Facebook, Inc.

Patent Trials and Appeals Board

May 4, 2021

2020001799 (P.T.A.B. May. 4, 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.
14/528,170 10/30/2014 Keyun Tong 2006.028US1 3085
160546 7590 05/04/2021
Mannava & Kang, P. C.
3201 Jermantown Road
Suite 525
Fairfax, VA 22030
EXAMINER
PATEL, DIPEN M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
05/04/2021 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 KEYUN TONG and YI HUANG

Appeal 2020-001799
Application 14/528,170
Technology Center 3600
BEFORE RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
TAWEN CHANG, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Facebook, Inc.
Appeal Br. 2. The Appeal Brief does not include page numbers. We cite to
the Appeal Brief as if the pages were numbered consecutively starting with
page 1.
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CLAIMED SUBJECT MATTER
The claims are directed to processes in which a third party provides,
to an online system such as a social networking system, a target group for
advertising, and prices associated with advertisements are modified
depending on whether the online system uses the target group when
selecting advertisements to be presented to users of the online system.
Claim 1 is representative and reads as follows:
1. A method comprising:
[a] storing, at an online system, information received from a
third party system describing a target group that
identifies a specific plurality of users of the online system
and an amount of compensation to the third party system
if the target group is used to select advertising content for
presentation to a user of the plurality of users of the
online system;
[b] receiving an advertisement request from an advertiser, the
advertisement request specifying an advertisement, the
target group, and a bid amount;
[c] identifying an opportunity to present advertising content to a
viewing user of the plurality of users of the online
system;
[d] identifying the advertisement associated with targeting
criteria specifying the target group to define a target
audience of the advertisement, where the viewing user is
included in the target group;
[e] modifying the bid amount associated with the identified
advertisement based on the amount of compensation to
the third party system in response to a determination that
the viewing user’s inclusion in the target group caused
the advertisement to be identified as eligible for
presentation to the viewing user;
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[f] including the identified advertisement in a selection process
using the modified bid amount, the selection process
including one or more additional advertisements each
associated with bid amounts;
[g] selecting the identified advertisement in the selection
process;
[h] determining a price amount associated with the identified
advertisement based at least in part on bid amounts
associated with the one or more additional
advertisements;
[i] modifying the price amount associated with the identified
advertisement based on the amount of compensation to
the third party system identified by the third party
system; and
[j] charging the modified price amount associated with the
identified advertisement to the user associated with the
advertisement.
Appeal Br. 17–18 (bracketed letters added to show claimed steps identified
by Examiner).
REFERENCE(S)
The prior art relied upon by the Examiner is:
Name Reference Date
Ross Koningstein
(“Koningstein”)
US 2006/0224447 A1 Oct. 5, 2006
Atul Bhandari et al.
(“Bhandari”)
US 2009/0094108 A1 Apr. 9, 2009
Adam Pritchard et al.
(“Pritchard”)
US 2010/0042465 A1 Feb. 18, 2010
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REJECTION(S)
The following rejections are before us for review:
(1) Claims 1–20, under 35 U.S.C. § 101 as being directed to an
abstract idea without significantly more (Final Act. 2–11 (entered March 14,
2019));
(2) Claims 1–3, 5–11, and 13–20, under 35 U.S.C. § 1032 as being
unpatentable over Bhandari and Pritchard (Final Act. 11–23); and
(3) Claims 4 and 12, under 35 U.S.C. § 103 as being unpatentable
over Bhandari, Pritchard, and Koningstein (Final Act. 23–24).
PATENT ELIGIBILITY
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories., Inc., 566 U.S. 66
(2012) and Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims

2 The Examiner states that the “present application, filed on or after March
16, 2013, is being examined under the first inventor to file provisions of the
AIA.” Final Act. 2.
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before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski v. Kappos, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
In January of 2019, the USPTO published revised guidance on the
application of § 101. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (“2019 Office
Guidance” or “Office Guidance”). In light of comments received in
response to the Office Guidance, the USPTO subsequently issued the
October 2019 Patent Eligibility Guidance Update (“October 2019
Update”).3 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.
Following the Office Guidance and the October 2019 Update, under
Revised Step 2A, we first look to whether the claim recites the following:

3 https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf.
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B of the Office Guidance, to whether the claim:
(3) adds specific limitations beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Office Guidance (84 Fed. Reg. at 56).
Analysis
As seen above, Appellant’s representative claim 1 recites a “[a]
method” composed of a series of steps. Appeal Br. 17. We therefore agree
with the Examiner that the subject matter recited in claim 1 is a process,
which falls within one of the broad statutory categories of patent-eligible
subject matter under 35 U.S.C. § 101. See Final Act. 2. Accordingly, we
proceed to Step 2A, Prong One, of the Office Guidance to determine the
claim’s subject matter eligibility in accordance with guidance under
Mayo/Alice.
Office Guidance—Revised Step 2A, Prong 1
Applying Revised Step 2A, Prong 1, of the 2019 Office Guidance, the
Examiner determined that Appellant’s representative claim 1 recites a
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judicial exception, in the form of a method of organizing human activity,
which is implemented using mathematical concepts. See Final Act. 3–7.
Consistent with the Examiner’s determination, the 2019 Office
Guidance explains that abstract ideas include “[c]ertain methods of
organizing human activity.” 84 Fed. Reg. at 52. The 2019 Office Guidance
explains further that methods of organizing human activity include
“commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations).” Id. (emphasis added).
We agree with the Examiner that Appellant’s representative claim 1
recites a method of organizing human activity, in the form of an advertising
process that prescribes certain business relationships. In particular, all of the
steps in claim 1 recite activities performed pursuant to presenting an
advertisement to users of an online system.
In step [a] of Appellant’s claim 1, an “online system” stores
information received from a “third party system.” Appeal Br. 17.
Appellant’s Specification explains that an online system may be a social
networking system. Spec. ¶ 19. Appellant’s Specification explains that a
third party system may possess various types of information, including
information about advertising content, and information about users of the
online system. See id. ¶¶ 18, 20.
In step [a] of claim 1, the information received by the online system (a
social networking system), from the third party system, describes a target
group of users of the online system and “an amount of compensation to the
third party system if the target group is used to select advertising content for
presentation to a user” of the online system. Appeal Br. 17. Thus, step [a]
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not only recites acts performed pursuant to an advertising process, but also
specifies a business relationship between the online system and the third
party system, as to compensation.
Step [b] of Appellant’s claim 1 recites receiving an advertising request
from an advertiser (which may be distinct from the third party system), with
the request specifying the advertisement, target group, and a bid amount.
Appeal Br. 17. Step [c] recites identifying an opportunity to present
advertising content to a user of the online system, and step [d] recites
“identifying the advertisement associated with targeting criteria specifying
the target group to define a target audience of the advertisement, where the
viewing user is included in the target group.” Id. Because steps [b]–[d] thus
recite activities performed pursuant to targeting a particular advertisement to
a particular user of a social networking system (the claimed “online
system”), steps [b]–[d] of claim 1 are clearly activities that are part of an
advertising process.
Step [e] of claim 1 recites modifying the bid amount of the identified
advertisement, “based on the amount of compensation to the third party
system in response to a determination that the viewing user’s inclusion in the
target group caused the advertisement to be identified as eligible for
presentation to the viewing user.” Appeal Br. 17. Thus, when a user’s
eligibility for a requested advertisement is based on the user’s inclusion in
the target group identified by the third party, the bid for the advertisement is
modified based on the amount of compensation specified in step [a].
Because step [e] recites adjusting the bid amount for presenting an
advertisement to a user of an online system, we agree with the Examiner that
step [e] is part of an advertising process. As the Examiner notes, moreover,
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Appellant’s Specification explains that the bid amount adjustment involves a
mathematical computation, such as a percentage determination. See Spec.
¶ 8 (disclosing that if the third party system “specifies an amount of
compensation of 15% and the bid amount associated with the content item is
$1.00, the online system decreases the bid amount by 15%, resulting in a
modified bid amount of $0.85”); id. ¶ 35 (“In one embodiment, the amount
of compensation to the third party system 130 is a percentage, so the content
item modifies the bid amount associated with the content item by reducing
the bid amount by the percentage.”).
Step [f] of Appellant’s representative claim 1 recites including the
advertisement identified for presentation to the target group in a selection
process that uses the modified bid amount, wherein the selection process
includes one or more additional advertisements each associated with bid
amounts, and step [g] recites selecting the advertisement identified for
presentation to the target group, in the selection process of step [f]. Appeal
Br. 17. As is evident, these steps of selecting an advertisement for
presentation to a target group are activities performed pursuant to an
advertising process, which as discussed above is a method of organizing
human activity constituting an abstract idea. See Office Guidance (84 Fed.
Reg. at 52). Step [h] of Appellant’s representative claim 1 also recites an
activity performed pursuant to an advertising process, because it recites
determining the price of the identified advertisement, based on the prices of
the other advertisements used in the selection process. See Appeal Br. 18.
Step [i] of Appellant’s representative claim 1 recites modifying the
price of the identified advertisement based on the amount of compensation
to the third party system, specified by the third party system in step [a].
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Appeal Br. 18. Again, because the price modification of step [i] is an
activity performed pursuant to presenting an advertisement to a target group,
step [i] is part of a method of organizing human activity, which constitutes
an abstract idea. See Office Guidance (84 Fed. Reg. at 52). As the
Examiner notes, moreover, Appellant’s Specification explains that the price
amount adjustment involves a mathematical computation, such as a
percentage determination. See Spec. ¶ 9 (disclosing that if the third party
system specifies a 15% compensation amount, then “if the selection process
associates an amount of $0.70 with the content item, the online system
divides the amount of $0.70 by (1.00-0.15) to modify the amount, resulting
in a modified amount of $0.82.”).
Lastly, step [j] of Appellant’s representative claim 1 recites charging
the modified price amount of the identified advertisement to the user
associated with the advertisement. Appeal Br. 18. Again, because charging
for presentation of an advertisement is an activity performed pursuant to
presenting an advertisement to the target group, step [j] is part of a method
of organizing human activity, which constitutes an abstract idea. See Office
Guidance (84 Fed. Reg. at 52).
In sum, in view of the discussion above, we agree with the Examiner
that the process recited in Appellant’s representative claim 1, in its entirety,
recites an advertising method, whether the claim is considered as a whole or
in light of its individual steps. We therefore also agree with the Examiner
that claim 1, in its entirety, recites an abstract idea. See Office Guidance (84
Fed. Reg. at 52) (abstract ideas include “[c]ertain methods of organizing
human activity” which in turn include “commercial or legal interactions
(including agreements in the form of contracts; legal obligations;
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advertising, marketing or sales activities or behaviors; business relations).”
(emphasis added)).
Appellant asserts error in the Examiner’s determination that claim 1
recites an abstract idea because the claim does not recite mathematical
formulas, and because the Examiner did not consider the claim as a whole.
Appeal Br. 6–7. We are not persuaded.
As discussed above, the bid amount modification of step [e] and the
price amount modification of step [i] are both based on the amount of
compensation to the third party system specified in step [a]. See Appeal Br.
17–18. Thus, to arrive at the modified amounts, some type of mathematical
computation, based on the compensation amount of step [a], must
necessarily be performed. As the Examiner points out, moreover, and as
discussed above, Appellant’s Specification exemplifies a percentage
calculation for those steps.
Further, as discussed above, every step of the process of Appellant’s
representative claim 1 recites an activity performed pursuant to presenting
advertising to a target user of the online system. Thus, even if it were true
that certain steps did not involve mathematical concepts, the process
nonetheless recites an abstract idea, in the form of a method of organizing
human activity. Appellant does not persuade us, therefore, that the
Examiner improperly dissected the claim into small elements in determining
that claim 1 recites an abstract idea.
Office Guidance—Revised Step 2A, Prong 2
Having determined under Revised Step 2A, Prong 1, of the Office
Guidance that Appellant’s claim 1 recites judicial exceptions, we turn to
Revised Step 2A, Prong 2, of the Office Guidance to determine whether
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Appellant’s representative claim 1 recites additional elements that integrate
the judicial exceptions into a practical application. See Office Guidance (84
Fed. Reg. at 54–55).
The Examiner determined that Appellant’s representative claim 1 does
not recite additional elements that integrate the judicial exception into a
practical application, because any additional elements recited in the claim
are generic elements recited at a high level of generality. See Final Act. 7–8.
We agree.
As discussed above, when the overall sequence of steps in claim 1 is
considered as whole, and also when the claimed steps are considered
individually, claim 1 recites an advertising process, which is among the
categories of activity listed in the Office Guidance as being a method of
organizing human activity. See Office Guidance (84 Fed. Reg. at 52). We
are not persuaded that claim 1 recites any additional elements, beyond the
abstract process, that integrate the process into a practical application.
Specifically, claim 1 does not expressly recite any devices such as
computing devices or processors. Although claim 1 recites an “online
system” and a “third party system,” which may invoke computing devices
capable of communicating over the internet, given the absence of any
recitation of any specific device, we agree with the Examiner that any
devices implied by claim 1 are properly considered generic and specified
only at a very high level of generality. We therefore also agree with the
Examiner that, beyond the abstract idea recited in Appellant’s representative
claim 1, the claim does not recite additional elements that integrate the
judicial exception into a practical application, whether the claimed process is
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considered as a whole, or whether the claimed elements are considered
individually.
Appellant argues that the process of claim 1 integrates the recited
abstract ideas into a practical application because the claimed steps are an
improvement to prior methods typically used in targeted advertising. Appeal
Br. 7–8. Specifically, Appellant contends:
The claimed method is a “practical application” because
it provides a way for the advertiser to direct targeted ads to
users of an online system by using information available to a
third party system (and not necessarily to the online system)
and without sharing the user information with the online system
or the advertiser. It allows the third party system to protect
valuable information (e.g., attributes about the target group of
users) owned by the third party system from being used by the
online system and the advertiser for other purposes. The
claimed method further enables the incentives needed to make
this collaboration work-namely, that the online system shares
some of the ad revenue with the third party system while
adjusting the bid pricing so that the revenue sharing does not
negatively affect ad selection for the online system.
Appeal Br. 8; see also Reply Br. 3 (“Because the online system is told only
the identities of users in the target group, the claimed invention allows the
online system to provide targeted content to a viewing user without knowing
the common attributes that caused them to be included in the target group.”);
Reply Br. 5 (distinguishing the claimed process from conventional
advertising processes in that “[t]he online system does not have access to the
users’ attributes that caused them to be in the target audience” and that “the
claimed method is advantageous to third-party systems because it allows the
third-party to be compensated when a target group that it identified to the
online system is used in ad targeting without giving up valuable user
information”).
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We do not find Appellant’s arguments persuasive. We acknowledge
that one example in which a judicial exception is integrated into a practical
application is the situation in which the claim at issue includes “[a]n
additional element [which] reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field.” Office
Guidance (84 Fed. Reg. at 55) (emphasis added). However, the
improvements identified by Appellant are to the abstract idea and the claim
does not specifically recite technically how the improvements are
implemented. For example, the claim states that the bid amount is modified,
but does not provide a technical solution to how this is accomplished. As
explained in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1315 (Fed. Cir. 2016), we must “look to whether the claims . . . focus on a
specific means or method that improves the relevant technology or are
instead directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery.” Here, no specific means is
recited.
Here, even if it were true that the process of Appellant’s claim 1
represented an improvement in advertising processes, the method of
advertising as claimed is ultimately an abstract idea in the form of a method
of organizing human activity, as discussed above, and not a technical field.
See Office Guidance (84 Fed. Reg. at 52). As our reviewing court has
explained, improvement to the abstract idea itself is not a technological
improvement that is sufficient to confer eligibility for patenting to the
abstract idea. See In re Board of Trustees of Leland Stanford Junior
University, 991 F.3d 1245, 1251 (Fed. Cir. 2021) (“[T]he improvement in
computational accuracy alleged here does not qualify as an improvement to
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a technological process; rather, it is merely an enhancement to the abstract
mathematical calculation . . . itself.”).
As noted above, moreover, Appellant’s claim 1 does not expressly
recite any specific computer or other technical elements or devices, beyond
the abstract advertising methods, that might be improved by the claimed
process. We are not persuaded therefore, that claim 1 includes “[a]n
additional element [which] reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field.” Office
Guidance (84 Fed. Reg. at 55) (emphasis added).
We agree with the Examiner, moreover, that claim 1 does not include
any specific limitations that reflect the improvement alleged by Appellant.
In particular, claim 1 does not include any limitation limiting the target
group of step [a] to only a list of user identities, nor does claim 1 include any
limitations that inherently exclude the third party system from providing the
online system with users’ private information.
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner erred in determining that Appellant’s representative claim 1
does not recite additional elements that integrate the judicial exception into a
practical application.
Office Guidance—Step 2B
Having determined that Appellant’s representative claim 1 recites a
judicial exception (abstract idea in the form of a method of organizing
human activity) under Revised Step 2A, Prong 1, of the 2019 Office
Guidance, and does not integrate that judicial exception into a practical
application under Revised Step 2A, Prong 2, we turn to Step 2B of the
Office Guidance. In Step 2B, we must determine whether (a) claim 1 recites
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specific limitations beyond the judicial exceptions that are not well-
understood, routine, or conventional in the field, or (b) whether claim 1
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See Office Guidance (84 Fed. Reg. at 56).
In the present case, applying Step 2B of the Office Guidance, the
Examiner determined that claim 1 simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See Final Act. 8–11. We agree
with the Examiner.
As discussed above, all of the steps recited in Appellant’s claim 1,
steps [a]–[j], recite generic, high-level actions performed pursuant to
executing a process of advertising, including providing information about a
potential target group for an advertisement, selecting the advertisement, and
adjusting the bid and price amounts depending on whether the target group
is used to select advertising content to be presented to a user of the online
system. Thus, whether considered as a whole or as an individual series of
steps, none of the actions recited in the steps of claim 1 requires performing
anything beyond the abstract idea. While claim 1 does recite an online
system and a third party system, which implies using computing devices
capable of communicating over the internet, given the absence of any
recitation of any specific device, we agree with the Examiner that any
devices implied by claim 1 are properly considered well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality.
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Appellant argues that representative claim 1’s process is eligible for
patenting under Step 2B because claim 1 recites “an unconventional way of
defining a target group of users—where, traditionally, target groups are
identified based on a common characteristic determined by the online
system.” Appeal Br. 10; see also id. (“The inherent data obfuscation of the
significance of the target group from the online system is significantly more
than conventional approach of offering compensation to the third party
system for information about characteristics of users included in target
groups.”); see also Reply Br. 6–7.
We are not persuaded. As discussed above, whether considered as a
whole or as an individual series of steps, Appellant’s claim 1, in its entirety,
recites an advertising process, which is a method of organizing human
activity that, in turn, constitutes an abstract idea. See Office Guidance (84
Fed. Reg. at 52). The improvements identified by Appellant reside in the
abstract idea, itself. As our reviewing court has explained, “merely reciting
an abstract idea by itself in a claim—even if the idea is novel and non-
obvious—is not enough to save it from ineligibility.” Solutran, Inc. v.
Elavon, Inc., 931 F.3d 1161, 1169 (Fed. Cir. 2019). Thus, by itself, the fact
that the steps in Appellant’s claim 1 might be unconventional, that is, novel
and unobvious, does not demonstrate that the claim recites an inventive
concept sufficient to confer eligibility for patenting. See In re Board of
Trustees of Leland Stanford Junior University, 991 F.3d at 1251 (“[N]ovelty
[is not] the touchstone of patent eligibility.”).
Eligibility for Patenting—Conclusion
As discussed above, we are persuaded that Appellant’s representative
claim 1 recites a judicial exception under Revised Step 2A, Prong 1, of the
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2019 Office Guidance, and does not integrate that judicial exception into a
practical application under Revised Step 2A, Prong 2. As also discussed
above, we are persuaded that, to the extent claim 1 recites additional
elements beyond the judicial exception recited in the claim, claim 1 simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception.
Accordingly, applying the principles set forth in the 2019 Office
Guidance and October 2019 Update, we find that the preponderance of the
evidence supports the Examiner’s determination that Appellant’s claim 1 is
directed to subject matter that is ineligible for patenting. We, therefore,
affirm the Examiner’s rejection of claim 1 on that ground. Claims 2–20 fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
OBVIOUSNESS
In rejecting claims 1–3, 5–11, and 13–20 for obviousness over
Bhandari and Pritchard, the Examiner cited Bhandari as disclosing a process
having almost all of the steps required by the rejected claims. See Final
Act. 11–23.
The Examiner found that Bhandari differs from the process recited in
Appellant’s claim 1 in that Bhandari does not include steps [e] and [i] of
Appellant’s claim 1 in its disclosed process. See Final Act. 15–16. The
Examiner found, however, that Pritchard teaches the steps of Appellant’s
claim 1 missing from Bhandari, and reasoned that it would have been
obvious to include those steps in Bhandari’s process. See id. at 15–17.
Appellant contends that the Examiner erred in determining that
Bhandari teaches or suggests the information storing step [a] of Appellant’s
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claim 1. See Appeal Br. 10–14.
In particular, Appellant argues, the Examiner has not explained
sufficiently why Bhandari teaches or suggests a step in which the
information received by the online system from the third party system
identifies an amount of compensation to the third party system if the target
group identified by the third party system is used to select advertising
content for presentation to a user of the online system. See Appeal Br. 13
(“Bhandari does not teach or suggest using the targeting criteria for an
advertisement from an advertiser for a purpose other than defining the target
audience for that advertisement.”). Rather, Appellant argues, the advertiser
in Bhandari “is merely making a request to the advertising system manager
to present its advertisement and defining the conditions for the
advertisement, and the advertiser does not get compensated.” Appeal Br. 13.
In this instance, we find Appellant’s argument persuasive. In step [a]
of Appellant’s claim 1, the online system receives, from the third party
system, information that identifies a target group of users of the online
system, and the information must also identify “an amount of compensation
to the third party system if the target group is used to select advertising
content for presentation to a user . . . of the online system.” Appeal Br. 17.
That is, step [a] requires the third party system to provide a compensation
amount to be paid when the provided target group is used to select an
advertisement for a particular user.
Bhandari discloses a process in which an “advertising system
manager, a partner and one or more participating publishers may collectively
agree on a revenue sharing arrangement, based on revenue generated from
ad conversions, for revenue sharing between publishers and partners such as
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content providers distributing embedded content links to publishers through
the advertising system manager.” Bhandari, abstract.
The Examiner initially cites ¶¶ 19–21 of Bhandari as describing step
[a] of Appellant’s claim 1. See Final Act. 12; Ans. 12–13.
Paragraph 19 of Bhandari discloses that the “advertiser 102 may
establish an advertising program with the advertising system manager 104. .
. . An advertiser 102 may also be a partner 112 and/or a publisher 106.”
Bhandari ¶ 19; see also Bhandari Fig. 1 (showing advertisers 102,
advertising system manager 104, publisher 106, and partners 112 connected
to a network that is accessible by a user 108)
Relevant to step [a] of Appellant’s claim 1, Bhandari discloses that
“[e]ach ad group also may include targeting criteria or restrictions.
Targeting criteria (or restrictions) may be used to identify the target audience
for a particular ad campaign of the advertiser 102.” Bhandari ¶ 21.
As Appellant points out, however, Bhandari’s teaching in ¶ 21
regarding providing a target group does not include a disclosure regarding a
compensation amount to be paid to the provider of the target group when the
target group is used to select an advertisement for a particular user. To the
contrary, as Appellant argues, the sole disclosure in ¶¶ 19–21 of Bhandari as
to compensation for advertising content relates to how much the advertiser is
willing to pay for each advertisement, rather than an amount to be
compensated for providing a target group of users. See Bhandari ¶ 20
(“[T]he advertiser 102 may specify a maximum monetary value with the
advertising system manager 104 as to how much the advertiser 102 is
willing to pay per user click or impression per ad or ad group.”).
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The Examiner contends that, because ¶ 19 of Bhandari discloses that
an advertiser may be a partner or a publisher, Bhandari’s “revenue sharing
scheme does compensate advertiser/partner/publisher, at least note Fig. 1;
[0061]-[0063], based on targeting criteria defined for a target group based on
geographic location for instance noted further in [0062].” Ans. 14.
We agree with the Examiner that Bhandari discloses that each of the
advertiser, partner, and publisher share in the advertising revenues. See
Bhandari ¶¶ 61–63. In particular, we note that a publisher’s revenue may be
based on type of content or geographical location. See id. ¶ 62 (“Details of
the revenue sharing scheme may include, for example, information
describing the nature and quantitative measure of the compensation being
offered, and the criteria may include, for example, publishers 106 who
publish a particular type of content or publishers 106 that reside in a
particular geographic location.”).
We are not persuaded, however, that the Examiner has explained
sufficiently clearly how or why Bhandari teaches or suggests a step having
the specific requirements of step [a] of Appellant’s claim 1, in which a
discrete entity (claim 1’s third party system) provides, to an online system,
not only a target group of users, but also an amount of compensation to be
paid to that entity if the target group is used to present a selected
advertisement to a particular user. In particular, the fact that a number of
actors in Bhandari’s process may share in advertising revenue, and that
revenue sharing may be based on geographical location, does not persuade
us that Bhandari teaches or suggests the specific requirement of step [a] of
Appellant’s claim 1, in which the online system receives from the third party
system an amount of compensation to be paid if the target group provided by
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the third party system is used to present a selected advertisement to a
particular user.
In sum, for the reasons discussed, we are not persuaded that the
Examiner has shown sufficiently that the combination of Bhandari and
Pritchard teaches or suggests a process having all of the features required by
Appellant’s claim 1. We therefore reverse the Examiner’s rejection of claim
1, and its dependent claims, over Bhandari and Pritchard. Because
Appellant’s other independent claims, claims 9 and 18, also recite processes
that include a step corresponding to step [a] of claim 1 (see Appeal Br. 19–
20, 23), we also reverse the Examiner’s rejection of claims 9 and 18, as well
as their dependent claims, over Bhandari and Prichard.
Appellant’s claim 4 depends ultimately from claim 1, discussed
above. See Appeal Br. 18. Appellant’s claim 12 depends ultimately from
claim 9, discussed above. See id. at 21.
In rejecting Appellant’s claims 4 and 12 for obviousness, the
Examiner relied on the teachings discussed above in Bhandari and Pritchard,
and cited Koningstein only as evidence that the additional features recited in
claims 4 and 12 would have been obvious variations of the process
suggested by Bhandari and Pritchard. See Final Act. 23–24. Accordingly,
because Koningstein does not remedy the deficiencies, discussed above, of
the combination of Bhandari and Pritchard in relation to independent claims
1 and 9, we also reverse the Examiner’s rejection obviousness rejection of
claims 4 and 12 over Bhandari, Pritchard, and Koningstein.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Ineligibility for
Patenting
1–20
1–3, 5–11,
13–20
103 Bhandari, Pritchard 1–3, 5–11,
13–20
4, 12 103 Bhandari,
Pritchard,
Koningstein
4, 12
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED