Facebook, Inc.Download PDFPatent Trials and Appeals BoardMay 4, 20212020001799 (P.T.A.B. May. 4, 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. 14/528,170 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. Appeal 2020-001799 Application 14/528,170 2 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; Appeal 2020-001799 Application 14/528,170 3 [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 Appeal 2020-001799 Application 14/528,170 4 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. Appeal 2020-001799 Application 14/528,170 5 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. Appeal 2020-001799 Application 14/528,170 6 (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 Appeal 2020-001799 Application 14/528,170 7 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] Appeal 2020-001799 Application 14/528,170 8 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, Appeal 2020-001799 Application 14/528,170 9 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]. Appeal 2020-001799 Application 14/528,170 10 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; Appeal 2020-001799 Application 14/528,170 11 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 Appeal 2020-001799 Application 14/528,170 12 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 Appeal 2020-001799 Application 14/528,170 13 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”). Appeal 2020-001799 Application 14/528,170 14 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 Appeal 2020-001799 Application 14/528,170 15 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 Appeal 2020-001799 Application 14/528,170 16 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. Appeal 2020-001799 Application 14/528,170 17 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 Appeal 2020-001799 Application 14/528,170 18 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 Appeal 2020-001799 Application 14/528,170 19 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 Appeal 2020-001799 Application 14/528,170 20 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.”). Appeal 2020-001799 Application 14/528,170 21 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 Appeal 2020-001799 Application 14/528,170 22 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. Appeal 2020-001799 Application 14/528,170 23 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 Copy with citationCopy as parenthetical citation