Facebook, Inc.

Patent Trials and Appeals Board

Feb 11, 2020

14542460 - (D) (P.T.A.B. Feb. 11, 2020)

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.
14/542,460 11/14/2014 Vishu Gupta 26295-27097/US 7024
87851 7590 02/11/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
KYEREME-TUAH, AKOSUA P
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/11/2020 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):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VISHU GUPTA, WEI WU, and JIN YOU

Appeal 2019-003665
Application 14/542,460
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, RACHEL H. TOWNSEND, and
CYNTHIA M. HARDMAN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 103 as obvious.
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s
decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Facebook,
Inc. Appeal Br. 2 (the pages of the Appeal Brief are unnumbered; for
reference, we refer to page numbers, commencing from the first page of the
Appeal Brief.
Appeal 2019-003665
Application 14/542,460

2
STATEMENT OF THE CASE
Claims 1–20 stand finally rejected by the Examiner as follows:
1. Claims 1, 4, 5, 8, 10, 11, 14, 16, 17, and 20 stand rejected by the
Examiner under 35 U.S.C. § 103 as obvious in view of Whitnah et al., US
2010/0049534 A1, published Feb. 25, 2010 (“Whitnah”) and Kerr, US
9,319,373 B1, issued Apr. 19, 2016 (“Kerr”). Final Act. 7.
2. Claims 2 and 3 under 35 U.S.C. § 103 as obvious in view of
Whitnah, Kerr, and Brown et al., US 2012/0254902 A1, published Oct. 4,
2012 (“Brown”) . Final Act. 28.
3. Claims 6, 7, 12, 13, and 19 under 35 U.S.C. § 103 as obvious in
view of Whitnah, Kerr, and Walkingshaw et al., US 2015/014921 A1,
published May 28, 2015 (“Walkingshaw”). Final Act. 32.
4. Claims 9, 15, and 18 under 35 U.S.C. § 103 as obvious in view of
Whitnah, Kerr, and Matamala et al., US 2013/0339345 A1, published Dec.
19, 2013 (“Matamala”). Final Act. 47.
Claims 1, 10, 16 are independent claims. The remaining claims
depend from them. Claim 1, which is representative, is reproduced below
(bracketed numbers have been added for reference to the specific limitations
in the claim):
1. A method comprising:
[1] providing, by an online system, an application
programming interface to one or more third party systems, each
of the one or more third party systems providing an application
for use to users of the online system and the application
programming interface configured to communicate state
information of a user of the online system corresponding to
interactions the user made within the application to the online
system;
[2] obtaining, at an online system, the state information
through the application programming interface from the one or
Appeal 2019-003665
Application 14/542,460

3
more third party systems describing the state of the user of the
online system within one or more applications, the state
information for an application describing a relationship between
the user and one or more features inside of the application, the
state information including one or more interactions performed
by the user inside the one or more applications, identifying one
or more types of the interactions performed inside the one or
more applications, and identifying each of the one or more
applications;
[3] determining a likelihood of the user performing an
additional type of interaction with each application in a set of
additional applications based at least in part on the obtained
state information describing interactions by the user within the
one or more applications;
[4] ranking each application in the set of additional
applications based on the determined likelihood of the user
performing the additional type of interaction;
[5] selecting one or more applications from the set based
at least in part on the ranking; and
[6] providing information identifying the selected one or
more applications to the user.

CLAIMS
The first step [1] of claim 1 provides an “application programming
interface” to a third party by an “online system.” An example of an online
system described in the Specification is a “social networking system.” Spec.
¶ 4. The third party provides an application to users for use with the online
system. Example of “applications” disclosed in the Specification are
finance, entertainment, gaming, and educational applications. Spec. ¶ 33.
The application programming interface is “configured to
communicate state information of a user of the online system corresponding
to interactions the user made within the application to the online system.”
Step [1] of claim 1 (emphasis added). The Specification does not provide an
explicit definition of “state information.” However, the Specification
Appeal 2019-003665
Application 14/542,460

4
explains that the “state of a user within an application describes the user’s
relationship with features or content provided by the application.” Spec.
¶ 31. The Specification does not expressly define “interactions,” but it
discloses several examples of interactions with an application: “making a
purchase via the application, interacting with one or more advertisements
presented via the application, interacting with an additional user via the
application, and an amount of usage of the application.” Spec. ¶ 4; see also
Spec. ¶¶ 26, 31. Thus, we construe “state information” and “interactions”
broadly to mean an action made by a user within the application, while using
the application, such as a purchase made within the application and the time
spent using the application.
Step [2] of the method comprises the online system obtaining “state
information” from the application programming interface about the user
inside the application, e.g., information about making a purchase or
interacting with other users of the application.
In step [3] of the claimed method, “a likelihood of the user performing
an additional type of interaction with each application in a set of additional
applications based at least in part on the obtained state information
describing interactions by the user within the one or more applications” is
determined. We interpret the “set of additional applications” to be
applications which are different applications from the “one or more
applications” from which state information has been obtained in step [2].
As an example, the Specification explains the “additional applications may
be associated with a similar genre as the application or with a similar genre
as applications with which the user frequently interacts.” Spec. ¶ 35. The
Appeal 2019-003665
Application 14/542,460

5
Specification also refers to the additional application as a “new”
application.2
The “additional type of interaction” is an interaction within the
additional applications. Step [3] therefore predicts the likelihood of a user
performing an interaction with an “additional” application based on the state
information from a different application (the “one or more applications”),
provided to the online system in step [2].
The applications in the set of “additional” applications are ranked in
step [4] “based on the determined likelihood of the user performing the
additional type of interaction.” The method further comprises [5]
“selecting” one or more of the additional applications “based at least in part
on the rankings.” The claim does not expressly specify what entity performs
the “selecting” step. However, the Specification indicates it is the “online
system.” Spec. ¶ 53. In the last step of the method, [6] information
identifying the additional application is provided to the user.
In sum, the claim determines the likelihood that a user will perform an
interaction within a “new” application based on state information (step [3])
comprising previous interactions with a different application (step [2]), and
then provides information identifying (step [6]) a new application to a user.

2 “For example, the online system 140 determines 315 the likelihood that a
user will install a new shopping application based on the user’s prior
installations of other shopping applications and/or based on the user’s
interaction with one or more objects associated with the shopping
application or associated with additional shopping applications.” Spec. ¶ 46.
Appeal 2019-003665
Application 14/542,460

6
OBVIOUSNESS REJECTIONS BASED ON WHITNAH AND KERR
The Examiner found that Whitnah describes each step of the claimed
method, but not the application programming interface that communicates
the state information within an application. Final Act. 11. The Examiner
found, however, that Kerr describes an application programming interface
that communicates occurrences that happen inside a game to a social
networking site server. Id. The Examiner determined it would have been
obvious to one of ordinary skill in the art to have modified Whitnah with
Kerr’s teaching to receive information from the game application server. Id.
Appellant contends that Whitnah does not describe communicating
state information within an application as required by claim 1. Appellant
argues that Whitnah is directed to a user’s interactions with communications
via a “channel resource,” which Appellant asserts is not the same as the
“state information.” Appeal Br. 7.
We do not agree with Appellant’s argument.
Whitnah discloses logging member actions in an action log which is
maintained by the social networking website. Whitnah ¶¶ 47, 57.
Whitnah discloses that the “use of any functionality offered by the
application may thus constitute an action by the member in connection with
the application 190.” Whitnah ¶ 50.
In sum, Whitnah discloses logging actions into an action log, where
the actions can include an interaction within an application, namely, the use
of an application functionality. The actions described by Whitnah are
“action[s] made by a user within the application, while using the
application,” and therefore meet the definition of “state information” as we
have interpreted that term. See supra at 4.
Appeal 2019-003665
Application 14/542,460

7
Appellant also argues that Kerr does not does disclose communicating
state information from the application provider to the social networking
system as required by claim 1 (steps [1] and [2]). Appeal Br. 8. We do not
agree.
Kerr discloses:
The application server 206 is a server which can be hosted
separate from FACEBOOK and can serve an application (e.g., a
game, advertising application, etc.) Thus, the application server
206 can store and execute all of the software that can
implement a game and communicates occurrences that happen
inside the game to the social networking site server 204 via the
social networking site application interface 205.
Kerr, col. 3, ll. 60–66 (emphasis added).
Appellant attempts to distinguish the “occurrences” in Kerr from the
state information recited in the claim at step [2]. Appeal Br. 9–10. This
argument is not persuasive. State information is not limited to specific
relationships with the application, application features, application content,
or interactions with the application. Thus, while Kerr uses the term
“occurrences”3 to describe an event, incident, etc., that happens inside a
game, one of ordinary skill in the art would reasonably understand that such
an event or incident would include an interaction with a feature or aspect of
the game when playing it. Appellant has not provided adequate evidence
that an occurrence is not “state information” as the term is used in claim 1.
Appellant also argues that the combination of Whitnah and Kerr does
not disclose step [3] of “determining a likelihood of the user performing an

3 Dictionary.com defines “occurrences” as: “1 the action, fact, or instance of
occurring. 2 something that happens; event; incident.”
https://www.dictionary.com/browse/occurrence (Accessed Feb. 7, 2020).

Appeal 2019-003665
Application 14/542,460

8
additional type of interaction with each application in a set of additional
applications” and subsequent steps [4]–[6]. Appeal Br. 10. See also Reply
Br. 3 (“Whitnah does not disclose ranking and recommending new or
additional applications to the user, as claimed.”).
We agree with Appellant that these claims limitations are not
described in Whitnah, nor in its combination with Kerr.
The following disclosure from Whitnah describes how its ranking
works:
The ability to determine a numeric value as the user affinity
metric for an application gives the ability to rank applications
for a given channel or with respect to all channels. An
application ranked high compared to other applications is liked
more by its current users compared to applications with lower
user affinity metric. There is a high probability that new users
are also going to like an application rated high on a user affinity
ranking. The social networking website can be adapted to
promote applications with high user affinity ranking, as
compared to applications that are ranked lower. The social
networking website can promote an application by providing it
better channel resources so as to give the application a better
chance at increasing its user base. The user affinity metric
therefore provides the social networking website with a
mechanism to decide how to allocate the channel resources
between different applications.
Whitnah ¶ 13.
In Whitnah, the applications are ranked based on current users’
interactions using a user affinity metric. Id. ¶¶ 7–8, 13. Whitnah explains
that the user affinity towards an application is determined by “rates of
occurrences of various types of user interaction associated with an
application and a channel computed over various time intervals provide a
measure of the likelihood that a member will take that specific action when
Appeal 2019-003665
Application 14/542,460

9
presented with the given application based on that channel.” Whitnah ¶ 8.
The purpose of the ranking is to determine which applications to give “better
channel resources” to promote them and “give the application a better
chance at increasing its user base.” Whitnah ¶ 13. Thus, in Whitnah,
applications are promoted to a new user based on a user affinity metric
computed from existing user interactions with the same applications. The
claimed method, however, promotes new applications to an existing user
based on that user’s interactions with a different application.
Kerr describes ranking of messages based on factors, such as the value
and importance of the message to the recipient (Kerr, Abstract; col. 1, ll. 30–
47), but does not teach using this ranking to promote other applications to
the recipient. The Examiner did not identify an adequate reason to apply
Kerr’s ranking method to Whitnah to have arrived at the claimed method,
particularly steps [4]–[6] of claim 1. Accordingly, we reverse the
obviousness rejection of claim 1.
Claims 10 and 16 have the similar limitations in which information
regarding new applications is provided to a user based on the user
interactions with a different application. The obviousness rejection of these
claims is therefore reversed as well.
Dependent claims 2–9, 11–15, and 17–20 incorporate all the
limitations of the independent claims and therefore are reversed, as well.

Appeal 2019-003665
Application 14/542,460

10
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4, 5, 8,
10, 11, 14,
16, 17, 20
103 Whitnah, Kerr 1, 4, 5, 8,
10, 11, 14,
16, 17, 20
2, 3 103 Whitnah, Kerr,
Brown
2, 3
6, 7, 12, 13,
19
103 Whitnah, Kerr,
Walkingshaw
6, 7, 12, 13,
19
9, 15, 18 103 Whitnah, Kerr,
Matamala
9, 15, 18
Overall
Outcome
1–20

REVERSED