Facebook, Inc.

Patent Trials and Appeals Board

Jun 30, 2020

13970084 - (D) (P.T.A.B. Jun. 30, 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.
13/970,084 08/19/2013 Hong Ge 26295-24155 6193
87851 7590 06/30/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
BUSCH, CHRISTOPHER CONRAD
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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 HONG GE, ROBERT WILLIAM CATHCART, and
NIMROD HOOFIEN

Appeal 2019-004230
Application 13/970,084
Technology Center 3600

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s Final decision to reject claims 1–10 and 21–30.1 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 Facebook, Inc. as the real party in interest.
Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates “generally to social networking
systems, and in particular to presenting advertisements to social networking
system users” (Spec. para. 1). Claim 1, reproduced below with emphasis
added, is illustrative of the claimed subject matter:
1. A method comprising:
receiving a plurality of content items, where the plurality
of content items comprise:
one or more content items that include a prompt to
perform an action on a client device that is unable to be
performed while the client device is in a locked state; and
one or more content items that include a prompt to
perform an action on a client device that is able to be
performed while the client device is in the locked state;
responsive to an indication that a client device of a user of
a social networking system is in the locked state that provides
limited functionality to the user:
identifying, from the received plurality of content
items, one or more eligible content items, each of the one
or more eligible content items identified based on the
eligible content item including a prompt to perform an
action on a client device that is able to be performed while
the client device is in the locked state;
selecting one or more of the eligible content items
for presentation from the received plurality of content
items;
sending the selected one or more eligible content
items for presentation in an ambient feed to the client
device while the client device is in the locked state.

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Conant US 2008/0092182 A1 Apr. 17, 2008
Brown US 2013/0124276 A1 Mar. 16, 2013
Ricasata US 2014/0019253 A1 Jan. 16, 2014
Barnes US 8,655,716 B1 Feb. 18, 2014
Biswas US 2014/0156417 A1 June 5, 2014
Govan US 2014/0195353 A1 July 10, 2014
Gao US 2016/0085385 A1 Mar. 24, 2016
REJECTIONS
Claims 1–10 and 21–30 are rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
Claims 1, 3, 4, 9, 10, 21, 23, 24, 29, and 30 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Ricasata, Brown, and Govan.
Claims 2, 6, 22, and 26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ricasata, Brown, Govan, and Conant.
Claims 5 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ricasata, Brown, Govan, and Gao.
Claims 7 and 27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ricasata, Brown, Govan, and Barnes.
Claims 8 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ricasata, Brown, Govan, and Biswas.
OPINION
The rejection of claims 1–10 and 21–30 under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
The Appellant argues these claims as a group. See Appeal Br. 4–11.
We select claim 1 as the representative claim for this group, and the
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remaining claims 2–10 and 21–30 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

Preliminary comment
Previous Office guidance on patent subject matter eligibility has been
superseded by the 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised 101 Guidance.”
See 2019 Revised 101 Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly, we will not
address arguments on the sufficiency of the Examiner’s position relative
prior guidance but rather our analysis that follows will comport with the
2019 Revised 101 Guidance. We will pay particular attention to the
Examiner’s position taken in the Answer and Appellant’s arguments made in
the Reply Brief which are expressed in the context of the 2019 Revised 101
Guidance.

Introduction
35 U.S.C. § 101 provides that “[w]hoever 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.”
In that regard, claim 1 covers a “process” and is thus statutory subject
matter for which a patent may be obtained.2 This is not in dispute.

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” 84 Fed.
Reg. at 53. See also id. at 53–54 (“consider[] whether the claimed subject
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However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
Alice step one — the “directed to” inquiry:
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Examiner determined that claim 1 is directed to “selecting and
presenting ads on a locked device.” Final Act. 2 (emphasis omitted).
Specifically,
Claims 1 and 21 (as amended) recite, in part, a system for
performing the steps of receiving a plurality of ads, receiving an
indication that a user device is locked, identifying ads that
include a prompt to perform an action on the device while it is
locked, selecting an ad, and displaying the ad in the user’s
ambient feed. These steps correspond to concepts identified as
abstract ideas by the courts, such as: processing information
through a clearinghouse (Ads are filtered and selected by the
system prior to dissemination to user devices.) See Dealertrack
v. Huber, 674 F.3d 1315 (Fed. Cir. 2012); communicating

matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. 101.”).
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targeted information (Ads are targeted to social media users
whose mobile devices are in a locked state.) See Affinity Labs of
Texas, LLC v. Amazon.com, 838 F.3d 1266 (Fed. Cir. 2016);
screening digital data files for unwanted content (Ads are
screened to remove any that require the user device to be in an
unlocked state.) See Intellectual Ventures v. Symantec Corp, 838
F.3d 1307 (Fed. Cir. 2016); tailoring content based on
information about a user (Ads are selected and presented to a user
based on their social media activity, as well as the state of their
device.) See Intellectual Ventures v. Capital One Bank ('382
patent), 793 F.3d 1363 (Fed. Cir. 2015), and collecting
information, analyzing it, and displaying certain results of the
collection and analysis (Information about ads is collected,
analyzed, and used to filter which ads will ultimately be
displayed on a user device. Information regarding the state of
user devices is likewise collected, analyzed, and used to
determine which ads will be displayed as a result of the collected
and analyzed information.) See Electric Power Group, LLC v.
Alstom, 830 F.3d 1350 (Fed. Cir. 2016). The concept described
in claims 1 and 21 are not meaningfully different than those
economic concepts found by the courts to be abstract ideas. As
such, the description in claims 1 and 21 of selecting and
displaying ads on the lock screen of a device is abstract.
Id. at 3–4.
The Examiner’s Answer states:
As noted in the Final Office Action dated 5/24/18, the
claims are directed to the abstract idea of identifying and
selecting ads to be presented on a locked device, and more
directly based on a locked-device condition, which, pursuant to
the 2019 Eligibility Guidance, is aptly categorized as a method
of organizing human activity (i.e. advertising and marketing
activities). Furthermore, this judicial exception is not integrated
into a practical application because it merely uses a computer as
a tool to perform the abstract idea, and generally links the use of
the judicial exception to a particular technological environment
(e.g. user devices).
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Ans. 3.
We have carefully reviewed the briefs but do not see that the
Appellant has expressly disputed the Examiner’s characterization of what
claim 1 is directed to (i.e., “selecting and presenting ads on a locked device”
(Final Act. 2)) and/or that what the Examiner has characterized claim 1 as
being directed to is an abstract idea for being a method of organizing human
activity. Instead the briefs direct our attention to (a) “additional limitations
beyond the abstract idea” (Appeal Br. 4) that the Appellant believes are not
“conventional” (discussed at Appeal Br. 4–8); (b) “an unconventional and
counterintuitive solution for solving a problem” (Appeal Br. 8; further
discussed at 8–11); (c) an integration into a practical application (Reply Br.
1–6); and “significantly more” recitations (Reply Br. 6).
However, various statements are made in the briefs suggesting
Appellant believes the claimed subject matter is directed to a technical
improvement. For example, Appellant contends that “the claims describe an
improved technical solution for sending content items to a client device for
presentation in an ambient feed that is presented while the client device is in
a locked state so the presented content items prompt users to perform actions
that are capable of being performed while the content item is in the locked
state.” Reply Br. 5.
Accordingly, a dispute over whether claim 1 is directed to an abstract
idea is present. Specifically, is claim 1 directed to “selecting and presenting
ads on a locked device” (Final Act. 2) or “an improved technical solution”
(Reply Br. 5)?

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Claim Construction3
We consider the claim as a whole giving it the broadest reasonable
construction as one of ordinary skill in the art would have interpreted it in
light of the Specification at the time of filing.4,5,6
Claim 1 recites 4 steps, the first calls for “receiving” certain
information and the last three – “identifying,” “selecting,” and “sending” –
process said certain information upon “an indication that a client device of a
user of a social networking system is in the locked state that provides limited
functionality to the user.”
The “content items” that are received are not limited to any specific
type of information.

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).
4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 “First, it is always important to look at the actual language of the claims. .
. . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.
6 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52, footnote 14 (“If a
claim, under its broadest reasonable interpretation.”).
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However, the content items must include a “prompt.” In that regard,
the Specification does not define the claim term “prompt.” Ordinarily and
customarily, a “prompt” means “a symbol or phrase that appears onscreen to
inform you that the computer is ready to accept input.” Webster’s Dictionary
of Computer Terms, 438 (8th ed. 2000), entry for “prompt.”
Although the prompts have the same function – to communicate an
action intended to be performed by a client device, they distinguish from
each other in the types of actions they communicate.
According to the claimed subject matter, the client device is unable to
perform the action communicated by the first prompt (1) but able to perform
the action communicated by the second prompt (2) while it is locked.
Accordingly, as reasonably broadly construed, the “receiving” step
covers (a) receiving two content items that include prompts (1) and (2) –
which communicate different types of actions intended to be performed by a
client device – and (b) a client device that, while locked, is unable to
perform the action communicated by the first prompt but able to perform the
action communicated by the second prompt.
Turning now to the other three steps, “identifying,” “selecting,” and
“sending” – all of which occur when the client device is locked. See claim 1
(“responsive to an indication that a client device of a user of a social
networking system is in the locked state that provides limited functionality
to the user”).
The “identifying” step identifies those content items which “includ[e]
a prompt to perform an action on a client device that is able to be performed
while the client device is in the locked state.” In other words, the
“identifying” step identifies content items with prompt (2).
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The “selecting” step selects “content items for presentation” from the
content items identified as having prompt (2).
The “sending” step sending the selected “content items for
presentation” (i.e., from the content items identified as having prompt (2))
“in an ambient feed to the client device while the client device is in the
locked state.”
Notably, the “receiving,” “identifying,” “selecting,” and “sending”
steps are not tied to any device. The claim leaves open the type of device
one can employ to practice these steps as claimed. In that regard, the
Specification discloses conventional networks which can be employed to
receive and send information. See Spec., para. 16. Accordingly, these steps
are reasonably broadly construed as covering generic computer functions.
As for the client device, the Specification discloses a “conventional
computer system, such as a desktop or a laptop computer” as an example of
what can be employed. See Spec., para. 15. In accordance with the claim, the
client device is a “client device of a user of a social networking system.”
Putting it together, the claimed method is reasonably broadly
construed as a scheme to identify content items that include prompts
communicating an action a device of a social networking system is able,
rather than unable, to perform while locked, select content items for
presentation from those identified, and send the selected content items to the
device while it is in the locked state.
According to the Specification, an objective of the invention is to
decrease the likelihood of a user performing an action associated with an
advertisement presented while a device is in a state providing limited
functionality that the device is unable to perform.
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Users increasingly access social networking systems through
mobile devices, or other devices that have one or more states
providing users with limited functionality. For example, many
devices have a “locked state” that responds to a reduced set of
inputs from the user and passively displays information to a user.
Conventional social networking systems may present a limited
amount of content to users while a device associated with the
user is in a state providing the user with limited functionality.
While advertisements may be included in the content presented
while a device is in a state providing limited functionality, these
advertisements may prompt users to perform actions unable to be
performed while the device is in the state providing limited
functionality. This decreases the likelihood of a user performing
an action associated with an advertisement presented while a
device is in a state providing limited functionality.
Spec., para. 3.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s description of the objective of the
invention in the social networking and advertising realm, we reasonably
broadly construe claim 1 as being directed to a scheme to identify content
items that include prompts (such as advertisements) communicating an
action a device of a social networking system is able rather than unable to
perform while locked, select content items for presentation from those
identified, and send the selected content items to the device while it is in the
locked state. Put more succinctly, claim 1 is directed to a scheme for
providing content to a locked device that includes a prompt (such as an
advertisement) communicating an action the device is able to perform while
locked.

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The Abstract Idea7
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim
construction analysis (above), we determine that the identified limitations
describe a scheme for providing content to a locked device of a social
networking system that includes a prompt (such as an advertisement)
communicating an action the device is able to perform while locked.
Providing content in a social networking environment that includes, for
example, advertising is a commercial interaction. It falls within the
enumerated “[c]ertain methods of organizing human activity” grouping of
abstract ideas set forth in the 2019 Revised 101 Guidance.9 2019 Revised
101 Guidance, 84 Fed. Reg. at 52.

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.
8 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the
claim under examination (individually or in combination) that the examiner
believes recites an abstract idea.” 84 Fed. Reg. at 54.
9 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54. This case implicates
subject matter grouping “(b):” “(b) Certain methods of organizing human
activity—fundamental economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations); managing
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Technical Improvement10 (Appellant’s Argument)
Our characterization of what the claim is directed to is similar to that
of the Examiner’s (“selecting and presenting ads on a locked device”). The
Examiner’s characterization is described at a somewhat higher level of
abstraction. Nevertheless, “[a]n abstract idea can generally be described at
different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1240, 1240–41 (Fed. Cir. 2016) (“The Board’s slight revision of its abstract
idea analysis does not impact the patentability analysis.”).
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 1 is directed to.
Appellant contends that “the claims describe an improved technical
solution for sending content items to a client device for presentation in an
ambient feed that is presented while the client device is in a locked state so
the presented content items prompt users to perform actions that are capable

personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions).” Id. at 52.
10 This corresponds to Prong Two [“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”] of Step 2A of the 2019 Revised 101 Guidance. “A
claim that integrates a judicial exception into a practical application will
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.” 84 Fed. Reg.
at 54. One consideration, implicated here, that is “indicative that an
additional element (or combination of elements) may have integrated the
exception into a practical application” is if “[a]n additional element reflects
an improvement in the functioning of a computer, or an improvement to
other technology or technical field.” Id. at 55.

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of being performed while the content item is in the locked state.” Reply
Br. 5.
However, we do not find that the claim adequately reflects an
improved technical solution to the problem of “sending content items to a
client device for presentation in an ambient feed that is presented while the
client device is in a locked state so the presented content items prompt users
to perform actions that are capable of being performed while the content
item is in the locked state.” Reply Br. 5.
The method as claimed describes, in very general terms, providing
(via “receiving,” “identifying,” “selecting,” and “sending” steps)
information including prompts communicating an action a device is able to
perform when a device is locked. The method as claimed is not focused on
improving technology. Cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d
1378, 1384 (Fed. Cir. 2019) (“The claims are focused on providing
information to traders in a way that helps them process information more
quickly, ’556 patent at 2:26–39, not on improving computers or
technology.”).
We have carefully reviewed the claim. Per our previous claim
construction analysis, claim 1 is reasonably broadly construed as covering a
scheme to identify content items that include prompts (such as
advertisements) communicating an action a device of a social networking
system is able rather than unable to perform while locked, select content
items for presentation from those identified, and send the selected content
items to the device while it is in the locked state. We see no specific asserted
improvement in computer capabilities recited in the claim. Rather than being
directed to any specific asserted improvement in computer capabilities, the
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claim supports the opposite view — that the claimed subject matter is
directed to a scheme for providing content to a locked device that includes a
prompt (such as an advertisement) communicating an action the device is
able to perform while locked employing generic devices. See Spec., e.g.,
para. 15.
The claim provides no additional structural details that would
distinguish any device required to be employed to practice the method as
claimed, such as the recited “client device,” from its generic counterparts.11
With respect to the “receiving,” “identifying,” “selecting,” and
“sending” steps, the Specification attributes no special meaning to any of
these operations, individually or in the combination, as claimed. In our view,
albeit the claim does not specifically require a computer, these are common
computer processing functions that one of ordinary skill in the art at the time
of the invention would have known generic computers were capable of
performing and would have associated with generic computers. Cf. OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer activities
or routine data-gathering steps. Alice, 134 S.Ct. at 2359 (quoting
Mayo, 132 S.Ct. at 1294) . . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to
devices,” the devices being “programmed to communicate,”
storing test results in a “machine-readable medium,” and “using
a computerized system . . . to automatically determine” an

11 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
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estimated outcome and setting a price. Just as in Alice, “all of
these computer functions are ‘well-understood, routine,
conventional activit[ies]’ previously known to the industry.”
Alice, 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.],
765 F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer
receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).
We find the Appellant’s remark that the claim presents a technical-
improvement solution unpersuasive as to error in the Examiner’s or our
characterization of what the claim is directed to because the method as
claimed fails to adequately support it. We are unable to point to any claim
language suggestive of an improvement in technology. An argument that
such an improvement exists is alone insufficient. See generally In re Glass,
474 F.2d 1015, 1019 (CCPA 1973); In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and, In
re Schulze, 346 F.2d 600, 602 (CCPA 1965).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
The Appellant argues that “the claims recite a practical application of
the identified judicial exceptions that addresses a specific challenge in the
field of online advertising . . . .” Reply Br. 3. A similar argument is made
later in the brief. See id. at 5 (“For example, the claims specific information -
that a client device is in a locked state providing limited functionality - in
specific ways recited through the various steps to improve a different
technical field, namely online advertising and targeting content to users.”)
But there is no mention of online advertising or targeting in the claim.
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The Appellant further argues that the claimed method
allows the pending claims to limit selection of content items for
inclusion in the ambient feed presented while the client device is
in a locked state to content items that prompt a user to perform
actions capable of being performed by the user while the client
device is in the locked state by accounting for the client device
being in the locked state when selecting content items for sending
to the client device.
Id. at 4. Similar arguments are made later in the Reply Brief. E.g.,
[the claimed method] allows content items to be selected for
presentation while the client device is in the locked state with
which the user may more easily interact while the client device
is in the locked state, increasing user interaction with the content
items via the client device.
This is a practical application because it practically applies
selection of content items to a specific context to solve a real
world problem.
Id. at 5.
The difficulty with such an argument is that it points to the recited
steps (“receiving,” “identifying,” “selecting,” and “sending”) themselves, the
very subject matter that we, and the Examiner, have characterized as being
an abstract idea. Rather than showing that these steps describe a technical
improvement, the Appellant points to result-based functional language that
is without any means for achieving any purported technological
improvement. The claimed invention the Appellant points to – that is,
limiting selection of the content items for inclusion in the ambient feed
presented while the client device is in a locked state to content items that
prompt a user to perform actions capable of being performed by the user
while the client device is in the locked state – is described via a scheme
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(“receiving,” “identifying,” “selecting,” and “sending”) for providing said
content items that is unmoored in technical details. By so broadly defining
the inventive method, that is, by setting out what it is aspiring to accomplish
without any means for achieving it, let alone any purported technological
improvement, the claim is in effect presenting the invention in purely result-
based functional language, strengthening our determination under Alice
step one that the claim is directed to an abstract idea. Cf. Two-Way Media
Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir.
2017) (“Claim 1 recites a method for routing information using result-based
functional language. The claim requires the functional results of
‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating
records,’ but does not sufficiently describe how to achieve these results in a
non-abstract way.”). See also Uniloc USA v. LG Elecs. USA, 957 F.3d 1303,
1308 (Fed. Cir. 2020):
The claims we held ineligible in Two-Way Media similarly failed
to concretely capture any improvement in computer
functionality. In Two-Way Media, the claims recited a method of
transmitting packets of information over a communications
network comprising: converting information into streams of
digital packets; routing the streams to users; controlling the
routing; and monitoring the reception of packets by the users.
874 F.3d at 1334. Two-Way Media argued that the claims solved
data transmission problems, including load management and
bottlenecking, but the claimed method was not directed to those
improvements. Id. at 1336–37. We therefore held the claims
ineligible because they merely recited a series of abstract steps
(“converting,” “routing,” “controlling,” “monitoring,” and
“accumulating records”) using “result-based functional
language” without the means for achieving any purported
technological improvement. Id. at 1337.
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We have considered Appellant’s other arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.

Alice step two — Does the Claim Provide an Inventive Concept?12
Step two is “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, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined, inter alia, that
the claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea.
Final Act. 4.
Most notably, other than the presentation of ads on a “user
device,” the claims do not disclose any computer hardware (such
as a processor) that is intended to execute the method. As such,
it is unclear what components are performing the receiving of
ads, identification of ads, selection of ads, and transmission of
ads to the user device. Thus, as currently written, the method

12 This corresponds to Step 2B, of the 2019 Revised 101 Guidance, 84 Fed.
Reg. at 56 “if a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then evaluate the
additional elements individually and in combination under Step 2B to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
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claims would not even be sufficient to overcome the antiquated
Bilski standard. Furthermore, the “client device” is stated at a
high level of generality and its broadest reasonable interpretation
is that of an ordinary smartphone, computer, or tablet. The use of
generic computer components to transmit information through an
unspecified interface does not impose any meaningful limit on
the computer implementation of the abstract idea. Thus, taken
alone, the additional elements do not amount to significantly
more than the above-identified judicial exception (the abstract
idea).
Id. (emphasis omitted). We agree.
We addressed the matter of whether the claim presented any purported
specific asserted technical improvements in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018)
(“We have several times held claims to pass muster under Alice step one
when sufficiently focused on such improvements.”). Such an argument, as
the Appellant has made here, can also challenge a determination under step
two of the Alice framework. See buySAFE, 765 F.3d at 1354–55. “[R]ecent
Federal Circuit jurisprudence has indicated that eligible subject matter can
often be identified either at the first or the second step of the Alice/Mayo
[framework].” See 2019 Revised 101 Guidance, 84 Fed. Reg. at 53, n.17.
The Appellant argues that “the claimed invention provides an
unconventional and counterintuitive solution for solving a technical
problem.” Appeal Br. 8 (emphasis omitted). Specifically,
given the evidence of record in this case it is apparent that the
claimed invention indeed provides an unconventional and
counterintuitive solution for solving a technical problem.
For example, one problem solved by the claimed invention
is how to limit the presentation of content items on a client device
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when that device is in a locked state. Specifically, the claimed
invention limits this presentation to content items that prompt a
user to perform an action that the user is able to perform without
unlocking the client device. As a result, content items that would
require the device to be unlocked before their prompted action
can be performed (e.g., launching a specific application on the
client device) are not presented when the device is in the locked
state.
Id. at 9 (emphasis omitted). According to the Appellant, “[t]he solution both
requires and uses the technical environment of a computerized system in an
unconventional manner that prompts users to perform actions that can be
performed from within a locked state of a client device.” Id. at 10.
But this does not explain in what way the claimed method provides a
technical improvement. As a matter of fact, as the Examiner correctly
pointed out, the claim does not place the method within a “technical
environment of a computerized system,” let alone any purported
technological improvement. The argument relies on the claim’s result-based
functional language as the basis for contending that the claim “provides an
unconventional and counterintuitive solution for solving a technical
problem” (Appeal Br. 8) (emphasis omitted). Rather than being based on any
technical details, the argument looks to the very scheme (“receiving,”
“identifying,” “selecting,” and “sending”) for providing said content items
that we have characterized as being an abstract idea. In effect, the Appellant
is arguing that the abstract idea is “unconventional and counterintuitive.”
But “[g]roundbreaking, innovative, or even brilliant discovery does not by
itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology, 569 U.S.
at 591. Cf. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1315 (Fed. Cir. 2016).
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Indeed, “[t]he ‘novelty’ of any element or steps in 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) (emphasis added); see also
Mayo, 132 S. Ct. at 1303–04 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”). Here, the jury’s general
finding that Symantec did not prove by clear and convincing
evidence that three particular prior art references do not disclose
all the limitations of or render obvious the asserted claims does
not resolve the question of whether the claims embody an
inventive concept at the second step of Mayo/Alice.
We are unpersuaded that claim 1 presents an element or combination
of elements indicative of a specific asserted technical improvement, thereby
rendering the claimed subject matter sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon a scheme to
identify content items that include prompts (such as advertisements)
communicating an action a device of a social networking system is able
rather than unable to perform while locked, select content items for
presentation from those identified, and send the selected content items to the
device while it is in the locked state.
We have reviewed the claim in light of the Specification and, as
explained above, we find the claimed subject matter insufficiently expresses
a technical improvement as a result of performing the functions as broadly
as they are recited.
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the claimed “client device” as claimed is conventional. In
doing so, we have followed “Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
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(Berkheimer v. HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO
Memorandum, Robert W. Bahr, Deputy Commissioner For Patent
Examination Policy, April 19, 2018 (the “Berkheimer Memo”)).
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” See Berkheimer, 881 F.3d at 1365
(quoting Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
1314, 1325 (Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying
factual issues.”’)). But the court also held that “[w]hen there is no genuine
issue of material fact regarding whether the claim element or claimed
combination is well-understood, routine, [and] conventional to a skilled
artisan in the relevant field, this issue can be decided on summary judgment
as a matter of law.” Berkheimer, 881 F.3d at 1368 (emphasis added). This
qualification has been subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires
that summary judgment be denied. In Berkheimer, there was
such a genuine dispute for claims 4–7, but not for claims 1–3
and 9.
. . . .
[I]n accordance with Alice, we have repeatedly recognized the
absence of a genuine dispute as to eligibility for the many
claims that have been defended as involving an inventive
concept based merely on the idea of using existing computers
or the Internet to carry out conventional processes, with no
alteration of computer functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018 (J. Moore concurring)); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1368 (Fed. Cir. 2018) (Order On Petition for Rehearing En Banc) (Reyna, J.,
dissenting) (“A factual allegation or dispute should not automatically take
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the determination out of the court’s hands; rather, there needs to be
justification for why additional evidence must be considered—the default
being a legal determination.”).
Here, the Specification indisputably shows the recited “client device”
individually and in the context of a social network as claimed was
conventional at the time of filing. Accordingly, there is sufficient factual
support for the well-understood, routine, or conventional nature of the
claimed “client device” individually or in the combination as claimed.
The Appellant argues that
Separately, the claims recite significantly more than just
targeted advertising for the reasons presented in detail above and
in the Appeal Brief. The claims recite a very specific method
including novel features that are much more than just the high
level concept of advertising and marketing activities.
Reply Br. 6. Because claim 1 makes no mention of targeted, or other
advertising and marketing activities, this argument cannot be persuasive as
to error in the Examiner’s determination under step two of Alice. It is not
commensurate in scope with what is claimed.
We have carefully reviewed the discussion at pages 5–8 of the Appeal
Brief under the heading
1) The present Office Action does not adequately demonstrate
that the claimed additional limitations beyond the abstract idea
are conventional as required by recent case law and USPTO
guidance such as the April 19, 2018 Berkheimer memorandum.
But the discussion there repeats the argument that the abstract idea
(i.e., the claimed scheme to identify content items that include prompts (such
as advertisements) communicating an action a device of a social networking
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system is able rather than unable to perform while locked, select content
items for presentation from those identified, and send the selected content
items to the device while it is in the locked state) is not conventional. See
e.g., Appeal Br. 7–8 (“the Office Action does not provide any factual
evidence to demonstrate that selecting eligible content items for presentation
in an ambient feed of a client device in a locked state is prevalent in the
industry or otherwise conventional.”) As we explained above, the
“unconventional and counterintuitive” nature of the abstract idea does not
affect the determination that the claim is directed to an abstract idea. The
abstract idea itself cannot amount to “‘significantly more than a patent upon
the [ineligible concept] itself.’” Alice, 573 U.S. at 218 (quoting Mayo, 566
U.S. at 73), whether or not it is conventional.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into a patent–eligibleapplication.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1, and claims 2–10 and 21–30
which stand or fall with claim 1, are directed to an abstract idea and do not
present an “inventive concept,” we sustain the Examiner’s conclusion that
they are directed to patent-ineligible subject matter for being judicially-
excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc.,
656 F. App’x 991, 997 (Fed. Cir. 2016) (“We have considered all of
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LendingTree’s remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an ‘inventive concept,’ we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g.,
OIP Techs., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016).

The rejection of claims 1, 3, 4, 9, 10, 21, 23, 24, 29, and 30 under 35 U.S.C.
§ 103(a) as being unpatentable over Ricasata, Brown, and Govan.
Both independent claims (claims 1 and 21) contain “identifying,”
“selecting,” and “sending” steps, all of which occur when the client device is
locked. These steps are performed “responsive to an indication that a client
device of a user of a social networking system is in the locked state that
provides limited functionality to the user” (claims 1 and 21).
The Examiner finds that said “responsive” limitation is disclosed in
Figures 3 and 9; paragraphs 11, 13, 27, 29, 37, and 43 of Ricasata. Final
Act. 6.
We have reviewed the cited Ricasata disclosures. We see there
disclosed information selected for display on a lock screen. E.g., para. 29:
FIG. 2 is an illustration of a first advertisement (ad) lock screen
202 being displayed on a touch-sensitive display screen 204 of a
smartphone 200, in accordance with one embodiment of the
invention. The first ad lock screen 202 is, overall, a graphical
user interface (GUI), with at least one ad provided therein. The
ad may be a still image, a sequence of images or a video. The
first ad lock screen 202 may include one or more hyperlinks 206
which a user can immediately select in order to launch a web
browser on the smartphone 200 and view additional information
from the advertiser. The first ad lock screen 202 may also include
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a menu button 208 which provides additional options for the
user, including unlocking the phone to terminate the lock screen
function, . . . .
However, we do not see disclosed there that the “identifying,”
“selecting,” and “sending” of the lock screen information is “responsive to
an indication that a client device of a user of a social networking system is
in the locked state that provides limited functionality to the user” (claims 1
and 21) (emphasis added). We agree with the Appellant that “Ricasata’s
selection of ads based on user data is performed independent of whether the
portable electronic device is in a locked state providing limited
functionality.” Reply Br. 9.
The rejection is not sustained on the ground that a prima facie case of
obviousness has not been made out in the first instance.

The rejection of claims 2, 6, 22, and 26 under 35 U.S.C. § 103(a) as being
unpatentable over Ricasata, Brown, Govan, and Conant.
The rejection of claims 5 and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Ricasata, Brown, Govan, and Gao.
The rejection of claims 7 and 27 under 35 U.S.C. § 103(a) as being
unpatentable over Ricasata, Brown, Govan, and Barnes.
The rejection of claims 8 and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Ricasata, Brown, Govan, and Biswas.
These rejections of dependent claims are not sustained for the reason
given above in not sustaining the rejection of the independent claims from
which they depend.
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CONCLUSION
The decision of the Examiner to reject claims 1–10 and 21–30 is
affirmed.
More specifically:
The rejection of claims 1–10 and 21–30 under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter is affirmed.
The rejection of claims 1, 3, 4, 9, 10, 21, 23, 24, 29, and 30 under
35 U.S.C. § 103(a) as being unpatentable over Ricasata, Brown, and Govan
is reversed.
The rejection of claims 2, 6, 22, and 26 under 35 U.S.C. § 103(a) as
being unpatentable over Ricasata, Brown, Govan, and Conant is reversed.
The rejection of claims 5 and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Ricasata, Brown, Govan, and Gao is reversed.
The rejection of claims 7 and 27 under 35 U.S.C. § 103(a) as being
unpatentable over Ricasata, Brown, Govan, and Barnes is reversed.
The rejection of claims 8 and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Ricasata, Brown, Govan, and Biswas is reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 21–
30
101 Eligibility 1–10, 21–
30

1, 3, 4, 9,
10, 21, 23,
24, 29, 30
103 Ricasata, Brown,
Govan
1, 3, 4, 9,
10, 21, 23,
24, 29, 30
2, 6, 22, 26 103 Ricasata, Brown,
Govan, Conant
2, 6, 22, 26
5, 25 103 Ricasata, Brown,
Govan, Gao
5, 25
7, 27 103 Ricasata, Brown,
Govan, Barnes
7, 27
8, 28 103 Ricasata, Brown,
Govan, Biswas
8, 28
Overall
Outcome
1–10, 21–
30

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