Xinyi Cui et al.

Patent Trials and Appeals Board

Sep 11, 2019

14279149 - (D) (P.T.A.B. Sep. 11, 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.
14/279,149 05/15/2014 Xinyi Cui 26295-25878/US 5899
87851 7590 09/11/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
SYROWIK, MATHEW RICHARD
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/11/2019 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 XINYI CUI, WENJIE FU, HAOMIN YU, OU JIN, EITAN SHAY,
RICHARD BILL SIM, and JUN YANG

____________

Appeal 2018-004450
Application 14/279,1491
Technology Center 3600

____________

Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 4–7, 10–14, 17, 18, and 21–28
35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Facebook, Inc.
(Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellants’ invention “relates generally to social networking systems,
and more specifically to advertising via a social networking system.” (Spec.
¶ 1.) More particularly, Appellants’ invention relates to predicting an online
“advertisement’s reach, impressions, conversions, and/or cost based on an
advertiser-specified bid amount, a specification of a target audience, and
optionally an advertiser-specified budget in a received advertising request.”
(Id. ¶ 4.)
Claims 1, 14, and 18 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method comprising:
receiving from an advertiser at a social networking system
an advertisement request, the advertisement request comprising
advertisement content and a specification of a target audience for
the advertisement content;
defining a plurality of bid values for the advertisement
request;
for each of the plurality of bid values, estimating a
corresponding value of advertisement reach for the target
audience by:
sampling by the social networking system a subset
of users from the target audience,
for each sampled user:
reviewing an advertisement impression
history for the sampled user based on a recency
criterion to retrieve costs associated
correspondingly with a plurality of impressions in
the reviewed impression history,
computing normalized measures of the
retrieved costs associated with each of the plurality
of impressions in the reviewed impression history,
comparing the bid value to each of the
computed normalized measures of the retrieved
costs, and
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recording a positive reach count for the
sampled user if the bid amount in the advertisement
request is greater than at least one of the computed
normalized measures of the retrieved costs, and a
zero reach count for the sampled user if the bid
amount in the advertisement request is lower than
each of the computed normalized measures of the
retrieved costs,
based on the sampling, estimating an aggregate
reach of the advertisement content for the subset of users
as an aggregation of the reach counts for the sampled users
in the subset, and
estimating a total reach of the advertisement content
for the target audience by extrapolating the aggregate
reach for the subset of users to the target audience;
based on each of the plurality of bid values and
corresponding total reach of the advertisement content for the
target audience, evaluating an efficacy of an advertiser-specified
bid value; and
providing for display to the advertiser a visual
representation of the evaluated efficacy of the advertiser-
specified bid value.

REJECTIONS
Claims 1, 4–7, 10–14, 17, 18, and 21–28 are rejected under 35 U.S.C.
§ 112(b) as indefinite for failing to particularly point out and distinctly claim
the subject matter which the joint inventors regard as the invention.
Claims 1, 4–7, 10–14, 17, 18, and 21–28 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 1, 4–7, 10–14, 17, 18, and 21–28 are rejected under 35 U.S.C.
§ 103 as unpatentable over Hegeman (US 2013/0124297 A1, pub.
May 16, 2013), Jordan (US 2014/0089106 A1, pub. Mar. 27, 2014), and
Hite (US 2011/0153449 A1, pub. June 23, 2011).
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The § 112(b) rejections
The bid amount
Claim 1 is rejected under § 112(b) because “it is unclear as to whether
the phrase ‘the bid amount’ (bolding emphasis added) references a bid
‘amount’ not specifically/positively recited in Claim 1, references one of the
recited ‘bid values’, references the recited ‘plurality of bid values’ in
Claim 1, or references some combination thereof.” (Final Action 4.)
Appellants do not respond to this rejection. In view of this, we
summarily affirm this rejection. For the same reason, we also summarily
affirm the rejection of dependent claims 4–7 and 10–13, which depend from
claim 1.

The reach counts
Claim 1 is also rejected under § 112(b) because
it is unclear as to whether the phrase “the reach counts for the
sampled users” references “reach counts” not
specifically/positively recited in Claim 1, references only
positive reach counts for sampled users, references only zero
reach counts for sampled users, or references both positive and
zero reach counts for sampled users, or references some
combination thereof.

(Final Action 5.)
Appellants argue that this is a typographical error and that Appellants
will address this “following a decision on appeal.” (Appeal Br. 8.)
In view of the above, we summarily affirm this rejection. For the
same reason, we also summarily affirm the rejection of claims 4–7 and 10–
13, which depend from claim 1.

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The bid value
Independent claims 1, 14, and 18 are rejected under § 112(b) because
it is unclear as to whether the phrase “the bid value” (singular)
references a single bid value not specifically/positively recited in
any independent claim, references “plurality of bid values”
recited in each independent claim, references one of “bid values”
recited in each independent claim, references all of “bid values”
(plural) of the recited plurality recited in the independent claims,
or references some combination thereof.

(Final Action 5.)
Appellants argue that “[i]t is clear when reading the language in the
context of the claim as a whole that there is a (1) estimation of a
corresponding value for ‘each of the plurality of bid values,’ and then (2) the
estimation is by comparing the bid value to computed normalized measures
of retrieved costs. (Appeal Br. 8.)
The Examiner answers that “‘the bid value’, as currently recited in
each independent claim, fails to provide any one-to-one correspondence
between a single bid value and a particular one of the multiple bid values.”
(Answer 5.)
We are persuaded of error. Claim 1 recites “for each of the plurality
of bid values, estimating a corresponding value of advertisement reach . . .
by: sampling . . . a subset of users,” and “for each sampled user,”
“comparing the bid value to each of the computed normalized measures of
the retrieved costs.” Applying a broadest reasonable interpretation, the term
“for each of the plurality of bid values, estimating a corresponding value”
includes for each bid value, comparing it to each of the computed
normalized measures of the retrieved costs for each sampled user.
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Claims 14 and 18 contain similar language and for similar reasons we
are persuaded of error. For the same reasons, we are persuaded of error with
regard to claims 4–7, 10–13, 17, and 21–28, which depend from claims 1, 14
and 18.

The historical bid amount
Claims 14 and 18 are also rejected under § 112(b) because
it is unclear as to whether the phrase “the historical bid amount”
(singular) refers to a single historical bid amount not
specifically/positively recited in any of Claims 14 and 18, refers
to one of the recited “historical bid amounts” (plural), refers to
the “plurality of historical bid amounts”, or refers to some
combination thereof.

(Final Action 6.)
Appellants argue that this is a typographical error and that Appellants
will address this “following a decision on appeal.” (Appeal Br. 8.)
In view of the above, we summarily affirm this rejection. For the
same reason, we also summarily affirm the rejection of claims 17 and 21–28,
which depend from claims 14 and 18.

The sampled user
Claims 1, 14, and 18 are also rejected under § 112(b) because
it is unclear as to whether the phrase “the sampled user”
references one of “subset of users” recited in each independent
claim, references all of “users” (plural) of the recited “subset”, or
references a single sampled user not specifically/positively
recited in the independent claims since the step/process of
“sampling” directly refers to “a subset” that being sampled with
the recited “subset” being directly or indirectly associated with
the recited “users” (plural).

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(Final Action 6.)
Appellants argue that, similar to the argument made with regard to the
claim term “the bid value,” “the phrase ‘the sampled user’ has antecedent
basis in ‘for each sampled user.’” (Appeal Br. 9.)
We are persuaded of error. Claim 1 recites “sampling . . . a subset of
users,” “for each sampled user: reviewing an advertisement impression
history for the sampled user.” Applying a broadest reasonable
interpretation, the terms “each sampled user” and “the sampled user” include
users in the subset, i.e., each user in the subset is sampled; that is, each user
in the subset is a sampled user. The Specification supports this
interpretation. It discloses, e.g., that “[a] subset of users is sampled . . . from
the target audience to determine a reach count for each user in the subset.”
(Spec. ¶ 61.)
Claims 14 and 18 contain similar language and for similar reasons we
are persuaded of error. For the same reasons, we are persuaded of error with
regard to claims 4–7, 10–13, 17, and 21–28, which depend from claims 1, 14
and 18.

The evaluated efficacy
Claims 1, 14, and 18 are also rejected under § 112(b) because
it is unclear as to whether the phrase “the evaluated efficacy”
(bolding emphasis added) references an “evaluated efficacy” not
specifically/positively recited in the independent claims,
references the step/process of to evaluate or evaluating (verb
phrase), which may or may not produce any “evaluated efficacy”
(noun) since the step of evaluating (verb phrase), as currently
recited, does not necessarily end to produce any “evaluated
efficacy” (noun), references recited “an efficacy” which itself
may not be fully or completely “evaluated” during the recited
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step/process of evaluating (verb phrase), or refers to something
else.

(Final Action 7.)
Appellants argue that “[t]he phrase ‘the evaluated efficacy’ makes
antecedent reference to the evaluating step that states ‘evaluating an
efficacy’. A skilled artisan would understand what is claimed in light of the
specification in this case.” (Appeal Br. 9.)
The requirements of § 112(b) do not demand “unreasonable
precision.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). “Rather,
how much clarity is required necessarily invokes some standard of
reasonable precision in the use of language in the context of the
circumstances.” Id. Here, claim 1 recites “evaluating an efficacy of an
advertiser-specified bid value; and providing for display . . . of the evaluated
efficacy of the advertiser-specified bid value.”
We are persuaded of error. We determine that one of ordinary skill in
the art would be reasonably apprised that the term “the evaluated efficacy”
relies, for its antecedent basis, on the step of “evaluating an efficacy.” See
id. (citing Georgia-Pacific Corp. v. U.S. Plywood Corp., 258 F.3d 124, 136
(2d Cir. 1958)).
Claims 14 and 18 contain similar language and for similar reasons we
are persuaded of error. For the same reasons, we are persuaded of error with
regard to claims 4–7, 10–13, 17, and 21–28, which depend from claims 1,
14, and 18.

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The instructions that cause the processor to estimate
Claims 14 and 18 are also rejected under § 112(b) because
it is unclear as to whether the phrase “the instructions that cause
the processor to estimate ...” references estimation instructions
not specifically/positively recited in Claims 14 and 18, positively
references all of the “instructions” that is [sic] recited as being
on the recited memory (Claim 14) or storage medium (preamble
of Claim 18), or references some part or subset of the
instructions, such as only estimation instructions, that is recited
as being on the recited memory (Claim 14) or storage medium
(preamble of Claim 18).

(Final Action 7.)
Appellants argue that “[i]t is clear when reading the language in the
context of the claim as a whole (including the first portion that introduces
that there are instructions encoded on memory[]) that ‘the instructions’ is
referring to the instructions to estimate a corresponding value that are
encoded on memory.” (Appeal Br. 10.)
In relevant part, claim 14 recites (emphasis added):
14. A computer system comprising:
a processor;
memory coupled to the processor, the memory having
encoded thereon instructions that, when executed by the
processor, cause the processor to:
. . .
for each of the plurality of bid values, estimate a
corresponding value of advertisement reach for the target
audience, where the instructions that cause the processor
to estimate the corresponding value of advertisement
reach for the target audience comprise instructions that
cause the processor to:
sample by the social networking system a
subset of users from the target audience,
for each sampled user:
. . .
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compare each of the historical bid
amounts for the sampled user to the bid value,
for each comparison, determine
whether the bid value would have won an
advertisement auction against the historical
bid amount to present the advertisement
content to the sampled user.

Applying a broadest reasonable interpretation, claim 14 recites that
the instructions encoded in the memory coupled to the processor, when
executed by the processor, cause the processor to “estimate a corresponding
value of advertisement reach for the target audience.” Claim 14 then recites
what comprises those particular instructions, i.e., claim 14 recites that “the
instructions that cause the processor to estimate the corresponding value of
advertisement reach for the target audience comprise instructions that cause
the processor to . . . .”
In view of the above, we are persuaded of error. See In re Packard,
751 F.3d at 1313 (citing Georgia-Pacific Corp., 258 F.3d at 136).
Claim 18 contain similar language and for similar reasons we are
persuaded of error. For the same reasons, we also persuaded of error with
regard to claims 17 and 21–28, which depend from claims 14 and 18.

The instructions that cause the processor to determine
Dependent claims 21 and 28 are rejected under § 112(b) because
it is unclear as to whether the phrase “the instructions that cause
the processor to determine ...” references determination
instructions not specifically/positively recited in any of Claims
14 and 18, positively references all of the “instructions” that is
[sic] recited as being on the recited memory (Claim 14) or
storage medium (preamble of Claim 18), or references some part
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or subset of the instructions, such as only determination
instructions, that is not positively recited in any claim.

(Final Action 8.)
Appellants argue that “[i]t is clear when reading the language of
claim 21 in the context of claim 14 (including the first portion that
introduces that there are instructions encoded on memory[]) that ‘the
instructions’ is referring to the instructions to determine whether the bid
value would have won that are encoded on memory.” (Appeal Br. 11.)
Claim 21 recites:
21. The computer system of claim 14, wherein the instructions
that cause the processor to determine whether the bid value
would have won an advertisement auction against the historical
bid amount to present the advertisement content to the sampled
user comprise instructions that cause the processor to:
determine whether the bid value is greater than the
historical bid amount.

Applying a broadest reasonable interpretation, claim 14 recites that
the instructions encoded in the memory coupled to the processor, when
executed by the processor, cause the processor “to determine whether the bid
value would have won an advertisement auction against the historical bid
amount to present the advertisement content to the sampled user” Claim 21
then recites what comprises those particular instructions, i.e., claim 21
recites that “the instructions that cause the processor to determine whether
the bid value would have won an advertisement auction against the historical
bid amount to present the advertisement content to the sampled user
comprise instructions that cause the processor to . . . .”
In view of the above, we are persuaded of error. See In re Packard,
751 F.3d at 1313 (citing Georgia-Pacific Corp., 258 F.3d at 136).
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Claim 28 contains similar language and for similar reasons we are
persuaded of error.

The § 101 rejection
Appellants do not separately argue the claims. We select claim 1 as
representative. Claims 4–7, 10–14, 17, 18, and 21–28 will stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“‘contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
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to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that claim 1 is “directed toward the
concept of utilizing characteristics of an advertisement and potential
recipients of the advertisement to predict effectiveness/effect (e.g., reach,
reach count) that the advertisement may have with users.” (Final
Action 10.) Based on this, the Examiner determines that claim 1 recites “a
fundamental economic practice and/or a method of organizing human
activities and, therefore, the claimed subject matter is drawn to an abstract
idea.” (Id.)
Appellants argue that claim 1 is not directed to an abstract idea and, in
particular, that “claim 1 is not directed to ‘fundamental economic
practices.’” (Appeal Br. 14.) Rather, Appellants argue, “claim 1 recites a
method for estimating reaches of an advertisement in a social networking
system based on impressions histories of sampled users of the social
networking system and evaluating an efficacy of an advertiser-specified bid
value based on the estimated reaches.” (Id.)
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Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The ‘directed to’ inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether
‘their character as a whole is directed to excluded subject
matter.’ Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention
“relates generally to social networking systems, and more specifically to
advertising via a social networking system.” (Spec. ¶ 1.) Claim 1 provides
further evidence. Claim 1 recites “receiving . . . an advertisement request
. . . comprising advertisement content and a specification of a target
audience,” “defining a plurality of bid values,” “for each of the plurality of
bid values, estimating a corresponding value of advertisement reach . . . by:
sampling . . . a subset of users,” “for each sampled user: reviewing an
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advertisement impression history,” “computing normalized measures of the
retrieved costs,” “comparing the bid value to each of the computed
normalized measures of the retrieved costs, and recording a . . . reach
count,” “estimating an aggregate reach of the advertisement content,”
“estimating a total reach of the advertisement content,” “evaluating an
efficacy of an advertiser-specified bid value,” “and providing for display . . .
a visual representation of the evaluated efficacy.”
In short, claim 1 recites advertising, marketing or sales activities or
behaviors. These steps are accomplished by receiving information, defining
bid values and estimating corresponding advertising reach by sampling
users, reviewing an advertising impression history, calculating values,
comparing values, recording/storing values, estimating values, evaluating
values, and displaying values. See, e.g., Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (“[T]he claims of the asserted patents are drawn to the
abstract idea of 1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory.”); Elec.
Power Grp., 830 F.3d at 1353 (“[M]erely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis.”); see also Bridge and Post, Inc. v. Verizon
Commc’ns, Inc., No. 2018-1697, slip op. at 6–9 (Fed. Cir. July 5, 2019)
(nonprecedential) (deciding media content to provide to a user by retrieving
usage patterns for the user’s device, generating a user profile based on the
usage patterns, and analyzing the data, including the user profile, determined
to be directed to an abstract idea).
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None of the limitations recite technological implementation details for
any of the steps. Instead, they describe functional results to be achieved by
any means. Moreover, beyond the recitation of a generic “social networking
system,” claim 1 does not recite any computer-related components. Claim 1
merely recites the functional results to be achieved. It does not recite “a
particular way of programming or designing the software . . . , but instead
merely claim[s] the resulting [method].” Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1241 (Fed. Cir. 2016). Additionally, Appellants’ Specification
makes clear that social networking systems were well known. (See, e.g.,
Spec. ¶¶ 2, 3, 26.)
We do not see how the recitation of a “social networking system,”
even in conjunction with the recited functions, “ensure[s] ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’”
Alice, 573 U.S. at 221 (brackets in original) (quoting Mayo, 566 U.S. at 77.)
In view of the above, we determine that claim 1 is directed to
advertising, marketing or sales activities or behaviors. (See Guidance at 52.)
And further in view of the above, we agree with the Examiner that claim 1 is
directed to the abstract idea of certain methods of organizing human activity.
(See Final Action 10; see also Guidance at 52.)
Although we and the Examiner describe, at different levels of
abstraction, to what the claim is directed, it is recognized that “[a]n abstract
idea can generally be described at different levels of abstraction.” Apple,
Inc., 842 F.3d at 1240. That need not and, in this case, does not “impact the
patentability analysis.” See id. at 1241.
Nonetheless, Appellants seek to analogize claim 1 to the claims in
Enfish. (Appeal Br. 18–20.) Appellants argue that, as in Enfish, “[t]he
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claimed invention provides a unique way of estimating reaches of an
advertisement for a plurality of defined bid values and evaluate an efficacy
of an advertiser-specified bid value based on the estimated reaches.” (Id.
at 19.)
We do not find this argument persuasive. The claims in Enfish were
“specifically directed to a self-referential table for a computer database.”
Enfish, 822 F.3d at 1337. That is, “the plain focus of the claims [was] on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity.” Id. at 1336.
Appellants do not persuasively argue how claim 1 improves computer
functionality.
Appellants also seek to analogize claim 1 to the claims in McRO, Inc.
v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). (See
Appeal Br. 20–21.) Appellants argue that “similar to McRO, claim 1
includes specific limitations that prevent preemption of all techniques for
providing advertising messages, or even for providing social endorsements.”
(Id. at 20.)
We do not find this argument persuasive. “The claimed improvement
[in McRO] was to how the physical display operated (to produce better
quality images), unlike (what is present here) a claimed improvement in a
mathematical technique with no improved display mechanism.” SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). In other
words, in McRO, data was used to improve the technology, i.e., the display
mechanism. Here, “the innovative aspect of the claimed invention is an
entrepreneurial rather than a technological one.” See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 722 (Fed. Cir. 2014).
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Nor do we find persuasive Appellants’ preemption argument.
Preemption is not a separate test. “Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015). In other words, “preemption may signal patent ineligible
subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Step two of the Alice framework has been described “as a search for
an ‘“inventive concept”’ –i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–
18 (quoting Mayo, 566 U.S. at 72–73).
Appellants seek to analogize claim 1 to the claims in BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016). (Appeal Br. 22–24.) Specifically, Appellants argue that claim 1
“passes muster under the second step [of Alice] and supplies ‘an
unconventional and non-generic’ application of estimating reach of an
advertisement.” (Id. at 23.)
Appellants also argue that
[a]s a whole, these claims recite a “specific, discrete
implementation” of defining a plurality of bid values, sampling
of a subset of users of a target audience, reviewing impression
histories of the sampled users, computing normalized measures
of retrieved costs associated with impressions in the reviewed
impression histories, comparing each defined bid value with the
normalized measures of retrieved costs, recording positive reach
count and zero reach count, estimating an aggregate reach of
each defined bid value for the subset, estimating a total reach of
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each defined bid value for the target audience, and estimating an
efficacy of an advertiser-specified bid value based on the
estimated total reaches of the defined bid values.

(Appeal Br. 23–24.) Appellants argue that “claim 1 also is novel and non-
obvious over the references cited by the examiner.” (Id. at 24.)
We do not find this argument persuasive. In BASCOM, the court
determined that “an inventive concept can be found in the non-conventional
and non-generic arrangement of known, conventional pieces.” BASCOM,
827 F.3d at 1350. Specifically, “[t]he inventive concept described and
claimed in the ’606 patent is the installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
specific to each end user.” Id. at 1350. The Federal Circuit determined that
this “particular arrangement of elements is a technical improvement over
prior art ways of filtering.” Id. Here, Appellants do not contend, and
claim 1 does not specify, that the recited social networking system must be
arranged in a non-conventional manner. Nor do Appellants explain how the
claimed method allegedly improves the function of the social networking
system. See, e.g., BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288
(Fed. Cir. 2018) (“[A]n improvement to the information stored by a database
is not equivalent to an improvement in the database’s functionality.”).
Moreover, “[n]o matter how much of an advance in the . . . field the
claims recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm. An
advance of that nature is ineligible for patenting.” SAP Am., Inc., 898 F.3d
at 1163. Additionally, “[t]he ‘novelty’ of any element or steps in a process,
or even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
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patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–89
(1981).
Taking the claim elements separately, the functions performed by the
generic “social networking system” are purely conventional. Receiving
information, defining values, sampling information, reviewing information,
calculating values, comparing values, recording/storing values, estimating
values, evaluating and displaying values are well-understood, routine, and
conventional functions previously known to the industry. See Elec. Power
Grp., 830 F.3d at 1356 (The claims “do not include any requirement for
performing the claimed functions of gathering, analyzing, and displaying in
real time by use of anything but entirely conventional, generic technology.
The claims therefore do not state an arguably inventive concept . . . .”); see
also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”).
Considered as an ordered combination, the generic social networking
system of Appellants’ claimed invention adds nothing that is not already
present when the limitations are considered separately. For example,
claim 1 does not, as discussed above, purport to improve the functioning of
the social networking system itself. Nor does it effect an improvement in
any other technology or technical field. Instead, claim 1 amounts to nothing
significantly more than an instruction to apply the abstract idea using a
generic computer system performing routine computer functions. That is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
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In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1. Claims 4–7, 10–14, 17, 18, and 21–28 fall with claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).

The § 103 rejection
The Examiner finds that Jordan teaches “sampling by the social
networking system a subset of users from the target audience, for each
sampled user . . . sampling data serves as the basis for forecasting the future
state of the market.” (Final Action 17 (citing Jordan ¶ 27).)
Appellants argue that the cited references do not disclose “sampling a
subset of users from the target audience specified in an advertisement
request.” (Appeal Br. 25.) Specifically, Appellants argue that Jordan
discloses sampling impression data, but “does not teach or suggest sampling
users.” (Id. at 25–26.)
The Examiner answers that
Jordan teaches an Internet ad campaign that targets
advertisements to online users where those users that have been
shown an advertisement (note: ad “impression” is a term that
refers to a display of an advertisement to a user, or as Jordan at
¶ [0025] explains, “[a]n impression is a single instance of an
advertisement being displayed before an Internet user”). After
showing advertisements to the users (i.e., presenting ad
impressions to users), the online user data of Jordan is sampled
to extract historical impression data associated with the online
users.

(Answer 16.)
Jordan discloses “[a] system and method for formulating a bid on an
impression for an Internet advertising campaign using market forecast data.”
(Jordan, Abstract.) Jordan further discloses that “[h]istorical impression data
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pertaining to the advertising campaign is sampled using an applicable
sampling technique.” (Id.) More specifically, Jordan discloses that “[a]n
impression is a single instance of an advertisement being displayed before an
Internet user. In the context of an advertising exchange, an impression is an
opportunity to transmit an advertisement to a user. . . . An advertiser or
other entity can place a bid on the impression.” (Id. ¶ 25.)
Jordan further discloses that “sampled impression data is generated
from historical impression data. The sampled impression data comprises a
subset of all of the impressions purchased throughout the history of an
advertising campaign. This data serves as the basis for forecasting the future
state of the market. (Id. ¶ 27.)
Claim 1 recites “sampling . . . a subset of users from the target
audience.” The portion of Jordan relied on by the Examiner discloses
generating sampled impression data “from historical impression data,” and,
as noted above, sampled impression data is a subset of all of the impressions
purchased throughout the ad campaign. It is unclear where Jordan discloses
sampling users, as opposed to sampling “an advertisement being displayed.”
(See id. ¶ 25.) Albeit, advertisements are presented to users, but the cited
portions of Jordan disclose that the sampling is of a subset of the
impressions purchased, rather than a subset of users. (See id.) The
Examiner does not rely on the other cited art to cure this deficiency.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 1. Independent claims 14 and 18 contain similar language.

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DECISION
The Examiner’s rejection of claims 1, 4–7, 10–14, 17, 18, and 21–28
under 35 U.S.C. § 112(b) is affirmed.
The Examiner’s rejection of claims 1, 4–7, 10–14, 17, 18, and 21–28
under 35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1, 4–7, 10–14, 17, 18, and 21–28
under 35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED