Nicholas B. End et al.

Patent Trials and Appeals Board

Nov 29, 2019

13950598 - (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.
13/950,598 07/25/2013 Nicholas B. End AM2-1901USC1 1040
136607 7590 11/29/2019
Lee & Hayes P.C.
601 West Riverside Avenue
Suite 1400
Spokane, WA 99201
EXAMINER
LEVINE, ADAM L
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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS B. END, GRANT B. FRESEN,
and MATTHEW TYLER WILKINSON
____________

Appeal 2018-004495
Application 13/950,598
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–20, which constitute all the
claims. 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. The Appellant identifies the real party in interest as
Amazon Technologies, Inc. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The Appellant’s invention generally “relates to providing a user
apparel information based upon the user’s selection of another piece of
apparel. More specifically, the present disclosure relates to providing a user
information related to a footwear model based upon the user’s selection of a
different model of footwear.” Spec. ¶ 2.
Claims 1, 9, and 17 are the independent claims. Claim 1 is illustrative
of the subject matter on appeal and is reproduced below (with added
bracketing for reference):
1. A method, comprising:
[(a)] maintaining a database on a computer readable
medium, the database including one or more model
representations wherein the one or more model representations
comprise internal measurement data related to sizing information
for a wearable model;
[(b)] receiving, at a processing device in communication
with the computer readable medium, a user selection of a first
model representation from the one or more model
representations;
[(c)] retrieving, by the processing device and from the
database, the first model representation associated with a first
wearable model, the first model representation comprising first
internal measurement data that includes at least a first length, a
first width, and a first height measurement of the first wearable
model;
[(d)] retrieving, by the processing device and from the
database, a second model representation associated with a second
wearable model, the second model representation comprising
second internal measurement data that includes at least a second
length, a second width, and a second height measurement of the
second wearable model;
[(e)] comparing, by the processing device, the first length,
the first width, and the first height associated with the first
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wearable model with the second length, the second width, and
the second height associated with the second wearable model to
generate comparison sizing information related to the first
wearable model and the second wearable model; and
[(f)] displaying, on a display device operably connected to
the processing device, a visual representation related to the
comparison sizing information, the visual representation
showing a fit comparison between the first wearable model and
the second wearable model, wherein the fit comparison:
indicates where the first wearable model is tighter than the
second wearable model,
indicates where the first wearable model is looser than the
second wearable model, and
indicates where the first wearable model and the second
wearable model have a same fit.
Appeal Br. 34 (Claims App.).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Kano US 2002/0035518 A1 Mar. 21, 2002
Lyden US 2003/0069807 A1 Apr. 10, 2003
Cook US 6,879,945 B1 Apr. 12, 2005
End et al. (“End”) US 8,521,616 B2 Aug. 27, 2013

REJECTIONS2
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more.

2 The Examiner withdraws the rejections of claims 1–16 under pre-AIA
35 U.S.C. § 112, first and second paragraphs. Ans. 2.
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Claims 1–20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over Kano and Cook.
Claims 1–20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being obvious over Kano, Cook, and Lyden.
Claims 1−20 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1−18 of US 8,521,616.

OPINION
Patentable Subject Matter
The Appellant argues claims 1–20 as a group. See Appeal Br. 17, 26.
We select claim 1 as representative of the group with the remaining claims
standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
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. 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
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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, 67 (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 (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 176; 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
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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 (internal 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. (alterations in original) (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.
After the Appellant’s Brief was filed and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (“USPTO”) published revised
guidance on the application of § 101. 2019 REVISED PATENT SUBJECT
MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) providing groupings of subject matter that is considered an abstract idea;
and (2) clarifying that a claim is not “directed to” a judicial exception if the
judicial exception is integrated into a practical application of that exception.
Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
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or after January 7, 2019. Id.3 Under the 2019 Revised 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 MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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 2019 Revised Guidance, 84 Fed Reg. at 54, 56.
Step One of the Mayo/Alice Framework
Reciting a Judicial Exception
Under the first step of the Mayo/Alice framework, the Examiner
determines that claim 1 is “directed to comparing gathered and stored data of
measured sizes between two examples and displaying the mathematical

3 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”).
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relationship between them” “that enables computers to perform an activity
that could previously be performed only by humans” (Final Act. 13) and is a
“kind of organizing human activity” (id. at 15). When viewed through the
lens of the 2019 Revised Guidance, the Examiner’s analysis depicts the
claimed subject matter as a “[m]ental process[]—[a] concept[] performed in
the human mind (including an observation, evaluation, judgment, opinion)”
under Prong One of Revised Step 2A. 2019 Revised Guidance, 84 Fed. Reg.
at 52 (footnote omitted).
The Appellant disagrees and argues that claim 1 “does not simply
recite comparing data, but rather, compares the sizing data of wearable items
and then generates a graphical user interface that provides ‘a visual
representation related to the comparison sizing information’ to a user who is
attempting to purchase wearable items that will fit properly.” Appeal Br. 21.
Before determining whether the claims at issue are directed to an
abstract idea, we first determine to what the claims are directed. The Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification, including the claim language, that
claim 1 focuses on an abstract idea, and not on any improvement to
technology and/or a technical field.
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The Specification provides for “METHODS AND SYSTEMS FOR
MEASURING AND PROVIDING FEEDBACK PERTAINING TO FIT
AND SIZE COMPARISONS OF FOOTWEAR AND APPAREL.” Spec.,
Title. In the “Background” section, the Specification discusses that
“[f]inding the correct apparel size to purchase online is difficult due to the
inability to try on the apparel” and “[a] user must select a size the user thinks
will fit and try the apparel on once the apparel is delivered to the user.” Id.
¶ 3. Because sizes may vary across manufacturers, particularly with
footwear, a user may select an incorrect size, leading to a high number of
returns. Id. ¶¶ 3–5. The “risk of not being satisfied with a purchase and
having to return the item” leads to many people not purchasing apparel
online at all, “often result[ing] in additional out of pocket expenses for the
user or seller.” Id. ¶ 3. For footwear, sizes may vary within the same
manufacturer. Id. ¶ 5. “To alleviate problems caused by size discrepancies
among manufacturers, some retailers maintain a list (e.g., in a database) of
various dimensions for various models of footwear, thereby allowing a
customer to compare one model to another.” Id. ¶ 6. Prior art “compares a
populated footwear database to a user footwear profile by using foot
measurements to suggest a recommended fit” and using foot measurements
“to find the best footwear fit and recommended sizing.” Id. ¶ 7. However,
“[t]here are many variables that go into measuring user’s feet that make for a
difficult fitting process even when the real measurements are known.” Id.;
see also id. ¶ 25. To address these issues, the claimed invention “does not
require a foot measurement. . . . Rather, the present disclosure utilizes the
footwear size and model of a user’s current footwear to determine
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recommendations for alternative footwear models.” Id. ¶ 25. Specifically,
the invention:
enables the user to customize the fit of new footwear by taking
the input of footwear they have already worn, translating fit into
an internal measurement profile and comparing those
measurements to a database of internal footwear measurements
of various models and sizes in order to recommend a footwear
model and size for the user.
Id.
Consistent with the disclosure, claim 1 recites: “[a] method,
comprising:” (a) maintaining a database including one or more model
representations comprising internal measurement sizing data; (b) “receiving
. . . a user selection of a first model representation from the one or more
model representations;” (c) retrieving the first model representation that
comprises first internal measurement data including a first length, a first
width, and a first height measurement of the first wearable model;
(d) retrieving a second model representation that comprises second internal
measurement data including a second length, a second width, and a second
height measurement of the second wearable model; (e) comparing the first
length, the first width, and the first height with the second length, the second
width to generate comparison sizing information; and (f) displaying a visual
representation related to the comparison sizing information showing a fit
comparison between the first and second wearable models indicating where
the first model is tighter than the second model, the first model is looser than
the second model, and where the first model and the second model have a
same fit. See Appeal Br. 34. The functions of receiving, retrieving, and
comparing are performed by a generic processing device. See Spec. ¶ 42
(describing a generic central processing unit).
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When considered collectively and under the broadest reasonable
interpretation of the claim’s limitations, claim 1 recites a method for
providing fit and sizing information for wearable items by comparing
measurement data.4 Limitation (a) of maintaining data comprises storing
data, which is an extra-solution generic activity. See In re TLI Commc’ns
LLC Patent Litig., 823 F.3d 607, 611–12 (Fed. Cir. 2016). Limitations (b),
(c), and (d) of receiving and retrieving data comprise gathering data, which
is an extra-solution activity. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir.
2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010)
(characterizing data gathering steps as insignificant extra-solution activity).
Limitation (e) of comparing data comprises analyzing data, which can be a
mental process. See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (citing cases) (“we have treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes”). And limitation
(f) of displaying the results of the analysis is simply outputting the results of
the analyses, a post-solution activity. See id.; Bilski, 561 U.S. at 610–11
(“Flook stands for the proposition that the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
postsolution activity.”’) (quoting Diehr, 450 U.S. at 191–92); Electric
Power, 830 F.3d at 1354. We note that generating a graphical user interface

4 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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(cf. Appeal Br. 21) is not recited, nor is any particular technological way of
displaying the results recited.
Providing fit and sizing information for wearable items by comparing
measurement data is similar to the concepts of customizing and tailoring
web page content based on navigation history and known user information in
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369–70 (Fed. Cir. 2015), of customizing a user interface to have targeted
content based on user information in Affinity Labs of Texas, LLC v.
Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016), and of providing
personalized recommendations in Personalized Media Commc’ns, LLC v.
Amazon.Com, Inc., 161 F. Supp. 3d 325, 338 (D. Del. 2015), aff’d sub nom.,
671 F. App’x 777 (Fed. Cir. 2016). Accordingly, we conclude the claim
recites a way of providing tailored information regarding fit and sizing of
apparel, which is a commercial interaction of advertising, marketing, or sales
activities, one of the certain methods of organizing human activity as
identified in the 2019 Revised Guidance, 84 Fed. Reg. at 52, and thus an
abstract idea.
Integration into a Practical Application
Under Step 2A, Prong Two of the 2019 Revised Guidance, 84 Fed.
Reg. at 54, we look to whether the claim “appl[ies], rel[ies] on, or use[s] 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,” i.e., whether the claim “integrates a
judicial exception into a practical application.” Here, the only additional
elements recited in claim 1 beyond the abstract idea are “a database”;
“a computer readable medium”; “a processing device”; and “a display
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device” — elements that, as the Examiner observes (Final Act. 15–16), are
described in the Specification as generic computer components (see, e.g.,
Spec. ¶¶ 26, 27, 42–46, Figs. 1, 5). We find no indication in the
Specification, nor does the Appellant direct us to any indication, that the
operations recited in claim 1 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
asserted inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
The Appellant contends “[l]ike the claims in McRO, the
‘incorporation of the claimed rules’ in the instant application leads to
allowing the ‘automation of further tasks.’” Appeal Br. 19 (quoting McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016)). The Appellant also argues that the claim provides “a technical
solution in which specific rules are identified and claimed” to a problem
“unique to shopping remotely, that is, when a customer is not in a physical
store and able to try on items of apparel to check for a suitable fit” and that
“has no pre-Internet analogue equivalent, other than the unique problem
identified and solved.” Appeal Br. 20; see also id. at 25–26.5 When viewed

5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
them under Step 1 of Alice (Step 2A of Office guidance). See 2019 Revised
Guidance at 55.
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through the lens of the 2019 Revised Guidance, the Appellant contends that
under Prong Two, the elements of claim 1 integrate the abstract idea into a
practical application because the combination of the elements “reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field.” 84 Fed. Reg. at 55 (citing DDR Holdings,
Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018). We
disagree.
In DDR Holdings, the Federal Circuit determined that the claims
addressed the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host’s website after clicking on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The Federal Circuit, thus, held that the claims were directed to statutory
subject matter because they claim a solution “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” Id. The court cautioned that “not all claims
purporting to address Internet-centric challenges are eligible for patent.” Id.
at 1258. And the court contrasted the claims to those at issue in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), in that, in
DDR Holdings, the computer network was not operating in its “normal,
expected manner” and the claims did not “recite an invention that is []
merely the routine or conventional use of the Internet.” Id. at 1258–59.
Here, as discussed above, the problem addressed is of a user not being
satisfied with the fit and returning the item, resulting is additional expenses
for the user or seller. See Spec. ¶ 3; Appeal Br. 20. However, contrary to
the Appellant’s assertion, the problem of a user not being able to physically
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check for a suitable fit (see Appeal Br. 20, 25) is a problem that existed prior
to the Internet, such as the “pre-Internet analogue equivalent” (id.at 20) of
catalog shopping, and is not a technological problem or a problem rooted in
technology arising out of computer networks.
Also, unlike DDR Holdings, here, the purported solution of displaying
the results of comparing data to indicate a tight, loose, or same fit as another
apparel (see Appeal Br. 21, 25–26) involves the use of a generic processing
device operating in its ordinary capacity (see supra) to maintain, receive,
retrieve, compare, and display data. That the claimed technique is
performed in the field of Internet shopping (see Appeal Br. 19–21) simply
limits the use of the abstract idea to a particular technological environment.
“The Supreme Court and [the Federal Circuit] have repeatedly made clear
that merely limiting the field of use of the abstract idea to a particular
existing technological environment does not render the claims any less
abstract.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253,
1259 (Fed. Cir. 2016), citing Alice, 573 U.S. at 222; Mayo, 566 U.S. at 71;
Bilski, 561 U.S. at 612, buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014); Ultramercial, 772 F.3d at 716. The Appellant does not
direct our attention to, and we do not see, where the Specification describes
the processing device acting in an unconventional manner to further the
desired solution of displaying data based on a comparison of measurement
data. The Appellant also does not direct our attention to anything in the
Specification to indicate that the invention provides a technical improvement
in the displaying of the visual representations.
Regarding McRO, the claims there were directed to a specific
improvement in computer animation and used rules to automate a subjective
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task of humans to create a sequence of synchronized, animated characters.
See McRO, 837 F.3d at 1314–15. Unlike Flook, Bilski, and Alice, it was not
the use of the computer, but the incorporation of the rules that improved an
existing technological process. Id. at 1314. Here, there is no such
improvement to technology or a technological process. The displaying of a
visual representation of data is recited functionally without any technical or
technological implementation details. The Appellant does not assert an
improvement in the technical or technological aspects of displaying a visual
representation showing a fit comparison between models. Rather, any
improvement lies in the visual representation of the comparison of apparel.
This alleged improvement lies in the abstract idea itself, not to any
technological improvement. See BSG Tech LLC v. Buyseasons, Inc., 899
F.3d 1281, 1287–88 (Fed. Cir. 2018). The Appellant also does not direct our
attention to anything in the Specification to indicate that the invention
provides a technical improvement in the comparison of data or in the
displayed or that claim 1 incorporates rules to automate a subjective task of
humans, similar to those in McRO.
The Appellant further argues that “claim 1 does not tie up the Office-
identified broad concept of ‘comparing data regarding items and indicating
where the data differs between the items,’ and therefore does not have the
potential to foreclose more future invention than the underlying discovery
could reasonably justify.” Appeal Br. 22–23; see also id. at 24–25.
Although the Supreme Court has described “the concern that drives this
exclusionary principle[, i.e., the exclusion of abstract ideas from patent
eligible subject matter,] as one of pre-emption” (see Alice, 573 U.S. at 216),
characterizing preemption as a driving concern for patent eligibility is not
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the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 573 U.S. at 216). Although “preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Id.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework (corresponding to Step
2B of the 2019 Revised Guidance), we find supported the Examiner’s
determination that the claim’s limitations, taken individually or as an
ordered combination, do not amount to significantly more than the judicial
exception, that the claimed “generic computer hardware elements are recited
at a high level of generality and are recited as performing generic computer
functions routinely used in computer applications,” and that the claimed
components “perform[] generic computer functions that are well-understood,
routine and conventional activities [and] amount to no more than
implementing the abstract idea with a computerized system.” Final Act. 15.
The Appellant does not offer additional reasoning or argument why
the claims “[a]dd[] a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present.” 2019 Revised
Guidance, 84 Fed. Reg. at 56.
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Taking the claimed elements separately, the functions performed by a
computer are purely conventional. A generic database, generic processing
device, and a generic display device implement the method (see supra) and
operate in their ordinary and conventional capacities to perform the well-
understood, routine, and conventional functions of maintaining, receiving,
retrieving, and comparing data, and displaying the results of the comparison.
See Elec. Power, 830 F.3d at 1355 (gathering, sending, monitoring,
analyzing, selecting, and presenting information does not transform the
abstract process into a patent-eligible invention); In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (“storing, receiving, and
extracting data” are generic computer functions); SAP America, Inc. v.
Investpic, LLC, 898 F.3d 1161, 1169–70 (Fed. Cir. 2018) (“selecting certain
information, analyzing it using mathematical techniques, and reporting or
displaying the results of the analysis” were “basic functions” of a computer);
Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”).
Considered as an ordered combination, the components of the
Appellant’s claim add nothing that is not already present when the steps are
considered separately. The sequence of storing data, receiving data,
retrieving stored data, comparing data, and presenting the results of the
comparison is equally generic and conventional or otherwise held to be
abstract. See Elec. Power, 830 F.3d at 1354–56 (holding that the sequence
of gathering, analyzing, and displaying in real-time was abstract); SAP Am.,
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898 F.3d at 1170 (holding that selecting information, analyzing it, and
displaying the results of the analysis was abstract).
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 1 do not transform the claims into significantly
more than the abstract idea.
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claim 1 and of claims 2–20, the
rejection of which stands with claim 1.

Obviousness
Kano in view of Cook
The Appellant contends that the Examiner’s rejection of independent
claim 1 as obvious over Kano in view of Cook is in error because:
there is no teaching or suggestion in the combination of
references for at least the features of “comparing . . . the first
wearable model with . . . the second wearable model to generate
comparison sizing information,” let alone the further recitation
of displaying “a visual representation related to the comparison
sizing information, the visual representation showing a fit
comparison between the first wearable model and the second
wearable model.”
Appeal Br. 29. In relevant part, the Appellant argues that Kano’s description
of a displayed body image “where a just fit portion, a loose portion, and a
tight portion in the shirt are displayed with colorings,” is not a comparison
between models “but rather, a visualization of how a shirt fits a certain body
type,” and also does not teach the fit comparison indicating where the first
model is tighter than the second model. Appeal Br. 27 (citing Kano ¶ 277).
The Appellant also argues that Cook’s system of recommending a size based
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on fit and sizing information does not cure Kano’s deficiencies. See Appeal
Br. 28–29. We agree.
The Examiner finds:
Kano discloses a method of storing model apparel (including
footwear) measurements, comparing them against other apparel
measurements, and displaying the information, including
highlighting just fit, loose, and tight portions, by displaying them
with colorings, but does not explicitly disclose comparing two
model representations of footwear based on internal
measurements. Cook teaches storing internal measurements of
model footwear representations and comparing them against
internal measurements of other model footwear representations.
Final Act. 18. Specifically, the Examiner finds that that the combination of
Kano and Cook teaches limitation (e) of comparing length, width, and height
data between the retrieved first and second models to generate related sizing
information. See Final Act. 23–24 (citing Kano ¶¶ 277, 306, and Cook,
Abstract, col. 1, ll. 45–65, col. 5, ll. 44–51, Figs. 4, 7); see also Ans. 8. The
Examiner further finds that the combination of Kano and Cook teaches
limitation (f) of displaying the fit comparison. See Final Act. 24–25 (citing
Kano ¶¶ 277, 306, and Cook, col. 1, ll. 45–65, col. 5, ll. 44–51, Figs. 4, 7);
see also Ans. 8. The Examiner finds that Kano teaches a “display indicating
areas where the comparison shows the first model is looser, tighter, or same
fit, as the second model,” and Cook “describ[es] first and second models
[are] compared where differences in width, height, and length, are
determined.” Final Act. 24–25; Ans. 8.
The Examiner relies primarily on Cook for teaching limitations (b)–
(d) of retrieving and comparing two models (Final Act. 18, 21–23 (citing
Cook, Abstract; Figs. 4, 7; co1 1, ll. 45–65; col. 5, ll. 44-51), but does not
explicitly state what in Cook meets the claimed first model representation of
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a first wearable and the second model representation of a second wearable
model. The Examiner appears to find that Cook’s selected footwear model
meets the claimed first wearable model (see id. at 21), and a representative
footwear from a selected footwear run meets the claimed second model
representation of wearable models (see id. at 22–23). We agree with the
Examiner that Cook teaches comparing measurements of two wearable
models. See Cook col. 1, ll. 47–65, col. 5, ll. 44–51 (describing a method
and system for receiving foot size information and determining a
recommended footwear size for the selected footwear model based on the
received information, past product fit information, and a length adjustment
factor determined by comparing an internal measurement for a
representative test shoe to the average internal dimension for the
representative footwear test shoe). We do not see where or how the cited
portions of Cook teach displaying a fit comparison.
The Examiner appears to rely on Kano for displaying a visual
representation related to a comparison of fit information indicating a tight,
loose, or just fit. Final Act. 18, 24–25. Kano does disclose displaying a
simulation window depicting a simulation condition section with a size box
and a color box displaying shirts identical to the selected shirt in a variation
of sizes and colors, a body information section with edit boxes for receiving
measurement information input, and a simulation result section that displays
a body image wearing a selected shirt with colored sections for a just fit, a
loose portion, and a tight portion. See Kano. ¶¶ 270–277, 306, 307, Fig. 20.
However, the Examiner does not adequately explain how Cook’s
comparison of measurements of a representative shoe to measurements of a
shoe model is combined with Kano’s display of an item model as compared
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to received and/or retrieved body measurements to teach the limitation of
displaying the compared measurement information showing a fit comparison
between the two models, as required by claim 1. In other words, the
Examiner has not adequately explained how the measurement information of
Cook’s shoe/apparel models is combined with Kano’s simulation of a shirt
on a body to reach the claimed displaying of a visual representation related
to the comparison sizing information showing a fit comparison between a
first wearable model and a second wearable model.
Thus, we are persuaded that the Examiner has not adequately shown
how the combination of Kano and Cook teaches comparing the first
wearable model with the second wearable model to generate comparison
sizing information and displaying the comparison sizing information as a fit
comparison between the two models. Because we are persuaded of
Examiner error, we do not sustain the rejection under 35 U.S.C. § 103 as
obvious over Kano and Cook of independent claim 1. We also do not
sustain this obviousness rejection of independent claims 9 and 17 and
dependent claims 2–8, 10–16, and 18–20, which contain the same deficiency
as for claim 1. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“dependent claims are nonobvious if the independent claims from which
they depend are nonobvious”).

Kano in view of Cook and Lyden
The Examiner relies, in the alternate, on the combination of Kano and
Cook for all of the limitations of claims 1–20 except for “tapering,” for
which the Examiner relies on Lyden. Final Act. 27. Lyden does not cure
the deficiency in the Examiner’s rejection of the claims as obvious over
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Kano and Cook as discussed above. Therefore, we do not sustain the
Examiner’s rejection under 35 U.S.C. § 103 as obvious over Kano, Cook,
and Lyden of claims 1–20 for the same reasons set forth above with respect
to the rejection over Kano and Cook.
Double Patenting
The Appellant states “[w]ithout commenting on the basis for the
double patenting rejection, Appellant requests that the double patent
rejection be held in abeyance until at least one claim is found to be
allowable.” Appeal Br. 32. However, the Appellant may not elect to appeal
a subset of the rejections on appeal, or a subset of the claims under rejection.
Under our procedural rule 37 C.F.R. § 41.31(c): “An appeal, when taken, is
presumed to be taken from the rejection of all claims under rejection unless
cancelled by an amendment filed by the applicant and entered by the
Office.” Because the Appellant does not substantively address the double
patenting rejection on the merits, we summarily affirm the rejection due to
the lack of argument indicated. See id.
CONCLUSION
The Examiner’s decision to reject claims 1–20 is sustained.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 Kano, Cook 1–20
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 103 Kano, Cook,
Lyden
1–20
1–20 Nonstatutory
Double Patenting
over US 8,521,616
1–20
Overall
Outcome:
1−20
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).

AFFIRMED