Personali Inc.

Patent Trials and Appeals Board

Jun 30, 2020

15164272 - (D) (P.T.A.B. Jun. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/164,272 05/25/2016 Keren ZIMMERMAN NETO P0343 9028
28221 7590 06/30/2020
PATENT DOCKET ADMINISTRATOR
LOWENSTEIN SANDLER LLP
ONE LOWENSTEIN DRIVE
ROSELAND, NJ 07068
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/30/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@lowenstein.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEREN ZIMMERMAN and NOAM JAVITS
__________________

Appeal 2020-000967
Application 15/164,272
Technology Center 3600
____________________

Before JAMES P. CALVE, LISA M. GUIJT, and
LEE L. STEPINA, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1–6, 8–18, and 20–23, which are all the
pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Personali Inc. as the real party in interest. Appeal Br. 3.
2 Claims 7 and 19 are cancelled. See Appeal Br. 19, 21 (Claims App.).
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CLAIMED SUBJECT MATTER
Claims 1, 12, and 13 are independent. Claim 1 is reproduced below.
1. A method for preventing electronic shopping cart
abandonment in an electronic commerce (e-commerce) website,
comprising:
receiving by an e-commerce server a message that at
least one product is added to an electronic shopping cart of the
e-commerce website displayed on a consumer device;
collecting by the e-commerce server at least one user-
activity parameter related to a user of the consumer device;
identifying, using the at least one user-activity parameter,
an attempt of a user of the consumer device not to complete a
purchase transaction of the at least one product;
comparing each of the at least one user-activity
parameter to a baseline;
generating a significant parameter for each user-activity
parameter being deviate from the respective baseline by a
predefined threshold, wherein the identification of an attempt
not to complete a purchase is determined upon generation of at
least one significant parameter;
selecting at least one motivational content item for
display on the consumer device; and
causing a display of the selected at least one motivational
content item on a display of the consumer device.

Appeal Br. 18 (Claims App.).
REJECTIONS
Claims 1–6, 8–18, and 20–23 are rejected as directed to a judicial
exception to 35 U.S.C. § 101.
Claims 1, 2–4, 6, 12–16, and 18 are rejected under 35 U.S.C. § 102 as
anticipated by Shafiee (US 6,771,766 B1, iss. Aug. 3, 2004).
Claims 5, 8–11, 17, and 20–23 are rejected under 35 U.S.C. § 103 as
unpatentable over Shafiee and Rampell (US 2008/0091528 A1, pub. Apr.
17, 2008).
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ANALYSIS
Patent Eligibility under 35 U.S.C. § 101
Appellant argues the claims as a group. See Appeal Br. 7–12. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Examiner’s Determination
The Examiner determines that the claims recite the abstract idea of
providing incentives, offers, and discounts to complete a purchase. Final
Act. 4. The Examiner determines the claims recite a method of organizing
human activities by managing transactions, satisfying legal obligations, and
tailoring content based on information about a user, and mental processes for
collecting and comparing data. Id. at 4–6, 19, 21. The Examiner determines
that the claims recite additional elements as generic computer elements that
perform the abstract idea rather than improve technology. Id. at 11–12, 17–
22. According to the Examiner, the claims recite the use of technology as a
tool to perform the abstract idea without transforming the idea. Id. at 19, 25.
Appellant’s Contentions
Appellant argues there is a marketing and sales aspect of encouraging
customer engagement and retaining sales, but the claims are tailored to a
technologically advanced, personalized means of accomplishing that goal.
Appeal Br. 9. Appellant asserts that the claims require technical elements of
identifying a user-activity parameter and comparing it to a baseline, which is
more than a commercial transaction or mental process. Id. at 10. Appellant
also argues that the claims recite a specific improvement in how to display
motivational content tailored to a specific consumer based on user-activity
parameters compared to a baseline and timing, and these elements are not
well understood, routine, or conventional. Id. at 10–12.
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Principles of Law
Section 101 of the Patent Act states:
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.
35 U.S.C. § 101. This provision contains an implicit exception: “Laws of
nature, natural phenomena, and abstract ideas are not patentable.” Alice
Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
To distinguish patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications, we first
determine whether the claims are directed to a patent-ineligible concept. Id.
at 217. If they are, we consider the elements of each claim, individually and
“as an ordered combination,” to determine if additional elements “‘transform
the nature of the claim’ into a patent-eligible application” as an “inventive
concept” sufficient to ensure the claims in practice amount to significantly
more than a patent on the ineligible concept itself. See id. at 217–18.
The USPTO has issued guidance about this framework. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”). Under the Revised Guidance, to determine whether a
claim is “directed to” an abstract idea, we evaluate whether the claim recites
(1) any judicial exceptions, including certain groupings of abstract ideas
listed in the Revised Guidance (i.e., mathematical concepts, certain methods
of organizing human activities such as a fundamental economic practice, or
mental processes); and (2) additional elements that integrate the judicial
exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. rev. 08.2017 Jan. 2018) (“MPEP”)). Id. at 52–55.
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Only if a claim (1) recites a judicial exception and also (2) does not
integrate that exception into a practical application, do we then consider
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. Id. at 56.
Step 1: Is Claim 1 Within a Statutory Category?
Claim 1 recites a “method” which is within a statutory category of
35 U.S.C. § 101, namely, a process. Final Act. 4. Thus, we next consider
whether claim 1 recites a judicial exception.
Step 2A, Prong 1: Does Claim 1 Recite a Judicial Exception?
We agree with the Examiner that claim 1 recites certain methods of
organizing human activity and mental processes. The Revised Guidance
enumerates this concept as (1) certain methods of organizing human activity
of commercial interactions for marketing and sales activities and (2) mental
processes––concepts performed in the human mind. See Revised Guidance,
84 Fed. Reg. at 52.
The claims relate to a “method for preventing users from abandoning
electronic shopping carts in e-commerce websites.” Spec. ¶ 2. The method
motivates consumers to complete an online purchase that they have started
by targeting motivational content at them to dissuade them from abandoning
their electronic shopping cart. Id. ¶¶ 6, 9, 10, 16. The preamble of claim 1
recites this commercial activity as “[a] method for preventing electronic
shopping cart abandonment in an electronic commerce (e-commerce)
website.” Appeal Br. 18 (Claims App.).
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The first two limitations of claim 1 recite steps of collecting data of a
user’s shopping activities that will be organized for sales and marketing in
the subsequent steps. The first step “receiv[es] by an e-commerce server a
message that at least one product is added to an electronic shopping cart of
the e-commerce website displayed on a consumer device.” The second step
“collect[s] by the e-commerce server at least one user-activity parameter
related to a user of the consumer device.” Appeal Br. 18 (Claims App.).
The Specification describes the steps as tracking a user’s shopping
activity. Spec. ¶ 21. An e-commerce server 130 is configured to receive a
message that a user is browsing an e-commerce website and a product was
placed in an electronic shopping cart. Id. The message may be derived by a
script or cookie saved locally in consumer device 110, or it may be provided
by web source 150 that hosts the e-commerce website. Id. ¶¶ 21, 22.
Upon notification that the user added a product to a shopping cart, e-
commerce server 130 collects parameters about the user’s activity. Id. ¶ 23.
User-activity parameters include the amount of time a user spends searching
for a certain good or service, gestures received from the user (e.g., click, tap,
swipe, keystroke), user queries/portions of queries, products and quantities
in the shopping cart. Id. ¶ 24. User parameters also may include behavioral
information, shopping history information, demographic information, the
time spent searching for a certain product, gestures, queries submitted, and
products added to a shopping cart and the time they were added. Id. ¶ 35.
The next step organizes the user’s commercial activities for targeted
marketing by “identifying, using the at least one user-activity parameter, an
attempt of a user of the consumer device not to complete a purchase
transaction of the at least one product.” Appeal Br. 18 (Claims App.).
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The next limitations recite this step in more detail as “comparing each
of the at least one user-activity parameter to a baseline” and “generating a
significant parameter for each user-activity parameter being deviate from the
respective baseline by a predefined threshold, wherein the identification of
an attempt not to complete a purchase is determined upon generation of at
least one significant parameter.” Appeal Br. 18 (Claims App.).
The Specification describes this organizational, analytical step as one
of comparing the user-activity parameters to baselines for each parameter to
identify a “significant parameter.” Spec. ¶¶ 25–27, 37, 38.
The Specification describes “baselines” as predefined thresholds that
are computed based on data collected from multiple users or a specific user,
e.g., the amount of time an average user spends searching for a product. See
Spec. ¶ 25. Baselines may represent normal behavior of a user or an average
time to perform an activity such as to complete a transaction. Id. ¶ 37.
A “significant parameter” is a user-activity parameter that exceeds a
“baseline” for that parameter, e.g., by deviating from the baseline’s value.
Id. ¶¶ 25, 37. For example, if an average user spends two minutes searching
for a particular product and the identified user spends five minutes searching
for the product, the five-minute search exceeds the two-minute baseline and
is considered a “significant parameter.” Id. ¶ 25. Similarly, if a threshold
(baseline) time for completing a purchase of a coffee mug is two minutes
and fifteen minutes have elapsed since a coffee mug was added to a cart, this
elapsed time exceeds the baseline so a “significant parameter” is generated
to indicate the user may abandon the transaction. Id. ¶¶ 27, 38. “Significant
parameters” implicitly identify a user abandoning a transaction based on a
comparison of collected user-activity parameters to baselines. Id. ¶¶ 26, 37.
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These limitations, interpreted in light of the Specification, organize
activities of users involved in commercial sales on an e-commerce web site.
They collect information about those activities such as products added to an
electronic shopping cart and parameters of a user’s e-commerce activities.
They compare the user-activity parameters to baseline values and generate a
significant parameter if the user-activity parameter deviates from a baseline
to identify a user’s attempt to abandon a purchase. These limitations collect,
analyze, and organize e-commerce sales activities for targeted marketing.
The final limitations recite targeted marketing steps applied as extra-
solution activity to the collection, analysis, and organization of the user’s e-
commerce activities. The steps involve “selecting at least one motivational
content item for display on the consumer device; and causing a display of
the selected at least one motivational content item on a display of the
consumer device.” Appeal Br. 18 (Claims App.).
A “motivational content item” includes a discounted price to buy a
product, a discounted price for add-on products, additional services related
to the product, other incentives to buy the product, a time limited discount
coupon, an offer for free shipping, or an invitation to bid on the product.
Spec. ¶¶ 29, 30, 40, 42. The motivational content item may be a message
stating that the price of the product will increase after five minutes. Id. ¶ 30.
One or more selected motivational content items may be displayed on
a display of consumer device 110. Id. ¶¶ 28, 44. An offer of a discount on a
product if a purchase transaction is completed in the next five minutes may
be displayed. Id. ¶ 30. A first content item may display a discount of 5%,
and, if the user does not respond within five seconds, a second content item
is displayed to offer a 5% discount and free shipping. Id. ¶ 44.
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Claim 1 organizes commercial sales activities for targeted marketing.
Claim 1 recites steps that provide customized content (motivational content
item) to a user based on a user’s activity adding a product(s) to an electronic
shopping cart and other user-activity parameters indicating the user may not
complete the purchase transaction. Appeal Br. 18; Spec. ¶¶ 21–29, 33–46.
Displaying a motivational content item(s) on a portion of a web site
viewed by a user based on a user’s web site navigation data and information
about the user is an abstract idea. See Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (holding “the claim
relates to customizing information based on (1) information known about the
user and (2) navigation data” and location, which is an abstract idea).
Here, claim 1 displays customized motivational content on a display
of a consumer device based on information organized about users and their
navigation data. This user information/navigation data includes a product
added to an electronic shopping cart, the time spent searching for a good or
service, gestures (click, tap, swipe, keystroke), queries, navigating away
from the website, other products in a shopping cart, time elapsed after a
product is added to a cart, and browsing different products. Spec. ¶¶ 24–27.
The motivational content item is selected to incentivize the user to purchase
a particular product through the e-commerce website and may include a time
limited discount coupon for purchasing the product of interest, applying a
discount on the product, or increasing the price after a certain period of time.
Id. ¶ 40. “[S]election of content items may be based on parameters related
to the user activity on an e-commerce website used to determine the user
interest in the product.” Id. ¶ 41. Detecting a user navigating away from a
website may elicit an offer of free shipping for the product. Id. ¶ 42.
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“[M]otivational content items provide incentives to the user to avoid
the abandonment of the shopping cart.” Id. ¶ 44. Multiple motivational
content items can be displayed for different thresholds of a user’s activities
to promote a purchase. Id. A first content item may display a 5% discount,
and a second content item can offer a 5% discount and free shipping if the
user does not respond to the first content item within five seconds. Id.
A claim to a similar method of providing customized content based on
a user profile recited an abstract idea in Bridge and Post. Bridge and Post,
Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 887 (Fed. Cir. 2019)
(“Targeted marketing is a form of ‘tailoring information based on [provided]
data,’ which we have previously held is an abstract idea.”) (citation omitted).
The user profile included information about the user such as historic
usage patterns and location-centric information. This information was used
to place customized media in website content provided to the user. See id. at
886–87; see also Affinity Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d
1266, 1271 (Fed. Cir. 2016) (holding that customizing a user interface to
provide targeted advertising based on user information is an abstract idea).
Here, claim 1 places motivational content customized to a user in web
pages provided to the user based on a user-activity profile of usage patterns
(user-activity parameters) and location information (navigation data history).
See Spec. ¶¶ 24–26, 37, 41, 42, 48, Fig. 3B (motivational item 350).
Many limitations of claim 1 also recite mental processes that can be
performed in the human mind or by a person using pen and paper. A person
can receive a message when a product is added to an electronic shopping
cart and collect a parameter of a user’s activities. A person can organize and
compare a user-activity parameter to a baseline (i.e., predefined threshold).
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In Intellectual Ventures I, a method of tracking financial transactions
to determine if they exceed a pre-set spending limit recited an abstract idea.
Intellectual Ventures I, 792 F.3d at 1367 (finding a method of organizing
human activity). The calculations also could be made using a pencil and
paper with a simple notification device. See id. at 1368 (citing CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011)).
Here, a user-activity parameter can be compared to a pre-set baseline
(threshold) as a mental process to determine if the parameter deviates from
the baseline to be treated as a “significant parameter.” Spec. ¶¶ 37, 38. For
example, a person can compare a five minute search time for a product to a
two minute baseline search time for that product to identify a deviation and a
significant parameter, as claimed, as a mental process. See id. ¶ 25.
These claimed steps are similar to method steps in CyberSource that
“can be performed in the human mind, or by a human using pen and paper.”
CyberSource, 654 F.3d at 1372. The first step collected user transaction data
by using an Internet address identified with a credit card transaction. This
step “can be performed by a human who simply reads records of Internet
credit card transactions from a preexisting database.” Id. The second step
built a map of credit card numbers and can be performed by a person writing
down a list of credit card transactions made from an IP address. Id. (“There
is no language in claim 3 or in the ’154 patent’s specification that requires
the constructed ‘map’ to consist of anything more than a list of a few credit
card transactions.”). The third step used the map to determine the validity of
a credit card transaction and can be performed by observing transactions that
used different credit cards, user names, and billing addresses at the same IP
address. Id. at 1373.
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Here, a person can collect and map user-activity parameters, which
the Specification describes as time spent searching for a product, gestures
and queries, and user navigation. A person can compare these parameters to
baseline (threshold) values to determine if the parameters deviate from the
baselines as a mental process or with pen and paper. See id. at 1371 (citing
Parker v. Flook, 437 U.S. 584, 586 (1978) that calculating alarm limits that
were threshold values could be performed using a pencil and paper).
Analyzing information by steps that people go through in their minds,
without more, is a mental process within the abstract idea category. Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016).
For example, a method of filtering emails for spam by receiving a file
content identifier and determining whether the content identifier matches a
characteristic of other identifiers to indicate the characteristic of the data file
recited an abstract idea because the list of relevant characteristics could be
kept in a person’s head and characterizing an email based on a known list of
such identifiers is an abstract idea. Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1313–14 (Fed. Cir. 2016).
Here, a person could retain user-activity parameters and baselines in
their head or written down with pen and paper and then compare a collected
user-activity parameter to a baseline to determine a deviation and generate a
“significant parameter.” Claim 1 thus recites certain methods of organizing
human activity for commercial sales and targeted marketing activities using
process steps that can be performed in the human mind as mental processes.
See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir.
2017) (“Adding one abstract idea . . . to another abstract idea . . . does not
render the claim non-abstract.”).
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Nor does reciting the method in the context of e-commerce shopping
make the method any less abstract. In an analogous case involving a claim
to shopping on an Internet website for a mortgage, the court held claims for
applying/shopping for a loan on a third party website, calculating a credit
grade for the shopper/borrower, and providing loan pricing information all
recited limitations that can be performed by humans without a computer.
Mortgage Grader, Inc. v. First Choice Loan Svcs. Inc., 811 F.3d 1314, 1324
(Fed. Cir. 2016). The court reasoned that “computational methods which
can be performed entirely in the human mind are the types of methods that
embody the ‘basic tools of scientific and technological work’ that are free to
all men and reserved exclusively to none.” Id. (citations omitted).
Similarly, claim 1 here recites a method of shopping at e-commerce
websites for products or services, calculating a deviation and generating a
significant parameter by comparing user activity to a baseline, and providing
a motivational content item. As indicated by the foregoing decisions, steps
that can be performed by humans as mental processes recite an abstract idea.
Performance of the steps on the Internet does not take them out of the
abstract idea category. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
716 (Fed. Cir. 2014) (“Given the prevalence of the Internet, implementation
of an abstract idea on the Internet in this case is not sufficient to provide any
“practical assurance that the process is more than a drafting effort designed
to monopolize the [abstract idea] itself.”) (citation omitted).
The motivational marketing content in claim 1 allows a user to receive
a discount on a product. The advertisements in Ultramercial allowed users
to access copyrighted media for free. The targeted motivational content and
advertising are designed to encourage commercial sales and transactions.
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“[M]erely selecting information, by content or source, for collection,
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes, whose implicit exclusion from § 101 undergirds
the information-based category of abstract ideas.” Elec. Power, 830 F.3d at
1355 (emphasis added); see also In re Morsa, Appeal 2019-1757, 2020 WL
181749, *3, *4 (Fed. Cir. Apr. 10, 2020) (displaying targeted advertising is a
fundamental economic practice of organizing human activity, and the use of
generic network PCs and cell phones does not make it patent eligible).
Collecting user-activity parameters and comparing them to baselines
recites mental steps. See Content Extraction and Transmission LLC v. Wells
Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (holding steps of
collecting data, recognizing certain data in the collected data set, and storing
the recognized data in a memory recite functions that humans always have
performed); Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057,
1067 (Fed. Cir. 2011) (holding the idea of collecting and comparing known
information recited a mental step). Similarly, analyzing received data based
on “limits, sensitivities and rates of change for one or more measurements”
recited mental steps in Electric Power. Elec. Power, 830 F.3d at 1351–52.
Appellant also argues that a human mind cannot, on its own or with
the help of pen and paper, interact with an e-commerce device or cause a
display change on a consumer device. Appeal Br. 10. However, “[t]hat
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson. CyberSource, 654 F.3d at 1375; id. at 1372 (“even if some physical
steps are required to obtain information from the database . . . such data-
gathering steps cannot alone confer patentability.”).
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The Revised Guidance provides the following guidance:
If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic
computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the
mind.
Revised Guidance, 84 Fed. Reg. at 52 n.14; see also Intellectual Ventures I
LLC v. Symantec, 838 F.3d at 1318 (holding a claim to screening of email
messages according to rules on a mail server was an abstract idea and “with
the exception of generic computer implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”).
Merely “selecting at least one motivational content item for display on
the consumer device” recites a certain method of organizing human activity
identified for targeted marketing and sales activities. It recites insignificant
extra-solution activity by displaying the results of the mental processes and
organized activity with no improvement to the display. See Elec. Power,
830 F.3d at 1354 (“And we have recognized that merely presenting the
results of abstract processes of collecting and analyzing information, without
more (such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis.”); SAP Am., Inc. v. Investpic,
LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (holding that merely presenting
the results of abstract processes is an ancillary part of the collection and
analysis).
Accordingly, and for the foregoing reasons, we determine that claim 1
recites the abstract idea of certain methods of organizing human activity and
mental processes identified above.
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Step 2A, Prong Two: Integration into a Practical Application
We next consider whether claim 1 as a whole integrates the recited
judicial exception into a practical application of the exception. See Revised
Guidance, 84 Fed. Reg. at 54 (Revised Step 2A, Prong Two). We determine
that claim 1 lacks any additional elements that improve a computer or other
technology. The additional elements do not implement the abstract idea in
conjunction with a particular machine or manufacture that is integral to the
claim. They do not transform or reduce a particular article to a different
state or thing. They do not apply the abstract idea in a meaningful way
beyond linking it to a particular environment. See Revised Guidance, 84
Fed. Reg. at 55 and MPEP sections cited therein).
Appellant argues that the claim includes
a specific improvement in how to display motivational content,
e.g., personalized discounts, that is tailored not only to the
specific consumer, based on user-activity parameters, but also
on comparisons of such parameters to a baseline, as well as
timing the display on the consumer device when such
parameters deviate from the baseline above a predefined
threshold, is a clear improvement in the technical field of
displaying motivational offers directly on consumer device
based on the electronic shopping cart of an e-commerce
website.
Appeal Br. 11.
The Specification indicates that these features are not improvements
to computers or other technology. User activity to include placing an item in
a shopping cart is tracked by messages, scripts, cookies, and/or similar data
structures. Spec. ¶¶ 21–23. These features are described generically without
any indication that they are innovative features or used in an innovative way.
Instead, they simply collect and generate data related to user activities.
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Implementation on an e-commerce website and server does not take
claim 1 out of the abstract realm. See Appeal Br. 9–10; Versata Dev. Grp.,
Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.”).
Appellant admits “there is a marketing and sales aspect to the claimed
subject matter, namely the method is directed to encouraging customer
engagement and retaining sales” but asserts that “the claims are specifically
tailored to a particular technologically advanced and personalized means of
accomplishing that goal, rather than an attempt at claiming a generic
incentive structure within a commercial area.” Appeal Br. 9–10.
In this regard, Appellant argues that claim 1 requires
receiving a message that an item has been added to a shopping
cart of an e-commerce website, identifying that a user who has
added the item is attempting to not complete a purchase
transaction, and selecting and displaying a motivational content
item for display on that particular consumer device. The claims
require technical elements, e.g., identifying a user-activity
parameter and comparing it to a baseline, which raised the
claims above mere commercial transactions.
Id. at 10.
We are not persuaded because these limitations are recited at a high
level of generality as an abstract idea rather than as technical advances in
computers, networks, or software. Appellant’s arguments merely repeat the
claim limitations and do not describe what technical advance is provided by
identifying a user-activity parameter and then comparing that parameter to a
baseline beyond the abstract idea. The Specification’s description of these
features is similarly abstract with no indication of a technical advance.
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As our reviewing court recently held in a similar context:
In short, by dedicating a section of the computer’s memory to
advertising data, the claimed invention ensures memory is
available for at least some advertising data. This does not,
however, improve the functionality of the computer itself.
Even if we accept Customedia’s assertions, the claimed
invention merely improves the abstract concept of delivering
targeted advertising using a computer only as a tool. This is not
what the Supreme Court meant by improving the functioning of
the computer itself nor is it consistent with our precedent
applying this concept.
Customedia Tech., LLC v. Dish Network Corp., 951 F.3d 1359, 1363 (Fed.
Cir. 2020); see id. at 1362–63 (“The claims at issue here are directed to the
abstract idea of using a computer to deliver targeted advertising to a user,
not to an improvement in the functioning of a computer.”); see also Ericsson
Inc. v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1327 (Fed. Cir.
2020) (“Controlling access to resources is exactly the sort of process that
‘can be performed in the human mind, or by a human using a pen and
paper,’ which we have repeatedly found unpatentable. . . . [W]e have
repeatedly found the concept of controlling access to resources via software
to be an abstract idea.”) (citations omitted).
Software can make non-abstract improvements, but the claims must
recite improvements to computer or network functionality. See Customedia,
951 F.3d at 1365. Here, claim 1 recites no such advances. See Ericsson Inc.
v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1325 (Fed. Cir. 2020)
(holding that the specification yields to the claim language when identifying
the focus of a claim); Two-Way Media Ltd. v. Comcast Cable Commc’ns,
LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) (“As with claim 1 of the ’187
patent, the problem is that no inventive concept resides in the claims.”).
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Motivational content items are selected based on a parameter(s) of a
product such as price range, current inventory level, specific promotion, and
the like. Id. ¶ 28. Again, there is no indication that Appellant invented such
targeted steps or that claim 1 recites an innovative technology for displaying
a selected motivational content item on a display as claimed.
If the features represent innovations to computers, networks, or other
technology, the innovations are not claimed. The innovative features cited
by Appellant to integrate claim 1 into a practical application are the abstract
idea identified in Prong One. The description of the features used to track
user activity and display motivational content in the Specification makes
clear that these features do not represent technical advances in computers or
other technology.
“It has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
that renders the invention ‘significantly more’ than that ineligible concept.”
BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018);
see id. at 1291 (“As a matter of law, narrowing or reformulating an abstract
idea does not add ‘significantly more’ to it.”); see also RecogniCorp, LLC v.
Nintendo Co., 855 F.3d at 1327 (“Adding one abstract idea (math) to another
abstract idea (encoding and decoding) does not render the claim non-
abstract.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016) (“But, a claim for a new abstract idea is still an abstract
idea.”); Versata Dev. Grp., 793 F.3d at 1335 (holding claims that improved
an abstract idea but did not recite the alleged computer improvements were
not patent eligible); Revised Guidance, 84 Fed. Reg. at 55 n.24 (“additional
elements” are claim features beyond the identified judicial exception).
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The claimed user-activity parameter, baseline comparison, and
motivational content item are recited at a high level of generality as an
abstract idea as discussed under Prong One. The features do not represent
innovations of hardware or software technology beyond the abstract idea.
Even if the steps are groundbreaking, innovative, or brilliant, that is
not enough for eligibility. See Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013); accord SAP Am., 898 F.3d at 1163
(“No matter how much of an advance in the finance field the claims recite,
the advance lies entirely in the realm of abstract ideas, with no plausibly
alleged innovation in the non-abstract application realm. An advance of that
nature is ineligible for patenting.”).
Using an e-commerce server does not integrate the abstract idea into a
practical application. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.”); Elec. Power, 830 F.3d at 1354 (holding that the
focus of the claims is on certain abstract ideas that use computers as tools);
Bancorp Svcs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he use of a computer in an otherwise
patent-ineligible process for no more than its most basic function––making
calculations or computations––fails to circumvent the prohibition against
patenting abstract ideas and mental processes.”); Ultramercial, 772 F.3d at
716–17 (holding a general purpose computer used to execute an abstract idea
is not a particular machine and any transformation from using computers to
transfer content between computers is merely what computers do).
Accordingly, we determine that claim 1 does not include additional
elements that integrate the abstract idea into a practical application.
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Step 2B: Does Claim 1 Include an Inventive Concept?
We next consider whether claim 1 recites elements, individually, or as
an ordered combination, that provide an inventive concept. Alice, 573 U.S.
at 217–18. The second step of the Alice test is satisfied when the claim
limitations involve more than performance of well-understood, routine, and
conventional activities previously known to the industry. Berkheimer v. HP
Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018); see Revised Guidance, 84 Fed.
Reg. at 56 (explaining that the second step of the Alice analysis considers
whether a claim adds a specific limitation beyond a judicial exception that is
not “well-understood, routine, conventional” activity in the field).
E-commerce server 130 includes processing system 132 and memory
134 with instructions executed by processing system 132. Software is any
type of instruction, firmware, middleware, microcode, hardware description
language, and/or code in source code, binary code, executable code, or any
other suitable format of code. Spec. ¶ 19. Processing system 132 may be
one or more processors in any combination of known general purpose
microprocessors, multi-core processors, microcontrollers, digital signal
processors, field programmable gate array, and the like. Id.
Individually, the limitations of claim 1 recite aspects of the abstract
idea or insignificant extra-solution activity identified above. As an ordered
combination, the limitations add nothing that is not the sum of the individual
parts that implements the abstract idea. See Alice, 573 U.S. at 225.
Accordingly, we determine that claim 1 lacks an inventive concept
sufficient to transform the abstract idea into patent eligible subject matter.
Thus, we sustain the rejection of claim 1–6, 8–18, and 20–23 as directed to a
judicial exception under 35 U.S.C. § 101.
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Claims Rejected as Anticipated by Shafiee
Appellant argues the claims as a group. See Appeal Br. 13–15. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding claim 1, the Examiner finds that Shafiee discloses a
method for preventing electronic shopping cart abandonment by receiving a
message that a product is added to an electronic shopping cart, collecting a
user-activity parameter such as a user removes a product from the cart or the
user is dwelling at certain page for a predetermined length of time, viewing
certain content, or issuing a particular request or command, and comparing
the parameter to a baseline to generate a significant parameter to identify an
attempt not to complete a purchase. Final Act. 29–32, 41–42.
Appellant argues that Shafiee fails to teach or suggest comparing a
user-activity parameter to a baseline as there is no mention of a baseline or a
user-activity compared to an external baseline, and Shafiee only discusses
monitoring if items have been removed from a shopping cart. Appeal Br.
14. Appellant asserts that Shafiee fails to generate a significant parameter
when a user-activity parameter deviates from the respective baseline by a
predefined threshold. Id.
The Specification describes user-activity parameters as including, but
not limited to, the amount of time a user spends searching for a good or
service, user gestures (e.g., a click, tap, swipe, keystroke), user queries, and
products with quantities placed in an electronic shopping cart. Spec. ¶ 24.
Shafiee discloses collecting similar user-activity parameters including
adding or removing an item from a shopping cart, viewing certain content,
dwelling at a certain page for a predetermined time, and issuing a particular
request or command. Shafiee, 3:10–18, 7:49–58.
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Removing an item from a shopping cart in Shafiee corresponds to a
user-activity of tracking products in a shopping cart. Dwelling at a page for
a predetermined time in Shafiee corresponds to tracking the amount of time
a user spends searching for a good or service. Issuing a particular request or
command in Shafiee corresponds to a user-activity of a user gesture or user
query as described in Appellant’s Specification. See Spec. ¶¶ 24, 26, 37.
We find that Shafiee collects user-activity parameters and identifies
parameters related to an attempt not to complete a purchase transaction as
claimed. Shafiee also teaches to compare these parameters to a baseline.
Removing an item from a shopping cart is compared to a baseline of whether
an item remains in the cart. See Shafiee, 3:10–18, 7:49–58. Dwelling at a
page is measured against a “predetermined length of time” to determine
whether a “triggering event” has occurred. Id. (emphasis added). A user
issuing a request or command is compared to a baseline of a “particular
request or command” to generate a triggering event. Id. (emphasis added).
Shafiee compares such user-activity parameters to predefined thresholds
(baselines) to determine if there is a deviation sufficient to trigger an event,
which results in selection and display of a motivational content item in the
form of a link for an audio/video conference call with a live agent.
We agree with the Examiner that a “triggering event” in Shafiee also
corresponds to the claimed “significant parameter.” If a user-activity in
Shafiee exceeds a predetermined threshold (baseline) value, the system
initiates a “triggering event” that identifies an attempt not to complete a
transaction so that an audio/video conference call can be established with a
live agent to facilitate/complete the sales transaction. Id. The conference
call is a motivational content item that facilitates the sales transaction.
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To anticipate, a reference must disclose each and every element of the
claimed invention, explicitly or inherently, with those elements “arranged or
combined in the same ways as in the claim,” but “the reference does not
have to satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334
(Fed. Cir. 2009). We are not persuaded by Appellant’s arguments that the
failure of Shafiee to discuss a “significant parameter” or a “baseline” is fatal
to the Examiner’s anticipation rejection when the Examiner has identified
disclosures in Shafiee of features that correspond to the claimed significant
parameter and baseline interpreted in light of the Specification. Appellant
has not apprised us of error in those findings of the Examiner.
Thus, we sustain the rejection of claim 1 and claims 2–4, 6, 12–16,
and 18, which fall with claim 1.
Claims 5, 8–11, 17, 21–23
Rejected as Unpatentable Over Shafiee and Rampell
Appellant asserts that the claims rejected as unpatentable over Shafiee
and Rampell depend from either claim 1 or claim 13 and are allowable for
the same reasons as those independent claims, and Rampell does not cure the
deficiencies of Shafiee as to claims 1 and 13. Appeal Br. 15–16.
Because we sustain the rejection of claims 1 and 13 as anticipated by
Shafiee, there are no deficiencies for Rampell to cure in this regard, and we
also sustain the rejection of claims 5, 8–11, 17, 21–23.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–6, 8–18,
20–23
101 Eligibility 1–6, 8–18,
20–23

1–4, 6,
12–16, 18
102 Shafiee 1–4, 6,
12–16, 18

5, 8–11, 17,
21–23
103 Shafiee,
Rampell
5, 8–11, 17,
21–23

Overall
Outcome
1–6, 8–18,
20–23

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED