Rosenthal, Brian

Patent Trials and Appeals Board

Oct 7, 2019

13954913 - (D) (P.T.A.B. Oct. 7, 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.
13/954,913 07/30/2013 Brian Rosenthal 26295-24261/US 1041
87851 7590 10/07/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
ANDERSON, SCOTT C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
10/07/2019 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 BRIAN ROSENTHAL
___________

Appeal 2018-0082651
Application 13/954,913
Technology Center 3600
_________________

Before JAMES B. ARPIN, SHARON FENICK, and RUSSELL E. CASS,
Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
non-final rejection of claims 1–20, all of the pending claims. Non-Final
Act. 2–7; App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 In this Decision, we refer to Appellant’s Appeal Brief (“App. Br.,” filed
April 30, 2018) and Reply Brief (“Reply Br.,” filed August 10, 2018); the
Non-Final Office Action (“Non-Final Act.,” mailed September 27, 2017);
the Examiner’s Answer (“Ans.,” mailed June 15, 2018; and the originally-
filed Specification (“Spec.,” filed July 30, 2013)). Rather than repeat the
Examiner’s findings and determinations and Appellant’s contentions in their
entirety, we refer to these documents.
2 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. App. Br. 2.
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STATEMENT OF THE CASE
Appellant’s claimed methods and systems “relate[] generally to social
networking, and in particular to crowdsourced advertising within a social
networking system.” Spec. ¶ 2.
As noted above, claims 1–20 are pending. Claims 1, 14, and 20 are
independent. App. Br. 16–17 (claim 1), 19–20 (claim 14), 21–22 (claim 20)
(Claims App’x). Claims 2–13 depend directly or indirectly from claim 1,
and claims 15–19 depend directly from claim 14. Id. at 17–20.
Claim 20 recites systems performing methods recited in claim 1. Id.
at 16–17, 21–22. Claim 14 recites substantially similar methods to those
recited in claim 1, and Appellant does not rely on the differences between
claims 1 and 14 in challenging the Examiner’s rejection of either claim or
the claims dependent therefrom. Therefore, we focus our analysis on the
disputed and overlapping limitations of these independent claims. See
Accenture Global Servs. GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1341 (Fed. Cir. 2013) (“Although [CLS Bank Int’l v. Alice Corp., 717 F.3d
1269 (Fed. Cir. 2013) (en banc)] issued as a plurality opinion, in that case a
majority of the court held that system claims that closely track method
claims and are grounded by the same meaningful limitations will generally
rise and fall together.” Id. at 1274 n.1 (parenthetical omitted)); Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 226–227 (2014) (“Put another way, the
system claims are no different from the method claims in substance.”).
Claim 1, reproduced below, is representative.
1. A method comprising:
presenting, to an endorsing user of an online social
networking system, an endorsement user interface comprising an
advertising template, the advertising template comprising
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advertising content for endorsement and one or more fields for
an endorsement;
receiving, from the endorsing user of the online social
networking system through the endorsement user interface, an
endorsement of the advertising content of the advertising
template and a selection of a set of candidate viewing users to
view an advertisement including the endorsement, each
candidate viewing user a user of the online social networking
system;
generating, by a processor of the online social networking
system, an advertisement by combining the advertisement
template and the received endorsement of the advertising
content;
identifying, by the processor of the online social networking
system, a set of target viewing users for the advertisement from
the selected candidate viewing users received from the endorsing
user, the identifying based on targeting criteria for the
advertisement and a relationship between the viewing user and
the endorsing user in the online social networking system;
associating the generated advertisement with the set of target
viewing users; and
responsive to receiving a request to display an advertisement
to a viewing user of the set of target viewing users:
selecting the generated advertisement for display based on
an expected value of the generated advertisement; and
sending the generated advertisement for display to the
viewing user.
Id. at 16–17.
REJECTION
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as directed
to patent ineligible subject matter. Non-Final Act. 2–7. We review the
appealed rejection for error based upon the issues identified by Appellant,
and in light of the arguments and evidence produced thereon. Ex parte Frye,
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94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Arguments not made
are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Unless otherwise indicated, we
adopt the Examiner’s findings in the Non-Final Action and the Answer as
our own and add any additional findings of fact for emphasis. For the
reasons given below, we sustain the Examiner’s rejection.
ANALYSIS
Patent Ineligible Claims
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice, 573 U.S. at 216.
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). According to the Court, 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); mathematical formulas (Parker v. Flook,
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437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson,
409 U.S. 63, 67 (1972)).
In Diamond v. Diehr, the claim at issue recited a mathematical
formula, but the Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).
Having said that, the Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. at 191 (citing Benson and Flook). Nevertheless, the
Court noted that “[i]t 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.” Id. at 187; see also BASCOM Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed.
Cir. 2016) (Even if the individual components were known, “an inventive
concept can be found in the ordered combination of claim limitations that
transform the abstract idea of filtering content into a particular, practical
application of that abstract idea” (emphasis added).).
If the claim is “directed to” an abstract idea, we next “must examine
the elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “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,
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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. Office Patent Eligibility Guidance
In an effort to achieve clarity and consistency in how the Office
applies the Court’s two part test, the Office published revised guidance on
the application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).3 In Step One of our analysis, we
look to see whether the claims, as written, fall within one of the four
statutory categories identified in § 101. Id. at 53 (“Examiners should
determine whether a claim satisfies the criteria for subject matter eligibility
by evaluating the claim in accordance with the criteria discussed in MPEP
2106, i.e., whether the claim is to a statutory category (Step 1) and the
Alice/Mayo test for judicial exceptions (Steps 2A and 2B)”).
Under the guidance, we then look to whether the claim recites:
(1) Step 2A – Prong One: any judicial exceptions, including
certain groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity, such as a
fundamental economic practice, or mental processes); and
(2) Step 2A – Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP4
§ 2106.05(a)–(c), (e)–(h)).

3 This guidance supersedes previous guidance memoranda. See 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51 (“All
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.”).
4 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP, Rev. 08.2017, January 2018.
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See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54–55 (“Revised Step 2A”).
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.
See id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).
C. Step One – Claims Directed to Statutory Categories
Appellant’s independent claims 1 and 14, and their associated
dependent claims, are directed to methods (i.e., a “process”), and claim 20 is
directed to systems (i.e., a “machine”). App. Br. 16–22 (Claims App’x).
Thus, the pending claims are directed to recognized statutory categories.
D. Two-Part Alice/Mayo Test
1. Step 2A, Prong One – Claims Recite Abstract Ideas
Applying the first part of the Alice/Mayo analysis (Step 2A), “the
Examiner has characterized . . . the invention as being directed to two
distinct abstract ideas: targeted advertising, and collecting and analyzing
information in order to produce a desirable information based result.” Non-
Final Act. 4–5; see Ans. 3–4. In particular, the Examiner finds
the remaining steps, untethered from the generic computers, are
simply abstractions within the field of targeted advertising:
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selecting whom to target based on demographics beginning with
a user-supplied population, selecting an advertisement based on
an expected value and so on. All of these are utterly abstract
steps which can be performed mentally, and there is nothing in
the claim to indicate that the computer performs them in any
particular way at all, much less any particular way that would be
unlike how a person would, mentally, perform the same steps.
Non-Final Act. 5. The Examiner explains that the abstract idea of targeted
advertising is a fundamental economic practice, similar to the concept
identified as abstract by the Federal Circuit in Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016), and the abstract idea of
processing, collecting, and analyzing information in order to provide a
desirable information-based result is similar to the concept identified as
abstract by the Federal Circuit in Electric Power Grp., LLC v. Alstrom S.A.,
830 F.3d 1350 (Fed. Cir. 2016). Non-Final Act. 2–3; see Ans. 3–4; see also
Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1319 (Fed. Cir. 2019)
(citing Electric Power Grp. with approval).
Appellant contends that (1) the Examiner improperly identifies
multiple abstract ideas allegedly recited by the claims, and (2) the Examiner
improperly identifies the abstract ideas at “a high level of abstraction and
untethered from the language of the claims.” App. Br. 6–7; Reply Br. 2–3.
We disagree.
Initially, we note that the Examiner is not prohibited from determining
that the claims recite multiple abstract ideas and identifying those ideas. See
SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)
(“The claims in this case are directed to abstract ideas. The focus of the
claims . . . is on selecting certain information, analyzing it using
mathematical techniques, and reporting or displaying the results of the
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analysis. That is all abstract.”). Here, we are persuaded that consideration
of the claim limitations reveals that the claims recite either or both identified
abstract ideas.
Claim 1 broadly recites the limitations of (1) presenting data, e.g.,
advertising content and fields, to a user (“presenting, to an endorsing user of
an online social networking system, an endorsement user interface
comprising an advertising template, the advertising template comprising
advertising content for endorsement and one or more fields for an
endorsement”); (2) receiving approved data and a list of potential data
recipients from a user (“receiving, from the endorsing user of the online
social networking system through the endorsement user interface, an
endorsement of the advertising content of the advertising template and a
selection of a set of candidate viewing users to view an advertisement
including the endorsement, each candidate viewing user a user of the online
social networking system”); (3) generating a result, e.g., an advertisement,
from the approved data (“generating . . . an advertisement by combining the
advertisement template and the received endorsement of the advertising
content”); (4) identifying target recipients from the potential recipients based
on the results and a potential recipient’s relationship with the user
(“identifying . . . a set of target viewing users for the advertisement from the
selected candidate viewing users received from the endorsing user, the
identifying based on targeting criteria for the advertisement and a
relationship between the viewing user and the endorsing user in the online
social networking system”); (5) linking the result to the target recipients
(“associating the generated advertisement with the set of target viewing
users”); and (6) selecting and sending the result to the target recipient
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(“responsive to receiving a request to display an advertisement to a viewing
user of the set of target viewing users: selecting the generated advertisement
for display based on an expected value of the generated advertisement; and
sending the generated advertisement for display to the viewing user”). App.
Br. 16–17 (Claims App’x); see Non-Final Act. 3; Ans. 4–5; see also Spec.
¶¶ 19 (defining “friend” as “any other user to whom a user has formed a
connection, association, or relationship via the social networking system”),
24 (describing example of an “endorsement”), 44 (describing example of
“targeting criteria”), 46 (explaining determination of “expected value”
broadly in terms of known click pricing models). As evidenced by the
analysis above, claim 1 is broad in its scope and does not meaningfully limit
the abstract ideas, particularly, how the advertising template is endorsed or
analyzed, how the candidate and target viewers are selected or their
identities are collected, or how the advertisement is chosen for display. See
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1272 (Fed.
Cir. 2016) (“[The patent] claims the general concept of streaming user-
selected content to a portable device. The addition of basic user
customization features to the interface does not alter the abstract nature of
the claims and does not add an inventive component that renders the claims
patentable.”); Electric Power Grp., 830 F.3d at 1353.
Claim 1’s limitations, under their broadest reasonable interpretation,
recite the abstract idea of “targeted advertising,” which is “a fundamental
economic practice,” and falls within the broader category of “[c]ertain
methods of organizing human activity.” Non-Final Act. 2, 4–5; 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52; see
Spec. ¶¶ 2 (“crowdsourced advertising within a social networking system”),
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6 (“Embodiments of the invention provide advertisements that improve the
credibility and trust of the advertised products by using user generated
content and leveraging the information stored within the social networking
system. Providing advertisements generated by users of the social
networking system allows advertisers to generate trust in the advertised
product. Users generally have more confidence in purchasing a products
[sic] endorsed by a friend.”); see also App. Br. 12–13 (“These limitations
incorporate the stated goals of ‘improv[ing] the credibility and trust of the
advertised products’ through ‘endorsements generated by friends because
friends likely have similar needs and use for a product as the user,’ and
therefore improving the efficiency of the presented advertisements. See
Specification at [0006].”). In this respect, the analysis of claim 1 is similar
to that in Ultramercial v. Hulu, 772 F.3d 709, 714 (Fed. Cir. 2014), in which
it was determined that a claim “describ[ing] only the abstract idea of
showing an advertisement before delivering free content” is patent
ineligible.
The limitations of claim 1 also recite “collecting and analyzing
information [provided by a user] in order to provide a desirable information-
based result [to be shared a target group based in part on their relationship
with the user].” Specifically, claim 1 recites collecting information from a
user of an online social networking system (an endorsement of an
advertisement and a set of candidate viewing users to view the
advertisement), analyzing that information to identify a set of target viewing
users for an advertisement, and providing a desirable information based
result by combining the advertisement and the received endorsement and
sending it to a viewing user. These interactions involve “managing
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relationships or interactions between people” (e.g., social networking users,
an advertiser, and users selected by the social networking user to receive an
advertisement), including “social activities,” and, therefore, also fall within
the broader category of “[c]ertain methods of organizing human activity” set
forth in the 2019 Guidance. Non-Final Act. 2, 4–5; 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. at 52. Thus, we determine
that the rejected claims recite abstract ideas, namely “[c]ertain methods of
organizing human activity.”
2. Step 2A, Prong Two – Abstract Ideas Not Integrated Into Practical
Application
Claim 1 recites that certain of its steps are performed “by a processor
of the online social networking system,” that performs certain activities
within the system or between the user and the target viewers via a network.
App. Br. 12–13 (Claims App’x). Applying the second part of the
Alice/Mayo analysis,5 the Examiner finds
Looking now at step 2B, the search for “significantly more”, all
of the claim language boldfaced by the applicant is per se
abstract. Abstractions such as “an endorsement user interface”
comprising a template with fields, which can be nothing more
than boxes on a piece of paper, and a “selection of a set of
candidate viewing users” who happen to be users of the same
system as another person, are not even more than abstract, and
so they certainly cannot be significantly more. Beyond the
abstract idea, the only thing found here, as in Alice and [Electric

5 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate those considerations under first part of the Alice/Mayo
analysis (Step 2A of the Office guidance). See 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. at 55 n.25, 27–32; but see Reply
Br. 4.
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Power Grp.], is a generic computer which, as the court pointed
out in Alice, is not sufficient.
Non-Final Act. 6.
Further, the Specification discloses that the additional, recited
elements are generic. See Spec. ¶¶ 54 (methods and systems not limited to
any particular display), 56 (“The described operations and their associated
modules may be embodied in software, firmware, hardware, or any
combinations thereof.”), 57 (“In one embodiment, a software module is
implemented with a computer program product comprising a computer-
readable medium containing computer program code, which can be executed
by a computer processor for performing any or all of the steps, operations, or
processes described.”), 58 (“This apparatus may be specially constructed for
the required purposes, and/or it may comprise a general-purpose computing
device selectively activated or reconfigured by a computer program stored in
the computer.” (emphasis added)). Moreover, Appellant does not assert that
social networking systems or graphical user interfaces were not known at the
time of this application, and the Specification describes the interfaces here in
the most general terms. See, e.g., id. ¶¶ 19 (Social networking systems and
their operation were known in the art.), 36 (“This endorsement user interface
may include heading information and input fields where a user can
enter endorsement information. The input fields enable a user to enter
endorsements. For example, the user interface can include a title field, to
allow a user to input a title for the advertisement. The user interface may
also include an endorsement field, where a user can input an endorsement.”),
Fig. 4. Thus, the methods of claim 1 merely recite generic hardware and
known social networking and data input techniques, and the recited methods
are not linked to any particular machine (MPEP § 2106.05(b)) and merely
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apply generic computer hardware and software to perform the abstract ideas
(MPEP § 2106.05(f)). Non-Final Act. 3–4; see 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. at 55 n.27, 30.
Appellant contends, however, that, like the graphical user interface at
issue in Trading Technologies lnternational, Inc. v. CQG, Inc., 675 F. App’x
1001 (Fed. Cir. 2017), “the instant claims recite a ‘specific, structured
graphical user interface paired with a prescribed functionality directly
related to the graphical user interface’s structure.’” App. Br. 7 (quoting
Trading Techs., 675 F. App’x at 1004); see Reply Br. 4. In particular,
Appellant contends:
The claims of Trading Technologies were determined to be
patent eligible because they were directed towards “a specific
improvement to the way computers operate . . . for the claimed
graphical user interface method imparts a specific functionality
to [the] system ‘directed to a specific implementation of a
solution to a problem in the software arts.’” See [Trading Techs.,
675 F. App’x at 1006]. Similarly, the instant claims recite a
specific “endorsement user interface” with functionality to allow
an “endorsing user” to endorse “the advertising content of the
advertising template” displayed in the endorsement user
interface and to select “a set of candidate viewing users to view
an advertisement including the endorsement.”
App. Br. 7.
As noted above, however, the recited methods and the Specification
describe the functionality of the endorsement user interface in only the most
general terms, quite unlike the detailed recitation of functionality provided in
claims at issue in Trading Technologies. 675 F. App’x at 1003; cf. Spec.
¶ 36. Agreeing with the district court, the Federal Circuit in Trading
Technologies explained:
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the challenged patents do not simply claim displaying
information on a graphical user interface. 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.
Id. at 1004.
Thus, we are not persuaded that “the instant claims are not directed to
an abstract idea but are instead directed to ‘a specific improvement to the
way computers operate . . . for the claimed graphical user interface method
imparts a specific functionality’.” App. Br. 7; see Non-Final Act. 3 (“The
social-media limitations are simply a field of use which attempts to confine
the invention to a particular technological environment. The type of
information being manipulated does not impose meaningful limitations or
render the idea less abstract.”). The invocation of interface functionality
here does not apply or use the judicial exceptions in some other meaningful
way beyond generally linking their use to a particular technological
environment. 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. at 55 n.29; see Non-Final Act. 5; Ans. 5–6.
Further, the steps of “selecting the generated advertisement for display
based on an expected value of the generated advertisement; and sending the
generated advertisement for display to the viewing user” are merely
insignificant, extra-solution activity associated with the implementation of
the abstract idea. App. Br. 17 (Claims App’x) (emphases added); see MPEP
§ 2106.05(g), 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. at 55 n.31; see also Spec. ¶ 46 (explaining determination of
“expected value” by known click pricing models). Appellant also does not
contend that the recited methods transform or reduce a particular article to a
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different state or thing. See MPEP § 2106.05(c); 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. at 55 n.28.
In view of Appellant’s claim recitations and Specification and
consistent with the Examiner’s determinations, we are persuaded the
rejected claims do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP § 2106.05(a)–(c), (e)–(h). Thus, we conclude that the rejected
claims do not integrate the judicial exceptions into a practical application
and that the claims are directed to abstract ideas.
3. Step 2B – Not Significantly More Than the Abstract Ideas
Because we find that the claims are directed to abstract ideas and do
not integrate those abstract ideas into a practical application, we now
consider whether the claims include additional limitations, such that the
claims amount to significantly more than the abstract ideas. As noted above,
applying second part of the Alice/Mayo test, the Examiner concludes:
The claim elements when considered as an ordered combination
- that is, the generic computer components appended to the series
of abstract steps which are themselves arranged chronologically
- do nothing more than when analyzed individually. The use of
such ubiquitous items as templates and user interfaces does not
reduce the level of abstraction. The other independent claims are
simply different embodiments but in each case are directed to
generic computers performing the same or a very similar process.
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Non-Final Act. 3–4; see id. at 6–7; Ans. 7–12. We agree.
The Specification does not assert that any of the recited components,
alone or in combination, are novel. On the contrary, the Specification makes
clear that the components and techniques recited in the rejected claims are
well-understood, routine, and conventional. See, e.g., Spec. ¶¶ 19, 54, 56–
58.
Appellant contends, however, that: (1) the claims recite additional
elements that amount to significantly more than the identified abstract ideas;
(2) even if the individual additional elements are conventional, the claims
recite an unconventional arrangement of these elements, citing BASCOM;
and (3) the Examiner fails to show that the additional elements are well-
understood, routine, and conventional, citing Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018) (cert. petition pending). App. Br. 8–14; Reply
Br. 5–8. We disagree.
Appellant identifies particular elements of the claim that allegedly
recite significantly more than the identified abstract ideas. App. Br. 8–9.
However, these elements merely recite a conventional graphical user
interface for presenting non-functional advertising content (“an endorsement
user interface comprising an advertising template, the advertising template
comprising advertising content for endorsement and one or more fields for
an endorsement”), the abstract concept of picking a group of possible
viewers of a result (“a selection of a set of candidate viewing users to view
an advertisement including the endorsement, each candidate viewing user a
user of the online social networking system”), and the identification of
related groups of users (“from the selected candidate viewing users received
from the endorsing user, . . . a relationship between the viewing user and the
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endorsing user in the online social networking system”). Id. (bolding
omitted). These elements are themselves conventional or abstract. Thus, we
agree with the Examiner that these identified elements do not add
significantly more to the abstract ideas, to which the recited methods and
systems are directed. Ans. 7–9.
Similarly, we agree with the Examiner that Appellant’s reliance on
BASCOM is misplaced. As the Examiner recognized, the claims recite a
series of abstract steps, “which are themselves arranged chronologically[,
and] do nothing more than when analyzed individually.” Non-Final Act. 3–
4 (emphasis added). Thus, we agree with the Examiner that the claims do
not recite an unconventional arrangement of steps. Ans. 9.
Finally, we agree with the Examiner that the Specification makes
clear that the utilized computer components are well-understood, routine,
and conventional. Ans. 9; see Spec. ¶¶ 54, 56–58. The Examiner also
provides sufficient evidence to establish that the graphical user interfaces
and social networking systems recited in the claims are well-understood,
routine, and conventional. Ans. 10–11; see Spec. ¶¶ 19, 23. As the
Examiner correctly notes, “appellant does not bother to describe any
particular feature of the present invention which ought to have been
considered, in light of Berkheimer, to go beyond the well-understood,
routine and conventional.” Ans. 11. Although Appellant further asserts that
“while overcoming § 103 is not dispositive for the § 101 analysis, under
Berkheimer, it follows that a lack of prior art showing the claimed invention
is evidence that the claimed invention may in fact go beyond that which is
‘conventional, well-understood, or routine’” (Reply Br. 8 (quoting App.
Br. 14)), this argument improperly conflates the determination of patent
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eligibility with obviousness. Finding that a claim is not obvious is not
inconsistent with the determination that the recited elements are themselves
well-understood, routine, and conventional. Ans. 12; see SAP America, 898
F.3d at 1163 (citing Mayo, 566 U.S. at 90 (“[T]o shift the patent-eligibility
inquiry entirely to these later sections risks creating significantly greater
legal uncertainty, while assuming that those sections can do work that they
are not equipped to do.”); Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still
an abstract idea. The search for a § 101 inventive concept is thus distinct
from demonstrating § 102 novelty.”); Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for
obviousness)).
On this record, we agree with the Examiner that independent claim 1,
as well as independent claims 14 and 20, is directed to abstract ideas and
fails to recite “significantly more” than the identified abstract ideas. Thus,
we are not persuaded that the Examiner erred in determining that these
claims are patent ineligible, and we sustain that rejection. Appellant does
not argue the eligibility of the dependent claims separately, and we find that
the dependent claims fall with their base claims. See Non-Final Act. 4
(addressing the patent eligibility of the dependent claims). Therefore, we
also sustain the patent ineligibility rejection to the dependent claims.
DECISION
1. The Examiner did not err in rejecting claims 1–20 under 35 U.S.C.
§ 101, as directed to patent-ineligible subject matter.
2. Thus, on this record, claims 1–20 are not patentable.
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CONCLUSION
We affirm the Examiner’s rejection of claims 1–20.
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20
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).

AFFIRMED