Ex Parte Schoen

Patent Trial and Appeal Board

May 8, 2018

13316149 (P.T.A.B. May. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/316,149 12/09/2011
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
05/10/2018
FIRST NAMED INVENTOR
Kent Schoen
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.
26295-18557 7913
EXAMINER
SCHMUCKER, MICHAEL W
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
05/10/2018 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 KENT SCHOEN
Appeal2017-001515
Application 13/316, 149 1
Technology Center 3600
Before ST. JOHN COURTENAY III, THU A. DANG, and
CARLL. SILVERMAN, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 4, 5, 7-17, and 19, which constitute all claims
pending in the application. Claims 2, 3, 6, and 18 were previously canceled.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellant, the real party in interest is Facebook, Inc.
(App. Br. 2).
Appeal2017-001515
Application 13/316, 149
STATEMENT OF THE CASE
According to Appellant, the claimed invention relates to "providing
redacted advertisements, to users of a social networking system" (Spec. ,r 1 ).
Claim 1, illustrative of the invention and the subject matter of the appeal,
reads as follows:
1. A computer-implemented method comprising:
storing advertisements in a data store, the advertisements comprising
one or more components;
identifying a viewing user of an online system to receive an
advertisement;
selecting, from a plurality of advertisements in the data store for
which the viewing user meets one or more targeting criteria, an
advertisement from the data store to display to the viewing user, the
selected advertisement including a social endorsement;
responsive to selecting the advertisement for display to the viewing
user and before the advertisement is displayed to the viewing user:
determining an age of the viewing user;
responsive to determining that the age of the viewing user is less than
a threshold age, redacting, by a computer, one or more components of the
selected advertisement to produce a redacted advertisement, the redacting
compnsmg:
removing one or more selectable links from the selected
advertisement
based on content on a page associated with the link, and
removing the social endorsement from the selected advertisement based
on information about a user who provided the social endorsement,
wherein removing the social endorsement comprises:
removing the social endorsement from the selected advertisement
for display to the viewing user, responsive to determining
that an age of the user who provided the social endorsement is larger than a
second threshold age; and
sending the redacted advertisement for display to the viewing user.
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The Rejections on Appeal
1. Claims 1, 4, 5, 7-17, and 19 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter (App. Br. 6).
2. Claims 1, 4, 5, 7-15, 17, and 19 stand rejected under pre-AIA 35
U.S.C. § 112, first paragraph as not complying with the written description
requirement (id. at 12).
3. Claims 1, 4, 5, 11-13, and 17 stand rejected under pre-AIA 35
U.S.C. § I03(a) as being unpatentable over Dion (US 2012/0158531 Al;
published June 21, 2012), Csaszar (US5,937,404; issued: August 10, 1999 ),
Steelberg (US 2010/0217664 Al; published August 26, 2010), and Age of
Consent Definition, Adult Novelties Lingerie,
https://web.archive.org/web/20010116133300/http://ageofconsent.com/defin
itions.htm, (dated: 16 January 200I)(last visited April 26, 2018) ("Age of
Consent") (id. at 15).
4. Claims 7-9, and 19 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Dion, Steelberg, Age of Consent, and Purvy (US
2011/0258042 Al; published October 20, 2011) (id.).
5. Claim 10 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Dion, Csaszar, Steel berg, Age of Consent, and Chien (US
2010/0082360 Al; published April 1, 2010) (id.).
6. Claims 14--16 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Dion, Steelberg, and Age of Consent (id.).
ISSUES
The principal issues before us are whether the Examiner erred in
finding that:
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Application 13/316, 149
1. The claimed method comprising the steps of "storing" advertisement,
"identifying" a user, "selecting" an advertisement, "determining" an age of
the user, "redacting" components of the advertisement, and "removing"
endorsement from the advertisement ( claim 1) is directed to patent ineligible
subject matter.
2. The limitation "determining that an age of the user who provided the
social endorsement is larger than a second threshold age" (id.) is not
supported by Applicant's disclosure as originally filed.
3. The combination of Dion, Steelberg and Age of Consent teaches or
suggests "removing the social endorsement from the selected advertisement .
. . responsive to determining that an age of the user who provided the social
endorsement is larger than a second threshold age" (id.).
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Dion
1. Dion discloses an entertainment system that interacts with users to
provide for social networking and/or other services. Abstract. A database of
advertisements may be maintained and provide a mapping between
particular advertisement to be run when a keyword(s) is detected, etc. ,r 355.
Further, patron may program the system to automatically leave messages
upon the occurrence of a particular event. ,r 357. Because messages may be
inappropriate, techniques may be provided for "cleaning" undesirable
message. ,r 362. The system then scans for inappropriate language of
content (e.g., when age-appropriate filters are put into place), and partially
redact, edit the offending content. ,r 363. In an example, the entertainment
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system asks certain information to identify the user, wherein such
information includes, for example, age. ,r 112.
Steel berg
2. Steelberg discloses a system for generating endorsed advertisements
with editorial content. Abstract. The enhancement engine may determine
that the search value of certain keyword(s) have a negative effect on the
search value, and these terms may then be excluded or removed from the
advertisement. ,r 55. For example, if an endorser is associated closely with
a negative term, the endorser may be removed from the advertisement. Id.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments presented in this appeal. Arguments which Appellant could have
made, but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 4I.37(c)(l)(iv). On the record before us, we are not persuaded
the Examiner has erred. We adopt as our own the findings and reasons set
forth in the rejections from which the appeal is taken and in the Examiner's
Answer, and provide the following for highlighting and emphasis.
Rejection Under 35 USC§ 101
Appellant argues the Examiner erred in concluding the claims are
directed to an abstract idea and, therefore, constitute patent ineligible subject
matter. App. Br. 6-12. 2 Specifically, Appellant contends "[t]he claims are
2 Appellant argues all claims as a group for purposes of the ineligible subject
matter rejection, and we choose claim 1 as representative of the group.
37 C.F.R. § 4I.37(c)(l)(iv).
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beyond mere instructions of implementing targeted advertising on a
computer," but instead "are directed to a particular process for redacting
advertisements presented to underage users." Id. at 8. In particular,
according to Appellant, the invention's focus "is on determining when
information on an advertisement should be removed or redacted depending
on the age of the viewing user." Id. at 9.
Appellant then contends that the claims recite "significantly more"
than the judicial exception. Id. at 10. In particular, Appellant contends the
claimed "removing the social endorsement" step is "not a conventional
activity" and "is not disclosed by the cited references." Id. at 11. That is,
the claims "are beyond mere instructions of implementing the abstract idea
of age appropriate targeted advertising on a computer" (id.), because, "[f]or
traditional advertising, ... the provider cannot feasibly redact portions of the
advertising content based on particular readers/viewers." Id. at 12.
Appellant contends "this invention parallels the decision handed down in
DDR Holdings, as it solves an Internet-centric problem with a claimed
solution that is necessarily rooted in computer technology." Id. at 12, citing
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir.
2014).
Based on the record before us, we are not persuaded of Examiner
error.
Under 35 U.S.C. § 101, the Supreme Court has long interpreted the
statute to include an implicit exception: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. See, e.g., Alice Corp. Pty
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court,
in Alice, reiterated the two-step framework previously set forth in Mayo
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Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289,
1300 (2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step is
to "determine whether the claims at issue are directed to one of those patent-
ineligible concepts," such as an abstract idea, as the Examiner concludes in
this case. If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step 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." Alice, 134 S. Ct. at 2355
(quoting Mayo, 132 S. Ct. at 1297).
Here, the Examiner concludes that the claims "send targeted ads" and
therefore "are directed to Targeted Advertising/Marketing," and thus, are
directed to an "abstract idea." Ans. 6. As the Examiner concludes, the
claimed steps "are similar to the concept of 'comparing new and stored
information and using rules to identify options' that a court has determined
is an example of abstract idea in SmartGene." Ans. 6. (citing SmartGene,
Inc. v. Advanced Biological. Labs., 555 Fed. Appx. 950, 955 (Fed. Cir.
2014) ("the mental steps of comparing new and stored information and using
rules to identify ... options" are directed to an abstract idea)). We agree.
In particular, the claims recite the steps of "storing" data such as
advertisements, "identifying" users to receive the data, "selecting" which of
the data (which further includes endorsements) to display, "determining" the
age of the user identified, then "redacting" components of the selected data
(advertisement), and then sending the redacted data for display, wherein the
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redacting comprises removing certain data (links and endorsements)
responsive to a comparison of the determined age to a threshold ( claim 1 ).
As Appellant concedes, the claims are merely directed to a "process for
redacting advertisements" (i.e., data), which comprises determining when
data should be removed or redacted based on a comparison of the
determined age and a threshold. App. Br. 8-9. That is, representative claim
1 merely recites "storing," "selecting" "redacting" and "displaying" various
data responsive to a comparison of new determined information to stored
information (threshold). Claim 1.
As an initial matter, we conclude the claims are directed to
storing/collecting and analyzing various data for display. Claims involving
data collection and analysis are directed to an abstract idea. Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016) (holding
that "real-time performance monitoring of an electric power grid by
collecting data from multiple data sources, analyzing the data, and
displaying the results" are directed to a patent ineligible concept"); see also
In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Here, the analyzing data for redacting/removing of endorsement
from displayed data is similar to the abstract idea of manipulating
information discussed in Elec. Power, wherein the "focus of the asserted
claims ... is on collecting information, analyzing it, and displaying certain
results of the collection and analysis." Elec. Power Grp., 830 F.3d at 1354.
"[ A ]n invention directed to collection, manipulation, and display of data [is]
an abstract process." Intellectual Ventures I LLC v. Capital One Financial
Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
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Furthermore, as the Examiner points out, the steps are similar to the
concept of "comparing new and stored information and using rules to
identify options" in SmartGene. Ans. 6 (citing SmartGene, 555 F. App'x.
950). We fail to see any meaningful distinction between the concept set
forth in Smartgene, and the present application's comparison of determined
age of a user (new information) with stored threshold data to identify
whether or not ( option) to redact endorsements prior to display (App. Br. 8-
9).
On this record, we are agree with the Examiner that claim 1 is directed
to an abstract idea under step one of Alice.
As to Alice step two, although Appellant contends the claimed
"removing the social endorsement" step is "not a conventional activity"
because providers in traditional advertising "cannot feasibly redact portions
of the advertising content based on particular readers/viewers" (App. Br.
11-12), "the relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 134 S. Ct. at 2359. Here, as the Examiner points
out, the specification details that "any combination of a generic/ existing
computer system[] in hardware and/or software" can be programmed to
perform the method. Ans. 7 (citing Spec. at ,r,r 22-24, 51-54). The
Examiner specifically points to ,r 53 of the specification:
[ t ]his apparatus may be specially constructed for the required
purposes, and/or it may comprise a general-purpose computing
device selectively activated or reconfigured by a computer
program stored in the computer.
Id. (citing Spec. at ,r 53 (emphasis added)).
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Here, we agree with the Examiner's finding that the recited steps are
all generic computer functions (i.e., the manipulation and display of data)
that are well-understood, routine, and conventional activities previously
known to the industry. Id. That is, redacting information for display based
on the user's age does not add meaningful limitation to the idea of
displaying data beyond generally linking the method of manipulating data to
a particular technological environment and is not sufficient to transform the
claims into a patent-eligible application. Id.
Appellant also argues that the claims "do not seek to preempt all
methods for redacting/removing inappropriate components of an
advertisement" (Reply Br. 6), and thus are patent-eligible. Id. at 7. There is
no dispute that the Supreme Court has described "the concern that drives
[the exclusion of abstract ideas from patent eligible subject matter] as one of
pre-emption." Alice Corp., 134 S. Ct. at 2354. But characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the sole test for patent eligibility. "The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability" and "[ f]or this reason, questions
on preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility." Id.
For at least the aforementioned reasons, on this record, we sustain the
patent-ineligible subject matter rejection under 35 U.S.C. § 101 of claim 1
and claims 4, 5, 7-17, and 19 falling therewith.
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Rejection Under§ 112, First Paragraph
The Examiner rejects the claims under§ 112, first paragraph as failing
to comply with the written description requirement (Final Act. 2--4). In
particular, the Examiner finds:
Applicant's specification does not give any examples or
provide the necessary steps, flowcharts, and/or the algorithm
that performs the claimed "age and an age of a user who
provided the social endorsement is larger than a second
threshold age" function in sufficient detail such that one of
ordinary skill in the art can reasonably conclude that the
inventor had possession of the claimed subject matter.
Id. at 3.
In particular, the Examiner finds that Appellant's specification "only
describes the user and the viewing user being the same age." Id. at 3--4.
In response, Appellant contends:
[the claimed] second threshold age is supported in paragraph
[0035] of the specification which recites "[i]n one embodiment,
the component policy includes an age limit rule that specifies
that a viewing user may only view social endorsements from
users of the same age as the viewing user." This indicates that
the redaction module will prevent any viewing user who is
younger than the second threshold age (in this case, the age of
the user who provides the social endorsement) from viewing the
social endorsement.
App. Br. 13 (emphasis added).
We are not persuaded by Appellant's arguments because, here,
Appellant confirms (id.) the Examiner's finding that Appellant's
specification "only describes the user and the viewing user being the same
age." Final Act. 3--4 (emphasis added). That is, nothing in paragraph
[0035] referenced by Appellant provides support for "determining that an
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age of the user who provided the social endorsement is larger than a second
threshold age." Claim 1 ( emphasis added).
Our reviewing court guides the written description "must clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane) (citation and quotations omitted).
Here, we are not persuaded by Appellant's statements that upon reading the
Specification that "a viewing user may only view social endorsements from
users of the same age as the viewing user" (Spec. ,r 1 ), that those skilled in
the art would find support for "determining that an age of the user who
provided the social endorsement is larger than a second threshold age."
App. Br. 13.
On this record, we are not persuaded the Examiner erred.
Accordingly, we sustain the Examiner's rejection of representative claim 1,
and grouped claims 4, 5, 7-5, 17, and 19 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement.
Rejection Under Pre-AJA 35 USC§ 103(a)
Appellant contends, "the Age of Consent does not disclose removing
information 'responsive to determining that an age of the user who provided
the social endorsement is larger than a second threshold age"' as recited.
App. Br. 17. According to Appellant, although the Examiner "refers to
modifying Dion with Steel berg's social endorsements to provide a removal
of social endorsements," the cited sections of Steelberg "refers to removing
an endorsing who is associated with a negative term" and "not removal of an
endorser based on the endorser being above a threshold age." Id. Thus,
according to Appellant, the Age of Consent, combined with Dion and
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Steelberg, "at best teach removal of an endorser associated with negative
content if the viewer is under the age of consent." Id.
We have considered all of Appellant's arguments and evidence
presented. However, we disagree with Appellant's contentions regarding the
Examiner's rejections of the claims. We agree with the Examiner's
conclusion that claim 1 would have been obvious over the combined
teachings of Dion, Steelberg and the Age of Consent.
Here, we agree with the Examiner that Dion discloses and suggests
"determining an age of the viewing user." Final Act. 9 (citing Dion ,r 112);
FF 1. We also agree that Dion discloses and suggests "threshold via filters
for age-appropriateness and redaction." Id. ( citing Dion ,r,r 362-364). In
particular, Dion discloses a system that partially redacts, edits content using
age-appropriate filters. FF 1. Thus, we find no error with the Examiner's
reliance on Dion for teaching and suggesting removing data "responsive to
determining that an age of [ a user] is larger than a ... threshold age" as
recited in claim 1.
Further, we find no error with the Examiner's reliance on Steelberg
for teaching, or at least suggesting, "removing ... social endorsements based
on information about the user who provided the social endorsement." Final
Act. 11; FF 2. In particular, Steelberg discloses excluding or removing
content from an advertisement such as removing an endorser from the
advertisement. FF 2. Thus, we find no error with the Examiner's reliance
on Steelberg for teaching and suggesting "removing ... social endorsement
from ... selected advertisement for display to the viewing user," responsive
to determining information about the user who provided the social
endorsement, as recited in claim 1.
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We also agree with the Examiner's finding that the Age of Consent
teaches or at least suggests determining whether "certain communications
between adults and minors are illegal" wherein "it [is] illegal for . . . an
adult 'Who writes or uses vile, obscene, profane or indecent language, .... "
Final Act. 11-12. Accordingly, we agree with the Examiner that the
combination of Dion, Steel berg and the Age of consent teaches or at least
suggests the contested limitation.
The Supreme Court has determined that the conclusion of obviousness
can be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). The skilled
artisan would "be able to fit the teachings of multiple patents together like
pieces of a puzzle." Id. at 420.
Here, we find the skilled artisan would have found it obvious to
combine Steel berg's teaching and suggestion of removing social
endorsement from selected advertisement for display to the viewing user (FF
2), with Dion's teaching and suggestion of removing data responsive to
determining that the age of the user (FF 1 ), wherein the Age of Consent
teaches and suggests removing data responsive to determining that the age is
larger than a threshold age. Final Act. 11-12. The skilled artisan is "a
person of ordinary creativity, not an automaton." KSR, 550 U.S. at 421.
On this record, we find no error with the Examiner's rejection of
claim 1 over Dion, Csaszar, Steelberg, and Age of Consent. Appellant does
not provide substantive arguments for claims 4, 5, 7-17, and 19 separate
from those of claim 1 (App. Br. 17-18), and thus, we also sustain the
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rejections of claims 4, 5, 11-13, and 17 over Dion, Csaszar, Steelberg, and
Age of Consent; of claims 7-9, and 19 over Dion, Steel berg, Age of
Consent, and Purvy; of claim 10 over Dion, Csaszar, Steelberg, Age of
Consent, and Chien; and of claims 14--16 over Dion, Steelberg, and Age of
Consent. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's rejections of claims 1, 4, 5, 7-17, and 19
under 35 U.S.C. §§ 101 and 103; and of claims 1, 4, 5, 7-15, 17, and 19
under 35 U.S.C. § 112.
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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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