. However, neither
cited disclosure requires identification of a user in a manner that could
personally identify the user.
Appellants also do not persuasively distinguish the claimed "user
identifier corresponding to the user" from data collected such as "a user's IP
address, the date and time a website was visited, [and] browser information."
Monfried if 89. Moreover, Monfried "can track the behaviors of the user's
friends or other users who are connected to the user in some fashion" (id.),
which further suggests that, even if personally identifiable information is not
stored, Monfried identifies each user to enable tracking of the user's friends
or connections.
Appellants also argue the "Examiner's rejection ultimately rests on
the impermissible conclusion that Claim 1 must be obvious simply because
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each element of those claims are allegedly found in the prior art." App. Br.
20; see also Reply Br. 5-7. However, the Examiner has articulated with
sufficient and persuasive specificity why it would have been obvious to
modify Monfried using the teachings and suggestions of Liu, Kendall, and
Levine in the manner recited in claim 1. Non-Final Act. 17-22; Ans. 13.
For these reasons, we sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 1, and claims 3-9, 17, 21-27, and 30-33, which
Appellants argue together with claim 1. App. Br. 14.
DECISION
We reverse the Examiner's decision rejecting claims 1, 3-9, 1 7, 21-
27, and 30-33 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1, 3-9, 17, 21-27,
and 30-33 under 35 U.S.C. § 103(a).
Because we affirm at least one rejection for each claim, we affirm the
Examiner's decision rejecting claims 1, 3-9, 17, 21-27, and 30-33.
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.
§ 41.50(f).
AFFIRMED
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