Giridhar Rajaram et al.

Patent Trials and Appeals Board

Aug 5, 2019

13326289 - (D) (P.T.A.B. Aug. 5, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/326,289 12/14/2011 Giridhar Rajaram 26295-18985 4066
87851 7590 08/05/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
SCHMUCKER, MICHAEL W
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
08/05/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GIRIDHAR RAJARAM and NUWAN SANARATNA
____________________

Appeal 2018-003003
Application 13/326,289
Technology Center 3600
____________________

Before ALLEN R. MacDONALD, JAMES B. ARPIN, and
NABEEL U. KHAN, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3–7, 9–20, and 22–29. Appellants have cancelled claims 2, 8, and
21. App. Br. 22, 24, 30. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants indicate the real party-in-interest is Facebook, Inc. App. Br. 2.
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Illustrative Claim
Illustrative claim 1 under appeal reads as follows (emphasis,
formatting, and bracketed material added):
1. A method comprising:
[A.] maintaining, by one or more servers of a social
networking system, a plurality of objects and edges in a
database, the edges describing connections between a plurality
of user profiles and the plurality of objects in the social
networking system;
[B.] receiving, from a computing device of an advertiser
system for an advertisement on the social networking system,
targeting criteria specifying a targeted interest intensity score
threshold for an object of the plurality of objects in the social
networking system, the targeted interest intensity score
threshold being a non-zero value of a plurality of possible
targeted interest intensity score values;
[C.] querying, by one or more servers of the social
networking system from the database, data for edges connecting
the object to user profiles of the plurality of user profiles of the
social networking system, each edge corresponding to a
previous interaction with the object by a user with a user profile
of the user profiles including a viewing user;
[D.] determining, by the one or more servers of the social
networking system, an interest intensity score for each of the
user profiles, an interest intensity score for a user profile is
determined based at least in part on the edges between the user
profile and the object, the interest intensity scores varying
among the user profiles based on the edges between each user
profile and the object;
[E.] determining, by the one or more servers of the social
networking system, a targeting cluster of users for the
advertisement based on each user in the targeting cluster being
associated with an interest intensity score that exceeds the
targeted interest intensity score threshold for the object;
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[F.] applying, by the one or more servers of the social
networking system, the targeting criteria to determine whether
the viewing user is eligible to receive the advertisement based
at least in part on whether the viewing user is in the targeting
cluster;
[G.] responsive to determining the viewing user is
eligible to receive the advertisement, associating the
advertisement as a candidate advertisement for the viewing
user;
[H.] passing the candidate advertisement to a bid
auction system for selection of a candidate advertisement for
presentation to the viewing user; and
[I.] selecting one or more of the candidate advertisements
for presentation to the viewing user based on the bid auction
system.
References2
Baluja US 2008/0275861 A1 Nov. 6, 2008
D’Angelo US 2010/0324990 A1 Dec. 23, 2010
Rejections3
A. 35 U.S.C. § 101
The Examiner rejects claims 1, 3–7, 9–20, and 22–29 under 35 U.S.C.
§ 101 because “[t]he claimed invention is directed to a judicial exception
(i.e., a law of nature, a natural phenomenon, or an abstract idea) without
significantly more” (Final Act. 5), i.e., because the claimed invention is
directed to patent-ineligible subject matter. Id. at 5–9.

2 All citations herein to these references are by reference to the first named
inventor only.
3 All citations to the “Final Action” are to the Final Action mailed on
December 2, 2016.
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Appellants argue claims 1, 3–7, 9–20, and 22–29 together (App. Br.
5). We select claim 1 as representative. Except for our ultimate decision,
we do not discuss the § 101 rejection of claims 3–7, 9–20, and 22–29
further herein.
B. 35 U.S.C. § 1034
B.i.
The Examiner rejects claims 1, 3–7, 9–12, 14, 20, 22, and 26–28
under 35 U.S.C. § 103 as being unpatentable over the combination of
D’Angelo and Baluja. Final Act. 9–40.
Appellants do not present separate arguments for claims 1, 3–7, 9–12,
14, 20, 22, and 26–28. We select claim 1 as representative. Except for our
ultimate decision, we do not discuss the § 103 rejection of claims 3–7, 9–12,
14, 20, 22, and 26–28 further herein.
B.ii.
The Examiner rejects claims 13, 15–19, 23–25, and 29 under
35 U.S.C. § 103 as being unpatentable over various combinations of
D’Angelo, Baluja, and other references. Final Act. 40–49.
As noted infra, the rejections of these claims turn on our decision as to
claim 1. Except for our ultimate decision, we do not address the § 103
rejections of claims 13, 15–19, 23–25, and 29 further herein.

4 For simplicity, we label any rejection under 35 U.S.C. § 103(a), as a
rejection under § 103.
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C. 35 U.S.C. § 112(a) 5
The Examiner rejects claims 1, 3–7, 9–20, and 22–29 under 35 U.S.C.
§ 112(a), as failing to comply with the written description requirement.
Final Act. 3.
Appellants do not present separate arguments for claims 1, 3–7, 9–20,
and 22–29. We select claim 1 as representative. Except for our ultimate
decision, we do not address the § 112(a) rejection of claims 13–18
further herein.
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to
patent-ineligible subject matter?
Did the Examiner err in rejecting claim 1 as being obvious?
Did the Examiner err in rejecting claim 1 as failing to comply with the
written description requirement?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
Appeal Brief arguments that the Examiner has erred. As to the rejections
under § 103 and § 112(a), we agree with Appellants.
As to the rejection under § 101, we disagree with Appellants. Except
as noted below, we concur with the conclusions reached by the Examiner;
and we highlight the following points.

5 For simplicity, we label any rejection under 35 U.S.C. § 112, first
paragraph, as a rejection under § 112(a).
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A. Section 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.
However, the U.S. 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. 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 Court’s two-step framework, described in Mayo and Alice.
Id. 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 Alice, 573 U.S. 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 waterproof 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 (1853))); 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
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 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. (citation omitted)
(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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B. USPTO § 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of § 101. USPTO’s January
7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (“2019 Memorandum”). Under that guidance,
we first look to whether the claim recites:
(1) (see 2019 Memorandum Step 2A – Prong One) any judicial
exceptions, including certain groupings of abstract ideas (i.e.,
mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental
processes); and
(2) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).6
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look 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.
See 2019 Memorandum Step 2B.

6 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of 2019 Memorandum). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
it under Step 1 of Alice (Step 2A of 2019 Memorandum). See 2019
Memorandum.
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C. Examiner’s § 101 Rejection - Alice/Mayo - Steps 1 and 2
C.1. 2019 Memorandum Step 2A – Prong One
Applying the Alice/Mayo analysis, the Examiner determines claim 1
recites an abstract idea.
[T]he claims as a whole are directed to market segmentation and
targeted advertising to specific users which is a “fundamental
economic practice” (Bilski and further maintained by Alice,
buySAFE, and Ultramercial).
Final Act. 7 (emphasis added).
Referring specifically to claim 1, the Examiner determines:
[T]he step of
“determining, ...... , an interest intensity score for each of
the user profiles, an interest intensity score for a
user profile is determined based at least in part on
the edges between the user profile and the object,
the interest intensity scores varying among the user
profiles based on the edges between each user
profile and the object;”
is similar to the concept of “organizing information through
mathematical correlations” that a court has determined is an
example of abstract idea in Digitech and the steps of
“determining, ...... , a targeting cluster of users for the
advertisement based on each user in the targeting
cluster being associated with an interest intensity
score that exceeds the targeted interest intensity
score threshold for the object”,
“applying, ...... , the targeting criteria to determine whether
the viewing user is eligible to receive the
advertisement based at least in part on whether the
viewing user is in the targeting cluster”, and
“selecting one or more of the candidate advertisements for
presentation to the viewing user based on the bid
auction system.”
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are similar to the concept of “comparing new and stored
information and using rules to identify options” that a court has
determined is an example of abstract idea in SmartGene.
Final Act. 6–7 (emphases, formatting, and bracketed material added).
C.2. 2019 Memorandum Step 2A – Prong Two
Further applying the Alice/Mayo analysis, the Examiner determines
claim 1 is directed to an abstract idea.
Referring specifically to claim 1 . . . , the steps of
“maintaining, by one or more servers of a social
networking system, a plurality of objects and edges
in a database, the edges describing connections
between a plurality of user profiles and the plurality
of objects in the social networking system;”
(receiving, processing, and storing data and
electronic recordkeeping),
“receiving, from a computing device of an advertiser
system for an advertisement on the social
networking system, targeting criteria specifying a
targeted interest intensity score threshold for an
object of the plurality of objects in the social
networking system, the targeted interest intensity
score threshold being a non-zero value of a plurality
of possible targeted interest intensity score values;”
(receiving, processing, and storing data and
electronic recordkeeping),
“querying, by one or more servers of the social networking
system from the database, data for edges connecting
the object to user profiles of the plurality of user
profiles of the social networking system, each edge
corresponding to a previous interaction with the
object by a user with a user profile of the user
profiles including a viewing user;” (receiving,
processing, and storing data and electronic
recordkeeping), “ ... by the one or more servers of
the social networking system, ... “(receiving,
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processing, and storing data and electronic
recordkeeping), “ ... by the one or more servers of
the social networking system, ... “ (receiving,
processing, and storing data and electronic
recordkeeping),
“responsive to determining the viewing user is eligible to
receive the advertisement, associating the
advertisement as a candidate advertisement for the
viewing user;” (receiving, processing, and storing
data and electronic recordkeeping), and
“passing the candidate advertisement to a bid auction
system for selection of a candidate advertisement
for presentation to the viewing user; and”
(receiving, processing, and storing data and
electronic recordkeeping),
are all extra solution activities that are normal computer
operation[s].
Final Act. 5–6 (emphases, formatting, and bracketed material added).
C.3. 2019 Memorandum Step 2B
Applying the Alice/Mayo analysis, the Examiner determines:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the only other element in the claims besides the abstract
ideas identified above is a generic computer structure, “a social
networking system”, “a computer processor” or “a database” that
is merely performing or applying the abstract ideas.
Final Act. 7.
Generically recited computer elements do not add a meaningful
limitation to the abstract idea because they would be routine in
any computer implementation and because the Alice decision
noted that generic structures that merely apply the abstract ideas
are not significantly more than the abstract ideas. Please see page
7 of the July 2015 Update: Subject Matter Eligibility . . . where
it discusses the generic use of computers, for example, the courts
have recognized the following computer functions to be well-
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understood, routine, and conventional functions when they are
claimed in a merely generic manner: performing repetitive
calculations, receiving, processing, and storing data,
electronically scanning or extracting data from a physical
document, electronic recordkeeping, automating mental tasks,
and receiving or transmitting data over a network, e.g., using the
Internet to gather data.
Final Act. 8.
D. Appellants’ § 101 Arguments & Panel’s Analysis
D.1. 2019 Memorandum Step 2A, Prong 1
The Examiner correctly determines that claim 1 recites the following
limitations:
[A.] determining, . . . , an interest intensity score for each of the
user profiles . . .
[B.] determining, . . . , a targeting cluster of users for the
advertisement based on each user in the targeting cluster
being associated with an interest intensity score that
exceeds the targeted interest intensity score threshold for
the object,
[C.] applying, . . . , the targeting criteria to determine whether
the viewing user is eligible to receive the advertisement
based at least in part on whether the viewing user is in the
targeting cluster, and
[D.] selecting one or more of the candidate advertisements for
presentation to the viewing user based on the bid auction
system.
Final Act. 3 (emphasis added). In short, the Examiner correctly determines
that claim 1 recites a method of “market segmentation and targeted
advertising to specific users” (Final Act. 7), similar to the court-recognized
abstract idea in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
Cir. 2014) (cited by the Examiner at Final Act. 7), in which case the court
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held that a claim “describe[ing] only the abstract idea of showing an
advertisement before delivering free content “ is patent ineligible. Further,
commercial interaction in the form of advertising is one of certain methods
of organizing human activity identified in the 2019 Memorandum, and, thus,
an abstract idea. 84 Fed. Reg. at 52.
Appellants argue “the Office Action does not identify any claim
elements reciting the alleged abstract idea of ‘sending and receiving data to
select and send targeted advertising.’” App. Br. 9. We are unpersuaded by
Appellants’ argument because such language does not appear in the rejection
portion (upon which the appeal is based) of the December 2, 2016 Final
Action. Rather, this language appears in the Examiner’s Response section of
Final Action (page 51) as a summation of the earlier rejection.
D.2. 2019 Memorandum Step 2A, Prong 2
Having determined that claim 1 recites an abstract idea, we now turn
to whether claim 1 is directed to that abstract idea, or instead integrates the
judicial exception into a practical application.
D.2.a.
Appellants particularly contend:
[T]he identification of elements beyond the judicial exception
prematurely excludes the elements erroneously analogized to
alternate abstract ideas outside of the abstract idea of “sending
and receiving data to select and send targeted advertising.” In
contrast, the Interim Eligibility Guidelines recite “for a claim that
is directed to a plurality of exceptions, conduct the eligibility
analysis for one of the exceptions,” that is, the identified judicial
exceptions should be considered individually not jointly as in
the present rejection. See Fed. Reg. Vol. 79, No. 241, p. 74625
[Dec. 16, 2014]. Therefore, because the Office Action fails to
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conduct a proper analysis under step 2B of the Alice test, this
rejection is erroneous and should be overturned.
App. Br. 10 (emphasis added).
First, Appellants’ argument is not persuasive because, as already
discussed supra, “sending and receiving data to select and send targeted
advertising” does not appear in the rejection portion of the December 2,
2016 Final Action.
Second, contrary to Appellants’ contention, the cited 2014 Federal
Register does not mandate that identified judicial exceptions must be
considered individually not jointly. Rather, the cited Federal Register
section merely permits an examiner to determine that a claim is
eligible/ineligible by considering only one of a plurality of exceptions.
Additional elements that satisfy Step 2B for one exception will
likely satisfy Step 2B for all exceptions in a claim. On the other
hand, if the claim fails under Step 2B for one exception, the claim
is ineligible, and no further eligibility analysis is needed.
2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg.
74618, 74625 (Dec. 16, 2014).7
D.2.b.
Appellants also contend:
In this case, the inventive concept as claimed in these claims
includes, at least, receiving, “from an advertiser,” “targeting
criteria ... for an advertisement on the social networking system”
specifying an object, and an associated “targeted interest
intensity score threshold” for that object. . . . The inventive
concept of the claims allows an advertiser to “more effectively

7 The 2019 Memorandum supersedes previous guidance memoranda. See 84
Fed. Reg. at 51 (“All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.”).
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target their advertisements, providing different advertisements
based on the interest intensity levels” when using the claimed
invention. See Specification at [0014]. Therefore, similar to
Bascom “[t]he claims do not merely recite the abstract idea . . .
along with the requirement to perform it on the Internet, or to
perform it on a set of generic computer components . . . rather,
they recite a specific, discrete implementation of the abstract
idea.” See Bascom, 827 F.3d 1341, 1350 (Fed Cir. 2016).
App. Br. 12–13 (emphasis added).
We are not persuaded by Appellants’ argument. Contrary to
Appellants’ argument, neither the problem nor the solution here are rooted in
computer technology or another technology. Other than repeating the words
in the claims, Appellants have not explained what claimed functionality goes
beyond the “market segmentation and targeted advertising to specific users”
(i.e., one of certain methods of organizing human activity form of
advertising, and thus an abstract idea). We agree with the Examiner that:
[T]he concepts are not similar to Bascom as the court stated “ . . .
the claimed invention represents a ‘software-based invention that
improve[s] the performance of the computer system itself.’”, so
Bascom resulted in an “improvement to another technology or
technical field”, while the Applicant’s claims do not change or
improve the operation of the computer.
Final Act. 57.
D.2.c.
In view of Appellants’ Specification, and consistent with the
Examiner’s determinations, we conclude that claim 1 does not integrate the
judicial exception into a practical application. We determine claim 1 does
not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
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(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h). We agree with the Examiner that
claim 1 is directed to a judicial exception; it does not integrate the judicial
exception into a practical application.
D.3. 2019 Memorandum Step 2B
As noted supra, the Examiner determined that the following steps are
extra solution activities that are normal computer operations:
(a) maintaining information describing connections between a plurality of
user profiles and the plurality of objects in the social networking system,
(b) receiving targeting criteria specifying a targeted interest intensity score
threshold for an object of the plurality of objects, (c) querying the
connections connecting the object to user profiles, (d) associating the
advertisement as a candidate advertisement for the viewing user; and
(e) passing the candidate advertisement to a bid auction system for selection
of a candidate advertisement for presentation to the viewing user.
Appellants contend the Examiner erred as follows:
By listing these claim elements [as extra solution activity]
that include limitations that are central to the method, the Office
Action ignores these feature when searching for “something
more” in the second step of the Alice test, as discussed below.
Therefore, because the Office Action fails to conduct a proper
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analysis under step 2B of the Alice test, this rejection is
erroneous and should be overturned.
App. Br. 10 (emphasis added).
We are not persuaded by Appellants’ arguments. While we agree
with Appellants point that these steps are not extra solution activity, we
disagree with Appellants’ position that, if steps are central to the method,
then those steps must be considered during the “something more” analysis.
Rather, we determine that while steps (a)–(e) supra are not extra
solution activity, these steps are part of the market segmentation and
targeted advertising which, as noted supra, is one of certain methods of
organizing human activity identified in the 2019 Memorandum, and, thus,
are part of an abstract idea.
The argued centrality (i.e., importance) of the abstract idea is not
considered during the “something more” analysis. The fact that a claimed
concept is “[g]roundbreaking, innovative, or even brilliant” would not “itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). A claim directed to a unique
and advantageous financial arrangement is nonetheless directed to a
financial arrangement and constitutes an abstract idea.8 “[U]nder the
Mayo/Alice framework, a claim directed to a newly discovered law of nature

8 See Ultramercial, 772 F.3d. 709. In this case, the patentee argued that its
financial arrangement (a method of using advertising as an exchange or
currency) was distinguishable from the “routine,” “long prevalent,” or
“conventional” abstract idea in Alice because it was “directed to a specific
method of advertising and content distribution that was previously
unknown.” Id. at 714. The court rejected the patentee’s position that
“abstract ideas remain patent-eligible under § 101 as long as they are new
ideas not previously well known, and not routine activity.” Id.
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(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility.” Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016);
Diamond, 450 U.S. at 188–89.
Because claim 1, in addition to the abstract idea, recites only a well-
understood, routine, conventional elements/combinations previously known
in the industry, we conclude there is no genuine issue of material fact
regarding step two of the Examiner’s Alice/Mayo analysis. Therefore, in
view of Appellants’ Specification, and consistent with the Examiner’s
determinations, we determine the claims do not recite:
(vi) a specific limitation other than what is well-understood,
routine, conventional activity in the field or
unconventional steps that confine the claim to a particular
useful application.
See MPEP § 2106.05(d).
E. Appellants’ § 103 Arguments9
In the Final Action, the Examiner rejects claim 1 under 35 U.S.C.
§ 103 as being unpatentable over the combination of D’Angelo and Baluja.
The Examiner determines “D’Angelo teaches” (Final Act. 9):
receiving, from a computing device of an advertiser system for
an advertisement on the social networking system, targeting
criteria specifying a targeted interest intensity score threshold
for an object of the plurality of objects in the social
networking system, the targeted interest intensity score

9 This contention is determinative as to the § 103 rejection of claim 1 (and
all other § 103 rejections). Therefore, we do not discuss Appellants’ other
contentions here.
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threshold being a non-zero value of a plurality of possible
targeted interest intensity score values; (D’Angelo teaches
receiving targeting criteria in at least the abstract and
paragraphs 0020 and 0052-0053, D’Angelo infers creating
targeting clusters via grouping/segmenting in at least the
abstract, and via only sending ads to users attending a certain
event in at least paragraph 0062, and D’Angelo teaches using
a threshold by having the user in the group (above a threshold)
versus not having the user in the group (below the threshold).)
Final Act. 11.
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103 because:
[C]laim 1 specifically recites “receiving, from a computing
device of an advertiser system[,] . . . targeting criteria specifying
a targeted interest intensity score threshold for an object.” That
is, claim I recites that the “targeting criteria” received from the
advertiser includes the “targeted interest intensity score
threshold.” This is unlike D’Angelo, which recites “targeting
criteria describe[ing] various user demographics . . . or other
data from the member profile” or associations between a member
and specific “actions,” the claimed method specifically requires
“a targeted interest intensity score threshold for an object” as the
targeting criteria. See D’Angelo at [0053] and [0054]. Further,
Baluja is not relied upon for these aspects, nor does Baluja
correct the deficiency of D’Angelo. Therefore this rejection is
erroneous and should be overturned.
App. Br. 15 (emphasis added).
We conclude, after reviewing the Examiner’s rejection and consistent
with Appellants’ above argument as to claim 1, the Examiner is mistaken in
finding a teaching of a “threshold” in the cited portion of D’Angelo. Thus,
there is insufficient articulated reasoning to support the Examiner’s findings
that D’Angelo discloses the argued targeting criteria specifying a targeted
interest intensity score threshold. Therefore, we conclude that there is
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insufficient articulated reasoning to support the Examiner’s conclusion that
claim 1 is rendered obvious by the combination of D’Angelo and Baluja.
F. Appellants’ § 112(a) Arguments
In the Final Action, the Examiner rejects claim 1 under 35 U.S.C.
§ 112(a) as failing to comply with the written description requirement. The
Examiner determines:
Regarding claim[] 1, [this] claim[] recite[s] the limitation
“targeted interest intensity score threshold being a non-zero
value of a plurality of possible targeted interest intensity score
values”. Applicant’s specification does not appear to provide
support for limiting the threshold to be a “non-zero” number. In
addition negative limitations need to be expressly detailed in the
specification, see MPEP § 2173.05(i), where it mentions, “Any
negative limitation or exclusionary proviso must have basis in
the original disclosure.”
Final Act. 3.
Appellants contend that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 112(a) because:
A core concept of the claimed invention, as supported in the
specification at least at paragraphs [0017] and [0050], is that the
targeted group contains those users who have not just a binary
interest in the object, but those users who’s interest is above the
specified threshold value. Accordingly, there could be some
users who have some interest in the object (i.e., a non-zero
interest level), but not enough interest, to be included in the target
group. For this reason, it is inherent that the threshold is above
zero, or non-zero, such that the target group is more than just a
binary test of whether there is any interest.
App. Br. 6.
We agree with Appellants’ above contention. Additionally, contrary
to a typical negative limitation which is unknown to an artisan, this situation
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is one known to every artisan. That a trivial problem solution may exist
(e.g., a variable = zero) is routine knowledge in all arts. This artisan
knowledge along with the portions of the Specification cited in Appellants’
contention are sufficient to comply with the written description requirement
for the “non-zero value” requirement of claim 1.
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1, 3–7, 9–20, and
22–29 under 35 U.S.C. § 101, as directed to patent-ineligible subject matter.
(2) The Examiner erred in rejecting claims 1, 3–7, 9–20, and 22–29
as unpatentable under 35 U.S.C. § 103.
(3) The Examiner erred in rejecting claims 1, 3–7, 9–20, and 22–29
under 35 U.S.C. § 112(a) as failing to comply with the written description
requirement.
(4) Claims 1, 3–7, 9–20, and 22–29 are not patentable.
DECISION
The Examiner’s rejection of claims 1, 3–7, 9–20, and 22–29 under
35 U.S.C. § 101, as directed to patent-ineligible subject matter, is affirmed.
The Examiner’s rejections of claims 1, 3–7, 9–20, and 22–29 as
unpatentable under 35 U.S.C. § 103 are reversed.
The Examiner’s rejection of claims 1, 3–7, 9–20, and 22–29 under
35 U.S.C. § 112(a) is reversed.

Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED