Steve Yankovich et al.

Patent Trials and Appeals Board

Sep 5, 2019

13339235 - (D) (P.T.A.B. Sep. 5, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/339,235 12/28/2011 Steve Yankovich IP-P1145US2/
EBAY.281135
2746
150601 7590 09/05/2019
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
EXAMINER
VAN BRAMER, JOHN W
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
09/05/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
docketing.shb@clarivate.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVE YANKOVICH, RYAN MELCHER, and
ROBERT DEAN VERES1
___________

Appeal 2018-007308
Application 13/339,235
Technology Center 3600

____________

Before DEBRA K. STEPHENS, CARL W. WHITEHEAD JR. and
ADAM J. PYONIN, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 1–21 under
35 U.S.C. § 134(a). Appeal Brief 6–7. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Introduction
The invention is directed to a “method and system for determining
targeted incentives based on a user location and activity.” Specification ¶ 2.

1 Appellants identify eBay Inc., as the real party in interest. Appeal Brief 3.
Appeal 2018-007308
Application 13/339,235

2

Illustrative Claim
1. A system comprising:
one or more hardware processors;
one or more memories of the system; and
one or more modules incorporated into the one or more
memories of the system to enhance a user interface of a mobile
device, the enhancing including configuring the one or more
hardware processors to perform operations comprising:
receiving, from the mobile device, geographic
coordinates indicating a location of the mobile device, and an
optical input generated via an optical lens of the mobile device,
the optical input specifying an item at the geographic location
of the mobile device the geographic coordinates being
generated by a Global Positioning Service (GPS) system hosted
on the mobile device, the receiving of the optical input and the
geographic coordinates being performed by a network interface
device of a server that is communicatively coupled to the
mobile device;
at the server, determining the geographic location of the
mobile device based on the geographic coordinates received
from the mobile device;
at the server, identifying the item specified at the
geographic location of the mobile device, the identifying of the
item being based on the optical input received from the mobile
device;
at the server, identifying a predefined geographic area
based on the geographic location of the mobile device;
at the server, expanding the predefined geographic area
based on a determination that the item specified at the
geographic location of the mobile device does not correspond to
any item identified in at least one limited-time incentive offer of
at least one merchant within the predefined geographic area;
and
at the server, generating a machine-readable code
displayable in the user interface by the mobile device, the
generating of the machine-readable code being based on the
limited-time incentive offer from the at least one merchant
within the expanded geographic area.
Appeal 2018-007308
Application 13/339,235

3

Rejections on Appeal
Claims 1–21 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Non-Final
Action 2–8.
Claims 1–21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boncyk (US Patent Application Publication
2009/0141986 A1; published June 4, 2009) and Flake (US Patent
Application Publication 2008/0005074 A1; published January 3, 2008).
Non-Final Action 9–16.

ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed January 26, 2018), the Reply Brief (filed
July 10, 2018), the Non-Final Action (mailed August 28, 2017) and the
Answer (mailed May 16, 2018), for the respective details.

35 U.S.C. § 101 Rejection
The Examiner determines, “[c]laim(s) 1-21 is/are directed to an
abstract idea. The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial exception.” Non-
Final Action 2; see Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014)
(describing the two-step framework “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.”).
After the mailing of the Answer and the filing of the Briefs in this
case, the USPTO published revised guidance on the application of § 101.
Appeal 2018-007308
Application 13/339,235

4

2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (hereinafter “Memorandum”). Under the Memorandum,
the Office first looks to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., (a) mathematical concepts, (b) certain
methods of organizing human activity such as a fundamental
economic principles and practice, commercial or legal
interactions, managing personal behavior, relationships,
interpersonal interactions, (c) 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. 2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application, does the Office then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Appellants contend the claims are not directed to an abstract idea
because:
Applicant’s claims recite features that generally relate to a novel
process that controls what information is provided to a mobile
device based on object recognition of an item captured by an
optical input generated by the mobile device and proximity
Appeal 2018-007308
Application 13/339,235

5

matching the mobile device location and a merchant location
using GPS data generated by the mobile device.
Appeal Brief 8.
Appellants’ arguments are not persuasive. Instead, pursuant to Step
2A of the Memorandum, we agree with the Examiner’s determination that
the claims are directed to an abstract idea. Non-Final Action 2;
Memorandum, Section III(A) (Revised Step 2A).

Step 2A, Prong One
The Specification discloses:
In various embodiments, a method and a system offer an
incentive to a user of a mobile device based on a geographic
location of the mobile device and the intent of the user. The
geographic location of the mobile device is determined. The item
specified by the user at the geographic location of the mobile
device is determined. Incentives from local merchants are
presented to the user based on the identified item and the
geographic location of the mobile device. Incentives include and
are not limited to promotions, discounts, sales, rebates, coupons.
In another embodiment, the incentive may also include item
recommendations.
Specification ¶ 16 (emphasis added).
Claim 1 recites a system wherein:
1. at the server, expanding the predefined geographic area based on a
determination that the item specified at the geographic location of the
mobile device does not correspond to any item identified in at least
one limited-time incentive offer of at least one merchant within the
predefined geographic area
Appeal 2018-007308
Application 13/339,235

6

2. at the server, generating a machine-readable code displayable in the
user interface by the mobile device, the generating of the machine-
readable code being based on the limited-time incentive offer from the
at least one merchant within the expanded geographic area.
These steps comprise fundamental economic principles or practices and/or
commercial or legal interactions; thus, the claim recites the abstract idea of
“certain methods of organizing human activity” such as advertising,
marketing and sales activities. See Memorandum, Section I (Groupings of
Abstract Ideas); see also Specification ¶ 182; OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (concluding
that claimed concept of “offer-based price optimization” is an abstract idea
“similar to other ‘fundamental economic concepts’ found to be abstract ideas
by the Supreme Court and this court”); Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014) (holding that claims “describ[ing]
only the abstract idea of showing an advertisement before delivering free
content” is patent ineligible).

2 A data exchange platform, in an example form of a network-based
publisher 102, may provide server-side functionality, via a network 104
(e.g., the Internet) to one or more clients. The one or more clients may
include users that utilize the network system 100 and more specifically, the
network-based publisher 102, to exchange data over the network 114. These
transactions may include transmitting, receiving (communicating) and
processing data to, from, and regarding content and users of the network
system 100. The data may include, but are not limited to, content and user
data such as feedback data; user reputation values; user profiles; user
attributes; product and service reviews and information, such as pricing and
descriptive information; product, service, manufacture, and vendor
recommendations and identifiers; product and service listings associated
with buyers and sellers; auction bids; and transaction data, among other
things. Specification ¶ 18
Appeal 2018-007308
Application 13/339,235

7

Therefore, we conclude the claims recite an abstract idea pursuant to
Step 2A, Prong One of the guidance. See Memorandum, Section III(A)(1)
(Prong One: Evaluate Whether the Claim Recites a Judicial Exception).

Step 2A, Prong Two
Under Prong Two of the Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception”; it is noted that a “claim that
integrates a judicial exception into a practical application will apply, rely on,
or use 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.” Memorandum, Section
III(A)(2).
Appellants argue that the claims in the instant application:
[R]ecite a particular solution to a problem that includes
particular way to controlling what information is provided to a
mobile device. The as-filed Specification discusses problems
with conventional approaches for accessing item information on
a mobile device. The claims recite elements in which item
information is provided based on object recognition of an item
captured by an optical input generated by the mobile device and
proximity matching the mobile device location and a merchant
location using GPS data generated by the mobile device.
Appeal Brief 9.

Appellants contend, “[b]ased on the Federal Circuit’s decision in
McRO,3 a claim can be found to be directed to an improvement in computer-

3 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1303 (Fed.
Cir. 2016).
Appeal 2018-007308
Application 13/339,235

8

related technology when indicated by ‘a particular solution to a problem or a
particular way to achieve a desired outcome defined by the claimed
invention, as opposed to merely claiming the idea of a solution or
outcome.’” Appeal Brief 9.
We do not find Appellants’ arguments persuasive. In McRO, the
Federal Circuit concluded that the claim, when considered as a whole, was
directed to a “technological improvement over the existing, manual 3–D
animation techniques” through the “use[] [of] limited rules . . . specifically
designed to achieve an improved technological result in conventional
industry practice.” McRO, 837 F.3d at 1316. Specifically, the Federal
Circuit found that the claimed rules allowed computers to produce accurate
and realistic lip synchronization and facial expressions in animated
characters that previously could only be produced by human animators; and
the rules were limiting because they defined morph weight sets as a function
of phoneme sub-sequences. McRO, 837 F.3d at 1313.
We find no evidence of record here that the present situation is like the
one in McRO where computers had been unable to make certain subjective
determinations, e.g., regarding morph weight and phoneme timings, which
could only be made prior to the claimed invention by human animators. The
Background section of one of the patents at issue in McRO, Rosenfeld (US
Patent 6,307,576 B1; issued Oct. 23, 2001), includes a description of the
admitted prior art method and the shortcomings associated with that prior
method. See McRO, 837 F.3d at 1303–06. There is no comparable
discussion in Appellants’ Specification or elsewhere of record.
In addition, we find Appellants’ claims are distinguished from those
claims that our reviewing court has found to be patent eligible by virtue of
Appeal 2018-007308
Application 13/339,235

9

reciting technological improvements to a computer system. See, e.g., DDR
Holdings, 773 F.3d at 1249, 1257 (holding that claims reciting a computer
processor for serving a “composite web page” were patent eligible because
“the claimed solution is necessarily rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks”); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259
(Fed. Cir. 2017) (holding that claims directed to “an improved computer
memory system” having many benefits were patent eligible). In the present
case, we determine the claims present no similar technical improvements.
Further, as the Federal Circuit has explained, a “claim for a new
abstract idea is still an abstract idea.” Synopsis, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Even assuming the technique
claimed was “[g]roundbreaking, innovative, or even brilliant,” that would
not be enough for the claimed abstract idea to be patent eligible. See Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
The recited limitations do not reflect an improvement in the
functioning of a computer or other technology or technical field. See
Memorandum, 84 Fed. Reg. at 55; cf. Trading Techs. Int’l, Inc. v. IBG LLC,
921 F.3d 1084, 1090 (Fed. Cir. 2019) (“This invention makes the trader
faster and more efficient, not the computer. This is not a technical solution
to a technical problem.”). Further, we do not find Appellants’ arguments
persuasive because the claims utilize general purpose hardware and
networking as a tool to market, advertise and sell products based upon a
geographical location. See Specification ¶ 50 (“The list of local merchants
may include a sale or discount on the item identified by the user of the
mobile device 132. The list may also include a list of recommended
Appeal 2018-007308
Application 13/339,235

10

merchants (having an incentive on the identified item) that are located
beyond the preset distance radius.”); see also Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016) (“[W]e find it relevant to
ask whether the claims are directed to an improvement to computer
functionality versus being directed to an abstract idea . . . the focus of the
claims is on the specific asserted improvement in computer capabilities (i.e.,
the self-referential table for a computer database) or, instead, on a process
that qualifies as an ‘abstract idea’ for which computers are invoked merely
as a tool.”); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1370 (Fed. Cir. 2015) (“[M]erely adding computer functionality to
increase the speed or efficiency of the process does not confer patent
eligibility on an otherwise abstract idea.”).
Subsequently, we detect no additional element (or combination of
elements) recited in Appellants’ representative claim 1 that integrates the
judicial exception into a practical application. See Memorandum, Section
III(A)(2). For example, Appellants’ claimed additional elements (e.g.,
processors, memories, mobile device, GPS, network) do not: (1) improve
the functioning of a computer or other technology; (2) are not applied with
any particular machine (except for generic hardware); (3) do not effect a
transformation of a particular article to a different state; and (4) are not
applied in any 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(a)–(c), (e)–(h).
Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See Memorandum, Section
Appeal 2018-007308
Application 13/339,235

11

III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate
Whether the Judicial Exception Is Integrated Into a Practical Application).

Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Step 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The Examiner determines, “[t]he claim merely instructs the
practitioner to implement the concept of providing location based offers to
users using information obtained from a user device with routine,
conventional activity specified at a high level of generality in a particular
technological environment.” Non-Final Action 7. The Examiner further
determines, “[a]side from these abstract ideas the dependent claims recited
the performance of computer functions that are well-understood, routine, and
conventional such as receiving, processing, and storing data; electronically
scanning or extracting data; electronic record keeping, automating metal
tasks and receiving or transmitting data over a network.” Non-Final Action
8.
Appellants contend, “[i]n the present case, the Examiner’s rejection
under § 101 should be reversed at least because, procedurally, the Examiner
has not supported the rejection with any factual evidence as outlined in the
Appeal 2018-007308
Application 13/339,235

12

Berkheimer [Memorandum].4” Reply Brief 3. Appellants further contend,
“[n]owhere does the Examiner demonstrate that the combination of elements
recited by the claims are well-understood, routine, and conventional.
Additionally, the Examiner has failed to provide any of the evidence
required by the Berkheimer memo to support a factual determination.”
Reply Brief 3.
Memorandum, Section III (B) (footnote 36) states (emphasis
added):
In accordance with existing guidance, an examiner’s
conclusion that an additional element (or combination of
elements) is well understood, routine, conventional activity must
be supported with a factual determination. For more information
concerning evaluation of well-understood, routine, conventional
activity, see MPEP 2106.05(d), as modified by the USPTO
Berkheimer Memorandum.

The Berkheimer Memorandum Section III (A) states when
formulating rejections, “[i]n a step 2B analysis, an additional element (or
combination of elements) is not well-understood, routine or conventional
unless the examiner finds, and expressly supports a rejection in writing.”
The Berkheimer Memorandum5 provides four illustrations for the Examiner
to follow to provide support, the second6 of the four illustrations requires the
Examiner to provide factual determination support from, “[a] citation to one
or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting

4 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.).” April 19, 2018.
5 Berkheimer Memorandum Section III (A).
6 Berkheimer Memorandum Section III (A)(2).
Appeal 2018-007308
Application 13/339,235

13

the well-understood, routine, conventional nature of the additional
element(s).”
The Examiner finds:
Additionally, as per the July 2015 Update: Subject Matter
Eligibility [(July 30, 2015)], the courts have recognized the
following computer functions to be well-understood, routine, and
conventional: performing repetitive calculations; receiving,
processing, and storing data; electronically scanning or
extracting data from a physical document; electronic record
keeping; automating metal tasks; and receiving or transmitting
data over a network.
Non-Final Action 4.
Consequently, we agree with the Examiner’s findings that the
additional claim elements are well-understood, routine, and conventional,
are properly based upon a factual determination as specified in the
Berkheimer Memorandum, Section III (A)(2). The Examiner supports the
determination by noting that courts have recognized the claimed computer
functions are well-understood, routine, and conventional when they are
claimed in a generic manner. See Non-Final Action 3, 4, 5, 8; see also
Specification ¶ 29, 58–62. The Examiner’s determination is not challenged
with any specificity by Appellants. See Reply Brief 1–4.
Accordingly, we conclude claims 1–21 are directed to certain methods
of organizing human activity such as advertising, marketing, and sales
activities as identified in the Memorandum and thus an abstract idea.
Furthermore, the claims do not recite limitations that amount to significantly
more than the abstract idea itself. We sustain the Examiner’s § 101 rejection
of claims 1–21.

Appeal 2018-007308
Application 13/339,235

14

35 U.S.C. § 103 Rejection
Appellants describe the invention as, “[t]he server determines a
predefined geographic area based on the location of the mobile device. The
predefined geographic area is expanded based on a determination that the
item does not correspond to any item identified in an offer of a merchant
within the predefined geographic area.” Appeal Brief 14. Appellants argue,
“Flake teaches the predetermined distance used (e.g., the size of the
geographic area being searched) can be variable among searches based on
what is being searched.” Appeal Brief 16 (emphasis added). Appellants
further argue, “Claim 1 recites features in which a predefined geographic
area is initially identified. The predefined geographic area is then expanded
based on a determination that an offer for the item is not available from any
merchant within that predefined geographic area.” Appeal Brief 16
(emphasis added).
We do not find Appellants’ argument persuasive. Flake discloses,
“[W]hile a query can be bounded by a predetermined or default distance
from an identified location (if not specifically identified), it should also be
noted that the distance could be variable based on one or more factors.”
Flake ¶ 34 (emphasis added). “As our precedents make clear, however, the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). Accordingly, we find
there is no patentable distinction between the disputed limitation and Flake’s
disclosure. Consequently, modifying Boncyk by incorporating Flake’s
disclosure of manipulating the predefined geographic area of the user/mobile
Appeal 2018-007308
Application 13/339,235

15

device location based on one or more factors such as an incentive offer
availability would be well within the purview of one of ordinary skill in the
art. See Final Act. 11.
We sustain the Examiner’s obviousness rejection of claim 1, as well
as claims 2–21 not separately argued with distinction.

DECISION
The Examiner’s patent-ineligible subject matter rejection of claims 1–
21 is affirmed.
The Examiner’s obviousness rejection of claims 1–21 is affirmed.

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). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED