David Morin et al.

Patent Trials and Appeals Board

Oct 23, 2019

12623004 - (D) (P.T.A.B. Oct. 23, 2019)

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.
12/623,004 11/20/2009 David Morin 26295-15243 5452
87851 7590 10/23/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
RAVETTI, DANTE
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/23/2019 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 DAVID MORIN,
JOSHUA E. ELMAN,
VISHU GUPTA,
and BLAISE A. DIPERSIA
____________

Appeal 2018-005476
Application 12/623,004
Technology Center 3600
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
David Morin, Joshua E. Elman, Vishu Gupta, and Blaise A. DiPersia
(Appellant2) seeks review under 35 U.S.C. § 134 of a non-final rejection of
claims 1–18 and 20–37, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).3
The Appellant invented a way for creating software applications that
allow multiple users to interact. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[1] accessing a plurality of user profiles stored in a user profile
database of the social networking system,
the plurality of user profiles including information for
whether users have a license to access an interactive
application;
[2] receiving a request
from a device of a first user

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed November 29, 2017) and Reply Brief (“Reply Br.,” filed May 10,
2018), and the Examiner’s Answer (“Ans.,” mailed March 26, 2018), and
Non-Final Action (“Non-Final Act.,” mailed May 5, 2017).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Facebook,
Inc. (Appeal Br. 2).

3 We note that Appeal 2018-006020 (Application 13/620,096), having the
same real party of interest, likewise involves a way for creating software
applications that allow multiple users.
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to purchase at least one sublicense to the interactive
application,
wherein the request is for distributing the at least one
sublicense to users of a social networking system;
[3] receiving a request
from the device of the first user
to distribute the at least one sublicense to at least one
sublicensed user,
the at least one sublicensed user different from the first
user;
[4] determining,
by the social networking system,
an existence of a pre-established relationship in the social
networking system between the first user and the at least
one sublicensed user;
[5] determining that the at least one sublicensed user is eligible
to receive the at least one sublicense
based on the determined existence of the pre-established
relationship;
[6] based on determining that the at least one sublicensed user
is eligible,
granting the at least one sublicense to the at least one
sublicensed user;
[7] storing the at least one sublicense to a user profile
associated with the at least one sublicensed user;
[8] receiving a request
from the device of the at least one sublicensed user
to interact with the first user through the interactive
application;
[9] determining,
by a computer system,
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that the at least one sublicensed user is licensed to use the
interactive application
based on the sublicense stored in the user profile of
the at least one sublicensed user;
and
[10] based on the determination that the at least one sublicensed
user is licensed,
providing the at least one sublicensed user access to
interact with the first user
through the interactive application.
The Examiner relies upon the following prior art:
Name Reference Date
McCaskey US 2008/0234043 A1 Sept. 25, 2008
Gugliemino US 9,170,737 B1 Oct. 27, 2015
Claims 1–18 and 20–37 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.4
Claims 1–18 and 20–37 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McCaskey and Gugliemino.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of obviousness turn primarily on whether the prior art
describes the limitations.

4 We take notice that related Application 13/620,096, Appeal 2018-006020
has roughly similar claims, but has no similar rejection under 35 U.S.C. §
101. A new such ground is made in that case, similar to the rejection above.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
McCaskey
01. McCaskey is directed to automatically generating guest passes
to video games for elective distribution by a user. McCaskey
para. 1.
02. McCaskey describes determining and providing of one or more
guest passes for temporary access to one or more video games to a
first player that was previously granted membership to a platform
that offers access to playing these video games. One or more
different determinations are made on information related to the
first player and/or available video games to generate one or more
guest passes for a video game that is at least somewhat relevant to
the first player. In at least one embodiment, one or more of the
different determinations can be intrinsically and/or extrinsically
weighted to further refine the generation of a guest pass for a
video games that is at least somewhat relevant to the first player,
and thereby more likely to be offered by the first player to a
second player. Also, the platform is provided to enable the
determining and generating of the one or more guest passes to the
one or more video games for the first player. McCaskey para. 20.
03. McCaskey describes a guest pass that enables a first player to
provide a second player with an opportunity to obtain a unique
guest license for temporary access to play at least a portion of a
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video game. The guest pass and/or the guest license can include
one or more conditions, including, but not limited to, when and/or
who can provide it to another player, a type of player that it can be
offered to, full or partial access to “guest” play a video game, the
number of times that a video game can be “guest” accessed by the
second player, amount of time that the video game is available for
“guest” access once a unique guest license is obtained by the
second player. McCaskey para. 21.
04. McCaskey describes providing the guest pass invitation
message to the second player through one or more modes of
communication, including but not limited to a telephone call,
email, text message, instant message, physically mailed guest pass
invitation, and the like. In at least one embodiment, the platform
verifies and authenticates the membership of the first player and
determines if the second player is also a member of the platform.
If the second player is also a member of the platform, a unique
guest pass license to the video game is provided on behalf of the
first player to the second player. The second player can
subsequently redeem the guest pass license with the platform,
either locally or remotely over a network, to enable access and/or
an install of the video game as limited by the terms of the guest
pass license. McCaskey para. 23.
05. McCaskey describes guest pass invitation behavior recognition
being communicated directly to the first player’s contacts, lists,
and/or social networks. McCaskey para. 27.
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06. McCaskey describes generating a guest pass for a video game
for a player. Both the type of player and the type of the player’s
membership are determined. McCaskey para. 70.
07. McCaskey describes determining other players as those listed in
the player’s contact lists, friend’s lists, buddy lists, social
networks. McCaskey para. 71.
08. McCaskey describes a full or partial list of the guest passes
generated for the first player to offer to other players could be
accessed or directly provided by the platform to other players that
are in the first player's contacts, lists, and/or social networks.
McCaskey para. 81.
Gugliemino
09. Gugliemino is directed to processing data storage system
configuration information. Gugliemino 1:7–8.
10. Gugliemino describes storing user license information as one of
the items in a user profile. Gugliemino 13:36–43.
ANALYSIS
Claims 1–18 and 20–37 rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more
STEP 15
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.

5 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question, .
. . consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. v. CLS Bank Intl, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Revised Guidance at 54. If the
claims are directed to a judicial exception, then finally determining whether
the claims provide an inventive concept because the additional elements
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recited in the claims provide significantly more than the recited judicial
exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites accessing profiles in a database, receiving requests,
determining existence of a pre-established relationship and eligibility to
receive the at least one sublicense, granting and storing data representing a
sublicense, receiving another request, determining that a sublicensed user is
licensed and providing access to interaction between users using an
application. Providing access to an application is generic processing of the
application. Accessing a database is another form of data retrieval.
Determining whether conditions exist is rudimentary data analysis based on
criteria matching, granting a sublicense is updating data representing a
sublicense. Thus, claim 1 recites retrieving, analyzing, updating, storing,
and processing data. None of the limitations recite technological
implementation details for any of these steps, but instead recite only results
desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts,6 (2) certain methods of organizing

6 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
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human activity,7 and (3) mental processes.8 Among those certain methods of
organizing human activity listed in the Revised Guidance are managing
personal behavior or relationships or interactions between people. Like
those concepts, claim 1 recites the concept of license routing. Specifically,
claim 1 recites operations that would ordinarily take place in advising one to
provide interaction access between users by an application after one user
purchases a sublicense and distributes it to the second user and then
determining the one user is sublicensed after that user requests interaction.
The advice to provide interaction access between users by an application
after one user purchases a sublicense and distributes it to the second user and
then determining the one user is sublicensed after that user requests
interaction involves interaction between users, which is a social activity, and
purchasing a sublicense, which is an act ordinarily performed in commercial
interaction. For example, claim 1 recites “providing the at least one
sublicensed user access to interact with the first user,” which is an activity
that would take place whenever one is engaging in social interaction.
Similarly, claim 1 recites “purchase at least one sublicense,” which is a
characteristic of commercial social interaction.

Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
7 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
8 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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The Examiner determines the claims to be directed to licensing. Non-
Final Act. 3.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in granting access by a sublicensed user to an
application absent any technological mechanism other than a conventional
computer for doing so.
As to the specific limitations, limitations 1, 2, 3, and 8 recite data
retrieval. Limitations 4, 5, and 9 recite rudimentary criteria based analysis to
make some determination. Limitations 6, 7, and 10 recite insignificant
retrieving, analyzing, updating, storing, and processing of licensing data,
which advise one to apply generic functions to get to these results. The
limitations thus recite advice for providing interaction access between users
by an application after one user purchases a sublicense and distributes it to
the second user and then determining the one user is sublicensed after that
user requests interaction. To advocate providing interaction access between
users by an application after one user purchases a sublicense and distributes
it to the second user and then determining the one user is sublicensed after
that user requests interaction is conceptual advice for results desired and not
technological operations.
The Specification at paragraph 1 describes the invention as relating to
creating software applications that allow multiple users to interact. Thus, all
this intrinsic evidence shows that claim 1 is directed to routing data
representing a license, i.e., license routing. This is consistent with the
Examiner’s determination.
This in turn is an example of managing personal behavior or
relationships or interactions between people as a certain method of
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organizing human activity because routing licenses for interaction is a way
to manage personal behavior or relationships or interactions between people.
The concept of license routing by providing interaction access between users
by an application after one user purchases a sublicense and distributes it to
the second user and then determining the one user is sublicensed after that
user requests interaction is one idea for how to manage this interaction. The
steps recited in claim 1 are part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Interval Licensing LLC v. AOL,
Inc., 896 F.3d 1335, 1338 (Fed, Cir. 2018) (managing control over content
usage).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of retrieving, analyzing,
updating, storing, and processing data mimic human thought processes of
observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94
(Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data retrieval, analysis,
update, storage, and processing and does not recite an improvement to a
particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims
not abstract because they “focused on a specific asserted improvement in
computer animation”). As such, claim 1 is directed to retrieving, analyzing,
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updating, storing, and processing data, and not a technological
implementation or application of that idea.
From this we conclude that claim 1 recites an abstract idea.
Specifically, claim 1 recites license routing by providing interaction access
between users by an application after one user purchases a sublicense and
distributes it to the second user and then determining the one user is
sublicensed after that user requests interaction, which is a way of managing
personal behavior or relationships or interactions between people identified
in the Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e., integrated into a practical application.9
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection.
Accordingly, in applying the § 101 exception, we must
distinguish between patents that claim the “ ‘buildin[g]
block[s]’ ” of human ingenuity and those that integrate the
building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).

9 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1, 2, 3, and 8 are pure data
gathering steps. Limitations describing the nature of the data do not alter
this. Step 7 is insignificant post solution activity, such as storing,
transmitting, or displaying the results. Steps 4–6, 9, and 10 recite generic
computer processing expressed in terms of results desired by any and all
possible means and so present no more than conceptual advice. All
purported inventive aspects reside in how the data is interpreted and the
results desired, and not in how the process physically enforces such a data
interpretation or in how the processing technologically achieves those
results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
license routing by providing interaction access between users by an
application after one user purchases a sublicense and distributes it to the
second user and then determining the one user is sublicensed after that user
requests interaction as performed by a generic computer. This is no more
than conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 18+ pages of specification do not bulge
with disclosure, but only spell out different generic equipment10 and

10 The Specification describes a computer terminal, a personal digital
assistant (PDA), a wireless telephone, or various other user devices capable
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parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of license
routing by providing interaction access between users by an application after
one user purchases a sublicense and distributes it to the second user and then
determining the one user is sublicensed after that user requests interaction
under different scenarios. They do not describe any particular improvement
in the manner a computer functions. Instead, claim 1 at issue amounts to
nothing significantly more than an instruction to apply license routing by
providing interaction access between users by an application after one user
purchases a sublicense and distributes it to the second user and then
determining the one user is sublicensed after that user requests interaction
using some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that

of connecting to the network, and a general-purpose computer.
Specification paras. 11 and 39.
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the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of license
routing by advising one to provide interaction access between users by an
application after one user purchases a sublicense and distributes it to the
second user and then determining the one user is sublicensed after that user
requests interaction, as distinguished from a technological improvement for
achieving or applying that result. This amounts to managing personal
behavior or relationships or interactions between people, which fall within
certain methods of organizing human activity that constitute abstract ideas.
The claim does not integrate the judicial exception into a practical
application. Thus, claim 1 not only recites, but is directed to, an abstract
idea.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
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concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for retrieving, analyzing, updating, storing, and processing data
amounts to electronic data query and retrieval—one of the most basic
functions of a computer. All of these computer functions are generic,
routine, conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016);see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming”). None of these activities is used in some unconventional
manner nor do any produce some unexpected result. See e.g., Spec. ¶¶ 36–
40. Appellant does not contend they invented any of these activities. In
short, each step does no more than require a generic computer to perform
generic computer functions. As to the data operated upon, “even if a process
of collecting and analyzing information is ‘limited to particular content’ or a
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particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am., 898 F.3d at 1168.
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. See e.g., Spec. Figs. 1–4. The sequence of data
retrieval- analysis-update-storage-processing is equally generic and
conventional. See Ultramercial, 772 F.3d at 715 (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data
retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and
monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
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computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the managing
personal behavior or relationships or interactions between people of license
routing by providing interaction access between users by an application after
one user purchases a sublicense and distributes it to the second user and then
determining the one user is sublicensed after that user requests interaction,
without significantly more.
The rejection above complements rather than displaces, but differs
substantially from that of the Examiner. We denominate this as a new
ground.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Non-Final Action 3–8 and Answer 4–7
and reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
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Cir. 2016). Reply Br. 2. The claims differ from those found patent
eligible in Enfish, where the claims were “specifically directed to a self-
referential table for a computer database.” Enfish, 822 F.3d at 1337. The
claims thus were “directed to a specific improvement to the way computers
operate” rather than an abstract idea implemented on a computer. Id. at
1336. Here, by contrast, the claims are not directed to an improvement
in the way computers operate. Though the claims purport to accelerate
the process of purchasing and routing a license, our reviewing court has
held that speed and accuracy increases stemming from the ordinary
capabilities of a general purpose computer “do[] not materially alter the
patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v.
Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
2012). Instead, the claims are more analogous to those in FairWarning,
wherein claims reciting “a few possible rules to analyze audit log data”
were found directed an abstract idea because they asked “the same
questions (though perhaps phrased with different words) that humans in
analogous situations detecting fraud have asked for decades.”
FairWarning, 839 F.3d at 1094, 1095.
Appellant also attempts to analogize the claims to those involved in
McRO. Reply Br. 7–8. In McRO, the court held that, although the
processes were previously performed by humans, “the traditional process
and newly claimed method . . . produced . . . results in fundamentally
different ways.” FairWarning, 839 F.3d at 1094 (differentiating the
claims at issue from those in McRO). In McRO, “it was the incorporation
of the claimed rules not the use of the computer, that improved the
existing technology process,” because the prior process performed by
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humans “was driven by subjective determinations rather than specific,
limited mathematical rules.” McRO, 837 F.3d at 1314 (internal quotation
marks, citation, and alterations omitted). In contrast, the claims of the
instant application merely implement an old practice of using decision
criteria in making license routing decisions in a new environment.
Appellant has not argued that the claimed processes of selecting users and
sublicenses apply rules of selection in a manner technologically
different from those which humans used, albeit with less efficiency, before
the invention was claimed. Merely pigeon holing the objects of decision
making in tiers to aid decision making is both old and itself abstract.
The claims in McRO were not directed to an abstract idea, but
instead were directed to “a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type.” We explained that “the claimed improvement
[was] allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’
that previously could only be produced by human animators.”
The claimed rules in McRO transformed a traditionally
subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094.
We are not persuaded by Appellant’s argument that
the claimed invention recites steps performed by a social
networking system, thereby relying upon a system that is of a
higher level of particularity than a generic computer that
allegedly performs routine computerization tasks. Here, the
recitation of the social networking system in the claims is
important; the social networking system is uniquely positioned
to hold user information in the form of user profiles belonging
to users.
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Reply Br. 3. In claim 1, reference to a social networking system only occurs
in limitation 1 as context for a database, limitation 2 as context for users, and
limitation 4 as context for relationship data. None of these limitations rely
on the system being a social networking system, as none of the functions or
structure unique to a social networking system are recited, much less relied
on. “The Supreme Court and this court have repeatedly made clear that
merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract.”
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016). The only contention to the contrary is that the data in a social
networking system is unique. But as SAP America, supra, holds, the source
of the data cannot confer eligibility.
We are not persuaded by Appellant’s argument that the
system utilizes user information that is readily stored and
accessible to the social networking system, such as the pre-
established relationship in the social networking system, in
order to establish the eligibility of a user to receive a sublicense.
By utilizing user information stored in the social networking
system, the social networking system enables users to provide
sublicenses to other eligible users. Therefore, the improvement
(e.g., increasing user access and interactions in an interactive
application) is directly tied to the claimed steps that are
performed by the social networking system.
Reply Br. 4. This is a repetition of the argument supra regarding the source
of the data used. This may or may not improve user experience, but does not
improve computer or technological performance. “The claims are focused
on providing information . . . in a way that helps them process information
more quickly, not on improving computers or technology.” Trading Techs.
Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019).
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Claims 1–18 and 20–37 rejected under 35 U.S.C. § 103(a) as unpatentable
over McCaskey and Gugliemino
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Non-Final Action 8–16 and Answer 7–8
and reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that “[u]sing the
relationship between other players and the player to identify video games is
distinct from using information of other players to establish the eligibility of
the player to receive a guest pass for a video game.” Reply Br. 5. We
agree with the Examiner that McCaskey describes using the contacts in the
first player’s social network to automatically generate guest passes. Such
relationship establishes eligibility as being based on the relationship of being
a member of the first player’s social network. The problem with Appellant’s
contention that “the relationship between the player and the other players is
not used to establish the eligibility of the player to receive a sublicense”
(Reply Br. 5) (emphasis omitted), is that the claim does not recite or narrow
the manner or implementation of how eligibility is established. Thus,
membership in a database is within the scope of establishing such eligibility.
CONCLUSIONS OF LAW
The rejection of claims 1–18 and 20–37 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper. We
denominate this as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
The rejection of claims 1–18 and 20–37 under 35 U.S.C. § 103(a) as
unpatentable over McCaskey and Gugliemino is proper.
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CONCLUSION
The rejection of claims 1–18 and 20–38 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed New
Ground
1–18,
20–37
101 Eligibility 1–18,
20–37
1–18,
20–37
1–18,
20–37
103 McCaskey,
Gugliemino 
1–18,
20–37

Overall
Outcome
1–18,
20–37
1–18,
20–37

Our decision is not a final agency action.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
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is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can
be found in the Manual of Patent Examining Procedure § 1214.01.

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) (2011).

AFFIRMED
37 C.F.R. § 41.50(b)