Ex Parte Mao

Patent Trial and Appeal Board

May 10, 2017

14229801 (P.T.A.B. May. 10, 2017)

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.
14/229,801 03/28/2014 Maode Mao 2043.848US2 5088
132862 7590 05/12/2017
Schwegman Lundberg & Woessner, P.A. / PayPal
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
ZUKANOVICH, BRANDY A
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
05/12/2017 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 MAODE MAO
Appeal 2015-007975
Application 14/229,8011
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Maode Mao (Appellant) seeks our review under 35U.S.C. § 134 of
the final rejection of claims 1—4, 6—8, 10-12, and 16—20. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies eBay Inc. as the real party in interest. App. Br. 2.
Appeal 2015-007975
Application 14/229,801
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method, comprising:
receiving a user selection of a mode from a plurality of product
operational modes;
presenting separate lists of product models and product model
accessories based on the mode;
receiving a user selection of a product model combination
including a product model from the list of product models and at least
one product accessory model from the list of product accessory
models;
retrieving a list of product combinations, based on the selected
product model combination, each product combination including a
product supplied from one of a plurality of product suppliers and at
least one product accessory supplied from one of a plurality of
product accessory suppliers;
ranking the list of product combinations based on a
combination value of a product score of the product and a product
accessory score of the at least one product accessory in each product
combination, the product score and the product accessory score given
by users or reviewers; and
causing a presentation of the list of product combinations to a
user via a display on a machine.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 2—4, 12, 14, and 15 are rejected under 35 U.S.C. § 112(d) or
pre-AIA 35 U.S.C. § 112, 4th paragraph, as being of improper
dependent form for failing to further limit the subject matter of the
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claim upon which it depends, or for failing to include all the
limitations of the claim upon which it depends.
2. Claims 1—4, 6—8, 10-12, and 16—20 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
ISSUES
Did the Examiner err in rejecting claims 2—4, 12, 14 and 15 under 35
U.S.C. § 112(d) or pre-AIA 35 U.S.C. § 112, 4th paragraph, as being of
improper dependent form for failing to further limit the subject matter of the
claim upon which it depends, or for failing to include all the limitations of
the claim upon which it depends?
Did the Examiner err in rejecting claims 1—4, 6—8, 10—12, and 16—20
are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject
matter?
ANALYSIS
The rejection of claims 2—4, 12, 14 and 15 under 35 U.S.C. § 112(d) or pre-
AIA 35 U.S.C. § 112, 4th paragraph, as being of improper dependent form
for failing to further limit the subject matter of the claim upon which it
depends, or for failing to include all the limitations of the claim upon which
it depends.
The Examiner finds that claim 2 does not limit claim 1 because it calls
for “[t]he combination value is a sum value of the product score of the
product and the product accessory score of the product accessory.” Ans. 5.
We do not understand the problem. Claim 1 calls for ranking based on a
combination value of product and the product accessory scores. Claim 2
further limits that value to “comprise [] a sum value of the product score of
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the product and the product accessory score of the at least one product
accessory.”
Claims 3 and 4 are rejected because only a “user gives a review in
claim 3 and a reviewer giving the review in claim 4.” Ans. 6. But claim 1,
on which claims 3 and 4 depend, calls for “score[s] given by users or
reviewers.” (Emphasis added.)
Accordingly, we do not sustain the rejection of claims 2—\.
Apparently, claims 12 and claims 14 and 15 are rejected for the same
reasons used to reject claims 2 and claims 3 and 4, respectively. For the
same reasons, we do not sustain the rejection of claimsd 12, 14 and 15.
The rejection of claims 1—4, 6—8, 10—12, and 16—20 under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
The Appellant argued these claims as a group. See App. Br. 8—20 and
Reply Br. 4—7. We select claim 1 as the representative claim for this group,
and the remaining claims 2—4, 6—8, 10-12, and 16—20 stand or fall with
claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Appellant’s challenge to the rejection is flawed. For example:
independent method claim 1 recites a machine with specific
display elements, user interface features and user interactions
with said features that pass the “machine-or-transformation”
test because they tie the method to “a particular machine or
apparatus” e.g., specific user interfaces and displays.
Accordingly, the method claims, as presented herein set forth a
statutory process under 35 U.S.C. 101. See “2014 Interim
Guidance on Patent Subject Matter Eligibility”, Federal
Register / Vol. 79, No. 241 / Tuesday, December 16, 2014 /
Rules and Regulations.
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Application 14/229,801
App. Br. 19. Here is another example: “the claims provide an improvement
to the functioning of the computer by providing []a specific custom user
interface (e.g., user interactions, user reviews, display most relevant
information to user in limited display space) for human-computer
interaction, in the context of online product recommendations.” Reply Br. 5.
These are examples of the many statements made in the briefs construing
claim 1 as being directed to a “specific user interface” (Reply Br. 5).
However, claim 1 is not directed to a user interface. No user interface
is mentioned in the claim. No step in the method claimed — apart from the
last post-solution displaying step — is attached to a device, not even a
computer, let alone an interface, customized or otherwise.
The claimed method is devoid of apparatus or transformational
limitations. A good case can be made that the claimed method amounts to a
mental process. “[MJental processes—or processes of human thinking—
standing alone are not patentable even if they have practical application” In
re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009). “[MJental processes are
not patent-eligible subject matter because the ‘application of [only] human
intelligence to the solution of practical problems is no more than a claim to a
fundamental principle.’” CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1371 (Fed. Cir. 2011).
Be that as it may, a reasonably broad construction of the claim is a
prerequisite for determining whether claimed subject matter is judicially-
excepted from patent eligibility under § 101 via the two-step framework
identified in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).
“The § 101 inquiry must focus on the language of the Asserted Claims
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themselves.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149
(Fed. Cir. 2016). See Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (admonishing that “the
important inquiry for a § 101 analysis is to look to the claim”); see also
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 7 Ass ’n,
776 F.3d 1343, 1346 (Fed. Cir. 2014) (“We focus here on whether the claims
of the asserted patents fall within the excluded category of abstract ideas.”).
Here, the Examiner reasonably broadly construed claim 1 in
determining that claim 1 is directed to “recommending products.” Final
Act. 5. In rebuttal, the Appellant did not reasonably broadly construe the
claim. The incorrect reading of claim 1 as covering an interface
substantively undermines the Appellant’s position, clouding the remaining
arguments. For that reason alone, the Appellant’s arguments that claim 1 is
not directed to an abstract idea (App. Br. 14—16) and, even if directed to an
abstract idea, contains an inventive concept sufficient to transform the
claimed abstract idea into a patent-eligible application (App. Br. 16—20), are
unpersuasive as to error in the rejection.
The remaining arguments (App. Br. 8—14) criticizing the Examiner’s
position are legally unfounded.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
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.” Internet Patents Corp. v.
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Application 14/229,801
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic
Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369, 1375 (Fed. Cir. 2016)
(inquiring into “the focus of the claimed advance over the prior art”).”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas v.
DIRECTTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). “In
determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
Claim 1 sets out 6 steps such that (1) a selected mode is received; (2)
two model lists are presented; (3) a selected combination from the model
lists is received; (4) a list of product combinations is retrieved; (5) the
product combinations are ranked; and (6) a list of product combinations are
presented. Claim 1 as whole, as the Examiner fairly determined, is directed
to “recommending products.”
The Specification’s discussion of the problem and the solution
supports that determination. According to para. 2, “[t]he present application
relates generally to information processing and particularly, but not by way
of limitation, to systems and methods to facilitate users in product shopping
over a network.” In that regard, the problem is that “in many situations,
sellers may not provide buyers with efficient or convenient approaches to
finding products that are attractive to buyers.” Para. 3. As an example, “it
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could be time consuming for a buyer to find a satisfactory camera model that
meets her interests without professional suggestions.” Para. 14. The
solution is to use photos taken by different camera models and rank them.
“The ranked list of photos may facilitate the buyer in evaluating the
candidate camera model.” Para. 14.
Accordingly, we see no legal difficulty with the Examiner’s
determination that claim 1 is directed to “recommending products.” Nor do
we see any legal difficulty in characterizing “recommending products” as an
abstract idea. Cf. Personalized Media Commc ’ns, LLC v. Amazon.com,
Inc., 161 F.Supp.3d 325, 337 (D.Del. 2015), affd, 2016 WL 7118532 (Mem)
(Fed. Cir. 2016) (“providing personalized recommendations” is an abstract
idea). The Appellant focuses a great deal of attention on the claimed
ranking step but ranking per se is an abstract idea. Cf. SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 F. App’x 950 (Fed. Cir. 2014), cert,
denied, 135 S. Ct. 58 (2014) (see claim 1 of US 6,081,786). Even if the
directed to inquiry reached the determination that claim 1 was instead
directed to ranking, that would not change the determination that claim 1 is
directed to an abstract idea. To the extent the Appellant would argue that the
ranking step as claimed is more limited to a particular application of ranking
per se, that does not change the determination. See CyberSource, 654 F.3d
at 1371 (“The Court [Parker v. Flook, 437 U.S. 584 (1978)] rejected the
notion that the recitation of a practical application for the calculation could
alone make the invention patentable.”)
We now proceed to the second step. Step two is “a search for an
‘inventive concept’—i.e., an element or combination of elements that is
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‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Alice, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). In that regard, we agree with the
Examiner that “when considering the elements and combinations of
elements, the claims as a whole, do not amount to significantly more than
the abstract idea itself.” Final Act. 5. The Appellant’s arguments to the
contrary are unpersuasive because they focus on limitations not in the
claims, as discussed above.
For the foregoing reasons, the rejection is sustained.
CONCFUSIONS
The rejection of claims 2—4, 12, 14 and 15, under 35 U.S.C. § 112(d)
or pre-AIA 35 U.S.C. § 112, 4th paragraph, as being of improper dependent
form for failing to further limit the subject matter of the claim upon which it
depends, or for failing to include all the limitations of the claim upon which
it depends is reversed.
The rejection of claims 1—4, 6—8, 10-12, and 16—20 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter is affirmed.
DECISION
The decision of the Examiner to reject claims 1—4, 6—8, 10—12 and
16—20 is affirmed.
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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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