Facebook, Inc.

Patent Trials and Appeals Board

Apr 24, 2020

14562547 - (D) (P.T.A.B. Apr. 24, 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.
14/562,547 12/05/2014 Yi Tang 108282.020100 7750
169063 7590 04/24/2020
BakerHostetler / Facebook
Cira Centre 12th Floor
2929 Arch Street
Philadelphia, PA 19104-2891
EXAMINER
TOKARCZYK, CHRISTOPHER B
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
04/24/2020 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YI TANG
____________

Appeal 2019-006434
Application 14/562,547
Technology Center 3600
____________

BEFORE DONALD E. ADAMS, ULRIKE W. JENKS, and
TAWEN CHANG, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1, 3–7, 9–12, and 14–20 (Final Act.2 2). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Facebook, Inc.” (Appellant’s April 23, 2019 Appeal Brief (Appeal Br.) 2).
Note, Appellant’s Appeal Brief is not paginated, therefore, all reference to
pages in this document refer to a page as if the document were numbered
consecutively beginning with the first page.
2 Examiner’s November 26, 2018 Final Office Action.
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STATEMENT OF THE CASE
Appellant’s disclosure “relates generally to presentation of content by
an online system, and more specifically to requesting content items subject
to one or more policies regulating locations of presented content items
relative to each other” (Spec. ¶ 1). Appellant’s claim 1 is reproduced below:
1. A method comprising:
maintaining, by an online system, one or more advertising
policies identifying one or more positions in a newsfeed
of content items in which advertisements may not be
presented, the online system presenting content items and
advertisements to a user of the online system in the
newsfeed within a limited display space in a user
interface;
receiving, by the online system, information describing an
advertisement request from an advertiser;
retrieving prior interactions by the user with content items
presented by the online system from information
maintained by the online system;
determining a likelihood of the user performing one or more
interactions with the advertisement included in the
advertisement request based at least in part on the prior
interactions by the user with the content items presented
by the online system;
determining that the likelihood of the user performing the one
or more interactions with the advertisement including the
advertisement request is greater than a threshold
likelihood;
responsive to determining that the likelihood of the user
performing the one or more interactions with the
advertisement is greater than the threshold likelihood,
generating a modification to the one or more of the
advertising policies, the modification to the one or more
advertising policies allowing insertion of the
advertisement into a position in the newsfeed identified
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by the one or more advertising policies as one of the
identified positions in the newsfeed of content items in
which advertisements may not be presented;
selecting, for inclusion in the newsfeed in compliance with the
generated modification, the advertisement for inclusion
in the newsfeed in the position identified by the one or
more advertising policies, a plurality of content items,
and one or more additional advertisements; and
providing, by the online system, the newsfeed including the
selected content items and advertisements within the
limited display space in the user interface to a client
device for presentation to the user.
(Appeal Br. 17–18.) Claim 12, Appellant’s remaining independent claim, is
drawn to a computer program product comprising a non-transitory computer
readable storage medium having instructions encoded thereon that, when
executed by a processor, cause the processor to perform the method of
Appellant’s claim 1 (see id. at 20–21).

Grounds of rejection before this Panel for review:
Claims 1, 3–7, 9–12, and 14–20 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Veach.3
Claims 1, 3–7, 9–12, and 14–20 stand rejected under 35 U.S.C. § 101.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Veach teaches Appellant’s claimed invention?

3 Veach, US 2004/0267612 A1, published Dec. 30, 2004.
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ANALYSIS
Examiner finds that Veach anticipates Appellant’s claimed invention
(see Final Act. 7–16). In this regard, Examiner finds, inter alia, that Veach
teaches the use of “advertising policies that specify which positions content
and advertising will/may and will not/may not be presented,” wherein such
policies “include whether to display ads as pop-up ads” (Ans. 8 (citing
Veach ¶¶ 62, 96, and 97); see also Ans. 9; Final Act. 7, 9, and 20). We are
not persuaded.
As Appellant explains, however, a pop-up window is not in the
newsfeed and thus, displaying an ad in a pop-up window fails to meet the
requirement in Appellant’s claimed invention that the ad is displayed in a
newsfeed (see Reply Br. 5). In this regard, Appellant explains that “even if
the original ad were in a newsfeed, changing it to be in a new window
removes it from the newsfeed, rather than altering its position within the
newsfeed” (id.; cf. Ans. 8–9 (Examiner finds “[w]hen the ad changes
positions (e.g., being allowed to be shown as a pop-up), the advertising
policy is modified to allow the ad to be in a different position, namely, one it
previously was not allowed to be presented in”)).
CONCLUSION
The preponderance of evidence on this record fails to support
Examiner’s finding that Veach teaches Appellant’s claimed invention. The
rejection of claims 1, 3–7, 9–12, and 14–20 under 35 U.S.C. § 102(a)(1) as
being anticipated by Veach is reversed.

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Subject Matter Eligibility:
ISSUE
Does the preponderance of evidence of record support Examiner’s
finding that Appellant’s claimed invention is directed to patent-ineligible
subject matter?
PRINCIPLES OF LAW
A. 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: “Laws 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);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
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. (citation 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).
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“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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).4 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.
Under the Guidance and the October 2019 Update, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
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Guidance, 84 Fed. Reg. at 52–55.
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 claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56.
ANALYSIS
(Step 1)
We first consider whether the claimed subject matter falls within the
four statutory categories set forth in § 101, namely “[p]rocess, machine,
manufacture, or composition of matter.” Guidance, 84 Fed. Reg. at 53–54;
see 35 U.S.C. § 101. Appellant’s claims 1, 3–7, 9–11, and 14–20 are
directed to a process and claims 12 and 14–20 are directed to a product, i.e.,
computer readable medium and, thus, squarely fall within the statutory
categories set forth in § 101 (see generally Final Act. 2). Therefore, we
proceed to the next steps of the analysis.
(Step 2A, Prong 1)
In the first prong of Step 2A, the Guidance instructs us next to
determine whether any judicial exception to patent eligibility is recited in the

(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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claim. 84 Fed. Reg. at 54. In this regard, the Guidance identifies three
judicially excepted groupings identified by the courts as abstract ideas: (1)
mathematical concepts, (2) certain methods of organizing human behavior,
and (3) mental processes. Guidance, 84 Fed. Reg. at 52–54.
On this record, Examiner finds that Appellant’s claim 1
recites maintaining one or more advertising policies identifying
positions is a newsfeed of content items in which
advertisements may not be presented, receiving information,
retrieving prior interactions, determining a likelihood,
determining that the likelihood is greater than a threshold,
generating a modification to the one or more advertising
policies responsive to the previous determination, the
modification allowing insertion of the advertisement into a
position identified as one in which advertisements may not be
presented, selecting the advertisement for inclusion in the
newsfeed in the position identified by the one or more
advertising policies, a plurality of content items and additional
advertisements, and providing the newsfeed.
(Final Act. 3; see id. (Examiner finds that Appellant’s claim 12 “recites
similar limitations”).) According to Examiner, the foregoing limitations
correspond to the collection, manipulation (i.e., comparison and organization
through mathematical correlations), analysis, and display of data and, thus,
recites “mental processes that can be performed in the human mind or by a
human using a pen and paper” (see Final Act. 3).
Appellant contends that its claim 1 does “not recite a mental process,”
because, like claim 2 of the Guidance’s Example 37,6 the retrieving and
determining steps of Appellant’s claim 1 “require[s] actions that cannot be

6 Example 37 – Relocation of Icons on a Graphical User Interface, Subject
Matter Eligibility Examples: Abstract Ideas, 1–5, available at
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf.
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practically applied in the human mind” (Appeal Br. 6). We agree. We also
agree with Appellant’s contention that because “mathematical concepts are
not recited in [its] claims . . . the claims are not directed to a mathematical
relationship, formula, or calculation” (id.).
Examiner and Appellant both agree, however, that Appellant’s claim
1 recites “a method that involves the placement of advertisements, which at
that level of generality may arguably fall within organizing human activity”
(Appeal Br. 6; cf. Final Act. 4 (Examiner finds that Appellant’s claim 1
recites “certain methods of organizing human activity”) Ans. 4; Guidance,
84 Fed. Reg. at 52).
(Step 2A, Prong 2)
Having determined that Appellant’s claim recites a judicial exception,
the Guidance requires an evaluation as to whether the claim as a whole
integrates the recited judicial exception into a practical application of the
exception. See 84 Fed. Reg. at 54.
On this record, Examiner finds that because Appellant’s claim 1
“do[es] not require any display of the modified newsfeed” it does not
integrate the recited judicial exception into a practical application, i.e., the
display of a modified newsfeed, but rather describes the preparation of “a
newsfeed and sending it to a display with the intended––but not required––
use of [a] display” (Ans. 5; see also id. at 5–6). According to Examiner,
although “[m]odifying rules for how to choose advertising would be a
solution[, i.e., practical application,] in the marketing and advertising fields,”
the “features [of Appellant’s claim 1] directed to modifying rules for how to
choose advertising do not specify how these features are specifically
implemented by a computer or any other technology” and “to the extent that
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[A]ppellant alleges the claims [] ‘improve the quality of and thereby user
satisfaction with the newsfeed,’ [] this is an intended result [and] not
necessarily an improvement required by the claims” (id. at 6–7). Thus,
Examiner finds that Appellant’s “alleged improvement is to the abstract
idea, not anything relating to the technical aspects of the claimed invention”
(id.). We are not persuaded.
As Appellant explains, the method set forth in its claim 1 “is a
particular improvement, [i.e., practical application of the abstract idea,]
rather than a general claim to advertising in the abstract,” because it
requires, inter alia,
“responsive to determining that the likelihood of the user
performing the one or more interactions with the advertisement
is greater than the threshold likelihood, generating a
modification to the one or more of the advertising policies,”
where “the modification to the one or more advertising policies
allowing insertion of the advertisement into a position in the
newsfeed identified by the one or more advertising policies as
one of the identified positions in the newsfeed of content items
in which advertisements may not be presented” limits the
modification of advertisement policies to when “the likelihood
of the user performing the one or more interactions with the
advertisement is greater than the threshold likelihood” which
avoids generating modifications to advertisement policies for
advertisements with which the user is not likely to interact.
(Appeal Br. 9–10 (citing claim 1 of the Guidance’s Example 40,7).) We
agree. Appellant’s claimed method provides a specific improvement to
online systems of advertisement and, thus, Appellant’s claim 1 as a whole

7 Example 40 – Adaptive Monitoring of Network Traffic Data, Subject
Matter Eligibility Examples: Abstract Ideas, 10–11, available at
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf.
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integrates the judicial exception into a practical application (see Appeal Br.
9).
As discussed above, Appellant’s claim 12, the only remaining
independent claim, is drawn to a computer program product comprising a
non-transitory computer readable storage medium having instructions
encoded thereon that, when executed by a processor, cause the processor to
perform the method of Appellant’s claim 1 and is, therefore, directed to
patent eligible subject matter for the same reasons as Appellant’s claim 1.
This concludes the eligibility analysis on this record. See Revised
Guidance, 84 Fed. Reg. at 51.
CONCLUSION
The preponderance of evidence of record fails to support Examiner’s
finding that Appellant’s claimed invention is directed to patent ineligible
subject matter. The rejection of claims 1, 3–7, 9–12, and 14–20 under
35 U.S.C. § 101 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–7, 9–12,
14–20
102(a)(1) Veach 1, 3–7, 9–
12, 14–20
1, 3–7, 9–12,
14–20
101 Eligibility 1, 3–7, 9–
12, 14–20
Overall
Outcome
1, 3–7, 9–
12, 14–20
REVERSED