Amit Nanavati et al.

Patent Trials and Appeals Board

Jan 19, 2021

2020003855 (P.T.A.B. Jan. 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.
13/599,018 08/30/2012 Amit A. Nanavati IN920110205US2(790.141C) 5658
89885 7590 01/19/2021
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
ALVAREZ, RAQUEL
ART UNIT PAPER NUMBER
3688
MAIL DATE DELIVERY MODE
01/19/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMIT A. NANAVATI and RAMASURI NARAYANAM
____________

Appeal 2020-0038551
Application 13/599,018
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the
Examiner’s final decision to reject claims 1–4, 6, 9, and 12–16, which
constitute all the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.

1 We note a prior decision, appeal 2017-001831, mailed June 6, 2018,
affirming the rejection under 35 U.S.C. § 101 (“Prior Decision”). We also
note related appeal 2020-006208 for application 13/312,511.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The Appellant’s invention relates to “methods and arrangements for
facilitating viral marketing campaigns that lend themselves to significant
cross-selling and/or up-selling.” Spec. ¶ 16.
Claim 1 (Appeal Br. 30–31 (Claims App.)) is the only independent
claim on appeal, is representative of the subject matter on appeal, and is
reproduced below (lettered bracketing added for reference).
1. A method comprising:
utilizing at least one processor to execute computer code
configured to perform the steps of:
[(a)] ascertaining participants in a social network, wherein
ascertaining comprises modeling social relationships between
the participants in the social network;
[(b)] determining mutual influence between the
participants in purchasing decisions based upon the modeled
social relationships between the participants;
[(c)] assessing a prospective influence of at least a first
product on purchasing at least a second product, wherein the
assessing a prospective influence comprises identifying a
historical purchasing connection between the at least a first
product and the at least a second product; and
[(d)] selecting at least one seed from the participants for
maximizing influence of the first product on purchasing the
second product, said selecting being based on a two-dimensional
determination incorporating:
the assessed prospective influence of the first
product on purchasing the second product; and
the determined influence of the at least one
participant on at least one other participant; and
[(e)] directing a free sample of the first product to be
delivered to the at least one seed;
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[(f)] said selecting comprising employing a selling
approximation algorithm, wherein the selling approximation
algorithm comprises setting starting nodes, each starting node
corresponding to one of the participants in the social network;
[(g)] for each starting node (i) determining a product ratio
of an increase in revenue to a cost of the corresponding product,
(ii) determining a promotion ratio of an increase in revenue to a
cost of promoting an upsell or cross-sell, and (iii) selecting the
node as at least one seed if the product ratio is greater than the
promotion ratio, the selling approximation algorithm comprising
one or more of:
a maximum degree based heuristic algorithm,
wherein the setting starting nodes comprises setting the
participants having a number of connections over the
social network exceeding a predetermined threshold as the
starting nodes; and
maximum influence based heuristic algorithm,
wherein the setting starting nodes comprises setting the
participants having an influence exceeding a
predetermined threshold as the starting nodes.

THE REJECTION
Claims 1–4, 6, 9, and 12–16 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more.

OPINION
35 U.S.C. § 101 Framework
The Appellant argues the pending claims as a group. See Appeal
Br. 12. We select independent claim 1 as representative of the group, with
the remaining claims standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citations omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
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USPTO Section 101 Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
Guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”) and the October
2019 Update: Subject Matter Eligibility (“October 2019 Update”),
incorporated into the MANUAL OF PATENT EXAMINING PROCEDURE
§§ 2104–06, Rev. 10.2019 (“MPEP”) in June 2020. “The guidance sets out
agency policy with respect to the USPTO’s interpretation of the subject
matter eligibility requirements of 35 U.S.C. § 101 in view of decisions by
the Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51.
Although “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance,” the guidance “does not
create any right or benefit, substantive or procedural, enforceable by any
party against the USPTO.” Id. The Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id. at 50.
Under USPTO guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including laws of nature, natural phenomena,
and products of nature (see MPEP §§ 2106.04(II)(A)(1), 2106.04(b))
(“Step 2A, Prong One”); and (2) additional elements that integrate the
judicial exception into a practical application (see id. §§ 2106.04(II)(A)(2),
2106.04(d)) (“Step 2A, Prong Two”).3

3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
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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, under
Step 2B, to whether the additional elements, individually or in combination,
provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An
inventive concept ‘cannot be furnished by the unpatentable law of nature (or
natural phenomenon or abstract idea) itself.’” Id. § 2106.05 (quoting
Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016)).
Among the considerations in determining whether the additional elements,
individually or in combination, amount to significantly more than the
exception itself, we look to whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP § 2106.05(II); Guidance, 84 Fed. Reg. at 56.
Preliminary Matter
We first address the Appellant’s argument that the Examiner “has
failed to articulate how the claims are directed to an abstract idea, fail to
amount to significantly more than an abstract idea, and fail to transform the
exception into a practical application, but rather has made an unsupported
assertion of such” (Appeal Br. 12–13; see also Reply Br. 11–12), and has
thus “failed to present a prima facie case of unpatentability” (Appeal Br. 15;
Reply Br. 14). Specifically, the Appellant argues that the Examiner “fails to
specifically point out the factors that are relied upon in making the
determination that the claims are directed to an abstract idea,” “has not

practical application. See Guidance - Section III(A)(2), 84 Fed. Reg.
at 54–55; MPEP § 2106.04(d).
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identified the specific limitations considered or any rationale as to why these
limitations are not enough to qualify as ‘a practical application’ or
‘significantly more,’” and “fails to consider other relevant factors and claim
limitations, including limitations of the dependent claims, in making such a
determination.” Appeal Br. 13–15; Reply Br. 12–14. We disagree.
Here, in rejecting claim 1 under § 101, the Examiner analyzes the
claim using the Mayo/Alice two-step framework. Specifically, the Examiner
looks to the intrinsic evidence of the claim language as factors in
determining that the claim recites and is directed to an abstract idea. See
Ans. 3–4; Final Act. 2–5. We note that there is no requirement for the
Examiner to cite to judicial decisions. See Guidance, 84 Fed. Reg. at 51–52
(noting the impracticality of Examiner’s citing cases and thus the approach
of using “synthesize[d] key concepts”); cf. Appeal Br. 15. The Examiner
evaluates whether the claim is directed to a judicial exception by
determining that the claim recites a mental process, evaluating whether the
judicial exception is integrated into a practical application, and determining
it is not. See Final Act. 3, 5–6; Ans. 4.
Thus, the Examiner has clearly articulated the reasons as to why the
claim is directed to an abstract idea and has notified the Appellant of the
reasons for the rejection “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” 35 U.S.C. § 132. In doing so, the Examiner set forth a
prima facie case of unpatentability. See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 “is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
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for rejection”). We further note that the Examiner has followed the
USPTO’s guidelines.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 2A, Prong
One of USPTO guidance, the Examiner determines that claim 1 “is directed
to marketing products by providing a system that identifies a participant
from a to act as a seed that a product should be marketed at since that seed
will have influence over the remaining participants by identifying the
influence of the participants over the other participants.” Final Act. 2. The
Examiner further finds that this, “under its broadest reasonable
interpretation, covers performance of the limitation in the mind but for the
recitation of generic computer components” (id.) and “falls within a Mental
Process and is an abstract idea, under 2A, Prong 1 test” (id. at 5). Under
Prong Two of USPTO guidance, the Examiner also determines that “[t]his
judicial exception is not integrated into a practical application because the
claim recites determining, selecting and maximizing which are generic
computer functions and amount[ to] no more than mere instructions to apply
the exception using a generic computer component.” Id. at 2–3.
The Appellant disagrees and contends that, under Prong One, claim 1
is
directed to marketing products by providing a system that
identifies a participant from a social network to act as a seed that
a product should be marketed at since that seed will have
influence over the remaining participants in the social network
by identifying the influence of the participants over the other
participants by generating a social graph and using a selling
approximation algorithm that identifies the nodes, which
correspond to participants in the social network, which would
result in the highest increase in revenue as compared to the cost
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to the company for promoting the product, thereby providing a
system that decreases the costs to a company for marketing a
product by targeting the marketing to those people who will
result in other participants buying the product without having to
directly market to the other participants.
Appeal Br. 17–18. The Appellant contends that “this is not an abstract idea”
(id. at 18) as it does not fall under the group of mental processes because the
claim “do[es] not recite an observation, evaluation, judgment, or opinion”
(Reply Br. 19; see also id. at 17–18, Appeal Br. 13). Under Prong Two, the
Appellant contends that claim 1 is “directed to technological improvements
to the technological field of product marketing utilizing social networks”
(Appeal Br. 18) and to “an improvement in existing computer technology”
(id. at 20; Reply Br. 25).
Under the first step of the Mayo/Alice framework and Step 2A of
USPTO guidance, we first determine to what claim 1 is directed, i.e.,
whether the claim recites an abstract idea and if so, whether the claim is
directed to that abstract idea. The Federal Circuit has explained that “the
‘directed to’ inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether ‘their character as a whole is directed
to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claim is on a specific improvement in relevant technology or on
a process that itself qualifies as an “abstract idea” for which computers are
invoked merely as a tool. See id. at 1335–36. Here, it is clear from the
Specification, including the claim language, that claim 1 focuses on an
abstract idea, and not on any improvement to technology and/or a technical
field.
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Reciting a Judicial Exception
The Title of the Specification provides for “DESIGNING VIRAL
MARKETING STRATEGIES FOR UP-SELLING AND CROSS-
SELLING.” Spec. 1. The “BACKGROUND” section of the Specification
discusses that “[g]enerally, viral marketing has emerged as an effective tool
for marketing in view of the increasing popularity of online social
networks.” Spec. ¶ 2. The BACKGROUND section also discusses that “a
main objective of viral marketing is to ascertain and leverage social
interactions among individuals to promote awareness for products” and that
limited advertising budgets present a “key challenge” of selecting a set of
influential individuals/seed in the network and putting them in a position to
raise awareness of a product over that network. Id. This problem ostensibly
results in a need “for improvement and innovation in making adequate use
of social network relationships in promoting products.” Id. In the
“DETAILED DESCRIPTION” section, the Specification discusses that
“individual companies design products or introduce services that end up
leading to up-selling or cross-selling of such products, which can provide a
significant return on an initial marketing investment if successful.” Id. ¶ 16.
The claimed invention provides for “methods and arrangements for
facilitating viral marketing campaigns that lend themselves to significant
cross-selling and/or up-selling” (id.) whereby “models are defined for the
propagation of information, for both cross-sell and up-sell, through a social
network” (id. ¶ 17).
Consistent with this disclosure, claim 1 recites a method comprising
utilizing a processor to execute code to perform the steps of:
(a) “ascertaining participants in a social network” by “modeling social
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relationships”; (b) “determining mutual influence between the participants
. . . based upon the modeled social relationships”; (c) “assessing a
prospective influence” in a first product on purchasing a second product by
“identifying a historical purchase connection” between those products; (d),
(f), and (g) “selecting at least one seed from the participants . . . based on a
two-dimensional determination incorporating: the assessed prospective
influences . . . and the determined influence,” and by “employing a selling
approximation algorithm” comprising setting starting nodes and “a
maximum degree based heuristic algorithm” and/or “a maximum influence
based heuristic algorithm”; (e) “directing a free sample of the first product to
be delivered to the at least one seed”; and (g) for each starting node,
determining a product ratio of increase in revenue to cost of the product and
a promotion ratio of increase in revenue to cost of promoting an upsell/
cross-sell. Appeal Br. 30–31 (Claims App.). We consider claim 1 as a
whole4 giving it the broadest reasonable construction5 as one of ordinary
skill in the art would have interpreted it in light of the Specification6 at the
time of filing.

4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.” Diehr,
450 U.S. at 188.
5 Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest
reasonable interpretation . . . .”) (emphasis added).
6 “First, it is always important to look at the actual language of the
claims. . . . Second, in considering the roles played by individual
limitations, it is important to read the claims ‘in light of the specification.’”
Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364,
1378 (Fed. Cir. 2017) (J. Linn, dissenting in part and concurring in part)
(citing Enfish, 822 F.3d at 1335, among others).
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Limitations (a), (b), and (c) of ascertaining, determining, and
assessing are recited functionally without details on how, technologically or
by what algorithm, they are performed. Limitation (a) recites that the
ascertaining comprises modeling social relations, but there is no recitation of
how the modeling is performed. The Specification provides no further
illumination in reciting that “[e]nergy propagation models are constructed
for determining the likelihood of cross-sell and up-sell of products” and
“participants in a social network are ascertained (402).” Appeal Br. 7,
quoting Spec. ¶¶ 17, 30. As such, ascertaining participants by modeling
relations can comprise creating a relationship such as by mathematical
concepts, which is a mental process of analyzing information. See Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(“[W]e have treated analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes”). Limitation (b) recites determining mutual influence
based on the modeled social relations with no further description on how
that determining is performed, and similarly can be performed by analyzing
information such as by mathematical algorithms, which is a mental process.
See id., see also Appeal Br. 8 (“Mutual influence of the participants in
purchasing decisions is determined (404)”) (quoting Spec. ¶ 30).
Limitation (c) of assessing an influence by identifying a connection does not
recite how that identifying is performed, and similarly can be performed by
analyzing information such as by comparing information, which is a mental
process. See Electric Power, 83 F.3d at 1354; see also Appeal Br. 8
(“[P]urchasing influence of products on one another is assessed (406)”)
(quoting Spec. ¶ 30).
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Limitations (d) and (f) recite selecting at least one seed from the
participants based on a two-dimensional determination incorporating the
assessed prospective and determined mutual influences and by employing a
selling approximation algorithm comprising setting starting nodes
corresponding to participants in the social network. Thus, the determination
comprises an analysis of the influences data and setting the starts of the
analysis as the participants data, which are mental processes. See Electric
Power, 83 F.3d at 1354; see also Appeal Br. 9 (quoting Spec. ¶ 27).
Limitation (g) further recites determining ratios for each starting node of
limitation (f) and selecting the node based on a comparison of the ratios,
which are mathematical calculations and mental processes. Limitation (g)
also recites that the selling algorithm of limitation (f) comprises heuristic
algorithms with defined starting nodes on particular participants, with no
details on what these heuristic algorithms are or what they contain. The
Specification provides that for the maximum degree based heuristic
algorithm, nodes with more connections are targeted and sorted, values are
determined from ratios and compared, and based on that determination,
nodes are added to a set of seeds of a specific product or of an upsell and
removed from the sorted list. Appeal Br. 8–9 (quoting Spec. ¶ 20). For the
maximum influence based heuristic algorithm, nodes with high influence are
targeted and sorted based on the sum of influence, based on that
computation, values are determined from ratios and compared, and based on
that determination, the nodes are added to a set of seeds of a specific product
or of an upsell and removed from the sorted list. Id. at 9 (quoting Spec.
¶ 26). As such, the heuristic algorithms can comprise the analysis and
sorting/organizing of data, which are mental processes. See Electric Power,
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83 F.3d at 1354; Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1333–34 (Fed. Cir. 2015) (using hierarchies “is a building block, a basic
conceptual framework for organizing information”).
Limitation (e) recites directing a free sample to the selected
seed/participant, without further details on how such directing is performed.
The Specification provides no illumination in discussing “an allowance for
providing free samples” (Spec. ¶ 19) and the costs of providing free samples
(see id. ¶¶ 17, 19, 24, 26, 27). The Specification only uses the term “direct”
once in stating “the computer program instructions may also be stored in a
computer readable medium that can direct a computer, other programmable
data processing apparatus, or other devices to function in a particular
manner.” Id. ¶ 46. As such, the directing of a sample can comprise
providing an instruction for sending a sample, which is a manual or mental
step.
The processor to execute the steps may comprise “processor or
processing unit 16' ” component of computer system/server 12' that is a
“general-purpose computer device.” Spec. ¶ 34.
When considered collectively and under the broadest reasonable
interpretation, the limitations of claim 1 recite a way of identifying a
particular seed/participant to send a sample based on the analysis of
participants, influence, and cost data for the purpose of marketing, upselling,
or cross-selling products, which is similar to the Examiner’s
characterization.7 We note that this is also similar to the Appellant’s

7 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
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characterization of the claim as “directed to marketing products by providing
a system that identifies a participant from a social network to act as a seed
that a product should be marketed at” by identifying participants’ influence
over other participants, generating a social graph, and using a selling
approximation algorithm that identifies nodes corresponding to participants.
Appeal Br. 17–18. This is an abstract idea of a “[c]ertain method[] of
organizing human activity—fundamental economic principles or practices
. . . commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations)” and comprises “[m]ental processes—
concepts performed in the human mind (including an observation,
evaluation, judgment, opinion).” Guidance, 84 Fed. Reg. at 52; MPEP
§§ 2106.04(a)(2)(II), 2106.04(a)(2)(III).
Our reviewing court has held similar concepts to be abstract. For
example, the Federal Circuit has held abstract the concepts of “customizing
a user interface” such as with targeted advertising based on demographic
information in Affinity Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d
1266, 1271 (Fed. Cir. 2016), “customizing web page content as a function of
navigation history and information about the user” in Intellectual Ventures I
LLL v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015)
(“Capital One Bank”), “targeted advertising and bidding to display the
advertising, which are both abstract ideas relating to customizing
information based on the user and matching them to the advertiser” in In re
Morsa, 809 F. App’x 913, 917 (Fed. Cir. 2020), cert. denied sub nom.

(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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Morsa v. Iancu, No. 20-32, 2020 WL 5883301 (U.S. Oct. 5, 2020), reh’g
denied, No. 20-32, 2020 WL 6551927 (U.S. Nov. 9, 2020); collecting,
analyzing, and displaying the results in Electric Power, 830 F.3d at 1354,
collecting, analyzing, manipulating, and processing data and displaying the
results of the analysis, manipulation, and processing in Intellectual
Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332, 1340 (Fed.
Cir. 2017) (“Capital One Fin.”), and “selecting certain information,
analyzing it using mathematical techniques, and reporting or displaying the
results of the analysis” in SAP America, Inc. v. InvestPic, LLC, 898 F.3d
1161, 1167 (Fed. Cir. 2018).
Regarding the Appellant’s apparent contention that claim 1 cannot
recite an abstract idea because it “include[s] multiple limitations that cannot
be performed in the mind” and “include[s] further limitations that cannot be
performed without the use of a computer or would not be performed in the
human mind” (Reply Br. 19; see also id. at 20–21), we note that “[c]ourts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person’s mind.” Versata, 793 F.3d at 1335. And, as discussed
more fully below, this merely limits the invention to a particular computer
environment.
Having concluded that claim 1 recites a judicial exception under the
Guidance, Step 2A, Prong One, we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application.
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Integration into a Practical Application
We look to whether the claim 1 “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,” i.e., “integrates a judicial exception
into a practical application.” Guidance, 84 Fed. Reg. at 54; MPEP
§ 2106.04(d). We note that, as stated above, the question is whether the
claim as a whole “focus[es] on a specific means or method that improves the
relevant technology” or is “directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.” McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016).
Here, the only additional elements recited in independent claim 1
beyond the abstract idea are the “at least one processor to execute computer
code,” “a social network,” and a “starting node.” The processor is described
in the Specification as a general purpose computer element. See supra, e.g.,
Spec. ¶¶ 32–34 (describing a generic computer system comprising modules,
a processor, memory, and a bus). We note that the claim does not recite an
“online” social network, and the Specification provides no specific
definition for a social network. As such, the social network comprises any
network, online or offline, of social interactions or relationships. The
Specification further provides no definition of a “starting node,” but
indicates that a node would comprise a participant’s general purpose
computer. See, e.g., id. ¶¶ 15, 27, 34. As is clear from the Specification,
there is no indication that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
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i.e., a particular machine, invoke any asserted inventive programming, or
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention as recited in claim 1 effects a transformation or reduction of a
particular article to a different state or thing. Nor do we find anything of
record that attributes an improvement in technology and/or a technical field
to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in USPTO Guidance.
We are not persuaded of Examiner error by the Appellant’s argument
that claim 1 is “directed to technological improvements to the technological
field of product marketing utilizing social networks.” Appeal Br. 18; see
also id. at 19–23, Reply Br. 24–27. We note that product marketing is not a
technological field but an abstract idea of a fundamental economic practice
and a building block of modern economy. See Morsa, 809 F. Appx. at 917,
Prior Decision 9. The alleged improvement to product marketing using
social networks is an improvement to the abstract idea itself, not to any
technology.
We disagree that the claim “like TTI [Trading Technologies Int’l, Inc.
v. CQG, INC., 675 F. App’x 1001 (Fed. Cir. 2017)], the present claims are
directed to limitations specific to the solution of a problem.” Appeal Br. 20;
see also Reply Br. 25–27. In Trading Technologies, the Federal Circuit
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affirmed the district court’s denial of CQG’s motion for judgment as a
matter of law and determined that “the claimed subject matter is ‘directed to
a specific improvement to the way computers operate,’ for the claimed
graphical user interface method imparts a specific functionality to a trading
system ‘directed to a specific implementation of a solution to a problem in
the software arts.’” 675 F. App’x at 1006 (citations omitted). Specifically,
the Federal Circuit held that the district court’s conclusion that “the specific
structure and concordant functionality of the graphical user interface are
removed from abstract ideas, as compared to conventional computer
implementations of known procedures” was in “accord with precedent.” Id.
at 1005. In contrast, here, the Appellant does not identify how the claim
solves a problem in the software arts. The Appellant does not provide
adequate reasoning or evidence, and we do not see from the claim, how the
limitations claim a technological solution to a computer-based problem, i.e.,
a solution “necessarily rooted in computer technology in order to overcome
a problem specifically arising in the realm of computer networks.” DDR
Holdings, 773 F.3d at 1257. As the court in DDR noted, “not all claims
purporting to address Internet-centric challenges are eligible for patent.” Id.
As the Appellant states, the alleged improvement lies in “techniques
for product marketing by utilizing social networks to identify influencers
who would result in more purchases” to overcome existing problems of
“identify[ing] those individuals which may provide the most influence on
others for purchasing a particular product” and “manually identify[ing]
participants to select as seeds for marketing the product” by “optimizing the
product marketing by identifying a seed participant that would result in the
most revenue generation with the least cost to the company.” Appeal
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Br. 20–21. The problems of identifying individuals to provide the most
influence and identifying seeds for marketing a product are business
problems, not problems rooted in technology. See Prior Decision 11 (citing
support).
Further, the purported solution comprises a generic processor
operating in its ordinary and conventional capacity. See supra; see also
Alice, 573 U.S. at 224–26. The Appellant does not contend that it invented
any of the claimed components or their basic functions or that those
components, claimed generally, were unknown in the art as of time of the
invention. Affinity Labs, 838 F.3d at 1270. The “focus” of the claim is not
“on the specific asserted improvement in computer capabilities” (Enfish, 822
F.3d at 1336), but rather on using a computer to “provide a method for
optimizing the product marketing by identifying a seed participant that
would result in the most revenue generation with the least cost to the
company.” Appeal Br. 21; see Alice, 573 U.S. at 223 (holding that
attempting to limit the use of an abstract idea to a particular technological
environment does not make a claim patent-eligible) (quoting Bilski, 561 U.S.
at 610–11); Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253,
1259 (Fed. Cir. 2016) (“[M]erely limiting the field of use of the abstract idea
to a particular existing technological environment does not render the
claim[] any less abstract”).
Rather, the claim here is more similar to those of Trading
Technologies International., Inc. v. IBG LLC, 921 F.3d 1094 (Fed. Cir.
2019) (“Trading Technologies II”) that did not “solve any purported
technological problem.” Any improvement lies in the process of “marketing
products by providing a system that identifies a participant from a social
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network to act as a seed that a product should be marketed at” by identifying
participants’ influence over other participants, generating a social graph, and
using a selling approximation algorithm that identifies nodes corresponding
to participants. Appeal Br. 21. To the extent the Appellant argues that the
use of the claimed method increases efficiency (see id.), the invention makes
the marketing process faster, not the processor or any other technology. See
Trading Technologies II, 921 F.3d at 1089–90.
We are also unpersuaded of Examiner error by the Appellant’s
argument that the Appellant “limits the claims to a specific technique.”
Appeal Br. 22; see also Reply Br. 22–23 (the Appellant “respectfully
submits that ‘the claim is more than a drafting effort designed to monopolize
the judicial exception’” (quoting Guidance)). Although the Supreme Court
has described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of
preemption” (see Alice, 573 US at 216–17), characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. “The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability” and “for this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id. The
claimed invention is not sufficiently limiting so as to fall clearly on the side
of patent eligibility.
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We thus agree with the Examiner that the additional elements of
claim 1 do not integrate the judicial exception into a practical application, as
the term is used in USPTO guidance, because they “amount[ to] no more
than mere instructions to apply the exception using a generic computer
component.” Final Act. 3.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1 is directed to an abstract idea.

Step Two of the Mayo/Alice Framework
Under the second step in the Mayo/Alice framework and USTPO
guidance Step 2B, we “[e]valuat[e] additional elements to determine
whether they amount to an inventive concept [which] requires considering
them both individually and in combination to ensure that they amount to
significantly more than the judicial exception itself.” MPEP § 2106.05(I).
Here, the Examiner finds that claim 1 “[d]o[es] not include elements that are
sufficient to amount to significantly more than the judicial exception” and
that “the additional elements of using a computing device to perform the
determining, selecting and maximizing steps amount to no more than mere
instructions to apply the exception using a generic computer component.”
Final Act 3.
The Appellant disagrees and “submits that the additional elements of
the claims do not represent well-understood, routine, conventional activity.”
Appeal Br. 24–25; see also Reply Br. 24, 27. The Appellant also argues that
“the claims include other substantial, meaningful limitations that require a
conclusion that the claim ‘integrate[s] the building blocks into something
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more, thereby transform[ing] them into a patent-eligible invention.’ Alice at
2354–55.” Appeal Br. 25.
As discussed above, under Step 2B we look to whether the additional
elements beyond the abstract idea, individually or in combination, provide
an inventive concept. Guidance, 84 Fed. Reg. at 55; MPEP § 2106.05(I).
Alice is clear, as described above, that under step two of the Mayo/Alice
framework, the elements of each claim are considered both individually and
“as an ordered combination” to determine whether the additional elements,
i.e., the elements other than the abstract idea itself, “transform the nature of
the claim” into a patent-eligible application. Alice, 573 U.S. at 217; see also
Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the use
of a natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself”). In other words, the inventive concept under step two of
the Mayo/Alice framework cannot be the abstract idea itself: “It is clear from
Mayo that the ‘inventive concept’ cannot be the abstract idea itself, and
Berkheimer [v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (“Berkheimer”)] . . .
leave[s] untouched the numerous cases from this court which have held
claims ineligible because the only alleged ‘inventive concept’ is the abstract
idea.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Order,
On Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring)
(Berkheimer II); see also BSG Tech, LLC. V. BuySeasons, Inc., 899 F.3d
1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed
invention’s use of the ineligible concept to which it is directed cannot supply
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the inventive concept that renders the invention ‘significantly more’ than
that ineligible concept.”).
Here, the Examiner properly considers the additional elements outside
the abstract idea and determines they do not transform the nature of the
claim into a patent-eligible application. See Final Act. 5. The elements to
which the Appellant refers, i.e., identifying “a participant from a social
network to act as a seed that a product should be marketed at” by identifying
participants’ influence over other participants, generating a social graph, and
using a selling approximation algorithm that identifies nodes corresponding
to participants (Appeal Br. 25), are, as also discussed above, mental
processes – abstract ideas themselves, and part of the abstract idea as a
whole. They are not additional elements to be considered when determining
whether claim 1 includes additional elements or a combination of elements
that is sufficient to amount to significantly more than the judicial exception.
And, as discussed above, the only claim elements beyond the abstract idea
are the processing device that performs the steps, a social network that can
be offline or online, and nodes that are general purpose computers, recited
generally, that the Specification indisputably shows were conventional at the
time of the filing. See supra. And, as discussed above, the claim’s “benefits
over conventional techniques for product marketing” (Reply Br. 24; see also
id. at 25) are at best improvements to the abstract idea itself and do not
render the invention something more than that abstract idea.
The Appellant also contends that “the Office must provide evidence of
a factual determination that supports a conclusion that the additional
elements represent well-understood, routine, or conventional activity” and
that the Examiner’s failure to do so is in error. Appeal Br. 24 (citing
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USPTO Memorandum, Robert W. Bahr, Deputy Commissioner for Patent
Examination Policy, April 19, 2018 (the “Berkheimer Memo”)). The court
in Berkheimer held that “[t]he patent eligibility inquiry may contain
underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed.
Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual issues.’”)).
But, the court also held that “[w]hen there is no genuine issue of material
fact regarding whether the claim element or claimed combination is well-
understood, routine, [and] conventional to a skilled artisan in the relevant
field, this issue can be decided on summary judgment as a matter of law.”
Berkheimer, 881 F.3d at 1368 (emphasis added). This qualification has been
subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56
requires that summary judgment be denied. In Berkheimer, there
was such a genuine dispute for claims 4–7, but not for claims 1–3
and 9. . . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Berkheimer II, 890 F.3d at 1371–73 (Moore, J., concurring); see also Aatrix
Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed.
Cir. 2018) (Reyna, J., dissenting) (“A factual allegation or dispute should not
automatically take the determination out of the court’s hands; rather, there
needs to be justification for why additional evidence must be considered—
the default being a legal determination.”).
We note that the Appellant is correct in that the Examiner has not
provided a factual determination, such as a citation to the Specification, a
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court decision, the MPEP, a publication, or by official notice, to support the
Examiner’s conclusion. However, we also note that “failure of USPTO
personnel to follow the guidance, however, is not, in itself, a proper bases
for either an appeal or petition.” Guidance, 84 Fed. Reg. at 51; see also
MPEP Foreword (“The Manual does not have the force of law or the force
of the rules in Title 37 of the Code of Federal Regulations”).
We find that the Specification clearly supports the Examiner’s
conclusion by indisputably showing that the claimed additional elements
were conventional at the time of filing. See supra; Spec. ¶¶ 15, 27, 32–34,
Fig. 5. Accordingly, based on the Appellant’s description, we find these
components to be well understood, routine, or conventional. The Appellant
does not contend that it invented any of those components or their basic
functions or that those components, claimed generally, were unknown in the
art as of time of the invention. Affinity Labs, 838 F.3d at 1270; see also
Intellectual Ventures, 792 F.3d at 1370. There is no technological
improvement to the computer components used. Computers “have become
the substrate of our daily lives—the ‘basic tool[ ],’ Gottschalk v. Benson,
409 U.S. 63, 67 . . . (1972), of a great many of our social and economic
interactions—generic computer functions, such as storing, analyzing,
organizing, and communicating information, carry no weight in the
eligibility analysis. See Alice, 134 S. Ct. at 2357.” In re Marco Guldenaar
Holding B.V., 911 F.3d 1157, 1165 (Fed. Cir. 2018) (Mayer concurring).
Taking the claimed elements separately, the functions performed by
the processor are purely conventional. The claimed generic components
operate in their ordinary and conventional capacities to perform the well-
understood, routine, and conventional functions of ascertaining, determining,
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assessing, identifying, and selecting data, directing an item, and employing
an algorithm comprising setting starting nodes, i.e., analyzing, calculating,
and organizing data, and instructing sending an item based on the results of
the manipulation of data. See Spec. 32–34, Fig. 5 (describing generic
computer components); see also, e.g., Electric Power, 830 F.3d at 1355
(gathering, sending, monitoring, analyzing, selecting, and presenting
information does not transform the abstract process into a patent-eligible
invention); Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”).
We disagree with the Appellant’s argument that, like BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016), the claimed “elements are combined in a manner that is
unconventional and non-generic, and are, thus, directed to substantially more
than any abstract idea,” repeating the elements of identifying a participant to
act as a seed resulting in the highest increase in revenue. Appeal Br. 26–27.
The Appellant does not show how the claim here is similar to BASCOM’s
“particular arrangement of elements [that] is a technical improvement over
prior art ways of filtering such content.” 827 F.3d at 1350. The patent at
issue in BASCOM “claim[ed] a technology-based solution (not an abstract-
idea-based solution implemented with generic technical components in a
conventional way) to filter content on the Internet that overcomes existing
problems with other Internet filtering systems.” Id. at 1351. The court
determined that “[b]y taking a prior art filter solution (one-size-fits-all filter
at the ISP server) and making it more dynamic and efficient (providing
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individualized filtering at the ISP server), the claimed invention represents a
‘software-based invention[ ] that improve[s] the performance of the
computer system itself.’” Id. Here, there is no such improvement to the
claimed processor itself, or an unconventional arrangement of computer
elements in that system that is a technical improvement. As discussed
above, any improvement lies in the process of marketing products, i.e., the
abstract idea itself.
Considered as an ordered combination, the components of the
Appellant’s claim add nothing that is not already present when the steps are
considered separately. The sequence of ascertaining, determining, and
assessing data and instructing a transmission based on the results of those
analyses is equally generic and conventional or otherwise held to be abstract.
See, e.g., Electric Power, 830 F.3d at 1354–56 (holding that the sequence of
gathering, analyzing, and displaying in real-time was abstract); Capital One
Fin., 850 F.3d at 1341–42 (claimed elements of organizing, mapping,
identifying, defining, detecting, and modifying data considered as an ordered
combination recited “routine steps of data collection and organizing using
generic computer components and conventional data processing activities”);
SAP Am., 898 F.3d at 1168–70 (“[A]n invocation of already-available
computers that are not themselves plausibly asserted to be an advance, for
use in carrying our improved mathematical calculations, amounts to a
recitation of what is ‘well-understood, routine, [and] conventional.’”)
Thus, we are not persuaded of error in the Examiner’s determination
that the additional elements of claim 1, considered individually and as an
ordered combination, do amount to significantly more than the abstract idea
itself.
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We sustain the Examiner’s rejection under 35 U.S.C. § 101 of
independent claim 1 and thus also of claims 2–4, 6, 9, and 12–16.

CONCLUSION
The Examiner’s decision to reject claims 1–4, 6, 9, and 12–16 is
sustained.
In summary:
Claims
Rejected
35 U.S.C. § Reference[s]/
Basis
Affirmed Reversed
1–4, 6, 9,
12–16
101 Eligibility 1–4, 6, 9,
12–16

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

AFFIRMED