International Business Machines Corporation

Patent Trials and Appeals Board

Oct 8, 2021

2021000428 (P.T.A.B. Oct. 8, 2021)

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.
15/415,494 01/25/2017 Ben Z. Akselrod CA920160153US1 5627
37945 7590 10/08/2021
DUKE W. YEE
YEE AND ASSOCIATES, P.C.
P.O. BOX 6669
MCKINNEY, TX 75071
EXAMINER
GIBSON-WYNN, KENNEDY ANNA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
10/08/2021 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):
ptonotifs@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BEN Z. AKSELROD, ANTHONY DI LORETO,
STEVE MCDUFF, and KYLE D. ROBESON
____________

Appeal 2021-000428
Application 15/415,494
Technology Center 3600
____________

Before ANTON W. FETTING, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–3, 5–10, and 12–26, which
constitute all the claims pending in this application. 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. The Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The Appellant’s invention relates generally to “social networking
systems, and more particularly, to a computer-implemented method, system
and computer program product for re-organizing images to be displayed to a
user on a social networking system based on a purchase history of the user.”
Spec. ¶ 1.
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below (lettered
bracketing added for reference).
1. A computer-implemented method of processing images
to be displayed to a user comprising:
[(a)] sending the images to be displayed to the user during
a browsing session, the images to be displayed to the user being
initially organized based on a profile of the user;
[(b)] inquiring whether the user would like to see
recommended images, the recommended images being images to
be recommended to the user that are determined based on a
purchase history of the user for purchases made by the user from
an e-commerce site;
[(c)] receiving a request from the user acknowledging that
the user would like to see the recommended images;
[(d)] responsive to the received request, re-organizing the
images previously sent to include the recommended images; and
[(e)] sending the re-organized images to be displayed to
the user, wherein the method of processing images is performed
by a social networking site, and wherein the purchase history is
received from the e-commerce site.
Appeal Br. 36 (Claims App.).
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REFERENCES
The prior art relied upon by the Examiner are:
Name Reference Date
Calafiore et al. (“Calafiore”) US 2013/0204701 A1 Aug. 8, 2013
Gopinath et al. (“Gopinath”) US 2014/0195387 A1 July 10, 2014
Gould et al. (“Gould”) US 2017/0098242 A1 Apr. 6, 2017
Chang et al. (“Chang”) US 2017/0357698 A1 Dec. 14, 2017

REJECTIONS
Claims 1–3, 5–10, and 12–26 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more.
Claims 1, 2, 5–9, and 12–26 stand rejected under 35 US.C. § 103 as
being unpatentable over Chang, Calafiore, and Gopinath.
Claims 3 and 10 stand rejected under 35 US.C. § 103 as being
unpatentable over Chang, Calafiore, Gopinath, and Gould.

OPINION
35 U.S.C. § 101 – Statutory Subject Matter
35 U.S.C. § 101 Framework
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).
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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.
Id. 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
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
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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. (citations 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
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (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.
USPTO Section 101 Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”) and the October
2019 Update: Subject Matter Eligibility (“October 2019 Update”),
incorporated into the MANUAL OF PATENT EXAMINING PROCEDURE
§§ 2104–06, Rev. 10.2019 (“MPEP”) in June 2020. “The guidance sets out
agency policy with respect to the USPTO’s interpretation of the subject
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matter eligibility requirements of 35 U.S.C. § 101 in view of decisions by
the Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51.
Although “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance,” the guidance “does not
create any right or benefit, substantive or procedural, enforceable by any
party against the USPTO.” Id. The Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id. at 50.
Under USPTO guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including laws of nature, natural phenomena,
and products of nature (see MPEP §§ 2106.04(II)(A)(1), 2106.04(b))
(“Step 2A, Prong One”); and (2) additional elements that integrate the
judicial exception into a practical application (see id. §§ 2106.04(II)(A)(2),
2106.04(d)) (“Step 2A, Prong Two”).2
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 additional elements, individually or in combination,
provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An
inventive concept ‘cannot be furnished by the unpatentable law of nature (or
natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting
Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)).

2 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 Guidance - Section III(A)(2), 84 Fed. Reg.
at 54–55; MPEP § 2106.04(d).
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Among the considerations in determining whether the additional elements,
individually or in combination, amount to significantly more than the
exception itself, we look to whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56.
Preliminary Matter
We first address the Appellant’s argument that because the claimed
invention “does not seek to tie-up all ways of ‘providing recommendations
to a user’ so that others cannot practice it,” the claimed invention is “shown
to be statutory when viewed in light of the USPTO’s own streamlined
analysis process.” Appeal Br. 7–8, 13–17, 19; Reply Br. 3–4. Our
reviewing court provides applicable guidance: “While preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); Ultramercial, Inc. v.
Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013). Furthermore,
Streamlined Analysis may be used only “when the eligibility of the claim is
self-evident e.g., because the claim clearly improves a technology or
computer functionality.” MPEP § 2106.06. As set forth in the MPEP, the
streamlined analysis is an optional tool for Examiners to use at the
Examiner’s discretion. See id. (“A streamlined eligibility analysis can be
used . . . .”) (emphasis added). “[I]f there is doubt as to whether the
applicant is effectively seeking coverage for a judicial exception itself, the
full eligibility analysis (the Alice/Mayo test described in MPEP § 2106,
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subsection III) should be conducted to determine whether the claim
integrates the judicial exception into a practical application or recites
significantly more than the judicial exception.” Id. Here, the Examiner’s
decision to perform a full eligibility analysis is not an error.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A, Prong
One of USPTO guidance, the Examiner determines that “the claims as a
whole recite the abstract idea of ‘providing recommendations to a user’”
(Final Act. 3) as they recite interactions between people and people and a
computer (see id.; Ans. 5) “for the purpose of performing a commercial
interaction (i.e. marketing activity)” (Final Act. 3) and “for the purpose of
providing recommendations” (Ans. 5; see also id. at 6). The Examiner also
determines that the claims “recite the abstract idea of ‘re-organizing images
to provide a recommendation’ which is an abstract idea because it is a
mental process.” Final Act. 3–4; see also id. at 6; Ans. 7. Under Prong Two
of USPTO guidance, the Examiner also determines that the “additional
elements individually and in combination do not integrate the exception into
a practical application” because they “merely ‘appl[y]’ the abstract idea to a
technological environment” and “do not impose any meaningful limits on
practicing the abstract idea.” Final Act. 4–6; see also Ans. 8–9.
The Appellant disagrees and contends that the Examiner’s assertion
under Prong One that the claims recite an abstract idea is in error because
the claims do not recite organizing human activity nor an abstract idea. See
Appeal Br. 8–12; Reply Br. 4–8. Under Prong Two, the Appellant contends
that the claims “provide a unique synergistic interplay between multiple sites
– including both an e-commerce site and a social media site” that provides a
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“practical integration.” Appeal Br. 12–13 (emphasis omitted); see also
Reply Br. 10.
Under the first step of the Mayo/Alice framework and Step 2A of
USPTO guidance, we first determine to what the claims are directed, i.e.,
whether the claims recite an abstract idea and if so, whether the claims are
directed to that abstract idea. The Federal Circuit has explained that “the
‘directed to’ inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether ‘their character as a whole is directed
to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the
Specification, including the claim language, that the claims focus on an
abstract idea, and not on any improvement to technology and/or a technical
field.
The Specification provides evidence as to what the claimed invention
is directed. Here, the Title of the Specification provides for “RE-
ORGANIZATION OF DISPLAYED IMAGES BASED ON PURCHASE
HISTORIES.” Spec. 1. Similarly, the “Field” section provides that the
invention “relates to social networking systems, and more particularly, to a
computer-implemented method, system and computer program product for
re-organizing images to be displayed to a user on a social networking system
based on a purchase history of the user.” Id. ¶ 1. The “Description of the
Related Art” section discusses that “[s]ocial networking sites or systems are
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increasingly being used in electronic commerce (i.e., e-commerce) as a
starting point to shop for goods and services,” such as users communicating
and publishing information regarding products or services bought or
experienced, the information being read by users in deciding whether to buy
or use the products or services. Id. ¶ 2. “However, there usually is not much
interaction between social networking systems and e-commerce systems to
enhance user on-line shopping experience.” Id. ¶ 3. Ostensibly to address
this issue, the “disclosure provides a computer-implemented method, system
and computer program product for re-organizing images to be displayed to a
user,” whereby the re-organized images include images recommended based
on a user’s purchase history. Id. ¶ 4.
Consistent with this disclosure, independent claim 1 recites a
“computer-implemented method of processing images to be displayed to a
user,” the method being “performed by a social-networking site” (also
referred to herein as “SNS”) and comprising the steps of:
(1) sending image data, i.e., limitation (a) of “sending the images to be
displayed to the user during a browsing session, the images to be displayed
to the user being initially organized based on a profile of the user”; sending
inquiry data, i.e., limitation (b) of “inquiring whether the user would like to
see recommended images, the recommended images being images to be
recommended to the user that are determined based on a purchase history of
the user for purchases made by the user from an e-commerce site . . .
wherein the purchase history is received from the e-commerce site”;
(2) receiving request data, i.e., limitation (c) of “receiving a request
from the user acknowledging that the user would like to see the
recommended images”;
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(3) re-organizing image data in response to the request data, i.e.,
limitation (d) of “responsive to the received request, re-organizing the
images previously sent to include the recommended images”; and
(4) sending data, i.e., limitation (e) of “sending the re-organized
images to be displayed to the user.” Appeal Br. 36 (Claims App.).
Independent claim 8 recites a “computer system for processing images
to be displayed to a user comprising:” a storage system for storing code data
and a processor for processing the stored data to perform the steps recited in
claim 1. Id. at 37–38. Independent claim 15 recites a computer program
product with instructions to cause a processor to perform the steps recited in
claim 1. Claims 2, 3, 5–7, 9, 10, 12–14, and 16–20 further narrow the
information in the purchase history, the information in the profile, and the
sources of the purchase history and recommended images. Id. at 36–37.
Claims 21–26 add further limitations of performing determinations and
using some of those determinations as conditions for the step of re-
organizing.
Taking claim 1 as representative, we consider the claim as a whole3
giving it the broadest reasonable construction4 as one of ordinary skill in the
art would have interpreted it in light of the Specification5 at the time of
filing.

3 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.” Diehr,
450 U.S. at 188.
4 Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest
reasonable interpretation . . . .”) (emphasis added).
5 “First, it is always important to look at the actual language of the
claims. . . . Second, in considering the roles played by individual
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Limitations (a), (b), and (c) recite sending and receiving data, i.e.,
sending images, inquiring the user, and receiving a request, which are extra-
solution activities and abstract ideas. See In re Bilski, 545 F.3d 943, 963
(Fed. Cir. 2008) (en banc), aff’d Bilski v. Kappos, 561 U.S. 593 (2010)
(characterizing data gathering steps as insignificant extra-solution activity);
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(collecting information is an abstract idea); ChargePoint, Inc. v.
SemaCONNECT, Inc., 920 F.3d 759, 766 (Fed. Cir. 2019) (identifying
communicating over a network as an abstract idea); MPEP § 2106.05(g).
Limitations (a) and (d) recite organizing and re-organizing data, i.e.,
the images being initially organized and re-organized responsive to a
request, which is an abstract idea. See Versata Dev. Grp., Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1333–34 (Fed. Cir. 2015) (using organizing and group
hierarchies in determinations “is a building block, a basic conceptual
framework for organizing information”); Sensormatic Elecs., LLC v. Wyze
Labs, Inc., No. 2020-2320, 2021 WL 2944838, at *3 (Fed. Cir. July 14,
2021) (identifying “classifying and organizing images” as an abstract idea).
Similarly, limitation (e) recites sending data as a result of the re-
organizing, which is post-solution activity, if we regard the sending of data
as transmitting a result of the organizing of data (see Elec. Power Grp., 830
F.3d at 1354; MPEP § 2106.05(g)), or as part of the abstract idea of
communicating information (see ; ChargePoint, 920 F.3d at 766).

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, 822 F.3d at 1335, among others).
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The limitations are recited functionally without details on how,
technologically or by what algorithm, they are performed. Further, although
the preamble of claim 1 recites that the method is “computer-implemented”
and limitation (e) recites “wherein the method of processing images is
performed by a social networking site,” the steps do not recite what, if any,
computer component performs the steps. Nonetheless, the computer of
independent claim 1, the system of independent claim 8, and the processor
of independent claim 15 are generic computing systems. See Spec., e.g.,
¶¶ 19 (describing a processor of a general purpose computer), 22–32
(describing systems with generic components and devices). The SNS of
claim 1 “is well known” (id. ¶ 33) and hosted on a social networking system
that is a generic server (id. ¶ 23).
When considered collectively and under the broadest reasonable
interpretation, the limitations of the claims recite a way of collecting data,
re-organizing data based on the collected data, and sending the re-organized
data for the purpose of enhancing shopping, which is similar to the
Examiner’s characterization.6 This is an abstract idea of a “[c]ertain
method[] of organizing human activity—. . . commercial or legal
interactions (including . . . advertising, marketing or sales activities or
behaviors; business relations)” and comprises “[m]ental processes—
concepts performed in the human mind (including an observation,

6 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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evaluation, judgment, opinion).” Guidance, 84 Fed. Reg. at 52; MPEP
§§ 2106.04(a)(2)(II), 2106.04(a)(2)(III).
Our reviewing court has held similar concepts to be abstract. For
example, the Federal Circuit has held abstract the concepts of “customizing
a user interface” such as with targeted advertising based on demographic
information in Affinity Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d
1266, 1271 (Fed. Cir. 2016), “customizing web page content as a function of
navigation history and information known about the user” in Intellectual
Ventures I LLL v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir.
2015) (“Capital One Bank”), collecting, analyzing, and displaying the
results in Elec. Power Grp., 830 F.3d at 1354, “organizing, displaying, and
manipulating data of particular documents” Intellectual Ventures I LLC v.
Capital One Financial Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017)
(“Capital One Fin.”), and “classifying and organizing images” in
Sensormatic Elecs., 2021 WL 2944838 at *3. As such, we are unpersuaded
by the Appellant’s arguments that the claims do not recite an abstract idea
because they do not recite a method or a certain method of organizing
human activity not a mental process. See Appeal Br. 8–12; Reply Br. 4–8.7

7 The Appellant’s argument that “[a]s to the Examiner’s assertions that
marketing activities are included under certain methods of organizing human
activities, the present claims are clearly distinguishable from what the courts
have determined to be non-patent eligible marketing activities, as will now
be shown in detail” (Reply Br. 6) was not raised in the Appeal Brief and is
not responsive to an argument raised in the Examiner’s Answer. 37 C.F.R.
§ 41.41(b)(2). The Appellant has not shown good cause why this argument
could not have been presented in the Appeal Brief. The cases cited were all
decided prior to the Alice decision and were available prior to the filing of
the Appeal Brief. Thus, we do not consider this argument except to note that
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Regarding the Appellant’s apparent contention that the claims do not
recite an abstract idea because they recite steps of sending, receiving, and re-
organizing performed “by a social networking site” (Appeal Br. 11–12; see
also Reply Br. 6–8), we disagree. We first note that “[c]ourts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.” Versata, 793 F.3d at 1335. Second, as discussed
more fully below, this merely limits the invention to a particular computer
environment, i.e., a social networking site.
Having concluded that the claims recite a judicial exception under the
Guidance, Step 2A, Prong One, we next consider whether the claims recite
additional elements that integrate the judicial exception into a practical
application. To do so, we look to whether the claims “apply, rely on, or use
the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claims are more than a drafting effort
designed to monopolize the judicial exception,” i.e., “integrates a judicial
exception into a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP
§ 2106.04(d). We agree with and adopt the Examiner’s findings and
conclusion that the additional limitations of the claims do not integrate the
abstract idea into a practical application, as the term is used in USPTO
guidance. See Final Act. 4–6. We add the following for emphasis.
Here, the only additional elements recited in claims 1–3, 5–7, 21,
and 22 beyond the abstract idea are the “e-commerce” and “social
networking” sites. The additional elements in claims 8–10, 12–14, 23,

the claims are not distinguishable from activities the courts have decided are
abstract ideas.
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and 24 are the computer system comprising a storage system and a
processor, and e-commerce sites. The additional elements in claims 15–20,
25, and 26 are the computer program product comprising a storage medium,
a processor, and e-commerce sites. The claimed limitations of sending and
receiving information are part of the abstract idea, as discussed above. See
also Final Act. 5–6; Ans. 8. The Specification provides little detail on the
structure of the e-commerce and SNSs, but indicates that the e-commerce
sites are part of an e-commerce system comprising a generic server and the
SNS is part of a social networking system comprising a generic server. See
Spec. ¶¶ 22, 23, 32, 33, Fig. 1. The computer system is described in the
Specification as a general computer system that may comprise a general
purpose computer. See supra, e.g., Spec. ¶¶ 26–31, Figs. 1–3 (describing a
generic computer system comprising modules, a processor, memory, and a
bus). The computer program storage medium is a generic storage medium
causing a generic processor to execute stored instructions. See id. ¶¶ 15–20.
As is clear from the Specification, there is no indication that the
operations recited in the claims require any specialized computer hardware
or other inventive computer components, i.e., a particular machine, invoke
any asserted inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention as recited in the claims effects a transformation or reduction of a
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particular article to a different state or thing. Nor do we find anything of
record that attributes an improvement in technology and/or a technical field
to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in USPTO Guidance.
We are not persuaded of Examiner error by the Appellant’s argument
that the claims “provide a practical application” because it “provide[s] a
unique synergistic interplay between multiple sites — including both an
e-commerce site and a social media site.” Appeal Br. 12–13. To the extent
the Appellant argues that the interplay between the sites “integrates a
judicial exception into a practical application,” as the term is used in USPTO
guidance, we disagree. The “interplay” between the sites comprises
communicating data between servers, an abstract idea. As the Examiner
finds (see Ans. 8), the e-commerce and social networking sites are described
at a high level of generality and are used in their ordinary capacities to
communicate and organize data. See supra; see also Alice, 573 U.S. at
224–26. The Appellant does not contend that it invented e-commerce and
social networking sites, the computer system, or processor or their basic
functions, nor does the Appellant contend that those components, claimed
generally, were unknown in the art as of time of the invention. Affinity Labs,
838 F.3d at 1270. The “focus” of the claims is not “on the specific asserted
improvement in computer capabilities.” Enfish, 822 F.3d at 1336. The
invention aims to address a lack of communication between e-commerce and
social networking sites. See Spec. ¶ 3 (“there usually is not much interaction
between social networking systems and e-commerce systems to enhance
user on-line shopping experience”). There is no suggestion that the site
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servers are improved from a technical perspective, would transmit/
communicate data differently than it otherwise could, or that the claimed
invention overcomes some sort of technical difficulty in adding
interaction/communication capability to the sites/servers. See ChargePoint,
920 F.3d at 767–68. Rather, the sites merely limit the abstract idea to a
particular technological environment of the Internet and online shopping,
which does not render the claims any less abstract. See id.; Alice, 573 U.S.
at 223 (holding that attempting to limit the use of an abstract idea to a
particular technological environment does not make a claim patent-eligible)
(quoting Bilski, 561 U.S. at 610–11); Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“[M]erely limiting
the field of use of the abstract idea to a particular existing technological
environment does not render the claim[] any less abstract.”).
We are also unpersuaded of Examiner error by the Appellant’s
argument that “[t]he features of Claim 22 provide a technological advantage
due to the recitation of the front-end two-stage filtering/invocation
mechanism that only re-organizes images if two specific criteria are met.”
Appeal Br. 20; see also id. at 21 (arguing similar claim 24); Reply
Br. 16–17. Claim 22 depends from claim 21 that depends from claim 1 and
requires further determining whether the SNS has permission to exchange
information, responsive to a determination that there is permission, making
another determination whether the SNS received information, and further
narrows the re-organizing to include determining the SNS received the
information and determining the received information includes purchase
history data. See Appeal Br. 40 (Claims App.). Claims 23 and 24 recite
almost identical limitations. There is no particular structural “mechanism”
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for filtering claimed. Rather, the steps of determining are claimed
functionally without details on how they are performed, technologically or
by what algorithm, and comprise the SNS or processor performing steps of
analyzing data, which is a mental process.
The Appellant’s contention that these steps of determining
“advantageously mitigating a need to re-organize the images if only one (or
none) of these two criteria are met and thus saving valuable processor-
bandwidth since the processing of images is commonly known to be an
extreme processor-intensive activity” (Appeal Br. 20; see also Reply
Br. 16–17) is unpersuasive. The provided evidentiary support describes that
“image [data] may be computationally expensive” and suggests using audio
analysis in the area of vehicles. Appeal Br. 20 n.10 (emphasis omitted). We
note that the Appellant cites an application other than the one at issue in this
Appeal and provides no basis for how the content of that other application
relates to the substance of claim 22 here. Further, we do not see, and neither
the Appellant nor the Specification explains, how the specific determinations
of permission, receipt of data, and the type of data lead to a technical
improvement in processing or to a significant decrease in “processor-
bandwidth.”
We thus agree with the Examiner that the additional elements of the
claims do not integrate the judicial exception into a practical application, as
the term is used in USPTO guidance.
Therefore, we are not persuaded of error in the Examiner’s
determination that the claims are directed to an abstract idea.
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Step Two of the Mayo/Alice Framework
Under the second step in the Mayo/Alice framework and USTPO
guidance Step 2B, we “[e]valuat[e] additional elements to determine
whether they amount to an inventive concept [which] requires considering
them both individually and in combination to ensure that they amount to
significantly more than the judicial exception itself.” MPEP § 2106.05(I).
Here, the Examiner finds that the claims “do[] not include additional
elements that are sufficient to amount to significantly more than the judicial
exception,” because “the additional element(s) individually and in
combination merely ‘applies’ the abstract idea to a technological
environment” and “the sending steps are similar to receiving or transmitting
data over a network, which . . . is a well-understood, routine, and
conventional function when it is claimed in a merely generic manner (as it is
here).” Final Act 5 (citing MPEP § 2106.05(d)(II) and cases); see also
Ans. 8–9.
The Appellant disagrees and argues that the “multi-site synergistic
interplay[between multiple sites] is a practical application that is not a well-
understood, routine, conventional activity — nor has the Examiner
established by objective evidence that this multi-site synergistic interplay is
in fact a well-understood, routine, conventional activity.” Appeal Br. 12
(emphasis omitted). The Appellant also argues that “social networking sites
are not ordinarily used to perform steps of:” of sending, inquiring, receiving,
re-organizing, and sending. Reply Br. 8–9. Specifically, the Appellant
argues that Examiner has not “explained why they believe these steps are
ordinarily performed by a social networking site (see, e.g., page 8, lines
11-12 of the Examiner Answer),” and “the way social network sites operate
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is proprietary and unknown to people not working for such type of
organization — so the Examiner would have no way of knowing how
computers of a social networking site actually operate in its normal
capacity.” Id. at 9. The Appellant further argues that the features of
claims 21 and 23 of determining whether the SNS has permission to
exchange information and determining whether the SNS received
information responsive to the permission determination, and claims 22 and
24 of conditionally re-organizing based on analyses of whether criteria are
met are not well-understood, routine, and conventional activity. Appeal
Br. 18, 20. The Appellant’s arguments are not persuasive of error.
We find that the Specification clearly supports the Examiner’s
conclusion by indisputably showing that the claimed additional elements of
e-commerce and social networking sites, computer system, storage system,
and processor were conventional at the time of filing. See supra; Spec.
¶¶ 15, 27, 32–34, Fig. 5. Accordingly, based on the Appellant’s description,
we find these components to be well understood, routine, or conventional.
As noted above, the Specification, including the claims, provides no
definition or structural elements, for the social network site. See supra.
Rather, the Specification indicates that the SNS is well-known and is hosted
on a generic server and that the processor is similarly generic. See supra;
Spec., e.g., ¶¶ 19, 22, 23, 26, 31, 33. As also noted above, the claims
functionally recite the steps without any details on how they are performed,
technologically or by what algorithm, except to say they are performed by
the SNS, i.e., the server, or the processor. “Indeed, the claim language here
provides only a result-oriented solution, with insufficient detail for how a
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computer accomplishes it. Our law demands more.” Capital One Fin., 850
F.3d at 1342.
The “synergistic interplay” to which the Appellant refers (Appeal
Br. 12) comprises the communication of data between servers, which is part
of and is itself an abstract idea. The inventive concept under step two of the
Mayo/Alice framework cannot be the abstract idea itself: “It is clear from
Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and
Berkheimer [v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (“Berkheimer”)] . . .
leave[s] untouched the numerous cases from this court which have held
claims ineligible because the only alleged ‘inventive concept’ is the abstract
idea.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Order,
On Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring)
(Berkheimer II); see also BSG, 899 F.3d at 1290 (“It has been clear since
Alice that a claimed invention’s use of the ineligible concept to which it is
directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”).
Taking the claimed elements separately, the functions performed by
the SNS/server and processor are purely conventional. The claimed generic
components operate in their ordinary and conventional capacities to perform
the well-understood, routine, and conventional functions of sending and
receiving data, organizing data, analyzing data, re-organizing data (in
claim 22, conditionally), and sending data as a result of the re-organizing.
See, e.g., Elec. Power Grp., 830 F.3d at 1355 (determining that gathering,
sending, monitoring, analyzing, selecting, and presenting information does
not transform the abstract process into a patent-eligible invention);
Alice, 573 U.S. at 226 (“Nearly every computer will include a
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‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”); Capital One Fin., 850 F.3d at 1342 (concluding that the
claimed elements “recite no more than routine steps of data collection and
organization using generic computer components and conventional computer
data processing activities”); ChargePoint, 920 F.3d at 773–74 (determining
that network communication is not an inventive concept); MPEP
§ 2106.05(g).
Considered as an ordered combination, the components of the
Appellant’s claim add nothing that is not already present when the steps are
considered separately. The sequence of receiving data, organizing data,
analyzing data, and sending data based on the results of the organizing is
equally generic and conventional or otherwise held to be abstract. See, e.g.,
Elec. Power Grp., 830 F.3d at 1354–56 (holding that the sequence of
gathering, analyzing, and displaying in real-time was abstract); Capital One
Fin., 850 F.3d at 1342 (concluding that as an ordered combination, the
claimed elements recited “routine steps of data collection and organization
using generic computer components and conventional computer data
processing activities”); SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161,
1168–70 (Fed. Cir. 2018) (“[A]n invocation of already-available computers
that are not themselves plausibly asserted to be an advance . . . amounts to a
recitation of what is ‘well-understood, routine, [and] conventional.’”).
As such, we disagree that SNS sites, i.e., servers, are not “ordinarily
used” to perform well-understood, routine, and conventional steps of
sending, inquiring, receiving, analyzing, re-organizing, and sending data.
Cf. Reply Br. 8–9.
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Thus, we are not persuaded of error in the Examiner’s determination
that the additional elements of the claims, considered individually and as an
ordered combination, do amount to significantly more than the abstract idea
itself.
Therefore, we sustain the Examiner’s rejection under 35 U.S.C. § 101
of claims 1–3, 5–10, and 12–26.
35 U.S.C. § 103 – Obviousness
The Appellant contends that Calafiore does not teach limitations (b) of
“inquiring whether the user would like to see recommended images” and
(c) of “receiving a request from the user acknowledging that the user would
like to see the recommended images” recited in independent claim 1 and
similarly recited in independent claims 8 and 15. Appeal Br. 22; see also id.
at 23, 27–29; Reply Br. 18–19, 22. Specifically, the Appellant argues that
Calafiore’s “user ‘request’ has nothing to do with whether the user ‘wants to
see’ information. Instead, the user ‘request’ is a permission request to
incorporate information into a process of formulating product
recommendations for a user — without regards to what a user may or may
not ‘want to see’.” Appeal Br. 22. Based on the record before us, we agree.
The Examiner relies, in relevant part, on Calafiore at paragraph 71 for
teaching these limitations. Final Act. 9; Ans. 18. Calafiore’s paragraph 71
provides that “[t]he RAP [Recommendation, Advertisement &
Personalization] Engine may provide product recommendations based on
active feedback from the user relating to one or more initial
recommendations sent to the user in the context of providing a personalized
store or shopping assistant.” During a user’s shopping session at a
personalized store, “the user interface send[s] a request to the user . . .
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requesting permission to incorporate the user’s purchase history and wish
lists from an e-commerce site into the process of formulating product
recommendations for the user.” Calafiore ¶ 71. Upon the user granting
permission for that request, the Genome Annotation Data Engine requests
and receives the purchase history information from the e-commerce site and
stores that information in its repository. Id. The RAP Engine, upon
notification of the new information, determines an updated set of
recommendations for the user that are then displayed to the user. Id.
The Examiner asserts that “in a system such as Calafiore directed to
marketing targeted products to users of an Internet based social media
community (Calafiore, ¶ [0002]) one of ordinary skill in the art would
recognize an inquiry to formulate recommendations for the user to include
viewing those recommendations” and equates “[t]he inquiry to incorporate”
with “an inquiry to view.” Ans. 18. We disagree. In Calafiore, the user
grants permission to allow their information as input into the
recommendation process, but does not specifically provide an explicit
permission or desire to receive the output of the process. See Calafiore ¶ 71.
Although it may “not [be] plausible that a marketing system would request
permission to formulate product recommendations for a user based on their
purchase history, and then never present those recommendations”
(Ans. 18–19), the claim requires an express indication to see, i.e., permission
to display the output of the re-organized images. We agree with the
Appellant that Calafiore does not teach such an express indication, i.e.,
inquiring whether the user wants to see the images and receiving a request
from the user acknowledging they would want to see the images.
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Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103 of independent claims 1, 8, and 15 and of dependent claims 2, 5–7, 9,
12–14, and 16–26.
We also do not sustain the rejection under 35 U.S.C. § 103 of
dependent claims 3 and 10 as we do not understand the Examiner’s reliance
on Gould to remedy the deficiency in the Examiner’s rejection of the
independent claims.

CONCLUSION
The Examiner’s decision to reject claims 1–3, 5–10, and 12–26 under
35 U.S.C. § 101 is affirmed.
The Examiner’s decision to reject claims 1–3, 5–10, and 12–26 under
35 U.S.C. § 103 is reversed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–3, 5–10,
12–26
101 Eligibility 1–3, 5–10,
12–26

1, 2, 5–9,
12–26
103 Chang, Calafiore,
Gopinath
1, 2, 5–9,
12–26
3, 10 103 Chang, Calafiore,
Gopinath, Gould
3, 10
Overall
Outcome
1–3, 5–10,
12–26

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