Xinyi Cui et al.

Patent Trials and Appeals Board

Sep 11, 2019

14279131 - (D) (P.T.A.B. Sep. 11, 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.
14/279,131 05/15/2014 Xinyi Cui 26295-24609/US 1076
87851 7590 09/11/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
SYROWIK, MATHEW RICHARD
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/11/2019 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 XINYI CUI, WENJIE FU, HAOMIN YU, OU JIN, EITAN SHAY,
RICHARD BILL SIM, and JUN YANG

____________

Appeal 2018-004449
Application 14/279,1311
Technology Center 3600

____________

Before BRUCE T. WIEDER, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3, 4, and 6–22. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Facebook, Inc.
(Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellants’ invention “relates generally to social networking systems,
and more specifically to advertising via a social networking system.” (Spec.
¶ 1.) More particularly, Appellants’ invention relates to “predict[ing]
advertisement reach for a received advertisement request based on an
advertiser-specified bid amount and a specification of a target audience.”
(Spec., Abstract.)
Claims 1, 18, and 19 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A method comprising:
receiving at a social networking system from an advertiser
an advertisement request, the advertisement request comprising
advertisement content, a bid amount for presenting the
advertisement content to users of the social networking system,
and a specification of a target audience for the advertisement
content;
to make a prediction regarding expected reach of the
advertisement content based on the bid amount and the
specification of the target audience, sampling by the social
networking system a subset of users from the target audience to
determine a reach count for each sampled user in the subset, a
particular reach count for a particular sampled user in the subset
indicating whether the advertisement content would have
reached the particular sampled user, wherein determining the
reach count for each sampled user in the subset of users
comprises:
reviewing an advertisement impression history for
the sampled user based on a recency criterion to retrieve
costs associated correspondingly with a plurality of
impressions in the reviewed impression history;
computing normalized measures of the retrieved
costs associated with each of the plurality of impressions
in the reviewed impression history;
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comparing the bid amount in the advertisement
request to each of the computed normalized measures of
the retrieved costs, in order to determine a reach count for
the sampled user; and
recording a positive reach count for the sampled
user if the bid amount in the advertisement request is
greater than at least one of the computed normalized
measures of the retrieved costs, and a zero reach count for
the sampled user if the bid amount in the advertisement
request is lower than each of the computed normalized
measures of the retrieved costs;
based on the sampling, estimating an aggregate reach of
the advertisement content for the subset of users as an
aggregation of the reach counts for the sampled users in the
subset;
estimating a total reach of the advertisement content for
the target audience by extrapolating the aggregate reach for the
subset of users to the target audience; and
applying the estimated total reach for the advertiser in an
adjustment or determination by the social networking system for
the advertisement request.

REJECTIONS
Claims 1, 3, 4, and 6–22 are rejected under 35 U.S.C. § 112(b) as
indefinite for failing to particularly point out and distinctly claim the subject
matter which the joint inventors regard as the invention.
Claims 1, 3, 4, and 6–22 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1, 3, 4, and 6–22 are rejected under 35 U.S.C. § 103 as
unpatentable over Hegeman (US 2013/0124297 A1, pub. May 16, 2013) and
Jordan (US 2014/0089106 A1, pub. Mar. 27, 2014).

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The § 112(b) rejection
The given impression
Dependent claim 6 is rejected under § 112(b) because “it is unclear as
to what the phrase ‘the given impression’ (bolding emphasis added) makes
reference to in Claim 6.” (Final Action 4.)
Appellants argue that this is a typographical error and that they “will
address this typographical error following a decision on appeal.” (Appeal
Br. 8.)
In view of the above, we summarily affirm this rejection. For the
same reason, we also summarily affirm the rejection of claims 7–15, which
depend from claim 6.

The plurality of impressions
Dependent claim 6 is also rejected under § 112(b) because “it is
unclear as to whether the phrase ‘the plurality of impressions’ references
[the] recited ‘a plurality of impressions’ that is now first recited in
independent Claim 1 . . . , or references both recitations of ‘a plurality of
impressions’ as recited in both Claims 1 and 6.” (Final Action 5; see also
Answer 5.)
Appellants argue that “[i]t is clear when reading the language in the
context of the claim as a whole that ‘the plurality of impression’ [sic] is
simply referring to the prior step in claim 6.” (Appeal Br. 9; see also Reply
Br. 2–3.)
Claim 1 recites “a plurality of impressions in the reviewed impression
history” and “the plurality of impressions in the reviewed impression
history.” Claim 6, which depends from claim 1, also recites “a plurality of
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impressions in the reviewed impression history” and “the plurality of
impressions in the reviewed impression history.”
We agree with the Examiner that it is unclear, in claim 6, if the
reference to “a plurality of impressions in the reviewed impression history”
refers to the same plurality of impressions recited in claim 1 or to a different
plurality of impressions.
The Federal Circuit has stated that
when the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant
fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirements of
§ 112(b).

In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). In this case, the
Examiner presents a well-grounded rejection identifying why this claim
language is unclear in this context. Appellants have not persuaded us that
the Examiner erred in this rejection. For the same reasons, we also affirm
the rejection of claims 7–15, which depend from claim 6.

The processor
Independent claims 18 and 19 are rejected under § 112(b) because
each claim “at least twice introduces the phrase ‘a processor’ and then
subsequently introduces a recitation of ‘the processor’; therefore, it is
unclear as to what later-recited phrases of ‘the processor’ refer[].” (Final
Action 5.)
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Appellants argue that these are typographical errors and that they
“will address these typographical errors following a decision on appeal.”
(Appeal Br. 8.)
In view of the above, we summarily affirm this rejection. For the
same reason, we also summarily affirm the rejection of claims 20–22, which
depend from claim 19.

The instructions for determining the reach count
Independent claims 18 and 19 are also rejected under § 112(b)
because
it is unclear as to whether the phrase “the instructions for
determining the reach count” serves to limit the recited
instructions that are encoded on the recited memory (Claim 18)
or storage medium (Claim 19), or refers to determination
instructions that may not part [sic] of the claimed subject matter,
such as determination instructions stored on a third party
computer system, which is not specifically/positively recited in
any claim.

(Final Action 6.)
Appellants argue that “[i]t is clear when reading the language in the
context of the claim as a whole (including the first portion that introduces
that there are instructions encoded on memory[]) that ‘the instructions’ is
referring to the instructions to determine a reach count that are encoded on
memory.” (Appeal Br. 10.)
In relevant part, claim 18 recites (emphasis added):
18. A computer system comprising:
a processor;
memory coupled to the processor, the memory having
encoded thereon instructions that, when executed by the
processor, cause the processor to:
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. . .
to [sic] make a prediction regarding expected reach of the
advertisement content based on the bid amount and the
specification of the target audience, sample by the social
networking system a subset of users from the target audience to
determine a reach count for each sampled user in the subset, a
particular reach count for a particular sampled user in the subset
indicating whether the advertisement content would have
reached the particular sampled user, wherein the instructions for
determining the reach count for each sampled user in the subset
of users comprise instructions that, when executed by a
processor, cause the processor to . . . .

Applying a broadest reasonable interpretation, the instructions
encoded in the memory coupled to the processor, when executed by the
processor, cause the processor “to make a prediction regarding expected
reach of the advertisement content.” However, claim 18 can reasonably be
construed as including separate “instructions for determining the reach count
for each sampled user in the subset of users.” Alternatively, claim 18 could
be construed, as Appellants argue, as not having separate instructions for
determining the reach count, but having those instructions as a part of the
instructions encoded in the memory coupled to the processor. In relevant
part, the claim recites that there are instructions in the recited memory to
sample, and that the sampling is for the purpose of determining a reach
count. But the claim does not recite that there are additional instructions in
that memory to take the next step, i.e., to determine the reach count. Thus,
the Examiner presents a well-grounded rejection identifying why this claim
language is unclear in this context. Claim 19 contains similar language.
In view of the above, Appellants have not persuaded us that the
Examiner erred in this rejection, and we affirm this rejection. For the same
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reasons, we also affirm the rejection of claims 20–22, which depend from
claim 19.
The historical bid amount
Independent claims 18 and 19 are also rejected under § 112(b)
because
it is unclear as to whether the phrase “the historical bid amount”
(singular) refers to a historical bid amount not
specifically/positively recited in any of Claims 18-19, refers to
one of the recited “historical bid amounts” (plural), refers to the
“plurality of historical bid amounts”, or refers to some
combination thereof.

(Final Action 6–7.)
Appellants argue that
[i]t is clear when reading the language in the context of the claim
as a whole that there is a (1) comparison of “each of the historical
bid amounts,” and then (2) “for each comparison,” there is a
determination of whether the bid amount (received from the
advertiser) would have won ... against that (the) historical bid
amount.

(Appeal Br. 10.)
In relevant part, claim 18 recites (emphasis added):
review a bid history including a plurality of historical bid
amounts, each of the historical bid amounts provided for an
impression in which a prior advertisement was displayed to the
sampled user,
compare each of the historical bid amounts provided for
each of the impressions with the sampled user to the bid amount
in the advertisement request,
for each comparison, determine whether the bid amount
would have won an advertisement auction against the historical
bid amount to present the advertisement content to the sampled
user . . . .

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Applying a broadest reasonable interpretation, claim 18 recites a bid
history that, as discussed below, may include a plurality of historical bid
amounts provided for an impression, or may include a single historical bid
amount provided for an impression. Regardless, claim 18 further recites
comparing each of these historical bid amounts for each of the impressions
to the bid amount in the advertisement request. Claim 18 further recites that
for each such comparison, i.e., for each historical bid amount compared,
determine whether the bid amount in the advertisement request would have
won an auction against that historical bid amount. Claim 19 contains similar
language. Thus, we agree with Appellants that the language of the claim is
clear, i.e., “the historical bid amount” refers to the specific historical bid
amount used for each comparison.
In view of the above, we are persuaded that the Examiner erred in this
rejection. For the same reasons, we are persuaded of error with regard to
claims 20–22, which depend from claim 19.

The impressions with the sampled user
Independent claims 18 and 19 are also rejected under § 112(b)
because
it is unclear as to whether the phrase “the impressions with the
sampled user” references multiple impressions with the sampled
user that is not specifically/positively recited in any of Claims
18-19, or references recited “an impression” (singular) regarding
a prior advertisement display to the sampled user, which may or
may not include multiple impressions.

(Final Action 7.)
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Appellants disagree and argue that
[i]t is clear when reading the language in the context of the claim
as a whole that there is a (1) review of bid history where each of
the historical bid amounts was provided for an impression, and
then there is a (2) comparison of each historical bid amount
provided for each of those (the) impressions.

(Appeal Br. 11.)
Claim 18 recites (a) “a plurality of historical bid amounts, each of the
historical bid amounts provided for an impression in which a prior
advertisement was displayed to the sampled user,” and (b) “compare each of
the historical bid amounts provided for each of the impressions with the
sampled user to the bid amount in the advertisement request.” Thus, (a) may
reasonably be read to recite either a single bid amount for each impression,
there potentially being multiple impressions, or (a) may reasonably be read
to recite a plurality of bid amounts for each impression, some bid amounts
presumably having been unsuccessful; (b) recites the existence of multiple
impressions but does not clarify if there are multiple bid amounts associated
with each impression. Claim 19 contains similar language.
In view of the above, Appellants have not persuaded us that the
Examiner erred in this rejection. For the same reasons, we also affirm the
rejection of claims 20–22, which depend from claim 19.

The reach count
Independent claims 1, 18, and 19 are also rejected under § 112(b)
because
[e]ach of Claims 1, 18 and 19 at least thrice introduces the phrase
“reach count” and then subsequently recites “the reach counts”;
therefore, it is unclear as to what the later-recited phrase of “the
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reach counts” refers to in each independent claim — there is
insufficient antecedent basis for the phrase “the reach counts”
recited in each of the independent claims.

(Final Action 7; see also Answer 8.)
Appellants argue that “[i]t is clear when reading the language in the
context of the claim as a whole that there is a (1) determination of reach
count for each sampled user and then (2) an aggregation of those (the) reach
counts.” (Appeal Br. 11; see also Reply Br. 2.)
Claim 1 recites, in relevant part,
sampling by the social networking system a subset of users from
the target audience to determine a reach count for each sampled
user in the subset, a particular reach count for a particular
sampled user in the subset indicating whether the advertisement
content would have reached the particular sampled user, wherein
determining the reach count for each sampled user in the subset
of users comprises . . . .

Claim 1 further recites, in relevant part, “comparing . . . to determine a reach
count for the sampled user,” and “estimating an aggregate reach of the
advertisement content for the subset of users as an aggregation of the reach
counts for the sampled users in the subset.”
Applying a broadest reasonable interpretation, claim 1 distinguishes
(a) a reach count for each sampled user in the subset from (b) a particular
reach count for a particular sampled user in the subset. In other words, the
claim distinguishes “each sampled user” from “a particular sampled user,”
and similarly distinguishes the associated reach counts. Thus, it is unclear if
the “aggregation of reach counts” includes both reach count (a) and
particular reach count (b). Therefore, we agree with the Examiner that it is
unclear what reach counts are included in the aggregation of reach counts.
Claims 18 and 19 contain similar language.
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In view of the above, Appellants have not persuaded us that the
Examiner erred in this rejection. For the same reasons, we also affirm the
rejection of claims 3, 4, and 6–17, which depend from claim 1, and claims
20–22, which depend from claim 19.

The estimated total reach
Independent claims 1, 18, and 19 are also rejected under § 112(b)
because “it is unclear as to what the phrase ‘the estimated total reach’ makes
antecedent reference to in each independent claim.” (Final Action 8.)
Appellants disagree and argue that
[e]ach of the independent claims 1, 18, and 19 recites “estimating
a total reach of the advertisement content ... and applying the
estimated total reach.” The phrase “the estimated total reach”
makes antecedent reference to the estimating step that states
“estimating a total reach.” A skilled artisan would understand
what is claimed in light of the specification in this case.

(Appeal Br. 11–12.)
In relevant part, claim 1 recites “estimating a total reach of the
advertisement content,” and “applying the estimated total reach for the
advertiser.” Appellants’ argument is that “total reach of the advertisement
content” provides antecedent bases for “total reach for the advertiser.” We
are not persuaded. At best, it is unclear if these two terms refer to different
types of “total reach.” Claims 18 and 19 contain similar language.
In view of the above, Appellants have not persuaded us that the
Examiner erred in this rejection. For the same reasons, we also affirm the
rejection of claims 3, 4, and 6–17, which depend from claim 1, and claims
20–22, which depend from claim 19.

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The § 101 rejection
Appellants do not separately argue the claims. We select claim 1 as
representative. Claims 3, 4, and 6–22 will stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“‘contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
With regard to step one of the Alice framework, we apply a “directed
to” two prong test to: 1) evaluate whether the claim recites a judicial
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exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that claim 1 is “directed toward the
concept of utilizing characteristics of an advertisement and potential
recipients of the advertisement to predict effectiveness/effect (e.g., reach,
reach count) that the advertisement may have with users.” (Final
Action 10.) Based on this, the Examiner determines that claim 1 recites “a
fundamental economic practice and/or a method of organizing human
activities and, therefore, the claimed subject matter is drawn to an abstract
idea.” (Id.)
Appellants argue that claim 1 is not directed to an abstract idea and, in
particular, that “claim 1 is not directed to ‘fundamental economic
practices.’” (Appeal Br. 15.) Rather, Appellants argue, “claim 1 recites a
method for estimating reach of an advertisement in a social networking
system based on advertiser-specified bid amount and impressions histories
of sampled users of the social networking system.” (Id.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
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The ‘directed to’ inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether
‘their character as a whole is directed to excluded subject
matter.’ Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention
“relates generally to social networking systems, and more specifically to
advertising via a social networking system.” (Spec. ¶ 1.) Claim 1 provides
further evidence. Claim 1 recites “receiving at a social networking system
. . . an advertisement request,” “to make a prediction regarding expected
reach of the advertisement content . . . wherein determining the reach count
for each sampled user in the subset of users comprises: reviewing an
advertisement impression history,” “computing normalized measures of the
retrieved costs,” “comparing the bid amount . . . to each of the computed
normalized measures,” “recording a . . . reach count,” “estimating an
aggregate reach of the advertisement content,” “estimating a total reach of
the advertisement content,” “and applying the estimated total reach . . . in an
adjustment or determination . . . for the advertisement request.”
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In short, claim 1 recites advertising, marketing or sales activities or
behaviors. These steps are accomplished by receiving information and
determining a reach count by reviewing an advertising impression history,
calculating values, comparing values, recording/storing values, estimating
values, and applying values for an adjustment or determination. See, e.g.,
Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,
776 F.3d 1343, 1347 (Fed. Cir. 2014) (“[T]he claims of the asserted patents
are drawn to the abstract idea of 1) collecting data, 2) recognizing certain
data within the collected data set, and 3) storing that recognized data in a
memory.”); see also Bridge and Post, Inc. v. Verizon Commc’ns, Inc.,
No. 2018-1697, slip op. at 6–9 (Fed. Cir. July 5, 2019) (nonprecedential)
(deciding media content to provide to a user by retrieving usage patterns for
the user’s device, generating a user profile based on the usage patterns, and
analyzing the data, including the user profile, determined to be directed to an
abstract idea).
None of the limitations recite technological implementation details for
any of the steps. Instead, they describe functional results to be achieved by
any means. Moreover, beyond the recitation of a generic “social networking
system,” claim 1 does not recite any computer-related components. Claim 1
merely recites the functional results to be achieved. It does not recite “a
particular way of programming or designing the software . . . , but instead
merely claim[s] the resulting [method].” Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1241 (Fed. Cir. 2016). Additionally, Appellants’ Specification
makes clear that social networking systems were well known. (See, e.g.,
Spec. ¶¶ 2, 3, 26.)
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We do not see how the recitation of a “social networking system,”
even in conjunction with the recited functions, “ensure[s] ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’”
Alice, 573 U.S. at 221 (brackets in original) (quoting Mayo, 566 U.S. at 77.)
In view of the above, we determine that claim 1 is directed to
advertising, marketing or sales activities or behaviors. (See Guidance at 52.)
And further in view of the above, we agree with the Examiner that claim 1 is
directed to the abstract idea of certain methods of organizing human activity.
(See Final Action 10; see also Guidance at 52.)
Although we and the Examiner describe, at different levels of
abstraction, to what the claim is directed, it is recognized that “[a]n abstract
idea can generally be described at different levels of abstraction.” Apple,
Inc., 842 F.3d at 1240. That need not and, in this case, does not “impact the
patentability analysis.” See id. at 1241.
Nonetheless, Appellants seek to analogize claim 1 to the claims in
Enfish. (Appeal Br. 20–21.) Appellants argue that, as in Enfish, “[t]he
claimed invention provides a unique way of estimating reach of an
advertisement specified in an advertisement request from an advertiser and
applying the estimated reach to adjust/determine an advertisement request of
the advertisement.” (Id. at 20.)
We do not find this argument persuasive. The claims in Enfish were
“specifically directed to a self-referential table for a computer database.”
Enfish, 822 F.3d at 1337. That is, “the plain focus of the claims [was] on an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity.” Id. at 1336.
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Appellants do not persuasively argue how claim 1 improves computer
functionality.
Appellants also seek to analogize claim 1 to the claims in McRO, Inc.
v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). (See
Appeal Br. 21–22.) Appellants argue that “similar to McRO, claim 1
includes specific limitations that prevent preemption of all techniques for
providing advertising messages, or even for providing social endorsements.”
(Id. at 21.)
We do not find this argument persuasive. “The claimed improvement
[in McRO] was to how the physical display operated (to produce better
quality images), unlike (what is present here) a claimed improvement in a
mathematical technique with no improved display mechanism.” SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). In other
words, in McRO, data was used to improve the technology, i.e., the display
mechanism. Here, “the innovative aspect of the claimed invention is an
entrepreneurial rather than a technological one.” See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 722 (Fed. Cir. 2014).
Nor do we find persuasive Appellants’ preemption argument.
Preemption is not a separate test. “Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015). In other words, “preemption may signal patent ineligible
subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” Id.
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Step two of the Alice framework has been described “as a search for
an ‘“inventive concept”’ –i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–
18 (quoting Mayo, 566 U.S. at 72–73).
Appellants seek to analogize claim 1 to the claims in BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016). (Appeal Br. 23–24.) Specifically, Appellants argue that claim 1
“passes muster under the second step [of Alice] and supplies ‘an
unconventional and non-generic’ application of estimating reach of an
advertisement.” (Id. at 24.)
Appellants also argue that
[a]s a whole, these claims recite a “specific, discrete
implementation” of sampling of a subset of users of a target
audience, reviewing impression histories of the sampled users,
computing normalized measures of retrieved costs associated
with impressions in the reviewed impression histories,
comparing a bid amount with the normalized measures of
retrieved costs, recording positive reach count and zero reach
count, estimating an aggregate reach for the subset, estimating a
total reach for the target audience, and applying the estimated
total reach.

(Appeal Br. 24.) Appellants also argue that “claim 1 also is novel and non-
obvious over the references cited.” (Id.)
We do not find this argument persuasive. In BASCOM, the court
determined that “an inventive concept can be found in the non-conventional
and non-generic arrangement of known, conventional pieces.” BASCOM,
827 F.3d at 1350. Specifically, “[t]he inventive concept described and
claimed in the ’606 patent is the installation of a filtering tool at a specific
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location, remote from the end-users, with customizable filtering features
specific to each end user.” Id. at 1350. The Federal Circuit determined that
this “particular arrangement of elements is a technical improvement over
prior art ways of filtering.” Id. Here, Appellants do not contend, and
claim 1 does not specify, that the recited social networking system must be
arranged in a non-conventional manner. Nor do Appellants explain how the
claimed method allegedly improves the function of the social networking
system. See, e.g., BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288
(Fed. Cir. 2018) (“[A]n improvement to the information stored by a database
is not equivalent to an improvement in the database’s functionality.”).
Moreover, “[n]o matter how much of an advance in the . . . field the
claims recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm. An
advance of that nature is ineligible for patenting.” SAP Am., Inc., 898 F.3d
at 1163. Additionally, “[t]he ‘novelty’ of any element or steps in a process,
or even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–89
(1981).
Taking the claim elements separately, the functions performed by the
generic “social networking system” are purely conventional. Receiving
information and determining a value by reviewing information, calculating
other values, comparing values, recording/storing values, estimating values,
and applying the results are well-understood, routine, and conventional
functions previously known to the industry. See Elec. Power Grp., 830 F.3d
at 1356 (The claims “do not include any requirement for performing the
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claimed functions of gathering, analyzing, and displaying in real time by use
of anything but entirely conventional, generic technology. The claims
therefore do not state an arguably inventive concept . . . .”); see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming.”).
Considered as an ordered combination, the generic social networking
system of Appellants’ claimed invention adds nothing that is not already
present when the limitations are considered separately. For example,
claim 1 does not, as discussed above, purport to improve the functioning of
the social networking system itself. Nor does it effect an improvement in
any other technology or technical field. Instead, claim 1 amounts to nothing
significantly more than an instruction to apply the abstract idea using a
generic computer system performing routine computer functions. That is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1. Claims 3, 4, and 6–22 fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).

The § 103 rejection
The Examiner finds that
Jordan teaches a system and method wherein historical
impression data pertaining to the advertising campaign is
sampled to derive forecast data that predicts future state of the
market (e.g., Abstract of Jordan), sampling a subset of users
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from a target audience by a social networking system (e.g.,
Abstract of Jordan).

(Final Action 17.)
Appellants argue that the cited references do not disclose “sampling a
subset of users from the target audience specified in an advertisement
request.” (Appeal Br. 26.) Specifically, Appellants argue that Jordan
discloses sampling impression data, but “does not teach or suggest sampling
users.” (Id.)
The Examiner answers that
Jordan teaches an Internet ad campaign that targets
advertisements to online users where those users that have been
shown an advertisement (note: ad “impression” is a term that
refers to a display of an advertisement to a user, or as Jordan at
¶ [0025] explains, “[a]n impression is a single instance of an
advertisement being displayed before an Internet user”). After
showing advertisements to the users (i.e., presenting ad
impressions to users), the online user data of Jordan is sampled
to extract historical impression data associated with the online
users.

(Answer 17.)
Jordan discloses “[a] system and method for formulating a bid on an
impression for an Internet advertising campaign using market forecast data.”
(Jordan, Abstract.) Jordan further discloses that “[h]istorical impression data
pertaining to the advertising campaign is sampled using any applicable
sampling technique.” (Id.) More specifically, Jordan discloses that “[a]n
impression is a single instance of an advertisement being displayed before an
Internet user. In the context of an advertising exchange, an impression is an
opportunity to transmit an advertisement to a user. . . . An advertiser or
other entity can place a bid on the impression.” (Id. ¶ 25.)
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Jordan further discloses that “sampled impression data is generated
from historical impression data. The sampled impression data comprises a
subset of all of the impressions purchased throughout the history of an
advertising campaign. This data serves as the basis for forecasting the future
state of the market.” (Id. ¶ 27.)
Claim 1 recites “sampling . . . a subset of users from the target
audience to determine a reach count for each sampled user in the subset.”
The portions of Jordan relied on by the Examiner disclose sampling
historical impression data “using an applicable sampling technique,” and, as
noted above, sampled impression data is a subset of all of the impressions
purchased throughout the ad campaign. It is unclear where Jordan discloses
sampling users, as opposed to sampling “an advertisement being displayed.”
(See id. ¶ 25.) Albeit, advertisements are presented to users, but the cited
portions of Jordan disclose that the sampling is of a subset of the
impressions purchased, rather than a subset of users. (See id.) The
Examiner does not rely on the other cited art to cure this deficiency.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 1. Independent claims 18 and 19 contain similar language.

DECISION
The Examiner’s rejection of claims 1, 3, 4, and 6–22 under 35 U.S.C.
§ 112(b) is affirmed.
The Examiner’s rejection of claims 1, 3, 4, and 6–22 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejection of claims 1, 3, 4, and 6–22 under 35 U.S.C.
§ 103 is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED