Jordan Walke

Patent Trials and Appeals Board

Sep 26, 2019

13748484 - (D) (P.T.A.B. Sep. 26, 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.
13/748,484 01/23/2013 Jordan Walke 26295-21195 2666
87851 7590 09/26/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
CIRNU, ALEXANDRU
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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 JORDAN WALKE
Appeal 2017-010607
Application 13/748,484
Technology Center 3600
Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, AND
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Facebook, Inc., appeals
from the Examiner’s decision rejecting claims 1, 3–13, and 15–21, which are
all claims pending in the application. Appellant has canceled claims 2 and
14. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Facebook,
Inc. App. Br. 2.
Appeal 2017-010607
Application 13/748,484

2
STATEMENT OF THE CASE2
The Invention
The claims are directed to a simplified creation of advertisements for
a social networking system. See Spec. 1 (Title). In particular, Appellant’s
disclosed embodiments and claimed invention relate to “creating
advertisements for users of a social networking system.” Spec. ¶ 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (labeling, emphasis, and formatting added to contested prior-art
limitations):
1. A method comprising:
receiving, from an advertiser via an advertisement
creation interface of a social networking system, a destination
address for a new advertisement, the destination address for the
new advertisement being a network location for which the
advertisement contains a link;
[L1] determining whether (a) the destination address is
an address in an Internet domain to a web page external to the
social networking system or (b) the destination address is an
object of the plurality of objects maintained by the social
networking system;
responsive to determining that the destination address is
an address in an Internet domain to a web page external to the
social networking system,

2 Our decision relies upon Appellant’s Appeal Brief (“App. Br.,” filed
Mar. 22, 2017); Reply Brief (“Reply Br.,” filed Aug. 11, 2017); Examiner’s
Answer (“Ans.,” mailed June 13, 2017); Final Office Action (“Final Act.,”
mailed July 21, 2016); and the original Specification (“Spec.,” filed
Jan. 23, 2013).
Appeal 2017-010607
Application 13/748,484

3
[L2] displaying options for configuring an
advertisement associated with a destination address
external to the social networking system;
responsive to determining that the destination address is
an object of the plurality of objects maintained by the social
networking system,
[L3] displaying options for configuring an
advertisement associated with an object maintained by
the social networking system, the options for configuring
an advertisement associated with an object being
different from the options for configuring an
advertisement associated with a destination address
external to the social networking system;
receiving, from the advertiser, options from the displayed
options;
defining a new advertisement based on the received
options from the advertising user, the new advertisement
including a link to the destination address; and
sending the new advertisement for display to one or more
users of the plurality of users of the social networking system
other than the advertiser.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Wang et al.
(“Wang”)
US 2009/0144392 A1 June 4, 2009
Ormont et al.
(“Ormont”)
US 2013/0110641 A1 May 2, 2013
Tunguz-Zawislak
(“Tunguz”)
US 8,924,465 B1 Dec. 30, 2014

Appeal 2017-010607
Application 13/748,484

4
Rejections on Appeal
R1. Claims 1, 3–13, and 15–21 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. Final Act. 2.
R2. Claims 1, 3–6, 8–13, 15–17, 19, and 21 stand rejected under 35
U.S.C. § 103 as being unpatentable over the combination of Tunguz and
Ormont. Final Act. 3.
R3. Claims 7, 18, and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Tunguz, Ormont, and Wang.
Final Act. 9.
CLAIM GROUPING
Based on Appellant’s arguments (App. Br. 5–18) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-ineligible
subject matter Rejection R1 of claims 1, 3–13, and 15–21 on the basis of
representative claim 1; and we also decide the appeal of obviousness
Rejection R2 of claims 1, 3–6, 8–13, 15–17, 19, and 21 on the basis of
representative claim 1.
Remaining claims 7, 18, and 20 in obviousness Rejection R3, not
argued separately, stand or fall with the respective independent claim from
which they depend.3

3 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
Appeal 2017-010607
Application 13/748,484

5
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We disagree with Appellant’s arguments with respect to claim 1 and,
unless otherwise noted, we incorporate by reference herein and adopt as our
own: (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken, and (2) the reasons and rebuttals set forth in
the Examiner’s Answer in response to Appellant’s arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. § 101 Rejection R1 of Claims 1, 3–13, and 15–21
Issue 1
Appellant argues (App. Br. 5–14; Reply Br. 2–9) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
Appeal 2017-010607
Application 13/748,484

6
Principles of Law
A. 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. § 101.4
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175,
185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014) (citing Mayo, 566 U.S. at 75–77). 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);

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. See MPEP § 2106.
Appeal 2017-010607
Application 13/748,484

7
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” (Diehr, 450 U.S. at 191); “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
Supreme Court held “[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 Supreme 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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
Appeal 2017-010607
Application 13/748,484

8
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
Appeal 2017-010607
Application 13/748,484

9
of organizing human activity such as a fundamental economic
practice, or mental processes);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look 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.7
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
Appeal 2017-010607
Application 13/748,484

10
(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).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial

8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
Appeal 2017-010607
Application 13/748,484

11
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.

9 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
Appeal 2017-010607
Application 13/748,484

12
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element.10 The Federal Circuit has
held claims eligible at the second step of the Alice/Mayo test (USPTO Step
2B) because the additional elements recited in the claims provided
“significantly more” than the recited judicial exception (e.g., because the
additional elements were unconventional in combination).11 Therefore, if a
claim has been determined to be directed to a judicial exception under
Revised Step 2A, we must also evaluate the additional elements individually
and in combination under Step 2B to determine whether they provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself).12
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific

10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
Appeal 2017-010607
Application 13/748,484

13
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
III.B.13
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).

13 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
Appeal 2017-010607
Application 13/748,484

14
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
Appeal 2017-010607
Application 13/748,484

15
Analysis
Step 1 – Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined claim 1 “is directed to receiving a
destination address for a new advertisement, determining whether the
destination is external or internal to a social networking system, configuring
the advertisement based on the determination, and defining the new
advertisement/sending it for display, which is considered to be an abstract
idea.” Final Act. 2. The Examiner further determined “creating advertising
represents a business practice/goal, and therefore improving the process
pertains to optimizing a business practice.” Ans. 3.14 Additionally,
“[c]laims 1, 3–13, 15–21 are directed towards creating and distributing
advertisements targeted to users within and outside of a social network”
(id.), and “the instant claimed invention includes the abstract idea of
monitoring and analyzing ad information — i.e. ad destination address, ad
creation options.” Id.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.

14 We note the Examiner omitted pagination in the Answer. Page numbers
in this Decision referencing the Answer are ours.
Appeal 2017-010607
Application 13/748,484

16
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention “relates generally to social networking systems, and in
particular to creating advertisements for users of a social networking
system.” Spec. ¶ 1.
Appellant’s Abstract describes the invention as:
An advertisement interface presents a single input field
for creating advertisements using a social networking system.
When input is received via the single input field, the social
networking system determines whether the destination
identified by the input is internal to or external to the social
networking system. Based on the determination of identified
destination, a set of options unique to the type of destination is
presented. Based on the user's selection of options, an
advertisement is created and presented to other users of the
social networking system.
Spec. 27 (Abstract).
In TABLE ONE below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We additionally identify
in bold the additional (non-abstract) claim limitations that are generic
computer components and techniques:
TABLE ONE
Independent Claim 1 Revised Guidance
A method comprising: A process (method) is a statutory
subject matter class. See 35 U.S.C.
§ 101.
(1) receiving, from an
advertiser via an advertisement
creation interface of a social
networking system, a
Receiving information, i.e., data
gathering, is insignificant extra-
solution activity. Revised Guidance
55, n.31; see also MPEP
Appeal 2017-010607
Application 13/748,484

17
Independent Claim 1 Revised Guidance
destination address for a new
advertisement, the destination
address for the new
advertisement being a network
location for which the
advertisement contains a link.
§ 2106.05(g); but cf. Trading Tech.
Int’l, Inc. v. CQG, INC., 675 Fed.
Appx. 1001, 1004 (Fed Cir. 2017)
(“The claims require a specific,
structured graphical user interface
paired with a prescribed functionality
directly related to the graphical user
interface’s structure that is addressed
to and resolves a specifically
identified problem in the prior state of
the art.”).
(2) determining whether (a) the
destination address is an
address in an Internet domain to
a web page external to the
social networking system or (b)
the destination address is an
object of the plurality of objects
maintained by the social
networking system.
Abstract idea, i.e., “comparing” could
be performed alternatively as a mental
process. See Revised Guidance 52.
(3) responsive to determining
that the destination address is
an address in an Internet
domain to a web page external
to the social networking
system, displaying options for
configuring an advertisement
associated with a destination
address external to the social
networking system.
Abstract idea, i.e., “an observation,
evaluation judgment, opinion” could
be performed alternatively as a mental
process.” See Revised Guidance 52.
See Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d
1332, 1340 (Fed. Cir. 2017)
(displaying data is an abstract idea);
see also Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d
1363, 1369 (Fed. Cir. 2015) (holding
that “tailoring content based on the
viewer’s location or address” was
abstract).
(4) responsive to determining
that the destination address is
Abstract idea, i.e., “an observation,
evaluation judgment, opinion” could
Appeal 2017-010607
Application 13/748,484

18
Independent Claim 1 Revised Guidance
an object of the plurality of
objects maintained by the social
networking system, displaying
options for configuring an
advertisement associated with
an object maintained by the
social networking system, the
options for configuring an
advertisement associated with
an object being different from
the options for configuring an
advertisement associated with a
destination address external to
the social networking system.
be performed alternatively as a mental
process.” See Revised Guidance 52.
See Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d
1332, 1340 (Fed. Cir. 2017)
(displaying data is an abstract idea.);
see also Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d
1363, 1369 (Fed. Cir. 2015) (holding
that “tailoring content based on the
viewer’s location or address” was
abstract).
(5) receiving, from the
advertiser, options from the
displayed options.
Receiving information, i.e., data
gathering, is insignificant extra-
solution activity. Revised Guidance
55, n.31; see also MPEP
§ 2106.05(g).
(6) defining a new
advertisement based on the
received options from the
advertising user, the new
advertisement including a link
to the destination address.
Abstract idea, i.e., “Certain methods
of organizing human activity . . .
including . . . commercial interactions
. . . in the form of . . . advertising,
marketing or sales activities”. See
Revised Guidance 52.
(7) sending the new
advertisement for display to
one or more users of the
plurality of users of the social
networking system other than
the advertiser.
Transmitting information for display
is insignificant post-solution activity.
Revised Guidance 55, n.31; see also
MPEP § 2106.05(g); and see
buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014)
(computer receives and sends
information over a network).
Claims App’x.
Appeal 2017-010607
Application 13/748,484

19
The claimed invention recites certain method of organizing human
activity, i.e., commercial interactions in the form of tailored advertising,
which is an abstract idea. See, e.g., Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014) (finding the claimed “idea of showing an
advertisement before delivering free content” abstract); see also Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir.
2015) (Finding that “tailoring content based on the viewer’s location or
address” or navigation data was abstract and further noting that “[t]here is no
dispute that newspaper inserts had often been tailored based on information
known about the customer — for example, a newspaper might advertise
based on the customer’s location. Providing this minimal tailoring — e.g.,
providing different newspaper inserts based upon the location of the
individual — is an abstract idea.”); and Ans. 2 (Identifying the claimed
invention as being “directed towards creating and distributing
advertisements targeted to users within and outside of a social network.”).
This type of activity, i.e., tailoring advertising content based on the
viewer’s location or address, as recited in limitations (1) through (7), for
example, and aside from any computer-related aspects, e.g., the recited
“social network,” includes longstanding conduct that existed well before the
advent of computers and the Internet, and could be carried out by a human
with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”).15

15 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
Appeal 2017-010607
Application 13/748,484

20
Appellant cites to Enfish, and asserts “[t]hus, if anything, the
examiner’s determination that the claims include multiple abstract ideas
supports the conclusion that the claims are not directed to a judicial
exception.” App. Br. 5 (emphasis omitted). We disagree. See
RecogniCorp, 855 F.3d at 1327 (cited in n.15, supra).
Further, in Enfish, our reviewing court held claims directed to a self-
referential logical model for a computer database patent-eligible under step
one of Alice. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1330 (Fed.
Cir. 2016). The disclosed technique enabled faster searching and more
effective storage of data than previous methods. Enfish, 822 F.3d at 1333.
The court found the claims directed to “a specific improvement to the way
computers operate, embodied in the self-referential table” (id. at 1336), and
explained that the claims are “not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
for a computer database” that functions differently than conventional
databases. Id. at 1337.
We are not persuaded that the claims on appeal are sufficiently
analogous to the non-abstract claims in Enfish.

842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, 855 F.3d at 1327
(“Adding one abstract idea (math) to another abstract idea . . . does not
render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the
pending claims were directed to a combination of abstract ideas).
Appeal 2017-010607
Application 13/748,484

21
Appellant also argues, “as explained in the Brief, the present claims
similarly improve on the advertisement creation process by simplifying the
process for an advertiser . . . . Therefore, like the claims in McRO, the
present claims are not directed to an abstract idea.” App. Br. 6. (citing
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016)).
Appellant’s argument that the claims are similar to those held patent-
eligible in McRO are misplaced. We are not persuaded because the claims
in McRO recited a “specific . . . improvement in computer animation” using
“unconventional rules that relate[d] sub-sequences of phonemes, timings,
and morph weight sets.” McRO, 837 F.3d at 1302–03, 1307–08, 1314–15.
In McRO, “the incorporation of the claimed rules, not the use of the
computer,” improved an existing technological process. Id. at 1314.
Appellant does not, however, persuasively identify how claim 1 improves an
existing technological process. See Alice, 573 U.S. at 223 (explaining that
“the claims in Diehr were patent eligible because they improved an existing
technological process”). Rather, claim 1 recites a method for tailoring
advertising based on either an internal or external address. In addition,
Appellant does not direct us to any evidence that the two claimed
conditional “displaying options” limitations (3) and (4), supra, correspond to
unconventional rules.
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
method recites a judicial exception, i.e., certain methods of organizing
human activity. We conclude claim 1, under our Revised Guidance, recites
a judicial exception of commercial interactions, i.e., advertising, and thus is
an abstract idea.
Appeal 2017-010607
Application 13/748,484

22
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “practical application” Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
With respect to this step of the analysis, Appellant argues:
The examiner’s proposed abstract idea only focuses on
how an advertisement can be configured based on whether “a
destination is internal or external,” but the claims do not merely
describe defining an advertisement based on this determination.
Instead, the claimed advertisement creation interface presents
differing options for configuring a new advertisement based on
whether a destination address for a new advertisement is for a
social networking object or external to the social networking
system. The dynamic nature of the advertisement creation
interface is not simply a step inherent to the examiner’s
proposed abstract idea, and thus the claim limitations that
different options are presented in the advertisement creation
interface based on the destination address recite significantly
more than the proposed abstract idea. Furthermore, the claims
do not merely recite the determination of whether the
destination address is “internal or external” to the social
networking system. Instead, the claimed social networking
system determines whether the destination address is for “an
object of the plurality of objects maintained by the social
networking system” or is “an address in an Internet domain to a
web page external to the social networking system.” These
limitations specify where the destination address may be
pointing, and specifies what types of options may be presented
Appeal 2017-010607
Application 13/748,484

23
to the advertiser for configuring the new advertisement. Thus,
the claims recite significantly more than the examiner’s
proposed abstract idea, and therefore the claims are eligible
under§ 101.
App. Br. 12–13 (in effect, arguing limitations (2) through (4) represent
“significantly more” than the abstract idea).
As to the specific limitations, we find limitations (1) and (5) recite
insignificant data gathering. See MPEP § 2106.05(g). Data gathering, as
performed by the steps or function in Appellant’s claims, is a classic
example of insignificant extra-solution activity. See, e.g., In re Bilski, 545
F.3d 943, 963 (Fed. Cir. 2008) (en banc); aff’d sub nom, Bilski v. Kappas,
561 U.S. 593 (2010).
We also find limitation (7) recites insignificant post solution activity.
The Supreme Court guides that the “prohibition against patenting abstract
ideas ‘cannot be circumvented’ [by] adding ‘insignificant postsolution
activity.’” Bilski, 561 U.S. at 610–11 (quoting Diehr, 450 U.S. at 191–92).
We conclude each of the limitations of claim 1 either recite abstract
ideas or extra-solution activity as identified in Step 2A(i), supra, and none of
the limitations integrate the judicial exception of tailoring advertising based
upon a user’s address into a practical application. Appellant has not shown
an improvement or practical application under the guidance of Manual of
Patent Examining Procedure section 2106.05(a) (“Improvements to the
Functioning of a Computer or to Any Other Technology or Technical Field”)
or section 2106.05(e) (“Other Meaningful Limitations”). Nor does
Appellant advance any arguments in the Brief(s) that are directed to the
Bilski machine-or-transformation test, which would only be applicable to the
Appeal 2017-010607
Application 13/748,484

24
method (process) claims on appeal. See MPEP §§ 2106.05(b) (Particular
Machine), and 2106.05(c) (Particular Transformation). The claim as a
whole merely uses instructions to implement the abstract idea on a computer
or, alternatively, merely uses a computer as a tool to perform the abstract
idea.
Further, on this record, we are of the view that Appellant’s claims do
not operate the recited generic computer components, e.g., social networking
system, or interfaces thereof, in an unconventional manner to achieve an
improvement in computer functionality. See MPEP § 2106.05(a); but cf.
Trading Tech., 675 Fed. Appx. at 1004 (“The claims require a specific,
structured graphical user interface paired with a prescribed functionality
directly related to the graphical user interface’s structure that is addressed to
and resolves a specifically identified problem in the prior state of the art.”).
Appellant has not demonstrated that the claimed interface improves the
operation of the underlying, but unclaimed, computer system.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. General Electric Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019);
see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed.
Cir. 2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
Appeal 2017-010607
Application 13/748,484

25
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to “significantly more” than
the abstract idea. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 77–
79). As stated in the Revised Guidance, many of the considerations to
determine whether the claims amount to “significantly more” under step two
of the Alice framework are already considered as part of determining
whether the judicial exception has been integrated into a practical
application. Revised Guidance 56. Thus, at this point of our analysis under
Step 2B we must “look with more specificity at what the claim elements add,
in order to determine ‘whether they identify an “inventive concept” in the
application of the ineligible subject matter’ to which the claim is directed.”
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed.
Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016)).
In applying this step of the analysis, our reviewing court guides we
must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. See Ultramercial, 772 F.3d at 715. We look to
Appeal 2017-010607
Application 13/748,484

26
see whether there are any “additional features” in the claims that constitute
an “inventive concept,” thereby rendering the claims eligible for patenting
even if they are directed to an abstract idea. Alice, 573 U.S. at 221. Those
“additional features” must be more than “well-understood, routine,
conventional activity.” Mayo, 566 U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea;16 mere instructions to implement an
abstract idea on a computer;17 or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.18
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
tailored advertising based upon a user’s address into a patent-eligible
application of that abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and

16 Alice, 573 U.S. at 221–23.
17 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84–85).
18 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
Appeal 2017-010607
Application 13/748,484

27
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited “social
networking system” in method claims 1; and method claim 12, the
Specification discloses:
FIG. 2 is a block diagram of an example architecture of
the social networking system 140. The social networking
system 140 includes a user profile store 205, an action logger
210, an action store 215, an interface generator 220, an edge
store 225, an object store 230, a query-processing module 235,
and a web server 240. In other embodiments, the social
networking system 140 may include additional, fewer, or
different components for various applications. Conventional
components such as network interfaces, security functions, load
balancers, failover servers, management and network operations
consoles, and the like are not shown so as to not obscure the
details of the system architecture.
Spec. ¶19. See also Spec. ¶¶ 20–24; Figs. 1–2.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants’
Specification, as quoted above.19
With respect to the analysis of “significantly more,” Appellant argues:
Similarly [to DDR Holdings], the present claims solve an
Internet-centric problem that is rooted in technology.

19 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appeal 2017-010607
Application 13/748,484

28
Specifically, the claims solve the problem of the effective
presentation of options to an advertiser for defining an
advertisement based on a destination address. The claims herein
address this Internet-centric problem by dynamically
determining which options to present to the advertiser, thereby
simplifying the process for generating an advertisement within
a social networking system. As explained by the Federal
Circuit, the ephemeral nature of the network location ensures
means that there is no brick-and-mortar analog to a destination
address of an advertisement, nor is there a brick-and-mortar
analog for a destination address of an advertisement being
directed to a social networking object or a web page external to
the social networking system. Like the claims in DDR
Holdings, since the claim is rooted in Internet and computer
network technology, the claims recite significantly more than
an abstract idea.
App. Br, 14. We are not persuaded.
We are not persuaded because Appellant’s reliance on DDR cited
above is misplaced because the recited claims do not improve the computer.
In DDR, the claims at issue involved, inter alia, “web pages displays [with]
at least one active link associated with a commerce object associated with a
buying opportunity of a selected one of a plurality of merchants” (claim 1 of
US 7,818,399). The Federal Circuit found the claims in DDR to be patent-
eligible under step one of the Alice test because “the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings, 773
F.3d at 1257. Specifically, the Federal Circuit found the claims addressed
the “challenge of retaining control over the attention of the customer in the
context of the Internet.” Id. at 1258. We find the rejected claims are
dissimilar to DDR’s web page with an active link, and the Specification does
Appeal 2017-010607
Application 13/748,484

29
not support the view that the computer related claim elements are
unconventional. See Spec. ¶¶ 20–24.
The Manual of Patent Examining Procedure, based upon our
precedential guidance, provides additional considerations with respect to
analysis of the well-understood, routine, and conventional nature of the
claimed computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
Appeal 2017-010607
Application 13/748,484

30
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method that includes a “social network” and “an
advertisement creation interface” (claim 1), and similarly for claim 12, is
simply not enough to transform the patent-ineligible abstract idea here into a
patent-eligible invention under Step 2B. See Alice, 573 U.S. at 221
(“[C]laims, which merely require generic computer implementation, fail to
transform [an] abstract idea into a patent-eligible invention.”).
We conclude the claims fail the Step 2B analysis because claim 1, in
essence, merely recites generic computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 1, 3–13, and 15–21, considered as
a whole, is directed to a patent-ineligible abstract idea that is not integrated
into a practical application and does not include an inventive concept.
Accordingly, we sustain the Examiner’s § 101 rejection of independent
claim 1, and grouped claims 3–13, and 15–21 which fall therewith. See
Claim Grouping, supra.
Appeal 2017-010607
Application 13/748,484

31
2. § 103 Rejection R2 of Claims 1, 3–6, 8–13, 15–17, 19, and 21
Issue 2
Appellant argues (App. Br. 14–18; Reply Br. 9–12) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Tunguz and Ormont is in error. These contentions present us
with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a method that includes, inter alia, the steps of [L1] “determining
whether (a) the destination address is an address in an Internet domain to a
web page external to the social networking system or (b) the destination
address is an object of the plurality of objects maintained by the social
networking system” and, responsive to this determination, either [L2]
“displaying options for configuring an advertisement associated with a
destination address external to the social networking system”, or [L3]
“displaying options for configuring an advertisement associated with an
object maintained by the social networking system”, as recited in claim 1?
Analysis
L1 – “determining . . . destination address” step
Appellant contends Tunguz “merely describes a system wherein
content from the system may be displayed internally or externally to the
system.” App. Br. 15. Appellant further argues, however, Tunguz “does not
disclose the determination of whether a destination address for a new
advertisement is an object maintained by the social networking system, or a
webpage external to the social networking system . . . . [but] simply
describes a system where content may be presented on web pages
Appeal 2017-010607
Application 13/748,484

32
controlled by the system, or on third-party pages.” Id. By this, Appellant
alleges the Examiner erred in finding that Tunguz teaches or suggests
determining whether the destination address is external to the social
networking system or whether the destination address is an object
maintained by the social networking system. App. Br. 15–16.
The Examiner cites Tunguz for teaching or suggesting limitation L1:
In certain implementations, when the user B transmits the
content 154, the user B also specifies that he or she wants to
target his or her acquaintances but does not identify the
acquaintances.
After receiving the content from user B 154, the external
server 156 can use a social graph 162 to identify acquaintances
of user B. As shown in the FIG. 1B, the user B is associated
directly with a user A and a user C via a bidirectional edge,
which indicates that users A and C are friends with user B as
well as user B being friends with users A and C. The user D–as
represented by a node D in the social graph 162—is not directly
linked to a node representing user B. In this implementation,
the user D is not specified as an acquaintance of the user B
because user D is not directly linked to the user B.
Tunguz 4:60–5:6.
Appeal 2017-010607
Application 13/748,484

33
We reproduce Figures 1A and 1B of Tunguz below for reference and
context.

“FIGS. 1A and 1B are schematic diagrams that respectively show exemplary
systems for generating social graphs and using the social graphs to distribute
content from a user to the user's social acquaintances, or friends.”
Tunguz 2:27–30.
Appeal 2017-010607
Application 13/748,484

34
In agreement with the Examiner’s findings cited above, we note
Tunguz teaches social graphs based upon E-mail server information (e.g.,
element 130 in Fig. 1B), which we find teaches or suggests the recited
“determining whether (a) the destination address is an address in an Internet
domain to a web page external to the social networking system,” as well as
social graphs based upon social networking information (e.g., element 128 in
Fig. 1A), which we find teaches or suggests the recited alternative, i.e.,
“determining whether . . . (b) the destination address is an object of the
plurality of objects maintained by the social networking system.” Figure 1B
of Tunguz provides further support for this interpretation, illustrating “3rd
Party Web Page” information 174 and 182, which we determine teaches or
at least suggests “an Internet domain to a web page external to the social
networking system.”
L2 – “displaying options for . . . external address” step and
L3 – “displaying options for . . . social networking system” step
Appellant contends, even if the reference combination teaches or
suggests “determining” step L1, “[t]he cited references do not disclose the
presentation of options for configuring an advertisement based on the
destination address” (App. Br. 16 (underlining omitted)), because they “do
not describe the display of different options to an advertiser based on this
determination.” Id. Appellant further contends Tunguz “does not disclose
an advertisement creation interface that includes options for configuring an
advertisement based on the destination address of the advertisement,” and
Ormont “does not disclose an advertisement creation interface wherein
different options are presented based on whether the destination address is
an external web page or a social networking object. In fact, Ormont
Appeal 2017-010607
Application 13/748,484

35
specifies that the actual advertisements are defined by a separate
advertisement server from the server that stores the social information.”
App. Br. 17.
In the Final Action, the Examiner relies upon Ormont as teaching or
suggesting contested limitations L2 and L3.
The options for configuring an advertisement associated
with an object being different from the options for configuring
an advertisement associated with a destination address external
to the social networking system (Ormont teaches creates ads
that are targeted to very specific types of users – Ormont,
Abstract–, directing ads to outside websites using social data –
Ormont, para 78–, qualifying users according to analyzed
social media information – Ormont, para 97–, as well as ads
that can be delivered both internally within a social network and
externally – Ormont, para 74–, which the Examiner considers
to inherently include providing different options when
generating an internal ad versus an external ad, since the
distinction between the two audience/ad types is clearly made
in the reference.)
Final Act. 4.
Further, with respect to the recitation of an “interface” in method
claim 1, and Appellant’s allegation (App. Br. 17) that Ormont does not teach
or suggest such an interface (i.e., “receiving, from an advertiser via an
advertisement creation interface of a social networking system”), we note
Tunguz teaches interface 236 (“[t]he system also includes an interface to
receive a request to distribute content from a first member of the group”)
(Tunguz 2:1–2). Also, Figure 5 of Tunguz “shows example user interfaces
500a-c for creating an advertisement or an announcement to be presented to
a user’s friends.”). Tunguz 2:39–41.
Appeal 2017-010607
Application 13/748,484

36
We disagree with Appellant’s arguments and agree with the Examiner
because, “[t]he test for obviousness is what the combined teachings of the
prior art would have suggested to the hypothetical person of ordinary skill in
the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The Examiner has provided citations to the prior art of Tunguz and
Ormont for each limitation of claim 1, and has further provided a rationale
for combining the references in the manner suggested:
It would have been obvious for someone skilled in the art
at the time of the invention to modify Tunguz’s feature of
presenting options to generate an external ad/determining the ad
destination/presenting options to an advertiser when the
destination is external /presenting options to generate an
internal content ad, with Ormont’s feature of providing
different options to create internal/external content ads, since
this would allow for targeting advertising, and social network
advertising will allow for the ad to be “delivered to relatively
few users compared to common online advertisements which
are delivered to all visitors of a website regardless of any
particular qualification of the user”, which will lead to “highly
valuable advertising”.
Final Act. 4 (citing Ormont, para 97).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner’s reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner’s resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner’s obviousness Rejection R2 of
independent claim 1, and grouped claims 3–6, 8–13, 15–17, 19, and 21
which fall therewith. See Claim Grouping, supra.
Appeal 2017-010607
Application 13/748,484

37
3. Rejection R3 of Claims 7, 18, and 20
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R3 of claims 7, 18, and 20 under § 103, we sustain
the Examiner’s rejection of these claims. Arguments not made are waived.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–12) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1, 3–13, and 15–21 are patent-ineligible under 35 U.S.C. § 101,and
we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 1, 3–13, and 15–21 under 35 U.S.C.
§ 103(a) over the cited prior art combinations of record, and we sustain the
rejections.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 3–13, 15–21.
Appeal 2017-010607
Application 13/748,484

38
DECISION SUMMARY
Claims
Rejected
Basis 35 U.S.C. § Affirmed Reversed
1, 3–13, and
15–21
101 1, 3–13,
and 15–21

1, 3–6, 8–
13, 15–17,
19, and 21
103
Tunguz-Zawislak,
Ormont
1, 3–6, 8–
13, 15–17,
19, and 21

7, 18, 20 103
Tunguz-Zawislak,
Ormont, Wang
7, 18, 20
Overall
Result
1, 3–13,
and 15–21

FINALITY AND 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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED