LISUTO K.K.

Patent Trials and Appeals Board

May 4, 2020

14632346 - (D) (P.T.A.B. May. 4, 2020)

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.
14/632,346 02/26/2015 Nir PLATEK Q218106 3602
23373 7590 05/04/2020
SUGHRUE MION, PLLC
2000 PENNSYLVANIA AVENUE, N.W.
SUITE 900
WASHINGTON, DC 20006
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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):
PPROCESSING@SUGHRUE.COM
USPTO@sughrue.com
sughrue@sughrue.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NIR PLATEK
____________

Appeal 2019-004408
Application 14/632,346
Technology Center 3600
____________

Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.

McMILLIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 32–42, which constitute all of the claims pending
in this application. 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. Appellant identifies the real party in interest as Lisuto,
K.K. Appeal Br. 2.
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THE CLAIMED INVENTION
The present invention relates generally to “computerized systems and
methodologies for sales of products.” Spec. ¶ 1. Independent claim 32 is
directed to a computerized system for building an automated catalog of non
pre-catalogued products having non pre-catalogued parameters. Appeal Br.
15.
Claim 32, reproduced below, is representative of the claimed subject
matter:
32. A computerized system for building an automated catalog
of non pre-catalogued products having non pre-catalogued
parameters, the system comprising:
a non pre-catalogued product database including:
a product parameter table including selectable
parameters; and
a product parameter value table including selectable
values corresponding to said parameters; and
at least one server computer connected to said non pre-
catalogued product database, said at least one server computer
including:
a non pre-catalogued product listing engine
configured to prompt a user to select in a structured
manner at least one of said parameters relating to a product
to be listed and to select at least one of said values
corresponding to said selected parameters and to store
selected ones of said parameters and selected ones of said
values corresponding to said selected parameters in said
non pre-catalogued product database to create a listed
product; and
a non pre-catalogued product description engine
configured to provide for each said listed product, human-
readable descriptions of said selected non pre-catalogued
parameters and corresponding selected non pre-
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catalogued values, said human readable descriptions
corresponding to selections of said non pre-catalogued
parameters and values made by said user.

REJECTIONS ON APPEAL
Claims 32–42 stand rejected under 35 U.S.C. § 101 as directed to
patent ineligible subject matter. Final Act. 7.
Claims 32–42 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Amazon.com, Inc. (WO 03/038560 A2; published May 8, 2003)
(“Amazon”). Final Act. 10.

ANALYSIS
35 U.S.C. § 101 Rejection
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
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in petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . .”).
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski 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)). Concepts determined to be patent eligible include physical and
chemical processes, such as “molding rubber products” (Diamond v. Diehr,
450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth,
vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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 (internal citation 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).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO has published guidance on the application of § 101.
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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(“Memorandum”).2 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) (9th
ed. rev. 08.2017, Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 52, 54–55. 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 id. at 56.
USPTO Memorandum, Step 2A, Prong 1
Under the first step of the Alice/Mayo framework, the Examiner
concludes that the claims are directed to “an abstract idea of helping a user
for listing items for sale in a catalog format by enabling a user selecting one
or more parameters and values against the selected parameters and other

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility, 84 Fed. Reg.
55942 (the “October 2019 Update”) (available at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf).
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relevant description related to the items to be listed for sale,” which
“represents a plan or scheme which can be a result of mental thought process
or a manual activity using pen and paper.” Final Act. 8; see Ans. 8.
Appellant does not persuasively rebut the Examiner’s determination
that the claims are directed to an abstract idea. Specifically, Appellant has
not persuasively argued why the claim limitations cannot be practically
performed by a human, either mentally, manually, or with the use of pen and
paper. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1373 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016); Bancorp Servs., L.L.C. v. Sun Life
Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012).
For example, claim 32 recites
prompt[ing] a user to select in a structured manner at least one of
said parameters relating to a product to be listed and to select at
least one of said values corresponding to said selected parameters
and . . . stor[ing] selected ones of said parameters and selected
ones of said values corresponding to said selected parameters . . .
to create a listed product; and . . . provid[ing] for each said listed
product, human-readable descriptions of said selected non pre-
catalogued parameters and corresponding selected non pre-
catalogued values, said human readable descriptions
corresponding to selections of said non pre-catalogued
parameters and values made by said user.
Appeal Br. 15. A person can manually prompt a user to select parameters
relating to a product to be listed and select corresponding values (e.g.,
provide a form to list a product), create a listed product with the selected
parameters and values (e.g., print a product listing or catalog), and provide
human-readable descriptions of non pre-catalogued parameters
corresponding to non pre-catalogued values (e.g., print a product listing
catalog with readable descriptions).
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Accordingly, we conclude claim 32 recites a mental process as
identified in the Memorandum, and thus an abstract idea.
USPTO Memorandum, Step 2A, Prong 2
In determining whether claim 32 is “directed to” the identified
abstract idea, we next consider whether the claims recite additional elements
that integrate the judicial exception into a practical application. For the
reasons set forth below, we discern no additional element (or combination of
elements) recited in claim 32 that integrates the judicial exception into a
practical application. See Memorandum, 84 Fed. Reg. at 54–55.
Appellant argues that the claimed invention “is specifically designed
to solve a specific problem – of how to describe a non pre-catalogued
product – that arises from the use of interconnected computers in
communication information from one user to another user via a server,”
which is a technological solution to a technical problem arising from the use
of computers. Appeal Br. 14 (citing Amdocs (Israel) Limited v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)).
We are not persuaded by Appellant’s arguments. Rather, we agree
with the Examiner that the “concept of helping a user of building a catalog
of items for intended purpose of sale in the instant application, can be
implemented manually as well as alternatively by using a generic computer
as a mere tool to automate the manual activity.” Ans. 8. As the Examiner
properly reasons, the claimed invention “does not provide any technical
improvement or technological solution to a technical problem in the
operation of a computer or a computer network or computer-related
technology by allowing computer performance of a function not previously
performable by a computer.” Final Act. 9; see Ans. 9–10. The Examiner
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finds, and we agree, that the claimed “use of computer limitations are simply
a field of use that is an attempt to limit the abstract idea to a particular
technological environment.” Id.
In Amdocs, our reviewing court found the claim eligible because it
entailed “an unconventional technological solution (enhancing data in a
distributed fashion) to a technological problem (massive record flows which
previously required massive databases)” and the requirement of generic
components was such that “these generic components operate in an
unconventional manner to achieve an improvement in computer
functionality.” Amdocs, 841 F.3d at 1300–01.
Here, Appellant characterizes the claims as enabling a customer to
“describe a non pre-catalogued product.” Appeal Br. 14. According to
Appellant, the problem of describing a non pre-catalogued product arises
“from the use of interconnected computers in communication information
from one user to another user via a server.” Id. However, Appellant has not
shown how providing human-readable descriptions for user-selected
parameters and associated values for non pre-catalogued products improves
the functionality of the computer itself. For example, using a computer to
provide a human-readable description for a non pre-catalogued product
merely automates what a human being would do in creating a catalog to
include a non pre-catalogued product description.
Accordingly, for the foregoing reasons, the claims fail to integrate the
abstract mental process into a practical application.
USPTO Memorandum, Step 2B
Turning to step 2 of the Alice/Mayo framework, we look to whether
the claims (a) add a specific limitation or combination of limitations that are
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not well-understood, routine, conventional activity in the field, or (b) simply
append well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception. Memorandum, 84 Fed. Reg. at 56.
The Examiner further finds that the claimed “providing human-
readable descriptions of said selected non pre-catalogued parameters and
corresponding selected non pre-catalogued values, and organizing a display
of the created catalog listing to a customer, all represent ‘well-understood,
routine, and conventional activity.’” Final Act. 9; see Ans. 8. The Examiner
further concludes that the claims provide a “business solution related to
helping a user and organizing items in a catalog format and using generic
computers as merely tools for implementing an abstract idea.” Ans. 12.
Appellant has not responded to the Examiner’s determination that the
present claimed invention uses generic computers to perform well-
understood, routine, and conventional activities that provide a business
solution to help a seller list items for sale in a catalog rather than a
technological solution to a technological problem.
We agree with the Examiner and adopt the Examiner’s findings. The
recited “database” conventionally includes tables with parameters and values
and the recited “server computer” conventionally includes “engine[s]” for
providing an interface to the user. Given the claimed generic computer-
system components that perform generic computer functions, we conclude
that the combination of limitations in each independent claim does not
supply an “inventive concept” that renders the claim “significantly more”
than an abstract idea. Thus, each claim does not satisfy § 101 under
Mayo/Alice step two.
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Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
independent claim 32, as well as dependent claims 33–42, not separately
argued.

35 U.S.C. § 102(b) Rejection
Claim 32 recites “a non pre-catalogued product listing engine” and “a
non pre-catalogued product description engine.”
Appellant contends Amazon’s “computerized system for sale of
pre-catalogued products” does not teach or suggest “a computerized
system for sale of non pre-catalogued products.” Appeal Br. 11.
According to Appellant, Amazon’s description of a browsable detail page
for a product, and the seller fully identifying the product to be listed by
browsing the detail page, as well as the lack of need for the seller to supply a
detailed product description, does “not show or suggest either a non pre-
catalogued product database, a non pre-catalogued product listing engine or
a non pre-catalogued product description engine.” Appeal Br. 11–12.
We are not persuaded of Examiner error. Specifically, we agree with
the Examiner’s finding that Amazon’s listing seller being prompted to select
parameters with a corresponding value such as “[U]sed---Like New” and the
value being stored for displaying to a customer describes the claimed “non
pre-catalogued product listing engine,” and Amazon’s prompting a seller to
enter a human readable description corresponding to selecting parameters
and values such as “got this gift 3 months ago” or “Dust cover missing”
describes the claimed “non pre-catalogued product description engine.” See
Final Act. 10–11 (citing Amazon Fig. 3C, 3D).
The claims do not provide any limiting definition for non
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pre-catalogued products having “non pre-catalogued parameters,” “a non
pre-catalogued product listing engine,” or “a non pre-catalogued product
description engine.” Appellant’s Specification provides examples
describing “the non pre-catalogued parameters, which are not available in
existing catalogs, including, inter alia, the non-inherent parameters relating,
for example to the current condition of the product, for how many years it
has been in use and the presence of scratches, dents or other defects.” Spec.
¶ 37. The claimed non pre-catalogued products with “non pre-catalogued
parameters,” and associated “non pre-catalogued product listing engine” and
“non pre-catalogued product description engine,” in light of the
Specification, encompass products with parameters including current
condition of the product.
Amazon describes the “condition page 330 restates the product to be
listed for sale, and prompts the seller to select from a list 345 of predefined
product condition descriptors,” and the “comment 352 may be used to
further specify the item’s condition.” Amazon 21, ll. 10–12, 22–23. In
other words, as found by the Examiner, Amazon’s parameters, including
“the current condition of the product, for how many years it has been in use
and the presence of scratches, dents or other defects,” describes non pre-
catalogued parameters as defined in Appellant’s Specification. Ans. 4; see
Ans. 5–6.
Therefore, Appellant has not provided persuasive evidence or
argument that the claimed non pre-catalogued products and parameters,
encompassing products with parameters including the current condition of
the product, is not described by Amazon’s products with parameters
including the current condition of the product.
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Accordingly, we sustain the 35 U.S.C. § 102(b) rejection of
independent claim 32, as well as dependent claims 33–42, not separately
argued.

CONCLUSION
The Examiner’s rejection of claims 32–42 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 32–42 under 35 U.S.C. § 102(b) is
affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
32–42 101 Eligibility 32–42
32–42 102 Amazon 32–42
Overall
Outcome
32–42

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)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED