Eui Chung et al.

Patent Trials and Appeals Board

Sep 4, 2019

14104070 - (D) (P.T.A.B. Sep. 4, 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.
14/104,070 12/12/2013 Eui Chung 27706US01 6185
23446 7590 09/04/2019
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
EXAMINER
CHNG, JOY POH AI
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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 EUI CHUNG, BHARATH SRIDHARAN, and
SEYED ALIREZA FOROUZAN EBRAHIMI
____________

Appeal 2018-005312
Application 14/104,0701
Technology Center 3600
____________

Before JASON V. MORGAN, DANIEL N. FISHMAN, and
NABEEL U. KHAN, Administrative Patent Judges.

KHAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3, 4, 7, 12, 13, and 15–27. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 Appellants identify Sears Brands, L.L.C., as the real party in interest. App.
Br. 2.

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BACKGROUND
THE INVENTION
According to Appellants, their invention “relate[s] to electronic
commerce (e-commerce), and more particularly, to providing information
for products sold in an e-commerce environment.” Spec. ¶ 1. Appellants
explain that for any given product or service, a vast amount of information
may be found on the Internet, in the form of in-depth product reviews,
product commentaries, product comparisons, purchasing advice, and product
demonstrations. Spec. ¶ 3. However, as the Specification explains, “many
customers may not have the time, desire, and/or ability to find the most
relevant information for products of interest.” Id. Thus, the Specification
explains that “an e-commerce website, that is able to readily provide such
information, may provide a service that may both drive sales as well as
increase customer loyalty.” Id.
Exemplary independent claim 1 is reproduced below.
1. A computer-implemented method, comprising:
obtaining content from one or more content providers via
a computer network;
selecting phrases from the obtained content based on
frequency scores for the phrases;
identifying a product from a product catalog of an
electronic database based on the phrases selected from the
obtained content;
associating the obtained content with the identified
product by updating the electronic database to include, for the
identified product, one or more references to the obtained
content; and
in response to a request for the product listing of the
identified product, retrieving the product listing and associated
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one or more references for the identified product from the
electronic database and presenting the retrieved product listing
with the retrieved one or more references.
REJECTION
Claims 1, 3, 4, 7, 12, 13, and 15–27 stand rejected under 35 U.S.C.
§ 101. Final Act. 2–5
DISCUSSION
LEGAL PRINCIPLES
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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. 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 Supreme Court’s two-step 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
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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, 69 (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 water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); 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
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 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 Supreme 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. (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
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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. (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.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
GUIDANCE STEP 1
Independent claims 1, 7, and 13 are directed to a “method,” a
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“non-transitory computer readable medium,” and a “computing device,”
respectively. As such, we find the pending claims are directed to statutory
categories, such as a process and machine.
GUIDANCE STEP 2A – WHETHER THE CLAIMS ARE
DIRECTED TO A JUDICIAL EXCEPTION
The Examiner finds “[c]laims 1, 7 and 13 recites, in part, a series of
steps which includes obtaining data (i.e. content), selecting data (i.e.
phrases), identifying data (i.e. product), associating data (i.e. content),
updating data, retrieving data and presenting data (i.e. product listing).”
Final Act. 2. The Examiner finds these steps are directed to an abstract idea
under the Federal Circuit’s analysis in Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016). Final Act. 2. Appellants distinguish
their claims from those in Electric Power Group, arguing that the claims are
directed “to a particular technical solution to” (App. Br. 29) a technical
problem and, therefore, include meaningful recitations that go beyond
merely collecting data, performing a conventional analysis of the data, and
presenting the conventional analysis of the data. App. Br. 28–29.
Prong 1 of Step 2A
Under the first prong of step 2A of the Guidance, we determine if the
claims recite an abstract idea. Save for the recitation of an “electronic
database,” we find that nearly every limitation of claim 1 recites mental
processes. For example, “obtaining content form one or more content
providers,” is a step directed at gathering data, which may be performed
mentally. Elec. Power Group, 830 F.3d at 1355 (“[M]erely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
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whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas”); Content Extraction and Transmission LLC v.
Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“the claims
of the asserted patents are drawn to the abstract idea of 1) collecting data, 2)
recognizing certain data within the collected data set, and 3) storing that
recognized data in a memory. The concept of data collection, recognition,
and storage is undisputedly well-known. Indeed, humans have always
performed these functions”). “[S]electing phrases from the obtained content
based on frequency scores for the phrases,” and “identifying a product from
a product catalog of an electronic database based on the phrases selected
from the obtained content,” are limitations that are directed to recognizing
data within a collection and also to filtering content. See Bascom Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir.
2016) (“filtering content is an abstract idea because it is a longstanding,
well-known method of organizing human behavior, similar to concepts
previously found to be abstract); see also Content Extraction, 776 F.3d at
1347. “[A]ssociating the obtained content with the identified product by
updating the electronic database to include, for the identified product, one or
more references to the obtained content” is a step that can be performed
mentally or with pen and paper by recording an association between the
content and references to that content. Finally, “retrieving the product
listing and associated one or more references for the identified product from
the electronic database and presenting the retrieved product listing with the
retrieved one or more references” are steps involving data retrieval and data
presentation. Although presentation of data may not be done purely
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mentally, such a step “does nothing significant to differentiate a process
from ordinary mental processes.” Elec. Power Group, 830 F.3d at 1355.
Mental processes is a category of abstract ideas identified in the
Guidance and thus, under prong one of the step 2A, we find the claims recite
an abstract idea. Guidance, 84 Fed. Reg. at 52.
Prong 2 of Step 2A
Next we determine whether the claims recite any additional
limitations beyond the abstract idea that individually or as a combined whole
integrate the abstract idea into a practical application. Appellants argue
“[e]ach of claims 1, 3, 4, 7, 12, 13, and 15–27 set forth a specific technical
solution to this problem of how deal with vast amounts of information. To,
each of claims 1, 3, 4, 7, 12, 13, and 17–27 set forth a specific process for
processing information obtained from various content providers via a
computer network and directing persons to information of the content
providers that is relevant to an identified product.” App. Br. 18. Appellants
argue that the claims offer a “particular technical solution to a computer-
centric or Internet-centric problem.” Id.
Appellants also identify limitations from the dependent claims and
argue that these limitations “provide[] further technical details” (App. Br.
24) or are directed to a “technical means of solving the problem” (App. Br.
24). App. Br. 24–26.
We are unpersuaded by Appellants’ arguments. Under prong 2 of step
2A, we look to see, amongst other things, if the claims include any
additional elements that reflect an improvement in the functioning of a
computer or to another technological field. Guidance, 84 Fed. Reg. at
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54–55. Analyzing the claims’ limitations as a whole and individually, we do
not find additional limitations, beyond the claimed abstract idea, that
improve the functioning of a computer or another technological field. As we
explained above, nearly every limitation of claim 1 recites a step that can be
performed mentally. “[P]rocessing information obtained from various
content providers” and “directing persons to information of the content
providers” (App. Br. 18), which Appellants argue provide a technical
solution to a technical problem, are both steps that can be performed in the
human mind and through communication to other persons. Thus, we do not
find any additional limitations, beyond those that recite the abstract idea, that
reflect an improvement to the functioning of a computer or to another
technical field.
We disagree with Appellants that the dependent claims provide
additional technical details sufficient to integrate the claimed mental
processes into a practical application of those mental processes. For
example, claim 3 explains how frequency scores are generated “based on
weighted term frequency of the phrases.” This step, although providing
more detail about the limitations of claim 1, still may be performed mentally
or though calculations. Removing blacklisted phrases (claim 4) may also be
performed as a mental process. Reference to “(RSS) feeds” (claims 19, 22,
25) in certain dependent claims generally links the claims to a technological
environment but does not improve the functioning of that environment or
another technical field. Limitations reciting “crawling content served by”
(claims 20, 23, and 26) the content providers can be performed mentally by
searching through content. Similarly, “polling” (claims 21, 24, and 27) is a
technique that can be performed by a human as well as by a computer. The
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dependent claims referencing “natural language processing” (claims 7, 12,
17, and 18) are, of course, referencing a process that naturally occurs in the
human mind. Moreover, even taking these additional details in the
dependent claims into account, we find none of them improve the
functioning of the computer itself, or of another technical field.
GUIDANCE STEP 2B – WHETHER THE CLAIMS
PROVIDE AN INVENTIVE CONCEPT
In our analysis under step 2B, we look to see if the claims add
limitations beyond the judicial exception that are not “well-understood,
routine, conventional” in the field (see MPEP § 2106.05(d)). Appellants
argue the claims “set forth an inventive process that, when taken as a whole,
sets forth an unconventional process of analyzing content obtained from
content providers and associating such content to identified products.” App.
Br. 29.
We find Appellants’ arguments to be unpersuasive. As we explained
above, nearly each of the limitations of the claims recite steps that can be
performed mentally. The remaining recitation of a “computer network” and
“electronic database” are not sufficient to provide an inventive concept to
the subject matter of the claims. The Specification describes the computer
network as including “wireless and/or wired LAN networks, cellular
networks, and the Internet.” Spec. ¶ 14. The computing devices that access
the network are described as including “a desktop, a laptop, a tablet, a smart
phone, and/or some other type of computing device which enables a user to
communicate with the e-commerce system.” Spec. ¶ 14. The “electronic
database” is similarly described as a standard component of the e-commerce
system “configured to store data.” Spec. ¶ 15. Thus, the “computer
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network” and “electronic database” are “well-understood, routine,
conventional” elements of the claims. We, therefore, do not find the claims
provide an inventive concept that is significantly more than the recited
abstract idea.
REMAINING ARGUMENTS
Appellants argue “that claims 1, 3, 4, 7, 12, 13, and 15-27 are
sufficiently narrow to avoid preempting an entire field of innovation and are
thus directed to significantly more than the abstract idea itself.” App. Br. 22.
We are unpersuaded by Appellants’ argument. “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). Moreover, “[w]here
a patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Id.; see also OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015), cert.
denied, 136 S. Ct. 701 (2015).
DECISION
The Examiner’s rejection of claims 1, 3, 4, 7, 12, 13, and 15–27 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED