Timothy Kendall et al.

Patent Trials and Appeals Board

Oct 9, 2019

12419958 - (D) (P.T.A.B. Oct. 9, 2019)

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.
12/419,958 04/07/2009 Timothy Kendall 26295-15415 1578
87851 7590 10/09/2019
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
10/09/2019 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 TIMOTHY KENDALL and DING ZHOU
____________

Appeal 2018-006422
Application 12/419,958
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
SHEILA F. McSHANE, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 2, 7–9, 12–20, 22–25, and 35–37.1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Facebook,
Inc. Appeal Br. 2. We note that the pages of Appellant’s Appeal Brief are
not numbered; we refer to the title page as page 1 and treat the pages that
follow as though consecutively numbered.
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BACKGROUND
The invention relates to targeting advertising to users of a social
network. Specification, hereafter “Spec.,” ¶ 1. According to the invention,
when there is insufficient information for a member to allow application of
advertising targeting criteria, information for other members to whom a
particular member is connected may be used. Id. ¶ 4.
Claims 1, 22, and 35 are independent. Representative method claim 1
is reproduced from the Appeal Brief (Claims App.) as follows:
1. A computer-implemented method comprising:
receiving, by one or more computing devices of a social
networking system, a plurality of ads each associated with a
targeting criteria that defines a main characteristic targeted at a
user of the social network system and a secondary characteristic
targeted at one or more users of the social networking system to
whom the user is connected if a user profile of the user does not
include information for the main characteristic;
receiving, by the one or more computing devices of the social
networking system, a request for an ad to be provided to a
viewing user of the social network system;
accessing, using a processor of the one or more computing
devices of the social networking system, a user profile of the
viewing user;
for at least one of the ads, determining, by a processor of the
one or more computing devices of the social networking
system, that the user profile of the viewing user does not
include information for determining whether the viewing user
has the main characteristic;
responsive to determining that the user profile of the viewing
user does not include information for determining whether the
viewing user has the main characteristic defined by the
targeting criteria associated with the ad:
accessing, by the processor, user profiles of one or more
other users of the social network system to whom the
viewing user is connected;
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determining, by the processor, that the user profiles of the
one or more other users connected to the viewing user in
the social network system have information for the
secondary characteristic defined by the targeting criteria
associated with the ad based in part on information
included in the accessed user profiles of the one or more
other users of the social network system to whom the
viewing user is connected, the secondary characteristic
being different than the main characteristic and being
defined independent of a relationship between the
viewing user and each of the one or more other users; and
including, by the processor, the ad in the candidate set of
ads for targeting to the viewing user responsive to
determining that the one or more other users connected to
the viewing user have the secondary characteristic;
selecting an ad from the candidate set of ads for the viewing
user; and
sending the selected ad to an electronic device associated with
the viewing user.

In a Final Office Action, the Examiner rejects claims 1, 2, 7–9, 12–20,
22–25, and 35–37 under 35 U.S.C. § 101 as directed to unpatentable subject
matter; claims 1, 2, 7–9, 12, 22–25, and 35–37 as unpatentable under
35 U.S.C. § 103(a) over Parekh2, Craig3, and Partovi4; claims 13 and 15–18
as unpatentable under 35 U.S.C. § 103(a) over Parekh, Craig, Partovi,
Winner5, and Shahshahani6; claims 14 and 19 as unpatentable under
35 U.S.C. § 103(a) over Parekh, Craig, Partovi, Rohan7, and Official Notice;
and claim 20 as unpatentable under 35 U.S.C. § 103(a) over Parekh, Craig,

2 US 2010/0076850 A1, published March 25, 2010.
3 US 2008/0104172 Al, published May 1, 2008.
4 US 2008/0294607 A1, published November 27, 2008.
5 US 2005/0278443 Al, published December 15, 2005.
6 US 2010/0030647 A1, published February 4, 2010.
7 US 2008/0162260 Al, published July 3, 2008.
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Partovi, and Tomlin8. Final Action, hereafter “Final Act.,” 2–12, mailed
June 15, 2017; Answer, hereafter “Ans.,” 2–13, mailed April 26, 2018.
DISCUSSION
35 U.S.C. § 101
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 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

8 US 2009/0063249 A1, published March 5, 2009.
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include physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981) (“Diehr”)); “tanning, dyeing,
making water-proof cloth, vulcanizing India 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 176; 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.”), see also, 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.”).
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 and quotation marks
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. (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 USPTO recently published revised guidance on the application of
§ 101, in accordance with judicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (“2019
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Guidance”). Under the 2019 Guidance, a claim is “directed to” an abstract
idea if the claim recites any of (1) mathematical concepts, (2) certain
methods of organizing human activity, and (3) mental processes—without
integrating such abstract idea into a “practical application,” i.e., without
“apply[ing], rely[ing] on, or us[ing] the judicial exception in a manner 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.”
Id. at 52–55. A claim so “directed to” an abstract idea constitutes ineligible
subject matter, unless it recites an additional element (or combination of
elements) amounting to significantly more than the abstract idea. Id. at 56.
With this context in mind, we evaluate the Examiner’s rejection of
representative claim 1.
The Examiner considers the limitations of representative claim 1 and
characterizes them as:
1) determining that the viewing user does not have the main
characteristic defined by the targeting criteria associated with the
ad based in part on the user profile of the viewing user; and 2)
responsive to determining that the user profile of the viewing
user does not include information for determining whether the
viewing user has the main characteristic defined by the targeting
criteria associated with the ad, accessing user profiles of one or
more other users of the social network system to whom the
viewing user is connected; determining whether the one or more
other users connected to the viewing user in the social network
system have the secondary characteristic defined by the targeting
criteria associated with the a based in part on information
included in the accessed user profiles of the one or more other
users of the social network system to whom the viewing user is
connected.
Final Act. 3.
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The Examiner finds that the limitations of claim 1 “require using
information about users and their connections to determine whether to send
advertisements.” Final Act. 3; see also Ans. 3. The Examiner compares the
claims to those in CyberSource, where information was organized and rules
were applied to the information to make decisions, and Intellectual Ventures,
where information was received and rules were used to make
determinations. Final Act. 3 (citing CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011); Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)). The Examiner
finds that “courts have held that concepts relating to the collection of data
(such as profile information) and the use of the collected data in combination
with rules (such as whether a user has a main characteristic and if not using a
secondary characteristic) in decision making (such as determining ads to be
sent) are abstract ideas.” Id.
We agree with the Examiner that the steps of representative claim 1
comprise concepts that evaluate collected user information (such as user
profiles and user characteristics), evaluate the information according to
rules, and based on the evaluations, then make decisions for selecting and
sending advertisements—and these are mental processes. We also agree
with the Examiner that the claim 1 limitations include steps associated with
advertising activities, a method of organizing human activity. Methods of
organizing human activity, and more specifically, advertising activities, are
abstract ideas. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014). Because representative claim 1 recites mental processes and methods
of organizing human activity, we find no error with the Examiner’s findings.
Appellant argues that the Examiner’s characterization of an abstract
idea describes the claim at too high a level. App. Br. 13–14. As such,
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Appellant argues that the Examiner’s finding is contrary to the guidance in
Enfish. Id. (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016)). Further, Appellant alleges that the Examiner fails to identify the
actual idea itself and therefore is not in conformance with the Administrative
Procedure Act. Reply Brief, hereafter “Reply Br.,” 3, filed June 6, 2018.
We do not find this argument to be persuasive because the Examiner’s
rejection considers the steps of the claims, presents an accurate
characterization of them, and then identifies the related categories of abstract
ideas.
Appellant also argues that the claim language is tied to a computing
environment and, more specifically, to a social networking system, so the
claimed invention cannot be performed in a human mind or by a human
using a pencil and paper. App. Br. 16. We disagree. As discussed, under
representative claim 1, collected social network user information (such as
user profiles and user characteristics) is evaluated according to rules, and
based on the evaluations, decisions are made for selecting and sending
advertisements. This is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
displaying, and transmitting data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil. See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed.
Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–
94 (Fed. Cir. 2016). Steps that may be performed in the mind, even if
recited as being performed on a computer, are mental processes. See
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed.
Cir. 2016) (noting, in holding that the claim recites an abstract idea, that
“with the exception of generic computer-implemented steps, there is nothing
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in the claims themselves that foreclose them from being performed by a
human, mentally or with pen and paper”); Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016).
Appellant further argues that under Free Stream Media, a district
court found that “the concept of targeting content, including advertising, was
not an abstract idea.” App. Br. 14 (citing Free Stream Media Corp. v.
Alphonso Inc., 3-17-cv-02107 (N.D. Cal. January 12, 2018)). We disagree
with Appellant’s characterization of the cited decision. Although the
decision states that the invention “involves” targeting content, including
advertising, the decision explains that the claims were not subject to the
judicial exception because they were “directed at specific techniques for
connecting the content on a television and a mobile device through
purported technological improvements.” Id., slip op. at 1, 7. Accordingly,
we do not find Appellant’s arguments persuasive.
The next issue under the second prong of step 2A is whether
additional elements in representative claim 1 integrate the judicial exception
into a practical application, such as elements reflecting an improvement in
the functioning of a computer or an improvement to other technology or
technical field.9
The Examiner finds that the claims do not recite “an improvement to
another technology or technical field, an improvement to the functioning of
the computer itself, or meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment.” Final
Act. 4. The Examiner finds that the limitations in ordered combination add

9 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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nothing beyond considering the limitations individually. Id. The Examiner
further finds that the claims do not improve computer functioning and
provide only conventional computer implementation. Id.
Appellant argues that the claims are not directed to a judicial
exception because they are to an improvement in a social networking
system, which is a computer-related technology, and are patent eligible
under McRO. Appeal Br. 8–9 (citing McRO, Inc. v. Bandai Namco Games
Am., Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Appellant refers to the
Specification, arguing that the Specification sets forth the problem of users
not populating profiles to include all of their interests and personal
information, and then describing an embodiment representing a solution to
the problem. Id. at 9 (citing Spec. ¶¶ 3–4).
In McRO, the claims “focused on a specific asserted improvement in
computer animation,” which is a technological improvement. McRO,
837 F.3d at 1314. But the Specification here discloses that the invention
relates only “generally to social networking,” but, more specifically, the
invention is directed to targeting advertising. Spec. ¶ 1, see also id. ¶¶ 4–8.
As discussed above, the steps of representative claim 1 are to the evaluation
of data collected in a social network site and, from the data evaluation,
making determinations for targeting advertising, which is not an
improvement to computers or technology. We are in agreement with the
Examiner that the claim limitations, either individually or collectively, do
not include an improvement to computers or technology.
Thus, we find no reversible error with the Examiner’s determination
that representative claim 1 is directed to an abstract idea.
Turning to the second step of the Alice inquiry, we now look to
whether representative claim 1 contains any inventive concept or adds
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anything significantly more to transform the abstract concept into a patent-
eligible application. Alice, 573 U.S. at 216.
Appellant argues that the steps of the claims, and particularly the use
of main and secondary characteristics to improve the social networking
system, are non-conventional and non-routine. App. Br. 18–20. In
particular, Appellant asserts that under the claims, “the social networking
system can more accurately infer a user’s interests and subsequently can
present an advertisement to the user according to the inferred user interest.”
Id. at 20. Appellant further asserts that the ordered combination of
limitations is not routine or conventional because it enables improvements
using the main characteristic and secondary characteristic. Id. at 21.
Appellant contends that the order recited in the claimed invention is
important because if the user profile of the viewing user has the main
characteristic, the system can directly decide that the viewing user has a
particular interest, and provide ads to those who have explicitly expressed
certain interests, and otherwise going to secondary considerations provides
an ad to a user based on an inferred interest. Id. at 21–22 (citing DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014);
BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016)). Thus, Appellant alleges improvements to the social
networking system. Id.
Although Appellant alleges an improvement in a social networking
system, the consideration of the main characteristic and secondary
characteristic, even in a particular order, is used for advertising, which as
discussed above, is a method of organizing human activity, an abstract idea.
The Federal Circuit has held that, after determining that the claim is directed
to an ineligible concept, we assess “whether the claim limitations, other than
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the invention’s use of the ineligible concept to which it was directed, were
well-understood, routine, and conventional.” BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (emphasis added). Beyond the
abstract ideas of the representative claim, the Examiner finds that data
gathering and transmission is performed by a generic computer performing
generic computer functions that are well-known, routine and conventional
practices. Final Act. 4 (citing Spec. ¶¶ 59–60). We agree that these are
well-known practices that do not add significantly more to transform the
abstract concept into a patent-eligible application. See In re Katz Interactive
Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011);
CyberSource, 654 F.3d at 1370. (Mere data-gathering steps “cannot make an
otherwise nonstatutory claim statutory.”). Appellant does not assert that
there is any unconventional use of a computer, and the use of generic
computer components performing generic steps to implement an abstract
idea has repeatedly been found to not make an abstract idea patent eligible.
See Alice, 573 U.S. at 217–218 (Instructing one to “apply” an abstract idea
and reciting no more than generic computer elements performing generic
computer tasks does not make an abstract idea patent eligible.).
Accordingly, we are not persuaded of error in the Examiner's
conclusion that representative claim 1 is directed to patent-ineligible subject
matter.
35 U.S.C. § 103(a)
Appellant alleges that the prior art relied upon by the Examiner does
not teach or suggest some of the limitations of independent claims 1, 22, and
35, and Appellant presents these arguments using claim 1 as representative.
Appeal Br. 23–27. We will address the issues in a similar manner.
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Appellant argues that the cited references fail to teach “receiving . . .
a plurality of ads each associated with a targeting criteria that defines a main
characteristic targeted at a user of the social network system and a secondary
characteristic targeted at one or more users of the social networking system
to whom the user is connected if a user profile of the user does not include
information for the main characteristic.” Id. at 23. More specifically,
Appellant argues that Parekh fails to teach “advertisements that are each
associated with a targeting criteria.” Id. Appellant then contends that
“[e]ven if Parekh did disclose targeting criteria . . . Parekh does not disclose
that a social networking system receives the targeting criteria. Furthermore,
[it] does not disclose that the targeting criteria defines a main characteristic
and a secondary characteristic that are different from one another and are
targeted to a user or other users that are connected to the user.” Id.
Appellant alleges that the Examiner relies on categories of advertisements in
Parekh for the teaching of targeting criteria, however, categories of
documents differ from targeted criteria. Id. at 23–24.
We do not find these arguments persuasive. Although Appellant
argues that Parekh does not disclose that a social networking system receives
targeting criteria, this is not a limitation of claim 1—rather the claim recites
that “ads [] associated with a targeting criteria” are received. Further,
Parekh discloses that categories of ads are associated with targeting criteria.
Parekh ¶ 34.
On the issue of alleged lack of teaching of “a main characteristic” of a
user and “a secondary characteristic” of user friends, Appellant argues that
the Examiner relies on Parekh’s disclosures on user behaviors, but behaviors
are not characteristics. App. Br. 25. We do not agree with Appellant on this
issue because the Specification discloses that “behavioral characteristics”
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may be targeting criteria (Spec. ¶¶ 54, 56). In a similar vein, Appellant
alleges that the Examiner inconsistently maps the claim elements, and one of
skill would not map “both a score (e.g., consumer score and friend score)
and behavior (e.g., user behavior or social network behavior) to a particular
characteristic (e.g., main characteristic or secondary characteristic).” Reply
Br. 9. As discussed, however, user behaviors may be “characteristics” and
Parekh’s consumer score is based on behaviors. See Final Act. 6 (citing
Parekh ¶ 26).
Appellant additionally asserts that Parekh does not disclose the
claim 1 limitation “responsive to determining that the user profile of the
viewing user does not include information for determining whether the
viewing user has the main characteristic” and “accessing, by the processor,
user profiles of one or more other users.” App. Br. 26. Appellant argues
that Parekh instead discloses “accessing information of the viewing user and
accessing information of a friend as two separate, independent processes.”
Id. As the Examiner finds, however, Parekh discloses that the targeting
system focuses on users “with insufficient behavioral information” (Parekh
¶ 24), and a classifier “predicts when to trust the consumer’s score and when
to defer to the social network model” (id. ¶ 43). See Final Act. 6; Ans. 7.
Accordingly, we do not find Appellant’s arguments on this issue to be
persuasive because Parekh teaches that based on deficiencies in user
information, the system defers to other social network user information.
Accordingly, after considering Appellant’s contentions and the
evidence presented in this Appeal, we are not persuaded that Appellant
identifies reversible error, and we, therefore, sustain the § 103 rejection for
representative claim 1. Appellant does not present arguments on any of the
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other claims, and we therefore sustain the § 103 rejections for the other
claims.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 7–9, 12–
20, 22–25,
35–37
101 Eligibility 1, 2, 7–9,
12–20, 22–
25, 35–37

1, 2, 7–9, 12,
22–25, 35–37
103 Parekh, Craig,
Partovi
1, 2, 7–9,
12, 22–25,
35–37

13, 15–18 103 Parekh, Craig,
Partovi,
Winner,
Shahshahani
13, 15–18
14, 19 103 Parekh, Craig,
Partovi,
Rohan,
Official
Notice
14, 19
20 103 Parekh, Craig,
Partovi,
Tomlin
20
Overall
Outcome
1, 2, 7–9,
12–20, 22–
25, 35–37

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