Ex Parte Rajaram

Patent Trial and Appeal Board

Nov 13, 2017

13299322 (P.T.A.B. Nov. 13, 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.
13/299,322 11/17/2011 Giridhar Rajaram 26295-18984 5325
87851 7590 11/15/2017
Faoehnnk/Fen wi ok
EXAMINER
Silicon Valley Center SCHMUCKER, MICHAEL W
801 California Street
Mountain View, CA 94041 ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
11/15/2017 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 GIRIDHAR RAJARAM1
Appeal 2016-002396
Application 13/299,322
Technology Center 3600
Before ALLEN R. MacDONALD, JON M. JURGOVAN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is Facebook, Inc. App.
Br. 1.
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Application 13/299,322
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—3, 5—11, 13—16, 19, and 20.2 Claims 4, 12, 17, 18, 21, and 22 have
been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.3
CLAIMED INVENTION
The claims are directed to targeting advertisements to users of a social
networking system based on events. Spec. Title. Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A method comprising:
receiving targeting criteria for an advertisement on a
social networking system, where the targeting criteria specifies
an event and comprises a temporal component, a geographic
location component, and a conceptual component;
retrieving a plurality of content items associated with a
plurality of users of the social networking system, where the
plurality of content items are associated with the event, wherein
a retrieved content item further comprises a check-in event
received from a user device associated with a user of the social
networking system;
2 The Examiner noted that the claims may be allowable if rewritten to
overcome the rejections under 35 U.S.C. §§101 and 112, 2nd paragraph.
Final Act. 4.
3 Our Decision refers to the Specification (“Spec.”) filed November 17,
2011, the Final Office Action (“Final Act.”) mailed February 11, 2015, the
Amendment After Final under 37 C.F.R. § 1.312 filed May 6, 2015, as
acknowledged in the Advisory Action mailed May 22, 2015, the Appeal
Brief (“App. Br.”) filed July 6, 2015, the Examiner’s Answer (“Ans.”)
mailed October 27, 2015, and the Reply Brief (“Reply Br.”) filed December
22,2015.
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determining, by a computer processor, a targeting cluster
of users associated with the event for the advertisement based
on the retrieved plurality of content items;
determining for each user of the targeting cluster of users
a measure of closeness of the user to the temporal component,
the geographic location component, and the conceptual
component of the event, wherein the measure of closeness is a
measure of how closely information associated with the user
matches the temporal component, the geographic location
component, and the conceptual component of the event;
for each user of the targeting cluster of users,
determining a measure of likelihood that the user will attend the
event based at least in part on (1) a probability that other users
of the social networking system who have established
connections to the users in the social networking system will
also attend the event, and (2) one or more changes in the
determined measure of closeness of the user to the temporal
component, the geographic location component, and the
conceptual component of the event;
selecting a viewing user in the targeting cluster of users
based on the measure of likelihood that the selected viewing
user will attend the event;
modifying, by the social networking system, a bid price
for the advertisement based on the determined measure of
closeness of the user to the temporal component, the geographic
location component, and the conceptual component of the
targeting criteria of the advertisement; and
providing the advertisement for display to the viewing
user.
REJECTIONS4
Claims 1—3, 5—11, 13—16, 19, and 20 stand rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter. Final Act. 2.
4 Claims 17 and 18 were rejected under 35 U.S.C. § 112, second paragraph.
Final Act. 4. However, this rejection was withdrawn by cancellation of
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ANALYSIS
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012); In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009) (“Whether a claim is drawn
to patent-eligible subject matter under § 101 is an issue of law that we
review de novo.'”). Patentable subject matter is defined by 35 U.S.C. § 101,
as follows:
[wjhoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. Pty. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014). The rationale is that patents
directed to basic building blocks of technology would not “promote the
progress of science” under the U.S. Constitution, Article I, Section 8, Clause
8, but instead would impede it. Accordingly, laws of nature, natural
phenomena, and abstract ideas are not patent-eligible subject matter. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing
Alice, 134 S. Ct. at 2354).
claims 17 and 18 in the Amendment After Final under 37C.F.R. § 1.312
filed May 6, 2015, as acknowledged in the Advisory Action mailed May 22,
2015.
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The Supreme Court set forth a two-part test for subject matter
eligibility in Alice. 134 S. Ct. at 2355. The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76—77). If so, then the eligibility analysis proceeds to the
second step of the Alice!Mayo test in which we “examine the elements of the
claim to determine whether it contains an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 72, 79). The “inventive
concept” may be embodied in one or more of the individual claim
limitations or in the ordered combination of the limitations. Alice, 134 S. Ct.
at 2355. The “inventive concept” must be significantly more than the
abstract idea itself, and cannot be simply an instruction to implement or
apply the abstract idea on a computer. Alice, 134 S. Ct. at 2358. ‘“[W]ell-
understood, routine, [and] conventional activities] ’ previously known to the
industry” are insufficient to transform an abstract idea into patent-eligible
subject matter. Alice, 134 S. Ct. at 2359 (quoting Mayo, 566 U.S. at 73).
In this case, the recited method claims fall within the statutory
category of a “process” under 35 U.S.C. § 101. However, the Examiner
states the claims are directed to the abstract idea of targeted advertising by
location, time, and relevance. Final Act. 3. According to the Examiner,
targeted advertising is a fundamental economic practice, and is simply a
series of mathematical formulations and/or steps to organize what a human
would do with the same information (i.e., a human activity). Id. For these
reasons, the Examiner concludes the claims are directed to an abstract idea.
Id. Fundamental economic practices, certain methods of organizing human
activities, or mathematical relationships/formulas are identified as abstract
ideas according to case law from our reviewing courts in the 2014 Interim
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Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618, 74622
(Dec. 16, 2014).
The Examiner further determines the claims are not “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, or meaningful limitations beyond merely
linking use of an abstract idea to a particular technological environment. Id.
According to the Examiner, the claims are performed by a generically
recited computer/processor. Id. The Examiner states these limitations are
merely instructions to implement the abstract idea on a computer and require
no more than a generic computer to perform generic computer functions that
are well-understood, routine and conventional activities previously known to
the industry. Id.
First Step of Alice/Mayo Test
Appellant argues independent claims 1,11, and 16 are not directed to
an abstract idea. App. Br. 7—9, Reply Br. 2—6. Instead, Appellant
characterizes the claims as directed to the receipt, analysis (e.g., determining
a measure of likelihood that the user will attend an event), and processing of
data generated (e.g., selecting an advertisement based on the determined
measure of likelihood and providing the selected advertisement to the user)
with or received by a social networking system, and not simply “targeted
advertising” as alleged in the Office Action. Id. at 8. We are not persuaded
that Appellant’s claims are not directed to an abstract idea. “An abstract
idea can generally be described at different levels of abstraction.” Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Although, we
agree with the Examiner that the claims are more properly directed to the
abstract idea of event-based targeted advertising by location, time, and
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relevance (Final Act. 3), we note that even under Appellant’s lower level
characterization, the claims are directed to an abstract idea. See
FairWarningIP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093—1094
(Fed. Cir. 2016) (“collecting and analyzing information to detect misuse and
notifying a user when misuse is detected” is abstract); Elec. Power Grp.,
LLC v. Alstrom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (collecting
information, analyzing information, and presenting the results is abstract);
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n,
776 F.3d 1343 (Fed. Cir. 2014) (collecting data, recognizing data, and
storing data is abstract).
In analyzing subject matter eligibility, our reviewing courts have held
we should follow the doctrine of stare decisis, and look to decisions in
previous cases with similar fact patterns. Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016). Appellant argues this
case is similar to Example 2 of the U.S. Patent Office Examples of Abstract
Ideas available at a www.uspto.gov/patents/law/exam/abstract_idea_
examples.pdf (January, 2015), which summarizes the case of DDR Holdings,
LLCv. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014). App. Br. 9-10,
Reply Br. 6—7. Appellant argues the “social networking system” and
“computer processor” recited in the claims are analogous to the “computer
store containing data” and the “computer server” in DDR where the claims
were found to be patent-eligible. App. Br. 9—10. However, in DDR, all of
the steps or functions of the independent claims were carried out by a
technological element such as the “computer store,” “computer server,”
“processor,” or “data store.” That is not the case here. For example, the
“computer processor” is only recited in one limitation of method claim 1,
and the “social networking system” is only recited in three limitations in
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method claim 1. The remaining limitations are silent as to what or who is
performing the “retrieving,” “determining,” “selecting,” and “providing.”
App. Br. 20—21.
Instead, this case has greater similarity to Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709 (Fed. Cir. 2014). The claims there were directed to the
abstract idea of showing an advertisement before delivering free content. Id.
at 715. Our reviewing court determined that the claims at issue were devoid
of a concrete or tangible application, and lacking particularity. Id. The
claims on appeal here have similar issues. As mentioned, several of the
recited steps do not recite any technological element that performs them.
Like Ultramercial, many of the steps of the recited claims are lacking a
concrete and tangible application recited with particularity.
We also note that the method steps of the claims on appeal may be
carried out mentally with pencil and paper, without the aid of a computer.
Under such circumstances, our reviewing courts have found such claims to
be directed to abstract ideas. Gottschalk v. Benson, 409 U.S. 63 (1972);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011).
Second Step of Alice/Mayo Test
Appellant argues the claims recite additional elements that amount to
“significantly more” than the abstract idea embodied therein. App. Br. 13-
lb; Reply Br. 7—8. Specifically, Appellant states the following features
amount to “significantly more” than the abstract idea:
1) retrieving a plurality of content items associated with a
plurality of users of the social networking system, where the
plurality of content items are associated with the event, wherein
a retrieved content item further comprises a check-in event
received from a user device associated with a user of the social
networking system[;]
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2) determining, by a computer processor, a targeting cluster of
users associated with the event for the advertisement based on
the retrieved plurality of content items[;]
3) determining for each user of the targeting cluster of users a
measure of closeness of the user to the temporal component, the
geographic location component, and the conceptual component
of the event, wherein the measure of closeness is a measure of
how closely information associated with the user matches the
temporal component, the geographic location component, and
the conceptual component of the event[;]
4) for each user of the targeting cluster of users, determining a
measure of likelihood that the user will attend the event based
at least in part on (1) a probability that other users of the social
networking system who have established connections to the
users in the social networking system will also attend the event,
and (2) one or more changes in the determined measure of
closeness of the user to the temporal component, the geographic
location component, and the conceptual component of the
event[;]
5) selecting a viewing user in the targeting cluster of users
based on the measure of likelihood that the selected viewing
user will attend the event [; and]
6) providing the advertisement for display to the viewing user.
App. Br. 13—14. Of the stated features, only feature (2) is recited in the
claims as performed by a computer processor. Reciting the remaining
features without limiting them to the technical means for performing the
functions that are arguably an advance over conventional technology, is
ineffective to establish the claims recite “significantly more” than the
abstract idea of § 101. Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1351 (Fed. Cir. 2016). Furthermore, features (1) to (3), (5), and (6),
considered individually, appear to be “well-understood, routine, and
conventional activity” per Alice. In this regard, we note that advertisements
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on social networking systems to users known to be attending events were
well-known in the industry5, and Appellant does not contend otherwise.
Appellant further argues the claimed invention addresses problems
that are specific to the online environment, and addresses them with a
solution that only makes sense in this environment, per DDR. App. Br. 11—
14. Appellant contends no traditional business analog exists for the claimed
invention outside of interconnected computer networks or social networking
systems, and that the claims amount to more than applying an abstract idea
on the Internet. App. Br. 15—16. However, considering the manner in which
the method steps are recited in the claims, we do not agree with Appellant’s
contentions. Again, several steps of the method are not applied at all to
computer networks, social networking systems, or the Internet. Thus,
Appellant’s argument is not supported by corresponding language in the
claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (stating that
limitations not appearing in the claims cannot be relied upon for
patentability). Moreover, even assuming all of the limitations were
performed by a “computer processor” or “social networking system,” simply
performing an abstract business practice on the Internet or on a conventional
computer does not render the claim patent-eligible. DDR, 773 F.3d at 1256.
Furthermore, our reviewing courts have held the role of a computer in
a computer-implemented invention would be meaningful in a § 101 analysis
if it involved more than the performance of “well-understood, routine, [and]
conventional activities previously known to the industry.” Content
5 The U.S. Classification System for published applications and patents
includes targeted advertisements in class 705, subclasses 14.49-14.73. The
subclasses include targeted advertisements based on events (14.5), user
location (14.58), wireless devices (14.64), and online advertisements
(14.73).
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Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d
1343, 1347-48 (Fed. Cir. 2014) (citing Alice, 134 S. Ct. at 2357 (quoting
Mayo, 132 S. Ct. at 1294)). Because the recited steps that are performed by
a computer processor or social networking system are conventional
activities, Appellant’s argument is not persuasive.
Accordingly, we determine independent claims 1,11, and 16 are
directed to the abstract idea of event-based targeted advertising by location,
time, and relevance. The claims fail to recite “significantly more” than the
abstract idea. Thus, we conclude the claims are ineligible under 35 U.S.C.
§101.
Substantial Evidence
Appellant argues the Examiner’s rejection was improper under the
Administrative Procedures Act (“APA”) because it failed to meet the
“substantial evidence” standard. App. Br. 16—18. Specifically, Appellant
contends the Examiner provided no factual basis for the proposition that
targeted advertising is a fundamental economic practice and is simply a
series of mathematical formulations and/or steps for organizing what a
human could do with the same information (human activity), in concluding
the claims are drawn to an abstract idea. Id.
As noted, patent eligibility is a question of law reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012); In re
Ferguson, 558 F.3d 1359, 1363 (Fed. Cir. 2009). Appellant’s argument that
the Examiner failed to provide factual findings meeting the “substantial
evidence” standard is not persuasive because a determination of whether a
claim is directed to statutory subject matter under § 101 is a question of law.
In any case, we ascertain no error in the Examiner’s reasoning that the
claims are directed to targeted advertising by location, time, and relevance,
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and that targeted advertising is a fundamental economic practice6 as well as
a series of mathematical formulations (the claims recite determining
measures of closeness and measures of likelihood that a user will attend an
event) and/or steps to organizing what a human could do with the same
information (i.e., the human activity of organizing targeted advertising), and
are therefore drawn to an abstract idea. Final Act. 3. In addition, the
Examiner stated the claims are not “significantly more” than the abstract
idea because they do not recite an improvement to another technology or
technical field, an improvement to the functioning of a computer, or
meaningful limitations beyond generally linking the use of an abstract idea
to a particular technological environment. Id. The Examiner further noted
that those limitations that recite a computer processor involve generic
computer functions that are well-understood, routine, and conventional
activities previously known to the industry. Id. We agree with the
Examiner’s determinations, which were sufficient to give Appellant notice
of the thrust of the rejection and an opportunity to respond. See, e.g., In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, we determine the
Examiner’s rejection not to be arbitrary or capricious, or lacking in
6 See, e.g., The Targeting of Advertising, Marketing Science, Vol. 24, No.
3, Summer 2005, pp. 461—476 (“Advertising is one of the most important
decisions a marketer makes, and media purchasing is the largest element of
advertising spending. . . . Traditionally, the objective in media planning was
to minimize wasted advertising by reducing the quantity of advertising sent
to consumers who are not active in the category. However, firms can now
do much better than reduce advertising to nonusers. They have both the
know-how and the means to target advertising to segments of consumers
within a market.”)
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substantial evidence, but instead compliant with the APA (see particularly
§§ 556 and 557).
Remaining Claims
The remaining claims are dependent on independent claims 1,11, and
16. No separate arguments are submitted for the dependent claims. Thus,
for the reasons stated with respect to their independent claims, we affirm the
rejection of claims 2, 3, 5—10, 13—15, 19, and 20. 37 C.F.R.
§41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s rejection of claims 1—3, 5—11, 13—16, 19,
and 20 under 35 U.S.C. § 101.
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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