Facebook, Inc.

Patent Trials and Appeals Board

Sep 30, 2021

2020004951 (P.T.A.B. Sep. 30, 2021)

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.
14/846,720 09/04/2015 Wai Man Tong 2006.053US1 6590
160546 7590 09/30/2021
Mannava & Kang, P. C.
3201 Jermantown Road
Suite 525
Fairfax, VA 22030
EXAMINER
GOODWIN, SCHQUITA D
ART UNIT PAPER NUMBER
2459
NOTIFICATION DATE DELIVERY MODE
09/30/2021 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):
docketing@mannavakang.com
fb-pdoc@fb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAI MAN TONG, MAYANK KUMAR,
and GABRIEL ALLAN FRANCIS
Appeal 2020-004951
Application 14/846,720
Technology Center 2400
Before MARC S. HOFF, JAMES R. HUGHES, and
JASON J. CHUNG, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 1–6, 9–12, and 20 are pending, stand rejected, are appealed by
Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1
See Final Act. 1–2.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Facebook, Inc. See
Appeal Br. 1.
2 We refer to Appellant’s Specification (“Spec.”), filed Sept. 4, 2015; Appeal
Brief (“Appeal Br.”), filed Dec. 26, 2019; and Reply Brief (“Reply Br.”),
filed June 15, 2020. We also refer to the Examiner’s Final Office Action
Appeal 2020-004951
Application 14/846,720
2
CLAIMED SUBJECT MATTER
The claimed subject matter, according to Appellant, “relates generally
to online systems,” “such as a social networking system,” “and more
specifically to capturing information describing actions by online system
users performed outside of the online system.” Spec. ¶¶ 1–2. More
specifically, Appellant’s claims are directed to computer program products
and methods for tailoring content to a user by an online system (social
networking system). The online system receiving rules and requests for
content, selects a rule that corresponds to a user’s actions on a third-party
system, and stores an association between the user and an action on the
third-party system based on the selected rule. See Spec. ¶¶ 6–11; Abstract.
Claim 1 (directed to a method) and claim 20 (directed to a computer
program product) are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method comprising:
receiving, by an online system, one or more rules, each
rule identifying an action performed by a user of the online
system on a webpage from a third party system, the webpage
from the third party system including a tracking mechanism and
presented to the user on a client device, a rule identifying the
action performed by the user of the online system on the webpage
from the third party system corresponding to a combination of:
an identifier of the webpage from the third party system
including the tracking mechanism and presented to the user of
the online system by the client device, information identifying
content presented to the user of the online system by the client
device prior to presenting the webpage from the third party
system including the tracking mechanism, and one or more
characteristics of the client device the rule also comprising

(“Final Act.”), mailed Nov. 1, 2019; and Answer (“Ans.”) mailed Apr. 15,
2020.
Appeal 2020-004951
Application 14/846,720
3
content to render the tracking mechanism in the webpage from
the third party system;
receiving, by the online system, a request for content to
render the tracking mechanism included in the webpage from the
third party system, the request received from the client device
presenting the webpage from the third party system to the user of
the online system by the client device;
retrieving, by the online system, from the request for
content, the identifier of the webpage from the third party system
including the tracking mechanism and presented to the user of
the online system by the client device, an identifier of the user of
the online system, information identifying content presented to
the user of the online system by the client device prior to
presenting the webpage from the third party system including the
tracking mechanism, and one or more characteristics of the client
device;
selecting, by the online system, a rule from the one or more
rules that includes the identifier of the webpage from the third
party system including the tracking mechanism and presented to
the user of the online system by the client device, the information
identifying content presented to the user of the online system by
the client device prior to presenting the webpage from the third
party system including the tracking mechanism retrieved from
the request, and one or more characteristics of the client device
retrieved from the request, the selected rule comprising content
to render the tracking mechanism in the webpage from the third
party system; and
storing, by the online system, based on the selected rule,
an association between the identifier of the user of the online
system and the action performed by the user of the online system
on the webpage from the third party system including the
tracking mechanism and presented to the user of the online
system by the client device identified by the selected rule.
Appeal Br. 15–16 (Claims App.) (emphasis added).
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Application 14/846,720
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Pankajakshan et
al.
(“Pankajakshan”)
US 2012/0072228 A1 Mar. 22, 2012
Lindsay et al.
(“Lindsay”)
US 2012/0166520 A1 June 28, 2012
Noller et al.
(“Noller”)
US 2015/0088662 A1 Mar. 26, 2015
REJECTIONS3
1. The Examiner rejects claims 1–6, 10–12, and 20 under 35
U.S.C. § 103 as being unpatentable over Lindsay and Noller. See Final Act.
5–14.
2. The Examiner rejects claim 9 under 35 U.S.C. § 103 as being
unpatentable over Lindsay, Noller, and Pankajakshan. See Final Act. 14–16.
ANALYSIS
Obviousness Rejection of Claims 1–6, 10–12, and 20
The Examiner rejects independent claim 1 (as well as independent
claim 20, and dependent claims 2–6 and 10–12) as being obvious over
Lindsay and Noller. See Final Act. 5–9; Ans. 3–16. The Examiner relies on
Lindsay for teaching the online system (social networking system) receiving
rules, which identify an action performed by the user of the online system on
a webpage from a third party system, where each rule includes a
combination of elements (i.e., an identifier of the webpage, information

3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application
has an effective filing date after the AIA’s effective (March 16, 2013), this
decision refers to 35 U.S.C. § 103.
Appeal 2020-004951
Application 14/846,720
5
identifying the content presented, characteristics of the user’s client device),
as well as content to render a tracking mechanism of the webpage. See Final
Act. 5–6; Ans. 3–8.
Appellant contends that Lindsay and Noller do not teach the disputed
limitations of claim 1. See Appeal Br. 5–13; Reply Br. 3–10. Specifically,
Appellant contends, inter alia, that the Examiner-cited portions of Lindsay
do not teach a receiving and storing the rules that identify the actions
performed by the user (of the online system) on the webpage from the third
party system. More specifically, Appellant contends:
While Lindsay describes a social networking system receiving
information from a tracking pixel that identifies a user accessing
a web page advertisement included in a third party website,
Lindsay does not disclose or suggest that an online system stores
rules correlating an action performed by a user with different
combinations of information received from a tracking pixel.
Lindsay at [0019]. The pending claims recite, for example, an
online system receiving a rule that identifies “the action
performed by the user of the online system on the webpage from
the third party system corresponding to a combination of: an
identifier of the webpage from the third party system including
the tracking mechanism and presented to the user of the online
system by the client device, information identifying content
presented to the user of the online system by the client device
prior to presenting the webpage from the third party system
including the tracking mechanism, and one or more
characteristics of the client device.”
Reply Br. 5; see Appeal Br. 5–9; Reply Br. 5–6.
We agree with Appellant that the Examiner-cited portions of Lindsay
does not teach or suggest receiving and storing rules that identify the actions
performed on the webpage of the third party system. In particular, as
explained by Appellant, Lindsay describes a tracking pixel (on a third-party
website) sending an identifier associated with a user along with a web page
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Application 14/846,720
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advertisement identifier to a social networking system, where the social
networking system creates a log entry (storing the identifiers to indicate the
user has viewed the web page advertisement). See Appeal Br. 6–7; Reply
Br. 5–6. The Examiner does not explain sufficiently how Lindsay’s process
of creating a log entry would have suggested receiving (and storing) a rule
that identifies the action performed by the user that is, in turn, selectable by
the online system. The Examiner’s rejection essentially equates the recited
rules with storing data (log entries). Although the Examiner cites Noller for
the selecting step, there is no indication that Lindsay’s log entries could be
selectable.
Consequently, we are constrained by the record before us to find that
the Examiner erred in finding that the combination of Lindsay and Noller
renders obvious Appellant’s claim 1. Independent claim 20 includes
limitations of commensurate scope. Claims 2–6 and 10–12 depend from and
stand with claim 1. Thus, we do not sustain the Examiner’s obviousness
rejection of claims 1–6, 10–12, and 20.
Obviousness Rejection of Claim 9
The Examiner rejects claim 9 as being obvious in view of Lindsay,
Noller, and Pankajakshan. See Final Act. 14–16. The Examiner does not
suggest that the additional cited Pankajakshan reference cures the deficiency
of the Lindsay-Noller combination (supra). See Final Act. 16.
For the same reasons as claim 1, Appellant persuades us of error in the
Examiner’s obviousness rejection of claim 9. Therefore, we reverse the
Examiner’s obviousness rejection of claim 9.
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Application 14/846,720
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CONCLUSION
Appellant has shown that the Examiner erred in rejecting claims 1–6,
9–12, and 20 under 35 U.S.C. § 103. We, therefore, do not sustain the
Examiner’s rejections of claims 1–6, 9–12, and 20.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 10–
12, 20
103 Lindsay, Noller 1–6, 10–12,
20
9 103 Lindsay, Noller,
Pankajakshan
9
Overall
Outcome
1–6, 9–12,
20

REVERSED