Facebook, Inc.

Patent Trials and Appeals Board

Apr 2, 2020

14566693 - (D) (P.T.A.B. Apr. 2, 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.
14/566,693 12/10/2014 Yi Tang 2006.029US1 3760
160546 7590 04/02/2020
Mannava & Kang, P. C.
3201 Jermantown Road
Suite 525
Fairfax, VA 22030
EXAMINER
TOKARCZYK, CHRISTOPHER B
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
docketing@mannavakang.com
fb-pdoc@fb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YI TANG, KAI DU III, SOURAV CHATTERJI, ANAND
SUMATILAL BHALGAT, and KE PAN
____________

Appeal 2019-001014
Application 14/566,693
Technology Center 3600
____________

Before MAHSHID D. SAADAT, JENNIFER L. McKEOWN, and BETH Z.
SHAW, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Facebook, Inc. (“Appellant”) is the applicant as provided in 37 C.F.R.
§ 1.46 and is identified as the real party in interest. Appeal Br. 2.
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STATEMENT OF THE CASE
Appellant’s disclosed and claimed invention “relates generally to
presenting content to users of an online system, and more specifically to
selecting content items based at least in part on features of content items
previously presented to a user.” Spec. ¶ 1.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method comprising:
receiving, at an online system, information
describing a first ad request from an advertiser, the first
ad request including a first advertisement having a set
of first features and a first bid amount;
identifying an opportunity to present an
advertisement of a plurality of advertisements that
includes the first advertisement to a user of the online
system, wherein each advertisement of the plurality of
advertisements is associated with a corresponding ad
request of a plurality of ad requests;
identifying features of a set of advertisements
previously presented to the user of the online system
within a specified time interval from a current time;
comparing the set of first features of the first
advertisement to the identified features of the set of
advertisements previously presented to the user within
the specified time interval from the current time;
identifying one or more first features of the set of
first features of the first advertisement matching one or
more of the identified features of the set of
advertisements previously presented to the user within
the specified time interval from the current time based
on the comparing;
determining a feature penalty for each of the one or
more identified first features of the first advertisement
of the first ad request, the feature penalty for a feature
being proportional to a number of advertisements
previously presented to the user within the specified
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time interval matching the one or more identified first
features;
determining a penalty for the first ad request based
at least in part on the determined feature penalties of
the one or more identified first features;
modifying the first bid amount included in the first
ad request based on the determined penalty;
ranking the plurality of ad requests and the first ad
request based on a bid amount associated with each of
the plurality of ad requests and the modified bid
amount into a ranking;
selecting, in a selection process performed by the
online system, an ad request having at least a threshold
position in the ranking based on the bid amount associated
with each of the plurality of ad requests and the modified
bid amount, the determined penalty for the first ad request
lowering a position of the first ad request in the ranking
relative to other ad requests of the plurality of ad requests
whose advertisements contain features that are different
relative to the identified features of the set of
advertisements previously presented to the user within the
specified time interval from the current time; and
communicating the advertisement for the selected
ad request to a client device of the user for presentation.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Koran US 8,799,081 B1 Aug. 5, 2014
Koran ‘596 US 2007/0260596 A1 Nov. 8, 2007
Hegeman US 2013/0124308 A1 May 16, 2013

REJECTIONS
The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as directed
to patent ineligible subject matter. Final Act. 2–6.
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The Examiner rejected claims 1, 2, 4–13, and 15–20 under 35 U.S.C.
§ 103 as unpatentable over Koran and Hegeman. Final Act. 7–11.
The Examiner rejected claims 3 and 14 under 35 U.S.C. § 103 as
unpatentable over Koran, Hegeman, and Koran ‘596. Final Act. 15–16.

ANALYSIS
THE 35 U.S.C. § 101 REJECTION
Claims 1–20
Based on the record before us, we are not persuaded that the Examiner
erred in concluding that claims 1–20 are directed to patent ineligible subject
matter.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
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in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO has published revised guidance on the application of section
101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”).2 Under that guidance, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed., rev.
08.2017, Jan. 2018)).

2 The Memorandum was updated in October 2019.
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See Memorandum, 84 Fed. Reg. at 52, 55–56. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 56.
Analysis – Revised Step 2A
Under the Memorandum, in prong one of step 2A we look to whether
the claims recite a judicial exception. The claimed invention includes
“identifying an opportunity to present an advertisement of a plurality of
advertisements that includes the first advertisement to a user . . . , wherein
each advertisement of the plurality of advertisements is associated with a
corresponding ad request of a plurality of ad requests;” “identifying features
of a set of advertisements previously presented to the user . . . within a
specified time interval from a current time;” “comparing the set of first
features of the first advertisement to the identified features of the set of
advertisements previously presented to the user within the specified time
interval from the current time;” “identifying one or more first features of the
set of first features of the first advertisement matching one or more of the
identified features of the set of advertisements previously presented to the
user within the specified time interval from the current time based on the
comparing;” “determining a feature penalty for each of the one or more
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identified first features of the first advertisement of the first ad request, the
feature penalty for a feature being proportional to a number of
advertisements previously presented to the user within the specified time
interval matching the one or more identified first features;” “ determining a
penalty for the first ad request based at least in part on the determined
feature penalties of the one or more identified first features;” “modifying the
first bid amount included in the first ad request based on the determined
penalty;” “ranking the plurality of ad requests and the first ad request based
on a bid amount associated with each of the plurality of ad requests and the
modified bid amount into a ranking;” and “selecting. . . an ad request having
at least a threshold position in the ranking based on the bid amount
associated with each of the plurality of ad requests and the modified bid
amount,” where “the determined penalty for the first ad request lowering a
position of the first ad request in the ranking relative to other ad requests of
the plurality of ad requests whose advertisements contain features that are
different relative to the identified features of the set of advertisements
previously presented to the user within the specified time interval from the
current time.”
In other words, the claimed invention identifies an opportunity to
present an advertisement to a user, identifies features of previously presented
advertisements with a certain time, compares and identifies matching
features of an advertisement with the previously presented advertisements,
determines a features penalty for matching features, determines a penalty for
the ad request based on the feature penalties, modifies the bid amount based
on the penalty, ranks the ad requests based on bid amounts and the modified
bid amount, and selecting the ad request having at least a threshold ranking.
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As the Examiner identifies, this claimed identifying, comparing,
determining, modifying, ranking, and selecting are mental “(i) uninstantiated
concepts, plans, or schemes and (ii) mental processes that can be performed
in the human mind or by a human using a pen and paper.” Final Act. 3. The
recited steps merely analyze feature data or information of advertisements.
As such, the claimed invention recites mental processes, which is an abstract
idea. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed.
Cir. 2016) (noting that the Federal Circuit has “treated analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category.”); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372–73 (Fed. Cir. 2011) (holding that a claim whose “steps can be
performed in the human mind, or by a human using a pen and paper” is
directed to an “unpatentable mental process[]”); see also Final Act. 3.
Additionally, the Examiner points out that the claimed invention
recites certain methods of organizing human activity. Final Act. 4. For
example, the claimed invention is a process for selecting advertisements
based on comparing and identifying previously presented features to provide
greater diversity of content items to the user. Spec. ¶ 4. More specifically,
the claimed invention penalizes advertisement features that match features
previously presented within a timeframe “ensures that the advertisements
presented to the user are not visually or subject matter redundant.” Appeal
Br. 10. As such, the claimed invention recites commercial activities, i.e.,
selecting advertising, that is a certain method of organizing human activity,
which is an abstract idea. See, e.g., Intellectual Ventures I LLC v. Capital
One Bank, 792 F.3d 1363, 1369–70 (Fed. Cir. 2015) (noting that tailoring
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advertisements based on location or time of day is a fundamental practice
long prevalent in our system and finding abstract claims related to
customizing information based on user information and navigation data); see
also Final Act. 4.
Under prong two of revised step 2A, we determine whether the recited
judicial exception is integrated into a practical application of that exception
by (a) identifying whether there are any additional elements recited in the
claim beyond the judicial exception(s); and (b) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.
The additional elements recited here include an online systems and
client device well as “receiving, at an online system, information describing
a first ad request from an advertiser, the first ad request including a first
advertisement having a set of first features and a first bid amount” and
“communicating the advertisement for the selected ad request to a client
device of the user for presentation.” Here, the additional limitations recited
beyond the judicial exception itself, alone or in combination, fail to integrate
the exception into a practical application. More particularly, the claimed
invention is not (i) an improvement to the functionality of a computer or
other technology or technical field (see MPEP § 2106.05(a)); (ii) a
“particular machine” to apply or use the judicial exception (see MPEP
§ 2106.05(b)); (iii) a particular transformation of an article to a different
thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful
limitation (see MPEP § 2106.05(e)). See also Memorandum, 84 Fed. Reg.
at 55.
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For the first time in the Reply Brief, Appellant argues that the claimed
invention provides a technical improvement. Reply Br. 4–5. Namely,
Appellant maintains that the claimed invention is improves the “user
interfaces and content delivery” to “diversify[] content presented to users.”
Reply Br. 4. Appellant explains that the claimed method may, for example,
compare[] the features of news stories previously presented to a
user in the newsfeed against other candidate news stories for
which this hypothetical system is ranking for presentation to the
user. In order to diversity the content of the newsfeed then, this
hypothetical system could penalize features of candidate news
stores that share a similar feature to one previously presented to
the user, thereby allowing other stories with more diversifying
features to move up the ranking that establishes the basis for
content presentation. Thus, this method is not merely directed to
advertising, but to an improvement in content delivery and user
interfaces in general.
Reply Br. 4–5.
We find this argument unpersuasive. Notably, Appellant fails to
identify a technical improvement in the delivery process or the user
interface. Instead, Appellant describes a process to improve the selecting an
advertisement or news story to present. This is not a technical improvement.
Instead, this is merely improving the mental process or method of organizing
human behavior. See also Ans. 6 (noting that “the alleged improvement
would be to the abstract idea, not anything relating to the technical aspects
of the claimed invention.”).
The claimed additional limitations, here, particularly the online
system and client device, are merely tools to implement the claimed judicial
exception. The Federal Circuit has found that “merely adding computer
functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea.” Id. at 1370. See also
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Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017
(Fed. Cir. 2017) (unpublished) (“Though the claims purport to accelerate the
process of finding errant files and to reduce error, we have held that speed
and accuracy increases stemming from the ordinary capabilities of a general-
purpose computer ‘do[ ] not materially alter the patent eligibility of the
claimed subject matter.’”); CyberSource, 654 F.3d at 1375 (“[T]he
incidental use of a computer to perform the [claimed process] does not
impose a sufficiently meaningful limit on the claim’s scope.”).
We further note that the additional steps of receiving and
communicating data are insignificant extra-solution activity. See MPEP
§ 2106.05(g); see also, e.g., OIP Techs., Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015) (noting that storing data is well-understood, routine, and conventional
and does not render claims eligible); buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.”); Elec. Power Grp., LLC, 830 F.3d at 1354 (finding
abstract steps for “gathering and analyzing information of a specified
content, then displaying the results”). As such, based on the record before
us, we determine that the claimed invention is not integrated into a practical
application.
Analysis – Revised Step 2B
Under step 2B, we determine that the claimed additional limitations,
alone or in combination, does not add significantly more to the abstract idea.
Appellant argues that the Examiner fails to consider whether certain
elements or the combination of elements are unconventional. Appeal Br. 11.
In particular, Appellant points to the claimed identifying, comparing,
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determining, modifying, ranking, and selecting steps. Appeal Br. 12. As
identified by the Examiner and discussed above, these are not additional
limitations but instead are mental steps and/or certain methods of organizing
human activities. See Ans. 5. As discussed above, the claimed invention
merely uses the computer as a tool to implement the judicial exception. For
example, receiving and communicating data is well known, routine, and
conventional. Moreover, the Examiner explains that
[the] additional computer elements provide conventional
computer functions that do not add meaningful limits to
practicing the identified abstract ideas. Generic computer
components recited as performing generic computer functions
that are well-understood, routine and conventional activities
amount to no more than implementing the identified abstract
ideas with a computerized system. The use of generic computer
components to receive information or communicate data (e.g., an
advertisement) to a client device is the well-understood, routine,
and conventional computer functions of receiving or transmitting
data over a network, e.g., the Internet, and does not impose any
meaningful limit on the computer implementation of the
identified abstract ideas.
Ans. 5. See Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (discussing that data
collection, recognition, and storage is well known); see also Elec. Power
Grp., LLC, 830 F.3d at 1355 (finding that use of “conventional computer,
network, and display technology for gathering, sending, and presenting the
desired information” does not add significantly more to the claimed abstract
idea); CyberSource Corp., 654 F.3d at 1375 (“[T]he incidental use of a
computer to perform the [claimed process] does not impose a sufficiently
meaningful limit on the claim’s scope.”).
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Accordingly, based on the record before us, we affirm the rejection of
claims 1–20 as directed to patent ineligible subject matter.

THE 35 U.S.C. § 103 REJECTION BASED ON KORAN AND HEGEMAN
Claims 1, 2, 4–13, and 15–20
Based on the record before us, we are persuaded that the Examiner
erred in concluding that claims 1, 2, 4–13, and 15–20 are unpatentable over
Koran and Hegeman.
The Examiner finds that Koran teaches the recited comparing
limitation. In particular, the Examiner explains that Koran teaches filtering
ads based on ad constraints. Namely,
Koran’s system chooses the best ads by comparing
characteristics of an ad-i.e., set of first features of the first
advertisement—to ad targeting constraints—i.e., features of
delivered advertisements. See also, e.g., Koran at [10:7-12]
(“Ads may then be filtered based on each ad’s associated ad
campaign constraints in operation 206 (similar to operation 106
of FIG. IA).”).
Ans. 8. In other words, the Examiner equates Koran’s ad constraints as
advertisement features previously presented to the user.
Appellant, on the other hand, argues that Koran and Hegeman
combined fail to teach or suggest comparing advertisement features with
those of advertisements previously presented to the user. Appeal Br. 14. In
particular, Appellant points out that
[t]he system described in Koran has an incentive to bump up ads
associated with more data in the ad rank (and penalize ads
without it) since they will likely reach a more relevant user
audience and, therefore, generate more revenue for the system.
Accordingly, the emphasis in Koran can be more properly
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understood as relating to revenue generations, not content
diversification as in the claimed method.
Appeal Br. 15. Moreover, Appellant argues that the Examiner essentially
relies on ad targeting, i.e. comparing user features to candidate
advertisements, and this is insufficient to satisfy the claimed comparing.
Reply Br. 6.
We agree with Appellant. Namely, Koran describes selecting an ad
based on ad constraints, where the “constraints can be based on any
combination of characteristics from a particular user’s profile, a particular
media content profile, or other parameters that are obtainable for a particular
ad request.” Koran, col. 12, ll. 35–38; see also Koran, col. 11, ll. 39–42).
While Koran identifies browsing history as an exemplary constraint (Koran,
col. 12, l. 38–39), that general disclosure alone, without more, does not teach
or suggest comparing advertisement features with those of advertisements
previously presented to the user. As such, we are persuaded of error.
Accordingly, based on the record before us, we reverse the rejection
of claims 1, 2, 4–13, and 15–20.

THE 35 U.S.C. § 103 REJECTION BASED ON KORAN, HEGEMAN, AND KORAN
‘596
Claims 3 and 14
As discussed above, we are persuaded that Korana nd Hegeman fails
to teach or suggest the limitation of claims 1 and 11. Koran ‘596 does not
cure the deficiencies. Therefore, we are persuaded of error and reverse the
rejection of claims 3 and 14.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1, 2, 4–13,
15–20
103 Koran, Hegeman 1, 2, 4–13,
15–20
3, 14 103 Koran, Hegeman,
Koran ‘596
3, 14
Overall
Outcome
1–20
TIME PERIOD FOR RESPONSE
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1) (2017).
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.
§ 1.136(a)(1)(iv).

AFFIRMED