Gregory Joseph. Badros et al.

Patent Trials and Appeals Board

Jan 29, 2020

13296117 - (D) (P.T.A.B. Jan. 29, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/296,117 11/14/2011 Gregory Joseph Badros 26295-18556 8399
87851 7590 01/29/2020
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
01/29/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGORY JOSEPH BADROS, RAJAT RAINA, DING ZHOU,
TUDOR ANDREI ALEXANDRESCU, NUWAN SENARATNA,
HONG GE, CHI WANG, ALON AMIT, and JOHN HEGEMAN
____________

Appeal 2018-006791
Application 13/296,117
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–20. 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. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed March 13, 2018) and Reply Brief (“Reply Br.,” filed June 18, 2018),
and the Examiner’s Answer (“Ans.,” mailed April 19, 2018) and Non-Final
Office Action (“Non-Final Act.,” mailed August 31, 2017). Appellant
identifies Facebook, Inc. as the real party in interest. Appeal Br. 2.
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CLAIMED INVENTION
Appellant describes that the claimed invention “relates generally to
social networking, and in particular to providing information items,
including advertisements, to users of a social networking system” (Spec.
¶ 2).
Claims 1, 11, and 20 are the independent claims on appeal. Claim 11,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method comprising:
[(a)] receiving from a user a page display request for
displaying a page in a social networking system;
[(b)] logging user actions performed on pages in the
social networking system;
[(c)] determining interests for a user of the social
networking system based on an action of the user;
[(d)] discounting the interests based at least in part on an
amount of time since the performance of the action from which
the interests were determined;
[(e)] receiving a plurality of information items for
display to the user of the social networking system, the
information items comprising at least one newsfeed story;
[(f)] determining concepts associated with one or more
of the plurality of information items;
[(g)] identifying non-identical terms related to the
determined concepts and a relatedness factor corresponding to
how closely related each non-identical term is to the associated
determined concept;
[(h)] computing, by a processor, a score for each
information item having an associated concept, the score based
on one or more contributions and the relatedness factor for the
non-identical terms, each contribution based on matches of the
discounted interests and the determined concepts;
[(i)] selecting one or more of the information items to
display to the user, the selecting based at least in part on the
scores associated with the information items;
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[(j)] generating a user interface comprising the selected
one or more of the information items; and
[(k)] sending the generated user interface for display to
the user.
REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 7–18).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
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
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
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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 79, 78). 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).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined the claims are directed to “sending and receiving data to select
and send targeted information and targeted advertising,” i.e., to an abstract
idea similar to other concepts that the courts have held abstract (Non-Final
Act. 3–4). The Examiner also determined that the claims do not include
additional elements that are sufficient to amount to significantly more than
the abstract idea itself because the additional computer elements provide
conventional computer functions that do not add meaningful limits to
practicing the abstract idea (id. at 4–8).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “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 Mayo/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
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exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2,3
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, 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, we 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, we 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

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised 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.
3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to comments solicited from the public.
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use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“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 do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded, as an initial matter, that the Examiner
mischaracterized the concept to which claim 1 is directed or that the
Examiner otherwise failed to consider the claim as a whole (Appeal Br. 11).
The Examiner’s characterization of claim 1 is, in our view, fully consistent
with the Specification, including the claim language. That the claim
includes more words than the phrase the Examiner used to articulate the
abstract idea, and that the Examiner, thus, articulates the abstract idea at a
higher level of abstraction than would Appellant is an insufficient basis to
persuasively argue that the claim language has been mischaracterized. See
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240–41 (Fed. Cir. 2016) (“An
abstract idea can generally be described at different levels of abstraction. As
the Board has done, the claimed abstract idea could be described as
generating menus on a computer, or generating a second menu from a first
menu and sending the second menu to another location. It could be
described in other ways, including, as indicated in the specification, taking
orders from restaurant customers on a computer.”).
We also are not persuaded that the Examiner erred in determining that
claim 1 is directed to an abstract idea (Appeal Br. 11–14). 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
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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 id. at 1335–36.
Here, it is clear from the Specification (including the claim language) that
the focus of claim 1 is on an abstract idea, and not on any improvement to
technology or a technical field.
The Specification is entitled “COGNITIVE RELEVANCE
TARGETING IN A SOCIAL NETWORKING SYSTEM USING
CONCEPTS INFERRED FROM EXPLICIT INFORMATION,” and
describes, in the Background section, that social networking systems provide
information to their users in a number of different contexts, and that these
systems typically select one or more information items from a larger set of
items for display to a user (Spec. ¶ 3). The Specification explains that
“[o]ne difficulty facing social networking systems is determining
information items that are most relevant to a user’s current interests when
concepts associated with the information items do not exactly match the
user’s current interests” (id. ¶ 4). As a result, users often are exposed to
advertisements and other information items that are less relevant to the
user’s interests; these information items will, therefore, tend to receive less
of the user’s attention and, in the case of advertisements, this results in lower
conversion rates and less advertising revenue (id.).
The claimed invention is ostensibly intended to address this issue by
providing a system and method for selecting information for display to a
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user based on the inferred temporal relevance of that information to the user
(id. ¶ 5). Claim 1, thus, recites a method for providing information items to
a user of a social networking system comprising: (1) collecting information
regarding user actions performed on pages in the social networking system
and determining the user’s current interests based on the user’s recent
actions, i.e.,
receiving from a user a page display request for displaying
a page in a social networking system;
logging user actions performed on pages in the social
networking system;
determining interests for a user of the social networking
system based on an action of the user; [and]
discounting the interests based at least in part on an
amount of time since the performance of the action from which
the interests were determined
(steps (a) through (d)); (2) receiving a set of information items and
determining a set of concepts associated with one or more of the information
items, i.e.,
receiving a plurality of information items for display to the
user of the social networking system, the information items
comprising at least one newsfeed story;
determining concepts associated with one or more of the
plurality of information items; [and]
identifying non-identical terms related to the determined
concepts and a relatedness factor corresponding to how closely
related each non-identical term is to the associated determined
concept
(steps (e) through (g)); (3) matching the user’s current interests with the
concepts associated with the information items, i.e., “computing, by a
processor, a score for each information item having an associated concept,
the score based on one or more contributions and the relatedness factor for
the non-identical terms, each contribution based on matches of the
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discounted interests and the determined concepts” (step (h)); and (5) based
on the results of the matching step, selecting one or more information items
from the set of information items, and sending a user interface comprising
the selected items to the user for display, i.e.,
selecting one or more of the information items to display
to the user, the selecting based at least in part on the scores
associated with the information items;
generating a user interface comprising the selected one or
more of the information items; and
sending the generated user interface for display to the user
(steps (i) through (k)). These limitations, when given their broadest
reasonable interpretation, recite (1) collecting information, i.e., user actions
performed on pages in the social networking system and information items,
which the Specification describes may comprise advertisements (Spec. ¶ 8);
(2) analyzing the information, i.e., determining the user’s current interests
and a set of concepts associated with the information items, and selecting
one or more of the information items based on a comparison of the user’s
current interests and the concepts associated with the information items; and
(3) presenting the results of the collection and analysis, i.e., sending the
selected information items, e.g., advertisements, to the user for display.
Simply put, claim 1 recites a method of targeting content/advertising to a
user, i.e., a commercial interaction, which is a method of organizing human
activity and, therefore, an abstract idea. See 2019 Revised Guidance,
84 Fed. Reg. at 52 (describing “Certain methods of organizing human
activity” as including “commercial or legal interactions (including . . .
advertising, marketing or sales activities or behaviors”)).
The Federal Circuit has held similar concepts to be abstract. Thus, for
example, in Bridge and Post, Inc. v. Verizon Communications, Inc.,
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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 media, such as
advertisements. See also, e.g., Affinity Labs of Texas, LLC v. Amazon.com,
Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (customizing a user interface to
have targeted advertising based on user information); Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(tailoring information presented to a user based on particular information);
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).
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).
The Examiner determined, and we agree, that the only elements
recited in claim 1, beyond the abstract idea, are a “social networking
system” and “a processor” — elements that, as the Examiner observes, are
recited at a high level of generality, i.e., as generic computer components
(Non-Final Act. 6 (citing Spec. ¶¶ 27–32, 74–78)).
We find no indication in the Specification, nor does Appellant direct
us to any indication, that the operations recited in claim 1 invoke any
assertedly inventive programming, require 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
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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.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in in computer functionality to the claimed invention or that
otherwise indicates that the claimed invention integrates the abstract idea
into a “practical application,” as that phrase is used in the 2019 Revised
Guidance.4
Directing our attention to limitations (a), (b), (j), and (k), as recited in
claim 1, Appellant argues that none of these four limitations can be executed
by the human mind (Appeal Br. 13 (arguing that “[t]he human mind cannot
receive a user web page request nor log user actions performed on social
networking system web pages” and “cannot generate a user interface, much
less send it to a user for display”)). Therefore, according to Appellant, “the
claimed invention cannot be considered an abstract idea” (id.).
Appellant appears to be arguing that any invention that cannot be
performed mentally or by hand, because the claim recites a computer is,
therefore, not abstract. Yet, a substantially similar argument was expressly

4 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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rejected by the Court in Alice. See Alice Corp., 573 U.S. at 223 (“the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention”). Although “a method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101,” CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1373 (Fed. Cir. 2011), it does not automatically follow that
methods requiring physical components — i.e., methods that arguably
cannot be performed entirely in the human mind — are, therefore, not
directed to abstract ideas.
We also are not persuaded by Appellant’s argument that the pending
claims are not directed to an abstract idea because, as in McRO, Inc. v.
Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016), the
claims “recite ‘a specific means or method that improves the relevant
technology’” (Appeal Br. 14). Although Appellant ostensibly suggests
otherwise, the Federal Circuit did not premise its determination that the
claims in McRO were patent eligible merely on the specificity of the claimed
animation scheme. Instead, the court determined that the claims there at
issue were patent eligible because, when considered as a whole, the claims
were directed to a technological improvement over the existing, manual 3-D
animation techniques and used limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice. See McRO, 837 F.3d at 1316.
Appellant argues here that the claims improve “the relevant
technology (user engagement with a social networking system) by
‘determining information items that are most relevant to a user’s current
interests when concepts associated with the information items do not exactly
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match the user’s current interests” (Appeal Br. 14 (citing Spec. ¶ 4)). But,
we are not persuaded that the pending claims, thus, provide a technological
improvement comparable to that in McRO.
The claimed invention, when considered in light of the Specification,
clearly appears focused on achieving a commercial objective, i.e.,
maximizing user engagement with the social networking system by exposing
users to advertisements and other information items that are relevant to the
users’ interests and, therefore, more likely to capture the users’ attention
(see, e.g., Spec. ¶ 4 (describing that when user are exposed to advertisements
and other information items that are less relevant to the user’s interests, these
items tend to receive less of the user’s attention and, for advertisements, this
results in lower conversion rates and less advertising revenue)), and not on
any claimed means for accomplishing that goal that improves technology.
Finally, to the extent Appellant maintains that the claims are patent
eligible because they pose no risk of preemption, we note that preemption is
not the sole test for patent eligibility (Appeal Br. 14). Although the Supreme
Court has described “the concern that drives [the exclusion of abstract ideas
from patent-eligible subject matter] as one of pre-emption,” Alice Corp.,
573 U.S. at 216, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
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may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic computer
components used as tools to perform the recited abstract idea. As such, they
do not integrate the recited abstract idea into a practical application. See
Alice Corp., 573 U.S. at 223–24 (“[W]holly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is
directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether claim 1 adds specific
limitations beyond the judicial exception that are not “well-understood,
routine, conventional” in the field. 2019 Revised Guidance, 84 Fed. Reg.
at 56.
Appellant asserts that “[t]he claimed invention has a particular utility
in a social networking system, which may leverage its knowledge about the
actions of the user’s connections to infer additional information about the
user’s current interests (Appeal Br. 15), and cites limitations (d), (g), (h), and
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(i), as recited in claim 1, as capturing the inventive concept described in the
Specification (id. at 16). Citing the Federal Circuit’s decisions in
Berkheimer v. HP, Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018) and BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016), Appellant maintains that these limitations, i.e.,
“discounting [user] interests based . . . on an amount of time since the
performance of the action from which the interests were determined” and
“using non-identical terms to provide the user with information items do not
perfectly match the user’s current interests” go beyond that which is
conventional, well-understood, or routine in the art (id. at 14–18). Yet, the
limitations that Appellant identifies are part of the abstract idea itself, i.e.,
targeting content/advertising; they are not additional elements to be
considered when determining whether claim 1 includes additional elements
or a combination of elements that is sufficient to amount to significantly
more than the judicial exception.
It could not be clearer from Alice, that under step two of the
Mayo/Alice framework, the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp., 573 U.S. at 217 (internal quotations and citation omitted); see Mayo,
566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a
natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added) (internal citation omitted)). In other
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words, the inventive concept under step two of the Mayo/Alice test cannot be
the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”) (internal citation omitted).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are the “social networking system” and
“processor,” i.e., generic computer components used to perform generic
computer functions (Non-Final Act. 6) — a determination amply supported
by, and fully consistent with the Specification (see, e.g., Spec. ¶¶ 27–32, 74–
78).5
Appellant cannot reasonably contend, nor does Appellant contend,
that there is a genuine issue of material fact regarding whether the operation

5 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.), available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.pdf, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
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of these components is well-understood, routine, or conventional, where, as
here, there is nothing in the Specification to indicate that the operations
recited in claim 1 require any specialized hardware or inventive computer
components or that the claimed invention is implemented using other than
generic computer components to perform generic computer functions, e.g.,
receiving, matching, and processing information. Indeed, the Federal
Circuit, in accordance with Alice, has “repeatedly recognized the absence of
a genuine dispute as to eligibility” where claims have been defended as
involving an inventive concept based “merely on the idea of using existing
computers or the Internet to carry out conventional processes, with no
alteration of computer functionality.” Berkheimer, 890 F.3d at 1373
(Moore, J., concurring) (internal citations omitted); see also BSG Tech,
899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
We have considered Appellant’s remaining arguments, specifically
including those set forth in Appellant’s Reply Brief. And, we find them
unpersuasive.
For the foregoing reasons, we are not persuaded, on the present
record, that the Examiner erred in rejecting independent claim 1 under
35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 1,
and claims 2–20, which fall with claim 1.
Appeal 2018-006791
Application 13/296,117

18
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20
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