Ex Parte Kassaei

Patent Trials and Appeals Board

Apr 30, 2019

12416051 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/416,051 03/31/2009 Farhang Kassaei
49845 7590 05/02/2019
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2043.637US 1 3694
EXAMINER
MILLER, ALAN S
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte F ARHANG KASSAEI
Appeal2017-008838 1
Application 12/416,051 2
Technology Center 3600
Before ANTON W. PETTING, MICHAEL C. ASTORINO, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) claims 1-5, 7-14, 16-18,
22, and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Appeal Br.," filed
December 29, 2016), Reply Brief ("Reply Br.," filed May 30, 2017), the
Examiner's Answer ("Ans.," mailed March 29, 2017), and Final Office
Action ("Final Act.," mailed June 2, 2016).
2 Appellant identifies eBay, Inc., as the real party in interest. (Appeal Br.
2).
Appeal2017-008838
Application 12/416,051
CLAIMED INVENTION
Appellant's claims relate "to the field of online commerce," and more
particularly to "methods and systems of recommending software to users
engaged in online commerce" (Spec. ,r 1 ).
Claims 1, 10, and 22 are the independent claims on appeal. Claim 10,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
10. A method comprising:
[a] creating an online marketplace sales profile for a seller
for maintaining in one or more online databases, the creating
including calculating a plurality of metrics corresponding to a
plurality of online listings of sale items stored in the one or more
databases of a network-based marketplace system and posted on
the network-based marketplace system by the seller, the plurality
of metrics for the seller including sales metrics for the sale items;
[b] identifying other sellers similar to the seller by
comparing the online marketplace sales profile for the seller in
the one or more databases to online marketplace sales profiles for
the other sellers in the one or more databases, the online
marketplace sales profiles for the other sellers including a
plurality of metrics corresponding to a plurality of listings of
other sale items stored in the one or more databases and posted
on the network-based trading environment by the other sellers,
the plurality of metrics for the other sellers including a plurality
of sales metrics for the other sale items;
[ c] assessing a performance impact by an online
application on the plurality of metrics for the seller [] based on a
performance impact by the online application on the plurality of
metrics for the other sellers after a subscription by the other
sellers to the online application;
[ d] communicating a recommendation for presentation in
a user interface of a device of the seller based on a rating, the
rating including a function of the impact by the online application
on the plurality of metrics for the other sellers; and
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[ e] automatically updating at least a portion of the
plurality of listing based on an acceptance by the seller of the
recommendation, one or more modules incorporated into the
network-based marketplace system to configure the network-
based marketplace system to perform the creating, identifying,
assessing, providing, and updating, the one or modules
implemented by one or more processors of the network-based
marketplace system.
REJECTION
Claims 1-5, 7-14, 16-18, 22, and 23 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 1-5, 7-14, 16-18, 22, and 23 as a group (see
Appeal Br. 19-31; see also Reply Br. 1-8). We select independent claim 10
as representative. The remaining claims stand or fall with claim 10. See 37
C.F.R. § 4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. However, the Supreme Court has long interpreted 35
U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS
Bankint'l, 573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
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we first determine what concept the claim is "directed to." See id. at 219
("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Gottschalk, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [ abstract idea]."' Id. ( alterations in original) ( quoting Mayo,
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566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). Under that 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, i.e., that "apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53; see
also 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 2019 Revised Guidance.
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Appellant argues that the Examiner's rejection is in error because the
Examiner fails to establish a prima facie case of subject matter ineligibility
(see Appeal Br. 19-22; see also Reply Br. 1-2). More particularly,
Appellant argues the Examiner "failed to properly identify the alleged
abstract idea" (Appeal Br. 19). Appellant's arguments are not persuasive.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
analyzes the claims using the Mayo/Alice two-step framework (see Final
Act. 10-18; see also Ans. 5-13). Here, the Examiner maintains the claims
are directed to "recommending items to users in a marketplace based on a
comparison of metrics associated with other users" (Ans. 2; see also Final
Act. 11 ), which the Examiner considers to be an abstract idea, inasmuch as it
may be characterized as being related to "certain methods of organizing
human activity ( e.g. advertising, marketing, and sales activities or
behaviors)" (Final Act. 13). The Examiner further determines that the
additional elements of the claims, taken alone and as an ordered
combination, do not ensure that the claims amount to significantly more than
the abstract idea (see id. at 15-16). The Examiner, thus, has clearly
followed the two-part framework specified by the Supreme Court in
Mayo/Alice consistent with Office guidelines.
In this regard, the Examiner has articulated the reasons for the
rejection and has notified Appellant of the reasons for the rejection "together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." 35 U.S.C.
§ 132. And we find that, in doing so, the Examiner sets forth a prima facie
case of subject matter ineligibility. See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
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(Section 132 "is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection.").
Turning to the first step of the Mayol Alice framework, we are not
persuaded by Appellant's arguments that the Examiner "failed to properly
identify the alleged abstract idea" and erred in determining that the present
claims are directed to an abstract idea (see Appeal Br. 19-27; see also Reply
Br. 1-2). Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to an abstract idea of "recommending
items (i.e. applications) to users (i.e. sellers) in a marketplace based on a
comparison of metrics associated with other users (i.e. sellers)" (Final
Act. 11; Ans. 2). As described below, the Examiner's characterization of
claim 10 is, in our view, fully consistent with the Specification, including the
claim language. 3
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
3 That the claim language includes more words than the phrase the
Examiner used to articulate the abstract idea, and that the Examiner, thus,
articulates the abstract idea at a higher level of abstraction than would
Appellant is an insufficient basis to persuasively argue that the claim
language has been mischaracterized. 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.").
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matter."' Enfzsh, 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)).
The Specification is titled "APPLICATION RECOMMENDATION
ENGINE," and states that the disclosure relates specifically to "methods and
systems of recommending software to users engaged in online commerce"
(Spec. ,r 1 ). The Background section of the Specification identifies that
"sellers may not be aware of applications that could improve their ability to
sell items, and they may not know which available applications will best
meet their needs" (id. ,r 3). According to the Specification, the present
invention provides "business applications designed to improve the
effectiveness of selling items on a network-based trading environment to be
recommended to appropriate sellers" (id. ,r 19) and that "[b ]y assessing the
impact that various applications have had on other sellers with a profile
similar to the user's profile, appropriate applications can be recommended to
the user that are most relevant to the user's needs" (id. ,r 25).
Taking independent claim 10 as representative, the claimed subject
matter generally recites a method including steps for creating a user profile
(limitation [a]), identifying similar other user profiles by comparing the
profiles (limitation [b ]), analyzing data within the profiles to calculate a
performance impact value and rating (limitation [ c ]), communicating a
recommendation to the user based on the rating (limitation [ d]), and
updating a listing of items for sale based on the recommendation (limitation
[e]).
Understood in light of the Specification, independent claim 10
includes steps for identifying information, analyzing information, and
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making a recommendation based on the information. Thus, we agree
with the Examiner that independent claim 10 is directed broadly to
"recommending items to users in a marketplace based on a comparison of
metrics associated with other users" (Final Act. 11; Ans. 2). And, when
viewed through the lens of the 2019 Revised Guidance, the Examiner's
analysis depicts the claimed subject matter as one of the ineligible "certain
methods of organizing human activity" including at least advertising and
marketing (Final Act. 13), and as such, an abstract idea under Prong One of
Revised Step 2A. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
The claim is directed to an idea similar to ideas deemed abstract by
our reviewing court in Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1369-70 (Fed. Cir. 2015) (customizing and tailoring
web page content based on navigation history and known user information),
Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir.
2016) ( collecting information and "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category"), Affinity
Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016)
cert. denied, 137 S. Ct. 1596 (2017) (customizing a user interface to have
targeted advertising based on user information), and Personalized Media
Commc'ns, LLCv. Amazon.Com, Inc., 161 F. Supp. 3d 325,338 (D. Del.
2015), ajf'd sub nom., 671 F. App'x 777 (Fed. Cir. 2016) (providing
personalized recommendations).
Having concluded that claim 10 recites a judicial exception, i.e., an
abstract idea, we next consider whether the claim recites "additional
elements that integrate the uudicial] exception into a practical application"
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under Prong Two of Revised Step 2A. See 2019 Revised Guidance, 84 Fed.
Reg. at 55.
The 2019 Revised Guidance provides five "exemplary considerations"
that "are indicative that an additional element ( or combination of
elements )[J may have integrated the exception into a practical application."
2019 Revised Guidance at 5 5 ( emphasis added). The first exemplary
consideration is whether "[a]n additional element reflects an improvement in
the functioning of a computer, or an improvement to other technology or
technical field." Id. (citing MPEP § 2106.05(a)). Here, Appellant argues
like the claims in Enfzsh, the claims at issue in this case are
directed to an improvement to a computer-related technology,
specifically adding modules to a networked system to enable an
online application executing on the system to automatically
update at least a portion of a plurality of online listings of sale
items stored in one or more databases of the networked-based
marketplace system.
Appeal Br. 23.
However, we find no indication in the Specification, nor does
Appellant direct us to any indication, that the steps recited in independent
claim 10 invoke any assertedly 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."). Instead, we agree with the Examiner that "the 'modules'
are merely software that the generic computer is programmed with" (Ans. 15
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(citing Spec. ,r,r 71-72)) allowing a generic computer to perform the claimed
operations using generic computer functions (cf Spec. ,r,r 52-54).
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 "appl[ies ], rel[ies] on, or us[ es] the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception." See 2019 Revised Guidance, 84 Fed. Reg. at 55.
Appellant further argues that the pending claims are not directed to an
abstract idea pursuant to the Federal Circuit decisions in Enfzsh and McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) (see
Appeal Br. 23-24, 28-29; see also Reply Br. 5-6). However, there is a
fundamental difference between computer functionality improvements, on
the one hand, and uses of existing computers as tools to perform a particular
task, on the other. Indeed, the Federal Circuit applied this distinction in
Enfzsh in rejecting a§ 101 challenge at the step one stage of the Mayo/Alice
analysis because the claims at issue focused on a specific type of data
structure, i.e., a self-referential table for a computer database, designed to
improve the way a computer carries out its basic functions of storing and
retrieving data, and not on asserted advances in uses to which existing
computer capabilities could be put. Enfzsh, 822 F.3d at 1335-36.
We find no parallel here between independent claim 10 and the
claims in Enfish nor any comparable aspect in claim 10 that represents "an
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improvement to computer functionality." Appellant asserts the technical
solution is "improving the discoverability of[] applications on a network-
based publication system" and that "updating a plurality of listings for a
seller is a technological improvement" (Reply Br. 5). We cannot agree.
In this regard, we note that the Specification discloses that
[t]he machine [for performing any one or more of the
methodologies discussed in the application] may be a personal
computer (PC), a tablet PC, a set-top box (STB), a Personal
Digital Assistant (PDA), a cellular telephone, a web appliance,
a network router, switch or bridge, or any machine capable of
executing instructions ( sequential or otherwise) that specify
actions to be taken by that machine
(Spec. ,r 66). The alleged advantages that Appellant identifies do not appear
to concern an improvement to computer capabilities or provide details on the
technological manner in which the steps are performed; but instead, relate to
an alleged improvement in discovering applications that can "improve [ a
seller's] ability to sell items" through a process in which a computer is used
as a tool in its ordinary capacity (cf id. ,r 3).
We also find no parallel between independent claim 10 and the claims
at issue in McRO (see Appeal Br. 24; see also Reply Br. 6). Appellant
asserts that like the claims in McRO, the claims are patent-eligible because
the inclusion of specific limitations ( e.g., including the way in
which an online marketplace sales profile for the seller is created,
the way in which other sellers similar to the seller are identified,
the way in which the performance impact of an online application
on a plurality of metrics corresponding to online listings of sales
items is assessed, and the way in which recommendation are
communicated to the seller) means that different approaches for
automatically updating online listings on a seller are not
preempted.
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Appeal Br. 24. However, the Federal Circuit premised its determination that
the claims in McRO were patent-eligible, not merely on the specificity of the
claimed animation scheme, but rather on the fact that the claims, when
considered as a whole, were directed to a technological improvement over
the existing, manual 3-D animation techniques and used limited rules in a
process specifically designed to achieve an improved technological result in
conventional industry practice. We are not persuaded that a comparable
situation is presented here.
Instead, in the present invention, available data from an online seller
profile is simply analyzed/compared in order to improve a business practice.
Here, as the Examiner points out, the limitations argued by Appellant
"amount to no more than broadly collecting some data regarding
metrics ... or some sort of analysis performed without more" (Ans. 7). As
our reviewing court has made clear, "relying on a computer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015).
Appellant still further argues that independent claim 10, like the
claims in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016) is patent-eligible because it "recite[s] a
specific solution for automatically updating at least a portion of a plurality of
online listings of sale items stored in one or more databases of a network-
based marketplace system and posted by a seller" (Appeal Br. 28; see also
Reply Br. 7). We do not agree, however, that BASCOM is sufficiently
analogous to control the outcome here.
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In BASCOM, the Federal Circuit held that the second step of the
Mayo/Alice framework was satisfied because the claimed invention
"represents a 'software-based invention[ ] that improve[ s] the performance
of the computer system itself."' BASCOM, 827 F.3d at 1351 (stating that
like DDR Holdings, where the patent "claimed a technical solution to a
problem unique to the Internet," the patent in BASCOM claimed a
"technology-based solution ... to filter content on the Internet that
overcomes existing problems with other Internet filtering systems ...
making it more dynamic and efficient") ( citations omitted). Here, Appellant
argues that independent claim 10 is patent-eligible because it "recite[ s] a
specific solution for automatically updating at least a portion of a plurality of
online listings of sale items stored in one or more databases of a network-
based marketplace system and posted by a seller" (Appeal Br. 28). The
difficulty with Appellant's argument is that Appellant does not persuade us
that "automatically updating at least a portion of a plurality of online listings
of sale items stored in one or more databases of a network-based
marketplace system and posted by a seller" is a technological improvement,
as opposed to an improvement in a business practice for which generic
computer components are used in their ordinary capacity (see, e.g., Spec.
,r,r 1-3, 66, 67).
Appellant further argues that independent claim 10 recites that "one or
more modules [are] incorporated into the network-based marketplace system
to configure the network-based marketplace system to perform the creating,
identifying, assessing, providing, and updating, the one or [more] modules
implemented by one or more processors of the network-based marketplace
system" and thus "a generic computer would be incapable of performing
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these recited operations" (Appeal Br. 28). However, as discussed above,
there is no indication here that the steps recited in independent claim 10
require any specialized computer or inventive computer components - the
Specification indicates just the opposite (see, e.g., Spec. ,r,r 66-67). That is,
the claimed "modules" are just programming routines for carrying out the
various claimed operations (id. ,r,r 52-54) on a general purpose computer (id.
,r,r 66-67).
Appellant does not point to a particular portion of the Specification to
show where the Specification discloses how these other elements transform
the abstract idea into patent-eligible subject matter. Nor does Appellant
provide adequate evidence or technical reasoning that independent claim 10
improves some existing technological process or solves some technological
problem in conventional industry practice, such as in Diamond v. Diehr, 450
U.S. 175 (1981). See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1334 (Fed. Cir. 2015) (determining that the "claims recit[ed] a
commonplace business method aimed at processing business information
despite being applied on a general purpose computer"), cert. denied, 136 S.
Ct. 2510 (2016); see also Alice, 134 S. Ct. at 2359.
We also are not persuaded of Examiner error to the extent Appellant
maintains that the claims are patent-eligible because "the inclusion of
specific limitations ... means that different approaches for automatically
updating online listings of a seller are not preempted" (Reply Br. 6; see also
Appeal Br. 15-16). There is no dispute that the Supreme Court has
described "the concern that drives [the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption," Alice Corp., 573 U.S.
at 216. But, characterizing preemption as a driving concern for patent
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eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. "The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability" and "[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). "[P]reemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility." Id.
Turning to the second step of the Mayo/Alice framework, Appellant
argues that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because they recite significantly more than an
abstract idea in light of BASCOM and DDR Holdings (Appeal Br. 27-31 ).
However, as discussed above, we can find no parallel between the present
claims and those at issue in either BASCOM or DDR Holdings. Instead, we
agree with the Examiner that the additional elements taken alone or in
combination do not result in anything more than conventional computer
implementation (see Final Act. 16-18; see also Ans. 10-13).
Considered as an ordered combination, the "one or more processors"
of Appellant's independent claim 10 add nothing that is not already present
when the limitations are considered separately. Viewed as a whole,
independent claim 10 simply recites the concept of "determining
recommendations to sellers based on comparing metrics in the profiles of a
seller and other similar sellers" (Final Act. 15; Ans. 2). The claims do not,
for example, purport to improve the functioning of the computer itself. Nor
do they effect an improvement in any other technology or technical field.
Instead, independent claim 10 amounts to nothing significantly more than an
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instruction to apply the abstract idea of "recommending items to users in a
marketplace based on a comparison of metrics associated with other users"
(Final Act. 11; Ans. 2), which under our precedents, is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134
S. Ct. at 2360.
Appellant last argues that the lack of a prior art rejection is "further
evidence that the claims at issue are directed to patentable subject matter"
(Appeal Br. 28). However, to the extent Appellant maintains that the
claimed invention is patent-eligible, i.e., that the claims amount to
"significantly more" than an abstract idea, and/or that the recited functions
are not "well-understood, routine, and conventional activities," because of
the lack of§ 102 or § 103 rejections of the claimed subject (id.), Appellant
misapprehends the controlling precedent.
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayol Alice framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "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., 134 S. Ct. at 2355. "Groundbreaking, innovative, or
even brilliant discovery does not by itself satisfy the § 101 inquiry." Ass 'n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591
(2013). A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diehr,
450 U.S. at 188-89 ("The 'novelty' of any element or steps in a process, or
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Appeal2017-008838
Application 12/416,051
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter.").
Appellant's other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. (See 2019 Guidance at 51 ("Eligibility-related guidance issued
prior to the Ninth Edition, R---08.2017 of the MPEP (published Jan. 2018)
should not be relied upon.").)
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 10 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of independent claim 10, and claims 1-5, 7-
9, 11-14, 16-18, 22, and 23, which fall with independent claim 10.
DECISION
The Examiner's rejection of claims 1-5, 7-14, 16-18, 22, and 23
under 35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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