Facebook, Inc.

Patent Trials and Appeals Board

Jun 2, 2020

13933598 - (D) (P.T.A.B. Jun. 2, 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.
13/933,598 07/02/2013 Frederick Ross Leach 26295-23833 1968
87851 7590 06/02/2020
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
SADANANDA, ABHIJIT B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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 FREDERICK ROSS LEACH
and SEAN MICHAEL BRUICH

Appeal 2019-006479
Application 13/933,598
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, ULRIKE W. JENKS, and
TAWEN CHANG, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims 1, 3, 5, 7–9, 11–13, and 21–23,
under 35 U.S.C. § 103 as obvious and under 35 U.S.C. § 101 as reciting
patent ineligible subject matter. Pursuant to 35 U.S.C. § 134(a), Appellant1
appeals from the Examiner’s decision to reject the claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM but designate a portion of our affirmance as a New Ground of
Rejection pursuant to our authority under 37 C.F.R. § 41.50(b).

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.
Appeal Br. 2.
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STATEMENT OF THE CASE
The claims stand rejected by the Examiner as follows:
Claims 1, 3, 5, 7–9, 11–13, and 21–23 are rejected under 35 U.S.C.
§ 103 as obvious over Krishnamoorthy et al. (US 2012/0030010 A1,
published Feb. 2, 2012) (“Krishnamoorthy”), Kunal et al. (US 8,306,922 B1,
issued Nov. 6, 2012) (“Kunal”), and Gordon (US 2013/0179440 A1,
published July 11, 2013) (“Gordon”). Final Act. 11.
Claims 1, 3, 5, 7–9, 11–13, and 21–23 under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception to patent eligibility.
Non-Final Act. 4.
Claim 1, the only independent claim on appeal, is reproduced below
(annotated with bracketed numbers and letters for reference to the
limitations in the claim):
1. A computer-implemented method comprising:
[1] maintaining an edge store database describing
connections of one or more users of a social networking
system;
[2] receiving one or more communications from a
content generator of a social networking system, the one or
more communications identifying one or more objects
maintained by the social networking system associated with a
brand owner;
[3] querying the edge store database to identify a set of
connections of the content generator, each connection
comprising another user with whom the content generator has
established a connection in the social networking system;
[4] presenting the one or more communications from the
content generator to a plurality of users of the social networking
system, wherein one or more of the plurality of users is
connected to the content generator;
for each communication from the content generator
[a] selecting a subset of exposed users and a subset of
unexposed users from the plurality of users, wherein (i) the
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subset of exposed users is comprised of users that viewed the
one or more communications (ii) the subset of unexposed users
is comprised of users that did not view the one or more
communications (iii) the subset of exposed users and the subset
of unexposed users are selected based on a threshold similarity
in user profiles identified between the two subsets, the
threshold similarity including a connection to the content
generator;
[b] determining a sentiment from each of the selected
subset of exposed users for the one or more communications
from the content generator;
[c] determining a sentiment from each of the selected sub
set of unexposed users for the one or more objects maintained
by the social networking system associated with the brand
owner;
[d] comparing the sentiment from each of the selected
subset of exposed users to the sentiment from each of the
selected subset of unexposed users to determine an impact
score, the impact score indicating a magnitude of impact of the
one or more communications from the content generator on
users of the social networking system;
[e] generating an impact report describing the impact
scores associated with each of the selected subset of exposed
users and each of the selected subset of unexposed users;
[f] presenting the generated impact report to the brand
owner; and
[g] receiving rules from the brand owner, wherein the
rules identifying at least one response communication for
presentation to at least one group of users selected from the
subsets of the plurality of users based on the report, and the at
least one response communication identified by the rules
reinforcing positive sentiment of one or more of the
communications from the content generator responsive to a
determination that the selected group of users have positive
sentiments towards the object associated with the brand owner.

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CLAIM 1
Claim 1 is directed to a computer-implemented method comprising
maintaining a database of connections of one or more users of a social
networking system (step [1]). The Specification explains that a social
networking system allows user to connect and communicate with each other
and “share their interests and experiences with each other by posting content
on the social networking system that may be viewed by additional users.”
Spec. 2. The Specification further teaches that this “allows a business or
brand to increases awareness about its products or services via a social
networking system.” Id.
The method comprises receiving communications from a “content
generator of a social networking system,” where the communications are
“identifying one or more objects maintained by the social networking system
associated with a brand” (step [2]). A “content generator” is a user who
generates communications. Spec. 11. The Specification explains that an
object is, for example, “a status update, photo, or other content . . . relating
to a brand owner, its products or services.” Id. The claim does not recite who
is the recipient of the communication, but in the context of the claim we
understand it to be the social networking system.
The method further comprises “querying the edge store database to
identify a set of connections of the content generator” established in the
social networking system” (step [3]). The “edge store database” describes
the connections between the users of the social networking system (step [1]).
In the next step of the method, communications from the content generator
are presented to users of the social networking system who are connected to
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the user (step [4]). We interpret these steps to be carried out by the social
networking system.
For each communication from the content generator, the claimed
method selects subsets of “exposed users” and “unexposed users” who either
viewed the communication or did not, respectively (steps [a](i), [a](ii)). The
“exposed users” and “unexposed users” are “selected based on a threshold
similarity in user profiles identified between the two subsets, the threshold
similarity including a connection to the content generator” (step [a](iii)). The
Specification explains that a user with “threshold similarity” to a content
generator is a “lookalike user” who, for example, “has performed a threshold
number of actions with an object that is similar to an object associated with a
communication generated by a content generator or has a threshold amount
of user profile information matching, or similar to, user profile information
associated with a content generator.” Spec. ¶ 13. The Specification also
discloses that lookalike users can be identified “based [on] user profile
information, actions performed on the social networking system and/or one
or more third party systems, geographic location, connections to additional
users, or other information similar to information associated with a content
generator.” Id.
In the subsequent steps of the method, “sentiments” from exposed
users to the communication and sentiments from unexposed users to an
object from the same brand owner are determined and compared to
determine an impact score “indicating a magnitude of impact” of the
communication from the content generator (steps [b]–[d]). The Specification
does not provide a definition of sentiment, so we adopt its ordinary
dictionary definition to mean “an attitude, thought, or judgment prompted by
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feeling.”2 Thus, the impact on the feelings of the exposed and unexposed
users are determined. A report describing the impact scores is generated in
the subsequent step [e] of the claim.
The report is presented to the brand owner (step [f]) and rules are
received from the brand owner identifying a “response communication,”
where the response is “reinforcing positive sentiment” of the communication
from the content generator (step [g]). The claim does not recite that the
response communication is sent to a user.

OBVIOUSNESS REJECTION
The Examiner found that Krishnamoorthy describes the same steps of
the claimed method of maintaining the database of connections between
users of a social networking system and presenting a communication from a
content generator to users connected to the content generator (steps [1]–[4]
of claim 1). Non-Final Act. 12–13. The Examiner also found that
Krishnamoorthy describes determining the sentiments of exposed and non-
exposed users, comparing the sentiments, generating an impact report, and
sending the report to the brand owner (steps [a]–[f]). Id. at 13.
The Examiner found that Krishnamoorthy “does not explicitly teach”
step [a](iii) of selecting the subset of exposed users and the subset of
unexposed users “based on a threshold similarity in user profiles identified
between the two subsets, the threshold similarity including a connection to
the content generator.” Non-Final Act. 13–14. For this limitation, the
Examiner cited Kunal. Id. at 14. The Examiner determined it would have

2 https://www.merriam-webster.com/dictionary/sentiment (last accessed
May 5, 2020).
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been obvious to one of ordinary skill in the art to apply Kunal to
Krishnamoorthy because “including Kunal’s threshold similarity measure
for selecting users in the process of Krishnamoorthy would result in an
improved system that detects content on a social network with greater
efficiency and accuracy (Kunal, col. 3 ln. 1–13).” Id.
The Examiner further cited Gordon for describing the last step of
claim 1 of receiving rules from the brand owner and applying them in the
manner which is claimed. Non-Final Act. 14–15.
Appellant argues that neither Krishnamoorthy nor Kunal describes
selecting “exposed” or “non-exposed” users “based on a threshold similarity
in user profiles identified between the two subsets, the threshold similarity
including a connection to the content generator.” Appeal Br. 18–19. With
respect to Kunal, Appellant argues that the “threshold score determined by
Kunal determines whether a profile page associated with different nodes is
likely to include content associated with a subject of interest, which is
distinct from the claimed “‘threshold similarity in user profiles identified
between the two subsets, the threshold similarity including a connection to
the content generator.’ Kunal, 11:53-65.” Appeal Br. 19. Appellant also
argues that Gordon does not disclose this feature. Id. at 20.
Discussion
Krishnamoorthy describes a database of user connections and a user
communicating an advertisement (a “content generator” of claim 1) to
another connected user of social network as required by steps [1]–[4] of
claim 1. Krishnamoorthy ¶¶ 21, 22, 23 (“communication of information
regarding the advertisement or a subject of the advertisement from the first
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user 402 to a second user 408 in the social network 404, such as a family
member or a friend of the first user 402”).
As required by the claim (steps [b]–[c]), the “sentiments” of the users
to whom the communication was presented are determined:
Information regarding the communication, such as the nature of
the communication, the mode of communication, the subject of
the communications, circumstances surrounding the
communication, whether the communication was positive or
negative and to what degree, the time of the conversion, and
other information, is stored in the database 412.
Krishnamoorthy ¶ 23 (emphasis added).
The assessment can include assessing the impact of the
communications on the effectiveness of the advertisement, such
as impact in connection with the behavior of the second user
408 in view of the communication 424 from the first user 402.
Krishnamoorthy ¶ 29
The “impact” of the communication described in Krishnamoorthy was
reasonably found to correspond to the “sentiment” recited in claim, a finding
not challenged by Appellant.
Comparisons of sentiments between users is also described by
Krishnamoorthy (e.g., at ¶ 30: “For example, analysis of the effect of the
communications 424, 426 on the effectiveness of the advertisement relative
to the behavior of the second user 408 or third user 410”). See also
Krishnamoorthy ¶ 36 discussed below.
Krishnamoorthy discloses performing “controlled experimentation”
utilizing “multiple sets of similarly or identically targeted users can be
identified, with similar or identical network structures, such as if each set
includes only family members, etc.” Krishnamoorthy ¶ 36.
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Krishnamoorthy describes using “exposed” and “unexposed” users,
namely users who have seen the advertisement and users who have not:
For each of a first group, or experimental group, of sets, a
particular advertisement is shown to a particular user in the set,
called the main user, but not other users in the set. For each of a
second group, or control group, of sets, the particular
advertisement is purposely not shown to a particular user, or
main user, or the other users in the set.
Id.
The behaviors of the groups are determined and compared to
determine the impact of the advertising (Krishnamoorthy ¶ 36: “Tracking
behavior over time of the users, other than the main users, in each of the
experimental and control group (as well as other associated information and
details) and then comparing the two, can facilitate assessment of the social
or communications impact on advertising.”). The latter, as found by the
Examiner and not contested by Appellant, correspond to comparing the
sentiments of the different users as required by step [d] of claim 1.
Appellant contends that “Krishnamoorthy is silent regarding a
relationship between its experimental group and its control group, instead
disclosing that its experimental group includes multiple sets of similar users
and that its second group of sets includes similar users.” Appeal Br. 18.
However, as pointed out above, Krishnamoorthy discloses that “multiple sets
of similarly or identically targeted users can be identified, with similar or
identical network structures, such as if each set includes only family
members, etc.” Krishnamoorthy ¶ 36. After making this statement,
Krishnamoorthy then describes the different groups of users utilized in its
controlled experimentation. Id. The disclosure of “similarly or identically
targeted users” therefore reasonably suggests that similar or identical users
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are shown the advertisements, including similar or identical users in the
exposed and unexposed groups.
We take note of the fact that scientists, when performing controlled
experiments as described in paragraph 36 of Krishnamoorthy, would seek to
have as many conditions the same as possible to determine the impact of the
advertisement on the user where all other variables are the same. To put it
another way, if an advertisement about a hair care products is shown to a
bald-headed man, he may rate the advertisement neutral or negative, not
because of the content of the ad, but because he is biased because of his lack
of hair and not interested in hair care products. Thus, to reduce bias, one of
ordinary skill in the art would have sought to choose similar users when
determining the impact of an advertisement. Consistently, Krishnamoorthy
teaches targeting similar or identical users. Krishnamoorthy ¶ 36. Based on
this teaching in Krishnamoorthy, one of ordinary skill in the art would have
found it obvious to utilize a user’s profile as a way of determining whether
users are similar or identical to each other because a profile indicates the
interests of each user3 and therefore their similarity. Consistently, the
Specification states, in its background section, that “[t]he impact of word-of-
mouth communications is increased in online environments like social
networking systems where large audiences sharing similar interests are able
to easily communicate with each other over potentially large geographic
areas and wide demographic distribution.” Thus, it would have been obvious

3 Kunal, col. 1, ll. 18–23 (“In general, a user of a social network has a profile
page that is customizable by the user. A user can post content, such as text,
images, and video, to its profile page.”). Id. at col. 4, ll. 50–52 (“Users that
share a link may be likely to have common interests and may be likely to
post content to their profile pages related to similar topics.”).

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to one of ordinary skill in the art to select users with similar profiles as
required by claim 1 (“selected based on a threshold similarity in user
profiles”) to reduce bias.
Kunal’s disclosure of threshold scores was further cited by the
Examiner as a technique to apply to Krishnamoorthy. Non-Final Act. 14.
Kunal describes determining whether user have similar content based on the
links that users have with one another. Kunal explains that “[u]sers that
share a link may be likely to have common interests and may be likely to
post content to their profile pages related to similar topics.” Kunal, col. 4, ll.
50–52. Threshold scores are described by Kunal to determine the likelihood
a profile page contains similar content between users. Kunal explains that a
graph of links between users of a social network (“nodes”) is constructed
and then a score can be derived, for example, based on the number
connections:
A score that is propagated to a node can be based upon the
number of neighbors for the node (e.g., the number of other
nodes connected to the node by links in the social graph). For
example, a score propagated to a node can be the sum of the
scores for each of the neighbor nodes divided by the number of
neighbor nodes.
Kunal, col, 9, ll. 57–62.
Once the scores are propagated, Kunal discloses that a “content
detection module 230 examines propagated scores . . . for nodes of the graph
[which are the links between users] to determine a likelihood that a profile
page associated with each of the nodes contains content associated with the
particular subject.” Kunal, col. 11, ll. 48–52. Kunal further explains that the
“content detection module can identify pages of the social network that are
likely to contain content associated with the particular subject of interest
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based upon a variety of factors, such as a comparison between a score for the
page and a threshold score, a comparison between a score for the page and
scores for other nodes, etc.” Id. at 11, ll. 52–59. Thus, the scores are used by
Kunal to determine whether the profiles contain similar content. The scores
are not used by Kunal to select users as found by the Examiner. Ans. 13–14.
While the Examiner explained that “exposed users” are selected by high
scores indicating similarity of the user profiles, the Examiner did not
establish that the unexposed users are selected in this manner and appeared
to acknowledge they are not (the unexposed users are the remaining users
after identifying similar users by links; therefore, the unexposed users, by
the Examiner’s reasoning, would not have profile similarity). Moreover, as
discussed by Appellant, Kunal’s purpose is to predict whether a user shares
content with another user, not to select users. Consequently, we do not agree
that the disclosure cited by the Examiner is sufficient to establish the
obviousness of claim 1.
However, as discussed above, Krishnamoorthy describes selecting
“similarly or identically targeted users,” and therefore meets or makes
obvious step (a) of claim 1. Thus, while the Examiner’s rejection based on
Kunal is defective, the evidence of record is sufficient to sustain the
rejection.
For the foregoing reasons, we affirm the rejection of claims 1 based
on Krishnamoorthy, Kunal, and Gordon, but designate it as new ground of
rejection because our reasoning differs from the Examiner’s. Kunal is cited
in the rejection as evidence that profile similarity is one way of determining
whether users are similar or identical.
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Claims 3, 5, 7–9, 11-13, and 21–23 were not separately argued and
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

SECTION 101 REJECTION
Principles of Law
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.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs, Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined whether the claims at issue recite
“one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If it is
determined that the claims recite an ineligible concept, then the second step
of the two-part analysis is applied in which it is asked “[w]hat else is there in
the claims before us?” Id. The Court explained that this step involves:
a search for an ‘inventive concept’ — i.e., an element or
combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.’
Alice, 573 U.S. at 217–18 (citing from Mayo, 566 U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim reciting a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
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considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at
217.
The PTO has published revised guidance on the application of 35
U.S.C. § 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019)
(“Eligibility Guidance”). This guidance provides additional direction on how
to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the 2019 Eligibility Guidance, looks at the
specific limitations in the claim to determine whether the claim recites a
judicial exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, whether there is a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
inventive concept to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. 84 Fed. Reg. 56. In
making this determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “simply appends
well-understood, routine, conventional activities previously known to the
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industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” 84 Fed. Reg. 56
(footnote omitted).
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

Discussion
Claim 1 recites a “computer-implemented method.” Following the
first step of the Mayo analysis, we find that the claim is directed to a
“process,” one of the broad statutory categories of patent-eligible subject
matter under 35 U.S.C. § 101. We thus proceed to Step 2A, Prong One, of
the Eligibility Guidance.

Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
The Examiner found that the steps in the claim recite the “abstract
idea category of mental processes.” Ans. 5, 6–7. We agree with this
determination. Specifically, step [a] selects users based a threshold
similarity, which is an evaluation that could be performed in the human
mind by comparing profiles by visual inspection to determine which have
similar content. Eligibility Guidance, 84 Fed. Reg. 52 (“(c) Mental
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processes–concepts performed in the human mind (including an observation,
evaluation, judgment, opinion)”).
Steps [b] and [c] of determining “sentiments” of users could also be
performed in the human mind, for example, by surveys administered
verbally to a user. The Specifications discloses the surveys can be presented
to users to determine the impact of an object associated with a brand. Spec.
¶ 12. The comparison between the sentiments of exposed and exposed users
recited in step [d] could be accomplished in the human mind by comparing
answers from the two sets of users, by manual observation and evaluation as
explained by the Examiner. Ans. 6–7.
Step [g] of the method recites “receiving rules from the brand owner.”
This step could be accomplished mentally by informing the recipient of the
rules. The rules are not specifically identified in the claim. Rather, the claim
only recites that the result of the rule is a “response communication” for
presentation to the users is identified. This “response communication is
further identified in the step [g] as “reinforcing positive sentiment” of the
communication from the content generator. The Specification discloses that
a response communication can be “offers, discounts, promotions” and
“discounts, advertisements, coupons, credits.” Spec. ¶¶ 14, 34. For example,
if a positive response to a communication of a brand to a user is identified,
the rule can specify that a discount coupon is sent to users. This step can be
performed in the mind of a human because a human could evaluate the
response to the communication, and if it is positive, identify a coupon or
discount to positively reinforce it. Under the broadest reasonable
interpretation, the step does not require that anything be done with the
response communication other than identify it.
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Appellant argues that steps [1]–[4] must be performed on a social
networking system and therefore cannot be practically performed in a human
mind. Reply Br. 3–4; Appeal Br. 7. We agree with Appellant that these steps
are not necessarily mental processes. However, steps [a] through [d] and [g]
are, and Appellant did not explain why these steps could not be performed
practically in a human mind.
In sum, for the foregoing reasons, we find that claim 1 recites an
abstract idea. Accordingly, we proceed to Step 2A, Prong Two, of the
Eligibility Guidance.

Step 2A, Prong Two
Prong Two of Step 2A under the Eligibility Guidance asks whether
there are additional elements that integrate the exception into a practical
application. As discussed in the Eligibility Guidance, “[a] claim that
integrates a judicial exception in a practical application will apply, rely on,
or use the judicial exception in a manner that places a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Eligibility Guidance, 84
Fed. Reg. 54. Integration into a practical application is evaluated by
identifying whether there are additional elements individually, and in
combination, which go beyond the judicial exception. Id. at 54–55.
Appellant contends that “the claims recite a practical application of
the alleged judicial exception that addresses a specific challenge in the field
of online advertising, namely, the ability to evaluate effects of
communication between different social networking system users on
interactions by social networking system users with objects associated with a
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brand owner and maintained by the social networking system.” Reply Br. 4.
Appellant specifically refers to step [4] of presenting communications to
user and step[a](iii) of selecting subsets of users and steps [b]–[d] of
determining sentiments. Reply Br. 4–5. Appellant contends that, like in
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016), “the pending claims herein are not to ‘any form’ of evaluating
communications by users about a brand owner communicated via a social
networking system,” but rather are specifically limited to the steps of [a](iii),
[e], and [g] of claim 1. Appeal Br. 9. Appellant states these steps allow “the
brand owner to reduces bias by selecting similar groups of users whose
connections to the content generator are already known, allowing the brand
owner to more accurately provide responses to the social networking system
for presentation to a group of users that reinforce a positive sentiment of one
or more of the communications from the content generator” as recited in step
[g] of the claim. Id. at 10.
In McRO, the claims were directed to a “method for automatically
animating lip synchronization and facial expression of three-dimensional
characters.” McRO, 837 F.3d, 1307–08. The claim recited a series of steps
that “produce[d] lip synchronization and facial expression control of said
animated characters.” Id. The court found that the claimed “automation goes
beyond merely ‘organizing [existing] information into a new form’ or
carrying out a fundamental economic practice.” McRO, 837 F.3d at 1315
(citation omitted). Instead, the court found that the “claimed process uses a
combined order of specific rules that renders information into a specific
format that is then used and applied to create desired results: a sequence of
synchronized, animated characters.” Id. McRO found that the recited rules
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“are limiting in that they define morph weight sets as a function of the
timing of phoneme sub-sequences.” McRO, 837 F.3d at 1313. The claims
were found to be directed to a “technological improvement over the existing,
manual 3-D animation techniques.” McRO, 837 F.3d at 1316.
In finding the claim patent-eligible, McRO noted that the “abstract
idea exception has been applied to prevent patenting of claims that abstractly
cover results where ‘it matters not by what process or machinery the result is
accomplished.’ [O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113,]; see also
Mayo, 132 S.Ct. at 1301.” McRO, 837 F.3d at 1314. McRO stated that
therefore, a court must “look to whether the claims in these patents focus on
a specific means or method that improves the relevant technology or are
instead directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery.” McRO, 837 F.3d at 1314.
None of the blaze marks of patent eligibility identified in McRO are
present in rejected claim 1. As explained under Step 2A, Prong 2, step [g] of
the claimed method comprises a mental step. The step recites “receiving
rules from the brand owner,” but does not specifically identify the rules as
the claims did in McRO. Instead, the claim only recites the result of the rule,
namely, that a “response communication” for presentation to the users is
identified. This response can be a coupon or discount to reinforce the
positive sentiment identified in steps [b]–[d]. The rule is not recited with any
specificity.
The improvement asserted by Appellant is that the users who are
selected for receiving the response from the brand owner are selected on the
basis of a threshold similarity between the profiles and on their connection
to the content generator. Appeal Br. 12, 16. Appellant did not establish that
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the Examiner was incorrect in determining that steps [a] and [g], which
embody this asserted improvement, are abstract and therefore unable to
serve as the additional element which integrates the abstract idea into a
practical application. 84 Fed. Reg. 54–55 (the additional element recited in
the claim must be “beyond” the judicial exception). Because the claim does
not recite how the threshold similarity is determined or how the response
communication is identified (or even require that a response communication
is sent to a user), steps [a] and [g] would not deter preemption of the recited
abstract idea.
In McRO, the court held that the “limitations in claim 1 prevent
preemption of all processes for achieving automated lip-synchronization of
3–D characters.” McRO, 837 F.3d at 1315. The court explained that “[t]he
specific structure of the claimed rules would prevent broad preemption of all
rules-based means of automating lip synchronization.” Id. In contrast, the
steps recited in rejected claim 1 are recited in general terms, namely,
selecting users based on threshold similarity and identifying a response
based on rules. Unlike McRO, none of these steps recite how the result is
achieved or how to implement the selection of users and identification of the
response communication in a specific manner. While “bias” maybe avoided
as asserted by Appellant (Appeal Br. 9, 12) and provide a solution to a
problem (Appeal Br. 16), this is accomplished by selecting users based on
threshold similarity in profiles, a step which could be done in the human
mind by comparing user profiles to identify ones which have, for example,
similar interests. Thus, the solution is not a “technical” one.
In sum, we have not been guided to an additional element in the
claim, beyond the abstract idea, that integrates the judicial exception in
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practical application. The improvement is to the abstract idea, itself, and not
to a technology or technical field. Eligibility Guidance, 84 Fed. Reg. 55.

Step 2B
Because we determine that the judicial exception is not integrated into
a practical application, we proceed to Step 2B of the Eligibility Guidelines,
which asks whether there is an inventive concept. In making this Step 2B
determination, we must consider whether there are specific limitations or
elements recited in the claim “that are not well-understood, routine,
conventional activity in the field, which is indicative that an inventive
concept may be present” or whether the claim “simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” Eligibility
Guidance, 84 Fed. Reg. 56 (footnote omitted). We must also consider
whether the combination of steps perform “in an unconventional way and
therefore include an ‘inventive step,’ rendering the claim eligible at Step
2B.” Id. In this part of the analysis, we consider “the elements of each claim
both individually and ‘as an ordered combination’” to determine “whether
the additional elements ‘transform the nature of the claim’ into a patent-
eligible application.” Alice, 573 U.S. at 217.
Appellant contends that the claims use “unconventional techniques to
reduce bias when evaluating communications from a content generator about
an object associated with a brand owner by selecting similar groups of users
whose connections to the content generator are already known.” Appeal Br.
16. Appellant explains, quoting from the Specification at ¶ 33, “if users are
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not exposed to a negative communication about a brand owner, the
sentiments of the users’ subsequent communications about the brand owner
may be compared to the sentiment of users exposed to the negative
communication and having a threshold number of similar characteristics in
their user profiles as users not exposed to the negative communication.” Id.
at 16–17. Appellant further states:
Leveraging connections between users maintained by the social
networking system allows the pending claims to avoid
introducing bias that would otherwise exist if one of the
selected groups (e.g., exposed or unexposed) were not
connected to the content generator when selecting subsets of
users who were and who were note exposed to a particular
communication from the content generator.
Appeal Br. 17.
The unconventionality asserted by Appellant resides in step [a](iii) of
claim 1 of selecting subsets of users based on threshold similarity of profiles
and a connection to the content generator. However, as explained above, this
step alone is an abstract idea because determining whether users have similar
profiles and are connected can be accomplished by a human mind. An
abstract idea, itself, cannot serve as the additional element to establish
eligibility of the claim. Appellant did not address the nature of step [a] in the
Appeal Brief or the Reply Brief. For example, Appellant asserts that steps
[1]–[4] of the claim cannot practically be performed in the human mind, but
do not assert that step [a] cannot be performed in the human mind. Appeal
Br. 7–8; Reply Br. 4. Steps [b], [d], and [g] are also abstract. Thus, the
combination of these steps cannot serve as the basis for patent eligibility.
The question, therefore, is whether these steps in combination with the non-
abstract steps of the claim, such as steps [1]–[4], [e], and [f] provide an
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inventive step. We find that they do not, because the additional steps of the
claim, when considered by themselves or as an ordered combination with,
e.g., steps [a] and [g], merely recite generic computers / computer
components performing generic computer functions. Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (“Claims that
‘amount to nothing significantly more than an instruction to apply [an]
abstract idea … using some unspecified, generic computer’ and in which
‘each step does no more than require a generic computer to perform generic
computer functions’ do not make an abstract idea patent-eligible.’”). Neither
has Appellant provided evidence that such steps, when considered in
combination with steps [a] and [g], establish that the implementation of the
method is unconventional and non-routine.
Accordingly, we affirm the rejection of claim 1 as ineligible for a
patent under 35 U.S.C. § 101. Claims 3, 5, 7–9, 11–13, and 21–23 are not
argued separately and fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)
/Basis
Affirmed Reversed New
Grounds
1, 3, 5,
7–9, 11–
13, 21–
23
101 Eligibility 1, 3, 5,
7–9, 11–
13, 21–
23

1, 3, 5,
7–9, 11–
13, 21–
23
103 Krishnamoorthy,
Kunal, Gordon
1, 3, 5,
7–9, 11–
13, 21–
23
1, 3, 5,
7–9, 11–
13, 21–
23
Overall
Outcome
1, 3, 5,
7–9, 11–
13, 21–
23
1, 3, 5,
7–9, 11–
13, 21–
23

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
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of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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). See
37 C.F.R. §§ 41.50(f), 41.52(b).

AFFIRMED; 37 C.F.R. § 41.50(b)