Yigal Dan. Rubinstein et al.

Patent Trials and Appeals Board

Jan 27, 2020

13836828 - (D) (P.T.A.B. Jan. 27, 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.
13/836,828 03/15/2013 Yigal Dan Rubinstein 26295-21856/US 1708
87851 7590 01/27/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
01/27/2020 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 YIGAL DAN RUBINSTEIN, ABHISHEK DOSHI, and
RESHMA KHILNANI EBBERSON
____________

Appeal 2018-006026
Application 13/836,8281
Technology Center 3600
_______________

Before MICHAEL W. KIM, HUNG H. BUI, and ADAM J. PYONIN,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–20, which are all the claims pending
in the application. App. Br. 24–33 (Claims App.). We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The real party in interest is Facebook, Inc. App. Br. 2.
2 Our Decision refers to Appellant’s Appeal Brief (“App. Br.”) filed
December 12, 2017; Reply Brief (“Reply Br.”) filed April 23, 2018;
Examiner’s Answer (“Ans.”) mailed March 9, 2018; Final Office Action
(“Final Act.”) mailed May 16, 2017; and original Specification (“Spec.”)
filed March 15, 2013.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to “advertising via a social networking
system” and enabling users “to promote certain actions, posts, or other
content [as a story (e.g., a video of a movie trailer)] that is represented in a
social networking system” as well as “to more easily generate requests for
sponsored stories using interface controls that enable promotion of specific
actions, posts, or other content viewable in an interface of the social
networking system.” Spec. ¶¶ 1, 5, 30. According to Appellant, the social
networking system (1) “determines [] how effective a promotion is in
increasing access to a story,” and (2) “determines scores for various stories
and selects stories for presentation based on the scores.” Spec. ¶ 8.
“Parameters specifying how selected content is distributed to other social
networking system users” may include “a budget and/or a bid amount to
identify compensation provided to the social networking system for
presenting the selected content to its users, allowing the promoting user to
increase the likelihood that other users receive, or access, the selected
content.” Spec. ¶ 19. “Examples of content [] include a page post, a status
update, a photograph, a video, a link, a shared content item, a gaming
application achievement, a check-in event at a local business, a brand page,
or any other type of content.” Spec. ¶ 39.
Representative Claim
Claims 1, 9, and 17 are independent. Representative claim 1 is
reproduced below:
1. A method comprising:
providing a user interface for displaying a plurality of
stories to a promoting user;
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receiving a sponsored story request from a promoting user,
the sponsored story request identifying a story from the plurality
of stories displayed to the promoting user, the identified story
associated with an action stored by the social networking system
and providing one or more parameters including a bid amount;
generating a copy of the story identified by the sponsored
story request;
receiving a plurality of requests from a plurality of
viewing users for presentation of one or more stories, each
describing an action stored by the social networking system;
for each request of the plurality of requests for
presentation of one or more stories:
retrieving a plurality of candidate stories including
the story identified by the sponsored story request;
determining a score for each of the candidate
stories, a score for the story identified by the sponsored
story request based at least in part on the bid amount of the
sponsored story request;
determining a score for the copy of the story
identified by the sponsored story request, the score for the
copy of the story identified by the sponsored story not
being based on the bid amount of the sponsored story
request;
selecting one or more stories for presentation to a
viewing user that sent the request based at least in part on
the determined scores for each of the candidate stories;
responsive to the story identified by the sponsored
story request being selected for presentation to the viewing
user:
sending a feed of stories for display to the
viewing user, the feed of stories including the story
identified by the sponsored story request, and
determining whether the copy of the story identified
by the sponsored story request would be selected for
presentation to the viewing user based on (a) the score of
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the copy of the story identified by the sponsored story
request that is not based on the bid amount of the
sponsored story request, and (b) the scores of one or more
of the selected one or more stories;
determining a statistic based at least in part on a number
of times the story identified by the sponsored story request is
included in the selected one or more stories and a number of
times the copy of the story identified by the sponsored story
request would be included in the selected one or more stories;
and
storing the determined statistic.
App. Br. 24–25 (Claims App.).

EXAMINER’S REJECTION3
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–3.

ANALYSIS
In support of the § 101 rejection of claims 1–20, the Examiner
determines Appellant’s claims are directed to “providing content or
advertisement based on sponsored stories and scores,” which the Examiner
finds is “a fundamental economic practice” or a series of mental processes,

3 Claims 1–16 were rejected under 35 U.S.C. § 103(a) as being obvious over
Schoen et al. (US 2012/0203831 A1; published Aug. 9, 2012), Anderson et
al. (US 2012/0153285 A1; published June 17, 2010), Fougner et al. (US
2012/0233009 A1; published Sept. 13, 2012), Covell et al. (US 9,053,129
B1; issued June 9, 2015), and Jackson et al. (US 8,606,792 B1; issued Dec.
10, 2013) (Final Act. 4–17). Similarly, claims 17–20 were rejected under
35 U.S.C. § 103(a) as being obvious over Schoen and Robison et al. (US
2012/0110032 A1; published May 3, 2012) (Final Act. 17–19). However,
the Examiner has withdrawn these rejections (Ans. 3). As such, these
rejections are no longer on appeal.
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and include limitations that are similar or analogous to the claims found by
the Federal Circuit to be an patent in-eligible in Electric Power Group, LLC,
v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016) (holding that the concept of
“collecting information, analyzing it, and displaying certain results of the
collection and analysis” is a mental process). Ans. 4–5; see also Final Act.
2.
The Examiner also determines the additional elements (i.e., “user
interface” and “social networking system” recited in claims 1, 9, and 17),
when analyzed individually and as an ordered combination, do not amount
to significantly more than the abstract idea because these additional elements
are: (1) “general purpose computer [elements]”; (2) recited “at the highest
level of generality”; and (3) “perform[] basic computer functions that are
well-understood, routine, and conventional.” Ans. 4.
Legal Framework
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court’s two-step framework articulated in Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208 (2014). First, we determine whether the claims are
directed to a patent-ineligible concept: laws of nature, natural phenomena,
and abstract ideas. Id. at 216. If so, we then proceed to the second step to
consider the elements of the claims “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. at
217. In other words, the second step is to “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
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upon the [ineligible concept] itself.’” Id. at 218 (alteration in original,
internal quotation marks omitted).
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In an effort to achieve clarity and consistency in how the U.S. Patent
and Trademark Office (the “Office”) applies the Supreme Court’s two-step
framework, the Office has published revised guidance interpreting governing
case law and establishing a prosecution framework for all patent-eligibility
analysis under Alice and § 101 effective as of January 7, 2019. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57
(Jan. 7, 2019); see also USPTO October 2019 Update: Subject Matter
Eligibility, 84 Fed. Reg. 55942–53 (Oct. 17, 2019) (updating the guidance
promulgated in January 2019 with “examples as well as a discussion of
various issues raised by the public comments”) (collectively, the “2019
Revised Guidance”).
2019 Revised Guidance
Under the 2019 Revised Guidance, we first look under Alice step 1 or
“Step 2A” to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment,
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opinion), or [iii] certain methods of organizing human activity
such as a fundamental economic practice or managing
personal behavior or relationships or interactions between
people); and

(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).4
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A,
Prong One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 or
“Step 2B.” See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A—Prong 1
Appellant argues (1) the Examiner “has over simplified that the claims
to the point where the identified abstract idea fails to account for specific

4 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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requirements of the claims,” and (2) claims 1–20 are not directed to an
abstract idea because (i) claims 1–16 are directed to determining statistics
that describe how effective a promotion is in increasing access to a story, in
particular to determine whether a promoted story would have been selected
for presentation to a user without being promoted to determine if the
promotion contributes the presentation of the promoted story,” and (ii)
“[c]laims 17–20 are directed to providing a user interface to a user for
promoting stories posted to a social networking system by the user or by an
additional user connected to the user.” App. Br. 8–9 (citing Spec. ¶ 8).
Appellant’s arguments are not persuasive. At the outset, we note
Appellant’s Specification and claims describe “advertising via a social
networking system” and enabling users “to promote certain actions, posts, or
other content [i.e., story] that is represented in a social networking system”
as well as “to more easily generate requests for sponsored stories using
interface controls that enable promotion of specific actions, posts, or other
content viewable in an interface of the social networking system.” Spec.
¶¶ 1, 5. According to Appellant, the social networking system (1)
“determines [] how effective a promotion is in increasing access to a story,”
and (2) “determines scores for various stories and selects stories for
presentation based on the scores.” Spec. ¶ 8.
Consistent with Appellant’s Specification, as recognized by the
Examiner, limitations of claim 1’s recited method, under their broadest
reasonable interpretation, recite (1) “displaying a plurality of stories to a
promoting user”; (2) “receiving a sponsored story request from a promoting
user”; (3) “generating a copy of the story identified by the sponsored story
request”; (4) “receiving a plurality of request[s] [] for presentation of one or
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more stories”; (5) “for each request” (5a) “retrieving a plurality of candidate
stories,” (5b) “determining a score for each of the candidate stories,” (5c)
“determining a score for the copy of the story,” (5d) “selecting one or more
stories,” (5e) “sending a feed of stories,” (5f) “determining whether the copy
of the story identified would be selected,” (6) “determining a statistic,” and
(7) “storing the determined statistic,” which are known business activities,
especially in the context of advertisement and content promotion to
determine the effectiveness of promoting a story—a fundamental economic
practice in our system of commerce, one of “certain methods of organizing
human activity” identified in the Revised Guidance, and therefore an
abstract idea. See Revised Guidance (Revised Step 2A, Prong One), 84 Fed.
Reg. at 52 (describing an abstract idea category of “[c]ertain methods of
organizing human activity—fundamental economic principles or practices
. . . commercial or legal interactions (including . . . advertising, marketing or
sales activities or behaviors; business relations)”), 54. Ans. 7; see Spec.
¶¶ 2–10, 25–26.
Such economic activities are squarely within the realm of abstract
ideas, including those identified by the Supreme Court and the Federal
Circuit as abstract ideas, such as, for example: (1) the risk hedging in Bilski
v. Kappos, 561 U.S. 593 (2010); (2) the intermediated settlement in Alice,
573 U.S. at 220 (2014); (3) verifying credit card transactions in CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011); (4)
managing a stable value protected life insurance policy in Bancorp. Servs.,
L.L.C. v. Sun Life Assur., Co. of Canada (US), 687 F.3d 1266 (Fed. Cir.
2012); (5) guaranteeing transactions in buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1354 (Fed. Cir. 2014); (6) distributing products over the Internet
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in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); (7)
determining a price of a product offered to a purchasing organization in
Versata Dev. Grp., Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir.
2015); (8) pricing a product for sale in OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359 (Fed. Cir. 2015); (9) delivering user-selected media content
(i.e., targeted advertisement) to a portable device in Affinity Labs of Texas,
LLC v. Amazon.com, 838 F.3d 1266, 1269, 1271 (Fed. Cir. 2016); and taking
orders from restaurant customers in Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229 (Fed. Cir. 2016). Target advertisement and content promotion to end
users based on sponsored stories and scores, via a social network, is also a
building block of commerce, insurance and, like risk hedging and
intermediated settlement, is one of certain methods of organizing human
activity, which are abstract ideas beyond the scope of § 101. See Alice,
573 U.S. at 220.
As further recognized by the Examiner, the limitations of Appellant’s
claim 1, under their broadest reasonable interpretation, recite nothing more
than a series of steps collecting (receiving), analyzing (identifying,
determining, selecting), and storing statistic information to determine the
effectiveness of promoting a story, which are a series of “mental processes”
that could also be performed in part in the human mind and in part by a
marketing person using a pen and paper (including an observation,
evaluation, judgment, opinion), and therefore an abstract idea. Ans. 6–7; see
CyberSource, 654 F.3d at 1372–73 (“[A] method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101.”); see also In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009)
(“[M]ental processes—or processes of human thinking—standing alone are
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not patentable even if they have practical application.”); Gottschalk v.
Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, . . . mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work.” (Emphasis added)).
Additionally, mental processes remain unpatentable even when automated to
reduce the burden on the user of what once could have been done with pen
and paper. CyberSource, 654 F.3d at 1375 (“That purely mental processes
can be unpatentable, even when performed by a computer, were precisely
the holding of the Supreme Court in Gottschalk v. Benson.”).
For example, limitations (1)–(4) in claim 1 describe steps performed
by a marketing person of an advertising company who is tasked to receive a
request from a sponsor to promote a particular story (e.g., a video of a movie
trailer), make a copy of a promoted story (also referred to as a “ghost
story”), and receive one or more requests from viewers to review the story.
Limitation (5) in claim 1 describes for each request from a viewer, the
marketing person is required to determine a score for each candidate story
and the copy of the story sponsored, send a feed of stories for display, and
determine whether the copy of the promoted story should be selected for
presentation. Limitations (6)–(7) in claim 1 describe steps performed by the
same marketing person who is tasked to determine and save statistics of the
promoted story and the copy of the promoted story using a pen and paper.
Thus, under Step 2A, Prong One, we agree with the Examiner that
limitations (1)–(7) in Appellant’s claim 1 recite a fundamental economic
practice and/or a series of mental processes as identified in the Revised
Guidance, and thus, an abstract idea. See 2019 Revised Guidance (Revised
Step 2A, Prong One), 84 Fed. Reg. at 52, 54.
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Step 2A—Prong 2 (Integration into Practical Application)
Under Step 2A, Prong Two of the Revised Guidance, we next
determine if the claims recite additional elements (i.e., additional limitations
beyond the judicial exception) that integrate the judicial exception into a
practical application. Here, for the reasons stated below, we discern no
additional element (or combination of elements) recited in Appellant’s
claims 1, 9, and 17 that integrate(s) the judicial exception into a practical
application. See Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
For example, Appellant’s additional elements (i.e., “user interface”
and “social networking system” recited in method claims 1, 9, and 17) do
not (1) improve the functioning of a computer or other technology, (2) are
not applied with any particular machine (except for generic computer
components), (3) do not effect a transformation of a particular article to a
different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
Appellant argues that, similar to the claims in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), (1) “the claims are
‘rooted in computer technology,’” (2) “the claims overcome a problem
specifically arising in the realm of computer network as the claims deal with
determining the efficiencies of online distribution of content [which is
different from physical distribution of content],” and (3) “the claims do
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improve the functioning of the computer,” i.e., “improving the selection of
the stories to be provided to use.” App. Br. 9–10; Reply Br. 3–5.
Appellant’s arguments are not persuasive. In DDR Holdings, the
claims were directed to an e-commerce syndication system for “generating a
composite web page that combines selected visual elements of a host
website with content of a third-party merchant.” See DDR Holding’s U.S.
Patent No. 7,818,399 (DDR’s ’399 patent). The Federal Circuit found
DDR’s claims are patent-eligible under 35 U.S.C. § 101 because DDR’s
claims: (1) do not merely recite “the performance of some business practice
known from the pre-Internet world” previously disclosed in Bilski and Alice;
but instead (2) provide a technical solution to a technical problem unique to
the Internet, i.e., a “solution . . . necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks.” DDR, 773 F.3d at 1257.
In contrast, Appellant’s invention, involving collecting (receiving),
analyzing (identifying, determining, selecting), and storing statistic
information to determine the effectiveness of promoting a story, is neither
“rooted in computer technology” nor provided any “technical solution to a
technical problem” as contemplated by the Federal Circuit in DDR. See
MPEP § 2106.05(a). For example, Appellant’s claimed collecting
(receiving), analyzing (identifying, determining, selecting), and storing
statistic information does not provide a technical solution to a technical
problem unique to the Internet, i.e., a “solution . . . necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” DDR, 773 F.3d at 1257.
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As correctly recognized by the Examiner, Appellant’s invention “aims
to solve an entrepreneurial problem rather than a technological one.” Ans. 5.
More importantly, the focus of Appellant’s invention is not to improve the
performance of computers or any computer-related technologies; but rather,
to use a generic user interface and a social networking system as a tool for
(1) “displaying a plurality of stories to a promoting user”; (2) “receiving a
sponsored story request from a promoting user”; (3) “generating a copy of
the story identified by the sponsored story request”; (4) “receiving a plurality
of request[s] [] for presentation of one or more stories”; (5) “for each
request” (5a) “retrieving a plurality of candidate stories,” (5b) “determining
a score for each of the candidate stories,” (5c) “determining a score for the
copy of the story,” (5d) “selecting one or more stories,” (5e) “sending a feed
of stories,” (5f) “determining whether the copy of the story identified would
be selected,” (6) “determining a statistic,” and (7) “storing the determined
statistic” to determine the effectiveness of the promotion. See Spec. ¶¶ 1, 5,
8, 9, 19, 30, 39; Abstract. However, utilizing generic user interface and
social networking system to promote content (story) based on sponsored
stories and scores is insufficient to show “integration into a practical
application.” See MPEP § 2106.05(f). Instead, these generic computing
components are simply analogous to the “automation of the fundamental
economic concept,” OIP Techs., 788 F.3d at 1362–63. “[M]erely requiring
generic computer implementation,” “does not move into [§] 101 eligibility
territory.” buySAFE, 765 F.3d at 1354.
A claim for a new abstract idea is still an abstract idea. See Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). “No
matter how much of an advance in the finance field the claims recite, the
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advance lies entirely in the realm of abstract ideas, with no plausibly alleged
innovation in the non-abstract application realm.” See SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
For these reasons, we determine that (1) Appellant’s “additional
elements” recited in claims 1, 17, and 32 do not integrate the recited judicial
exception into a practical application and, as such, (2) Appellant’s claims are
directed to an abstract idea. See 2019 Revised Guidance (Revised Step 2A,
Prong Two), 84 Fed. Reg. at 54–55.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Under the 2019 Revised Guidance, only if a claim: (1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then (3) look to whether the claim adds a specific
limitation beyond the judicial exception that is not “well-understood,
routine, conventional” in the field (see MPEP § 2106.05(d)); or, instead, it
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 Revised Guidance, 84 Fed. Reg. at 56. However, we
find no element or combination of elements recited in Appellant’s claims 1,
9, and 17 that contain any “inventive concept” or add anything “significantly
more” to transform the abstract concept into a patent-eligible application.
Alice, 573 U.S. 208 at 221.
Appellant does not identify any specific limitation of claims 1, 9, and
17 beyond the recited judicial exception that is not “‘well-understood,
routine, conventional’ in the field” as per MPEP § 2106.05(d). Instead,
Appellant argues all the steps recited in claim 1, including, for example:
“generating a copy of the story,” “determining a score for the copy of the
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story identified by the sponsored story request,” “determining whether the
copy of the story identified by the sponsored story request would be selected
for presentation to the viewing user based on (a) the score of the copy of the
story identified by the sponsored story request that is not based on the bid
amount of the sponsored story request, and (b) the score of one or more of
the selected one or more stories” simply “amount to significantly more than
the identified abstract idea of ‘providing content or advertisement based on
sponsored stories.’” App. Br. 12–13. In other words, Appellant refers to
limitations recited in claims 1, 9, and 17 that are part of the judicial
exception identified under Alice step 1, and then argues the same limitations
“amount to significantly more than the identified abstract idea of ‘providing
content or advertisement based on sponsored stories’” under Alice step 2.
Id.
We do not agree. Claim element(s) to be considered under Alice step
2 cannot be part of the abstract idea itself. Berkheimer v. HP Inc., 881 F.3d
1360, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“Berkheimer . . .
leave[s] untouched the numerous cases from [the Federal Circuit] which
have held claims ineligible because the only alleged ‘inventive concept’ is
the abstract idea.”); BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1283 (Fed. Cir. 2018) (indicating same). “Groundbreaking, innovative, or
even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2117
(2013).
Because Appellant’s independent claims 1, 9, and 17 are directed to a
patent-ineligible abstract concept and do not recite an “inventive concept” or
provide a solution to a technical problem under the second step of the Alice
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analysis, we sustain the Examiner’s § 101 rejection of independent claims 1,
9, and 17, and their dependent claims 2–8, 10–16, and 18–20 not separately
argued.

CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1–20 under 35 U.S.C. § 101. As
such, we AFFIRM the Examiner’s § 101 rejection of claims 1–20.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Non-Statutory 1–20
Overall Outcome 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)(1)(iv).

AFFIRMED