Facebook, Inc.Download PDFPatent Trials and Appeals BoardMay 20, 20212020003557 (P.T.A.B. May. 20, 2021) 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. 13/756,360 01/31/2013 Mathew Varghese 26295-21847/US 9087 87851 7590 05/20/2021 Facebook/Fenwick Silicon Valley Center 801 California Street Mountain View, CA 94041 EXAMINER UBALE, GAUTAM ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 05/20/2021 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 MATHEW VARGHESE AND NUWAN SENARATNA ____________________ Appeal 2020-003557 Application 13/756,3601 Technology Center 3600 ____________________ Before JOSEPH L. DIXON, THU A. DANG, and BARBARA A. BENOIT, Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL 1 In a Prior Decision (Appeal Number 2017-002436, decided August 2, 2018, hereinafter “Prior Dec.”), we affirmed the Examiner’s rejections of claims 1–7 under 35 U.S.C. § 103(a) over Badros in view of Flemma; and of claims 8–14 under 35 U.S.C. § 102(b) over Badros. Appellant filed a Request for Rehearing of the Prior Decision (hereinafter “Prior Req. Reh’g”), however, we denied rehearing in a Prior Decision on Request for Rehearing (hereafter “Prior Dec. Req. Reh’g”). Appeal 2020-003557 Application 13/756,360 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–17 (Appeal Br. 4, 8), which constitute all the claims pending in this application.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. A. INVENTION According to Appellant, the invention relates to “reviewing advertisements and providing feedback about the advertisements in an online system.” Spec. ¶ 1. B. ILLUSTRATIVE CLAIM Claim 1 is illustrative of the subject matter on Appeal and is reproduced below: 1. A computer implemented method comprising: receiving, via a graphical user interface of an online system, a first portion of an advertisement from an advertiser, the advertisement comprising the first portion and a second portion, each of the first and second portions of the advertisement comprising one or more components; identifying the one or more components of the first portion of the advertisement; generating one or more tags describing characteristics of a component of the received first portion of the advertisement, wherein the one or more tags describing characteristics of the component are independent of the policy of the online system; storing the generated one or more tags and data describing the component of the advertisement associated with the one or more tags; 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. According to Appellant, the real party in interest is Facebook, Inc. of Menlo Park, California. Appeal Br. 2. Appeal 2020-003557 Application 13/756,360 3 determining, by the online system, whether the component of the received first portion of the advertisement violates one or more policies of the online system based on the generated one or more tags; and responsive to determining, by the online system, that the component of the received first portion of the advertisement violates a policy of the online system, before receiving, by the online system via the graphical user interface, all the components of the advertisement from the advertiser including the one or more component of the second portion of the advertisement, providing the advertiser with a message in the graphical user interface that the component violates the policy of the online system. C. REJECTIONS The prior art relied upon by the Examiner in rejecting the claims on appeal is: Name Reference Date Badros US 2006/0149623 A1 July 6, 2006 Bowra US 2010/0280876 A1 Nov. 4, 2010 Schoen US 2013/0151346 A1 June 13, 2013 Claims 1–7 and 15–17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the teachings of Badros, Bowra, and Schoen. Claims 8–14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the teachings of Badros and Schoen. Claim 17 stands rejected under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. Appeal 2020-003557 Application 13/756,360 4 II. ISSUES The issues before us are whether the Examiner has erred in the finding that: 1. The combination of Badros, Bowra, and Schoen teaches or suggests responsive to determining, by the online system, that the component of the received first portion of the advertisement violates a policy of the online system, before receiving, by the online system via the graphical user interface, all the components of the advertisement from the advertiser including the one or more component of the second portion of the advertisement, providing the advertiser with a message in the graphical user interface that the component violates the policy of the online system Appeal Br. 13 (Claims App. (claim 1)) (emphasis added); and 2. Claim 17 fails to comply with the written description requirement. III. ANALYSIS Claims 1–17 stand rejected under Pre-AIA 35 U.S.C. § 103(a) In deciding Appeal No. 2017-002436 (“Prior Decision” or “Prior Dec.”), we affirmed the Examiner’s rejections of claims 1–7 under 35 U.S.C. § 103(a) over the Badros in further view of Flemma; and of claims 8– 14 under 35 U.S.C. § 102(b) over the teachings of Badros. See Prior Dec. 12. In particular, we agreed with the Examiner that Badros teaches ‘informing via the graphical user interface, or providing “before receiving all the components of the advertisement” as recited in independent claim 1. Prior Dec. 8. In its Request for Rehearing of the Prior Decision, Appellant contends “[i]t can be understood from the context of the claim that the ‘before’ limitation refers to before all the components of the advertisement Appeal 2020-003557 Application 13/756,360 5 are received by the online system that is making the determination of whether the submitted components violate one or more policies.” Prior Req. Reh’g 2. However, in the Prior Decision on Request for Rehearing, we pointed out that “nothing in the claim precludes a user/customer from also receiving the advertisements ‘via the graphical user interface’ of the online system and nothing in the claim requires that the ‘receiving’ entity should be interpreted in view of the entity ‘providing’ the message.” Prior Dec. Req. Reh’g 4. In the present Appeal, independent claim 1 has been amended to recite, inter alia, “determining, by the online system, whether the component of the received first portion of the advertisement violates one or more policies of the online system,” and “responsive to determining, by the online system, that the component of the received first portion of the advertisement violates a policy of the online system, before receiving, by the online system via the graphical user interface, all the components of the advertisement from the advertiser . . . , providing the advertiser with a message.” See claim 1 (emphasis added). Appellant explains that “the claims have been amended to clarify that recited steps are performed before the online system–and not the customer–receives all the components.” Reply Br. 4. In particular, Appellant contends that the claim has been amended to recite “before receiving, by the online system via the graphical user interface.” Appeal Br. 7. Appellant argues that the combination of Badros, Bowra, and Schoen does not teach of suggest these limitations of claim 1 as amended. Appeal Br. 7. Appellant points out the Office Action acknowledges that Badros teaches “the submitted ad is checked for compliance using the advertiser self-service user interface before being Appeal 2020-003557 Application 13/756,360 6 received by the customer.” Id. Appellant argues that “[t]he online system is not a customer.” Id. We have considered all of Appellant’s arguments and evidence presented. We agree with Appellant that the preponderance of the evidence on this record does not support the Examiner’s legal conclusion that claim 1 would have been obvious over the combination of Badros, Bowra, and Schoen. Badros discloses a system for automatically checking advertisements for compliance with policies of an online ad serving system. Badros, Abstr. After checking an advertisement using policy information, the advertisement can be approved, disapproved, or passed. Id. ¶ 60, Fig. 5. After an advertisement is approved, it is made available for serving (id. ¶ 42) to potential customers. Id. ¶ 38. The advertisers can submit advertisements and/or exemption requests via an advertiser self-service user interface. Id. ¶ 44, Fig. 2. The interface can warn the advertiser that its advertisement will not be approved unless it obtains an exemption request. Id. ¶ 44. The user interface can include hints or annotations including checkboxes, dialog, and a dynamic GUI to prompt for extra information. Id. ¶ 96. As the Examiner finds, Badros discloses an online system associated with an advertisement network that includes an “approval system” (Ans. 5 (citing Badros ¶ 39)), wherein, in an embodiment, “the submitted ad is checked for compliance using the advertiser self-service user interface, before being received by the customer to communicate the advertisement disapproval with user interface” (Ans. 5–6). However, we agree with Appellant that, in this embodiment of Badros, “the submitted ad is checked for compliance using the advertiser self-service user interface before being Appeal 2020-003557 Application 13/756,360 7 received by the customer,” but “[an] online system is not a customer.” Appeal Br. 7. We agree with Appellant that Badros fails to disclose providing the advertiser with a message in the graphical user interface that the component violates the policy of the online system “before receiving, by the online system via the graphical user interface,” all the components of the advertisement, as recited in claim 1. Reply Br. 4 (citing Appeal Br. 7). We note the Examiner does not address Appellant’s argument that the claim has been amended to recite providing the advertisement with a message before the receiving all component “by the online system.” See Ans. 5–6. Furthermore, the Examiner does not suggest, and has not established on this record, that the additionally cited Bowra and Schoen references overcome the aforementioned deficiencies of Badros. See generally Final Act. 9–11; Ans. 4–6. Consequently, we are constrained by the record before us to find that the Examiner erred in finding Badros, in view of Bowra and Schoen, teaches or suggests the contested limitations of Appellant’s claim 1. Dependent claims 2–7 and 15–17 depend on claim 1, and thus, stand therewith. Independent claim 8 includes limitations of commensurate scope as the above-discussed limitations of claim 1, and is rejected over the same reasoning. See Final Act. 21. Thus, we also do not sustain the Examiner’s rejection of claim 8, and of claims 9–14 depending therefrom, over Badros in further view of Schoen. Appeal 2020-003557 Application 13/756,360 8 Claim 17 stands rejected under AIA 35 U.S.C. § 112(a) (Lack of Written Description) The Examiner rejects claim 17 as lacking of written description in the Specification as originally filed. Final Act. 2. In particular, the Examiner contends that the Specification does not provide a written description of claim limitation “wherein components of the first portion of the advertisement have a first subset of types and components of the second portion of the advertisement have a second subset of types, different than the first subset of types.” Final Act 3. In order to satisfy the written description requirement, “the specification must describe an invention understandable to [a] skilled artisan and show that the inventor actually invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Id. Compliance with the written description requirement set forth in 35 U.S.C. § 112 does not require that the claimed subject matter be described identically in the Specification. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). Although the Examiner finds that the Specification does not “provide how the components for [the] first portion have [a] first subset type and [the] second portion have [a] second subset type for an advertisement to comply with online policies” (Final Act. 3), we agree with Appellant that claim 17 does not recite “how,” i.e., “conditions for an advertisement to comply with online policies.” Appeal Br. 11. In particular, as Appellant points out, claim 1, upon which claim 17 depends, recites that “the advertisement comprising the first portion and a second portion, each of the first and second portions of the advertisement comprising one or more components,” Appeal 2020-003557 Application 13/756,360 9 and claim 17 merely adds that the first portion and second portion are each comprised of multiple types. Appeal Br. 13. In the claimed invention, advertisements are broken into components (e.g., title, content, image, landing page, etc.), wherein each component, rather than the entire advertisement, is then reviewed. Spec. ¶ 13. As set forth in the Specification , an advertisement submission interface is provided which includes multiple fields for the user to enter components of an advertisement, wherein, in an example, the user types the title of the advertisement for a component review module to analyze and determine if the words comply with a policy of the online system, while, in another example, the component review module may determine that the user has provided information for a component when the user switches field in the interface (e.g., the user selects a body field from the interface rather than a title field). Id. ¶ 38. According to Appellant, the Specification thus discloses that the title of the advertisement is reviewed before a body for the advertisement is received via the graphical user interface, wherein “[i]n this example, the first portion of the advertisement includes the title (a first subset of types) and the second portion of the advertisement includes the body (a second subset of types).” Appeal. Br. 12 (citing Spec. ¶ 38). Accordingly, Appellant contends that, as described in the Specification, a first portion of an advertisement may contain components having a first subset of types (e.g., title and image) that are received via the graphical user interface, and a second portion of the advertisement may contain a components having a different subset of types (e.g., content and landing page) that have not been received by the online system when the method is executed. Id. at 11–12. Appeal 2020-003557 Application 13/756,360 10 We are persuaded that the contested claim limitations, “the advertisement comprising the first portion and a second portion, each of the first and second portions of the advertisement comprising one or more components,” wherein “components of the first portion of the advertisement have a first subset of types, and components of the second portion of the advertisement have a second subset of types, different than the first subset of types” of claim 17, are adequately described in the Specification “to reasonably convey to one skilled in the relevant art that the inventors, at the time the [invention] was filed, had possession of the claimed invention.” Appeal Br. 12. That is, while the claimed subject matter may not be described identically in the Specification, the Specification does describe an invention understandable to a skilled artisan and show that the inventor actually invented the invention claimed. Accordingly, based on the record before us, we reverse the Examiner’s rejection of claim 17 under 35 U.S.C. § 112(a) as lacking of written description. IV. CONCLUSION AND DECISION The Examiner’s rejections of claims 1–17 under 35 U.S.C. § 103(a) and rejection of claim 17 under 35 U.S.C. § 112(a) are reversed. Appeal 2020-003557 Application 13/756,360 11 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 15–17 103(a) Badros, Bowra, Schoen 1–7, 15–17 8–14 103(a) Badros, Schoen 8–14 17 112(a) Written Description 17 Overall Outcome 1–17 REVERSED Copy with citationCopy as parenthetical citation