eBay Inc.

Patent Trials and Appeals Board

Jul 16, 2021

2021000468 (P.T.A.B. Jul. 16, 2021)

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.
15/862,210 01/04/2018 Jean-David Ruvini IP-P1865US2/
EBAY.285841
8359
150601 7590 07/16/2021
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
Intellectual Property Department
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
EXAMINER
DESAI, RESHA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07/16/2021 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):
shbdocketing@shb.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEAN-DAVID RUVINI
____________

Appeal 2021-000468
Application 15/862,210
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claims a system and method for performing image searches
in a network-based publication system. (Spec. ¶ 2, Title).

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real parties in interest as eBay, Inc. Appeal
Brief dated July 14 2020 (“Appeal Br.”) 1.
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Claim 1 is representative of the subject matter on appeal.
1. One or more non-transitory computer storage media storing
instructions that, when used by one or more processors, cause the one or
more processors to perform operations comprising: receiving a first image of
an item from a client device;

identifying a user of a network-based publication system;

constraining an image search corpus to a collection of images of items
purchased by associated with the user from the network-based publication
system;

identifying the item by querying the constrained image search corpus
using the first image to identify a second image in the image search corpus;
and

providing, to the client device, information of one or more items
offered for purchase on the network-based publication system that
correspond to the identified item.

THE REJECTIONS
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1-20 are rejected under nonstatutory double patenting as being
unpatentable over claims 14-20 of U.S. Patent 9,892,447.
Claims 1–20 are rejected under 35 U.S.C. § 103 as being unpatentable
over Yuan et al. (US 2009/0319388 Al; published Dec. 24, 2009) in view of
Mobberley (US 2014/0095289 Al; published Apr. 3, 2014).

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ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1–20 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that
claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . . determine
whether the claims at issue are directed to one of
those patent-ineligible concepts. . . . If so, . . . then
ask, “[w]hat else is there in the claims before us?” .
. . To answer that question, . . . consider the elements
of each claim both individually and “as an ordered
combination” to determine whether the additional
elements “transform the nature of the claim” into a
patent-eligible application. . . . [The Court]
described step two of this analysis 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 Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
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2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
In so doing, we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, pp. 50–57 (Jan. 7, 2019) (”Guidance”).
The Examiner determines that the claims are directed to searching for
an item to purchase which is a certain method of organizing human activity
because it is a sales activity (Final Act. 5). The Examiner also determines
that the claims recite a mental process. The Examiner finds that the claims
recite the following additional elements: one or more computer storage
media, one or more processors, a client device and a network-based
publication system. The Examiner further finds that the additional elements
individually and in combination do not integrate the exception into a
practical application or amount to significantly more than the abstract idea
recited because the additional elements do no more than generally link the
use of the judicial exception to a particular technological environment or
field of use and thus do not impose any meaningful limits on practicing the
abstract idea. (Id. at 5).
The Specification discloses that general merchandizing of items for
sale via a network-based merchandising or publication system is well
known. Websites allow users to purchase items that may be physical items,
electronic data items or services. (Spec. ¶ 3). The present invention relates
to methods and systems to perform image searches in a network-based
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publication system such as image searches for items available for purchase
via the network-based publication system. (Spec. ¶ 12). The methods and
systems receive an image of an item, identify a purchaser, owner and/or user
associated with the item in the image, query, using the image, a collection of
images whose contents include items associated with the purchaser and
offered for purchase for a network-based publication system and match the
item in the image to one or more of the items offered for purchase based on
a result of the query. (Spec. ¶ 14). As such, we find that the Specification
supports the Examiner’s finding that the claims recite method and systems
that relate to sales activity.
Consistent with this disclosure, claim 1 recites “identifying a user of a
network-based publication system,” “contraining an image search corpus,”
“identifying the item by querying the constrained image search corpus,”
“providing . . . information of one or more items offered for purchase .”
We thus agree with the Examiner’s findings that claim 1 is directed to
controlling the behavior of persons concerning sales activity. It follows
from prior Supreme Court cases, and Gottschalk v. Benson, 409 U.S. 63
(1972), in particular, that claim 1 at issue here is directed to an abstract idea.
Controlling the behavior of persons concerning sales activity is a certain
method of organizing human behavior, which is not patentable subject
matter. See Alice, 573 U.S. 208 at 217–18.
Also, we find the steps of “identifying a user,” “constraining an
image search corpus to a collection of images of items purchased,”
“identifying the item,” “providing . . . information” constitute “analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
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abstract-idea category.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (claims directed to certain arrangements
involving contractual relations are directed to abstract ideas). Thus, we
agree with the Examiner that the claims recite an abstract idea of methods of
organizing human activity and in the alternative a mental process.
Turning to the second prong of the “directed to test,” claim 1 requires
one or more processors and a client device. These recitations do not impose
“a meaningful limit on the judicial exception, such that the claim is more
than a drafting effort designed to monopolize the judicial exception.”
Guidance at 52. We find no indication in the Specification, nor do
Appellant directs us to any indication, that the operations recited in claim 1
invoke any inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
(“[A]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
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at 55.
In this regard, the recitation does not affect an improvement in the
functioning of a processors or the client device or other technology, does not
recite a particular machine or manufacture that is integral to the claims, and
does not transform or reduce a particular article to a different state or thing.
Id. Thus, claim 1 recites a judicial exception that is not integrated into a
practical application and thus is an “abstract idea.”
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, the claims must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself. See Alice, 573
U.S. at 217–18 (alteration in original) (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of computer components into claim 1 does not alter
the analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer” simply
combines those two steps, with the same deficient
result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an
abstract idea “on . . . a computer,” that addition
cannot impart patent eligibility. This conclusion
accords with the preemption concern that
undergirds our § 101 jurisprudence. Given the
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ubiquity of computers, wholly generic computer
implementation is not generally the sort of
“additional featur[e]” that provides any “practical
assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea]
itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether [claim 1] does more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. It does not.
Taking the claim elements separately, the function performed by the
computer components at each step of the process is purely conventional.
Using a computer to retrieve, select, and apply decision criteria to data and
modify the data as a result amounts to electronic data query and retrieval—
one of the most basic functions of a computer. All of these computer
functions are well-understood, routine, conventional activities previously
known to the trading industry. See Elec. Power Grp., 830 F.3d at 1354; 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”). In short,
each step does no more than require generic computer components to
perform generic computer functions. As to the data operated upon, “even if
a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d
1016, 1022 (Fed. Cir. 2018).
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Considered as an ordered combination, the processors and client
device of Appellant’s claim 1 add nothing that is not already present when
the steps are considered separately. The sequence of data reception-
analysis-access/display is equally generic and conventional or otherwise
held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction),
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (holding that sequence of data retrieval, analysis,
modification, generation, display, and transmission was abstract), Two-Way
Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed.
Cir. 2017) (holding sequence of processing, routing, controlling, and
monitoring was abstract). The ordering of the steps is, therefore, ordinary
and conventional.
Claim 1 does not, for example, purport to improve the functioning of
the processors or the client device. As we stated above, claim 1 does not
affect an improvement in any other technology or technical field. The
Specification spells out different generic equipment and parameters that
might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of information
access under different scenarios. (See, e.g., Spec. ¶¶ 64–65). Thus, claim 1
at issue amounts to nothing significantly more than instructions to apply the
abstract idea of information access using some unspecified, generic
computers. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226.
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We have reviewed all the arguments (Appeal Br. 5–14). Appellant
has submitted concerning the patent eligibility of the claims before us that
stand rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of emphasis, we will address various arguments in
order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner seems to imply that simply because
the end result of the claim relates to providing information about items for
sale, then every single step leading up to this result must also be an abstract
component of sales activity. (Appeals Br. 6). Appellant further argues that
the Examiner has not established that the constraining step and the
identifying steps are steps of sales activity. We do not agree with Appellant.
We agree with the Examiner’s response to this argument found on pages 4 to
6 of the Answer and adopt same as our own. Specifically, we agree that the
constraining and identifying steps are performed in order to provide the
identified item to purchase.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims do not recite a method that can be
practically done in the human mind. (Appeal Br. 7). Appellant specifically
argues that there is no way for a human, using their mind alone, to constrain
information and then identify information only from the constrained portion.
We agree with the Examiner’s response to this argument found on pages 5–6
of the Answer and adopt same as our own. In this regard, we agree that a
human can organize a group of images into a smaller group based on a
category (constraining image search corpus) and then evaluate (identify) an
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image to see if it matches the group. Therefore, the human mind can in fact
do the constraining and identifying steps. Appellant further argues that the
human mind cannot mentally exclude certain information from consideration
without actually considering the information that person is mentally
excluding. As explained by the Examiner on page 5 of the Answer, a
collection of images (the search corpus) can encompass just two images and
it is reasonable that a human mind alone or with the aid of a pen and paper
can practically search a collection of two images.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims integrate any judicial exception recited
into a practical application. (Appeal Br. 9). Appellant argues that since the
image search corpus is constrained to a collection of images of items
purchased by a particular user only the collection of images is searched
rather than the entire image search corpus and thus fast, effective
identification of items is available.
However, claim 1 is “focused on providing information . . . , not on
improving computers or technology.” See Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). The purported advance is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions. We note that in cases involving software
innovations, such as we have here, the inquiry as to whether the claims are
directed to an abstract idea “often turns on whether the claims focus on ‘the
specific asserted improvement in computer capabilities . . . or, instead, on a
process that qualifies as an “abstract idea” for which computers are invoked
merely as a tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303
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(Fed. Cir. 2018) (quoting Enfish, 822 F.3d at 1335–36). Here, the recited
processors and the client device are invoked merely as tools. The asserted
improvement is to how items are identified i.e. by the search corpus being
constrained before any searching is done. This is an improvement to how
the search is conducted or an improvement to the identified judicial
exception of searching for an item to purchase.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the Examiner erred by not applying the
Berkheimer analysis to the constraining and identifying steps. As we
explained above, the constraining and identifying steps are part of the
abstract idea of searching for an item to purchase which is a certain method
of organizing human activity and a mental process and as such the Examiner
correctly did not consider these steps to be additional elements needing
analysis to determine whether they were well understood, conventional and
routine. The Examiner correctly identified the recited processors and the
client device as additional elements and analyzed these elements to
determine whether they were well-understood, conventional and routine.
(Final Act. 6).
In view of the foregoing, we will sustain this rejection as it is directed
to claim 1. We will also sustain this rejection as it is directed to the
remaining claims because Appellant has not argued the separate eligibility of
these claims.
DOUBLE PATENTING REJECTION
Appellant does appeal this rejection. Therefore, this rejection is
summarily sustained.
35 U.S.C. § 103(A) REJECTION
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We are not persuaded of error on the part of the Examiner by
Appellant’s argument that nowhere in Yaun is constraining the database of
pre-analyzed images and then comparing images within the constrained
portion described. Appellant argues that in Yaun the database of images is
never constrained so that the image comparison is only being performed on a
constrained portion.
We find that Yaun discloses that a user initially identifies an item she
wants to purchase. The mobile device of the user then can capture the image
of the item and transmit the image to a server for analysis. (Yuan ¶ 22–23).
The server identifies what the image is. Other images of the same or similar
items that have been previously accessed by the system are identified. The
feature points of the previously stored images can be used by the system to
find the closest match to the item sought to be purchased. As such, the
system in Yuan searches a group of other images that are the same or similar
to the item sought for purchase for matches. The images that are searched
have been constrained to only the images in the system that have similar
feature points. Yuan discloses at paragraph 72:
The process 320 then compares (box 326) the image
to an image library. For example, the image of the cupcake
can match an East End Chocolate Stout cupcake from Dozen
Cupcakes in Pittsburgh. The image can also match a cookies-
and-crème cupcake from Coco's Cupcakes in Pittsburgh. In
other implementations, comparisons can be determined
through a naming filter. For example, if the image file has a
name, such as "cupcake", the image library can be filtered to
images having cupcakes in them. More likely, because various
cupcakes are not very distinct form each other, the image
could simply match an image associated with the tag "chocolate
cupcake" or "lemon cupcake” or the like, and not a particular
brand of cupcake.
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The Examiner explains:

As further explained in paragraph [0072] and illustrated in Fig.
3B of Yuan, the received image (box 322) is analyzed to
identify feature points (box 324). The featured points can then
be compared to a portion of the image library through a filter
(box 326), where the image is compared to "a collection of
images" having cupcakes in them. The identified tags of Yuan
are used to search/filter the images of the database, thereby
constraining the images within a database in order to perform
the comparison to only a constrained portion.

Ans. 10–11.

We agree with the Examiner and find that Yuan does describe
“constraining an image search corpus.”
In view of the foregoing, we will sustain this rejection as it is directed
to claim 1. We will sustain this rejection as it is directed to the remaining
claims because Appellant has not argued the separate patentability of these
claims.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–20
under 35 U.S.C. § 101.
We conclude the Examiner did not err in rejecting claims 1–20
under non-obvious double patenting.
We conclude the Examiner did not err in rejecting claims 1–20
under 35 U.S.C. § 103.

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CONCLUSION
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 Non-statutory
double patenting
1–20
1–20 103 Yuan, Mobberley 1–20
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED