eBay Inc.Download PDFPatent Trials and Appeals BoardJul 16, 20212021000468 (P.T.A.B. Jul. 16, 2021) Copy Citation 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. Appeal 2021-000468 Application 15/862,210 2 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). Appeal 2021-000468 Application 15/862,210 3 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. Appeal 2021-000468 Application 15/862,210 4 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 Appeal 2021-000468 Application 15/862,210 5 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 Appeal 2021-000468 Application 15/862,210 6 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. Appeal 2021-000468 Application 15/862,210 7 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 Appeal 2021-000468 Application 15/862,210 8 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). Appeal 2021-000468 Application 15/862,210 9 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. Appeal 2021-000468 Application 15/862,210 10 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 Appeal 2021-000468 Application 15/862,210 11 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 Appeal 2021-000468 Application 15/862,210 12 (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 Appeal 2021-000468 Application 15/862,210 13 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. Appeal 2021-000468 Application 15/862,210 14 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. Appeal 2021-000468 Application 15/862,210 15 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 Copy with citationCopy as parenthetical citation