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Patent Trials and Appeals Board

Nov 15, 2019

13829410 - (D) (P.T.A.B. Nov. 15, 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.
13/829,410 03/14/2013 Timothy A. Kendall 26295-23419 6845
87851 7590 11/15/2019
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
EXAMINER
BAHL, SANGEETA
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
11/15/2019 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 TIMOTHY A. KENDALL, MATTHEW R. COHLER,
MARK E. ZUCKERBERG, YUN-FANG JUAN,
ROGERT KANG-XING JIN, JUSTIN M. ROSENSTEIN,
ANDREW G. BOSWORTH, YISHAN WONG, ADAM D’ANGELO,
and CHAMATH M. PALIHAPITIYA

Appeal 2019-000828
Application 13/829,410
Technology Center 3600
Before JEAN R. HOMERE, KARL D. EASTHOM, and
JAMES B. ARPIN, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL
I. STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s final decision rejecting claims 1, 5–7, 36, and 39–52. Final Act.
1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” here constitutes an “applicant” as defined in 37 C.F.R.
1.42(a). Appellant identifies the real party in interest as Facebook, Inc. of
Menlo Park, California. Appeal Br. 3.
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II. CLAIMED SUBJECT MATTER
The Specification describes a computer social networking system.
The system logs information about actions taken by users of the social
networking system. See Spec. ¶ 9, Fig. 4. For a first member of the system,
the system generates and displays in a newsfeed of socially relevant ads
based on the actions taken on a third-party system by other members of the
system connected to the member (e.g., the member’s online friends). See id.
¶¶ 6–7. Connections may be based on common factors between the first
member and members performing the action. See id. ¶ 26. The system
selects actions based on the first member satisfying targeting criteria for a
content object associated with the action (see id. ¶¶ 64–65), and the system
employs selected actions to generate and store a plurality of informational
messages in a batch process. See id. ¶¶ 64–65, 68. After a pre-determined
period of time, the system generates and stores an updated plurality of
informational messages for display to the first member in a feed. See
id. ¶ 68.
Independent claim 1, reproduced below, illustrates the claimed subject
matter:
1. A computer-implemented method comprising:
maintaining profiles for a plurality of users of a social
networking system, each user’s profile comprising connections
to other users of the social networking system;
receiving information from a third-party system about
actions performed by the users of the social networking system
in the third-party system;
logging the information about the actions performed in the
third party system; and for a viewing user of the social
networking system:
identifying, from the maintained profiles, by one
or more processors of the social networking system, a
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plurality of related users having implied connections to
the viewing user,
identifying, from the logged information, a set of
relevant actions performed in the third party system by
the identified plurality of related users;
identifying a set of content objects having
targeting criteria, each content object in the set of content
objects being associated with a type of action;
selecting, by the social networking system, a
plurality of actions from the identified set of relevant
actions, each action in the plurality of actions
corresponding to a content object in the set of content
objects and being selected based on the action matching
the type of action for the content object and on the
viewing user satisfying the targeting criteria for the
content object;
generating a plurality of informational messages
for the viewing user in a batch process, an informational
message for the viewing user comprising information
about one of the selected actions and one of the identified
related users who performed the one of the selected
actions,
storing the plurality of informational messages in
local storage, periodically, after a passage of a pre-
determined interval of time, generating an updated
plurality of informational messages for the viewing user
in a batch process and updating the stored plurality of
informational messages in the local storage with the
updated plurality of informational messages; and
responsive to the request for the feed, providing
the feed for display from the social networking system to
the viewing user, the feed comprising one or more of the
plurality of informational messages retrieved from the
local storage.
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III. REFERENCES
The Examiner relies upon the following references:
Name Reference Date
Schirmer US 2006/0149731 A1 July 6, 2006
Sample US 2006/0230061 A1 Oct. 12, 2006
Isaacs US 2007/0300064 A1 Dec. 27, 2007
Heckerman US 7,370,002 B2 May 6, 2008
Pennington US 7,752,552 B2 July 6, 2010
Baio US 7,844,604 B2 Nov. 30, 2010
IV. REJECTIONS
Claims
Rejected
35 U.S.C. § Basis/References
1, 5–7, 36,
39–52
Provisional Double Patenting,
App. No. 12/193705
1, 5–7, 36,
39–52
101 Nonstatutory Subject Matter
1, 39, 44 103 Obviousness, Pennington,
Baio, Sample
5–7, 40–42,
45–47
103 Obviousness, Pennington,
Baio, Sample, Isaacs
36, 43, 48 103 Obviousness, Pennington,
Baio, Sample, Schirmer
49–52 103 Obviousness, Pennington,
Baio, Sample, Heckerman
V. OPINION
As set forth in the table in Section IV above, the Examiner finally
rejects claims 1, 5–7, 36, and 39–52 for double patenting, nonstatutory
subject matter, and obviousness.
A. Double Patenting
The Examiner provisionally rejects claims 1, 5–7, 36, and 39–52 on
the ground of nonstatutory double patenting over claims 1–31 of copending
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Application No. 12/193705. Final Act. 5–7. We adopt and incorporate the
Examiner’s rejection. Appellant does not respond to the rejection in its
Appeal Brief. Accordingly, we summarily sustain the rejection pro forma.
B. Non-Statutory Subject Matter
The Examiner rejected claims 1, 5–7, 36, and 39–52 under 35 U.S.C.
§ 101 as being directed to nonstatutory subject matter. Final Act. 3–5. A
patent-eligible invention must claim a “new and useful process, machine,
manufacture, or composition of matter.” 35 U.S.C. § 101. However, the
Supreme Court, in a long line of precedent, interprets 35 U.S.C. § 101 to
include implicit exceptions to statutory subject matter: “[l]aws of nature,
natural phenomena, and abstract ideas.” See, e.g., Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, the
Court’s two-step framework, described in Mayo and Alice, frames the
analysis. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
a tribunal first determines what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
If the claim is “directed to” an abstract idea, the second step of the
Alice and Mayo framework requires “examin[ing] 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.
(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.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (“Guidance”). Under
Step 2A of the Guidance, PTO judges and examiners must determine if the
claims recite any judicial exceptions, i.e., a law of nature, a natural
phenomenon, or an abstract idea (mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes) (Prong 1); and additional elements in the claim as a whole
that integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)) (Prong 2). Id. at 52–54.
Furthermore, under Prong 1, the 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,
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when recited as such in a claim limitation(s) (that is, when recited on their
own or per se)”:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
(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).
Id. at 52 (footnotes omitted).
Under Step 2B, only if the claim recites a judicial exception and does
not recite additional elements that integrate the judicial exception into a
practical idea, then PTO examiners and judges investigate whether the claim
[a]dds 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
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.
Id. at 52–57 (bullet points omitted).
Guidance, Step 2A, Prong 1
The Examiner refers to several steps in claim 1 as reciting an abstract
idea related to data gathering and processing to create information based
thereon: “maintaining profiles of users of a social network,” “receiving
information” about “actions performed by the users,” “logging the
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information about the actions performed,” “identifying a plurality of related
users . . . inferred from one or more common profile attributes,” “identifying
a set of relevant actions performed . . . by identified related users and
selecting an action from identified set of relevant actions,” and “generating
an informational message.” See Final Act. 3–4 (citing, inter alia,
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089 (Fed. Cir. 2016);
Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
(“Elec. Power”); Intellectual Ventures I LLC v. Capital One Financial Corp.,
850 F.3d 1332 (Fed. Cir. 2017) (“Capital One”); CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372–73, 1375 (Fed. Cir. 2011);
SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App’x 950
(Fed. Cir. 2014)).
In other words, the Examiner relates the noted claim recitations as
analogous to the claims involved in, inter alia, FairWarning, Elec. Power,
Capital One, CyberSource Corp., and SmartGene. The Examiner refers to
the cited cases as involving claims directed to “collecting and comparing
known information,” and involving “categories to organize . . . information.”
See Final Act. 3–4. As the Examiner shows, the limitations of claim 1 listed
by the Examiner recite mental processes involved in data gathering and
processing to create information. As an example, FairWarning groups
certain data gathering recitations as involving an abstract mental process:
As we have explained, “merely selecting information, by content
or source, for collection, analysis, and [announcement] does
nothing significant to differentiate a process from ordinary
mental processes, whose implicit exclusion from § 101
undergirds the information-based category of abstract ideas.”

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FairWarning, 839 F.3d at 1097 (quoting Elec. Power, 830 F.3d at 1355)
(emphasis added) (information added by FairWarning).
The claim 1 steps noted by the Examiner, i.e., “maintaining profiles of
users of a social network,” “receiving information” about “actions
performed by the users,” “logging the information about the actions
performed,” “identifying a plurality of related users . . . inferred from one or
more common profile attributes,” “identifying a set of relevant actions
performed . . . by identified related users and selecting an action from
identified set of relevant actions,” and “generating an informational
message,” each recite, and as a group recite, “[m]ental processes,” namely
“concepts performed in the human mind (including an observation,
evaluation, judgment, opinion,” an abstract idea under the Guidance. See
Guidance, 84 Fed. Reg. at 52.
For example, with respect to “maintaining profiles of users of a social
network,” “receiving information” about “actions performed by the users,”
and “logging the information about the actions performed,” humans can
create profiles about people in their minds by receiving information through
observation about the people performing actions in a social setting, and then
recall that information after “logging” it in their mind. A human also can
“identify[] a set of relevant actions performed . . . by identified related users
[i.e., members of a social network] and select[] an action from [an] identified
set of relevant actions” as claim 1 recites, by observing actions of related
members of a social group, such as by observing the types of articles they
purchase and wear, the types of concerts they attend, or other activities they
pursue as a social group, actions deemed to be “relevant” by an observer.
Then, based on the collected information, a human can “announc[e],” see
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FairWarning 839 F.3d at 1097, certain judgments or opinions about the
collected information, thereby “generating an informational message,” as
claim 1 recites.
In essence, these claim steps amount to providing “stories” about
members of a social group by observing actions of members of the group
and relaying information about the actions to a targeted member. The
Specification supports this analysis. Spec. ¶ 50. For example, it reveals
“[t]hese communications may take the form of stories . . . about an action in
the action log that is relevant to the particular member.” Id. ¶ 50. As a
specific example, the Specification provides the following story: “John
Smith invited Bob Roberts to John’s 21st Birthday Party.” Id. ¶ 60
(providing an example “story format” corresponding to this birthday
message as “[Member field 705] [Action field 710] [Target field 715]
[Object field 720]”).
Similarly, some of these claim 1 steps listed by the Examiner,
including the claim 1 step of “generating a plurality of informational
messages . . . in a batch process, an informational message for the viewing
user comprising information about one of the selected actions and one of the
identified related users who performed the one of the selected actions,”
recite “certain methods of organizing human activity,” an abstract idea under
the Guidance. See Guidance, 84 Fed. Reg. at 52. Specifically, under the
Guidance, “certain methods of organizing human activity,” include
“managing personal behavior or relationships or interactions between people
(including social activities, teaching, and following rules or instructions)”
and/or “commercial interactions” including “advertising.” See id.
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By announcing certain judgments or opinions by “generating” a
“batch” (i.e., a group) of “informational messages” about the selected
actions by persons in the social network for a member in the social network,
based on observations gleaned via “maintaining profiles of users of a social
network,” and “receiving information” about “actions performed by the
users,” claim 1 involves managing relationships or interactions between
people (including social activities).
In other words, the “informational messages,” which may be “stories”
about people as noted above, seek to manage or encourage behavior of a
targeted user in the social network. As an example, the Specification
indicates the “informational messages” may include “socially relevant ads
for the member” of the social network, thereby including marketing or
advertising messages. See Spec. 40 (Abstract). As another example, the
“stories” noted above “can . . . be leveraged for marketing purposes.” Id. ¶
54.
Appellant groups claims 1, 5–7, 36, and 39–52 together and does not
argue any of the claims separately. See Appeal Br. 8–20.2 Accordingly,
claim 1 represents the claims on appeal under this § 101 rejection.
Appellant contends the Examiner does not consider claim 1 as a whole and
does not identify any actual abstract idea. Appeal Brief 8. However, the
Examiner sufficiently relates individual recitations and claim 1 as a whole to
collecting and analyzing data about people, and providing messages based
on that data, as summarized above. See Final Act. 2–3; Ans. 4–5.
Moreover, as set forth above, the Guidance specifies investigating any

2 The Board numbered each page of the Appeal Brief and the Reply Brief,
because Appellant did not provide page numbers.
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“additional elements” in the claims and the claim as a whole under Prong 2.
Guidance, 84 Fed. Act. at 52–54.
Appellant’s arguments do not show error in Examiner’s determination
that claim 1 recites an abstract idea. As determined above, claim 1 recites
mental processes and certain methods of organizing human activity as set
forth in the Guidance. See Guidance, 84 Fed. Reg. at 52; see also, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“[W]e have never suggested that simply reciting the use of a
computer to execute an algorithm that can be performed entirely in the
human mind” renders a claim patent eligible.); October 2019 Update:
Subject Matter Eligibility, 8 (Oct. 17, 2019) (“The courts have found claims
requiring a generic computer or nominally reciting a generic computer may
still recite a mental process even though the claim limitations are not
performed entirely in the human mind.”).
Appellant also argues “the claimed invention presents advertisements
that communicate information [sic: actions] taken by others in the member’s
network, particularly those with implied connections (i.e., the member’s
friends and other relationships and connections on the social networking
system).” Appeal Br. 19. As outlined above, this argument supports the
determination above. It shows that claim 1 involves mental processes and
certain methods of organizing human activity, namely commercial
interactions including advertising or marketing activities, and/or managing
personal behavior or relationships or interactions between people (including
social activities), as set forth above. In other words, communicating
messages about actions performed by a person in a social group of people
involves a mental process by a human to announce the results of certain
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observations of those people to one of the people, and involves organizing
human activity via messages that may include marketing or advertisements,
and involves managing personal behavior or relationships or interactions
between people (including social activities), by communicating the
information to a selected person of the social group. See October 2019
Update at 5 (“Finally, the sub-groupings encompass both activity of a single
person (for example, a person following a set of instructions or a person
signing a contract online) and activity that involves multiple people (such as
a commercial interaction), and thus, certain activity between a person and a
computer (for example a method of anonymous loan shopping that a person
conducts using a mobile phone) may fall within the ‘certain methods of
organizing human activity’ grouping.”).
Accordingly, based on the foregoing discussion the Examiner shows
that claims 1, 5–7, 36, and 39–52 recite limitations for abstract ideas,
including certain methods of organizing human activity and mental
processes.
Guidance, Step 2A, Prong 2
In determining whether the claims are “directed to” the identified
abstract idea, we consider here whether the claims recite “additional
elements” that integrate the judicial exception into a practical application.
See Guidance, 84 Fed. Reg. at 54–55. The Examiner contends that claim 1
recites additional elements as generic components, including a “processor,”
“maintaining . . . profiles” “a feed for . . . display,” and other generic data
gathering and processing limitations, considered both individually and as an
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ordered combination, and fail to integrate the judicial exception into a
practical application. See Final Act. 3–4.
For example, the Examiner contends as follows:
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the additional elements or combination of
elements in the independent claims are recitation of generic
computer structure (i.e. a processor to execute instructions to
perform the method), which serves to perform generic computer
functions that are well-understood, routine, and conventional
activities previously known to the pertinent industry, and do not
add a meaningful limitation to the abstract idea because they
would be routine in any computer implementation. The
limitations of maintaining a plurality of profiles; receiving
information actions performed by the user from third party
system; generating an informational message; providing a feed
for display . . . are well-known, routine and conventional
practices that require no more than a generic computer to perform
generic computer functions. Generic processors/computing
systems routinely provide data access by displaying the data. . . .
The processor system in the instant application merely receives,
processes and stores data. The claims do not recite an
improvement to another technology or technical field, an
improvement to the functioning of the computer itself, or
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment. For the
role of a computer in a computer implemented invention to be
deemed meaningful in the context of this analysis, it must
involve more than performance of “well understood, routine,
[and] conventional activities previously known to the industry.”
. . . . None of the hardware offers a meaningful limitation beyond
generally linking the system to a particular technological
environment, that is, implementation via computers.
Final Act. 3–4 (emphases added).
The Examiner also contends “[v]iewed as a whole, the claims do not
purport to improve the functioning of the computer itself, or to improve any
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other technology or technical field. Use of an unspecified, generic computer
does not transform an abstract idea into a patent-eligible invention.” Id. at 4.
Appellant does not dispute that the claims recite generic computer
components: “While recitation of a special purpose computer or dedicated
hardware modules may aid in patent-eligibility, it is not a requirement.
Providing a special purpose computer is only one way of providing
‘something more.’” Appeal Br. 17 (“Applicant claims can recite the
‘something more’ required by the second prong of Mayo/Alice even if they
are implemented by a ‘general purpose computer.’”).
Rather than relying on a “special purpose” computer, Patent Owner
contends “the claimed invention provides an unconventional application of
generating informational messages for a viewing user. The unconventional
application of this concept yields different and improved content items
selected for users of the social networking system compared to prior
selection approaches.” Appeal Br. 18. Appellant does not point to any
specific additional recitations beyond the abstract idea that involve anything
more than generic functionality or components that serve to gather and
analyze data that a human could mentally process or that involve certain
methods of organizing human activity. We analyze Appellant’s arguments
about the alleged “unconventional application” further in Step 2B below.3
Appellant contrasts typical social networking websites to the claimed
invention: “By contrast, rather than merely delivering a message that is

3 Some of the considerations at Step 2A, prong 2, properly may be evaluated
under Step 2 of Alice (Step 2B of the Office guidance). See 84 Fed. Reg. at
55 n.25, 27–32.

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targeted to a particular member based on the member’s preferences, the
claimed invention presents advertisements that communicate information
[sic: actions] taken by others in the member’s network, particularly those
with implied connections (i.e., the member’s friends and other relationships
and connections on the social networking system).” Appeal Br. 19. But,
these types of communication, namely telling stories about group members
depending upon certain relationships, forms part of the abstract idea, as
indicated in the previous section.
Appellant explains “[b]eyond targeting messages based on articulated
interests, this approach is better able to create or generate demand by
providing the socially related information to members about their friends’
actions.” Id. at 20. But, again, delivering “socially related information”
about “their friends’ actions” represents part of the mental processes of
simply telling stories about what people did. It also involves certain
methods of organizing human activity via advertising or marketing messages
to “create or generate demand,” and managing personal behavior or
relationships or interactions between people (including social activities), by
communicating the stories or other information to a selected member of the
perceived social group. See id.
As the Examiner recognizes and, as indicated above, claim 1 does
not improve upon generic computer systems to deliver the information.
According to the Guidance,
[i]f a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic
computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the
mind. See Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of
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generic computer implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by
a human, mentally or with pen and paper.”); Mortg. Grader, Inc.
v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir.
2016) (holding that computer-implemented method for
“anonymous loan shopping” was an abstract idea because it
could be ‘‘performed by humans without a computer’’); Versata
Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015)
(“Courts have examined claims that required the use of a
computer and still found that the underlying, patent-ineligible
invention could be performed via pen and paper or in a person’s
mind.”).
Guidance at 52 & n.4
But for the generic computer components, most of the limitations
recited in claim 1 and claim 1 as a whole may be practiced in the human
mind “without a computer,” as outlined above. As also outlined above, the
steps alternatively involve certain methods of organizing human activity,
namely via advertisements, and managing personal behavior or relationships
or interactions between people (including social activities). Stated
differently, claim 1 does not recite “[a]n additional element [that] reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field.” See Guidance, 84 Fed. Reg. 55.
Specifically, claim 1 recites generic components, such as “one or
more processors.” It generically recites “profiles,” “logging,” “content
objects,” a “batch process,” and “local storage,” but it does not recite any
specific manner as to how it “generate[s] . . . informational messages”
beyond generic computer functionality including “matching” “relevant
actions” in a “third party system” to “the action matching the type of action
for the content object and on the viewing user satisfying the targeting criteria
for the content object.” These actions, stripped of their generic computer
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components and functionality, focus on abstract ideas that involve
comparing actions of related users to targeted marketing actions in order to
deliver information, which may include marketing, advertising, or social
information, to one of the related users, most of which a human could have
performed mentally using observation and judgment of the social group in
different settings.
Alternatively, as outlined above, claim 1 focuses on organizing human
activity via commercial interactions such as advertisements or marketing
based on information collected and analyzed about actions taken by people
in social groups, or managing personal behavior or relationships or
interactions between people (including social activities) by attempting to
influence certain behavior through advertisements or stories based on
information collected and analyzed about actions taken by people in social
groups. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir.
2014) (holding that claim ‘‘describ[ing] only the abstract idea of showing an
advertisement before delivering free content’’ is patent ineligible);4 Credit
Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir.
2017) (“Our prior cases have made clear that mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.”). Moreover, “relying on a computer
to perform routine tasks more quickly or more accurately is insufficient to

4 While claim 1 recites “generating a plurality of informational messages”
and such information may involve social advertisements or other
advertisements (see Spec. 40), claim 1 does not require necessarily that the
information be presented in advertisement form. Even if the information
relates to advertisements, this does not transform the invention into patent
eligible subject matter. See MPEP § 2106.05(g).
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render a claim patent eligible.” OIP Techs., 788 F.3d at 1363 (citing Alice,
573 U.S. at 224 (“use of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions” is not an
inventive concept)); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a computer “employed only
for its most basic function . . . does not impose meaningful limits on the
scope of those claims”).
Accordingly, based on the foregoing discussion the Examiner shows
that claims 1, 5–7, 36, and 39–52 recite limitations for, and are directed as a
whole to, abstract ideas including certain methods of organizing human
activity and mental processes.
Guidance, Step 2B and Alice/Mayo Step 2
Step 2 of the Alice/Mayo framework and Step 2B of the Guidance
requires determining whether the claims (a) add a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field, or (b) simply append well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. See Guidance, 84
Fed. Reg. at 56. The Examiner contends that the generic components
recited in the claims, considered both individually and as an ordered
combination, “perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the pertinent
industry, and do not add a meaningful limitation to the abstract idea because
they would be routine in any computer implementation.” Final Act. 3.
The Examiner points to a “processor to execute instructions to
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perform the method,” as conventional, and points to “limitations of
maintaining a plurality of profiles; receiving information actions performed
by the user from third party system; generating an informational message;
providing a feed for display” as “well-known, routine and conventional
practices that require no more than a generic computer to perform generic
computer functions.” Id. The Examiner adds “[g]eneric processors [and]
computing systems routinely provide data access by displaying the data.”
Id.
Responding, Appellant admits
[s]ocial networking websites typically incorporate a
system for connecting members to content that is most likely to
be relevant to each member. For example, members may be
grouped according to one or more common attributes (e.g.,
geographic location, age, interests, etc.), and members of the
social networking system or external parties can then use these
groups to customize or target information delivery so that
information that might be of particular interest to a group can be
communicated to that group. Advertisers have attempted to
leverage this information about members, targeting ads to
members whose interests best align with the ads. For example,
a social networking system may display banner ads for a concert
to members who express an affinity for the performing band and
live near a concert venue where that band might be performing.
Appeal Br. 19 (emphasis above).
As explained above, Appellant contends the claimed invention
displays information in the form of user’s actions performed at a third party
system. See App. Br. 19. Appellant also contends the claims recite an
unconventional method. See id. at 18. But, even if this alleged
“unconventional method” involves “additional elements” outside the abstract
idea, Appellant does not explain how viewing and reporting about such
user’s actions requires anything beyond implementing well-understood,
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routine, conventional data collection and analysis involving conventional
websites and conventional social networks. The Specification and
Appellant’s arguments show that social networking systems or websites
conventionally tracked user’s locations and interests, so they conventionally
would have been able to track other information about a user. See id. at 18–
19.
For example, the Specification explains that in conventional
networking sites, “[m]embers of the social networking website or external
parties can then use these groups to customize or target information delivery
so that information that might be of particular interest to a group can be
communicated to that group.” Spec. ¶ 4 (emphasis added). The
Specification also admits users could be targeted based on their “website
profile.” Id. ¶ 5. The profile might include “profiles, such as geographic
location, employer, job type, age, music preferences, interests, or other
attributes.” Id. ¶ 4.
The Specification does not reveal how tracking other information
about user’s actions in third party systems involves anything more than
conventional tracking functionality already performed in conventional social
networks. As examples of actions, the Specification explains a “social ad,
for example, may inform a member that a friend (or a number of friends) of
the member has purchased a particular item made by an advertiser, will
attend an event sponsored by an advertiser, or has added a connection to a
profile for a business or other entity.” Id. ¶ 6. But, as noted above,
conventional social networking already had the ability to target members
based on prior connections or membership in a group and could target adds
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based on different types of profile information, including interests or other
attributes. See id. ¶¶ 4–5.
To the extent that adding information about actions in third party
systems somehow involves more than the judicial exception, it does not
involve anything more than conventional tracking of a connection to the
third party system, and as explained above, the Specification explains that
prior social networks already tracked connections at the social networking
site. Also, the Specification indicates that merely “joining the group” may
be considered a type of action tracked in claim 1 (see id. ¶ 31), and tracking
group memberships not only constitutes part of the abstract idea, to the
extent it involves more, it was conventional in prior art social networks:
“These connections among the members can be exploited by the website to
offer more relevant information to each member in view of the members’
own stated interests in their connections.” Id. ¶ 3. As noted above, the
Specification reveals that in conventional systems, “external parties can then
use these groups to customize or target information delivery so that
information that might be of particular interest to a group can be
communicated to that group.” Id. ¶ 4 (emphasis added).
In short, claim 1 “does not gather data in an unconventional way” and
it does not include an “inventive concept.” See Guidance, 84 Fed. Reg. at
56. It simply involves collecting data from different sites about actions by
users, comparing it to actions of interest using routine computer comparison
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logic, and then delivering groups of information about the actions. See, e.g.,
Spec. ¶¶ 28–29, 97, Fig. 3.
For example, the Specification specifically describes the algorithms
involved in the invention as “commonly used . . . in the data processing
arts”:
Some portions of this description describe the
embodiments of the invention in terms of algorithms and
symbolic representations of operations on information. These
algorithmic descriptions and representations are commonly used
by those skilled in the data processing arts to convey the
substance of their work effectively to others skilled in the art.
These operations, while described functionally, computationally,
or logically, are understood to be implemented by computer
programs or equivalent electrical circuits, microcode, or the like.
Spec. ¶ 97 (emphasis added).
Nevertheless, Appellant argues “[i]n Fair Warning, the claims were
held to be directed to an abstract idea because they ‘merely implement an
old practice in a new environment,’ and the court stated that the claims were
directed to the ‘broad concept of monitoring audit log data.’” Appeal Br. 12
(quoting Fair Warning, 839 F.3d at 1097). According to Appellant, “[b]y
contrast, the current claims are not directed to an overly broad or old
concept, but perform a new process that allows the social networking system
to generate content that describes actions taken in a third-party system for
displaying within a feed to a viewing user.”
Contrary to the arguments, claim 1 is directed toward an overly broad
or old concept, namely, as Appellant notes, “a social networking system
[e.g., a social group] to generate content [e.g., information, stories] that
describes actions taken in a third-party system [e.g., actions social group
members took in a store, shop, or anywhere] for displaying within a feed
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[e.g., announcing or telling a story] to a viewing user [e.g., a member of the
social group].” See id. Stated differently, an observer of the social group
delivers different stories, i.e., content, about actions taken by other members
of the social group in different settings, actions implicitly deemed important
or relevant as a
note-worthy topic by the observer. So claim 1 essentially focuses on the
broad and old basic abstract concept of providing stories about group
members, using a generic computer system as a tool to deliver those stories.
Similar to the arguments dismissed in FairWarning (which the
Examiner and Appellant rely upon as noted above), Appellant’s arguments
reduce to the assertion that “its system allowed for the compilation and
combination of . . . disparate information sources and that the patented
method ‘made it possible to generate a full picture of a user’s activity,
identity, frequency of activity, and the like in a computer environment.’”
FairWarning, 839 F.3d at 1096–97.
Dismissing the argument, the court stated
[a]s we have explained, “merely selecting information, by
content or source, for collection, analysis, and [announcement]
does nothing significant to differentiate a process from ordinary
mental processes, whose implicit exclusion from § 101
undergirds the information-based category of abstract ideas.”
Elec. Power, 830 F.3d at 1355. Furthermore, to the extent that
FairWarning suggests that its claimed invention recites a
technological advance relating to accessing and combining
disparate information sources, its claims do not recite any such
improvement. Rather, the claimed invention is directed to the
broad concept of monitoring audit log data. The claims here do
not propose a solution or overcome a problem “specifically
arising in the realm of computer [technology].” DDR Holdings,
773 F.3d at 1257. At most, the claims require that these
processes be executed on a generic computer. But, “after Alice,
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there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-
eligible.” Id. at 1256 (citing Alice, 134 S.Ct. at 2358).
Id. at 1097; see also Alice, 573 U.S. at 224–26 (receiving, storing, sending
information over networks insufficient to add an inventive concept). Here,
like the “broad concept of monitoring audit log data” involved in
FairWarning, claim 1 is directed to the broad concept of monitoring social
activity to deliver stories about group members.
Appellant also argues the claims present “a less burdensome and more
computationally predictable [process] than generating content for display
within a feed in real-time”:
The current claims describe a specific improvement that
allows the social networking system to generate content in
advance and is less burdensome and more computationally
predictable than generating content for display within a feed in
real-time. For example, the current claims recite a specific
method of identifying relevant actions performed in a third party
system by a plurality of related users, selecting a plurality of
actions from the identified set of relevant actions based on the
action matching the type of action for the content object and on
the viewing user satisfying targeting criteria for the content
object, and generating a plurality of informational messages for
the viewing user in a batch process.
Appeal Br. 13 (emphases added). This argument reduces to the fundamental
idea that doing something less often (i.e., sending information in a “batch
process”) reduces the amount of effort involved. Appellant does not contend
the inventors conceived of, or claim 1 requires, an unconventional batch
process, otherwise akin to saving letters or collections of local stories for a
neighbor on vacation, and then delivering it all in batch form when the
neighbor returns.
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In Ultramercial, Inc. v. Hulu LLC, 772 F.3d. 709 (Fed. Cir. 2014), the
patentee argued that a financial arrangement (a method of using advertising
as an exchange or currency) distinguished from the “routine,” “long
prevalent,” or “conventional” abstract idea in Alice, because it was “directed
to a specific method of advertising and content distribution that was
previously unknown.” Id. at 714. The court rejected the patentee’s position
that “abstract ideas remain patent-eligible under § 101 as long as they are
new ideas not previously well known, and not routine activity.” Id.
As set forth above, the additional elements in claim 1 amount to no
more than well-understood, routine, conventional computer instructions,
storage, and processor components recited at a high level of generality in a
social network to apply a judicial exception directed to delivering a story
about a person in a social group. More particularly, the additional elements
implement the broad abstract concept of tracking activities of members of
the social network group in different places, matching the activities to
preconceived relevant activities of interest to an observer, for example a
merchant, and then delivering the messages based on the match at intervals
to a targeted member of the social network, an insufficient application to
provide an inventive concept. Accordingly, Appellant does not show that
the Examiner erred in rejecting claims 1, 5–7, 36, and 39–52 under 35
U.S.C. § 101.
C. Obviousness
The Examiner rejects claims 1, 39, and 44 as obvious over the
combined teachings of Pennington, Baio, and Sample; claims 5–7, 40–42,
and 45–47 as obvious over the combined teachings of Pennington, Baio,
Sample, and Isaacs; claims 36, 43, and 48 as obvious over the combined
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teachings of Pennington, Baio, Sample, and Schirmer; and claims 49–52 as
obvious over the combined teachings of Pennington, Baio, Sample, and
Heckerman. See Final Act. 8–25. Appellant presents arguments for claim 1
only. Appeal Br. 23–24. Therefore, claim 1 represents the claims on appeal
for these obviousness rejections.
In the Final Rejection, the Examiner relies on Pennington’s teachings
for most of the claim 1 limitations, and relies on the combined teachings of
Pennington, Baio, and Sample for the remaining limitations. The Examiner
supports the obviousness determination with a factual underpinning and
supported reasons for the combination. See Final Act. 8–16.
In the Appeal Brief, Appellant contends Pennington does not disclose
the following “identifying a set of content objects” and “selecting . . .
actions” steps:
identifying a set of content objects having targeting
criteria, each content object in the set of content objects being
associated with a type of action;
selecting, by the social networking system, a plurality of
actions from the identified set of relevant actions, each action in
the plurality of actions corresponding to a content object in the
set of content objects and being selected based on the action
matching the type of action for the content object and on the
viewing user satisfying the targeting criteria for the content
object.
Appeal Br. 20–21 (emphases added). In particular, Appellant contends “the
rejection errs by finding th[ese] limitation[s reproduced above] in
Pennington and in relying on this finding in the combination of references as
a whole to reject claim 1.” Id. at 20.
Appellant provides specific arguments as to how Pennington allegedly
fails to disclose the above-recited “identifying a set of content objects” and
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“selecting . . . actions” steps. Appeal Br. 21–22. Appellant also argues that
no other reference teaches a combined step involving the “selecting . . .
actions” step and a later “display” step, as follows:
The remaining references do not teach selecting actions to
display to a user based on the user satisfying targeting criteria for
a particular content object or based on whether the user’s
connections have performed an action of a specified type
associated with the content object, nor does the Office Action so
assert.
Id. at 22 (emphasis added). In contrast to its arguments about Pennington,
Appellant does not provide reasons why it contends “the remaining
references” do not teach “selecting actions to display.” Claim 1 does not
recite “selecting actions to display.” Rather, it recites “providing the feed
for display . . . the feed comprising . . . informational messages.” Even if
Appellant employs “selecting actions to display” as a short-hand reference to
“providing the feed for display,” with the feed providing “informational
messages” about “selected actions,” Appellant simply does not provide
sufficient reason why the “remaining references do not teach selecting
actions to display.” See id. at 22.
The Examiner’s Answer responds by stating the “Examiner has
considered all arguments and respectfully disagrees. Examiner notes
Pennington was not cited for these limitation, Baio was cited for rejecting
above limitations.” Answer 10 (citing Final Act. 12–16) (emphasis added).
In the Reply Brief, Appellant responds to the Examiner’s Answer by
addressing alleged deficiencies in Baio. The Reply Brief does not challenge
the Examiner’s assertion that the Final Rejection relies on Baio for the
asserted limitations outlined above. See Reply Br. 5–7.
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Appellant does not explain why it presents arguments about Baio in
the Reply Brief that it does not raise in the Appeal Brief. By focusing on
Pennington’s alleged shortcomings in the Appeal Brief for limitations the
Examiner did not rely upon as taught by Pennington (i.e., the unrecited
limitation of “selecting actions to display,” and the recited “selecting . . .
actions” and “identifying a set of content objects” steps in claim 1 as
reproduced above), providing only a general allegation about what the
secondary references (e.g., Baio) do not teach in the Appeal Brief, and then
belatedly providing the specific arguments in the Reply Brief about alleged
deficiencies in Baio with respect to the noted limitations, Appellant waives
the belated arguments addressing alleged short-comings in Baio. In other
words, by failing to present clear arguments in the Appeal Brief about Baio
and by presenting an untimely argument in the Reply Brief about Baio,
without adequate explanation justifying the untimeliness, Appellant fails to
show “good cause” and waives arguments regarding the unrecited “selecting
actions to display” step and the recited “selecting . . . actions” and
“identifying a set of content objects” steps as reproduced above. See 37
C.F.R. § 41.41 (Reply brief. (b)(2) “Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the present
appeal, unless good cause is shown.”).5

5 Appellant’s new arguments do not respond to a new point raised in the
Answer, because the Examiner relied on Baio in the Final Rejection, as
noted.
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Appellant also argues that Pennington fails to teach the claim 1 step of
“providing the feed for display from the social networking system to the
viewing user.” Appeal Br. 33. The Examiner relies on the combined
teachings of Pennington and Baio as teaching and suggesting this step. See
Final Act. 9, 14–15. Appellant’s arguments do not address the combination;
rather, they only address Pennington:
Unlike the claimed social networking system, which receives and
logs information from third-party systems, identifies a set of
relevant actions, generates informational messages, and displays
the feed to the viewing user, Pennington’s third-party website
merely provides a place for the system to display its content and
feed, but does not perform content selection or generate events
to be displayed in the event feed. Rather, these steps are
performed by a separate ‘open overlay service’ that generates
and sends the aggregated event stream to the third-party website
for display. Thus, Pennington fails to teach “providing the feed
for display from the social networking system to the viewing
user.”
Appeal Br. 22 (emphases added).
Addressing the feed limitation at issue, the Examiner explains that
Pennington’s “aggregated event stream allows open overlay service to show
various accounts (e.g., Flickr, YouTube, digg, and delicious) on different
systems and then keep a user’s social network informed changes that happen
with those disparate accounts.” Final Act. 9 (citing Pennington, 7:8–42, 63–
67, Figs. 4–6) (emphasis added). So the Examiner shows Pennington’s local
client social networks receive changes (i.e., actions) about various accounts
from the overlay service. Moreover, Pennington states “[o]pen overlay
service 106 serves as a social network service” that “stores, manages, and
provides access control to the various services and social networks of clients
102” and also “forwards information shared by users, as well as user profiles
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and social network information.” Pennington, 2:66–3:5 (emphasis added).
Therefore, contrary to Appellant’s argument based on an alleged distinction
between the claimed social networking system and Pennington’s service,
Appellant demonstrates no such distinction. Accordingly, Pennington’s
social networking service (i.e., its overlay service) provides a feed for
display of the information changes, even if some information starts from the
overlay service.6
Even if Pennington’s teachings do not meet the limitation by
providing a feed from the social network, the Examiner turns to Baio’s
teachings, which also supply this limitation. Addressing the feed limitation
teachings in Baio, the Examiner states “Fig 3 shows feed displayed to user.”
Id. at 14 (citing 9:4–12, 38–55). The Examiner provides “examples of [a]
feed” as disclosed in Baio at the cited portions of column 9, including “5
comments have been added to event X, Your friend Joe is now attending
events Y and Z.” See id.; Baio, 9:34–42. The Examiner repeats the citation
to Figure 3 of Baio in addressing the feed limitation further, as follows:
responsive to the request for the feed, providing the feed for
display from the social networking system to the viewing user
(Fig 3 shows recent activity feed, Fig 1 # 130, 150), the feed
comprising one or more of the plurality of informational
messages retrieved from the local storage (Fig 3 shows activities
retrieved for activity log) and updating the stored plurality of
informational messages in the local storage with the updated
plurality of informational messages (Col 4 lines 33–64 changes

6 Accordingly, even if Appellant raised a timely argument about the
unclaimed or short-hand limitation of “selecting actions to display”
determined above as waived, Pennington teaches this limitation, as do
Pennington’s teachings combined with those of Biao, as discussed further
below. And as discussed herein, Appellant does not address the combined
teachings.
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related to event such as an event has been updated are stored in
change record).
Final. Act. at 14–15 (emphasis added). As a reason to combine the
teachings, the Examiner specifies “the motivation” as “providing a method
of notifying users based on their interest and thus reducing the possibility of
information overload.” Id. at 15 (citing Baio 2:10–28). In other words, the
Examiner finds both references teach a feed as useful for providing
information to users about activities related to a social network, and provides
a valid reason to provide a feed for display from the social networking
system to the viewing user (i.e., “reducing . . . information overload”) to
combine the teachings. Appellant does not address these feed teachings and
suggestions in Baio.
Based on the foregoing discussion, Appellant does not show error in
the Examiner’s findings and determination of the obviousness of claims 1,
5–7, 36, and 39–52.
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VII. CONCLUSION
Claims
Rejected
35 U.S.C. § References/Basis  Affirmed Reversed
1, 5–7, 36,
39–52
Provisional Double
Patenting
1, 5–7, 36,
39–52

1, 5–7, 36,
39–52
101 Nonstatutory Subject
Matter
1, 5–7, 36,
39–52

1, 39, 44 103 Pennington, Baio,
Sample
1, 39, 44
5–7, 40–42,
45–47
103 Pennington, Baio,
Sample, and Isaacs
5–7, 40–
42, 45–47

36, 43, 48 103 Pennington, Baio,
Sample, and Schirmer
36, 43, 48
49–52 103 Pennington, Baio,
Sample, Heckerman
49–52
Overall
Outcome
1, 5–7, 36,
39–52

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