Facebook, Inc.

Patent Trials and Appeals Board

Sep 25, 2020

15216664 - (D) (P.T.A.B. Sep. 25, 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.
15/216,664 07/21/2016 Philip Adam Hewinson 2006.076US1 2203
160546 7590 09/25/2020
Mannava & Kang, P. C.
3201 Jermantown Road
Suite 525
Fairfax, VA 22030
EXAMINER
PATEL, DIPEN M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
09/25/2020 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 PHILIP ADAM HEWINSON, ADAM STEVENS,
BEN PARSONS, ANALA JOELLE PRABHU, MAYA CAHIER, and
SEBASTIAN MICHAEL ANTHONY TOTTE

____________

Appeal 2020-003152
Application 15/216,664
Technology Center 3600
____________

Before JAMES P. CALVE, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–20, which constitute all pending claims in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as “Facebook, Inc.”
Appeal Br. 2.
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INVENTION
Appellant’s “invention relates generally to presenting content to users
of an online system, and more specifically to predicting performance of
content presented to users.” Spec. ¶ 1.
CLAIMED SUBJECT MATTER
Claims 1 and 13 are the independent claims on appeal and recite
substantially similar subject matter. Claim 1, reproduced below with added
bracketed notations and reformatting, is representative of the claimed subject
matter. See Appeal Br. 19, Claims App. (emphasis added).
1. A method comprising:
[(a)] obtaining a plurality of content items at an online
system for presentation to users of the online system;
[(b)] maintaining information at the online system
describing contexts in which content items are presented to
users of the online system, a context in which a content item is
presented to a user identifying a combination of: content
presented in conjunction with the content item, content
presented prior to presentation of the content item, an action
performed by a user prior to presentation of the content item, an
application in which the content item is presented, and a format
in which the content item is presented;
[(c)] determining a quality score by the online system
for each of at least a set of contexts in which content items are
presented to users of the online system, the quality score for a
context based on actions performed by users of the online
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system who were previously presented with one or more content
items in the context;
[(d)] identifying a context in which a selected content
item is to be presented to users of the online system;
[(e)] retrieving a quality score for the identified context
from the information maintained at the online system; and
[(f)] determining a predicted performance of the content
item based on the retrieved quality score for the identified
context and one or more characteristics of the selected content
item including a location in which the content item is to be
presented.

REJECTIONS
Claims 13–20 are rejected under 35 U.S.C. § 112(b) as indefinite.
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without integration into a practical application and
significantly more.
Claims 1, 4, 7–13, 15, and 17–20 are rejected under 35 U.S.C. § 103
as unpatentable over Shay et al. (US 2015/0088644 A1, pub. Mar. 26, 2015)
(“Shay”) and Sarukkai et al. (US 2013/0174045 A1, pub. July 4, 2013)
(“Sarukkai”).
Claims 2, 3, 5, 6, 14, and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Shay, Sarukkai, and Non-patent Literature titled “Add or
Multiply? A Tutorial on Ranking and Choosing with Multiple Criteria”
available at https://pubsonline.informs.org/doi/pdf/10.1287/ited.2013.0124
by Chris Tofallis (“Tofallis”).
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OPINION
35 U.S.C. § 112(b)
The Examiner rejects claims 13–20 as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
applicant regards as his invention. Final Act. 2. In particular, the Examiner
maintains that independent claim 13’s recitation of “[a] computer program
product comprising a non-transitory computer-readable-storage medium”
renders the claim indefinite because it is unclear how a computer program
product (i.e., software) can comprise a computer readable storage medium
(i.e., hardware), as supported by at least paragraph 56 of the Specification.
Ans. 5.
Appellant disagrees and argues that claim 13 is not indefinite because
“[t]he definition of a ‘computer program product’ is specifically provided in
the specification, for example at paragraph [0055], which recites ‘a
computer program product comprising a computer-readable medium
containing computer program code, which can be executed by a
computer processor for performing any or all of the steps, operations,
or processes described.” Reply Br. 2; see also Appeal Br. 4.
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification, and the language should be
read in light of the specification as it would be interpreted by one of ordinary
skill in the art. In re Amer. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004) (citations omitted).
Even though Appellant correctly asserts that as “their own
lexicographers” they “can define in the claims what they regard as their
invention essentially in whatever terms they choose so long as any special
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meaning assigned to a term is clearly set forth in the specification” (Reply
Br. 2, emphasis added), we find Appellant’s written description of the
invention creates ambiguity as to the meaning of the term “computer
program product,” which is described as both software and hardware in the
Specification. For example, paragraph 54 discloses that “algorithms and
symbolic representations of operations on information . . . while described
functionally, computationally, or logically, are understood to be
implemented by computer programs or equivalent electrical circuits,” which
distinguishes computer programs from hardware. Paragraph 55 discloses
that “a software module is implemented with a computer program product
comprising a computer-readable medium containing computer program
code,” which supports Appellant’s position that “computer program
product” would be understood as a tangible medium or hardware. Paragraph
56 discloses that “a computer program may be stored in a non-transitory,
tangible computer readable storage medium,” which describes a “computer
program” as software.
However, paragraph 57 of Appellant’s Specification discloses that a
product may comprise information resulting from a computing process, the
information is stored on a medium and “may include any embodiment of a
computer program product or other data combination.” (Emphasis added).
We find this disclosure creates ambiguity by equating a “computer program
product” with “data,” which supports the Examiner’s position. Appellant’s
different treatments of “computer program product” and “product” in the
Specification makes it unclear whether a “product” is a tangible medium or
data with no physical embodiment. “The claims, when read in light of the
specification and the prosecution history, must provide objective boundaries
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for those of skill in the art.” Interval Licensing LLC v. AOL, Inc., 766 F.3d
1364, 1371 (Fed. Cir. 2014). In other words, one of ordinary skill in the art
would be unable to discern from the Specification whether “computer
program product” is limited to a tangible medium or also includes
disembodied data. “Without better guidance, an artisan must speculate
which choice of the alternative characteristics better describes any of these
terms in a given situation.” IQASR LLC. v. Wendt Corp., Appeal No. 2020-
2227, 2020 WL 5525021, at *11 n.5 (Fed. Cir. Sept. 15, 2020)
(nonprecedential). “[I]f a claim is amenable to two or more plausible claim
constructions, the [Examiner] is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed invention by holding
the claim indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI
2008) (precedential); see also In re McAward, No. 2015-006416, 2017 WL
3669566 (PTAB Aug. 25, 2017) (precedential). Therefore, we are not
persuaded of error by the Examiner.
Accordingly, we sustain the rejection of claims 13–20 as indefinite.
35 U.S.C. § 101
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
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laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 78, 79). This 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.’” Id. at 217–18 (alteration in original) (citation
omitted).
The Examiner rejects claims 1–20 as being directed to patent
ineligible subject matter by discussing independent claims 1 and 13
separately, and evaluating the claims under the Alice framework and the
2019 Revised Guidance.2 Final Act. 4–11. Appellant disputes the rejection

2 The U.S. Patent and Trademark Office (“USPTO”) published revised
guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) “clarifying that a claim is not ‘directed to’ a judicial exception
if the judicial exception is integrated into a practical application of that
exception.” Id. at 50.

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of claims 1–20 based on claim 1. Appeal Br. 5–12. We select claim 1 as
representative of the claims, with claims 2–20 standing or falling therewith.
See 37 C.F.R. § 41.37(c)(1)(iv)(2019).
Statutory Categories under § 101
To determine subject matter eligibility under 35 U.S.C. § 101, the
Examiner must first determine if the claims fall into one of the four statutory
categories of invention: processes, machines, manufactures, or composition
of matter. See MPEP § 2106.03. The Examiner determines that claim 1
recites a method, and is directed to a process, which is one of the statutory
categories under § 101. Final Act. 4.
We now turn to the two step Alice framework.
Step One of the Alice Framework (2019 Revised Guidance, Step 2A)
Step 2A, Prong One
The first step in the Alice framework is to determine whether the
claims at issue are “directed to” a patent-ineligible concept, e.g., an abstract
idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in the 2019
Revised Guidance (i.e., Step 2A), is a two-prong test; in Step 2A, Prong
One, the Examiner must look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, the Examiner must next consider whether the
claim includes additional elements, beyond the judicial exception, that
“integrate the [judicial] exception into a practical application,” i.e., that
apply, rely on, or use the judicial exception in a manner that imposes a
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meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception (Step 2A,
Prong Two). Id. at 54–55. Only if the claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, then the
Examiner can conclude that the claim is “directed to” the judicial exception,
e.g., an abstract idea.
To that end, the Examiner determines that claim 1 is “directed to the
abstract idea of presenting one or more content items to users by analyzing
user behavioral data associated with contexts in which the one or more
content item is to be presented.” Final Act. 5. The Examiner states that
steps (a)–(f) of claim 1, except for the recitation of the “online system” and
“an application in which the content item is presented” (italicized in claim 1
supra), encompass the abstract idea. Id. According to the Examiner, these
steps describe “certain methods of organizing human activity between
content provider and content consumer implemented by utilizing
mathematical concepts.” Id. at 6 (emphasis omitted). The Examiner
maintains that the certain methods of organizing human activity grouping
applies to commercial interactions in the form of advertising, marketing or
sales activities or behaviors, and mathematical concepts grouping applies
although Appellant’s determination of predicted performance is recited in
words rather than a mathematical expression. Ans. 6.
Appellant argues that claim 1 is not directed to an abstract idea and
does not fall within the category of certain methods of organizing human
activity or mathematical concepts. Appeal Br. 5–6. Additionally, Appellant
asserts “claim 1 includes multiple steps that require action by a processor
that cannot practically be performed in the mind.” Id. at 7. According to
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Appellant, none of steps (a)–(e) of claim 1 “can [be] practically [] performed
in the mind. As such, the claims are patent eligible under Prong 1 of Step
2A.” Id. at 8.
For the reasons discussed below, we are not persuaded the Examiner
erred in concluding that claim 1 recites an abstract idea under Prong 1, Step
2A of the Revised Guidance.
Appellant’s claimed invention “determines a predicted performance of
presenting a content item based on factors including a context in which the
content items is to be presented.” Spec., Abstract. Process steps (a)–(f) of
claim 1 describe how this is performed, however, the “steps of the method
may be performed in different orders than the order described in conjunction
with FIG. 3” (id. ¶ 41), which mirrors the order in claim 1. We begin our
analysis by broadly but reasonably construing the steps recited in claim 1.
Step (a) of claim 1 recites “obtaining a plurality of content items . . .
for presentation to users.” Appeal Br. 19, Claims App. An example of
content (e.g., text, image, audio, video, or any other suitable data) items
collected for presentation to users is advertisements. Spec. ¶¶ 18, 23. In
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016), the Federal Circuit reiterated: “[W]e have treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”3
Therefore, step (a) recites an abstract idea.

3 See also, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1349 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
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Step (b) recites
maintaining information . . . describing contexts in which
content items are presented to users, a context in which a
content item is presented to a user identifying a combination of:
content presented in conjunction with the content item, content
presented prior to presentation of the content item, an action
performed by a user prior to presentation of the content item, an
application in which the content item is presented, and a format
in which the content item is presented
Appeal Br. 19, Claims App. This step describes “stor[ing] information
associated with various content items identifying contexts in which content
items were presented to users or in which content items are to be presented
to users . . . to categorize presentation of various content items.” Spec. ¶ 27.
Step (b) recites an abstract idea because in TLI Communications LLC v. AV
Automotive LLC, 823 F.3d 607, 611 (Fed. Cir. 2016), the court held the
concept of storing and classifying data in an organized manner is an abstract
idea.
Step (c) recites “determining a quality score . . . for each of at least a
set of contexts in which content items are presented to users . . . the quality
score for a context based on actions performed by users . . . who were
previously presented with one or more content items in the context.” Appeal
Br. 19, Claims App. A quality score for a context is a numeric value (e.g.,
between 1 and 5) describing effectiveness of the context in causing users to
perform a particular action. Id. ¶ 46. Determining a quality score by
assigning a numeric value can be done in the human mind by observing and
evaluating user actions. For example, a person can observe each consumer’s

(Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011).
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reaction to a product display advertisement in a store and assign a quality
score of 5, as most effective, when a consumer purchases the product in
response to the advertisement. Mental processes, which are concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion), recite an abstract idea. 2019 Revised Guidance, 84 Fed.
Reg. at 52; see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373 (Fed. Cir. 2011) (“[A] method that can be performed by human
thought alone is merely an abstract idea.”); accord Versata Dev. Grp. Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015). Therefore, step (c)
recites an abstract idea.
Step (d) recites “identifying a context in which a selected content item
is to be presented to users.” Appeal Br. 19, Claims App. For example, by
selecting a content item from the maintained content items and identifying a
context (e.g., having a maximum likelihood of engagement) in which the
selected content item is to be presented. Spec. ¶ 47 (“the selected content item
includes a description or an identifier of the context in which the content item is
to be presented”). The step of identifying a context in which to present the
selected content item, recites a mental process performed in the human mind
by evaluating a content item, which is described in Appellant’s Specification
as capable of being performed “by manual review of the content item by an
administrator of the content item.” Id. ¶ 39; see, e.g., Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1316–18 (Fed. Cir. 2016) (relying
upon the specification, the Federal Circuit explained that the claimed
electronic post office is analogous to how a person evaluates a particular
piece of mail and decides whether to read or dispose of it, “with the
exception of generic computer-implemented steps, there is nothing in the
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claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper”); Secured Mail Sols. LLC v. Universal
Wilde, Inc., 873 F.3d 905, 910 (Fed. Cir. 2017), cert. denied, 138 S. Ct. 2000
(2018) (“The fact that an identifier can be used to make a process more
efficient, however, does not necessarily render an abstract idea less
abstract.”). Therefore, step (d) recites an abstract idea.
Step (e) of “retrieving a quality score for the identified context from
the information maintained” (Appeal Br. 19, Claims App.) may be
performed in the human mind by observing a quality score recorded on
paper, which is a mental process and an abstract idea.
Step (f) recites “determining a predicted performance of the content
item based on the retrieved quality score for the identified context and one or
more characteristics of the selected content item including a location in
which the content item is to be presented.” Appeal Br. 19, Claims App.
Determining the predicted performance of the content item is described as a
product of a value based on a location in which the content item is to be
presented and a constant raised to a power of the quality score for the
context in which the content item is to be presented––e.g., “the predicted
performance is determined 330 as a product of a percentage of presentations
of the content item in a particular location and two raised to the power of the
quality score for the context in which the content item is to be presented.”
Spec. ¶ 48. This mathematical calculation recites an abstract idea as being
both a mental process that can be performed in the human mind or with pen
and paper, and a mathematical concept. SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163–65 (Fed. Cir. 2018) (performing a resampled statistical
analysis to generate a resampled distribution is an abstract idea). In fact,
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step (f) is recited as being performed manually without any tie to the online
system.
Our analysis above identifies each step of claim 1 individually as
reciting an abstract idea. In evaluating steps (a)–(f) in combination, we
agree with the Examiner that claim 1 recites a method of organizing human
activity of a content administrator predicting revenue generated from
presenting a content item (e.g., advertising) to users in a particular location
to accurately assess how contexts in which the content is presented influence
user behavior so that revenue obtained from third party systems (e.g.,
advertisers) is increased. See Spec. ¶¶ 9, 10, 49, 52. The steps of claim 1
together reflect commercial interactions in the form of marketing or sales
activities or behaviors between a content administrator and user, which falls
within the enumerated “Certain methods of organizing human activity”
grouping of abstract ideas set forth in the 2019 Revised Guidance.
84 Fed. Reg. at 52.
The abstract idea recited here is not meaningfully different from the
ideas found to be abstract in other cases before our reviewing court.
Notably, our reviewing court has held that “tailoring of content based on
information about the user—such as where the user lives or what time of day
the user views the content—is an abstract idea.” Affinity Labs of Texas, LLC
v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (describing
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015)). And, in Bridge and Post, Inc. v. Verizon
Communications, Inc., 778 F. App’x 882 (Fed. Cir. 2019), the Federal
Circuit held that abstract ideas include tracking a user’s computer network
activity and using information gained about the user to deliver targeted
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media such as advertisements. Recently, the court reiterated that claims
reciting “targeted advertising and bidding to display advertising . . . are
abstract ideas relating to customizing information based on the user and
matching them to the advertiser.” In re Morsa, 809 F. App’x 913, 917 (Fed.
Cir. 2020). See also Evolutionary Intelligence, LLC v. Spring Nextel Corp.,
137 F. Supp. 3d 1157 (N.D. Cal. 2015), aff’d, 677 F. App’x 679 (Fed. Cir.
2017) (tailoring content based upon the time of day and location is abstract)
and Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal. 2014),
aff’d, 622 F. App’x 915 (Fed. Cir. 2015) (concluding that targeting
advertisements to certain consumers is no more than an abstract idea). In
light of these precedents, we conclude that claim 1 equally recites an abstract
idea.
Appellant’s argument that claim 1 requires “action by a processor that
cannot practically be performed in the mind” (Appeal Br. 7) is unavailing
because “purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.” CyberSource, 654 F.3d at 1375.
We are not persuaded by Appellant’s argument that “claim 1
resembles the claim found eligible in Example 39” of the Abstract Ideas
Examples in the 2019 Revised Patent Subject Matter Eligibility Guidance
(2019 PEG).4 Appeal Br. 7. The claim of Example 39 is directed to a
computer-implemented method of training a neural network for facial
detection comprising collecting a set of digital facial images, applying one

4 USPTO, Subject Matter Eligibility Examples: Abstract Ideas, available at
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf (January 7, 2019) (“2019 PEG”).
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or more transformations to the images including mirroring, rotating,
smoothing, or contrast reduction to create a modified set of digital facial
images, creating first and second training sets, and training the neural
network. 2019 PEG, 8. The claim in Example 39 does not recite an abstract
idea because, among other things, the steps can “not practically be
performed in the human mind.” Id. at 9.
We also find no parallel between claim 1 and claim 2 of Example 37
of the 2019 PEG because as discussed, contrary to Appellant’s argument
(Appeal Br. 7), claim 1 recites multiple steps that can practically be
performed in the human mind. “[T]he claimed step of determining the
amount of use of each icon by tracking how much memory has been
allocated to each application associated with each icon over a predetermined
period of time,” in claim 2 of Example 37, cannot be “practically performed
in the human mind, at least because it requires a processor accessing
computer memory indicative of application usage.” 2019 PEG, 3.
Accordingly, we agree with the Examiner that claim 1 recites an
abstract idea.
Step 2A, Prong Two
Having concluded that claim 1 recites a judicial exception, i.e. an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two). 2019 Revised Guidance, 84
Fed. Reg. at 51. When a claim recites a judicial exception and fails to
integrate the exception into a practical application, the claim is “directed to”
the judicial exception. Id. A claim may integrate the judicial exception
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when, for example, it reflects an improvement to technology or a technical
field. Id. at 55.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
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., 790 F.3d at 1346). 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 id. at 1335–36.
Under Step 2A, Prong Two, the Examiner identifies the recitation of
“online system” and “an application in which the content item is presented”
as elements in addition to the abstract idea. Final Act. 5, 8. The Examiner
finds that these additional elements comprise generic computer components
described at a high level of generality, which “are simply utilized as tools to
implement the abstract idea.” Id. (citing Spec. ¶¶ 16, 17, 54–57, Fig. 1).
According to the Examiner, beyond generally linking the use of the abstract
idea to a technological environment, the claims are “implementing a
commercial solution to a commercial problem . . . not a technical one.” Id.
(citing Spec. ¶¶ 2–10, 25, 26, 51). The Examiner considers the claim as a
whole and determines the additional elements do not reflect an improvement
in the functioning of a computer or technology and fail to integrate the
abstract idea into a practical application. Id. at 9.
Appellant asserts that “the claimed invention is directed to an
improvement over conventional content selection or distribution systems by
accounting for characteristics of a content item along with how the content
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item is to be presented, and where the content item is to be presented, to
more effectively select content for presentation in a context to maximize
interaction with the content.” Appeal Br. 10; Reply Br. 5. According to
Appellant, “claim 1 is like eligible claim 1 of Example 42 . . . [because
beyond] merely storing information, providing access, and storing the
updated information . . . it converted it, generated a message, and transmitted
it.” Appeal Br. 10; Reply Br. 6. Appellant argues that similarly, “claim 1
includes steps with additional technical detail that is sufficient to integrate
. . . the alleged judicial exception into a practical application.” Appeal
Br. 10. We disagree.
Claim 1 in Example 42 is directed to solving the problem of format
inconsistencies in medical records that are stored locally at various medical
offices preventing the records from being shared easily from one office to
another. 2019 PEG, 18. The format inconsistencies of the medical records
is a technical problem that the claimed invention of Example 42 solves by
converting the various medical records into a standardized format. Id. at 18–
19. Unlike Example 42, the claimed invention does not solve a technical
problem. Rather, as the Examiner points out, Appellant’s invention is
intended to solve a commercial problem; that is, predicting performance of
content items such as advertisements presented to users based on
circumstances or contexts in which those advertisements are presented to
users in order to increase future opportunities to obtain increased revenue
from advertisers. See Spec. ¶¶ 4, 9–10.
We acknowledge that “[s]oftware can make non-abstract
improvements to computer technology just as hardware improvements can,
and sometimes the improvements can be accomplished through either
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route.” Enfish, 822 F.3d at 1335. However, “to be directed to a patent-
eligible improvement to computer functionality, the claims must be directed
to an improvement to the functionality of the computer or network platform
itself.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359,
1365 (Fed. Cir. 2020) (citing Enfish, 822 F.3d at 1336–39). Claim 1 recites
an online system arranged in no particular way to perform basic functions of
collecting and storing information, determining a score, identifying a
context, and retrieving a stored score. The Specification’s description of the
online system and an application in which a content item is presented makes
clear that generic computer components are utilized as tools to implement
the abstract idea in an online environment, rather than improving the
functioning of the computer system or other technology. See Spec. ¶¶ 15–
19, 54–57. As a whole, claim 1 does no more than use instructions to
implement the abstract idea on the generic online system.
Accordingly, we determine that claim 1 lacks any additional elements
sufficient to integrate the abstract idea into a practical application.
Step Two of the Alice Framework (2019 Revised Guidance, Step 2B)
We next consider whether claim 1 recites additional elements,
individually, or as an ordered combination, that provide an inventive
concept. Alice, 573 U.S. at 217–18. The second step of the Alice test is
satisfied when the claim limitations involve more than the performance of
well-understood, routine, and conventional activities previously known to
the industry. Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018);
see 2019 Revised Guidance, 84 Fed. Reg. 56 (explaining that the second step
of the Alice analysis considers whether a claim adds a specific limitation
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beyond a judicial exception that is not “well-understood, routine,
conventional” activity in the field).
Appellant argues that the Examiner is “specifically ignoring the
inventive concepts that are supposed to be considered when determining
whether the inventive concept amounts to significantly more.” Appeal Br.
10–11. Appellant reproduces steps (b), (c), (e), and (f) and argues that these
steps in combination provide “multiple additional elements with technical
details of the claim that are clearly significantly more than the alleged
judicial exceptions identified.” Id. at 11–12. We are not persuaded because
“the relevant inquiry is not whether the claimed invention as a whole is
unconventional or non-routine.” BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018). And, a claim does not gain subject
matter eligibility solely because it is narrowed or limited to Appellant’s
alleged improvement over existing processes. See, e.g., Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016)
(“A narrow claim directed to an abstract idea, however, is not necessarily
patent-eligible.”). The question is whether the claim includes additional
elements, i.e., elements other than the abstract idea itself, that “‘transform
the nature of the claim’ into a patent-eligible application.” Alice Corp.,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78).
We agree with the Examiner that claim 1 lacks additional elements
that provide an inventive concept. As discussed, the additional elements
recited in claim 1 comprise the “online system,” which are described as
conventional computer components that perform well-understood, routine,
or conventional functions of collecting and storing, determining, identifying,
and retrieving information at a high level of generality. Spec. ¶ 19 (“[T]he
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online system 140 may include additional, fewer, or different components
for various applications. Conventional components such as network
interfaces, security functions, load balancers, failover servers, management
and network operations consoles, and the like are not shown so as to not
obscure the details of the system architecture.”). See, e.g., 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.”); 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 functions can be achieved by any general purpose computer without
special programming). And the recitation of “an application in which the
content item is presented” simply appends well-understood, routine
conventional activity of displaying information to a conventional mobile
device previously known to the industry to the judicial exception.
As an ordered combination, the additional elements provide no more
than when they are considered individually. Alice, 573 U.S. at 225. They
recite generic computer components that perform well-understood and
conventional functions. They are used as tools to implement the judicial
exception. See SAP Am., 898 F.3d at 1169–70 (limitations of various
databases and processors did not improve computers but used already
available computers and available functions as tools to execute the claimed
process); Inventor Holdings LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (considering the method steps of the
representative claims as an “ordered combination” reveals that they “amount
to ‘nothing significantly more’ than an instruction to apply [an] abstract
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idea” using generic computer technology).
Accordingly, we agree with the Examiner that claim 1 lacks an
inventive concept sufficient to transform the abstract idea into patent-eligible
subject matter. We sustain the rejection of independent claim 1 as directed
to patent ineligible subject matter under 35 U.S.C. § 101, and claims 2–20,
which fall with claim 1.
35 U.S.C. § 103
We are persuaded by Appellant’s argument that Shay, on which the
Examiner relies (see Ans. 11), does not disclose
maintaining information at the online system describing
contexts in which content items are presented to users of the
online system, a context in which a content item is presented to
a user identifying a combination of: content presented in
conjunction with the content item, content presented prior to
presentation of the content item, an action performed by a user
prior to presentation of the content item, an application in
which the content item is presented
as recited in limitation (b) of claim 1. Appeal Br. 12. In particular,
Appellant argues “[t]he information described by Shay does not maintain a
context identifying ‘a combination of’” various contexts in which the
content item is presented, “but instead accounts for prior user actions to
determine a likelihood of a user performing an initial action and subsequent
actions with an advertisement.” Id. at 13–14 (citing Shay ¶¶ 13, 41, 42).
According to Appellant:
This likelihood of user action does not identify a context in
which the advertisement is presented that identifies “a
combination of content presented in conjunction with the
content item, content presented prior to presentation of the
content item, an action performed by a user prior to
presentation of the content item, an application in which the
content item is presented, and a format in which the content
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item is presented,” as claimed, but maintains prior user actions
with content in association with the user and the content with
which the user interacted.
Id. at 14.
In response to Appellant’s argument, the Examiner “is unclear as to
why [the] combination of Shay in view of Sarukkai does not teach the
argued claim limitation” and finds Appellant’s arguments “lack
particularity” and “to be mere allegation.” Ans. 10. For example, the
Examiner finds Shay’s description of an “‘ad action for presenting an
advertisement associated with a flight simulator game application’” to “an
application in which the content item is presented” as part of the identified
combination of the claimed context. Id. at 12 (citing Shay ¶¶ 42, 44)
(emphasis omitted). We are persuaded of error.
In describing limitation (b), the Specification discloses that “the
online system 140 maintains various contexts in which a content item is
presented, or is to be presented, to categorize presentation of various content
items.” Spec. ¶ 27.
[T]he online system 140 maintains associations between
different sets of contexts in which a content item was presented
or is to be presented and different applications. For example,
the online system 140 stores a set of contexts in which a content
item was presented by an application in association with an
identifier of the application, identifying contexts in which the
application corresponding to the identifier of the application is
capable of presenting content. As certain contexts may apply to
certain applications and not to other applications, associating
sets of contexts with identifiers of different applications allows
the online system 140 to more efficiently identify contexts in
which a content item is to be presented or in which a content
item was presented by determining an application in which the
content item was presented or in which the content item is to be
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presented and selecting from the set of contexts associated with
the determined application.
Id. ¶ 45.
As Appellant points out, “the ad action described by Shay is unrelated
to an application in which the content item is presented, but describes the
subject matter of the advertisement being displayed.” Reply Br. 9 (citing
Shay ¶ 41). Paragraph 41 of Shay discloses that “an ad action for presenting
an advertisement associated with a flight simulator game application to a
user is determined 310 by multiplying the likelihood that the user installs the
application by an amount of money the user is expected to spend in the
application if installed it.” To determine ad action for presentation of the ad
to the user, Shay retrieves data describing interactions previously performed
by the user and analyzes ad information to determine a likelihood of the user
interacting with the ad. Shay ¶ 42; see also id. ¶ 44 (“[T]he predicted
amount of interaction with the object associated with the advertisement is
the determined ad action for presenting the advertisement to the user.”). The
Examiner’s finding fails to disclose maintaining information identifying an
application in which the content item is presented as understood in light of
the Specification. Moreover, we agree that the cited portions of Shay do not
disclose maintaining a context in which a content item is presented that
identifies a combination of content presented in conjunction with the content
item, content presented prior to presentation of the content item, an action
performed by a user prior to presentation of the content item, and an
application in which the content item is presented, as required by claim 1.
Cf. Final Act. 12–13.
Accordingly, we do not sustain the rejection of independent claim 1 as
unpatentable over Shay and Sarukkai, and independent claim 13, which
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recites a similar limitation and is rejected based on the same deficient
finding in Shay. See Final Act. 16. We also do not sustain the rejection of
claims 4, 7–12, 15, and 17–20, which depend from claims 1 and 13. For the
same reasons, we do not sustain the rejection of dependent claims 2, 3, 5, 6,
14, and 16 because the Examiner’s reliance on Tofallis does not remedy the
deficiency in Shay.
CONCLUSION
The Examiner’s decision to reject claims 1–20 is affirmed.
Decision summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–20 112(b) Indefiniteness 13–20
1–20 101 Eligibility 1–20
1, 4, 7–13,
15, 17–20
103 Shay, Sarukkai 1, 4, 7–13,
15, 17–20
2, 3, 5, 6,
14, 16
103 Shay, Sarukkai,
Tofallis
2, 3, 5, 6,
14, 16
Overall
Outcome
1–20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED