Geoffry A. WestphalDownload PDFPatent Trials and Appeals BoardSep 3, 201912394458 - (D) (P.T.A.B. Sep. 3, 2019) Copy Citation 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. 12/394,458 02/27/2009 Geoffry A. Westphal 31083.29US1 2585 34018 7590 09/03/2019 Greenberg Traurig, LLP 77 W. Wacker Drive Suite 3100 CHICAGO, IL 60601-1732 EXAMINER EVANS, KIMBERLY L ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 09/03/2019 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): chiipmail@gtlaw.com clairt@gtlaw.com jarosikg@gtlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GEOFFRY A. WESTPHAL ____________ Appeal 2017-011558 Application 12/394,458 Technology Center 3600 ____________ Before JOHN A. EVANS, CARL L. SILVERMAN, and SCOTT E. BAIN, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claim 1. App. Br. 2, 7. We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellant states the real party in interest is W.W. Grainger, Inc. App. Br. 2. Appeal 2017-011558 Application 12/394,458 2 We AFFIRM.2 STATEMENT OF THE CASE The claim relates to a system for providing a reference collection that is personalized for a consumer. See Abstract. Invention An understanding of the invention can be derived from a reading of Claim 1, the sole claim pending in the Application, which is reproduced below with some formatting added: 1. A system for providing a reference collection that is personalized for a consumer, comprising: a server computer operated by a vendor of products having an associated data repository in which is stored an aggregation of links to sources of on-line information wherein each link within the aggregation is mapped to one or more of a plurality of different consumer communities; and a non-transitory, computer readable media associated with the server computer having stored thereon instructions executable by the server computer, wherein the instructions place the consumer into at least one of the plurality of different consumer communities as a function of at least one product found in a prior purchasing history of the consumer, cause a client computer to display a 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed April 5, 2017, “App. Br.”), the Reply Brief (filed September 14, 2017, “Reply Br.”), the Examiner’s Answer (mailed July 27, 2017, “Ans.”), the Final Action (mailed October 21, 2016, “Final Act.”), and the Specification (filed February 27, 2009, “Spec.”) for their respective details. Appeal 2017-011558 Application 12/394,458 3 webpage that includes the reference collection that is personalized for the consumer, wherein the reference collection comprises a listing of those links within the aggregation of links to sources of on-line information that have been mapped within the data repository to the at least one of the plurality of different consumer communities into which the consumer was placed, and wherein the links to sources of on-line information include links to at least one of product handling instructions and product safety information sheets for the at least one product. References and Rejection3 1. Claim 1 stands rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 5–9. 2. Claim 1 stands rejected under 35 U.S.C. § 103 as unpatentable over Snodgrass (US 7,827,055 B1; Nov. 2, 2010) and Swanson (US 7,299,202 B2; Nov. 20, 2007). Final Act. 9–14. ANALYSIS We have reviewed the rejections of Claim 1 in light of Appellant’s arguments that the Examiner erred. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We are not persuaded that Appellant identifies reversible error. Upon consideration 3 The present application was examined under the pre-AIA first to invent provisions. Final Act. 2. Appeal 2017-011558 Application 12/394,458 4 of the arguments presented in the Appeal Brief and Reply Brief, we agree with the Examiner that all the pending claim is unpatentable. We adopt as our own the findings and reasons set forth in the rejection from which this appeal is taken and in the Examiner’s Answer, to the extent consistent with our analysis below. We provide the following explanation to highlight and address specific arguments and findings primarily for emphasis. We consider Appellant’s arguments as they are presented in the Appeal Brief, pages 3–6, and the Reply Brief, pages 2–5. CLAIM 1: INELIGIBLE SUBJECT MATTER Based upon our de novo review of the record in light of recent Director Policy Guidance4 with respect to the rejection under 35 U.S.C. § 101, we affirm the rejection of claim 1 for the reasons discussed below. “Whether a claim is drawn to patent-eligible subject matter is an issue of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010). The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). 4 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (January 7, 2019) (“Revised Guidance,” “Rev. Guid.”). Appeal 2017-011558 Application 12/394,458 5 PRINCIPLES OF LAW A. 35 U.S.C. § 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 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. Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). 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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). 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; see also Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 Appeal 2017-011558 Application 12/394,458 6 (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” (Diehr, 450 U.S. at 191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 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 Supreme Court held “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; 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.”). Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, and mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under this guidance, we must therefore ensure at step one that we articulate what Appeal 2017-011558 Application 12/394,458 7 the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.”). 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 (citation 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. B. USPTO Revised Guidance The PTO recently published revised guidance in the Federal Register concerning the application of § 101. Under the Revised 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 Manual for Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)). Appeal 2017-011558 Application 12/394,458 8 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 are 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 Revised Guidance. Step 2A(i) — Abstract Idea Informed by our judicial precedent, the Revised Guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation: (a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; (b) 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 Appeal 2017-011558 Application 12/394,458 9 instructions); and (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Under the Revised Guidance, if the claim does not recite a judicial exception (a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas above), then the claim is patent- eligible at Step 2A(i). This determination concludes the eligibility analysis, except in rare situations identified in the Revised Guidance. However, if the claim recites a judicial exception (i.e., an abstract idea enumerated above, a law of nature, or a natural phenomenon), the claim requires further analysis for a practical application of the judicial exception in Step 2A(ii). Step 2A(ii) — Practical Application If a claim recites a judicial exception in Step 2A(i), we determine whether the recited judicial exception is integrated into a practical application of that exception in Step 2A(ii) by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The seven identified “practical application” sections of the MPEP, cited in the Revised Guidance under Step 2A(ii), are: (1) MPEP § 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field Appeal 2017-011558 Application 12/394,458 10 (2) MPEP § 2106.05(b) Particular Machine (3) MPEP § 2106.05(c) Particular Transformation (4) MPEP § 2106.05(e) Other Meaningful Limitations (5) MPEP § 2106.05(f) Mere Instructions To Apply An Exception (6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity (7) MPEP § 2106.05(h) Field of Use and Technological Environment If the recited judicial exception is integrated into a practical application as determined under one or more of the MPEP sections cited above, then the claim is not directed to the judicial exception, and the patent- eligibility inquiry ends. If not, then analysis proceeds to Step 2B. Step 2B — “Inventive Concept” or “Significantly More” Under our precedent, it is possible that a claim that does not “integrate” a recited judicial exception under Step 2A(ii) is nonetheless patent eligible. For example, the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element. The Federal Circuit has held claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B) because the additional elements recited in the claims provided “significantly more” than the recited judicial exception (e.g., because the additional elements were unconventional in combination). Therefore, if a claim has been determined to be directed to a judicial exception under Revised Step 2A, we must evaluate the additional elements individually and in combination under Step Appeal 2017-011558 Application 12/394,458 11 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). Under the Revised Guidance, we must consider in Step 2B whether an additional element or combination of elements: (1) “Adds 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”; 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 Revised Guidance, III.B. In the Step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds an evidentiary basis, and expressly supports a rejection in writing with, one or more of the following: 1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s); 2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s); 3. A citation to a publication that demonstrates the well- understood, routine, conventional nature of the additional element(s); 4. A statement that the examiner is taking official notice of Appeal 2017-011558 Application 12/394,458 12 the well-understood, routine, conventional nature of the additional element(s). See Berkheimer Memo.5 The analysis in Step 2B further determines whether an additional element or combination of elements: (a) Adds 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; or (b) 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. Revised Guidance, and see Berkheimer Memo. If the Examiner or the Board determines under Step 2B that the element (or combination of elements) amounts to significantly more than the exception itself, the claim is eligible, thereby concluding the eligibility analysis. However, if a determination is made that the element and combination of elements does not amount to significantly more than the exception itself, the claim is ineligible under Step 2B, and the claim should be rejected for lack of subject matter eligibility. 5 “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.).” April 19, 2018. Appeal 2017-011558 Application 12/394,458 13 C. THE CLAIM AT ISSUE. Step 1 Claim 1 is a system which recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us is whether it is directed to a judicial exception without significantly more. Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner determines the claim describes the concept of providing consumers with personalized reference collections which corresponds to concepts such as agreements between people in the form of contracts, legal obligations, and business relations which the courts have identified as abstract ideas. Final Act. 6 (citing buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)). The Examiner further finds the claim is related to an idea of itself having common characteristics such as “comparing new and stored information and using rules to identify options.” Id. (citing SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed. Cir. 2014)). And the Examiner finds the claim “uses categories to organize, store and transmit information.” Id. (citing Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988 (Fed. Cir. 2014)). Appellant contends claim 1 sets forth a technological improvement in the interface that e-commerce consumers use to increases the efficiency and accuracy of the e-commerce procurement process and thus provides a real- world, valuable function in a twenty-first-century technological innovation. App. Br. 5. Specifically, Appellant argues claim 1 sets forth a programmatic Appeal 2017-011558 Application 12/394,458 14 structure that functions to provide to an e-commerce consumer links to sources of on-line information, particularly product handling instructions and product safety information for a product that is determined to be relevant to that particular e-commerce consumer. Id. The preamble of Claim 1 recites: “[a] system for providing a reference collection that is personalized for a consumer, comprising.” Claim 1 further recites the following limitations as set forth in the left column of Table I below. Table I applies the further limitations of Claim 1 to the categories of abstract ideas as set forth in the Revised Guidance. Table I Claim 1 Revised Guidance [a]6 a server computer operated by a vendor of products having an associated data repository in which is stored an aggregation of links to sources of on-line information wherein each link within the aggregation is mapped to one or more of a plurality of different consumer communities; The claimed “server computer” hardware limitation to which the Guidance is not applicable. Recitations relating to the specific data transacted by the server are non- functional descriptive material and, as such, are not entitled to patentable weight. [b] a non-transitory, computer readable media associated with the server computer having stored thereon instructions executable by the server computer, A hardware limitation to which the Guidance is not applicable. 6 Indicia, e.g., “[a],” added to facilitate discussion of individual limitations. Appeal 2017-011558 Application 12/394,458 15 [c] wherein the instructions place the consumer into at least one of the plurality of different consumer communities as a function of at least one product found in a prior purchasing history of the consumer, Mental processes: concepts performed in the human mind.7 [d] cause a client computer to display a webpage that includes the reference collection that is personalized for the consumer, Displaying a webpage is insignificant extra-solution activity to the judicial exception. Rev. Guid. 55, n.31. Data displayed are non- functional descriptive material. [e] wherein the reference collection comprises a listing of those links within the aggregation of links to sources of on-line information that have been mapped within the data repository to the at least one of the plurality of different consumer communities into which the consumer was placed, Recitations relating to data in the “reference collection” are non- functional descriptive material and, as such, are not entitled to patentable weight. [f] and wherein the links to sources of on-line information include links to at least one of product handling instructions and product safety Linked data are non-functional descriptive material and, as such, are not entitled to patentable weight. 7 If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.”). Rev. Guid. 52, n.31. Appeal 2017-011558 Application 12/394,458 16 information sheets for the at least one product. Under Step 2A(i) and based on the analysis in Table I, we determine that limitation [c] recites a judicial exception. Step 2A(ii) – Practical Application We next look for the presence of additional elements that integrate the judicial exception into a practical application. The Revised Guidance is “designed to more accurately and consistently identify claims that recite a practical application of a judicial exception [] and thus are not ‘directed to’ a judicial exception.” Revised Guidance, at 53. The claims recite a practical application where an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field.8 Revised Guidance, at 55. For the following reasons, we conclude that Appellant’s claim does not integrate the judicial exception into a practical application. See MPEP §§ 2106.05(a)-(c) and (e)-(h). We address these “practical application” MPEP sections seriatim: MPEP § 2106.05(a) “Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field.” 8 The Revised Guidance also finds integration into a practical application where the judicial exception is used in medical treatment or to transform an article to a different state. Revised Guidance, at 55. Such considerations are not before us. Appeal 2017-011558 Application 12/394,458 17 “In determining patent eligibility, examiners should consider whether the claim ‘purport(s) to improve the functioning of the computer itself’” or “any other technology or technical field.” MPEP § 2106.05(a). Appellant acknowledges “[a]bstraction is avoided or overcome when a proposed new application or computer-implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement to the capability of the system as a whole.” App. Br. 4 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 1336 (Fed. Cir. 2016). Appellant then contends: because the claims - considered as a whole - set forth a use of a programmatic structure, i.e., a programmatic structure that uses past purchasing histories of an e-commerce consumer to implicitly create a personalized reference collection for that particular e-commerce consumer, that improves the functioning of technology, and which is more than the generalized use of a computer as a tool. Id. at 5. The Examiner finds the claimed “server computer” with its “associated data repository” merely facilitates “collecting information, analyzing it, and displaying certain results of the collection and analysis” Ans. 4 (citing Electric Power Grp., 830 F.3d 1350 (Fed. Cir. 2016)). Appellant contends: “it is evident that the Office is not considering, among other things, the programmatic structure that is expressly recited in the claim at issue.” Reply Br. 2 (underlining omitted). Appeal 2017-011558 Application 12/394,458 18 As can be seen in the analysis of Table I, we expressly consider each limitation of Claim 1. We disagree with Appellant’s characterization of those limitations. Appellant contends: “as with Enfish’s self-referential table and Trading Techs, Int’l’s static price index, the subject claims are directed to a technological improvement in the computer art.” Reply Br. 3 (underlining omitted). Specifically, Appellant argues the improvement in computer technology inheres in: the use of a programmatic structure that functions to use past purchasing histories of an e-commerce consumer to implicitly create a personalized reference collection for that particular e- commerce consumer whereby an e-commerce consumer is provided with links to sources of on-line information, particularly product handling instructions and product safety information, for product that is determined to be relevant to that particular e-commerce consumer. Id. We disagree because Appellant does not describe (and the claim does not recite) a technological improvement to a computer. Rather, Appellant describes a conventional computer system which collects and analyses a subset of available data. Every system that collects, analyses, and displays information must have some rule to specify and limit the data collected. We note Appellant’s Specification discloses very conventional computing facilities: [a]ccordingly, those skilled in the art will appreciate that the processing device 20 may be embodied in any device having the ability to execute instructions such as, by way of example, a Appeal 2017-011558 Application 12/394,458 19 personal computer, mainframe computer, personal-digital assistant (“PDA”), cellular telephone, or the like. Spec. 4, ll. 7–10. Such generic recitations of computing elements fail to transform a patent ineligible concept into an eligible one. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (generic computer components, such as an “interface,” “network,” and “database,” fail to satisfy the inventive concept requirement; Alice, 573 U.S. at 226 (“Nearly every computer will include a ‘communications controller’ and [a] ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). MPEP § 2106.05(b) Particular Machine. At the outset, we note that the Bilski machine-or-transformation test is only applicable to method or process claims on appeal. Thus, this section only applies to the extent the system claim on appeal implements a method. This section of the MPEP guides: “When determining whether a claim recites significantly more than a judicial exception, examiners should consider whether the judicial exception is applied with, or by use of, a particular machine.” See Bilski, 561 U.S. at 604 (“[T]he machine-or- transformation test is a useful and important clue, an investigative tool” for determining whether a claim is patent eligible under § 101). MPEP § 2106.05(b). MPEP § 2106.05(b) provides further guidance regarding what constitutes a particular machine: Appeal 2017-011558 Application 12/394,458 20 [A]s described in MPEP §2106.05(f), additional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception. See, e.g., Versata Development Group v. SAP America, 793 F.3d 1306, 1335 (Fed. Cir. 2015) (explaining that in order for a machine to add significantly more, it must “play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly”). We find the claim on appeal is silent regarding specific limitations directed to an improved computer system, processor, memory, network, database, or Internet, nor does Appellant direct our attention to such specific limitations. “[T]he 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 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’ or on a generic computer is still an abstract idea”). Applying this reasoning here, we conclude Appellant’s claim are not directed to a particular machine, but rather merely implement an abstract idea using generic computer components. Thus, we conclude Appellant’s claim fails to satisfy the “tied to a particular machine” prong of the Bilski machine-or-transformation test. MPEP § 2106.05(c) Particular Transformation. This section of the MPEP guides: “Another consideration when determining whether a claim recites significantly more is whether the claim Appeal 2017-011558 Application 12/394,458 21 effects a transformation or reduction of a particular article to a different state or thing.” “[T]ransformation and reduction of an article ‘to a different state or thing’ is the clue to patentability of a process claim that does not include particular machines.” Bilski, 561 U.S. at 658 (quoting Benson, 409 U.S. at 70). Claim 1 operates to select and analyze certain electronic data, i.e., consumer purchasing behavior and product information. The selection of electronic data is not a “transformation or reduction of an article into a different state or thing constituting patent-eligible subject matter[.]” See In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (emphasis added). See also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“The mere manipulation or reorganization of data . . . does not satisfy the transformation prong.”). Applying this guidance here, we conclude Appellant’s claim fails to satisfy the transformation prong of the Bilski machine-or-transformation test. MPEP § 2106.05(e) Other Meaningful Limitations. This section of the MPEP guides: Diamond v. Diehr provides an example of a claim that recited meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. 450 U.S. 175 (1981). In Diehr, the claim was directed to the use of the Arrhenius equation (an abstract idea or law of nature) in an automated process for operating a rubber-molding press. 450 U.S. at 177-78. The Court evaluated additional elements such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and Appeal 2017-011558 Application 12/394,458 22 automatically opening the press at the proper time, and found them to be meaningful because they sufficiently limited the use of the mathematical equation to the practical application of molding rubber products. 450 U.S. at 184. In contrast, the claims in Alice Corp. v. CLS Bank International did not meaningfully limit the abstract idea of mitigating settlement risk. 573 U.S. __ (2014). In particular, the Court concluded that the additional elements such as the data processing system and communications controllers recited in the system claims did not meaningfully limit the abstract idea because they merely linked the use of the abstract idea to a particular technological environment (i.e., “implementation via computers”) or were well-understood, routine, conventional activity. MPEP § 2106.05(e). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. Similarly as for Alice, we find that “[t]aking the claim elements separately, the function performed by the computer at each step of the process is ‘[p]urely conventional.’” Id. “In short, each step does no more than require a generic computer to perform generic computer functions.” Id. We agree with the Examiner’s conclusion (Ans. 5) that Appellant’s claim 1 does not add meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. MPEP § 2106.05(f) Mere Instructions To Apply An Exception. Appellant does not persuasively argue that claim 1 does any more than to merely invoke generic computer components merely as a tool in which the computer instructions apply the judicial exception. Appeal 2017-011558 Application 12/394,458 23 MPEP § 2106.05(g) Insignificant Extra-Solution Activity. The claim operates to provide to a user “links” to selected information. We find displaying information to be a classic example of insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at 963 (en banc), aff’d sub nom, Bilski v. Kappos, 561 U.S. 593 (2010). MPEP § 2106.05(h) Field of Use and Technological Environment. [T]he Supreme Court has stated that, even if a claim does not wholly pre-empt an abstract idea, it still will not be limited meaningfully if it contains only insignificant or token pre- or post-solution activity—such as identifying a relevant audience, a category of use, field of use, or technological environment. Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013). We find the “computer” and “server” limitations are simply a field of use that attempts to limit the abstract idea to a particular technological environment. We do not find Appellant’s argument to be persuasive because “[t]he courts have also identified examples in which a judicial exception has not been integrated into a practical application.” Revised Guidance, at 55. Claim 1 fails to recite a practical application where the additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use. Id. The mere application of an abstract idea in a particular field is not sufficient to integrate the judicial exception into a practical application. See id. at n. 32. Appeal 2017-011558 Application 12/394,458 24 In view of the foregoing, we conclude the claim is “directed to” a judicial exception. 3. Well-understood, routine, conventional. Because the claim recites a judicial exception and does not integrate that exception into a practical application, we must then reach the issue of whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field. Revised Guidance, at 56. Appellant describes the claimed computer system consistent with its being “well-understood, routine, [and] conventional”: Accordingly, those skilled in the art will appreciate that the processing device 20 may be embodied in any device having the ability to execute instructions such as, by way of example, a personal computer, mainframe computer, personal-digital assistant (“PDA”), cellular telephone, or the like. Spec. 4, ll. 7–10. We find such “well-understood, routine, [and] conventional” limitations fail to indicate the presence of an inventive concept. 4. Specified at a high level of generality. It is indicative of the absence of an inventive concept where the claims simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Revised Guidance, at 56. Appeal 2017-011558 Application 12/394,458 25 Appellant contends: “the programmatic structure that uses past purchasing histories of an e-commerce consumer to implicitly create a personalized reference collection for that particular e-commerce consumer.” Reply Br. 2. However, claim 1 fails to recite any specific steps of an algorithm to enable the claimed “programmatic structure,” nor does Appellant cite Specification disclosure for the required specificity. We find the “programmatic structure” limitation is specified at such a high level of generality consistent with the absence of an inventive concept. Therefore, we conclude that none of the claim limitations, viewed “both individually and as an ordered combination,” amount to significantly more than the judicial exception in order to sufficiently transform the nature of the claims into patent-eligible subject matter. See Alice, 573 U.S. at 217 (internal quotations omitted) (quoting Mayo, 566 U.S. at 79). In view of the foregoing, we sustain the rejection of claim 1 under 35 U.S.C. § 101. CLAIM 1: OBVIOUSNESS OVER SNODGRASS AND SWANSON. Placing a consumer into a consumer community. Claim 1 recites, inter alia: a non-transitory, computer readable media associated with the server computer having stored thereon instructions executable by the server computer, wherein the instructions place the consumer into at least one of the plurality of different consumer communities as a function of at least one product found in a prior purchasing history of the consumer, cause a client Appeal 2017-011558 Application 12/394,458 26 computer to display a webpage that includes the reference collection that is personalized for the consumer. Claim 1. Appellant admits Snodgrass discloses a system in which display lists are automatically generated for a consumer considering an email address or a shipping address. App. Br. 6. But Appellant contends Snodgrass does not teach or suggest placing a consumer into at least one of the plurality of different consumer communities as a function of at least one product found in a prior purchasing history of the consumer. Id. The Examiner finds Snodgrass discloses a “user profile” database wherein a merchant stores information about prior customers such as the names, shipping addresses, email addresses, payment information, and product interest activity histories of the customers. Ans. 11–12 (citing Snodgrass, col. 4, ll. 54–67). The Examiner finds Snodgrass further discloses associate-based communities which then may be used to provide targeted recommendations or other targeted content to members of the associate-based communities. Id. (citing Snodgrass, col. 5, ll. 47–57). The Examiner finds Snodgrass discloses the community recommendations service operates generally by tracking purchases of products and/or other customer activity within particular communities. Id. at 12. “Communities based upon related associates are used to gather information about customers with similar interests. These communities are referred to herein as ‘associate-based communities.’” Snodgrass, col. 5, ll. 44–46. The Examiner finds these disclosures teach the disputed limitation. Ans. 11. Appeal 2017-011558 Application 12/394,458 27 Appellant contends: “Snodgrass expressly describes that the ‘associate-based communities’ are only used to determine if two products should be treated as being related, e.g., to determine if products A and B may be treated as similar.” Reply Br. 4 (citing Snodgrass, col. 5, ll. 44–col. 6, l. 37) (underlining omitted). We disagree with Appellant’s characterization of Snodgrass. Snodgrass teaches that determining whether two products may be treated as similar is merely an example of what the communities can do: The following are examples of types of customer actions that may be included in addition to typical purchase histories. (1) Placing an item in a personal shopping cart. With this method, products A and B may be treated as similar if a large percentage of those who put A in an online shopping cart also put B in the shopping cart. Snodgrass, col. 5, ll. 55–61. Appellant’s mischaracterization of Snodgrass fails to persuade us the Examiner has erred. Appellant admits Swanson discloses providing links to on-line information, but contends Swanson fails to teach placing a consumer into a plurality of consumer communities based on past purchase history. App. Br. 6. We are not persuaded because, as discussed above, we find Snodgrass teaches that limitation. DECISION The rejection of Claim 1 under 35 U.S.C. § 101 is AFFIRMED. The rejection of Claim 1 under 35 U.S.C. § 103 is AFFIRMED. Appeal 2017-011558 Application 12/394,458 28 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. § 41.50(f). 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