eBay Inc.

Patent Trials and Appeals Board

Jan 6, 2022

2021002227 (P.T.A.B. Jan. 6, 2022)

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. 15/680,715 08/18/2017 Ye Chen IP-P1066US2/283444 4956 150601 7590 01/06/2022 eBay Inc. Shook, Hardy & Bacon L.L.P. Intellectual Property Department 2555 Grand Blvd. KANSAS CITY, MO 64108-2613 EXAMINER OUELLETTE, JONATHAN P ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 01/06/2022 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 YE CHEN and JOHN CANNY ____________ Appeal 2021-002227 Application 15/680,715 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and KENNETH G. SCHOPFER, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 2 to 21. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies eBay, Inc. as the real party in interest (Appeal Br. 3). Appeal 2021-002227 Application 15/680,715 2 THE INVENTION Appellant claims a method for processing data and more specifically systems and methods involving “probabilistic recommendation of an item” (Spec. ¶ 2, Title). Claim 2 is representative of the subject matter on appeal. 2. A system comprising: one or more hardware processors; and a memory storing instructions that, when executed by the one or more hardware processors, cause the one or more hardware processors to perform operations comprising: accessing, from a database, data pertinent to a first plurality of items representing a first product, the data including an event record representative of a first event type applicable to the first product; calculating, based on the data, a probability of co-occurrence of the first event type with a second event type, the second event type pertaining to a second product represented by a second plurality of items, the second plurality of items including an item to be recommended, the calculating comprising generating a matrix of co-occurrences based on the data; identifying the item to be recommended based on the probability of co-occurrence; and causing presentation of a recommendation of the item. THE REJECTIONS Claims 2-21 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 9,760,802. Appeal 2021-002227 Application 15/680,715 3 ANALYSIS 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 2-21 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) (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). 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 specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” 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. 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. Appeal 2021-002227 Application 15/680,715 4 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, 57 (Jan. 7, 2019) (“Guidance”). The Examiner determines that the claims are directed to recommending items to users (Final Act. 3). The Examiner finds that the claimed elements are equivalent to the enumerated abstract idea groups of mathematical concepts, certain methods of organizing human activities, and mental processes (id. at 4). The Examiner finds that the judicial exceptions are not integrated into a practical application because the elements in addition to the abstract idea are generic computer elements that do not add a meaningful limitation to the judicial exception. The Examiner also finds that the claims do not include significantly more than the abstract ideas because the additional elements are recitations of generic computer structure which serves to perform generic computer functions such as receiving, processing, storing, and transmitting/displaying data (id. at 4-5). The Examiner further finds that the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, meaningful limitations beyond generally linking the use of the abstract idea on a computer or require more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional (id). The Specification discloses that the invention relates generally to the processing of data and, more specifically, addresses systems and methods involving probabilistic recommendation of an item (Spec. ¶ 2). Appeal 2021-002227 Application 15/680,715 5 Consistent with this disclosure, claim 2, for example, recites “accessing . . . data pertinent to a first plurality of items representing a first product, the data including an event record,” “calculating . . . a probability of co-occurrence of the first event type with a second event type,” “identifying the item to be recommended based on the probability of co-occurrence,” and “causing presentation of a recommendation of the item.” We thus agree with the Examiner’s findings that the claims are directed to a method of recommending items to users. Controlling the behavior of persons concerning making and receiving recommendations for items is a method of organizing human behavior, which is not eligible subject matter. See Alice, 573 U.S. at 218-19. Also, we find the steps of “storing instructions,” “accessing . . . data,” “calculating . . . a probability,” and “identifying the 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 ideas). We also agree that because claim 2 recites calculating a probability that claim 2 recites a mathematical concept. Thus, we determine that claim 2 recites the abstract ideas of methods of organizing human activity and in the alternative, a mental process and a mathematical concept. Turning to the second prong of the “directed to test,” claim 2 requires a “processor” and a “database.” These recitations do not impose “a Appeal 2021-002227 Application 15/680,715 6 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 53. We find no indication in the Specification, nor does Appellant directs us to any indication, that the operations recited in claim 2 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. at 55. In this regard, the recitations do not effect an improvement in the functioning of a processor or database, do not recite a particular machine or manufacture that is integral to the claims, and do not transform or reduce a particular article to a different state or thing. Id. Thus, claim 2 recites judicial exceptions that are not integrated into a practical application and, thus, claim 2 is directed to “abstract ideas.” Appeal 2021-002227 Application 15/680,715 7 Turning to the second step of the Alice analysis, because we find that the claim 2 is directed to an abstract idea, the claim 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 (quoting Mayo, 566 U.S. at 72-73). The introduction of a computers and computer components into the claims 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 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 2 here does more than simply instruct the practitioner to implement the abstract ideas on a generic computer. Id. at 225. It does not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify Appeal 2021-002227 Application 15/680,715 8 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. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); 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, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claim 2 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) Appeal 2021-002227 Application 15/680,715 9 (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. Claim 2 does not, for example, purport to improve the functioning of the computer itself. As we stated above, the claim 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 recommending items to users. (see, e.g., Spec. ¶¶ 178-181). Thus, claim 2 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. 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 claims do not recite a mathematical concept (Appeal Br. 7). In Appellant’s view, the claims do not recite any mathematical concept, nor has the Examiner pointed to any particular limitation in the claims that recites a mathematical concept. The title of the invention “Probabilistic Recommendation of an Item” indicates that the invention is based on a mathematical concept of making Appeal 2021-002227 Application 15/680,715 10 recommendations and claim 2 recites that this calculation is based on generating a matrix of co-occurrence based on data. The crux of the invention is making recommendations based on calculations and thus according to the Guidance, the claims recite a mathematical concept. Guidance, 84 Fed. Reg. at 52. We also find unpersuasive Appellant’s argument that the claims do not recite a method of organizing human activity because the claims do not recite any commercial or legal interaction (Appeal Br. 7). We do not understand this argument because the claims are clearly directed to recommending items for sale. In this regard, the Specification discusses that the problem the invention is seeking to solve is the problem which exists in various online marketplaces that an item available for sale may be available only temporarily (Spec. ¶ 18). As such, the invention is a method to recommend items in an online marketplace and clearly relates to sales activity and thus commercial interactions (id. ¶ 23). We also are not persuaded of error on the part of the Examiner by Appellant’s argument that the claims do not recite a mental process because the claimed embodiments are implemented in the context of computer processes and cannot be performed within the human mind (Appeal Br. 8). Although, the steps recited by independent claim 2 are performed by a processor, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson [409 U.S. 63].”); see also In re Appeal 2021-002227 Application 15/680,715 11 Salwan, 681 F. App’x 938, 941 (Fed. Cir. 2017) (claims for organizing patient health information, transferring patient health information to a patient network, and billing insurance companies held patent-ineligible). We are not persuaded of error on the part of the Examiner by Appellant’s argument that the claimed invention provides an improvement to recommender systems (Appeal Br. 8-9). Specifically, Appellant argues that providing recommendations for volatile items (items that have only sparse description data) presents challenges for conventional recommender systems because the conventional systems use structured data and historical transaction information for individual items. When that information is not available, the conventional recommender systems fail to be able to provide recommendations for the volatile items (id. at 9-10). The claims solve this problem by providing a recommender system that is configured to group items into clusters representative of a product so that the collective data for all items in a cluster can be used to address the issue of single items having unstructured and/or sparse data. However, this is not an improvement to the processors or database but rather an improvement in how recommendations are made, which is the abstract idea itself. “[I]t has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Moreover, “[n]o matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non- abstract application realm.” SAP Am. Inc., 898 F.3d at 1163; see also id. at 1168. Appeal 2021-002227 Application 15/680,715 12 Appellant argues that the claims recite a combination of elements that are not well understood, routine, and conventional and that the Examiner has failed to provide evidence that the combination of elements recited in the claims is well understood, routine, and conventional (Appeal Br. 12-13). The Appellant directs our attention to the accessing and calculating steps. These steps, however, are part of the abstract idea of recommending items to users. The analysis of whether the claim recites well-understood, routine, and conventional elements is directed to the additional elements. Guidance, 84 Fed. Reg. at 56. The additional elements of claim 2 are the processors and the database because they are recitations in addition to steps performed in recommending items to users. This argument fails because it is not directed to the processor and database. We note that the Specification itself is evidence that the additional elements of the processors and databases are well understood, routine, and conventional by disclosing that the processors may be personal computers, laptops, notebook, etc., and that the database may be a RAM, ROM, a flash memory, etc. (Spec. ¶¶ 178-181). In view of the foregoing, we will sustain the Examiner’s rejection of claim 2. We will also sustain the rejection as it is directed to the remaining claims because Appellant has not argued the separate eligibility of these claims. NONSTATUTORY DOUBLE PATENTING REJECTION Appellant does not address this rejection. Therefore, we summarily sustain this rejection. Appeal 2021-002227 Application 15/680,715 13 CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 2-21 under 35 U.S.C. § 101. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 2-21 101 Eligibility 2-21 2-21 Nonstatutory Double Patenting, US 9,760,802 2-21 Overall Outcome 2-21 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