Ex Parte Bruich et al

Patent Trial and Appeal Board

May 29, 2018

13713459 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131713,459 12/13/2012
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
05/31/2018
FIRST NAMED INVENTOR
Sean Michael Bruich
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.
26295-20812/US 1034
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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 SEAN MICHAEL BRUICH and FREDERICK ROSS LEACH
Appeal2016-006500
Application 13/713,459 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and NINA L.
MEDLOCK, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-3, 8, 10-12, 14, 15, and 21-25. We have
jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant is the Applicant, Facebook, Inc., which, according to the Appeal
Brief, is the real party in interest. Appeal Br. 1.
Appeal 2016-006500
Application 13/713,459
THE INVENTION
Appellant claims a computer-implemented method for generating
metrics for one or more advertisements based on ownership of client
devices. Spec. 4.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method comprising:
receiving communications from one or more client
devices, each communication including user information
identifying a user of a social networking system and information
describing one or more characteristics of a client device;
for each received communication,
determining a type of the client device based on the
information describing one or more characteristics of the client
device,
determining a frequency with which the user identified by
the user information accesses the social networking system
through the client device, and
determining that the user identified by the user
information is the owner of the client device when the frequency
is above a threshold;
selecting a particular type of client device that is
determined to be owned by at least a subset of the users identified
by the received communications;
identifying one or more exposures of the subset of the
users to an advertisement presented in the social networking
system; and
generating, using a computing device, metrics for the
advertisement based on the one or more exposures, the metrics
indicating an effectiveness of the advertisement with respect to
owners of the particular type of client device.
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THE REJECTIONS
The following rejections are before us for review.
Claims 1-3, 8, 10-12, 14--15, and 21-25 are rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception (i.e., a law of nature, a natural
phenomenon, or an abstract idea) without significantly more.
Claims 1-3, 8, 10-12, 14, and 21-25 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Nath et al. (US 2011/0258303
Al; publ. Oct. 20, 2011) ("Nath"), in view of Tom Demers, Google
AdWords Quick Wins: Two Reports that Could Save You Thousands,
Internet Marketing Blog, 1---6 (Jan. 4, 2012) (retrieved from
httg://www.wordstream.com/blog/ws/2012/0l/04/adwords-g_uick-wins)
(last visited Oct. 24, 2014) ("Tom"), in view of Turpin et al. (US
2008/0189169 Al; publ. Aug. 7, 2008) ("Turpin"), in further view ofToebes
et al. (US 2013/0147602 Al; publ. June 13, 2013) ("Toebes").
Claim 15 is rejected underpre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Nath in view of Tom, in view of Toebes, in further view
of Official Notice.
ANALYSIS
35 U.S.C. § 103(a) REJECTION
Claims 1, 11, and 21 recite, in pertinent part, the steps of,
determining a frequency with which the user identified by
the user information accesses the social networking system
through the client device, and
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determining that the user identified by the user
information is the owner of the client device when the frequency
is above a threshold.
(Emphasis added).
The Examiner found that this limitation is disclosed in paragraph 3 of
Toebes citing,
the user of a mobile phone is often presumed to be the owner of
the account associated with the mobile phone because mobile
phones are usually not shared. Based on this presumption, there
is generally a single set of user preferences associated with a
mobile phone and any services or applications accessed by the
phone. In other instances, e.g., on a shared system or device, user
identity can be determined based on the user entering login
credentials . . . . Therefore, Toebes does in fact teach
"determining a frequency with which the user identified by the
user information accesses the social networking system through
the client device" or "determining that the user identified by the
user information is the owner of the client device when the
frequency is above a threshold[."]
(Answer 7-8).
Appellant argues:
But these cited portions are silent regarding the use of any
"frequency," let alone the claimed "determining a frequency with
which the user identified by the user information accesses the
social networking system through the client device" and
"determining that the user identified by the user information is
the owner of the client device when the frequency is above a
threshold," as recited in the claims. Toebes relies on biometric
data to identify a user holding a device, and does not used a
"frequency ... above a threshold" to determine "that the user
... is the owner of the client device," as is claimed.
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Application 13/713,459
(Appeal Br. 14).
We agree with Appellant. First, we do not agree with the Examiner's
claim construction that the independent claims offer an alternative condition.
Each of the independent claims recites, "determining a frequency with which
the user identified by the user information accesses the social networking
system through the client device, and determining that the user identified by
the user information is the owner of the client device when the frequency is
above a threshold" (emphasis added). As is clear from the claim language,
these claims require the word "and" and not the alternative "or," as the
Examiner proposes. Thus, the claim limitation of "determining that the user
identified by the user information is the owner of the client device when the
frequency is above a threshold" is a positive limitation. We fail to see where
the Examiner has mapped this limitation as a positive limitation to the prior
art. Even looking to paragraph 3, which the Examiner indicates as
disclosing this limitation (Answer 7-8), we find nothing in paragraph 3 of
Toebes which discloses a "threshold." At best, Toebes in paragraph 3 only
discloses a credential based preference application based on identifying a
user device, e.g., "[b ]ased on the credentials entered, a set of user
preferences for the user associated with those credentials can be loaded and
the user's identity can also be made available to applications on the
computer."
Thus, we will not sustain the rejection of independent claims 1, 11,
and 21. Because claims 2, 3, 8, 10, 12, 14, 15, 22, 23, 24, and 25 depend
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from one of claims 1, 11, and 21 we, likewise cannot sustain the rejections
of those claims.
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-3, 8, 10-12, 14--15, and 21-
25 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of those
patent-ineligible concepts .... If so, we then ask, "[ w ]hat else
is there in the claims before us?" ... To answer that question, .
. . consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. . . . [The Court] described step two of this
analysis as a search for an "'inventive concept"'-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case's claims themselves and the
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Specification provide enough information to inform one as to what they are
directed to.
The steps in claim 1 result in: generating, using a computing device,
metrics for the advertisement based on the one or more exposures, the
metrics indicating an effectiveness of the advertisement with respect to
owners of the particular type of client device.
The Specification further states:
Advertisers are frequently interested in measuring the
effectiveness of their advertisements on different groups of
people. For example, an advertiser may be interested in
measuring the effectiveness of its advertisements presented to
owners of various client devices. To generate metrics describing
the effectiveness of advertising, associations between exposure
to advertisements and ownership of the client devices are needed.
Determining device ownership and advertisement associations is
generally a manual process that is often subject to reporting
inaccuracies. Accordingly, conventionally generating
advertising metrics based on client device ownership is a
laborious task producing imprecise results.
Spec. i-f 3. The Specification describes,
[i]n one embodiment, the data is obtained based on answers
to polls provided to users identified as client device owners 102.
For example, a poll includes questions asking for impressions
about the advertisements to which a client device user was
exposed or asking for impressions about a brand, product, or
service associated with the advertisements, or other suitable
information.
Spec. i-f 4 7. Thus, all this evidence shows that claim 1 is directed to
determining effectiveness of an advertisement with respect to owners of the
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particular type of client device. It follows from prior Supreme Court cases,
and Gottschalk v. Benson, 409 U.S. 63 (1972) in particular, that the claims at
issue here are directed to an abstract idea. Determining the effectiveness of
an advertisement with respect to owners of the particular type of client
device is a fundamental economic practice of a transaction because the more
successful an advertisement is, the higher probability the sale will occur.
The patent-ineligible end of the 35 U.S.C. § 101 spectrum includes
fundamental economic practices. See Alice Corp. Pty. Ltd., 134 S. Ct.
at 2355-57. Also, we find the steps of:
determining a type of the client device based on the
information describing one or more characteristics of the client
device;
determining a frequency with which the user identified by
the user information accesses the social networking system
through the client device, ...
determining that the user identified by the user
information is the owner of the client device when the frequency
is above a threshold;
selecting a particular type of client device that is
determined to be owned by at least a subset of the users identified
by the received communications; [and]
identifying one or more exposures of the subset of the
users to an advertisement presented in the social networking
system ...
constitute physical acts by a human and/or "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."
Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
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2016). See also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (claims directed to certain arrangements involving
contractual relations are directed to abstract ideas). Thus, determining the
effectiveness of an advertisement with respect to owners of the particular
type of client device is an "abstract idea" beyond the scope of§ 101.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice Corp. Pty. Ltd.
and the concept of determining effectiveness of an advertisement with
respect to owners of the particular type of client device, at issue here. Both
are squarely within the realm of "abstract ideas" as the Court has used that
term. That the claims do not preempt all forms of the abstraction or may be
limited to determining effectiveness of an advertisement with respect to
owners of the particular type of client device, does not make them any less
abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61
(Fed. Cir. 2015).
Claims 1, 11 and 21, unlike the claims found non-abstract in prior
cases, use generic computer technology to perform data reception,
transmission, and linkage and do not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract
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because they "focused on a specific asserted improvement in computer
animation").
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of "additional feature[ e ]" that provides any
"practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data, compute a result, and return the result to a user
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amounts to electronic data query and retrieval-some of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant's method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-access is
equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission); Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is, therefore,
ordinary and conventional.
Viewed as a whole, Appellant's claims simply recite the concept of
determining effectiveness of an advertisement with respect to owners of the
particular type of client device. The claims do not, for example, purport to
improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
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at issue amount to nothing significantly more than instructions to determine
the effectiveness of an advertisement with respect to owners of the particular
type of client device. Under our precedents, that is not enough to transform
an abstract idea into a patent-eligible invention. See Alice Corp. Pty. Ltd.,
134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long "warn[ ed] ... against" interpreting § 101 "in ways that
make patent eligibility 'depend simply on the draftsman's art."'
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360 (alterations in original) (citation
omitted).
We have reviewed all the arguments (Appeal Br. 4--11) Appellant has
submitted concerning the patent eligibility of the claims before us which
stand rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellant argues:
First, the Office Action errs by failing to explain why the Office
Action's proposed abstract idea is considered an exception and
does not does not provide any explanation of how 'generating
advertising metrics based on device type' is a or a fundamental
economic practice ....
A proper identification of a judicial exception must be similar to
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at least one concept previously identified by the courts. However,
the Office Action has not identified how the present claims are
similar to fundamental economic practices previously identified
by the courts and set forth in the December Guidance and July
Update.
Instead, the Office Action's statement itself is the only
explanation provided of how the proposed abstract idea is a
fundamental economic practice. This conclusory analysis fails
to properly establish the reasoning for the rejection and fails to
meet the burden under 35 U.S.C. § 132 to provide notice and
reasons for the rejection.
(Appeal Br. 6).
We disagree with Appellant. All that is required of the Office to meet
its prima facie burden of production is that the examiner "notify the
applicant," "stating the reasons for such rejection," "together with such
information and references as may be useful in judging the propriety of
continuing prosecution of his application." 35 U.S.C. § 132. See also In re
Jung, 637 F.3d 1356 at 1363(Fed. Cir. 2011). The Examiner has done this
here. See Final Act. 3, 4.
Also, Appellant's argument is not persuasive at least because there is
no absolute requirement that an examiner provide evidentiary support in
every case before a conclusion can be made that a claim is directed to an
abstract idea. 2 Although evidence may be helpful, e.g., where facts are in
2 See, e.g., MPEP § 2106.07(a)(III) (2018) ("The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law .... Thus, the court does not require 'evidence' that a
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dispute, it is not always needed. See Mortgage Grader, Inc. v. First Choice
Loan Servs. Inc., 811 F.3d 1314, 1325-26 (Fed. Cir. 2016) ("[I]t is also
possible, as numerous cases have recognized, that a § 101 analysis may
sometimes be undertaken without resolving fact issues"). Appellant's bare
assertion here that evidence is needed, without any supporting reasoning as
to why, is insufficient to require the Examiner to provide evidentiary
support.
Appellant also argues,
The claims of DDR Holdings [and] the claims of this
application are similar in that they both recite methods for
detecting various forms of data and data objects, processing the
data and data objects, and providing a product of the processing
to computer users. As explained above, the invention addresses
problems with advertising that are specific to the online
environment, and it addresses them with a solution that only
makes sense in this environment. Consequently, the claims of
this application "overcome a problem specifically arising in the
realm of computer networks."
(Appeal Br. 9-10).
We disagree with Appellant. In light of the breadth of the claim, the
Appellant's argument is not persuasive as to error in the rejection because
first, for example, claim 1 does not even require an internet connection as
was present in DDR. Second, in DDR, the claims at issue involved, inter
claimed concept is a judicial exception, and generally decides the legal
conclusion of eligibility without resolving any factual issues ... "(citations
omitted).)
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alia, "web pages displays [with] at least one active link associated with a
commerce object associated with a buying opportunity of a selected one of a
plurality of merchants" (claim 1 of US 7,818,399 Bl). There is no such
claim element with this degree of detail here before us. All that is required
by the claims before us are generically recited "client devices" and
"computing devices." The Specification supports the view that such devices
are conventional. See, e.g., Spec. i-fi-14--8, 19, 21.
The question is whether the claims as a whole "focus on a specific
means or method that improves the relevant technology" or are "directed to
a result or effect that itself is the abstract idea and merely invoke generic
processes and machinery." McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, claim 1, as a whole, is
focused on determining "an effectiveness of the advertisement with respect
to owners of the particular type of client device."
Appellants argue,
Reply Br. 3.
On page 4, the Answer further states that 'The
concept of generating advertising metrics based on
device type is well-known and conventional in the
field of advertising and therefore the abstract idea
is deemed fundamental in this field.' The Answer
does not provide any evidence or even an
explanation of why 'generating advertising metrics
based on device type' is fundamental or why it is
foundational or basic, and therefore fails to
demonstrate that it qualifies as a fundamental
economic practice.
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Again, as stated above, there is no absolute requirement that an
examiner provide evidentiary support in every case before a conclusion can
be made that a claim is directed to an abstract idea. 3
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-3, 8,
10-12, 14, 15, and 21-25 under 35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1-3, 8, 10-12,
14, 15, and 21-25 under 35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject claims 1-3, 8, 10-12, 14, 15,
and 21-25 is affirmed.
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)(l )(iv).
AFFIRMED.
3 See, supra note 2.
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