Ex Parte Novikov et alDownload PDFPatent Trial and Appeal BoardAug 27, 201812645481 (P.T.A.B. Aug. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/645,481 12/23/2009 87851 7590 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 08/29/2018 FIRST NAMED INVENTOR Victor Novikov 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. 26295-15361 8319 EXAMINER LI,SUNM ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 08/29/2018 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 VICTOR NOVIKOV, ADITY A AGRA WAL, KENT SCHOEN, and, JARED MORGENSTERN Appeal2016-007592 Application 12/645,481 1 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and ROBERT J. SILVERMAN, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Victor Novikov et al. (Appellants) seek our review under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b). 1 The Appellants identify Facebook, Inc. as the real party in interest. App. Br. 1. Appeal2016-007592 Application 12/645,481 SUMMARY OF DECISION We AFFIRM. THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A computer-implemented method comprising: receiving a request for information from a user of a social networking system; selecting one or more advertisements for presentation to the user in at least one of a plurality of spaces in a portion of a display, wherein an advertisement comprises a sponsored message by an advertiser; selecting, by a computer system, one or more content items from a plurality of content items for presentation to the user in the plurality of spaces, wherein a content item comprises a recommendation to perform an action increasing engagement with the social networking system, and wherein at least one of the selected advertisements and at least one of the content items is selected based on a measure of relatedness between the at least one selected advertisement and the at least one content item; and sending the display for presentation to the user, the display comprising the plurality of spaces that includes the selected advertisements and content items. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Ransom et al. ("Ransom") US 2009/0222348 Al The following rejections are before us for review: 2 Sept. 3, 2009 Appeal2016-007592 Application 12/645,481 1. Claims 1-31 are rejected under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter. 2. Claims 1-31 are rejected under 35 U.S.C. § 102(a) as being anticipated by Ransom. ISSUE Did the Examiner err in rejecting claims 1-31 under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter? Did the Examiner err in rejecting claims 1-31 under 35 U.S.C. § 102 (a) as being anticipated by Ransom? ANALYSIS The rejection of claims 1-31 under 35 USC§ 101 as being directed to judicially-excepted subject matter. The Appellants argued these claims as a group. See App. Br. 4--9. We select claim 1 as the representative claim for this group, and the remaining claims 2-31 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). Alice Corp. Party Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under § 101. According to Alice step one, "[ w ]e must first determine whether the claims at issue are directed to a patent-ineligible concept," such as an abstract idea. Alice, 134 S. Ct. at 2355. In that regard, the Examiner determined that "[t]he claims, as a whole, are directed towards the concept of selecting and placing advertisement[ s] to 3 Appeal2016-007592 Application 12/645,481 display in [a] social networking platform. Claims 1-31 are directed to abstract ideas." Final Rej. 5. The Appellants argue that the Examiner has not shown that the concept of selecting and placing advertisements to display in a social networking platform is an abstract idea. App. Br. 5---6. Nevertheless, the Federal Circuit has determined that displaying information is an abstract idea. 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. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007 (C.D. Cal. 2014), aff'd, 622 F. App'x (Mem) (Fed. Cir. 2015) ("claims here are drawn to two abstract ideas: targeting advertisements to certain consumers, and using a bidding system to determine when and how advertisements will be displayed"); Move, Inc. v. Real Estate Alliance Ltd., 221 F.Supp.3d 1149, 954 (C.D. Cal. 2016), aff'd, 721 F. App'x 950 (Fed. Cir. 2018) ("a method for collecting and organizing information about available real estate properties and displaying this information on a digital map that can be manipulated by the user."). The Appellants disagree with the Examiner's characterization of what claim 1 is directed to. According to the Appellants, "claim l describes selecting both advertisements and content items, not just advertisements. In addition, a measure of relatedness between at least one advertisement and content item is used to select the respective advertisement and content item." App. Br. 7. 4 Appeal2016-007592 Application 12/645,481 The Appellants do not explain, and we are unable to discern the distinction between "the concept of selecting and placing advertisement to display in social networking platform" (Final Rej. 5) and "selecting both advertisements and content items" (App. Br. 7) as it relates to the step 1 determination. Even if the concept to which claim 1 is directed is characterized as "selecting both advertisements and content items" (App. Br. 8), the concept is no less abstract than the concept the Examiner has characterized it to be. In either case, information is displayed - which according to case law is an abstract idea. As an aside, we are cognizant that claim 1 involves specific types of information ( e.g., advertisements) but "collecting information, including when limited to particular content (which does not change its character as information), [is] within the realm of abstract ideas." Elec. Power Grp., LLC, 830 F.3d at 1353; see also Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). As for the measure of relatedness recited in claim 1, we note the Appellants argue that the claims recite a specific process for generating a display of information that uses a measure of relatedness between an advertisement and a social networking content item to select one or more advertisements and one or more content items. One fundamental purpose of social networking systems is to select and present content that is likely to be of interest to a user from among the thousands and millions of content items. Improvements to these functions are not abstract concepts, but instead provide a better social networking system. An automated system to provide such selection is not an abstraction. While such selections may use rules, what rules to use and the resulting selection and presentation to the user is not an abstraction. The 5 Appeal2016-007592 Application 12/645,481 specific claimed process improves the technology of displaying advertisements to social networking system users because it helps overcome "ad blindness," in which users learn to ignore portions of web pages containing advertisements, a particular problem for webpages. See Specification, [0006] and [0011]. Specifically, by generating a display including both social networking content items and advertisements interspersed with the social networking content, the claimed process increases the likelihood of a user paying attention to and interacting with the advertisements. This is a concrete improvement in a computer- related technology-content and advertising selection to reduce ad blindness-and is therefore not a simple application of the "receiving information, analyzing, processing information, and sending information" in the abstract. The claims are therefore not directed to an abstract idea, and are patent-eligible under the first step of the Alice test. Reply Br. 4--5 (emphasis added). The benefit of the measure of relatedness is a tangible and concrete improvement to the technology of presenting advertisements in social networking systems and is not a conventional application of an abstract idea. As described in the Specification and above, advertisements in a display that are related to social networking content items are more likely to receive attention of a user, thereby overcoming the problem of ad blindness. Reply Br. 7. See also App. Br. 8 ("as described in the filed specification, 'if the display includes a mixture of advertising interspersed with social networking system content, a user is more likely to pay attention to and interact with the advertisements if they are related to the other social networking system content.' Specification at ,r 11. Claim 1 therefore does not claim the bare idea of selecting advertisements, and does not merely recite applying a computer to perform steps of selecting such advertisements."). 6 Appeal2016-007592 Application 12/645,481 The difficulty is that claim 1 is broader than what is being argued. There is no limitation in claim 1 requiring advertisements to be related to a social networking content item. Claim 1 calls for "[ selecting] at least one of the selected advertisements and at least one of the content items is selected based on a measure of relatedness between the at least one selected advertisement and the at least one content item." Although claim 1 requires employing a "measure of relatedness," it covers a wide range of measured relatedness from not to completely related. Even though the selection is based on a measure of relatedness, the measure of relatedness could be zero; that is, claim 1 covers selecting advertisements and content items that are not at all related each other. Accordingly, the entire argument that the claimed process is not directed to an abstract idea but rather a technical improvement whereby advertisements and content items are selected so as to be related to each other, which thereby reduces ad blindness, is not commensurate in scope with what is claimed and cannot be persuasive as to error in the step 1 determination. Moreover, selecting a type of content that will interest a viewer is itself an abstract idea. Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) ("tailoring of content based on information about the user-such as where the user lives or what time of day the user views the content-is an abstract idea that is as old as providing different newspaper inserts for different neighborhoods") ( citing Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713 (Fed. Cir. 2014) (allowing a consumer to receive copyrighted media in exchange for watching a selected advertisement was an abstract idea); Tuxis 7 Appeal2016-007592 Application 12/645,481 Techs., LLC v. Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL 4382446, at *5 (D. Del. Sept. 3, 2014) (matching consumers with a given product or service "has been practiced as long as markets have been in operation"). We have reviewed all the arguments challenging the step 1 determination but find them unpersuasive. We now tum to step two. Step two is "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, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). In that regard, the Examiner determined, inter alia, that [t]he claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims do not recite limitations that are "significantly more" than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The claims merely recites a computer to display the selected advertisement and the content item which do not add meaningful limitations to the idea of selecting advertisement associated with social networking platform beyond generally linking a system to a particular technological environment. [See Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347 (2014)] [(]selecting and displaying the advertisement in a computer are well understood, routine and conventional activities[)]. Final Rej. 5. 8 Appeal2016-007592 Application 12/645,481 The Appellants argue that "[ c ]laim 1 describes selecting both advertisements and content items, not just advertisements. In addition, a measure of relatedness between at least one advertisement and content item is used to select the respective advertisement and content item." App. Br. 7. We addressed these arguments above as challenges to the step one determination. But here, too, as to the step two determination, we do not see and the Appellants do not explain how the selection of two types of information transforms the abstract idea of "selecting and placing advertisement to display in social networking platform" (Final Rej. 5) into an inventive application. As for selecting advertisements and content items so that they are related to one another, that is not claimed and thus not something we can speak to. We note the Appellants point about the Examiner not addressing the dependent claims. App. Br. 8-9. But the Examiner did apply the reasoning to all the claims on appeal. All that Appellants have done here is repeat what is claimed without explaining how the limitations in the dependent claims either render the claimed subject matter not directed to an abstract idea or, notwithstanding the claimed subject matter may be directed to an abstract, they nevertheless transform the abstract idea they are directed to into an inventive application. In effect, the argument as to addressing the dependent claims merely points out what they recite. A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim. 37 C.F.R. 4I.37(c)(l)(vii). Also, the Appellants argue that the dependent claims describe using a measure of relatedness, suggesting some consequence given a relatedness between the 9 Appeal2016-007592 Application 12/645,481 advertisements and the content items. App. Br. 8-9. But, as we have explained, the measure of relatedness as claimed is so broad that it covers a result where the advertisement and content items are not related at all. In our view, the dependent claims are directed to the same abstract idea as that to which the independent claims are directed. Where all claims are directed to the same abstract idea, "addressing each claim of the asserted patents ... [is] unnecessary." Content Extraction, 776 F.3d at 1348. We have considered all of the Appellants' remaining arguments and have found them unpersuasive. Accordingly, we find the Examiner's determination that representative claim 1, and claims 2-31 which stand or fall with claim 1, are directed to ineligible subject matter under 35 U.S.C. § 101 has not been shown to be in error. Cf LendingTree, LLC v. Zill ow, Inc., 656 F. App'x 991, 997 (Fed. Cir. 2016) ("We have considered all of LendingTree's remaining arguments and have found them unpersuasive. Accordingly, because the asserted claims of the patents in suit are directed to an abstract idea and do not present an 'inventive concept,' we hold that they are directed to ineligible subject matter under 35 U.S.C. § 101."). The rejection is sustained. The rejection of claims 1-31 under 35 US.C. § 102(a) as being anticipated by Ransom. All the claims require "a content item compris[ing] a recommendation to perform an action increasing engagement with the social networking system." See independent claims 1 and 18. The Examiner's position is that 10 Appeal2016-007592 Application 12/645,481 Ransom teaches recommending a user to click a link to become a fan or to invite his friend to become a member [0065, a participant may be given the opportunity to click a button or a link in order to become a fan of the organization's Facebook page, . . . . , upon submission of a promotion entry form, the participant is shown a webpage listing the names of the participant's social network friends, and he can select friends to invite to enter the promotion]. Final Rej. 8. Para. 65 of Ransom discloses survey questions may include the option of electing to join one or more groups associated with the one or more social network- based platforms and the organization or a third party organization. For example, a participant may be given the opportunity to click a button or a link in order to become a fan of the organization's Face book page, and the organization is then permitted to send messages via the Facebook platform to this participant so long as the participant remains a fan. In one embodiment, clicking on a link or a button or checking a box to elect to become a member of a group associated with an organization will automatically result in the participant becoming a member. Alternatively, clicking on a link or button or checking a box to elect to become a member of a group associated with an organization will trigger a pop-up window or a new browser window to open where the participant can take action to become a member of a group. Said passage describes links as means for a participant to become a member. However, the claims call for "a recommendation to perform an action increasing engagement with the social networking system." These are not the same. There is no express description in Ransom of what is claimed. Even under principles of inherency, when a reference is silent about an asserted inherent characteristic (i.e., a "text box"), it must be clear that the missing descriptive matter is necessarily present in the thing described in the 11 Appeal2016-007592 Application 12/645,481 reference, and that it would be so recognized by persons of ordinary skill. Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991). We do not see that Ransom necessarily describes "a recommendation to perform an action increasing engagement with the social networking system." It is possible that, once a participant becomes a member, engagement with the social networking system may increase but "[i]nherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." Hansgirg v. Kemmer, 102 F.2d 212,214 (CCPA 1939), quoted in Continental Can, 948 F.2d at 1269. The rejection is not sustained. CONCLUSION The rejection of claims 1-31 under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter is affirmed. The rejection of claims 1-31 under 35 U.S.C. § 102(a) as being anticipated by Ransom is reversed. DECISION The decision of the Examiner to reject claims 1-31 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)(l )(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation