Ex Parte Hegeman et al

Patent Trial and Appeal Board

Sep 21, 2017

13545266 (P.T.A.B. Sep. 21, 2017)

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.
13/545,266 07/10/2012 John Hegeman 26295-20055 1050
87851 7590 09/25/2017
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center ELCHANTI, TAREK
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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 JOHN HEGEMAN, HONG GE, MAXIM GUBIN,
and ALON AMIT
Appeal 2016-0043171
Application 13/545,266
Technology Center 3600
Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants2 appeal under 35U.S.C. § 134 from the Examiner’s
rejection of claims 1—32. We have jurisdiction over this appeal under
35 U.S.C. § 6(b).
We AFFIRM.
1 An Oral Hearing was held on Sept. 11, 2017.
2 “The real party in interest in this [ajppeal is Facebook, Inc.” (Appeal Br. 1.)
Appeal 2016-004317
Application 13/545,266
STATEMENT OF THE CASE
“This application relates generally to social networking systems and,
in particular, to distributing information about actions taken by other social
networking system users based on connections between those users.”
(Spec. 11.)
Illustrative Claim
1. A method comprising:
receiving an advertisement request to sponsor organic stories,
the advertisement request comprising a bid amount and
specifying criteria identifying one or more organic stories
to be sponsored;
accessing a plurality of candidate organic stories for the
viewing user, each organic story identifying a social
networking system user connected to the viewing user,
one or more actions performed by the social networking
system user and one or more objects of the one or more
actions;
determining that at least one of the candidate organic stories
matches the specified criteria in the advertisement
request;
generating a score for each matching candidate organic story,
generating the score comprising:
computing, by a processor, an organic contribution
based on an affinity of the viewing user for one
or more of the social networking system user, an
action, or an object identified by the candidate
organic story,
computing, by the processor, a revenue contribution
based on the bid amount of the advertisement
request having the matched criteria,
combining the organic contribution and the revenue
contribution to generate the score, and
applying a conversion factor to the score to allow the
matching candidate organic story to be ranked
for selection alongside other candidate organic
stories having scores that are computed
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Application 13/545,266
differently than for the matching candidate
organic stories;
selecting one or more of the candidate organic stories for
presentation to the viewing user based on the scores; and
sending the selected candidate organic stories for display to the
viewing user.
Rejections
I. The Examiner rejects claims 1—32 under 35 U.S.C. § 101 as
failing to recite statutory subject matter. (Final Action 2.)
II. The Examiner rejects claims 1—32 under 35 U.S.C. § 103(a) as
unpatentable over D’Angelo3 and Schoen.4 (Final Action 3.)
ANALYSIS
Claims 1,6, 18, 27, 28, 29, 30, 31, and 32 are the independent claims
on appeal, with the rest of the claims on appeal (i.e., claims 2—5, 7—17, and
19—26) depending therefrom. (See Appeal Br., Claims App.) The claims
recite “stories,” and particularly “organic” stories and “sponsored” stories.
{Id.) “[Ojrganic stories increas[e] user interaction with the social
networking system,” while “sponsored stories generat[e] revenue for the
social networking system.” (Spec. 18.)
As explained by the Appellants, “an ad may be more effective if
displayed alongside other non-ad information, while being less effective if
displayed alongside other ad information.” (Spec. 14.) Hence, “[u]sing a
common communication channel to present sponsored stories and organic
stories increases the likelihood that the viewing user will view or interact
3 US 2009/0070219 Al, published March 12, 2009.
4 US 2011/0231240 Al, published September 22, 2011.
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Application 13/545,266
with the sponsored stories, providing revenue to the social networking
system from advertisers.” (Id. | 5.) In other words, when selecting stories
to display to a viewing user, it is financially favorable to the social
networking system for this selection to include both organic stories and
sponsored stories.
According to the Appellants, the claims on appeal recite “specific
processes for selecting the sponsored and organic stories for display to a
user, including particular methods for scoring and ranking stories.” (Appeal
Br. 16.) To this end, the claims on appeal recite the generation of “scores”
for organic stories and/or sponsored stories. (See Appeal Br., Claims App.)
The “score” for an organic story is computed based on “an affinity of the
viewing user,” while the “score” for a sponsored story is computed based on
“an affinity of the viewing user” and also “a revenue contribution.” (Id.)
Thus, the score for an organic story is “computed differently” than the score
for a sponsored story. (Id.)
Apparently, “conventional techniques using different valuation
methods for sponsored stories and organic stories, making it cumbersome to
select content for presentation to the viewing user.” (Spec. 1 8.) However,
the claims on appeal recite features that “simplif[y] selection of sponsored
stories and organic stores for inclusion in a newsfeed sent to the viewing
user by allowing a single ranking to include sponsored stories and organic
stories.” (Id. 19.) For example, independent claims 1, 27, and 28 recite a
“conversion factor” for this purpose, independent claims 6, 29, and 30, recite
the “ranking” of stories, having scores computed differently, “together,” and
independent claims 18, 31, and 32 recites a “common unit of measurement”
for scores computed differently. (Appeal Br., Claims App.)
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Rejection I
The Examiner determines that the claims on appeal are directed to an
“abstract idea” and the Examiner determines that the other limitations in the
claims “are merely instructions to implement the abstract idea on a
computer.” (Final Action 2.) More succinctly, the Examiner determines
that the claims on appeal do not pass muster under the two-step Alice test.5
As discussed below, we agree with the Examiner’s determination in this
regard, and we are not persuaded by the Appellants’ arguments to the
contrary.
As for the first step of the Alice test, we agree with the Examiner that
the claims are directed to a fundamental advertising concept. (See Final
Action 2.) More particularly, the claims are directed to selecting, for
presentation to a potential customer, both advertisement-related content and
non-advertisement content to increase the likelihood that this potential
customer will read the advertisement content.6 As mentioned above, “an ad
may be more effective if displayed alongside other non-ad information.”
5 The Alice test entails two steps for distinguishing between an “abstract
idea[]” and a “patent-eligible application^” of an abstract idea. Alice Corp.
Pty. Ltd. v. CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014). The first step of
the Alice test is to consider whether the claims at issue are “directed to” an
abstract idea. Id. If so, the inquiry proceeds to the second step of the Alice
test where 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.”
Id.
6 Insofar as our characterization of the abstract idea differs somewhat from
that of the Examiner, we note that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240-1241 (Fed. Cir. 2016).
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(Spec. 12.) And as acknowledged by the Appellants, a traditional business
analog to this would be “selecting ads to appear in a printed publication
alongside the substantive content of the publication.” (Appeal Br. 18.)
The Appellants argue that the claimed concept differs from the
traditional printed-publication business model in that, there, an advertiser is
“typically not aware of the particular people reading the publication.”
(Appeal Br. 18.) Along this same line, the Appellants argue that the claimed
concept differs from this traditional business model in that, there, the
selected stories are not “personalized to a user.” {Id.) We are not persuaded
by these arguments because the practice of gathering information about
one’s intended market and attempting to customize the information then
provided is as old as the saying “know your audience.” The personalization
referred to by the Appellants constitutes targeted advertising, as it matches
consumers with content that is likely to be most interesting to them; and this
has been going on for as long as markets have been in operation.
The Appellants additionally argue that the claimed concept is not
really about advertising, but rather about the presentation of selected stories
in a space-restrictive display. However, even if this is so, the same concern
would arise in the printed-publication world, as a printed publication would
not have, for example, a boundless number of pages in which to present
content. Moreover, the Appellants cannot reasonably dispute that the claims
on appeal are concerned with advertising, as they recite advertisement-
specific features (i.e., an “advertisement request,” “a bid amount,” and “a
revenue contribution based on the bid”) which influence the story-selection
outcome. (See Appeal Br., Claims App.)
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As for the second step of the Alice test, we agree with the Examiner
that the claims on appeal contain no inventive concept because they simply
implement the above-identified abstract concept through the generic
computer elements. The claims on appeal call only for a “processor” that
receives requests, performs score-related computations, selects stories based
on these computations, and/or sends selected stories to the viewing user.
(See Appeal Br., Claims App.) In other words, the processor functions
solely as a tool to speed the selection of stories by, for example, collecting
data and performing calculations.
The Appellants argue that the claims on appeal “are analogous to” the
claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014). (Appeal Br. 17.) According to the Appellants, the
claimed concept “solves a problem that does not have a traditional business
analog,” as “selecting stories that are personalized to a user” does not
“generally exist outside of interconnected computing networks.” {Id. at 18.)
We are not persuaded by this argument because, as discussed above, this
content-selecting problem does have a traditional business analog in the
printed-publication realm. Also, user personalization of advertisement
content, although perhaps an innovative improvement on the abstract idea of
targeted advertising, is not a modification of the conventional mechanics
behind a website display.
The Appellants further argue that the claims recite “specific and
concrete steps,” such as generating a score, computing an organic
contribution, computing a revenue contribution, combining the organic and
revenue contribution, and applying a conversion factor. (Appeal Br. 18—19.)
According to the Appellants, these are “additional limitations” that “apply
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the abstract idea in a meaningful way.” (Id. at 19.) We are not persuaded by
this argument because, even ignoring the advertising-related features recited
in the claims, these “additional limitations” themselves constitute an abstract
idea, as they are nothing more than the gathering and analyzing of
information and then displaying the results.7 Although these limitations may
be abundant with terminology specific to social networking, this does
nothing significant to differentiate them from the information-based
category of abstract ideas.
Thus, we sustain the Examiner’s rejection of claims 1—32 under
35U.S.C. § 101.
Rejection II
As indicated above, the claims on appeal recite features (e.g., a
“conversion factor,” the “ranking” of stories “together,” and a “common unit
of measurement”) that result in a single ranking including both sponsored
stories and organic stories. (See Appeal Br., Claims App.) The Examiner
determines that it would have been obvious for a targeted advertising system
disclosed in D’Angelo to apply a weighted function taught by Shoen to
achieve this result. (See e.g., Final Action 4.) As discussed below, we agree
with the Appellants that the Examiner’s determination is not sufficiently
supported.
D’Angelo discloses a targeted advertisement system in which “affinity
scores” are computed between a user and a candidate advertisements and
1 See, e.g., Elec. Power Grp., LLC, 830 F.3d at 1353—54 (When “the focus of
the asserted claims” is “on collecting information, analyzing it, and
displaying certain results of the collection and analysis,” the claims are
directed to an abstract idea, even though data content and data manipulation
is related specifically to electrical power-grid performance).
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then advertisements are selected for display in accordance with these affinity
scores. (D’Angelo, claim 29.) Shoen discloses that the “affinity score” for a
candidate story “may be based on a weighted function that takes into
account the set of affinities for the particular user for each type of data field
that is in a candidate story.” (Shoen 181.) In other words, Shoen teaches
that a “weighted function” or “conversion factor” can be used when
computing an affinity score for a particular story but “all the stories are
scored the same way.” (Reply Br. 7.)
The Examiner explains that, in D’Angelo, “matching” candidate
advertisements can be considered “sponsored stories” and “non-matching”
candidate advertisements can be considered “organic stories.” (Answer 5.)
However, this does not adequately address how the incorporation of Shoen’s
weighted function into D’Angelo’s affinity computation would allow a
single ranking of stories having differently computed scores, as the
candidate advertisements (i.e. the “sponsored stories” and the “organic
stories”) would still all be scored the same way.
Thus, we do not sustain the Examiner’s rejection of claims 1—32 under
35U.S.C. § 103.
DECISION
We AFFIRM the Examiner’s rejection of claims 1—32 under
35U.S.C. § 101.
We REVERSE the Examiner’s rejection of claims 1—32 under
35U.S.C. § 103.
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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