Oracle International Corporation

Patent Trials and Appeals Board

Mar 19, 2021

2020005702 (P.T.A.B. Mar. 19, 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.
14/516,280 10/16/2014 Anand N. Katti 088325-0915094
(157200US)
6902
51206 7590 03/19/2021
Oracle / Kilpatrick Townsend & Stockton LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
03/19/2021 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
oraclepatentmail@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANAND N. KATTI
_____________

Appeal 2020-005702
Application 14/516,280
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, MATTHEW J. McNEILL, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 6–8, 10, 11, 15, 18, 19, 21, 24, 25, and 27–32. Claims 2–5, 9,
12–14, 16, 17, 20, 22, 23, and 26 are canceled. 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) (2019). According to Appellant, the real party in interest
is Oracle International Corporation. See Appeal Br. 3.
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STATEMENT OF THE CASE
Invention
Embodiments of the disclosed and claimed invention on appeal relate
to “on-line advertising and social media, and more particularly to the
selection of advertisements based on information available through social
media.” Spec. ¶ 1.
Representative Claim 1
1. A method comprising:

providing, by a computing system comprising one or
more processors, consent data associated with a first user, to
one or more social media servers including a first social media
server, wherein said providing comprises providing consent
data to each of the one or more social media servers;

receiving, by the computing system, for each of the one
or more social media servers, data identifying a scope of a set
of publications stored by the social media server, wherein a first
scope for the first social media server corresponds to access to a
first set of user authored publications having a public level of
visibility and stored by the first social media server, but does
not provide access to user-authored publications stored by the
first social media server that are constrained to be visible to a
limited audience;

receiving, by the computing system and from each of the
one or more social media servers, a user-account specific
authorization token, wherein a separate user-account specific
authorization token is received from each of the one or more
social media servers in response to the consent data provided to
the corresponding social media application;

maintaining, by the computing system, for each of the
one or more social media servers, a mapping between the
received scope of publications stored by the social media server
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and the token received from the corresponding social media
server;

retrieving, by the computing system, using the one or
more mappings between the received scope of publications
stored by the one or more social media servers and the
corresponding tokens, data corresponding to a plurality of
publically visible user-authored publications associated with the
first user and stored by the one or more social media servers;

storing, by the computing system, the data corresponding
to a plurality of publically visible user-authored publications
associated with the first user and retrieved from the one or more
social media servers, in a centralized data storage, wherein the
centralized data storage further stores a timestamp associated
with each publically visible user-authored publication, each said
timestamp assigned by the corresponding social media server;

[L1] determining, by the computing system, one or more
keywords based on the plurality of publically visible user-
authored publications associated with the first user and
retrieved from the one or more social media servers;

receiving, by the computing system, from a user device
associated with the first user, a request specifying one or more
search query terms;

[L2] transmitting, by the computing system, a separate
query to an advertising server, the separate query including
(i) the one or more keywords determined based on the plurality
of publically visible user-authored publications associated with
the first user and retrieved from the one or more social media
servers, and (ii) at least one of the search query terms;

receiving, by the computing system and from the
advertising server, data identifying one or more advertisements
in response to the separate query to the advertising server;

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generating, by the computing system, a search results
web page that includes both (a) search results selected based on
the search query terms and (b) the one or more advertisements
received from the advertising server; and

transmitting, by the computing system, the search results
page to the user device.
Appeal Br. 19–20 (Claim App.) (Disputed limitations L1 and L2
emphasized).

Evidence Relied Upon by the Examiner

Name Reference Date
Polis et al. US 7,673,327 B1 Mar. 2, 2010
Bhatia et al. US 8,631,473 B2 Jan. 14, 2014
Suleman et al. US 9,286,397 B1 Mar. 15, 2016
Mackay US 2007/0288247 A1 Dec. 13, 2007
Won Cho US 2009/0037375 A1 Feb. 5, 2009
Nuzzi US 2012/0239497 A1 Sept. 20, 2012
Park et al. US 2013/0054591 A1 Feb. 28, 2013
Agranat et al. US 2013/0066951 A1 Mar. 14, 2013
Srinivasan et al. US 2013/0086645 A1 Apr. 4, 2013

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Table of Rejections2
Rejection Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis
A 1, 6–8, 10, 11,
15, 18, 19, 21,
24, 25, 27–32
101 Eligibility
B 1, 6–8, 10, 15,
28, 32
103 Bhatia, Suleman
C 24, 25 103 Bhatia, Suleman, Polis
D 11, 18 103 Bhatia, Suleman, Mackay
E 19 103 Bhatia, Suleman, Won Cho
F 21 103 Bhatia, Suleman, Park
G 27 103 Bhatia, Suleman, Nuzzi
H 29 103 Bhatia, Suleman, Agranat
I 30, 31 103 Bhatia, Suleman, Srinivasan
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.

Rejection A Under 35 U.S.C. § 101
USPTO 35 U.S.C. § 101 MPEP Guidance
In January and October of 2019, the U.S. Patent and Trademark
Office (“USPTO”) published revised guidance on the application of

2 Although the Examiner includes claim 17 in the heading of Rejection B on
page 5 of the Final Action, claim 17 is canceled. We have made appropriate
correction to the list of claims rejected under Rejection B in the Table of
Rejections above.
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35 U.S.C. § 101.3 We note the USPTO current eligibility guidance is found
in the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of
Patent Examination Procedure (“MPEP”), and particularly within Sections
2103 through 2106.07(c). Accordingly, all references to the MPEP
throughout this Decision are to the Ninth Edition, Revision 10.2019 (Last
Revised June 2020), unless otherwise indicated.
Under MPEP § 2106, 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 (“Step 2A, Prong Two”).4

MPEP § 2106, Step 2A, Prong One
The Judicial Exception
Under MPEP § 2106.04(a), the enumerated groupings of abstract
ideas are defined as follows:
(1) Mathematical concepts – mathematical relationships,
mathematical formulas or equations, mathematical
calculations (see MPEP § 2106.04(a)(2), subsection I);

3 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 84 Fed. Reg. 51 (Jan. 7, 2019); see also
October 2019 Update at 1.
4 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” MPEP § 2106.04(d)II.
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(2) Certain methods of organizing human activity –
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities
or behaviors; business relations); managing personal
behavior or relationships or interactions between people
(including social activities, teaching, and following rules or
instructions) (see MPEP § 2106.04(a)(2), subsection II); and
(3) Mental processes – concepts performed in the human mind
(including an observation, evaluation, judgment, opinion)
(see MPEP § 2106.04(a)(2), subsection III).
Under Step 2A, Prong One, the Examiner determines the claims recite
a mental process:
The claims recite providing “on-line advertising and
social media, and more particularly to the selection of
advertisements based on information available through social
media”. The limitations fall[] within the category of metal [sic]
processes (i.e. concepts that can be performed by the human
mind such as evaluation). The comparison of the access token
information to the stored data could be done by a mental
process.
Final Act. 2–3 (emphasis added).
Appellant disagrees, and contends that the “recitations in the . . .
claims cannot practically be performed in the human mind, and are therefore
not abstract ideas.” Appeal Br. 12. In support, Appellant refers to the
“receiving,” “maintaining,” and “transmitting” limitations recited in claim 1.
Appeal Br. 12–13.
We agree with the Examiner that the language of claim 1 requires an
evaluation (i.e., a step of determining) that could be performed alternatively
by a person as a mental process, as defined under MPEP § 2106.04(a)(2),
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subsection III. We reproduce the “determining” limitation L1 of claim 1
below:
[L1] determining, by the computing system, one or more
keywords based on the plurality of publically visible user-
authored publications associated with the first user and
retrieved from the one or more social media servers.
Claim 1 (emphasis added).
We additionally conclude that the use of a server as an “advertising
server,” as recited in claim 1, involves certain methods of organizing human
activity, as defined under MPEP § 2106.04(a)(2), subsection II, as including
fundamental economic principles or practices, such as commercial or legal
interactions, further including advertising and marketing or sales activities,
We note similar limitations of commensurate scope are recited in
independent claims 8 and 15. We emphasize that combining several abstract
ideas does not render the combination any less abstract. See RecogniCorp,
LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one
abstract idea (math) to another abstract idea . . . does not render the claim
non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were
directed to a combination of abstract ideas).
MPEP § 2106.04(a) guides that “[i]f the identified limitation(s) falls
within at least one of the groupings of abstract ideas, it is reasonable to
conclude that the claim recites an abstract idea in Step 2A Prong One.” In
such case, “[t]he claim then requires further analysis in Step 2A Prong Two,
to determine whether any additional elements in the claim integrate the
abstract idea into a practical application, see MPEP § 2106.04(d).” MPEP
2106.04(a).
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Because we conclude that all claims 1, 6–8, 10, 11, 15, 18, 19, 21, 24,
25, and 27–32 recite an abstract idea, as identified above, under Step 2A,
Prong One, we proceed to Step 2A, Prong Two, in which we apply the
guidance set forth under MPEP § 2106.04(d).5

Step 2A, Prong Two Under MPEP § 2106.04(d),
Integration of the Judicial Exception into a Practical Application
For example, limitations that are indicative of integration into a
practical application under MPEP § 2106.04(d) 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 abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);

5 We note that each dependent claim includes all the limitations of the
claims from which it depends.
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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 MPEP § 2106.04(d)(I) (Describing Step 2A, Prong Two).

Additional Limitations
Applying the USPTO guidance under MPEP § 2106.04(d), we
consider whether there are additional elements set forth in the claims that
integrate the judicial exception into a practical application.
We note that claims 1, 6–8, 10, 11, 15, 18, 19, 21, 24, 25, and 27–32
recite steps or functions that are implemented by a computer and/or a
computer system including one or more processors. See supra n.5. We
further note the supporting exemplary, non-limiting descriptions of generic
computer components found in the Specification. For example, see Spec.
¶ 62: “The client computing devices can be general purpose personal
computers including, by way of example, personal computers and/or laptop
computers running various versions of Microsoft Windows®, Apple
Macintosh®, and/or Linux operating systems.” (emphasis added).
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “The abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added).
Here, we find Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components.
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Therefore, we conclude Appellant’s claims 1, 6–8, 10, 11, 15, 18, 19, 21, 24,
25, and 27–32 merely use a generic programmed computer as a tool to
perform an abstract idea. See MPEP § 2106.05(f).

Extra- or Post-Solution Activities Under MPEP § 2106.05(g)
“[T]he prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or [by] adding ‘insignificant post[-]solution
activity.’” Bilski v. Kappos, 561 U.S. 593, 610–12 (2010) (quoting
Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
Here, we conclude that independent claim 1 recites one or more
additional limitations that are extra-solution activities the courts have
determined to be insufficient to transform judicially excepted subject matter
into a patent-eligible application. See MPEP § 2106.05(g).
For example, we conclude that the claim 1 steps of “providing,”
“receiving,” “maintaining,” “retrieving,” “storing,” “generating,” and
“transmitting” recite insignificant extra-solution activities (e.g., data
gathering, storing, sending). Cf. buySAFE v. Google, Inc., 765 F.3d 1350,
1355 (Fed. Cir. 2014) (“That a computer receives and sends the information
over a network—with no further specification—is not even arguably
inventive.”). We note similar limitations of commensurate scope are recited
in independent claims 8 and 15.

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MPEP § 2106.05(a) — Improvement to the Functionality of a
Computer or Other Technology or Technical Field.
We consider next the question of whether there are any claimed
improvements to the functioning of a computer or to any other technology or
technical field. We apply the guidance set forth under MPEP § 2106.05(a).
Appellant contends that:
reformulating the query to use a combination of social media
keywords and search query terms improves the technology for
searching and retrieving relevant content for the user. This
provides a specific improvement over prior systems and
integrates the individual recitations of the claims into a
practical application.
Appeal Br. 14 (emphasis added).
But we note that the argued language “reformulating the query” is not
expressly claimed. Id. However, the argued reformulating of the query is
premised on “determining one or more keywords based on the plurality of
publically visible user-authored publications associated with the first user
and retrieved from the one or more social media servers” (claim 1
(emphasis added)) that could be performed alternatively as a mental process,
as defined under MPEP § 2106.04(a)(2), subsection III.
But “[u]sing a computer to accelerate an ineligible mental process
does not make that process patent-eligible.” Bancorp Servs., L.L.C. v. Sun
Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see
also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015) (“[R]elying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.”).
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Applying this guidance here, we conclude the claim 1 step of
“determining” is merely an abstract idea implemented by a generic computer
system comprising “one or more processors.” Claim 1.
To the extent that Appellant’s independent method claim 1,
independent medium claim 8, and independent system claim 15, might
arguendo be an improvement over prior-art methods, mediums, and systems,
we note that an improved abstract idea is still an abstract idea. See Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 90 (2012)
(holding that a novel and nonobvious claim directed to a purely abstract idea
is, nonetheless patent ineligible). See also Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea.”) (emphasis omitted).
To the extent that Appellant’s method of claim 1 automatically
performs the step of “determining,” we note that the “‘mere automation of
manual processes using generic computers’ . . . ‘does not constitute a
patentable improvement in computer technology,’” Trading Techs. Int’l, Inc.
v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
As set forth in MPEP § 2106.05(a) (emphasis added):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
to the performance of the method. Merely adding generic
computer components to perform the method is not sufficient.
Thus, the claim must include more than mere instructions to
perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.
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In reviewing the record, we find Appellant does not advance any
persuasive arguments explaining how the claimed generic computer
components aid the method, the extent to which the computer aids the
method, or the significance of a computer to the performance of the method
to improve the recited computer components. See MPEP § 2106.05(a).
Accordingly, on this record, we conclude that independent claim 1
does not recite an improvement to the functionality of a computer or other
technology or technical field. See MPEP § 2106.05(a). As noted above,
remaining independent claims 8 and 15 recite similar limitations having
commensurate scope.

MPEP § 2106.05(b), 2106.05(c)
Appellant advances no arguments that any of the method claims on
appeal are tied to a particular machine (MPEP § 2106.05(b)), or transform
an article to a different state or thing (MPEP § 2106.05(c)).

MPEP § 2106.05(e) Meaningful Claim Limitations
The Examiner determines that “additional claim elements do not
provide meaningful limitation(s) to transform the abstract idea into a patent
eligible application of the abstract idea such that the claims amount to
significantly more than the abstract idea itself.” Final Act. 4.
Appellant advances no arguments rebutting the Examiner’s
determination under MPEP § 2106.05(e).
Because Appellant does not advance any substantive, persuasive
arguments explaining how the judicial exceptions are applied or used in
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some meaningful way, as clarified under MPEP § 2106.05(e), we are not
persuaded the Examiner erred. We emphasize that merely adding generic
hardware and computer components to perform abstract ideas does not
integrate those ideas into a practical application. See Alice, 573 U.S. at 223
(The “mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”) Accordingly,
under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–(h)), we
conclude that all claims 1, 6–8, 10, 11, 15, 18, 19, 21, 24, 25, and 27–32 do
not integrate the judicial exception into a practical application.

The Inventive Concept – Step 2B
As set forth under MPEP § 2106.05(d)), only if a claim (1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application,6 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 activity” in the field; 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.7

6 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is
“not directed to an abstract idea under part one of the Alice [framework], we
do not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1339 (Fed. Cir. 2016).
7 This corresponds to Alice part two where it is determined whether the
claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
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Under Step 2B, the Examiner finds that “[m]ere instructions to apply
an exception using a generic computer component, and adding insignificant
extra-solution activity to the judicial exception cannot provide an inventive
concept.” Final Act. 4 (emphasis added).
Appellant advances no arguments rebutting the Examiner’s finding
under MPEP § 2106.05(d), Step 2B, the “Inventive Concept.”
Therefore, on this record, we are not persuaded that Appellant’s
claims do more than simply append well-understood, routine, and
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. We again emphasize that an
improved abstract idea is still an abstract idea. See Mayo, 566 U.S. at 90;
see also Synopsys, 839 F.3d at 1151 (“[A] claim for a new abstract idea is
still an abstract idea.”) (emphasis omitted).
Moreover, because Appellant does not advance substantive,
persuasive arguments regarding any claimed non-conventional and non-
generic arrangement of known computer components, we find no inventive
concept in any purported ordered combination of these limitations. Thus,
we find Appellant’s claims are unlike the claims considered by the court in
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016), in which the court found “an inventive concept . . . in
the non-conventional and non-generic arrangement of known, conventional
pieces.” 827 F.3d at 1350 (emphases added).
In light of the foregoing, we conclude that each of Appellant’s claims
1, 6–8, 10, 11, 15, 18, 19, 21, 24, 25, and 27–32, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application, and does not include an inventive concept. Therefore,
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on this record, we sustain the Examiner’s Rejection A under 35 U.S.C. § 101
of all claims 1, 6–8, 10, 11, 15, 18, 19, 21, 24, 25, and 27–32 on appeal.8

Rejection B of Independent Claim 1 Under 35 U.S.C. § 103
Issues: Under 35 U.S.C. § 103, did the Examiner err by finding the
cited combination of references would have taught or suggested the disputed
claim 1 limitations of L1 and L2, within the meaning of representative
claim 1?9
We focus our analysis on limitation L2 of claim 1, because we find
limitation L2 is dispositive regarding all the rejections set forth by the
Examiner under 35 U.S.C. § 103. See claim 1, in context:
receiving, by the computing system, from a user device
associated with the first user, a request specifying one or more search
query terms;

[L2] transmitting, by the computing system, a separate
query to an advertising server, the separate query including
(i) the one or more keywords determined based on the plurality
of publically visible user-authored publications associated with
the first user and retrieved from the one or more social media
servers, and (ii) at least one of the search query terms.

8 Based upon Appellant’s arguments, we decide the appeal of Rejection A
under 35 U.S.C. § 101 of claims 1, 6–8, 10, 11, 15, 18, 19, 21, 24, 25, and
27–32 based upon representative claim 1. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are forfeited. See 37 C.F.R. § 41.37(c)(1)(iv).

9 Throughout this opinion, we give the contested claim limitations the
broadest reasonable interpretation (“BRI”) consistent with the Specification.
See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

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Claim 1 (emphasis added).
Regarding the “transmitting” limitation L2 of claim 1, Appellant
contends:
This rejection should be reversed because Suleman does
not transmit a second query that includes a combination of
keywords from the specific user’s social media posts and search
query terms from the user. While both Suleman and the
Appellant’s claims use the user’s search query terms to retrieve
content relevant to the search query, they differ in how they then
retrieve advertisements. Suleman uses the same search query
to also retr[ieve] configurable advertisements that then have
blank sections completed with the user’s social media content.
In contrast, the Appellant’s claims generate a new search query
that adds keywords from the users [sic] social media content to
the search for a terms, and this query is used to retrieve the
ads. Using social media content to search for relevant ads is
not the same as using social media content to fill in blank
information in ads that have already been identified without
using the social media content. Suleman does not form a
separate query; Suleman does not combine keywords from
social media posts with search query terms from the user in a
single query; and Suleman does not search for advertisements
using keywords from social media content.
Appeal Br. 17 (emphases added).
The Examiner disagrees with Appellant, and further explains the basis
for the rejection:
The claim limitation only requires a transmission of two queries
with one being one or more key words based on what the user
has published and one based on search terms used by the
user. As shown in the cited portion of Suleman, Suleman
shows two queries where the first is the crawling engine
collects information related to social graph and sends it to an
index engine to be used to select or generate content. The
second is a search performed by the user including search terms
to generate search results. The Examiner interprets the
crawling information being sent to the indexing engine as the
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query sent to the advertising server.10 In the same way, the
index is searched by the resource locator when the search query
terms are entered by a user.
Ans. 8 (emphasis added).
However, we find the Examiner has ignored that the “separate query”
that is transmitted to an advertising server is expressly claimed as including:
“(i) the one or more keywords determined based on the plurality of
publically visible user-authored publications associated with the first user
and retrieved from the one or more social media servers, and (ii) at least one
of the search query terms.” Claim 1 (emphasis added).

10 Regarding the Examiner’s statement: “The Examiner interprets the
crawling information being sent to the indexing engine as the query sent to
the advertising server” (Ans. 8 (emphasis added)), we note the Examiner has
it backwards — the correct approach is to interpret the claim under BRI and
then read the properly construed claim limitation on the corresponding
feature(s) found in the cited reference. Cited prior-art references do not
“read on” claim limitations, rather, a particular claim limitation “reads on”
the corresponding feature(s) found in the cited prior art reference after the
claim language is properly construed in accordance with the broadest
reasonable interpretation consistent with the Specification. See, e.g., Atlas
Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed. Cir. 1999)
(“Anticipation of a patent claim requires a finding that the claim at issue
‘reads on’ a prior art reference.”). We note claim construction is an
important step in a patentability determination. Medichem, S.A. v. Rolabo,
S.L., 353 F.3d 928, 933 (Fed. Cir. 2003) (“Both anticipation under § 102 and
obviousness under § 103 are two-step inquiries. The first step in both
analyses is a proper construction of the claims . . . The second step in the
analyses requires a comparison of the properly construed claim to the prior
art.” (internal citations omitted) (emphasis added)). See also the mapping
rule: 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence
of each reference, if not apparent, must be clearly explained and each
rejected claim specified.” (emphasis added).
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We emphasize that the antecedent basis for “at least one of the search
query terms” is the “one or more search query terms” that is recited in the
preceding “receiving” step of claim 1, i.e., “receiving, by the computing
system, from a user device associated with the first user, a request specifying
one or more search query terms.” Emphasis added.
The Examiner reads this preceding “receiving” step of claim 1 on
Suleman at column 2, lines 55–65. See Final Act. 10.
This portion of Suleman describes, in pertinent part:
techniques for generating customized content, such as
customized advertisements. The processes may include
receiving a search query from a computing device associated
with a user. For example, the user may enter keywords into a
search engine in order to perform an online search for
electronic content associated with those keywords. The
processes may also identify user-specific content. For example,
the user-specific content may be information about the user that
is relevant to the original keywords. For example, if the user is
searching for life insurance, then the user-specific content may
be the user’s age.
Suleman col. 2, ll. 55–65 (emphasis added).
We agree with the Examiner that Suleman’s crawling engine 219
(column 8, ll. 44–47) that crawls “user-generated content (of both the
searcher and others, e.g., members of the searcher’s social graph), and
indexing engine 213” that “may incorporate that content into an appropriate
search index” at least suggests the first portion of the transmitted “separate
query” that is claimed as including: “(i) the one or more keywords
determined based on the plurality of publically visible user-authored
publications associated with the first user and retrieved from the one or more
social media servers,” as recited in claim 1.
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However, we agree with Appellant that the Examiner has not shown
that any transmitted “separate query” generated by crawling engine 219
(column 8, lines 43–47) includes (ii) at least one of the search query terms
that are mapped by the Examiner (Final Act. 10) to Suleman, at column 2,
lines 55–65.
Based upon our review of the record, we find a preponderance of the
evidence supports Appellant’s argument that “Suleman does not form a
separate query; [and] Suleman does not combine keywords from social
media posts with search query terms from the user in a single query.”
Appeal Br. 17 (emphasis added).
Accordingly, for essentially the same reasons argued by Appellant in
the Briefs, as further discussed above, we are constrained on this record to
reverse the Examiner’s § 103 Rejection B of independent claim 1.
For the same reasons, we also reverse obviousness Rejection B of
remaining independent claims 8 and 15. Claims 8 and 15 recite the disputed
limitations of claim 1 using similar language having commensurate scope.
Because we have reversed Rejection B of all independent claims, for the
same reasons, we also reverse the Examiner’s Rejection B of associated
dependent claims 6, 7, 10, 28, and 32.

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Remaining Obviousness Rejections C, D, E, F, G, H, and I
of all Remaining Dependent Claims
In light of our reversal of Rejection B of independent claims 1, 8, and
15, supra, we also reverse Rejections C, D, E, F, G, H, and I of all remaining
dependent claims which variously and ultimately depend therefrom. On this
record, the Examiner has not shown how the additionally cited tertiary
references overcome the aforementioned deficiencies of the base
combination of Bhatia and Suleman, as discussed above regarding
obviousness Rejection B of claim 1.

CONCLUSIONS
By applying the Director’s 2019 PEG and October 2019 Update, as
now set forth under MPEP Sections 2103 through 2106.07(c), we conclude
that all claims 1, 6–8, 10, 11, 15, 18, 19, 21, 24, 25, and 27–32, as rejected
by the Examiner under 35 U.S.C. § 101, are not directed to patent-eligible
subject matter.
The Examiner erred in rejecting claims 1, 6–8, 10, 11, 15, 18, 19, 21,
24, 25, and 27–32 as being obvious under 35 U.S.C. § 103, over the cited
combinations of references.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 6–8, 10,
11, 15, 18,
19, 21, 24,
25, 27–32
101 Eligibility 1, 6–8, 10,
11, 15, 18,
19, 21, 24,
25, 27–32

1, 6–8, 10,
15, 28, 32
103 Bhatia, Suleman 1, 6–8,
10, 15,
28, 32
24, 25 103 Bhatia, Suleman,
Polis
24, 25
11, 18 103 Bhatia, Suleman,
Mackay
11, 18
19 103 Bhatia, Suleman,
Won Cho
19
21 103 Bhatia, Suleman, Park 21
27 103 Bhatia, Suleman,
Nuzzi
27
29 103 Bhatia, Suleman,
Agranat
29
30, 31 103 Bhatia, Suleman,
Srinivasan
30, 31
Overall
Outcome
1, 6–8, 10,
11, 15, 18,
19, 21, 24,
25, 27–32

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FINALITY AND RESPONSE
Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision to reject
all claims on appeal. See 37 C.F.R. § 41.50(a)(1).
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). See
37 C.F.R. § 41.50(f).
AFFIRMED

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte ANAND N. KATTI
_____________
Appeal 2020-005702
Application 14/516,280
Technology Center 3600
____________
Before ST. JOHN COURTENAY III, MATTHEW J. McNEILL, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 6–8, 10, 11, 15, 18, 19, 21, 24, 25, and 27–32.
Claims 2–5, 9, 12–14, 16, 17, 20, 22, 23, and 26 are canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
Invention
Embodiments of the disclosed and claimed invention on appeal
relate to “on-line advertising and social media, and more particularly
to the selection of advertisements based on information available
through social media.” Spec. ¶ 1.
Representative Claim 1
1. A method comprising:
providing, by a computing system comprising one or
more processors, consent data associated with a first
user, to one or more social media servers including a first
social media server, wherein said providing comprises
providing consent data to each of the one or more social
media servers;
receiving, by the computing system, for each of the
one or more social media servers, data identifying a
scope of a set of publications stored by the social media
server, wherein a first scope for the first social media
server corresponds to access to a first set of user
authored publications having a public level of visibility and
stored by the first social media server, but does not
provide access to user-authored publications stored by
the first social media server that are constrained to be
visible to a limited audience;
receiving, by the computing system and from each
of the one or more social media servers, a user-account
specific authorization token, wherein a separate user-
account specific authorization token is received from each
of the one or more social media servers in response to
the consent data provided to the corresponding social
media application;
maintaining, by the computing system, for each of
the one or more social media servers, a mapping
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between the received scope of publications stored by the
social media server and the token received from the
corresponding social media server;
retrieving, by the computing system, using the one
or more mappings between the received scope of
publications stored by the one or more social media
servers and the corresponding tokens, data
corresponding to a plurality of publically visible user-
authored publications associated with the first user and
stored by the one or more social media servers;
storing, by the computing system, the data
corresponding to a plurality of publically visible user-
authored publications associated with the first user and
retrieved from the one or more social media servers, in a
centralized data storage, wherein the centralized data
storage further stores a timestamp associated with each
publically visible user-authored publication, each said
timestamp assigned by the corresponding social media
server;
[L1] determining, by the computing system, one or
more keywords based on the plurality of publically visible
user-authored publications associated with the first user
and retrieved from the one or more social media servers;
receiving, by the computing system, from a user
device associated with the first user, a request specifying
one or more search query terms;
[L2] transmitting, by the computing system, a
separate query to an advertising server, the separate
query including (i) the one or more keywords determined
based on the plurality of publically visible user-authored
publications associated with the first user and retrieved
from the one or more social media servers, and (ii) at
least one of the search query terms;
receiving, by the computing system and from the
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advertising server, data identifying one or more
advertisements in response to the separate query to the
advertising server;
generating, by the computing system, a search
results web page that includes both (a) search results
selected based on the search query terms and (b) the one
or more advertisements received from the advertising
server; and
transmitting, by the computing system, the search
results page to the user device.
Appeal Br. 19–20 (Claim App.) (Disputed limitations L1 and L2
emphasized).
Evidence Relied Upon by the Examiner
Name Reference Date
Polis et al. US 7,673,327 B1 Mar. 2, 2010
Bhatia et al. US 8,631,473 B2 Jan. 14, 2014
Suleman et al. US 9,286,397 B1 Mar. 15, 2016
Mackay US 2007/0288247 A1 Dec. 13, 2007
Won Cho US 2009/0037375 A1 Feb. 5, 2009
Nuzzi US 2012/0239497 A1 Sept. 20, 2012
Park et al. US 2013/0054591 A1 Feb. 28, 2013
Agranat et al. US 2013/0066951 A1 Mar. 14, 2013
Srinivasan et al. US 2013/0086645 A1 Apr. 4, 2013
Table of Rejections
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Rejection Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis
A 1, 6–8, 10, 11,
15, 18, 19, 21,
24, 25, 27–32
101 Eligibility
B 1, 6–8, 10, 15,
28, 32
103 Bhatia, Suleman
C 24, 25 103 Bhatia, Suleman, Polis
D 11, 18 103 Bhatia, Suleman, Mackay
E 19 103 Bhatia, Suleman, Won
Cho
F 21 103 Bhatia, Suleman, Park
G 27 103 Bhatia, Suleman, Nuzzi
H 29 103 Bhatia, Suleman, Agranat
I 30, 31 103 Bhatia, Suleman,
Srinivasan
ANALYSIS
We have considered all of Appellant’s arguments and any
evidence presented. We highlight and address specific findings and
arguments for emphasis in our analysis below.
Rejection A Under 35 U.S.C. § 101
USPTO 35 U.S.C. § 101 MPEP Guidance
In January and October of 2019, the U.S. Patent and
Trademark Office (“USPTO”) published revised guidance on the
application of 35 U.S.C. § 101. We note the USPTO current eligibility
guidance is found in the Ninth Edition, Revision 10.2019 (revised
June 2020) of the Manual of Patent Examination Procedure
(“MPEP”), and particularly within Sections 2103 through 2106.07(c).
Accordingly, all references to the MPEP throughout this Decision are
to the Ninth Edition, Revision 10.2019 (Last Revised June 2020),
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unless otherwise indicated.
Under MPEP § 2106, 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 (“Step 2A, Prong Two”).
MPEP § 2106, Step 2A, Prong One
The Judicial Exception
Under MPEP § 2106.04(a), the enumerated groupings of
abstract ideas are defined as follows:
(1) Mathematical concepts – mathematical
relationships, mathematical formulas or equations,
mathematical calculations (see MPEP § 2106.04(a)(2),
subsection I);
(2) Certain methods of organizing human activity –
fundamental economic principles or practices
(including hedging, insurance, mitigating risk);
commercial or legal interactions (including agreements
in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business
relations); managing personal behavior or
relationships or interactions between people (including
social activities, teaching, and following rules or
instructions) (see MPEP § 2106.04(a)(2), subsection
II); and
(3) Mental processes – concepts performed in the
human mind (including an observation, evaluation,
judgment, opinion) (see MPEP § 2106.04(a)(2),
subsection III).
Under Step 2A, Prong One, the Examiner determines the
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claims recite a mental process:
The claims recite providing “on-line advertising and
social media, and more particularly to the selection of
advertisements based on information available through
social media”. The limitations fall[] within the category of
metal [sic] processes (i.e. concepts that can be performed
by the human
mind such as evaluation). The comparison of the access
token information to the stored data could be done by a
mental process.
Final Act. 2–3 (emphasis added).
Appellant disagrees, and contends that the “recitations in the . .
. claims cannot practically be performed in the human mind, and are
therefore not abstract ideas.” Appeal Br. 12. In support, Appellant
refers to the “receiving,” “maintaining,” and “transmitting” limitations
recited in claim 1. Appeal Br. 12–13.
We agree with the Examiner that the language of claim 1
requires an evaluation (i.e., a step of determining) that could be
performed alternatively by a person as a mental process, as defined
under MPEP § 2106.04(a)(2), subsection III. We reproduce the
“determining” limitation L1 of claim 1 below:
[L1] determining, by the computing system, one or more
keywords based on the plurality of publically visible user-
authored publications associated with the first user and
retrieved from the one or more social media servers.
Claim 1 (emphasis added).
We additionally conclude that the use of a server as an
“advertising server,” as recited in claim 1, involves certain methods of
organizing human activity, as defined under MPEP § 2106.04(a)(2),
subsection II, as including fundamental economic principles or
practices, such as commercial or legal interactions, further including
advertising and marketing or sales activities,
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We note similar limitations of commensurate scope are recited
in independent claims 8 and 15. We emphasize that combining
several abstract ideas does not render the combination any less
abstract. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another
abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94
(Fed. Cir. 2016) (determining the pending claims were directed to a
combination of abstract ideas).
MPEP § 2106.04(a) guides that “[i]f the identified limitation(s)
falls within at least one of the groupings of abstract ideas, it is
reasonable to conclude that the claim recites an abstract idea in Step
2A Prong One.” In such case, “[t]he claim then requires further
analysis in Step 2A Prong Two, to determine whether any additional
elements in the claim integrate the abstract idea into a practical
application, see MPEP § 2106.04(d).” MPEP 2106.04(a).
Because we conclude that all claims 1, 6–8, 10, 11, 15, 18, 19,
21, 24, 25, and 27–32 recite an abstract idea, as identified above,
under Step 2A, Prong One, we proceed to Step 2A, Prong Two, in
which we apply the guidance set forth under MPEP § 2106.04(d).
Step 2A, Prong Two Under MPEP § 2106.04(d),
Integration of the Judicial Exception into a Practical Application
For example, limitations that are indicative of integration into a
practical application under MPEP § 2106.04(d) include:
%2. 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);
%2. Effecting a transformation or reduction of a
particular article to a different state or thing — see
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particular article to a different state or thing — see
MPEP § 2106.05(c); and
%2. 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 abstract idea on a computer, or merely
uses 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 MPEP § 2106.04(d)(I) (Describing Step 2A, Prong Two).
Additional Limitations
Applying the USPTO guidance under MPEP § 2106.04(d), we
consider whether there are additional elements set forth in the claims
that integrate the judicial exception into a practical application.
We note that claims 1, 6–8, 10, 11, 15, 18, 19, 21, 24, 25, and
27–32 recite steps or functions that are implemented by a computer
and/or a computer system including one or more processors. See
supra n.5. We further note the supporting exemplary, non-limiting
descriptions of generic computer components found in the
Specification. For example, see Spec.
¶ 62: “The client computing devices can be general purpose
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personal computers including, by way of example, personal
computers and/or laptop computers running various versions of
Microsoft Windows®, Apple Macintosh®, and/or Linux operating
systems.” (emphasis added).
We emphasize that McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “The abstract
idea exception prevents patenting a result where ‘it matters not by
what process or machinery the result is accomplished.’” 837 F.3d at
1312 (quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis
added).
Here, we find Appellant’s claimed invention merely implements
the abstract idea using instructions executed on generic computer
components. Therefore, we conclude Appellant’s claims 1, 6–8, 10,
11, 15, 18, 19, 21, 24, 25, and 27–32 merely use a generic
programmed computer as a tool to perform an abstract idea. See
MPEP § 2106.05(f).
Extra- or Post-Solution Activities Under MPEP § 2106.05(g)
“[T]he prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a
particular technological environment’ or [by] adding ‘insignificant
post[-]solution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–12
(2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
Here, we conclude that independent claim 1 recites one or
more additional limitations that are extra-solution activities the courts
have determined to be insufficient to transform judicially excepted
subject matter into a patent-eligible application. See MPEP §
2106.05(g).
For example, we conclude that the claim 1 steps of “providing,”
“receiving,” “maintaining,” “retrieving,” “storing,” “generating,” and
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“transmitting” recite insignificant extra-solution activities (e.g., data
gathering, storing, sending). Cf. buySAFE v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends
the information over a network—with no further specification—is not
even arguably inventive.”). We note similar limitations of
commensurate scope are recited in independent claims 8 and 15.
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MPEP § 2106.05(a) — Improvement to the Functionality of a
Computer or Other Technology or Technical Field.
We consider next the question of whether there are any
claimed improvements to the functioning of a computer or to any
other technology or technical field. We apply the guidance set forth
under MPEP § 2106.05(a).
Appellant contends that:
reformulating the query to use a combination of social
media keywords and search query terms improves the
technology for searching and retrieving relevant content
for the user. This provides a specific improvement over
prior systems and integrates the individual recitations of
the claims into a
practical application.
Appeal Br. 14 (emphasis added).
But we note that the argued language “reformulating the query”
is not expressly claimed. Id. However, the argued reformulating of
the query is premised on “determining one or more keywords based
on the plurality of publically visible user-authored publications
associated with the first user and retrieved from the one or more
social media servers” (claim 1 (emphasis added)) that could be
performed alternatively as a mental process, as defined under MPEP
§ 2106.04(a)(2), subsection III.
But “[u]sing a computer to accelerate an ineligible mental
process does not make that process patent-eligible.” Bancorp Servs.,
L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1279
(Fed. Cir. 2012); see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a computer to
perform routine tasks more quickly or more accurately is insufficient
to render a claim patent eligible.”).
Applying this guidance here, we conclude the claim 1 step of
“determining” is merely an abstract idea implemented by a generic
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computer system comprising “one or more processors.” Claim 1.
To the extent that Appellant’s independent method claim 1,
independent medium claim 8, and independent system claim 15,
might arguendo be an improvement over prior-art methods, mediums,
and systems, we note that an improved abstract idea is still an
abstract idea. See Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 90 (2012) (holding that a novel and nonobvious
claim directed to a purely abstract idea is, nonetheless patent
ineligible). See also Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is
still an abstract idea.”) (emphasis omitted).
To the extent that Appellant’s method of claim 1 automatically
performs the step of “determining,” we note that the “‘mere
automation of manual processes using generic computers’ . . . ‘does
not constitute a patentable improvement in computer technology,’”
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir.
2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1055 (Fed. Cir. 2017).
As set forth in MPEP § 2106.05(a) (emphasis added):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the
details regarding how a computer aids the method, the
extent to which the computer aids the method, or the
significance of a computer to the performance of the
method. Merely adding generic computer components to
perform the method is not sufficient. Thus, the claim must
include more than mere instructions to perform the
method on a generic component or machinery to qualify
as an improvement to an existing technology.
In reviewing the record, we find Appellant does not advance
any persuasive arguments explaining how the claimed generic
computer components aid the method, the extent to which the
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computer aids the method, or the significance of a computer to the
performance of the method to improve the recited computer
components. See MPEP § 2106.05(a).
Accordingly, on this record, we conclude that independent claim
1 does not recite an improvement to the functionality of a computer or
other technology or technical field. See MPEP § 2106.05(a). As
noted above, remaining independent claims 8 and 15 recite similar
limitations having commensurate scope.
MPEP § 2106.05(b), 2106.05(c)
Appellant advances no arguments that any of the method
claims on appeal are tied to a particular machine (MPEP §
2106.05(b)), or transform an article to a different state or thing (MPEP
§ 2106.05(c)).
MPEP § 2106.05(e) Meaningful Claim Limitations
The Examiner determines that “additional claim elements do
not provide meaningful limitation(s) to transform the abstract idea into
a patent eligible application of the abstract idea such that the claims
amount to significantly more than the abstract idea itself.” Final Act.
4.
Appellant advances no arguments rebutting the Examiner’s
determination under MPEP § 2106.05(e).
Because Appellant does not advance any substantive,
persuasive arguments explaining how the judicial exceptions are
applied or used in some meaningful way, as clarified under MPEP §
2106.05(e), we are not persuaded the Examiner erred. We
emphasize that merely adding generic hardware and computer
components to perform abstract ideas does not integrate those ideas
into a practical application. See Alice, 573 U.S. at 223 (The “mere
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recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention.”) Accordingly, under
Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–(h)), we
conclude that all claims 1, 6–8, 10, 11, 15, 18, 19, 21, 24, 25, and
27–32 do not integrate the judicial exception into a practical
application.
The Inventive Concept – Step 2B
As set forth under MPEP § 2106.05(d)), 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 activity”
in the field; 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.
Under Step 2B, the Examiner finds that “[m]ere instructions to
apply an exception using a generic computer component, and adding
insignificant extra-solution activity to the judicial exception cannot
provide an inventive concept.” Final Act. 4 (emphasis added).
Appellant advances no arguments rebutting the Examiner’s
finding under MPEP § 2106.05(d), Step 2B, the “Inventive Concept.”
Therefore, on this record, we are not persuaded that
Appellant’s claims do more than simply append well-understood,
routine, and conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception. We
again emphasize that an improved abstract idea is still an abstract
idea. See Mayo, 566 U.S. at 90; see also Synopsys, 839 F.3d at
1151 (“[A] claim for a new abstract idea is still an abstract idea.”)
(emphasis omitted).
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Moreover, because Appellant does not advance substantive,
persuasive arguments regarding any claimed non-conventional and
non-generic arrangement of known computer components, we find no
inventive concept in any purported ordered combination of these
limitations. Thus, we find Appellant’s claims are unlike the claims
considered by the court in BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), in which the
court found “an inventive concept . . . in the non-conventional and
non-generic arrangement of known, conventional pieces.” 827 F.3d
at 1350 (emphases added).
In light of the foregoing, we conclude that each of Appellant’s
claims 1, 6–8, 10, 11, 15, 18, 19, 21, 24, 25, and 27–32, considered
as a whole, is directed to a patent-ineligible abstract idea that is not
integrated into a practical application, and does not include an
inventive concept. Therefore, on this record, we sustain the
Examiner’s Rejection A under 35 U.S.C. § 101 of all claims 1, 6–8,
10, 11, 15, 18, 19, 21, 24, 25, and 27–32 on appeal.
Rejection B of Independent Claim 1 Under 35 U.S.C. § 103
Issues: Under 35 U.S.C. § 103, did the Examiner err by finding
the cited combination of references would have taught or suggested
the disputed claim 1 limitations of L1 and L2, within the meaning of
representative claim 1?
We focus our analysis on limitation L2 of claim 1, because we
find limitation L2 is dispositive regarding all the rejections set forth by
the Examiner under 35 U.S.C. § 103. See claim 1, in context:
receiving, by the computing system, from a user device
associated with the first user, a request specifying one or more
search query terms;
[L2] transmitting, by the computing system, a
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separate query to an advertising server, the separate
query including (i) the one or more keywords determined
based on the plurality of publically visible user-authored
publications associated with the first user and retrieved
from the one or more social media servers, and (ii) at
least one of the search query terms.
Claim 1 (emphasis added).
Regarding the “transmitting” limitation L2 of claim 1, Appellant
contends:
This rejection should be reversed because Suleman
does not transmit a second query that includes a
combination of keywords from the specific user’s social
media posts and search query terms from the user. While
both Suleman and the Appellant’s claims use the user’s
search query terms to retrieve content relevant to the
search query, they differ in how they then retrieve
advertisements. Suleman uses the same search query to
also retr[ieve] configurable advertisements that then have
blank sections completed with the user’s social media
content. In contrast, the Appellant’s claims generate a
new search query that adds keywords from the users [sic]
social media content to the search for a terms, and this
query is used to retrieve the ads. Using social media
content to search for relevant ads is not the same as
using social media content to fill in blank information in
ads that have already been identified without using the
social media content. Suleman does not form a separate
query; Suleman does not combine keywords from social
media posts with search query terms from the user in a
single query; and Suleman does not search for
advertisements using keywords from social media
content.
Appeal Br. 17 (emphases added).
The Examiner disagrees with Appellant, and further explains
the basis for the rejection:
The claim limitation only requires a transmission of two
queries with one being one or more key words based on
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what the user has published and one based on search
terms used by the
user. As shown in the cited portion of Suleman, Suleman
shows two queries where the first is the crawling engine
collects information related to social graph and sends it to
an index engine to be used to select or generate content.
The second is a search performed by the user including
search terms to generate search results. The Examiner
interprets the crawling information being sent to the
indexing engine as the query sent to the advertising
server. In the same way, the index is searched by the
resource locator when the search query terms are
entered by a user.
Ans. 8 (emphasis added).
However, we find the Examiner has ignored that the “separate
query” that is transmitted to an advertising server is expressly
claimed as including: “(i) the one or more keywords determined
based on the plurality of publically visible user-authored publications
associated with the first user and retrieved from the one or more
social media servers, and (ii) at least one of the search query
terms.” Claim 1 (emphasis added).
We emphasize that the antecedent basis for “at least one of the
search query terms” is the “one or more search query terms” that
is recited in the preceding “receiving” step of claim 1, i.e., “receiving,
by the computing system, from a user device associated with the first
user, a request specifying one or more search query terms.”
Emphasis added.
The Examiner reads this preceding “receiving” step of claim 1
on Suleman at column 2, lines 55–65. See Final Act. 10.
This portion of Suleman describes, in pertinent part:
techniques for generating customized content, such as
customized advertisements. The processes may include
receiving a search query from a computing device
associated with a user. For example, the user may enter
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keywords into a search engine in order to perform an
online search for electronic content associated with those
keywords. The processes may also identify user-specific
content. For example, the user-specific content may be
information about the user that is relevant to the original
keywords. For example, if the user is searching for life
insurance, then the user-specific content may be the
user’s age.
Suleman col. 2, ll. 55–65 (emphasis added).
We agree with the Examiner that Suleman’s crawling engine
219 (column 8, ll. 44–47) that crawls “user-generated content (of both
the searcher and others, e.g., members of the searcher’s social
graph), and indexing engine 213” that “may incorporate that content
into an appropriate search index” at least suggests the first portion of
the transmitted “separate query” that is claimed as including: “(i) the
one or more keywords determined based on the plurality of publically
visible user-authored publications associated with the first user and
retrieved from the one or more social media servers,” as recited in
claim 1.
However, we agree with Appellant that the Examiner has not
shown that any transmitted “separate query” generated by crawling
engine 219 (column 8, lines 43–47) includes (ii) at least one of the
search query terms that are mapped by the Examiner (Final Act. 10)
to Suleman, at column 2, lines 55–65.
Based upon our review of the record, we find a preponderance
of the evidence supports Appellant’s argument that “Suleman does
not form a separate query; [and] Suleman does not combine
keywords from social media posts with search query terms from the
user in a single query.” Appeal Br. 17 (emphasis added).
Accordingly, for essentially the same reasons argued by
Appellant in the Briefs, as further discussed above, we are
constrained on this record to reverse the Examiner’s § 103 Rejection
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B of independent claim 1.
For the same reasons, we also reverse obviousness Rejection
B of remaining independent claims 8 and 15. Claims 8 and 15 recite
the disputed limitations of claim 1 using similar language having
commensurate scope. Because we have reversed Rejection B of all
independent claims, for the same reasons, we also reverse the
Examiner’s Rejection B of associated dependent claims 6, 7, 10, 28,
and 32.
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Remaining Obviousness Rejections C, D, E, F, G, H, and I
of all Remaining Dependent Claims
In light of our reversal of Rejection B of independent claims 1,
8, and 15, supra, we also reverse Rejections C, D, E, F, G, H, and I
of all remaining dependent claims which variously and ultimately
depend therefrom. On this record, the Examiner has not shown how
the additionally cited tertiary references overcome the
aforementioned deficiencies of the base combination of Bhatia and
Suleman, as discussed above regarding obviousness Rejection B of
claim 1.
CONCLUSIONS
By applying the Director’s 2019 PEG and October 2019
Update, as now set forth under MPEP Sections 2103 through
2106.07(c), we conclude that all claims 1, 6–8, 10, 11, 15, 18, 19, 21,
24, 25, and 27–32, as rejected by the Examiner under 35 U.S.C. §
101, are not directed to patent-eligible subject matter.
The Examiner erred in rejecting claims 1, 6–8, 10, 11, 15, 18,
19, 21, 24, 25, and 27–32 as being obvious under 35 U.S.C. § 103,
over the cited combinations of references.
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basi
s
Affirmed Reverse
d
1, 6–8,
10, 11,
15, 18,
19, 21,
24, 25,
27–32
101 Eligibility 1, 6–8, 10,
11, 15, 18,
19, 21, 24,
25, 27–32
1, 6–8,
10, 15,
28, 32
103 Bhatia, Suleman 1, 6–8,
10, 15,
28, 32
24, 25 103 Bhatia, Suleman,
Polis
24, 25
11, 18 103 Bhatia, Suleman,
Mackay
11, 18
19 103 Bhatia, Suleman,
Won Cho
19
21 103 Bhatia, Suleman,
Park
21
27 103 Bhatia, Suleman,
Nuzzi
27
29 103 Bhatia, Suleman,
Agranat
29
30, 31 103 Bhatia, Suleman,
Srinivasan
30, 31
Overall
Outcom
e
1, 6–8, 10,
11, 15, 18,
19, 21, 24,
25, 27–32
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finality and response
Because we have sustained at least one ground of rejection
with respect to each claim on appeal, we affirm the Examiner’s
decision to reject all claims on appeal. See 37 C.F.R. § 41.50(a)(1).
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).
See
37 C.F.R. § 41.50(f).
AFFIRMED