eBay Inc.

Patent Trials and Appeals BoardAug 16, 2021

2021001114 (P.T.A.B. Aug. 16, 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. 14/633,254 02/27/2015 Lakshmi Narasimhan 2043.I26US1 5218 49845 7590 08/16/2021 SCHWEGMAN LUNDBERG & WOESSNER/EBAY P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER HEATH, MARIA S.P. ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 08/16/2021 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): 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 LAKSHMI NARASIMHAN ____________ Appeal 2021–001114 Application 14/633,254 Technology Center 3600 ____________ Before ANTON W. FETTING, JAMES P. CALVE, and MATTHEW S. MEYERS, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2021-001114 Application 14/633,254 2 STATEMENT OF THE CASE1 Lakshmi Narasimhan (Appellant2) seeks review under 35 U.S.C. § 134 of a final rejection of claims 1–20, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented a way of presenting a co-shipment recommendation. Specification para. 1. An understanding of the invention can be derived from a reading of exemplary claim 11, which is reproduced below (bracketed matter and some paragraphing added). 11. A method for responding to a request to networked computer server, the method comprising: [1] receiving, at a server over a computer network, a request via a user interface of an online marketplace application hosted on a client device associated with a seller to identify a co-shipper for the seller in an online marketplace, the client device being geographically remote from the server, the request associated with an online marketplace account of the seller maintained by the server, 1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal Br.,” filed May 11, 2020) and Reply Brief (“Reply Br.,” filed December 2, 2020), and the Examiner’s Answer (“Ans.,” mailed October 2, 2020), and Final Action (“Final Act.,” mailed December 12, 2019). 2 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 eBay Inc. (Appeal Br. 2). Appeal 2021-001114 Application 14/633,254 3 the account indicating an item listed by seller, [2] accessing inventories of online marketplace accounts of a plurality of other sellers on the online marketplace based on marketplace data of the online marketplace, [3] verifying that the inventories of the online marketplace accounts of one or more other sellers of the plurality of other sellers include a matching item listed by the seller, the online marketplace accounts of the one or more other sellers being maintained by the server, [4] accessing performance data associated with the online marketplace accounts of the one or more other sellers, [5] generating a ranking of co-shippers of the matching item based on the performance data, the co-shippers being selected from the one or more other sellers for shipping the matching item on behalf of the seller, the generating of the ranking being performed by a hardware processor of a machine; [6] determining, based on inventory information stored in the seller account and inventory information stored in a respective account of each of the one or more co- shippers, that at least one co-shipper of the one or more co-shippers is not a competitor of the seller; [7] selecting a recommended co-shipper from the at least one co- shipper based on the ranking of co-shippers and based on a criteria associated with the online market place account, and Appeal 2021-001114 Application 14/633,254 4 [8] causing a presentation of the recommendation for one or more co-shippers in the user interface of the online marketplace application hosted on the client device associated with the seller. Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ISSUES The issues of eligible subject matter turn primarily on whether the claims recite more than abstract conceptual advice of results desired. ANALYSIS STEP 13 Claim 11, as a method claim, nominally recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it is directed to a judicial exception without significantly more. STEP 2 The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us? To answer that question, . . . consider the elements of each claim both individually and “as an 3 For continuity of analysis, we adopt the steps nomenclature from 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Appeal 2021-001114 Application 14/633,254 5 ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent- eligible application. [The Court] described step two of this analysis 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.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine what the claims are directed to. This begins by determining whether the claims recite one of the judicial exceptions (a law of nature, a natural phenomenon, or an abstract idea). Then, if the claims recite a judicial exception, determining whether the claims at issue are directed to the recited judicial exception, or whether the recited judicial exception is integrated into a practical application of that exception, i.e., that the claims “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.” Revised Guidance, 84 Fed. Reg. at 54. If the claims are directed to a judicial exception, then finally determining whether the claims provide an inventive concept because the additional elements recited in the claims provide significantly more than the recited judicial exception. STEP 2A Prong 1 At a high level, and for our preliminary analysis, we note that method claim 11 recites receiving request data, accessing inventory data, verifying data, accessing performance data, generating ranking data, determining competitor data, selecting vendor data, and presenting recommendation data. Appeal 2021-001114 Application 14/633,254 6 Accessing data is receiving data. Verifying, ranking, determining, and selecting data are rudimentary data analysis. Presenting data is displaying data. Thus, claim 11 recites receiving, analyzing, and displaying data. None of the limitations recites technological implementation details for any of these steps, but instead recite only results desired by any and all possible means. From this we see that claim 11 does not recite the judicial exceptions of either natural phenomena or laws of nature. Under Supreme Court precedent, claims directed purely to an abstract idea are patent in-eligible. As set forth in the Revised Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include (1) mathematical concepts4, (2) certain methods of organizing human activity5, and (3) mental processes6. Among those certain methods of organizing human activity listed in the Revised Guidance are commercial or legal interactions. Like those concepts, claim 11 recites the concept of managing commercial shipments. Specifically, claim 11 recites operations that would ordinarily take place in advising one to select a recommended co- 4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). 5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed. Cir. 2018). 6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Appeal 2021-001114 Application 14/633,254 7 shipper for matching inventories based on rankings and market place data. The advice to select a recommended co-shipper for matching inventories based on rankings and market place data involves selecting a recommended co-shipper, which is an economic act, and causing a presentation of the recommendation for one or more co-shippers, which is an act ordinarily performed in the stream of commerce. For example, claim 11 recites “selecting a recommended co-shipper,” which is an activity that would take place whenever one is selecting a shipper. Similarly, claim 11 recites “causing a presentation of the recommendation for one or more co- shippers,” which is also characteristic of selecting a shipper. The Examiner determines the claims to be directed to recommending co-shippers. Final Act. 4. The preamble to claim 11 recites that it is a method for responding to a request. The steps in claim 11 result in managing commercial shipments by selecting a recommended co-shipper for matching inventories based on rankings and market place data absent any technological mechanism other than a conventional computer for doing so. As to the specific limitations, limitations 1, 2, and 4 recite receiving data. Limitations 3 and 5–8 recite generic and conventional analyzing and displaying of shipper data, which advise one to apply generic functions to get to these results. The limitations thus recite advice for selecting a recommended co-shipper for matching inventories based on rankings and market place data. To advocate selecting a recommended co-shipper for matching inventories based on rankings and market place data is conceptual advice for results desired and not technological operations. The Specification at paragraph 1 describes the invention as relating to co-shipment recommendation. Thus, all this intrinsic evidence shows that Appeal 2021-001114 Application 14/633,254 8 claim 11 recites managing commercial shipments. This is consistent with the Examiner’s determination. This in turn is an example of commercial or legal interactions as a certain method of organizing human activity because managing commercial shipments is managing commercial interactions that require shipments. The concept of managing commercial shipments by selecting a recommended co- shipper for matching inventories based on rankings and market place data is one idea for selecting those to interact with. The steps recited in claim 11 are part of how this might conceptually be premised. Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir.2016) (screening of messages by corporate organizations). Alternately this is an example of concepts performed in the human mind as mental processes because the steps of receiving, analyzing, and displaying data mimic human thought processes of observation, evaluation, judgment, and opinion, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016). Claim 11, unlike the claims found non-abstract in prior cases, uses generic computer technology to perform data reception, analysis, and display and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because they “focused on a specific asserted improvement in computer animation”). As such, claim Appeal 2021-001114 Application 14/633,254 9 11 recites receiving, analyzing, and displaying data, and not a technological implementation or application of that idea. From this we conclude that at least to this degree, claim 11 recites managing commercial shipments by selecting a recommended co-shipper for matching inventories based on rankings and market place data, which is a commercial and legal interaction, one of certain methods of organizing human activity identified in the Revised Guidance, and, thus, an abstract idea. STEP 2A Prong 2 The next issue is whether claim 11 not only recites, but is more precisely directed to this concept itself or whether it is instead directed to some technological implementation or application of, or improvement to, this concept i.e. integrated into a practical application.7 At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, “all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. “[A]pplication[s]” of such concepts “ ‘to a new and useful end,’ ” we have said, remain eligible for patent protection. Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those that integrate the building blocks into something more. Alice, 573 U.S. at 217 (citations omitted). Taking the claim elements separately, the operation performed by the computer at each step of the process is expressed purely in terms of results, 7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). Appeal 2021-001114 Application 14/633,254 10 devoid of implementation details. Steps 1, 3, and 4 are pure data gathering steps. Limitations describing the nature of the data do not alter this. Step 8 recites insignificant post solution activity, such as storing, transmitting, or displaying the results. Steps 2 and 5–7 recite generic computer processing expressed in terms of results desired by any and all possible means and so present no more than conceptual advice. All purported inventive aspects reside in how the data is interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results. Viewed as a whole, Appellant’s claim 11 simply recites the concept of managing commercial shipments by selecting a recommended co-shipper for matching inventories based on rankings and market place data as performed by a generic computer. This is no more than conceptual advice on the parameters for this concept and the generic computer processes necessary to process those parameters, and do not recite any particular implementation. Claim 11 does not, for example, purport to improve the functioning of the computer itself. Nor does it effect an improvement in any other technology or technical field. The 21 pages of specification do not bulge with disclosure, but only spell out different generic equipment8 and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of managing commercial shipments by selecting a recommended co-shipper for matching inventories based on rankings and market place data under different scenarios. They do not describe any particular improvement in the 8 The Specification describes a standalone, client, or server computer system. Spec. para. 65. Appeal 2021-001114 Application 14/633,254 11 manner a computer functions. Instead, claim 11 at issue amounts to nothing significantly more than an instruction to apply managing commercial shipments by selecting a recommended co-shipper for matching inventories based on rankings and market place data using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. None of the limitations reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field, applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other 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. We conclude that claim 11 is directed to achieving the result of managing commercial shipments by advising one to select a recommended co-shipper for matching inventories based on rankings and market place data, as distinguished from a technological improvement for achieving or applying that result. This amounts to commercial or legal interactions, which fall within certain methods of organizing human activity that constitute abstract ideas. The claim does not integrate the judicial exception into a practical application. Appeal 2021-001114 Application 14/633,254 12 STEP 2B The next issue is whether claim 11 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception. The introduction of a computer into the claims does not generally alter the analysis at Mayo step two. the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implement[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of “additional feature[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223–24 (citations omitted). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea [] on a generic computer.” Alice, 573 U.S. at 225. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer for receiving, analyzing, and displaying data amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are generic, routine, conventional computer Appeal 2021-001114 Application 14/633,254 13 activities that are performed only for their conventional uses. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). None of these activities is used in some unconventional manner nor does any produce some unexpected result. Appellant does not contend it invented any of these activities. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). Considered as an ordered combination, the computer components of Appellant’s claim 11 add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis-display is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. Appeal 2021-001114 Application 14/633,254 14 We conclude that claim 11 does not provide an inventive concept because the additional elements recited in the claim do not provide significantly more than the recited judicial exception. REMAINING CLAIMS Claim 11 is representative. The remaining method claims merely describe process parameters. We conclude that the method claims at issue are directed to a patent-ineligible concept itself, and not to the practical application of that concept. As to the structural claims, they are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “warn[ed] ... against” interpreting § 101“in ways that make patent eligibility ‘depend simply on the draftsman’s art.’ Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any particular machine. LEGAL CONCLUSION From these determinations we further determine that the claims do not recite an improvement to the functioning of the computer itself or to any other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this we conclude the claims are directed to the judicial exception of the abstract idea of certain methods of organizing human activity as exemplified by the commercial and legal interaction of managing commercial shipments by advising one to select a recommended co-shipper for matching inventories based on rankings and market place data, without significantly more. Appeal 2021-001114 Application 14/633,254 15 APPELLANT’S ARGUMENTS As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s determinations and analysis from Final Action 3–7 and Answer 3–9 and reach similar legal conclusions. We now turn to the Reply Brief. We are not persuaded by Appellant’s argument that the fact that the category of "certain methods of organizing human activity" includes the qualifier "certain" makes clear that there is additional analysis to be done in determining whether the method of organizing human activity identified by the Examiner is actually one of the "certain" methods that are abstract ideas. Reply Br. 2. Such additional analysis is made above. We are not persuaded by Appellant’s argument that “the claims provide a specific procedure for recommending co-shippers based on both inventories and performance data.” Id. The procedure is specific only in the sense it is specified with words. All of the steps recite generic receiving, analyzing, and displaying of data. No technological implementation details are recited. “The purely functional nature of the claim confirms that it is directed to an abstract idea, not to a concrete embodiment of that idea.” Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016). We are not persuaded by Appellant's argument that the claims not only consider the inventories of other sellers to verify that such inventors include the item of interest, but the claims also consider performance of the sellers with such inventors to recommend as co-shippers. In this way, the computing operations required to perform the recited function involve analysis of performance data for a narrowed set of sellers based on available inventory. Such operations clearly root the claims in computing technology to overcome a problem arising in the realm of online computing making them patent eligible. Appeal 2021-001114 Application 14/633,254 16 Reply Br. 3. Considering data is itself abstract judgment. Involving analysis is just that, data analysis, which is an abstract operation when devoid of technological detail. See determinations above under Step 2 B. The claims are not rooted in computer technology, but only placed in a computer context. “The Supreme Court and this court have repeatedly made clear that merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract.” Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). We are not persuaded by Appellant's argument that “the technical field improved by the claims is that of electronic commerce transactions.” Reply Br. 3. E-commerce per se is a business management field, not a technical one. It is the field of commerce in an electronic environment. The implementations of e-commerce may be technical fields, but again, no technological implementation details are recited. CONCLUSIONS OF LAW The rejection of claims 1–20 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more is proper. CONCLUSION The rejection of claims 1–20 is affirmed. In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–20 101 Eligibility 1–20 Appeal 2021-001114 Application 14/633,254 17 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) (2011). AFFIRMED