Jojy Devasia et al.

Patent Trials and Appeals Board

Sep 26, 2019

13737605 - (D) (P.T.A.B. Sep. 26, 2019)

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.
13/737,605 01/09/2013 Jojy Devasia 2043.B98US1 6657
49845 7590 09/26/2019
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
MILLER, BRITTNEY N
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JOJY DEVASIA and SARIKA KRISHNAN
________________

Appeal 2018-009139
Application 13/737,6051
Technology Center 3600
________________

Before JOHN A. EVANS, JASON J. CHUNG, and
SCOTT E. BAIN, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–5, 8–13, and 16–18.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to a shopping-cart feedback tool. Spec. ¶ 1.
Claim 1 is illustrative of the invention and is reproduced below with
emphases discussed infra in § C.1.:
1. A system comprising:

1 According to Appellant, eBay Inc. is the real party in interest. App. Br. 2.
2 According to the claims filed August 31, 2017, claims 6, 7, 14, 15, 19, and
20 have been cancelled.
Appeal 2018-009139
Application 13/737,605
2
one or more processors; and
a memory storing instructions that, when executed by the
one or more processors, cause the one or more processors to
perform operations comprising:
receiving, from a first user, item information associated
with an item to add to an electronic shopping-cart of the first
user;
adding the item to the electronic shopping-cart of the first
user;
receiving a request to share the electronic shopping-cart
of the first user with a second user;
sending shopping-cart information associated with the
electronic shopping-cart of the first user to the second user in an
electronic message that includes a link to cause display of a
feedback user interface on a device of the second user;
receiving feedback from the second user via the feedback
user interface displayed on the device of the second user, the
feedback corresponding to the item in the electronic shopping-
cart of the first user, the feedback including a recommendation
for a further item;
sending the feedback and a button that, upon selection,
swaps the item in the electronic shopping-cart of the first user
with the further item recommended by the second user in
response to receipt of the feedback that corresponds to the item
in the electronic shopping-cart of the first user;
receiving a selection of the button from the first user;
in response to the selection of the button from the first
user, swapping the item in the electronic shopping-cart of the
first user with the further item recommended by the second user;
sending an electronic notification to the second user, upon
the swapping of the item in the electronic shopping-cart of the
first user with the further item recommended by the second user;
and
causing display of the electronic shopping-cart of the first
user on an electronic website.

App. Br. 18 (Claims Appendix) (emphases added).

Appeal 2018-009139
Application 13/737,605
3
REJECTION AT ISSUE
Claims 1–5, 8–13, and 16–18 stand rejected under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter. Final Act. 2–6.
ANALYSIS
A. Legal Principles
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 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.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
Appeal 2018-009139
Application 13/737,605
4
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.
(15 How.) 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 187; see also id. at 192 (“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., id. at 187 (“It is now
commonplace that an application of a law of nature or 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 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
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. (quoting Mayo, 566 U.S. at 77).
Appeal 2018-009139
Application 13/737,605
5
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (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 to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
B. The Examiner’s Conclusions and Appellants’ Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Final Act. 3, 7. The Examiner also determines
the present claims do not amount to significantly more than an abstract idea
itself because the Examiner determines the abstract idea is implemented on
generic components that are well-understood, routine, and conventional
Appeal 2018-009139
Application 13/737,605
6
previously known to the industry. Ans. 3 (citing M.P.E.P. § 2106.05(d)(II)
and case law from this section holding “receiving or transmitting data over a
network” is well-understood, routine, and conventional); Final Act. 4, 6.
Appellants argue the Examiner fails to provide adequate evidence to
support their finding that the abstract idea is implemented on generic
components that are well-understood, routine, and conventional previously
known to the industry. App. Br. 11–15; Reply Br. 2–6. Appellants argue
the lack of prior art rejection is evidence that the present claims do not recite
an abstract idea implemented on generic components that are well-
understood, routine, and conventional. App. Br. 15–16 (citing BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016)). Appellants argue, similar to BASCOM, the present claims recite
a combination of non-conventional and non-generic arrangement of known,
conventional elements, which results in an inventive concept. App. Br. 12–
16; Reply Br. 4–6. We disagree with Appellants.
C. Discussion
1. Step 2A, Prong 1
The emphasized portions of claim 13, reproduced above (see supra at
2), recite commercial interactions (including sales activities). According to
the Memorandum, commercial interactions (including sales activities) fall
into the category of certain methods of organizing human activity. See
Memorandum. Moreover, those certain methods of organizing human

3 Claim 1, reproduced above with emphases, recites similar features as
independent claims 9 and 16. Appellants do not argue claims 2–5, 8–13, and
16–18 separately, but assert the § 101 rejection of those claims should be
withdrawn for at least the same reasons as argued for independent claim 1.
App. Br. 8–15. We, therefore, group claims 1–5, 8–13, and 16–18 together
and refer to those claims as the “present claims.”
Appeal 2018-009139
Application 13/737,605
7
activity are a type of an abstract idea. See id.
Appellants do not proffer arguments pertaining to Step 2A, prong 1.
Because the present claims recite commercial interactions, which fall into
the category of certain methods of organizing human activity (i.e., an
abstract idea), we proceed to prong 2.
2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Appellants do not make any arguments pertaining to step 2A, prong 2.
Because the present claims recite an abstract idea that is not integrated into a
practical application, we proceed to Step 2B.
3. Step 2B
We agree with the Examiner’s determination that the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional. Ans. 3 (citing M.P.E.P. § 2106.05(d)(II)); Final Act. 4, 6.
The Specification supports the Examiner’s determination in this regard
because it explains that “one or more processors” and “device” are generic
components. Spec. ¶¶ 50–52, 61. Appellants’ Specification indicates these
elements were well-understood, routine, and conventional components
Appeal 2018-009139
Application 13/737,605
8
because it describes them at a high level of generality and in a manner that
indicates that they are sufficiently well-known. Id.
We disagree with Appellants’ argument that the Examiner fails to
provide adequate evidence to support their finding that the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional previously known to the industry. App. Br. 11–15; Reply Br.
2–6. Appellants had adequate notice of the Examiner’s finding for the
following reasons. Although the Examiner does not cite to a specific case
name, the Examiner cites to M.P.E.P. § 2106.05(d)(II) and quotes the
various cases listed in that M.P.E.P. section, which held “receiving or
transmitting data over a network” is well-understood, routine, and
conventional. Appellants reiterate the Examiner’s finding by stating “Courts
may have found ‘receiving and transmitting data over a network’ to be
routine and conventional” (Reply Br. 2).
With regard to Appellants’ argument that the lack of prior art rejection
is evidence that the present claims do not recite an abstract idea
implemented on generic components that are well-understood, routine, and
conventional, (App. Br. 15–16), Appellants improperly conflate the
requirements for eligible subject matter (§ 101) with the independent
requirements of novelty (§ 102) and non-obviousness (§ 103). “The
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” Diehr,
450 U.S. at 188–89; see also Genetic Techs., 818 F.3d at 1376 (stating that,
“under the Mayo/Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
Appeal 2018-009139
Application 13/737,605
9
novelty of that discovery for the inventive concept necessary for patent
eligibility”).
We disagree with Appellants’ argument that, similar to BASCOM, the
present claims recite a combination of non-conventional and non-generic
arrangement of known, conventional elements, which results in an inventive
concept. App. Br. 12–16; Reply Br. 4–6. Instead, the present claims are
directed to an abstract idea using generic components as discussed supra, in
§§ C.1. and C.2. or at best, improving an abstract idea—not an inventive
concept.
Appellants do not argue claims 2–5, 8–13, and 16–18 separately, but
assert the § 101 rejection of those claims should be withdrawn for at least
the same reasons as argued for independent claim 1. App. Br. 8–15. Based
on our review of the dependent claims, these claims do not recite any
additional features that would transform the abstract idea embodied in
claims 1, 9, and 16 into an inventive concept. Accordingly, we sustain the
Examiner’s rejection of: (1) independent claims 1, 9, and 16; and
(2) dependent claims 2–5, 8, 10–13, 17, and 18 under 35 U.S.C. § 101.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
DECISION
We affirm the Examiner’s decision rejecting claims 1–5, 8–13, and
16–18 under 35 U.S.C. §§ 101.
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).
AFFIRMED