Ex Parte Bruich et al

Patent Trial and Appeal Board

Dec 20, 2016

13677885 (P.T.A.B. Dec. 20, 2016)

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).
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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
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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.
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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)
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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
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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
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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).
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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.
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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.
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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.").
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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.
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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
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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:
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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).
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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.
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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
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