Brian Scott. Johnson et al.

Patent Trials and Appeals Board

Oct 17, 2019

14193219 - (D) (P.T.A.B. Oct. 17, 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.
14/193,219 02/28/2014 Brian Scott Johnson P2346US1/EBAY.281067 4806
150601 7590 10/17/2019
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
EXAMINER
SEIBERT, CHRISTOPHER B
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
10/17/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
docketing.shb@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN SCOTT JOHNSON, MICHAEL CHING,
JULIE LAVEE NETZLOFF, and VAMSI KRISHNA SALAKA
____________

Appeal 2018-005266
Application 14/193,219
Technology Center 3600
____________

Before CAROLYN D. THOMAS, PHILLIP A. BENNETT, and
SCOTT RAEVSKY, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The present invention relates generally to identifying suspicious item-
related features. See Abstr.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as eBay Inc.
Appeal Br. 2.
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Independent claim 1, reproduced below, is representative of the
appealed claims:
1. A computer-implemented method comprising:
receiving, from a client device, a query for item listings
on a network site;
retrieving a set of item listings comprising text phrases;
extracting, using one or more processors, a set of text
phrases from the set of item listings;
receiving training data comprising indications made
using the set of text phrases, the indications indicating whether each
item listing in the set of item listings is suspicious or not suspicious;
generating, by a machine having a memory and at least
one processor, a model by training a classifier on the training data
comprising the indications;
retrieving search results for the query using a search
engine;
generating a score for each item listing in the search
results by applying the generated model to each of the item listings in
the search results; and
modifying the search results by lowering or removing
items listings in the search results hav[ing] a score that exceeds a
preconfigured threshold before the search results are displayed on the
client device of the user.

Appellant appeals the following rejection:
Claims 1–20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to patent-ineligible subject matter (Final Act. 7–9).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

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ANALYSIS
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with the framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). For example, concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity,
such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
Recently, the USPTO published revised guidance on the application
of 35 U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).
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Under the Revised Guidance “Step 2A,” the office first looks to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)-(c), (e)-(h)). 84 Fed. Reg. at
51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claim 1, and similarly, system
claim 14 and non-transitory machine-readable storage device claim 20, the
Examiner determines that the claims are directed to “classifying a candidate
item listing as suspicious” (Final Act. 7), which “is performable by a human
mind, or manually using pen and paper” (id. at 8), which we conclude are
mental processes, which is a type of abstract idea.
The Specification discloses:
E-commerce sites experience obstacles in providing relevant search
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results because of certain item listings including data or other features
that improperly promote the item listings for prominent inclusion in
search results.
Spec. ¶ 2.
The present disclosure provides systems and methods of classifying
suspicious item listings and item-related activity in e-commerce. In
some embodiments, a sample of item listings is received. Each item
listing in the sample of item listings may correspond to an item
offered for sale on an e-commerce website. Item-related data for each
item listing in the sample of item listings can be extracted. Training
data comprising identifications of which item listings in the
sample of item listings are suspicious and identifications of which
item listings in the sample of item listings are not suspicious can be
received. A model for classifying a candidate item listing on the e-
commerce website as being suspicious can be determined using the
training data.
Id. at ¶ 15.
Claim 1 recites at least the following limitations: (1) “receiving . . . a
query for item listings,” (2) “retrieving a set of item listings comprising text
phrases,” (3) “extracting . . . a set of text phrases,” (4) “receiving training
data . . . indicating . . . suspicious or not suspicious,” (5) “generating . . . a
model,” (6) “retrieving search results,” (7) “generating a score for each item
listing,” and (8) “modifying the search results.” These limitations, under
their broadest reasonable interpretation, recite mental processes because the
limitations all recite acts that can be performed in the human mind or using
pen and paper.
Furthermore, the claimed limitations, under their broadest reasonable
interpretation, encompass acts people can perform using their minds or pen
and paper because: (1) people can perform the “receiving a query” step by
simply writing down desired item listings; (2) people can perform the
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“retrieving” step by simply looking at item listings; (3) people can perform
the “extracting” set by using a pen and paper to write down text phrases
from the listings; (4) people can perform the “receiving training data” step
by simply looking at the data; (5) people can perform the “generating a
model” step by simply using pen and paper to note a series of steps; (6)
people can perform the “retrieving search results” step by looking at the
results; (7) people can perform the “generating a score” step by using pen
and paper to evaluate a score; and (8) people can perform the “modifying”
step by using pen and paper to delete an item from the list. See also Ans. 4.
Here, the Examiner also concludes that “[c]lassifying suspicious item
listings is an abstract idea of itself.” Final Act. 8. Although the Examiner’s
recognized category of “an idea of itself” is not one of the currently
recognized categories, it is sufficient for the purposes of the present appeal
that the claimed concepts reasonably can be characterized as falling within
the recognized category of mental processes, which is also identified by the
Examiner. See, e.g., MPEP § 2106.04(a)(2)(III):
The courts have used the phrase ‘an idea ‘of itself’” to describe
an idea standing alone such as an uninstantiated concept, plan
or scheme, as well as a mental process (thinking) that “can be
performed in the human mind, or by a human using a pen and
paper.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372 (Fed. Cir. 2011).
This is true even if the claim recites that a generic computer
component performs the acts. See, e.g., Versata Dev. Grp., Inc. 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,
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patent-ineligible invention could be performed via pen and paper or in a
person’s mind.”); see also 2019 Eligibility Guidance 84 Fed. Reg. at 52 n.14
(“If 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.”). Additionally, in Cyberfone, the Court held that
“using categories to organize, store, and transmit information is well-
established,” and “the well-known concept of categorical data storage, i.e.,
the idea of collecting information in classified form, then separating and
transmitting that information according to its classification, is an abstract
idea that is not patent-eligible.” Cyberfone Sys., LLC v. CNN Interactive
Grp., Inc., 558 Fed. App’x. 988, 992 (Fed. Cir. 2014). Here, as in
Cyberfone, categories are used, i.e., suspicious or not suspicious, to
organize, store, and transmit information.
We agree with the Examiner that the rejected claims recite an abstract
idea because they are directed to processes or functions that can be
performed by a human using a pen and paper.
Appellant challenges the Examiner’s determinations on the ground
that “the Examiner failed to establish a prima facie case that the claims at
issue are directed to patent-ineligible subject matter.” Appeal Br. 19.
Here, in rejecting claims 1–20 under 35 U.S.C. § 101, the Examiner
analyzed the claims using the “July 2015 Update: Subject Matter Eligibility
III (C), i.e., Mayo/Alice two-step framework (see Final Act. 8), in effect at
the time the rejection was made, i.e., June 13, 2017, and we have
appropriately supplemented the Examiner’s analysis with the 2019 Revised
Guidance. Thus, Appellant was sufficiently notified of the reasons for the
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rejection “together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application.”
35 U.S.C. § 132. Therefore, contrary to Appellant’s assertions, in doing so,
the Examiner set forth a prima facie case of unpatentability such that the
burden shifted to Appellant to demonstrate that the claims are patent-
eligible.
Furthermore, it is plainly evident that the Examiner considered all the
limitations in the claim and that the Examiner’s analysis is indeed tethered to
actual claim language. See Final Act. 5, 8. The Examiner condensed the
abstract concept to “classifying a candidate item listing as suspicious” (Final
Act. 7; Ans. 3), but this is simply a higher level of abstraction. Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (“An abstract idea
can generally be described at different levels of abstraction. As the Board
has done, the claimed abstract idea could be described as generating menus
on a computer, or generating a second menu from a first menu and sending
the second menu to another location. It could be described in other ways,
including, as indicated in the specification, taking orders from restaurant
customers on a computer.”)
Whichever way the Examiner described the concept, we do not see
that Appellant has adequately shown that claim 1 (or any of the other claims)
does not recite an abstract idea. Just because the claim includes more words
than the phrase the Examiner uses as an articulation of the abstract idea to
which he/she found the claim to recite is, by itself, an insufficient reason to
persuasively argue that claim 1 does not recite an abstract idea. Further, the
identified abstract idea need not encompass every claim limitation.
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Otherwise, there would be no need for step two of the Alice inquiry. See
Alice, 573 U.S. at 216.
Thus, for at least the reasons noted supra, we finding unavailing
Appellant’s contention that “the Examiner has not articulated what the
claims are directed to with enough specificity to ensure the step one inquiry
is meaningful” (Appeal Br. 21), given that the Examiner has at least equated
the claims with acts performable by a human user.
Additionally, we agree with the Examiner that the dependent claims
“are directed towards the same abstract idea (i.e., classifying suspicious item
listings) [and] [t]here are no additional limitations found in the dependent
claims that amount to significantly more that the identified abstract idea.”
Final Act. 9. Here, the dependent claims contain only limitations that recite
the identified abstract idea, and do not create any additional elements
beyond this abstract idea. Therefore, we disagree with the argument that the
Office Action fails to address the dependent claims. See Appeal Br. 22. Nor
does Appellant explain how the elements in the dependent claims recite
more than the abstract ideas. Id.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 1 recites an abstract idea, which we conclude is a
“mental process.”
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Step 2A—Prong 2 (integration into Practical Application) 2
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Here, we discern additional elements (or combination of elements)
recited in Appellant’s representative claim 1 that integrates the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55 (“Prong 2”).
For example, Appellant contends that “the claims herein are more like
DDR Holdings . . . because the claimed elements are particular in the way
they solve the Internet related challenge . . . a search engine promoting
improperly submitted listings.” Appeal Br. 29–30. We agree with
Appellant.
Specifically, Appellant’s Specification states:
As previously mentioned, e-commerce sites experience obstacles in
providing relevant search results because of certain item listings
including data or other features that improperly promote the item
listings for prominent inclusion in search results. One example of
such improper promotion includes a seller attempting to list the same
item for sale under multiple concurrent item listings in order to
increase the chances that the seller’s item will be included in search
results, as well as increase the number of times the seller’s item
appears in the search results. Although the multiple listings comprise
the same item for sale, the seller can attempt to distinguish their titles,

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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categories, descriptions, images, sale prices, seller account
information, and other attributes when creating the item listings in an
attempt to fool the e-commerce website into believing that the item
listings are for different items, and thus improperly flood the
marketplace with multiple listings for the same item.
Spec. ¶ 50.
Another example of improper promotion includes a seller including
misleading item-related data in the item listing in order to increase the
item listing’s seeming relevance to a search query and attractiveness
to potential buyers. The seller can include popular, but inaccurate or
misleading, keywords in the title or description of the item listing.
For example, the seller of a smartphone could include the phrase
“better than an iPhone” in the title or description of the
smartphone listing, even though the seller is not selling an iPhone®,
in an attempt to have the seller’s item listing be included in any search
results for a search query that includes “iPhone” in it.
Id. at 51. In other words, Appellant’s Specification describes a particular
Internet-centric problem, i.e., receiving irrelevant search results resulting
from improper promotion of items through misleading data in the item
listing, and a mechanism for improving the same.
Similarly, in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1259 (Fed. Cir. 2014), the subject claim was held patent-eligible because it
encompassed “an inventive concept” for resolving a “particular Internet-
centric problem.” Like DDR Holdings, we determine that Appellant’s
computer-implemented method (claim 1) provides a solution “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks.” DDR, 773 F.3d at 1257. In
particular, Appellant’s claims solve the aforementioned “challenge particular
to the Internet” as similarly considered by the court in DDR, 773 F.3d at
1256–57. Thus, we conclude Appellant’s claims are like the claim held
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patent-eligible by the court in DDR, in which the claimed invention was
directed to the “challenge of retaining control over the attention of the
customer in the context of the Internet,” such that:
Instead of the computer network operating in its normal, expected
manner by sending the website visitor to the third-party website that
appears to be connected with the clicked advertisement, the claimed
system generates and directs the visitor to the above-described hybrid
web page that presents product information from the third-party and
visual “look and feel” elements from the host website.
Id. at 1258–59. Thus, we agree with Appellant’s arguments that “the claims
herein are more like DDR Holdings” (App. Br. 29), given that a convincing
“inventive concept” for resolving a “particular Internet-centric problem” is
identified by Appellant.
For at least the reason noted supra, although claim 1 recites a judicial
exception, i.e., a mental process, claim 1 integrates that exception into a
practical application. Thus, representative claim 1 is not directed to the
aforementioned abstract idea.
Therefore, under the Revised Guidance Step 2A, Prong 2, the
Examiner has not properly considered whether additional elements in the
claims integrate the judicial exception into a practical application.
For the above reasons, the Examiner’s rejection of claims 1–20 under
35 U.S.C. § 101 is reversed.
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CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
1–20 § 101 1–20

REVERSED