Facebook, Inc.

Patent Trials and Appeals Board

Apr 27, 2020

13759838 - (D) (P.T.A.B. Apr. 27, 2020)

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.
13/759,838 02/05/2013 Rong Yan 26295-20813 5126
87851 7590 04/27/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
SKHOUN, HICHAM
ART UNIT PAPER NUMBER
2169
NOTIFICATION DATE DELIVERY MODE
04/27/2020 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 RONG YAN, EYTAN BAKSHY, HAO ZHANG, and
HUAJING LI
Appeal 2019-001902
Application 13/759,838
Technology Center 2100
BEFORE JASON J. CHUNG, ADAM J. PYONIN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

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 2019-001902
Application 13/759,838

2
STATEMENT OF THE CASE
Introduction
The Application is directed to social networks that “optimize the
communication of sponsored story units, which include a sponsored story
and/or one or more related posts or activities,” and allow “advertisers or the
social networking system to modify selection of sponsored stories.”
Spec. ¶¶ 5, 6. A prior appeal, Appeal No. 2016-002372, was filed in this
application and decided on January 25, 2017.
Claims 1–20 are pending; claims 1, 11, and 17 are independent.
Appeal Br. 23–30. Claim 1 is reproduced below for reference (emphasis
added):
1. A method comprising:
storing, in a social networking system, a user profile
associated with a viewing user, the user profile identifying one
or more users of the social networking system connected to the
viewing user;
receiving a story request for a sponsored story unit, the
story request identifying content and a type of action to be
included in the sponsored story unit;
identifying interactions with objects by users of the social
networking system connected to the viewing user, the
interactions identified based on the content and the type of action
identified by the story request, the interactions representing
candidate interactions for sponsored stories that may be
generated;
generating, for each of the identified interactions, a
candidate sponsored stories based on the identified interactions,
each candidate sponsored story describing an interaction
performed by a user of the social networking system who is
connected to the viewing user;
determining, for each of the generated candidate
sponsored stories, a performance metric for the content of the
generated candidate sponsored stories, the performance metric
Appeal 2019-001902
Application 13/759,838

3
based on performance of at least one other sponsored story
including the content;
ranking, by a processor, the candidate sponsored stories
based on their respective performance metrics;
selecting a candidate sponsored story from among the
candidate sponsored stories based at least in part on the ranking;
generating the sponsored story unit including the selected
candidate sponsored story; and
presenting the sponsored story unit to the viewing user.

References and Rejections2
Claims 1, 2 and 4–20 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Kendall (US 2012/0109757 A1; May 3, 2012). Non-Final
Act. 6.
Claim 3 stands rejected under 35 U.S.C. § 103(a)3 as obvious in view
of Kendall and Chan (US 2008/0262931 A1; Oct. 23, 2008). Non-Final Act.
19.

ANALYSIS
Appellant argues the Examiner’s anticipation rejection is in error,
because Kendall uses “a click-through rate (which is in the list of
performance metrics from the specification),” but “Kendall does not disclose
using the click-through rate of another sponsored story (social ad) as a basis
for determining a performance metric for each generated candidate

2 The Examiner has withdrawn the eligibility rejection of claims 1–20. See
Ans. 3.
3 The heading of the rejection of claim 3 lists 35 U.S.C. § 102(e) as the
statutory basis; however, the rejection is one of obviousness. See Non-Final
Act. 19, 20.
Appeal 2019-001902
Application 13/759,838

4
sponsored story (social ad) at all, much less the click-through rate of a social
ad with the same ‘content,’ as claimed.” Appeal Br. 20.
“[A]n invention is anticipated if the same device, including all the
claim limitations, is shown in a single prior art reference. Every element of
the claimed invention must be literally present, arranged as in the claim.”
Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989)
(citations removed). Appellant’s claim 1 recites determining “a performance
metric for the content of the generated candidate sponsored stories, the
performance metric based on performance of at least one other sponsored
story including the content” (emphasis added). That is, consistent with the
Specification, claim 1 requires determining a performance metric for a
potential advertisement (generated candidate sponsored stories) based on
other, different, advertisements (other sponsored story) that had the same
content as the potential advertisement. See Spec. ¶¶ 43, 54.
We agree with Appellant that “the Office Action fails to demonstrate
that Kendall discloses a performance metric for the content of a candidate
sponsored story that is based on a different sponsored story including the
same content.” Reply Br. 8. The Examiner has not identified portions of
Kendall that discuss comparing the performance of a candidate sponsored
story with another sponsored story with same content. The Examiner cites
Kendall’s disclosure of the
performance metric is based on the per-click bid price weighted
by the use click likelihood (click-through-rate), based on the
most revenue value for an advertiser (an amount of revenue) and
based on the number of actions about a user’s connections such
as purchase of a particular item (frequency of interactions)).”
Non-Final Act. 8; Ans. 10; Kendall ¶¶ 73, 91. These cited portions,
however, describe performance metrics based on the advertiser information
Appeal 2019-001902
Application 13/759,838

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(e.g., advertiser revenue) and the user information (e.g., user’s purchase
history). See Kendall ¶¶ 73, 91. Neither of Kendall’s metrics relates to
other stories. On the record before us, we see no disclosure of performance
metrics based on “at least one other sponsored story including the content”
as recited in claim 1. Accordingly, we are persuaded the Examiner’s
anticipation rejection is in error.
We do not sustain the Examiner’s anticipation rejection of
independent claim 1, and independent claims 11 and 17 which recite similar
limitations. For the same reasons, we do not sustain the Examiner’s
rejections of the claims dependent thereon.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1, 2, 4–20 102 Kendall 1, 2, 4–20
3 103 Kendall, Chan 3
Overall
Outcome
1–20
REVERSED