Facebook, Inc.Download PDFPatent Trials and Appeals BoardApr 14, 202013765607 - (D) (P.T.A.B. Apr. 14, 2020) Copy Citation 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. 13/765,607 02/12/2013 Austin Daniel Haugen 26295-21201 1078 87851 7590 04/14/2020 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER LINDSEY III, JOHNATHAN J ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 04/14/2020 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 AUSTIN DANIEL HAUGEN, ZACHARY RAIT, ALEX HIMEL, and ALEXANDER SCOTT WYLER Appeal 2018-001406 Application 13/765,607 Technology Center 3600 Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and BRADLEY B. BAYAT, Administrative Patent Judges. WOOD, 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, 8–10, 13, 14 and 18–21. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Facebook, Inc. Appeal Br. 2. Appeal 2018-001406 Application 13/765,607 2 CLAIMED SUBJECT MATTER The claims are directed to initiating actions on a third-party system through interaction with a social networking system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: receiving content from a third-party system comprising a description of a first action by a first user of a social networking system on the third-party system for presentation to other users of the social networking system, the third-party system associated with a domain different than a domain of the social networking system; generating, by a processor of the social networking system, a story for presenting to users of the social networking system, the story comprising the description of the first action by the first user on the third-party system received from the third party system, the story including at least one interface element associated with a second action on the third-party system, the second action related to the first action; sending, from the social networking system, the story including the at least one interface element for display to one or more users of the social networking system connected to the first user in the social networking system; receiving, at the social networking system from a viewing user of the one or more users of the social networking system connected to the first user in the social networking system, an interaction with the at least one interface element of the story; and transmitting from the social networking system to the third-party system a request to perform the second action on the third-party system on behalf of the viewing user and an identification of the viewing user, where the third-party system performs the requested action without an additional request from the viewing user. Appeal 2018-001406 Application 13/765,607 3 REFERENCES Name Reference Date Jin US 2010/0217645 A1 Aug. 26, 2010 Schoen US 2011/0231240 A1 Sep. 22, 2011 Rangsikitpho US 2013/0007449 A1 Jan. 3, 2013 REJECTIONS Claims 1, 3–5, 8–10, 13, 14 and 18–21 are rejected under 35 U.S.C. § 101 as directed to non–statutory subject matter. Claims 1, 3–5, 8–10, 13, 14, and 18–21 are rejected under 35 U.S.C. § 103 as unpatentable over Schoen, Jin, and Rangsikitpho. OPINION Claims 1, 3–5, 8–10, 13, 14, and 18–21: Rejected as Directed to Non-Statutory Subject Matter Principles of Law To determine whether a claim falls within a judicially recognized exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and reaffirmed in Alice Corporation Proprietary LTD. v. CLS Bank International, 573 U.S. 208 (2014). For the first Alice step (Step 2A of the USPTO’s Patent Subject Matter Eligibility guidance, MPEP § 2106), we determine whether the claims at issue are directed to a patent-ineligible concept such as an abstract idea, law of nature, or natural phenomenon. Alice, 573 U.S. 208 (citing Mayo, 566 U.S. at 78– 79). If so, we advance to the second Alice step (Step 2B of the USPTO’s Patent Subject Matter Eligibility guidance) where “we consider the elements of each claim both individually and ‘as an ordered combination’ to Appeal 2018-001406 Application 13/765,607 4 determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application” of the otherwise patent-ineligible concept. Id. (quoting Mayo, 566 U.S. 78–79). We also apply the USPTO’s additional guidance on applying step 2A. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).2 The Revised Guidance establishes a “two-prong inquiry” for determining whether a claim is directed to a judicial exception. Id. at 54. In prong one, we determine whether the claim recites a judicial exception, such as a law of nature, natural phenomenon, or abstract idea. Id. If so, we look to whether the claim recites additional elements that integrate the judicial exception into a practical application. Id. at 50. Thus, a claim is directed to a judicial exception only if the claim recites a judicial exception and does not integrate that exception into a practical application. Id. At that point we look to whether the claim adds a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional activity in the field or whether the claim simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Id. at 56.3 2 Available at https://www.govinfo.gov/content/pkg/FR-2019-01- 07/pdf/2018-28282.pdf. 3 The Revised Guidance supersedes Manual of Patent Examining Procedure (“MPEP”) § 2106.04(II) and also supersedes prior USPTO patent-eligibility guidance. See Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”). Accordingly, Appellant’s arguments challenging the sufficiency of the Examiner’s Appeal 2018-001406 Application 13/765,607 5 The Revised Guidance also clarifies what constitutes an “abstract idea.” Under this guidance, a matter will be treated as an abstract idea if it falls within the following specific groupings: (a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; (b) Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Id. at 52 (footnotes omitted). “Claims that do not recite matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas” except in rare circumstances. Id. at 53. Discussion Appellant argues the appealed claims as a group. Appeal Br. 5–9. We select claim 1 as representative of the group, and decide the appeal on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv). Step 2A, prong 1 We first consider whether claim 1 recites a judicial exception. The first three steps of claim 1 recite: (1) receiving content regarding a first rejection will not be addressed to the extent those arguments are based on now superseded USPTO guidance. Appeal 2018-001406 Application 13/765,607 6 user’s first action on a third-party system; (2) generating a story that describes the first action and that contains an “interface element” through which a related second action may be initiated; (3) sending the story to a user that is connected to the first user (i.e., a “second user”); and (4) receiving the second user’s interaction with the interface element. Under the broadest reasonable interpretation, these steps recite delivering to a user a message that is tailored to the user based on the user’s connections on a social networking system, which is a form of targeted advertising. For example, the Specification describes an embodiment in which a first user subscribed to a social networking system makes a purchase on a third-party system; the third-party system notifies the social networking system of the first user’s purchase; the social networking system sends a “story” to the first user’s contacts describing the first user’s purchase, along with an interface element that allows the contacts to make the same purchase from the third-party system from the social networking system. Spec. ¶¶ 13–18, 28; see also Fig. 1 (illustrating a similar embodiment involving a movie rental). The stated purpose of this system is to “encourage additional users to interact with the third-party system,” i.e., to make additional purchases, which is the general purpose of commercial advertisements. As such, this concept falls within the “certain methods of organizing activity” grouping of abstract ideas. See Revised Guidance, 52 (describing “advertising, marketing or sales activities or behaviors” as one of the “certain methods of organizing human activity” considered to be an abstract idea); see also Affinity Labs of Texas LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (“‘customizing information based on . . . information known about the user’ is an abstract idea”) (quoting Intellectual Ventures I LLC v. Appeal 2018-001406 Application 13/765,607 7 Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (alterations in original)). Accordingly, we determine that claim 1 recites a judicial exception, i.e., an abstract idea. Step 2A, prong 2 Having determined that claim 1 recites a judicial exception, we next consider whether claim 1 recites additional elements that integrate the judicial exception into a practical application. Here, beyond the judicial exception, the claim recites “transmitting” to the third party system a request to perform the second action on the second user’s behalf. This element relates to the sending and receiving of data, which is insignificant extra- solution activity. See MPEP § 2106.05(g); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (finding abstract steps for “gathering and analyzing information of a specified content, then displaying the results”). Claim 1 also recites generating a story by “a processor.” Neither the claim nor the Specification imposes any particular structural limitations on the claimed processor. Indeed, the Specification makes clear that the claimed method may be performed on a “general-purpose computing device.” Spec. ¶ 51. “[R]ecitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR, 773 F.3d at 1256. Appellant argues that because claim 1 requires that “a user take[] an action in one domain from another domain, claim 1 ‘address[es] a technical challenge that is fundamentally rooted in Internet technology.” Appeal Br. 6–7 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). It is true that limitations that recite improvements in the functioning of a computer, or to another technology or technical field, may Appeal 2018-001406 Application 13/765,607 8 indicate that the limitations integrate the judicial exception into a practical application of the judicial exception. Revised Guidance, 54–55. In DDR Holdings, the court found that the claims were patent eligible because they transformed the manner in which a hyperlink typically functions to resolve a problem that had no “pre-Internet analog.” DDR Holdings, 773 F.3d at 1258. The court cautioned, however, “that not all claims purporting to address Internet-centric challenges are eligible for patent.” Id. For example, the DDR Holdings court distinguished the patent-eligible claims at issue from claims found patent-ineligible in Ultramercial. See id. at 1258–59 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014)). As noted there, the Ultramercial claims were “directed to a specific method of advertising and content distribution that was previously unknown and never employed on the Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715–16). Nevertheless, those claims were patent ineligible because they “merely recite [d] the abstract idea of ‘offering media content in exchange for viewing an advertisement,’ along with ‘routine additional steps such as updating an activity log, requiring a request from the consumer to view the ad, restrictions on public access, and use of the Internet.”’ Id. Here, like in Ultramercial, claim 1’s invocation of different domains merely applies the judicial exception to a particular technical environment— the Internet. Limitations that “[g]enerally link[] the use of the judicial exception to a particular technological environment” do not integrate the judicial exception into a practical application. Revised Guidance, 54–55. Therefore, these steps do not, alone or in combination, integrate the recited judicial exception into a practical application. Accordingly, we proceed to Step 2B. Appeal 2018-001406 Application 13/765,607 9 Step 2B Having determined that claim 1 is directed to a judicial exception, we next consider under Step 2B whether claim 1 includes additional elements or a combination of elements that provide an “inventive concept,” i.e., whether claim 1 includes specific limitations beyond the judicial exception that are not “well-understood, routine, conventional” in the field. Revised Guidance, 56. In doing so, we recognize that “[t]he inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art,” because “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.” BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). As discussed in the previous section, claim 1 recites generating a story by “a processor,” which the Specification describes at a high level of generality. Spec. § 51. A limitation requiring a generic processor does not provide an inventive concept to a claimed judicial exception. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent- eligible subject matter”). Claim 1 also requires the third party system and the social networking system to be associated with different domains, which constitutes the application of the judicial exception to the Internet. Limiting the judicial exception to the Internet requires only “routine, conventional activity” that is insufficient to “transform the nature of the claim into patent-eligible subject matter.” Ultramercial, 772 F.3d at 715. Considering these additional Appeal 2018-001406 Application 13/765,607 10 limitations alone, and in combination, we determine that they do not provide an inventive concept to the judicial exception to which claim 1 is directed. In sum, we agree with the Examiner that claim is directed to patent- ineligible subject matter, and sustain the Examiner’s rejection of claims 1, 3–5, 8–10, 13, 14, and 18–21 under 35 U.S.C. § 101. Claims 1, 3–5, 8–10, 13, 14, and 18–21: Rejected as Unpatentable over Schoen, Jin, and Rangsikitpho Appellant argues the claims subject to this rejection as a group. Appeal Br. 9–14. We select claim 1 as representative of the group, and decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv). As an initial matter, Appellant argues in the Reply Brief that the Examiner improperly relies on new evidence in the Examiner’s Answer in support of this rejection. Reply Br. 2–3. According to Appellant, the Examiner cites for the first time in the Answer: (1) paragraphs 22, 39, and 73–76 of Jin for the “generating” step of claim 1; (2) paragraphs 74–75 of Jin and paragraph 103 of Schoen for the “receiving” step; and (3) paragraph 16 of Rangsikitpho for the “transmitting” step. Id. Appellant contends that under 37 C.F.R. § 41.39(a)(2), the Examiner should have designated this rejection as a new ground of rejection. Section 41.39(a)(2) states in relevant part: For purposes of the examiner’s answer, any rejection that relies upon any Evidence not relied upon in the Office action from which the appeal is taken (as modified by any advisory action) shall be designated by the primary examiner as a new ground of rejection. The examiner must obtain the approval of the Director to furnish an answer that included a new ground of rejection. Appeal 2018-001406 Application 13/765,607 11 37 C.F.R. § 41.39(a)(2). But any request for review of the Examiner’s failure to designate a rejection as a new ground of rejection in the Examiner’s answer “must be by way of a petition to the Director under § 1.181 of this title filed within two months from the entry of the examiner’s answer and before the filing of any reply brief.” 37 C.F.R. § 41.40(a). Appellant’s failure to do so “constitutes a waiver of any arguments that a rejection must be designated as a new ground of rejection.” Id. In any event, Appellant has not alleged that it has been injured by the Examiner’s citations to these additional portions of the cited references in the Examiner’s Answer. On the contrary, Appellant appears to have fully responded to these citations in its Reply Brief. Reply Br. 5–13.4 As for the merits, we have thoroughly reviewed each of Appellant’s arguments for patentability of claim 1. However, we are in agreement with the Examiner that the claimed subject matter of representative claim 1 would have been obvious to one of ordinary skill in the art in view of Schoen, Jin, and Rangsikitpho. Accordingly, we sustain the Examiner’s rejection for essentially those reasons expressed in the Final Action and Answer, and we add the following primarily for emphasis. Appellant argues, among other things, that Jin’s engagement interface does not correspond to the claimed interface element associated with a second action on the third-party system, the second action related to the first action. Appeal Br. 9–10. According to Appellant, because Jin’s engagement interface relates to an action “within the social network,” Jin’s 4 Appellant also appears to be the applicant in at least the Jin reference (Jin, code (76)), so it is reasonable to presume Applicant’s familiarity with that reference. Appeal 2018-001406 Application 13/765,607 12 action is not on the third-party system or related to the first action. Id. at 10 (citing Jin ¶ 24). In response, the Examiner notes that “Jin teaches that the engagement interface on the social network website ‘may provide a link to an external website in addition to the call to action and the link to perform the action within the social network.’” Ans. 9 (citing Jin ¶ 39). The Examiner further responds that “Jin clearly teaches that the links included in the engagement interfaces relate to the content displayed in other parts of the social advertisements,” and that “incorporating an engagement interface— comprising a call to action, a link to perform an action within a social network, and a link to an external website—in the social stories previously taught by Schoen would have suggested to one having ordinary skill in the art that the newly incorporated links would also relate to the content of the attached social story.” Id. at 10 (citing Jin ¶¶ 73–76). In its Reply, Appellant asserts that “[e]ven if this new evidence showed exactly what the examiner alleges, it would not be sufficient to show the claimed limitation, since the claim recites ‘the story including [the] at least one interface element,’ i.e., the story generated earlier in this same element.” Reply Br. 5. Thus, according to Appellant, “even if Jin shows an ‘engagement interface’ with a link to a third party interface, that is not sufficient to show a story including the at least one interface. Jin is admitted as not showing stories, and Schoen is relied upon for that aspect instead.” Id. at 6. This argument is not persuasive, as it constitutes an attack on an individual reference when the Examiner relies on a combination of references to teach the “generating” element. See In re Merck & Co., Inc., 800 F.2d 1091, 1097–98 (Fed. Cir. 1986) (“Non-obviousness cannot be Appeal 2018-001406 Application 13/765,607 13 established by attacking references individually where the rejection is based upon the teachings of a combination of references.” (citations omitted)).5 Appellant similarly argues that the combination of references does not teach “sending” the claimed story because Schoen does not disclose the claimed user interface and Jin does not disclose the claimed story. Appeal Br. 11– 12. But, again, the Examiner relies on a combination of Schoen and Jin to teach this step, not on each reference individually. Appellant also argues that “Rangsikitpho does not disclose or suggest ‘transmitting . . . a request to perform the second action on the third-party system on behalf of the viewing user.” Appeal Br. 13. According to Appellant, “Rangsikitpho describes ‘engagement windows,’ which act as a ‘communication channel’ for direct communication between the user and a third-party utility.” Id. Appellant contends that “opening the engagement window is not an action on the third party system on behalf of the viewing user, as claimed,” but rather, “it is an action to establish communication between the user and the third party utility. No action is taken on the third party system itself.” Id. The Examiner correctly responds that 5 Further, we agree with the Examiner that Jin teaches the claimed interface element associated with a second action on the third-party system, the second action related to the first action. For example, Jin teaches “[i]nteractive social ads,” or “engagement interfaces that utilize social aspects of the social network,” influence a user to respond to an advertiser’s message if the user learns that his or her “friends or other connections have also taken an action related to the advertiser.” Jin ¶ 73. Schoen also teaches this limitation. See Schoen ¶ 103 (“Beneficially, communicating a user action on a third party website 140 to the use’s connections on a social network system 100 may motivate these other users to perform a similar action. For example, notifying a user’s friends that a user has purchased a specific movie may prompt the friends to purchase the movie as well.”). Appeal 2018-001406 Application 13/765,607 14 “functionality provided by third party utilities away from the social networking site comprise actions that are performed on a third party system.” Ans. 14. The Examiner also responds (id. at 15), and we agree, that this argument improperly attacks Rangsikitpho individually when the rejection is based on a combination of references. See Final Act. 10 (Rangsikitpho proposed to modify the combination of Schoen and Jin “such that call-to-action and links in the engagement interfaces described by Jin are programmed to select and transmit a request for an engagement window [as taught by Rangsikitpho] to the third party, thereby allowing social network users to communicate (e.g., perform an action) with the third party without requiring the user to leave the social networking site”). Accordingly, for the above reasons, we sustain the Examiner’s rejection of claims 1, 3–5, 8–10, 13, 14, and 18–21 as unpatentable over Schoen, Jin, and Rangsikitpho. CONCLUSION The Examiner’s rejections of claims 1, 3–5, 8–10, 13, 14 and 18–21 under 35 U.S.C. §§ 101 and 103 are affirmed. More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–5, 8– 10, 13, 14, 18–21 101 Ineligible subject matter 1, 3–5, 8–10, 13, 14, 18–21 1, 3–5, 8– 10, 13, 14, 18–21 103(a) Schoen, Jin, and Rangsikitpho 1, 3–5, 8–10, 13, 14, 18–21 Appeal 2018-001406 Application 13/765,607 15 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed Overall Outcome: 1, 3–5, 8–10, 13, 14, 18–21 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 Copy with citationCopy as parenthetical citation