As some commentators have noted, it is tough to win a reversal of a Section 101 rejection on appeal at the PTAB. What is also true is that even if you do not have a Section 101 rejection and you plan to appeal rejections of a claim that might be on the edge in terms of being too abstract, you may want to take another strategic look at your options. Specifically, if there is any way to move forward with the examiner, even if narrower than you think you deserve (but still broad enough to provide some business value), and you have claims in a 101 grey zone, the last thing you want to do is achieve a Pyrrhic victory on appeal. Both Disney and Facebook know this all too well.

In 14/259,063, Disney appealed on their interactive multimedia package method which was facing improper prior art rejections. Claim 1 on appeal is listed below:

1. A computer-implemented method, comprising:
determining an item based on a user preference information;
identifying the item as being related to an object shown in a digital video, the item corresponding to an item provider; and
associating the item with the object to generate an interactive multimedia package, the interactive multimedia package being configured to present the item to a user in response to a user’s command to activate trigger data, the interactive multimedia package comprising the trigger data configured to be displayed in response to automated detection of a triggering event associated with a temporal aspect of the digital video, wherein the trigger data is generated by processing the interactive multimedia package, and wherein the interactive multimedia package is transmitted separately from and presented along with the digital video.

Disney was victories in reversing the examiner’s prior art rejections, but then the Board threw this in:

We enter a new ground of rejection for Claims 1–18 under 35 U.S.C. § 101 as being directed to non-statutory subject matter, i.e., an abstract idea. …

Facebook’s application 14/582,252 faced a similar fate. Claim 1:

1. A computer-implemented method comprising:
[(a)] obtaining content items maintained by a social networking system for presentation to a user of the social networking system in a newsfeed of content items;
[(b)] generating a score for each of the obtained content items based at least in part on likelihoods of the user interacting with each of the content items;
[(c)] identifying features of each content item of the obtained content items, each feature of a content item corresponding to a different appearance characteristic of the content item;
[(d)] determining a sponsored content similarity score for each content item of the obtained content items using a machine learned model, wherein the machine learned model is trained by:
[(i)] presenting content items from a training set of content item to users of the social networking system;
[(ii)] receiving, from one or more of the users of the social networking system, feedback on at least a subset of the content items from the training set, the feedback including an identification from a user that a content item from the training set of content items has an appearance of a sponsored content item;
[(iii)] identifying features associated with content items from the training set for which the feedback was received; and
[(iv)] training the model based on the identified features, the model when applied to the identified features of the obtained content items determines the sponsored content similarity score for each content item of the obtained content items, the sponsored content similarity score providing a measure of similarity of an appearance of each content item of the obtained content items to the appearance of a sponsored content item;
[(e)] modifying the score of at least one content item of the obtained content items based at least in part on the determined sponsored content similarity score for the obtained content items;
[(f)] selecting positions for each of the obtained content items in a newsfeed of content items based on the [modified] score of each of the obtained content items; and
[(g)] providing the newsfeed within a limited display in a user interface to a client device for presentation to the user, the score of the at least one content item being modified to limit a number of the obtained content items having the appearance of a sponsored content item from being simultaneously presented in the newsfeed within the limited display of the user interface on the client device.

Here, the examiner’s rejection under obviousness was weak and only relied on the idea that the references could be combined, but without any evidence or reasoning of motivation to do so. However, the Board also concluded the claim was too abstract:

Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we newly reject [the pending claims] under 35 U.S.C. § 101 as being directed to a judicial exception to patent-eligible subject matter without significantly more.

So, before going up on appeal, double check that you are confident in your claims surviving a Section 101 rejection from the Board even if you win a complete reversal of all other rejections.