ReplyBuy, Inc.

Patent Trials and Appeals Board

May 28, 2021

2020005503 (P.T.A.B. May. 28, 2021)

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.
15/288,159 10/07/2016 Anthony Saia 32132-47788/US 5019
758 7590 05/28/2021
FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041
EXAMINER
BARGEON, BRITTANY E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
05/28/2021 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):
PTOC@Fenwick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTHONY SAIA and JOSHUA MANLEY

Appeal 2020-005503
Application 15/288,159
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals from the Examiner’s rejections of claims 1–20
under 35 U.S.C. § 101 (Rejection I), 35 U.S.C. § 103 (Rejections II and III),
and 35 U.S.C. §112 (Rejection IV). We sustain all four of the Examiner’s
rejections, and, therefore, we AFFIRM.2

1 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42 (e.g., “the
inventor or all of the joint inventors”). “The real party in interest in this
appeal is the assignee of this application, Reply Buy, Inc.” (Appeal Br. 1.)
2 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a).
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THE APPELLANT’S INVENTION
The Appellant discloses a system for “fulfilling purchase requests.”
(Spec. ¶ 2.)
The problem addressed by the Appellant is that consumers
“sometimes make requests that go unfulfilled” because “inventory is
unavailable” from a vendor. (Spec. ¶ 23.) With the Appellant’s system, the
consumer provides follow-up information so that he/she can be “later
contacted.” (Id. ¶ 38.) “[T]he system monitors the inventory of the vendor”
so as to “keep track of what inventory becomes available at different times”
and “attempts to match up” the not-yet-fulfilled consumer request with “later
available inventory.” (Id. ¶ 40.) “If a match is made,” the consumer is
notified via his/her previously provided contact information. (Id.) This
commercial interaction is “beneficial for all parties involved” because the
vendor “sells more product,” and the consumer “receives the desired
request.” (Id. ¶ 23.)
ILLUSTRATIVE CLAIM
1. An apparatus, comprising:
an order fulfillment system that has an interface that
receives a request for an item by a computing device being used
by a consumer, the item being unavailable for purchase at a
time of the request for the item, the request for the item
including contact details for the consumer and an interface that
receives information, for the item unavailable for purchase at
the time of the request for the item, about an availability of the
item unavailable for purchase at the time of the request for the
item from a vendor system at a time later than the time of the
request;
the order fulfillment system having a matching system
that matches the received request for the item from the
consumer with the availability for the requested item from the
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vendor system at the later time to identify that the requested
item is available for purchase by the consumer; and
the order fulfillment system having an alerting system
that electronically alerts the consumer, using the contact details
of the received request from the consumer, that the requested
item is available for purchase.

REJECTION I
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as directed
to an abstract idea without significantly more. (Non-Final Action 7.) To
wit, the Examiner concludes that the claims on appeal do not satisfy the
Alice framework for patent eligibility.
The Alice Framework
In Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme
Court imparted a two-step framework to detect when an attempt is being
made to patent an abstract idea in isolation. (Id. at 217–18.) In the first step
of the Alice framework, a determination is made as to whether the claim at
issue is “directed to” an abstract idea. (Id. at 218.) In the second step of the
Alice framework, a determination is made as to whether “additional
elements” in the claim, both individually and as an ordered combination,
contribute “significantly more” than the abstract idea. (Id.)
The 2019 § 101 Guidance
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
§ 101 Guidance”) provides specific steps for discerning whether a claim
satisfies the Alice framework for patent eligibility. (See 2019 Revised Patent
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Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).)3 These
steps are “[i]n accordance with judicial precedent” and consist of a
two-pronged Step 2A and a Step 2B. (Id. at 52.)
In the first prong of Step 2A (Prong One), a determination is made as
to whether the claim “recites” an abstract idea. (2019 § 101 Guidance,
84 Fed. Reg. at 54.) The Guidance “extracts and synthesizes key concepts
identified by the courts as abstract ideas,” and these concepts include
“[c]ertain methods of organizing human activity,” and, more particularly
“commercial” interactions. (Id. at 52.) For example, a claim that “broadly
recites the commercial practice of using a computer for locating available
real estate properties” (i.e., properties available for purchase) is directed to
an “abstract idea.” (Move, Inc. v. Real Estate Alliance Ltd., 721 Fed. Appx.
950, 955 (Fed. Cir. 2018).)
In the second prong of Step 2A (Prong Two), a determination is made
as to whether the claim contains additional elements that “integrate” the
abstract idea “into a practical application.” (See 2019 § 101 Guidance,
84 Fed. Reg. at 53.) “Additional elements” are “claim features, limitations,
and/or steps that are recited in the claim beyond the identified judicial
exception.” (Id. at 55 n.24.) When a claim’s additional elements are
computer components, and the claim “merely includes instructions to
implement an abstract idea on a computer, or merely uses a computer as tool
to perform an abstract idea,” this is not enough to integrate an abstract idea
into a practical application. (Id. at 55.)

3 The Manual of Patent Examining Procedure (“MPEP”) now incorporates
this revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
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If a claim recites an abstract idea under Prong One of Step 2A, and
fails to integrate the abstract idea into a practical application under Prong
Two of Step 2A, the claim is “directed to” an abstract idea under the first
step of the Alice framework. (2019 § 101 Guidance, 84 Fed. Reg. at 51.)
In Step 2B, a determination is made as to whether the additional
elements recited in the claim, individually or in combination, amount to
“significantly more” than the abstract idea itself. (2019 § 101 Guidance,
84 Fed. Reg. at 56.) If the additional elements consist of a conventional
arrangement of well-understood, routine, conventional computer
components, they will not amount to significantly more under the second
step of the Alice framework. (See id.)
If a claim is “directed to” an abstract idea under Step 2A, and its
additional elements do not amount to “significantly more” under Step 2B,
the claim does not satisfy the Alice framework for patent eligibility. (2019
§ 101 Guidance, 84 Fed. Reg. 56.)
Analysis
We agree with the Examiner’s conclusion that independent claim 1
does not satisfy the Alice framework for patent eligibility.
More specifically, we agree with the Examiner that, under Prong One
of Step 2A, independent claim 1 recites an “abstract idea,” namely a
“commercial interaction.” (Non-Final Action 7.)
Independent claim 1 recites receiving, from a “consumer,” a request
for an “item” which is “unavailable for purchase” at the time of the request,
“matching” the consumer’s request for the item “with the availability for the
requested item from the vendor system at the later time to identify that the
requested item is available for purchase by the consumer,” and “alerting” the
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consumer “that the requested item is available for purchase.” (Appeal Br.,
Claims App.) The consumer’s request includes his/her “contact details” and
the consumer is alerted “using the contact details of the received request.”
(Id.)
Thus, claim 1 recites a commercial interaction traditionally performed
by a vendor so as to not surrender a potential purchase by a consumer due to
temporarily low inventory. As explained by the Examiner, it has been
commercially commonplace for a consumer to “go into a vendor store to
inquire about the purchase of a product” which is “currently unavailable.”
(Answer 17.) When this happened, the vendor would “write down that the
consumer wants that item when it becomes available for purchase,” compare
the consumer’s request “with newly added inventory at a later time,” and
then contact the consumer “to let them know they may now purchase the
item.” (Id. at 17–18.)
As for Prong Two of Step 2A, we agree with the Examiner that the
additional elements in independent claim 1 “do not integrate the recited
abstract idea into a practical application.” (Non-Final Action 4.)
Independent claim 1 requires the receiving, matching, and alerting
functions to be performed by an “order fulfillment system” having an
“interface,” a “matching system,” and an “alerting system.” (Appeal Br.,
Claims App.) Claim 1 also requires that the consumer’s request be “by a
computer device being used by [the] consumer” and the alerting system to
“electronically” alert the consumer. (Id.) These additional elements are
generic computer components performing generic computer functions.
The Appellant argues that independent claim 1 sets forth “computing
devices” which constitute a “particular machine” that is “integral to the
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claims.” (Appeal Br. 5.) However, as indicated above, any machines listed
in the claim language are generic computer components. And a contention
that the mere mention of generic computer components can sway the § 101
outcome in the Appellant’s favor contradicts established Supreme Court
precedent.4
The Appellant argues that independent claim 1 transforms “data” into
a different state or thing. (Appeal Br. 5.) Inasmuch as the transformation of
data can sometimes constitute a practical-application integration, claim 1
does not really require any transformation of data. A consumer’s request for
an item is received along with his/her contact information, the requested
item is matched with availability, and, if the item is available, the consumer
is contacted using his/her contact information. Claim 1 does not require any
conversion, adaptation, or other transformation of the data corresponding to
the consumer’s request, the consumer’s contact information, and/or the
vendor’s availability/unavailability of the item.
The Appellant argues that, like the claims at issue in Core Wireless
Licensing S.A.R.L. v. LG Electronics, 880 F.3d 1356 (Fed. Cir. 2018),
independent claim 1 sets forth “an improvement in the user interface of a
computing device.” (Appeal Br. 6.) However, claim 1 only requires the

4 When an additional element in a claim is a “computer,” the relevant
question is not whether the claim requires the computer to accomplish a
recited function. (Alice, 573 U.S. at 223.) Rather, “the relevant question” is
whether the claim does more than simply “instruct the practitioner to
implement the abstract idea” on a computer. (Id. at 225.) The mere
recitation of a computer in the claim, and/or words simply saying “apply”
the abstract idea “with a computer,” will not transform the abstract idea into
a patent-eligible invention.” (Id. at 223.) In short, the sheer introduction of
a computer into the claim is not enough to “impart patent eligibility.” (Id.)
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order fulfillment system to have “an interface that receives a request for an
item by a computing device being used by a consumer.” (Id., Claims App.)
The Appellant does not explain, and we do not see, how the interface’s
receipt of this request improves interface technology.
As for Step 2B, we agree with the Examiner that the Specification
evidences that independent claim 1 does not include “additional elements
that are sufficient to amount to significantly more than the judicial
exception.” (Non-Final Action 8.) The Specification describes and depicts
consumer computer devices 102, a vendor server 120, a backend
system 130, data storage 132, and the networking arrangement
therebetween, as conventional. (See Spec. ¶¶ 27–29, Fig. 1.)
The Appellant argues that the Specification “describes in the
background the conventional systems in the industry and the issues not
solved or addresse[d] by the conventional industry systems and methods.”
(Appeal Br. 7.) However, the background section of the Specification
simply states, in total, that “[i]n order for a user to purchase items, a
repository of items was previously needed” and that, “[i]f stock in the items
became low or was unavailable, the user would not be able to complete the
transaction.” (Spec. ¶ 3.) As discussed above, this is not a new issue in
consumer-vendor interactions, and is solved by the vendor letting the
consumer know when a previously requested is available in stock. (See
Answer 17–18.)
Thus, we agree with the Examiner that independent claim 1 does not
pass the Alice framework for patent eligibility.
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Summary
We sustain the Examiner’s rejection of independent claim 1 under
35 U.S.C. §101. The Appellant argues claims 1–20 as a group (see Appeal
Br. 4–8), and so claims 2–20 fall with independent claim 1.5
REJECTION II
The Examiner rejects claims 1–10 and 12–20 under 35 U.S.C. § 103
as unpatentable over Nelson,6 Gupta,7 and Sakurai.8 (Non-Final Action 11.)
Obviousness
“Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” (KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).)
However, an obviousness evaluator “need not seek out precise teachings
directed to the specific subject matter of the challenged claim” as “the
inferences and creative steps that a person of ordinary skill in the art would
employ” can be taken into account. (Id.) For example, “[t]he combination
of familiar elements according to known methods is likely to be obvious
when it does no more than yield predictable results.” (Id. at 416.)

5 “When multiple claims subject to the same ground of rejection are argued
as a group or subgroup by appellant, the Board may select a single claim
from the group or subgroup and may decide the appeal as to the ground of
rejection with respect to the group or subgroup on the basis of the selected
claim alone.” (37 CFR § 41.37(c) (1)(iv).)
6 US 2004/0153374 Al, published August 5, 2004.
7 US 8,255,288 B1, issued August 28, 2012.
8 US 2015/0081466 Al, published March 19, 2015.
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Analysis
We agree with the Examiner that the record adequately establishes
that the apparatus set forth in independent claim 1 would have been obvious
over the collective teachings of Nelson, Gupta, and Sakurai. (See Non-Final
Action 11–14, Answer 21–23.)
Nelson discloses a ‘ticket reselling system” which, “[w]hen tickets
become available for resale,” communicates this availability to “potential
buyers.” (Nelson ¶ 6.) In Nelson’s system, a buyer communicates request
data 17 to specify a request for a ticket (id. ¶ 55), a seller communicates
ticket data 16 about a ticket available “for resale” (id.), and a determination
is made as to whether a “match exists between” the ticket data 16 and the
request data 17 (id. ¶ 56).
Thus, Nelson discloses an order fulfilment system that receives a
request (e.g., from a computing device being used by a consumer) “about the
availability of the item from a vendor,” receives information “about an
availability of the item” from the vendor (e.g., a “vendor system”), and a
“matching system that matches the received request for the item from the
consumer with the availability for the requested item from the vendor
system,” as required by independent claim 1.
The Appellant argues that, in Nelson, when the buyer communicates
the request data 17 for a ticket, the ticket is not “unavailable for purchase.”
(Appeal Br. 9.) However, as explained by the Examiner, Nelson teaches that
the buyer’s request data 17 can be received prior to a ticket’s availability.
(Answer 22.) Indeed, Nelson teaches that “servers 14 may screen ticket
data 16 for newly available tickets that match criteria set by buyers via
request data 17, and generate individualized software notes viewable by
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specific buyers to notify the buyers that tickets matching their requests are
available for purchase.” (Nelson ¶ 34.)
To the extent that one of ordinary skill in the art would not appreciate
that, in Nelson’s system, the buyer’s request data 17 could include contact
details to notify the buyer, and/or that a vendor could provide information
regarding a currently unavailable ticket, the Examiner can rely upon Gupta
and Sakurai to fill in these gaps. (See Non-Final Action 12–14;
Answer 21–23; Gupta c4:29–51, c5:46–67; Sakurai ¶¶ 74–85, 96, 103.)
The Appellant argues that there is “no motivation” to combine the
teachings of Nelson, Gupta, and Sakurai. (Appeal Br. 10.) However, the
Appellant does not dispute that the Examiner’s proposed combination of the
prior art “would have only united elements of the prior art, with no change in
their respective functions, and the combination would have yielded
predictable results.” (Non-Final Action 13, 14.) And the record supports the
Examiner’s position in this regard. (See Nelson ¶¶ 29, 34, 46–48, 55; Gupta
c4:29–51, c5:46–67, c6:15–27; Sakurai ¶¶ 74–85, 96, 103.)
Thus, the Appellant does not persuade us that the Examiner errs in
concluding that the apparatus set forth in independent claim 1 would have
been obvious over the combined teachings of Nelson, Gupta, and Sakurai.
Summary
We sustain the Examiner’s rejection of independent claim 1 under
35 U.S.C. §103. The Appellant argues claims 1–10 and 12–20 as a group
(see Appeal Br. 8–10), and so claims 2–10 and 12–20 fall with independent
claim 1.9

9 “When multiple claims subject to the same ground of rejection are argued
as a group or subgroup by appellant, the Board may select a single claim
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REJECTION III
The Examiner rejects claim 11 under 35 U.S.C. § 103 as unpatentable
over Nelson, Gupta, Sakurai, and Neuwirth.10 (Non-Final Action 17.) The
Appellant argues only that “Neuwirth fails to address the deficiencies in
Nelson and Gupta and Sakura.” (Appeal Br. 10.) As discussed above, we
are unpersuaded by the Appellant’s arguments that such deficiencies exist.
Thus, we sustain the Examiner’s rejection of claim 11 under 35 U.S.C.
§ 103.
REJECTION IV
The Examiner rejects claims 1–20 under 35 U.S.C. § 112 as being
indefinite. (Non-Final Action 6.) The Examiner points, with particularity,
to claim language which lacks “antecedent basis” or is otherwise “unclear”
(id.); and the Appellant offers no response much less satisfactory arguments
to the contrary.11 Thus, we sustain the Examiner’s rejection of claims 1–20
under 35 U.S.C. § 112.

from the group or subgroup and may decide the appeal as to the ground of
rejection with respect to the group or subgroup on the basis of the selected
claim alone.” (37 CFR § 41.37(c)(1)(iv).)
10 US 2014/0188734 Al, published July 3, 2014.
11 “[W]hen the USPTO has initially issued a well-grounded rejection that
identifies ways in which language in a claim is ambiguous, vague,
incoherent, opaque, or otherwise unclear in describing and defining the
claimed invention, and thereafter the applicant fails to provide a satisfactory
response,” it is proper to reject the claim as failing to meet the statutory
requirements of § 112. (In re Packard, 751 F.3d. 1307, 1311 (Fed. Cir.
2014).
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CONCLUSION
Claims
Rejected
35
U.S.C. §  
References(s)/Basis Affirmed Reversed
1–20 101  Subject Matter
Eligibility
1–20
1–10,
12–20
103  Nelson, Gupta,
Sakurai
1–10,
12–20

11 103 Nelson, Gupta,
Sakurai, Neuwirth
11
1–20 112 Indefiniteness 1–20
Overall
Outcome
1–20

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).

AFFIRMED