Expedia, Inc.

Patent Trials and Appeals Board

Jun 11, 2021

2020003699 (P.T.A.B. Jun. 11, 2021)

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.
14/073,252 11/06/2013 Glenn William Wallace EXIN.054C1 1985
20995 7590 06/11/2021
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
TUNGATE, SCOTT MICHAEL
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/11/2021 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte GLENN WILLIAM WALLACE, BARBARA PERKS,
MICHAEL EDWARD HAMM, JADA MICHELLE WILLIAMS,
WILLIAM GEORGE LONG, DEREK JOHN ZUMSTEG,
MICHAEL STEPHEN TUCK-LEE, and LAM CHI HA

Appeal 2020-003699
Application 14/073,252
Technology Center 3600
Before FRANCISCO C. PRATS, JOHN G. NEW, and JAMIE T. WISZ,
Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18, 21, 23, and 24. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Expedia, Inc.
Appeal Br. 3.
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2
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “methods for the purchase of
multiple travel items (e.g., a travel package) at a discount as compared to the
stand-alone price of the travel items, where the multiple travel items are
purchased separately at different times.” Spec. ¶ 16. The Specification
explains that the travel items “may include any transportation goods or
services (e.g., flights, lodging, automobiles, buses, trains, etc.) or other
goods or services related to activities (concerts, sporting events, amusement
parks, travel insurance, etc.).” Id.
In one embodiment, “first and second travel items may possess a
selected positional relationship, where the travel items are initially and/or
finally used within a selected distance of one another.” Spec. ¶ 17. For
example, “a lodging stay corresponding to [a] round-trip flight may be
required to occur within a selected distance (e.g., radius) of the departure
and/or arrival airports.” Id.
Claim 1 is representative and reads as follows:
1. A computer-implemented method of facilitating
searching for travel items, the computer-implemented method
comprising:
as implemented by a processor executing a set of
computer-executable instructions:
[a] receiving, from a traveler, a query for a travel
package, wherein the query comprises information
identifying a previously purchased travel item that was
purchased by the traveler and a criterion input by the
traveler, and wherein the previously purchased travel
item is associated with a location;
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[b] in response to the query, obtaining, from a data
store configured to store records of previously purchased
travel items, a record identifying the previously
purchased travel item;
after purchase of the previously purchased
travel item and without additional input by the traveler:
[c] determining a threshold distance from
the location associated with the previously
purchased travel item;
[d] modifying the query to include the
threshold distance;
[e] executing the query to identify a plurality of
additional travel items that satisfy the criterion and are
within the threshold distance; and
[f] generating a plurality of travel packages,
each of the plurality of travel packages comprising
the previously purchased travel item and at least
one travel item of the plurality of additional travel
items; and
[g] causing presentation of information identifying
the plurality of travel packages to the traveler.
Appeal Br. 20 (bracketed letters added to annotate steps of claimed method).
REJECTION(S)
The sole rejection before us for review is the Examiner’s rejection of
claims 1–18, 21, 23, and 24 under 35 U.S.C. § 101 as being directed to an
abstract idea without significantly more. Final Act. 7–11 (entered April 19,
2019).
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4
PATENT ELIGIBILITY
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. 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
Collaborative Services v. Prometheus Laboratories., Inc., 566 U.S. 66
(2012) and Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In
accordance with that framework, we first determine what concept the claim
is “directed to.” See Alice, 573 U.S. 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.”).
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 v. Kappos, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
If the claim is “directed to” an abstract idea, we turn 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
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5
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
In January of 2019, the USPTO published revised guidance on the
application of § 101. USPTO, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (“2019 Office
Guidance” or “Office Guidance”). In light of comments received in
response to the Office Guidance, the USPTO subsequently issued the
October 2019 Patent Eligibility Guidance Update (“October 2019
Update”).2 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.
Following the Office Guidance and the October 2019 Update, under
Revised Step 2A, we first look to whether the claim recites the following:
(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, under
Step 2B of the Office Guidance, to whether the claim:
(3) adds specific limitations beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or

2 https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf.
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(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 Office Guidance (84 Fed. Reg. at 56).
Analysis
Step 1
As seen above, Appellant’s representative claim 1 recites a “[a]
computer-implemented method” composed of a series of steps. Appeal Br.
20. We therefore discern no error in the Examiner’s determination that the
subject matter recited in claim 1 is a process, which falls within one of the
broad statutory categories of patent-eligible subject matter under 35 U.S.C.
§ 101. See Final Act. 8. Accordingly, we proceed to Step 2A, Prong One,
of the Office Guidance to determine the claim’s subject matter eligibility in
accordance with guidance under Mayo/Alice.
Office Guidance—Revised Step 2A, Prong 1
Applying Revised Step 2A, Prong 1, of the 2019 Office Guidance, the
Examiner determined that Appellant’s representative claim 1 recites “a
method of organizing human activity because the abstract idea is a
commercial interaction (including advertising, marketing, or sales activities
or behaviors).” Final Act. 8. The Examiner determined further that the
“mere nominal recitation of a presenting information, a processor, a data
store, a computing device, and a non-transitory computer-readable storage
medium does not take the claim of the method of organizing human activity
grouping. Thus, the claim recites an abstract idea.” Id.
Consistent with the Examiner’s determination, the 2019 Office
Guidance explains that abstract ideas include “[c]ertain methods of
organizing human activity.” 84 Fed. Reg. at 52. The 2019 Office Guidance
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explains further that methods of organizing human activity include
“commercial . . . interactions (including . . . advertising, marketing or sales
activities or behaviors).” Id.
We agree with the Examiner that Appellant’s representative claim 1
recites a method of organizing human activity, in the form of advertising,
marketing, and sales activities. The first step in the claimed process, step
[a], recites receiving a query from a traveler for a travel package, the query
including certain information, including information identifying a travel item
that the traveler has purchased previously. Appeal Br. 20. Because the
traveler’s query is an action performed pursuant to purchasing a travel
package, we agree with the Examiner that step [a] of claim 1 is properly
considered a sales activity.
Step [b] of claim 1 recites obtaining a record of the travel item
previously purchased by the traveler, step [c] recites determining a threshold
distance from the location associated with the traveler’s previously
purchased travel item, and step [d] recites modifying the query to include the
threshold distance. Appeal Br. 20. Step [e], in turn, recites executing the
query to identify a plurality of travel items that are within the threshold
distance, and step [f] recites generating travel packages that include the
previously purchased item and at least one of the items identified in the
proximity-based query. Id. Because steps [b]–[f] recite actions performed
pursuant to determining which travel packages should be presented to the
traveler, so that the travel packages can be sold to the traveler, we agree with
the Examiner that steps [b]–[f] of claim 1 recite sales activities.
Lastly, step [g] of claim 1 recites presentation of information
identifying the plurality of travel packages to the traveler. Appeal Br. 20.
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Because the travel packages are presented to the traveler for the purpose of
selling the travel packages to the traveler, we agree with the Examiner that
step [g] of claim 1 recites advertising, marketing, and sales activities.
Thus, whether the claimed steps are viewed individually or in
combination, the process of Appellant’s representative claim 1, in its
entirety, recites the abstract idea of determining relevant travel packages to
be presented to a traveler, so that the traveler may purchase one or more of
the packages. Appellant does not persuade us, therefore, that the Examiner
erred in determining that claim 1 recites an abstract idea.
To the extent Appellant contends that the two-pronged analysis
mandated by the 2019 Office Guidance is at odds with part one of the
Alice/Mayo test (see Appeal Br. 12–13), Appellant is reminded that “[a]ll
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update
at 1.
Moreover, because Appellant’s representative claim 1, as seen above,
in its entirety recites the abstract idea of determining relevant travel
packages to be presented to a traveler, so that the travel packages can be sold
to the traveler, we are not persuaded that claim 1 recites a technical solution,
in the form of an improved search process. See Appeal Br. 13–14; Reply Br
3–5. As noted above, rather than being technical processes, the 2019 Office
Guidance expressly states that sales activities are commercial interactions,
which in turn are abstract ideas in the form of methods of organizing human
activity. See 84 Fed. Reg. at 52 (methods of organizing human activity
include “commercial . . . interactions (including . . . advertising, marketing
or sales activities or behaviors)”).
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9
Appellant points to no authority suggesting that a process, such as that
recited in Appellant’s claim 1, which only recites steps performed pursuant
to selling a product (a travel package), can properly be considered anything
other than an abstract idea in the form of a sales activity. Appellant,
moreover, fails to identify which specific limitations recited in claim 1 are
directed to the use of a search engine. Further, because claim 1 expressly
recites the step of presenting the travel packages to the traveler (step [g]), for
the sole purpose of selling the packages to the traveler, we are not persuaded
that claim 1 fails to recite sales activities. See Reply Br. 4 (“The fact that the
subject matter search could be used during sales activities (when such sales
activities are not recited in the claims) does not render the search process
abstract.”).
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner erred in determining that claim 1 recites an abstract idea,
whether the claimed elements are viewed individually, or in combination.
Office Guidance—Revised Step 2A, Prong 2
Having determined under Revised Step 2A, Prong 1, of the Office
Guidance that Appellant’s claim 1 recites judicial exceptions, we turn to
Revised Step 2A, Prong 2, of the Office Guidance to determine whether
Appellant’s representative claim 1 recites additional elements that integrate
the judicial exceptions into a practical application. See Office Guidance (84
Fed. Reg. at 54–55).
The Examiner determined that Appellant’s representative claim 1 does
not recite additional elements that integrate the judicial exception into a
practical application, because any additional elements recited in the claim
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10
are generic computer elements recited at a high level of generality. See
Final Act. 9. We agree.
As discussed above, when the overall combination of steps in claim 1
is considered as whole, and also when steps [a]–[g] are considered
individually, claim 1 recites a process composed of steps performed pursuant
to selling the claimed travel package, which is among the categories of
activity listed in the Office Guidance as being a method of organizing
human activity. See Office Guidance (84 Fed. Reg. at 52). We are not
persuaded that claim 1 recites any additional elements, beyond the abstract
sales activities, that integrate the activities into a practical application.
Specifically, aside from the sales activities of steps [a]–[g] discussed
above, claim 1 recites only a “computer,” a “processor,” and “a data store.”
Appeal Br. 20. Because, aside from the recited sales activities, the claims
recite no technical details as to the computer, processor, or data store, we
discern no error in the Examiner’s determination that the computer-related
components recited in claim 1 are properly considered generic and specified
only at a very high level of generality. We therefore also discern no error in
the Examiner’s determination that, beyond the abstract idea recited in
Appellant’s representative claim 1, the claim does not recite additional
elements that integrate the judicial exception into a practical application,
whether the claimed process is considered as a whole, or whether the
claimed elements are considered individually. See Office Guidance (84 Fed.
Reg. at 55 (example in which a judicial exception is not integrated into a
practical application includes situation in which a claim “merely includes
instructions to implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea”).
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11
Appellant argues that the Examiner did not substantively analyze the
elements of claim 1 when determining that the claim does not integrate the
claimed abstract idea into a practical application. Appeal Br. 15–16; Reply
Br. 6–7.
We are not persuaded. As noted above, when the overall combination
of steps in claim 1 is considered as whole, and also when steps [a]–[g] are
considered individually, claim 1 recites a process composed of steps
performed pursuant to selling the claimed travel packages, which is among
the categories of activity listed in the Office Guidance as being a method of
organizing human activity. See Office Guidance (84 Fed. Reg. at 52).
Revised Step 2A, Prong 2, of the Office Guidance directs us to
determine whether Appellant’s representative claim 1 recites additional
elements, that is, elements beyond the recited judicial exceptions, that
integrate the judicial exceptions into a practical application. See Office
Guidance (84 Fed. Reg. at 54–55). As noted above, the only non-abstract
limitations recited in claim 1 are the computer-related components
(computer, processor, data store). Accordingly, we are not persuaded that,
in evaluating whether the generic computer-related components recited in
claim 1 integrate the claimed abstract sales activities of steps [a]–[g] into a
practical application, the Examiner failed to perform the Prong 2 analysis
properly.
Appellant contends that claim 1 reflects a technical improvement,
because the claim provides improved search results. Appeal Br. 15–16;
Reply Br. 5–7.
We do not find Appellant’s arguments persuasive. We acknowledge
that one example in which a judicial exception is integrated into a practical
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application is the situation in which the claim at issue includes “[a]n
additional element [which] reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field.” Office
Guidance (84 Fed. Reg. at 55) (emphasis added). Other than providing more
relevant travel packages that may be sold to a traveler, however, Appellant
points to no evidence suggesting an improvement in any technical field.
Moreover, even if it were true that the steps of Appellant’s claim 1
represented an improvement in providing more relevant travel packages for
sale to a particular traveler, the elements of claim 1 viewed as a whole recite
an abstract idea in the form of a method of organizing human activity, as
discussed above, and not a technical field. See 84 Fed. Reg. at 52 (abstract
ideas include certain methods of organizing human activity, such as
fundamental economic practices, which in turn include sales activities). As
our reviewing court has explained, improvement to the abstract idea itself is
not a technological improvement that is sufficient to confer eligibility for
patenting to the abstract idea. See In re Board of Trustees of Leland
Stanford Junior University, 991 F.3d 1245, 1251 (Fed. Cir. 2021) (“[T]he
improvement in computational accuracy alleged here does not qualify as an
improvement to a technological process; rather, it is merely an enhancement
to the abstract mathematical calculation . . . itself.”).
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner erred in determining that Appellant’s representative claim 1
does not recite additional elements that integrate the judicial exception into a
practical application.
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13
Office Guidance—Step 2B
Having determined that Appellant’s representative claim 10 recites a
judicial exception (abstract idea in the form of a method of organizing
human activity) under Revised Step 2A, Prong 1, of the 2019 Office
Guidance, and does not integrate that judicial exception into a practical
application under Revised Step 2A, Prong 2, we turn to Step 2B of the
Office Guidance. In Step 2B, we must determine whether (a) claim 10
recites specific limitations beyond the judicial exceptions that are not well-
understood, routine, or conventional in the field, or (b) whether claim 10
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See Office Guidance (84 Fed. Reg. at 56).
In the present case, applying Step 2B of the Office Guidance, the
Examiner determined that claim 1 simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See Final Act. 9–10. We agree
with the Examiner.
As discussed above, beyond the abstract sales-related activities recited
in steps [a]–[g] discussed above, the only non-abstract limitations recited in
claim 1 are the computer-related components (computer, processor, data
store). Appeal Br. 20. Because claim 1 recites no technical details as to the
computer, processor, and data store, we discern no error in the Examiner’s
determination that the computer-related components of claim 1 simply
append well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception recited in steps [a]–[g].
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14
We are not persuaded that, beyond the abstract sales activities recited
in claim 1, the claim provides something more, or an inventive concept, such
as improved search engine function. See Appeal Br. 17–18.
Appellant does not identify any specific limitations directed to a
search engine, or to search engine function. To the contrary, at best, the
alleged improvement is formulation of a query that provides more relevant
travel packages to be sold to a traveler, based on the proximity of previously
sold travel items. Thus, the improvement identified by Appellant resides in
the abstract idea, itself. As our reviewing court has explained, “merely
reciting an abstract idea by itself in a claim—even if the idea is novel and
non-obvious—is not enough to save it from ineligibility.” Solutran, Inc. v.
Elavon, Inc., 931 F.3d 1161, 1169 (Fed. Cir. 2019). Thus, by itself, the fact
that the steps in Appellant’s claim 1 might be inventive or unconventional,
that is, novel and unobvious, does not demonstrate that the claim recites an
inventive concept sufficient to confer eligibility for patenting. See In re
Board of Trustees of Leland Stanford Junior University, 991 F.3d at 1251
(“[N]ovelty [is not] the touchstone of patent eligibility.”).
Eligibility for Patenting—Conclusion
As discussed above, we are persuaded that Appellant’s representative
claim 1 recites a judicial exception under Revised Step 2A, Prong 1, of the
2019 Office Guidance, and does not integrate that judicial exception into a
practical application under Revised Step 2A, Prong 2. As also discussed
above, we are persuaded that, to the extent claim 1 recites additional
elements beyond the judicial exception recited in the claim, claim 1 simply
appends well-understood, routine, conventional activities previously known
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to the industry, specified at a high level of generality, to the judicial
exception.
Accordingly, applying the principles set forth in the 2019 Office
Guidance and October 2019 Update, we find that the preponderance of the
evidence supports the Examiner’s determination that Appellant’s claim 1 is
directed to subject matter that is ineligible for patenting. We, therefore,
affirm the Examiner’s rejection of claim 10 on that ground. Claims 2–18,
21, 23, and 24 fall with claim 11. See 37 C.F.R. § 41.37(c)(1)(iv).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–18, 21,
23, 24
101 Ineligibility for
Patenting
1–18, 21,
23, 24

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED