Nuwan Senaratna et al.

Patent Trials and Appeals Board

Aug 30, 2019

13756525 - (D) (P.T.A.B. Aug. 30, 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.
13/756,525 01/31/2013 Nuwan Senaratna 26295-21848 1006
87851 7590 08/30/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
UBALE, GAUTAM
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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 NUWAN SENARATNA, AUSTIN BYRNE,
MICHELLE FILIBA, and JOSHUA ZHI HAN LIM
____________

Appeal 2018-005253
Application 13/756,5251
Technology Center 3600
____________

Before CAROLYN D. THOMAS, NABEEL U. KHAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

KHAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3, 4, 10, 11, 14–18, and 20–26. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 Appellants identify Facebook, Inc. as the real party in interest. App. Br. 3.

Appeal 2018-005253
Application 13/756,525

2
BACKGROUND
THE INVENTION
According to Appellants, their invention “relates generally to online
systems, and in particular to reviewing advertisements in an online system.”
Spec. ¶ 1.
Exemplary independent claim 1 is reproduced below.
1. A method comprising:
storing, by an online system, one or more reviews of a
plurality of components of previously reviewed advertisements;
receiving, at the online system, information for one or
more advertisements from one or more advertisers;
dividing, by the online system, each of the one or more
advertisements into the plurality of components, the plurality of
components being selected from a group consisting of: a title, a
body, an image, a landing page, an audience description, an
account identifying the advertiser, and any combination thereof;
determining, for each component of the one or more
advertisements, whether the component matches one or more
components of previously reviewed advertisements;
including the component in a set of components to be
reviewed responsive to determining that the component has not
been reviewed;
for each of the one or more advertisements, determining
an expected revenue for presenting the advertisement based on
targeting criteria defining a target group of users of the online
system for receiving the advertisement;
computing a score for each component of the set of
components to be reviewed based on the expected revenue for
presenting the advertisement to users of the online system;
ordering components of the set of components to be
reviewed into a review queue based at least in part on the
computed scores;
Appeal 2018-005253
Application 13/756,525

3
reviewing the components of the set of components in an
order based at least in part on the review queue to determine
whether the components violate the one or more policies of the
online system; and
responsive to determining the components of an
advertisement of the one or more advertisements do not violate
the one or more policies of the online system, sending the
advertisement to an advertisement placement process.
REJECTION
Claims 1, 3, 4, 10, 11, 14–18, and 20–26 stand rejected under 35
U.S.C. § 101. Final Act. 2–6.
DISCUSSION
LEGAL PRINCIPLES
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014) (quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. 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
Appeal 2018-005253
Application 13/756,525

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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
Appeal 2018-005253
Application 13/756,525

5
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 (citation 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. (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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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
Appeal 2018-005253
Application 13/756,525

6
(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 Guidance.
GUIDANCE STEP 2A - WHETHER THE CLAIMS ARE
DIRECTED TO A JUDICIAL EXCEPTION
The Examiner finds the claims are conceptually similar to “collecting
information, analyzing it, and displaying certain results of the collection and
analysis” and thus recite an abstract idea under Electric Power Group v.
Alstom, S.A., 830 F.3d 1350 (Fed. Cir. 2016). Final Act. 4. The Examiner
also finds the claims are conceptually similar to “presenting the
advertisement based on targeting criteria defining a target group of user
receiving an advertisement, identified as such communicating targeted
content” and thus recite an abstract idea under Affinity Labs of Texas, LLC v.
Amazon.com, 838 F.3d 1266 (Fed. Cir. 2016). Final Act. 4.
Appellants distinguish the claims at hand from the claims analyzed in
the aforementioned Federal Circuit cases by arguing that the present claims
are “far more specific than the concepts identified by the courts as abstract
ideas.” App. Br. 6.2 Specifically, Appellants point to the following
limitations as support for their contention that the claims are more specific
than the claims the Federal Circuit has found to be abstract:
[(1)] “dividing . . . each of the one or more advertisements into
the plurality of components,” [(2)] “determining, for each
component of the one or more advertisements whether the

2 Appellants’ Brief generally lacks page numbers or is inconsistently
numbered. We have provisionally numbered the pages seriatim with the
first page of the Appeal Brief as page 1.

Appeal 2018-005253
Application 13/756,525

7
component matches one or more components of previously
reviewed advertisements,” [(3) “]ordering components of the set
of components to be reviewed into a review queue” and [(4)]
“reviewing the components of the set of components in an order
based at least in part on the review queue.”
App. Br. 6.
(a) Prong 1 of Step 2A
Under the first prong of step 2A of the Guidance, we determine if the
claims recite an abstract idea. Claim 13 recites a method comprising an
online system that stores “one or more reviews of . . . components of
previously reviewed advertisements.” The online system receives
“information for one or more advertisements” and divides the
advertisements into a “plurality of components” such as “a title, a body, an
image, a landing page, an audience description, an account identifying the
advertiser.” The method then determines “whether the component[s]
match[] . . . components of previously reviewed advertisements.” The
method determines whether the components have been reviewed, and if not
“include[s] the component in a set of components to be reviewed.” The
method “determin[es] an expected revenue for presenting the advertisement
based on targeting criteria defining a target group of users” that receive the
advertisement. A score is computed “for each component . . . based on the
expected revenue for presenting the advertisement.” The method “order[s]
components . . . into a review queue based at least in part on the computed
scores” and “review[s] the components . . . in an order based . . . on the
review queue to determine whether the components violate the one or more

3 Appellants argue the pending claims as a group. See App. Br. 4–8. We
select claim 1 as representative.
Appeal 2018-005253
Application 13/756,525

8
policies of the online system” and if they do not, then the method “send[s]
the advertisement to an advertisement placement process.”
The aforementioned limitations essentially recite dividing
advertisements into components and assigning the components a score based
in part on expected revenue for presenting the advertisement to users. The
components are then ordered based on their scores and reviewed in that
order to determine whether they violate or comply with policies of the online
system. In this way, advertisements are prioritized for policy compliance
review based at least in part on their expected revenue generation. See Spec.
¶ 5.
These claim limitations recite mental processes. For example,
dividing an advertisement into components, such as a title, body, or image
can be done mentally. Similarly, “determining . . . whether the component
matches one or more components of previously reviewed advertisements”
and “including the component in a set of components to be reviewed
responsive to determining that the component has not been reviewed” are
steps that can be performed mentally. An individual can match components
of two advertisements and, by keeping track of which components have been
reviewed already, can also determine whether to review components that
have not been reviewed. The steps of “determining an expected revenue for
presenting the advertisement” and “computing a score for each component
. . . based on the expected revenue” can similarly be done by the human
mind. “[O]rdering components . . . based at least in part on the computed
scores” and “reviewing the components . . . in an order . . . to determine
whether the components violate . . . policies” are also steps that can be
performed mentally. Other limitations, such as “storing . . . one or more
Appeal 2018-005253
Application 13/756,525

9
reviews of a plurality of components of previously reviewed
advertisements,” and receiving . . . information for one or more
advertisements” are also directed to mental steps. See Cyberfone Systems,
LLC v. CNN Interactive Group, Inc., 558 Fed. Appx. 988, 992 (Fed. Cir.
2014) (“using categories to organize, store, and transmit information is
well-established. Here, the well-known concept of categorical data storage,
i.e., the idea of collecting information in classified form, then separating and
transmitting that information according to its classification, is an abstract
idea that is not patent-eligible”). Mental processes are one of the categories
identified in the Guidance as an abstract idea, and thus under prong one of
the step 2A, we find the claims recite an abstract idea.
(b) Prong 2 of Step 2A
Next we determine whether the claims recite a practical application of
the recited judicial exception. Appellants argue their invention improves
another technology and improves the functioning of the computer itself.
App. Br. 7. Appellants argue “claim 1 recite[s] a specific process that
allows the online system to identify components of advertisements that it has
already reviewed in order to prevent redundant component review.” App.
Br. 7–8 (citing Spec. ¶ 30). In this way the claimed process “improves a
timing efficiency of the online system for the review of advertisement[ and]
. . . allows the computer to make more efficient use of reviewing resources
within the system.” App. Br. 8 (citing Spec. ¶¶ 30, 36). Appellants further
argue:
The claimed method improves “the functioning of the computer
itself” by preventing the “online system” from allocating
computing resources to previously reviewed components at least
in the “determining . . .” and “selecting . . . ” steps. Similarly,
Appeal 2018-005253
Application 13/756,525

10
the claimed method “improve[s] another technology or technical
field,” namely the field of online advertising, by allowing the
“online system” to prioritize review of important or valuable
advertisements, further increasing the efficiency of review.
App. Br. 8.
We are unpersuaded by Appellants’ arguments. Under prong 2 of step
2A, we look to see, amongst other things, if the claims include any
additional elements that reflect an improvement in the functioning of a
computer or to another technological field. Guidance, 84 Fed. Reg. at
54–55. Analyzing the claims’ limitations as a whole and individually, we do
not find additional limitations, beyond the claimed abstract idea, that
improve the functioning of a computer or another technological field. We
disagree with the Appellants that by preventing redundant component
review, the claims improve the functioning of the computer itself. First, as
we explained above, determining whether a component has already been
reviewed is a mental step and therefore part of the abstract idea itself, rather
than an additional limitation beyond the abstract idea. Second, preventing
redundant review of already reviewed components does not improve the
functioning of the computer itself. Rather it simply improves the process
implemented on the computer.
We also determine that the additional claim limitations do not reflect
an application of the judicial exception with, or by use of, a particular
machine, a transformation or reduction of a particular article to a different
state or thing, or a use of the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a particular
technological environment. See MPEP § 2106.05(a)–(c), (e)–(h).
Appeal 2018-005253
Application 13/756,525

11
GUIDANCE STEP 2B - WHETHER THE CLAIMS
PROVIDE AN INVENTIVE CONCEPT
In our analysis under step 2B, we look to see if the claims add
limitations beyond the judicial exception that are not “well-understood,
routine, conventional” in the field (see MPEP § 2106.05(d)). Appellants’
arguments falling under this step are largely the same as those discussed
above with respect to prong 2 of step 2A. Namely, Appellants argue that the
claimed invention improves the functioning of the computer or the field of
online advertising as discussed above. App. Br. 7–8.
We find Appellants’ arguments to be unpersuasive. As we explained
above, the limitations Appellants point to are not beyond the abstract idea,
but rather, are part of the abstract idea. Claim 1 does not recite any
hardware components, other than an “online system.” However, as the
Examiner noted, Appellants’ Specification states that this online system may
be implemented on a “‘. . . general-purpose computing device . . . .’” Ans. 6
(quoting Spec. ¶ 43). The general purpose computing device is of course,
well-understood, routine and conventional. Thus, we do not find the claims
provide an inventive concept that is significantly more than the recited
abstract idea.
DECISION
The Examiner’s rejection of claims 1, 3, 4, 10, 11, 14–18, and 20–26
under 35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED