Andrew G. Bosworth et al.

Patent Trials and Appeals Board

Oct 4, 2019

13611522 - (D) (P.T.A.B. Oct. 4, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/611,522 09/12/2012 Andrew G. Bosworth 26295-19829 8406
87851 7590 10/04/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
SITTNER, MATTHEW T
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
10/04/2019 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 ANDREW G. BOSWORTH,
WILLIAM BLAKELEY CHANDLEE,
and RAVI MAHESH DASWANI BUXANI
____________

Appeal 2018-002476
Application 13/611,522
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2018-002476
Application 13/611,522

2
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 3–12, and 17–21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellant’s claimed invention “relates generally to social networking
systems and, in particular, to distributing messages and advertisements to
social networking system users based on connections between social
networking system users” (Spec. ¶ 1).
Claims 1, 19, and 20 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method comprising:
[(a)] storing, in a social networking system, a user profile
for a person, the user profile associated with a first set of objects
stored by the social networking system;
[(b)] storing, in the social networking system, entity
pages associated with entities, each entity page including content
associated with an entity of the entities and associated with a
second set of objects stored by the social networking system;
[(c)] receiving, by the social networking system, a
request to establish a partnership between the person and the
entity, the request subject to approval by the entity;

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed June 14, 2017) and Reply Brief (“Reply Br.,” filed January 2, 2018),
and the Examiner’s Answer (“Ans.,” mailed November 2, 2017) and Final
Office Action (“Final Act.,” mailed October 12, 2016). Appellant identifies
the real party in interest as Facebook, Inc. Appeal Br. 1.
Appeal 2018-002476
Application 13/611,522

3
[(d)] storing, in the social networking system, a bilateral
connection between the entity page and the user profile, the
bilateral connection having a partnership connection type;
[(e)] associating, by the social networking system, the
user profile and the entity page with each other to provide access
to the content associated with the entity or rewards to the person;
[(f)] identifying, from the user profile, an additional
person having a connection to the person in the social networking
system; and
[(g)] selecting advertisements for presentation to the
additional person based at least in part on the stored bilateral
connection having the partnership connection type between the
entity page and the user profile, wherein selecting advertisements
comprises prioritizing presentation to the additional person of
advertisements associated with the entity relative to presentation
of advertisements associated with another entity, another entity
page associated with the entity and the user profile not connected
by another bilateral connection having the partnership
connection type.
REJECTION
Claims 1, 3–12, and 17–21 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 5–15).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
Appeal 2018-002476
Application 13/611,522

4
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth 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 Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (alteration in original).
We are not persuaded, as an initial matter, by Appellant’s argument
that the Examiner has failed to establish a prima facie case of patent
eligibility (Appeal Br. 6–10). The Federal Circuit has observed repeatedly
that “the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
Appeal 2018-002476
Application 13/611,522

5
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant 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.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(alteration in original). Thus, what is required of the Office is that it sets
forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132. Id.; see also
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 for rejection.”).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner analyzed the claims in accordance with the Mayo/Alice two-step
framework, and consistently with the USPTO guidance in effect at the time
the Final Office Action was mailed. The Examiner, thus, notified Appellant
that the claims are directed to “selecting an advertisement for presentation
based upon a social network connection,” which the Examiner concluded is
similar to other concepts that the courts have held abstract, and that the
claims do not include additional elements or a combination of elements
sufficient to amount to significantly more than the abstract idea itself (Final
Act. 2–8). The Examiner, in our view, set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of 35 U.S.C. § 132. And we find that, in doing so, the
Examiner established a prima facie case of patent ineligibility.
After Appellant’s briefs were filed in this appeal, and the Examiner’s
Answer mailed, the U.S. Patent and Trademark Office (the “USPTO”)
published revised guidance for use by USPTO personnel in evaluating
Appeal 2018-002476
Application 13/611,522

6
subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT
SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019)
(the “2019 Revised Guidance”). That guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) providing groupings of subject matter that is considered an
abstract idea; and (2) clarifying that a claim is not “directed to” a judicial
exception if the judicial exception is integrated into a practical application of
that exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies
to all applications, and to all patents resulting from applications, filed before,
on, or after January 7, 2019. Id.2
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017 of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
Appeal 2018-002476
Application 13/611,522

7
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use 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 (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded by Appellant’s arguments that the Examiner
erred in determining that the claims are directed to an abstract idea (Appeal
Br. 6–11). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification, including
the claim language, that the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is entitled “ADVERTISEMENT SELECTION
BASED ON USER SELECTED AFFILIATION WITH BRANDS IN A
SOCIAL NETWORKING SYSTEM,” and states that the application relates,
Appeal 2018-002476
Application 13/611,522

8
in particular, to “distributing messages and advertisements to social
networking system users based on connections between social networking
system users” (Spec. ¶ 1). The Specification describes, in the Background
section, that social networking systems typically “maintain connections
among their users and allow express or implied identification of content that
is interesting and relevant to individual users” (id. ¶ 2). These social
networking systems also collect and maintain information about their users
— information that may be static, e.g., geographic location, employer, age,
or dynamic, e.g., tracking a user’s actions within the social network (id.).
The Specification describes that although users can take advantage of
the information maintained in the social networking system, existing social
network systems are limiting in terms of delineating between different types
of users, e.g., individuals and entities (businesses) (id. ¶¶ 3, 4). “Hence,
current social networking systems do not leverage connections between
persons and entities in a meaningful way” (id. ¶ 4).
The claimed invention is ostensibly intended to address this issue by
allowing individual users, i.e., people, to partner, or otherwise express an
interest in or affiliation with, users that are non-person entities (id. ¶ 5). The
partnership allows both users to customize the presentation of their
respective profiles and pages to other social networking system users,
thereby allowing persons and entities to differently convey their identities in
the social networking system (id.).
The Specification describes that, in one embodiment, the partnership
provides the person with enhanced interactions with the social networking
system, e.g., access to content associated with the entity that is not
accessible to persons who are not partnered with the entity (id. ¶ 6); the
Appeal 2018-002476
Application 13/611,522

9
person also may receive rewards from the entity, such as access to the
entity’s loyalty or rewards program (id. ¶ 7). From the entity perspective,
the partnership allows an entity to preferentially advertise to users associated
with it through partnerships (id. ¶ 9). An entity also may receive preferential
treatment for advertisements presented to other users connected to a user,
who partnered with the entity; thus, advertisements associated with the entity
are more likely to be selected for presentation to other users connected to the
partnered user (id.).
Consistent with this disclosure, claim 1 recites a method comprising:
(1) storing a user profile for a person in a social networking system, i.e.,
“storing, in a social networking system, a user profile for a person, the user
profile associated with a first set of objects stored by the social networking
system” (step (a)); (2) storing entity pages associated with entities in the
social networking system, i.e., “storing, in the social networking system,
entity pages associated with entities, each entity page including content
associated with an entity of the entities and associated with a second set of
objects stored by the social networking system” (step (b)); (3) receiving a
request to establish a partnership between the person and the entity, i.e.,
“receiving, by the social networking system, a request to establish a
partnership between the person and the entity, the request subject to
approval by the entity” (step (c)); (4) storing a bilateral partnership
connection in the social networking system between the person and the
entity and associating the user profile and entity page with each other, i.e.,
“storing, in the social networking system, a bilateral connection between the
entity page and the user profile, the bilateral connection having a partnership
connection type” and “associating, by the social networking system, the user
Appeal 2018-002476
Application 13/611,522

10
profile and the entity page with each other to provide access to the content
associated with the entity or rewards to the person” (steps (d) and (e));
(5) identifying additional persons having a connection to the person, i.e.,
“identifying, from the user profile, an additional person having a connection
to the person in the social networking system” (step (f)); and (6) selecting
advertisements for presentation to the additional persons, i.e.,
selecting advertisements for presentation to the additional person
based at least in part on the stored bilateral connection having the
partnership connection type between the entity page and the user
profile, wherein selecting advertisements comprises prioritizing
presentation to the additional person of advertisements
associated with the entity relative to presentation of
advertisements associated with another entity, another entity
page associated with the entity and the user profile not connected
by another bilateral connection having the partnership
connection type.
(step (g)). We agree with the Examiner that these limitations, when given
their broadest reasonable interpretation, recite “selecting an advertisement
for presentation based upon a social network connection,” i.e., targeted
advertising, which a method of organizing human activity, and, therefore, an
abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Targeting customers with particular targeted marketing material is a
longstanding marketing and advertising practice. See Tuxis Techs., LLC v.
Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL 4382446, at *5 (D. Del.
Sept. 3, 2014) (Matching consumers with a given product or service “has
been practiced as long as markets have been in operation.”). It also is
substantially similar to other practices that the courts have held abstract.
See, e.g., Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D. Cal.
2014), aff’d, 622 F. App’x 915 (Fed. Cir. 2015) (concluding that targeting
Appeal 2018-002476
Application 13/611,522

11
advertisements to certain consumers is no more than an abstract idea);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713 (Fed. Cir. 2014)
(offering media content in exchange for viewing an advertisement);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (tailoring information presented to a user based on
particular information); Affinity Labs of Texas, LLC v. Amazon.com, Inc.,
838 F.3d 1266, 1271 (Fed. Cir. 2016) (customizing a user interface to have
targeted advertising based on user information).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2).
The Examiner determined, and we agree, that the only additional
element recited in claim 1, beyond the abstract idea, is the claimed “social
networking system” that performs the method steps — an element that the
Examiner observes is “recited at a high level of generality and only performs
generic [computer] functions of collecting / receiving / gathering data,
storing data, communicating / transmitting data, and displaying data” (Final
Act. 5–6). We find no indication in the Specification, nor does Appellant
direct us to any indication, that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, invoke any assertedly 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
Appeal 2018-002476
Application 13/611,522

12
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 effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, 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 the 2019 Revised Guidance.3
Appellant asserts that the Federal Circuit, in McRO, Inc. v. Bandai
Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016), “established
that claims are not directed to an abstract idea when they recite a method
that is a specific application that improves on a broader concept” (Appeal
Br. 10 (citing McRO, 837 F.3d at 1316)). And Appellant argues that the
pending claims are not directed to an abstract idea because, as in McRO, the
claims do not “merely claim ‘the idea of a solution or outcome’ for
establishing bilateral connections or selecting advertisements based on
bilateral connections” but instead “recite a specific, discrete implementation
of storing user profiles, storing entity pages, establishing and storing
bilateral connections between entity pages and user profiles, [and] selecting

3 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
Appeal 2018-002476
Application 13/611,522

13
and prioritizing presentation of advertisements” (id. at 11; see also Reply
Br. 5).
Appellant’s argument is not persuasive at least because the Federal
Circuit premised its determination that the claims in McRO were patent
eligible, not merely on the specificity of the claimed animation scheme, but
on the fact that the claims, when considered as a whole, were directed to a
technological improvement over existing, manual 3-D animation techniques
and used limited rules in a process specifically designed to achieve an
improved technological result in conventional industry practice.
We are not persuaded that the pending claims achieve a comparable
improved technological result. To the contrary, the claimed invention, when
considered in light of the Specification, clearly appears to be focused on
achieving a commercial objective, i.e., leveraging the connection between
persons and the entities with which they are partnered for the commercial
benefit of both parties (see Spec. ¶¶ 21, 22, 59, 64, 68, 69), and not on any
claimed means for accomplishing that goal that improves technology.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim, i.e., elements of the claimed “social
networking system,” are no more than generic computer components used as
tools to perform the abstract idea of targeted advertising. As such, they do
not integrate the recited abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is
not generally the sort of ‘additional feature[e]’ that provides any ‘practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Appeal 2018-002476
Application 13/611,522

14
Accordingly, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (USPTO Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Citing the Federal Circuit’s holding, in BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), that
an inventive concept can be found in the non-conventional and non-generic
arrangement of known conventional pieces, Appellant argues that even if
claim 1 is directed to an abstract idea, the claim is nonetheless patent eligible
because it includes significantly more than an abstract idea (Appeal Br. 12–
14). Appellant asserts that “the ordered combination of the steps in claim l
is directed to a specific, discrete implementation of storing user profiles,
storing entity pages, establishing and storing bilateral connections between
entity pages and user profiles, [and] selecting and prioritizing presentation of
advertisements” (id. at 13). And Appellant argues that, like BASCOM, “this
ordered combination of steps is a very specific and technology based
solution of improving social networking systems that is significantly more
than any abstract idea” (id. at 13–14).
Appellant’s reliance on BASCOM is misplaced. In BASCOM, the
Federal Circuit determined that the claimed installation of a filtering tool at a
Appeal 2018-002476
Application 13/611,522

15
specific location, remote from the end-users, with customizable filtering
features specific to each end user provided an inventive concept in that it
gave the filtering tool both the benefits of a filter on a local computer and the
benefits of a filter on the ISP server. BASCOM, 827 F.3d at 1350. The
court, thus, held that the second step of the Mayo/Alice framework was
satisfied because the claimed invention “represents a ‘software-based
invention[ ] that improve[s] the performance of the computer system itself.’”
Id. at 1351 (stating that like DDR Holdings, where the patent “claimed a
technical solution to a problem unique to the Internet,” the patent in
BASCOM claimed a “technology-based solution . . . to filter content on the
Internet that overcomes existing problems with other Internet filtering
systems . . . making it more dynamic and efficient”) (internal citations
omitted).
Here, Appellant does not identify, and we do not find, any
improvement to computer technology analogous to the ordered combination
described in BASCOM or any additional element or elements recited in
claim 1 that yield an improvement in the functioning of a computer, or an
improvement to another technology or technical field.
Appellant argues that claim 1 improves the technical field of social
networking systems “by enabling creation and storage of user profiles for
users, entity pages for entities, and bilateral connections between a user and
an entity” and further “by selecting advertisements for presentation to
another user having a connection to the user based at least in part on the
stored bilateral connection having the partnership connection type between
the entity page and the user profile” (id. at 13–14). Yet, we are not
persuaded that this is a technological improvement, as opposed to an
Appeal 2018-002476
Application 13/611,522

16
improvement in a business practice. As described above, it appears clear
from the Specification that claim 1 is focused on achieving a commercial
objective, i.e., leveraging the connection between persons and the entities
with which they are partnered for their mutual commercial benefit, and not
on any claimed means for accomplishing this goal that improves technology.
We also do not agree with Appellant that the claim limitations
“provide significantly more than an abstract idea for at least reciting a
method that is inherently tied to computer technology” (Appeal Br. 14).
Neither are we persuaded that there is any parallel here between claim 1 and
the claims at issue in DDR Holdings (id. at 14–15).
Appellant asserts that the claimed process is “undeniably tied to a
social networking system,” and, similar to DDR Holdings, addresses a
problem faced by social networking systems that is particular to the Internet
(id. at 14). Appellant notes that claim 1 “allows distinguishing human users
and non-human users, allows a human user and a non-human user to
establish a partnership relationship, and regulates presentation of
information based at least in part on an established relationship between the
human user and the non-human user” (id.). And Appellant argues that “[t]he
specific features of selecting advertisements for presentation to another user
and prioritizing presentation of selected advertisements is [sic] one of the
solutions that are rooted in the computer technology to overcome the
Internet-centric issues of social networking systems” (id. at 14–15).
Appellant’s argument is not persuasive. Although social networking
may be Internet-centric, selecting advertisements for presentations to
particular users is not a problem rooted in technology or one arising out of
computer networks, like the problem in DDR Holdings. Targeted
Appeal 2018-002476
Application 13/611,522

17
advertising existed before and still exists outside of computer technology
and computer networks. And the purported solution here of, at best, generic
computer components performing generic computer functions, is not
necessarily rooted in computer technology.
The Federal Circuit, in DDR Holdings, moreover, expressly cautioned
that “not all claims purporting to address Internet-centric challenges are
eligible for patent.” DDR Holdings, 773 F.3d at 1258. And the court
contrasted the claims in DDR Holdings to those at issue in Ultramercial, in
that, in DDR Holdings, the computer network was not operating in its
“normal, expected manner” and the claims did not “recite an invention that
is . . . merely the routine or conventional use of the Internet.” Id. at 1258–
59.
Here, we do not find, and Appellant does not identify, any analogous
modification to the routine and conventional functioning of computer
network technology. At best, the claimed invention appears to use generic
computer components to perform an abstract business practice (i.e.,
“selecting an advertisement for presentation based upon a social network
connection”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 3–12, and 17–21,
which fall with claim 1.
Appeal 2018-002476
Application 13/611,522

18
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3–12, 17–21 101 Eligibility 1, 3–12, 17–
21

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