eBay Inc.Download PDFPatent Trials and Appeals BoardOct 28, 20212021001763 (P.T.A.B. Oct. 28, 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. 14/135,275 12/19/2013 Tyler James Hale 2043.C56US1 7227 49845 7590 10/28/2021 SCHWEGMAN LUNDBERG & WOESSNER/EBAY P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER MILLER, BRITTNEY N ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 10/28/2021 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): SLW@blackhillsip.com USPTO@SLWIP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TYLER JAMES HALE, NISHANT ASTHANA, MICHAEL J. BARNES, GAYATHRI RAVICHANDRAN GEETHA, EUGENE LEWIS GUNTER, SEYED-MAHDI PEDRAMRAZI, MUNAWAR SAEED, KHUSHWANT SINGH, GREGORY TARIFF, and SACHIN TILLOO ____________ Appeal 2021-001763 Application 14/135,275 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JAMES P. CALVE, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1–3, 17, 21–23, 28, 29, 31–33 and 41–43. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. Appeal 2021-001763 Application 14/135,275 2 THE INVENTION Appellant claims a system and method for processing data and more specifically generating recommendations. (Spec. ¶ 2, Title). Claim 1 is representative of the subject matter on appeal. 1. A method comprising: accessing, by one or more hardware-implemented processors, a set of records in an item database corresponding to a set of items owned by a user and included in an inventory of the user; accessing, by the one or more hardware-implemented processors, information about past events that impacted a value of an additional item in an online marketplace, the additional item identified as being related to a particular item of the set of items based on a version or brand of the additional item in comparison to a version or brand of the particular item; accessing, by the one or more hardware-implemented processors, information about an expected future event pertaining to the particular item that is expected to occur on a future date, the expected future event pertaining to a replacement of the particular item; correlating, by the one or more hardware-implemented processors, the information about the expected future event with the information about the past events pertaining to a replacement of the additional item; determining, by the one or more hardware-implemented processors, that the expected future event is likely to have a negative impact on a value of the particular item based on the correlation of the information about the expected future event with the information about the past events; and based on determining that the expected future event is likely to have the negative impact on the value of the particular item creating, by the one or more hardware-implemented processors, a listing for the particular item, the creating performed automatically without intervention by the user or the creating performed in response to a detecting of an activation of an interactive element displayed on a user interface for managing the inventory of the user, the interactive element being included Appeal 2021-001763 Application 14/135,275 3 and made operable in the user interface alongside a recommendation to place the particular item for sale before the future date of the expected future event. THE REJECTION Claims 1–3, 17, 21–23, 28, 29, 31–33 and 41–43 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more.1 ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1–3, 17, 21–23, 28, 29, 31–33 and 41–43 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, 217–18 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)) (citations omitted). 1 The rejections under 35 U.S.C. §§ 112 (b) and 103 have been withdrawn. (Final Act. 12; Ans. 3). Appeal 2021-001763 Application 14/135,275 4 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., 790 F.3d 1343, 1346 (Fed. Cir. 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 Fed. Reg. 50, pp. 50–57 (Jan. 7, 2019) (“Guidance”). The Examiner determines that the claims are directed to the concept of generating a recommendation that an item be sold before a future date which falls within the certain methods of organizing human activity grouping of abstract ideas because they recite fundamental economic practices, commercial interactions and managing personal behavior. (Final Act. 5). The Examiner finds the additional elements are described at a high level in the Specification without any meaningful detail about their structure or configuration and therefore these limitations are not sufficient to integrate the abstract idea into a practical application. (Id. at 5). The Examiner further finds that although additional computer related elements are recited, these elements are recited to further define the field of use of the abstract Appeal 2021-001763 Application 14/135,275 5 idea, therein attempting to generally link the use of the abstract idea to a particular technological environment such as the Internet or the computing network. The Specification discloses a method and system to generate recommendations of a user to sell an item. (Spec. ¶¶ 27, 62). The recommendation to sell an item is based on the determination that an expected future event is likely to have a negative impact on the value of the item. (Spec. ¶ 62). We thus agree with the Examiner’s findings that the claims are directed to generating a recommendation that an item be sold before a future date. As this activity involves whether a person sells an item, claim 1, for example, falls within the certain methods of organizing human activity grouping of abstract ideas because the concept of selling an item is a fundamental economic practice. Also, we find the steps of “accessing . . . an item database,” “accessing . . . information about past events,” “accessing . . . information about an expected future event,” “correlating . . . information about the expected future event with the information about past events,” “determining . . . that the expected future event is likely to have a negative impact on a value of the particular item,” and “creating . . . a listing for the particular item” constitute “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the 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 Appeal 2021-001763 Application 14/135,275 6 ideas). Thus, we find that the claims recite the abstract idea of a certain method of organizing human activity and in the alternative, a mental process. Turning to the second prong of the “directed to test,” claim 1 requires a “database” “processors,” and a “user interface.” 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, 84 Fed. Reg. at 54. We find no indication in the Specification, nor does Appellant direct us to any indication, that the operations recited in independent 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 affects 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 judicial exceptions into a “practical application,” as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg. at 55. Appeal 2021-001763 Application 14/135,275 7 In this regard, the recitation does not affect an improvement in the functioning of the hardware recited in claim 1, i.e. the processors, database and user interface 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 judicial exceptions that are not integrated into a practical application and thus is directed to “abstract ideas.” Turning to the second step of the Alice analysis, because we find that claim 1 is directed to abstract ideas, claim 1 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 elements like processors, a user interface and a database into the claim 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 ubiquity of computers, wholly generic computer implementation is not Appeal 2021-001763 Application 14/135,275 8 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 here 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 elements 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 a generic computer 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) (citation omitted). Considered as an ordered combination, the computer elements of Appellant’s claim 1 add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- Appeal 2021-001763 Application 14/135,275 9 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, the database or the user interface. As we stated above, claim 1 does not affect an improvement in any other technology or technical field. In fact, 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. ¶¶ 38, 115– 116). Thus, claim 1 at issue amounts to nothing significantly more than instructions to apply the abstract idea of information access using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 226. We have reviewed all the arguments (Appeal Br. 10–17) 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 Appeal 2021-001763 Application 14/135,275 10 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 has oversimplified the claims because the claims include additional elements/limitations that go beyond the Examiner’s alleged concept including elements pertaining to how it is determined whether a new listing for the particular item is created. (Appeal Br. 11). Appellant’s argument is not persuasive at least because there is no requirement that the Examiner’s formulation of the abstract idea copy the claim language. The Examiner’s characterization here, moreover, is fully consistent with the Specification, as discussed above. That claim 1 includes more words than the phrase the Examiner used to articulate the abstract idea to which the claim is directed is an insufficient basis to persuasively argue that the claim language has been mischaracterized or that the Examiner has otherwise failed to consider all of the limitations of the claim. See 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. We are not persuaded of error on the part of the Examiner by Appellant’s arguments that the Examiner did not explain how the alleged abstract concept recited in the claims corresponds to the groupings in the Guidance and that the claims are not directed to the grouping of a certain method of organizing human activity. We agree with the Examiner’s Appeal 2021-001763 Application 14/135,275 11 response to this rejection found on pages 4–5 of the Answer and adopt same as our own. Specifically, we agree that the Examiner properly identified the judicial exception recited in the claims on page 5 of the Final Action. In addition, as we discuss above, the recited concept of generating recommendations clearly relates to sales activity and thus falls clearly in the grouping of certain methods of organizing human activity. Further, as we discussed above, claim 1 also recites a mental process so even if the Appellant were correct claim 1 would still recite a judicial exception. We do not agree with the Appellant that the Examiner did not identify all the additional elements that go beyond the abstract idea. (Appeal Br. 12). Specifically, Appellant directs our attention to the recitations of “generating a recommendation that an item be sold before a future data,” “determining a criterion for creating a listing for a particular item. . .,” and “based on the criterion being met, performing the creating of the listing for the particular item . . . .” as being recitations that go beyond generating a recommendation. Id. The difficulty with Appellant’s argument is that these limitations are part of the abstract idea itself of generating a recommendation that an item be sold before a future date; they are not additional elements to be considered when determining whether the claims include additional elements or a combination of elements that is sufficient to amount to significantly more than the judicial exception. We are not persuaded of error on the part of the Examiner by Appellant’s argument, relying on Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), that the specifically recited user interface, which includes conditions under which a user interface element is made operable alongside a recommendation in a Appeal 2021-001763 Application 14/135,275 12 relevant time frame, improves the functioning of a computer. (Appeal Br. 14). We do not consider claim 1 to improve the functioning of the computer of any other technology as were the claims in Core Wireless. In Core Wireless the court held that claims which recited an interface were patent eligible as the claims recited specific limitations of the interface such as: an application summary that can be reached through a menu, the data being in a list and being selectable to launch an application, and additional limitations directed to the actual user interface displayed and how it functions. Core Wireless, 880 F.3d at 1363. The court found that the claims were directed to an improved user interface and not the abstract concept of an index as the claim “limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods to display a generic index on a computer.” Id. Claim 1, here, does not recite an improved user interface. In fact, the Specification discloses that the user device on which the user interface is contained may be a generic computer such as a desktop computer, a tablet computer, a vehicle computer, a navigational device, a portable media device or a smart phone thereby disclosing that the user interface on the user device is not an improved user interface. We are not persuaded of error on the part of the Examiner by Appellant’s argument that the Examiner erred by failing to provide evidence consistent to establish that the additional elements are well-understood, routine and conventional at the time of Appellant’s filing. Appellant cannot reasonably contend, nor does Appellant contend, that there is a genuine issue of material fact regarding whether the operation of the processor, user interface and database which are part of a generic computer are well- Appeal 2021-001763 Application 14/135,275 13 understood, routine, or conventional, where, as here, there is nothing in the Specification to indicate that the operations recited in claim 1 require any specialized hardware or inventive computer components or that the claimed invention is implemented using other than generic computer components to perform generic computer functions, e.g., receiving, transmitting, and processing information. Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been defended as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.” Berkheimer v. HP Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (citations omitted); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract features of the claimed inventions, alone or in combination, are not well-understood, routine and conventional database structures and activities. Accordingly, the district court did not err in determining that the asserted claims lack an inventive concept.”). In any case, the Specification itself is intrinsic evidence that the computer components and their functions are well– understood, conventional and routine by disclosing that these components are part of a general purpose computer such as a desktop computer or a laptop. In view of the foregoing, we will sustain this rejection as it is directed to claim 1. We will also sustain the rejection as it is directed to claims 17 and 21 because the Appellant does not argue the separate eligibility of these claims. Appeal 2021-001763 Application 14/135,275 14 Appellant argues that the Examiner erred by not analyzing the dependent claims individually. (Appeal Br. 17). We do not agree with Appellant that it is necessary to make a claim-by-claim analysis of each claim. Consideration of each claim individually does not require a separate written analysis for each individual claim. We decline to find error here in the Examiner’s decision to not address the patent eligibility of each of claims 2, 3, 22, 23, 28, 29, 31–33 and 41–43 separately inasmuch as the claims are all directed to the same abstract idea. See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining that when all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary”). We agree with the Examiner’s response to this argument found on pages 9–10 and adopt same as our own. In addition, we note that the Examiner addresses the eligibility of these claims on pages 7–8 in the Final Action. In view of the foregoing, we will sustain the rejection as it is directed to the dependent claims. CONCLUSION OF LAW We conclude the Examiner did not err in rejecting claims 1–3, 17, 21– 23, 28, 29, 31–33 and 41–43 under 35 U.S.C. § 101. Appeal 2021-001763 Application 14/135,275 15 DECISION SUMMARY The decision of the Examiner to reject claims 1–3, 17, 21–23, 28, 29, 31–33 and 41–43 is affirmed. Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 17, 21–23, 28, 29, 31–33, 41–43 101 Eligibility 1–3, 17, 21– 23, 28, 29, 31–33, 41–43 TIME PERIOD FOR RESPONSE 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