Facebook, Inc.

Patent Trials and Appeals Board

Apr 14, 2020

13765607 - (D) (P.T.A.B. Apr. 14, 2020)

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.
13/765,607 02/12/2013 Austin Daniel Haugen 26295-21201 1078
87851 7590 04/14/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
LINDSEY III, JOHNATHAN J
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
04/14/2020 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 AUSTIN DANIEL HAUGEN, ZACHARY RAIT, ALEX HIMEL,
and ALEXANDER SCOTT WYLER
Appeal 2018-001406
Application 13/765,607
Technology Center 3600
Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
BRADLEY B. BAYAT, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3–5, 8–10, 13, 14 and 18–21. See
Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Facebook, Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to initiating actions on a third-party system
through interaction with a social networking system. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method comprising:
receiving content from a third-party system comprising a
description of a first action by a first user of a social networking
system on the third-party system for presentation to other users
of the social networking system, the third-party system
associated with a domain different than a domain of the social
networking system;
generating, by a processor of the social networking
system, a story for presenting to users of the social networking
system, the story comprising the description of the first action by
the first user on the third-party system received from the third
party system, the story including at least one interface element
associated with a second action on the third-party system, the
second action related to the first action;
sending, from the social networking system, the story
including the at least one interface element for display to one or
more users of the social networking system connected to the first
user in the social networking system;
receiving, at the social networking system from a viewing
user of the one or more users of the social networking system
connected to the first user in the social networking system, an
interaction with the at least one interface element of the story;
and
transmitting from the social networking system to the
third-party system a request to perform the second action on the
third-party system on behalf of the viewing user and an
identification of the viewing user, where the third-party system
performs the requested action without an additional request from
the viewing user.
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REFERENCES
Name Reference Date
Jin US 2010/0217645 A1 Aug. 26, 2010
Schoen US 2011/0231240 A1 Sep. 22, 2011
Rangsikitpho US 2013/0007449 A1 Jan. 3, 2013
REJECTIONS
Claims 1, 3–5, 8–10, 13, 14 and 18–21 are rejected under 35 U.S.C.
§ 101 as directed to non–statutory subject matter.
Claims 1, 3–5, 8–10, 13, 14, and 18–21 are rejected under 35 U.S.C.
§ 103 as unpatentable over Schoen, Jin, and Rangsikitpho.
OPINION
Claims 1, 3–5, 8–10, 13, 14, and 18–21:
Rejected as Directed to Non-Statutory Subject Matter
Principles of Law
To determine whether a claim falls within a judicially recognized
exception to patent eligibility under 35 U.S.C. § 101, we apply the two-step
framework set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), and reaffirmed in Alice Corporation
Proprietary LTD. v. CLS Bank International, 573 U.S. 208 (2014). For the
first Alice step (Step 2A of the USPTO’s Patent Subject Matter Eligibility
guidance, MPEP § 2106), we determine whether the claims at issue are
directed to a patent-ineligible concept such as an abstract idea, law of nature,
or natural phenomenon. Alice, 573 U.S. 208 (citing Mayo, 566 U.S. at 78–
79). If so, we advance to the second Alice step (Step 2B of the USPTO’s
Patent Subject Matter Eligibility guidance) where “we consider the elements
of each claim both individually and ‘as an ordered combination’ to
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determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application” of the otherwise patent-ineligible
concept. Id. (quoting Mayo, 566 U.S. 78–79).
We also apply the USPTO’s additional guidance on applying step 2A.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (“Revised Guidance”).2 The Revised Guidance establishes
a “two-prong inquiry” for determining whether a claim is directed to a
judicial exception. Id. at 54. In prong one, we determine whether the claim
recites a judicial exception, such as a law of nature, natural phenomenon, or
abstract idea. Id. If so, we look to whether the claim recites additional
elements that integrate the judicial exception into a practical application.
Id. at 50. Thus, a claim is directed to a judicial exception only if the claim
recites a judicial exception and does not integrate that exception into a
practical application. Id. At that point we look to whether the claim adds a
specific limitation beyond the judicial exception that is not well-understood,
routine, and conventional activity in the field or whether the claim simply
appends well-understood, routine, and conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. Id. at 56.3

2 Available at https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf.
3 The Revised Guidance supersedes Manual of Patent Examining Procedure
(“MPEP”) § 2106.04(II) and also supersedes prior USPTO patent-eligibility
guidance. See 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
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The Revised Guidance also clarifies what constitutes an “abstract
idea.” Under this guidance, a matter will be treated as an abstract idea if it
falls within the following specific groupings:
(a) Mathematical concepts—mathematical relationships, mathematical
formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions); and
(c) Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Id. at 52 (footnotes omitted). “Claims that do not recite matter that
falls within these enumerated groupings of abstract ideas should not be
treated as reciting abstract ideas” except in rare circumstances. Id. at 53.
Discussion
Appellant argues the appealed claims as a group. Appeal Br. 5–9.
We select claim 1 as representative of the group, and decide the appeal on
the basis of claim 1 alone. 37 C.F.R. § 41.37(c)(1)(iv).
Step 2A, prong 1
We first consider whether claim 1 recites a judicial exception. The
first three steps of claim 1 recite: (1) receiving content regarding a first

rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
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user’s first action on a third-party system; (2) generating a story that
describes the first action and that contains an “interface element” through
which a related second action may be initiated; (3) sending the story to a
user that is connected to the first user (i.e., a “second user”); and (4)
receiving the second user’s interaction with the interface element. Under the
broadest reasonable interpretation, these steps recite delivering to a user a
message that is tailored to the user based on the user’s connections on a
social networking system, which is a form of targeted advertising. For
example, the Specification describes an embodiment in which a first user
subscribed to a social networking system makes a purchase on a third-party
system; the third-party system notifies the social networking system of the
first user’s purchase; the social networking system sends a “story” to the
first user’s contacts describing the first user’s purchase, along with an
interface element that allows the contacts to make the same purchase from
the third-party system from the social networking system. Spec. ¶¶ 13–18,
28; see also Fig. 1 (illustrating a similar embodiment involving a movie
rental). The stated purpose of this system is to “encourage additional users
to interact with the third-party system,” i.e., to make additional purchases,
which is the general purpose of commercial advertisements. As such, this
concept falls within the “certain methods of organizing activity” grouping of
abstract ideas. See Revised Guidance, 52 (describing “advertising,
marketing or sales activities or behaviors” as one of the “certain methods of
organizing human activity” considered to be an abstract idea); see also
Affinity Labs of Texas LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed.
Cir. 2016) (“‘customizing information based on . . . information known
about the user’ is an abstract idea”) (quoting Intellectual Ventures I LLC v.
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Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (alterations
in original)). Accordingly, we determine that claim 1 recites a judicial
exception, i.e., an abstract idea.
Step 2A, prong 2
Having determined that claim 1 recites a judicial exception, we next
consider whether claim 1 recites additional elements that integrate the
judicial exception into a practical application. Here, beyond the judicial
exception, the claim recites “transmitting” to the third party system a request
to perform the second action on the second user’s behalf. This element
relates to the sending and receiving of data, which is insignificant extra-
solution activity. See MPEP § 2106.05(g); Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (finding abstract steps for
“gathering and analyzing information of a specified content, then displaying
the results”).
Claim 1 also recites generating a story by “a processor.” Neither the
claim nor the Specification imposes any particular structural limitations on
the claimed processor. Indeed, the Specification makes clear that the
claimed method may be performed on a “general-purpose computing
device.” Spec. ¶ 51. “[R]ecitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.” DDR, 773 F.3d at 1256.
Appellant argues that because claim 1 requires that “a user take[] an
action in one domain from another domain, claim 1 ‘address[es] a technical
challenge that is fundamentally rooted in Internet technology.” Appeal Br.
6–7 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014)). It is true that limitations that recite improvements in the
functioning of a computer, or to another technology or technical field, may
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indicate that the limitations integrate the judicial exception into a practical
application of the judicial exception. Revised Guidance, 54–55. In DDR
Holdings, the court found that the claims were patent eligible because they
transformed the manner in which a hyperlink typically functions to resolve a
problem that had no “pre-Internet analog.” DDR Holdings, 773 F.3d at 1258.
The court cautioned, however, “that not all claims purporting to address
Internet-centric challenges are eligible for patent.” Id. For example, the
DDR Holdings court distinguished the patent-eligible claims at issue from
claims found patent-ineligible in Ultramercial. See id. at 1258–59 (citing
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014)).
As noted there, the Ultramercial claims were “directed to a specific method
of advertising and content distribution that was previously unknown and
never employed on the Internet before.” Id. at 1258 (quoting Ultramercial,
772 F.3d at 715–16). Nevertheless, those claims were patent ineligible
because they “merely recite [d] the abstract idea of ‘offering media content
in exchange for viewing an advertisement,’ along with ‘routine additional
steps such as updating an activity log, requiring a request from the consumer
to view the ad, restrictions on public access, and use of the Internet.”’ Id.
Here, like in Ultramercial, claim 1’s invocation of different domains
merely applies the judicial exception to a particular technical environment—
the Internet. Limitations that “[g]enerally link[] the use of the judicial
exception to a particular technological environment” do not integrate the
judicial exception into a practical application. Revised Guidance, 54–55.
Therefore, these steps do not, alone or in combination, integrate the recited
judicial exception into a practical application. Accordingly, we proceed to
Step 2B.
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Step 2B
Having determined that claim 1 is directed to a judicial exception, we
next consider under Step 2B whether claim 1 includes additional elements or
a combination of elements that provide an “inventive concept,” i.e., whether
claim 1 includes specific limitations beyond the judicial exception that are
not “well-understood, routine, conventional” in the field. Revised Guidance,
56. In doing so, we recognize that “[t]he inventive concept inquiry requires
more than recognizing that each claim element, by itself, was known in the
art,” because “an inventive concept can be found in the non-conventional
and non-generic arrangement of known, conventional pieces.” BASCOM
Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016).
As discussed in the previous section, claim 1 recites generating a story
by “a processor,” which the Specification describes at a high level of
generality. Spec. § 51. A limitation requiring a generic processor does not
provide an inventive concept to a claimed judicial exception. See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (“[T]he use of generic computer elements like a microprocessor or
user interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter”).
Claim 1 also requires the third party system and the social networking
system to be associated with different domains, which constitutes the
application of the judicial exception to the Internet. Limiting the judicial
exception to the Internet requires only “routine, conventional activity” that is
insufficient to “transform the nature of the claim into patent-eligible subject
matter.” Ultramercial, 772 F.3d at 715. Considering these additional
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limitations alone, and in combination, we determine that they do not provide
an inventive concept to the judicial exception to which claim 1 is directed.
In sum, we agree with the Examiner that claim is directed to patent-
ineligible subject matter, and sustain the Examiner’s rejection of claims 1,
3–5, 8–10, 13, 14, and 18–21 under 35 U.S.C. § 101.
Claims 1, 3–5, 8–10, 13, 14, and 18–21:
Rejected as Unpatentable over Schoen, Jin, and Rangsikitpho
Appellant argues the claims subject to this rejection as a group.
Appeal Br. 9–14. We select claim 1 as representative of the group, and
decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R.
§ 41.37(c)(1)(iv).
As an initial matter, Appellant argues in the Reply Brief that the
Examiner improperly relies on new evidence in the Examiner’s Answer in
support of this rejection. Reply Br. 2–3. According to Appellant, the
Examiner cites for the first time in the Answer: (1) paragraphs 22, 39, and
73–76 of Jin for the “generating” step of claim 1; (2) paragraphs 74–75 of
Jin and paragraph 103 of Schoen for the “receiving” step; and (3) paragraph
16 of Rangsikitpho for the “transmitting” step. Id. Appellant contends that
under 37 C.F.R. § 41.39(a)(2), the Examiner should have designated this
rejection as a new ground of rejection.
Section 41.39(a)(2) states in relevant part:
For purposes of the examiner’s answer, any rejection that relies
upon any Evidence not relied upon in the Office action from
which the appeal is taken (as modified by any advisory action)
shall be designated by the primary examiner as a new ground of
rejection. The examiner must obtain the approval of the Director
to furnish an answer that included a new ground of rejection.
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37 C.F.R. § 41.39(a)(2). But any request for review of the Examiner’s
failure to designate a rejection as a new ground of rejection in the
Examiner’s answer “must be by way of a petition to the Director under
§ 1.181 of this title filed within two months from the entry of the examiner’s
answer and before the filing of any reply brief.” 37 C.F.R. § 41.40(a).
Appellant’s failure to do so “constitutes a waiver of any arguments that a
rejection must be designated as a new ground of rejection.” Id. In any
event, Appellant has not alleged that it has been injured by the Examiner’s
citations to these additional portions of the cited references in the
Examiner’s Answer. On the contrary, Appellant appears to have fully
responded to these citations in its Reply Brief. Reply Br. 5–13.4
As for the merits, we have thoroughly reviewed each of Appellant’s
arguments for patentability of claim 1. However, we are in agreement with
the Examiner that the claimed subject matter of representative claim 1 would
have been obvious to one of ordinary skill in the art in view of Schoen, Jin,
and Rangsikitpho. Accordingly, we sustain the Examiner’s rejection for
essentially those reasons expressed in the Final Action and Answer, and we
add the following primarily for emphasis.
Appellant argues, among other things, that Jin’s engagement interface
does not correspond to the claimed interface element associated with a
second action on the third-party system, the second action related to the first
action. Appeal Br. 9–10. According to Appellant, because Jin’s
engagement interface relates to an action “within the social network,” Jin’s

4 Appellant also appears to be the applicant in at least the Jin reference (Jin,
code (76)), so it is reasonable to presume Applicant’s familiarity with that
reference.
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action is not on the third-party system or related to the first action. Id. at 10
(citing Jin ¶ 24). In response, the Examiner notes that “Jin teaches that the
engagement interface on the social network website ‘may provide a link to
an external website in addition to the call to action and the link to perform
the action within the social network.’” Ans. 9 (citing Jin ¶ 39). The
Examiner further responds that “Jin clearly teaches that the links included in
the engagement interfaces relate to the content displayed in other parts of the
social advertisements,” and that “incorporating an engagement interface—
comprising a call to action, a link to perform an action within a social
network, and a link to an external website—in the social stories previously
taught by Schoen would have suggested to one having ordinary skill in the
art that the newly incorporated links would also relate to the content of the
attached social story.” Id. at 10 (citing Jin ¶¶ 73–76).
In its Reply, Appellant asserts that “[e]ven if this new evidence
showed exactly what the examiner alleges, it would not be sufficient to show
the claimed limitation, since the claim recites ‘the story including [the] at
least one interface element,’ i.e., the story generated earlier in this same
element.” Reply Br. 5. Thus, according to Appellant, “even if Jin shows an
‘engagement interface’ with a link to a third party interface, that is not
sufficient to show a story including the at least one interface. Jin is admitted
as not showing stories, and Schoen is relied upon for that aspect instead.”
Id. at 6.
This argument is not persuasive, as it constitutes an attack on an
individual reference when the Examiner relies on a combination of
references to teach the “generating” element. See In re Merck & Co., Inc.,
800 F.2d 1091, 1097–98 (Fed. Cir. 1986) (“Non-obviousness cannot be
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established by attacking references individually where the rejection is based
upon the teachings of a combination of references.” (citations omitted)).5
Appellant similarly argues that the combination of references does not teach
“sending” the claimed story because Schoen does not disclose the claimed
user interface and Jin does not disclose the claimed story. Appeal Br. 11–
12. But, again, the Examiner relies on a combination of Schoen and Jin to
teach this step, not on each reference individually.
Appellant also argues that “Rangsikitpho does not disclose or suggest
‘transmitting . . . a request to perform the second action on the third-party
system on behalf of the viewing user.” Appeal Br. 13. According to
Appellant, “Rangsikitpho describes ‘engagement windows,’ which act as a
‘communication channel’ for direct communication between the user and a
third-party utility.” Id. Appellant contends that “opening the engagement
window is not an action on the third party system on behalf of the viewing
user, as claimed,” but rather, “it is an action to establish communication
between the user and the third party utility. No action is taken on the third
party system itself.” Id. The Examiner correctly responds that

5 Further, we agree with the Examiner that Jin teaches the claimed interface
element associated with a second action on the third-party system, the
second action related to the first action. For example, Jin teaches
“[i]nteractive social ads,” or “engagement interfaces that utilize social
aspects of the social network,” influence a user to respond to an advertiser’s
message if the user learns that his or her “friends or other connections have
also taken an action related to the advertiser.” Jin ¶ 73. Schoen also teaches
this limitation. See Schoen ¶ 103 (“Beneficially, communicating a user
action on a third party website 140 to the use’s connections on a social
network system 100 may motivate these other users to perform a similar
action. For example, notifying a user’s friends that a user has purchased a
specific movie may prompt the friends to purchase the movie as well.”).
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“functionality provided by third party utilities away from the social
networking site comprise actions that are performed on a third party
system.” Ans. 14. The Examiner also responds (id. at 15), and we agree,
that this argument improperly attacks Rangsikitpho individually when the
rejection is based on a combination of references. See Final Act. 10
(Rangsikitpho proposed to modify the combination of Schoen and Jin “such
that call-to-action and links in the engagement interfaces described by Jin
are programmed to select and transmit a request for an engagement window
[as taught by Rangsikitpho] to the third party, thereby allowing social
network users to communicate (e.g., perform an action) with the third party
without requiring the user to leave the social networking site”).
Accordingly, for the above reasons, we sustain the Examiner’s rejection of
claims 1, 3–5, 8–10, 13, 14, and 18–21 as unpatentable over Schoen, Jin, and
Rangsikitpho.
CONCLUSION
The Examiner’s rejections of claims 1, 3–5, 8–10, 13, 14 and 18–21
under 35 U.S.C. §§ 101 and 103 are affirmed.
More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–5, 8–
10, 13, 14,
18–21
101 Ineligible subject
matter
1, 3–5, 8–10,
13, 14, 18–21

1, 3–5, 8–
10, 13, 14,
18–21
103(a) Schoen, Jin, and
Rangsikitpho
1, 3–5, 8–10,
13, 14, 18–21

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome:
1, 3–5, 8–10,
13, 14, 18–21

TIME PERIOD FOR RESPONSE
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