Facebook, Inc.

Patent Trials and Appeals Board

Jun 26, 2020

2019006622 (P.T.A.B. Jun. 26, 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.
14/731,565 06/05/2015 Anand Sumatilal Bhalgat 2006.045US1 1388
160546 7590 06/26/2020
Mannava & Kang, P. C.
3201 Jermantown Road
Suite 525
Fairfax, VA 22030
EXAMINER
TOKARCZYK, CHRISTOPHER B
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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):
docketing@mannavakang.com
fb-pdoc@fb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANAND SUMATILAL BHALGAT, SHUO LI, KE PAN,
JUSTIN PAUL PARRELLA and YI TANG
___________

Appeal 2019-006622
Application 14/731,565
Technology Center 3600
____________

Before CARL W. WHITEHEAD JR., DAVID J. CUTITTA II and
PHILLIP A. BENNETT, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Briefs (filed February 14, 2019;
March 18, 2019), the Reply Brief (filed September 9, 2019), the Final
Action (mailed July 27, 2018) and the Answer (mailed July 8, 2019), for the
respective details. The Appeal Brief filed March 18, 2019 only contains “a
substitute ‘Claims Appendix’ for the ‘Claims Appendix’ submitted on
February 14, 2019.” We also note the Appeal Briefs, as well as the Reply
Brief, do not include page numbers. For reference convenience, we
designate the cover pages of both the Appeal Brief filed February 14, 2019,
as well as the Reply Brief, as page 1, respectively, and number the pages
consecutively therefrom, including the Appendices.

Appeal 2019-006622
Application 14/731,565
2

Appellant2 is appealing the final rejection of claims 1–7, 10–15 and
18–20 under 35 U.S.C. § 134(a). Appeal Brief 5. Claims 1 and 13 are
independent. Claims 8, 9, 16 and 17 are cancelled. See Appeal Brief filed
March 18, 2019. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Introduction
According to Appellant, the invention is directed to “to social
networking systems, and in particular to presenting sponsored content items
to users of a social networking system.” Specification ¶ 1.
Claim 1 is reproduced below for reference (bracketed step lettering
added):
Representative Claim3
1. A method comprising:
[a] receiving one or more advertisement requests (“ad requests”) at a
social networking system, each ad request including a bid
amount and an advertisement;
[b] receiving a request from a client device of a user of the social
networking system to present a content feed to the user of the
social networking system, the content feed including one or

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Facebook, Inc. of Menlo Park, California, as
the real party in interest. Appeal Brief 2.
3 For the § 101 rejection, Appellant argues claims 1-7, 10-15 and 18-20 as a
group, focusing on subject matter common to independent claims 1 and 13.
See Appeal Brief 9. We select independent claim 1 as the representative
claim. See 37 C.F.R. § 41.37(c)(1)(iv).

Appeal 2019-006622
Application 14/731,565
3

more content items and one or more advertisements included in
one or more ad requests;
[c] retrieving, by the social networking system, prior interactions
made by the user to advertisements previously presented to the
user by the social networking system;
[d] determining a probability of the user performing each of two or
more types of interactions from a set of types of interactions
with an advertisement in a received ad request based at least in
part on the prior interactions by the user with the
advertisements and content items previously presented to the
user, each type of interaction of the set of types of interactions
being associated with a weight, at least one weight for a type of
interaction being different relative to another weight associated
with another type of interaction in the set of types of
interactions;
[e] determining a value for the received ad request based at least in
part on a weighted combination of the determined probability of
the user performing each of the two or more types of
interactions weighted by the weight associated with each type
of interaction, the determined value corresponding to an
expected amount of interaction by the user with the
advertisement included in the received ad request based at least
in part on the retrieved prior interactions;
[f] generating a score for the received ad request by combining the
determined value for the received ad request with the bid
amount included in the received ad request;
[g] including the received ad request and generated score for the
Appeal 2019-006622
Application 14/731,565
4

received ad request in a selection process configured to select
content for presentation to the user in the content feed by the
social networking system, the selection process ranking the
received ad request and the one or more content items into a
single ranking;
[h] generating a user interface for presentation on the client device of
the user to include the content selected in the selection process,
the selected content being ordered within a limited display
space in the user interface according to the single ranking; and
[i] sending the user interface for display on the client device to the
user.
References
Name4 Reference Date
Ferguson US 2012/0066069 A1 March 15, 2012
Cui US 2013/0339126 A1 December 19, 2013
Rejections on Appeal
Claims 1–7, 10–15 and 18–20 stand rejected under 35 U.S.C. § 112(a)
as failing to comply with the written description requirement. Final Action
2–3.
Claims 1–7, 10–15 and 18–20 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent–ineligible subject matter.
Final Action 3–8.
Claims 1–5, 10–15 and 18–20 stand rejected under 35 U.S.C.
§ 102(a)(1) as being anticipated by Cui. Final Action 8–19.

4 All reference citations are to the first named inventor only.

Appeal 2019-006622
Application 14/731,565
5

Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Cui and Ferguson. Final Action 19–21.
PRINCIPLES OF LAW
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
Appeal 2019-006622
Application 14/731,565
6

(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
Appeal 2019-006622
Application 14/731,565
7

B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019)
(“2019 Revised Guidance”).5 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
2019 Revised Guidance at 52–55.

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance at 54–55.
Appeal 2019-006622
Application 14/731,565
8

Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see Manual of
Patent Examining Procedure (MPEP) § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance at 52–56.
ANALYSIS
35 U.S.C. § 112 Written Description Rejection
The Examiner determines:
Claims 1 recites “determining a probability of the user
performing each of two or more types of interactions from a set
of types of interactions with an advertisement,” and claim 13
recites similar features. The specification at ¶ [0010]7, for
example, discloses that “probabilities of the user performing one
or more types of interactions from a set of types of interactions
with the sponsored content items based on interactions by the
user with sponsored content items previously presented to the
user” are determined. However, the specification does not
disclose or provide support for a probability that the user is
performing at least two interactions with the same ad.
Final Action 3 (emphasis added).

7 “In various embodiments, the social networking system retrieves prior
interactions between the user and sponsored content items previously
presented to the user and determines probabilities of the user performing one
or more types of interactions from a set of types of interactions with the
sponsored content items based on interactions by the user with sponsored
content items previously presented to the user.” Specification ¶10.
Appeal 2019-006622
Application 14/731,565
9

Appellant contends, “The rejection is based on the reasoning that this
limitation is claiming a joint probability of the user performing all of these
interactions” wherein “That is not the case. Instead, in this limitation the
claim is determining a probability that the user will perform each of these
interactions individually.” Appeal Brief 9 (citing Final Action 3).
As our reviewing court has explained:
Since its inception, this court has consistently held that §
112, first paragraph, contains a written description requirement
separate from enablement, and we have articulated a “fairly
uniform standard,” which we now affirm. Vas–Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1562–63 (Fed.Cir.1991).
Specifically, the description must “clearly allow persons of
ordinary skill in the art to recognize that [the inventor] invented
what is claimed.” Id. at 1563 (citing In re Gosteli, 872 F.2d 1008,
1012 (Fed.Cir.1989)). In other words, the test for sufficiency is
whether the disclosure of the application relied upon reasonably
conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date. Id.
(quoting Ralston Purina Co. v. Far–Mar–Co, Inc., 772 F.2d
1570, 1575 (Fed.Cir.1985)); see also In re Kaslow, 707 F.2d
1366, 1375 (Fed.Cir.1983).
Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010).
Appellant argues, “As further recited in this limitation, each of these
interaction types is associated with a weight that is then used, in the next
limitation, to determine a value for the ad request based on a ‘weighted
combination’ of each of these individual probabilities.” Appeal Brief 9–10
(citing Specification ¶51). The Specification discloses, “For example, the
social networking system 140 associates a larger weight with the user
sharing the advertisement with one or more additional users than a weight
associated with the user accessing the advertisement.” Specification ¶51.
Appeal 2019-006622
Application 14/731,565
10

We are not persuaded of error. The claim limitation at issue recites
“determining a probability of the user performing each of two or more types
of interactions from a set of types of interactions with an advertisement in a
received ad request based at least in part on the prior interactions by the user
with the advertisements and content items previously presented to the user.”
The Examiner interprets this limitation to mean that a probability is
determined which reflects the chances that the user performs both types of
interactions—a joint probability. See Final Action 3. Appellant contends
the limitation means that a separate probability is determined for each of the
two types of interactions. See Appeal Brief 9–10. We note that the
limitations does not recite computing a first probability of the user
performing a first type of interaction and a second probability of the user
performing a second type of interaction. We find such a recitation would
support Appellant’s proffered interpretation, and would be supported by the
Specification. However, as currently written, the claim is reasonably
understood as reciting the calculation of a single joint probability, as the
claim language recites “a probability” and does not clearly and explicitly
specify anything more than that.
Paragraph 51 discloses that a larger weight is given to one type of
interaction than another, however, there is nothing in paragraph 51 that
describes determining the overall probability that “the user perform[s] each
of two or more types of interactions” as recited in claims 1 and 13 and
therefore, we find Appellant’s Specification does not “reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., 598 F.3d at 1351;
Specification ¶51 (emphasis added).
Appeal 2019-006622
Application 14/731,565
11

We sustain the Examiner’s written description requirement rejection
of claims 1–7, 10–15 and 18–20.
35 U.S.C. § 101 Rejection
The Examiner determines claims 1–7, 10–15 and 18–20 are patent
ineligible under 35 U.S.C. § 101. See Final Action 3; see Alice, 573 U.S. at
217 (describing the two–step framework “for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts”).
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own. We add the following primarily for emphasis and clarification
with respect to the 2019 Revised Guidance.

Step 2A–Prongs 1 and 2 identified in the 2019 Revised Guidance
Prong One
The Examiner determines the limitations recited in claims 1 and 13
“describe abstract ideas that correspond to concepts identified as abstract
ideas by the courts as a ‘fundamental economic practice’-such as creating a
contractual relationship (buySAFE) and offer-based price optimization (OIP
Tech)-for the following reasons.” Final Rejection 4. Appellant
acknowledges, “the claims recite a method that involves the placement and
ordering of advertisements, which at that level of generality may arguably
fall within organizing human activity.” Appeal Brief 6.
The Specification discloses:
One or more advertisement requests (“ad requests”) are
included in the ad request store 230. An advertisement request
includes advertisement content, also referred to as an
“advertisement,” and a bid amount. The advertisement content
Appeal 2019-006622
Application 14/731,565
12

is text, image, audio, video, or any other suitable data presented
to a user. In various embodiments, the advertisement content
also includes a landing page specifying a network address to
which a user is directed when the advertisement is accessed. The
bid amount is associated with an ad request by an advertiser and
is used to determine an expected value, such as monetary
compensation, provided by an advertiser to the social networking
system 140 if advertisement content in the ad request is presented
to a user, if the advertisement content in the ad request receives
a user interaction when presented, or if any suitable cor1diticm
is satisfied when advertisement content in the ad request is
presented to a user. For example, the bid amount specifies a
monetary amount that the social networking system 140 receives
from the advertiser if the advertisement in an ad request is
displayed. In some embodiments, the expected value to the
social networking system 140 of presenting the advertisement in
an ad request may be determined by multiplying the bid amount
by a probability of the advertisement being accessed by a user.
Specification ¶32 (emphasis added).
Claim 1 recites receiving advertisement requests to include in the
content feed of a user of a social networking system wherein each request
includes a bid amount in limitations (a)-(b). Claim 1 further recites
determining a probability of the user performing types of interactions with
an advertisement based upon prior interactions in limitations (c)-(d).
Claim 1 recites determining a value for the received advertisement based
upon the probability of how and/or if the user interact with the advertisement
in limitation (e). Claim 1 further recites generating a score for the received
advertisement requests based upon the determined value and the bid amount
to be included in a selection process for content presented to the user in
limitations (f)-(g). Claim 1 also recites generating a user interface and
sending presentations to include selected content for display on the client
device to the user in limitations (h)-(i).
Appeal 2019-006622
Application 14/731,565
13

These steps comprise commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations); thus, the
claim recites the abstract idea of “certain methods of organizing human
activity.” See 2019 Revised Guidance, Section I (Groupings of Abstract
Ideas). Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. See Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715 (Fed Cir. 2014) (holding that claim “describe[ing]
only the abstract idea of showing an advertisement before delivering free
content” is patent ineligible); see also buySAFE, Inc. v. Google, Inc., 765
F.3d. 1350, 1355 (Fed. Cir. 2014) (holding that concept of “creating a
contractual
relationship—a ‘transaction performance guaranty’” is an abstract idea).
Therefore, we conclude the claims recite an abstract idea pursuant to Step
2A, Prong One of the 2019 Revised Guidance. See 2019 Revised Guidance,
Section III(A)(1) (Prong One: Evaluate Whether the Claim Recites a
Judicial Exception)).
Prong Two
Under Prong Two of the 2019 Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception.” 2019 Revised Guidance,
Section III(A)(2). It is noted that 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.” 2019 Revised Guidance, Section
III(A)(2).
Appeal 2019-006622
Application 14/731,565
14

We acknowledge some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See 2019 Revised Guidance at 55 nn. 25, 27–32.
Appellant argues, “To the extent that the claims recite a method that
involves advertising, the claims do much more than recite advertising in the
abstract and instead recite specific improvements that are [ ] practically
applied in a technical environment.” Appeal Brief 7. Appellant contends:
The additional elements of “determining a probability of the user
performing each of two or more types of interactions . . . based
at least in part on the prior interactions by the user with the
advertisements and content items previously presented to the
user” and “generating a user interface for presentation on the
client device of the user to include the content selected in the
selection process . . . ordered within a limited display space in
the user interface according to the single ranking” and where “the
selection process ranking the received ad request and the one or
more content items into a single ranking” integrate the claim into
a practical application.
Appeal Brief 8.
The Specification discloses:
The client devices 110 are one or more computing devices
capable of receiving user input as well as transmitting and/or
receiving data via the network 120. In one embodiment, a client
device 110 is a conventional computer system, such as a desktop
or a laptop computer. Alternatively, a client device 110 may be
a device having computer functionality, such as a personal digital
assistant (PDA), a mobile telephone, a smartphone or another
suitable device. A client device 110 is configured to
communicate via the network 120. In one embodiment, a client
device 110 executes an application allowing a user of the client
device 110 to interact with the social networking system 140.
For example, a client device 110 executes a browser application
Appeal 2019-006622
Application 14/731,565
15

to enable interaction between the client device 110 and the social
networking system 140 via the network 120. In another
embodiment, a client device 110 interacts with the social
networking system 140 through an application programming
interface (API) running on a native operating system of the client
device 110, such as IOS® or ANDROID™.
Specification ¶19.
In McRO8, the Federal Circuit concluded the claim, when considered
as a whole, was directed to a “technological improvement over the existing,
manual 3-D animation techniques” through the “use [of] limited rules . . .
specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, 837 F.3d at 1316. Specifically, the
Federal Circuit found the claimed rules allow computers to produce accurate
and realistic lip synchronization and facial expressions in animated
characters that previously could only be produced by human animators; and
the rules are limiting because they define morph weight sets as a function of
phoneme sub–sequences. McRO, 837 F.3d at 1313 (internal citations
omitted).
We find no evidence of record here that the present situation is like the
one in McRO where computers were previously unable to make certain
subjective determinations, i.e., regarding morph weight and phoneme
timings, which could only be made prior to the claimed invention by human
animators. See Appeal Brief 7; Specification ¶19. The Background section
of the McRO ‘576 patent includes a description of the admitted prior art
method and the shortcomings associated with that prior method. See McRO,

8 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1303 (Fed.
Cir. 2016).
Appeal 2019-006622
Application 14/731,565
16

837 F.3d at 1303–06. There is no comparable discussion in Appellant’s
Specification or elsewhere of record.
Additionally, we detect no additional element (or combination of
elements) recited in Appellant’s representative claim 1 that integrates the
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2). For example, Appellant’s claimed additional elements
(e.g., network, client device, user interface) do not: (1) improve the
functioning of a computer or other technology; (2) are not applied with any
particular machine (except for a generic computer device); (3) do not effect
a transformation of a particular article to a different state; and (4) are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellant argues the claimed subject matter is analogous to Example
379 “which states that a claim that organizes icons in a UI based on the
user’s past interactions with those icons is an improvement to a UI and is
thus a practical application.” Appeal Brief 8. Appellant contends, “the
method of claim 1 organizes a different type of user interface element (i.e.,
‘ad request and the one or more content items’ in a newsfeed) ‘based at least
in part on the prior interactions by the user with the advertisements and
content items previously presented to the user.’” Appeal Brief 8. We do not

9 Example 37 -- Relocation of Icons on a Graphical User Interface, Subject
Matter Eligibility Examples: Abstract Ideas, 1-5, available at
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf

Appeal 2019-006622
Application 14/731,565
17

find Appellant’s argument persuasive because the claimed subject matter is
distinguishable from the subject matter in Example 37. In Example 37, the
claimed subject matter was determined to be patent eligible because, “the
additional elements recite a specific manner of automatically displaying
icons to the user based on usage which provides a specific improvement
over prior systems, resulting in an improved interface for electronic
devices.” Claim 1 subject matter does not improve the functioning of a
device nor is it an improvement to a technology or a technical field. See
2019 Revised Guidance at 55; see also Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1084, 1090 (Fed. Cir. 2019) (“This invention makes the
trader faster and more efficient, not the computer. This is not a technical
solution to a technical problem.”). Further, as the Federal Circuit has
explained, a “claim for a new abstract idea is still an abstract idea.”
Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016). Even assuming the technique claimed was “[g]roundbreaking,
innovative, or even brilliant,” that would not be enough for the claimed
abstract idea to be patent eligible. See Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application)).

Step 2B identified in the 2019 Revised Guidance
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
Appeal 2019-006622
Application 14/731,565
18

providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
We find the claims do not include a specific limitation or a
combination of elements that amounts to significantly more than the judicial
exception itself. See Memorandum, Section III(B) (Step 2B: If the Claim Is
Directed to a Judicial Exception, Evaluate Whether the Claim Provides an
Inventive Concept).
Further, in BASCOM10, our reviewing court found that while the
claims of the patent were directed to an abstract idea, the patentee alleged an
“inventive concept can be found in the ordered combination of the claim
limitations that transform the abstract idea of filtering content into a
particular, practical application of that abstract idea.” BASCOM, 827 F.3d at
1352. In particular, the patent in BASCOM claimed “a technology-based
solution (not an abstract-idea-based solution implemented with generic
technical components in a conventional way) to filter content on the Internet
that overcomes existing problems with other Internet filtering systems.”
BASCOM at 1351. Claim 1 is distinguishable, as it recites an abstract-idea-
based solution, that is, a method of providing advertisement in a social
networking environment implemented with generic technical components
(e.g., network, client device, user interface), in a conventional way. See
generally Specification. Therefore, we are not persuaded that ordered
combinations of steps in representative claim 1 provide an inventive
concept. See 2019 Revised Guidance at 56.

10 Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341, (Fed. Cir. 2016).
Appeal 2019-006622
Application 14/731,565
19

Accordingly, we conclude claims 1–7, 10–15 and 18–20 are directed
to commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); thus, the claim recites the abstract idea of
“certain methods of organizing human activity” identified in the 2019
Revised Guidance; and thus, an abstract idea with the claims failing to recite
limitations that amount to significantly more than the abstract idea itself.
We sustain the Examiner’s § 101 rejection of claims 1–7, 10–15 and 18–20.
35 U.S.C. § 102 Rejection
Appellant argues, “In Cui, the advertiser pays the full price calculated
from the value of an impression and Cui is silent with respect to any portion
of the bid amount that is not paid for by the advertiser. See Cui, ¶[0054].”
Reply Brief 8. Appellant contends:
Thus, Cui does not disclose “determining a value for the received
ad request based at least in part on a weighted combination of the
determined probability of the user performing each of the two or
more types of interactions weighted by the weight associated
with each type of interaction, [where] the determined value
correspond[s] to an expected amount of interaction by the user
with the advertisement included in the received ad request based
at least in part on the retrieved prior interactions” nor “generating
a score for the received ad request by combining the determined
value for the received ad request with the bid amount included in
the received ad request,” as recited in claim 1.
Reply Brief 8.
Cui discloses in paragraph 54, the “value of an impression for a
creative may be calculated by summing up the contribution from all goals:
value = ∑𝑛𝑛𝑖𝑖=1 λia gi.” Cui defines the variables as:
λia is the response prediction of an action (click or conversion
depending on the goal type) for a creative for CPC [pay-per-
ckick] goal or conversion i for CPA [pay-per conversion] goal,
Appeal 2019-006622
Application 14/731,565
20

and g; is the goal amount of creative/conversion i. The cost of
an impression for a may be decided by its pricing type and bid
amount: cost=bid_amountx λa where λa is the probability of user
action (for CPM [pay per impression] and dCPM [dynamic
CPM] campaigns, λview= 1).
Cui ¶54 (emphasis added).
The Examiner finds:
Cui discloses determining a value (a value of each impression)
for the received ad request based at least in part on a weighted
combination (the summation) of the determined probability of
the user performing each of the two or more types of interactions
(response prediction λia) weighted by the weight (weights gi)
associated with each type of interaction.
Answer 8–9.
We find the Examiner’s finding problematic because Cui does not
disclose that λia is “a value for the received ad request based at least in part
on a weighted combination of the determined probability of the user
performing each of the two or more types of interactions weighted by the
weight associated with each type of interaction” as recited in claim 1
(emphasis added); see Cui ¶54. In an anticipation rejection, “it is not
enough that the prior art reference . . . includes multiple, distinct teachings
that [an ordinary] artisan might somehow combine to achieve the claimed
invention.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed.
Cir. 2008). Rather, the reference must “clearly and unequivocally disclose
the claimed [invention] or direct those skilled in the art to the [invention]
without any need for picking, choosing, and combining various disclosures
not directly related to each other by the teachings of the cited reference.”
Net MoneyIN, Inc., 545 F.3d at 1371 (quoting In re Arkley, 455 F.2d 586,
587 (CCPA 1972)). Thus, while “[s]uch picking and choosing may be
entirely proper in the making of a 103, obviousness rejection . . . it has no
Appeal 2019-006622
Application 14/731,565
21

place in the making of a 102, anticipation rejection.” Arkley, 455 F.2d at
587–88. Accordingly, we reverse the Examiner’s anticipation rejection of
independent claims 1 and 13, commensurate in scope, as well as, dependent
claims 2–5, 10–12, 14, 15, and 18–20.
35 U.S.C. § 103 Rejection
Appellant does not present arguments addressing the Examiner’s 35
U.S.C. § 103 rejection. See Appeal Brief 5–13; Reply Brief 2–9. We
summarily affirm the Examiner’s obviousness rejection of claims 6 and
7. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(“If an appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”)

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1-7, 10-15,
18-20
112 Written Description 1-7, 10-15,
18-20

1-7, 10-15,
18-20
101 Eligibility 1-7, 10-15,
18-20

1-5, 10-15,
18-20
102 Cui 1-5, 10-
15, 18-20
6, 7 103 Cui, Ferguson 6, 7
Overall
Outcome
1-7, 10-15,
18-20

Appeal 2019-006622
Application 14/731,565
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)(1). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED