Aaron Payne. Goldsmid et al.

Patent Trials and Appeals Board

Sep 13, 2019

14297053 - (D) (P.T.A.B. Sep. 13, 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.
14/297,053 06/05/2014 Aaron Payne Goldsmid 26295-26444 6814
87851 7590 09/13/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
ROSS, SCOTT M
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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 AARON PAYNE GOLDSMID, GEORGE LEE,
VISHU GUPTA, DANIEL RICHARD MORRIS, DAVID
JOSEPH ENGELBERG, BRENDAN MARTEN,
TINA MARIE CARDACI, and NIKET BISWAS
________________

Appeal 2018-004157
Application 14/297,053
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
JAMES B. ARPIN, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–5, 7, and 10–27. App. Br. 6. These claims stand
rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter. Final Action mailed Mar. 13. 2017 (“Final Act.”) at 2–8. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies Facebook, Inc. as the real party in interest. Appeal
Brief filed September 28, 2017 (“App. Br.”) at 2. (Appellant does not
include page numbers on their Appeal Brief or Reply Brief. For ease of
discussion, we treat the cover sheet of each document as corresponding to
page 1, with the subsequent pages consecutively numbered.)
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SUBJECT MATTER
The recited methods and computer program products “relate[]
generally to social networking systems, and more specifically to predicting
interactions of users of a social networking system with applications.” Spec.
¶ 1. More specifically, Appellant describes the purpose of such methods and
products as follows:
To allow more accurate targeting of content for
presentation via an application [(e.g., for games and tools)], a
social networking system associates one or more classifications
with a social networking system user based on the likelihoods of
the user performing various types of interactions with the
application. To determine the likelihoods of the user performing
types of interactions, the social networking system retrieves
information describing prior interactions by the user with one or
more applications. For example, the social networking system
provides a software development kit (“SDK”) to third-party
application developers including instructions for inclusion in one
or more applications. When the instructions are executed, an
application communicates information describing interactions
with the application, identifying the application, and identifying
a social networking system user performing the application. For
example, an application communicates to the social networking
system information identifying types of products a user
purchased in the application, times of day the user interacted with
the application, and a number of social interactions with other
users performed by the application.
Id. ¶ 4; see also id. ¶ 2 (describing the types of applications).
Independent claim 1 is illustrative. It is reproduced below with
formatting modified for clarity and emphasis added to indicate the language
of the claim that recites abstract ideas:
1. A method comprising:
[i] providing program code to one or more developers of one
or more applications, the program code for inclusion in the one
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or more applications and for communication of information
describing interactions of users of a social networking system
with the one or more applications to the social networking
system;
[ii] receiving, by a computer processor of the social
networking system, the information from the provided program
code, included in one or more applications describing
interactions of users of the social networking system with each
of the one or more applications, the information identifying an
application in which the provided program code was included,
identifying one or more users who interacted with the application
in which the program code was included, and describing one or
more interactions of the one or more users with the application
in which the program code was included;
[iii] storing, by the computer processor, the received
information describing interactions of the one or more users with
the one or more applications;
[iv] retrieving information describing interactions of a user of
the social networking system with the one or more applications;
[v] determining, by the computer processor, a likelihood of
the user performing each of one or more types of interactions
with a selected application based at least in part on the retrieved
information describing the interactions of the user with the one
or more applications, wherein determining a likelihood
comprises:
[a] retrieving stored information describing
interactions of the user with one or more additional
applications each having at least a threshold measure of
similarity with the selected application, and
[b] determining the likelihoods of the user performing
one or more types of interactions with the selected
application based at least in part on the retrieved
information describing interactions of the user with the
one or more applications and on the stored information
describing interactions of the user with the one or more
additional applications each having at least the threshold
measure of similarity with the selected application; and
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[vi] determining, by the computer processor, one or more
classifications associated with the user based at least in part on
the determined likelihoods.

PRINCIPLES OF LAW
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
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and
Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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
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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 (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. (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 (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
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[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.
B. USPTO SECTION 101 GUIDANCE
In January of 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of 35 U.S.C.
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under the
2019 Guidance, we first look to whether the claim recites the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities 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)).
84 Fed. Reg. 52–55.
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.
84 Fed. Reg. 56.
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ANALYSIS2
Step 2A, Prong 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 84 Fed. Reg. 52–55.
Limitations [v] and [vi] of claim 1 recite the following language:
[v] determining, by the computer processor, a likelihood of
the user performing each of one or more types of interactions
with a selected application based at least in part on the retrieved
information describing the interactions of the user with the one
or more applications, wherein determining a likelihood
comprises:
. . . .
[b] determining the likelihoods of the user performing
one or more types of interactions with the selected
application based at least in part on the retrieved
information describing interactions of the user with the
one or more applications and on the stored information
describing interactions of the user with the one or more
additional applications each having at least the threshold
measure of similarity with the selected application; and
[vi] determining, by the computer processor, one or more
classifications associated with the user based at least in part on
the determined likelihoods.

2 Appellant argues claims 1–5, 7, and 10–27 together as a group. See App.
Br. 6–16. Accordingly, we select independent claim 1 as representative.
37 C.F.R. § 41.37(c)(1)(iv).

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These limitations reasonably can be interpreted as reciting mental
processes that can be performed in the human mind or with the aid of pencil
and paper. More specifically, the step of determining the likelihood of
interactions and determining classifications reasonably can be characterized
as mental observations, evaluations, judgments, or opinions. The
2019 Guidance expressly recognizes such mental observations and
evaluations as examples of patent-ineligible abstract ideas. Accordingly,
both of limitations [v.b] and [vi] reasonably are characterized as reciting
patent-ineligible subject matter.
Step 2A, Prong 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that integrate the judicial
exception into a practical application. 84 Fed. Reg. 52–55.
Limitation [v] more specifically recites that a computer processor is
what performs the abstract idea of “determining . . . a likelihood of the user
performing each of one or more types of interactions.” App. Br. 17.
Limitation [vi] also recites that the computer processor performs the step of
determining one or more classifications. Id.
However, additionally relying on a “processor” to “perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015). “[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v.
Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012);
see also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
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Cir. 2014) (distinguishing a claimed solution necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks from claims that “merely recite the performance of
some business practice known from the pre-Internet world along with the
requirement to perform it on the Internet”).
Claim 1 also recites a step of providing program code to application
developers (limitation [i]) and various steps of receiving, retrieving, and
storing data (limitations [ii]–[iv] and [v.a]). These steps do not add
additional steps that integrate the abstract ideas into a practical application
because these steps reasonably are characterized as merely constituting
insignificant extra-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g); see also Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1241–42 (Fed. Cir. 2016) (holding that printing or downloading generated
menus constituted insignificant extra-solution activity).
Appellant argues that
the claims are not merely directed to “classifying users based on
the likelihood of their interactions.” Instead, they are directed to
associating one or more classifications with a social networking
system user based on the likelihoods of the user performing
various types of interactions with an application to allow more
accurate targeting of content for presentation via the application.
App. Br. 9; see also Reply Brief filed Mar. 9, 2018 (“Reply Br.”) at 3–4
(presenting substantially the same argument).
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This argument is unpersuasive because the act of associating
classifications with a social networking system user based on the likelihood
of various types of interactions entails one of the recited abstract ideas. “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.” BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018); see
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”); SAP
Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is
needed is an inventive concept in the non-abstract application realm.”).
Moreover, Appellant’s Specification explains that apparatus for
performing the operations described in the Specification “may be specially
constructed for the required purposes, and/or it may comprise a general-
purpose computing device selectively activated or reconfigured by a
computer program stored in the computer.” Spec. ¶ 47 (emphasis added);
see id. ¶¶ 45, 46 (describing programs implementing such operations).
For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP ¶ 2106.05(a). Nor has Appellant
persuasively demonstrated that claim 1 is directed to a particular machine or
transformation (MPEP ¶ 2106.05(b), (c)), or that claim 1 adds any other
meaningful limitations (MPEP ¶ 2106.05(e)). Accordingly, Appellant has
not persuaded us that claim 1 integrates the recited abstract ideas into a
practical application within the meaning of the 2019 Guidance. 84 Fed.
Reg. 52–55.
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Step 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 2 adds any specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field. 84 Fed. Reg. 56;
MPEP § 2106.05(d).
The Examiner concludes that the claims do not include additional
elements that are sufficient, either alone or in combination, to amount to
significantly more than an abstract idea “because the code, computer
processor, social network system, computer readable storage medium,
instructions, etc. merely describe generic computer components performing
their conventional functions in implementing the abstract idea.” Final
Act. 3. The Examiner cites to Appellant’s Specification in support of this
conclusion:
Embodiments of the invention may also relate to an
apparatus for performing the operations herein. This apparatus
may be specially constructed for the required purposes, and/or it
may comprise a general-purpose computing device selectively
activated or reconfigured by a computer program stored in the
computer. Such a computer program may be stored in a non-
transitory, tangible computer readable storage medium, or any
type of media suitable for storing electronic instructions, which
may be coupled to a computer system bus. Furthermore, any
computing systems referred to in the specification may include a
single processor or may be architectures employing multiple
processor designs for increased computing capability.
Spec. ¶ 47 (emphasis added, cited in Final Act. 30; see id. ¶¶ 45, 46 (cited
above).
Appellant does not provide persuasive evidence that the additional
elements are anything other than generic computer components performing
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their conventional functions in implementing the abstract idea. App. Br. 6–
15; Reply Br 2–5.
Furthermore, Appellant’s Specification further supports the
Examiner’s determinations. See, e.g., Spec. ¶ 12 “In one embodiment, a
client device 110 is a conventional computer system, such as a desktop or a
laptop computer. Alternatively, a client device 110 may be a device having
computer functionality, such as a personal digital assistant (PDA), a mobile
telephone, a smartphone or another suitable device.”), ¶15 (“Conventional
components such as network interfaces, security functions, load balancers,
failover servers, management and network operations consoles, and the like
are not shown so as to not obscure the details of the system architecture”).
For these reasons, we determine that claim 1 does not recite additional
elements that amount to significantly more than the abstract idea within the
meaning of the 2019 Guidance. 84 Fed. Reg. 56–57; MPEP § 2106.05(d).
Accordingly, we sustain the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. We,
likewise, sustain the 101 rejection of claims 2–5, 7, and 10–27, which
Appellant does not argue separately. App. Br. 6–15; 37 C.F.R.
§ 41.37(c)(1)(iv).

DECISION
The Examiner’s decision rejecting claims 1–5, 7, and 10–27 is
affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
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AFFIRMED