Facebook, Inc.

Patent Trials and Appeals Board

Mar 27, 2020

13677062 - (D) (P.T.A.B. Mar. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/677,062 11/14/2012 Bikash Kumar Agarwalla 26295-22374 3397
87851 7590 03/27/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
PRATT, EHRIN LARMONT
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
03/27/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BIKASH KUMAR AGARWALLA, PRASHANT FULORIA,
RESHMA KHILNANI EBBERSON, and GUY ROM
Appeal 2019-003286
Application 13/677,062
Technology Center 3600
Before CAROLYN D. THOMAS, PHILLIP A. BENNETT, and
IFTIKHAR AHMED, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6–9, and 13–22. Appeal Br. 1.2
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Facebook, Inc. Appeal Br. 2.
2 We note Appellant failed to include page numbing in both the Appeal Brief
and Reply Brief. As such, our citations to these documents reference them
as though the pages were numbered with the first page as page 1.
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CLAIMED SUBJECT MATTER
The claims are directed to identity-based subscription management.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A computer implemented method comprising:
maintaining, by a social networking system, subscriptions
for users of the social networking system to receive offerings
from one or more service providers and operational context
information for each of the users describing how a respective
user accesses the social networking system and an overall
communication environment associated with the accessing of the
social networking system, the overall communication
environment including a bandwidth of a connection between a
user device associated with the respective user and the social
networking system, wherein the offerings are selected from a
group consisting of:
offerings for products, offerings for services, and
offerings for products and services;
tracking, by the social networking system, eligibility
information for each of the users to receive offerings from a
plurality of service providers, the plurality of service providers
including the social networking system and at least one service
provider that is an external system distinct from the social
networking system;
responsive to the tracking, determining a user is eligible to
receive offerings from a subset of the plurality of service
providers, the subset including the at least one service provider
that is the external system;
providing to a user device associated with the user a
graphical user interface, the graphical user interface listing the
subset of the plurality of service providers, the listing including
information about offerings from the subset of the plurality of
service providers and pricing information for subscriptions to
those offerings;
receiving, from the user device, a selection of multiple
service providers from the subset of the plurality of service
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providers, the selection subscribing the user to subscriptions for
the offerings provided by the selected service providers;
providing, by the social networking system, operational
context information for the user to each of the selected service
providers, the operational context information including a
bandwidth of a connection between the user device associated
with the user and the social networking system;
providing the user access to each of the offerings through
the social networking system in accordance with the associated
subscription, the access to each offering customized to the
operational context information and restricted by a level of
consumption of the offering by the user;
receiving, by the social networking system from the
selected service provider, a request for information regarding
eligibility of the user to continue to receive the each of the
offerings from the selected service providers;
determining that the eligibility information identifies that
the user is eligible to continue to have access to each of the
offerings as part of the subscriptions based in part on the level of
consumption by the user being less than a threshold value;
responsive to the received request, providing to the
selected service providers the eligibility information identifying
that the user is eligible to continue to access the offerings based
on the determining; and
providing the user with continued access to the offerings
through the social networking system in accordance with the
subscription based on the eligibility information indicating the
user was determined to be eligible to continue to access the
offerings.
App. Br. 19–21 (Claims Appendix).

REJECTION
Claims 1–4, 6–9, and 13–22 stand rejected under 35 U.S.C. § 101 as
being directed to ineligible subject matter. Final Act. 2–16
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REJECTION UNDER 35 U.S.C. § 101
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court instructs us
to “first determine whether the claims at issue are directed to a patent-
ineligible concept,” Id. at 217–18, and, in this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which we “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court describes
the second step as a search for “an ‘“inventive concept”’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–73).
The USPTO has published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, 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
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practice, or mental processes) (referred to Step 2A, prong 1 in
the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h))
(referred to Step 2A, prong 2 in the Guidance).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then move to Step 2B of the
Guidance. There, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 52.
Examiner’s Findings and Conclusion
The Examiner rejects the pending claims as being directed to a
judicial exception without significantly more. Final Act. 2–16. The Final
Office Action was mailed prior to the issuance of the Guidance. The
Examiner’s Answer was mailed subsequent to the Guidance, and it applies
the Guidance in further explaining the basis for the eligibility rejection. See
Ans. 5 (maintaining the rejection and applying the revised procedure set
forth in the Guidance to the claims). Applying Step 2A, the Examiner
determines the claims recite an abstract idea of, inter alia, determining
whether a user is eligible to continue to have access to a subscription based
on the level of consumption being less than a threshold value. Final Act. 2–
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4; Ans. 6. The Examiner identifies the recited abstract idea as being within
the category of “certain methods of organizing human activity” under the
Guidance. Ans. 6. Under Step 2A, prong two, the Examiner determines
additional recited elements are insufficient to integrate the abstract idea into
a practical application because they are “recited at a high-level of generality”
and generally amount to computing operations which are “a form of
insignificant extra solution activity.” Id. at 9. The Examiner further
determines:
[T]he combination of these additional elements is no more than
mere instructions to apply the exception using a generic
computer environment (i.e., a ‘social networking system’, an
‘overall communication environment’, a ‘user device associated
with a graphical user interface’, and an ‘external system’) and
does not integrate the abstract idea into a practical application
because it does not impose any meaningful limits on practicing
the abstract idea.
Ans. 9–10.
Under Step 2B, the Examiner determines that the claims do not
“include additional elements that are sufficient to amount to significantly
more than the judicial exception because when considered both individually
and as an ordered combination [they] do not amount to significantly more
than the abstract ideas.” Final Act. 4–5. The Examiner finds the additional
limitations generally use generic computers to performing generic functions
similar to elements that the court have recognized as well-understood,
routine, and conventional activities, and cites various cases identified in
MPEP § 2106.05(d) in support. Id. at 5–7.
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Appellant’s Contentions
Appellant argues that there are several deficiencies in the rejection.
App. Br. 12–17. Appellant argues the Examiner’s analysis is deficient
because “[t]here is no explanation as to why the lengthy abstract idea alleged
here is actually abstract or how it really is similar to the abstract ideas
identified in the court cases raised by the examiner.” Appeal Br. 13.
Appellant further argues the claims are not directed to an abstract idea
because “the claimed method recites an improvement to the way users
maintain various online subscriptions by providing a central platform
receiving periodic updates on the offerings and operational context
information for each of the subscriptions.” Appeal Br. 14.
Under Step 2B, the Appellant argues the Examiner has failed to
provide sufficient evidence and explanation that the claims are well-
understood, routine, and conventional. Appeal Br. 15. Appellant further
contends that the recited invention is significantly more because it “solves
the problem of connecting users and service providers in a manner that
ensures privacy, and solves the problem of complicated tracking of
subscriptions, by allowing the social networking system to act as the central
platform.” Appeal Br. 15. According to Appellant:
The social networking system does the complicated work of
maintaining the subscriptions for each user to various service
providers, maintains operational information and bandwidth data
for the user, tracks eligibility for different offerings, provides the
user a GUI with information and pricing for offerings, tracks
continued eligibility over time according to the subscription, etc.
Appeal Br. 15. Appellant further asserts the Examiner has failed to comply
with the requirements of the Berkheimer memorandum because the
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Examiner has not explained “why the Examiner considers the additional
elements to be well-understood, routine, or conventional.” Appeal Br. 16.3
Revised Guidance, Step 2A, Prong One 4
The Judicial Exception
Applying the Guidance, we are not persuaded the Examiner has erred
in rejecting the claims as being directed to patent-ineligible subject matter.
The Guidance instructs us first to determine whether any judicial exception
to patent eligibility is recited in the claim. The Guidance identifies three
judicially-excepted groupings: (1) mathematical concepts, (2) certain
methods of organizing human activity such as fundamental economic
practices, and (3) mental processes. We focus our analysis on the second
grouping—certain methods of organizing human activity such as
commercial interactions.5
Claim 1 recites the following limitations: (1) “maintaining . . .
subscriptions for users . . . to receive offerings from one or more service
providers . . . wherein the offerings are selected from a group consisting of:
offerings for products, offerings for services, and offering for products and
services,” (2) “tracking . . . eligibility information for each of the users to

3 Although Appellant filed a Reply Brief, the Reply Brief is not responsive
to the Examiner’s Answer.
4 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
5 Appellant’s arguments are made to the claims generally. We treat claim 1
as representative. 37 C.F.R. § 41.37(c)(iv) (“When multiple claims subject
to the same ground of rejection are argued as a group or subgroup by
Appellant, the Board may select a single claim from the group or subgroup
and may decide the appeal as to the ground of rejection with respect to the
group or subgroup on the basis of the selected claim alone.”).
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receive offerings from a plurality of service providers, the plurality of
service providers,” (3) “responsive to the tracking, determining a user is
eligible to receive offerings from a subset of the plurality of service
providers,” (4) “providing to a user . . . [a] listing the subset of the plurality
of service providers, the listing including information about offerings from
the subset of the plurality of service providers and pricing information for
subscriptions to those offerings,” (5) “receiving . . . a selection of multiple
service providers from the subset of the plurality of service providers, the
selection subscribing the user to subscriptions for the offerings provided by
the selected service providers,” (6) “providing . . . operational context
information for the user to each of the selected service providers,”
(7) “providing the user access to each of the offerings . . . in accordance with
the associated subscription, the access to each offering customized to the
operational context information and restricted by a level of consumption of
the offering by the user,” (8) “receiving . . . from the selected service
provider, a request for information regarding eligibility of the user to
continue to receive each of the offerings from the selected service
providers,” (9) “determining that the eligibility information identifies that
the user is eligible to continue to have access to each of the offerings as part
of the subscriptions based in part on the level of consumption by the user
being less than a threshold value,” (10) “responsive to the received request,
providing to the selected service providers the eligibility information
identifying that the user is eligible to continue to access the offerings based
on the determining,” and (11) “providing the user with continued access to
the offerings . . . in accordance with the subscription based on the eligibility
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information indicating the user was determined to be eligible to continue to
access the offerings.” Appeal Br. 19–21 (Claims Appendix).
We conclude that these limitations, under their broadest reasonable
interpretation, recite the practice of managing subscription services, which is
a commercial interaction, and falls under the category of certain methods of
organizing human activities. This is so because the limitations recite basic
operations that would customarily and routinely be performed in managing
subscriptions on behalf of consumers. For example, limitations (1)–(4)
recite maintaining subscription availability to multiple service providers,
tracking eligibility for certain offers from those service providers, and
delivering those offers to users. These operations are similar to those
historically performed by magazine subscription clearinghouses. Similarly,
limitation (5) recites the customary practice of receiving subscription
requests from customers for multiple services offered by service providers.
Again, this activity largely analogous to the subscription model maintained
in magazine subscription clearinghouses. Limitation (6) reflects the
customary practice of sharing subscriber information with the service
providers—similar to telling publishers where to deliver the magazines.
Similarly, limitation (7), which recites providing user access to the
subscribed offerings in accordance with their subscription, is also analogous
to the familiar practice of delivering magazines to customers based on their
subscription. Limitations (8)–(11), which recite checking subscriber
eligibility for the purpose of determining whether the subscriber can
continue to receive services, implement the familiar practice of checking
whether a subscription has run out, and permitting continued access to the
subscription services accordingly. Accordingly, we conclude the claims
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recite a judicial exception of a commercial interaction, which is a certain
method of organizing human activities under the Guidance.
Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Having determined that claim 1 recites a judicial exception, our
analysis under the Memorandum turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See Guidance, 84 Fed. Reg. at 54–55 (citing MPEP
§ 2106.05(a)–(c), (e)–(h)).
Under the Guidance, limitations that are indicative of “integration into
a practical application” include:
1. Improvements to the functioning of a computer, or to any other
technology or technical field — see MPEP § 2106.05(a);
2. Applying the judicial exception with, or by use of, a particular
machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article to
a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
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(e).
In contrast, limitations that are not indicative of “integration into a
practical application” include:
1. Adding the words “apply it” (or an equivalent) with the judicial
exception, or merely including instructions to implement an
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abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea – see MPEP § 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP 2106.05(h).
See Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
Appellant’s claim 1 recites elements additional to the abstract
limitations identified above. Certain of these limitations primarily relate to
the computer equipment that is used to carry out the recited process, and
they include (a) “a social networking system,” (b) “an external system”
associated with a service provider,” and (c) “a user device associated with
the user [and] a graphical user interface.” Appeal Br. 19–21 (Claims
Appendix).
We conclude that these limitations are insufficient to integrate the
recited judicial exception into a practical application. In particular, these
additional claim limitations amount only to the use of generic hardware to
carry out the abstract idea. It is well-established that mere automation of
manual processes using computers is insufficient to integrate a claim into a
practical application. See Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior cases have made clear that
mere automation of manual processes using generic computers does not
constitute a patentable improvement in computer technology.”); see also
MPEP § 2106.05(a) (“Mere automation of manual processes, such as using a
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generic computer to process an application for financing a purchase” is
insufficient) (citing Credit Acceptance Corp, 859 F.3d at 1055).
Claim 1 also recites the following additional limitations that go
beyond generic recitations of computer processing: (d) “operational context
information for each of the users describing how a respective user accesses
the social networking system and an overall communication environment
associated with the accessing of the social networking system, the overall
communication environment including a bandwidth of a connection between
a user device associated with the respective user and the social networking
system,” and (e) “operational context information including a bandwidth of a
connection between the user device associated with the user and the social
networking system.” Although not generic computer limitations, these
limitations are nevertheless insufficient to integrate the recited subscription
management process into a practical application. These limitations
generally recite the gathering and storage of the necessary data for carrying
out the recited commercial interaction. Such data gathering and storage is a
form of extra-solution activity. See MPEP § 2106.05(g), which as noted
above, is indicative of a limitation integrating an abstract idea into a
practical application.
Appellant’s argument that “the claimed method recites an
improvement to the way users maintain various online subscriptions by
providing a central platform receiving periodic updates on the offerings and
operational context information for each of the subscriptions” misses the
mark. The type of improvement identified by the Guidance is an
“[i]Improvement[] to the functioning of a computer, or to any other
technology or technical field.” MPEP § 2106.05(a). The improvement
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alleged by Appellant in an improvement to the commercial practice of
subscription management, and not to any technology or technical field. As
such, we do not find the additional limitations of claim 1, either individually
or as an ordered combination, are sufficient to integrate the judicial
exception into a practical application.
The Inventive Concept – Step 2B
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether the claim adds any specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field (see MPEP § 2106.05(d)) or simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. See Guidance, 56.
Our review of the Examiner’s rejection under Step 2B is guided by the
revised examination procedure published online by the USPTO on April 19,
2018, entitled “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.)” (“Berkheimer Memorandum”), which imposed a new fact finding
requirement for Examiners, as applicable to rejections under § 101. In our
review of the rejection under Step 2B, we consider the same “additional
limitations” as were considered at Step 2A, Prong 2.
We agree with the Examiner that the additional limitations are well-
understood, routine, and conventional under the Guidance. As noted above,
Appellant argues the Examiner has failed to provide sufficient evidence. We
disagree. The Berkheimer Memorandum provides that the Examiner may
support a finding that an additional element or combination of elements may
be supported by “[a] citation to one or more of the court decisions discussed
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in MPEP § 2106.05(d)(II) as noting the well-understood, routine,
conventional nature of the additional element(s).” Berkheimer
Memorandum at 4, § III(A)(2). This section of the MPEP notes that
“[r]eceiving or transmitting data over a network, e.g., using the Internet to
gather data” as well as “storing and retrieving information in memory” have
been recognized by courts as being well-understood, routine and
conventional. MPEP § 2106.05(d)(II) (citing, inter alia, OIP Techs., Inc., v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). The Examiner
references the court decisions from MPEP § 2106.05(d)(ii), including citing
OIP Technologies in support of the rejection. Ans. 12–14. As such, we
disagree with Appellant that the Examiner’s analysis in Step 2B was
insufficient, and we agree with the Examiner that the additional limitations
in the claims do not supply an inventive concept.
Because the Examiner correctly concluded claim 1 is directed to a
judicial exception, and because Appellant does not identify any error in the
Examiner’s determination under Step 2B of the Guidance, we sustain the
rejection of representative claim 1 under 35 U.S.C. § 101.
CONCLUSION
The Examiner’s rejection is affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 6–9,
13–22
101 Eligibility 1–4, 6–9,
13–22

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED