Ex Parte Bruich et alDownload PDFPatent Trial and Appeal BoardDec 20, 201613677885 (P.T.A.B. Dec. 20, 2016) 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. 13/677,885 11/15/2012 Sean Michael Bruich 26295-21861 7251 87851 7590 12/22/2016 Faoehnnk/Fen wi ok EXAMINER Silicon Valley Center HO, BINH VAN 801 California Street Mountain View, CA 94041 ART UNIT PAPER NUMBER 2163 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): ptoc @ fenwick.com fwfacebookpatents @ fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEAN MICHAEL BRUICH and BADLEY HOPKINS SMALLWOOD Appeal 2016-000363 Application 13/677,8851 Technology Center 2100 Before LARRY J. HUME, NORMAN H. BEAMER, and KAMRAN JIVANI, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1—36. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is Facebook, Inc. App. Br. 2. Appeal 2016-000363 Application 13/677,885 STATEMENT OF THE CASE2 The Invention Appellants' disclosed and claimed inventions "relate[] generally to social networking, and in particular to assigning users of a social networking system to households for tracking advertising metrics." Spec. 1. Exemplary Claims Claims 1,4, 12, and 24 reproduced below, are representative of the subject matter on appeal (emphases added to contested limitations): 1. A method comprising: receiving identifying information about a plurality of members of a plurality of households; determining a plurality of attributes about the plurality of members of the plurality of households; [LI] determining a subset of the plurality of households based on an attribute of a user of a social networking system, the attribute of the user matching at least one member of each of the subset of the plurality of households; [L2] determining a confidence score for each of the subset of the plurality of households for the user; [L3] selecting a household from the subset of the plurality of households for the user based on the confidence scores; and [L4] storing, in the social networking system, the selected household and associated confidence score in association with the user. 2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed Mar. 9, 2015); Reply Brief ("Reply Br.," filed Oct. 5, 2015); Examiner's Answer ("Ans.," mailed Aug. 5, 2015); Final Office Action ("Final Act.," mailed Oct. 7, 2014); and the original Specification ("Spec.," filed Nov. 15,2012). 2 Appeal 2016-000363 Application 13/677,885 4. The method of claim 1, wherein receiving identifying information about a plurality of members of a plurality of households comprises: [L5] retrieving a plurality of edge objects that include social graph information of connected users on a social networking system, where the social graph information of the connected users indicates a household; and [L6] extracting the identifying information of the connected users from the plurality of edge objects. 12. A method comprising: receiving a plurality of information items about a user of a social networking system; generating a household object associated with the user in the social networking system based on the plurality of information items about the user; determining one or more members of a household represented by the household object in the social networking system based on the received plurality of information items about the user, where the user is a member of the household; and storing the household object in association with the determined one or members of the household in the social networking system. 24. A method comprising: retrieving a plurality of information items about a user of a social networking system; determining one or more membership scores for the user for one or more households in the social networking system using a scoring model based on the plurality of information items about the user; selecting a household from the one or more households in the social networking system based on the one or more memberships scores for the user; and 3 Appeal 2016-000363 Application 13/677,885 storing an association of the selected household with the user in the social networking system. Prior Art The Examiner relies upon the following prior art rejecting the claims on appeal: as evidence in Nakada et al. ("Nakada") US 2001/0037348 Al Nov. 1,2001 Currey US 2007/0250325 Al Oct. 25, 2007 White US 2011/0258552 Al Oct. 20, 2011 Miller US 2012/0036053 Al Feb. 9, 2012 Zhou et al. ("Zhou") US 2012/0110071 Al May 3, 2012 Shapiro et al. ("Shapiro") US 2012/0166285 Al June 28, 2012 He US 2013/0097182 Al Apr. 18, 2013 Sheehan et al. ("Sheehan") US 2013/0276027 Al Oct. 17, 2013 Rejections on Appeal Rl. Claims 1-3, 5, 6, 8-14, 19-21, 24, 25, 27-29, 31, and 33-36 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Sheehan and Zhou. Final Act. 2. R2. Claims 4, 7, and 23 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Sheehan, Zhou, and He. Final Act. 13. R3. Claims 15 and 18 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Sheehan, Zhou, and Miller. Final Act. 15. R4. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Sheehan, Zhou, and Nakada. Final Act. 16. 4 Appeal 2016-000363 Application 13/677,885 R5. Claims 22, 30, and 32 stand rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Sheehan, Zhou, and White. Final Act. 17. R6. Claim 17 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Sheehan, Zhou, and Currey. Final Act. 19. R7. Claim 26 stands rejected under 35 U.S.C. § 103(a) as being obvious over the combination of Sheehan, Zhou, and Shapiro. Final Act. 20. CLAIM GROUPING Based on Appellants' arguments (App. Br. 3—16), we decide the appeal of obviousness Rejection R1 of claims 1—3, 5, 6, and 8—11 on the basis of representative claim 1; and we separately decide Rejection R1 of claims 12—14, 19—21, 24, 25, 27—29, 31, and 33—36, infra. We decide the appeal of obviousness Rejection R2 of claims 4 and 7 on the basis of representative claim 4. Remaining claims 15—18, 22, 23, 26, 30, and 32 in rejections R2 through R7 stand with their respective independent claims 12 and 24, as discussed infra? ISSUES AND ANALYSIS In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). 3 "Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv) 5 Appeal 2016-000363 Application 13/677,885 We agree with particular arguments advanced by Appellants with respect to Rejection R1 of independent claims 12 and 24, and claims 13—23 and 25—36 depending therefrom, for the specific reasons discussed below. We disagree with Appellants' arguments with respect to Rejections R1 and R2 of claims 1—11, and we incorporate herein and adopt as our own: (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken, and (2) the reasons and rebuttals set forth in the Examiner's Answer in response to Appellants' arguments. We incorporate such findings, reasons, and rebuttals herein by reference unless otherwise noted. However, we highlight and address specific findings and arguments regarding claims 1, 4, 12, and 24 for emphasis as follows. 1. $103 Rejection R1 of Claims 1—3, 5, 6, and 8—11 Issue 1 Appellants argue (App. Br. 4—10; Reply Br. 2—7) the Examiner's rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the combination of Sheehan and Zhou is in error. These contentions present us with the following issue: Did the Examiner err in finding the cited prior art combination teaches or suggests a method that includes, inter alia, limitations LI through L4, as recited in claim 1 ? Analysis Limitation LI — "determining a subset of the plurality of households" Appellants contend the combination of Sheehan and Zhou fails to teach or suggest the recitation of "determining a subset of the plurality of 6 Appeal 2016-000363 Application 13/677,885 households based on an attribute of a user of a social networking system, the attribute of the user matching at least one member of each of the subset of the plurality of households," as recited in claim 1. App. Br. 4. Appellants specifically contend the Examiner erred in relying upon Sheehan for all limitations except the "social networking system." Id. The Examiner purportedly erred because "Sheehan describes determining who is in a household by looking at database records" {id. (citing Sheehan || 14, 50, 51, and 63)), while Sheehan does match household attributes with "targeted asset criteria" . . . the claimed determination is based on a match between an attribute of a user (of a social networking system) and the household. None of the matching that Sheehan does is based on an attribute of a user. Indeed, Sheehan uses targeting criteria to identify households for possible delivery of advertising. That criteria is not an attribute of a user (of a social networking system), as claimed. App. Br. 5. Appellants further contend "Zhou does not remedy this deficiency of Sheehan." Id. In response, the Examiner finds '"Social networking' is the practice of expanding the number of one's business and /or social contacts by making connections through individuals . . . [such that] Sheehan also discloses [a] social network." Ans. 4. The Examiner further responsively finds Sheehan teaches representing household attributes or asset targeting criteria in a "simplified form" by defining attributes using an attribute vector which "may be generated utilizing third-party data information and may include multiple (e.g., thousands) of potential attributes. This may allow for generating compact 7 Appeal 2016-000363 Application 13/677,885 attribute descriptions of households that may include very detailed information regarding the household." Id. In agreement with the Examiner, we therefore find Sheehan teaches or at least suggests limitation LI of claim 1. Limitation L2 — "determining a confidence score" Appellants contend "[a]s an initial matter, it was shown above that Sheehan and Zhou do not determine the subset of households. That same subset is the starting point for this element" (App. Br. 5), and "it is unclear how a confidence score 'for each of the subset of the plurality of households for the user' could be determined." App. Br. 6. We are not persuaded by Appellants' argument, for the reasons discussed, supra. Appellants further contend: Zhou's "confidence scores," while similar in terminology, "indicate [only] a likelihood that the inferred value [of attributes for a user] is accurate." Zhou, claim 13; [0030]. The claim does not recite a confidence score for anything. Indeed, confidence in something (certainty about it) is relative to the 'something.' Thus, the fact that Zhou discloses a confidence score about one thing (relating to the accuracy of inferred user attributes) is irrelevant to the claimed confidence score about another — a confidence score determined for households for the user. App. Br. 6. Because the Examiner rejects the claims as obvious over the combined teachings of Sheehan and Zhou, the test for obviousness is not what the references show individually but what the combined teachings would have suggested to one of ordinary skill in the art. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 8 Appeal 2016-000363 Application 13/677,885 Limitation L2 recites, "determining a confidence score for each of the subset of the plurality of households for the user." The Examiner reiterates that the rejection is under § 103 by the combination of Sheehan and Zhou (Ans. 6) in which Zhou teaches "[t]he inferred user attributes 150 can determine a confidence score value for each attribute value inferred. The confidence score indicates a likelihood of the inferred value being accurate based on historical data associated with the attribute value as well as the information used for inferring the attribute value." Zhou 130. Accordingly, we find Zhou's disclosure of a confidence score, in combination with Sheehan, teaches or at least suggests contested limitation L2. Limitation L3 — "selecting a household" Appellants contend "the references lack disclosure of the confidence score as claimed . . . [and therefore] they also cannot select a household for the user 'based on' the lacking confidence scores." App. Br. 6. In addition, Appellants argue: [T]he references do not disclose or suggest selecting a household based on any confidence scores, much less the specifically claimed confidence scores as discussed above. Sheehan at [0012] is relied upon as "determin[ing] actual members" of a household. At best, Sheehan describes determining who lives in a known household, not selecting from among a subset of households. App. Br. 7. For the same reasons discussed above with respect to limitation L2, we disagree with Appellants' arguments. 9 Appeal 2016-000363 Application 13/677,885 The Examiner finds: Sheehan discloses determine actual members, putative members and/or demographics of a household. Accordingly, once putative members and/or demographics of the household are identified, one or more assets may be selected for delivery to that household and/or for delivery to a specific member of the household, (paragraph [0012]). Further, Zhou discloses the inferred user attributes 150 can determine a confidence score value for each attribute value inferred, (paragraph [0030]). Ans. 8. Moreover, we disagree with Appellants' arguments because we find Appellants are arguing the Sheehan and Zhou references separately. "[0]ne cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981). Accordingly, we find Zhou's disclosure of a confidence score, in combination with Sheehan's disclosure of the identification of household demographics and asset selection for delivery to the household, teaches or at least suggests contested limitation F3. Limitation L4 — "storing. . . the selected household" Appellants contend the Examiner's citation of Sheehan paragraph 79 (disclosing storage of algorithms for determining a current user and viewer history associated with the set top box (STB)) is in error because this citation "at best stores behavior information about the user" (App. Br. 7), and Sheehan paragraph 71 "discloses storage of the delivered asset (e.g., ad) at the set top box" which "is not relevant to this element." App. Br. 8. 10 Appeal 2016-000363 Application 13/677,885 Appellants reiterate Sheehan does not disclose storing a selected household because Sheehan's "users are associated with set top boxes, which are mostly stationary," and "there is no disclosure of storing a confidence score." Id. We disagree with Appellants' arguments, and agree with the Examiner's findings, i.e.: Sheehan discloses report current user identification upon determining a change in the current putative user/household member. In a further embodiment, the viewer monitoring module may simply pass along inputs from the current user(s) to the ADS 102. In this regard, algorithms for determining a current user(s) may be stored by the ADS 102 and/or utilized with viewer history information associated with the STB stored by the network", (paragraph [0079]). Ans. 10. Under the broadest reasonable interpretation,4 we find this disclosure of Sheehan teaches or at least suggests contested limitation L4, i.e., "storing, in the social networking system, the selected household and associated confidence score in association with the user," as recited in claim 1. In addition to the above arguments concerning limitations LI through L4, Appellants argue "the Examiner's analysis fails to consider each claim as 4 Any special meaning assigned to a term "must be sufficiently clear in the specification that any departure from common usage would be so understood by a person of experience in the field of the invention." Multiform Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381 (Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to a term a unique definition that is different from its ordinary and customary meaning; however, a patentee must clearly express that intent in the written description."). 11 Appeal 2016-000363 Application 13/677,885 a whole." App. Br. 9. In Appellants' arguments (App. Br. 9—10), we find Appellants are arguing the references separately, and thus we do not find these arguments to be persuasive. See In re Keller, 642 F.2d at 426. Therefore, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 1, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of independent claim 1, and grouped claims 2, 3, 5, 6, and 8—11 which fall therewith. See Claim Grouping, supra. 2. Rejection R1 of Claims 12—14, 19—21, 24, 25, 27—29, 31, and 33—36 Issue 2 Appellants argues (App. Br. 12—14; Reply Br. 8—9) the Examiner's rejection of claims 12 and 24 under 35 U.S.C. § 103(a) as being obvious over the combination of Sheehan and Zhou is in error. These contentions present us with the following issue: Did the Examiner err in rejecting independent claims 12 and 24 by finding these claims are rejected "for at least the same reasons" as claim 1? Final Act. 7, 10; Ans. 19—20. Analysis Appellants contend the Examiner does not address the unique limitations in each of independent claims 12 and 24, different from claim 1, and rejected on the same basis as claim 1 under Rejection Rl. App. Br. 12-14. 12 Appeal 2016-000363 Application 13/677,885 We agree with Appellants' contentions. Although the Examiner at least partially responds to Appellants' arguments (Ans. 20), we note the Examiner omits any specific analysis of the claim limitations in independent claims 12 and 24 that are different from claim 1. The Federal Circuit has held, "the prima facie case is ... a procedural device that enables an appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007). The Federal Circuit stated that this burden is met by "adequately explaining] the shortcomings it perceives so that the applicant is properly notified and able to respond." Id. at 1370. ft is only "when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection" that the prima facie burden has not been met and the rejection violates the minimal requirements of 35 U.S.C. § 132. Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). We note that the Examiner has not met his burden and made the requisite showing of obviousness since the Examiner paints with a broad brush in rejecting claims 12 and 24 (and claims depending therefrom) by referring back to Rejection R1 of claim 1. Claims 12 and 24 are not commensurate in scope to independent claim 1, and we are left to speculate as to how the contested claim limitations of claims 12 and 24 are taught or suggested in the combined teachings over the rejection of claim 1. Such conjecture on our part as to which findings (or missing findings) apply to which claims would impermissibly require us to resort to speculation, unfounded assumptions, or hindsight reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). "The review authorized by 13 Appeal 2016-000363 Application 13/677,885 35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance." Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). We decline to engage in such speculation, unfounded assumptions, or hindsight reconstruction to make up for the deficiency in the Examiner's rejection which fails to set forth a prima facie case for claims 12 and 24 pursuant to the requirements of 35 U.S.C. § 132. Therefore, based upon the findings above, on this record, we are persuaded of error in the Examiner's prima facie case of obviousness under § 103 of independent claims 12 and 24. Therefore, we cannot sustain the Examiner's obviousness rejection of independent claims 12 and 24. Rejections R2—R7 of Claims 13—23 and 25—36 In light of our reversal of the rejections of independent claims 12 and 24, we also reverse obviousness Rejections R2 through R7 under § 103 of claims 13—23 and 25—36, which variously and ultimately depend from claims 12 and 24. On this record, the Examiner has not shown how the additionally cited secondary He, Miller, Nakada, White, Currey, or Shapiro references overcome the aforementioned deficiencies with the prima facie case of unpatentability of claims 12 and 24, as discussed above. 3. Rejection R2 of Claims 4 and 7 Issue 3 Appellants argue (App. Br. 14—15; Reply Br. 9) the Examiner's rejection of claim 4 under 35 U.S.C. § 103(a) as being obvious over the combination of Sheehan, Zhou, and He is in error. These contentions present us with the following issue: 14 Appeal 2016-000363 Application 13/677,885 Did the Examiner err in finding the cited prior art combination teaches or suggests a method that includes all the recited limitations of claim 4? Analysis Appellants merely recite the limitations of claims 4 and 7, and contend the Examiner erred in relying upon He in setting forth Rejection R2. App. Br. 14. Such statements are not considered to be arguments. 37 C.F.R. § 41.37(c)(l)(vii) [now § 41.37(c)(l)(iv)] ("A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). Thus, we do not find Appellants' arguments to be persuasive. We further note, Appellants' arguments regarding the availability of the He reference as prior art are untimely5 and, ultimately, incorrect. Reply Br. 9. Specifically, Appellants contend "He is not prior art. The filing date of He is 10/13, 2011, which is after the priority date of the present invention of 7/25/2011. Thus, claims 4, 7, and 23 have not been properly rejected." Id. We disagree, and note He's filing date (October 13, 2011) predates the earliest 35 U.S.C. § 119(e) benefit date of the present application, i.e., 5 See 37 C.F.R. § 41.41(b)(2). 15 Appeal 2016-000363 Application 13/677,885 November 15, 2011. Appellants misstate the benefit date (referred to as the "priority date") of the present application as July 25, 2011. Id. Accordingly, based upon the findings above, on this record, we are not persuaded of error in the Examiner's reliance on the combined teachings and suggestions of the cited prior art combination to teach or suggest the disputed limitation of claim 4, nor do we find error in the Examiner's resulting legal conclusion of obviousness. Therefore, we sustain the Examiner's obviousness rejection of dependent claim 4, and grouped claim 7 which falls therewith. See Claim Grouping, supra. REPLY BRIEF To the extent Appellants may advance new arguments in the Reply Brief (Reply Br. 2—9) not in response to a shift in the Examiner's position in the Answer, we note arguments raised in a Reply Brief that were not raised in the Appeal Brief or are not responsive to arguments raised in the Examiner’s Answer will not be considered except for good cause (see 37 C.F.R. § 41.41(b)(2)), which Appellants have not shown. CONCLUSIONS (1) The Examiner did not err with respect to obviousness Rejections R1 and R2 of claims 1—11 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we sustain the rejections. (2) The Examiner erred with respect to obviousness Rejections R1 through R7 of claims 12—36 under 35 U.S.C. § 103(a) over the cited prior art combinations of record, and we do not sustain the rejections. 16 Appeal 2016-000363 Application 13/677,885 DECISION We affirm the Examiner's decision rejecting claims 1—11 and we reverse the Examiner's decision rejecting claims 12—36. AFFIRMED-IN-PART 17 Copy with citationCopy as parenthetical citation