Facebook, Inc.

Patent Trials and Appeals Board

Jan 24, 2022

2021002723 (P.T.A.B. Jan. 24, 2022)

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. 15/645,184 07/10/2017 Luxi Guo 26295-35425/US 7944 87851 7590 01/24/2022 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER BUSCH, CHRISTOPHER CONRAD ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 01/24/2022 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): fwfacebookpatents@fenwick.com ptoc@fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LUXI GUO, ALEKSEY SERGEYEVICH FADEEV, and LIANG XU ____________ Appeal 2021-002723 Application 15/645,184 Technology Center 3600 ____________ Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and BRUCE T. WIEDER, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3-5, 9, 10, 13, 15, 16, and 18-28. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Facebook, Inc. (Appeal Br. 2). Appeal 2021-002723 Application 15/645,184 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to generally to the distribution and presentation of content items by an online system (Spec., para. 1). Claim 1, reproduced below with the italics added, is representative of the subject matter on appeal. 1. A computer-implemented method comprising: sending, to a plurality of client devices, content items for display, wherein each of the plurality of client devices is configured to return user interaction data and viewability signals, wherein the viewability signals for a content item displayed on a client device indicates a likelihood that a user viewed the content item when presented via the client device, the likelihood determined based on one or more of: an amount of time the content item was displayed on a display screen of the client device or a size of the content item that was displayed on the display screen of the client device; receiving from the plurality of client devices, the user interaction data and the viewability signals for the content items sent to the client devices; determining based on the received user interaction data and the viewability signals, a mapping from a plurality of user interaction values to a plurality of viewability values, wherein the plurality of user interaction values comprise click through rates (CTRs); sending, to one or more client devices, one or more content items for display, wherein at least one client device of the one or more client devices executes instructions to display the content items, wherein the executed instructions fail to provide viewability signals; receiving a request, from at least one client device of the one or more client devices, for viewability values of the one or more content items; and responsive to the at least one client device failing to provide the viewability signals: Appeal 2021-002723 Application 15/645,184 3 determining a CTR associated with a content item of the one or more content items displayed at the at least one client device; determining, based on the mapping, an estimated viewability value for the content item corresponding to the CTR; and sending the estimated viewability value to the at least one client device. THE REJECTION The following rejection is before us for review: Claims 1, 3-5, 9, 10, 13, 15, 16, and 18-28 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.2 ANALYSIS Rejection under 35 U.S.C. § 101 The Appellant argues that the rejection of claim 1 is improper because the claim is not directed to an abstract idea (Appeal Br. 12-14; Reply Br. 2-4). The Appellant argues further that the claim is integrated into a practical application (Appeal Br. 14-18; Reply Br. 4-6). The Appellant also argues that the claim is significantly more than the alleged abstract concept (Reply Br. 7). 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2021-002723 Application 15/645,184 4 In contrast, the Examiner has determined that the rejection of record is proper (Final Action 2-9; Ans. 3-10). We agree with the Examiner. An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk . . . .”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India Appeal 2021-002723 Application 15/645,184 5 rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). In January 2019, the USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application, i.e., evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner Appeal 2021-002723 Application 15/645,184 6 that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (see Guidance, 84 Fed. Reg. at 54; see also MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)-(c), (e)-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must 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, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The Specification states that the claimed invention relates generally to the distribution and presentation of content items by an online system (Spec., para. 1). Here, the Examiner has determined that the claim sets forth “drawing correlations between content interaction values with content Appeal 2021-002723 Application 15/645,184 7 viewability values” as a method of organizing human activities and abstract concept (Ans. 3). We substantially agree with the Examiner. We determine that the claim sets forth the subject matter in italics above which describes the concept of: [1] “sending, to a plurality of client devices, content items for display”; [2] “receiving from the plurality of client devices, the user interaction data and the viewability signals for the content items”; [3] “determining . . . a mapping from a plurality of user interaction values to a plurality of viewability values, wherein the plurality of user interaction values comprise click through rates (CTRs)”; [4] “sending . . . one or more content items for display, wherein at least one client device of the one or more client devices executes instructions to display the content items, wherein the executed instructions fail to provide viewability signals”; [5] “receiving a request . . . for viewability values of the one or more content items”; [6] “responsive to the at least one client device failing to provide the viewability signals:” [7] “determining a CTR associated with a content item of the one or more content items displayed at the at least one client device”; [8] “determining, based on the mapping, an estimated viewability value for the content item corresponding to the CTR”; and [9] “sending the estimated viewability value to the at least one client device”; which sets forth mapping user interaction values in click through rates to viewability values for displayed content items and then using the mapped value of the click through rate when the viewability signal is not provided which is a mathematical concept in providing a mathematical mapped estimate, or a certain method of organizing human activities and fundamental economic Appeal 2021-002723 Application 15/645,184 8 practice in providing a viewabilty value for displayed images, i.e., a judicial exception. A method, like the claimed method, “that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (collecting information, analyzing it, and displaying results from certain results of the collection and analysis was held to be an abstract idea); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (“classifying and storing digital images in an organized manner” was held to be an abstract concept). We next determine whether the claim recites additional elements in the claim to integrate the judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 54-55. The Revised Guidance references MPEP §§ 2106.05(a)-(c) and (e)-(h). Here, the claims do not improve computer functionality, improve another field of technology, utilize a particular machine, or effect a particular physical transformation. Rather, we determine that nothing in the claim imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort to monopolize the judicial exception. For example, in the claim, the additional elements beyond the abstract idea are the recited “client devices.” The claimed limitations of “sending,” “receiving,” and “determining . . . a mapping,” as recited in the claim “do not purport to improve the functioning of the computer itself,” do not improve the technology of the technical field, and do not require a Appeal 2021-002723 Application 15/645,184 9 “particular machine.” Rather, they are performed using generic computer components. Further, the claim as a whole fails to effect any particular transformation of an article to a different state. The recited steps in the claim fail to provide meaningful limitations to limit the judicial exception. In this case, the claim merely uses the claimed computer elements as a tool to perform the abstract idea. Considering the elements of the claim both individually and as “an ordered combination” the functions performed by the computer system at each step of the process are purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. Thus, the claimed elements have not been shown to integrate the judicial exception into a practical application as set forth in the Revised Guidance which references MPEP §§ 2106.05(a)-(c) and (e)-(h). Turning to the second step of the Alice and Mayo framework, we determine that the claim does not contain an inventive concept sufficient to “transform” the abstract nature of the claim into a patent-eligible application. Considering the claim both individually and as an ordered combination, it fails to add subject matter beyond the judicial exception that is not well- understood, routine, and conventional in the field. Rather, the claim uses well-understood, routine, and conventional activities previously known in the art and they are recited at a high level of generality. The Specification at paragraph 17 for example describes using a conventional computer system such as a desktop or laptop. The Specification at paragraph 19 for example describes using a conventional client device running on conventional phone platforms. Here, the claimed generic computer components which are used to implement the claimed method are well understood, routine, or Appeal 2021-002723 Application 15/645,184 10 conventional in the field. The claim has not been shown to be “significantly more” than the abstract idea. For these above reasons the rejection of claim 1 is sustained. Claims 3-5, 9, 10, 13, 15, 16, 18, and 19 are directed to similar subject matter and the rejection of these claims is sustained for the same reasons given above. We reach the same conclusion as to independent system claim 20 and its dependent claim 21 drawn to similar subject matter. Here, as in Alice, “the system claims are no different in substance from the method claims. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.” Alice, 573 U.S. at 226. “[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea ‘while adding the words ‘apply it’’ is not enough for patent eligibility.” Id. at 223 (quoting Mayo, 566 U.S. at 72). The Appellant has provided separate arguments for claims 22-28 but largely merely argues what each claim recites. Regardless, the subject matter of these claims 22-28 is similar and related to the same concept as independent claim 1 discussed above and involve known computer functions such as providing backup data in the event of script code errors, missing web page instructions, the use of multi-touch attribution, using a plurality of content providers and categories to estimate values in a conventional manner. Accordingly, the rejection of these claims is affirmed for the same reasons given above. Appeal 2021-002723 Application 15/645,184 11 CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1, 3-5, 9, 10, 13, 15, 16, and 18-28 under 35 U.S.C. § 101. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-5, 9, 10, 13, 15, 16, 18-28 101 Eligibility 1, 3-5, 9, 10, 13, 15, 16, 18-28 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED