Facebook, Inc.

Patent Trials and Appeals Board

May 20, 2021

2020003557 (P.T.A.B. May. 20, 2021)

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”).
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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.
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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.

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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
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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
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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
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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.

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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,”
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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.
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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.

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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