Facebook, Inc.

Patent Trials and Appeals Board

Apr 13, 2020

13759976 - (D) (P.T.A.B. Apr. 13, 2020)

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.
13/759,976 02/05/2013 William Bullock 26295-21621 2253
87851 7590 04/13/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
REFAI, SAM M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
04/13/2020 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 WILLIAM BULLOCK and
SEAN MICHAEL BRUICH
____________________

Appeal 2019-002241
Application 13/759,976
Technology Center 3600
____________________

Before ERIC S. FRAHM, JUSTIN BUSCH, and STACEY G. WHITE,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 5, 7–12, 15, 17, and 19–22, which
constitute all the claims pending in this application. We have jurisdiction
over the pending claims 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 (2016). Appellant identifies the real party in interest as Facebook,
Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure generally relates to “predict[ing] values of a
target characteristic for users in a set of users based on a reference group of
users having known values for the target characteristic.” Spec. ¶ 6. More
specifically, Appellant’s claimed invention relates to generating a model
based on a reference group’s descriptive characteristics and target
characteristic values by applying constraints to the target characteristic in
order to impute a value for a user’s unknown target characteristic based on
the user’s descriptive characteristic(s). Spec. ¶ 6. Claims 1 and 11 are
independent claims, and claim 1 is reproduced below:
1. A method comprising:
retrieving a reference group of users of an online system,
each user of the reference group having a known value of a
plurality of known values for a target characteristic and being
associated with one or more descriptive characteristics;
determining one or more constraints associated with the
target characteristic from a larger population of users that
includes a greater number of users than the reference group of
users, the one or more constraints defining one or more limiting
values of the target characteristic from the larger population of
users that includes the greater number of users than the reference
group of users;
generating a model for predicting values of the target
characteristic from the one or more descriptive characteristics,
the generating comprising:
determining a likelihood that each user in the reference
group of users is included in the reference group based at least in
part on the one or more descriptive characteristics of the
reference group of users; and
applying the one or more constraints associated with the
target characteristic from the larger population of users to the
reference group of users, each of the one or more constraints
limiting an aggregate number of users in the reference group of
user having a particular value of the target characteristic based
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on values of the target characteristic in the larger population of
users;
identifying one or more users of the online system not
included in the reference group of users that are associated with
at least descriptive characteristic of the one or more descriptive
characteristics and that have an unknown value associated with
the target characteristic; and
determining an imputed value for the target characteristic
for each of the one or more users of the online system not
included in the reference group of users by applying the model
to the at least one descriptive characteristic associated with each
of the one or more users of the online system not included in the
reference group of users, the model constraining imputed values
of the target characteristic for the one or more users of the online
system not included in the reference group of users based on the
values of the target characteristic in the larger population of
users.
REJECTION
Claims 1, 3, 5, 7–12, 15, 17, and 19–22 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 2–9.
ANALYSIS
Appellant argues the claims as a group. See Appeal Br. 5–7; Reply
Br. 2–4. Accordingly, we select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the United States Patent and Trademark
Office published revised guidance for evaluating subject matter eligibility
under 35 U.S.C. § 101, specifically with respect to applying the Alice
framework. USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”); USPTO, October
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2019 Patent Eligibility Guidance Update (Oct. 18, 2019),
https://www.uspto.gov/PatentEligibility (“Guidance Update”).
If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter),
we determine whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of our inquiry, we “look at
the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016). The Guidance directs us to address this inquiry using the
following two prongs of analysis: (i) does the claim recite a judicial
exception (e.g., an abstract idea), and (ii) if so, is the judicial exception
integrated into a practical application. Guidance, 84 Fed. Reg. at 54.
Under the Guidance, if the judicial exception is integrated into a
practical application, the claim is patent eligible under § 101. Guidance, 84
Fed. Reg. at 54–55. If the claim is directed to a judicial exception (i.e., the
claim both recites a judicial exception and fails to integrate the exception
into a practical application), we next determine whether the claim provides
an inventive concept, which includes determining whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; Guidance, 84 Fed. Reg. at 56.
Here, we conclude representative claim 1 is directed to mental
processes (i.e., a concept performed in the human mind, such as, an
observation, evaluation, judgment, and opinion), which are abstract ideas.
See Guidance, 84 Fed. Reg. at 52. We generally agree with the Examiner’s
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characterization regarding the subject matter to which the claims are
directed. See Final Act. 2 (concluding the claims “are directed towards the
abstract idea of generating a model for predicting values of a target
characteristic from one or more descriptive characteristics, and determining
an imputed value for a target characteristic by applying the model”). In
particular, claim 1 generally is directed to generating a model using
statistical analysis of a reference group of users’ target characteristics and
descriptive characteristics by applying constraints to the target characteristic
and applying the model to assign a value to a user’s unknown target
characteristic based on the user’s descriptive characteristic(s) (hereinafter,
“generating a model and applying the model to determine a target
characteristic”).
Appellant does not dispute that the claims recite this abstract idea, but
Appellant contends claim 1 recites more than just that abstract idea,
including a particular way of carrying out the identified abstract idea.
Appeal Br. 6–7; Reply Br. 2–3. Moreover, our characterization of the
claims is consistent with the Specification, which describes the invention as
“inferring a target characteristic of a set of users of the online system based
on characteristics of a reference group of users of the online system.” Spec.
¶ 1.
The Specification explains that conventional techniques “basing
estimation of missing values on online activity without other information”
provided inaccurate results. Spec. ¶ 5. Appellant’s claimed invention
allegedly solves this problem by generating and using a model that “applies
one or more constraints on the target characteristic . . . so the model
extrapolates from the reference data while achieving aggregate results for
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values of the target characteristic that are consistent with the constraint.”
Spec. ¶ 6. The constraints are obtained from a larger set of users than a
reference group (e.g., census data or other survey of all the online system’s
users), and using the constraints allegedly “avoids inaccuracies in reporting
of user metrics.” Spec. ¶ 6.
Claim 1 is reproduced below, with the claim limitations that recite
elements of the abstract idea of generating a model and applying the model
to determine a target characteristic emphasized in italics:
1. A method comprising:
retrieving a reference group of users of an online system,
each user of the reference group having a known value of a
plurality of known values for a target characteristic and being
associated with one or more descriptive characteristics;
determining one or more constraints associated with the
target characteristic from a larger population of users that
includes a greater number of users than the reference group of
users, the one or more constraints defining one or more limiting
values of the target characteristic from the larger population of
users that includes the greater number of users than the
reference group of users;
generating a model for predicting values of the target
characteristic from the one or more descriptive characteristics,
the generating comprising:
determining a likelihood that each user in the reference
group of users is included in the reference group based at least
in part on the one or more descriptive characteristics of the
reference group of users; and
applying the one or more constraints associated with the
target characteristic from the larger population of users to the
reference group of users, each of the one or more constraints
limiting an aggregate number of users in the reference group of
user having a particular value of the target characteristic based
on values of the target characteristic in the larger population of
users;
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identifying one or more users of the online system not
included in the reference group of users that are associated with
at least descriptive characteristic of the one or more descriptive
characteristics and that have an unknown value associated with
the target characteristic; and
determining an imputed value for the target characteristic
for each of the one or more users of the online system not
included in the reference group of users by applying the model
to the at least one descriptive characteristic associated with each
of the one or more users of the online system not included in the
reference group of users, the model constraining imputed values
of the target characteristic for the one or more users of the online
system not included in the reference group of users based on the
values of the target characteristic in the larger population of
users.
More particularly, the abstract idea of generating a model and
applying the model to determine a target characteristic comprises
(i) determining constraints that define limiting values for a target
characteristic from a larger set of users (i.e., evaluating or judging);
(ii) generating a model, which includes determining a likelihood a user’s
descriptive characteristics result in the user being included in the reference
group (i.e., evaluating) and applying constraints from the larger group to the
reference group (i.e., evaluating and observing); (iii) identifying a user (i.e.,
observing and evaluating); and (iv) determining an imputed value by
applying the model (i.e., evaluating). Although we agree with the Examiner
both that generating the model involves underlying mathematical
relationships (i.e., the likelihood that certain descriptive characteristics result
in a user’s membership in the reference group) and that the invention’s
purpose (improving targeted advertising) relates to certain methods of
organizing human activity, we find that Appellant’s claims most closely
align with the mental processes category of abstract ideas. Guidance, 84
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Fed. Reg. at 52; accord Final Act. 3–4 (characterizing Appellant’s claims as
consisting of a series of mental steps). Specifically, the identified steps—
determining constraints, generating a model, identifying a user, and
imputing a value based on the model—fall squarely within the types of
mental processes considered abstract. See Guidance, 84 Fed. Reg. at 52
(explaining that mental processes include observations, evaluations,
judgments, and opinions).
The limitations that make up the concept recited in representative
claim 1 are simply a series of observations, evaluations, and judgements for
receiving and analyzing user characteristics to generate a model and
applying that model to predict a value for a user’s unknown target
characteristic based on that user’s descriptive characteristic(s). Consistent
with our Guidance and case law, we conclude this concept is a mental
process and, therefore, an abstract idea. Guidance, 84 Fed. Reg. at 52;
Guidance Update, 7–9; Digitech Image Techs., LLC v. Elecs. For Imaging,
Inc., 758 F.3d 1344, 1351 (2014) (concluding claims reciting receiving two
data sets, and combining those data sets into a single data set is “an
ineligible abstract process of gathering and combining data”); CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011)
(concluding claims reciting obtaining a data transaction set affiliated with a
particular Internet address, generating a map based on those transaction, and
using the map to determine whether a transaction is valid were abstract
because they were directed to steps a person could perform mentally); Elec.
Power Group, LLC v. Alstrom S.A., 830 F.3d 1350, 1353–54 (Fed.
Cir. 2016) (concluding claims directed to “collecting information, analyzing
it, and displaying certain results of the collection and analysis” were
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abstract); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed.
Cir. 2018) (concluding claims were directed to the abstract idea of “selecting
certain information, analyzing it using mathematical techniques, and
reporting or displaying the results of the analysis”); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1361–62 (Fed. Cir. 2015) (determining
claims reciting obtaining statistics, analyzing those statistics to determine
another piece of information—i.e., a price at which to sell a product—was
directed to the abstract idea of offer-based price optimization).
Because the claims recite a judicial exception, we next determine
whether the claims integrate the judicial exception into a practical
application. Guidance, 84 Fed. Reg. at 54. To determine whether the
judicial exception is integrated into a practical application, we identify
whether there are “any additional elements recited in the claim beyond the
judicial exception(s)” and evaluate those elements, along with the limitations
that recite the abstract idea, to determine whether the claim as a whole
integrates the abstract idea into a recognized practical application.
Guidance, 84 Fed. Reg. at 54–55 (emphasis added); see also Manual of
Patent Examining Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018); Guidance Update, 11–12.
Here, the additional limitations recited beyond the judicial exception
itself fail to integrate the exception into a practical application. More
particularly, representative claim 1 does not recite: (i) an improvement to the
functionality of a computer or other technology or technical field (see MPEP
§ 2106.05(a)); (ii) a “particular machine” to apply or use the judicial
exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other
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meaningful limitation (see MPEP § 2106.05(e)). See also Guidance, 84 Fed.
Reg. at 55.
Rather, the additional elements simply recite insignificant pre-solution
activity. As emphasized above, each of claim 1’s steps other than retrieving
a reference group are mental steps that contribute to the abstract idea of
generating a model and applying the model to determine a target
characteristic. Each of the steps may be performed completely in a person’s
mind or by a person using pen and paper. Notably, the retrieving a reference
group step could be considered part of the abstract idea because retrieving a
list of users having particular characteristics could be done mentally or, for
example, by receiving a piece of paper containing the information, and
receiving that list of users whose information is evaluated as part of the
abstract idea is necessary to performing the idea itself.
Nevertheless, we consider this retrieving step to be a step in addition
to the abstract idea that, considered in light of the claim as a whole, fails to
integrate the abstract idea into a practical application. Specifically, this step
adds only insignificant extra-solution activity because it merely receives an
initial set of data to enable executing the mental steps making up the abstract
idea. Guidance, 84 Fed. Reg. at 55; see Bilski v. Kappos, 561 U.S. 593, 612
(2010) (holding the use of well-known techniques to establish inputs to the
abstract idea as extra-solution activity that fails to make the underlying
concept patent eligible); CyberSource, 654 F.3d at 1372 (finding that, even
to the extent certain “physical steps are required to obtain information from
the database . . . such data-gathering steps cannot alone confer
patentability”); Elec. Power, 830 F.3d at 1355 (explaining that “selecting
information, by content or source, for collection, analysis, and display does
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nothing significant to differentiate a process from ordinary mental
processes”). In other words, this additional data-gathering step merely
obtains information needed to perform the recited abstract idea.
Appellant asserts that the claims solve a problem with conventional
methods for predicting target characteristic values that “over-represent the
target characteristic in the large set of users and, thus, creat[e] an inaccurate
picture of reality.” Reply Br. 2. Appellant alleges the claims solve this
problem by applying a global constraint on the target characteristic so “the
model will extrapolate from the reference data but achieve aggregate results
that are consistent with the global constraint,” which “avoids inaccuracies in
reporting of users’ metrics.” Reply Br. 2–3.
Appellant contends the particular recited method of generating a
model (i.e., the determining a likelihood and applying constraints steps) “is a
specific and significant improvement over prior methods for imputing these
values that led to inaccurate results.” Reply Br. 3; see also Appeal Br. 7
(arguing the details of the generating a model step “limit the claimed
invention to a particular way for how to carry out the alleged abstract idea,
not just a technical environment in which it is carried out”).
Even to the extent the claims embody this alleged improvement, we
agree with the Examiner that Appellant’s claims merely improve an abstract
idea (i.e., generating a model and applying the model to determine a target
characteristic) not a technology or technical field. See Ans. 11 (finding the
focus of the claims is on an improved mathematical technique (quoting SAP,
898 F.3d at 1168 (“Here, the focus of the claims is not any improved
computer or network, but the improved mathematical analysis.”))).
Specifically, Appellant’s alleged improvement is an improvement to an
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abstract idea because it merely uses different information and/or different
mental steps to analyze users’ characteristics.
The fact that the claims generate the model by particular analytical
techniques does not change the fact that generating the model is part of the
abstract idea. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314 (Fed. Cir. 2016) (“We . . . look to whether the claims in these
patents 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.” (citing
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)));
Guidance, 84 Fed. Reg. at 54–55 (explaining that we determine whether a
claim integrates the abstract idea into a practical application by
“[i]dentifying whether there are any additional elements recited in the claim
beyond the” abstract idea and, if so, “evaluating those additional elements
individually and in combination” in light of the claim as a whole (emphases
added)). Similarly, providing details regarding the particular content being
analyzed does not change the character of the claims as a whole from being
directed to an abstract idea. See Elec. Power, 830 F.3d at 1353 (limiting
information collected and analyzed to particular content “does not change its
character as information”).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application and, therefore, are directed to
an abstract idea.
Because we determine the independent claims are directed to abstract
ideas, we analyze the claims under step two of Alice to determine whether
there are additional limitations that individually, or as an ordered
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combination, ensure the claims amount to “significantly more” than the
abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 72–73, 77–79 (2012)). As stated in
the Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework are
already considered as part of determining whether the judicial exception has
been integrated into a practical application. Guidance, 84 Fed. Reg. at 56.
Thus, at this point of our analysis, we determine if the claims add a specific
limitation, or combination of limitations, that is not well-understood, routine,
conventional activity in the field, or simply appends well-understood,
routine, conventional activities at a high level of generality. Guidance, 84
Fed. Reg. at 56.
Appellant argues the Examiner failed to address any elements other
than the recited “online system” and the Examiner makes an “unsupported
conclusion that the additional elements ‘merely provide conventional
computer implementation.’” Appeal Br. 5. Appellant contends the
Examiner fails to meet the burden of providing evidence to support a finding
that the additional elements were well-understood, routine, and
conventional. Appeal Br. 5–6. In particular, Appellant argues the Examiner
failed to support a finding that the particular steps for generating the model
were well-understood, routine, and conventional. Appeal Br. 6–7.
Appellant’s arguments are not persuasive of error because the
particular steps for generating the model are part of the abstract idea.
Although we evaluate the claims as whole for an inventive concept by
considering how the additional elements interact with the abstract idea, the
inventive concept “cannot be furnished by the unpatentable law of nature (or
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natural phenomenon or abstract idea) itself.” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also Guidance, 84 Fed.
Reg. at 56; Alice, 573 U.S. at 217 (explaining that, after determining a claim
is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the
claims before us?’” (emphasis added, brackets in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim as a whole amounts to
significantly more than the judicial exception itself. Alice, 573 U.S. at 218–
19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
Alice “only assessed whether the claim limitations other than the invention’s
use of the ineligible concept to which it was directed were well-understood,
routine and conventional,” (emphasis added)).
As discussed above, the only additional element (i.e., elements that
are not part of the abstract idea) recited in representative claim 1 is the
retrieving a reference group step. The Examiner considered the “online
system” itself the only additional element and provided support for this
finding. Final Act. 4–5 (citing Spec. ¶¶ 38–41); Ans. 4–8 (citing Spec.
¶¶ 1–5, 38–41; MPEP § 2016.05(d)). We note that the “online system” is
not actually part of the claimed methods. Rather, the recited “online
system” merely describes the source from which the claims retrieve the
reference group of users. See Appeal Br. 9 (reciting, in part, “retrieving a
reference group of users of an online system,” emphasis added).
Receiving a set of data on which to operate, regardless of the
particular source or content of the data, was well-understood, routine, and
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conventional in the field because it merely limits the analysis to particular
content. See OIP Techs., 788 F.3d at 1363 (finding routine data-gathering
steps were well-understood, routine, and conventional activities). The
claims fail to recite specific limitations (or a combination of limitations) that
are not well-understood, routine, and conventional.
For the above reasons, Appellant has not persuaded us of Examiner
error, and we sustain the Examiner’s rejection of representative claim 1 or
claims 1, 3, 5, 7–12, 15, 17, and 19–22, which were not argued separately
with particularity, under 35 U.S.C. § 101.
CONCLUSION
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1, 3, 5, 7–12, 15,
17, 19–22
101 Ineligibility 1, 3, 5, 7–12,
15, 17, 19–22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED