Ex Parte Sundaresan et al

Patent Trial and Appeal BoardApr 10, 2018

13544598 (P.T.A.B. Apr. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/544,598 07/09/2012 Neelakantan Sundaresan 150601 7590 04/12/2018 Shook, Hardy & Bacon L.L.P. (eBay Inc.) 2555 Grand Blvd. KANSAS CITY, MO 64108-2613 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. IP-Pl080US2/EBAY.281210 6512 EXAMINER AIRAPETIAN, MILA ART UNIT PAPER NUMBER 3625 NOTIFICATION DATE DELIVERY MODE 04/12/2018 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): IPDOCKET@SHB.COM IPRCDKT@SHB.COM tquick@shb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NEELAKANTAN SUNDARESAN, NAM DO, and ANDREW YEE Appeal2017-001395 Application 13/544,598 1 Technology Center 3600 Before CAROLYN D. THOMAS, JASON V. MORGAN, and ADAM J. PYONIN, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Introduction This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1, 3-12, 14, 16-20, and22-24. Claims2, 13, 15, and21 are canceled. Amend. 3---6 (Sept. 25, 2015). We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Appellants identify eBay Inc. as the real party in interest. App. Br. 2. Appeal2017-001395 Application 13/544,598 Invention Appellants' disclosure relates to providing listing assistance to a user by: (1) receiving a query from the user; (2) accessing information from a category that corresponds to the query; (3) generating statistical data using the information accessed; and (4) displaying the statistical data to the user. Abstract. Representative Claim 1. A method performed by a specially configured machine to provide electronic listing assistance in a networked environment via an updateable user interface, the method compnsmg: receiving, at a hardware-implemented search item module over a network, a keyword query for an item of interest from the user interface of a device of a user; performing, by the hardware-implemented search item module, a search for categories related to the item of interest that correspond to the keyword query, the performing the search comprising making a call to a publication API; transmitting instructions to cause the user device to revise the user interface to display a list of the categories related to the item of interest that resulted from the keyword query, the list of the categories to be displayed as selectable categories on the user interface of the device of the user; receiving, over the network, a selection of a selectable category from the list of the selectable categories displayed on the user interface related to the item of interest that resulted from the keyword query; retrieving, by a hardware-implemented retrieve data module from data storage, information from a plurality of current publications on a publication system corresponding to the category that was selected; generating, by an analysis module comprising a processor, statistics data using the information from the plurality of current 2 Appeal2017-001395 Application 13/544,598 publications on the publication system that corresponds to the category that was selected; and transmitting, by a hardware-implemented format module, instructions to cause the user device to update the user interface with the statistics data, the user interface being expanded to include a statistic portion that displays the statistics data. Rejection The Examiner rejects claims 1, 3-12, 14, 16-20, and 22-24 under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. Final Act. 6- 8; Ans. 4. CONCLUSIONS AND CONTENTIONS In rejecting claim 1 under 35 U.S.C. Â§ 101, the Examiner concludes the claimed invention is directed to the abstract idea of "searching [for] and providing item information." Final Act. 6; see also Ans. 4. The Examiner further determines the additional elements of claim 1, individually and in combination, merely represent generic "computer components [that] perform purely generic computer functions" and thus claim 1 does "not include additional elements that are sufficient to amount to significantly more than" the underlying abstract idea. Final Act. 7; see also Ans. 5-6 Appellants contend the Examiner erred because the Examiner has failed to clearly articulate why the claimed invention is not eligible, but has "rather chosen to rely on conclusory statements" (App. Br. 12 (citing, e.g., July 2015 Update: Subject Matter Eligibility Â§ IV, available at https://www. uspto.gov/sites/default/files/documents/ieg-july-2015-update.pdt)) rather than providing, for example, "authoritative documentation that the identified economic component is long prevalent in our system of commerce" (App. Br. 19). Appellants argue "the alleged abstract idea of 3 Appeal2017-001395 Application 13/544,598 'searching [for] and providing item information' is an examiner-written phrase that does not actually appear in" claim 1 (id. at 13}-that the Examiner's rejection makes "a generalization of the claim language that does not even consider the actual language of the claims" (id. at 19). Appellants further argue claim 1 is not directed to an abstract idea because: it does "not define some fundamental economic practice long prevalent in our system of commerce" (id. at 18) or include "language directed to commercial transactions" (Reply Br. 2); it contains "significantly more than mere mental steps of comparing information and using rules to identify options" (App. Br. 16); and it is not directed to a "certain method[] of organizing human activity" representing an abstract idea (id. at 20). Appellants argue that, even if claim 1 is directed to an abstract idea, the elements of claim 1 contain "an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Id. at 23 (citation omitted). In particular, Appellants argue: claim 1 recites "detailed operations that[,] when considered as a whole, add more than the abstract idea" (id. at 25); claim 1 is directed to solving the technological program that "multiple searches are time consuming, inaccurate, and take up network bandwidth" (id.); the invention of claim 1 is "'necessarily rooted in computer technology"' (id. at 26); and the invention of claim 1 is new, useful, and non-obvious (id. at 31 ). Appellants also argue the dependent claims contain "additional limitations pertaining to providing electronic listing assistance in a networked environment via an updateable user interface." App. Br. 17. 4 Appeal2017-001395 Application 13/544,598 ANALYSIS We agree with and adopt as our own the Examiner's findings of facts and conclusions as set forth in the Answer and in the Action from which this appeal was taken. We have considered Appellants' arguments, but do not find them persuasive of error. We provide the following explanation for emphasis. Claim 1 recites steps directed to using a keyword search and a list to select a category, generating statistical data using information corresponding to the selected category, and displaying the statistical data. The Specification provides an example in which a user searches for "Nintendo Wii," selects (from a list of category tiles) tile 408 corresponding to the "Nintendo Wii" game console category, and receives statistics such as average selling price 416, minimum shipping cost 420, and pie charts 424, 426, and 428 detailing availability information. See Spec. i-fi-139-44, Figs. 4A-D. We agree with the Examiner that the claim recitations are directed to "searching [for] and providing item information." Final Act. 6. This characterization succinctly summarizes and identifies the claimed steps and the idea to which claim 1 is directed. We also agree with the Examiner that searching for and providing item information is an abstract idea. Merely "creating and using an index to search for and retrieve data" is "an abstract concept under Alice and its progeny." Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017). And "merely presenting the results of abstract processes of collecting and analyzing information" is also abstract. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Here, the use of keywords and list selection to perform a 5 Appeal2017-001395 Application 13/544,598 search identifies what item information should be retrieved for purposes of generating and displaying statistical data (i.e., for purposes of being analyzed and having the results presented). We can find nothing in this particular combination of abstract ideas that renders non-abstract the underlying idea to which claim 1 is directed. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea ... to another abstract idea ... does not render the claim non- abstract. "). Two-step search processes-in which a search request is used to retrieve a set of results that can be individually selected-have been in widespread use for decades and are insufficient to render a search and retrieval process non-abstract. See, e.g., Ann Eagan and Laura Bender, Spiders and Worms and Crawlers, Oh My: Searching on the World Wide Web, Procs. of the Conf, Sponsored by the Librarians Ass'n of the U. of Cal, Santa Barbara and Friends of the UCSB Libr., available at http:! /misc. library.ucsb.edu/untangle/eagan.html (Apr. 26, 1996) ("Once the search request is received, the search engine searches its own database first .... Results are sent back to the searcher ... with links to the sources retrieved."). Generating and displaying statistical information (averages, minimums, etc.) that could be generated by hand with access to the underlying dataset identified through the search process does not render the search and retrieval process non-abstract either. We further agree with the Examiner that the additional elements of claim 1 do not add anything significantly more so as to transform the underlying abstract idea into statutory subject matter. Claim 1 is replete with limitations directed to performing the claimed steps with "hardware- implemented" elements in a network environment. But, we can find nothing 6 Appeal2017-001395 Application 13/544,598 in claim 1 that requires the use of "nonconventional computer, network, or display components, or even a 'non-conventional and non-generic arrangement of known, conventional pieces."' Elec. Power, 830 F .3d at 1355 (citing Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349--52 (Fed. Cir. 2016)). The generic nature of the additional recitations of claim 1 is particularly clear when these recitations are read in light of the Specification's broad disclosure that claimed features such as modules encompass everything from application specific integrated circuits to general-purpose processors temporarily configured by software. See Spec. i-fi-155-57. For these reasons, we agree with the Examiner that claim 1 is directed to non-statutory subject matter. Accordingly, we sustain the Examiner's 35 U.S.C. Â§ 101 rejection of claim 1, and independent claims 12 and 14, which Appellants do not argue separately. See App. Br. 29. Appellants further contend the Examiner's rejection does not properly address the limitations of the dependent claims. See id. at 10, 13-14, 16-17. However, we are unable to discern any additional elements in the dependent claims that transform any dependent claims to be directed to statutory subject matter. Accordingly, we also sustain the Examiner's 35 U.S.C. Â§ 101 rejection of claims 3-9, 11, 16-20, and 22-24. 7 Appeal2017-001395 Application 13/544,598 DECISION We affirm the Examiner's decision rejecting claims 1, 3-12, 14, 16- 20, and 22-24. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 8 Appeal2017-001395 Application 13/544,598 APPENDIX Excerpts from Ann Eagan and Laura Bender, Spiders and Worms and Crawlers, Oh My: Searching on the World Wide Web, Procs. of the Conf, Sponsored by the Librarians Ass'n of the U. of Cal, Santa Barbara and Friends of the UCSB Libr., available at http://misc.library.ucsb.edu/ untangle/ eagan.html (Apr. 26, 1996) i Add A Page , ::::;:id;;, LT:: l .................................................................................. t ...................................................................................... J Application/Control No. Applicant(s)/Patent Under 13544598 Reexamination Notice of References Cited Examiner Art Unit 3625 Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Date Country Code-Number-Kind Code MM-YYYY Name Classification 1 A US- 1 1 B US- c US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Date Country Code-Number-Kind Code MM-YYYY Country Name Classification N 0 p Q R s T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) u Ann Eagan and Laura Bender, Spiders and Worms and Crawlers, Oh My: Searching on the World Wide Web, Procs. of the Conf, Sponsored by the Librarians Ass 'n of the U. of Cal, Santa Barbara and Friends of the UCSB Libr., available at h!.~}?;L!.m"'~:,J.i}!_m-.L~!s,!'!~? ... ~:~1;!!. WW!DJ;h'i.~:'0c&:ii.J;!JJ:J (Apr. 26, 1996) v w x *A copy of this reference is not being furnished with this Office action. (See MPEP Â§ 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PT0-892 (Rev. 01-2001) Notice of References Cited Part of Paper No. 4/10/2018 Spiders and Worms and Crawlers, Oh My! Searching on the World Wide Web rÂ·uiL~-i~-~hi~-