Ex Parte Amit et al

Patent Trials and Appeals Board

Jun 25, 2019

13488294 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/488,294 06/04/2012
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
06/27/2019
FIRST NAMED INVENTOR
Alon Amit
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.
26295-20048/US 8444
EXAMINER
EZEWOKO, MICHAEL I
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
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 ALON AMIT, YARON GREIF, and JOHN HEGEMAN
Appeal2018-004270
Application 13/488,294 1
Technology Center 3600
Before KEVIN F. TURNER, MATTHEW J. McNEILL,
and STEVEN M. AMUNDSON, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1 and 4-20, which are all the claims pending in this
application. Claims 2 and 3 are canceled. App. Br. 18. We have
jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellants, the real party in interest is Facebook, Inc. App.
Br. 2.
Appeal2018-004270
Application 13/488,294
STATEMENT OF THE CASE
Introduction
Appellants' application relates to providing social networking content
to a user along with advertisements. Spec. ,r 3. Claim 1 illustrates the
appealed subject matter and reads as follows:
1. A method comprising:
receiving a plurality of advertising requests, the
advertising requests including a bid and advertising content;
identifying an opportunity to provide an advertisement
impression to a viewing user of an online system on a client
device of the viewing user;
for the viewing user, identifying a display containing an
ad space, wherein the ad space is an area of the display having a
reference edge and containing a plurality of advertising slots
arranged along a dimension in the display, the dimension being
perpendicular to the reference edge;
selecting a plurality of candidate advertisements eligible
for display to the viewing user;
determining a plurality of candidate placement
configurations, each placement configuration assigning a
candidate advertisement to each of the plurality of advertising
slots in the display;
computing a score for each of the candidate placement
configurations by:
determining, for each candidate advertisement, a
value of the candidate advertisement based on the bid for
the candidate advertisement,
sending, to the user device, each candidate
advertisement,
receiving, from the user device, rendered sizes, in
the dimension, for each candidate advertisement,
determining, for each candidate advertisement, an
offset of the candidate advertisement in the dimension
from the reference edge based on the candidate placement
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configuration, wherein the offset is a function of the
rendered sizes of candidate advertisements assigned to
advertising slots located between the reference edge and
the assigned slot of the candidate advertisement,
discounting the determined value of each candidate
advertisement based on the determined offset of the
candidate advertisement, wherein an increase in the size of
the determined offset of the candidate advertisement
results in an increased discounting of the candidate
advertisement, and
aggregating the discounted values of the plurality of
candidate advertisements to obtain the score for the
candidate placement configuration;
selecting a candidate placement configuration from the
plurality of placement configurations based on the computed
scores; and
sending, to the client device, the display for viewing by the
viewing user, the display comprising a set of candidate
advertisements assigned to the slots according to the selected
placement configuration.
The Examiner's Rejections2
Claims 1 and 4-20 3 stand rejected under 35 U.S.C. § 112 ,r 1 as failing
to comply with the written-description requirement. Final Act. 5-10.
2 In the August 25, 2016 Final Rejection, the Examiner rejected claims 1 and
4-20 under 35 U.S.C. § 101. Final Act. 2-5. However, the Examiner
indicated this rejection "stands to be withdrawn" in an April 13, 2017 Pre-
Brief Appeal Conference Decision. In the Answer, the Examiner indicated
this rejection is maintained, but we treat this as a typographical error. See
Ans. 4. Thus, the rejection of claims 1 and 4-20 under 35 U.S.C. § 101 is
not presently before us.
3 The heading of the rejection indicated it applies to claims 1-12, 15-16, and
19-22. See Final Act. 5. However, the body of the rejection analyzes
claims 1 and 4-20. See id. at 5-10. We treat the incorrect claim listing in
the heading as a harmless typographical error.
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Application 13/488,294
ANALYSIS
Identifying an opportunity
The Examiner finds the Specification fails to provide adequate
written-description support for the limitation "identifying an opportunity to
provide an advertisement impression to a viewing user," as recited in
claim 1. In particular, the Examiner finds "identifying" corresponds to a
search and selection process and the Specification provides no explanation
as to the process, diagram, or algorithm to perform this step. Ans. 6.
Appellants argue the Specification provides sufficient support for this
limitation in paragraph 26. See App. Br. 11. We agree with Appellants.
The Examiner reasons that the Specification provides no explanation
as to how to perform this step. See Ans. 6. However, this is not the test for
the written-description requirement. The fundamental factual inquiry is
whether the specification conveys with reasonable clarity to those skilled in
the art that, as of the filing date sought, applicant was in possession of the
invention as now claimed. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1564. "[T]he written description requirement is satisfied by the
patentee's disclosure of 'such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set forth the claimed invention."'
Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969 (Fed. Cir. 2002)
(quoting Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997)).
Paragraph 26 of the Specification discloses a system that identifies
available advertising slots to accompany social networking content. Spec.
,r 26. In other words, the system identifies available slots that allow an
opportunity to provide an advertisement impression to the user of a social
network. The Examiner has not adequately:
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present[ ed] evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the
invention defined by the claims. . . . If . . . the specification
contains a description of the claimed invention, albeit not in ipsis
verb is (in the identical words), then the examiner ... , in order
to meet the burden of proof, must provide reasons why one of
ordinary skill in the art would not consider the description
sufficient.
In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996) (citing In re Wertheim,
541 F.2d 257,263 (CCPA 1976)). Thus, we agree with Appellants that the
explanation in the Specification is sufficient to demonstrate to an ordinarily
skilled artisan that Appellants were in possession of the claimed subject
matter.
For these reasons, Appellants have persuaded us the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 112 ,r 1 for failing to provide written-
description support for the "identifying an opportunity" limitation.
Identifying a display
The Examiner finds the Specification fails to provide adequate
written-description support for the limitation "identifying a display
containing an ad space, wherein the ad space is an area of the display having
a reference edge and containing a plurality of advertising slots arranged
along a dimension in the display, the dimension being perpendicular to the
reference edge," as recited in claim 1. In particular, the Examiner finds the
Specification discloses a discount curve "associated with said limitation,"
but does not provide adequate description for how the discount curve may be
created. See Ans. 6.
Appellants argue paragraph 1 7 demonstrates that Appellants were in
possession of the claimed subject matter. See App. Br. 11-12. We agree
with Appellants. As an initial matter, the Examiner's findings regarding a
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"discount curve" do not relate to the language of claim 1, which does not
recite a "discount curve." Moreover, as argued by Appellants, paragraph 17
discloses an ad space having a top (the claimed "reference edge") with ads
arranged vertically relative to the top of the ad space ( a "dimension" that is
"perpendicular to the reference edge"). See App. Br. 12 ( citing Spec. ,r 170).
This is further supported by Figures 2A-2C, which are cited in paragraph
1 7, and which display ads arranged vertically relative to the top of the social
networking content. See Spec. ,r 17 ( citing Figs. 2A-2C). As with the
"identifying an opportunity" limitation, the Examiner has failed to
adequately explain why an ordinarily skilled artisan would not understand
Appellants to be in possession of the claimed invention in light of these
disclosures.
For these reasons, Appellants have persuaded us the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 112 ,r 1 for failing to provide written-
description support for the "identifying a display" limitation.
Determining
The Examiner finds the Specification fails to provide adequate
written-description support for the limitation "determining, for each
candidate advertisement, an offset of the candidate advertisement in the
dimension from the reference position based on the candidate placement
configuration and the size, in the dimension, of the other candidate
advertisements," as recited in claim 1. In particular, the Examiner finds the
Specification fails to disclose adequate support for the "determining"
limitation for the same reasons as the "identifying a display" limitation
discussed above. See Ans. 6-7.
Appellants argue the Specification discloses adequate support for the
limitation. See App. Br. 12-13 (citing Figs. 2A-2C, Spec. ,r,r 16, 18). We
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agree with Appellants for the same reasons discussed above with respect to
the "identifying a display" limitation. For these reasons, Appellants have
persuaded us the Examiner erred in rejecting claim 1 under 35 U.S.C. § 112
,r 1 for failing to provide written-description support for the "determining"
limitation.
For these reasons, Appellants have persuaded us the Examiner erred
rejecting claim 1 for failing to comply with the written-description
requirement. We, therefore, do not sustain the Examiner's written-
description rejection of claim 1. We also do not sustain the written-
description rejection of claims 4-10, 19, and 20, which depend from claim 1.
For each
The Examiner finds the Specification fails to provide adequate
written-description support for the limitation "for each of a plurality of
candidate placements, where a placement, ... based on the bids of the
advertisements in each slot and a relative displacement from a reference
position along given dimension," as recited in claim 11. In particular, the
Examiner finds the Specification fails to disclose adequate support for the
"for each" limitation for the same reasons as the "identifying a display"
limitation discussed above. See Ans. 7.
Appellants argue the Specification discloses adequate support for the
limitation. See App. Br. 13-14 (citing Spec. ,r 27). We agree with
Appellants for the same reasons discussed above with respect to the
"identifying a display" limitation.
For these reasons, Appellants have persuaded us the Examiner erred
in rejecting claim 11 under 35 U.S.C. § 112 ,r 1 for failing to comply with
the written-description requirement. We, therefore, do not sustain the
Examiner's written-description rejection of claim 11. We also do not sustain
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the written-description rejection of claims 12-17, which depend from
claim 11.
A step for optimizing revenue
The Examiner finds the Specification fails to provide adequate
written-description support for the limitation "a step for optimizing revenue
from a placement configuration of a portion of the advertising content ...
based on its bid and ... a determined offset in the dimension from a
reference edge ... a rendered offset from the reference edge, in the
dimension, for each candidate advertisement ... receiving from the user a
rendered offset from the reference edge, in the dimension, for each candidate
advertisement," as recited in claim 18. In particular, the Examiner finds the
Specification fails to disclose adequate support for the "a step for optimizing
revenue" limitation for the same reasons as the "identifying a display"
limitation discussed above. See Ans. 7-8.
Appellants argue the Specification discloses adequate support for the
limitation. See App. Br. 14-15 ( citing Spec. ,-r,-r 18, 27). In particular,
Appellants argue the Specification discloses the expected value of a
particular ad placement may be calculated as the sum of the contributions of
each selected ad. App. Br. 14 (citing Spec. ,-r 27). The contribution of each
ad may be computed based on the bid value of the ad discounted based on
the displacement of the ad relative to the top of the ad space. Id. ( citing
Spec. ,-r 27). Appellants argue the Specification further discloses the user
device returns a rendered offset to the system, which is used in the above
calculations. See id. ( citing Spec. ,-r 18).
Appellants have persuaded us of Examiner error. As Appellants
argue, the Specification demonstrates that Appellants were in possession of
the claimed subject matter. The Examiner has failed to adequately explain
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any deficiency in the disclosure. See Ans. 7-8. For these reasons,
Appellants have persuaded us the Examiner erred in rejecting claim 18 under
35 U.S.C. § 112 ,r 1 for failing to provide written-description support for the
"a step for optimizing revenue" limitation.
Receiving
The Examiner finds the Specification fails to provide adequate
written-description support for the limitation "receiving ... a rendered offset
from the reference edge, in the dimension, for each candidate
advertisement," as recited in claim 18. In particular, the Examiner finds
there is no adequate written description with regard to adequate diagrams,
algorithms, or equations for the disputed limitation. Ans. 8.
Appellants argue the Specification discloses the system provides an
advertisement to a user device, and the user device renders the advertisement
and returns the offset of height of the advertisement to the system. App. Br.
15 ( citing Spec. ,r 18).
Appellants have persuaded us of Examiner error. As argued by
Appellants, the Specification discloses the system receiving from the user
device the offset of the height of the advertisement (the "rendered offset
from the reference edge," as claimed). The Examiner has failed to
adequately explain why an ordinarily skilled artisan would not understand
Appellants to be in possession of the claimed invention in light of this
disclosure.
For these reasons, Appellants have persuaded us the Examiner erred
in rejecting claim 18 under 35 U.S.C. § 112 ,r 1 for failing to provide
written-description support for the "receiving" limitation. For the above
reasons, Appellants have persuaded us of Examiner error with respect to the
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written-description rejection of claim 18. We, therefore, do not sustain the
Examiner's written-description rejection of claim 18.
DECISION
We reverse the Examiner's decision rejecting claims 1 and 4-20 under
35 U.S.C. § 112 if 1.
REVERSED
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