Ex Parte Tseng

Patent Trial and Appeal Board

Dec 27, 2018

14300309 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/300,309 06/10/2014
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
12/31/2018
FIRST NAMED INVENTOR
Erick Tseng
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.
26295-26512/US 2597
EXAMINER
LONG, MEREDITH A
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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 ERICK TSENG
Appeal 2017-011474
Application 14/300,309 1
Technology Center 3600
Before CARL W. WHITEHEAD JR., HUNG H. BUI, and
ADAM J. PYONIN, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 1-20, which are all the claims pending
in the application. Claims App'x. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM. 2
1 According to Appellant, the real party in interest is Facebook, Inc. App.
Br. 2.
2 Our Decision refers to Appellant's Appeal Brief ("Br.") filed March 28,
2017; Examiner's Answer ("Ans.") mailed July 10, 2017; Final Office
Action ("Final Act.") mailed October 13, 2016; and original Specification
("Spec.") filed June 10, 2014.
Appeal 2017-011474
Application 14/300,309
STATEMENT OF THE CASE
Appellants' invention relates to "social networking systems" for
"identifying advertisement content eligible for presentation to a social
network system user" based on whether a physical location associated with
the user satisfies the physical location specified by targeting criteria included
in an advertisement request ("ad request"). Spec. ,r,r 1, 5, Abstract.
Claims 1, 9, and 18 are independent. Representative claim 1 is
reproduced below:
1. A method comprising:
maintaining a user profile for a user of a social networking
system including a set of physical locations associated with the
user, each physical location associated with a location type;
receiving an advertisement ("ad") request identifying an
advertisement and targeting criteria, the targeting criteria
identifying a physical location and identifying a minimum
measure of ad quality for the user associated with each of one or
more location types associated with the physical location;
identifying an opportunity to present advertisement
content to the user;
determining that the user profile includes a physical
location matching the physical location identified by the
targeting criteria;
identifying the minimum measure of advertisement
quality for the user from the targeting criteria that is associated
with the location type of the matching physical location from the
user profile;
determining a measure of ad quality for the user based at
least in part on an affinity between the user profile and the
advertisement; and
determining whether to include the ad request in a
selection process with one or more additional ad requests based
at least in part on the determined measure of ad quality and the
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identified minimum measure of advertisement quality for the
user.
App. Br. 12 (Claims App'x).
EXAMINER'S REJECTION
Claims 1-20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a patent-ineligible "abstract idea" without
significantly more. Final Act. 3-5.
DISCUSSION
To determine whether subject matter is patent-eligible under § 101,
the Supreme Court has set forth a two part test "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. Pty. v.
CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). The first step in the analysis
is to "determine whether the claims at issue are directed to one of those
patent-ineligible concepts," such as an abstract idea. Id. For computer-
related technologies, "the first step in the Alice inquiry ... asks whether the
focus of the claims is on the specific asserted improvement in computer
capabilities" (which would be eligible subject matter) or instead "on a
process that qualifies as an 'abstract idea' for which computers are invoked
merely as a tool" (which would be an ineligible concept). Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36, 1338 (Fed. Cir. 2016) (emphasis
added). If the claims are directed to eligible subject matter, the inquiry ends.
Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017).
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If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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." Alice, 134 S. Ct. at 2355 (quoting Mayo [Collaborative Servs.
v. Prometheus Labs., Inc.], 566 U.S. [66], 78-79 [(2012)]). In other words,
the second step is to "search for an 'inventive concept'-i.e., an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Id. (quoting Mayo, 566 U.S. at 72-73). "'[W]ell-
understood, routine, [and] conventional activit[ies]' previously known to the
industry" are insufficient to transform an abstract idea into patent-eligible
subject matter. Id. at 2359 (quoting Mayo, 566 U.S. at 73).
In rejecting claims 1-20 under 35 U.S.C. § 101, the Examiner
determines these claims are directed to the abstract idea of "utilizing user
data and advertiser criteria to target advertisements" which is considered as
"a fundamental economic practice" and includes limitations that are
analogous to those discussed, for example, in Cyberfone and CyberSource.
Final Act. 3--4 (quoting Cybeifone Sys., LLC v. CNN Interactive Grp., Inc.,
558 F. App'x 988 (Fed. Cir. 2014) (holding that using categories to
organize, store, and transmit information is an abstract idea); and
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) (holding that obtaining and comparing intangible data is an abstract
idea; method steps that can be performed in the human mind, or by a human
using a pen and paper are also an abstract idea)).
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The Examiner also determines the additional elements in the claims
are not sufficient to amount to significantly more than the judicial exception
because: (1) the claims are "described at a high level of generality and are
recited as performing generic computer functions routinely used in computer
application"; (2) "computer functions [] are well-understood, routine, and
conventional functions"; and (3) "[t]here is no indication that the
combination of elements improves the functioning of a computer or
improves any other technology." Final Act. 4--5.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellant argues the
claims are not directed to an abstract idea because the claims are directed to
(1) "a specific method for selecting advertisement content for social
networking system users based on types of location data associated with the
users" and (2) relate to "a technological improvement over prior techniques
for suggesting a product to a user." App. Br. 5-7 (quoting McRO, Inc. v.
Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
Appellant's arguments are not persuasive. At the outset, we note
Appellant's reliance on McRO is misplaced. For example, McRO '576
patent (U.S. Patent No. 6,307,576) describes a computer software for
matching audio to a 3D animated mouth movement to provide lip-synced
animation. McRO 's claims contain (i) specific limitations regarding a set of
rules that "define [] a morph weight set stream as a function of phoneme
sequence and time of said phoneme sequence" to enable computers to
produce "accurate and realistic lip synchronization and facial expressions in
animated characters" (McRO, 837 F.3d at 1313) and, when viewed as a
whole, are directed to (ii) a "technological improvement over the existing,
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manual 3-D animation techniques" that uses "limited rules in a process
specifically designed to achieve an improved technological result in
conventional industry practice," McRO, 837 F.3d at 1316.
In contrast to McRO, Appellant's claims and Specification are
directed to "social networking systems" and methods for "identifying
advertisement content eligible for presentation to a social network system
user" based on whether a physical location associated with the user satisfies
the physical location specified by targeting criteria included in an
advertisement request ("ad request"). Spec. ,r,r 1, 5, Abstract.
Based on Appellant's claims and Specification, we agree with the
Examiner that the claims are directed to an abstract idea of "utilizing user
data and advertiser criteria to target advertisements" which is considered as a
"fundamental economic practice." Final Act. 3--4. Such activities are
squarely within the realm of abstract ideas. Target advertisement based on
user data and advertiser criteria is a fundamental business practice prevalent
in our system of commerce, like (1) the risk hedging in Bilski v. Kappas, 561
U.S. 593 (2010); (2) the intermediated settlement in Alice, 134 S. Ct. at
2356-57; (3) verifying credit card transactions in CyberSource, 654 F.3d at
1370; (4) guaranteeing transactions in buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1354 (Fed. Cir. 2014); (5) distributing products over the Internet
in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014);
( 6) determining a price of a product offered to a purchasing organization in
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015);
and (7) pricing a product for sale in OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359 (Fed. Cir. 2015). Target advertisement based on user data
and advertiser criteria is also a building block of a market economy and, like
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risk hedging and intermediated settlement, is an "abstract idea" beyond the
scope of§ 101. See Alice, 134 S. Ct. at 2356.
Moreover, many of the steps recited in Appellant's claims 1, 9, and 18
are only abstract processes of receiving, identifying, and analyzing
information of a specific content, e.g., advertisement ("ad") request and
location information of a user. Information, as such, is intangible, and data
analysis without more is also an abstract idea. See, e.g., Microsoft Corp. v.
AT & T Corp., 550 U.S. 437,451 n.12 (2007); Alice, 134 S. Ct. at 2355;
Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972). "[C]ollecting
information, including when limited to particular content ( which does not
change its character as information)," and "analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more," are "within the realm of abstract ideas." Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see also Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014) ("Data in its ethereal, non-physical form is simply
information that does not fall under any of the categories of eligible subject
matter under section 101 ").
Lastly, we note Appellant's claims 1, 9, and 18 do not improve the
performance of a computer or solve a problem specific to computers or
computer networks. Appellant's Specification and arguments do not
demonstrate the claims "improve the way a computer stores and retrieves
data in memory," as the claims in Enfzsh did via a "self-referential table for a
computer database." See Enfzsh, 822 F.3d at 1336, 1339. Instead, as
recognized by the Examiner, "the claims ... [simply] uses computers as
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tools" to perform "the concept of selecting advertisement content for users
based on types of location data associated with the users." Ans. 2 ( emphasis
omitted). The focus of Appellant's invention is not to improve the
performance of computers, but to use computers as a tool to implement
business functions of receiving, identifying, and analyzing an advertisement
request and location information of a user.
Accordingly, we agree with the Examiner that claims 1-20 are
directed to an abstract idea of "utilizing user data and advertiser criteria to
target advertisements" which is considered as a "fundamental economic
practice." Final Act. 3--4.
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellant argues (1) "the
specific claim limitations provide a concrete and unconventional application
of the abstract idea" and (2) the claims contain an inventive concept like the
claims in Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1350, 1352 (Fed. Cir. 2016) because these claims "supply an
unconventional application ... by using a physical location, a social
network, and a location type to determine, with high likelihood, if a user is
currently associated with a given physical location." App. Br. 8-9.
Appellant's arguments are not persuasive. Appellant's reliance on
Bascom is, likewise, misplaced. For example, Bascom (U.S. Patent No.
5,987,606 ("Bascom '606 patent")) describes a particular arrangement of
filtering software at a specific location, remote from the end-users, with
customizable filtering features specific to each end user. The filtering
software enables individually customizable filtering at the remote ISP server
by taking advantage of the technical ability of the ISP server to identify
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individual accounts and associate a request for Internet content with a
specific individual account. Bascom '606 patent 4:35-38.
The Federal Circuit recognized that Bascom's installation of an
Internet content filter at a particular network location is "a technical
improvement over prior art ways of filtering such content" because such an
arrangement advantageously allows the Internet content filter to have "both
the benefits of a filter on a local computer and the benefits of a filter on the
ISP server" and "give[ s] users the ability to customize filtering for their
individual network accounts." Bascom, 827 F.3d at 1350, 1352. According
to the panel, Bascom's claims "do not preempt the use of the abstract idea of
filtering content on the Internet or on generic computer components
performing conventional activities." Id. Instead, Bascom's claims "carve
out a specific location for the filtering system (a remote ISP server) and
require the filtering system to give users the ability to customize filtering for
their individual network accounts." Id. As such, "an inventive concept can
be found in the non-conventional and non-generic arrangement of known,
conventional pieces." Id. at 1350.
In contrast to Bascom, Appellant's claims and Specification are
directed to a method for "identifying advertisement content eligible for
presentation to a social network system user" based on whether a physical
location associated with the user satisfies the physical location specified by
targeting criteria included in an advertisement request ("ad request"). Spec.
,r,r 1, 5, Abstract; see also Spec ,r,r 2--4, 12-14, 27, 36. There is no evidence
in the record to support the contention that Appellant's claimed social
network system is provided with any non-conventional and non-generic
arrangement of known, conventional components.
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According to Alice, the second step is to "search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355 (quoting
Mayo, 566 U.S. at 72-73). The most relevant Federal Circuit cases on point
include (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014) and (2) Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288 (Fed. Cir. 2016). BothDDR and Amdocs involve business-centric
inventions that are similar to Appellant's invention.
For example, the Federal Circuit found DDR 's claims contain an
"inventive concept" under Alice step 2 because DDR 's claims (1) do not
merely recite "the performance of some business practice known from the
pre-Internet world" previously disclosed in Bilski and Alice, but instead (2)
provide a technical solution to a technical problem unique to the Internet,
i.e., a "solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also found Amdocs'
claims contain a sufficient "inventive concept" because like DDR, Amdocs'
claims "entail[] an unconventional technological solution ( enhancing data in
a distributed fashion) to a technological problem (massive record flows
which previously required massive databases)" and "improve the
performance of the system itself." Amdocs, 841 F.3d at 1300, 1302.
In contrast to DDR and Amdocs, Appellant's invention does not
provide a technical solution to a technical problem unique to the Internet,
i.e., a "solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
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DDR, 773 F.3d at 1257. Nor does Appellant's invention entail, like Amdocs,
any "unconventional technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases)" and "improve the performance of the system
itself." Amdocs, 841 F.3d at 1300, 1302. As such, we find no element or
combination of elements recited in Appellant's claims 1, 8, and 19 that
contains any "inventive concept" or adds anything "significantly more" to
transform the abstract concept into a patent-eligible application. Alice, 134
S. Ct. at 2357. Instead, we agree with the Examiner that the additional
elements recited in Appellant's claims 1, 9, and 18 (e.g., a social networking
system and processor) do not transform the abstract idea into a patent
eligible invention. As our reviewing court has observed, "after Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible." DDR, 773 F.3d at 1256
(citing Alice, 134 S. Ct. at 2358).
Because Appellant's claims 1, 8, and 19 are directed to a patent-
ineligible abstract concept and does not recite something "significantly
more" under the second prong of the Alice analysis, we sustain the
Examiner's rejection of claims 1-20 under 35 U.S.C. § 101.
CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1-20 under 35 U.S.C. § 101.
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DECISION
As such, we AFFIRM the Examiner's final rejection of claims 1-20
under 35 U.S.C. § 101.
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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