Facebook, Inc.Download PDFPatent Trials and Appeals BoardSep 30, 20212020004951 (P.T.A.B. Sep. 30, 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. 14/846,720 09/04/2015 Wai Man Tong 2006.053US1 6590 160546 7590 09/30/2021 Mannava & Kang, P. C. 3201 Jermantown Road Suite 525 Fairfax, VA 22030 EXAMINER GOODWIN, SCHQUITA D ART UNIT PAPER NUMBER 2459 NOTIFICATION DATE DELIVERY MODE 09/30/2021 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): docketing@mannavakang.com fb-pdoc@fb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WAI MAN TONG, MAYANK KUMAR, and GABRIEL ALLAN FRANCIS Appeal 2020-004951 Application 14/846,720 Technology Center 2400 Before MARC S. HOFF, JAMES R. HUGHES, and JASON J. CHUNG, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Claims 1–6, 9–12, and 20 are pending, stand rejected, are appealed by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act. 1–2.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Facebook, Inc. See Appeal Br. 1. 2 We refer to Appellant’s Specification (“Spec.”), filed Sept. 4, 2015; Appeal Brief (“Appeal Br.”), filed Dec. 26, 2019; and Reply Brief (“Reply Br.”), filed June 15, 2020. We also refer to the Examiner’s Final Office Action Appeal 2020-004951 Application 14/846,720 2 CLAIMED SUBJECT MATTER The claimed subject matter, according to Appellant, “relates generally to online systems,” “such as a social networking system,” “and more specifically to capturing information describing actions by online system users performed outside of the online system.” Spec. ¶¶ 1–2. More specifically, Appellant’s claims are directed to computer program products and methods for tailoring content to a user by an online system (social networking system). The online system receiving rules and requests for content, selects a rule that corresponds to a user’s actions on a third-party system, and stores an association between the user and an action on the third-party system based on the selected rule. See Spec. ¶¶ 6–11; Abstract. Claim 1 (directed to a method) and claim 20 (directed to a computer program product) are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: receiving, by an online system, one or more rules, each rule identifying an action performed by a user of the online system on a webpage from a third party system, the webpage from the third party system including a tracking mechanism and presented to the user on a client device, a rule identifying the action performed by the user of the online system on the webpage from the third party system corresponding to a combination of: an identifier of the webpage from the third party system including the tracking mechanism and presented to the user of the online system by the client device, information identifying content presented to the user of the online system by the client device prior to presenting the webpage from the third party system including the tracking mechanism, and one or more characteristics of the client device the rule also comprising (“Final Act.”), mailed Nov. 1, 2019; and Answer (“Ans.”) mailed Apr. 15, 2020. Appeal 2020-004951 Application 14/846,720 3 content to render the tracking mechanism in the webpage from the third party system; receiving, by the online system, a request for content to render the tracking mechanism included in the webpage from the third party system, the request received from the client device presenting the webpage from the third party system to the user of the online system by the client device; retrieving, by the online system, from the request for content, the identifier of the webpage from the third party system including the tracking mechanism and presented to the user of the online system by the client device, an identifier of the user of the online system, information identifying content presented to the user of the online system by the client device prior to presenting the webpage from the third party system including the tracking mechanism, and one or more characteristics of the client device; selecting, by the online system, a rule from the one or more rules that includes the identifier of the webpage from the third party system including the tracking mechanism and presented to the user of the online system by the client device, the information identifying content presented to the user of the online system by the client device prior to presenting the webpage from the third party system including the tracking mechanism retrieved from the request, and one or more characteristics of the client device retrieved from the request, the selected rule comprising content to render the tracking mechanism in the webpage from the third party system; and storing, by the online system, based on the selected rule, an association between the identifier of the user of the online system and the action performed by the user of the online system on the webpage from the third party system including the tracking mechanism and presented to the user of the online system by the client device identified by the selected rule. Appeal Br. 15–16 (Claims App.) (emphasis added). Appeal 2020-004951 Application 14/846,720 4 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Pankajakshan et al. (“Pankajakshan”) US 2012/0072228 A1 Mar. 22, 2012 Lindsay et al. (“Lindsay”) US 2012/0166520 A1 June 28, 2012 Noller et al. (“Noller”) US 2015/0088662 A1 Mar. 26, 2015 REJECTIONS3 1. The Examiner rejects claims 1–6, 10–12, and 20 under 35 U.S.C. § 103 as being unpatentable over Lindsay and Noller. See Final Act. 5–14. 2. The Examiner rejects claim 9 under 35 U.S.C. § 103 as being unpatentable over Lindsay, Noller, and Pankajakshan. See Final Act. 14–16. ANALYSIS Obviousness Rejection of Claims 1–6, 10–12, and 20 The Examiner rejects independent claim 1 (as well as independent claim 20, and dependent claims 2–6 and 10–12) as being obvious over Lindsay and Noller. See Final Act. 5–9; Ans. 3–16. The Examiner relies on Lindsay for teaching the online system (social networking system) receiving rules, which identify an action performed by the user of the online system on a webpage from a third party system, where each rule includes a combination of elements (i.e., an identifier of the webpage, information 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application has an effective filing date after the AIA’s effective (March 16, 2013), this decision refers to 35 U.S.C. § 103. Appeal 2020-004951 Application 14/846,720 5 identifying the content presented, characteristics of the user’s client device), as well as content to render a tracking mechanism of the webpage. See Final Act. 5–6; Ans. 3–8. Appellant contends that Lindsay and Noller do not teach the disputed limitations of claim 1. See Appeal Br. 5–13; Reply Br. 3–10. Specifically, Appellant contends, inter alia, that the Examiner-cited portions of Lindsay do not teach a receiving and storing the rules that identify the actions performed by the user (of the online system) on the webpage from the third party system. More specifically, Appellant contends: While Lindsay describes a social networking system receiving information from a tracking pixel that identifies a user accessing a web page advertisement included in a third party website, Lindsay does not disclose or suggest that an online system stores rules correlating an action performed by a user with different combinations of information received from a tracking pixel. Lindsay at [0019]. The pending claims recite, for example, an online system receiving a rule that identifies “the action performed by the user of the online system on the webpage from the third party system corresponding to a combination of: an identifier of the webpage from the third party system including the tracking mechanism and presented to the user of the online system by the client device, information identifying content presented to the user of the online system by the client device prior to presenting the webpage from the third party system including the tracking mechanism, and one or more characteristics of the client device.” Reply Br. 5; see Appeal Br. 5–9; Reply Br. 5–6. We agree with Appellant that the Examiner-cited portions of Lindsay does not teach or suggest receiving and storing rules that identify the actions performed on the webpage of the third party system. In particular, as explained by Appellant, Lindsay describes a tracking pixel (on a third-party website) sending an identifier associated with a user along with a web page Appeal 2020-004951 Application 14/846,720 6 advertisement identifier to a social networking system, where the social networking system creates a log entry (storing the identifiers to indicate the user has viewed the web page advertisement). See Appeal Br. 6–7; Reply Br. 5–6. The Examiner does not explain sufficiently how Lindsay’s process of creating a log entry would have suggested receiving (and storing) a rule that identifies the action performed by the user that is, in turn, selectable by the online system. The Examiner’s rejection essentially equates the recited rules with storing data (log entries). Although the Examiner cites Noller for the selecting step, there is no indication that Lindsay’s log entries could be selectable. Consequently, we are constrained by the record before us to find that the Examiner erred in finding that the combination of Lindsay and Noller renders obvious Appellant’s claim 1. Independent claim 20 includes limitations of commensurate scope. Claims 2–6 and 10–12 depend from and stand with claim 1. Thus, we do not sustain the Examiner’s obviousness rejection of claims 1–6, 10–12, and 20. Obviousness Rejection of Claim 9 The Examiner rejects claim 9 as being obvious in view of Lindsay, Noller, and Pankajakshan. See Final Act. 14–16. The Examiner does not suggest that the additional cited Pankajakshan reference cures the deficiency of the Lindsay-Noller combination (supra). See Final Act. 16. For the same reasons as claim 1, Appellant persuades us of error in the Examiner’s obviousness rejection of claim 9. Therefore, we reverse the Examiner’s obviousness rejection of claim 9. Appeal 2020-004951 Application 14/846,720 7 CONCLUSION Appellant has shown that the Examiner erred in rejecting claims 1–6, 9–12, and 20 under 35 U.S.C. § 103. We, therefore, do not sustain the Examiner’s rejections of claims 1–6, 9–12, and 20. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 10– 12, 20 103 Lindsay, Noller 1–6, 10–12, 20 9 103 Lindsay, Noller, Pankajakshan 9 Overall Outcome 1–6, 9–12, 20 REVERSED Copy with citationCopy as parenthetical citation