Edwin Voskamp et al.

Patent Trials and Appeals Board

Aug 30, 2019

13683453 - (D) (P.T.A.B. Aug. 30, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/683,453 11/21/2012 Edwin Voskamp 25396-0209 5367
126647 7590 08/30/2019
Eversheds Sutherland (US) LLP Am
999 Peachtree Street, NW
Suite 2300
Atlanta, GA 30309
EXAMINER
PALAVECINO, KATHLEEN GAGE
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/30/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket@eversheds-sutherland.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EDWIN VOSKAMP, MICHAEL JOHN WARNING, and
KUNAL MEHROTRA
____________________

Appeal 2018-006824
Application 13/683,4531
Technology Center 3600
____________________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

BENNETT, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 3–8. Claims 1, 2, and 9–23 are cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants’ Brief (“App. Br.”) identifies Amazon Technologies, Inc. as the
real party in interest. App. Br. 2.
Appeal 2018-006824
Application 13/683,453

2
CLAIMED SUBJECT MATTER
The claims are directed to systems and methods for using a directed
graph to identify items related to a purchased item. Claim 3, reproduced
below, is representative of the claimed subject matter:
3. A system, comprising:
at least one memory that stores computer-executable
instructions and a user history comprising purchased items;
at least one processor configured to access the at least one
memory and execute the computer-executable instructions to:
generate a hierarchy of interconnected nodes, the
hierarchy being based, at least in part, on a plurality of genre of
items, and wherein a first node included in the hierarchy of
interconnected nodes is representative of a first genre, and where
a predefined distance between the first node and a second node
is indicative of at least one of similarity or relatedness of items
in the first genre;
generate a directed graph using the hierarchy of
interconnected nodes, wherein the system uses the directed graph
for searching of child nodes via identification of top level nodes;
determine, using the directed graph, that the first node is
representative of at least one purchased item within the hierarchy
of interconnected nodes;
determine, using the directed graph, that a first offered
item is the at least one purchased item in the first node;
determine, using the directed graph, a number of items
assigned to the first node within the predefined distance;
determine a browsed ratio for the first node, the browsed
ratio comprising a quantity of browsed items relative to the
number of items assigned to the first node;
determine a ranking for the first node, the ranking based,
at least in part, on the at least one purchased item, the browsed
ratio, and offered items associated with the first node, the offered
items being within the predefined distance from the first node;
select the first node based, at least in part, on the ranking;
and
Appeal 2018-006824
Application 13/683,453

3
send an indication to a user device of at least one selected
item from the offered items associated with the first node; and
update a number of indications associated with the first
node at the directed graph.
App. Br. 15–16 (Claims Appendix).

REJECTION
Claims 3–8 stand rejected under 35 U.S.C. § 101 as being directed to
ineligible subject matter. Final Act. 3.

ANALYSIS
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court instructs us
to “first determine whether the claims at issue are directed to a patent-
ineligible concept,” id. at 218, and, in this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which we “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.” Id. (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court describes
the second step 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.’” Id. (quoting Mayo, 566 U.S. at 72–73).
Appeal 2018-006824
Application 13/683,453

4
The USPTO has published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 52.
Examiner’s Determinations and Conclusion
In the first step of the Alice inquiry, the Examiner determines the
claims recite an abstract idea. Final Act. 4. More specifically, the Examiner
determines that the “generat[ing],” “determin[ing],” and “select[ing]”
limitations are similar to those found abstract in Versata Dev. Grp., Inc. v.
SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015), and also that these
Appeal 2018-006824
Application 13/683,453

5
limitations recite “steps that are performable by a human user (either
mentally or using pen and paper).” Final Act. 4.
At Alice step 2, the Examiner identifies the additional elements recited
in the claim. Final Act. 4 (“[T]he Examiner first acknowledges the
recitation of various additional elements within the claim (a memory,
processor, user device).”) The Examiner finds, however, that “[w]hile
additional elements are presented in the claim, the additional elements do
not amount to ‘significantly more’ under Step 2B . . . because the additional
elements are merely recited in a generic manner and operate using well-
understood, routine and conventional functions.” Final Act. 4–5. The
Examiner finds that “claim 3 parallels Ultramercial in that claim 3 broadly
and generically claims use of generic computer components to perform the
recited functions and merely attempts to restrict use of the claimed abstract
idea to a particular technological environment.” Final Act. 5 (emphasis
omitted).
Appellants’ Contentions
Appellants argue the claims are not directed to an abstract idea
because the invention increases efficiency, solves a technical problem and
improves a technological process. App. Br. 7–8. Appellants also argue the
claims provide significantly more than an abstract idea. App. Br. 11–13. In
particular, regarding Step 2B of the eligibility analysis, Appellants argue
[the] Examiner fails to provide any additional detail or evidence
regarding the assertion that the pending claims or any elements
are well-understood, routine, and conventional.
This does not comport with the USPTO mandated
examination procedure pertaining to subject matter eligibility
because the Examiner has failed to provide support for these
statements.
Appeal 2018-006824
Application 13/683,453

6
Reply Br. 2–3 (emphasis omitted).
Revised Guidance, Step 2A, Prong One 2
The Judicial Exception
Applying the guidance set forth in the Memorandum, we are not
persuaded of Examiner error. The Memorandum instructs us first to
determine whether any judicial exception to patent eligibility is recited in the
claim. The guidance identifies three judicially-excepted groupings:
(1) mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. We
focus here on the third grouping—mental processes.
Claim 3 recites the following limitations: (1) “generate a hierarchy of
interconnected nodes, the hierarchy being based, at least in part, on a
plurality of genre of items, and wherein a first node included in the hierarchy
of interconnected nodes is representative of a first genre, and where a
predefined distance between the first node and a second node is indicative of
at least one of similarity or relatedness of items in the first genre,” (2)
“generate a directed graph using the hierarchy of interconnected nodes,
wherein the system uses the directed graph for searching of child nodes via
identification of top level nodes,” (3) “determine, using the directed graph,
that the first node is representative of at least one purchased item within the
hierarchy of interconnected nodes,” (4) “determine, using the directed graph,
that a first offered item is the at least one purchased item in the first node,”
(5) “determine, using the directed graph, a number of items assigned to the
first node within the predefined distance,” (6) “determine a browsed ratio for

2 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
Appeal 2018-006824
Application 13/683,453

7
the first node, the browsed ratio comprising a quantity of browsed items
relative to the number of items assigned to the first node,” and (7)
“determine a ranking for the first node, the ranking based, at least in part, on
the at least one purchased item, the browsed ratio, and offered items
associated with the first node, the offered items being within the predefined
distance from the first node.” These limitations, under their broadest
reasonable interpretation, recite mental processes as defined in the Guidance.
A claim recites a mental process when the claim encompasses acts
people can perform using their minds or pen and paper. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (determining that a claim whose “steps can be performed in the
human mind, or by a human using a pen and paper” is directed to an
unpatentable mental process). This is true even if the claim recites that a
generic computer component performs the acts. See, e.g., Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person’s mind.”); see also Guidance, 84 Fed. Reg. at 52 n.14
(“If a claim, under its broadest reasonable interpretation, covers performance
in the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind.”).
Here, first two “generate” limitations recited in claim 3 define mental
processes because they each can be performed by a human using pen and
paper. For example, a person can draw “a hierarchy of interconnected
nodes” by drawing circles representing the nodes and their associated genres
Appeal 2018-006824
Application 13/683,453

8
and connecting lines representing predefined distances between them, much
as Appellants’ Specification does in Figure 1, Figure 3, and Figure 4.3
Similarly, a person could “generate a directed graph” by drawing arrows
representing paths through the nodes. Each of the five “determine”
limitations and the additional “select” limitation recited in Claim 3 can be
performed by a human in their mind by analyzing the content of the nodes
and the directed graph, and therefore amount to a series of observations and
evaluations followed by an opinion or judgement. Accordingly, we
conclude the claims recite a judicial exception of a mental process under the
Guidance.
Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Having determined that the claims recite a judicial exception, our
analysis under the Guidance turns to determining whether there are
“additional elements that integrate the judicial exception into a practical
application.” See MPEP § 2106.05(a)–(c), (e)–(h).
As noted by the Examiner, Appellants’ claim 3 recites that the
“system” includes at least one “memory” and “processor.” The recitation of
such generic computer hardware, without any additional detail of its
structure or configuration, is not sufficient to integrate the judicial exception
into a practical application. See MPEP §§ 2106.05(b)(I) (“It is important to
note that a general purpose computer that applies a judicial exception, such
as an abstract idea, by use of conventional computer functions does not
qualify as a particular machine.”), 2106.05(f) (“Another consideration when

3 We note that under its broadest reasonable interpretation, the “hierarchy of
interconnected nodes” may include as few as two nodes representing two
genres and be connected by a single line.
Appeal 2018-006824
Application 13/683,453

9
determining whether a claim recites significantly more than a judicial
exception is whether the additional elements amount to more than a
recitation of the words ‘apply it’ (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on a
computer.”).
The use of a “memory that stores computer-executable instructions”
and “at least one processor configured to access the at least one memory and
execute the computer-executable instructions” as recited in claim 3 also does
not constitute an improvement to computer technology. Rather it carries out
the recited mental process on a generic computing device using generic
computing components. It is well-established, however, that relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render an otherwise abstract claim patent eligible. See Alice,
573 U.S. at 224 (“use of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions” is not an
inventive concept); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (a computer “employed only
for its most basic function . . . does not impose meaningful limits on the
scope of those claims”); MPEP § 2106.05(f)(2) (“Use of a computer or other
machinery in its ordinary capacity for economic or other tasks (e.g., to
receive, store, or transmit data) or simply adding a general purpose computer
or computer components after the fact to an abstract idea (e.g., a
fundamental economic practice or mathematical equation) does not provide
significantly more.”).
Claim 3 also recites limitations regarding sending an indication to the
user of the offered items and then updating the number of indications,
Appeal 2018-006824
Application 13/683,453

10
including “send[ing] an indication to a user device of at least one selected
item from the offered items associated with the first node” and “updat[ing] a
number of indications associated with the first node at the directed graph.”
App. Br. 16 (Claims Appendix). We conclude that these operations, as
recited in the last two limitations of claim 3, merely add insignificant post-
solution activity to the judicial exception. See MPEP § 2106.05(g). See
Mayo, 566 U.S. at 77–80; see also Diamond v. Diehr, 450 U.S. 175, 191–92
(1981) (“insignificant post-solution activity will not transform an
unpatentable principle into a patentable process”).
Relying on MPEP § 2106.05(a) (“Improvements to the Functioning of
a Computer or to Any Other Technology or Technical Field”), Appellants
contend the claims amount to significantly more than an abstract idea citing
McRo, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016) because
[T]he present claims are limited to specific implementations with
concrete features that allow for the improvement realized by the
invention - improving computing performance by allowing for
searching of top-level nodes rather than child nodes, thereby
reducing a total number of computations that need to be
performed by the computer, as well as continuously self-
updating directed graphs - through a specific sequence of events
that results in increased accuracy and increased efficiency of
computing resources.
Appeal Br. 8 (emphasis added). Appellants’ argument based on McRO is
unpersuasive because the alleged improvements are themselves abstract, and
because Appellants’ claim 1 is unlike the subject claim considered by the
court in McRO. The patent at issue in McRO describes that, prior to the
claimed invention, character animation and lip synchronization were
accomplished by human animators, with the assistance of a computer, and
Appeal 2018-006824
Application 13/683,453

11
involved the use of a so-called “keyframe” approach in which animators set
appropriate parameters, i.e., morph weights, at certain important times, i.e.,
in order to produce accurate and realistic lip synchronization and facial
expressions. McRO, 837 F.3d. at 1305. Animators knew what phoneme a
character pronounced at a given time from a time-aligned phonetic
transcription (a “timed transcript”). Id. In accordance with the prior
technique, animators, using a computer, thus, manually determined the
appropriate morph weight sets for each keyframe based on the phoneme
timings in the timed transcript. Id.; see also SAP Am. v. InvestPic, LLC, 898
F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO):
The claims in McRO were directed to the creation of something
physical—namely, the display of “lip synchronization and facial
expressions” of animated characters on screens for viewing by
human eyes. Id. at 1313. The claimed improvement was to how
the physical display operated (to produce better quality images),
unlike (what is present here) a claimed improvement in a
mathematical technique with no improved display mechanism.
The claims in McRO thus were not abstract in the sense that is
dispositive here. And those claims also avoided being “abstract”
in another sense reflected repeatedly in our cases (based on a
contrast not with “physical” but with “concrete”): they had the
specificity required to transform a claim from one claiming only
a result to one claiming a way of achieving it.
SAP, 898 F.3d at 1167 (emphasis added). In contrast to the claimed
invention in McRO that improved how the physical display operated to
produce better quality images, the claimed invention here merely uses
generic computing components to perform the recited functions.
Appellants’ claims do not improve a physical display as was the case in
McRO. See SAP, 898 F.3d at 1167. Moreover, Appellants’ generic computer
implementation performs functions or steps that can be performed
Appeal 2018-006824
Application 13/683,453

12
alternatively as mental processes, as discussed above. As such, Appellants
arguments do not persuade us that the additional limitations recited in claim
3 are sufficient to integrate the recited judicial exception into a practical
application.
Because the additional limitations are not sufficient to integrate the
recited abstract idea into a practical application, we conclude the claim is
directed to the recited judicial exception.
Step 2B: Inventive Concept
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether the claim adds any specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field (see MPEP § 2106.05(d)) or simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. See Guidance. Our
review of the Examiner’s rejection under Step 2B is guided by the revised
examination procedure published online by the USPTO on April 19, 2018,
entitled “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” (“Berkheimer Memorandum”), which imposed a new fact finding
requirement for Examiners, as applicable to rejections under § 101. In our
review of the rejection under Step 2B, we consider the same “additional
limitations” as were considered at Step 2A, Prong 2—the “send[ing] an
indication” and “updat[ing the] number of indications” limitations.
Appellants argue the “Examiner fails to provide any additional detail
or evidence regarding the assertion that the pending claims or any elements
are well-understood, routine, and conventional.” Reply Br. 2–3. We
Appeal 2018-006824
Application 13/683,453

13
disagree. The Berkheimer Memorandum provides that the Examiner may
support a finding that an additional element or combination of elements may
be supported by “[a] citation to one or more of the court decisions discussed
in MPEP § 2106.05(d)(II) as noting the well-understood, routine,
conventional nature of the additional element(s).” Berkheimer
Memorandum at 4, § III(A)(2).
Here, the Examiner cites to Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709 (Fed. Cir. 2014), which is discussed in MPEP § 2106.05(d)(II) as noting
the well-understood, routine, conventional nature of “[r]eceiving or
transmitting data over a network” and “electronic recordkeeping.” We find
this evidence sufficient to show that the “send[ing] an indication” limitation
and the “updat[ing the] number of indications” limitations of claim 3 were
well-understood, routine, and conventional. Appellants do not explain why
the Examiner’s reliance on Ultramercial is insufficient with respect to these
additional limitations of claim 3. Accordingly, we are not persuaded the
Examiner erred in the Step 2B analysis, and we sustain the rejection of
claims 3–8 under 35 U.S.C. § 101.

Appeal 2018-006824
Application 13/683,453

14

DECISION
We affirm the Examiner’s rejection of claims 3–8 under 35 U.S.C.
§ 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED