Ex Parte Novikov et alDownload PDFPatent Trial and Appeal BoardAug 22, 201812645482 (P.T.A.B. Aug. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/645,482 12/23/2009 87851 7590 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 08/24/2018 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. 26295-16372 8320 EXAMINER LI,SUNM ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 08/24/2018 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 AGRAWAL, KENT SCHOEN, and JARED MORGENSTERN Appeal2016-007591 Application 12/645,482 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) seeks our review under 35 U.S.C. § 134(a) of the Non-Final Rejection of claims 1-21. 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. Appeal2016-007591 Application 12/645,482 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 in a social networking system a request for information from a user of the social networking system; generating a display of information responsive to the request, wherein the display includes a main portion that comprises a plurality of social networking content items selected based on information about the user, wherein the social networking content items are associated with the user's connections in the social networking system; selecting, by a computer, one or more advertisements based on a measure of relatedness of the selected advertisements to one or more of the items in the main portion of the generated display, wherein each advertisement is associated with an ad payment to be made by a sponsoring advertiser for presenting the advertisement; adding the selected one or more advertisements to a supplemental portion of the display; and sending the display for presentation to the user, the display including the main portion and the supplemental portion. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Partovi Tokuda US 2008/0294607 Al US 2009/0048921 Al 2 Nov. 27, 2008 Feb. 19,2009 Appeal2016-007591 Application 12/645,482 The following rejections are before us for review: 1. Claims 1-21 are rejected under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter. 2. Claims 1-21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Partovi and Tokuda. ISSUE Did the Examiner err in rejecting claims 1-21 under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter? Did the Examiner err in rejecting claims 1-21 under 35 U.S.C. § 103(a) as being unpatentable over Partovi and Tokuda? ANALYSIS The rejection of claims 1-21 under 35 US.C. § 101 as being directed to judicially-excepted subject matter. The Appellants argue these claims as a group. See App. Br. 5-9. We select claim 1 as the representative claim for this group, and the remaining claims 2-21 stand or fall with claim 1. 37 C.F.R. § 1.37(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 to display in social networking platform. Claims 1-21 are directed to abstract ideas." Non-Final Act. 5. 3 Appeal2016-007591 Application 12/645,482 The Appellants argue that the Examiner has not shown that the concept of selecting and placing advertisement to display in social networking platform is an abstract idea. App. Br. 6-7. Nevertheless, the Federal Circuit has determined that displaying information is an abstract idea. When "[t]he 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), ajf'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), ajf'd, 2018 WL 656377 (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, the measure of relatedness recited in claim l enables the selection of advertisements and content items that are related to one another." App. Br. 8. 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" (Non-Final Act. 5) and "selecting both advertisements and content items" (App. Br. 8) as it relates to the step 1 4 Appeal2016-007591 Application 12/645,482 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' l 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 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 in a main portion of the display and advertisements in a 5 Appeal2016-007591 Application 12/645,482 supplemental portion of the display that are related to the social networking content items, the claimed process generates a supplemental portion that is more likely to receive the attention of a user. 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 "receiving information, analyzing, processing information, and sending information" in the abstract. Reply Br. 4--5 (emphasis added). See also App. Br. 8 ("the measure of relatedness recited in claim 1 enables the selection of advertisements and content items that are related to one another.") 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] one or more advertisements based on a measure of relatedness of the selected advertisements to one or more of the items in the main portion of the generated display." Although claim 1 requires employing a "measure of relatedness," it covers a wide range of relatedness from not related to completely related. Even though the advertisement is selected based on a measure of relatedness, the measure of relatedness could be zero; that is, claim 1 covers selecting one or more advertisements that are not at all related to one or more of the items in the main portion of the generated display. Accordingly, the entire argument that the claimed process is not directed to an abstract idea but rather a technical improvement whereby one or more advertisements are selected so as to be related to one or more of the items in the main portion of the generated display, 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 6 Appeal2016-007591 Application 12/645,482 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 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."' Id. ( 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 user interface with a computer who do 7 Appeal2016-007591 Application 12/645,482 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 Corporation Pty. Ltd. V. CLS Bank International 573 U.S _(2014)., selecting and displaying the advertisement in a user interface are well-understood, routine and conventional activities. Non-Final Act. 5. The Appellants argue that "[ c ]laim 1 [ ] describes selecting both advertisements and content items, not just advertisements. In addition, the measure of relatedness recited in claim 1 enables the selection of advertisements and content items that are related to one another." App. Br. 8. 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" (Non-Final Act. 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 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 2-21 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 Lending Tree, 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 8 Appeal2016-007591 Application 12/645,482 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 1-21 under 35 USC§ 103(a) as being unpatentable over Partovi and Tokuda. We agree with the Appellants that "neither reference discloses a display including both social network content items and advertisements," as claimed. App. Br. 11. Claim 1 requires displaying two portions [that] contain different types of information: ( 1) "a main portion that comprises a plurality of social networking content items selected based on information about the user, wherein the social networking content items are associated with the user's connections in the social networking system;" and, (2) a supplemental portion that comprises "one or more advertisements based on a measure of relatedness of the selected advertisements to one or more of the items in the main portion of the generated display, wherein each advertisement is associated with an ad payment to be made by a sponsoring advertiser for presenting the advertisement." The other independent claim, claim 10, contains similar limitations. The Examiner relies on Tokuda as evidence that it was known to provide a display of social networking content items selected based on information about the user. Non-Final Act. 7. According to the Examiner, Tokuda teaches displaying social network contents (Fig. 3, user content 300, for emails & IM, blogs, 0036, the user interface view 250 displays "320*240 (For website and email)" in a select size block that represents the file size selected by the 9 Appeal2016-007591 Application 12/645,482 user to upload the user content 1-N 106 using the processing parameter 202. The user interface view 250 also displays various images that may be uploaded by the user using the user content selector 204. 0039, The user interface view 350 also provides options ( e.g., Universal Resource Locator (URL) link, HyperText Markup Language (HTML) tag, IMG code) for sharing the user content 3 00 using email, instant messaging (IM), websites, web logs, forums, bulletin boards]). In addition, Tokuda discloses various pricing schemes to charge advertiser for presenting their advertisement [0004, CPM, CPC, CPA]). Non-Final Act. 7-8. We have reviewed said disclosures but do not see how Tokuda's content items are "selected based on information about the user" ( claim 1 ). All that Tokuda appears to disclose is the displaying of selected user content. As the Appellants point out, "Tokuda at best provides social networking advertisements that incorporate user content." App. Br. 12. But selecting user content per se is not the same as selecting content "based on user information"; the latter places on the selecting step a more narrow requirement than simply selecting user content. The question then is whether one of skill in the art given Tokuda's displaying of selected user content would have been led to "select[ ] based on information about the user" ( claim 1) as claimed. In that regard, given no other evidence or explanation as to how one would reach the claimed subject matter given the cited prior art, a prima facie case of obviousness has not been made out in the first instance, and accordingly, the rejection is not sustained. CONCLUSION The rejection of claims 1-21 under 35 U.S.C. § 101 as being directed to judicially-excepted subject matter is affirmed. 10 Appeal2016-007591 Application 12/645,482 The rejection of claims 1-21 under 35 U.S.C. § 103(a) as being unpatentable over Partovi and Tokuda is reversed. DECISION The decision of the Examiner to reject claims 1-21 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 11 Copy with citationCopy as parenthetical citation