Sam Lessin et al.

Patent Trials and Appeals Board

Sep 30, 2019

13681195 - (D) (P.T.A.B. Sep. 30, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/681,195 11/19/2012 Sam Lessin 26295-20581 8131
87851 7590 09/30/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
EZEWOKO, MICHAEL I
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
09/30/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
fwfacebookpatents@fenwick.com
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte SAM LESSIN and JUSTIN ALEXANDER
SHAFFER
________________

Appeal 2018-004169
Application 13/681,195
Technology Center 3600
________________

Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and
BARBARA A. BENOIT, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge JEREMY J.
CURCURI.

Concurring opinion filed by Administrative Patent Judge BARBARA A.
BENOIT

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4–6, 8, 9, 11–17, 19–24, and 28–33. Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
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Claims 1, 2, 4–6, 8, 9, 11–17, 19–24, and 28–33 are rejected under 35
U.S.C. § 101 as directed to a judicial exception without significantly more.
Final Act. 2–4.
We affirm.

STATEMENT OF THE CASE
Appellants’ invention relates to “sponsoring venues for targeting a
social networking system.” Spec. ¶ 1. Claims 1, 11, and 17 are illustrative
and reproduced below:
1. A method comprising:
requesting control of one or more venue devices at one or
more venues over a network, for exposing advertiser-controlled
content to one or more users of an online social networking
system who are located at the one or more venues, comprising:
receiving by the advertiser via an interface a
plurality of selectable venues with available venue devices for
controlling by the advertiser, the plurality of selectable venues
previously identified via geographical data from check-in
events by a plurality of users of the online social networking
system with GPS-enabled devices;
selecting, via the interface, a venue from the
received plurality of selectable venues with available venue
devices for controlling by the advertiser;
in response to selection of the venue, receiving by
the advertiser via the interface a plurality of selectable device
controls for controlling venue devices located at the selected
venue; and
selecting a device control from the plurality of
selectable device controls for venue devices located at the
selected venue;
receiving, by the advertiser, access over a network to the
selected device control for the venue devices of the selected
venue, wherein advertiser-controlled content is exposed to one
or more users of the online social networking system located at
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the selected venue via one or more of the venue devices of the
selected venue;
generating, by a processor, an ad based on the advertiser-
controlled content exposed to the one or more users of the
online social networking system located at the selected venue;
and
providing the generated ad to the online social
networking system for providing to at least one user device
associated with a user of the one or more users of the online
social networking system.
11. A method comprising:
receiving, from a plurality of advertisers, a plurality of
bids for an auction for one or more venues for targeting
advertisements in an online social networking system;
determining a winning bid for a selected venue from a
winning advertiser of the plurality of advertisers;
providing a plurality of information items about a
plurality of users in the online social networking system
associated with the selected venue to the winning advertiser
through an advertising interface;
receiving a request for control of one or more venue
devices at one or more venues over a network, for exposing
advertiser-controlled content to one or more users of an online
social networking system who are located at the one or more
venues, comprising:
providing to the winning advertiser via the
advertising interface a plurality of selectable venues with
available venue devices for controlling by the winning
advertiser the plurality of selectable venues previously
identified to the online social networking system via
geographical data from check-in events by a plurality of users
of the online social networking system with GPS-enabled
devices;
receiving, via the advertising interface, a venue
from the received plurality of selectable venues with available
venue devices for controlling by the winning advertiser;
providing to the winning advertiser via the
advertising interface a plurality of selectable device controls for
controlling venue devices located at the selected venue; and
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receiving selection of a venue device control from
the plurality of selectable device controls for the selected
venue;
providing, by a processor, access over a network to the
selected device control of the selected venue to the winning
advertiser through the advertising interface; and
receiving a selection of an action related to the control
over the selected device control of the selected venue through
the advertising interface, where the action alters the selected
device control of the selected venue, wherein advertiser-
controlled content is exposed to one or more users of the online
social networking system located at the selected venue via one
or more of the venue devices of the selected venue;
receiving an ad from the winning advertiser, based
on the advertiser-controlled content exposed to the one or more
users of the online social networking system located at the
selected venue, via the advertising interface for providing for
display to at least one user of the plurality of users associated
with the selected venue; and
providing the ad for display to the at least one user
of the plurality of users associated with the selected venue.
17. A method comprising:
receiving an interface at a venue device from an online
social networking system for allowing requests from advertisers
for, and for providing control over, one or more device controls
of a venue associated with the venue device;
specifying on the venue device via the interface one or
more device controls for the venue device as one or more links
selectable by an advertiser in the received interface from the
online social networking system in response to selection of the
venue by the advertiser, for providing access over a network to
the selected one or more device controls of the venue to the
advertiser in exchange for a fee; and
allowing, by a processor, the access over the network to
the selected one or more device controls for the venue device of
the venue.

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PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).

ANALYSIS
The Examiner determines claims 1, 2, 4–6, 8, 9, 11–17, 19–24, and
28–33 are directed to a judicial exception without significantly more. Final
Act. 2–4. The Examiner determines
Claims 1, 11[,] and 17 are directed to the abstract idea of
providing advertisements to users of a social network, a
fundamental economic practice. The courts have noted that
displaying or providing an advertisement as an exchange or
currency (Ultramercial), such as provided for in the instant
amended claims, for access to “previously identified data from
check-in events”, is an abstract idea.
Final Act. 2–3; see also Final Act. 3–4 (citing Spec. ¶¶ 17, 29) (determining
the claims do not recite significantly more than the abstract idea), Ans. 12–
13.
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) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo and Alice.
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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
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
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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. (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 (citation 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. (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.
The USPTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019). Under that guidance, we first look to whether
the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2018)).
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 84 Fed. Reg. at 56.
Are the claims at issue directed
to a patent-ineligible concept?
Step One
Claims 1, 11, and 17 are method claims, which fall within the
“process” category of 35 U.S.C. § 101.
Although these claims fall within the statutory categories, we still
must determine whether the claim is directed to a judicial exception, namely
an abstract idea. See Alice, 573 U.S. at 217–18. Thus, we must determine
whether the claim recites a judicial exception, and fails to integrate the
exception into a practical application. See 84 Fed. Reg. at 54–55. If both
elements are satisfied, the claim is directed to a judicial exception under the
first step of the Alice/Mayo test. See id.
Step 2A, Prong One
Independent claim 1 is a method claim, and recites the following
limitations:
[i] requesting control of one or more venue devices at one
or more venues over a network, for exposing advertiser-
controlled content to one or more users of an online social
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networking system who are located at the one or more venues.
comprising:
[ii] receiving by the advertiser via an interface a
plurality of selectable venues with available venue devices for
controlling by the advertiser, the plurality of selectable venues
previously identified via geographical data from check-in events
by a plurality of users of the online social networking system
with GPS-enabled devices;
[iii] selecting, via the interface, a venue from the
received plurality of selectable venues with available venue
devices for controlling by the advertiser;
[iv] in response to selection of the venue, receiving
by the advertiser via the interface a plurality of selectable device
controls for controlling venue devices located at the selected
venue; and
[v] selecting a device control from the plurality of
selectable device controls for venue devices located at the
selected venue.
The overall step of “[i] requesting control of one or more venue devices”
describes “advertising[] activities or behaviors” because the request is part
of an advertising process. See Spec. ¶ 19 (emphasis added) (“Through the ad
buy user interface on the advertiser device 120, an advertiser may purchase
a particular venue and select one or more controls of environmental aspects
of the particular venue. A venue control module 116 provides to an
advertiser device 120 access to one or more environmental controls of a
selected venue.”). Such activities or behaviors are an example of
“commercial[] interactions.” Memorandum 84 Fed. Reg. at 52. This
recitation is thus the abstract concept of “[c]ertain methods of organizing
human activity.” Id.
The further, more detailed, sub-steps recite the abstract concept of
“[m]ental processes.” For example, the steps of “[ii] receiving by the
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advertiser” and “[iv] receiving by the advertiser” cover receiving data, which
is an “observation,” which is an example of “concepts performed in the
human mind.” Memorandum 84 Fed. Reg. at 52. These recitations are thus
the abstract concept of “[m]ental processes.” Id. The steps of “[iii]
selecting... a venue” and “[v] selecting a device control” are decision
making, which is one or more of “observation, evaluation, judgment,
opinion,” which are examples of “concepts performed in the human mind.”
Memorandum 84 Fed. Reg. at 52. These recitations are thus the abstract
concept of “[m]ental processes.” Id.
Independent claim 1 further recites the following limitation:
receiving, by the advertiser, access over a network to the
selected device control for the venue devices of the selected
venue, wherein advertiser-controlled content is exposed to one
or more users of the online social networking system located at
the selected venue via one or more of the venue devices of the
selected venue.
This step describes “advertising[] activities or behaviors” because
advertiser-controlled content is exposed to one or more users, which is an
example of “commercial[] interactions.” Memorandum 84 Fed. Reg. at 52.
This recitation is thus the abstract concept of “[c]ertain methods of
organizing human activity.” Id. This step also describes receiving data,
which is an “observation,” which is an example of “concepts performed in
the human mind.” Memorandum 84 Fed. Reg. at 52. This recitation also is
thus the abstract concept of “[m]ental processes.” Id.
Independent claim 1 further recites the following limitation:
“generating, by a processor, an ad based on the advertiser-controlled content
exposed to the one or more users of the online social networking system
located at the selected venue.” This step describes “advertising[] activities or
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behaviors” because an ad is generated, which is an example of
“commercial[] interactions.” Memorandum 84 Fed. Reg. at 52. This
recitation is thus the abstract concept of “[c]ertain methods of organizing
human activity.” Id.
Finally, independent claim 1 further recites the following limitation:
“providing the generated ad to the online social networking system for
providing to at least one user device associated with a user of the one or
more users of the online social networking system.” This step describes
“advertising[] activities or behaviors” because an ad is provided, which is an
example of “commercial[] interactions.” Memorandum 84 Fed. Reg. at 52.
This recitation is thus the abstract concept of “[c]ertain methods of
organizing human activity.” Id. This step also describes sending data, which
is an “observation,” which is an example of “concepts performed in the
human mind.” Memorandum 84 Fed. Reg. at 52. This recitation also is thus
the abstract concept of “[m]ental processes.” Id.
Independent claim 11 is a method claim, and recites the following
limitations: “[i] receiving, from a plurality of advertisers, a plurality of bids
for an auction for one or more venues for targeting advertisements in an
online social networking system”; “[ii] determining a winning bid for a
selected venue from a winning advertiser of the plurality of advertisers.”
These steps describe “sales activities or behaviors,” which are examples of
“commercial[] interactions,” because an auction is a sales activity.
Memorandum 84 Fed. Reg. at 52. These recitations are thus the abstract
concept of “[c]ertain methods of organizing human activity.” Id. These steps
also describe receiving data, which is an “observation,” and decision
making, which is one or more of “observation, evaluation, judgement,
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opinion,” which are examples of “concepts performed in the human mind.”
Memorandum 84 Fed. Reg. at 52. These recitations also are thus the abstract
concept of “[m]ental processes.” Id.
Independent claim 11 further recites “[iii] providing a plurality of
information items about a plurality of users in the online social networking
system associated with the selected venue to the winning advertiser through
an advertising interface.” This step describes “sales activities or behaviors,”
which are examples of “commercial[] interactions,” because the information
items are provided to the auction winner. Memorandum 84 Fed. Reg. at 52.
These recitations are thus the abstract concept of “[c]ertain methods of
organizing human activity.” Id. These steps also describe receiving data,
which is an “observation,” which is an example of a “concepts performed in
the human mind.” Memorandum 84 Fed. Reg. at 52. These recitations also
are thus the abstract concept of “[m]ental processes.” Id.
Independent claim 11 further recites the following limitations:
[iv] receiving a request for control of one or more venue
devices at one or more venues over a network, for exposing
advertiser-controlled content to one or more users of an online
social networking system who are located at the one or more
venues, comprising:
[v] providing to the winning advertiser via the
advertising interface a plurality of selectable venues with
available venue devices for controlling by the winning
advertiser the plurality of selectable venues previously
identified to the online social networking system via
geographical data from check-in events by a plurality of users
of the online social networking system with GPS-enabled
devices;
[vi] receiving, via the advertising interface, a
venue from the received plurality of selectable venues with
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available venue devices for controlling by the winning
advertiser;
[vii] providing to the winning advertiser via the
advertising interface a plurality of selectable device controls for
controlling venue devices located at the selected venue; and
[viii] receiving selection of a venue device control
from the plurality of selectable device controls for the selected
venue;
These limitations are corresponding limitations to limitations [i]–[v] of claim
1 and, thus, these limitations also recite abstract ideas.
Independent claim 11 further recites “[ix] providing, by a processor,
access over a network to the selected device control of the selected venue to
the winning advertiser through the advertising interface.” This step describes
receiving data (“providing... access”), which is an “observation,” which is an
example of “concepts performed in the human mind.” Memorandum 84 Fed.
Reg. at 52. This recitation is thus the abstract concept of “[m]ental
processes.” Id.
Independent claim 11 further recites
[x] receiving a selection of an action related to the control over
the selected device control of the selected venue through the
advertising interface, where the action alters the selected device
control of the selected venue, wherein advertiser-controlled
content is exposed to one or more users of the online social
networking system located at the selected venue via one or more
of the venue devices of the selected venue.
This step describes “advertising[] activities or behaviors” because
advertiser-controlled content is exposed to one or more users, which is an
example of “commercial[] interactions.” Memorandum 84 Fed. Reg. at 52.
This recitation is thus the abstract concept of “[c]ertain methods of
organizing human activity.” Id.
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Independent claim 11 further recites
[xi] receiving an ad from the winning advertiser, based on
the advertiser-controlled content exposed to the one or more
users of the online social networking system located at the
selected venue, via the advertising interface for providing for
display to at least one user of the plurality of users associated
with the selected venue.
This step describes “advertising[] activities or behaviors” because an ad is
received, which is an example of “commercial[] interactions.” Memorandum
84 Fed. Reg. at 52. This recitation is thus the abstract concept of “[c]ertain
methods of organizing human activity.” Id. This step also describes
providing data, which is an “observation,” which is an example of “concepts
performed in the human mind.” Memorandum 84 Fed. Reg. at 52. This
recitation also is thus the abstract concept of “[m]ental processes.” Id.
Finally, independent claim 11 further recites “[xii] providing the ad
for display to the at least one user of the plurality of users associated with
the selected venue.” This step describes “advertising[] activities or
behaviors” because an ad is provided, which is an example of “commercial[]
interactions.” Memorandum 84 Fed. Reg. at 52. This recitation is thus the
abstract concept of “[c]ertain methods of organizing human activity.” Id.
This step also describes providing data, which is an “observation,” which is
an example of “concepts performed in the human mind.” Memorandum 84
Fed. Reg. at 52. This recitation also is thus the abstract concept of “[m]ental
processes.” Id.
Independent claim 17 is a method claim, and recites the following
limitations:
[i] receiving an interface at a venue device from an online
social networking system for allowing requests from advertisers
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for, and for providing control over, one or more device controls
of a venue associated with the venue device;
[ii] specifying on the venue device via the interface one or
more device controls for the venue device as one or more links
selectable by an advertiser in the received interface from the
online social networking system in response to selection of the
venue by the advertiser, for providing access over a network to
the selected one or more device controls of the venue to the
advertiser in exchange for a fee; and
[iii] allowing, by a processor, the access over the network
to the selected one or more device controls for the venue device
of the venue.
These steps describe remote control of a device control for the venue device
for the venue. In particular, step [i] describes receiving data (“receiving an
interface”), which is an “observation,” which is an example of “concepts
performed in the human mind.” Memorandum 84 Fed. Reg. at 52. This
recitation is thus the abstract concept of “[m]ental processes.” Id. Step [ii]
describes decision making (“specifying...one or more device controls”),
which is one or more of “observation, evaluation, judgment, opinion,” which
are examples of “concepts performed in the human mind.” Memorandum 84
Fed. Reg. at 52. This recitation also is thus the abstract concept of “[m]ental
processes.” Id. Step [iii] describes receiving data (“allowing access”), which
is an “observation,” which is an example of “concepts performed in the
human mind.” Memorandum 84 Fed. Reg. at 52. This recitation also is thus
the abstract concept of “[m]ental processes.” Id.
Step 2A, Prong Two
Because claims 1, 11, and 17 recite a judicial exception, we next
determine if the claims recite additional elements that integrate the judicial
exception into a practical application. In addition to the limitations of claim
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1 discussed above that recite abstract concepts, claim 1 further recites
various computer-related hardware items. For example, claim 1 recites “one
or more venue devices,” “a network,” “an interface,” “a processor,” “an
online social networking system,” and “GPS-enabled devices.”
The Specification does not provide additional details about the
computer-related hardware items that would distinguish their
implementation from a generic implementation. See Spec. 17–27 (describing
an overview of the invention), 28–47 (describing system architecture).
We do not find the recited computer-related limitations are sufficient
to integrate the judicial exception into a practical application. For example,
the “one or more venue devices,” “network,” “interface,” “processor,”
“online social networking system,” and “GPS-enabled devices” are not
improved in their functioning, but, instead, merely perform the abstract idea.
In this case, we do not see any particular machine or manufacture that is
integral to the claim; nor do we see any transformation. We do not see any
recited elements applying or using the judicial exception in any meaningful
way beyond generally linking the judicial exception to the recited elements.
Accordingly, we determine that claim 1 is directed to a judicial
exception because it does not recite additional elements that integrate the
recited judicial exception into a practical application. Claims 11 and 17
recite similar computer-related hardware devices, and are, therefore, also
directed to a judicial exception.

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Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Step 2B
Because claims 1, 11, and 17 are directed to a judicial exception, we
next determine, according to Alice, whether these claims recite an element,
or combination of elements, that is enough to ensure that the claim is
directed to significantly more than a judicial exception. The various
hardware components recited by claims 1, 11, and 17 include, for example,
“one or more venue devices,” “a network,” “an interface,” “a processor,” “an
online social networking system,” and “GPS-enabled devices.”
The Specification does not provide additional details about the
computer-related hardware items that would distinguish their
implementation from a generic implementation. See Spec. 17–27 (describing
an overview of the invention), 28–47 (describing system architecture).
The conventional or generalized functional terms by which the
computer components are described reasonably indicate that Appellants’
Specification discloses conventional components. See Spec. 17–27
(describing an overview of the invention), 28–47 (describing system
architecture)).
In view of Appellants’ Specification, the claimed hardware
components, including “one or more venue devices,” “a network,” “an
interface,” “a processor,” “an online social networking system,” and “GPS-
enabled devices” reasonably may be determined to be generic, purely
conventional computer elements. Thus, the claims do no more than require
generic computer elements to perform generic computer functions, rather
than improve computer capabilities.
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Accordingly, we determine that claims 1, 11, and 17 are not directed
to significantly more than a patent ineligible concept.
Appellants’ arguments
Appellants argue the Examiner’s alleged abstract idea is untethered
from the claim language. See App. Br. 5–7; see also Reply Br. 5–8, 9–12.
Appellants further argue “[e]ven if the examiner is correct that the claim is
directed to the abstract idea of providing advertisements to users of a social
network, it certainly does not preempt ‘all ways of’ providing
advertisements to users of a social network.” App. Br. 7.
These arguments do not show any error because, as we explain above,
the elements of claims 1, 11, and 17 are the abstract concepts of “[c]ertain
methods of organizing human activity,” and “[m]ental processes.”
Memorandum, 84 Fed. Reg. at 52. Further, we recognize as a threshold
matter that the Supreme Court has described “the concern that drives this
exclusionary principle [to statutory patentability] as one of pre-emption.”
See Alice, 573 U.S. at 216. Characterizing preemption as a driving concern
for patent eligibility, however, is not the same as characterizing preemption
as the sole test for patent eligibility. As our reviewing court has explained:
“questions on preemption are inherent in and resolved by the [section] 101
analysis,” and, although “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); cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract”).
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Appellants further argue that many claim elements have not been
considered by the Examiner. See App. Br. 7–8; see also Reply Br. 13–15.
These arguments do not show any error because, as we explain above,
the elements of claims 1, 11, and 17 are the abstract concepts of “[c]ertain
methods of organizing human activity,” and “[m]ental processes.”
Memorandum, 84 Fed. Reg. at 52. As also explained above, the remaining
claim limitations fail to integrate the abstract idea into a practical
application, and also do not recite significantly more than the abstract idea.
Appellants further argue “steps common to all three claims (although
form the varying perspectives of the advertiser for claim 1, the social
networking system for claim 11, and the venue for claim 17) add
unconventional limitations, which also confine the claim to a particular
useful application, and provide meaningful limitations of the alleged abstract
idea.” App. Br. 9; see also Reply Br. 15, 17–18. Appellants further argue
that the claims recite “an unconventional method for getting an advertiser’s
content to a venue, and allow[] a specificity and control not typically seen in
the advertising art.” App. Br. 9; see also Reply Br. 15–16. Appellants further
argue that the claims combine “GPS technology,” “networking techniques,”
and “advertising concepts” in an inventive concept. App. Br. 9; see also
Reply Br. 16–17.
We disagree. Although we do not dispute that the various hardware
components include specific logic for performing the recited steps,
Appellants do not persuasively explain why the claimed steps improve
technology as a whole. See MPEP § 2106.05(a). Rather, the claims merely
adapt the method of advertising to an execution of steps performed by
generic computing devices linked together in a network. See Credit
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Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir.
2017) (“Our prior cases have made clear that mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.”); see also Bancorp Services, L.L.C.
v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir.
2012) (A computer “employed only for its most basic function . . . does not
impose meaningful limits on the scope of those claims.”). Further,
Appellants’ identified improvements are improvements to the abstract idea,
not improvements to a technology or computer functionality. Thus, on the
record before us, the cited claim limitations do not improve the functionality
of the various hardware components, nor do they achieve an improved
technological result in conventional industry practice. McRO, Inc. v. Bandai
Namco Games Am., Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016).
Finally, Appellants present the following arguments relating to the
dependent claims:
For example, claim 4 recites ‘receiving the control of the device
control of the selected venue through an application
programming interface (API) operating on an external system
for the selected venue, such that the external system controls
the device control of the selected venue,’ and claims 28, 31, and
33 recite ‘wherein the one or more device control comprises
control over content displayed on one or more screens at the
venue.’ Each of these further meaningfully limit the application
of the alleged abstract idea and thus also demonstrate
‘significantly more.’
App. Br. 10; see also Reply Br. 8–9.
These arguments do not show any error. Again, Appellants do not
persuasively explain why the claimed steps improve technology as a whole.
See MPEP § 2106.05(a). Rather, these claims merely adapt the method of
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advertising to an execution of steps performed by generic computing
devices. For example, claim 4 recites an “API” but we do not see how the
“API” is anything other than generic computer functionality. Similarly, we
do not see how “control over content displayed” is anything other than
generic computer functionality.
In the Reply Brief, Appellants argue the Examiner’s Answer presents
a new ground of rejection. Reply Br. 4–5. First, this is a petitionable matter
which the board does not review. Second, the claims are addressed in our
analysis above based on current guidance on the application of § 101.

ORDER
The Examiner’s decision rejecting claims 1, 2, 4–6, 8, 9, 11–17, 19–
24, and 28–33 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SAM LESSIN and
JUSTIN ALEXANDER SHAFFER
____________

Appeal 2018-004169
Application 13/681,195
Technology Center 3600
____________

Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and
BARBARA A. BENOIT, Administrative Patent Judges.

BENOIT, Administrative Patent Judge, concurring.

I agree with the result of the majority opinion affirming the
Examiner’s rejection of the pending claims under 35 U.S.C. § 101. I,
however, would characterize the independent claims differently and,
therefore, reach the same result through a somewhat different path.
My analysis focuses on the Guidance’s second of the judicially-
excepted groupings of the Guidance’s certain methods of organizing human
activity—commercial or legal interactions including advertising, marketing
or sales activities or behaviors. USPTO’s 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“Guidance”).
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The Specification indicates that “[s]ocial networking systems have
lacked tools to enable advertisers of products to utilize venue specific
information in conjunction with their advertisements.” Spec. ¶ 3. The
Specification summarizes the invention that addresses this issue.
An advertiser "buys" a venue by controlling something in the
environment of a venue, such as by playing music in a bar,
changing the channel of a TV, changing drink specials,
changing coupons in a store, or subsidizing transport to the
venue (e.g., cab fare). The advertiser then advertises to people
in the venue, where the ad is based on the thing that was
controlled (e.g., an ad for the album for the song that was
played in the bar). The ad may be served to users of a social
networking system currently located at the venue through a user
interface on the social networking system, a display screen at
the venue, a mobile ad network, or another ad distribution
mechanism.
Spec. ¶ 5.
Claim 1 recites the following limitations: (1) “requesting control of
. . . venue devices at . . . venues . . . for exposing advertiser-controlled
content to . . . users of an online social networking system who are located at
the . . . venues” (comprising four sub-steps) and (2) “receiving, by the
advertiser, access . . . for the venue devices of the selected venue, wherein
advertiser-controlled content is exposed to . . . users of the online social
networking system located at the selected venue via . . . the venue devices of
the selected venue.” App. Br. 14 (Claims Appendix).
As such, these limitations recite commercial interactions of
advertising, marketing or sales activities or behaviors. This is so because the
limitations recite basic operations that routinely would take place in an
advertising context—selecting an advertising channel through which
advertisements are delivered to a target population. For example,
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limitations (1) and (2) collectively recite requesting and receiving access to
an advertising channel through which to deliver advertisements to a target
population—that is, venue devices at venues.
As claim 1 makes clear, advertisements are generated based on the
advertiser-controlled content delivered to the users of the online social
networking program located at the venues and provided to the user devices
at the venues. Claim 1 recites (3) “generating . . . an ad based on the
advertiser-controlled content exposed to the one or more users of the online
social networking system located at the selected venue” and (4) “providing
the generated ad to the online social networking system for providing to at
least one user device associated with a user . . . of the online social
networking system.” App. Br. 14 (Claims Appendix). These limitations
collectively recite creating an advertisement that is delivered to a target
population—that is, generating an ad and providing the generated ad to the
venue device of a user of a social networking system at the venue. Thus,
limitations (3) and (4) recite delivering advertising content through the
selected advertising channel—venue devices at venues. Limitations (3)
and (4), thus, also recite commercial interactions of advertising, marketing
or sales activities or behaviors.
The concepts encompassed by claim 1 are similar to concepts found to
be directed to abstract ideas in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014). In Ultramercial, the U.S. Court of Appeals for
the Federal Circuit determined the ordered combination of steps in claim at
issue—“[t]he process of receiving copyrighted media, selecting an ad,
offering the media in exchange for watching the selected ad, displaying the
ad, allowing the consumer access to the media, and receiving payment from
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the sponsor of the ad”—“all describe an abstract idea, devoid of a concrete
or tangible application.” 772 F.3d 709, 715 (Fed. Cir. 2014); see also
Guidance, 84 Fed. Reg. at 52 n.13 (citing Ultramercial, Inc. v. Hulu in the
context of certain methods of organizing human activity).
For these reasons, I would conclude that claim 1 recites a judicial
exception of one of certain methods of organizing human activity—
commercial or legal interactions including advertising, marketing or sales
activities or behaviors. Guidance, 84 Fed. Reg. at 52.
I would draw the same conclusions for independent claim 11 for
similar reasons. Independent claim 11 recites similar limitations to those
recited in independent claim 1, albeit in an advertising auction context.
Compare App. Br. 14 (claim 1), with App. Br. 16–17 (claim 11). For
example, claim 11 recites “receiving a request for control,” and claim 1
similarly recites “requesting control.” Claim 11 recites “providing . . .
access over a network to the selected device control of the selected venue to
the winning advertiser,” and claim 1 similarly recites “receiving, by the
advertiser, access over a network to the selected device control.” In another
example, claim 11 recites “receiving an ad from the winning advertiser,
based on the advertiser-controlled content exposed to . . . users of the online
social networking system located at the selected venue,” and claim 1 recites
“generating . . . an ad based on the advertiser-controlled content exposed
to . . . users of the online social networking system located at the selected
venue.” Claim 1 and 11 each also recite a limitation for providing the ad to
a user of the online social networking system (claim 1) or a user associated
with selected venue (claim 11).
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Claim 11 recites additional limitations related to an advertising
auction context— “receiving, from . . . advertisers, bids for an auction
for . . . venues for targeting advertisements in an online social networking
system,” “determining a winning bid,” and “providing . . . information . . .
about . . . users in the online social networking system . . . to the winning
advertiser.” These limitations, however, also relate to advertising, which is a
commercial interaction, which, in turn, is one of the certain methods of
organizing human activity identified in the Guidance. Guidance, 84 Fed.
Reg. at 52. Thus, I would conclude independent claim 11 also recites a
judicial exception.
Although independent claim 17 does not recite limitations for
generating and providing advertisements, claim 17 recites limitations related
to selecting an advertising channel. For example, claim 17 recites “receiving
an interface . . . from an online social networking system for allowing
requests from advertisers for . . . device controls of a venue” and
“specifying . . . via the interface . . . device controls . . . links selectable by
an advertiser . . . for providing access over a network to the selected . . .
device controls . . . in exchange for a fee.” Claim 17 also recites
“allowing . . . access over the network . . . to the device controls.” In
essence, these limitations recite a method for selecting an advertising
channel—receiving an interface allowing an advertiser to request control of
a venue device, specifying device controls in the interface that may be
selected by the advertiser, and providing the advertiser access to the selected
device control in exchange for a fee. Because claim 17 recites limitations
for selecting an advertising channel, I would conclude that claim 17 also
relates to advertising, which is a commercial interaction, which, in turn, is
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one of the certain methods of organizing human activity identified in the
Guidance. Guidance, 84 Fed. Reg. at 52. For these reasons, I would
conclude independent claim 17 recites a judicial exception.
I join the remainder of the majority opinion regarding (i) Step 2A,
Prong Two, (ii) Step 2B, and (iii) the majority opinion’s response to
Appellants’ arguments.