Kyle Brown

Patent Trials and Appeals Board

Nov 29, 2019

14745431 - (D) (P.T.A.B. Nov. 29, 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.
14/745,431 06/20/2015 Kyle Brown RSW920030135US2
(651CON)
3102
46320 7590 11/29/2019
Shutts & Bowen LLP
STEVEN M. GREENBERG
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
EXAMINER
AIRAPETIAN, MILA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
11/29/2019 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):
docketing@crgolaw.com
patents@shutts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
______________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KYLE BROWN
____________________

Appeal 2018-0017821
Application 14/745,431
Technology Center 3600
____________________

Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 28–47, which
constitute all the claims pending in this application. We have jurisdiction to
review the case under 35 U.S.C. §§ 134(a) and 6(b).
The invention relates generally to “[e]-commerce and, more
particularly to online comparison shopping.” Spec. 1:10–11.
In accordance with one embodiment of the present invention, the
user uses an agent to set up a search strategy (e.g., recurring
hourly, weekly, or daily) that scans one or more shop-bot sites
and/or a set of other publicly-searchable websites to see if the
item can be purchased for the target price or below. When a

1 The Appellant identifies International Business Machines Corporation as
the real party in interest. Appeal Br. 2.
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determination is made that the item can be purchased at or below
the target price (an alarm condition), the agent asynchronously
notifies the user (e.g., through a pop-up dialog or an email) of the
details regarding where and how the item can be purchased.
Spec. 3:15–23. Independent claim 28 is representative and illustrative.
28. A computer-implemented method for identifying
acquisition parameters for one or more commodities, comprising
the steps of:
receiving from different end users, in a remote server
computer, different information comprising a uniform resource
locator (URL) link to one or more commodities, a maximum
price desired, a search term time-limit, and an email address of
an end-user requesting a search all defined by the end user in a
template associated with a client-side browser plug-in; and,
processing for each end user, the received information on
the remote server computer comprising:
identifying said one or more commodities using one
or more searchable identification parameters;
defining a monitoring duration during which
acquisition parameters for said one or more commodities will be
monitored, including
defining an overall duration for conducting said
monitoring step; and
defining a refresh interval for said monitoring
step;
setting multiple different alarm conditions on
at least one of the acquisition parameters;
monitoring multiple different publicly
searchable, network-accessible databases for acquisition
parameters for said one or more commodities by conducting
different searches using said one or more searchable
identification parameters for the overall duration and repeating
the monitoring step subsequent to the refresh interval;
determining whether any of the alarm conditions are
met by the acquisition parameters while monitoring the
databases; and
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triggering an event responsive to an alarm condition
having been met before completing the monitoring of the
databases.

The Examiner rejected claims 28–47 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. We AFFIRM.
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.
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. See 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
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (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.
(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 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., 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
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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).
“[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. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“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 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
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.
See Guidance.
ANALYSIS
Step 2A, Prong 1: “recites a judicial exception”
The Examiner asserts that the independent claim 28 is directed to
“comparison shopping which is considered to be a method of organizing
human activities and/or a fundamental economic practice.” Final Act. 6.
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The Examiner also asserts that several of the steps recited in independent
claim 28 are steps that can be performed mentally. Final Act. 6. We agree
with both assertions.
Independent method claim 28 recites, among other steps,
receiving from different end users . . . different
information comprising . . . one or more commodities, a
maximum price desired, a search term time-limit. . . ;
identifying said one or more commodities using one or
more searchable identification parameters;
defining a monitoring duration during which acquisition
parameters for aid one or more commodities will be monitored;
defining an overall duration for conducting said
monitoring step;
defining a refresh interval for said monitoring step;
setting multiple different alarm conditions on at least one
of the acquisition parameters;
monitoring multiple different publicly searchable . . .
databases for acquisition parameters for said one or more
commodities by conducting different searches using said one or
more searchable identification parameters for the overall
duration and repeating the monitoring step subsequent to the
refresh interval;
determining whether any of the alarm conditions are met
by the acquisition parameters while monitoring the databases;
and
triggering an event responsive to an alarm condition
having been met before completing the monitoring of the
databases.
We agree that these are all steps one would perform in comparison shopping.
For example, in order to perform comparison shopping, a user would need to
be “receiving” and “identifying said one or more commodities” to compare.
A user would then monitor, for example, prices for those parameters over a
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given period of time to ensure that they actually do receive the lowest price
for a given commodity, for example, using the three “defining,” the “setting”
and the “monitoring” steps. And should a specific commodity fall to a
particularly advantageous price, the user would take note of that, as in the
“triggering” step. We also agree with the Examiner that, like hedging in
Bilski, comparison shopping is a fundamental economic practice, in that both
concepts are about maximizing value and minimizing loss that have been
long prevalent in our system of commerce. See also Trading Technologies
Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1092 (Fed. Cir. 2019) (placing an
order based on displayed market information).
We also agree with the Examiner that steps recited in independent
claim 28 can be performed mentally by a human, because other than the use
of a “remote server computer” for the monitoring of databases, every other
step can be performed practically in the human mind. See Final Act. 6–7.
For example, take the following limitations:
identifying said one or more commodities using one or
more searchable identification parameters;
defining a monitoring duration during which acquisition
parameters for said one or more commodities will be monitored,
including
defining an overall duration for conducting said
monitoring step; and
defining a refresh interval for said monitoring step;
setting multiple different alarm conditions on at least one
of the acquisition parameters . . . ;
determining whether any of the alarm conditions are met
by the acquisition parameters while monitoring the databases . . .
The “identifying” step involves observing several commodities, the three
“defining” steps and the “setting” step each involve making a judgment as to
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certain parameters to be set, and the “determining” step is making an
evaluation as to whether any of the parameters have been met. Each of these
steps are recited in a manner that they can be practically performed in the
human mind. See In re Brown, 645 F. App’x 1014, 1016–17 (Fed. Cir.
2016) (non-precedential) (identifying head shape and applying hair designs).
As independent claim 28 recites both one of certain methods of
organizing human activity, as well as mental processes, we proceed to the
next inquiry.
Step 2A, Prong 2: “does not integrate that exception into a
practical application”
The Examiner asserts the following:
Merely using a computer’s routine functionality to
automate the process of comparison shopping does not represent
an improvement to the computer itself. Like the circumstances in
Content Extraction & Transmission v. Wells Fargo Bank (Fed.
Cir. 2014) and Ultramercial (cited above), there is no inventive
concept in Applicant's use of a generic computing device to
automate the steps claimed.
. . .
The claims only manipulate abstract data elements. They
do not present improvements to another technological field or the
functioning of the computer itself. Looking at the limitations as
an ordered combination adds nothing that is not already present
when looking at the elements taken individually. There 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 beyond generally linking 'the use of the
[method] to a particular technological environment,' that is,
implementation via computers." Alice Corp., slip op. at 16 (citing
Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
Final Act. 7–8. We agree.
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To be sure, independent claim 28 does utilize computer components
such as a “client-side browser plug-in” for entering information and a
“remote server computer” for receiving and processing the information from
the end user. Both components, however, are used in an ordinary manner,
and for their ordinary functions, in that we unpersuaded that independent
claim 28 recites any improvement to those components themselves. See
MPEP § 2106.05(a). As claimed, any additional computer elements are used
in manner that is indistinguishable from merely providing instructions to
apply the method on a general-purpose computer. See MPEP § 2106.05(f).
And because the use of the computers is so generic, a particular computer is
not required, and so the claim does not define or rely on a “particular
machine.” See MPEP § 2106.05 (b). Further, the method does not
transform matter; at best it transforms information. See MPEP § 2106.05
(c); Gottschalk, 409 U.S. at 71–72 (holding that a computer based algorithm
that merely transforms data from one form to another is not patent-eligible).
For all these reasons, we are persuaded that independent claim 28 recites any
additional elements that “integrate the abstract idea into a practical
application.”
Step 2B: “well-understood, routine, conventional”
We must now determine whether independent claim 28 recites any
elements additional to the abstract idea that are not well-understood, routine,
or conventional. See MPEP § 2106.05(d). We are unable to identify any.
The following constitute all of the potential additional elements recited in
independent claim 28: “remote server computer,” “uniform resource locator
(URL) link,” “email address of an end-user,” “template associated with a
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client-side browser plug-in,” “network-accessible databases.” For these, the
Examiner asserts as follows:
The additional elements recited in the independent and
dependent claims beyond further refinements of the abstract idea
identified above are known and conventional generic computing
elements. Apart from being instructed to perform the abstract
idea itself they only serve to perform well-understood functions
(e.g., inputting/receiving/displaying data, identifying,
monitoring and transmitting data).
Final Act. 7. The Specification is explicit that each of these steps can be
performed by general purpose computer components that are “well-
understood, routine, conventional.” Spec. 14:8–11. For the “URL,” the
Examiner cites Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343
(Fed. Cir. 2015) for its conventionality. And as stated previously, the
Examiner asserts that “[l]ooking at the limitations as an ordered combination
adds nothing that is not already present when looking at the elements taken
individually.” Final Act. 8. We agree also with that assessment.
Appellant’s Assertions
The Appellant asserts that the Examiner performed an inadequate
comparison of independent claim 28 with Enfish, Bascom, and McRO. App.
Br. 7–14; Reply Br. 3–10. The Examiner responded. Final Act. 2–5;
Advisory Action mailed May 12, 2017; Ans. 3–5. We agree with the
Examiner for the reasons set forth below.
For Enfish and McRO, the Appellant asserts that the Examiner has
described independent claim 28 at an impermissibly high level of
abstraction, in that a proper evaluation would indicate that independent
claim 28 is directed to an improvement to technology. App. Br. 8–10; Reply
Br. 3–4. We disagree. As set forth above, we agree with the Examiner that
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independent claim 28 recites both “comparison shopping” and mental
processes, and that the use of computer components to perform these
concepts does not result in an improvement to the functioning of the
computer components themselves.
For Bascom, the Appellant asserts that each step, individually and in
combination, is not an old practice in a new environment as follows:
First, different information is received from different end
users, in a remote server computer, that includes a URL link to
one or more commodities, a maximum price desired, a search
term time-limit, and an email address of an end-user requesting
a search all defined by the end user in a template associated with
a client-side browser plug-in.
Second, for each end user, the received information is
processed on the remote server computer.
Specifically, one or more commodities are identified using
one or more searchable identification parameters.
Then a monitoring duration is defined during which
acquisition parameters for the one or more commodities are to be
monitored.
The definition of the monitoring duration includes
defining an overall duration for conducting the monitoring step
as well as a refresh interval for the monitoring step.
Thereafter, multiple different alarm conditions are set on
at least one of the acquisition parameters and multiple different
publicly searchable, network-accessible databases are monitored
for acquisition parameters for the one or more commodities by
conducting different searches using the one or more searchable
identification parameters for the overall duration
Finally, it is determined whether any of the alarm
conditions are met by the acquisition parameters while
monitoring the databases and an event is triggered responsive to
an alarm condition having been met before completing the
monitoring of the databases.
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As well, the monitoring step is repeated subsequent to the
refresh interval.
App. Br. 11–12; Reply Br. 5–6, 8–11. The Appellant appears to have
recited, in prose form, what is otherwise recited in independent claim 28.
We are unclear as to how this demonstrates that independent claim 28 is
directed to an improvement to technology.
The Appellant asserts that the Examiner “has not provided any
evidence to support this otherwise conclusory statement” that independent
claim 28 “‘merely implement[s] an old practice in a new environment.’”
App. Br. 11; Reply Br. 7–8. We disagree in several respects. For
“comparison shopping,” the Examiner is not required to provide evidence to
show that this is an “old practice.” A comparison to case law is enough.
Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016) (“the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen—what
prior cases were about, and which way they were decided.”). For a “new
environment,” which here is presumably a computer environment, the
Examiner is similarly permitted to rely on case law. See MPEP § 2106.05(f)
(“Use of a computer or other machinery in its ordinary capacity for
economic or other tasks (e.g., to receive, store, or transmit data) or simply
adding a general purpose computer or computer components after the fact to
an abstract idea (e.g., a fundamental economic practice or mathematical
equation) does not provide significantly more”) (citing Affinity Labs v.
DirecTV, 838 F.3d 1253, 1262 (Fed. Cir. 2016); TLI Communications LLC
v. AV Auto, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016)).
The Appellant asserts that both McRO and CyberSource indicate that
the Specification can provide support that independent claim 28 is directed
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to an improvement to technology. App. Br. 9–10; 13–14; Reply Br. 4–5.
That is undoubtedly correct. The problem is that the Appellant does not
identify such a disclosure. For example, the Appellant directs us to page 9,
lines 1–13 of the Specification. App. Br. 13. That portion indicates that one
or more desired commodities are input into a computer. The problem is that
this portion of the Specification indicates that “[a]ny known method for
providing the information related to the purchase can be utilized.” Spec.
9:13–14. If any known method can be used, that indicates that any
improvement is not technology-specific. Indeed, in the Description of
Related Art, the Specification discloses that “[w]hat is needed is a way to
seamlessly enable a user to identify a desired item and automatically monitor
prices on the item for a predetermined time period.” Spec. 3:7–8. This is an
economic problem, and not a technological one.
The Appellant takes issue with the Examiner’s citation of Versata.
Reply Br. 10. Versata is a decision from the Federal Circuit cited by the
Examiner in support of the rejection. Ans. 5 (citing Versata Development
Group, Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015)). We
agree the citation is relevant for the reasons stated by the Examiner.
CONCLUSION
We AFFIRM the rejection of claims 28–47 under 35 U.S.C. § 101.
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
28–47 101 28–47
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