Ex Parte Ganguly et al

Patent Trials and Appeals Board

Jan 29, 2019

12498324 - (D) (P.T.A.B. Jan. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/498,324 07/06/2009
20995 7590 01/31/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Sandipan Ganguly
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
EXIN.003A 8179
EXAMINER
JOSEPH, TONY A S
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
01/31/2019 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAND IP AN GANGUL Y and DANIEL MARK LYNN
Appeal2017-002906
Application 12/498,324 1
Technology Center 3600
Before MAHSHID D. SAADAT, DENISE M. POTHIER, and
HUNG H. BUI, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 20-26, 31-34, 40-48, 54, and 56, which
are all the claims pending in the application. Claims 1-19, 27-30, 35-39,
49-53, 55, and 57 are cancelled. App. Br. 20-26, Claims App'x. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellants, Expedia, Inc. is the real party in interest. App.
Br. 3.
2 Our Decision refers to Appellants' Appeal Brief filed July 25, 2016 ("App.
Br."); Reply Brief filed December 20, 2016 ("Reply Br."); Examiner's
Answer mailed October 26, 2016 ("Ans."); Non-Final Office Action mailed
February 25, 2016 ("Non-Final Act."); and original Specification filed
September 28, 2009 ("Spec.").
Appeal2017-002906
Application 12/498,324
STATEMENT OF THE CASE
Appellants' invention relates to "systems and methods for
electronically ranking records of inventory items [i.e., hotels, automobile
rentals, air travel, cruises, and packages comprising any combination
thereof]." Spec. ,r,r 10, 12. According to Appellants, "inventory ranking
service [] is configured to identify and obtain records of inventory items
matching the search criteria and perform a ranking operation that ranks each
of the identified inventory items with respect to each other" "on the basis of
criteria such as price or user ratings," i.e., "an inventory score for each of the
identified inventory items based upon both the desirability of the inventory
items, as reflected by attributes of the inventory items that are perceptible to
users, as well as a margin, or profit, on the inventory items." Spec. ,r,r 3, 13.
This way, "the identified inventory items" can be ranked "according to the
inventory" to "enable the presentation of the search results in a manner
favorable to both the user and the seller." Spec. ,r 70.
Claims 20, 31, and 43 are independent. Claim 20 is illustrative of the
claimed subject matter, as reproduced below:
20. A computer-readable non-transitory medium
having a computer-executable component comprising:
a search component that is configured to determine a
group of inventory items that satisfy one or more search criteria
received from a computing device, wherein the computing
device is associated with a display having a limited display area;
and
a results parsing component that is configured to:
for each inventory item from the group of inventory items:
obtain attributes of the inventory item, the attributes
perceptible to a user;
obtain, for each of the attributes of the inventory item, an
inventory attribute value that quantifies the attribute;
2
Appeal2017-002906
Application 12/498,324
obtain an attribute weighting value for at least one attribute
of the attributes of the inventory item, wherein the attribute
weighting value is different from the inventory attribute value of
the at least one attribute, and quantifies a relationship between
the at least one attribute of the inventory item and at least one
additional attribute of the inventory item;
determine a score for the inventory item based at least in
part on the attributes of the inventory item, the inventory attribute
value corresponding to each attribute, and the attribute weighting
value;
determine a purchase likelihood for the inventory item,
wherein the purchase likelihood for the inventory item is based
at least in part on a comparison of the score of the inventory item
to a total of the scores for the group of inventory items; and
determine a ranking of the inventory item according to the
purchase likelihood of the inventory item; and
generate a user interface for output on the display of the
computing device, wherein the group of inventory items are
ordered within the user interface based at least in part on the
rankings of the inventory items according to their respective
purchase likelihoods, and wherein the user interface, when
output on the display of the computing device, initially displays
one or more highly ranked inventory items, from the group of
inventory items, within the limited display area and omits one or
more lower ranked inventory items, from the group of inventory
items, from the limited display area; and
transmit the user interface to the computing device for
output to the display.
App. Br. 20-21 (Claims App'x).
EXAMINER'S REJECTION
Claims 1-26, 31-34, 39-49, 54, and 56 [sic, claims 20-26, 31-34,
40-48, 54, and 56] stand rejected under 35 U.S.C. § 101 because the claimed
invention is directed to an abstract idea without significantly more. Non-
Final Act. 5---6.
3
Appeal2017-002906
Application 12/498,324
DISCUSSION
Legal Framework
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court's two-step framework articulated in Alice Corp. Pty. Ltd.
v. CLS Bankint'l, 573 U.S. 208 (2014). First, we determine whether the
claims are directed to a patent-ineligible concept: laws of nature, natural
phenomena, and abstract ideas. Id. at 216-18. If so, we then proceed to the
second step to consider the elements of the claims "individually and 'as an
ordered combination"' to determine whether there are additional elements
that "'transform the nature of the claim' into a patent-eligible application."
Id. at 217. In other words, the second step is to "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.
The Federal Circuit has described the Alice step 1 inquiry as looking
at the "focus" of the claims, their "character as a whole," and the Alice step-
two inquiry as looking more precisely at what the claim elements add-
whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Because there is no single definition of an "abstract idea" under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
4
Appeal2017-002906
Application 12/498,324
abstract ideas to explain that the "abstract idea" exception includes the
following three groupings:
( 1) Mathematical concepts-mathematical relationships, mathematical
formulas or equations, mathematical calculations;
(2)Mental processes-concepts performed in the human mind
(including an observation, evaluation, judgment, opinion); and
(3) Certain methods of organizing human activity-fundamental
economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions
between people (including social activities, teaching, and
following rules or instructions).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50, 52 (Jan. 7, 2019 ("PTO§ 101 Memorandum")) which is effective on
January 7, 2019. According to the PTO§ 101 Memorandum, "[c]laims that
do not recite [subject] matter that falls within these enumerated groupings of
abstract ideas should not be treated as reciting abstract ideas," except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not "directed to" a judicial exception
(abstract idea) and, thus, are "patent-eligible" if "the claim as a whole
integrates the recited judicial exception into a practical application of that
Uudicial] exception." PTO§ 101 Memorandum, 84 Fed. Reg. at 53.
"Integration into a practical application" requires an additional element or a
combination of additional elements in the claim to apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
5
Appeal2017-002906
Application 12/498,324
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the exception. PTO§ 101 Memorandum, 84 Fed. Reg. at 55.
For example, limitations that are indicative of "integration into a
practical application" include:
(1) Improvements to the functioning of a computer, or to any other
technology or technical field-see MPEP § 2106.05(a);
(2) Applying the judicial exception with, or by use of, a particular
machine-see MPEP § 2106.05(b);
(3)Effecting a transformation or reduction of a particular article to
a different state or thing-see MPEP § 2106.05(c); and
( 4) Applying or using 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-see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of "integration into a
practical application" include:
( 1) Adding the words "apply it" ( or an equivalent) with the judicial
exception, or mere instructions to implement an abstract idea on
a computer, or merely uses a computer as a tool to perform an
abstract idea-see MPEP § 2106.05(±);
(2) Adding insignificant extra-solution activity to the judicial
exception - see MPEP § 2106.05(g); and
(3) Generally linking the use of the judicial exception to a particular
technological environment or field of use - see § MPEP
2106.05(h).
See PTO§ 101 Memorandum, 84 Fed. Reg. at 54--55 ("Prong Two").
Examiner's Determination of Patent-Ineligibility
In rejecting claims 20-26, 31-34, 40-48, 54, and 56 under 35 U.S.C.
§ 101, the Examiner determines these claims are directed to an abstract idea
of "ranking items," which falls into multiple categories of abstraction,
6
Appeal2017-002906
Application 12/498,324
including "(i) a fundamental economic practice, (ii) a method of organizing
human activities, (iii) an idea of itself [i.e., a mental process that could be
performed in the human mind or by a human using a pen and paper], or (iv)
a mathematical relationship or formula," and include limitations that are
analogous or similar to ( 1) concepts of comparing new and stored
information and using rules to identify options as discussed in SmartGene,
(2) concepts of organizing information through mathematical correlations as
discussed in Digitech; and (3) concepts of optimizing the organization of
sales representatives in a business as discussed in In re Maucorps, 609 F .2d
481 (CCPA 1979). Ans. 2--4; Non-Final Act. 5; see SmartGene, Inc. v.
Advanced Biological Labs., SA, 852 F. Supp.2d 42 (D.D.C. 2012), aff'd 555
F. App'x 950, 955 (Fed. Cir. 2014) (holding that claims directed to
"comparing new and stored information and using rules to identify medical
options" are not patent-eligible); Digitech Image Techs. LLC v. Electronics
for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding claims
directed to "a process of organizing information through mathematical
correlations" are not patent-eligible); see also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
The Examiner also determines the claims fail to amount to
"significantly more" than the judicial exception" or contain an "inventive
concept" because these addition claim elements are ( 1) "mere instructions to
implement the idea on a computer," and (2) "recitation of generic computer
structure that serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
pertinent industry." Non-Final Act. 6.
7
Appeal2017-002906
Application 12/498,324
Appellants' Contentions of Patent-Eligibility & Analysis
At the outset, Appellants contend the Examiner has not established a
prima facie case of patent ineligibility under 35 U.S.C. § 101 because the
Examiner has oversimplified and failed to provide "any reasonable
[rationale] for concluding that the claim is 'directed to' a judicially excepted
concept." App. Br. 10-12. This argument is not persuasive because, as
recognized by the Federal Circuit, "the prima facie case is merely a
procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has held
that the USPTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, "together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application." In re Jung, 637 F.3d 1356,
13 62 (Fed. Cir. 2011 ). Thus, all that is required of the Office is that it set
forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection."). Appellants do not contend that the Examiner's rejection
under 35 U.S.C. § 101 cannot be understood or that the Examiner's
rejection, otherwise, fails to satisfy the notice requirements of 35 U.S.C.
§ 132. Indeed, Appellants' understanding of the rejection is clearly
manifested by their response as set forth in the briefs.
8
Appeal2017-002906
Application 12/498,324
Moreover, the Examiner is required to review all claims at some level
of generalization and determine whether those claims are directed to an
abstract idea under Alice step 1. However, there is no single definition of
"abstract idea." As the Federal Circuit succinctly put it:
The problem with articulating a single, universal definition of
"abstract idea" is that it is difficult to fashion a workable
definition to be applied to as-yet-unknown cases with as-yet-
unknown inventions.
Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed.
Cir. 2016). Because there is no single definition of an abstract idea, the
Federal Circuit instructs us "to examine earlier cases in which a similar or
parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided." Amdocs, 841 F.3d at 1294 (citing Elec.
Power Grp., 830 F.3d at 1353-54; accordUSPTO Memorandum, JULY2015
UPDATE: SUBJECT MATTER ELIGIBILITY, 3 (July 30, 2015),
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
update.pdf (instructing Examiners that "a claimed concept is not identified
as an abstract idea unless it is similar to at least one concept that the courts
have identified as an abstract idea."). In this case, the Examiner did just
what he was required to do under the USPTO Memorandum i.e., analyzed
the claims under Alice step 1 consistent with the guidance set forth in the
USPTO's "2014 Interim Guidance on Patent Subject Matter Eligibility," 79
Fed. Reg. 74618 (Dec. 16, 2014), in effect at the time the rejection was
made, i.e., on Mar. 18, 2016.
With respect to Appellants' argument regarding the "directed to"
inquiry under Alice step 1, we will address that argument separately in the
9
Appeal2017-002906
Application 12/498,324
context of Alice step 1 inquiry and the newly published PTO § 101
Memorandum, 84 Fed. Reg. at 53, herein below.
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue
independent claims 20, 31, and 43 are not directed to an abstract idea, i.e.,
are not "(i) a fundamental economic practice, (ii) a method of organizing
human activities, (iii) an idea of itself [i.e., a mental process that could be
performed in the human mind or by a human using a pen and paper], or (iv)
a mathematical relationship or formula," as determined by the Examiner,
because "the claims do not generically recite the concept of 'ranking items"'
but instead (1) "involve a specific algorithm; one which attempts to satisfy a
search query by predicting the relevance of results as a function of their
purchase likelihood, and returning those results most likely to be purchased
by an end user" and (2) "recite the application of an improved search
algorithm to better locate and display information on a computing device."
App. Br. 13-14. According to Appellants, the claims recite "a new and
useful search algorithm that improves on traditional systems, by predicting
the purchase likelihoods of search results [] and using a ranking based on
those purchase likelihoods to selectively display" and the "improved search
algorithm to process search query and display pertinent results, are [sic]
directed to an improvement to computer functionality [ as discussed in
Enfish]." App. Br. 14--15. Appellants further argue, similar to the claims in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016), their claims are "fundamentally technological in nature" and
relate to "an improvement in computer-related technology" because "the
specification [] describes how the presently claimed subject matter improves
10
Appeal2017-002906
Application 12/498,324
the search results provided by prior systems ... [and] includes a teaching
'about how the claimed invention improves a computer or other
technology."' Reply Br. 2-5 (citing Spec. ,r,r 3--4, 10, 24--32).
Appellants' arguments are not persuasive. At the outset, we note the
newly published PTO § 101 Memorandum governs all patent-eligibility
analysis under Alice and§ 101 effective as of January 7, 2019. In particular,
the PTO has acknowledged that the Federal Circuit's common law, analogy-
driven approach ( a.k.a. "analogous claim" test) was effective soon after
Alice was decided by the Supreme Court, but that approach has since
become impractical as the growing body of Federal Circuit precedent has
become increasing more difficult for the Office and Examiners to apply in a
predictable manner. As a result, the PTO has synthesized, for purposes of
clarity, predictability, and consistency, the "abstract idea" exception to
include three categories of abstract ideas as listed in the PTO § 101
Memorandum, 84 Fed. Reg. at 54--55.
Contrary to Appellants' arguments, Appellants' claims and
Specification describe "systems and methods for electronically ranking
records of inventory items [i.e., hotels, automobile rentals, air travel, cruises,
and packages comprising any combination thereof]." Spec. ,r,r 10, 12.
According to Appellants, "inventory ranking service [] is configured to
identify and obtain records of inventory items matching the search criteria
and perform a ranking operation that ranks each of the identified inventory
items with respect to each other" based on "an inventory score for each of
the identified inventory items based upon both the desirability of the
inventory items, as reflected by attributes of the inventory items that are
perceptible to users, as well as a margin, or profit, on the inventory items."
11
Appeal2017-002906
Application 12/498,324
Spec. ,r 13. This way, "the identified inventory items" can be ranked
"according to the inventory" to "enable the presentation of the search results
in a manner favorable to both the user and the seller." Spec. ,r 70.
For example, Appellants' independent claim 20 defines a computer-
readable non-transitory medium comprising a results parsing component
configured to:
identify a plurality of inventory items that satisfy search criteria;
obtain [i] attributes ... [ii] inventory attribute values for each of
the attributes of the inventory item ... [iii] an attribute weighting
value for each of the attributes of the plurality of inventory items;
generate a score for each of the plurality of inventory items as a
function of their respective adjusted inventory attribute values;
rank the identified inventory items . . . according to their
respective purchase likelihoods;
generate a user interface . . . on the rankings of the inventory
items according to their respective purchase likelihoods ... ; and
transmit the user interface ... for output to the display.
App. Br. 20-21 (Claims App'x) (bracketing added). System and process
claim 31 and claim 43 recite similar limitations.
As correctly recognized by the Examiner (Ans. 2, 6), "ranking
[inventory] items [i.e., hotels, automobile rentals, air travel, cruises, and
packages comprising any combination thereof]" based on criteria such as
pricing and user ratings, i.e., "attributes of the plurality of inventory items"
that are used to generate an inventory "score" as recited in Appellants'
claims 20, 31, and 43 are nothing more than "mental processes" that could
be performed in the human mind or by a human using a pen and paper-a
12
Appeal2017-002906
Application 12/498,324
subject matter that falls within the three types of abstract ideas identified by
the PTO§ 101 Memorandum. See CyberSource, 654 F.3d at 1372-73 ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under[§] 101."); see also In re Comiskey, 554
F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental processes-or processes of human
thinking-standing alone are not patentable even if they have practical
application."); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("Phenomena
of nature, ... mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work."
(Emphasis added)). Additionally, mental processes remain unpatentable
even when automated to reduce the burden on the user of what once could
have been done with pen and paper. CyberSource, 654 F.3d at 1375 ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.").
For example, steps of "obtaining [i] attributes ... [, ii] inventory
attribute value[s] for each [of the] attribute[s] of [the] inventory item[s] ... [,
and iii] an attribute weighting value for each of the attributes of the plurality
of inventory items" recited in Appellants' claims 20, 31, and 43 can be
performed by a human who simply reads records of inventory items.
Similarly, steps of "determining [i] a score of each inventory item ... [and ii]
a purchase likelihood for each inventory item" and then "ranking the
inventory item[]" can be performed by a human who writes a score and a
likelihood for purchase for each inventory item on a paper. Lastly, steps of
"generating" and "transmitting the user interface ... for output to the
13
Appeal2017-002906
Application 12/498,324
display" are, again, broadly worded that these steps can be performed by a
human who completes these tasks on paper.
Alternatively, "ranking [inventory] items [i.e., hotels, automobile
rentals, air travel, cruises, and packages comprising any combination
thereof]" of search results based on price or user ratings, i.e., an inventory
score and attributes of the inventory item for financial transactions (sales) or
according to their respective purchase likelihoods, as recited in Appellants'
claims 20, 31, and 43 is also plainly directed to a fundamental economic
practice under a "certain method of organizing human activity" identified by
the PTO § 101 Memorandum because ranking of inventory items, according
to Appellants' Specification, is used to facilitate the transaction between the
user and the seller (see Spec. ,r 70). Such activities are squarely within the
realm of abstract ideas, like (1) the risk hedging in Bilski v. Kappas, 561
U.S. 593 (201 O); (2) the intermediated settlement in Alice, 573 U.S. at 219--
22; (3) verifying credit card transactions in CyberSource, 654 F.3d at 1370;
(4) guaranteeing transactions in buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1354 (Fed. Cir. 2014); (5) distributing products over the Internet in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014);
( 6) determining a price of a product offered to a purchasing organization in
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015);
and (7) pricing a product for sale in OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359 (Fed. Cir. 2015). Ranking inventory items based on price or
user ratings for a transaction is also a building block of a market economy
and, like risk hedging and intermediated settlement, is an "abstract idea"
beyond the scope of§ 101. See Alice, 573 U.S. at 219-220.
14
Appeal2017-002906
Application 12/498,324
We also discern no additional element ( or combination of elements)
recited in Appellants' claims 20, 31, and 43 that integrates the judicial
exception into a practical application. See PTO § 101 Memorandum, 84
Fed. Reg. at 54--55 ("Prong Two"). For example, Appellants' claims 20, 31,
and 43's additional elements (e.g., "a computer-executable component" in
claim 20, "a computing device" in claim 31, or "one or more computing
devices" in claim 43) do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine ( except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and ( 4) are not applied in any 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. See MPEP
§§ 2106.05(a}-(c), (e}-(h). Moreover, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." Alice, 573 U.S. at 223; see also MPEP § 2106.05(±).
Appellants' reliance on McRO is also misplaced. For example, McRO
'576 patent (U.S. Patent No. 6,307,576) describes a computer software for
matching audio to a 3D animated mouth movement to provide lip-synced
animation. McRO 's claims contain (i) specific limitations regarding a set of
rules that "define[] a morph weight set stream as a function of phoneme
sequence and times associated with said phoneme sequence" to enable
computers to produce "'accurate and realistic lip synchronization and facial
expressions in animated characters"' (McRO, 837 F.3d at 1313) and, when
viewed as a whole, are directed to (ii) a "technological improvement over
the existing, manual 3-D animation techniques" that uses "limited rules in a
15
Appeal2017-002906
Application 12/498,324
process specifically designed to achieve an improved technological result in
conventional industry practice." McRO, 837 F.3d at 1316.
In contrast to McRO, Appellants' claims and Specification are
directed to "ranking [inventory] items [i.e., hotels, automobile rentals, air
travel, cruises, and packages comprising any combination thereof]" of search
results based on criteria such as price or user ratings, i.e., an inventory score
and attributes of the inventory item for financial transactions (sales) or
according to their respective purchase likelihoods. As previously discussed,
organizing or ranking inventory items of search results based on criteria such
as price or user ratings can be performed by a human using a pen and paper
(see CyberSource, 654 F.3d at 1372-73) and does not improve the computer
functionality discussed in Enfish or improve the computer-related
technology discussed in McRO, as Appellants argue. App. Br. 14--15; Reply
Br. 2-5.
For these reasons, we agree with the Examiner's determination that
Appellants' claims 20, 31, and 43 are directed to an abstract idea that is not
integrated into a practical application.
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue (1) "the
claims recite a specific, particular implementation for ranking, as applied to
a computing device to improve the performance of that device"; and (2) the
claims contain an "inventive concept" like the claims in Bascom Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 1352
(Fed. Cir. 2016) and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014) because these claims recite "a specific, discrete
implementation of an improved search and ranking algorithm as
16
Appeal2017-002906
Application 12/498,324
implemented by a computing device to control the information returned in
response to a search query" or "a technological solution to a technological
problem[] rooted in computer technology." App. Br. 15-17; Reply Br. 8-9.
Appellants also argue the claims include "recitations [that] are not
'well-understood, routine, and conventional activities previously known to
the pertinent industry,"' i.e., "a results parsing component that obtains
inventory items as search results from a search component" and "a specific
ranking, based on a purchase likelihood" before generating "a user interface
for output on the display of the computing device." App. Br. 18. According
to Appellants, these "additional features that ensure that claims are more
than a drafting effort designed to monopolize 'ranking items."' Id.
Appellants' arguments are not persuasive. Under current Federal
Circuit precedent, an "inventive concept" under Alice step 2 can be
established by showing, for example, that the patent claims:
(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks"
(see DDR, 773 F.3d at 1257));
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
end user" (see Bascom, 827 F.3d at 1352, 1350
(Fed. Cir. 2016); or
(3) "entail[] an unconventional technological solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously
required massive databases)" and "improve the
performance of the system itself' (see Amdocs, 841 F.3d
at 1300, 1302).
17
Appeal2017-002906
Application 12/498,324
Similarly, as recognized by the PTO § 101 Memorandum, an
"inventive concept" under Alice step 2 can also be evaluated based on
whether an additional element or combination of elements:
( 1) "[ a ]dds a specific limitation or combination of limitations
that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present" (see MPEP § 2106.05(d)); or
(2) "simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which
is indicative that an inventive concept may not be
present."
See PTO§ 101 Memorandum, 84 Fed. Reg. at 56.
In this case, we find no additional element or combination of elements
recited in Appellants' claims 20, 31, and 43 contains any "inventive
concept" or adds anything "significantly more" to transform the abstract
concept into a patent-eligible application. Alice, 573 U.S. at 221-222. For
example, Appellants' abstract idea of "ranking [inventory] items" of search
results based on criteria such as pricing and user ratings or according to their
respective purchase likelihoods is not rooted in computer technology; nor
does it (1) provide any technical solution to a technical problem as required
by DDR Holdings; (2) provide any particular practical application as
required by Bascom; or (3) entail an unconventional technological solution
to a technological problem as required by Amdocs. Instead, Appellants'
invention simply uses generic computer components to perform the abstract
idea of "ranking [inventory] items" of search results based on criteria such
as pricing and user ratings (Spec. ,r,r 3, 10, 12-13, 70, Fig. 1). As recognized
by the Examiner, "[t]here is no indication that the combination of elements
18
Appeal2017-002906
Application 12/498,324
improves the functioning of a computer or improves any other technology."
Ans. 4--5. In fact, the only "additional [] elements" recited merely
implement the abstract idea on generic computing elements (i.e., datastore,
computing device, user interface, and display, shown in Figure 1 )." Id. at 5.
However, the use of a generic computer device does not alone transform an
otherwise abstract idea into patent-eligible subject matter. As our reviewing
court has observed, "after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible." DDR, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223).
Moreover, Appellants have not shown any specific limitation in claims 20,
31, and 43 beyond the judicial exception that is not "well-understood,
routine, and conventional" in the field (see MPEP § 2106.05(d)).
With respect to the alleged limitations in Appellants' claims 20, 31,
and 43 that are not "well-understood, routine, and conventional activities,"
we acknowledge the Federal Circuit's decision in Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018) where the court held that "[w]hether
something [(i.e., additional elements beyond the abstract idea)] is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination" under Alice step 2. See Berkheimer, 881
F.3d 1369. However, as correctly recognized by the Examiner (Ans. 4--5),
the additional elements beyond the abstract idea are generic computing
elements such as datastore, computing device, user interface, and display.
Using these generic computing components to perform an abstract idea, i.e.,
organizing or ranking inventory items of search results based on criteria such
as price or user ratings or according to their respective purchase likelihoods
cannot transform the abstract idea into a patent-eligible invention.
19
Appeal2017-002906
Application 12/498,324
Moreover, the use of these generic computing components is well-
understood, routine, and conventional to a skilled artisan as evidenced in
Appellants' own Specification (see Spec. ,r 14) and prior art of record,
including, for example: (1) Geoghegan et al. (US 2008/0091480 Al;
published Apr. 17, 2008) ,r,r 31-36, Figs. 1-2; and (2) Keil et al. (US
2008/0033787 Al; published Feb. 7, 2008) ,r,r 66-67, Figs. 2-3.
Additional Argument
Appellants further argue that the claims do not preempt the abstract
idea of "ranking items" along with the requirement to perform it on a
computer, or "all ways of ranking items on computers." App. Br. 17.
However, this argument is not persuasive because, although "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). "Where a
patent's claims are deemed only to disclose patent ineligible subject matter"
under the Alice/ Mayo framework, "preemption concerns are fully addressed
and made moot." Id.
Because Appellants' claims 20, 31, and 43 are directed to a patent-
ineligible abstract concept and do not recite something "significantly more"
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of claims 20-26, 31-34, 40-48, 54, and 56 under 35 U.S.C. § 101.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 20-26, 31-34, 40-48,
54, and 56 under 35 U.S.C. § 101.
20
Appeal2017-002906
Application 12/498,324
DECISION
As such, we AFFIRM the Examiner's rejection of claims 20-26, 31-
34, 40-48, 54, and 56 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
21