eBay Inc.

Patent Trials and Appeals Board

Jul 2, 2020

2019006811 (P.T.A.B. Jul. 2, 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.
14/457,963 08/12/2014 Valerie Nygaard 2043.E59US1 3515
49845 7590 07/02/2020
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
ZIMMERMAN, MATTHEW E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
07/02/2020 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 VALERIE NYGAARD and RYAN LINDSEY HELFT
Appeal 2019-006811
Application 14/457,963
Technology Center 3600

Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as eBay Inc. Appeal
Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to “social media-based recommendations.”
Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
receiving, via a user interface element displayed on a
device of a user, by one or more processors, a user request from
other users for a recommendation of an item;
accessing, from a data storage, a set of comments
provided by one or more other users responding to the request;
parsing the set of comments to identify a set of items in a
coupled database;
selecting a recommended item from the set of items
identified from the coupled database; and
generating and transmitting, to the device of the user, a
user interface that presents information about the recommended
item to the user.
REJECTION
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. Final Act. 2–5.

PRINCIPLES OF LAW
A. Section 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.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219
(“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.” Diehr,
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450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court also
indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51; see
also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised 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 look, under
Step 2B, to whether the claim:

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
OPINION
The Examiner determines, under Step 1, the independent claims
(claims 1, 17, and 20) are directed to a statutory category “because they are
directed to a method, a system, and a computer readable medium.” Final
Act. 2.
The Examiner further determines, under Step 2A, Prong One, the
independent claims recite an abstract idea because the claims recite “a
certain method of organizing human activity since it involves commercial
interactions, such as advertising and marketing or sales activities or
behaviors.” Final Act. 3.
The Examiner further determines, under Step 2A, Prong Two, the
additional elements recited in the independent claims do not integrate the
abstract idea into a practical application because
these elements do not amount to an improvement in the
functioning of a computer or any other technology or technical
field, apply the judicial exception with, or by use of, a particular
machine, or apply or use 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.
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Final Act. 4; see also Final Act 4 (determining the dependent claims also do
not integrate the abstract idea into a practical application).
The Examiner further determines, under Step 2B, the independent
claims and the dependent claims do not recite an element, or combination of
elements, that is enough to ensure that the claim is directed to significantly
more than a judicial exception. See Final Act. 4–5.
Are the claims patent-eligible?
Step 1
Claim 1 recites a method, which falls within the “process” category of
35 U.S.C. § 101. Claim 17 recites a system, which falls within the
“machine” category of 35 U.S.C. § 101. Claim 20 recites a non-transitory
machine-readable storage medium, which falls within the “manufacture”
category of 35 U.S.C. § 101. Thus, we must determine whether the claim
recites a judicial exception and fails to integrate the exception into a
practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55. If
both elements are satisfied, the claim is directed to a judicial exception under
the first step of the Alice/Mayo test. See id.
Step 2A, Prong One
Independent claim 1 (emphasis added to indicate abstract concepts)
recites the following steps:
[i] receiving, via a user interface element displayed on a
device of a user, by one or more processors, a user request from
other users for a recommendation of an item;
[ii] accessing, from a data storage, a set of comments
provided by one or more other users responding to the request;
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[iii] parsing the set of comments to identify a set of items
in a coupled database;
[iv] selecting a recommended item from the set of items
identified from the coupled database; and
[v] generating and transmitting, to the device of the user,
a user interface that presents information about the
recommended item to the user.
Steps [i] and [ii] encompass a person asking for a recommendation
from a group of friends, and then the group of friends providing responses.
See Drawing, FIG. 4, elements 410, 420a–420c. Thus, steps [i] and [ii]
describe “social activities” and are thus “managing personal behavior or
relationships or interactions between people.” 2019 Revised Guidance, 84
Fed. Reg. at 52. Thus, these steps recite the abstract concept of “[c]ertain
methods of organizing human activity.” Id.
Steps [iii]–[v] encompass another person observing the responses
from the group of friends, and making a recommendation (advertisement) to
the person who asked for the recommendation. See Drawing, FIG. 4,
element 430, FIG. 8, elements 810, 820, 830. Thus, steps [iii]–[v] describe
“advertising, marketing or sales activities or behaviors” and are thus
“commercial or legal interactions.” 2019 Revised Guidance, 84 Fed. Reg. at
52. Thus, these steps recite the abstract concept of “[c]ertain methods of
organizing human activity.” Id.
Thus, we determine independent claim 1 recites a judicial exception.
For these same reasons, we also determine independent claims 17 and 20
recite a judicial exception.
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Step 2A, Prong Two
Because independent claims 1, 17, and 20 recite a judicial exception,
we next determine if the claims recite additional elements that integrate the
judicial exception into a practical application.
In addition to the limitations of claim 1 discussed above that recite
abstract concepts, claim 1 further recites “a user interface element displayed
on a device of a user”; “one or more processors”; “a data storage”; “a
coupled database”; and “a user interface.” The Specification does not
provide additional details that would distinguish the additional limitations
from a generic implementation of the abstract idea.
Appellant’s Specification discloses
FIG. 4 is a block diagram 400 illustrating a user interface suitable
for social media-based recommendations, according to some
example embodiments. As can be seen in block diagram 400, the
user interface is titled “My Page” and includes a request for a
recommendation 410, three responses to the request 420a-420c,
and a recommendation 430 for an item.
Spec. ¶ 51; see also Drawing, Fig. 4. Thus, the recited “a user interface
element displayed on a device of a user” and “a user interface” are described
in the Specification and depicted in the Drawing in a way that does not
distinguish from a generic implementation.
Appellant’s Specification discloses “FIG. 11 is a block diagram of
machine in the example form of a computer system 1100 within which
instructions 1124 may be executed for causing the machine to perform any
one or more of the methodologies discussed herein.” Spec. ¶ 95. Appellant’s
Specification further discloses “[t]he example computer system 1100
includes a processor 1102 (e.g., a central processing unit (CPU).” Spec. ¶
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96; see also Drawing, FIG. 11. Thus, the recited “one or more processors”
also are described in the Specification and depicted in the Drawing in a way
that does not distinguish from a generic implementation.
Appellant’s Specification discloses “[i]n operation 1010, the
application server 118 accesses communications from users (e.g., using the
communication module 210 or the storage module 240) and detects
recommendations in the communications (e.g., using the recognition module
220).” Spec. ¶ 76. Appellant’s Specification further discloses “[t]he
application servers 118 are, in turn, shown to be coupled to one or more
database servers 124 that facilitate access to one or more databases 126.”
Spec. ¶ 26. Thus, the recited “a data storage” and “a coupled database”
(storage module 240, databases 126) also are described in the Specification
and depicted in the Drawing in a way that does not distinguish from a
generic implementation.
Claim 17 further recites “a memory” and “one or more modules
coupled to the memory.” Claim 20 further recites “[a] non-transitory
machine-readable storage medium.” Appellant’s Specification discloses the
following:
The example computer system 1100 includes a processor
1102 (e.g., a central processing unit (CPU), a graphics processing
unit (GPU) or both), a main memory 1104 and a static memory
1106, which communicate with each other via a bus 1108. The
computer system 1100 may further include a video display unit
1110 (e.g., a liquid crystal display (LCD) or a cathode ray tube
(CRT)). The computer system 1100 also includes an
alphanumeric input device 1112 (e.g., a keyboard or a touch-
sensitive display screen), a user interface (UI) navigation (or
cursor control) device 1114 (e.g., a mouse), a disk drive unit
1116, a signal generation device 1118 (e.g., a speaker) and a
network interface device 1120.
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Spec. ¶ 96; see also Drawing, FIG. 11. Thus, the recited “a memory”; “one
or more modules coupled to the memory”; and “[a] non-transitory machine-
readable storage medium” also are described in the Specification and
depicted in the Drawing in a way that does not distinguish from a generic
implementation.
We do not find the recited computer-related limitations are sufficient
to integrate the judicial exception into a practical application. Specifically,
there is no improvement to the functioning of the computer, but, instead, the
computer merely implements the abstract idea. In this case, we do not see
any particular machine or manufacture that is integral to the claim; nor do
we see any transformation. That is, we do not see any of the additionally
recited elements applying or using the judicial exception in any meaningful
way beyond generally linking the judicial exception to the recited elements.
Accordingly, we determine that claims 1, 17, and 20 are directed to a
judicial exception because they do not recite additional elements that
integrate the recited judicial exception into a practical application.
Is there something else in the claims that ensures that they are
directed to significantly more than a patent ineligible concept?
Step 2B
Because claims 1, 17, and 20 are directed to a judicial exception, we
must determine, according to Alice, whether these claims recite an element,
or combination of elements that is enough to ensure that the claim is directed
to significantly more than a judicial exception.
The conventional or generalized functional terms by which the
computer components are described reasonably indicate that Appellant’s
Specification discloses conventional components. See Spec. ¶¶ 26, 51, 76,
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95, 96. Further, the Specification does not provide additional details about
the computer that would distinguish the recited components from generic
implementation individually and generic implementation in the combination.
See Spec. ¶¶ 26, 51, 76, 95, 96.
In view of Appellant’s Specification, the claimed computer
components are reasonably determined to be generic, purely conventional
computer elements. Thus, the claims do no more than require generic
computer elements to perform generic computer functions, rather than
improve computer capabilities.
Accordingly, we determine that claims 1, 17, and 20 are not directed
to significantly more than a patent ineligible concept.
Appellant’s principal arguments
Appellant presents the following principal arguments:
i. “‘[T]he majority of the limitations’ describe specific operations
to be performed in selecting the recommended item. Thus, the present claims
are distinguished from those at issue in Ultramercial[, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed Cir. 2014)], and Ultramercial does not support the
Examiner’s assertion that the present claims are directed to an abstract idea.”
Appeal Br. 12; see also Reply Br. 2.
ii. “Unlike the claims at issue in [In re] Ferguson[, 558 F.3d 1359
(Fed Cir. 2009)], the present method claims are machine-implemented,
reciting (in claim 1 alone) ‘a user interface element displayed on a device of
a user,’ ‘one or more processors,’ ‘a data storage,’ ‘a coupled database,’ and
‘generating and transmitting, to the device of the user, a user interface.’”
Appeal Br. 13; see also Reply Br. 2.
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iii. “Similarly [to DDR Holdings v. Hotels.com, 773 F.3d 1245
(Fed Cir. 2014)], the independent claims of the present application do not
merely recite the performance of ‘some business practice known from the
pre-Internet world’ but yield ‘a result that overrides the routine and
conventional sequence of events.’” Appeal Br. 14.
iv. “[T]here is no prior art that teaches the specific claimed method
of selecting a recommended item. Accordingly, a computer system that
implements the method of claim l achieves the ‘practical application’ of
providing improved item recommendations.” Appeal Br. 14; see also Reply
Br. 3; see also Reply Br. 3 (“The Examiner’s insistence that the claims are
non-obvious but nonetheless recite only well-known and conventional
activity cannot be reconciled.”).
v. “The present claims include improvements to this technology
by, for example, ‘providing recommendations without accessing private
data’ or ‘without requiring the user to explicitly craft a query.’” Appeal Br.
15 (citing Spec. ¶ 82); see also Reply Br. 4 (“Applicant submits that when
each claim is considered as a whole, rather than examined piecemeal, the
claims recite ‘significantly more’ than the alleged abstract idea.”).
vi. Regarding dependent claim 8, “contrary to the Examiner’s
allegation that dependent claim 8 is ‘part of the abstract idea itself,’ [] the
additional elements of dependent claim 8 serve to make the claim less
abstract.” Appeal Br. 15–16; see also Reply Br. 4.
vii. Regarding dependent claim 9, “contrary to the Examiner’s
allegation that dependent claim 9 is ‘part of the abstract idea itself,’ [] the
additional element of dependent claim 9 serves to make the claim less
abstract.” Appeal Br. 16; see also Reply Br. 4.
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viii. Regarding dependent claim 10, “contrary to the Examiner’s
allegation that dependent claim 10 is ‘part of the abstract idea itself,’ [] the
additional elements of dependent claim 10 serve to make the claim less
abstract.” Appeal Br. 17; see also Reply Br. 4.
ix. Regarding dependent claim 11, “contrary to the Examiner’s
allegation that dependent claim 11 is ‘part of the abstract idea itself,’ [] the
additional elements of dependent claim 11 serve[] to make the claim less
abstract.” Appeal Br. 18–19; see also Reply Br. 4.
We have considered the issues raised by Appellant’s arguments, and
we remain persuaded the claims are directed to a judicial exception without
significantly more.
Appellant’s arguments (i), (ii), and (iii) do not show any error
because, as we explain above, the argued elements of claims 1, 17, and 20
are the abstract concepts of “[c]ertain methods of organizing human
activity.” 2019 Revised Guidance, 84 Fed. Reg. at 52; see also Ans. 3–4. We
appreciate Appellant’s arguments with respect to Ultramercial, Ferguson,
and DDR Holdings, however, in determining that the claims recite the
abstract concepts of “[c]ertain methods of organizing human activity,” we
have cited to Appellant’s application and to the 2019 Revised Guidance and
have explained, with reasoning for each claim step, why the claims recite the
abstract concepts of “[c]ertain methods of organizing human activity.” 2019
Revised Guidance, 84 Fed. Reg. at 52. We also explain that the claims do
not recite additional elements that integrate the recited judicial exception
into a practical application, and are not directed to significantly more than a
patent ineligible concept.
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Appellant’s argument (iv) also does not show any error. Regarding
any novelty of the claimed approach to selecting a recommended item, these
arguments do not show error in the Examiner’s conclusions because the
argued elements of claims 1, 17, and 20 are part of the abstract idea. The
claims do no more than require generic computer elements to perform
generic computer functions, rather than improve computer capabilities. Put
another way, “[t]he ‘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 [section] 101 categories of possibly
patentable subject matter.” Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1315 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S.
175, 188–89 (1981)); see also Ans. 4–5.
Appellant’s argument (v) also does not show any error for same
reasons explained above when addressing arguments (i)–(iv). See Ans. 5–6.
Appellant’s argument (vi)–(ix) also do not show any error. Claim 8
further recites “accessing a size of the set of comments provided by the one
or more other users; and the selecting of the recommended item occurs in
response to a determination that the size exceeds a threshold.” Claim 9
further recites “the selecting of the recommended item is based on a weight
associated with each comment provided by the one or more other users.”
Claim 10 further recites
identifying a user corresponding to each comment, from
the one or more other users; and
for each identified user, determining a number of
previously-provided comments that were followed; and
the weight associated with each comment is based on the
determined number for the user providing the comment.
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Claim 11 further recites “for each previously-provided comment that
was followed, determining whether the following of the comment resulted in
a purchase; and the number for the user that provided the comment that
resulted in a purchase is adjusted based on the determination.” These further
limitations of claims 8–11 describe additional aspects of the “advertising,
marketing or sales activities or behaviors” and are thus “commercial or legal
interactions.” 2019 Revised Guidance, 84 Fed. Reg. at 52. Accordingly,
claims 8–10 recite the abstract concept of “[c]ertain methods of organizing
human activity.” Id. Thus, the claim limitations of claims 8–11 do not
improve the functionality of the various hardware components, nor do they
achieve an improved technological result in conventional industry practice.
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1316 (Fed.
Cir. 2016). More particularly, we do not agree that the further limitations in
claims 8–11 improve the technology as a whole. Accordingly, we determine
that claims 8–11 are also not directed to significantly more than a patent
ineligible concept.
We, therefore, do not sustain the Examiner’s rejection of claims 1–20.
CONCLUSION
The Examiner’s decision to reject claims 1–20 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 101 Judicial Exception 1–20
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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED