Guenter Wiesinger

Patent Trials and Appeals Board

Dec 18, 2019

14064574 - (D) (P.T.A.B. Dec. 18, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/064,574 10/28/2013 Guenter Wiesinger IP-P618US2/EBAY.281169 1992
150601 7590 12/18/2019
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
EXAMINER
DESAI, RESHA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
12/18/2019 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
docketing.shb@clarivate.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GUENTER WIESINGER
____________

Appeal 2018-008858
Application 14/064,574
Technology Center 3600
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and
MARC S. HOFF, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1–6, 8–16, and 18–20. Claims 7 and 17 are canceled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). According to Appellant, the real party in interest is eBay,
Inc. See Appeal Br. 3.

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STATEMENT OF THE CASE
Introduction
Embodiments of Appellant’s invention relate to “a system to list items
in an electronic publishing and/or sales system.” Spec. ¶ 2.

Rejections
A. Claims 1–6, 8–16, and 18–20 are rejected on the ground of nonstatutory
obviousness-type double patenting (OTDP) as being unpatentable over
claims 1–16 of U.S. Patent No. 8,577,755 B2. Final Act. 5.
B. Claims 1–6, 8–16, and 18–20 are rejected under 35 U.S.C. § 101, as
being directed to a judicial exception, without significantly more. Final
Act. 6.
Issues on Appeal
Did the Examiner err in rejecting claims 1–6, 8–16, and 18–20 on the
ground of non-statutory OTDP as being unpatentable over claims 1–16 of
U.S. Patent No. 8,577,755 B2?
Did the Examiner err in rejecting claims 1–6, 8–16, and 18–20 under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
ANALYSIS
We reproduce infra independent claim 1 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. To the
extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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Rejection A under
Non-Statutory Obviousness Type Double-Patenting (OTDP)

Appellant advances no arguments regarding claims 1–6, 8–16, and
18–20, as rejected by the Examiner under non-statutory OTDP Rejection A.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, we pro forma sustain the Examiner’s Rejection A of claims
1–6, 8–16, and 18–20 on the ground of non-statutory OTDP.

Rejection B under 35 U.S.C. § 101 and 2019 Revised Guidance

Principles of Law — 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 Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (quoting 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
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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; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding of 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 that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
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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. (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.
Subject Matter Eligibility — 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This
new guidance is applied in this Opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people);2 and

2 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter
“Step 2A, Prong One”).
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(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).3, 4
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.5
See 2019 Revised Guidance, 84 Fed. Reg. at 56.

3 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter
“Step 2A, Prong Two”).
4 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
5 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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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
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 Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, “[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
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
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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 merely include 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(f);
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 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
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2019 Revised Guidance, Step 2A, Prong One6
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
The Examiner concludes that all claims 1–6, 8–16, and 18–20 recite
an abstract idea:
The concept of “using one or more keywords to suggest
information” is considered an idea [of] itself because it is a
concept relating to organizing information that can be
performed mentally. Several cases have found concepts relating
to processes of organizing information that can be performed
mentally abstract, such as using categories to organize, store
and transmit information (Cyberfone), data recognition and
storage (Content Extraction), and organizing information
through mathematical correlations (Digitech).
See Final Act. 7.7
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We also identify in bold
the additional (non-abstract) claim limitations that are generic computer
components:

6 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).

7 The Examiner cites to: Cyberfone Sys., LLC v. CNN Interactive Grp., Inc.,
558 F. App’x 988 (Fed. Cir. 2014) (nonprecedential); Content Extraction
and Transmission LLC v. Wells Fargo et al., 776 F.3d 1343 (Fed. Cir.
2014); Digitech Image Technologies, LLC v. Electronics for Imaging, Inc.,
758 F.3d 1344 (Fed. Cir. 2014).
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TABLE ONE
Independent Claim 1 2019 Revised Guidance
[a] A method comprising: A method falls under the statutory
subject matter class of a process.
See 35 U.S.C. § 101 (“Whoever
invents or discovers any new and
useful process, machine,
manufacture, or composition of
matter, or any new and useful
improvement thereof, may obtain a
patent therefor, subject to the
conditions and requirements of this
title.”).

[b] receiving one or more
search keywords
corresponding to an item to
be published in an item
listing on a network-based
publication system, the one
or more search keywords
being received from an
interface presented in a web
browser;
Receiving one or more search
keywords corresponding to an item
to be published in an item listing is
insignificant extra-solution activity
(data gathering). 2019 Revised
Guidance, 55 n.31; see also MPEP
§ 2106.05(g).

The network-based publication
system is an additional non-abstract
limitation.
[c] searching a database,
using a hardware processor
of a machine, for matching
information that corresponds
to the one or more search
keywords, the database
storing a plurality of item
information portions that are
each referenced by one or
more keywords, each item
information portion being one
Abstract idea: Searching for
matching information that
corresponds to the one or more
search keywords could be performed
alternatively as a mental process.
See 2019 Revised Guidance 52.
Storing a plurality of item
information portions that are each
referenced by one or more keywords
is insignificant extra-solution activity
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Independent Claim 1 2019 Revised Guidance
of a plurality of different
types of item information
corresponding to different
item listing elements;

(data gathering). 2019 Revised
Guidance, 55 n.31; see also MPEP
§ 2106.05(g).
The database and the “hardware
processor of a machine” are
additional non-abstract limitations.
[d] retrieving, from the
database, the matching
information that is referenced
by one or more keywords
corresponding to the one or
more search keywords;

Retrieving, from the database, the
matching information that is
referenced by one or more keywords
corresponding to the one or more
search keywords is insignificant
extra-solution activity (data
gathering). 2019 Revised Guidance,
55 n.31; see also MPEP
§ 2106.05(g).
The database is an additional non-
abstract limitation.
[e] providing the matching
information as suggested item
information for one or more
elements of the item listing
being generated for
publication on the network-
based publication system;
Providing the matching information
as suggested item information for
one or more elements of the item
listing is insignificant extra-solution
activity. 2019 Revised Guidance, 55
n.31; see also MPEP § 2106.05(g).
The network-based publication
system is an additional non-abstract
limitation.
[f] receiving a modification to
the suggested item
information in a first element
of the item listing; and
Receiving a modification to the
suggested item information in a first
element of the item listing is
insignificant extra-solution activity
(i.e., data gathering). 2019 Revised
Guidance, 55 n.31; see also MPEP
§ 2106.05(g).

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Independent Claim 1 2019 Revised Guidance
[g] automatically8 updating
the database by adding the
modified suggested item
information to the database
or revising the matching item
information in the database
in response to receiving the
modified suggested item
information.
Abstract idea: adding the modified
suggested item information to the
database or revising the matching
item information in the database
could be performed alternatively as a
mental process. See 2019 Revised
Guidance 52.

The database is an additional non-
abstract limitation.

Abstract Idea — Mental Processes
After considering representative method claim 1 as a whole, we
conclude that the recited italicized steps shown in Table One could also be
performed alternatively as mental processes.9 See 2019 Revised Guidance,

8 See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir.
2019) (The “‘mere automation of manual processes using generic
computers’ . . . ‘does not constitute a patentable improvement in computer
technology.’”) quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1055 (Fed. Cir. 2017).

9 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011); “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.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs., Inc. v.
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84 Fed. Reg. at 52. See also “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.’).” 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14.
“An abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). Merely combining several abstract ideas does not render the
combination any less abstract. See RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to
another abstract idea . . . does not render the claim non-abstract.”);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
For at least these reasons, we conclude claim 1 recites the specific
types of abstract ideas identified above in Table One.

Additional Limitations
As emphasized in bold in Table One, supra, we note the additional
non-abstract limitations, for example (claim 1):
[b] a network-based publication system
[c] a database, [and] a hardware processor of a machine

Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).

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We further note the supporting exemplary descriptions of generic
computer components in the Specification, for example:
Figure 1 illustrates an example system diagram that may
be used, in accordance with some example embodiments.
System 100 may include a network and may be implemented
using client-server architecture. A commerce platform, in
the example form of a network-based marketplace 150, may
provide server-side functionality, via network 110 ( e.g., the
Internet) to one or more clients. Figure 1 illustrates, for
example, a web client 105 (e.g., a browser, such as the Internet
Explorer® browser developed by Microsoft® Corporation of
Redmond, Washington), and a programmatic client 110
executing on respective client machines 115 and 120.
Spec. ¶ 19 (emphasis omitted).

The network-based marketplace 150 may include an
application program interface (API) server 155 and a web
server 160. The concept of API is known to one skilled in the
art. The API server 155 and the web server 160 may be coupled
to one or more application servers 165. The API server 155 and
the web server 160 may provide programmatic and web
interfaces to the one or more application servers 165. The
application servers 165 may host one or more marketplace
applications 170 and one or more payment applications 175.
The application servers 165 may be coupled to one or more
database servers 180 that facilitate access to information stored
in one or more databases 185.
Spec. ¶ 20.
We emphasize that McRO, Inc. v. Bandai Namco Games Am. Inc.,
(837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra Table One.
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Because we conclude all claims 1–6, 8–16, and 18–20 on appeal recite an
abstract idea, as identified above, under Step 2A, Prong One, we proceed to
Step 2A, Prong Two.

2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Revised Guidance, we consider whether there
are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Revised Guidance, 84 Fed.
Reg. at 54–55.
MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

Appellant argues the claimed invention provides an improvement to
computer functionality:
Based on the Federal Circuit’s decision in McRO, a claim can
be found to be directed to an improvement in computer-related
technology when indicated by “a particular solution to a
problem or a particular way to achieve a desired outcome
defined by the claimed invention, as opposed to merely
claiming the idea of a solution or outcome.”
In the present application, the claims recite a particular
way to facilitate the generation of item listings on a network-
based publication system. In particular, the claims recite
features in which a database stores “a plurality of item
information portions that are each referenced by one or more
keywords, each item information portion being one of a
plurality of different types of item information corresponding to
different item listing elements.” By storing item information
portions that are referenced by keywords, the database can be
searched to identify matching information that can be used to
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populate elements of an item listing being generated with
suggested item information. Additionally, the claims recite
features for updating the database to further improve the item
listing generation process. In particular, when a modification to
suggested item information in a first element of an item listing
is received, the database is automatically updated “by adding
the modified suggested item information to the database or
revising the matching item information in the database in
response to receiving the modified suggested item
information.” The claims do not merely recite the idea of a
solution or outcome. Instead, the claims recite a particular way
to improve the process of generating item listings for a
network-based publication system. As such, the claims are
directed to an improvement in computer-related technology
that demonstrates the claims are not directed to an abstract idea.
Appeal Br. 17–18 (emphasis added).
McRO
For the reasons discussed below, we find Appellant’s reliance on
McRO is misplaced.
The patent at issue in McRO describes that prior character animation
and lip synchronization were accomplished by human animators, with the
assistance of a computer, which involved the use of a so-called “keyframe”
approach in which animators set appropriate parameters, i.e., morph weights,
at certain important times, i.e., in order to produce accurate and realistic lip
synchronization and facial expressions. McRO, 837 F.3d at 1305.
Animators knew what phoneme a character pronounced at a given time from
a time-aligned phonetic transcription (a “‘timed transcript’”). Id.
For example, McRO’s ’576 patent (U.S. Patent No. 6,307,576)
describes 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
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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 (alteration in original)) 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 process specifically
designed to achieve an improved technological result.” Id. at 1316.
In accordance with the prior technique, animators, using a computer,
thus, manually determined the appropriate morph weight sets for each
keyframe based on the phoneme timings in the timed transcript. McRO, 837
F.3d at 1316. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167
(Fed. Cir. 2018) (distinguishing McRO):
The claims in McRO were directed to the creation of something
physical—namely, the display of “lip synchronization and
facial expressions” of animated characters on screens for
viewing by human eyes. Id. at 1313. The claimed improvement
was to how the physical display operated (to produce better
quality images), unlike (what is present here) a claimed
improvement in a mathematical technique with no improved
display mechanism. The claims in McRO thus were not abstract
in the sense that is dispositive here. And those claims also
avoided being “abstract” in another sense reflected repeatedly
in our cases (based on a contrast not with “physical” but with
“concrete”): they had the specificity required to transform a
claim from one claiming only a result to one claiming a way of
achieving it.
SAP, 898 F.3d at 1167 (emphasis added).
In contrast to the claimed invention in McRO that improved how a
physical display operated to produce better quality images (see SAP, 898
F.3d at 1167), merely “[g] automatically updating the database by adding the
modified suggested item information to the database or revising the
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matching item information in the database in response to receiving the
modified suggested item information” does not improve the recited
“database” or “hardware processor of a machine.” See 2019 Revised
Guidance, 84 Fed. Reg. at 52. We note “a claim for a new abstract idea is
still an abstract idea.” Synopsys, 839 F.3d at 1151.
Thus, Appellant claims on appeal do not improve the operation of a
physical display, as was the case in McRO, nor the operation of any other
computer component, such as the “hardware processor of a machine” or
“database,” as recited in independent claim 1. See SAP, 898 F.3d at 1167.
Moreover, we conclude Appellant’s generic “hardware processor of a
machine” in claim 1 performs steps that can be performed alternatively as
mental processes, as discussed above.
Appellant additionally argues in the Reply Brief:
As in DDR, Appellant’s claimed invention can solve
business problems related to facilitating online transactions,
particularly for item listings published by network-based
publication systems. For instance, the claimed invention can
solve such business problems by facilitating listing items on a
network-based publication system. However, also like in DDR,
the claimed invention is directed to a solution to a problem that
is necessarily rooted in computer technology as aspects of the
claimed invention are tied to databases for a network-based
publication system.
Reply Br. 3.
DDR Holdings
We do not agree with Appellant that this is a case involving eligible
subject matter, as was the case in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). See Appeal Br. 23.
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In DDR, instead of a computer network operating in its normal,
expected manner by sending a website visitor to a third-party website via a
clicked advertisement, the claimed invention generated and directed the
visitor to a hybrid page that presented: (1) product information from the
third party, and (2) the visual “look and feel” elements from the host
website, thus retaining the visitor at the original website. DDR, 773 F.3d at
1258–59. Given this particular Internet-based solution, the court held that
the claimed invention did not merely use the Internet to perform a business
practice known from the pre-Internet world, but rather was necessarily
rooted in computer technology to overcome a problem specifically arising in
computer networks. Id. at 1257.
That is not the case here. Although Appellant’s claimed invention
results in the last recited step of “[g] automatically updating the database by
adding the modified suggested item information to the database or revising
the matching item information in the database in response to receiving the
modified suggested item information,” this step does not improve the recited
“hardware processor of a machine” or “database.” As noted above, an
improved abstract idea is still an abstract idea. See Mayo, 566 U.S. at 90
(holding that a novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent-ineligible). Therefore, it is our view that Appellant’s
claimed invention is not rooted in computer technology in the sense
contemplated by DDR, in which the claimed invention solved a challenge
particular to the Internet.
As set forth in MPEP § 2106.05(a):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
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regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a
computer to the performance of the method. Merely adding
generic computer components to perform the method is
not sufficient. Thus, the claim must include more than mere
instructions to perform the method on a generic component or
machinery to qualify as an improvement to an existing
technology.
(Emphasis added).
Here, Appellant has not provided sufficient details regarding how the
recited “hardware processor of a machine” and/or “database” (claim 1)
include more than mere instructions to perform the recited steps to qualify as
an improvement to an existing technology. As discussed above, we
conclude Appellant’s generic computer implementation performs steps or
functions that can be performed alternatively as mental processes. See
independent claim 1. Regarding the last “automatically” performed step “g”
of claim 1, see Trading Techs. Int’l, 921 F.3d at 1384 (The “‘mere
automation of manual processes using generic computers’ . . . ‘does not
constitute a patentable improvement in computer technology’”), quoting
Credit Acceptance Corp., 859 F.3d at 1055.
Accordingly, on this record, we conclude independent claims 1, 11,
and 20 do not recite an improvement to the functionality of a computer or
other technology or technical field. See MPEP § 2106.05(a).

MPEP §§ 2106.05(b) and (c)
The Bilski Machine-or-Transformation test (“MoT”)

We note the Supreme Court cautions that the MoT test is not the sole
test, but may provide a useful clue:
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This Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under § 101. The machine-or-
transformation test is not the sole test for deciding whether an
invention is a patent-eligible “process.”

Bilski, 561 U.S. at 604 (emphasis added).
Here, Appellant advances no arguments that any of method claims
1–6 and 8–10 are tied to a particular machine, or transform an article to a
different state or thing. See MPEP § 2106.05(c).

MPEP § 2106.05(e) — Meaningful Claim Limitations10
The Examiner finds the claims recite:
a network-based publication system, an interface presented in a
web browser, a database and a plurality of modules, which do
not add meaningful limitations to the concept of “using one or
more keywords to suggest information” beyond generally
linking the abstract idea to a particular technological
environment, that is, implementation via computers.
Final Act. 8 (emphasis added).
Appellant does not advance further substantive, persuasive arguments
as to any particular “meaningful” claim limitations, such as those of the
types addressed under MPEP § 2106.05(e), that impose meaningful limits on
the judicial exception.

10 See 2019 Revised Guidance, 84 Fed. Reg. 55, citing MPEP § 2106.05(e):
“[A]pply[ing] or us[ing] 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.” (emphasis added).

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As discussed above, we conclude the recited italicized steps shown in
Table One could also be performed alternatively as a mental process. See
2019 Revised Guidance, 84 Fed. Reg. at 52. As discussed above, we see
nothing in Appellant’s claims that specifically improves the efficiency of the
database or the “hardware processor of a machine” (claim 1), or another
technology or technical field, as addressed above under MPEP § 2106.05(a).
Accordingly, on this record, we conclude representative independent
claim 1 has no other argued meaningful limitations, as considered under
section 2106.05(e) of the MPEP, pursuant to the 2019 Revised Guidance.

MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
Merely using a computer as a tool
to perform an abstract idea

We conclude Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components,
as depicted in bold type in Table One, and as supported in our reproduction
of the Specification, paragraphs 19 and 20, supra. Thus, we conclude
Appellant’s claims merely use a computer/processor as a tool to perform an
abstract idea.

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MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception

As mapped in the right column of Table One, supra, we conclude that
representative independent claim 1 recites extra or post-solution activities
that courts have determined to be insufficient to transform judicially
excepted subject matter into a patent-eligible application. See MPEP
§ 2106.05(g); 84 Fed. Reg. at 55 n.31.

MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski, 561 U.S. at 611–12, (quoting
Diehr, 450 U.S. at 191–92).
Appellant advances no lack of preemption argument in the Appeal
Brief or Reply Brief. Nor do claims 1–6, 8–16, and 18–20 on appeal present
any other issues as set forth in the 2019 Revised Guidance regarding a
determination of whether the additional generic elements integrate the
judicial exception into a practical application. See 2019 Revised Guidance,
84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–6, 8–16, and 18–20 do not integrate the
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judicial exception into a practical application. Therefore, we proceed to
Step 2B, The Inventive Concept.
The Inventive Concept – Step 2B
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
We note that Berkheimer was decided by the Federal Circuit on
February 8, 2018. On April 19, 2018, the PTO issued the Memorandum
titled: “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” (hereinafter “Berkheimer Memorandum”).11 The Berkheimer
Memorandum provided specific requirements for an Examiner to support
with evidence any finding that claim elements (or a combination of elements)
are well-understood, routine, or conventional.
Under Step 2B, the Examiner finds, inter alia:
The claims do not include additional elements taken
alone or as an ordered combination that are sufficient to amount
to significantly more than the judicial exception. In the case of

11 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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independent claims 1, 11 and 20, the claimed processor as
recited is a generic computer component that performs the that
are well-understood, routine, and conventional activity of
automating the mental task of “using one or more keywords to
suggest information” (See Benson, 409 U.S. at 65-67; Bancorp,
687 F.3d at 1275; CyberSource, 654 F.3d at 1375).
Final Act. 7–8; See also Ans. 5 (emphasis added).
In the Appeal Brief, filed May 18, 2018, Appellant timely argues
Berkheimer as an intervening case authority:
Each of Appellant’s claims recites a combination of
elements that is not well-understood, routine, and conventional.
As discussed above, the claims recite features in which a
database stores information portions from item listings with the
information portions being references by keywords. This is in
contrast to conventional databases for searching network-based
publications systems in which whole item listings are
associated with keywords. The claims also recites features
allowing users to update the database when a modification to
suggested item information in a first element of an item listing
being generated is received. This is in contrast to conventional
search systems for network-based publication systems that do
not allow a user to modify information in an existing item
listing. Accordingly, the claims recite a combination of
elements that is not well-understood, routine, and conventional.
Moreover, the Examiner has failed to demonstrate them as such
as required by the USPTO guidance.
Appeal Br. 22 (emphasis added).
However, we find unavailing the Appellant’s argument that “the
Examiner has failed to demonstrate them as such as required by the USPTO
guidance” (Appeal Br. 22), because the Examiner did provide Berkheimer
evidence of type 2 in the Final Action (7–8), i.e.,: “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).”
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Berkheimer Memorandum, p. 4. As noted above, the Examiner found in the
Final Action:
In the case of independent claims 1, 11 and 20, the claimed
processor as recited is a generic computer component that
performs the that are well-understood, routine, and
conventional activity of automating the mental task of “using
one or more keywords to suggest information” (See Benson,
409 U.S. at 65-67; Bancorp, 687 F.3d at 1275; CyberSource,
654 F.3d at 1375).
Final Act. 7–8.
However, the Appellant fails to rebut or otherwise traverse the
Examiner’s Berkheimer findings regarding “Benson, 409 U.S. at 65-67;
Bancorp, 687 F.3d at 1275; [and] CyberSource, 654 F.3d at 1375,” in the
Appeal Brief or the Reply Brief. Final Act. 8. Arguments not made are
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Further, regarding the use of the recited generic computer components
identified above in Table One, the Supreme Court has held “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. Our reviewing
court provides additional guidance: See FairWarning, 839 F.3d at 1096
(“[T]he use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”); OIP Techs, 788 F.3d at 1363 (claims reciting, inter
alia, sending messages over a network, gathering statistics, using a
computerized system to automatically determine an estimated outcome, and
presenting offers to potential customers found to merely recite “‘well-
understood, routine conventional activit[ies],’ either by requiring
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conventional computer activities or routine data-gathering steps” (alteration
in original)).
This reasoning is applicable here. Therefore, on the record before us,
Appellant has not shown that the claims on appeal add a specific limitation
beyond the judicial exception that is not well-understood, routine, and
conventional, when the claim limitations are considered both individually
and as an ordered combination. See MPEP § 2106.05(d).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellant’s claims 1–6, 8–16, and 18–20 considered
as a whole, is directed to a patent-ineligible abstract idea that is not
integrated into a practical application, and does not include an inventive
concept.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s Rejection B under 35 U.S.C. § 101 of claims 1–6, 8–16, and 18–
20.

CONCLUSION
Under our 2019 Revised Guidance, as governed by relevant case law,
we conclude all claims 1–6, 8–16, and 18–20, rejected under 35 U.S.C.
§ 101, are directed to patent-ineligible subject matter.
We pro forma affirm the Examiner’s decision rejecting claims 1–6,
8–16, and 18–20 as being unpatentable over claims 1–16 of U.S. Patent No.
8,577,755 B2 on the ground of non-statutory OTDP. See Final Act. 5.

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DECISION SUMMARY

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED

Claims
Rejected
35 U.S.C. § Reference(s)Basis Affirmed Reversed
1–6, 8–16,
18–20
101 Eligibility 1–6,
8–16,
18–20

1–6, 8–16,
18–20
Non-statutory
OTDP
1–6,
8–16,
18–20

Overall
Outcome
1–6,
8–16,
18–20