Gregory M. Nations et al.

Patent Trials and Appeals Board

Sep 12, 2019

13339164 - (D) (P.T.A.B. Sep. 12, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/339,164 12/28/2011 Gregory M. Nations 201104116 8265
67260 7590 09/12/2019
TARGET BRANDS, INC.
1000 NICOLLET MALL, TPS-3165
MINNEAPOLIS, MN 55403
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/12/2019 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):
USPTO.MAIL@TARGET.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGORY M. NATIONS, CHAD R. GOURLEY,
SARAH JELLISON, SARAH PETERSON, and STEPHEN HOPF
__________

Appeal 2018-0066911
Application 13/339,1642
Technology Center 3600
____________

Before HUBERT C. LORIN, BEVERLY M. BUNTING, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4, 6–12, 17, 18, and 20, which are all the claims
pending in the Application, under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 Our Decision references Appellants’ Appeal Brief (“App. Br.,” filed Feb.
16, 2018) and Reply Brief (“Reply Br.,” filed June 14, 2018), the
Examiner’s Answer (“Ans.,” mailed May 10, 2018), and the Non-Final
Office Action (“Non-Final Act.,” mailed Nov. 24, 2017).
2 Appellants identify “Target Brands, Inc.” as the real party in interest. App.
Br. 3.
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THE INVENTION
“[T]he system/method relates to highlighting user reviews of
products, services and the like on a website by identifying reviews submitted
by a requesting user and displaying the user's review on a website in a
highlighted manner.” App. Br. 9. Independent claim 17, reproduced below
with revised formatting and added bracketed matter, is illustrative of the
subject matter on appeal.
17. A method using a client computer in communication with a web
server via a network, the method comprising:
[(a)] a web server communicating with a client device and providing
a retail website listing items for sale or review;
[(b)] the web server enabling a user to log in on the website with a
reviewer identification and request a list of reviews to be displayed on the
website;
[(c)] determining with the web server communicating with the client
computer whether a user who has requested that the list of reviews be
displayed is the same user who had previously submitted a review in the list
of reviews by:
[(i)] associating a unique identifier for the user with a
session identifier, the session identifier being a server-side
identifier that groups different requests to the web server as
coming from the client computer, the session identifier allowing
the web server to save state information including the unique
identifier for use with subsequent requests during a same
session,
[(ii)] communicating identification information of
reviewers on the list of reviews to a persona server, the persona
server storing persona records for all users including persona
identification, and
[(iii)] the web server comparing the reviewer
identification with persona identifications of the reviewed on
the list of reviews; and
[(d)] in response to the user requesting that the list of reviews be
displayed on the website, and based on the outcome of the determining step,
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serving with the web server over the communication network instructions to
the client computer to concurrently display on the website the review
received from the user and at least one additional review received from
another person so as to visually highlight and distinguish the review received
from the user relative to the at least one additional review, and the web
server processing code in a web application to define the concurrent display
on the website with a link for the user to add a review removed from the
website.

ANALYSIS
The Examiner rejected claims 1, 2, 4, 6–12, 17, 18, and 20 under 35
U.S.C. § 101 as being directed to a judicial exception without significantly
more. Non-Final Act. 5. Appellants argue independent claims 1, 9, and 17
together as a group. App. Br. 9–12. We select independent claim 17 as
representative for the group. Thus, claims 1 and 9 stand or fall with claim
17. See 37 C.F.R. § 41.37(c)(1)(iv).
Principals of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
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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, 130 S.Ct. 3218 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
USPTO § 101 Guidance
The USPTO recently published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under Step 2A, Prong One of
the Guidance, we determine if the claim recites a judicial exception,
including particular groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity, or mental processes). Id. at
52–53. If so, we then analyze the claim to determine whether the recited
judicial exception is integrated into a practical application of that exception
under Step 2A, Prong Two of the Guidance. Id. at 53–55; MPEP
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§§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018). Only if the
claim fails to integrate the exception and thus is “directed to” the judicial
exception, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not well-understood, routine, and
conventional activity in the field or whether the claim simply appends well-
understood, routine, and conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 56.
Alice Step 1
Does claim 17 recite a judicial exception?
Under the first step of the Alice inquiry, the Examiner determined the
claims “are directed to the abstract idea of organizing and displaying reviews
from users.” Non-Final Act. 5. According to the Examiner:
Organizing and displaying information is a method of
organizing human activity and/or fundamental economic
practice (American Needle, Inc. v. Zazzle Inc., No. 2016-1550,
2016 WL 6647774 (mem) (Fed. Cir. Nov. 10, 2016) (affirming
district court holding that "providing a visual aide to purchasing
over the internet" is an abstract idea) and gathering and
combining data by reciting steps of organizing information
similar to generating a second menu from a first menu and
transmitting the second menu to a wireless handled computing
device or webpage (Ameranth) except instead of generating and
transmitting a menu, a display on a website is generated
displaying review(s) collected in the previous steps.
Id. at 6.
Appellants argue:
The claim addresses a business challenge that is particular to
the Internet (displaying user reviews on a website and
preventing users from submitting multiple user reviews on the
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website). The claimed invention differs from other claims found
by the courts to recite abstract ideas in that it does not “merely
recite the performance of some business practice known from
the pre-Internet world along with the requirement to perform it
on the Internet. Instead, the claimed solution is necessarily
rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.”
Appellants submit that no idea similar to those previously found
by the courts to be abstract is identifiable in the claim.
App. Br. 9. We are not persuaded by Appellants’ arguments.
Claim 17 recites (a) “providing a . . . listing [of] items for sale or
review;” (b) “request[ing] a list of reviews to be displayed;” (c)
“determining . . . whether a user who has requested that the list of reviews be
displayed is the same user who had previously submitted a review in the list
of reviews by . . . comparing the reviewer identification with identifications
of the reviewed on the list of reviews; and” (d) “in response to the user
requesting that the list of reviews be displayed . . . and based on the outcome
of the determining step . . . concurrently display[ing] . . . the review received
from the user and at least one additional review received from another
person so as to visually highlight and distinguish the review received from
the user relative to the at least one additional review.” See Claim 17 supra.
Under the broadest reasonable interpretation, the aforementioned steps
describe a process of customizing the display of reviews for an item offered
for sale based on information known about the user (i.e., whether the user
has already submitted a review for that item). Essentially, claim 17 provides
a method for highlighting a user’s review for display if the user already
submitted a review of the item. “Highlighting a review can include making
the review appear differently than other displayed reviews by, for example,
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using a different background color for the review, using a different font size
for the review, or using bold text for the review.” App. Br. 10. Tailoring
the display of reviews (content) for an item advertised for sale is a type of
advertising, marketing, or sales activity or behavior that falls within the
Guidance’s (b) Certain methods of organizing human activity grouping.
Guidance, 84 Fed. Reg. at 52.
Contrary to Appellants’ contention, courts have found similar
concepts abstract. For example, in Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015), the patentee claimed a
system for providing web pages tailored to an individual user, comprising an
interactive interface having a display that depicts customized content based
on (1) information known about the user and (2) navigation data. 792 F.3d.
at 1369. The Federal Circuit determined that both types of customization
were abstract ideas. The court described the first type of customization
(tailoring content based on user information) as similar to how “newspaper
inserts had often been tailored based on information known about the
customer--for example, a newspaper might advertise based on the customer's
location,” and the second type of customization (tailoring information based
on the time of day the website was visited) as similar to how “a television
channel might choose to present a commercial for children's toys during
early morning cartoon programs but beer during an evening sporting event.”
792 F.3d. at 1369–70.
Moreover, the following decisions from our reviewing court have
found similar concepts patent ineligible: American Needle, 2016 WL
6647774 (mem.) (affirming the district court’s holding that “providing a
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visual aide to purchasing over the internet” is an abstract idea); Cyberfone
Sys., LLC v. CNN Interactive Grp., 558 Fed. Appx. 988 (Fed. Cir. 2014)
(affirming the district court’s holding that using categories to organize, store,
and transmit information is well-established and the idea of collecting
information and then separating and transmitting that information according
to its classification is patent ineligible); Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343 (Fed.
Cir. 2014) (cert. denied, 136 S. Ct. 119 (2015) (data collection, recognition,
and storage is undisputedly well-known and collecting data, recognizing
certain data within the collected data set, and storing that recognized data in
a memory is patent ineligible); Concaten, Inc. AmeriTrak Fleet Solutions,
LLC, 2016 WL 5899749 (Fed. Cir. 2016) (mem.) (cert. denied), 2017 WL
1001313 (2017) (receiving, processing, and transmitting data is patent
ineligible); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016) (holding that collecting information, analyzing it, and displaying
certain results of the collection and analysis is patent ineligible). Under our
precedent, Appellants’ method of tailoring (highlighting) the display of
reviews for an item of sale based on known user information is an abstract
idea.
For all the above reasons, claim 17 recites a judicial exception under
the Guidance’s groupings of abstract ideas.

Is claim 17 “directed to” the recited judicial exception?
We next determine whether the recited judicial exception is integrated
into a practical application. Guidance, 84 Fed. Reg. at 51. The claim may
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integrate the judicial exception when, for example, it reflects an
improvement to technology or a technical field. Id. at 55. When a claim
recites a judicial exception and fails to integrate the exception into a
practical application, the claim is “directed to” the judicial exception. Id. at
51.
In Enfish, the Federal Circuit noted “[s]oftware can make non-abstract
improvements to computer technology just as hardware improvements
can[.]” Enfish, 822 F.3d at 1335. The court asked “whether the focus of the
claims is on [a] specific asserted improvement in computer capabilities . . .
or, instead, on a process that qualifies as an ‘abstract idea’ for which
computers are invoked merely as a tool.” Id. at 1335–36. There, the “plain
focus of the claims” was on an improvement to computer functionality itself,
a self-referential table for a computer database designed to improve the way
a computer carries out its basic functions of storing and retrieving data. Id.
And, the court in McRO3 asked whether the claims as a whole “focus on a
specific means or method that improves the relevant technology” or are
“directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery.” 837 F.3d at 1314.
We determine that claim 17 as a whole is focused on a result; that is,
“determin[ing] that a user who has requested that a list of reviews be
displayed is the same user who had previously submitted a review found in
the list of reviews.” Spec., Abstract; Original Claim 1. There is a
fundamental difference between computer functionality improvements, on
the one hand, and uses of existing computers as tools to perform a particular

3 McRO, Inc. v. Bandai Namco Games Am., 837 F.3d 1299 (Fed. Cir. 2016).
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task, on the other. We find no parallel between claim 17 and the claims in
Enfish, nor any comparable aspect in claim 17 that represents an
improvement to computer functionality. Unlike Enfish, claim 17 is not
focused on an improvement to computer capabilities or functionality (i.e., an
improved web server). Cf. In re TLI Commc’ns LLC Patent Litig., 823 F.3d
607, 613 (Fed. Cir. 2016) (The claims’ focus “was not on an improved
telephone unit or an improved server.”). Appellants’ assertion that “[t]he
claim addresses a business challenge that is particular to the Internet
(displaying user reviews on a website and preventing users from submitting
multiple user reviews on the website)” is admittedly not focused on a
specific means or process that improves computer technology, but rather, on
improving the integrity of reviews as part of advertising an item for sale, for
which a computer is used as a tool in its ordinary capacity. Regardless of
where reviews for an item are provided (on the web, in printed publications,
on radio/tv, on bulletin boards, etc.) by customers, to maintain the integrity
of reviews and help generate consumer confidence and sales, each seller
would limit each user to a single review for the item. The advance over the
prior art here lies in helping retailers generate sales by maintaining the
integrity of consumer product reviews, which is an improvement in
managing a marketing technique because consumers often rely on reviews
before making a purchase decision, instead of an improvement in computer
technology. In other words, the claimed invention compares a current user
identification against a roster of users that have previously left reviews, to
determine if the current user appears on that roster and previously submitted
a review. We agree with the Examiner that using collected data for
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comparing the current reviewer identification with identifications of the
previous reviewers on the list of reviews is unlike the technology-based
integration in McRO, which focused on a specific asserted improvement in
computer animation. Ans. 5.
Appellants argue that “none of the features in the independent claims
is per se abstract; rather, the features relate to physical, concrete actions
performed by the processor to achieve the intended objectives of the
invention.” App. Br. 10. This argument is unpersuasive of Examiner error
at least because “not every claim that recites concrete, tangible components
escapes the reach of the abstract-idea inquiry.” In re TLI Commc’ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016). Although claim 17 recites
physical components (e.g., client computer, web server), the focus of
claim 17 is not on the improvement of any technology or technical field, but
rather on a result that is the abstract idea. The recited computer in
communication with a web server via a network merely provides the generic
environment in which to implement the abstract idea.
As such, we agree with the Examiner that claim 1 is directed to a
judicial exception.
Alice Step 2
“Well-understood, routine, conventional activities?”
To determine whether a claim provides an inventive concept, the
additional elements are considered—individually and in combination—to
determine whether they (1) add a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field or
(2) simply append well-understood, routine, conventional activities
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previously known to the industry, specified at a high level of generality, to
the judicial exception. Guidance, 84 Fed. Reg. at 56.
Appellants argue: “Like the present application, DDR Holdings4
related to an inventive concept for resolving an Internet-centric problem.”
App. Br. 11; Reply Br. 2. “Appellants submit, however, that displaying
reviews on an Internet website as claimed is indeed unique to the Internet.”
Id. at 12.
We disagree that the mere “displaying [of] reviews on an Internet
website” is rooted in computer technology. In fact, the court in DDR
Holdings cautioned “that not all claims purporting to address Internet-
centric challenges are eligible for patent.” DDR Holdings, 773 F.3d at
1258. For example, the court distinguished the patent-eligible claims at
issue from claims held patent-ineligible in Ultramercial. See id. at 1258–
59 (citing Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir.
2014)). As noted there, the Ultramercial claims were “‘directed to a
specific method of advertising and content distribution that was
previously unknown and never employed on the Internet before.’” Id. at
1258 (quoting Ultramercial, 772 F.3d at 714). Nevertheless, those
claims were patent ineligible because they “merely recite[d] the abstract
idea of ‘offering media content in exchange for viewing an advertisement,’
along with ‘routine additional steps such as updating an activity log,
requiring a request from the consumer to view the ad, restrictions on public
access, and use of the Internet.’” Id. (citation omitted).

4 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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To qualify as an inventive concept, the implementation of the abstract
idea must involve “more than performance of ‘well-understood, routine,
[and] conventional activities previously known to the industry.’” Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d
1343, 1347–48 (Fed. Cir. 2014) (alteration in original) (quoting Alice, 134
S. Ct. at 2359). We agree with the Examiner that all of the steps performed
are well-understood, routine, conventional activities previously known to the
industry. Ans. 4–5. For example, a web server communicating with a client
computer and displaying a retail website listing or enabling a user to log in
on the website are conventional activities performed on a web browser. See
Spec. ¶ 48. The determining step is simply a known information gathering
and comparison operation for identifying a current user amongst a list of
previous users, and thus adds little to patentably transform the abstract idea.
Providing a web server and client computer that modify the display of
information by highlighting and moving links are also well-known
conventional practices performed by web-based software systems. See Spec.
¶ 46 (“Those skilled in the art will also appreciate that embodiments can also
be applied within computer systems wherein tasks are performed by remote
processing devices that are linked through a communications network (e.g.,
communication utilizing Internet or web-based software systems”)).
We are not apprised of any claimed element for accomplishing the
claimed solution that is other than what was generically known for
performing those conventional functions. We do not see, and Appellants do
not adequately explain, what particular assertedly inventive technology for
performing the recited functions is required for achieving the claimed result.
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See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1057 (Fed.
Cir. 2017) (“[T]he claims do not provide details as to any non-conventional
software for enhancing the financing process.”); see Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (“Our
law demands more” than claim language that “provides only a result-
oriented solution, with insufficient detail for how a computer accomplishes
it.”); Elec. Power Grp., 830 F.3d 1350, 1354 (explaining that claims are
directed to an abstract idea where they do not recite “any particular
assertedly inventive technology for performing [conventional] functions”).
Despite Appellants’ assertions that the claim steps add enough to make the
claims patentable, we find the bare recitation of the steps performed in a
generic computing environment at a high level of generality is insufficient to
supply an inventive concept. The recited claim limitations, both individually
and as an ordered combination, fail to transform the nature of the claims into
a patent-eligible application.
For the foregoing reasons, we sustain the rejection of claim 17 as
covering subject matter that is judicially-excepted from patent eligibility
under § 101, including claims 1 and 9, which fall with claim 17. We also
sustain the rejection of dependent claims 2, 4, 6–8, 10–12, 18, and 20, which
are not argued separately.

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DECISION
The Examiner’s rejection under 35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED