Ex Parte Posse et al

Patent Trial and Appeal Board

Feb 25, 2019

13707530 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/707,530 12/06/2012 Christian Posse
45839 7590 02/27/2019
Schwegman Lundberg & Woessner/ Linkedln/Microsoft
POBOX2938
MINNEAPOLIS, MN 55402
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.
3080.078US 1 9183
EXAMINER
WOODWORTH, II, ALLAN J
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
USPTO@slwip.com
slw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN POSSE, DEEP AK AGARWAL, ANMOL BHASIN,
ASHVIN KANNAN, JONATHAN DAVID TRAUPMAN, and
GYANDASACHDEVA
Appeal2017-003446
Application 13/707 ,530 1
Technology Center 3600
Before CYNTHIA L. MURPHY, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 2, 6-9, 13-16, and 20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appellants identify Linkedin Corporation as the real party in interest.
Appeal Br. 2.
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Application 13/707 ,530
ILLUSTRATIVE CLAIM
1. A method of improving an advertising system for a
social network system having a population of users, the
improving including automatically submitting a reduced bid to
the advertising system on behalf of an advertiser for advertising
space for presenting of an advertisement to an additional user,
the additional user being outside of a set of users comprising a
target audience for the advertisement, the advertiser having
agreed to automatically submit a standard bid to the advertising
system for advertising space for presenting of the advertisement
to the set of users, the method comprising:
identifying a plurality of attributes of the population of
users;
receiving a selection of an attribute of the plurality of
attributes to which a target value is to be broadly matched;
identifying the set of users based on an exact matching of
the target value to the attribute;
determining a correspondence of the advertisement to the
additional user based on a broad matching of the target value to
the attribute, the broad matching of the target value to the
attribute being based on a matching score corresponding to a
matching of an additional target value to the attribute, the
matching score representing a closeness of the target value to
the additional target value;
matching the advertisement to the additional user based
at least in part on the determining of the correspondence; and
submitting the reduced bid to the advertising system on
behalf of the advertiser for the advertising space for the
presenting of the advertisement to the additional user, the
reduced bid reduced from a standard amount based on the
matching score, one or more modules incorporated into the
social network system to configure the social network system to
perform the identifying of the plurality of attributes, the
receiving, the identifying of the set of users, the determining,
the matching, and the submitting, the one or more modules
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implemented by one or more processors of the social network
system.
REJECTIONS
I. Claims 1, 2, 6-9, 13-16, and 20 are rejected under 35 U.S.C.
§ 101 as ineligible subject matter. 2
II. Claims 1, 2, 7-9, and 14--16 are rejected under 35 U.S.C.
§ I02(b) as anticipated by Chan et al. (US 2011/0264522 Al, pub. Oct. 27,
2011) ("Chan"). 3
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
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. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
2 The rejection, based upon 35 U.S.C. § 101, set forth in the Non-Final
Office Action (pages 3-7) is withdrawn. See Answer 6. The Answer (pages
3-5) sets forth a new ground of rejection under 35 U.S.C. § 101.
3 The Non-Final Office Action also rejects claims 6, 13, and 20 under
35 U.S.C. § I02(b). See Non-Final Act. 8, 11, 14, 18. The Examiner's
Answer (page 6) withdraws the rejection of these claims.
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them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply"' these basic tools of scientific and technological work.
Alice Corp. v. CLS Bankint'l, 573 U.S. 208,217 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under this
judicial exclusion, involves a two-step framework for "distinguish[ing]
between patents that claim the buildin[g] block[ s] of human ingenuity and
those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention." Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called "abstract
idea"); the second step determines whether there are any "additional
elements" recited in the claim that ( either individually or as an "ordered
combination") amount to "significantly more" than the identified judicially
excepted subject matter itself. Id. at 217-18.
The USPTO recently published revised guidance on the application of
§ 101, in accordance withjudicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("2019
Revised Guidance"). Under the 2019 Revised Guidance, a claim is "directed
to" an abstract idea, only if the claim recites any of ( 1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes - without integrating such abstract idea into a "practical
application," i.e., without "apply[ing], rely[ing] on, or us[ing] the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
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monopolize the judicial exception." Id. at 52-55. A claim so "directed to"
an abstract idea constitutes ineligible subject matter, unless it recites an
additional element ( or combination of elements) amounting to significantly
more than the abstract idea. Id. at 56.
With regard to the first step of the Alice framework, the Examiner
states that independent claim 1 is "directed to the abstract idea of identifying
an amount to reduce a bid for presenting an advertisement matched to a user
by comparing how close a target value of a user attribute is to a user attribute
of the user." Answer 3. The Examiner regards this characterization of the
claim as being similar to the abstract idea identified in SmartGene, Inc. v.
Advanced Biological Laboratories, SA, 555 F. App'x 950, 955 (Fed. Cir.
2014) (non-precedential)- comparing new and stored information and
using rules to identify options. Id. According to the Examiner, the
identified abstract idea is manifest in the following claimed features of
claim 1:
identifying a plurality of attributes of the population of
users;
receiving a selection of an attribute of the plurality of
attributes to which a target value is to be broadly matched;
identifying the set of users based on an exact matching of
the target value to the attribute;
determining a correspondence of the advertisement to the
additional user based on a broad matching of the target value to
the attribute, the broad matching of the target value to the
attribute being based on a matching score corresponding to a
matching of an additional target value to the attribute, the
matching score representing a closeness of the target value to
the additional target value;
matching the advertisement to the additional user based
at least in part on the determining of the correspondence; and
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submitting the reduced bid to the advertising system on
behalf of the advertiser for the advertising space for the
presenting of the advertisement to the additional user, the
reduced bid reduced from a standard amount based on the
matching score.
Id. The Examiner states that these steps "can be performed in the human
mind, or by a human using pen and paper." Id. at 3--4 (quoting CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011)).
Viewed through the lens of the 2019 Revised Guidance, the
Examiner's description of the abstract idea ("identifying an amount to
reduce a bid for presenting an advertisement matched to a user by comparing
how close a target value of a user attribute is to a user attribute of the user"
(Answer 3)) may be characterized as an ineligible "[m]ental process[]."
2019 Revised Guidance, 84 Fed. Reg. at 52. The abstract idea identified by
the Examiner may also be regarded as being among the ineligible "[ c ]ertain
methods of organizing human activity," which include "commercial or legal
interactions" such as "advertising, marketing or sales activities or
behaviors." Id.
Addressing the second step of the Alice framework, the Examiner
determines that the additional claim elements of claim 1 (i.e., elements other
than those that embody the identified abstract idea) do not amount to
significantly more than the abstract idea; instead - whether regarded
individually or in combination - the additional elements provide no more
than instructions to apply the abstract idea in a generic computer
environment. Answer 4--5.
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As to the rejection of independent claims 8 and 15, as well as the
dependent claims in the Appeal, the Examiner relies upon substantially the
same reasoning as that provided for independent claim 1. Id. at 5.
The Appellants argue independent claims 1, 8, and 15 as a group. See
Reply Br. 2-5. 4 Claim 1 is selected for analysis herein. See 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
The Appellants dispute the Examiner's determinations that the claims
are directed to an abstract idea and that the claims do not include elements
amounting to significantly more than the abstract idea. See Reply Br. 1-11.
Regarding the Examiner's abstract-idea determination, the Appellants
argue that the abstract idea identified by the Examiner ("identifying an
amount to reduce a bid for presenting an advertisement matched to a user by
comparing how close a target value of a user attribute is to a user attribute of
the user" (Answer 3)) is "impermissibly imprecise" and "an impermissible
oversimplification" (Reply Br. 2). The Appellants contend that claim 1,
"when properly considered," is directed to:
improving an advertising system for a social network system
having a population of users, the improving including
automatically submitting a reduced bid to the advertising
system on behalf of an advertiser for advertising space for
presenting of an advertisement to an additional user, the
additional user being outside of a set of users comprising a
target audience for the advertisement, the advertiser having
agreed to automatically submit a standard bid to the advertising
system for advertising space for presenting of the advertisement
to the set of users.
4 Although the Reply Brief lacks page numbering, we regard the paper as
beginning on page 1 with the following pages numbered sequentially.
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Id. at 2-3. The Appellants argue that "[t]his interpretation is much more
nuanced and considered than the oversimplified statement that the Examiner
provides" and "carefully considers the elements and features recited by the
claim." Id. at 3.
The Appellants do not persuade us of error in the Examiner's
characterization of the claimed subject matter. Although the Appellants'
characterization is a different verbal expression, it is, in substance, quite
similar to that of the Examiner. Yet, contrary to the Appellants' assertion of
hewing more closely to the language of claim 1 (id.), the Appellants'
characterization omits the details of the claimed feature that the Examiner
describes as identifying the amount of bid reduction, "by comparing how
close a target value of a user attribute is to a user attribute of the user"
(Answer 3). In any event, "[a]n abstract idea can generally be described at
different levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016). Here, the Appellants do not point out a
deficiency in the Examiner's description.
The Appellants also argue that the Examiner's characterization of
claim 1 does not describe an abstract idea, because - unlike the SmartGene
and CyberSource cases cited by the Examiner - "the claims at issue in this
case cannot be performed mentally and are not the equivalent of human
mental work." Reply Br. 3. Specifically, the Appellants assert that the
claimed subject matter is inextricably bound to particular machinery: "the
human mind is not capable of mentally submitting a reduced bid for such
advertising space, much less performing ail of the recited operations in the
necessary time frame to control which advertisements are included in a
content page that is to be served to a user." Id. at 4. The Appellants'
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argument is unpersuasive, because it does not specifically address what the
Examiner has characterized as the abstract idea: "identifying an amount to
reduce a bid for presenting an advertisement matched to a user by comparing
how close a target value of a user attribute is to a user attribute of the user."
Answer 3. The Appellants do not explain why the Examiner's identified
abstract idea is not an example of human mental work. Instead, the
Appellants' argument relies upon features identified in the Specification
( e.g., "placing an advertisement in a content page") that are outside of what
the Examiner determines to be the abstract idea at issue. See Reply Br. 3--4
( quoting Spec. ,r 1 ).
The Appellants also argue that the claims "include significantly more
than any purported abstract concept." Id. at 4. However, the Appellants do
not identify any additional elements (i.e., other than the claim language
manifesting the abstract idea) that might satisfy the second step of the Alice
inquiry. The particular recitations of claim 1, which the Appellants contend
that "the Examiner appears to have disregarded" (id. at 5), encompass all the
claim language that the Examiner identifies as embodying the abstract idea
(see Answer 3).
The Appellants also assert that the claimed subject matter is patent-
eligible, because it concerns a particular problem that is unique to online
advertising, in the manner of DDR Holdings, LLC v. Hotels.com, LP, 773
F.3d 1245 (Fed. Cir. 2014). Id. at 10. Yet, the Appellants again rely upon
features that are not in claim 1 - the submission of "real-time bids ... in
response to a "determination that advertising space is available on a content
page that is about to be served to a user upon a request from the user," and
basing the winning bid( s) upon the "performance of the advertisement" or
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the "relevancy of the advertisement to keywords entered by a user." Id. at
10-11.
Insofar as the Appellants contend that the claims accomplish an
improvement to computer functionality, the Appellants rely upon features
that the Examiner identifies as the abstract idea- i.e., the submission of a
reduced bid for presenting an advertisement to an additional user outside the
target audience (id. at 8-10)-rather than any additional elements. See
BSG TechLLCv. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
("It has been clear since Alice that a claimed invention's use of the ineligible
concept to which it is directed cannot supply the inventive concept that
renders the invention 'significantly more' than that ineligible concept.")
In view of the foregoing, the Appellants do not identify any basis for
error in the Examiner's analysis, whereby any of the independent claims
might integrate the identified abstract idea into a "practical application," per
Step 2A, Prong Two, of the 2019 Revised Guidance, 84 Fed. Reg. at 54--55.
Further, although the Appellants argue that "a generic machine would
be incapable of performing the recited operations," the Appellants refer to
features disclosed in the Specification that are not included in the
independent claims. Reply Br. 5-6 ( citing Spec. ,r 19 and Fig. 2) ("Here, the
Examiner ignores whole swaths of the application, including, at least FIG. 2
and its corresponding text (see, e.g., paragraph [0019]), which describe
various example modules that are incorporated into the social networking
system implement the recited operations and to improve (i.e., specially
configure) the advertising system.") Specifically, the independent claims do
not recite the "profile module," "targeting module," "selection module,"
"matching module," "advertising module," "conversion module," and
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"recommendation module" described in paragraph 19 and Figure 2 of the
Specification. Spec. ,r 19, Fig. 2. Therefore, the Appellants do not show
error, on the Examiner's part, in applying the second step of the Alice
framework ("Step 2B" of the 2019 Revised Guidance, 84 Fed. Reg. at 56-
57).
Based upon the analysis herein, we are not persuaded of error in the
rejection of independent claims 1, 8, and 15. Nor are we persuaded of error
in the rejection of any of the dependent claims, none of which is argued
separately. We sustain the rejection of claims 1, 2, 6-9, 13-16, and 20 under
35 U.S.C. § 101.
Anticipation
The Appellants present several arguments for error in the anticipation
rejection addressing independent claims 1, 8, and 15 as a group. Appeal
Br. 26. Claim 1 is selected for analysis herein. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Among the arguments, the Appellants contend that the Chan reference
does not disclose claim 1 's "reduced bid" that is "reduced from a standard
amount based on the matching score." Appeal Br. 26.
We agree that the Examiner has not identified disclosure in Chan that
teaches the claimed implementation of a "standard amount." The Examiner
cites to paragraphs 50 and 64 of Chan, as teaching the identified limitation.
Non-Final Act. 10, Answer 14--15. Paragraph 50 of Chan describes an
"effective bid price" that "can equal the actual bid price or the actual bid
price subject to a variable price adjustment process (up or down)." Chan
,r 50. Chan explains:
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For example, a variable price adjustment can be used to adjust
an actual advertisement bid price based on a multitude of
factors, including, but not limited to, campaign spending of the
advertiser, cost per acquisition/transaction, clicks or
impressions per advertisement billing, affiliate campaigns,
conversion ratios, and so on. Additionally, the actual bid price
may be varied based on targeting details such as user attributes
or demographic data (additionally, a multi-phase regression
analysis may [be] performed to identify influential variables for
targeting advertisements), social targeting criteria ( such as the
first ton-th degree social connections, social groups, etc.),
social behavior/interaction data ( e.g., interaction or feedback
patterns collected from social data and advertisement
interactions as described below), or the like.
Id. Similarly, paragraph 64 of Chan refers to "adjust[ing] a bid price up or
down" using an "adaptive algorithm":
An advertisement may then be processed according to the
adaptive algorithm at [step] 706 [ of Fig. 7]. In one example, a
feature vector (i.e., the targeting details of the advertisement)
may be processed by the adaptive algorithm to identify user
demographic or social attributes that are likely to interact with
the advertisement in a desired manner. That is, by training or
tuning the adaptive algorithm on previous interaction data in
[step] 704, the algorithm can discover or identify users at [step]
708 that may exhibit similar behavioral and interaction patterns
and place advertisements accordingly ( or at least use the
information in a bidding process as described, e.g., to weigh or
adjust a bid price up or down).
Id. ,r 64. Yet, these portions of Chan do not disclose a "reduced bid" that is
"reduced from a standard amount based on the matching score," as claimed
in claim 1. (Emphasis added).
Therefore, we are persuaded of error in the rejection of independent
claims 1, 8, and 15, such that we do not sustain the rejection of claims 1, 2,
7-9, and 14--16 under 35 U.S.C. § 102(b).
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DECISION
We AFFIRM the Examiner's decision rejecting claims 1, 2, 6-9, 13-
16, and 20 under 35 U.S.C. § 101.
We REVERSE the Examiner's decision rejecting claims 1, 2, 7-9,
and 14--16 under 35 U.S.C. § 102(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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