Agarwal, Shubham et al.

Patent Trials and Appeals Board

Dec 13, 2019

14212977 - (D) (P.T.A.B. Dec. 13, 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.
14/212,977 03/14/2014 Shubham Agarwal 26582US02 3507
23446 7590 12/13/2019
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
DURANT, JONATHAN W
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/13/2019 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHUBHAM AGARWAL, ROBERT C. HUDSON,
GIUSEPPE MARIO DI PRIZIO, ABHISHEK RAMANI,
and G. MERCEDES DE LUCA
____________

Appeal 2018-007898
Application 14/212,977
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 25–31 and 34–37, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED INVENTION
Appellant describes that the present disclosure relates to “systems and
methods that support [a] joint gift registry” and, more particularly, to
“negotiation, creation, and distributed fulfillment of joint gift registries that
include social components involving gift registry registrants and prospective
gift purchasers” (Spec. ¶ 7).
Claim 25, reproduced below with bracketed notations added, is the
sole independent claim, and is representative of the claimed subject matter:
25. A method for distributed fulfillment of a gift registry,
the method comprising:
performing by at least one server communicatively
coupled to a plurality of prospective purchaser computing
devices over a network, at least:
[(a)] receiving a registry list comprising a list of
products;
[(b)] providing the registry list to the plurality of
prospective purchaser computing devices, wherein the registry
list is provided to the plurality of prospective purchaser
computing devices via a unified gift registry application executed

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed April 26, 2018) and Reply Brief (“Reply Br.,” filed July 31, 2018), and
the Examiner’s Answer (“Ans.,” mailed May 31, 2018) and Non-Final
Office Action (“Non-Final Act.,” mailed November 27, 2017). Appellant
identifies the real party in interest as Sears Brands, L.L.C. Appeal Br. 2.
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by one or more of the at least one server and the plurality of
prospective purchaser computing devices;
[(c)] receiving, from at least one of the plurality of
prospective purchaser computing devices, a product selection
from the registry list;
[(d)] updating the registry list via the unified gift registry
application to indicate the product selection, wherein the product
selection is dynamically viewable in substantially real-time at the
plurality of prospective purchaser computing devices via the
unified gift registry application;
[(e)] receiving and transmitting, via the unified gift
registry application, electronic messages between at least one of
the plurality of prospective purchaser computing devices and the
at least one of the plurality of prospective purchaser computing
devices that provided the product selection from the registry list,
wherein the electronic messages comprise negotiation feedback
comprising one or more of:
one or more button selections,
one or more selected menu options,
one or more selected boxes, and
one or more text message inputs,
each related to one or more of the product selection, one
or more other suggested products, and a final selected product;
[(f)] collecting, by the unified gift registry application,
the negotiation feedback from the electronic messages received
and transmitted by the at least one server between the at least one
of the plurality of prospective purchaser computing devices and
the at least one of the plurality of prospective purchaser
computing devices that provided the product selection from the
registry list;
[(g)] analyzing, by the unified gift registry application,
the negotiation feedback collected from the electronic messages
received and transmitted by the at least one server between the at
least one of the plurality of prospective purchaser computing
devices and the at least one of the plurality of prospective
purchaser computing devices that provided the product selection
from the registry list;
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[(h)] updating a customer profile of the at least one of the
plurality of prospective purchaser computing devices based at
least in part on the negotiation feedback analysis;
[(i)] providing, via the unified gift registry application, a
product recommendation to at least one of the plurality of
prospective purchaser computing devices based on the updated
customer profile; and
[(j)] facilitating, via the unified gift registry application,
the purchase of the final selected product.
REJECTION
Claims 25–31 and 34–37 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.

ANALYSIS
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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step
in that analysis is to “determine whether the claims at issue are directed to
one of those patent-ineligible concepts.” Id. If the claims are not directed to
a patent-ineligible concept, e.g., an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
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claims are considered “individually and ‘as an ordered combination’” to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S.
at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. at 217–18 (alteration in original).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50. The 2019 Revised
Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id.
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
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(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, “that integrate the
[judicial] exception into a practical application,” i.e., that 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 (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims “are directed to a method for fulfillment of a gift
registry” (Non-Final Act. 3), i.e., to a “fundamental economic practice, an
abstract idea, and a method of organizing human activity to fulfill a gift
registry and update a customer profile” (id. at 3–4). The Examiner
concluded that the concept of “fulfillment of a gift registry and updating a
customer profile” is substantially similar to other concepts that the courts
have found abstract (id.). And the Examiner determined that the additional
elements in the claims “amount to no more than limitations consistent with
what the courts have recognized, or those in the art would recognize, to be
well-understood, routine, and conventional” and do not amount to
significantly more than the judicial exception (id. at 4–5).
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
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based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36.
Here, the Specification is entitled “JOINT GIFT REGISTRY,” and
describes, in the Background section, that traditional gift registries have
normally been maintained as a physical, hard-copy record of the items
selected by individuals celebrating a life event; more recently, online gift
registries have enabled wider, electronic access to the information of the
traditional gift registry, but have still been primarily for maintaining a list of
items selected by an individual or couple as things desired as a gift during
the celebration of a particular life event (Spec. ¶ 8). Typically, attendees of
an event are provided with a gift registry or information enabling the
attendees to access the gift registry; the attendees purchase products listed in
the gift registry and the gift registry is updated to reflect these purchases (id.
¶ 9). The Specification describes that “[a]ttendees using existing gift
registries may have difficulty collaborating with other attendees to identify
products to purchase from the gift registry” (id.). These attendees, using
existing gift registries, also “can have problems identifying equivalent
products if a product on the gift registry is sold out, discontinued, or
otherwise not available” (id.).
The claimed invention is intended to address these problems by
providing a system and method that enables negotiation and distributed
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fulfillment of a gift registry while supporting social interaction between
prospective purchasers (id. ¶ 19). The Specification, thus, discloses various
embodiments that provide “a unified joint registry application”2 designed to
“aid collaboration between prospective purchasers to fulfill a gift registry”
(id. ¶ 20). In some embodiments, the unified joint registry application
analyzes negotiations between prospective purchasers and, based at least in
part on this analysis, provides product recommendations to the prospective
purchaser(s) (id.).
More particularly, the Specification discloses that the unified gift
registry application updates the registry list “in substantially real-time as
products are selected for purchase from the registry list such that other
prospective purchasers . . . can view the products selected from the registry
list and provide negotiation feedback related to the selected products” (id.
¶ 56). The unified gift registry application also enables prospective
purchasers to suggest alternative products (id. ¶ 57). “For example, in
response to a prospective purchaser selecting a toaster, another prospective
purchaser can provide negotiation feedback suggesting that prospective
purchasers collaborate to purchase a set of silverware and a kitchen knife set
to take advantage of a group incentive” (id.). The unified gift registry
application collects and analyzes the negotiation feedback and, based on that
analysis, updates customer profiles of the prospective purchasers (id. ¶¶ 58,
59). The updated prospective purchaser profiles then can used by the gift
registry application to provide product recommendations (id. ¶ 59).

2 The unified joint registry application is alternatively referred to as a
“unified gift registry application” in the Specification. See, e.g., Spec.
¶¶ 29–31, 33–48, 53–60.
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Consistent with this disclosure, claim 25 recites a method for
distributed fulfillment of a gift registry comprising a series of steps
performed by a server coupled, via a network, to a plurality of prospective
purchaser computing devices. These steps include: (1) “receiving a registry
list comprising a list of products” (step (a)); (2) providing the registry list to
the plurality of prospective purchaser computing devices, i.e.,
providing the registry list to the plurality of prospective
purchaser computing devices, wherein the registry list is
provided to the plurality of prospective purchaser computing
devices via a unified gift registry application executed by one or
more of the at least one server and the plurality of prospective
purchaser computing devices
(step (b)); (3) “receiving, from at least one of the plurality of prospective
purchaser computing devices, a product selection from the registry list”
(step (c)); (4) updating the registry list to reflect the product selection, i.e.,
updating the registry list via the unified gift registry
application to indicate the product selection, wherein the product
selection is dynamically viewable in substantially real-time at the
plurality of prospective purchaser computing devices via the
unified gift registry application
(step (d)); (5) receiving and transmitting electronic messages between
prospective purchasers, i.e.,
receiving and transmitting, via the unified gift registry
application, electronic messages between at least one of the
plurality of prospective purchaser computing devices and the at
least one of the plurality of prospective purchaser computing
devices that provided the product selection from the registry list,
wherein the electronic messages comprise negotiation feedback
comprising one or more of:
one or more button selections,
one or more selected menu options,
one or more selected boxes, and
one or more text message inputs,
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each related to one or more of the product selection, one
or more other suggested products, and a final selected product
(step (e)); (6) collecting and analyzing the negotiation feedback from the
electronic messages, i.e.,
collecting, by the unified gift registry application, the
negotiation feedback from the electronic messages received and
transmitted by the at least one server between the at least one of
the plurality of prospective purchaser computing devices and the
at least one of the plurality of prospective purchaser computing
devices that provided the product selection from the registry list;
[and]
analyzing, by the unified gift registry application, the
negotiation feedback collected from the electronic messages
received and transmitted by the at least one server between the at
least one of the plurality of prospective purchaser computing
devices and the at least one of the plurality of prospective
purchaser computing devices that provided the product selection
from the registry list
(steps (f) and (g)); (7) “updating a customer profile of the at least one of the
plurality of prospective purchaser computing devices based at least in part
on the negotiation feedback analysis” (step (h)); (8) providing a product
recommendation to the prospective purchaser based on the updated customer
profile, i.e., “providing, via the unified gift registry application, a product
recommendation to at least one of the plurality of prospective purchaser
computing devices based on the updated customer profile” (step (i)); and
(9) facilitating, the purchase of the final selected product, i.e., “facilitating,
via the unified gift registry application, the purchase of the final selected
product” (step (j)).
Applying the 2019 Revised Guidance, we are persuaded that even if
claim 25 recites an abstract idea, i.e., a fundamental economic practice and,
therefore, a method of organizing human activity, as the Examiner
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determined, the Examiner has not sufficiently established that the claim fails
to either integrate the abstract idea into a practical application or recite
significantly more than an abstract idea.
The Examiner determined here, as described above, that the pending
claims are directed to fulfillment of a gift registry and updating a customer
profile. Yet, the method of claim 25 goes beyond merely allowing
prospective purchasers to access a gift registry and purchase products listed
in the registry. Via the claimed unified joint registry application, the
claimed method also facilitates negotiation, and supports social interaction,
e.g., collaboration, in substantially real-time, between the prospective
purchasers regarding product selections from the registry list. The unified
joint registry application also collects and analyzes the negotiation feedback
and, based on the analysis, updates profiles for the prospective purchaser(s)
in order to provide alternative product recommendations.
Responding to Appellant’s arguments, the Examiner opines in the
Answer that
[t]he claimed steps of fulfillment of a gift registry and updating
a customer profile are similar to collecting information . . . ,
analyzing it . . . , and displaying certain results of the collection
and analysis . . . and are thus an abstract idea consistent with the
types of ideas found to be abstract by the courts (Electric Power
Group)3
Ans. 5. But the Examiner has not addressed whether the claimed
functionality provided by the unified joint registry application entails an
improvement in the field of gift registries. The Specification details, as
described above, the shortcomings associated with then existing gift

3 We understand the Examiner’s reference to be to Elec. Power Grp. LLC v.
Alstom, S.A., 830 F.3d 1350 (Fed. Cir. 2016).
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registries, including the difficulty involved in collaborating with other users
to identify products to purchase from the gift registry and the difficulty that
prospective purchasers encounter in identifying equivalent products if a
product on the gift registry is sold out, discontinued, or otherwise not
available. The claimed invention addresses these shortcomings by providing
a method, including a unified gift registry application, that enables
negotiation, e.g., collaboration, and social interaction, in real time, among
users, e.g., prospective purchasers, of a gift registry, and also provides
product recommendations based on an analysis of the negotiation feedback
and user profile information.
The Examiner has not addressed whether this functionality, viewed in
light of Appellant’s Specification, entails an improvement in gift registry
technology. And, as such, the Examiner has not established that claim 25
fails to integrate the asserted abstract idea into a practical application.
Therefore, we do not sustain the Examiner’s rejection of independent
claim 25 under 35 U.S.C. § 101. For the same reasons, we also do not
sustain the Examiner’s rejection of dependent claims 26–31 and 34–37.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
25–31, 34–
37
101 Eligibility 25–31, 34–
37
REVERSED