Ex Parte Fougner et alDownload PDFPatent Trial and Appeal BoardNov 15, 201713044506 (P.T.A.B. Nov. 15, 2017) 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. 13/044,506 03/09/2011 Jon Bernhard Fougner 26295-21869 1000 87851 7590 11/17/2017 Faoehnnk/Fen wi ok EXAMINER Silicon Valley Center UBER, NATHAN C 801 California Street Mountain View, CA 94041 ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 11/17/2017 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 JON BERNHARD FOUGNER, PHILIP ANASTASIOS ZIGORIS, GOKUL RAJARAM, and NING LI Appeal 2016-0020561 Application 13/044,5062 Technology Center 3600 Before ALLEN R. MacDONALD, SHARON FENICK, and MICHAEL M. BARRY, Administrative Patent Judges. FENICK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—23. (Appeal Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b)(1). We AFFIRM. 1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed Mar. 9, 2015) and Reply Brief (“Reply Br.,” filed Dec. 7, 2015), and the Examiner’s Answer (“Answer,” mailed Oct. 6, 2015), and Non-Final Office Action (“Non-Final Act.,” mailed Oct. 3, 2014). 2 Appellants identify Facebook, Inc. as the real party in interest. App. Br. 2. Appeal 2016-002056 Application 13/044,506 CLAIMED INVENTION Appellants’ claimed invention relates to social networking, and specifically to proxying administrative functions such as creation, targeting, and bidding for the promotion of a story from an organic activity stream for delivery as a “sponsored story” to a user. (Spec. H 1, 3, and 10; Abstract.) Claims 1, 22, and 23 are the independent claims on appeal. Claims 1, 8, 9, 16, and 23, reproduced below, are illustrative of the claimed subject matter: 1. A method comprising: receiving a subscription from a node administrator, the subscription indicating a budget and duration for the subscription; receiving a first sponsored story specification from the node administrator specifying criteria for promoting a story as a sponsored story, the first sponsored story specification specifying a node in a social networking system and a type of action on the node; monitoring an organic activity stream comprising a listing of stories about actions by one or more users of the social networking system; identifying at least one story from the organic activity stream about an action by a user on a node matching the type of action and the node specified by the first sponsored story specification; generating by a processor a first sponsored story comprising information about the action on the node by the user from the identified at least one story; and automatically proxy bidding, in accordance with the received subscription, in a sponsored stories system for the display of the first sponsored story to a plurality of users of the social networking system connected in the social networking system to the user from the identified at least one story. 2 Appeal 2016-002056 Application 13/044,506 8. The method of claim 1, automatically proxy bidding comprising: placing bids based on a bidding algorithm and the received subscription. 9. The method of claim 8, wherein the bidding algorithm comprises: determining the engagement level of the node; and bidding more aggressively as the engagement level decreases. 16. The method of claim 8, wherein the bidding algorithm comprises: determining a potential audience size for the sponsored story; and bidding more aggressively as the potential audience size decreases. 23. A computer system comprising: a processor; and a memory storing instructions to: receive a subscription from a node administrator, the subscription indicating a budget and duration for the subscription; receive a first sponsored story specification from the node administrator specifying criteria for promoting a story as a sponsored story, the first sponsored story specification specifying a node in a social networking system and a type of action on the node; monitor an organic activity stream comprising a listing of stories about actions by one or more users of the social networking system; identify at least one story from the organic activity stream about an action by a user on a node matching the type of action and the node specified by the first sponsored story specification; generate by a processor a first sponsored story comprising information about the action on the node by the user from the identified at least one story; and automatically proxy bid, in accordance with the received subscription, in a sponsored stories 3 Appeal 2016-002056 Application 13/044,506 system for the display of the first sponsored story to a plurality of users of the social networking system connected in the social networking system to the user from the identified at least one story. REJECTIONS Claims 1—23 are rejected under pre-AIA 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. Claims 9, 16, and 23 are rejected under pre-AIA 35 U.S.C. § 112, second paragraph as indefinite for failing to particularly point out and distinctly claim the subject matter of the invention. Claims 1—23 are rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 1—8, 10-15, and 17—23 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over a combination of Kendall et al. (US 2009/0119167 Al; pub. May 7, 2009) (hereinafter “Kendall”) and Krassner et al. (US 2007/0265923 Al; pub. Nov. 15, 2007) (hereinafter “Krassner”)3. Claim 9 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over a combination of Kendall, Krassner, and Simmons et al. (US 2011/0040635 Al; pub. Feb. 17, 2011) (hereinafter “Simmons”). Claim 16 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over a combination of Kendall, Krassner, and Ghosh et al. (US 2010/0082399 Al; pub. Apr. 1, 2010) (hereinafter “Ghosh”). 3 While the header for this rejection also lists claim 9 (Non-Final Act. 8) it is clear that claim 9 is separately addressed in a later rejection {id. at 20). 4 Appeal 2016-002056 Application 13/044,506 ANALYSIS I. 35 U.S.C. § 112 Rejections A. § 112, first paragraph, claims 1—23 The Examiner finds the claims do not comply with the written description argument, because, with respect to the claim 1 steps of “identifying at least one story from the organic activity stream . . and “automatically proxy bidding ... in a sponsored stories system for the display of the first sponsored story ...” the claim limitations are generic while the Specification indicates the Appellants only had possession of one species of the broad genus claimed. Non-Final Act. 3—A. The Examiner further concludes “[t]he Appellant is claiming generic claim scope - any and all ‘generating’ processes - without disclosing commensurate scope in the original disclosure.” Answer 3. However, we agree with the Appellants that the “identifying ...” step is sufficiently supported by the Specification at paragraph 47 of the Specification, and that the “automatically proxy bidding ...” step is sufficiently supported in the Specification at paragraphs 49 and 54—64, in addition to paragraph 21 (not cited by Appellants). See Appeal Br. 5—6. While the Examiner finds the steps are generic with details which merely detail the results of the steps (Answer 2), we disagree. The step of “identifying at least one story” in claim 1 requires the story match the sponsored story specification received. The step of “automatically proxy bidding” occurs in accordance with a subscription which includes budget and duration for the subscription, and, even were this step considered generic, variations sufficient to support the genus are discussed in the Specification, including at paragraph 21. 5 Appeal 2016-002056 Application 13/044,506 The Examiner additionally finds the “automatically proxy bidding ...” and “generating ... a first sponsored story” steps are not supported by sufficient detail in the Specification by the disclosure of an algorithm. Non-Final Act. 2—A. However, we agree with the Appellants that the proxy bidding and generation are discussed in sufficient detail to comply with the written description requirement. See Appeal Br. 6—7. “[NJormally, writing code for . . . software is within the skill of the art. . . once its functions have been disclosed. Fonar Corp. v. General Elec. Co., 107 F.3d 1543, 1549 (Fed. Cir. 1997). In view of Figure 5 and the corresponding discussion in the Specification at paragraphs 54—62, this is not a case in which additional detail would be required for one of ordinary skill. Accordingly, we reverse the rejection of claims 1—23 under 35 U.S.C. §112, first paragraph as failing to comply with the written description requirement. B. § 112, second paragraph, claims 9 and 16 Claim 9 includes the limitations (a) that a bidding algorithm comprises determining “the engagement level” of a node, and (b) of “bidding more aggressively” as the engagement level decreases. Claim 16 includes the limitation that the bidding algorithm comprises “bidding more aggressively” as potential audience size decreases. The Examiner concludes “engagement level” and “bidding more aggressively” make these claims indefinite. Non-Final Act. 4—5. With respect to “engagement level,” the Examiner concludes the meaning of the term is unclear after a review of the Specification. Non- Final Act. 4. While Appellants argue that a formula is provided to calculate engagement level “in particular embodiments,” and that the equation 6 Appeal 2016-002056 Application 13/044,506 “provides a clear standard” (Appeal Br. 8), we disagree that the scope of the limitation can be ascertained from the one provided example of engagement level. In discussing the obviousness rejections (but not in arguments relating to the indefiniteness rejections) Appellants additionally argue that the Specification is “informative” that the level of engagement is “relative” to the “the number of endorsements or social actions on the node.” Appeal Br. 22 (citing Spec. 1 54.) However, this portion of the Specification does not indicate the engagement level is relative to counts of endorsements or social actions, but rather implies such counts are themselves the level of engagement. Spec. 154 (including as a factor in determining initial bid price “the level of engagement on the node (the number of endorsements or social actions on the node)”). Even were the engagement level defined to be a value relative to counts of endorsements or social actions on a node as per Appellants’ arguments, it is unclear how either count is reflected in the exemplary formula discussed by Appellants. Compare Appeal Br. 22 with id. at 8. Thus, we find no clear definition has been provided. Excepting the embodiments for which the formula is used, it is unclear what engagement level means, and we affirm the Examiner’s § 112, second paragraph rejection regarding “engagement level” in claim 9. With respect to “bidding more aggressively” in claims 9 and 16, the Examiner finds it is unclear what constitutes aggressiveness in this context. Non-Final Act. 5. With respect to the Specification’s disclosure that bidding occurs “more aggressively at higher prices” for certain stories, the Examiner finds this indicates a difference between bidding “more aggressively” and “at higher prices.” Answer 5. Appellants argue bidding “more aggressively at higher prices” shows bidding at higher prices “is at least one way to bid 7 Appeal 2016-002056 Application 13/044,506 more aggressively.” Reply Br. 9. However, even were we to agree, explaining “one way” to bid aggressively does not make clear what bidding more aggressively means more generally. Id. Appellants further argue less aggressive bidding (at lower prices) for nodes with higher engagement is in counterpoint, in the Specification, with more aggressive bidding, at higher prices. Reply Br. 9. However, the claim is directed to bidding for the display of one (“first”) sponsored story, comprising information regarding an action on one node. In this context, we agree with the Examiner that in the context of the claim, “bidding more aggressively” based on decreased engagement level for the node or decreased audience size for the sponsored story is not clearly defined. Thus, we affirm the Examiner’s § 112, second paragraph rejection regarding “bidding more aggressively” in claims 9 and 16. I. § 112, second paragraph, claim 23 The Examiner rejects claim 23 as indefinite for failing to disclose an algorithm to perform the claimed specialized function. Non-Final Act. 5; Answer 5—6. However, the Examiner predicates this rejection on the assumption that the claim should be evaluated as a means-plus-fimction claim. Non-Final Act. 5; Answer 5—6. Claim 23 does not use the word “means,” and in such cases there is a presumption the term does not invoke § 112(f) (pre-AIA § 112^6) interpretation. See Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347— 49 (Fed. Cir. 2015) (explaining “the essential inquiry is not merely the presence or absence of the word ‘means’ but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure”). “To determine whether a claim 8 Appeal 2016-002056 Application 13/044,506 recites sufficient structure, ‘it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.’” Skky, Inc. v. MindGeek, S.A.R.L.t 859 F.3d 1014, 1019 (Fed. Cir. 2017) (quoting TecSec, Inc. v. Inti Bus. Machs. Corp., 731 F.3d 1336, 1347 (Fed. Cir. 2013)). While the Examiner has made a finding that “the claim only seeks to distinguish claim 23 from other computers by disclosing what the memory of claim 23 ‘stores’” (Answer 6), and while such a finding might support a non functional descriptive material rejection, it is not a finding that one of ordinary skill would not understand that the memory designates structure. Since the § 112, second paragraph rejection of claim 23 was based on the evaluation of claim 23’s “memory” as a means-plus-function term, we do not sustain this rejection. II. 35 U.S.C. § 101 Rejections Under 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. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[ljaws of nature, natural phenomena, and abstract ideas” are not patent-eligible. See, e.g., Alice Corp. Pty. Ltd. v. CLS BankInt’l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 134 S. Ct. 9 Appeal 2016-002056 Application 13/044,506 at 2355. The first step in this analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts” {id.), e.g., to an abstract idea. If the claims are not directed to a patent-ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the second step, in which the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297). The Court acknowledged in Mayo that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293. Therefore, the Federal Circuit has instructed that claims are to be considered in their entirety to determine “whether their character as a whole is directed to excluded subject matter.” McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). A. Alice/Mayo First Step We are not persuaded, as an initial matter, by Appellants’ argument that the Examiner has erred by not providing “substantial evidence” in support of the rejection. Appeal Br. 12—13. Appellants charge that the Examiner’s Answer presents no required substantial evidence, and that therefore, the Examiner has not established a prima facie case of unpatentability with respect to the § 101 rejection. Id. at 15—17. The Federal Circuit has repeatedly noted “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing 10 Appeal 2016-002056 Application 13/044,506 In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132). Thus, all that is required of the Office is that it set forth the statutory basis of the rejection, and the reference or references relied on, in a sufficiently articulate and informative manner as to meet the notice requirement of § 132. Id.', see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”). Here, in rejecting the claims under § 101, the Examiner analyzed the claims using the Alice!Mayo two-step framework. Specifically, the Examiner notified Appellants that the claims are directed to “the fundamental business practice of marketing”, and therefore, to an abstract idea; and that the additional claim elements, other than the abstract idea, “amount to no more than the application of the abstract idea to the particular environment of social media advertising and the implementation of the abstract idea by a general purpose computer.” Non-Final Act. 6. The Examiner, thus, notified Appellants of the reasons for the rejection “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. And, in doing so, we find the Examiner set forth a prima facie case 11 Appeal 2016-002056 Application 13/044,506 of unpatentability, even in the absence of references establishing that the claims are directed to an abstract idea. Appeal Br. 13. Appellants additionally argue that the comparison by the Examiner of the claims to the fundamental economic practices of prior cases (Answer 7) is a mischaracterization of the scope of the claim, because the claims bear no resemblance to the fundamental economic activities identified by the court cases cited. (Reply Br. 12—13.) Appellants argue that in addition to marketing and auction participation, the claims describe generating a sponsored story from stories in the stream and creating a unit for bidding which did not previously exist {id. at 12), and that: The closest analog to advertising in a social networking system outside of the context of computer networking would be a non-Internet related advertisement provider such as a television station, newspaper, or magazine. However, these advertisement providers would be indifferent regarding the social networking actions or general habits of users (e.g., viewers or subscribers) because these pre-Internet advertisement providers did not have the capability to advertise on a per-user, or per-story basis, as the social networking stories themselves are a product of Internet usage. Id. at 14 (emphases added). This is unpersuasive. Under similar circumstances, the Federal Circuit found tailoring online content for a user, or customizing a user interface based on demographic information, is “an abstract idea that is as old as providing different newspaper inserts for different neighborhoods.” Affinity Labs of Tex. LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016.) The Federal Circuit has also held “tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e. budgeting)” is an abstract idea. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015). 12 Appeal 2016-002056 Application 13/044,506 Additionally, with respect to the bidding, in addition to the cases cited by the Examiner, we note that in DIP Technologies v. Amazon.com, Inc., the Federal Circuit found claims relating to a method of pricing a product for sale were directed to “offer-based price optimization” combined with well- understood, conventional activities related to computers or data-gathering. 788 F.3d 1359, 1362 (Fed. Cir. 2015). Thus, we agree with the Examiner that the claims are directed to patent-ineligible concepts. B. Whether Additional Elements Transform The Idea Into Patent-Eligible Subject Matter Turning to the second step of the Alice/Mayo analysis, Appellants argue the claims may be considered to recite “significantly more” than the judicial exception, relying on the arguments that the claims are patentably distinguishable over the prior art. Appeal Br. 14. However, we do not find this convincing. “A claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Thus, we are not persuaded the Examiner erred in rejecting claims 1, 2, 6—8, 10-12, and 17—25 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection. III. 35 U.S.C. § 103 Rejections A. Claims 1—8, 10—15, and 17—23 With respect to the rejection of claim 1, Appellants contend the Examiner’s rejection is in error, because Kendall does not teach or suggest the receipt of a “first sponsored story specification” that includes the specification of “a type of action on the node.” Appeal Br. 15—16. However, as the Examiner notes, Kendall teaches an action log is queried to 13 Appeal 2016-002056 Application 13/044,506 find entries matching a request, and that request, e.g., may specify a (musical) band and an event object relating to the band. Kendall 171 (cited by the Examiner at Non-Final Act. 8; see also Ans. 10). Additionally, Kendall specifically notes a social ad (the “sponsored story”) may be published “if the member [of a social networking website] takes an action that is identified in an ad request.” Kendall 1 81 (emphasis added) (cited by the Examiner at Non-Final Act. 8). Appellants additionally argue Kendall does not teach or suggest “promoting an existing story as a sponsored story.” Appeal Br. 16. Appellants argue “explicit limitations in the claims . . . distinguish sponsored stories from ads.” Reply Br. 18. However, we agree with the Examiner that Kendall’s disclosure that a story about an action such as a social networking website member’s indicating attendance at a concert (an “existing story”) would be “a candidate for a social ad” (a “sponsored story”) teaches or suggests this requirement. Answer 10 (quoting Kendall 171). While Appellants argue Kendall’s social ads differ from the claimed sponsored stories, we agree with the Examiner Kendall’s social ads teach or suggest the sponsored stories. Non-Final Act. 8—9; Answer 9-10; see Kendall Fig. 5 (showing newsfeed stories are used to generate social ads); id. 161 (newsfeed generator 370 generates stories from the action log); see also, id. 146 (“[e]ach generated social ad 180 comprises an advertising message that communicates a message about at least one member action from the action log 160.”). Claim 1 notes the generation of “a first sponsored story” “comprising information about the action on the node” and thus, the broadest reasonable interpretation of the claim does not require that the claimed “promoting an existing story as a sponsored story” is limited 14 Appeal 2016-002056 Application 13/044,506 only to the display of that existing story. Even were this not the case, Kendall notes that social ads may or may not include additional advertiser information and that social ads and newfeed stories may be indistinguishable. Kendall 76, 77, 80. Appellants additionally argue Kendall does not disclose monitoring an organic activity stream because Kendall does not teach or suggest an organic activity stream and the identification of a story from that activity stream. Appeal Br. 17—18. However, we agree with the Examiner that this is taught or suggested by obtaining actions from a member action log matching an ad request. Non-Final Act. 8; Answer 11; Kendall 171, Fig. 9, element 915. Appellants also argue the combination of prior art does not teach or suggest the “automatically proxy bidding ...” limitation because the references do not teach “looking at connections of a user from the identified story as a basis for [] whom to display the sponsored story” and no contacts of the user from the identified story are used to identify a potential audience for the sponsored story. Appeal Br. 18—19. However, we agree with the Examiner (Non-Final Act. 8, 22—23; Answer 10) that Kendall’s generation of “social ads” for social network members teaches or suggests this. See Kendall 171, Fig. 5, element 535. Thus, we are not convinced of error in the Examiner’s rejection of claim 1. Claims 22 and 23 are argued with claim 1, and the patentability of claims 2—8, 10-15, and 17—21 are argued solely on the same basis, and thus we are also not convinced of error in the rejection of these claims. B. Claim 9 Appellants argue the Examiner has erred in interpreting “engagement level” and finding Simmons teaches or suggests this in Simmons’ teachings 15 Appeal 2016-002056 Application 13/044,506 relating to the number of impressions of an ad. Appeal Br. 21; Reply Br. 18—19. Additionally, Appellants argue Simmons does not show an engagement level for a node, because Simmons does not teach or suggest a node corresponding to the claimed node in a social networking system. Appeal Br. 21—22; Reply Br. 18—19. We agree with the Examiner that, to the extent engagement level can be determined, an ad impression number teaches or suggests an engagement level. Non-Final Act. 20; Simmons Fig. 6,1132. We note that Appellants argue the recited engagement level encompasses the result of a formula from the Specification that relates engagement level with average number of impressions. Appeal Br. 8. With respect to Simmons’ teachings of social media nodes, Appellants’ argument is not persuasive, as it is directed at Simmons in isolation and not on the combined teachings of the references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[0]ne cannot show non obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”) Appellants make an additional argument for the first time in the Reply Brief regarding correlation (direct or inverse) between bid value and number of impressions in Simmons. Reply Br. 20. As this argument was not raised previously yet could have been, this argument is deemed waived. Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (holding an argument raised for the first time in the reply brief that could have been raised in the opening brief is waived); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) (“Nor is the reply brief an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). 16 Appeal 2016-002056 Application 13/044,506 Thus, we are not convinced of error in the Examiner’s rejection of claim 9. C. Claim 16 With respect to claim 16, Appellants reiterate arguments regarding sponsored stories versus ads, addressed supra. Additionally, Appellants argue “[t]he potential audience size for a sponsored story is based on more than mere numbers” and therefore Ghosh does not teach the claimed audience size. Appeal Br. 24. This is unpersuasive in view of Ghosh’s teaching of bidding based on changes in the estimated number of users with “defined characteristics” who are recipients of the ads. Ghosh 160 (cited at Non- Final Act 21). Additionally, Appellants argue Ghosh does not teach bidding with respect to social networking system users connected to the user whose action is the subject of the sponsored story. Id. at 25; Reply Br. 20. Again, we find Appellants’ arguments are directed only at one reference and not the combined teachings of the references as relied upon by the Examiner (see Non-Final Act. 21; Ans. 11—12).. In re Keller, 642 F.2d at 426. Thus, we are not convinced of error in the Examiner’s rejection of claim 16. 17 Appeal 2016-002056 Application 13/044,506 DECISION The Examiner’s rejection of claims 1—23 under 35 U.S.C. § 112, first paragraph is reversed. The Examiner’s rejection of claims 9 and 16 under 35 U.S.C. § 112, second paragraph is affirmed. The Examiner’s rejection of claim 23 under 35 U.S.C. § 112, second paragraph is reversed. The Examiner’s rejection of claims 1—23 under 35 U.S.C. § 101 is affirmed. The Examiner’s rejection of claims 1—23 under 35 U.S.C. § 103(a) 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 18 Copy with citationCopy as parenthetical citation