eBay Inc.

Patent Trials and Appeals Board

Jul 1, 2020

14637174 - (D) (P.T.A.B. Jul. 1, 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.
14/637,174 03/03/2015 Jacqueline Renee Gentry VonBergen 2043.018US3 4161
49845 7590 07/01/2020
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JACQUELINE RENEE GENTRY VONBERGEN,
ERIK RANNALA, GEORGE LIANG, MAURA K. RANDALL,
DAVID RACCAH, and JENNIFER KOZENSKI
____________

Appeal 2019-006539
Application 14/637,174
Technology Center 3600
____________

Before ADAM J. PYONIN, MICHAEL M. BARRY,
and PHILLIP A. BENNETT, Administrative Patent Judges.

BARRY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12 and 14–19, which are all of the
pending claims. See Appeal Br. 8–27.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as eBay Inc. Appeal Br. 2.
2 We refer herein to the Final Office Action mailed Dec. 19, 2018 (“Final
Act.”), Appeal Brief filed May 29, 2019 (“Appeal Br.”), Answer mailed July
3, 2019 (“Ans.”), Reply Brief filed Sept. 3, 2019 (“Reply Br.”), and the
Specification filed Mar. 3, 2015 (“Spec.”).
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Introduction
The Specification states “[t]he present application relates generally to
network-based commerce, more particularly to network-based commerce
facility offer management methods and systems.” Spec. ¶ 4. Claim 1 is
representative:
1. A method comprising:
at a server machine, retrieving, from a database, a record
related to an item to be transacted via a computer network, the
record including:
a published item price at which a seller is willing
to sell the item under a buyout transaction format, and
an offer indication that the seller of the item is
willing to accept an offer for the item under an offer
transaction format;
generating, by the server machine, a user interface, using
the record, the user interface comprising:
the published item price,
a first user-selectable interface component that is
selectable by a user to initiate purchase of the item at the
published item price during the buyout transaction
format, and
a second user-selectable interface component that
is selectable by the user to initiate submission of an offer
for the item to the seller under the offer transaction
format;
causing presentation of the user interface on a computer
system, the published item price, the first user-selectable
interface component, and the second user-selectable interface
component being presented concurrently within the user
interface; and
responsive to user-selection of the second user-selectable
interface component, causing presentation, on the computer
system, of a further user interface component for submitting the
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offer, the further user interface component including an offer
price input field and a third user-selectable interface component
that is selectable by the user to submit the offer to the seller at a
price entered into the offer price input field.
Appeal Br. 23 (Claims App’x).
The Pending Rejection3
The Examiner rejected claims 1–12 and 14–19 under 35 U.S.C. § 101
as directed to a judicial exception, without reciting significantly more. Final
Act. 2–7.
ANALYSIS
Appellant argues all claims together as a group. See Appeal Br. 8–22.
We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions of reversible error. We disagree with Appellant’s conclusions.
Instead, as consistent with our discussion below, we adopt the Examiner’s
findings and reasons as set forth in the Final Office Action from which this
appeal is taken and as set forth in the Answer. We highlight the following
for emphasis.
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court
instructs us to “first determine whether the claims at issue are directed to a
patent-ineligible concept.” Id. at 218. In this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which we “consider the elements of

3 The Examiner’s Answer withdrew a provisional rejection of all pending
claims on the ground of nonstatutory double patenting. Ans. 3.
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each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court
describes the second step as 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. (quoting Mayo, 566 U.S. at 72–73).
In 2019, the USPTO published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–
57 (Jan. 7, 2019) (“Guidance”) see also October 2019 Patent Eligibility
Guidance Update, 84 Fed. Reg. 55942–53 (Oct. 17, 2019) (providing
“examples as well as a discussion of various issues raised by the public
comments” to the Guidance). Under the Guidance, we first look to whether
the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (referred to as Step 2A, prong 1 in
the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(referred to as Step 2A, prong 2 in the Guidance).
See Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then move to Step
2B of the Guidance, in which we look to whether the claim:
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(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 Guidance, 84 Fed. Reg. at 56.
Alice/Mayo Step One, 2019 Guidance Step 2A, Prong One
(Does Claim 1 Recite a Patent-Ineligible Concept?)
For our prong one analysis, we set aside the recitations for the “server
machine,” “database,” “via a computer network,” “computer system,” and
the technological aspect of “user interface”4 (“UI”). In view of the claim as
a whole, we consider these computer technology aspects as “additional
elements” (individually and in combination) in our analyses below under
prong two of step 2A and under step 2B. Setting those aside, claim 1 recites:
[a] retrieving . . . a record related to an item to be
transacted . . ., the record including:
[i] a published item price at which a seller is
willing to sell the item under a buyout transaction format,
and
[ii] an offer indication that the seller of the item is
willing to accept an offer for the item under an offer
transaction format;
[b] generating . . . [an] interface, using the record, the []
interface comprising:
[i] the published item price,

4 “User interface” is a computer-related term of art. See, e.g., MICROSOFT
COMPUTER DICTIONARY 544 (5th ed. 2002); http://www.merriam-
webster.com/dictionary/user interface (last accessed May 26, 2020). For our
prong one analysis, we substitute the more generic “interface” for the
computer-related term “user interface.”
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[ii] a first user-selectable interface component that
is selectable by a user to initiate purchase of the item at
the published item price during the buyout transaction
format, and
[iii] a second user-selectable interface component
that is selectable by the user to initiate submission of an
offer for the item to the seller under the offer transaction
format;
[c] causing presentation of the [] interface . . ., the
published item price, the first user-selectable interface
component, and the second user-selectable interface component
being presented concurrently within the [] interface; and
[d] responsive to user-selection of the second user-
selectable interface component, causing presentation . . . of a
further user interface component for submitting the offer, the
further user interface component including an offer price input
field and a third user-selectable interface component that is
selectable by the user to submit the offer to the seller at a price
entered into the offer price input field.
Step (a) describes retrieving a transaction record that has “a published
item price at which a seller is willing to sell the item under a buyout
transaction format” (“buyout price”) and “an offer indication that the seller
of the item is willing to accept an offer for the item under an offer
transaction format” (“invitation to make an offer”). Retrieving information
for a buyout price and an invitation to make an offer are basic steps for a
commercial transaction. The 2019 Guidance explains that such limitations
are abstract in the category of certain methods of organizing human activity.
See 84 Fed. Reg. at 52. Further, these limitations encompass performance
by a person instructed to retrieve a paper record with the recited information,
i.e., a human interaction following rules or instructions, which the 2019
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Guidance also identifies as an abstract sub-category of certain methods of
organizing human activity. Id.
Steps (b) and (c) describe using the information from step (a) to
present a user with the buyout price along with two “user-selectable
interface components,” one to initiate purchase of the item at the buyout
price and the other to initiate submitting an offer to buy the item. As with
step (a), steps (b) and (c) are abstract because they describe part of a
commercial transaction, i.e., one of certain methods of organizing human
activity. Id. Also, continuing with the example of step (a) encompassing
human retrieval of a paper record, steps (b) and (c) encompass using the
information from the retrieved record to create a paper form that has a two
checkboxes, one for use to initiate purchase at the buyout price and the other
to initiate submission of an offer. By placing the checkboxes on a single-
page form, the information is “presented concurrently,” as recited. A person
can perform these limitations using only pen and paper to create such a form
and, thus, steps (b) and (c) also are abstract for reciting a mental process. Id.
Step (d) describes presenting a “further user-selectable interface
component” in response to a user selecting the option to make an offer,
allowing the user to input an offer price and select a “third user-selectable
interface component” to submit the offer. As with the previous three steps
(a)–(c), step (d) is abstract because it describes a basic activity for a
commercial transaction. Id. Consistent with the prior example, this step can
be carried out using a paper form in which a person enters an offer price and
checks a “submit offer” box. Accordingly, step (d) is also abstract because it
describes a human interaction (following rules or instructions) and/or a
mental process (that can be carried out using only pen and paper). Id.
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Thus, claim 1 recites one or more judicial exceptions. “Adding one
abstract idea . . . to another abstract idea . . . does not render the claim non-
abstract.” RecogniCorp, LLC v. Nintendo Co. LTD., 855 F.3d 1322, 1327
(Fed. Cir. 2017); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093–94 (Fed. Cir. 2016) (patent-ineligible claims were directed to a
combination of abstract ideas). We proceed to prong two.
Alice/Mayo Step One, 2019 Guidance Step 2A, Prong Two
(Does Claim 1 Integrate the Abstract Idea into a Practical Application?)
We next consider whether the claim integrates the abstract idea into a
practical application. 2019 Guidance, 84 Fed. Reg. at 54. To determine this,
we identify whether there are “any additional elements recited in the claim
beyond the judicial exception(s)” and evaluate those elements to determine
whether they integrate the judicial exception into a practical application.
84 Fed. Reg. at 54–55 (emphasis added); see also MPEP § 2106.05(a)–(c),
(e)–(h).
Here, as discussed above, in addition to the abstract idea, claim 1
recites the additional elements of a “server machine,” “a database,” “via a
computer network,” “a computer system,” and “a user interface.” Ordinarily
skilled artisans would recognize from the Specification that all these
components describe generic computer technology. See Spec. ¶¶ 9, 29–31,
33–35, 53–61, 69, 73, 81–93, Figs. 1, 3, 5. Although these claim elements
add a certain level of specificity to claim 1, they do not, alone or in
combination, constitute an improvement to a technology or technical field.
Instead, they constitute generic recitations of those technologies for
automating performance of the abstract idea. Thus, they do not constitute an
improvement to “the functioning of the computer itself” or “any other
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technology or technical field.” See MPEP § 2106.05(a) (quoting Alice, 573
U.S. at 225). Neither do these computer limitations qualify as applying the
judicial exception with “a particular machine,” because these components
provide their conventional functions and require no more than general
purpose computer equipment. See MPEP § 2106.05(b); see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014); TLI
Commc’ns LLC v. AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir. 2016)
(explaining that mere recitation of concrete or tangible components is not an
inventive concept).
Appellant’s arguments similarly do not persuade us that claim 1
effects a transformation of any recited articles, which are simply used for
their ordinary purposes, or that claim 1 includes any other meaningful
(technological) limitations, i.e., limitations beyond simply “linking the use”
of the abstract idea to generic technology. See MPEP § 2106.05 (c), (e)–(f);
see also id. at (g)–(h) (use of well-known limitations beyond the judicially
excepted matter constitutes “insignificant extra-solution activity” (g) and
claim limitations “merely indicating a field of use or technological
environment in which to apply a judicial exception do not amount to
significantly more” (h)).
Accordingly, we determine the recited judicial exception is not
integrated into a practical application, and that the Examiner did not err in
determining claim 1 is directed to an abstract idea. We proceed to step two
of the Alice/Mayo analysis (2019 Guidance Step 2B).
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Alice/Mayo Step Two; 2019 Guidance Step 2B
(Does Claim 1 Recite Significantly More than the Abstract Idea?)
In step two of the Alice/Mayo analysis, we consider whether there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. at 72–73, 77–79 (2012)). As the 2019 Guidance explains, many of
the considerations to determine whether a claim amounts to “significantly
more” under step two of the Alice framework are already considered as part
of determining whether the judicial exception has been integrated into a
practical application. 84 Fed. Reg. at 56. Thus, at this point of our analysis,
we determine if claim 1 adds a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
field; or whether it simply recites well-understood, routine, conventional
activities at a high level of generality. Id.
Here, as the Examiner finds, and we agree, claim 1 does not recite any
limitations or combination of limitations (in addition to those that recite the
abstract idea) that are beyond what were known to those of ordinary skill in
the art to be well-understood, routine, and conventional prior to the
invention. Final Act. 5–6; Ans. 20–21. The high-level, generic disclosure of
such computer automation features in Appellant’s Specification related to
claim 1 confirms this. See Spec. ¶¶ 9, 29–31, 33–35, 53–61, 69, 73, 81–93,
Figs. 1, 3, 5.
Appellant’s Arguments
Appellant’s arguments of error in the § 101 rejection are unpersuasive
in view our above determination under the 2019 Guidance that claim 1 is
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directed to an abstract idea, without reciting significantly more. Regardless,
for clarification, we next discuss some of those arguments.
Appellant contends claim 1’s similarity to the patent-eligible claims at
issue in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d
1356 (Fed. Cir. 2019) compels a determination that claim 1 is patent eligible.
See Appeal Br. 10–12; Reply Br. 2. In particular, Appellant contends that,
just as the Core Wireless specification confirmed those claims were directed
to an improved user interface, Appellant’s Specification also “sets forth
improvements to electronic commerce mechanisms provided by the ‘user
interface’ recited in the claims at issue.” Appeal Br. 11 (citing Spec. ¶ 7).
Appellant’s comparison with Core Wireless is unavailing. In Core
Wireless, the claims at issue were “directed to a particular manner of
summarizing and presenting information in electronic devices” that
addressed identified user interface deficiencies for electronic devices with
small screens. 880 F.3d at 1362; see also id. at 1359–60 (setting forth
exemplary claims), 1363 (highlighting discussion in the specification of
improvements over conventional user interfaces). The focus of the Core
Wireless claims was on a specific user interface improvement that included a
particular limitation for “un-launched” software applications. Id. The user
interface functionality recited in Appellant’s claim 1, on the other hand,
includes only generic technological “interface component” limitations and
otherwise is abstract (e.g., as discussed above, claim 1’s limitations for
displaying a particular arrangement of information on a single page display
is abstract). Claim 1 is similarly distinguishable from the claims at issue in
Enfish, see 822 F.3d at 1336–37 (claim at issue included software
technology limitation for a “self-referential” database table), and McRO, see
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837 F.3d at 1307–08, 1315–16 (claim at issue included limitations related to
“sub-sequences of phonemes, timing, and the weight to which each phoneme
is expressed visually at a particular timing (as represented by [a] morph
weight set)”).
Appellant also contends claim 1 is akin to the patent-eligible claims at
issue in DDR Holdings, 773 F.3d 1245 (Fed. Cir. 2014). See Appeal Br. 15–
19. Appellant’s comparison with DDR Holdings is similarly unavailing. In
DDR Holdings, the patent-eligible claim at issue addressed a technological
business challenge—i.e., it recited limitations particular to a composite web
page based on a link activation occurring at a remote computer—in order to
address “a challenge particular to the Internet.” 773 F.3d at 1257–58 (“We
caution, however, that not all claims purporting to address Internet-centric
challenges are eligible for patent.”). Claim 19 includes no limitations
analogous to those of the claim in DDR Holdings; instead it simply recites
routine high level technological limitations that amount to applying the
abstract idea using generic computer technology.
Appellant also argues claim 1 amounts to significantly more than an
abstract idea because of its “particularities” and that it does not preempt “the
alleged abstract idea of ‘selling items with different options . . . and
providing formats to the users with user-selectable options to initiate a
purchase as per the selected option.’” Appeal Br. 19–20 (ellipsis in
original). This argument is unpersuasive. “While preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Because we find the claimed
subject matter covers patent-ineligible subject matter, the pre-emption
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concern is necessarily addressed. “Where a patent’s claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, []
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, 788 F.3d at 1379.
Appellant further “note[s] the apparent contradiction between the
finding in the Final Action that the claims do not amount to ‘significantly
more’ than the alleged abstract idea and the finding that the claims are
defined over the prior art.” Appeal Br. 20 (quoting citing Final Act. 3); see
also id. at 21. This argument is also unpersuasive. “The ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v. Diehr, 450
U.S. 175, 188–89 (1981). “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). A novel and nonobvious claim directed to a purely
abstract idea is, absent significantly more, patent ineligible. See Mayo, 566
U.S. at 90.
§ 101 Conclusion
Accordingly, we sustain the § 101 rejection of claim 1 and, along with
it, claims 2–12 and 14–19, which Appellant argues are patent eligible for the
same reasons as for claim 1 (see Appeal Br. 8–22).
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–12, 14–19 101 Eligibility 1–12, 14–19
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