Ex Parte Schory et al

Patent Trials and Appeals Board

Apr 30, 2019

14022047 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/022,047
150039 7590
SBMC/eBay
116 West Pacific
Suite 200
Spokane, WA 99201
FILING DATE FIRST NAMED INVENTOR
09/09/2013 Guy Schory
05/02/2019
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.
IP-Pl0111US2 6218
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
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):
docket@sbmc-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUY SCHORY, STEPHEN RICHARD THOMAS,
STEPHEN KENNETH LOBO, and FRANK RUSSO
Appeal2017-008764
Application 14/022,047 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, ANTON W. PETTING, and BRUCE T.
WIEDER, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1, 4-8, 11-15, 18, 19 and 21. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We affirm.
1 Appellants identify eBay Inc. as the real party in interest. App. Br. 2.
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Application 14/022,047
THE INVENTION
Appellants state, that the application "relates generally to the technical
field of online marketing, and in one specific example, to customizing and
online shopping experience for a user based on information about the user."
Spec. ,r 3.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method of customizing an online shopping
experience for a user by selecting at a marketplace system a
user interface relating to a product from a plurality of user
interfaces relating to the product for transmission to a user
system computer based on a correspondence between an
element of the user interface relating to the product and an
element of a user interface being presented on the user system
computer, the method comprising:
receiving at the marketplace system a request from the
user system computer to transmit instructions for a rendering by
the user system computer of the user interface relating to the
product, the request being generated based on an interaction
with a user interface presented on the user system computer, the
instructions being stored as data items in a database of the
marketplace system;
selecting the user interface relating to the product from
the plurality of user interfaces relating to the product stored in
the database, the selecting based on a determination that a
rendering of the user interface relating to the product by the
user system computer has a probability of increasing revenues
of the marketplace system, the selecting further based on a
determination that renderings of other user interfaces relating to
the product by the user system have other probabilities of
increasing revenues of a marketplace system and a
determination that the first probability is greater than each of
the other probabilities, the determination of the probability
based on a conversion rate of the user interface relating to the
product, the conversion rate reflecting a number of renderings
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of the user interface in comparison to a number of sales of
specimens of the product relating to the renderings, the
revenues of the marketplace system based on the sales of the
specimens of the product, the determination based on an
identification that the element of the user interface relating to
the product corresponds to the element of the user interface
being presented on the user system computer; and
transmitting to the user system computer the instructions
for the rendering by the user system computer of the user
interface relating to the product, one or more modules
incorporated into the marketplace system to configure the
marketplace system to perform the receiving, selecting, and
transmitting, the one or more modules implemented by one or
more processors of the marketplace system.
REFERENCE
The Examiner relies upon the following prior art as evidence of
unpatentability:
Brunswig
("Brunswig")
Strand
US 2008/0148166 Al
US 8,375,305 Bl
THE REJECTION
June 19, 2008
Feb. 12,2013
The following rejection is before us for review.
Claims 1, 4--8, 11-15, 18, 19, and 21 are rejected under 35 U.S.C.
§ 101, because the claimed invention is directed to a judicial exception
(i.e., a law of nature, a natural phenomenon, or an abstract idea) without
significantly more.
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FINDINGS OF FACT
We adopt the Examiner's findings as set forth on pages 5-8 in the
Final Office Action and on pages 4--7 in the Examiner's Answer, concerning
only the 35 U.S.C. § 101 rejection.
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1, 4--8, 11-15, 18, 19, and 21
under 35 U.S.C. § 101.
The Appellants argue claims 1, 4--8, 11-15, 18, 19, and 21 as a group,
and we select claim 1 as the representative claim for this group (App. Br.
20), and so the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2015).
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 Bank Int '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,
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
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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, 191
(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 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract .... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., Diehr, 450 U.S. at
187 ("It is now commonplace that an application of a law of nature or
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mathematical formula to a known structure or process may well be deserving
of patent protection.").
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,
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 United States Patent and Trademark Office ("USPTO") recently
published revised guidance on the application of§ 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019),
(https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf)
("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 Manual of Patent Examining
Procedure ("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:
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(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 ( designated as Step
2B in the Guidance).
See Guidance.
The U.S. Court of Appeals for the Federal Circuit has explained that
"the 'directed to' inquiry applies a stage-one filter to claims, considered in
light of the [S]pecification, based on whether 'their character as a whole is
directed to excluded subject matter."' 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)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36.
In so doing, as indicated above, 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 claim "appl[ies],
rel[ies] on, or use[s] 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." Guidance at
53; see also MPEP § 2106.05(a}-(c), (e}-(h).
The preamble states:
A method of customizing an online shopping experience for a
user by selecting at a marketplace system a user interface
relating to a product from a plurality of user interfaces relating
to the product for transmission to a user system computer based
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on a correspondence between an element of the user interface
relating to the product and an element of a user interface being
presented on the user system computer ....
The Specification states:
the clicking of the online advertisement may direct the user to a
separate web site related to the subject of the advertisement
(e.g., a product) without taking into consideration information
about the user ( e.g., the Internet or geographic location of the
user or a behavior of the user with respect to a web site hosting
the particular web page) or a likelihood that the web site
presented to the user ( as opposed to other web sites) would
induce the user to conclude a transaction related to the subject
of the advertisement. The end result is the user is less likely to
conclude a transaction related to the subject of the
advertisement than if the user had been directed to a customized
shopping experience ( e.g., a web site) that was selected from a
group of customized shopping experiences and tailored as much
as possible to the user ( e.g., based on a profile of the user with
respect to the web site or based on success rates of each of the
group of customized shopping experiences in inducing other
users to conclude other transactions related to the subject of the
advertisement).
Specification ,r 3.
Understood in light of the Specification, the body of claim 1, recites,
in pertinent part:
[a)] receiving at the marketplace system a request from the user
system computer to transmit instructions ... relating to the
product, the request being generated based on an interaction
with a user interface ... ,
[b)] selecting the user interface relating to the product from the
plurality of user interfaces relating to the product ... , the
selecting based on a determination that a rendering of the user
interface relating to the product ... has a probability of increasing
revenues of the marketplace system, the selecting further based
on a determination that renderings of other user interfaces
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relating to the product by the user system have other
probabilities of increasing revenues of a marketplace system
and a determination that the first probability is greater than each
of the other probabilities, the determination of the probability
based on a conversion rate of the user interface relating to the
product, the conversion rate reflecting a number of renderings
of the user interface in comparison to a number of sales of
specimens of the product relating to the renderings, the
revenues of the marketplace system based on the sales of the
specimens of the product, the determination based on an
identification that the element of the user interface relating to
the product corresponds to the element of the user interface
being presented on the user system computer;
[ ( c)] transmitting ... the instructions for the rendering ....
Accordingly, the Examiner found that the "claims are directed to the
abstract idea of providing information to users which are considered to be a
method of organizing human activities and/or a fundamental economic
practice which are abstract ideas ineligible for patentability." (Final Act. 5).
We agree with the Examiner that claim 1 is directed to a certain
method of organizing human activity in particular a fundamental economic
practice. Claim 1 recites, "selecting based on a determination that a
rendering of the user interface relating to the product ... has a probability of
increasing revenues of the marketplace system," and "conversion rate
reflecting a number of renderings of the user interface in comparison to a
number of sales of specimens of the product relating to the renderings, the
revenues of the marketplace system based on the sales of the specimens of
the product." We find that determining probability of increasing revenues
based on various market factors as noted above in italics is a fundamental
economic practice because increasing revenues goes to profitability, which
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is a bedrock of economics. The patent-ineligible end of the spectrum
includes fundamental economic principles. Alice, 573 U.S. at 220.
Turning to the second prong of the "directed to" test, claim 1 only
generically requires "a plurality of user interfaces" "a marketplace system,"
"user system computer," "database," and "one or more processors of the
marketplace system." These components are described in the specification
at a high level of generality. See Spec. ,r,r 44--56, Figs. 1-3. We fail to see
how the generic recitations of these most basic computer components and/or
of a system so integrates the judicial exception as to "impose[] a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception." Guidance at 53.
Thus, we find that the claims recite the judicial exception of a
fundamental economic practice that is not integrated into a practical
app li cation.
That the claims do not preempt all forms of the abstraction or may be
limited to user interface selection, does not make them any less abstract. See
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir.
2015) ("And that the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.").
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
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Alice, 573 U.S. at 217-18 (quoting Mayo Collaborative Servs., 566 U.S. at
72-73).
Concerning this step the Examiner found the following:
Under step 2B of the eligibility test, the claims recite additional
elements ( e.g. determination based on an identification that the
element of the user interface relating to the product corresponds
to the element of the user interface being presented on the user
system computer; the selecting further based on a determination
that renderings of other user interfaces relating to the product
by the user system have other probabilities of increasing
revenues of a marketplace system and a determination that the
first probability is greater than each of the other probabilities,
the determination of the probability based on a conversion rate
of the user interface relating to the product, the conversion rate
reflecting a number of renderings of the user interface in
comparison to a number of sales of specimens of the product
relating to the renderings). However, these limitations are not
sufficient to amount to significantly more than the judicial
exception itself. The claims do not purport to identify new
computer hardware; rather, they merely assume the availability
of existing hardware for input, memory, look-up, comparison,
and output [ see SmartGene].
Final Act. 6. We agree with the Examiner. "[T]he relevant question is
whether the claims here do more than simply instruct the practitioner to
implement the abstract idea ... on a generic computer." Alice, 573 U.S.
at 225. They do 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 receive, select, apply decision criteria to data and generate a
result, and transmit data amounts to electronic data query and transmission
which are some of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
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previously known to the industry. 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.
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis
(receiving/selecting/transmitting/) and storing is equally generic and
conventional or otherwise held to be abstract. See Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving,
selecting, offering for exchange, display, allowing access, and receiving
payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence
of data retrieval, analysis, modification, generation, display, and
transmission was abstract), Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of
processing, routing, controlling, and monitoring was abstract). The ordering
of the steps is, therefore, ordinary and conventional.
Thus, the claims at issue amount to nothing significantly more than
instructions to apply the abstract ideas of a fundamental economic practice
and a commercial or legal interaction using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
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idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26 (quoting
Mayo 566 US at 79).
We have reviewed all the arguments Appellants have submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (App. Br. 12-29). We find that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue:
The failure of the Examiner to establish a prima facie case that
the claims at issue are directed to patent-ineligible subject
matter is readily apparent.
First, at Mayo step one, the Examiner failed to properly identify
the alleged abstract idea and explain how and why any such
alleged abstract idea is similar to a concept that has been
determined by the courts to be unpatentable.
App. Br. 20.
We disagree with Appellants. To the extent Appellants argue that the
Examiner erred in adequately supporting this determination by not providing
evidence, we are unpersuaded. In this regard, there is no requirement that
Examiners must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
Manual of Patent Examining Procedure§ 2106.07(a)(III) (2018) ("The
courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Thus, the court does not require 'evidence'
that a claimed concept is a judicial exception, and generally decides the legal
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conclusion of eligibility without resolving any factual issues." (Citations
omitted.))
Moreover, the Federal Circuit made clear in Berkheimer that "not
every § 101 determination contains genuine disputes over the underlying
facts material to the§ 101 inquiry." Berkheimer v. HP Inc., 881 F.3d 1360,
1368 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer did not
require evidentiary support for independent claim 1 because "[t]he
limitations [ of claim 1] amount to no more than performing the abstract idea
of parsing and comparing data with conventional computer components."
Id. at 1370.
All that is required of the US PTO to meet its prima facie burden of
production is that the Examiner set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must "notify the applicant,"
"stating the reasons for such rejection," "together with such information and
references as may be useful in judging the propriety of continuing the
prosecution of his application." 35 U.S.C. § 132; see also In re Jung, 637
F.3d 1356, 1363 (Fed. Cir. 2011) (declining "to impose a heightened burden
on examiners beyond the notice requirement of§ 132"). Here, as we found
above, the Examiner has made these findings as required by the statute. See
Final Act. 2-4.
Specifically, in rejecting the pending claims under§ 101, the
Examiner notified Appellants that the "claims are directed to the abstract
idea of providing information to users which are [sic] considered to be a
method of organizing human activities and/or a fundamental economic
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practice which are abstract ideas ineligible for patentability," (Final Act. 5)
and that "these limitations are not sufficient to amount to significantly more
than the judicial exception itself." (Id. at 6). Thus, we find that a prima
facie case was established by the Examiner.
Appellants further argue:
With respect to the narrower of the Examiner's two
alleged abstract ideas, which includes a selected subset of the
elements recited in the claims, the Examiner asserted that this
alleged abstract idea is somehow similar to the "organizing
human activity" at issue in Alice. However, the Supreme
Court's decision in Alice was based on a determination that the
claims at issue in Alice were directed to "a fundamental
economic practice long prevalent in our system of commerce;"
it was not based on a determination that the claims at issue in
Alice were directed to one of the certain methods of organizing
human activity that was previously held to be unpatentable.
(Appeal Br. 21 ).
We do not find the argument persuasive. The Guidance explicitly
groups "fundamental economic principles or practices (including hedging,
insurance, mitigating risk)" as included in "(b) Certain methods of
organizing human activity-." Guidance 52.
Appellants further argue, "the Examiner did not provide any
explanation as to 'why the additional claim elements do not result in the
claim as a whole amounting significantly more the judicial exception."'
(Appeal Br. 22).
We disagree with Appellants.
At step two, 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." [Alice Corp. Ltd. v
CLS Banklnt'l, 573 U.S. 217 (2014)] (quoting [Mayo
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Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
78-79 (2012)]. The second step of the Alice test is satisfied
when the claim limitations "involve more than performance of
'well-understood, routine, [and] conventional activities
previously known to the industry.'" [Content Extraction and
Transmission LLC v. Wells Fargo Bank Nat'! Assoc., 776 F.3d,
1343 1347--48 (Fed. Cir. 2014] (quoting Alice, 134 S. Ct. at
2359).
Berkheimer, 881 F.3d at 1367.
Notwithstanding that evidentiary support is not required for every
Alice step two determination, the Examiner did provide sufficient
evidentiary support for the Alice step two determination in this case. To this
point, the Examiner found "[t]here is no indication that the combination of
elements improves the functioning of a computer or improves any other
technology. Their collective functions merely provide conventional
computer implementation. None of the additional elements recited "offers a
meaningful limitation." Final Act. 7.
Appellants argue, "like the claims in Enfzsh, the claims at issue in this
case are directed to an improvement to a computer-related technology,
specifically adding or modifying modules and databases associated with a
networked system to provide a user with a customized online shopping
experience while using a web browser (e.g., in real time)." App. Br. 24.
We disagree with Appellants that under the holding in Enfzsh our
decision would be different (see Appeal Br. 24). See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). We are unpersuaded by
the Appellants' argument that its claims are directed to an improvement in
computer-related technology like that of claim 17 in Enfzsh and therefore are
patent eligible. In Enfish, the invention at issue was directed at a new type
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of logical model for a computer database: a self-referential table that allowed
the computer to store many different types of data in a single table and index
that data by column and row information. Id. at 1330-32. In finding the
claims "not directed to an abstract idea," but "to a specific improvement to
the way computers operate," the Federal Circuit noted that "the claims are
not simply directed to any form of storing tabular data, but instead are
specifically directed to a self-referential table for a computer database."
Enfzsh, 822 F.3d at 1336-37 (emphasis in original). We find nothing in the
claims before us arising to this level of technical improvement. Claim 1 only
generically requires "a plurality of user interfaces" "a marketplace system,"
"user system computer," "database," and "one or more processors of the
marketplace system." These components are described in the specification
at a high level of generality. See Spec. ,r,r 44--56, Figs. 1-3. We find the
claims are focused on "online marketing" and/or "customizing an online
shopping experience" (Spec. ,r 2) which relates to "economic or other tasks
for which a computer is used in its ordinary capacity." Enfzsh, 822 F.3d at
1336.
Likewise unpersuasive is Appellants' argument that the claims before
us are similar to those decided as patent eligible in McRO, Inc. v. Bandai
Namco Games Am., Inc. 837 F.3d 1299 (Fed. Cir. 2016). (Appeal Br. 24--
25). From McRO, we understand that the question is whether the claims as a
whole "focus on a specific means or method that improves the relevant
technology" or are "directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery." McRO, Inc., 837 F.3d
at 1314. In this case, claim 1 as a whole is focused on satisfying certain
contingencies for a probability of increasing revenues of the marketplace
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system and not a particular way of programming or designing the software
or a computer circuit.
Appellants also argue,
each of independent claims 1, 8, and 15 recites
'one or more modules implemented by one or
more processors' that are configured to perform
the recited operations. Furthermore, the
specification describes the operations as being
performed in response to 'a request from an
application ( e.g., a web browser application)
executing on a user system.'
(Appeal Br. 26).
We do not find this argument persuasive. A general purpose
computer programmed to perform conventional functions does not amount
to an inventive concept such that the claims are significantly more than the
abstract idea. See EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785
F.3d 616, 623 (Fed. Cir. 2015). Appellants' Specification does not support a
computer system, which is employed to effect the claimed determination of
a probability of increasing revenues of the marketplace system, as anything
more than a generic computer. Claim 1 only generically requires "a plurality
of user interfaces," "a marketplace system," "user system computer,"
"database," and "one or more processors of the marketplace system." These
components are described in the Specification at a high level of generality.
See Spec. ,r,r 44--56, Figs. 1-3. The recitation of a practical application for
an abstract idea is not sufficient to transform the abstract idea into a patent-
eligible invention. See Cy her Source Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1371 (Fed. Cir. 2011) ("The Court [in 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."). A claim for
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Application 14/022,047
a new abstract idea is still an abstract idea. See Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151. Also, "[a]n abstract idea can
generally be described at different levels of abstraction." Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir. 2016).
Absent evidence to the contrary, we view the recited "an online
shopping experience" to be only an indication of the environment in which
the abstract idea is practiced.
MPEP 2106.05(h) concern[ s] generally linking use of a judicial
exception to a particular technological environment or field of
use, including a discussion of the exemplars provided herein,
which are based on Bilski, 561 U.S. at 612, and Flook, 437 U.S.
at 588-90. Thus, the mere application of an abstract method of
organizing human activity in a particular field is not sufficient
to integrate the judicial exception into a practical application.
Guidance at 55 n.32, see also Alice Corp., 573 U.S. at 223.
Appellants argue, "there are no § 102 or § 103 rejections remaining,
which is further evidence that the claims at issue are directed to patentable
subject matter." (Appeal Br. 29).
We disagree with Appellants. Although the second step in the
Mayo/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, 573 U.S. at 217-218 (alteration
in original). 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
Diamond v. Diehr, 450 U.S. at 188-89 ("The 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
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Application 14/022,047
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter."). The question in step two
of the Alice framework is not whether an additional feature is novel but
whether the implementation of the abstract idea involves "more than
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry.'" Content Extraction and Transmission
LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir.
2014) (quoting Alice, 573 U.S. at 225) (alteration in original).
For the reasons identified above, we are not persuaded of any
deficiencies in the Examiner's prima facie case of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner's§ 101 rejection
of claims 1, 4--8, 11-15, 18, 19, and 21.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 4--8, 11-
15, 18, 19, and 21 under 35 U.S.C. § 101.
DECISION
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)(l )(iv).
AFFIRMED
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