School Outfitters

Patent Trials and Appeals Board

Mar 25, 2020

13898662 - (D) (P.T.A.B. Mar. 25, 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.
13/898,662 05/21/2013 Scott Jolliffe SCOU-02US 1081
26875 7590 03/25/2020
WOOD, HERRON & EVANS, LLP
2700 CAREW TOWER
441 VINE STREET
CINCINNATI, OH 45202
EXAMINER
BUCHANAN, CHRISTOPHER R
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
03/25/2020 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SCOTT JOLLIFFE and DAVID LEWIS

Appeal 2018-007053
Application 13/898,662
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–21. An oral hearing was held on
March 4, 2020. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as School
Outfitters, LLC. Appeal Br. 2.
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ILLUSTRATIVE CLAIM
1. A method of associating a transaction involving one
or more products with a visitor to a web-site, the method
comprising:
receiving first data at a computer, the first data relating to
the transaction;
receiving second data at the computer, the second data
relating to a plurality of web sessions, each web session being
generated by a visitor to the web-site;
for each visitor, determining if any products in the
transaction relate to a page viewed by the visitor during the
visitor’s web session based on the first and second data;
generating a visitor score based on a number of products
in the transaction that were determined to relate to a viewed
web page; and
associating one or more of the visitors with the
transaction based on the visitor score.
REJECTIONS
I. Claims 1–21 are rejected under 35 U.S.C. § 101 as ineligible
subject matter.
II. Claims 1–21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tietzen et al. (US 2011/0112897 A1, pub. May 12, 2011)
(hereinafter “Tietzen”) and Official Notice.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
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ANALYSIS
Subject-Matter Eligibility
Under 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. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88–89 (2012) (internal quotation marks omitted)).
The first step determines whether the claim is directed to judicially excluded
subject matter (such as a so-called “abstract idea”); the second step
determines whether there are any “additional elements” recited in the claim
that (either individually or as an “ordered combination”) amount to
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“significantly more” than the identified judicially excepted subject matter
itself. Id. at 217–18.
In 2019, the USPTO published revised guidance on the application of
§ 101, in accordance with judicial precedent. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019)
(“2019 Revised Guidance”). Under the 2019 Revised Guidance, a claim is
“directed to” an abstract idea, only if the claim recites any of (1)
mathematical concepts, (2) certain methods of organizing human activity,
and (3) mental processes — without integrating such abstract idea into a
“practical application,” i.e., without “apply[ing], rely[ing] on, or us[ing] 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.” Id. at 52–55. The considerations
articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim
element (or combination of elements) integrates an abstract idea into a
practical application. Id. at 55. A claim that is “directed to” an abstract idea
constitutes ineligible subject matter, unless the claim recites an additional
element (or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
Although created “[i]n accordance with judicial precedent” (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court’s Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of § 101. Id. at 53–54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited; Step 2A, Prong Two, addresses whether the recited abstract idea is
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integrated into a practical application. Id. at 54–55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element (or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
In the present Appeal, the Appellant argues claims 1–21 as a group.
Appeal Br. 4–6. Claim 1 is selected for analysis herein. See 37 C.F.R.
§ 41.37(c)(1)(iv).
As to Step 1, there is no dispute that the claims are within delineated
categories of § 101.
With regard to the analysis corresponding to Step 2A, Prong One, the
Examiner determines that the claim limitations of “receiving” “first data”
and “second data,” “generating a visitor score,” and “associating one or
more of the visitors with the transaction” (although excepting the computer
environment) recite the concept of “associating a user’s web activity with a
product or service in a transaction.” Final Action 2. The Examiner regards
this concept as a judicial exception — specifically, an “abstract idea” —
because it is “fundamental economic practice and a method of organizing
human activities (i.e., determining how and why a shopper purchased an
item).” Id.
The Examiner’s determination corresponds to a category of “abstract
idea” identified in the 2019 Revised Guidance: “Certain methods of
organizing human activity,” which includes “fundamental economic
principles or practices (including hedging, insurance, mitigating risk),” as
well as “commercial or legal interactions (including agreements in the form
of contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations).” 2019 Revised Guidance, 84 Fed. Reg. at 52.
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Disputing the Examiner’s determination that the claims recite a
judicial exception, the Appellant argues:
[T]he claims in this case are directed to a variety of very
tangible components and methods needed to match transactions
and browsing sessions. They are directed to a real-world
problem of computing systems, namely that they don’t
accurately track and relate the browsing activity and purchase
activity of customers. The claims involve the handling and
analysis of specific types of browsing data and is used to
accomplish a practical solution to the real world problem,
namely, identifying matching browsing sessions and product
transactions. As such, the claims are different than the mere
“business methods” that have been struck down in decisions
before and since the Supreme Court decision in Alice v. CLS
Bank.
Appeal Br. 4–5.
Yet, the presence of “very tangible components and methods” or
“real-world problem[s]” (id.) does not persuade us of error, as to the inquiry
of Step 2A, Prong One. Indeed, the Supreme Court has explained that such
considerations do not resolve matters of patent eligibility:
The fact that a computer necessarily exist[s] in the
physical, rather than purely conceptual, realm, is beside the
point. There is no dispute that a computer is a tangible system
(in § 101 terms, a “machine”), or that many computer-
implemented claims are formally addressed to patent-eligible
subject matter. But if that were the end of the § 101 inquiry, an
applicant could claim any principle of the physical or social
sciences by reciting a computer system configured to
implement the relevant concept. Such a result would make the
determination of patent eligibility depend simply on the
draftsman’s art, thereby eviscerating the rule that [l]aws of
nature, natural phenomena, and abstract ideas are not
patentable.
Alice, 573 U.S. at 224 (citations and internal quotation marks omitted).
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Therefore, the Appellant does not persuade us of error, as to the
Examiner’s analysis corresponding to Step 2A, Prong One.
Turning to Step 2A, Prong Two, unless a claim that recites a judicial
exception (such as an abstract idea) “integrates the recited judicial exception
into a practical application of that exception,” the claim is “directed to” the
judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 53. The
analysis of such an “integration into a practical application” involves
“[i]dentifying . . . any additional elements recited in the claim beyond the
judicial exception(s)” and “evaluating those additional elements individually
and in combination to determine whether they integrate the exception into a
practical application.” Id. at 54–55. Among the considerations “indicative
that an additional element (or combination of elements) may have integrated
the exception into a practical application” is whether “[a]n additional
element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” Id. at 55 (footnote
omitted). “[W]hether an additional element or combination of elements
integrate[s] the exception into a practical application should be evaluated on
the claim as a whole.” Id. at 55 n.24.
In regard to such considerations, the Appellant argues:
[T]he claims in this case include meaningful limitations that
avoid the risk of preemption of any purported abstract idea, a
primary concern of the Alice Court. They contain patentable
subject matter because they provide a solution to a concrete,
specific problem with an inventive technical solution. In that
way, the claims are similar to those upheld by courts under
§101.
Appeal Br. 5. According to the Appellant, the claims in the present Appeal
are similar to those in DDR Holdings, LLC v. Hotels.com, LP, 1245, 1257
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(Fed. Cir. 2014), “because they claim a solution ‘necessarily rooted in a
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.’” Id. Likewise, the Appellant likens the
claims under review, here, to those in Messaging Gateway Solutions, LLC v.
Amdocs, Inc., 2015 WL 1744343, at *5 (D. Del. April 15, 2015), wherein the
court determined that the claimed solution “is tethered to the technology that
created the problem.” Id. In addition, the Appellant cites Motio, Inc. v. BSP
Software LLC, 154 F. Supp. 3d 434, 440 (E.D. Tex. 2016), to support the
argument that avoiding preemption of an abstract idea should determine
patent-eligibility. Id.
However, notwithstanding the Appellant’s allusion to “meaningful
limitations” in the claims (id.), no “additional elements” (in the manner of
the 2019 Revised Guidance, discussed above) are identified.
Furthermore, the Examiner reasonably questions the aptness of DDR
Holdings. Answer 4. As the Federal Circuit cautioned, “not all claims
purporting to address Internet-centric challenges are eligible for patent.”
DDR Holdings, 773 F.3d at 1258. Indeed, the Appellant does not adequately
show how the claimed subject matter accomplishes a solution to a problem
that was created by the technology employed, in the manner of DDR
Holdings or Messaging Gateway Solutions. According to the Examiner,
“[m]atching one set of data elements with another set of data elements in the
general sense described in the claims does not provide any improvement to
the functioning of the computer or constitute a novel solution to a technical
problem.” Answer 4.
Nor does the Appellant’s non-preemption argument (see Appeal Br. 5)
persuade us that the claims under review are patent-eligible. Although the
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Supreme Court has described “the concern that drives [the exclusion of
abstract ideas from patent-eligible subject matter] as one of pre-emption,”
Alice Corp., 573 U.S. at 216, characterizing preemption as a driving concern
for patent eligibility is not the same as characterizing preemption as the sole
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S.
at 216). “[P]reemption may signal patent ineligible subject matter, [but] the
absence of complete preemption does not demonstrate patent eligibility.” Id.
Therefore, we are not persuaded of error in the rejection, with regard
to analyses corresponding to Step 2A, Prong Two.
Under Step 2B of the 2019 Revised Guidance (84 Fed. Reg. at 56), a
claim that recites a judicial exception (such as an abstract idea) might,
nevertheless, be patent-eligible, if the claim contains “additional elements
amount[ing] to significantly more than the exception itself” — i.e., “a
specific limitation or combination of limitations that [is] not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present.” 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.”)
The Examiner’s position is that the additional elements of claim 1,
other than those limitations that describe the judicial exception, amount to
no more than instructions to implement the identified ineligible concept in a
generic computer environment. Final Action 2.
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In line with the Examiner’s position, courts have regarded basic
computer techniques as insufficient to establish significantly more than an
abstract idea, per Step 2B. See Interval Licensing, LLC v. AOL, Inc., 896
F.3d 1335, 1345 (Fed. Cir. 2018) (the claim elements “merely recite routine
and conventional steps in carrying out the well-established practice of
accessing data from an external source and displaying that data on a user’s
device” that “offer ‘nothing more than generic, pre-existing computer
functionality’”) (citation omitted); Versata Dev. Group, Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1334, (Fed. Cir. 2015) (arranging, storing, and
retrieving information “are well-understood, routine, conventional activities
previously known to the industry.”)
As noted above, the Appellant does not identify any “additional
elements,” beyond the limitations describing the judicial exception, which
might constitute significantly more than the ineligible concept. As such, we
are not persuaded of error in the rejection of claim 1, with regard to the
inquiries corresponding to Step 2B.
Therefore, per 37 C.F.R. § 41.37(c)(1)(iv), we are not persuaded of
error in the rejection of claim 1, such that we sustain the rejection of claims
1–21 under 35 U.S.C. § 101.
Obviousness
The Examiner rejects independent claims 1, 16, 20, and 21, based, in
part, on determining that Tietzen teaches the recitation (found in claim 1) of
associating a website “visitor” with a “transaction,” based on the “visitor
score,” as well as Official Notice “that it is well-known to use a variety of
quantities to calculate scores for transactions (e[.]g., total price, number of
items purchased, time between purchases, etc.).” Final Action 4–5 (citing
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Tietzen Abstract, ¶¶ 4, 5, 95–101). The Examiner’s Answer provides further
clarification, as to the Official Notice: “Note that the official notice merely
states that it is well-known to calculate a score using various quantities.”
Answer 4.
The Appellant contends that the Examiner’s findings do not reflect
any relationship between number of products in the transaction and the
corresponding website visitor activity, which might provide a basis for the
Examiner’s conclusion of obviousness. Appeal Br. 6, Reply Br. 3.
According to the Appellant, “there is no suggestion in Tietzen and the other
references to match transactions with prior customer behavior, and/or make
a score from a transaction and/or prior customer behavior, and/or to relate
the two.” Reply Br. 3.
Indeed, the Examiner characterizes the cited portions of Tietzen as
teaching a “system [that] matches transactions with web activity of a
member with a level of certainty.” Final Action 4. Accordingly, Tietzen
refers to “utilizing a transaction linking utility to determine the likelihood
that a match exists between the transaction details and activity by one of the
one or more members.” Tietzen ¶ 5. Yet, the Examiner does not identify
any disclosure in Tietzen that “bas[es]” any such match “on the visitor
score,” as recited in claim 1. Consequently, the Examiner does not
adequately articulate why Tietzen, together with the Official Notice, would
amount to a teaching or suggestion, per claim 1, that “a visitor score based
on a number of products in the transaction” might be the basis for
associating a “transaction” with a website “visitor.”
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In view of the foregoing, we are persuaded of error in the Examiner’s
rejection of independent claims 1, 16, 20, and 21, such that we do not sustain
the rejection of claims 1–21 under 35 U.S.C. § 103(a).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21
1–21 103(a) Tietzen,
Official Notice
1–21
Overall Outcome 1–21

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