Brian Boland et al.

Patent Trials and Appeals Board

Aug 25, 2020

13297180 - (D) (P.T.A.B. Aug. 25, 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.
13/297,180 11/15/2011 Brian Thomas Boland 26295-18784 3068
87851 7590 08/25/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
PATEL, DIPEN M
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
08/25/2020 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 BRIAN THOMAS BOLAND and GOKUL RAJARAM
____________

Appeal 2020-001551
Application 13/297,180
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1–22. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a method of targeting online advertising to a user
based on viewed profile pages. (Spec. ¶ 2, Title).
Claim 1 is representative of the subject matter on appeal.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Facebook,
Inc. (Appeal Br. 2).
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1. A computer-implemented method comprising:
maintaining profile information about a subject user and
profile information about a viewing user of a social
networking system;
displaying to the viewing user a first page of the social
networking system;
receiving, from the viewing user via an action on the first
page of the social networking system displayed to
the viewing user, a request for a profile page of the
subject user;
determining advertising items to display to the viewing
user in conjunction with the profile page of the
subject user, comprising:
determining an affinity score of the viewing user
for the subject user;
selecting at least one user profile from the subject
user profile and the viewing user profile for
determining a set of interests for
consideration in conjunction with the
advertising items, the selection based on the
affinity score of the viewing user for the
subject user;
determining by a processor, the set of interests
based on the selected at least one user
profile;
assigning a weight to each of a plurality of
advertising items based on a comparison of
the advertising item with the determined set
of interests;
and
selecting one or more advertising items from the
plurality of advertising items based at least
in part on the assigned weights of the
plurality of advertising items;
generating a user interface display for the viewing user
comprising:
the profile page of the subject user based on the
profile information about the subject user;
and
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the selected one or more advertising items to
display in conjunction with the profile page
of the subject user; and
sending the user interface display comprising the profile
page of the subject user and the selected one or
more advertising items for display to the viewing
user.

THE REJECTION
Claims 1–22 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–22 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then ask, “[w]hat
else is there in the claims before us?” . . . To answer that
question, . . . consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. . . . [The Court]
described step two of this analysis as 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.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(first and last alterations in original) (citations omitted).
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To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 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.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
The Examiner determines that the claims are directed to (1) a
fundamental economic practice (selecting and displaying ads, which is a way
to organize human activity between a potential buyer and a seller), and (2)
collecting information and comparing known information. (Final Act. 3–4).
The Examiner finds the claim elements in addition to the abstract ideas
include a computer; one or more computing devices comprising a display
which further comprises a GUI; one or more processors; an electronic
storage; and a computer-readable memory, which are described at a high
level of generality and viewed as a whole, do not provide meaningful
limitations to transform abstract ideas into a patent-eligible subject matter.
(Final Act. 5, 10).
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The Specification discloses that:
This invention relates generally to social networking, and
in particular to providing information items, including
advertisements, to users of a social networking system.
Online advertising has evolved into a profitable business,
allowing commercial and private entities alike to place
advertisements on websites and within native applications, and
then display the advertisements to viewing users who access the
websites and applications. The ability to analyze data associated
with a particular website, application, and/or the viewing user
has allowed advertisers to provide ads that are more relevant to
a viewing user’s interests. More relevant ads increase the
likelihood of ad conversion (e.g., that the viewing user will
observe the ad, click on the ad, proceed to the advertiser’s
website, or otherwise respond to the ad with the intended result)
and/or the likelihood of greater demand for or awareness of the
advertiser’s goods or services, thereby raising the effectiveness
of the ad.
(Spec. ¶¶ 1–2).
This disclosure demonstrates that the invention relates to increasing
the effectiveness of ads.
Consistent with this disclosure, claim 1 recites “determining
advertising items to display to the viewing user . . .,” “selecting at least one
user profile . . . for consideration in conjunction with the advertising items,”
“assigning a weight to each of a plurality of advertising items based on a
comparison of the advertising item with the determined . . . set of
interests[],” and “selecting one or more advertising items from a plurality of
advertising items . . . .”
We thus agree with the Examiner’s findings that claim 1 recites a
fundamental economic practice. It follows from prior Supreme Court cases,
and Gottschalk v. Benson, 409 U.S. 63 (1972), in particular, that claim 1
recites a judicial exception. Controlling the behavior of persons concerning
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a commercial interaction is a method of organizing human behavior, which
is not patentable subject matter. See Alice, 573 U.S. at 217–18.
Also, we agree with the Examiner that claim 1 recites collecting
information and comparing known information and that the steps of claim 1
constitute “analyzing information by steps people go through in their minds,
or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category.” Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to
certain arrangements involving contractual relations are directed to abstract
ideas).
We note that our determination is consistent with current case law.
See 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 is an abstract idea); 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 is an
abstract idea); Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D.
Cal. 2014), aff’d, 622 F. App’x 915 (Fed. Cir. 2015) (targeting
advertisements to certain consumers is no more than an abstract idea);
Bridge and Post, Inc. v. Verizon Communications, Inc., 778 F. App’x 882
(Fed. Cir. 2019) (abstract ideas include tracking a user’s computer network
activity and using information gained about the user to deliver targeted
media, such as advertisements).
Thus, we find that claim 1 recites at least one of the certain methods
of organizing human activity enumerated under the Guidance and, in the
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alternative, a mental process. See Guidance, 84 Fed. Reg. at 52 (Certain
methods of organizing human activity––fundamental economic practice;
commercial interactions (including advertising, marketing or sales activities
or behaviors)); MPEP § 2106.04(a) (rev. R-10.2019).
Turning to the second prong of the “directed to test,” claim 1 requires
a “social networking system,” a “processor,” and a “user interface display.”
These recitations do not impose “a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 52; MPEP
§ 2106.04(d). We find no indication in the Specification, nor does Appellant
direct us to any indication, that the operations recited in independent claim 1
invoke any 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
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 claim 1 effects a
transformation or reduction of a particular article to a different state or thing.
Nor do we find anything of record, short of attorney argument, that attributes
any improvement in computer technology and/or functionality to the claimed
invention or that otherwise indicates that the claimed invention integrates the
judicial exception into a “practical application,” as that phrase is used in the
Guidance. See Guidance, 84 Fed. Reg. at 55; MPEP § 2106.04(d).
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In this regard, the recitation does not effect an improvement in the
functioning of the social networking system, processor, and user interface
display or other technology, does not recite a particular machine or
manufacture that is integral to the claim, and does not transform or reduce a
particular article to a different state or thing. Id. Thus, claim 1 is directed to
a judicial exception that is not integrated into a practical application and,
thus claim 1 is directed to an abstract idea.
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself. See Alice, 573
U.S. at 217–18 (quoting Mayo, 566 U.S. at 72–73).
The introduction of the computer and network components of a
“social networking system,” a “processor,” and a “user interface display”
into the claims does not alter the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’”
isnot enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
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process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations except first in original) (citations omitted).
Instead, “the relevant question is whether [claim 1] here do[es] more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
computer components at each step of the process is well-understood, routine
and purely conventional. Using a computer to retrieve, select, and apply
decision criteria to data and modify the data as a result amounts to electronic
data query and retrieval—one of the most basic functions of a computer. All
of these computer functions are well-understood, routine, conventional
activities previously known to the trading industry. See Elec. Power Grp.,
830 F.3d at 1354; see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming.”). In short, each step does no more than require generic
computer components and network components to perform generic
functions. As to the data operated upon, “even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.” SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir.
2018).
Considered as an ordered combination, the computer and network
components of Appellant’s claim 1 add nothing that is not already present
when the steps are considered separately. The sequence of data reception-
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analysis-access/display is equally generic and conventional or otherwise
held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction),
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (holding that sequence of data retrieval, analysis,
modification, generation, display, and transmission was abstract), Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017) (holding sequence of processing, routing, controlling, and
monitoring was abstract). The ordering of the steps is, therefore, ordinary
and conventional.
Claim 1 does not, for example, purport to improve the functioning of
the social networking system, processor, or user interface display. As we
stated above, the claim does not effect an improvement in any other
technology or technical field. The Specification spells out different generic
equipment and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of information access under different scenarios. (See, e.g., Spec.
¶¶ 15, 31). Thus, the claims at issue amount to nothing significantly more
than instructions to apply the abstract idea of information access using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 226.
We have reviewed all the arguments (Appeal Br. 6–13; Reply Br. 2–
10) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
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analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of emphasis, we will address various
arguments in order to make individual rebuttals of the same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims are not directed to a fundamental
economic practice because generating a profile page presented in an online
system in conjunction with an advertisement based on an affinity score, are
not conventionally a form of human activity. (Appeal Br. 9). As we
discussed above, the first step in an analysis to determine whether claim are
directed to an abstract idea is to determine whether the claims “recite” a
judicial exception. If the claims recite a judicial exception, the analysis then
proceeds to the next step to determine whether the judicial exception is
integrated into a practical application and, if the claims do not so integrate
the judicial exception, a determination can be made that the claims are
directed to an abstract idea. In the instant case, claim 1 clearly recites a
method of advertising which, according to the Guidance, is a judicial
exception under the umbrella of a method of organizing human activity. The
activity that is organized is the commercial activity between an advertiser
and potential buyer. See Guidance, 84 Fed. Reg. 52. The recitation in claim
1 related to generating a profile page presented in an online system is
analyzed in the second prong of the directed to test and in the second step of
the analysis. As we discussed above, there is no improvement to either the
social networking system or the processor, and as such, the judicial
exception is not integrated into a practical application (under the second
prong of Guidance step 2A) and does not amount to significantly more than
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the abstract idea recited in claim 1 (under the second step of the Alice
framework).
Appellant argues that the steps of (1) determining an affinity score,
(2) selecting at least one user profile from the subject user profile and the
viewing user profile and (3) generating a user interface display for the
viewing user cannot be practically performed in the human mind given the
processing capacity required to perform these steps and the context within
which they are performed. (Appeal Br. 10). This argument is not persuasive
because Appellant does not explain why these method steps of claim 1, for
example, cannot be performed in the human mind. For example, Appellant
has not explained why the determination of an affinity score cannot be done
in the human mind. The Specification discloses that the affinity module 222
determines affinities between users. This affinity may be based on the
frequency of interactions between two users, the number of interactions
between two users or a combination thereof. (Spec. ¶46). It is certainly not
clear why determining affinities between people cannot be done in the
human mind. In fact, comparison of information is something that people do
all the time in human social interactions. In addition, it is not clear from
Appellant’s argument what is meant by the “context within which they [are]
performed.” (Appeal Br. 10). In addition, we note that generating a user
interface display for the viewing user is simply programming/creating data
which may may be performed mentally.
Appellant also argues that the claims recite a specific manner of
presenting content on a page to a viewing user to improve the probability
that a user is interested in the content and, therefore, recite an improvement
over current content presentation systems. (Appeal Br. 11). To the extent
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Appellant maintains that the limitations of claim 1 necessarily amount to
“significantly more” than an abstract idea because the claimed content
presentation system is allegedly patentable over the prior art presentation
systems, Appellant misapprehends the controlling precedent. Although the
second step in the Alice/Mayo framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but, rather, a search for “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.’” Alice,
573 U.S. at 217–18 (alteration in original). A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90. In this regard, as we discussed above, the claims do
not recite an improvement to the processors, the social network system, or
the user interface themselves but, rather, to the way an advertisement is
targeted to potential customers. Appellant is focusing on an improvement in
what is displayed rather than an improvement to the user interface display
itself. The improvement advanced by Appellant is to increase the viewing
user’s likelihood of interacting with the page or advertisement. (Reply Br.
5). This alleged improvement is in the abstract field of targeted advertising
and does not reflect an improvement to the user interface or any
technological process.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner has not presented sufficient
evidence in accordance with Berkheimer v. HP Inc., 881 F.3d 1360 (Fed.
Cir. 2018) that the user interface display is well-understood, routine, and
conventional. (Appeal Br. 12). We agree with the Examiner’s response to
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this argument found on pages 8–10 of the Answer and adopt same as our
own.
In addition, addressing step two of the Mayo/Alice framework in
Berkheimer, the Federal Circuit held that the question of whether a claim
element or combination of elements is well-understood, routine, and
conventional to a skilled artisan in the relevant field is a question of fact.
Berkheimer, 881 F.3d at 1368. Appellant cannot reasonably contend, nor
does Appellant, that there is a genuine issue of material fact regarding
whether the operation of the user display 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., storing, receiving, determining, selecting,
sending, and displaying 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 v. HP Inc., 890 F.3d 1369, 1373 (Fed.
Cir. 2018) (Moore, J., concurring); see also BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1291 (Fed. Cir. 2018) (“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.”). Moreover,
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the Specification discloses that the operations of the method claimed can be
done by a general-purpose computing device, thereby providing evidence on
the record that the user interface is well-understood, conventional, and
routine. (Spec. ¶ 71).
Appellant argues that the Examiner erred by rejecting the claims for
being directed to a chimera of three defined groups of abstract ideas, rather
than asserting that the claims are directed to any particular one of the three
defined groups. (Reply Br. 4). However, combining several abstract ideas
does not render the combination any less abstract. RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract
idea (math) to another abstract idea . . . does not render the claim non-
abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1093–94 (Fed. Cir. 2016) (determining the pending claims were directed to a
combination of abstract ideas).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1. We will also sustain this rejection as it is directed to the remaining
claims because the Appellant has not argued the separate eligibility of these
claims.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–22 under
35 U.S.C. § 101.

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CONCLUSION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–22 101 Eligibility 1–22

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