Timothy Kendall et al.Download PDFPatent Trials and Appeals BoardOct 9, 201912419958 - (D) (P.T.A.B. Oct. 9, 2019) Copy Citation 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. 12/419,958 04/07/2009 Timothy Kendall 26295-15415 1578 87851 7590 10/09/2019 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER MCCORMICK, GABRIELLE A ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 10/09/2019 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 TIMOTHY KENDALL and DING ZHOU ____________ Appeal 2018-006422 Application 12/419,958 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and SHEILA F. McSHANE, Administrative Patent Judges. McSHANE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1, 2, 7–9, 12–20, 22–25, and 35–37.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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. We note that the pages of Appellant’s Appeal Brief are not numbered; we refer to the title page as page 1 and treat the pages that follow as though consecutively numbered. Appeal 2018-006422 Application 12/419,958 2 BACKGROUND The invention relates to targeting advertising to users of a social network. Specification, hereafter “Spec.,” ¶ 1. According to the invention, when there is insufficient information for a member to allow application of advertising targeting criteria, information for other members to whom a particular member is connected may be used. Id. ¶ 4. Claims 1, 22, and 35 are independent. Representative method claim 1 is reproduced from the Appeal Brief (Claims App.) as follows: 1. A computer-implemented method comprising: receiving, by one or more computing devices of a social networking system, a plurality of ads each associated with a targeting criteria that defines a main characteristic targeted at a user of the social network system and a secondary characteristic targeted at one or more users of the social networking system to whom the user is connected if a user profile of the user does not include information for the main characteristic; receiving, by the one or more computing devices of the social networking system, a request for an ad to be provided to a viewing user of the social network system; accessing, using a processor of the one or more computing devices of the social networking system, a user profile of the viewing user; for at least one of the ads, determining, by a processor of the one or more computing devices of the social networking system, that the user profile of the viewing user does not include information for determining whether the viewing user has the main characteristic; responsive to determining that the user profile of the viewing user does not include information for determining whether the viewing user has the main characteristic defined by the targeting criteria associated with the ad: accessing, by the processor, user profiles of one or more other users of the social network system to whom the viewing user is connected; Appeal 2018-006422 Application 12/419,958 3 determining, by the processor, that the user profiles of the one or more other users connected to the viewing user in the social network system have information for the secondary characteristic defined by the targeting criteria associated with the ad based in part on information included in the accessed user profiles of the one or more other users of the social network system to whom the viewing user is connected, the secondary characteristic being different than the main characteristic and being defined independent of a relationship between the viewing user and each of the one or more other users; and including, by the processor, the ad in the candidate set of ads for targeting to the viewing user responsive to determining that the one or more other users connected to the viewing user have the secondary characteristic; selecting an ad from the candidate set of ads for the viewing user; and sending the selected ad to an electronic device associated with the viewing user. In a Final Office Action, the Examiner rejects claims 1, 2, 7–9, 12–20, 22–25, and 35–37 under 35 U.S.C. § 101 as directed to unpatentable subject matter; claims 1, 2, 7–9, 12, 22–25, and 35–37 as unpatentable under 35 U.S.C. § 103(a) over Parekh2, Craig3, and Partovi4; claims 13 and 15–18 as unpatentable under 35 U.S.C. § 103(a) over Parekh, Craig, Partovi, Winner5, and Shahshahani6; claims 14 and 19 as unpatentable under 35 U.S.C. § 103(a) over Parekh, Craig, Partovi, Rohan7, and Official Notice; and claim 20 as unpatentable under 35 U.S.C. § 103(a) over Parekh, Craig, 2 US 2010/0076850 A1, published March 25, 2010. 3 US 2008/0104172 Al, published May 1, 2008. 4 US 2008/0294607 A1, published November 27, 2008. 5 US 2005/0278443 Al, published December 15, 2005. 6 US 2010/0030647 A1, published February 4, 2010. 7 US 2008/0162260 Al, published July 3, 2008. Appeal 2018-006422 Application 12/419,958 4 Partovi, and Tomlin8. Final Action, hereafter “Final Act.,” 2–12, mailed June 15, 2017; Answer, hereafter “Ans.,” 2–13, mailed April 26, 2018. DISCUSSION 35 U.S.C. § 101 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. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). 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 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas 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, 69 (1972)). Concepts determined to be patent eligible 8 US 2009/0063249 A1, published March 5, 2009. Appeal 2018-006422 Application 12/419,958 5 include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981) (“Diehr”)); “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.”), see also, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula 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 and quotation marks 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. (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 USPTO recently published revised guidance on the application of § 101, in accordance with judicial precedent. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (“2019 Appeal 2018-006422 Application 12/419,958 6 Guidance”). Under the 2019 Guidance, a claim is “directed to” an abstract idea if the claim recites any of (1) mathematical concepts, (2) certain methods of organizing human activity, and (3) mental processes—without integrating such abstract idea into a “practical application,” i.e., without “apply[ing], rely[ing] on, or us[ing] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Id. at 52–55. A claim so “directed to” an abstract idea constitutes ineligible subject matter, unless it recites an additional element (or combination of elements) amounting to significantly more than the abstract idea. Id. at 56. With this context in mind, we evaluate the Examiner’s rejection of representative claim 1. The Examiner considers the limitations of representative claim 1 and characterizes them as: 1) determining that the viewing user does not have the main characteristic defined by the targeting criteria associated with the ad based in part on the user profile of the viewing user; and 2) responsive to determining that the user profile of the viewing user does not include information for determining whether the viewing user has the main characteristic defined by the targeting criteria associated with the ad, accessing user profiles of one or more other users of the social network system to whom the viewing user is connected; determining whether the one or more other users connected to the viewing user in the social network system have the secondary characteristic defined by the targeting criteria associated with the a based in part on information included in the accessed user profiles of the one or more other users of the social network system to whom the viewing user is connected. Final Act. 3. Appeal 2018-006422 Application 12/419,958 7 The Examiner finds that the limitations of claim 1 “require using information about users and their connections to determine whether to send advertisements.” Final Act. 3; see also Ans. 3. The Examiner compares the claims to those in CyberSource, where information was organized and rules were applied to the information to make decisions, and Intellectual Ventures, where information was received and rules were used to make determinations. Final Act. 3 (citing CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)). The Examiner finds that “courts have held that concepts relating to the collection of data (such as profile information) and the use of the collected data in combination with rules (such as whether a user has a main characteristic and if not using a secondary characteristic) in decision making (such as determining ads to be sent) are abstract ideas.” Id. We agree with the Examiner that the steps of representative claim 1 comprise concepts that evaluate collected user information (such as user profiles and user characteristics), evaluate the information according to rules, and based on the evaluations, then make decisions for selecting and sending advertisements—and these are mental processes. We also agree with the Examiner that the claim 1 limitations include steps associated with advertising activities, a method of organizing human activity. Methods of organizing human activity, and more specifically, advertising activities, are abstract ideas. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). Because representative claim 1 recites mental processes and methods of organizing human activity, we find no error with the Examiner’s findings. Appellant argues that the Examiner’s characterization of an abstract idea describes the claim at too high a level. App. Br. 13–14. As such, Appeal 2018-006422 Application 12/419,958 8 Appellant argues that the Examiner’s finding is contrary to the guidance in Enfish. Id. (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). Further, Appellant alleges that the Examiner fails to identify the actual idea itself and therefore is not in conformance with the Administrative Procedure Act. Reply Brief, hereafter “Reply Br.,” 3, filed June 6, 2018. We do not find this argument to be persuasive because the Examiner’s rejection considers the steps of the claims, presents an accurate characterization of them, and then identifies the related categories of abstract ideas. Appellant also argues that the claim language is tied to a computing environment and, more specifically, to a social networking system, so the claimed invention cannot be performed in a human mind or by a human using a pencil and paper. App. Br. 16. We disagree. As discussed, under representative claim 1, collected social network user information (such as user profiles and user characteristics) is evaluated according to rules, and based on the evaluations, decisions are made for selecting and sending advertisements. This is an example of concepts performed in the human mind as mental processes because the steps of receiving, analyzing, displaying, and transmitting data mimic human thought processes of observation, evaluation, judgment, and opinion, perhaps with paper and pencil. See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093– 94 (Fed. Cir. 2016). Steps that may be performed in the mind, even if recited as being performed on a computer, are mental processes. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (noting, in holding that the claim recites an abstract idea, that “with the exception of generic computer-implemented steps, there is nothing Appeal 2018-006422 Application 12/419,958 9 in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper”); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016). Appellant further argues that under Free Stream Media, a district court found that “the concept of targeting content, including advertising, was not an abstract idea.” App. Br. 14 (citing Free Stream Media Corp. v. Alphonso Inc., 3-17-cv-02107 (N.D. Cal. January 12, 2018)). We disagree with Appellant’s characterization of the cited decision. Although the decision states that the invention “involves” targeting content, including advertising, the decision explains that the claims were not subject to the judicial exception because they were “directed at specific techniques for connecting the content on a television and a mobile device through purported technological improvements.” Id., slip op. at 1, 7. Accordingly, we do not find Appellant’s arguments persuasive. The next issue under the second prong of step 2A is whether additional elements in representative claim 1 integrate the judicial exception into a practical application, such as elements reflecting an improvement in the functioning of a computer or an improvement to other technology or technical field.9 The Examiner finds that the claims do not recite “an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.” Final Act. 4. The Examiner finds that the limitations in ordered combination add 9 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). Appeal 2018-006422 Application 12/419,958 10 nothing beyond considering the limitations individually. Id. The Examiner further finds that the claims do not improve computer functioning and provide only conventional computer implementation. Id. Appellant argues that the claims are not directed to a judicial exception because they are to an improvement in a social networking system, which is a computer-related technology, and are patent eligible under McRO. Appeal Br. 8–9 (citing McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Appellant refers to the Specification, arguing that the Specification sets forth the problem of users not populating profiles to include all of their interests and personal information, and then describing an embodiment representing a solution to the problem. Id. at 9 (citing Spec. ¶¶ 3–4). In McRO, the claims “focused on a specific asserted improvement in computer animation,” which is a technological improvement. McRO, 837 F.3d at 1314. But the Specification here discloses that the invention relates only “generally to social networking,” but, more specifically, the invention is directed to targeting advertising. Spec. ¶ 1, see also id. ¶¶ 4–8. As discussed above, the steps of representative claim 1 are to the evaluation of data collected in a social network site and, from the data evaluation, making determinations for targeting advertising, which is not an improvement to computers or technology. We are in agreement with the Examiner that the claim limitations, either individually or collectively, do not include an improvement to computers or technology. Thus, we find no reversible error with the Examiner’s determination that representative claim 1 is directed to an abstract idea. Turning to the second step of the Alice inquiry, we now look to whether representative claim 1 contains any inventive concept or adds Appeal 2018-006422 Application 12/419,958 11 anything significantly more to transform the abstract concept into a patent- eligible application. Alice, 573 U.S. at 216. Appellant argues that the steps of the claims, and particularly the use of main and secondary characteristics to improve the social networking system, are non-conventional and non-routine. App. Br. 18–20. In particular, Appellant asserts that under the claims, “the social networking system can more accurately infer a user’s interests and subsequently can present an advertisement to the user according to the inferred user interest.” Id. at 20. Appellant further asserts that the ordered combination of limitations is not routine or conventional because it enables improvements using the main characteristic and secondary characteristic. Id. at 21. Appellant contends that the order recited in the claimed invention is important because if the user profile of the viewing user has the main characteristic, the system can directly decide that the viewing user has a particular interest, and provide ads to those who have explicitly expressed certain interests, and otherwise going to secondary considerations provides an ad to a user based on an inferred interest. Id. at 21–22 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Thus, Appellant alleges improvements to the social networking system. Id. Although Appellant alleges an improvement in a social networking system, the consideration of the main characteristic and secondary characteristic, even in a particular order, is used for advertising, which as discussed above, is a method of organizing human activity, an abstract idea. The Federal Circuit has held that, after determining that the claim is directed to an ineligible concept, we assess “whether the claim limitations, other than Appeal 2018-006422 Application 12/419,958 12 the invention’s use of the ineligible concept to which it was directed, were well-understood, routine, and conventional.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (emphasis added). Beyond the abstract ideas of the representative claim, the Examiner finds that data gathering and transmission is performed by a generic computer performing generic computer functions that are well-known, routine and conventional practices. Final Act. 4 (citing Spec. ¶¶ 59–60). We agree that these are well-known practices that do not add significantly more to transform the abstract concept into a patent-eligible application. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011); CyberSource, 654 F.3d at 1370. (Mere data-gathering steps “cannot make an otherwise nonstatutory claim statutory.”). Appellant does not assert that there is any unconventional use of a computer, and the use of generic computer components performing generic steps to implement an abstract idea has repeatedly been found to not make an abstract idea patent eligible. See Alice, 573 U.S. at 217–218 (Instructing one to “apply” an abstract idea and reciting no more than generic computer elements performing generic computer tasks does not make an abstract idea patent eligible.). Accordingly, we are not persuaded of error in the Examiner's conclusion that representative claim 1 is directed to patent-ineligible subject matter. 35 U.S.C. § 103(a) Appellant alleges that the prior art relied upon by the Examiner does not teach or suggest some of the limitations of independent claims 1, 22, and 35, and Appellant presents these arguments using claim 1 as representative. Appeal Br. 23–27. We will address the issues in a similar manner. Appeal 2018-006422 Application 12/419,958 13 Appellant argues that the cited references fail to teach “receiving . . . a plurality of ads each associated with a targeting criteria that defines a main characteristic targeted at a user of the social network system and a secondary characteristic targeted at one or more users of the social networking system to whom the user is connected if a user profile of the user does not include information for the main characteristic.” Id. at 23. More specifically, Appellant argues that Parekh fails to teach “advertisements that are each associated with a targeting criteria.” Id. Appellant then contends that “[e]ven if Parekh did disclose targeting criteria . . . Parekh does not disclose that a social networking system receives the targeting criteria. Furthermore, [it] does not disclose that the targeting criteria defines a main characteristic and a secondary characteristic that are different from one another and are targeted to a user or other users that are connected to the user.” Id. Appellant alleges that the Examiner relies on categories of advertisements in Parekh for the teaching of targeting criteria, however, categories of documents differ from targeted criteria. Id. at 23–24. We do not find these arguments persuasive. Although Appellant argues that Parekh does not disclose that a social networking system receives targeting criteria, this is not a limitation of claim 1—rather the claim recites that “ads [] associated with a targeting criteria” are received. Further, Parekh discloses that categories of ads are associated with targeting criteria. Parekh ¶ 34. On the issue of alleged lack of teaching of “a main characteristic” of a user and “a secondary characteristic” of user friends, Appellant argues that the Examiner relies on Parekh’s disclosures on user behaviors, but behaviors are not characteristics. App. Br. 25. We do not agree with Appellant on this issue because the Specification discloses that “behavioral characteristics” Appeal 2018-006422 Application 12/419,958 14 may be targeting criteria (Spec. ¶¶ 54, 56). In a similar vein, Appellant alleges that the Examiner inconsistently maps the claim elements, and one of skill would not map “both a score (e.g., consumer score and friend score) and behavior (e.g., user behavior or social network behavior) to a particular characteristic (e.g., main characteristic or secondary characteristic).” Reply Br. 9. As discussed, however, user behaviors may be “characteristics” and Parekh’s consumer score is based on behaviors. See Final Act. 6 (citing Parekh ¶ 26). Appellant additionally asserts that Parekh does not disclose the claim 1 limitation “responsive to determining that the user profile of the viewing user does not include information for determining whether the viewing user has the main characteristic” and “accessing, by the processor, user profiles of one or more other users.” App. Br. 26. Appellant argues that Parekh instead discloses “accessing information of the viewing user and accessing information of a friend as two separate, independent processes.” Id. As the Examiner finds, however, Parekh discloses that the targeting system focuses on users “with insufficient behavioral information” (Parekh ¶ 24), and a classifier “predicts when to trust the consumer’s score and when to defer to the social network model” (id. ¶ 43). See Final Act. 6; Ans. 7. Accordingly, we do not find Appellant’s arguments on this issue to be persuasive because Parekh teaches that based on deficiencies in user information, the system defers to other social network user information. Accordingly, after considering Appellant’s contentions and the evidence presented in this Appeal, we are not persuaded that Appellant identifies reversible error, and we, therefore, sustain the § 103 rejection for representative claim 1. Appellant does not present arguments on any of the Appeal 2018-006422 Application 12/419,958 15 other claims, and we therefore sustain the § 103 rejections for the other claims. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 2, 7–9, 12– 20, 22–25, 35–37 101 Eligibility 1, 2, 7–9, 12–20, 22– 25, 35–37 1, 2, 7–9, 12, 22–25, 35–37 103 Parekh, Craig, Partovi 1, 2, 7–9, 12, 22–25, 35–37 13, 15–18 103 Parekh, Craig, Partovi, Winner, Shahshahani 13, 15–18 14, 19 103 Parekh, Craig, Partovi, Rohan, Official Notice 14, 19 20 103 Parekh, Craig, Partovi, Tomlin 20 Overall Outcome 1, 2, 7–9, 12–20, 22– 25, 35–37 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 Copy with citationCopy as parenthetical citation