Ex Parte Ferber et al

Patent Trial and Appeal Board

Jan 9, 2018

13612625 (P.T.A.B. Jan. 9, 2018)

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.
13/612,625 09/12/2012 John B. Ferber 19487.15.1.5 7345
107193 7590 01/11/2018
Keller Jolley Preece/Facebook
1010 North 500 East
Suite 210
North Salt Lake, UT 84054
EXAMINER
MUNSON, PATRICIA H
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
01/11/2018 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):
docketing@kjpip.com
gj olley @ kj pip. com
tmeid @ kj pip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN B. FERBER, SCOTT FERBER, STEIN E. KRETSINGER,
ROBERT LUENBERGER, and DAVID LUENBERGER
Appeal 2016-008650
Application 13/612,6251
Technology Center 3600
Before ANTON W. FETTING, BRUCE T. WIEDER, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner’s non-
final decision to reject claims 2-59. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Facebook, Inc. Appeal Brief
filed October 26, 2015, hereinafter “Appeal Br.,” 2.
Appeal 2016-008650
Application 13/612,625
BACKGROUND
The invention relates to optimal placement of ads on Web pages.
Specification, hereinafter “Spec.,” 1:10-12. The invention is directed to the
estimation of potential ad selection probabilities, and maximizing the overall ad
placement revenue. Id. at 5:2-6, 5:11-13.
Method claim 2 and claim 28 are reproduced from pages 27 and 33,
respectively, of the Appeal Brief (Claims App.) as follows:
2. A method comprising:
identifying an advertising campaign, the advertising campaign having
an associated period of time and an associated delivery parameter;
determining, by at least one processor, a target delivery rate for the
advertisement campaign;
serving advertisements of a plurality of advertisements to one or more
marketing media, the plurality of advertisements including one or more
advertisements associated with the advertising campaign and one or more
advertisements not associated with the advertising campaign;
determining, by the at least one processor, that the target delivery rate
for the advertisement campaign has been exceeded by a predetermined
amount;
serving advertisements associated with the advertising campaign if the
predetermined amount is within a pre-set tolerance; and
serving only advertisements not associated with the advertising
campaign for a remainder of a sub-period of time if the predetermined
amount exceeds the pre-set tolerance.
28. A method comprising:
identifying an advertising campaign, the advertising campaign having
an associated period of time and an associated number of impressions or
clicks;
determining, by at least one processor, a first delivery rate for the
period of time;
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serving advertisements associated with the advertising campaign
within a pre-set tolerance of the first delivery rate during a first portion of
the period of time;
determining that the first delivery rate is exceeded by a predetermined
amount;
based on the first delivery rate being exceeded by the predetermined
amount, determining, by the at least one processor, an updated delivery
rate for a remaining portion of the period of time, the updated delivery
rate being less than the first delivery rate; and
serving advertisements associated with the advertising campaign
within the pre-set tolerance of the updated delivery rate during a second
portion of the period of time.
In a Non-Final Action, the Examiner rejects claims 2-59 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. Claims 28-34 and 39 45 are
rejected as unpatentable under 35 U.S.C. § 102(e) as anticipated by Brown.2
Claims 2-10, 12, 14-23, 25, 27, 50-54, and 59 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Merriman ’6003 and Brown. Claims 11, 24, and 55-
57 are rejected under 35 U.S.C. § 103(a) as unpatentable over Merriman ’600,
Brown, and Merriman4. Claims 37 and 48 are rejected under 35 U.S.C. § 103(a)
over Brown and Merriman. Claims 35, 36, 38, 46, 47, and 49 are rejected under 35
U.S.C. § 103(a) as unpatentable over Brown and McElfresh5. Claims 13, 26, and
58 are rejected under 35 U.S.C. § 103(a) as unpatentable over Merriman ’600,
Brown, and McElfresh. Non-Final Action, hereinafter “Non-Final Act.,” 3-25,
mailed March 17, 2015; Answer, hereinafter “Ans.,” 4-22, mailed July 13, 2016.
2US Patent 6,601,041 Bl, issued July 29, 2003 (“Brown”).
3 US Publication 2002/0099600 Al, published July 25, 2002 (“Merriman ’600”).
4 US Patent 5,948,061, issued September 7, 1999 (“Merriman”).
5 US Patent 6,907,566 Bl, issued June 14, 2005 (“McElfresh”).
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DISCUSSION
Appellants argue the rejection of claims 2-59 under § 101 on the same
issues, and present arguments using independent claims 2 and 24 as representative.
See Appeal Br. 21-25; Reply Brief, hereinafter “Reply Br.,” 11-14, filed
September 15, 2016. We will address the § 101 rejection in a similar manner.
In response to the § 102(e) rejection, Appellants argue independent claims
28 and 39 on similar issues, with additional arguments presented for the respective
dependent claims. Appeal Br. 12-17. Appellants argue issues relating to the
obviousness rejections on similar issues to those presented on the anticipation
rejection. Id. at 17-21. In light of the disposition of the issues herein, and with the
other independent claims having similar limitations, we only need to address issues
relating to claim 28 for the anticipation and obviousness rejections.
35U.S.C.§ 101
The Examiner finds that claims 2-59 are directed to non-statutory subject
matter that does not amount to significantly more than an abstract idea because the
claims are directed to receiving data, storing data, analyzing data, selecting and
presenting an advertisement. Ans. 4. The Examiner compares the claims to cases
that similarly retrieve and manipulate data, and which the courts have found to be
abstract ideas, with the Examiner therefore also finding that the claims here are
also directed to abstract ideas. Id. The Examiner additionally finds that “the
claims detail steps toward targeting advertising, targeted advertising is a
fundamental economic practice and therefore the claims disclose a patent ineligible
abstract idea.” Id. Additional claim elements are not found to transform the
claims into significantly more than an abstract idea “because there are no other
elements in the claims beyond the abstract ideas identified,” “the claims disclose
generic computer components that serve only to implement the claimed judicial
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exceptions,” and “[t]he generically recited computer elements do not add a
meaningful limitation to the abstract idea because they would be routine in any
computer implementation.” Id.
Appellants argue that the claims at issue are not directed to an abstract idea
because they do not claim a fundamental business practice and, instead, are
directed to a business challenge arising from the use of computers, referring to
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)
(“DDR”), which found that because, “[although the claims address a business
challenge ... it is a challenge particular to the Internet.” Appeal Br. 21-22; see
also Reply Br. 10-12. Appellants allege that the claims are directed to optimally
serving advertisements over various computer-based marketing mediums, such as
banners, e-mail and mobile ads, in an integrated manner and based on target
delivery rates. App. Br. 22. Appellants contend that the claims address a service-
constraint problem, that is, “preventing] a Webserver from serving an Internet
advertisement without accounting for a spike in click-thrus or impressions for the
advertisement,” and that it does so with dynamic constraints. Reply Br. 11.
Appellants contend that even if the claims are directed to an abstract idea,
they represent significantly more that patent ineligible subject matter because they
recite more than routine or conventional use of the Internet because they overcome
a problem specifically arising in the realm of computer networks. Appeal Br. 23.
It is argued that the claims maintain a smooth delivery of advertisements when
they are delivered faster than an initial target delivery rate. Id. Appellants allege
that the claims concretely solve a problem of advertising on the Internet—
“managing popular (e.g., viral) advertisements that prematurely satisfy their
campaign requirement.” Reply Br. 9. Appellants argue that this solves a problem
arising out of serving advertisements on the Internet. App. Br. 24. Appellants also
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compare the claims at issue to those in BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), alleging that the claims “do
not merely recite an abstract idea along with the requirement to perform it on the
Internet nor do they pre-empt all forms of targeted marketing on the Internet.”
Reply Br. 14. Appellants contend that the claims achieve a specific goal of
serving advertisements in a smooth manner over a time period through the
combination of the claimed steps. Id.
After considering Appellants’ arguments and the evidence presented in this
Appeal for the § 101 rejection, we are not persuaded that Appellants identify
reversible error, and we therefore sustain this rejection. We add the following for
emphasis.
To provide context, 35 U.S.C. § 101 provides that a new and useful
“process, machine, manufacture, or composition of matter” is eligible for patent
protection. The Supreme Court has made clear that the test for patent eligibility
under § 101 is not amenable to bright-line categorical rules. See Bilski v. Kappos,
130 S. Ct. 3218, 3229-30 (2010). There are, however, three limited, judicially-
created exceptions to the broad categories of patent-eligible subject matter in
§ 101: laws of nature, natural phenomena, and abstract ideas. See Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012).
In Alice Corporation Party, Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) (“Alice”), the Supreme Court reiterated the framework set forth previously
in Mayo, “for distinguishing patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications of these
concepts.” Alice, 134 S. Ct. at 2355. Under Alice, the first step of such analysis is
to “determine whether the claims at issue are directed to one of those patent-
ineligible concepts.” Id. If determined that the claims are directed to a patent-
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ineligible concept, the second step in the analysis is to consider the elements of the
claims “individually and ‘as an ordered combination’” to determine whether the
additional elements “‘transform the nature of the claim’ into a patent-eligible
application.” Id. (citing Mayo, 132 S. Ct. at 1298, 1297). In other words, the
second step is to “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.’”
Id. (quoting Mayo, 132 S. Ct. at 1294).
Here, in the first step of the analysis, the Examiner found that because the
claims are directed to targeting advertising that constitutes a fundamental
economic practice, the claims are therefore directed to an abstract idea. For both
representative claims 2 and 28, the claims require identifying an advertising
campaign, determining target delivery rates for an advertising campaign,
monitoring the actual delivery rate, and then, in response to making a
determination, modifying the delivery rate downwards. See Claims App. 27, 33.
We agree with the Examiner that the claims as a whole are directed to the purpose
of advertising, which is a fundamental economic practice. See Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014). The specific steps, such as setting
and monitoring delivery rates associated with an advertising campaign, are basic
commerce practices, but, in any event, these steps are directed to the furtherance of
advertising. In short, we agree with the Examiner that the claims are directed to
receiving data, storing data, analyzing data, selecting and presenting an
advertisement. See Ans. 4. Additionally, as discussed further below, the claims do
not address an issue that arises from and is specific to the Internet.
As to the second step of the Alice analysis, we are not persuaded by
Appellants’ arguments that the claims represent “significantly more” than the
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abstract idea itself. Appellants contend that the claims are directed to more than
routine or conventional use of the Internet because they overcome a problem
specifically arising in the realm of computer networks. Appeal Br. 23. The claims
include setting and monitoring “target delivery rates” and adjusting the availability
of the advertisements downwards if the actual rates are too high to achieve the
alleged benefit of delivery in a “smooth manner.” We do not agree with
Appellants’ contention that the claims are necessarily rooted in computer
technology or the use of the Internet and, therefore, are more than merely an
abstract idea. See Reply Br. 10-12. Considering the steps of the claims, and
contrary to the Appellants’ arguments, the claims can be analogized to pre-Internet
advertising practices. For instance, if advertising circulars in printed form were
delivered in multiple batches to physical location(s), the rate at which potential
customers pick up the circulars6 could be monitored and the delivery volume to
location(s) could be adjusted downwards if the rate of pick-ups of the circulars was
too high in comparison to a target rate. This would result in “smooth delivery” of
advertisements, and the required steps could be performed manually. Moreover,
neither the Specification nor Appellants’ arguments adequately explain why
“smooth delivery” of advertisements by constraining advertising delivery
represents “significantly more” than the ineligible concept itself.
Finally, we are not persuaded by the Appellants’ argument that the claims
will not preempt other types of advertising that do not employ the specific claimed
steps. Although it may be true that there are other methods of monitoring
advertising, the issue of preemption is not dispositive as to whether the claims are
patent eligible. SeeAriosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
6 A customer picking up a circular can be analogized to “delivery” in the claims.
See Spec. 3:5-9, 8:4-5.
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1377 (Fed. Cir. 2015) (“While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.”).
We therefore sustain the Examiner’s rejection of claims 2-59 under § 101.
35U.S.C.§ 102
Brown discloses a “first process [] to evaluate exposure performance against
the exposure target set up for each campaign.” Brown, 24:22-24. Brown also
discloses that:
An exposure target manager 328 maintains an aggregate
exposure count for each rule that has caused an exposure. The
aggregate exposure count is only maintained for rules that are related
to currently active campaigns. An aggregate exposure count is then
computed for each active campaign. While many algorithms can be
constructed to enhance the priority of rules that are not producing
enough exposures, the preferred implementation of the invention uses
the following mechanism.
For each active campaign, the exposure target manager
determines the percent of time left in the campaign [PercentTime=(end
date-current date)/(end date-start date)]. If the campaign is greater than
50% complete in terms of time, the exposure target manager then
computes the aggregate exposures as a percent of the target for the
campaign [PercentExposures=campaign aggregate exposures/target
exposures]. If the percent of target exposures is less than the percent of
time completed in the campaign, then the rules generating the exposures
are not producing enough exposures to satisfy the contract
requirements.
Brown, 24:29^19.
The Examiner relies upon these disclosures in Brown related to the
“exposure target manager,” finding that it “determines the target delivery rate plus
a predetermined percentage of the target delivery rate,” “discloses serving
advertisements based on the delivery rate for a time period and determining if the
delivery is proceeding on schedule and updating the delivery rate for a second
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portion of the delivery,” where “if the delivery rate is exceeded then the updated
delivery rate will be zero for the next time period therefore the update delivery rate
is less than the first delivery rate.” Ans. 5-6, 23-24.
Appellants allege that Brown fails to disclose the claim limitations of
“identifying an advertising campaign,” “determining ... a first delivery rate,”
“serving advertisements,” “determining that the first delivery rate is exceeded,”
“determining . . .an updated delivery rate,” and “serving advertisements associated
. . . within the pre-set tolerance of the updated delivery rate” of claim 28, with
claim 39 containing similar limitations. Appeal Br. 12-13. Appellants contend
that Brown only addresses a situation where a campaign is behind schedule, but
does not address a situation where a campaign is ahead of schedule. Id. at 14-15.
Appellants argue that Brown fails to disclose the use of a pre-set tolerance of the
first delivery rate. Id. at 15. Appellants also allege that Brown is silent as to a pre­
set tolerance, and the goals of the instant claim and Brown are different. Id.
Appellants further contend that the percentages disclosed in Brown are
related to the percent of time remaining in an advertising campaign and the current
percent of target exposure for the campaign. Reply Br. 3 (citing Brown, 24:38—
63). As such, Appellants allege that the percentages of Brown “are calculated on
the fly to determine if a campaign is on schedule and are not predetermined,” and
therefore Brown fails to disclose the claim limitation, “determines the target
delivery rate plus a predetermined percentage of the target delivery rate.” Id. at 4.
Although an ipsissimis verbis test, i.e., identity of terminology is not
required, In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990), anticipation is a question
of fact, In re Hyatt, 211 F.3d 1367, 1371-72 (Fed. Cir. 2000), and can be found
only if a single prior art reference discloses every element of the challenged claim,
In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986). Here, Brown discloses the use
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of an “exposure target manager,” however, its disclosures are not specific to some
of the details of the limitations of representative claim 28. Brown, for instance,
fails to explicitly disclose the use of a predetermined percentage of the target
delivery rate and pre-set tolerances as required by the claim limitations, and the
Examiner provides only conclusory statements in support of the findings.
Thus, we cannot sustain the Examiner’s rejection of independent claims 28
and 39, and claims 29-34 and 40-45, that depend therefrom under 35 U.S.C.
§ 102(e).
35 U.S.C. §103
Claims 35-38 and 46^19
Claims 35-38, directly or indirectly, depend from claim 28, and claims 46-
49, directly or indirectly, depend, from claim 39. See Claims App. 34, 36-37. In
the Non-Final Rejection, McElfresh is relied upon for the teachings of additional
limitations of some dependent claims, and Merriman of other dependent claims,
but neither cure the deficiencies of Brown’s teachings of the limitations of claims
28 and 39. Non-Final Act. 18-22.
Thus, we cannot sustain the Examiner’s rejection of claims 35-38 and 46^49
under 35 U.S.C. § 103(a).
Claims 2-27 and 50-59
Appellants allege that only Brown is relied upon for the teachings of the use
of a predetermined percentage of the target delivery rate and pre-set tolerances for
the related claim limitations in independent claims 2, 15, and 50. Appeal Br. 17-
20. The Non-Final Action finds that “Merriman ‘600 does not specifically disclose
determining that the target delivery rate for the advertisement campaign has been
exceeded by a predetermined amount or that the predetermined amount is within a
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pre-set tolerance,” the Examiner relies on McElfresh only for the additional
limitation of “uniform delivery,” and relies on Merriman only for the additional
limitation of installation on a mobile device in respective dependent claims. Non-
Final Act. 9, 16, 22. Neither Merriman ’600, McElfresh, nor Merriman cure the
deficiencies in the teachings of Brown for these limitations for the reasons
discussed above for claims 28 and 39.
Thus, we cannot sustain the Examiner’s rejection of independent claims 2,
15, and 50, and claims 3-14, 16-27, 51-59 , that depend therefrom, under 35
U.S.C. § 103(a).
SUMMARY
The rejection of claims 2-59 under 35 U.S.C. § 101 is affirmed.
The rejection of claims 28-34 and 39-45 under 35 U.S.C. § 102(e) is
reversed.
The rejections of claims 2—27, 35-38, and 46-59 under 35 U.S.C. § 103(a)
are reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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