Nick BossinakisDownload PDFPatent Trials and Appeals BoardSep 23, 201913678819 - (D) (P.T.A.B. Sep. 23, 2019) Copy Citation 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. 13/678,819 11/16/2012 Nick Bossinakis AOPSI.0112 5836 22858 7590 09/23/2019 CARSTENS & CAHOON, LLP P.O. Box 802334 DALLAS, TX 75380-2334 EXAMINER FADOK, MARK A ART UNIT PAPER NUMBER 3625 MAIL DATE DELIVERY MODE 09/23/2019 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NICK BOSSINAKIS ____________ Appeal 2018-006131 Application 13/678,819 Technology Center 3600 ____________ Before ST. JOHN COURTENAY III, DENISE POTHIER, and JOHN EVANS Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, 21, 22, 41, and 42, which are all the claims pending in this application.1 Claims 3–20, 23–40, and 43–60 are withdrawn. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 The real party in interest is Overall Parts Solutions, Inc. App. Br. 2. Appeal 2018-006131 Application 13/678,819 2 STATEMENT OF THE CASE 2 Introduction Appellant’s claimed invention relates generally to supply chain management systems and methods. Spec. 3. Exemplary Claim 1. A supply chain management system comprising: (a) customer order entry subsystem; (b) part/product quoting subsystem: (c) part/product advertising subsystem; (d) vendor order fulfillment subsystem; and (e) transportation tracking subsystem; wherein said customer order entry subsystem is configured to accept a part/product order from a customer, wherein said part/product order comprises an ordered part/product of a plurality of parts/products stored in a local price/availability/delivery database; said customer order entry subsystem comprises a status screen configured to display the real-time order status of said ordered part/product and information about said ordered part/product stored In the local price/availability/delivery database; said part/product quoting subsystem is configured to generate and transmit a quote invitation to a first set of vendors 2 We herein refer to the Final Office Action, mailed May 18, 2017 (“Final Act.”); Appeal Brief, filed Dec. 18, 2017 (“App. Br.”); Supp. Appeal Brief with corrected Claims Appendix, filed Jan. 30, 2018, Examiner’s Answer, mailed Mar. 23, 2018 (“Ans.”), and the Reply Brief, filed May 23, 2018 (“Reply Br.”). Appeal 2018-006131 Application 13/678,819 3 of a plurality of vendors using said part/product order, wherein the plurality of vendors is retrieved from a vendor database; said part/product quoting subsystem is configured to receive at least one vendor quote for said part/product order in response to the quote invitation; said at least one vendor quote comprises a quote status further comprising the availability of said ordered part/product, the price of said ordered part/product, and delivery options and statistics of said ordered part/product; said at least one vendor quote is displayed in said status screen; said part/product advertising subsystem comprises a vendor advertising database, wherein the vendor advertising database comprises a plurality of advertisements, wherein each of the plurality of advertisements is associated with a second set of vendors of the plurality of vendors, and wherein at least one of the plurality of advertisements is associated with a part/product of the plurality of parts/products, wherein the at least one of the plurality of ads forms at least one context- sensitive vendor advertisement, wherein the associated part/product of the at least one context-sensitive vendor advertisement is said ordered part/product; [L1] said part/product advertising subsystem is configured to periodically query the plurality of vendors for information regarding the plurality of parts/products and update the vendor advertising database and the local price/availability/delivery database with the information regarding the plurality of parts and products; [L2] said part/product advertising subsystem is configured to trigger a parts/product vendor advertisement selection process, wherein the parts/products vendor advertisement selection process determines a selected advertisement from the at least one context-sensitive vendor advertisement and an alternate vendor advertisement, wherein Appeal 2018-006131 Application 13/678,819 4 the parts/product vendor advertisement selection process retrieves the selected advertisement from the vendor advertising database; said part/product advertising subsystem is configured to display the selected advertisement in said status screen, wherein the selected advertisement comprises an advertising quote for said ordered part/product; said customer order entry subsystem is configured to permit said customer to select said at least one vendor quote or said advertising quote to define a selected part/product order; said vendor order fulfillment subsystem is configured to receive said selected part/product order over a communications network and allow a vendor to accept/reject said selected part/product order and provides order status feedback to said customer on said status screen; said vendor order fulfillment subsystem is configured to execute shipment of the selected part/product associated with said selected part/product order to said customer using optimized delivery routing; said transportation tracking subsystem is configured to track the physical location of said selected part/product from said vendor to said customer; and said status screen is configured to display in real-time the status of said shipment at various way-points within said optimized delivery routing. Supp. App. Br. 2–3, filed January 30, 2018, “Claims Appendix.” (Emphasis added regarding the disputed limitations L1 and L2 under pre-AIA 35 U.S.C. § 103(a)). Appeal 2018-006131 Application 13/678,819 5 Rejections A. Claims 1, 2, 21, 22, 41, and 42 are rejected under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more. B. Claims 1, 2, 21, 22, 41, and 42 are rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over the combined teachings and suggestions of Scruton et al. (US 2013/0290129 A1, pub. Oct. 31, 2013) (hereinafter “Scruton”), Racco et al. (US 2011/0161182 A1; pub. Jun. 30, 2011) (hereinafter “Racco”), and Ebert et al. (US 2003/0227392 A1; pub. Dec. 11, 2003) (hereinafter “Ebert”). ANALYSIS We have considered all of Appellant’s arguments and any evidence presented. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(1)(iv). We have reviewed the Examiner’s rejections A and B as set forth in the Final Action, the Appellant’s responsive arguments in the Appeal Brief, and the Examiner’s responses to the Appellant’s arguments in the Answer. We have also reviewed Appellant’s arguments in the Reply Brief. Based upon our review, and for the reasons discussed below, Appellant does not provide sufficient argument or evidence to persuade us the Examiner erred with respect to all claims 1, 2, 21, 22, 41, and 42, on appeal, as rejected under both Rejections A and B. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Appeal 2018-006131 Application 13/678,819 6 Rejection A of Claims 1, 2, 21, 22, 41, and 42 under 35 U.S.C. § 101 Issue: Under 35 U.S.C. § 101, did the Examiner err by rejecting claims 1, 2, 21, 22, 41, and 42, as being directed to a judicial exception, without significantly more? Principles of Law — 35 U.S.C. § 101 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.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185 (1981)). 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. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). 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.” (emphasis omitted)); 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 Appeal 2018-006131 Application 13/678,819 7 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 of rubber products” (Diehr, 450 U.S. at 193); “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 (citation omitted). “A claim Appeal 2018-006131 Application 13/678,819 8 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. Subject Matter Eligibility — 2019 Revised Guidance The USPTO recently published revised guidance on the application of 35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This new guidance is applied in this Opinion. 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, mental processes, or certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people);3 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)).4, 5 See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55. 3 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter “Step 2A, prong 1”). 4 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter “Step 2A, prong 2”). 5 All references to the MPEP are to the Ninth Edition, Revision 08.2017 (rev. Jan. 2018). Appeal 2018-006131 Application 13/678,819 9 A claim that integrates a judicial exception into a practical application applies, relies on, or uses the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so integrated, then the claim is not directed to a judicial exception and is patent eligible under 35 U.S.C. § 101. Id. Only if a claim: (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an inventive concept. See 2019 Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18. For example, we look to whether the additional elements of the claim: (3) add 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, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 6 See 2019 Revised Guidance, 84 Fed. Reg. at 56. Because there is no single definition of an “abstract idea” under Alice step 1, the PTO has recently synthesized, for purposes of clarity, predictability, and consistency, key concepts identified by the courts as abstract ideas to explain that the “abstract idea” exception includes the following three groupings: 6 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the Supreme Court’s two-step framework, described in Mayo and Alice. Appeal 2018-006131 Application 13/678,819 10 1. Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; 2. Mental processes— concepts performed in the human mind (including an observation, evaluation, judgment, opinion); and 3. Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See 2019 Revised Guidance, 84 Fed. Reg. at 52. According to the 2019 Revised Guidance, “[c]laims that do not recite [subject] matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas,” except in rare circumstances. Even if the claims recite any one of these three groupings of abstract ideas, these claims are still not “directed to” a judicial exception (abstract idea), and thus are patent eligible, if “the claim as a whole integrates the recited judicial exception into a practical application of that exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53. For example, limitations that are indicative of integration into a practical application include: 1. Improvements to the functioning of a computer, or to any other technology or technical field — see MPEP § 2106.05(a); 2. Applying the judicial exception with, or by use of, a particular machine — see MPEP § 2106.05(b); Appeal 2018-006131 Application 13/678,819 11 3. Effecting a transformation or reduction of a particular article to a different state or thing — see MPEP § 2106.05(c); and 4. Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception — see MPEP § 2106.05(e). In contrast, limitations that are not indicative of integration into a practical application include: 1. Adding the words “apply it” (or an equivalent) with the judicial exception, or merely include instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea — see MPEP § 2106.05(f); 2. Adding insignificant extra-solution activity to the judicial exception — see MPEP § 2106.05(g); and 3. Generally linking the use of the judicial exception to a particular technological environment or field of use — see MPEP 2106.05(h). See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). 2019 Revised Guidance, Step 2A, Prong One7 The Judicial Exception Under the 2019 Revised Guidance, we begin our analysis by first considering whether the claims recite any judicial exceptions, including certain groupings of abstract ideas, in particular: (a) mathematical concepts, (b) mental steps, and (c) certain methods of organizing human activities. 7 Throughout this opinion, we give the claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2018-006131 Application 13/678,819 12 The Examiner concludes claims 1, 2, 21, 22, 41, and 42 recite: the abstract idea of integrating product ordering, vendor order fulfillment and vendor advertising; i.e. comparison shopping (applicant's specification, page 8, lines 23-28). Final Act. 2. We agree with the Examiner that the claims recite judicial exceptions that fall into the broad category of certain methods of organizing human activity, including the subcategory of fundamental economic practices, further including commercial interactions, advertising, marketing or sales activities or behaviors, and business relations. See 2019 Revised Guidance, 84 Fed. Reg. at 52. In the table below, we identify in italics the specific claim limitations that we conclude recite the judicial exception. We additionally identify in bold the additional claim limitations that are generic computer components: TABLE ONE Independent Claim 1 Revised 2019 Guidance [a] A supply chain management system comprising: (a) customer order entry subsystem; (b) part/product quoting subsystem: (c) part/product advertising subsystem; (d) vendor order fulfillment subsystem; and (e) transportation tracking subsystem; A machine (system) is a statutory subject matter class. See 35 U.S.C. § 101 (“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”). Appeal 2018-006131 Application 13/678,819 13 [b] wherein said customer order entry subsystem is configured to accept a part/product order from a customer, wherein said part/product order comprises an ordered part/product of a plurality of parts/products stored in a local price/availability/delivery database; Order acceptance and order entry are insignificant extra-solution activities to the judicial exception — see MPEP § 2106.05(g); i.e., data gathering. See 2019 Revised Guidance, 55 n.31. Additional element – a generic database. [c] said customer order entry subsystem comprises a status screen configured to display the real-time order status of said ordered part/product and information about said ordered part/product stored In the local price/availability/delivery database; Displaying real-time order status is insignificant extra-solution activity. 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). Additional elements – a generic status screen and database. [d] said part/product quoting subsystem is configured to generate and transmit a quote invitation to a first set of vendors of a plurality of vendors using said part/product order, wherein the plurality of vendors is retrieved from a vendor database; Abstract idea, i.e., quotes and associated orders fall into the category of a fundamental economic practice, including the subcategories of commercial interactions, advertising, marketing or sales activities or behaviors, and business relations. Additional element – a generic database. Appeal 2018-006131 Application 13/678,819 14 [e] said part/product quoting subsystem is configured to receive at least one vendor quote for said part/product order in response to the quote invitation; Abstract idea, i.e., quotes and associated orders fall into the category of a fundamental economic practice, including the subcategories of commercial interactions, advertising, marketing or sales activities or behaviors, and business relations. [f] said at least one vendor quote comprises a quote status further comprising the availability of said ordered part/product, the price of said ordered part/product, and delivery options and statistics of said ordered part/product; Abstract idea, i.e., quotes and associated orders fall into the category of a fundamental economic practice, including the subcategories of commercial interactions, advertising, marketing or sales activities or behaviors, and business relations. [g] said at least one vendor quote is displayed in said status screen; Displaying at least one vendor quote is insignificant extra-solution activity. 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). Additional element – a generic status screen. [h] said part/product advertising subsystem comprises a vendor advertising database, wherein the vendor advertising database comprises a plurality of advertisements, wherein each of the plurality of advertisements is associated with a second set of Additional element – a generic database. Abstract idea, i.e., advertising is a fundamental economic practice, including commercial interactions, advertising, marketing or sales Appeal 2018-006131 Application 13/678,819 15 vendors of the plurality of vendors, and wherein at least one of the plurality of advertisements is associated with a part/product of the plurality of parts/products, wherein the at least one of the plurality of ads forms at least one context- sensitive vendor advertisement, wherein the associated part/product of the at least one context-sensitive vendor advertisement is said ordered part/product; activities or behaviors, and business relations. [i] said part/product advertising subsystem is configured to periodically query the plurality of vendors for information regarding the plurality of parts/products and update the vendor advertising database and the local price/availability/delivery database with the information regarding the plurality of parts and products; Periodically querying for information is insignificant extra- solution activity. 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). Additional element – a generic database. [j] said part/product advertising subsystem is configured to trigger a parts/product vendor advertisement selection process, wherein the parts/products vendor advertisement selection process determines a selected advertisement from the at least one context- Abstract idea, i.e., advertisement selection is a fundamental economic practice, including commercial interactions, advertising, marketing or sales activities or behaviors, and business relations. Appeal 2018-006131 Application 13/678,819 16 sensitive vendor advertisement and an alternate vendor advertisement, wherein the parts/product vendor advertisement selection process retrieves the selected advertisement from the vendor advertising database; Additional element – a generic database. [k] said part/product advertising subsystem is configured to display the selected advertisement in said status screen, wherein the selected advertisement comprises an advertising quote for said ordered part/product; Displaying the selected advertisement is insignificant extra- solution activity. 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). Abstract idea, i.e., advertising is a fundamental economic practice, including commercial interactions, advertising, marketing or sales activities or behaviors, and business relations. [l] said customer order entry subsystem is configured to permit said customer to select said at least one vendor quote or said advertising quote to define a selected part/product order; Abstract idea, i.e., selecting quotes for orders or advertising are a fundamental economic practice, including commercial interactions, advertising, marketing or sales activities or behaviors, and business relations. [m] said vendor order fulfillment subsystem is configured to receive said selected part/product order over a communications network and allow a vendor to accept/reject said selected part/product order and receiving/accepting/rejecting the order is insignificant extra-solution activity to the judicial exception. See 2019 Revised Guidance, 55 n.31. Appeal 2018-006131 Application 13/678,819 17 provides order status feedback to said customer on said status screen; Additional elements – a generic communications network and status screen. [n] said vendor order fulfillment subsystem is configured to execute shipment of the selected part/product associated with said selected part/product order to said customer using optimized delivery routing; Executing the shipment of products is insignificant extra-solution activity. 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). [o] said transportation tracking subsystem is configured to track the physical location of said selected part/product from said vendor to said customer; and Tracking locations of products is insignificant extra-solution activity. 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). [p] said status screen is configured to display in real-time the status of said shipment at various way-points within said optimized delivery routing. Displaying the status of a shipment is insignificant post-solution activity. 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). Additional element – a generic status screen. We note the additional limitations of generic computer components, which we find are at least the “status screen,” “communications network,” and the “database,” as recited each of independent claims 1, 21 and 41. These additional limitations are identified in bold in Table One above, and are addressed infra under Step 2A, prong two, MPEP § 2106.05(f). We note Appeal 2018-006131 Application 13/678,819 18 the preamble of independent claim 41 recites a “computer usable medium” as an additional limitation. Remaining independent claims 21 and 41 recite similar language of commensurate scope that we conclude also falls into the same abstract idea categories mapped above in Table One for independent system claim 1. Because we conclude all claims on appeal recite an abstract idea, as identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong Two. 2019 Revised Guidance, Step 2A, Prong Two Integration of the Judicial Exception into a Practical Application Pursuant to the 2019 Revised Guidance, we consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55. We have identified supra the additional elements recited in each of independent claims 1, 21, and 41, i.e., at least the generic “status screen,” “communications network, and “database.” See 2019 Revised Guidance, 84 Fed. Reg. at 52. MPEP § 2106.05(a) Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field Under MPEP § 2106.05(a), Appellant contends the claims amount to significantly more than an abstract idea: In Trading Techs, Int'l, Inc, v. CQG, Inc., the Federal Circuit reviewed the patentability of a graphical user interface (GUI) used for stock trading. Specifically the patent covered a trading system that uses a GUI that dynamically displays bid and asked prices. CQG argued that the patent was invalid because it covered well-known trading conceptions and simply Appeal 2018-006131 Application 13/678,819 19 described displaying market information in a grid, The Federal Circuit disagreed and held that because the patents “require a specific, structured graphical user interface” and the prescribed functionality related to the interface, the patents were not directed to abstract ideas. “The graphical user interface system of these two patents is not an idea that has long existed, the threshold criterion of an abstract idea and ineligible concept,” the court wrote. App. Br. 22 (emphasis added). Trading Technologies International In response to Appellant’s arguments regarding Trading Technologies International, Inc. v. CQG, INC. (675 Fed.Appx. 1001 (Fed. Cir. 2017)), we note Trading Technologies is non-precedential and thus is not a controlling case authority that we must consider in this appeal. Moreover, we conclude the claims on appeal are silent regarding specific limitations directed to an improved status screen, communications network, or database. See 2019 Revised Guidance, 84 Fed. Reg. at 52. See independent claims 1, 21, and 41. Therefore, on this record, we conclude claim 1 does not recite an improvement to the functionality of a computer or other technology or technical field. See MPEP § 2106.05(a). MPEP §§ 2106.05(b) and (c) The Bilski Machine-or-Transformation test (“MoT”) as applied to method claims 21 and 22 The Supreme Court cautions that the MoT test is not the sole test, but may provide a useful clue: This Court’s precedents establish that the machine-or- transformation test is a useful and important clue, an investigative tool, for determining whether some claimed Appeal 2018-006131 Application 13/678,819 20 inventions are processes under § 101. The machine-or- transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.” Bilski, 561 U.S. at 604 (emphasis added). Here, Appellant advances no arguments regarding the Bilski MoT test. In any event, because generic computer components such as “a status screen,” “a communications network,” and a “database” are recited in method claims 21 and 22, we conclude these specific claims do not define or rely upon a “particular machine.” See MPEP § 2106.05(b). Further, we conclude method claims 21 and 22 do not transform an article to a different state or thing. See MPEP § 2106.05(c). MPEP § 2106.05(e) — Meaningful Claim Limitations 8 Under MPEP § 2106.05(e), Appellant argues: “Even if Applicant’s claims were directed to an abstract idea, Applicant’s claims nevertheless recite other meaningful limitations that amount to significantly more than a mere patent on ‘integrating product ordering, vendor order fulfillment and vendor advertising’ or to the abstract idea of ‘comparison shopping.’” App. Br. 23 (emphasis added). However, because Appellant’s argue BASCOM in support of this argument, and urge that “the context sensitivity built into Applicant’s claims is not a conventional or routine feature for advertisements” (id.), we will 8 MPEP § 2106.05(e): “Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.” (emphasis added). Appeal 2018-006131 Application 13/678,819 21 address Appellant’s arguments infra under Step 2B of our analysis (Inventive Concept).9 Appellant additionally argues: “Like in DDR, the claimed solution here is necessarily rooted in computer technology to address a problem specifically arising in the realm of automated customization. Rather, these are meaningful limitations that confine the claim to a particular useful application.” App. Br. 24 (emphasis added). We do not find that Appellant’s claims are similar to the claimed solution the court held to be patent-eligible in DDR. In DDR, the Federal Circuit applied the Supreme Court's Alice two-step framework, and upheld the validity of DDR’s patent on its web-page display technology. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014). The problem addressed by Appellant’s claims is not similar or otherwise analogous to the specific technical problem addressed by the subject claims in DDR, which were directed to retaining a website visitor when the visitor clicked on a third-party merchant's advertisement on the host website. Instead of taking the visitor to the third-party merchant’s website (and thus losing the visitor to the third-party merchant), DDR’s claimed system generated a hybrid web page that: (1) displayed product information from the third-party merchant, but also, (2) retained the host website’s “look and feel.” Here, Appellant’s claim 1 is not directed to a website that retains the host website’s “look and feel” while displaying product information from 9 See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Appeal 2018-006131 Application 13/678,819 22 the third-party merchant, as was the case in DDR. See DDR, 773 F.3d at 1257. Although Appellant’s status screen is configured to display the real- time status of the shipment at various way-points within the optimized delivery routing (claim 1), we find displaying such shipping status information is merely an improvement in the informational content that is intended to be viewed and evaluated by a person involved in the fundamental economic practice of commercial interactions, advertising, marketing or sales activities or behaviors, and business relations. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Cf. Trading Technologies International, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (“Information, whether displayed in the form of price values or P&L values, is abstract.”). Moreover, an improved abstract idea is still an abstract idea. See Mayo, 566 U.S. at 90 (holding that a novel and nonobvious claim directed to a purely abstract idea is, nonetheless patent-ineligible). Therefore, on this record, we conclude independent system claim 1 has no persuasively argued meaningful limitations as considered under MPEP § 2106.05 (e). MPEP § 2106.05(f) Merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea Without more, we conclude Appellant’s claimed invention merely implements the abstract idea using generic computer components, including a status screen, communication network, and a database. See Claims 1, 21, and 41. See 2019 Revised Guidance, 84 Fed. Reg. at 52. We note the Appeal 2018-006131 Application 13/678,819 23 supporting description of generic computer and network components in the Specification, for example: Some preferred embodiments may integrate the functionality of one or more subsystems into a single functional unit. It is anticipated that these subsystems may be optimally implemented on a computing device executing machine instructions read from a computer readable medium. System Overview (0400) The present invention system may be broadly described as depicted in FIG. 4 (0400). In this context, a customer (0412) interacts with a customer order status subsystem (0413) that communicates via the Internet (0401) (or some other communications network) with a vendor order fulfillment subsystem (0420) to place orders for parts/products. Spec. 16, ll. 7–19 (emphasis added). Exemplary Status Screen (1300) The present invention may in many preferred embodiments incorporate an integrated status display screen as generally illustrated in FIG. 13 Spec. 25, ll. 5–8 (emphasis added). Regarding the claimed databases, see Spec. 33, ll. 4–6: “All of these transmissions may utilize web services in conjunction with a parts quoting database to accomplish this functionality in a distributed computer network environment.” (emphasis added). Regarding the “computer usable medium” recited in the preamble of claim 41, “The present invention does not limit the type of physical media on which this software may reside.” Spec. 17, ll. 13–14 (emphasis added). Further regarding the recited “communications network” (claim 1), we find Appellant’s claimed invention does not provide a solution Appeal 2018-006131 Application 13/678,819 24 “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” as considered by the court in DDR, 773 F.3d at 1257. (emphasis added). Therefore, we agree with the Examiner: It is further noted that unlike the claims in DDR holdings LLC v. Hotels.com which set forth a specific way in which a computer/the Internet were manipulated to achieve the claimed functions, the claims at issue broadly recite the use of a machine in an online environment without specifying even arguably new physical components and without specifying any new processes other than those directed to the performance of managing purchasing in a supply chain itself. Final Act. 8. See also Trading Technologies, 921 F.3d at 1384 (“‘mere automation of manual processes using generic computers’ . . . ‘does not constitute a patentable improvement in computer technology.’”) (citing Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)). We emphasize that McRO, Inc. v. Bandai Namco Games America Inc., (837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea exception prevents patenting a result where ‘it matters not by what process or machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). MPEP § 2106.05(g) Adding insignificant extra-solution activity to the judicial exception As mapped in the right column of Table 1 above, we conclude claim 1 also recites extra or post-solution activities that courts have determined to be Appeal 2018-006131 Application 13/678,819 25 insufficient to transform judicially excepted subject matter into a patent- eligible application. See MPEP § 2106.05(g); 84 Fed. Reg. at 55 n.31. MPEP § 2106.05(h) Generally linking the use of the judicial exception to a particular technological environment or field of use The Supreme Court guides: “the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or [by] adding ‘insignificant post solution activity.’” Bilski v. Kappos, 130 S. Ct. 3218 (2010), (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). We note Appellant does not advance arguments in the Briefs regarding any purported lack of preemption. Nor do claims 1, 2, 21, 22, 41, and 42 on appeal present any other issues as set forth in the 2019 Revised Guidance regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 55. Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)– (h)), we conclude the additional elements in claims 1, 2, 21, 22, 41, and 42 do not integrate the judicial exception into a practical application. Therefore, we proceed to Step 2B, The Inventive Concept. The Inventive Concept – Step 2B Under the 2019 Revised Guidance, 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 adds a specific limitation Appeal 2018-006131 Application 13/678,819 26 beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or, simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. BASCOM 10 Appellant cites to BASCOM in support, and urge: Applicant's claim recite numerous meaningful limitations that represent something significantly more than a mere patent on the abstract idea of integrating product ordering, vendor order fulfillment and vendor advertising” or the abstract idea of “comparison shopping.” For example, Applicant's claims recite a parts/product vendor advertisements selection process that determines which advertisement is best to display to a buyer. Applicant's claims look at available vendor advertisement options and at the context sensitivity of the advertisements before choosing between the context-sensitive advertisement and an alternate vendor advertisement. The context sensitivity built into Applicant's claims is not a conventional or routine feature for advertisements, especially when systems are typically built for static advertisements. App. Br. 23 (emphasis added). We find Appellant’s analogy to BASCOM is unavailing. App. Br. 23– 25. The Federal Circuit held in BASCOM that the claimed Internet content filtering, which featured an implementation “versatile enough that it could be adapted to many different users’ preferences while also installed remotely in a single location,” expressed an inventive concept in “the non- 10 BASCOM, 827 F.3d 1341. Appeal 2018-006131 Application 13/678,819 27 conventional and non-generic arrangement of known, conventional pieces.” BASCOM, 827 F.3d at 1350. Here, Appellant has not shown a non-conventional, non-generic arrangement regarding the additional limitations of generic computer components, as recited in each of independent claims 1, 21, and 41, which include the generic “status screen,” “communications network,” and databases. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Therefore, it is our view that Appellant’s claims do not involve any improvements to another technology, technical field, or improvements to the functioning of the computer or network, as was seen by the court in BASCOM. Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) We note Berkheimer was decided by the Federal Circuit on February 8, 2018. On April 19, 2018, the PTO issued the Memorandum titled: “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer Memorandum”).11 The Berkheimer Memorandum provided specific requirements for an Examiner to support with evidence any finding that claim elements (or a combination of elements) are well-understood, routine, or conventional. In the Final Action, the Examiner finds: Applicant clearly indicates in FI[G]s 1 and 2 and in the background of the specification pages 1-8, that the claimed 11 Available at https://www.uspto.gov/sites/default/files/documents/memo- berkheimer-20180419.PDF. Appeal 2018-006131 Application 13/678,819 28 features are simply appended to the [I]nternet features above. Applicant's specification does not provide any disclosure that would suggest that these well understood [I]nternet features/functionalities are anything other than well-understood routine and conventional features that are simply appended to the abstract idea to generally link the idea to technological environment. Please also note that none of the steps 1-28 shown supra necessarily require a computer to perform the abstract idea, therefore, there is no identifiable inventive step. Final Act. 7–8 (emphasis added). Although the Supplemental Appeal Brief was filed on January 30, 2018, just over a week before Berkheimer was decided, Appellant cites to Berkheimer in the Reply Brief, filed May 23, 2018: Such as provided with the recent Federal Circuit decision Berkheimer v. HP, Inc., (Fed. Cir. Feb 8, 2018), “[w]hether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art. The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional.” The combination of elements of the claimed invention, including the advertising aspects of the claimed invention, are not well-understood, routine or convention[al] because the state of the art at the time of filing involved separate advertising systems, instead of integrated advertising systems. The integration of advertising aspects into an e- commerce model is not well known that it does not need to be described in detail in a patent application. While advertising and the e-commerce model are conventional, the specific combination of advertising and e-commerce as provided by the claimed invention is not commonly used in the relevant field. It is the combination of the various aspects of the claimed invention and the steps performed by the claimed invention that allow the claimed invention to operate in a non-conventional and non-generic way to ensure that the buyer makes the most informed and efficient purchase while the claimed invention reduces data redundancy and data handling. So, even, if the Appeal 2018-006131 Application 13/678,819 29 claimed invention is directed at an abstract idea, the claimed invention comprises claim limitations that are “significantly more” than the abstract idea. Reply Br. 2–3 (emphasis added). However, we find Appellant fails to substantively traverse, in the Reply Brief (id.), the Examiner’s specific findings regarding Figures 1 and 2 and pages 1–8 of the Specification: Applicant clearly indicates in FI[G]s 1 and 2 and in the background of the specification pages 1-8, that the claimed features are simply appended to the [I]nternet features above. Applicant's specification does not provide any disclosure that would suggest that these well understood [I]nternet features/functionalities are anything other than well-understood routine and conventional features that are simply appended to the abstract idea to generally link the idea to technological environment. Final Act. 7–8 (emphasis added). Therefore, on this record, we are not persuaded the Examiner erred. Further regarding the use of the recited generic “database[s],” “status screen” and “communications network” (independent claims 1, 21, and 41), the Supreme Court has held “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 223. Our reviewing court provides additional guidance. See FairWarning, 839 F.3d at 1096 (“[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an Appeal 2018-006131 Application 13/678,819 30 estimated outcome, and presenting offers to potential customers found to merely recite “‘well-understood, routine conventional activit[ies],’ either by requiring conventional computer activities or routine data-gathering steps” (alteration in original)). This reasoning is applicable here. Therefore, on the record before us, Appellant has not shown that the claims on appeal add a specific limitation beyond the judicial exception that is not “well-understood, routine, and conventional” in the field (see MPEP § 2106.05(d)). In light of the foregoing, we conclude, under the 2019 Revised Guidance, that each of Appellant’s claims 1, 2, 21, 22, 41 and 42, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application, and does not include an inventive concept. Accordingly, for the reasons discussed above, we sustain the Examiner’s Rejection A under 35 U.S.C. § 101 of claims 1, 2, 21, 22, 41, and 42.12 Rejection B of Representative Independent Claim 1 under Pre-AIA 35 U.S.C. § 103(a) Issue: Under 35 U.S.C. § 103(a), did the Examiner err by finding Scruton, Racco, and Ebert collectively teach or suggest the contested limitations L1 and L2: [L1] said part/product advertising subsystem is configured to periodically query the plurality of vendors for information regarding the plurality of parts/products and update the vendor advertising database and the local 12 To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2018-006131 Application 13/678,819 31 price/availability/delivery database with the information regarding the plurality of parts and products; [L2] said part/product advertising subsystem is configured to trigger a parts/product vendor advertisement selection process, wherein the parts/products vendor advertisement selection process determines a selected advertisement from the at least one context-sensitive vendor advertisement and an alternate vendor advertisement, wherein the parts/product vendor advertisement selection process retrieves the selected advertisement from the vendor advertising database[,] within the meaning of representative claim 1?13 (Emphasis added). We note limitations L1 and L2 of claim 1 are recited in similar form having commensurate scope in remaining independent claims 21 and 41. The Examiner’s Findings The Examiner finds Racco (¶ 110), in combination with Scruton and Ebert, teaches or suggests disputed limitation L1, the vendor advertising database. See Final Act. 12. The Examiner finds Racco (¶¶ 389, 266), in combination with Scruton and Ebert, teaches or suggests disputed limitation L2, the context-sensitive vendor advertisement selection. See Final Act. 12–13. 13 See supra, n.7. (We give the contested claim limitations the broadest reasonable interpretation consistent with the Specification). Appeal 2018-006131 Application 13/678,819 32 Contested Limitation L1 of Independent Claim 1 under Rejection B Appellant’s Contentions Regarding the § 103(a) rejection of claim 1, Appellant contends that Racco teaches advertisements on a webpage, and does not teach an “advertising database,” as recited in claim 1. App. Br. 27. However, Appellant’s contentions are not persuasive. As further explained by the Examiner: “Scruton clearly teaches a database that maintains lists of supplier’s parts being promoted in a database maintained by the inventory management system.” Ans. 12 (citing Scruton, ¶ 217). The Examiner notes that Scruton does “not specifically mention the word ‘advertising’” Ans. 12. The Examiner explains the Racco reference was added “to show that having an advertising database was well understood in the art.” Id. (citing Racco ¶ 110). The Examiner additionally cites to Racco (¶¶ 140, 265, 453, and 454) to show “the use of a local database to store promotions/listing advertisements in a database [that] are accessed and advertised on the intermediary from the database.” Ans. 12–13. Turning to the evidence, we find at least Racco (¶ 453) (in combination Scruton and Ebert) teaches or suggests the disputed L1 “advertising database” feature: As described above, A Product Advertising option 167 can be selected from the main sell menu as shown in FIG. 12 to allow sellers 14 or administrators of other websites or systems to integrate and/or promote their item listings from their website into the items database 22 and the system 10. For example, ABC Company may have their own website but may want to use the intermediary 16 to promote their items and Appeal 2018-006131 Application 13/678,819 33 generate more sales by listing all of their items in the intermediary’s 16 items database 22. Racco ¶ 453. Appellant attacks the teachings of the references in isolation and does not specifically rebut the Examiner's ultimate legal conclusion of obviousness which is based on the combined teachings and suggestions of Scruton, Racco, and Elbert. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Id. Moreover, the test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Because Appellant’s arguments are directed to the references individually, and not to the combination of the teachings, as applied by the Examiner (see Ans. 12–13), on this record, we are not persuaded the Examiner erred regarding disputed limitation L1. See Final Act. 11–12. Contested Limitation L2 of Independent Claim 1 under Rejection B [L2] said part/product advertising subsystem is configured to trigger a parts/product vendor advertisement selection process, wherein the parts/products vendor advertisement selection process determines a selected advertisement from the at least one context-sensitive vendor advertisement and an alternate vendor advertisement, wherein the parts/product vendor advertisement selection process Appeal 2018-006131 Application 13/678,819 34 retrieves the selected advertisement from the vendor advertising database; Claim 1. See App. Br. 29–31. Appellant argues “Racco teaches user-filtered product listings, not a context-sensitive vendor advertisement.” App. Br. 29. In support, Appellant contends that “advertisements are not the same as product listings.” and “it is inapposite to combine teachings for advertisements and products listings when Racco specifically keeps advertisements and product listings separate.” (See Racco, Figure 44). We find Appellant’s arguments unavailing, particularly given that Appellant expressly states in another section of the Appeal Brief: “The product advertising feature as disclosed in Racco in paragraphs [0453] and [0454] is a feature for integrating the seller's product listings on the seller's third-party e-commerce system.” App. Br. 33, ¶ 3. We note Racco’s paragraph 454 describes: “the system 10 allows sellers 12 and suppliers 520 to utilize the system’s 10 selling tools to list and sell their items within the system 10, or, sell their items on their own e-commerce systems using the Product Advertising tool giving them unparalleled flexibility in how they want to do business.” Given these teachings, (id.), we find combining advertisements with product listings would be nothing more than a predictable result. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“[A] combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Regarding the recited “triggering” feature of limitation L2 of claim 1, the Examiner’s findings are supported by a preponderance of the evidence: Appeal 2018-006131 Application 13/678,819 35 [See Racco’s] Figure 8 where parts are advertised by an advertisement subsystem that is triggered by customized listings/advertisements that the seller creates to allow the system to trigger the selection of conte[x]t sensitive listings that are related to the content (Rocco, para 0155). For example; in FIG 8 under a specific of category “Glass” when the user selects “door glass [(3),]” advertisements are presented to the user that were triggered by the system selection process. Ans. 16 (emphasis added). For at least the aforementioned reasons, on this record we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for Rejection B of the disputed limitations L1 and L2 of independent representative claim 1. Accordingly, we sustain the Examiner’s Rejection B of claim 1. Rejection B of Independent Claims 21 and 41 under 35 U.S.C. § 103(a) Appellant focuses on the “tailored advertising” language recited in independent claims 21 and 41. See App. Br. 33–34 (emphasis added). Independent claim 21 recites, in pertinent part: (2) determining tailored advertising between context-sensitive vendor advertising and alternate vendor advertising, wherein the context-sensitive vendor advertising is linked to a part/product on said customer order entry subsystem and wherein said tailored advertising is linked to at least one vendor of the second set of the plurality of vendors retrieved from the vendor database; (emphasis added). Remaining independent claim 41 recites identical language. Appeal 2018-006131 Application 13/678,819 36 Issue: Under 35 U.S.C. § 103(a), did the Examiner err by finding Scruton, Racco and Ebert collectively teach or suggest the disputed claim limitation, “tailored advertising”? The Examiner finds Racco (¶¶ 140, 265–266, and 453–454) teaches tailored advertising, in accordance with the supporting evidence relied upon in the Final Office Action 10–16. Turning to the evidence, we agree with the Examiner that Racco teaches or suggests tailored advertising, i.e., advertising promoted in a desired way for specific target customers: Sellers 14 can also use their store front to attach advertising pages. In this way, the system 10 can restrict the amount of data that the sellers 14 can add to a listing (such as advertisements) while still providing space to advertise and promote in any way they wish. … The system 10 can use the categorization database 20 to perform a filtered query … For example, sellers 14 can create and distribute flyers to certain groups or types of users for specific target marketing campaigns. Racco ¶¶ 265–266 (emphasis added). We note there is no requirement in an obviousness analysis for the prior art to “contain a description of the subject matter of the appealed claim in ipsissimis verbis.” In re May, 574 F.2d 1082, 1090 (CCPA 1978). Moreover, “the question under 35 USC 103 is not merely what the references expressly teach but what they would have suggested to one of ordinary skill in the art at the time the invention was made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also MPEP § 2123. Appeal 2018-006131 Application 13/678,819 37 This reasoning is applicable here. Thus, we find Racco teaches or suggests tailored marketing/advertising (¶¶ 265–266: “specific target marketing campaigns.”), within the meaning of independent claims 21 and 41. Accordingly, on this record, and based upon a preponderance of the evidence, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness, as pertaining to the disputed “tailored advertising” limitation recited in remaining independent claims 21 and 41. (emphasis added). Accordingly, we sustain the Examiner’s Rejection B of claims 21 and 41. Rejection B under § 103(a) of Remaining Dependent Claims 2, 22, and 42 Appellant advances no arguments traversing the Examiner’s Rejection B of dependent claims 2, 22, and 42. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Therefore, dependent claims 2, 22, and 42 fall with the respective independent claim 1, 21, or 41, from which they directly depend. CONCLUSIONS The Examiner did not err in rejecting claims 1, 2, 21, 22, 41, and 42 under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more. The Examiner did not err in rejecting claims 1, 2, 21, 22, 41, and 42, as being obvious under 35 U.S.C. § 103. Appeal 2018-006131 Application 13/678,819 38 DECISION We affirm the Examiner’s decision rejecting claims 1, 2, 21, 22, 41, and 42 under 35 U.S.C. § 101. We affirm the Examiner’s decision rejecting claims 1, 2, 21, 22, 41, and 42 under 35 U.S.C. § 103. 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 Copy with citationCopy as parenthetical citation