Nipun Mathur

Patent Trials and Appeals Board

Mar 3, 2020

13777857 - (D) (P.T.A.B. Mar. 3, 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.
13/777,857 02/26/2013 Nipun Mathur 26295-22057 2614
87851 7590 03/03/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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 NIPUN MATHUR
Appeal 2018–004051
Application 13/777,857
Technology Center 3600
Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and
IRVIN E. BRANCH, Administrative Patent Judges.
BRANCH, Administrative Patent Judge.
DECISION ON APPEAL
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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 23–38, which are all of the pending
claims.2 See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to “selecting and serving advertisements
targeted to users of an online system while those users are not part of an
online session with the online system.” Spec. ¶ 1. Claim 23, reproduced
below with disputed limitations emphasized in italics, is illustrative of the
claimed subject matter:
23. A method comprising:
[a] maintaining a user profile for each of a plurality of
users of an online system, where each user profile stores a set of
user profile characteristics for one of the plurality of users of
the online system;
[b] receiving, at the online system, a request from an
advertiser to present an advertisement to one or more of the
plurality of users of the online system;
[c] receiving, at the online system, a targeted user profile
characteristic from the advertiser, where a user of the plurality
of users of the online system is eligible to be presented with the

1 We refer to the Specification, filed February 26, 2013 (“Spec.”); Final
Office Action, mailed March 10, 2016 (“Final Act.”); Appeal Brief, filed
January 24, 2017 (“Appeal Br.”); Examiner’s Answer, mailed January 5,
2018 (“Ans.”); and Reply Brief, filed March 5, 2018 (“Reply Br.”).

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Facebook, Inc. as the real party in interest.
Appeal Br. 2.
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advertisement if the user profile for the user contains the
targeted user profile characteristic;
[d] determining an impression opportunity to serve the
advertisement to a viewing user of the plurality of users of the
online system;
[e] determining that the user profile for the viewing user
cannot be identified because the viewing user does not have a
current online session with the online system;
[f] selecting a plurality of comparable users of the
plurality of users of the online system, where the comparable
users are selected based on the comparable users having
browsing histories that overlap a browsing history of the
viewing user, and where the comparable users have a current
online session with the online system;
[g] determining that the targeted user profile
characteristic is contained in the user profile of each of a
plurality of the selected comparable users;
[h] associating the targeted user profile characteristic
with the viewing user;
[i] determining that the viewing user is eligible to be
presented with the advertisement because the targeted user
profile characteristic has been associated with the viewing user;
and
[j] sending the advertisement for presentation to the
viewing user.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Wang
Doughty
US 2009/0216616 A1
US 2013/0124331 A1
Aug. 27, 2009
May 16, 2013

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REJECTIONS
Claim 38 stands rejected under 37 U.S.C. § 112, second paragraph,
because the term “the computer processor” lacks antecedent basis. Final
Act. 3.
Claims 23–38 stand rejected, under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement. Final Act. 5–
6.
Claims 23–38 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Final Act. 6–10.
Claims 23–38 stand rejected under 35 U.S.C. § § 103(a) as being
obvious over Doughty or the combination of Doughty and Wang. Final Act.
10–15.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
We have only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. To the extent consistent with our analysis herein, we adopt as
our own the findings and reasons set forth by the Examiner in: (1) the action
from which this appeal is taken; and (2) the Examiner’s Answer in response
to Appellant’s Appeal Brief and concur with the conclusions reached by the
Examiner. Final Act. 3, 5–15; see also Ans. 5–27. We highlight the
following for emphasis.
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35 U.S.C. § 112, SECOND PARAGRAPH
The Examiner rejects claim 38 because the term “the computer
processor” lacks antecedent basis. Final Act. 3. Appellant does not argue
this rejection of claim 38 with particularity. See generally Appeal Br. 6–24;
see also Reply Br. 2–7.
Because Appellant does not persuasively rebut the Examiner’s
rejection, we sustain the rejection.
35 U.S.C. § 112, FIRST PARAGRAPH
The independent claims each recite “determining an impression
opportunity.” The Examiner rejects all claims because this term “was not
described in the [S]pecification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor[], at the time the application was
filed, had possession of the claimed invention.” Final Act. 5–6. The
Examiner finds that “neither the claim nor the [S]pecification discloses
how to achieve the generic step/function; . . . any and/or all impression
opportunit(ies) intended in any/all ways to serve in any/all ways.” Id. at 6.
Appellant identifies paragraphs 6, 17, and 55 as disclosing this subject
matter (Appeal Br. 4) and argues that “‘determining an ad impression
opportunity’ is a well-known concept in online advertising and merely refers
to determining that there is an opportunity to serve an ad to a user. For
example, . . . including on web pages, in push notifications, within mobile
games, embedded in online videos, and many more.” (id. at 7). See also
Reply Br. 2 (The Appeal Brief “sets forth reasons how and why the
[S]pecification reasonably conveys how to achieve the features recited in
each determining limitation and . . . explains how and why, consistent with
case law, it is not necessary to spell out every detail of these limitations.”).
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We are unpersuaded of error because Appellant’s argument does not
address the substance of the written description requirement, focusing
instead on the enablement requirement, which was not the basis of the
rejection. See 35 U.S.C. § 112, second paragraph. Instead, here the
Examiner is looking for disclosed species for performing the claimed
functions.
Specifically, factors to consider include (a) whether the claim itself
recites limitations as to how the function is performed; and (b) whether the
Specification identifies a way of performing the claimed function, such as a
specific type of microcomputer or an algorithm, that defines the scope of the
functional claim language, without importing limitations from the
Specification into the claim. LizardTech, Inc. v. Earth Res. Mapping, Inc.,
424 F.3d 1336, 1343-46 (Fed. Cir. 2005); In re Hayes Microcomputer
Prods., Inc. Patent Litigation, 982 F.2d 1527, 1534 (Fed. Cir. 1992). To that
end, we note that independent claim 23 does not recite how the function is
performed. We also note that the Specification only identifies a general-
purpose computing device (Spec. ¶ 63) and no algorithm for “determining an
impression opportunity to serve the advertisement to a viewing user.”
Although Appellant’s argument in the Brief lists example of serving
the ad, Appellant fails to direct our attention to where these species are
specifically disclosed in the written description. Accordingly, we sustain the
rejection of all claims on this basis.
35 U.S.C. § 101
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
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obtain a patent therefor, subject to the conditions and requirements of this
title.” See 35 U.S.C. § 101. The U.S. Supreme Court, however, has “long
held that this provision contains an important implicit exception” that
“[l]aws of nature, natural phenomena, and abstract ideas are not patentable.”
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70
(2012) (quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question
of law, based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1166 (Fed. Cir. 2018).
To determine patentable subject matter, we undertake a two-part test.
“First, we determine whether the claims at issue are directed to one of those
patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217
(2014). “The inquiry often is whether the claims are directed to ‘a specific
means or method’ for improving technology or whether they are simply
directed to an abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1326 (Fed. Cir. 2017) (citation omitted). A court must be
cognizant that “all inventions at some level embody, use, reflect, rest upon,
or apply laws of nature, natural phenomena, or abstract ideas” (Mayo, 566
U.S. at 71), and “describing the claims at . . . a high level of abstraction and
untethered from the language of the claims all but ensures that the
exceptions to § 101 swallow the rule.” Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1337 (Fed. Cir. 2016). Instead, “the claims are considered in
their entirety to ascertain whether their character as a whole is directed to
excluded subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
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If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). The Court describes the second step as a search for “an
‘inventive concept’—i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Id. (quoting Mayo, 566
U.S. at 72–73).
In 2019, the Office published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance, 84 Fed. Reg.,” “Revised
Guidance,” or “Guidance”); see also USPTO, October 2019 Update:
Subject Matter Eligibility, available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019) (“Oct.
2019 Guidance”). Under the Revised Guidance, we look to whether the
claim recites
(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
(c) mental processes, such as an observation or evaluation
performed in the human mind;
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(2) any additional limitations that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h));
and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)).

See Revised Guidance, 84 Fed. Reg. 52, 55, and 56. Under the Revised
Guidance, if the claim does not recite a judicial exception, then it is eligible
under 35 U.S.C. § 101, and no further analysis is necessary. Id. at 54.
Similarly, under the guidance, “if the claim as a whole integrates the recited
judicial exception into a practical application of that exception,” then no
further analysis is necessary. Id. at 53, 54.
USPTO Step 2A, Prong 1
The Examiner determines that the claims recite “processing
advertising commercial/contractual information,” which we conclude recites
mental processes, a type of abstract idea. Final Act. 7 (citing SmartGene3).
The Examiner further determines as follows:
Although the steps may not or may add a degree of
particularity (i.e. by way of draftman’s art), a majority of the
limitations of the claim(s) merely describe (e.g. by breaking
down into basic/fundamental steps of) the abstract idea/concept.
Applicant’s description of the abstract idea may be narrow, but

3SmartGene, Inc. v. Adv. Biological Labs., SA, 555 Fed. Appx. 950, 955
(Fed. Cir. 2014) (nonprecedential) (“Whatever the boundaries of the
‘abstract ideas’ category, the claim at issue here involves a mental process
excluded from section 101: the mental steps of comparing new and stored
information and using rules to identify medical options.”)
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the court in buySAFE Inc. v. Google, Inc., 112 USPQ2d 1093
(Fed. Cir. 2014) made clear that in “defining the excluded
categories, the Court has ruled that the exclusion applies if a
claim involves [an] . . . abstract idea, even if the particular . . .
abstract idea at issue is narrow. Mayo, 132 S. Ct. at 1303”.
Id. at 9.
We agree with the Examiner’s determination. Under the Guidance, a
claim recites a mental process when the claim encompasses acts people can
perform using their minds or pen and paper. See, e.g., CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011)
(determining that a claim whose “steps can be performed in the human mind,
or by a human using a pen and paper” is directed to an unpatentable mental
process). Here, a person can perform at least the following steps of
representative claim 23 in his/her mind or using a pen and paper:
[a] maintaining a user profile for each of a plurality of
users of an online system, where each user profile stores a set of
user profile characteristics for one of the plurality of users of
the online system;
[b] receiving . . . a request from an advertiser to present
an advertisement to one or more of the plurality of users of the
online system;
[c] receiving . . . a targeted user profile characteristic
from the advertiser, where a user of the plurality of users of the
online system is eligible to be presented with the advertisement
if the user profile for the user contains the targeted user profile
characteristic;
[d] determining an impression opportunity to serve the
advertisement to a viewing user of the plurality of users of the
online system;
[e] determining that the user profile for the viewing user
cannot be identified because the viewing user does not have a
current online session with the online system;
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[f] selecting a plurality of comparable users of the
plurality of users of the online system, where the comparable
users are selected based on the comparable users having
browsing histories that overlap a browsing history of the
viewing user, and where the comparable users have a current
online session with the online system;
[g] determining that the targeted user profile
characteristic is contained in the user profile of each of a
plurality of the selected comparable users;
[h] associating the targeted user profile characteristic
with the viewing user;
[i] determining that the viewing user is eligible to be
presented with the advertisement because the targeted user
profile characteristic has been associated with the viewing user;
and
[j] sending the advertisement for presentation to the
viewing user.
The maintaining, determining, selecting, and associating steps ([a], [d], [e],
[f], [g], [h], and [i]) can all be performed by a human, such as a system
administrator of an online system, through observing a screen display of the
online system that displays user activities and interactions, such as online
status, browsing activities, user characteristics, and the like; writing those
activities and interactions down systematically; reviewing what he has
written down; and making certain associations about the review. The
receiving and sending steps ([b], [c], and [j]) can be performed by being
handed a piece of paper with a written request and handing back a piece of
paper with a response to the request.
Accordingly, but for the recitation of “at the online system” in certain
limitations, all of the steps of claim 23 can be performed in the human mind
or with the aid of pen and paper. Thus, under the Guidance, claim 23 recites
a mental process, a type of abstract idea, because the “steps can be
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performed in the human mind, or by a human using a pen and paper,”
CyberSource, 654 F.3d at 1372–73. See also SmartGene 555 Fed. Appx. at
955.
Appellant argues “the claimed method applies an unconventional
approach that allows the system to infer characteristics of a viewing user
who is logged out of the system and hence whose personal identification is
unknown (or unavailable) to the system, which the examiner fails to
address.” Reply Br. 3. We are not persuaded of error by this argument
because “inferring characteristics or a user” is an observation/evaluation that
can be performed in the human mind. Thus, this feature of the claim does
not remove the claim from the realm of an abstract idea.
For the reasons discussed above, representative claim 23 recites a
mental processes, an abstract idea under the Guidance.
USPTO Step 2A, Prong 2
Having determined that claim 23 is directed to a judicial exception,
we now address whether there are additional elements that integrate the
judicial exception into a practical application under the Guidance. See
MPEP § 2106.05(a)–(c), (e)–(h). We do not find such additional elements.
The only additional element recited in claim 23 is an “online system.”
The online system does not: (1) improve the functioning of a computer or
other technology; (2) is not applied with any particular machine (except for
generic computer components); (3) does not effect a transformation of a
particular article to a different state; and (4) is not applied in any meaningful
way beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
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drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
The claims require only generalized capabilities and functionalities of
maintaining, receiving, and sending data and making determinations,
selections, or associations based on the data. Although certain limitations
are applicable to the “online system,” these elements amount to “algorithms
and symbolic representations of operations on information[, which] are
commonly used by those skilled in the data processing arts to convey the
substance of their work effectively to others skilled in the art.” Spec ¶ 61.
Moreover, these functions are performed by “a general-purpose computing
device.” Id. ¶ 63. “[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
Alice, 573 U.S. at 223. Thus, these limitations do not constitute additional
elements that integrate the judicial exception into a practical application.
See MPEP § 2106.05(a)–(c), (e)–(h)
Appellant argues (1) “the claims recite a method that infers one or
more characteristics of a viewing user who is logged out of the system” and,
(2) “the claims recite a specific means that, as in McRO, allows a computer
to perform a function not previously performable by a computer.” Appeal
Br. 16–17. We do not agree.
In McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
the existing, manual 3-D animation techniques” through the “use of limited
rules specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Specifically, the Federal Circuit
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found that the claimed rules allow computers to produce accurate and
realistic lip synchronization and facial expressions in animated characters
that previously could only be produced by human animators; and the rules
are limiting because they define morph weight sets as a function of phoneme
sub-sequences. Id. at 1313 (citations omitted).
In contrast, here, Appellant has not identified any analogous
improvement attributable to the claimed invention. Although the claims
provide advertising by inferring characteristics of a user who is logged out
of the system, this does not achieve an improved technological result.
Improving the delivery of advertising is a solution to a business problem, not
an improvement to a technological problem. We see no parallel between the
limiting rules described in McRO and the results-based rules recited in
Appellant’s claims.
Appellant further argues that, like the claims in DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014), Applicant’s claim
[23] is ‘necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.’” Appeal
Br. 20 (quoting DDR Holdings). Id. Appellant contends that “online social
networks did not exist prior to the internet, and [the invention] would not
exist without a computer network.” Appellant contends further that “the
problems addressed by the claims are ones that arise uniquely in the context
of the Internet (e.g., there is no analogous way to implement the claims
using print media).” Id.
In DDR Holdings, the court held the subject claim patent-eligible
because it encompassed “an inventive concept” for resolving a “particular
Internet-centric problem.” Specifically, the invention in DDR Holdings
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allowed a host merchant website to maintain the look and feel of the host
website when hyperlinking to outside merchants’ product pages, i.e.,
“specify how interactions with the Internet are manipulated to yield a desired
result.” See DDR Holdings, 773 F.3d at 1257–58.
In contrast, Appellant’s method is not actually performed by the
online system. Although the steps recite the online system, including using
the online system to receive information and using the online system as the
basis for information about users (i.e., browsing histories and whether the
user is engaged in an online sessions), we do not find a step that is actually
performed by the online system. Thus, the steps are performable apart from
the technology recited as ancillary elements of the claim.
Furthermore, we find all claims on appeal merely use a generic
computing device as a tool, which is used in the way a computer normally
functions. As such, we conclude that the claims fail to impart any
discernible improvement upon the computer or processor; nor do
Appellant’s claims solve “a challenge particular to the Internet” as
considered by the court in DDR, 773 F.3d at 1256–57. See Alice, 573 U.S.
at 224 (concluding claims “simply instruct[ing] the practitioner to implement
the abstract idea of intermediated settlement on a generic computer” not
patent eligible).
For at least the reason noted supra, we determine that the claims
(1) recite a judicial exception and (2) do not integrate that exception into a
practical application. Thus, representative claim 23 is directed to the
aforementioned abstract idea.
USPTO Step 2B
Because the claims a judicial exception and do not integrate that
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exception into a practical application, we reach the issue of whether the
claims add specific limitations beyond the judicial exception that are not
“well-understood, routine, conventional” in the field. See Guidance. Here,
we look to whether the claims contain any “inventive concept” or add
anything “significantly more” to transform the abstract concept into a patent-
eligible application. Alice, 573 U.S. at 216.
We find no element or combination of elements recited in Appellant’s
claim 23 that contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Appellant has not adequately explained how claim 23 is
performed such that it is not a routine and conventional function of a generic
computer.
Appellant contends “the claimed method applies an unconventional
approach that allows requested advertisement to be targeted to the viewing
user of the online system even if the viewing user does not have a session
with the online system when the advertisement is requested.” Appeal Br.
18–19 (citing BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1348 (Fed. Cir. 2016); and Spec. ¶ 5). Appellant’s
Specification explains, however, that this problem exists and has been
addressed outside the field of mobile device computing. See Spec. 4.
Moreover, we agree with the Examiner that
The claimed solution is rooted in the abstract idea, rather than
being directed to a technological improvement. The claims
amount to nothing significantly more than an abstract idea
being performed in an environment of a connected or “online”
system (see, e.g., Specification at [0063], ‘a general-purpose
computing device” or “a single processor”), which is broader
than merely using “the online system” as a tool to execute the
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abstract idea of receiving, analyzing (e.g. determining), and
providing/presenting data-of which neither is enough to
transform an abstract idea into a patent-eligible invention.

Ans. 15.
Thus, we are not persuaded that “the claimed method applies an
unconventional approach.” Appeal Br. 18.
Appellant further contends “the claimed method is directed toward
solving the problem of reducing ad inventory” “by targeting advertisements
to the anonymous user using the inferred profile information.” Appeal Br.
19. Appellant asserts “this method itself is a non-conventional improvement
on traditional advertisement delivery and thereby provides significantly
more than simply ‘processing (e.g. advertising) commercial/contractual data’
in an abstract sense.” Id.
This argument is unpersuasive. Again, we note Appellant’s
Specification discloses implementing the conventional steps of the abstract
idea on a “general-purpose computing device” (i.e., convention hardware).
Spec. ¶ 63. Accordingly, we find no “unconventional” aspect to the claimed
invention.
Therefore, we conclude claim 23, viewed “both individually and as an
ordered combination,” does not recite significantly more than the judicial
exception to transform the claim into patent-eligible subject matter. See
Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79) (quotations omitted).
Accordingly, for the reasons discussed, claim 23 is directed to mental
processes identified as an abstract idea. Furthermore, the claims do not
recite limitations that amount to significantly more than the abstract idea
itself. We thus sustain the rejection of independent claim 23 under 35
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U.S.C. § 101 and, for the same reasons, the rejection of independent claims
31 and 38, together with the rejection of dependent claims 24–30 and 32–37,
which are not argued separately with particularity.
35 U.S.C. § 1034
With respect to the obviousness rejection of independent claim 23,
Appellant contends that Doughty does not teach or suggest “determining that
the user profile for the viewing user cannot be identified because the
viewing user does not have a current online session with the online system”
and “selecting a plurality of comparable users.” Appeal Br. 20–24; see also
Reply Br. 5–7.
The Examiner cites, inter alia, paragraph 66 of Doughty, which
discloses “[s]hould the user in the above example not log into a webpage or
application on a brand new device, he may be identified instead by user
behavior and location.” Final Act. 13.
Appellant argues that “Doughty does not disclose the concept of a
user having ‘a current online session’ because users do not log into or
browse content of an advertising network” and “the relevant portions of
Doughty merely disclose instances where the user’s identity can be
affirmatively identified.” Final Act. 23. Appellant’s arguments, however,
do not address the disclosure of paragraph 66 quoted above.

4 Appellant argues the obviousness rejection of claims 23–38 over Doughty
and Wang and does not argue the obviousness rejection of these claims over
Doughty. See Appeal Br. 20–24; see also Reply Br. 5–7. Because we
would reach the same outcome if Appellant’s arguments applied to both
rejections, we address Appellant’s arguments with respect to the rejection
over Doughty and Wang as if applicable to either rejection.
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We are persuaded that, in accordance with the Examiner’s finding,
“determining that the user profile for the viewing user cannot be identified
because the viewing user does not have a current online session with the
online system” reads directly on Doughty’s disclosure of having to identify a
user through alternative means (i.e., “he may be identified instead by user
behavior and location”) because the user does not log in to a webpage or
application when using a brand new device. Final Act. 13; see also Doughty
¶ 66. Accordingly, we are unpersuaded of error based on this argument.
With respect “selecting a plurality of comparable users,” Appellant
argues that “[n]either Doughty nor Wang disclose the concept of comparable
users.” Appeal Br. 24. Appellant argues that “[a]t best, the cited portions of
Doughty with respect to this limitation disclose correlating user devices
based on IP addresses.” Id.
The Examiner provides numerous citations to Doughty that disclose
far more than merely “correlating user devices based on IP addresses.” See
Ans. 24–27 (citing Doughty ¶¶ 37, 39, 45, 55–56, and 69–76). In particular,
we note Doughty’s disclosure of an advertising network operating a data
facility containing “mobile subscriber characteristics” encompassing far
more than “correlating user devices based on IP addresses,” as Appellant
argues. Appeal Br. 24; see also Doughty ¶ 69.
We are persuaded that “selecting a plurality of comparable users,”
broadly but reasonably construed, reads on Doughty’s disclosure of
maintaining a database of user characteristics for users. We are persuaded
because, for data to be maintained regarding a specific user, the user must
first be “selected” for having data maintained. Further, the database is
Appeal 2018–004051
Application 13/777,857

20
clearly intended to maintain data on a plurality of users, and the users may
be considered “comparable” based on any number of data categories.
In view of the foregoing, we sustain the Examiner’s rejection of claim
23 and of claims 24–38, which Appellant does not argue separately.

DECISION SUMMARY
We affirm the Examiner’s rejections as follows:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
23–38 112, 1st Written Description 23–38
38 112, 2nd Indefiniteness 38
23–38 101 Eligibility 23–38
23–38 103 Doughty 23–38
23–38 103 Doughty, Wang 23–38
Overall
Outcome:
23–38
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