Callahan, Ezra et al.

Patent Trials and Appeals Board

Sep 25, 2019

12200892 - (D) (P.T.A.B. Sep. 25, 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.
12/200,892 08/28/2008 Ezra Callahan 26295-14640 8448
87851 7590 09/25/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
BAHL, SANGEETA
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/25/2019 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 EZRA CALLAHAN, LEAH PEARLMAN, JONATHAN PINES,
JUSTIN ROSENSTEIN, KENT SCHOEN, MARTIN SMITH, and
JONATHAN WARMAN
_______

Appeal 2018-007829
Application 12/200,892
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRUCE T. WIEDER, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ezra Callahan, et al. (Appellant)1 seeks our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 1–5, 8–14, and 17–30, which
constitute all the claims pending in this application. Claims 6, 7, 15, and 16
have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).

1 The pages of the Appellant’s Appeal Brief are not numbered; we refer to
the title page as page 1 and treat the pages that follow as though
consecutively numbered. The Appellant identifies Facebook, Inc. as the real
party in interest. App. Br. 2.
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SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method comprising:
storing a member profile for each of a plurality of members of a
social network, wherein each member is a person and
each member profile contains information related to the
corresponding member;
storing an organization profile for each of a plurality of
organizations in the social network, wherein each
organization profile contains information related to the
corresponding organization, the plurality of organization
profiles comprising a first organization profile describing
a first organization;
receiving requests from one or more of the member profiles to
establish a connection in the social network to one of the
organization profiles;
creating connections in the social network between the member
profiles and the organization profile in response to
requests therefor;
maintaining in the social network, the member profiles, the
organization profiles, and the connections among the
member and organization profiles;
receiving messages posted by members via the social networking
system, the messages including one or more terms
describing the first organization profile;
sending newsfeed stories describing the first organization profile
to member profiles indirectly connected to the first
organization profile via another member profile;
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receiving a request for statistical information describing viral
promotion of the first organization due to presence of the
first organization on the social networking system;
collecting, by a computing system, statistical information
associated with a plurality of actions taken by a plurality
of member profiles to which the first organization profile
is connected, the statistical information comprising:
a number of newsfeed stories provided by the social
networking system describing the first organization
profile to member profiles indirectly connected to
the first organization profile via another member
profile;
aggregating the collected statistical information based on
interactions related to the first organizational profile, the
aggregated statistical information containing
demographic information from the plurality of member
profiles associated with the collected statistical
information; and
sending the aggregated statistical information as the requested
information describing viral promotion of the first
organization due to presence of the first organization on
the social networking system.

THE REJECTIONS
The following rejections are before us for review:
Claims 1–5, 8–14, and 17–30 are rejected under 35 U.S.C. § 101 as
claiming patent-ineligible subject matter.
Claims 1, 12, 19, 25–27, 29, and 30 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Buyukkokten et al. (US 7,680,770 B1,
iss. Mar. 16, 2010) (“Buyukkokten”), Holberg (US 8,028,905 B2, iss. Oct. 4,
2011), Mann (US 2008/0189274 A1, pub. Aug. 7, 2008), and
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Kaushansky et al. (US 2008/0215607 A1, pub. Sept. 4, 2008)
(“Kaushansky”).
Claims 2, 3, 8, and 13 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buyukkokten, Holberg, Mann, Kaushansky, and
Abhyanker (US 2008/0270158 A1, pub. Oct. 30, 2008).
Claims 4, 5, 11, 14, 18, 20, 21, 24, and 28 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Buyukkokten, Holberg,
Mann, Kaushansky, and Eager et al. (US 2008/0172344 A1, pub. July 17,
2008) (“Eager”).
Claims 9, 17, and 22 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buyukkokten, Holberg, Mann, Kaushansky, and
DiRienzo et al. (US 6,076,066, iss. June 13, 2000) (“DiRienzo”).
Claims 10 and 23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buyukkokten, Holberg, Mann, Kaushansky, DiRienzo,
and Cohn (US 7,266,512 B2, iss. Sept. 4, 2007).

ISSUES
Did the Examiner err in rejecting claims 1–5, 8–14, and 17–30 under
35 U.S.C. §101 as claiming patent-ineligible subject matter; claims 1, 12, 19,
25–27, 29, and 30 under 35 U.S.C. § 103(a) as being unpatentable over
Buyukkokten, Holberg, Mann, and Kaushansky; claims 2, 3, 8, and 13
under 35 U.S.C. § 103(a) as being unpatentable over Buyukkokten, Holberg,
Mann, Kaushansky, and Abhyanker; claims 4, 5, 11, 14, 18, 20, 21, 24, and
28 under 35 U.S.C. § 103(a) as being unpatentable over Buyukkokten,
Holberg, Mann, Kaushansky, and Eager; claims 9, 17, and 22 under
35 U.S.C. § 103(a) as being unpatentable over Buyukkokten, Holberg,
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Mann, Kaushansky, and DiRienzo; and claims 10 and 23 under 35 U.S.C.
§ 103(a) as being unpatentable over Buyukkokten, Holberg, Mann,
Kaushansky, DiRienzo, and Cohn?

ANALYSIS
The rejection of claims 1–5, 8–14, and 17–30 under 35 U.S.C. §101 as
claiming patent-ineligible subject matter.
The Appellant argued these claims as a group. See App. Br. 6–21;
Reply Br. 2–8. We select claim 1 (supra) as the representative claim for this
group, and the remaining claims 2–5, 8–14, and 17–30 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

Preliminary comment
In the briefs, the Appellant refers to prior USPTO guidance. See e.g.,
App. Br. 6 (“2014 Interim Guidance on Patent Subject Matter Eligibility
[2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg.
74619–633 (Dec. 16, 2014)]”). Said guidance has been superseded by the
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “2019 Revised 101 Guidance”). 2019 Revised
101 Guidance, 84 Fed. Reg. at 51 (“Eligibility–related guidance issued prior
to the Ninth Edition, R–08.2017, of the MPEP (published Jan. 2018) should
not be relied upon.”).
Accordingly, our analysis will not address the sufficiency of the
Examiner’s rejection against the cited prior guidance. Rather, our analysis
will comport with the 2019 Revised 101 Guidance.

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Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 1 covers a “process” and is, thus, statutory
subject matter for which a patent may be obtained.2 This is not in dispute.
However, the § 101 provision “‘contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent-eligibility on the ground
that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.

Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether a “claim is to a statutory category.” 2019
Revised 101 Guidance 53; see also id. at 53–54 (“[C]onsider[] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. [§] 101 . . . .”).
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The Examiner determined that claim 1 recites steps “similar to the
abstract idea of [u]sing categories to organize, store and transmit information
(Cyberfone) and data recognition and storage (Content Extraction).” Final
Act. 2 (citing Cyberfone Systems, LLC v. CNN Interactive Group, Inc.,
558 F. App’x 988 (Fed. Cir. 2014) and Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343 (Fed. Cir. 2014)). The
Examiner also determined that the claims are similar to “[c]ollecting
information, analyzing it, and displaying certain results of the collection and
analysis (Electric Power Group).” Id. (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)). The Examiner further
determined that
[t]he limitations of collecting statistical information associated
with actions taken by members; comprising a number of
newsfeed stories describing the first organizational profile to
member profiles indirectly connected to organization;
aggregating the collected statistical information are similar to
abstract idea of mathematical calculations such as organizing
information through mathematical correlations (Digitech).

Id. at 2–3. See also Ans. 4 (citing Classen Immunotherapies, Inc. v. Biogen
IDEC, 659 F.3d 1057 (Fed. Cir. 2011) and CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)).
The Appellant contends that “claim 1 is directed to a specific, non-
abstract method of determining statistical information specifically about the
social networking specific newsfeed stories in order to infer viral promotion
of an organization represent[ed] using an organizational profile data
structure.” App. Br. 17.
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Accordingly, there is a dispute over what claim 1 is directed to. Is it
directed to “[u]sing categories to organize, store and transmit” (Final Act. 2)
or “a specific, non-abstract method of determining statistical information”
(App. Br. 17)?

Claim Construction3
We consider the claim as a whole4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the Specification6 at the time of filing.

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).
4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 2019 Revised 101 Guidance, 84 Fed. Reg. at 53 n.14 (If a claim, “under its
broadest reasonable interpretation . . . ” (emphasis added)).
6 “First, it is always important to look at the actual language of the claims
. . . . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed.
Cir. 2017) (J. Linn, dissenting in part and concurring in part), citing Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among
others.
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Claim 1 sets forth “[a] computer-implemented method” comprising
eleven steps with the objective of providing information describing a viral
promotion of an organization on a social networking system. The method
for accomplishing this objective does not specify any particular computer
that performs ten of the eleven steps. The method calls for “a computing
system” to perform one of the eleven steps, namely “collecting, by a
computing system, statistical information.” The eleven steps are:
1. “storing” Information A;
2. “storing” Information B;
3. “receiving” Information C;
4. “creating” Information D “in response to requests therefor”;
5. “maintaining in the social network” Information E;
6. “receiving” Information F;
7. “sending” Information G;
8. “receiving” Information H;
9. “collecting, by a computing system,” Information I;
10. “aggregating” Information I based on Information J, Information K
containing Information L; and
11. “sending” Information K as Information M.
Where:
Information A is “a member profile for each of a plurality of members
of a social network, wherein each member is a person and each
member profile contains information related to the corresponding
member;”
Information B is “an organization profile for each of a plurality of
organizations in the social network, wherein each organization profile
contains information related to the corresponding organization, the
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plurality of organization profiles comprising a first organization
profile describing a first organization;”
Information C is “requests from one or more of the member profiles to
establish a connection in the social network to one of the organization
profiles;”
Information D is “connections . . . between the member profiles and
the organization profile;”
Information E is “the member profiles, the organization profiles, and
the connections among the member and organization profiles;”
Information F is “messages posted by members via the social
networking system, the messages including one or more terms
describing the first organization profile;”
Information G is “newsfeed stories describing the first organization
profile to member profiles indirectly connected to the first
organization profile via another member profile;”
Information H is “a request for statistical information describing viral
promotion of the first organization due to presence of the first
organization on the social networking system;”
Information I is “statistical information associated with a plurality of
actions taken by a plurality of member profiles to which the first
organization profile is connected, the statistical information
comprising: a number of newsfeed stories provided by the social
networking system describing the first organization profile to member
profiles indirectly connected to the first organization profile via
another member profile;”
Information J is “interactions related to the first organizational
profile;”
Information K is “the aggregated statistical information;”
Information L is “demographic information from the plurality of
member profiles associated with the collected statistical information;”
and,
Information M is “the requested information describing viral
promotion of the first organization due to presence of the first
organization on the social networking system.”
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The claim provides no structural details7 that would distinguish the
“computing system” from generic computer systems that were well-known
at the time the application was filed. We note that claim 1 also recites a
“social networking system,” but claim 1 does not call on the social
networking system to perform any of the recited method steps.
Functionally, claim 1 calls on the “computing system” to collect the
specified statistical information. This is a common function that generic
computers are known to perform. The difference between the claimed
“computing system” and other well-known computer systems in performing
said common function is that the claimed “computing system” performs said
functions on certain types of information. But, that difference alone is not
patentably consequential. This is so because “[c]laim limitations directed to
the content of information and lacking a requisite functional relationship are
not entitled to patentable weight because such information is not patent
eligible subject matter under 35 U.S.C. § 101.” Praxair Distrib., Inc. v.
Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018).
Based on the record before us, the claim steps of “storing,” “storing,”
“receiving,” “creating,” “maintaining,” “receiving,” “sending,” “receiving,”
“collecting,” “aggregating,” and “sending” various types of information do
not ask any computer to go beyond a generic computer system’s common
information-processing functions. Although computer-based instructions

7 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950 (Fed. Cir.
2018) (Nonprecedential) (“Claim 1 is aspirational in nature and devoid of
any implementation details or technical description that would permit us to
conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
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can be patentably significant (see Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016) and Ancora Technologies, Inc. v. HTC America, Inc.,
908 F.3d 1343 (Fed. Cir. 2018)), here the instant record does not sufficiently
support the view that said steps have any non-conventional effect on the
generic computer or “computing system” implementing the method. To the
contrary, the record supports viewing the phrase “computer-implemented”
and the recitation of “collecting, by a computing system” as amounting to a
mere instruction to implement the recited information-processing scheme on
a generic computer. Cf. Alice, 573 U.S. at 225–26 (“Instead, the claims at
issue amount to ‘nothing significantly more’ than an instruction to apply the
abstract idea of intermediated settlement using some unspecified, generic
computer.”).
Looking at the steps themselves, their combination describes
information-gathering in support of evaluating a viral promotion scheme;
that is, by “storing,” “storing,” “receiving,” “creating,” “maintaining,”
“receiving,” “sending,” “receiving,” “collecting,” “aggregating,” and
“sending” information as claimed, an organization can be provided with
information describing viral promotion of the organization due to presence
of the organization on the social networking system.
Accordingly, we reasonably broadly construe claim 1 as being
directed to gathering information describing viral promotion of an
organization implemented on a generic computer system.

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The Abstract Idea8
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.9 This is consistent with the
Examiner’s view. See Final Act. at 2–4. Based on our claim construction
analysis (above), we determine that the identified limitations describe a
process of gathering information describing viral promotion of an
organization due to the presence of the organization on a social networking
system. Gathering information describing viral promotion of an
organization due to the presence of the organization on a social networking
system is a type of marketing activity as well as a method of “managing
personal behavior or relationships or interactions between people,” and as
such is a method of organizing human activity.10 See 2019 Revised 101

8 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. 2019 Revised 101 Guidance, 84 Fed. Reg. at 53. Step 2A is
two prong inquiry.

9 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the
claim under examination (individually or in combination) that the Examiner
believes recites an abstract idea . . . .” 2019 Revised 101 Guidance, 84 Fed.
Reg. at 54.

10 Because we determine that claim 1 recites a method of organizing human
activity, we need not address the Examiner’s determination that the claims
also involve “mathematical calculations” (Final Act. 3) or the Appellant’s
corresponding arguments that the claims are not directed to mathematical
algorithms (App. Br. 14).
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Guidance, 84 Fed. Reg. at 52. Accordingly, it is an abstract idea.11 Cf.
Morsa v. Facebook, Inc., 77 F.Supp.3d 1007 (CD. Cal. 2014), aff'd, 622 F.
App’x (Mem) (Fed. Cir. 2015) (“claims here are drawn to two abstract ideas:
targeting advertisements to certain consumers, and using a bidding system to
determine when and how advertisements will be displayed”). Claim 1
involves gathering specific types of information (e.g., statistical information)
but “collecting information, including when limited to particular content
(which does not change its character as information), [is] within the realm of
abstract ideas.” Elec. Power Grp., LLC, 830 F.3d at 1353; see also Content
Extraction, 776 F.3d at 1347. The remaining (i.e., not italicized) limitations
do no more than call upon a generic computer system (i.e., “a computing
system”) to be used as a tool to perform this abstract idea.

11 This corresponds to Prong One (“Evaluate Whether the Claim Recites a
Judicial Exception”) (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section I of the
[2019 Revised 101 Guidance].” 2019 Revised 101 Guidance, 84 Fed. Reg.
at 54. This case implicates subject matter grouping “(b)”: “(b) Certain
methods of organizing human activity—fundamental economic principles or
practices (including hedging, insurance, mitigating risk); commercial or
legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions).” Id. at 52 (emphasis omitted).

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Improvement to Technology/Technical Field12 (Appellant’s Argument)
The Appellant contends that “[t]he claims are not directed to an
abstract idea because the abstract ideas in Cyberfone, Content Extraction,
FairWarning, Classen, [and] Electric Power Group, . . . as cited by the
Office Action do not properly compare to the claims of the current
application.” App. Br. 7. The Appellant argues that each of these five cases
is distinguishable from the claims before us. For example, the Appellant
argues that the claims are not similar to the claims in Cyberfone because the
claims here are
tightly coupled with the background social networking technology
described in the claims” and recite a “very specifically claimed
process, which describes exactly what type of data is to be collected,
allows organizations to understand the impact their organizational
profile has in the social network on an individual user basis,
something that would not have been possible in a traditional analogue
(e.g., a billboard ad in which people who view the billboard are
completely anonymous).

12 This corresponds to Prong Two (“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”) of Step 2A of the 2019 Revised 101 Guidance. 2019
Revised 101 Guidance, 84 Fed. Reg. at 54. “A claim that integrates a
judicial exception into a practical application will apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Id. One consideration, implicated
here, that is “indicative that an additional element (or combination of
elements)[] may have integrated the exception into a practical application”
(id. at 55) is if “[a]n additional element reflects an improvement in the
functioning of a computer, or an improvement to other technology or
technical field” (id.).

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Id. at 8. See also id. at 10 (arguing that the claims “recite very specific
processes for how to train an optimizer for use in a user model, among other
specific limitations in the claims”); id. at 11 (arguing that the claims in this
case “recite to specific member and organizational profile data structures,
and recite to a specific usage and application of the ‘newsfeed stories’ data
structure (i.e., aggregating the collected statistical information regarding ‘a
number of newsfeed stories provided by the social networking system
describing the first organizational profile to member profiles ...’)”); id. at 12
(arguing that the claims in this case “recite specific and tangible (i.e., clear
and definite) application of particular type of data structure (newsfeed
stories) in a social networking system”); id. at 14 (arguing that “claim 1
recites in detail exactly what type of data is to be aggregated, and further
recites specific data structures which would only exist in a social networking
system and have no human analogue” and that the claims in this case “recite
specific data that is sent in response to a request”).
The features argued by the Appellant simply narrow the abstract idea
to particular information. For example, collecting information in “newsfeed
stores” further limits the type of information collected, but only as to
content.13 It does not, however, render the abstract idea any less abstract.
Cf. SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)

13 We note that the Specification indicates that newsfeed stories themselves
are messages containing a particular type of information. See Spec. para. 45
(“The newsfeed generator 670 generates messages for each member about
information that may be relevant to the member, based on actions stored in
the action log 275. These messages are called ‘stories’; each story is an [sic]
message comprising one or a few lines of information based on one more
actions in the action log that are relevant to the particular member.”).
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(“Contrary to InvestPic’s suggestion, it does not matter to this conclusion
whether the information here is information about real investments. As many
cases make clear, 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.”) (quoting Elec.
Power Grp., 830 F.3d at 1355 (citing cases)). The Appellant refers to
specific “data structures,” but the Appellant does not point to any improved
data structure in the claims or in the Specification. For example, the
Appellant does not assert that the claimed “member profile,” “organizational
profile,” or “newsfeed stories” are stored in any unconventional data
structure that improves the functioning of any computer. Cf. Enfish, 822
F.3d at 1339 (“the self-referential table recited in the claims on appeal is a
specific type of data structure designed to improve the way a computer
stores and retrieves data in memory.”)
We also cannot agree with the Appellant’s contention that the claims
before us are similar to the claims held eligible in McRO, Inc. v. Bandai
Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016). See App. Br.
16–17; Reply Br. 6–7. The claims in McRO were directed to an
improvement to computer technology – namely, the display of “lip
synchronization and facial expressions” of animated characters. McRO,
837 F.3d at 1313. The claimed improvement was to how the computer
operated to produce better quality synchronized images. Here, the claimed
improvement relates to collecting and analyzing information in support of
identifying information describing a viral promotion of an organization due
to presence of the organization on a social networking system, and not any
improved way of storing or collecting information.
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We have reviewed the record but have been unable to find any
discussion of an improvement in a technical field or technology. The
Specification states that a problem addressed by the invention is that
“existing social networks do not allow organizations to interact with
members of the social network, where those organizations can have
connections with members of the social network.” Spec. para. 4. The
Specification then discloses that “[e]mbodiments of the invention enable an
organization to exist in a social network and act in the social network in a
manner that is tailored to the specialized needs of an organization.” Id.
para. 5. Thereafter the Specification discloses maintaining various
information related to a social network. Id. paras. 6–8. And, the
Specification discloses that “incorporating organizations into the social
network increases the likelihood that a member’s friends in the social
network will be exposed to the organization and will create a connection
with the organization” which “may contribute to viral growth of the
connections between the organization and members of the social network.”
Id. para. 9. But, there is no discussion that said maintaining of information
is an improvement in information storage or retrieval. Nowhere does the
Specification provide any details of any improved data structure for storing
said information. Instead, the Specification merely lists various attributes
that may be stored in generic data structures. For example, in the case where
an organization is a restaurant, the Specification discloses that “the attributes
used to describe a restaurant includ[e] cuisine, and take-out, etc.” Id.
para. 34. See also, id. para. 49 (“the member profile store 640 contains data
structures with fields suitable for describing a person’s profile and the
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organization profile store 645 contains data structures with fields suitable for
describing an organization’s profile.”).
As to the argument that the claims recite “how to train an optimizer
for use in a user model” (App. Br. 10), we do not see any “optimizer” or
“training” limitation in claim 1, and the Appellant’s argument in that regard
is unpersuasive at least because it is not commensurate with what is claimed.
Specific asserted improvements over prior technology, when claimed,
can render claimed subject matter not directed to an abstract idea. Cf.
McRO, 837 F.3d at 1316 (“When looked at as a whole, claim 1 is directed to
a patentable, technological improvement over the existing, manual 3–D
animation techniques.”). See also MPEP § 2106.05(a) (“Improvements to
the Functioning of a Computer or To Any Other Technology or Technical
Field.”) and Alice, 573 U.S. at 225. (“The method claims do not, for
example, purport to improve the functioning of the computer itself. See ibid.
(‘There is no specific or limiting recitation of . . . improved computer
technology . . .’); Brief for United States as Amicus Curiae 28–30. Nor do
they effect an improvement in any other technology or technical field. See,
e.g., Diehr, 450 U.S., at 177–78.”). However, there is insufficient evidence
in the record before us that the claimed subject matter reflects an asserted
improvement over prior technology.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.’” Affinity Labs
of Texas v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., 830 F.3d at 1353 ); see also Enfish, 822 F.3d at 1335; see
also Ancora, 908 F.3d at 1347:
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We examine the patent’s “‘claimed advance’ to determine
whether the claims are directed to an abstract idea.” Finjan, Inc.
v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018).”)
“In cases involving software innovations, this inquiry often turns
on whether the claims focus on ‘the specific asserted
improvement in computer capabilities . . . or, instead, on a
process that qualifies as an “abstract idea” for which computers
are invoked merely as a tool.’’’ Id. (quoting Enfish, 822 F.3d
at 1335–36); see BSG Tech LLC v. Buyseasons, Inc., 899 F.3d
1281, 1285–86 (Fed. Cir. 2018). Computers are improved not
only through changes in hardware; “[s]oftware can make non-
abstract improvements to computer technology . . . .” Enfish,
822 F.3d at 1335. See Finjan, 879 F.3d at 1304. We have several
times held claims to pass muster under Alice step one when
sufficiently focused on such improvements.
As we pointed out above in our Claim Construction analysis, the
claimed invention lies in gathering information, not the “computing system”
which, as the Specification shows, is merely generic. It is the particular
information collected which appears to be the advance. Cf. Intellectual
Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017)
(“[T]he heart of the claimed invention lies in creating and using an index to
search for and retrieve data . . . an abstract concept . . . .”).
On pages 4–6 of the Reply Brief, in response to the Examiner’s
citation of Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016) (Ans. 6), the Appellant argues that claim 1 is
distinguishable from that case because “claim 1 recites multiple computer
and physical device limitations, such as ‘storing’ of data, including the
member profiles, receiving messages via the social networking system (i.e.,
over a network), collecting ‘by a computing system’ statistical information,
and so on.” Reply Br. 5. Yet, claim 1 does not specify any physical device
that performs the “storing” functions. Nor does claim 1 recite any network.
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As such, the Appellant’s arguments are unpersuasive at least because they
are not commensurate with the scope of the claim. Moreover, Appellant has
not adequately explained how storing data member profiles on an
unspecified storage device, receiving messages via some unspecified
communications medium, and collecting statistical information by a generic
“computing system” amounts to an improvement to computers. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That
a computer receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).
We have carefully reviewed the Specification but can find no
disclosure of an improvement over prior technology. Rather than being
directed to any specific asserted improvement over prior technology, the
record supports the view that the claimed subject matter is directed to
gathering and analyzing information in support of identifying information
describing a viral promotion of an organization due to presence of the
organization on a social networking system.14
We have considered all the Appellant’s arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.

14 See the 2019 Revised 101 Guidance, 84 Fed. Reg. at 55 (“The courts have
also identified examples in which a judicial exception has not been
integrated into a practical application: An additional element merely recites
the words ‘apply it’ (or an equivalent) with the judicial exception, or merely
includes instructions to implement an abstract idea on a computer, or merely
uses a computer as a tool to perform an abstract idea.”).
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Alice step two – Does the Claim Provide an Inventive Concept?15
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–218 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined the following:
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the additional elements or combination of
elements in the independent claims are recitation of generic
computer structure (i.e. a processor to execute instructions to
perform the method), which serves to perform generic computer
functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry, and do not
add a meaningful limitation to the abstract idea because they
would be routine in any computer implementation. The
limitations of storing a member profile; storing an organizational
profile; sending information are well-known, routine and
conventional practices that require no more than a generic
computer to perform generic computer functions. Generic
processors/computing systems routinely provide data access by
displaying the data. These are well-known, routine and
conventional practices that require no more than a generic
computer to perform generic computer functions.
Furthermore, claims 1–5, 8–14, 17–30 have been fully
analyzed to determine whether there are additional limitations

15 This corresponds to Step 2B of the 2019 Revised 101 Guidance, 84 Fed.
Reg. at 56 (“[I]f a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then evaluate the
additional elements individually and in combination under Step 2B to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception
itself).”).
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recited that amount to significantly more than the abstract idea.
The claims recite additional limitations of “a social network;
storing, by the computer (Claim 19); collecting, by a computing
system (claim 1, 19); receiving messages posted by members via
the social networking system” However, the additional
limitations are simply generic computer (i.e. processor, social
network system, network) functionality, claimed to perform the
basic computer functions of: obtaining data, processing data,
and transmitting data - through the program that enables the
steps of the claimed invention (Specification [0040]). Taking the
additional claimed elements individually and in combination, the
computer components at each step of the process perform purely
generic computer functions. Viewed as a whole, the claims do
not purport to improve the functioning of the computer itself, or
to improve any other technology or technical field. Use of an
unspecified, generic computer does not transform an abstract
idea into a patent-eligible invention. Thus, the claim does not
amount to significantly more than the abstract idea itself. Further,
claims to a system and computer-readable storage medium are
held ineligible for the same reason, e.g., the generically-recited
computers add nothing of substance to the underlying abstract
idea.
Final Act. 3–4.
We agree with the Examiner’s analysis and determination.
The Appellant cites BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 18–20) as matching
this case. We disagree. Unlike in BASCOM, here no improvement in
computer functionality has been shown. See BASCOM, 827 F.3d at 1351
(“[T]he claims may be read to ‘improve[ ] an existing technological
process.’”). Emphasis added.
The Appellant argues that “under the analysis in BASCOM, even if the
elements in claims of the current application were deemed to be known
and/or conventional, the non-conventional and non-generic arrangement of
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the elements in the claims of the current application signifies that the claims
provide an inventive concept.” App. Br. 18.
The difficulty with this argument is that we can find no basis for it in
the claim or the Specification. Claim 1 does not specify any arrangement of
the claimed “computing system.” “Many of appellant’s arguments fail from
the outset because, . . . they are not based on limitations appearing in the
claims . . . .” In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Nowhere in the
record is there any suggestion that the arrangement of the claimed
“computing system” is non-conventional and non-generic as the Appellant
argues. The argument is not commensurate in scope with what is claimed
and, because the record does not reflect it, amounts to mere attorney
argument. Attorney argument, however, cannot take the place of record
evidence. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); Johnston
v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
The Appellant further argues that the allegedly inventive concept is
supplied by “aggregating specifically enumerated information about
transmitted data (e.g., newsfeed stories) in order to determine for an
organization an impact, or response, for that organization by having its
profile within the social networking system.” App. Br. 20. According to the
Appellant, “[t]he improvement allows organizations to submit an
organizational profile within a social networking system and subsequently
determine, based on numbers of newsfeed stories provided to members
indirectly connected to the organization’s profile, the viral promotion of the
organization’s profile.” Id.
As to the claimed recitation of “specifically enumerated information,”
we have explained above that claim limitations that merely specify a
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particular type or content of information do not render the claim any less
abstract. See SAP Am., 898 F.3d at 1167. And, although allowing an
organization to determine “the viral promotion of the organization’s profile”
on a social network may amount to a business or marketing improvement, it
is not an improvement to any computing system.
We have reviewed the Specification and, as explained above, we can
find no suggestion of any improvements to a computing system as a result of
performing the recited steps. The Specification conveys that the Appellant’s
invention is focused on gathering information, not on the “computing
system,” individually or in the combination as claimed. Rather than
focusing on the “computing system,” the Specification focuses on the
content of information collected, the “computing system” being merely a
conduit for performing said information collection. Cf. In re TLI Commc’ns
LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (“Put differently, the
telephone unit itself is merely a conduit for the abstract idea of classifying an
image and storing the image based on its classification. Indeed, the
[S]pecification notes that it ‘is known’ that ‘cellular telephones may be
utilized for image transmission,’ id. at col. 1 ll. 31–34, and existing
telephone systems could transmit pictures, audio, and motion pictures and
also had ‘graphical annotation capability,’ id. at col. 1 ll. 52–59.”).
As discussed above, the Specification evidences the conventionality
of the claimed “computing system,” structurally and functionally,
individually and in combination. See, e.g., Spec. para. 41 (“social
networking website 200 comprises a computing system that allows members
to communicate or otherwise interact with each other and access content as
described herein.”); id. para. 84 (“Embodiments of the invention may also
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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.”). Much like
the “data storage unit” and “computer, coupled to said storage unit” in the
claims of Alice (US Patent 7,149,720, claim 1), “the claims here do [not do]
more than simply instruct the practitioner to implement the abstract idea
[. . .] on a generic computer.” Alice, 573 U.S. at 225. For the reasons
discussed above, we are unpersuaded that the record supports interpreting
the steps recited in the claim as yielding any improvement in technology as
the Appellant has argued.
The Appellant further argues that the method of claim 1 “does not
have a human analogue.” App. Br. 20. But that alone does not confer
patentability. Cf. FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1098 (Fed. Cir. 2016) (“the inability for the human mind to perform
each claim step does not alone confer patentability. As we have explained,
‘the 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.’” (citation omitted)).
The Appellant further argues that the method of claim 1 “has not been
performed before in prior art.” App. Br. 20.
Claim limitations found to be novel and/or nonobvious can affect a
patent-eligibility determination. Cf. Ariosa Diagnostics, Inc., v. Sequenom,
Inc., 788 F.3d 1371 (Fed. Cir. 2015) (“For process claims that encompass
natural phenomenon, the process steps are the additional features that must
be new and useful.”). Thus, novelty is a factor to be considered when
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determining “whether the claims contain an ‘inventive concept’ to
‘transform’ the claimed abstract idea into patent-eligible subject matter.”
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
“[N]ovelty in implementation of the idea is a factor to be considered only in
the second step of the Alice analysis.” Id.
However, a finding of novelty or nonobviousness does not necessarily
lead to the conclusion that subject matter is patentable eligible.
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013).
Indeed, “[t]he ‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v.
Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added); see also
Mayo, 132 S. Ct. at 1303–04 (rejecting “the Government’s
invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”). Here, the jury’s general
finding that Symantec did not prove by clear and convincing
evidence that three particular prior art references do not disclose
all the limitations of or render obvious the asserted claims does
not resolve the question of whether the claims embody an
inventive concept at the second step of Mayo/Alice.
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016).
Nor does a finding of obviousness necessarily lead to the conclusion
that subject matter is patentable ineligible. See also Rapid Litig. Mgmt. Ltd.
v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016) (“That each of the
claims' individual steps (freezing, thawing, and separating) were known
independently in the art does not make the claim unpatentable.”) “[P]atent-
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eligibility does not turn on ease of execution or obviousness of application.
Those are questions that are examined under separate provisions of the
Patent Act.” Id. at 1052 (citing Mayo, 566 U.S. at 90.
Notwithstanding that ‘“the § 101 patent-eligibility inquiry and, say,
the § 102 novelty inquiry might sometimes overlap,’ [ ] a claim for a new
abstract idea is still an abstract idea.” Synopsys, 839 F.3d at 1151 (quoting
Mayo, 566 U.S. at 90). The question in step two of the Alice framework is
not whether an additional feature is novel but whether the implementation of
the abstract idea involves “more than the performance of ‘well-understood,
routine, [and] conventional activities previously known to the industry.’”
Content Extraction, 776 F.3d at 1347–48 (quoting Alice, 573 U.S. at 225).
In that regard, the Appellant has not shown novel features that
transform the abstract idea into patent-eligible subject matter. The Appellant
does not persuasively explain what features in the claim would render the
subject matter significantly more than the information-gathering in support
of evaluating a viral promotion scheme we have determined the claim to be
directed to. At most, the claimed scheme uses “a computing system” but, as
we have discussed, that alone adds little to transform the abstract idea into
an inventive concept. Accordingly, this argument is unpersuasive.
The Appellant further argues that “the Examiner has simply provided
conclusory statements” and that the Appellant “cannot properly respond and
is unable to determine what actions, if any, need to be taken.” App. Br. 21.
We disagree. The rejection is four pages long written with extensive detail to
fully inform the Appellant of the Examiner’s position. The Appellant
responded with 16 pages of rebuttal reflecting an understanding of the
Examiner’s position. The record shows that the rejection did not fail to
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comply with the notice requirement of 35 U.S.C. § 132 — the standard by
which the sufficiency of the Examiner’s rejection is properly assessed.
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (holding that the
USPTO carries its procedural burden of establishing a prima facie case when
its rejection satisfies the requirements of 35 U.S.C. § 132); Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990) (“Section 132 is violated when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.”).
Citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), the
Appellant further argues that “the Examiner has also erred by stating that no
factual inquiry is required in the formation of a rejection under § 101.” App.
Br. 21.
We cited the Specification in our discussion as intrinsic evidence that
the claimed element “computing system” is conventional. In doing so, we
have followed “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP Inc.,” USPTO Memorandum, Robert W. Bahr, Deputy Commissioner
For Patent Examination Policy, April 19, 2018 (the “Berkheimer Memo”)).
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.”’)). But, the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
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law.” Id. at 1368 (emphasis added). This qualification has been
subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires that
summary judgment be denied. In Berkheimer, there was such a
genuine dispute for claims 4–7, but not for claims 1–3 and 9 . . . .
[I]n accordance with Alice, we have repeatedly recognized the
absence of a genuine dispute as to eligibility for the many claims
that 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, 1371–74 (Fed. Cir. 2018) (Moore, J.,
concurring in denial of petition for rehearing en banc Here, the Appellant
has not specifically disputed any particular finding by the Examiner that any
particular limitation is “well-understood, routine, and conventional.” And,
as discussed above, the Specification indisputably shows the claimed
“computing system” covers a generic computer system that was
conventional at the time of filing. Accordingly, no genuine issue of material
fact exists as to the well-understood, routine, or conventional nature of the
claimed “computing system,” individually or in the combination as claimed.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellant’s remaining arguments and
find them unpersuasive. Accordingly, because we are not persuaded as to
error in the determinations that representative claim 1, and claims 2–5, 8–14,
and 17–30, which fall with claim 1, are directed to an abstract idea and do
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not present an “inventive concept,” we sustain the Examiner’s rejection as
being judicially-excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v.
Zillow, Inc., 656 F. App’x 991, 997 (Fed. Cir. 2016) (“We have considered
all of LendingTree’s remaining arguments and have found them
unpersuasive. Accordingly, because the asserted claims of the patents in suit
are directed to an abstract idea and do not present an ‘inventive concept,’ we
hold that they are directed to ineligible subject matter under 35 U.S.C. §
101.”); see, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364
(Fed. Cir. 2015); FairWarning, 839 F.3d at 1098.
The rejection of claims 1, 12, 19, 25–27, 29, and 30 under 35 U.S.C.
§ 103(a) as being unpatentable over Buyukkokten, Holberg, Mann, and
Kaushansky.
The Appellant argues these claims as a group. See App. Br. 22–27.
We select claim 1 as the representative claim for this group, and the
remaining claims 12, 19, 25–27, 29, and 30 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(iv).
The Appellant argues that:
While paragraphs 53–54 of Mann disclose that “Users
can track the number of times a specific brand, product or
competitor (brand and/or product) is mentioned in user
community posts” (emphasis added), Mann does not disclose
collecting of “a number of newsfeed stories provided by the
social networking system describing the first organization
profile to member profiles indirectly connected to the first
organization profile via another member profile . . .” as recited
in currently amended claim 1. Thus, Mann does not teach this
limitation of claim 1.
Note that the distinction between “user community posts”
and “newsfeed stories” is not simply a matter of a different type
of data. The “user community posts” of Mann are posted by
users, as plainly stated. However, the “newsfeed stories” of the
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currently amended claims are provided by the social networking
system instead (“sending newsfeed stories . . .”). Furthermore,
these newsfeed stories are presented to the user in the user’s
newsfeed, rather than being searchable in a discussion group as
described in Mann, and are limited to users that are connected
to the organization. Thus, the effect of such newsfeed stories,
and thus their measurement, produces very different results.
Newsfeed stories about an organization, in contrast to user
community posts, are only shown to users connected to the
organization and are selected by the social networking system
based on rules rather than randomly posted by users. Thus, the
provisioning of the newsfeed stories may be significantly more
consistent than randomly posted user community posts, and the
collecting the number of newsfeed stories may measure the
virality or influence of the organization in the social network
much more accurately. Thus, the newsfeed stories are better
indicators of virality and are not simply swappable for the user
posts described in Mann.

App. Br. 23–24.
As we understand it, the argument is that the claimed statistical
information is distinguished from that of Mann in that the “newsfeed stories”
of claim 1 are provided by the social networking system (instead of being
posted by users) and presented to the user in the user’s newsfeed (rather than
being searchable in a discussion group).
However, there is insufficient evidence showing that the claim 1 step
of “collecting, by a computing system, statistical information . . . the
statistical information comprising: a number of newsfeed stories . . .” is
functionally affected by the newsfeed stories being “provided by the social
networking system describing the first organization profile to member
profiles indirectly connected to the first organization profile via another
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member profile” (claim 1), rather than being posted by users as the
Appellant concedes Mann already discloses.
As for the Appellant’s argument that “the newsfeed stories are better
indicators of virality,” we note that claim 1 does not require determining
virality, and thus the argument is unpersuasive at least because it is not
commensurate with the scope of the claim.
Claim 1 calls for “statistical information comprising” a specified
content, namely “a number of newsfeed stories . . . .” Based on this, we do
not see any patentable distinction between statistical information comprising
a number of newsfeed stories and Mann’s statistical information comprising
a number of user community posts, except that the claimed content of the
“statistical information” comprises “a number of newsfeed stories”
(claim 1). However, there is insufficient evidence that the specified content
functionally affects the method; that is, gathering information via a generic
computer system.
Given said lack of sufficient evidence, it is thus reasonable to
characterize said claimed content of said “statistical information” as
nonfunctional descriptive material; that is, akin to printed matter. Just as
printed matter is not given patentable weight, similarly the content of the
“statistical information” (claim 1) claim limitations, as a distinction over
Mann’s statistical information, is not patentably consequential. “[N]on-
functional descriptive material, being useful and intelligible only to the
human mind, is given no patentable weight.” Ex parte Graf, Appeal 2012-
003941, 2013 WL 3873066, at *4 (PTAB July 23, 2013) (non-precedential),
aff’d, In re Graf, 585 F. App’x 1012 (Fed. Cir. 2014) (non-precedential); cf.
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In re DiStefano, 808 F.3d 845 (Fed. Cir. 2015); as explained in In re Xiao,
462 F. App’x 947, 950–52 (Fed. Cir. 2011) (non-precedential):
[T]he Board did not create a new “mental distinctions” rule in
denying patentable weight . . . . On the contrary, the Board
simply expressed the above-described functional relationship
standard in an alternative formulation—consistent with our
precedents—when it concluded that any given position label’s
function . . . is a distinction “discernable only to the human
mind.” Board Decision at 6; see In re Lowry, 32 F.3d 1579,
1583 (Fed. Cir. 1994) (describing printed matter as “useful and
intelligible only to the human mind.”) (quoting In re Bernhart,
417 F.2d 1395, 1399 (CCPA 1969)).
“The rationale behind this line of cases is preventing the indefinite patenting
of known products by the simple inclusion of novel, yet functionally
unrelated limitations.” King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1279 (Fed. Cir. 2010).
Accordingly, the argument that the claimed statistical information
distinguishes from that of Mann in that it comprises “a number of newsfeed
stories” (claim 1) is unpersuasive as to error in the rejection.
To the extent that the Appellant argues that Mann does not disclose
the claimed “collecting,” we note that the Examiner finds the claimed
“collecting” in Buyukkokten, not in Mann. See Final Act. 9 (“Buyukkokten
teaches collecting, by a computing system, statistical information . . .”); see
also id. at 11. And, to the extent that the Appellant argues that Mann does
not disclose “sending newsfeed stories,” we note that the Examiner finds the
claimed “sending newsfeed stories” in Holberg, not in Mann. Id. at 8.
The Appellant further argues that “Mann is directed to a completely
different goal and thus not only teaches away from the current claims, but
also the combination proposed in the Office Action renders Mann
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unsatisfactory for its intended purpose.” App. Br. 26. According to the
Appellant, “[t]he goal of the system disclosed in Mann is to connect ‘users
with relevant information about products or services . . .’” whereas “the
claimed invention concerns ‘information describing viral promotion of the
first organization due to the presence of the first organization on the social
networking system.’” Id. The Appellant contends that the claimed
“newsfeed stories represent content generated by the social networking
system” and that “[t]his is distinct from the system disclosed in Mann that
concerns content generated by the users.” Id.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Here, rather than discouraging measuring content generated by a
social networking system, Mann is simply disclosing measuring content
generated by users. Accordingly, Mann does not lead one of ordinary skill
in the art away from collecting or sending “information describing viral
promotion” as the Appellant argues. Cf. In re Gurley, 27 F.3d at 553 (“A
known or obvious composition does not become patentable simply because
it has been described as somewhat inferior to some other product for the
same use.”). See also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“The prior art’s mere disclosure of more than one alternative does not
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constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed in the . . . application.”)
The Appellant contends that “user generated conversations would not
provide a measure of viral promotion of an organization by the social
networking systems” because “[u]ser conversations may be generated in
response to advertisements that the organization is paying for.” App. Br. 26.
Therefore, according to the Appellant, “the combination would render Mann
unsatisfactory for its intended purpose or goal.” Id.
As a preliminary matter, we see nothing in claim 1 that excludes
conversations generated in response to advertisements from the scope of
“information describing viral promotion,” and the Appellant’s argument in
that regard is unpersuasive at least because it is not commensurate with the
scope of the claim. Moreover, the Appellant does not cite any evidence that
the proposed combination would render Mann unsatisfactory for its intended
purpose, would require substantial redesign of Mann, or would change
Mann’s basic operating principle. Cf. In re Ratti, 270 F.2d 810, 981 (CCPA
1959) (reversing rejection where proposed combination “would require
substantial reconstruction and redesign of the elements shown in Chinnery et
al. [the primary prior art reference] as well as a change in the basic
principles under which the Chinnery et al. construction was designed to
operate”). The Appellant’s unsupported attorney argument cannot take the
place of record evidence. See In re Geisler, 116 F.3d at 1470.
The Appellant’s arguments having been fully considered and found,
for the foregoing reasons, unpersuasive as to error in the rejection, the
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rejection as to claim 1 is sustained. For the same reasons, the rejection of
claims 12, 19, 25–27, 29, and 30, which fall with claim 1, is also sustained.
The rejection of claims 2, 3, 8, and 13 under 35 U.S.C. § 103(a) as being
unpatentable over Buyukkokten, Holberg, Mann, Kaushansky, and
Abhyanker.
The rejection of claims 4, 5, 11, 14, 18, 20, 21, 24, and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Buyukkokten, Holberg, Mann,
Kaushansky, and Eager.
The rejection of claims 9, 17, and 22 under 35 U.S.C. § 103(a) as being
unpatentable over Buyukkokten, Holberg, Mann, Kaushansky, and DiRienzo.
The rejection of claims 10 and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Buyukkokten, Holberg, Mann, Kaushansky, DiRienzo, and
Cohn.
The Appellant does not separately argue the rejection of dependent
claims 2–5, 8–11, 13, 14, 17, 18, 20–24, and 28 apart from the arguments
presented for independent claim 1. See App. Br. 27. Therefore, we sustain
the rejection of claims 2–5, 8–11, 13, 14, 17, 18, 20–24, and 28 for the
reasons discussed above regarding independent claim 1.

CONCLUSION
In summary:
Claims
Rejected
Basis  Affirmed Reversed
1–5, 8–14, 17–30 § 101  1–5, 8–14,
17–30

1–5, 8–14, 17–30 § 103(a)  1–5, 8–14,
17–30

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Claims
Rejected
Basis  Affirmed Reversed
Overall Outcome 1–5, 8–14,
17–30

DECISION
The decision of the Examiner to reject claims 1–5, 8–14, and 17–30 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)(iv).

AFFIRMED