Facebook, Inc.

Patent Trials and Appeals Board

Apr 1, 2021

2020004021 (P.T.A.B. Apr. 1, 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.
14/804,470 07/21/2015 Wenlong Dong 1360F0071 9703
110828 7590 04/01/2021
Kacvinsky Daisak Bluni PLLC (1360)
2601 Weston Parkway
Suite 103
Cary, NC 27513
EXAMINER
SUTCH JR., NORMAN DONALD
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
04/01/2021 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@kdbfirm.com
kpotts@kdbfirm.com
mfitzsimmons@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENLONG DONG, XUELI E MA,
WEITAO CHEN, and LEI GUANG

Appeal 2020-004021
Application 14/804,470
Technology Center 3600
Before MAHSHID D. SAADAT, JENNIFER L. McKEOWN, and
CARL L. SILVERMAN, Administrative Patent Judges.
SAADAT, 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 1–8, 10–14, and 16–20.2 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.
2 Claims 9 and 15 have been canceled previously.
Appeal 2020-004021
Application 14/804,470

2
CLAIMED SUBJECT MATTER
The claims are directed “to techniques in which commerce entity
access to a messaging system is authorized based on a social networking
relationship between the business and messaged users, and in which
messaging between businesses and users is customized according to social
networking information.” Spec. ¶ 9. Claim 1, reproduced below, illustrates
the claimed subject matter:
1. A computer-implemented method, comprising:
receiving, at a network interface on a commerce
intermediary server, an order request package from a messaging
application on a client device, the order request package
specifying a user account and a commerce account, the user
account associated with a user entity in a social graph data
structure, the commerce account associated with a commerce
entity in the social graph data structure;
performing a financial transaction on behalf of the user
account, based on the order request package;
supplementing the order request package with a financial
transaction record regarding the financial transaction;
transmitting the order request package to a commerce
front-end server associated with the commerce entity; and
creating a commerce edge in the social graph data
structure between the user entity and the commerce entity in
response to receiving the order request package from the client
device, the commerce edge associated with the order request
package, wherein an existence of the commerce edge authorizes
the commerce account to message the user account when the
commerce account would not otherwise be authorized to do so.
Appeal Br. 11 (Claim Appendix).

Appeal 2020-004021
Application 14/804,470

3
REJECTION
Claims 1–8, 10–14, and 16–20 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. See Final Act. 4–12.
OPINION
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010). Arguments Appellant could have
made, but chose not to make, are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Rejection and Arguments
With respect to claim 1, the Examiner determines the recited
limitations “fall within the ‘Certain Methods of Organizing Human Behavior
- commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations)’ grouping of abstract ideas” such that “the
marketing or sales activity of a customer placing an order with a merchant,
and as a result, the merchant adding the customer to a mailing list.” Final
Act. 5–6. The Examiner also determines that the recited additional
elements, such as “a network interface, servers, a messaging application on a
client device, a data structure, a record, and sending/receiving/processing
data” (claim 1) or “a computer system using a messaging application and
location-based services” (claim 6), “do not integrate the abstract idea into a
practical application because they do not impose any meaningful limits on
practicing the abstract idea.” Final Act. 6. The Examiner makes similar
determinations with respect to independent claims 11 (an apparatus
including a processor and a network interface) and 17 (a non-transitory
Appeal 2020-004021
Application 14/804,470

4
computer-readable storage medium) that perform a method similar to the
process of claim 1. Final Act. 6–12.
Appellant contends the Examiner erred because “the claim are drawn
to facilitating the processing of an order placed by user with the commerce
entity in the context of a messaging application and modifying a social graph
to reflect the relationship between the user and the commerce entity.”
Appeal Br. 4–5; see also Reply Br. 2. Appellant argues that the claim
elements “facilitating the financial transaction (i.e. the order placed by the
user and) are not directed to the financial transaction nor do they recite a
financial transaction,” but include “the element of modifying a social graph
based on the placing of the order by the user.” Appeal Br. 5. Specifically,
Appellant argues “the creation of the edge in the social graph does not serve
to ‘manage personal behavior or relationships and interactions between
people’, but merely notes the existence of a relationship between the user
and the commerce entity,” which “may be used for many things, among
those, determining whether or not the commerce entity may communicate
with the user.” Id.
Appellant further argues that the Examiner erred because the claimed
invention solves a problem that improves the underlying technology by
“allowing the consumer to order from or interact with a merchant directly
through a familiar messaging application on a client device” and by
“creating a commerce edge in the social graph between the user entity and
the commerce entity which authorizes the commerce account to message the
user account.” Appeal Br. 5–6 (citing Spec. ¶¶ 44, 68, 69); see also Reply
Br. 3–4. Appellant also argues the claimed invention imposes a meaningful
limitation onto the abstract idea such that the judicial exception is integrated
Appeal 2020-004021
Application 14/804,470

5
into a practical application. See Appeal Br. 8 (citing the decisions in
McRO).3 Additionally, Appellant argues that the Examiner’s indication of
allowable subject matter shows the claims are not well-understood, routine,
and conventional in support of the novel and unobvious nature of the recited
features. See Appeal Br. 9 (citing Berkheimer).4
Legal Principles
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[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) (citation omitted). This exception precludes
patenting of “the basic tools of scientific and technological work” from
which all inventions spring. Id. at 216–17 (quotation marks and citation
omitted). Invention or discovery under § 101 is distinguished as being the
application of such tools to an end otherwise satisfying the requirements of
the patent statutes. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must

3 McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir.
2016).
4 Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
Appeal 2020-004021
Application 14/804,470

6
ensure that the claim, in practice, amounts to significantly more than a patent
on the law of nature, natural phenomena, or abstract idea itself. Alice, 573
U.S. at 217–18. In applying this eligibility analysis, our reviewing court has
stated, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen[,] . . . the
classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
In January 2019, the USPTO published revised guidance on the
application of § 101. See USPTO’s 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under
that guidance (“Step 2A”), the office first looks to whether the claim recites:
(1) Prong One: 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) Prong Two: additional elements that integrate the judicial
exception into a practical application (see MANUAL OF PATENT
EXAMINING PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 10. 2019, June 2020)).
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then (pursuant to
the Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Appeal 2020-004021
Application 14/804,470

7
See Guidance, 84 Fed. Reg. at 56.
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims in light of the case law presented in this Appeal and each of
Appellant’s arguments, we are not persuaded the Examiner’s rejection is in
error. We adopt the Examiner’s findings and conclusions as our own, to the
extent consistent with our analysis herein. We add the following primarily
for emphasis and clarification with respect to the Guidance.
I. Step 2A
Prong One
Pursuant to the Guidance, we determine that claims 1–8, 10–14, and
16–20 are directed to an abstract idea, and more specifically to a process for
placing an order by a user to a commerce entity specifying a user account
and a commerce account which establishes a relationship that authorizes the
commerce account to message the user. The claims specifically recite steps
involving “marketing or sales activity of a customer placing an order with a
merchant, and as a result, the merchant adding the customer to a mailing
list.” See Final Act. 6. As further stated by the Examiner, the claim recites
an abstract idea because the recited process involves a financial transaction
and a process for creating opportunities for advertisement which “fall under
the ‘marketing or sales activities or behaviors’ aspect of the ‘Certain
Methods of Organizing Human Behavior’ grouping and are therefore part of
Appeal 2020-004021
Application 14/804,470

8
the abstract idea.” See Ans. 12. We also agree with the Examiner that the
recited steps, involving “‘performing a financial transaction on behalf of the
user account, based on the order request package’ (claim 1 lines 7–8) and
‘creating a commerce edge in the social graph data structure between the
user entity and the commerce entity in response to receiving the order
request package from the client device, the commerce edge associated with
the order request package’ (claim 1 lines 13–15),” describe functions related
to “‘marketing or sales activities or behaviors’, a common example of which
is a company placing a customer on a mailing list as a result of the customer
performing a financial transaction with the company.” See Ans. 13. We
also note that the recited limitation of “creating a commerce edge in the
social graph data structure between the user entity and the commerce entity”
is directed to the abstract idea itself because it is a part of such marketing or
financial transaction, and therefore an extra-solution activity (i.e., data
gathering). See January 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see
also MPEP § 2106.05(g); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) (discussing that
merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.
)).
We further observe that claim 1 recites an act of judgment and
evaluation in the form of the above-cited limitations, which allows an entity
to receive an order from a user, perform and record the transaction, transmit
the request package and create or allow the commerce entity send messages
to the user. Additionally, the recited steps could be performed by a person
Appeal 2020-004021
Application 14/804,470

9
using pen and pencil. Such acts are characteristic of mental processes,
which comprise a category of abstract ideas. October 2019 Update to the
Guidance, 7–9; CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 (Fed.
Cir. 2011) (finding steps extending to “essentially any method of detecting
credit card fraud based on information relating past transactions,” to be an
unpatentable mental process) and FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (finding claims to “detecting fraud
and/or misuse in a computer environment based on analyzing data such as in
log files, or other similar records, including user identifier data” to be an
ineligible mental process).5
Independent claim 7 recites an apparatus comprising processor,
interface, and server components for performing the above-discussed steps.
Such limitations constitute an arrangement of generic computer components.
See January 2019 Memorandum, 84 Fed. Reg. at 52 n.14. Independent
claim 17, as well as the remaining dependent claims, recite functions similar
to claim 1 that, when considered as a whole, are directed to fundamental
economic principles or commercial interactions.
Prong Two
We are not persuaded the Examiner’s rejection is in error pursuant to
Step 2A, Prong Two of the Guidance. Appellant has not shown the claims

5 The Guidance states that the abstract idea exception includes mathematical
concepts, certain methods of organizing human activity, and mental
processes. Guidance, 84 Fed. Reg. at 52. The Guidance describes mental
processes as observations, evaluations, judgements, and opinions, where
such can be practically performed in the human mind. October 2019
Update: Subject Matter Eligibility 7, accessible at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf.
Appeal 2020-004021
Application 14/804,470

10
include additional elements that improve the underlying computer or other
technology. As the Examiner explains, Appellant’s disclosure describes the
problem of unwanted interaction of merchants with a user “through a
particular well-understood, routine and conventional platform (in this case a
messaging application),” which “is not ‘an improvement to other technology
or a technical field’, but rather performing an abstract idea using well-
understood, routine, and conventional technology (here, a messaging
application).” Ans. 13–14. Additionally, we agree with the Examiner that
“[c]reating a commerce edge in the social graph to authorize the commerce
account to message the user account may be an improvement to an abstract
business methods idea, but it does not constitute ‘an improvement to other
technology or a technical field’ as contemplated under Step 2A Prong 2.”
Ans. 14. That is, Appellant’s reference to paragraphs 44, 68, and 69 of the
Specification illustrates that the claims are directed to improving the
merchant-user relationship by limiting advertisements or communications
sent to the user based on a prior purchase relationship, which is itself a part
of the abstract idea.
Appellant’s Specification describes the recited commerce edge
“connecting a pair of nodes may represent a relationship between the pair of
nodes,” which “may include or represent one or more data objects or
attributes corresponding to the relationship between a pair of nodes.” See
Spec. ¶ 63. Additionally, paragraphs 44, 68, and 69 of the Specification as
cited by Appellant, merely address the benefits of using the relationship
between a user and the commerce entity to provide additional information
including advertisement to the user. See Spec. ¶¶ 44, 68, 69. However, the
cited disclosure does not address how the solution to the stated problem in
Appeal 2020-004021
Application 14/804,470

11
conventional methods of determining a relationship before the commerce
account messages a user improves the computer technology. The recited
steps involve functions that do not improve the computer or its components’
functionality or efficiency, or otherwise change the way those devices
function, at least in the sense contemplated by the Federal Circuit in Enfish
(Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). The
claimed self-referential table in Enfish was a specific type of data structure
designed to improve the way a computer stores and retrieves data in
memory. Enfish, 822 F.3d at 1339.
Additionally, we are unpersuaded by Appellant’s argument that the
claimed invention is rooted in computer technology the way the claims in
McRO were. See Appeal Br. 8. There, the claimed process used a combined
order of specific rules that rendered information in a specific format that was
applied to create a sequence of synchronized, animated characters. McRO,
837 F.3d at 1315. But unlike the claimed invention in McRO that improved
how the physical display operated to produce better quality images, the
claimed invention here merely uses generic computing components to create
a relationship when the user’s order is processed and allow a commerce
entity message the user based on the existence of such relationship. See
claims 1, 11, and 17. This generic computer implementation is not only
directed to certain methods of organizing human activity or a mental
process, but also fails to improve a display mechanism as was the case in
McRO. See also SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir.
2018) (“[E]ven if a process of collecting and analyzing information is
‘limited to particular content’ or a particular ‘source,’ that limitation does not
make the collection and analysis other than abstract.”).
Appeal 2020-004021
Application 14/804,470

12
Additionally, “merely adding computer functionality to increase the
speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea.” Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015). Moreover, the recited
function of “creating a commerce edge” which “authorizes the commerce
account to message the user” is still an abstract concept under the Guidance.
See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) (holding that “a claim for a new abstract idea is still an abstract
idea”) (emphasis omitted). That is, improving the communication between
the merchants and the users, even performed on a computer, are parts of the
recited abstract idea, as discussed above. See also Ans. 15.
As the argued elements are part of the abstract idea, they are not
additional elements that integrate the identified abstract idea into a practical
application. See Guidance, 84 Fed. Reg. 54–55 (“[E]valuate integration into
a practical application by: (a) Identifying whether there are any additional
elements recited in the claim beyond the judicial exception(s)”).
Accordingly, we determine the claims do not integrate the judicial exception
into a practical application. See Guidance, 84 Fed. Reg. at 54. Because we
determine the “claim recites a judicial exception and fails to integrate the
exception into a practical application,” we proceed with “further analysis
pursuant to the second step of the Alice/Mayo test (USPTO Step 2B).”
Guidance, 84 Fed. Reg. at 51.
II. Step 2B
We agree with the Examiner that “[a]nalysis of the additional
elements, and evidence regarding well-understood, routine and conventional
as required by the Berkheimer memo is provided in Step 2B of the 11/14/19
Appeal 2020-004021
Application 14/804,470

13
Office Action.” Ans. 15. That is, the additional elements, including the
recited elements (i.e., computer/processor/computer-readable storage
medium, network interface, server, messaging application, client device,
social graph data structure, commerce edge, as recited in claims 1, 11, and
17) are generic computer components that serve to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry. Regarding the
additional elements, we specifically observe that the claimed components
merely amount to the application of or instructions to apply the abstract idea
(i.e., a series of steps for creating a relationship between a merchant account
and a user based on an order request placed by the user), which amount to
nothing more than requiring a generic computer system, including a
processor, an interface, databases and electronic devices, to merely carry out
the abstract idea itself. See Spec. ¶¶ 260–287 (describing generic
algorithms, computing devices, servers, generic processors, software, and
computer-readable medium). Using generic computer components to
perform abstract ideas does not provide the necessary inventive concept.
See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.”). Thus, these elements, taken individually or together, do not
amount to “significantly more” than the abstract ideas themselves.
Therefore, the claims have not been shown to be “significantly more” than
the abstract idea.
We are also unpersuaded by Appellant’s argument that the absence of
a prior art rejection indicates the non-conventional features of the claimed
invention (see Appeal Br. 9), because the novelty of any element or steps in
Appeal 2020-004021
Application 14/804,470

14
a process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter. Diamond v. Diehr, 450 U.S. 175, 188–89
(1981). “Eligibility and novelty are separate inquiries.” Two-Way Media
Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir.
2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253,
1263 (Fed. Cir. 2016) (holding that “[e]ven assuming” that a particular
claimed feature was novel does not “avoid the problem of abstractness”).
Even if the claims include new or improved ways to limit the unauthorized
merchant-user communications, Appellant has not identified a novel claim
feature separate from the abstract idea. See Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.”).
Preemption
Lastly, Appellant’s argument that the claims fail to preempt any
particular technological field is also not persuasive. Appeal Br. 7–9.
While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate
patent eligibility. . . . Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are
fully addressed and made moot.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–
63 (Fed. Cir. 2015).
Appeal 2020-004021
Application 14/804,470

15
Conclusion
For at least the above reasons, we agree with the Examiner that claims
1, 11, and 17 are “directed to” an abstract idea and do not recite an
“inventive concept.” Accordingly, we sustain the Examiner’s rejection of
claims 1, 11, and 17, as well as the remaining claims which fail to include
additional elements that add significantly more to the abstract idea, under
35 U.S.C. § 101.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–8, 10–14,
16–20
101 Eligibility 1–8, 10–14,
16–20

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