Ex Parte Fu et al

Patent Trial and Appeal Board

Nov 21, 2018

13597103 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/597, 103 08/28/2012
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
11/26/2018
FIRST NAMED INVENTOR
Wenjie Fu
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.
26295-20241 5589
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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):
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 WENJIE FU and ALON AMIT 1
Appeal2017-000102
Application 13/597, 103
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MATTHEWS. MEYERS, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 1-15. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Appeal Brief identifies the Real Party in Interest as Face book, Inc.
App. Br. 2.
Appeal2017-000102
Application 13/597,103
Claim 1 is illustrative:
1. A method comprising:
storing an index associating objects maintained by a
social networking system with links to content external to the
social networking system, the index organized based on
components of the links to content external to the social
networking system;
receiving an advertisement including an advertisement
link to content external to the social networking system and
targeting criteria;
parsing the advertisement link into a plurality of
components;
retrieving one or more candidate objects from the index,
each candidate object having at least one component of a link to
content external to the social networking system matching a
component of the advertisement link;
selecting, by a processor, an object from the candidate
objects based on at least one of: characteristics of the can di
date objects and characteristics of the links to external content
associated with the candidate objects;
associating the selected object with the advertisement;
identifying a user of the social networking system to be
provided the advertisement, the identified user based at least in
part on the targeting criteria;
identifying a social context for the advertisement based
on the selected object and interactions between an additional
user associated with the identified user and the selected object;
augmenting the advertisement with the identified social
context; and
providing the augmented advertisement to a user device
for presentation to the identified user.
Appellants appeal the following rejections:
1. Claims 1-15 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final
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Application 13/597,103
Act. 2-3.
2. Claims 1, 9, 12, 13, and 14 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Kendall et al. (US 2009/0182589
Al; published July 16, 2009) in view of Galai et al. (US
2005/0267872 Al; published Dec. 1, 2005). Final Act. 4--7.
3. Claims 2, 6, and 7 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Kendall, Galai, in further view of Vest (US
2006/0020510 Al; published Jan. 26, 2006). Final Act. 7-8.
4. Claim 3 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kendall, Galai, Vest, in further view of Ransil et al.
(US 2007/0168336 Al; published July 19, 2007). Final Act. 9.
5. Claims 4 and 5 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kendall, Galai, Vest, Ransil, and in further view of
Goeldi (US 2011/0307312 Al; published Dec. 15, 2011). Final Act.
9-11.
6. Claim 8 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Kendall, Galai, Vest, in further view of Duan et al.
(US 2011/0035345 Al; published Feb. 10, 2011). Final Act. 11-12.
7. Claims 10, 11, and 15 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Kendall, Galai, and Duan. Final Act. 12-13.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
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Application 13/597,103
not patentable. E.g., Alice Corp. Pty. v. CLS Bank Int 'l, 134 S. Ct. 2347,
2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76-77 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356
("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."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
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Application 13/597,103
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores," and a process
for manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
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).
Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
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Application 13/597,103
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( determining claims not abstract because they "focused on a specific
asserted improvement in computer animation").
Claims may amount to significantly more than any abstract idea
recited in the claims when the claims address a business challenge, such as
"retaining website visitors," where that challenge is particular to a specific
technological environment, such as the lnten1et. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). In DDR, the court
stated that "the[] patent's claims address the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of Inten1et
hyperlink protocol, would be instantly transported away from a host's
website after 'clicking' on an adveiiisement and activating a hyperlink"
DDR Holdings, 773 F.3d at 1257. This was done in the claim by serving a
composite page with content based on the link that was activated to serve the
page.
ANALYSIS
Rei ection under 3 5 US. C. § 101
The Examiner determines that the claims are directed to providing an
advertisement to a user based on information obtained about the user which
is a fundamental economic practice. Final Act. 2. The Examiner also
determines that the claims are directed to comparing new and stored
information and using rules to identify options. Ans. 5.
The Examiner finds that the elements of the claims in addition to the
abstract idea are no more than the mere instructions to implement the idea on
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a computer or the recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine and
conventional activities previously known in the pertinent industry. Final
Act. 3.
Appellants argue that the claims recite a specific process by which a
social networking system selects an object to associate with the
advertisement and that like DDR the claims address a business problem
particular to the Internet and to social networking systems. Appeal Brief 8-
9.
The Specification discloses at paragraph 3 that in the prior art, some
advertisements link to content external to the social networking system, such
as pages hosted by a website in a domain outside of the social networking
system. However, this external content may not be associated with an object
in the social networking system, preventing the social networking system
from determining social context or affinities for the external content.
Without social context or affinity for the external content, the social
networking system is unable to effectively target presentation of the external
content to social networking system users likely to be interested in the
external content.
As such, the problem the invention seeks to solve is the lack of linking
external content to objects in the social networking system. Appellants
argue that by generating and storing an index that associates objects in the
social networking system with links to content external to the social
networking system, the social networking system can better target
presentation of external content to the social networking system and
therefore the claims recite an improvement to the social networking system.
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\Vhile we agree that the claims are directed to an abstract idea because
the claims are directed to a fundamental economic process and/or to the
collection, display and analysis of data, these claims stand apart because
they do not merely recite the performance of some business practice known
from the pre-Inten1et world along with the requirement to perform it.
Instead, the claimed solution is necessarily rooted in the social networking
system in order to overcome a problem specifically arising in the realm of
the Inten1et. See DDR 773 F.3d at 1257. In particular, the claims address
the problem of associating objects maintained by a social networking system
with links to content external to the social networking system. The
Examiner has not addressed whether the claimed recitations address a
challenge particular to the Internet and thus recite significantly more than the
abstract idea. Therefore, we reverse the rejection under § l O 1 .
Reiections under 35 US.C. § 103(a)
We will not sustain this rejection because we agree with the
Appellants that Kendall does not disclose "storing an index associating
objects maintained by a social networking system with links to content
external to the social networking system" as required by claim 1.
The Examiner relies on paragraphs 28, 29, 35--43, 55, 59, 85 and 86
for teaching this subject matter. The Examiner does not point to how or
where in these paragraphs this subject matter is taught by Kendall. We
agree with the Appellants that these portions of Kendall describe the social
networking website receiving actions from members of the social
networking website not that there is an index organized based on
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components of links to external content. Kendall does teach that the social
networking website logs actions of members on third party websites ( 42) and
that there is an action logger that is capable of receiving communications
about member actions on and off of the social networking website (55), but
the Examiner has not directed our attention to a teaching in Kendall of
storing an index associating objects maintained by the social networking
system with links to content external to the social networking system.
In view of the above, we will not sustain the rejection of claim 1
under 35 U.S.C. § 103. We will not sustain this rejection as it is directed to
the remaining claims because each of the remaining claims require the
subject matter found lacking in Kendall and the Examiner relies on Kendall
for teaching this subject matter in rejecting each of the remaining claims.
DECISION
We reverse the Examiner's§ 101 and§ 103 rejections.
REVERSED
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