Facebook, Inc.

Patent Trials and Appeals Board

Sep 2, 2020

14849557 - (D) (P.T.A.B. Sep. 2, 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.
14/849,557 09/09/2015 Igor Gevka 2006.055US1 2606
160546 7590 09/02/2020
Mannava & Kang, P. C.
3201 Jermantown Road
Suite 525
Fairfax, VA 22030
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/02/2020 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):
docketing@mannavakang.com
fb-pdoc@fb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IGOR GEVKA, HONGDA MA, SATWIK SHUKLA,
YUFEI CHEN, DANIEL TAM, EMANUEL ALEXANDRE STRAUSS,
DANIEL OLMEDILLA DE LA CALLE, and SARANG MOHAN JOSHI
____________

Appeal 2020-002238
Application 14/849,5571
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We reverse and enter a new ground of rejection.

1 Appellant identifies Facebook, Inc. as the real party in interest. Appeal Br.
2. We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a).
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THE INVENTION
Appellant states its disclosure relates “to reviewing sponsored content
for compliance with polices enforced by an online system.” Spec. ¶ 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method comprising:
receiving, at an online system, information describing
one or more advertisements from one or more advertisers;
determining a likelihood of each of the one or more
advertisements violating one or more policies of the online
system;
for each of the one or more advertisements, determining
an expected revenue for presenting the advertisement based on
one or more of a group consisting of: an amount charged to an
advertiser for presenting the advertisement, a budget for
presenting the advertisement, targeting criteria defining a target
group of users of the online system for receiving the
advertisement, historical revenue information associated with
the advertiser, and any combination thereof;
computing a score for each of the one or more
advertisements, the score for the advertisement based at least in
part on the likelihood of the advertisement violating one or
more policies of the online system and the expected revenue for
presenting the advertisement, wherein the score for the
advertisement increases as the likelihood of the advertisement
violating the one or more policies increases;
ordering the one or more advertisements to be reviewed
into a queue based at least in part on the computed scores,
wherein advertisements having higher scores have higher orders
in the queue;
determining a predicted time until the advertisement is to
be reviewed to determine whether the advertisement violates
one or more policies of the online system based at least in part
on an order of the advertisement in the queue; and
responsive to determining the predicted time exceeds a
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threshold amount of time and before the advertisement is
reviewed, including the advertisement in a selection process for
presenting content for presentation to a user.

THE REJECTION
The following rejection is before us for review2:
Claims 1–20 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA),
first paragraph, as failing to comply with the written description
requirement.

ANALYSIS
35 U.S.C. § 112(a) REJECTION
We will not sustain the rejection of claims 1–20 under 35 U.S.C.
§ 112(a). The Examiner rejects the claims as follows:
a) Claim 1 recites “computing a score for each of the one or
more advertisements, the score for the advertisement based
at least in part on the likelihood of the advertisement
violating one or more policies of the online system and the
expected revenue for presenting the advertisement.”
However, the original disclosure does not describe an
algorithm/function/flowchart or equivalent necessary to
compute the score. It follows that the original disclosure also
does not have support for all computations of a score for the
advertisement based at least in part on the likelihood of the
advertisement violating one or more policies of the online
system and the expected revenue for presenting the
advertisement.
Final Act. 2–3.

2 The Examiner withdrew the rejections under 35 U.S.C. § 103(a)
(Final Act. 3).
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b) Claim 8 recites “applying a model to information describing
interactions with the advertisement, the expected revenue
for presenting the advertisement, and the cost to review
metric for the advertisement to generate the score for the
advertisement.” However, the original disclosure does not
describe an algorithm/function/flowchart or equivalent to a
model applied to the information describing interactions with
the advertisement, the expected revenue for presenting the
advertisement, and the cost to review metric for the
advertisement to generate the score for the advertisement; it
follows that the original disclosure also does not have support
for all models that can be applied to the information describing
interactions with the advertisement, the expected revenue for
presenting the advertisement, and the cost to review metric for
the advertisement to generate the score for the advertisement.
Claim 19 is similar in this regard; therefore, it is rejected for the
same reasons given above.
Id. at 3.
Concerning item (a), Appellant cites to various paragraphs of the
Specification which we agree support the involved claim language.
Specifically, Appellant’s direction to the Specification at paragraph 14 is
particularly relevant because it describes:
To more efficiently review advertisements for
compliance with polices enforced by the online system, the
online system calculates a score for each advertisement based at
least in part on an expected revenue to the online system for
presenting an advertisement to users. Additional factors are
also used by the online system to calculate a score for an
advertisement. Examples of additional factors include: an
advertiser experience metric that describes an amount of time
for the online system to review an advertisement, a quality
metric that indicates an expected level of interest of users of the
online system in the advertisement, and a cost to review metric
that indicates an estimated amount of resources (time and
human and computer reviewers) used to review the
advertisement.
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Thus, it is clear from the Specification that a computer score is derived “for
compliance with polices enforced by the online system.” The Appellant
need not describe “all computations of a score.” See Phillips v. AWH Corp.,
415 F.3d 1303, 1323 (Fed Cir. 2016). We find that the description of the
score computation in paragraphs 16–18 of the Specification shows
possession of the claimed “score” at least with respect to the embodiment
addressed. “[T]hat a claim may be broader than the specific embodiment
disclosed in a specification is in itself of no moment.” In re Rasmussen, 650
F.2d 1212, 1215 (CCPA 1981). Therefore, we will not sustain the written
description rejection based on the claimed “score.”
Concerning item (b), Appellant also cites to various paragraphs of the
Specification which we again agree supports the involved claim language.
Specifically, Appellant’s direction to the Specification at paragraph 45 is
particularly relevant because it describes:
A model applied by the ranking module 235 may associate
different weights with different components to generate the
score for an advertisement or for a component. Based on scores
generated for various advertisements, the ranking module
orders advertisements or components in a queue to review for
compliance with policies enforced by the online system 140.
The advertisements or components are subsequently reviewed
for compliance with policies enforced by the online system 140
based on their order in the queue, with advertisements or
components having higher orders in the queue being reviewed
sooner.
Thus, it is clear the Specification shows possession of the claimed “ranking
model.” We disagree with the Examiner that the original disclosure needs to
“have support for all models that can be applied.” See Phillips, 415 F.3d at
1323, see also In re Rasmussen, 650 F.2d at 1215. Instead, we find that the
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description of “a model applied by the ranking module 235 may associate
different weights with different components to generate the score for an
advertisement or for a component” in paragraph 45 of the Specification
shows possession of the claimed “ranking model” at least with respect to the
embodiment addressed. See Finisar Corp. v. DirecTV Group, Inc., 523 F.3d
1323, 1340 (Fed. Cir. 2008) (quoting In re Freeman, 573 F.2d 1237, 1245–
46 (CCPA 1978)) (“This court permits a patentee to express that algorithm
in any understandable terms including as a mathematical formula, in
prose . . . or as a flow chart, or in any other manner that provides sufficient
structure”).
Notwithstanding, we find that the language the Examiner determined
problematic in parts (a) and (b) above was included in the Specification as
originally filed. See Specification filed 9/9/2015. Original claims are part of
the original specification. See In re Gardner, 480 F.2d 879, 879 (CCPA
1973).
Accordingly, we find that Appellant showed possession of the claimed
invention by describing the claimed invention with all of its limitations using
such descriptive means as words, structures, figures, diagrams, and formulas
that fully set forth the claimed invention. Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).

35 U.S.C. § 101 REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b) we enter a new
grounds of rejection of claims 1–20 under 35 U.S.C. § 101.
Concerning independent claim 1, we find the following:
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An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See id. at 219 (“On their face, the claims before us are drawn to the concept
of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
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In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).3 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.4
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
4 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 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, Appellant’s arguments challenging the
sufficiency of the Examiner’s rejection will not be addressed to the extent
those arguments are based on now superseded USPTO guidance.
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
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Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a

practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
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drafting effort designed to monopolize the judicial exception.” Guidance, 84
Fed. Reg. at 53; see also MPEP §§ 2106.04–2106.05.
The Specification states:
To prevent presentation of sponsored content from
impairing user interactions, many online systems require
sponsored content to comply with policies enforced by the
online system for the sponsored content to be presented by the
online system. Conventional, online systems review sponsored
content items for compliance with policies enforced by an
online system in the order the sponsored content items were
received from entities. Some online systems prioritize review
of sponsored content items from entities that have agreements
with the online systems guaranteeing review of sponsored
content items from the entities within a certain amount of time.
However, this prioritization scheme does not account for
various factors such as: potential revenue lost while a sponsored
content is awaiting review, time-sensitivity issues requiring the
expedited review of a sponsored content item, quality of a
sponsored content item, or cost to review a sponsored content
item.
Spec. ¶ 3.
Claim 1 recites in pertinent part,
information describing one or more advertisements from one or
more advertisers;
determining a likelihood of each of the one or more
advertisements violating one or more policies . . . ;
for each of the one or more advertisements, determining
an expected revenue for presenting the advertisement based on
one or more of a group consisting of: an amount charged to an
advertiser for presenting the advertisement, a budget for
presenting the advertisement, targeting criteria defining a target
group of users . . . for receiving the advertisement, historical
revenue information associated with the advertiser, and any
combination thereof;
computing a score for each of the one or more
advertisements, the score for the advertisement based at least in
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part on the likelihood of the advertisement violating one or
more policies of the online system and the expected revenue for
presenting the advertisement, wherein the score for the
advertisement increases as the likelihood of the advertisement
violating the one or more policies increases;
ordering the one or more advertisements to be reviewed
into a queue based at least in part on the computed scores,
wherein advertisements having higher scores have higher orders
in the queue;
determining a predicted time until the advertisement is to
be reviewed to determine whether the advertisement violates
one or more policies of the . . . system based at least in part on
an order of the advertisement in the queue; and
responsive to determining the predicted time exceeds a
threshold amount of time and before the advertisement is
reviewed, including the advertisement in a selection process for
presenting content for presentation to a user.
Accordingly, we find that claim 1 recites a scheme for prioritizing
which advertisements are included in a selection process for presenting
content for presentation to a user based at least in part on: the likelihood of
the advertisement violating one or more policies, the expected revenue for
presenting the advertisement and a predicted time until the advertisement is
reviewed. Claim 1, thus, at least describes inter alia, advertising, managing
personal behavior or relationships or interactions between people, business
relations, which are ones of certain methods of organizing human activity
that are judicial exceptions. Guidance, 84 Fed. Reg. at 52. Claim
limitations such as,
computing a score for each of the one or more advertisements,
the score for the advertisement based at least in part on the
likelihood of the advertisement violating one or more policies
of the online system and the expected revenue for presenting
the advertisement, wherein the score for the advertisement
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increases as the likelihood of the advertisement violating the
one or more policies increases,
and “wherein advertisements having higher scores have higher orders in the
queue,” are factors which deter behavior against policy violations by placing
the violating advertisements higher in queue than those which do not.
Also, steps such as “computing a score,” “ordering the one or more
advertisements to be reviewed into a queue,” “determining a predicted
time,” and “determining the predicted time exceeds a threshold amount of
time,” are all concepts performed in the human mind as mental processes.
These steps are a kin to the steps of receiving, transmitting, storing, and
analyzing data that 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); see also Guidance, 84 Fed. Reg. at 52.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “an online system.” This component is described in the
Specification at a high level of generality. See Spec. ¶¶ 12, 13 Fig. 1. We
fail to see how the generic recitations of these most basic computer
components and/or of a system so integrates the judicial exception as to
“impose[] a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Guidance, 84 Fed. Reg. at 53. We find no indication in the Specification,
nor does Appellant direct us to any indication, that the operations recited in
independent claim 1 invoke any assertedly inventive programming, require
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any specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
Thus, we find that claim 1 recites the judicial exceptions of certain
methods of organizing human activity and a mental process that are not
integrated into a practical application.
That the claim does not preempt all forms of the abstraction or may be
limited to policy–based advertising, does not make them any less abstract.
See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed.
Cir. 2015) (“And that the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract.”).
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to abstract ideas/judicial exceptions, the claim must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73). Simply
programming a general-purpose computer or generic circuitry to perform an
abstract idea does not provide an “inventive concept” such that the claim
amounts to significantly more than that abstract idea. See id. at 221–227
(applying an abstract idea, such as an algorithm, on a general purpose
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computer is not enough to transform a patent-ineligible abstract idea into a
patent-eligible invention); EON Corp. IP Holdings LLC v. AT&T Mobility
LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (“A general purpose computer is
flexible—it can do anything it is programmed to do.”).
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, determine, compute, order, and modify the data as a
result amounts to electronic data query and retrieval—one of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(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.”). In short, each step does no more than require a generic
computer to perform generic computer functions. The claim does not, for
example, purport to improve the functioning of the computer itself. In
addition, as we stated above, the claims do not affect an improvement in any
other technology or technical field. The Specification spells out different
generic equipment and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of information access under different scenarios (see, e.g., Spec.
¶¶ 12, 13, Fig. 1). Thus, claim 1 at issue amounts to nothing significantly
more than instructions to apply the abstract idea using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
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abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–
226.
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. The sequence of data reception-analysis (receive,
determine, determine, compute, order, determine, and execute) and storing is
equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(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)
(holding that sequence of data retrieval, analysis, modification, generation,
display, and transmission was abstract); Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding
sequence of processing, routing, controlling, and monitoring was abstract).
The ordering of the steps is, therefore, ordinary and conventional.
Independent claim 12 is directed to the same subject matter of
claim 1, and thus our analysis above applies equally to independent claim
12. As the Federal Circuit has made clear “the basic character of a process
claim drawn to an abstract idea is not changed by claiming only its
performance by computers, or by claiming the process embodied in program
instructions on a computer readable medium.” See CyberSource, 654 F.3d
at 1375-76 (citing In re Abele, 684 F.2d 902 (CCPA 1982)).
Claims 2–11 and 13–20 depend from independent claims 1, and 12,
respectively, and are directed to the same abstract idea as claim 1. See
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n,
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776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining that when all claims are
directed to the same abstract idea, “addressing each claim of the asserted
patents [is] unnecessary”). These dependent claims recite additional features
of mental steps, e.g., “modifying the order of the advertisements in the
queue based at least in part on the modified score for the advertisement.”
(Claims 4, 15). The additional claim elements recited in these claims are
insufficient, in our view, to confer patent eligibility.

CONCLUSIONS OF LAW
We conclude the Examiner erred in rejecting claims 1–20 under
35 U.S.C. § 112(a).
We enter a new ground of rejection of claims 1–20 under 35 U.S.C.
§ 101.

DECISION
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 112(a) is
reversed.
A new ground of rejection is entered for claims 1–20 under 35 U.S.C.
§ 101.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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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 . . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record.
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).
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed New
Ground
1–20 112 Written
description
1–20
1–20 101 Eligibility 1–20
Overall
Outcome
1–20 1–20

REVERSED; 37 C.F.R. § 41.50(b)