International Business Machines Corporation

Patent Trials and Appeals Board

Jan 29, 2021

2020002474 (P.T.A.B. Jan. 29, 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.
14/700,512 04/30/2015 Xuan Chen CN920140224US1 7992
75584 7590 01/29/2021
IBM Corp. (WIP)
c/o Walder Intellectual Property Law, P.C.
445 Crestover Circle
Richardson, TX 75080
EXAMINER
PRASAD, NANCY N
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
01/29/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XUAN CHEN, MIAO HE, HAO JI,
CHANG R. REN, BING SHAO,
QI M. TIAN, and XIAOBO ZHENG
Appeal 2020-002474
Application 14/700,512
Technology Center 3600

Before JAMES R. HUGHES, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

HUGHES, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 10, 11, 14–16, 18–20, 23–25, and 27 are pending, stand
rejected, are appealed by Appellant,1 and are the subject of our decision
under 35 U.S.C. § 134(a). See Final Act. 1–2; Appeal Br. 4–18.2 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) (2015). Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 2.
2 Throughout our decision we refer to Appellant’s Specification (“Spec.”)
filed Apr. 30, 2015; Appeal Brief (“Appeal Br.”) filed Aug. 26, 2019; and
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CLAIMED SUBJECT MATTER
The invention generally relates to “predicting individual customer
returns in e-commerce” so as to “minimize costs associated with product
returns.” See Spec. ¶¶ 1, 3. In particular, the invention predicts “a
customer’s probability of returning the purchased product on an individual
level based on a taste associated with the customer.” Id. ¶ 17. This,
according to Appellant, improves upon prior solutions that “provide
customer return prediction for products from a macro level, which is not
accurate when it comes down to each individual purchase.” Id. If the
probability of a product return exceeds a threshold, action may be taken to
reduce future orders of the product, indicate the need for product
improvement, present a preemptive notice to a customer when placing an
order, or improve the product description page. Id. ¶ 42. Claims 10
(directed to a computer program product) and 19 (directed to an apparatus)
are independent and recite similar limitations. Claim 10, reproduced below,
is illustrative of the claimed subject matter:
10. A computer program product comprising a computer
readable storage medium having a computer readable program
stored therein, wherein the computer readable program, when
executed on a computing device, causes the computing device to
implement a product-return prediction mechanism for predicting
and reducing product return and further causing the computing
device to:

responsive to a current product being purchased by a
customer via an e-commerce purchase, determine, by an e-
commerce order filtering module of the product-return

Reply Brief (“Reply. Br.”) filed Feb. 7, 2020. We also refer to the
Examiner’s Final Office Action (“Final Act.”) mailed Mar. 29, 2019; and
Answer (“Ans.”) mailed Dec. 9, 2019.
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predication [sic] mechanism, whether the current product is a
non-regular product purchase, wherein the non-regular product
purchase is at least one of a product purchase for another person
as identified by utilization of a shipping address other than an
address recorded for the customer or a purchase of a product that
is the same as the current product within a predetermined time
frame;

filtering out, by the e-commerce order filtering module,
the non-regular product purchase thereby leaving a historical
regular product purchase;

responsive to the current product being the historical
regular product purchase, for the historical regular product
purchase associated with the current product purchase by the
customer:

generate, by a customer return probability
distribution generation engine of the product-return
predication [sic] mechanism, a distribution of a number of
product purchases g1 (D, T), wherein D represents a
deviation or distance of the purchased product from a
customer’s preference for the current product and wherein
T represents a time the customer spent browsing a website
for the current product; and

generate, by the customer return probability
distribution generation engine, distribution of a number of
product returns, g2 (D, T);

determine, by the customer return probability distribution
generation engine, a probability of return (Prob(return)) of the
current product as a function of the number of product purchases
(g1), the number of product returns (g2), the distance D, and the
browsing time T, Prob(return) = f (g1, g2, D, T); and

responsive to the identified probability of return being
greater than a predetermined threshold, improving, by the
product-return predication [sic] mechanism, a product
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description page associated with the current product in order to
reduce purchasing mistakes.

Appeal Br. 19–20 (Claims App.).

REJECTION
The Examiner rejects claims 10, 11, 14–16, 18–20, 23–25, and 27
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
See Final Act. 2–8.
ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77–80 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The
framework requires us first to consider “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If so, we then examine “the elements of [the] claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
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(quoting Mayo, 566 U.S. at 78, 79). That is, we examine the claim for an
“inventive concept,” “an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Id. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 73).
The Patent Office has published revised guidance concerning this
framework and the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter “2019 Revised Guidance”).3 Under this subject matter
eligibility guidance in the MPEP, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“Step 2A, prong 1”) (see MPEP § 2106.04); and
(2) additional elements that integrate the judicial exception into
a practical application (hereinafter “Step 2A, prong 2”) (see
MPEP §§ 2106.04; 2106.04(d); 2106.05(a)–(c), (e)–(h)).
See MPEP §§ 2106.04, 2106.05; 2019 Revised Guidance, 84 Fed. Reg. at
51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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 MPEP

3 The Office’s current eligibility guidance may also be found in the most
recent update to the Manual of Patent Examination Procedure (“MPEP”),
Ninth Edition, Revision 10.2019 (rev. June 2020). See MPEP §§ 2103
through 2106.07(c).
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§ 2106.04(d); 2019 Revised Guidance, 84 Fed. Reg. at 54. When the
judicial exception is so integrated, then the claim is not directed to a judicial
exception and is patent eligible under 35 U.S.C. § 101. See MPEP
§ 2106.04(d); 2019 Revised Guidance, 84 Fed. Reg. at 54.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See MPEP § 2106.04(d);
2019 Revised Guidance, 84 Fed. Reg. at 56; see also Alice, 573 U.S. at 217–
18.
For example, we 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.4
See MPEP § 2106.05; 2019 Revised Guidance, 84 Fed. Reg. at 56. With
these principles in mind, we turn to the merits of the § 101 rejection.
The Examiner rejects Appellant’s claims 10, 11, 14–16, 18–20, 23–
25, and 27 as being directed to patent-ineligible subject matter. See Final
Act. 2–8. Appellant argues independent claims 10 and 19 together. See
Appeal Br. 4–16. Appellant argues dependent claims 11, 14–16, 18, 20, 23–
25, and 27 separately from the independent claims. See id. at 16–18.
Accordingly, we address the Examiner’s rejection of independent claims 10
and 19 as a group based on claim 10, and dependent claims 11, 14–16, 18,

4 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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20, 23–25, and 27 as another group, as permitted by 37 C.F.R.
§ 41.37(c)(1)(iv).
Independent Claims 10 and 19
Statutory Subject Matter
Claim 10 recites a “computer program product comprising a computer
readable storage medium.” Appeal Br. 19 (Claims App.). Accordingly, we
analyze Appellant’s claim 10 as reciting a manufacture, which is a statutory
category of invention (subject matter) under § 101 (USPTO’s Step 1).
Abstract Idea
The Examiner rejects Appellant’s claim 10 as being directed to patent-
ineligible subject matter. See Final Act. 2–8. Specifically, the Examiner
concludes that claim 10 recites an abstract idea that falls within the category
of “‘certain methods of organizing human activity’ (business relations;
relationships or interactions between people).” Final Act. 3. Additionally,
the Examiner reasons that claim 10 “belong[s] to the grouping of ‘certain
methods of organizing human activity’ because the claims are related to
predicting individual customer returns.” Id. at 4; Ans. 4–5.
Appellant contends “the claimed invention is not directed to the
general concept of predicting individual customer returns, but rather is
directed to a solution for the way that automated computer systems are able
to predict customers’ merchandise returns.” Appeal Br. 5. Appellant argues
that “the execution of a process in a computer system cannot be performed
within a human mind since human minds are not computer systems.” Id. at
6. Rather, Appellant argues, “[c]learly, from the recitation of the problem in
the present specification . . . the invention is specifically directed to solving
a problem in the computer arts with a technological computer solution.” Id.
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at 7. Appellant argues that “an improvement is achieved through an
assertedly inventive programming of the data processing system by
specifically reciting that a product-return prediction mechanism is
implemented for predicting and reducing product return,” and a human mind
“would not need to go through the specific combination of operations set
forth in the present claims.” Id. at 9. Appellant further contends claim 10
does not recite “any fundamental economic principles or practices,” “any
commercial or legal interactions,” or “the management of personal behavior
or relationships or interactions between people.” Id. at 9–10.
For the reasons discussed below, we conclude Appellant’s claim 10
(as well as claim 19) recites an abstract idea. In view of the 2019 Revised
Guidance, we clarify and expand the Examiner’s reasoning as follows.
Claim 10 recites a “computer program product comprising a computer
readable storage medium having a computer readable program stored
therein,” where the program, when executed by a computing device,
performs the following functions: “responsive to a current product being
purchased by a customer via an e-commerce purchase . . . determine . . .
whether the current product is a non-regular product purchase . . .”; “filtering
out . . . the non-regular product purchase thereby leaving a historical regular
product purchase”; “responsive to the current product being the historical
regular product purchase . . . : “generate . . . a distribution of a number of
product purchases . . . ; and generate . . . distribution of a number of product
returns”; “determine . . . a probability of return (Prob(return)) of the current
product . . .”; “responsive to the identified probability of return being greater
than a predetermined threshold, improving . . . a product description page
associated with the current product in order to reduce purchasing mistakes.”
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Appeal Br. 19–20 (Claims App.). In other words, the claimed program
determines whether a current product purchase is a non-regular purchase
(e.g., a gift or a repeat purchase), and if so, filters it out (see Spec. ¶ 36). For
a current product purchase that is a regular historical purchase that remains
after filtering, the program generates a distribution of a number of product
purchases and a distribution of a number of product returns (see id. ¶¶ 37–
39), and then determines a probability of return of the current product being
purchased (see id. ¶ 41). Finally, the program improves a product
description page of the current product if the probability of return is above a
threshold (see id. ¶ 42).
In summary, claim 1 recites determining whether a customer is likely
to return a particular purchased product, and if so, improving a product
description for the product.
As set forth by the Examiner, claim 10 recites a patent-ineligible
method of organizing human activity. See Final Act. 3. For example,
limitations of claim 10 fall within the patent-ineligible subcategory of
“commercial or legal interactions (including . . . marketing or sales activities
or behaviors . . .).” MPEP § 2106.04(a)(2)(II); see MPEP
§ 2106.04(a)(2)(II)(B); 2019 Revised Guidance, 84 Fed. Reg. at 52; see also
October 2019 Update: Subject Matter Eligibility 6, available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf (hereinafter “October 2019 Update”).
Appellant’s argument that “there is no recitation of any human
interaction at all” and “Appellants are not claiming any management of
human activity” (Reply Br. 5, 7; see also Appeal Br. 10 (presenting similar
arguments)), is not persuasive. Claim 10 involves activity of a customer,
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i.e., a human being, because the claimed program performs functions
“responsive to a current product being purchased by a customer via an e-
commerce purchase” and considers “a customer’s preference for the current
product” and “a time the customer spent browsing a website for the current
product.” Appeal Br. 19 (Claims App.). That claim 10 requires activity by
computer components, e.g., “an e-commerce order filtering module of the
product-return predic[]tion mechanism” (id.), does not negate the fact that
claim 10 recites a patent-ineligible method of organizing human activity (see
MPEP § 2106.04(a)(2)(II); October 2019 Update at 5 (“certain activity
between a person and a computer . . . may fall within the ‘certain methods of
organizing human activity’ grouping.”). Rather, “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) (finding patent-ineligible a claim that
recited “(1) testing a plurality of prices; (2) gathering statistics generated
about how customers reacted to the offers testing the prices; (3) using that
data to estimate outcomes . . . ; and (4) automatically selecting and offering a
new price based on the estimated outcome.” Id. at 1361.).
We further clarify that claim 10 limitations that fall within the
category of certain methods of organizing human activity also recite patent-
ineligible mental processes. See October 2019 Update at 2 (“[C]laims may
recite multiple abstract ideas, which may fall in the same or different
groupings.”); MPEP § 2106.04(II)(B). For example, the following claim 10
limitations all relate to observations or evaluations that can be practically
performed in the human mind, or with pen and paper: “determine . . .
whether the current product is a non-regular product purchase,” “filtering out
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. . . the non-regular product purchase thereby leaving a historical regular
product purchase,” “generate . . . a distribution of a number of product
purchases . . . ; and generate . . . distribution of a number of product
returns”; and “determine . . . a probability of return (Prob(return)) of the
current product . . . .” Appeal Br. 19–20 (Claims App.).
We are not persuaded by Appellant’s argument that “the claims set
forth specific computing mechanisms and a specific ordered combination of
operations that are only performed in a specifically configured data
processing system according to the claimed invention, and not performed in
the human mind.” Reply Br. 4; see also Appeal Br. 5–9 (presenting similar
arguments). “Claims can recite a mental process even if they are claimed as
being performed on a computer.” MPEP § 2106.04(a)(2)(III)(C); see
October 2019 Update at 8.
For example, in Mortgage Grader, Inc. v. First Choice Loan Services
Inc., the representative claim related to anonymous loan shopping and
recited “a borrower grading module which uses at least the entered personal
loan evaluation information to calculate a credit grading for the borrower”
among other functionality that “could all be performed by humans without a
computer.” 811 F.3d 1314, 1318, 1324 (Fed. Cir. 2016). Similarly in this
case, we see no specific claim limitation that could not be performed by a
human without a computer. For instance, the “e-commerce order filtering
module” determines “whether the current product is a non-regular product
purchase” simply by considering the “utilization of a shipping address other
than an address recorded for the customer or a purchase of a product that is
the same as the current product within a predetermined time frame.” Appeal
Br. 19 (Claims App.). This involves merely observing historical data, which
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a human is fully capable of doing. As another example, the “customer return
probability distribution generation engine” generates “a distribution of a
number of product purchases” and a “distribution of a number of product
returns” (id. at 19–20), which involves merely evaluating historical data
based on mathematical concepts—a task a human could perform with the aid
of pen and paper (see MPEP § 2106.04(a)(2)(III)(B); October 2019 Update
at 9 (“The use of a physical aid (i.e., the pen and paper) to help perform a
mental step (e.g., a mathematical calculation) does not negate the mental
nature of this limitation.”)).
In summary, we conclude Appellant’s claim 10 recites a judicial
exception (USPTO’s Step 2A, Prong 1; see 2019 Revised Guidance) because
claim 10 recites a program for determining whether a customer is likely to
return a particular purchased product that consists of a patent-ineligible
method of organizing human activity as well as patent-ineligible mental
processes that can be practically performed in the human mind (or utilizing
pen and paper).
Practical Application
Having determined that claim 10 recites an abstract idea, we next
determine, under Step 2A, Prong 2 of the 2019 Revised Guidance, whether
claim 10 is directed to that abstract idea, or whether it integrates the abstract
idea into a practical application of that abstract idea. See MPEP
§ 2106.04(d); 2019 Revised Guidance, 84 Fed. Reg. at 54. In doing so, we
evaluate the claim as a whole to determine whether the claim “integrate[s]
the [abstract idea] into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal Circuit.” 2019
Revised Guidance, 84 Fed. Reg. at 55; see also MPEP § 2106.04(d)(I);
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October 2019 Update 12 (discussing the practical application analysis). That
is, we consider any additional elements recited in the claim along with the
limitations that recite an abstract idea to determine whether the claim
integrates the abstract idea into a practical application. See MPEP
§ 2106.04(d)(III); October 2019 Update 12.
Claim 10 recites additional elements, including the following:
“computing device”; “product-return prediction mechanism”; “e-commerce
order filtering module”; and “customer return probability distribution
generation engine.” Appeal Br. 19–20 (Claims App.).
The Specification describes the computing device and other
computing components at a high level of generality in terms of the functions
being performed. For example, the written description provides that the
“data processing system” for implementing the invention (Spec. ¶ 25) may
be a “client computing device[],” a “server computing device[],” “a portable
computing device,” or “any known or later developed data processing
system without architectural limitation” (id. ¶ 34). The “product-return
prediction mechanism,” “e-commerce order filtering module,” and
“customer return probability distribution generation engine” are not
described in any detail, other than by the functions they perform, and they
are thus essentially black boxes. See id. ¶¶ 35–43. Accordingly, Appellant’s
arguments that the additional elements integrate the abstract idea into a
practical application (Appeal Br. 14–15) are unavailing.
Appellant argues that “the present invention is directed to a
technological solution to a technological and physical problem.” Appeal
Br. 5. We disagree because claim 10 does not recite with specificity how the
additional elements perform the claimed functionality and the Specification
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does not describe the workings of the additional elements so as to
distinguish them from the way a human would perform the claimed
functionality. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1312 (Fed. Cir. 2016) (“[T]he abstract idea exception prevents
patenting a result where ‘it matters not by what process or machinery the
result is accomplished.’”); id. at 1314 (“The computer here is employed to
perform a distinct process to automate a task previously performed by
humans.”).
Appellant also argues that claim 10 “recite[s] an improvement to
computer capabilities and not merely an invocation of computers as a tool.”
Reply Br. 11. We disagree because Appellant’s claims are not directed to
“an improvement to computer functionality itself,” but rather to “other tasks
for which a computer is used in its ordinary capacity.” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). The Specification
reveals that the alleged improvement in Appellant’s invention relates to what
data should be analyzed and how it should be analyzed for predicting
customer returns, and not to the functioning of a computer itself. See Spec.
¶ 17 (“Current solutions with predictive capability only provide customer
return prediction for products from a macro level . . . . [T]he illustrative
embodiments . . . predict[] customers’ tastes towards different products and
predict[] a probability that a customer will return a previously bought
product.”). That is, Appellant’s improvement is to the abstract idea, or, as
the Examiner states, “[t]his is a business improvement not a technical
improvement.” Ans. 6. But even new abstract ideas are not patent-eligible.
See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed.
Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”).
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Thus, we conclude the claims are directed to an abstract idea that is
not integrated into a practical application.
Inventive Concept, Step 2B
Having concluded Appellant’s claims are directed to an abstract idea
under the 2019 Revised Guidance (Step 2A analysis), we consider whether
claim 10 includes an inventive concept, that is, whether the claim has
additional elements that “‘transform the nature of the claim’ into a patent-
eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78).
As discussed above, this requires us to evaluate whether the additional
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality.” 2019 Revised
Guidance, 84 Fed. Reg. at 56; see MPEP §§ 2106.05, 2106.05(d). If the
Examiner or the Board determines under Step 2B that the additional
elements (or combination of additional elements) amount to significantly
more than the exception itself, the claim is eligible, thereby concluding the
eligibility analysis.
Here, the Examiner determined that Appellant’s claim 10 (as well as
claim 19) “does not include additional elements that are sufficient to amount
to significantly more than the judicial exception.” Final Act. 6.
Appellant contends “the claimed invention improves the functioning
of the computer by providing an improved computer tool.” Appeal Br. 16.
More specifically, Appellant argues the claims recite “a specific ordered
combination of operations performed specifically by a computing tool that is
specifically configured to perform these operations which can only be done
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in a computer.” Reply Br. 13. Appellant further contends “at no time has
the Examiner given any evidence that the specific operations recited in the
present claims are a well-known, routine, or conventional technique.” Reply
Br. 12.
Appellant fails to persuade us of error in the Examiner’s rejection
with respect to the second Alice step (Step 2B). We agree with the Examiner
that Appellant’s claim 10 does not evince an “inventive concept” that is
significantly more than the abstract idea itself. In particular, Appellant fails
to explain how the additional elements (supra) add specific limitations
beyond the judicial exception that are not well-understood, routine, and
conventional in the field.
As previously discussed, claim 10 recites additional elements
(“computing device”; “product-return prediction mechanism”; “e-commerce
order filtering module”; and “customer return probability distribution
generation engine”) that perform the recited functionality. The Specification
describes the “computing device” in the most generic of terms—“any known
or later developed data processing system without architectural limitation”
(Spec. ¶ 34)—and describes the programming of the computing device (i.e.,
the “prediction mechanism,” “filtering module,” and “generation engine”)
merely based on the functions performed by the computing device, not on
any specific programming (see id. ¶¶ 35–43; see also id. ¶ 18 (“the
mechanisms described herein may be implemented as . . . software executing
on general purpose hardware”)). We thus see no evidence in the record that
the additional elements are anything other than well-understood, routine, and
conventional computing components specified at a high level of generality.
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See MPEP §§ 2106.05(d)(I)(2) and 2106.07(a)(III); 2019 Revised Guidance,
84 Fed. Reg. at 56; Berkheimer Memo5 § III.A.1.
Appellant has not persuasively shown the additional elements amount
to significantly more than the abstract idea when considered either
individually or as a combination. Thus, we are not persuaded of Examiner
error in the rejection of claim 10, and claim 19 argued therewith, under
35 U.S.C. § 101.
Dependent Claims 11, 14–16, 18, 20, 23–25, and 27
Appellant contends “the Final Office Action has failed to establish a
prima facie case of patent ineligibility with regard to all of the dependent
claims.” Appeal Br. 17. Appellant further contends various features of the
dependent claims “demonstrate the fact that the claimed invention is directed
to an improved computer tool, and not an alleged abstract idea, as well as
demonstrate the practical application of the claimed invention.” Id.
Specifically, Appellant argues that the dependent claim features that
“reduce[] future orders of the current product” (claims 14 and 23),
“instantiate[] a product improvement resulting in a better product with a
lower probability of return” (claims 15 and 24), “present[] a preemptive
notice to the customer causing the customer to review the current product
one last time before finalization of purchase of the current product” (claims

5 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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16 and 25), and “send[] out reward coupons to incentivize the customer to
keep the current product” (claims 18 and 27) demonstrate that the claimed
invention is directed to an improved computing tool. Appeal Br. 17–18.
We are not persuaded by Appellant’s arguments. First, we note that
the
PTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies 35 U.S.C. § 132, in “notify[ing]
the applicant . . . [by] stating the reasons for [its] rejection, or
objection or requirement, together with such information and
references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.”
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original)
(quoting 35 U.S.C. § 132). Here, the Examiner’s § 101 rejection of the
dependent claims satisfies § 132 because it states that “all of the dependent
claims have been evaluated and it was found that they all inherit the
deficiencies set forth with respect to the independent claims” and “it should
be noted that the dependent claims do not include limitations that overcome
the stated assertions.” Final Act. 8. Accordingly, Appellant was properly
notified as to the nature and reason for the rejection, namely, that the
dependent claims do not recite additional elements such that they are not
directed to the abstract idea identified for the independent claims.
Second, each of the identified features in the dependent claims is part
of the abstract idea because a human being could perform each of the
functions of “reduc[ing] . . . future orders,” “instantiat[ing] . . . a product
improvement,” “present[ing] . . . a preemptive notice,” and “send[ing] . . .
out reward coupons.” Appeal Br. 20–21, 23–24 (Claims App.). These
features are all sales and marketing activities that fall within the category of
patent-ineligible methods of organizing human activity, and there is no
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claimed practical application of these features. The fact that the claims
recite performing these activities by the product-return prediction
mechanism does not alter this conclusion, because the prediction mechanism
is not recited with any specificity as to how it performs the claimed
functionality and the Specification does not describe the workings of the
prediction mechanism, as noted above.
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claims 10 and 19, argued together as a
group, and dependent claims 11, 14–16, 18, 20, 23–25, and 27, argued
together as another group.
CONCLUSION
For the reasons discussed above, we determine that claims 10, 11, 14–
16, 18–20, 23–25, and 27 are directed to an abstract idea that is not
integrated into a practical application and do not include an inventive
concept.
Appellant has not shown that the Examiner erred in rejecting claims
10, 11, 14–16, 18–20, 23–25, and 27 under 35 U.S.C. § 101. We therefore
affirm the Examiner’s rejection of claims 10, 11, 14–16, 18–20, 23–25, and
27.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
10, 11, 14–16,
18–20, 23–25,
27
101 Eligibility 10, 11, 14–16,
18–20, 23–25,
27

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Application 14/700,512

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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)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED