Ivan Mitrovic

Patent Trials and Appeals Board

Jul 29, 2020

2020001002 (P.T.A.B. Jul. 29, 2020)

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.
13/282,199 10/26/2011 Ivan Mitrovic 2043.972US1 2104
49845 7590 07/29/2020
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
BEHESHTI, BRENDON
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
07/29/2020 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):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IVAN MITROVIC
___________

Appeal 2020-001002
Application 13/282,199
Technology Center 3600
____________

Before ALLEN R. MacDONALD, JAMES B. ARPIN, and
NABEEL U. KHAN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) the Examiner’s decision
rejecting claims 1–5, 8, and 20–23. Final Act. 2.2 Claims 6, 7, and 9–19 are
cancelled. We have jurisdiction 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. Appellant identifies the real party-in-interest as eBay Inc.
Appeal Br. 2.
2 In this Decision, we refer to Appellant’s Appeal Brief (“Appeal Br.,” filed
July 16, 2019) and Reply Brief (“Reply Br.,” filed November 20, 2019); the
current Final Office Action (“Final Act.,” mailed April 4, 2019), the
Examiner’s Answer (“Ans.,” mailed September 20, 2019), and the previous
Final Office Action (“2016 Final Act.,” mailed March 18, 2016); and the
Specification (“Spec.,” filed October 26, 2011). Rather than repeat the
Examiner’s findings and determinations and Appellant’s contentions in their
entirety, we refer to these documents.
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STATEMENT OF THE CASE
The recited methods, systems, and instructions stored on computer
readable media “relate[] generally to data processing within a network-based
system operating over a distributed network, and more specifically to
systems and methods to deliver location-aware offers based on missed
purchase opportunities.” Spec. ¶ 1; see id. Fig. 8 (“swim-lane chart
illustrating a method for providing location-aware offers based on missed
purchase opportunities”). As noted above, claims 1–5, 8, and 20–23 are
pending. Claims 1, 20, and 21 are independent. Appeal Br. 25 (claim 1),
26–28 (claims 20 and 21) (Claims App.). Claim 1 recites, “[a] method to
deliver a location-aware offer.” Id. at 25. Claim 20 recites “[a] system
comprising: a network adaptor configured to send and receive data packets
over a network; a processor communicatively coupled to the network
adaptor; and a memory device, the memory device communicatively
coupled to the processor and including instructions which, when executed by
the processor, cause the processor to perform” steps substantially as recited
in claim 1. Id. at 26–27. Claim 21 recites, “[a] non-transitory computer-
readable storage medium including instructions that, when executed by one
or more processors of a machine, cause the machine to perform” steps
substantially as recited in claim 1. Id. at 27–28. Claims 2–5 and 8 depend
directly from claim 1, and claims 22 and 23 depend directly from claim 21.
Id. at 26, 28–29.
Claim 1, reproduced below with amendments since the last appeal
emphasized, is illustrative.
1. A method to deliver a location-aware offer, the method
comprising:
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aggregating, on a network-based system, user profile data
of a user from a plurality of commerce systems separate from the
network-based system, the user profile data including a
demonstrated purchase action that includes a reference to an
item;
extracting, at the network-based system, the demonstrated
purchase action from the user profile data, the demonstrated
purchase action comprising an action indicating an interest in an
item without subsequent purchase of the item;
generating, on the network-based system, a demonstrated
purchase list based at least in part on the demonstrated purchase
action;
receiving, at the network-based system, current location
data specifying a current location of a client device associated
with the user;
determining that the client device is within a pre-defined
proximity to a location of a merchant based on the current
location data;
in response to determining that the client device is within
the pre-defined proximity to the location of the merchant,
accessing an inventory of the merchant at the location to compare
the inventory against the demonstrated purchase list;
using the inventory at the location of the merchant
accessed in response to determining that the client device is
within the pre-defined proximity to the location of the merchant,
identifying a matching inventory item within the inventory of the
merchant and the demonstrated purchase list, the matching
inventory item comprising the referenced item;
in response to the determining that the user is within the
pre-defined proximity to the merchant location and the
identifying the matching inventory item to the item referenced
by the demonstrated purchase action in the demonstrated
purchase list, generating an offer for the matching inventory
item, the offer based on the demonstrated purchase action; and
causing display of the offer on the client device.
Id. at 25 (emphases added).
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REFERENCES AND REJECTIONS
The Examiner relies upon the following references:
Name3 Reference Issued/Publ’d Filed
Samson US 7,228,287 B1 June 5, 2007 Nov. 13, 2000
DeWitt US 2009/0076925 A1 Mar. 19, 2009 Sept. 13, 2007
Manninen “Geofencing” enables
new location-based
apps, raises privacy
concerns, VENTURE
BEAT4
Apr. 23, 2010 NA
Claims 1–5, 8, and 20–23 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or an abstract idea) without significantly more. Final Act. 5. Claims 1–5, 8,
and 20–23 also stand rejected under 35 U.S.C. § 103(a) as rendered obvious
over the combined teachings of Samson and DeWitt, alone or in
combination with Manninen. Id. at 5–11.
We review the appealed rejection for error based upon the issues
identified by Appellant, and in light of the contentions and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). The Examiner and Appellant focus their findings and
contentions on claim 1, so do we. See, e.g., Final Act. 3; Appeal Br. 11–13,
19–20. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Unless otherwise indicated, we adopt the Examiner’s findings in the Answer

3 All reference citations are to the first named inventor or author only.
4 Available at: http://venturebeat.com/2010/04/23/geofencing-pushes-
services-to-phones/
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as our own and add any additional findings of fact for emphasis. We address
these rejections below.5
ANALYSIS
Claim Amendments
Since the last appeal, Appellant has amended the independent claims.
Final Act. 3. These amendments generally involve the addition of
introductory language linking a limitation to a preceding limitation, i.e.,
establishing an order for the method steps.6 Compare Appeal Br. 25
(claim 1) (Claim App.) with Ex parte Mitrovic, Appeal No. 2017-010148, 2–
3 (Jan. 2, 2019) (hereinafter “’148 Dec.”).
As reproduced above, claim 1 now recites:
in response to determining that the client device is within
the pre-defined proximity to the location of the merchant,
accessing an inventory of the merchant at the location to compare
the inventory against the demonstrated purchase list;
using the inventory at the location of the merchant
accessed in response to determining that the client device is
within the pre-defined proximity to the location of the merchant,
identifying a matching inventory item within the inventory of the
merchant and the demonstrated purchase list, the matching
inventory item comprising the referenced item;
in response to the determining that the user is within the
pre-defined proximity to the merchant location and the
identifying the matching inventory item to the item referenced

5 The objections are not subject to review on appeal. Final Act. 3; see MPEP
§ 706.01.
6 Appellant also amends the claims to replace the phrases “a merchant
location” and “the merchant location” with “a location of a merchant” and
“the location of the merchant,” respectively. E.g., Appeal Br. 25 (claim 1)
(Claims App.); see Final Act. 2. Appellant does not contend that such
amendments render the independent claims patentable.
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by the demonstrated purchase action in the demonstrated
purchase list, generating an offer for the matching inventory
item, the offer based on the demonstrated purchase action.
Appeal Br. 25 (Claims App.) (emphases added); cf. ’148 Dec. at 3
(reproducing previous claim 1). Pending claims 20 and 21 have
corresponding amendments. The Examiner finds that
the claims have already been accorded the interpretation of the
specific ordered steps such that all the steps proceeding the
determination that the client device is within the pre-defined
proximity are performed in response to the determination; thus
these amendments provide no patentable distinction. Thus, no
substantial distinction can be drawn between the claims as
amended and those presented in the last action of record, as they
have the same elements in combination to accomplish precisely
the same effect.
Final Act. 2–3 (citation omitted).
Appellant contends, however, the amended claims are distinct from
the previously considered claims. Reply Br. 2–3. In particular, Appellant
contends:
These amendments provide new elements indicating
“conditions” upon which operations are to be performed, which
were not previously in the claims. In particular, because only
inventory of merchants within a pre-determined proximity of the
client device is accessed and used to identify matching inventory
items (as opposed to inventory of all merchants regardless of
location, for example, as taught by cited reference De Witt), only
a limited (lesser amount) of data needs to be processed, which
reduces processing requirements.
Id. at 3 (emphasis added). Although Appellant labels the added limitations
as “conditions,” we understand these limitations to impose an order on the
claims, rather than to make the steps modified by these added limitations
conditional. Final Act. 2–3; see In re Schulhauser, Appeal No. 2013-
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007847, 6–7 (Apr. 28, 2016) (precedential) (“If the electrocardiac signal data
is not within the threshold electrocardiac criteria, then an alarm is triggered
and the remaining method steps need not be performed.”). To the extent the
amended claims narrow the previous claims to a particular order of steps and
the Office applies new guidance regarding the examination of these claims
under Section 101, we are not persuaded that issue preclusion prevents our
review of the rejections of the amended claims, and we address the
rejections of the pending claims below. See Ans. 13–15; Reply Br. 2.
Patent Ineligible Claims
A. Section 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 U.S. 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. 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 Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. 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
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.”). According to the Court, concepts determined to be abstract
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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)).
In Diamond v. Diehr, the claim at issue recited a mathematical
formula, but the Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).
Having said that, the 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. at 191 (citing Benson and Flook). Nevertheless, the Court noted that “[i]t
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.” Id. at 187; see also BASCOM Glob. Internet Sers., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016) (Even if the individual
components were known, “an inventive concept can be found in the ordered
combination of claim limitations that transform the abstract idea of filtering
content into a particular, practical application of that abstract idea.”
(emphasis added)).
If the claim is “directed to” an abstract idea, we next “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
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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.
B. Office Patent Eligibility Guidance
In an effort to achieve clarity and consistency in how the Office
applies the Court’s two-part framework, the Office published revised
guidance on the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).7 We conduct a
partially de novo review of the Examiner’s rejection of the pending claims.
In Step One of our analysis, we look to see whether the claims, as written,
fall within one of the four statutory categories identified in § 101. Id. at 53
(“Examiners should determine whether a claim satisfies the criteria for
subject matter eligibility by evaluating the claim in accordance with the
criteria discussed in MPEP8 § 2106, i.e., whether the claim is to a statutory
category (Step 1) and the Alice/Mayo test for judicial exceptions (Steps 2A
and 2B)”).

7 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 51; see also October 2019 Update:
Subject Matter Eligibility, 2 (Oct. 17, 2019) (“Note, the feedback received
was primarily directed to examination procedures and, accordingly, this
update focuses on clarifying practice for patent examiners. However, all
USPTO personnel are expected to follow the guidance.”).
8 All Manual of Patent Examining Procedure (“MPEP”) citations herein are
to MPEP 9th Ed., Rev. 10.2019, June 2020.
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Under the guidance, we then look to whether the claim recites:
(1) Step 2A – Prong One: 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) Step 2A – Prong Two: additional elements that integrate the
judicial exception into a practical application (see MPEP
§§ 2106.05(a)–(c), (e)–(h)).
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
at 54–55 (“Revised Step 2A”).
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
is 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 id. at 56 (“Step 2B: If the Claim Is Directed to a Judicial Exception,
Evaluate Whether the Claim Provides an Inventive Concept.”).
C. Step One – Claims Directed to Statutory Categories
Independent claim 1 and its associated dependent claims are directed
to methods (i.e., processes), independent claim 20 directed to systems (i.e.,
machines), and claim 21 and its associated dependent claims are directed to
non-transitory, computer-readable media (i.e., manufactures). Appeal
Br. 25, 26, 27 (Claims App.); see In re Nuijten, 500 F.3d 1346, 1356–57
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(Fed. Cir. 2007). Thus, the claims recite recognized statutory categories.
See ’148 Dec. 13.
D. Two-Part Alice/Mayo Framework
1. Independent Claim 1
a. Step 2A, Prong One – Claim 1 Recites an Abstract Idea
Applying the first part of the Alice/Mayo framework (Step 2A), the
Examiner determines in the Final Office Action preceding the previous
appeal that
the claimed invention relates to addressing a perceived problem
with “provid[ing] merchants the ability to target customers based
on past behavior and current context (e.g., location).” (Spec ¶15).
In the general sense, the inventive concept is to “utilize any
implicit or explicit actions associated with a user that can be
recorded and stored for future analysis” (i.e. profile data) to sell
merchandise to the user based on their detected location (Spec
¶18).
2016 Final Action 10–11. The Examiner concludes, “[i]n other words, the
claims are directed to receiving and comparing information and rules to
generate an offer.” Id. at 11. For the reasons given below, we agree with
the Examiner that claim 1 recites an abstract idea.
Claim 1 broadly recites a method of: (1) aggregating user profile data
including a demonstrated purchase action that includes a reference to an
item; (2) extracting the demonstrated purchase action toward a not-yet
purchased item from the user profile data; (3) generating a demonstrated
purchase list based on the demonstrated purchase action; (4) receiving
current location data of a user’s client device; (5) determining the client
device is within a pre-defined proximity to a merchant’s location; (6) then
accessing a merchant’s inventory at the merchant’s location to compare the
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inventory with the demonstrated purchase list; (7) then identifying a
matching inventory item comprising the referenced item; and (8) then
generating an offer for the matching inventory. Appeal Br. 25–26 (Claims
App.); see 2016 Final Act. 11 (“The claims recite, in summary, the steps of
aggregating user profile data of a user; extracting [data] from the user profile
data; receiving current location data; accessing an inventory of the merchant
location; generating an offer in response to the determining that the user is
within the pre-defined proximity to the merchant location.”). Independent
claims 20 and 21 recite substantially similar limitations. Appeal Br. 26–28
(Claims App.). As noted above, the Specification explains
Example systems and methods for delivering location-
aware offers based on missed purchase opportunities are
described. In some example embodiments, the systems and
methods for delivering location-aware offers may provide
merchants the ability to target customers based on past behavior
and current context (e.g., location) of a user interacting with
retail locations utilizing a network-based publication system.
Spec. ¶ 15 (emphasis added). Thus, we understand claim 1 recites a method
of generating offers based on past behavior, consumer proximity, and
merchant inventory.
Appellant contends,
the elements are not directed to a fundamental economic
principles or practices; commercial or legal interactions; or
managing personal behavior or relationships or interactions
between people. Instead, the claims recite the use of location
data to determine proximity and to determine whether to deliver
tailored content based on the proximity.
Appeal Br. 12. Nevertheless, the delivered “tailored content” is an offer to
sell an item in merchant’s inventory to a proximate, potential purchaser.
Consequently, we do not find Appellant’s contentions persuasive.
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Claim 1’s limitations, under their broadest reasonable interpretation,
recite “commercial . . . interactions (including . . . advertising, marketing or
sales activities or behaviors; business relations); [and] managing personal
behavior or relationships or interactions between people (including . . .
following rules or instructions).” 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 52; see Spec. ¶¶ 8, 15–18; Appeal
Br. 26 (Claims App.) (claim 8) (reciting “demonstrated purchase action[s]”).
Such practices and interactions fall within the broader grouping of “[c]ertain
methods of organizing human activity.” 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 52. Thus, we determine that claim 1,
as well as claims 20 and 21, recites an abstract idea, namely “certain
methods of organizing human activity.”
b. Step 2A, Prong Two – Abstract Idea Not Integrated Into
Practical Application
Because we are persuaded claim 1 recites an abstract idea, we identify
whether there are any additional elements recited in the claim and evaluate
those additional elements individually and in combination to determine
whether they integrate the abstract ideas into a practical application.
Claim 1 expressly recites “a network-based system” and “a client device.”
Appeal Br. 25 (Claims App.). Claim 20 further expressly recites “a network
adaptor,” “a processor,” “a memory device,” and “a client device.” Id. at
26–27. Claim 21 expressly recites “[a] non-transitory computer-readable
storage medium,” “one or more processors of a machine,” and “a client
device.” Id. at 27–28. Each of the independent claims implicitly recites a
location or locations for storing and retrieving data. E.g., id. at 25
(“extracting, at the network-based system, the demonstrated purchase action
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from the user profile data” and “accessing an inventory of the merchant at
the location to compare the inventory against the demonstrated purchase
list”).
Appellant contends,
the claims capture a practical application because a machine
(e.g., a network-based system), at least, aggregates and extracts
data, determines proximity of a client device to merchants,
generates an offer based on the proximity, and causes display of
the offer on the client device. Thus, the particular machine is
integral to the claimed approach.
Appeal Br. 14 (emphasis added). “[T]he Prong Two analysis considers the
claim as a whole. That is, the limitations containing the judicial exception as
well as the additional elements in the claim besides the judicial exception
need to be evaluated together to determine whether the claim integrates the
judicial exception into a practical application.” October 2019 Update:
Subject Matter Eligibility at 12. Claim 1, however, does not recite a
particular machine that accomplishes these functions. See Spec. ¶¶ 19
(discussing “missed purchase opportunities extracted from user profile
data”), 42 (discussing “[a]ggregation of the user profile data”). Moreover,
the Specification explains, “[s]mart phones also commonly include
mechanisms, such as global positioning satellite (GPS) receivers, that allow
the devices to constantly update location information.” (id. ¶ 2), and the
Specification discloses that various computer, network, and software
components recited in Appellant’s claimed methods, systems, and media are
generic computer components performing generic computer functions (id.
¶¶ 16, 18, 22–27, 30, 71). Considered individually or as an ordered
combination, we are not persuaded that the network-based system
performing the recited functions describes a particular machine integral to
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the claims, such that the identified abstract idea is integrated into a practical
application.9 See MPEP § 2106.05(b); 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 55 n.27.
The Examiner found that the claims considered in the previous appeal
did not recite an improvement to the functioning of a computer.
’148 Dec. 16–17. The Examiner contends that this analysis applies equally
to the pending claims. Ans. 10–11.
Appellant contends, however,
the claims recite an improvement to a technical field because use
of location data of a client device and proximity of the client
device to a merchant to trigger generating and display of specific
content improves upon conventional content delivery systems,
for example, by reducing network bandwidth usage since
matching for items to present in the offer is only performed for a
merchant already identified to be within proximity of the client
device instead of for all merchants regardless of location.
Further still, the use of location data and proximity of the client
device to trigger generation and display of specific offers
improves upon conventional content delivery systems by
reducing communication of offers that may not be relevant to a
user based on their location; thus reducing network traffic.
Appeal Br. 13–14 (emphases added); see Reply Br. 4–5 (discussing reducing
bandwidth and processing requirements).

9 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under the second part of the Alice/Mayo
framework (Step 2B of the Office guidance). See ’148 Dec. 12, 14. For
purposes of maintaining consistent treatment within the Office, we evaluate
those considerations under the first part of the Alice/Mayo framework (Step
2A of the Office guidance). See 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 55 nn.25, 27–32.
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We are not persuaded, however, that claim 1 recites an improvement
to a technical field. In particular, we find claim 1 does not recite the method
reduces either network bandwidth usage or network traffic (i.e., processing
requirements), nor does Appellant show where the Specification discloses
such reductions are sought or achieved. See Appeal Br. 13–14. Instead,
claim 1 focuses on the result, namely, a merchant delivering an offer to a
nearby and interested customer. Ans. 10–11. Thus, we are not persuaded by
Appellant’s contention.
Appellant further contends:
Just as Example 40 provides a specific improvement over prior
systems resulting in improved network monitoring because of
reduction in traffic volume and improvement in network
performance, present claim 1 provides a specific improvement
over prior systems that also provides a reduction in traffic
volume and improvement in network performance.
Appeal Br. 15. Claim 1 of Example 40 recites a method for adaptive
monitoring of traffic data and expressly recites collecting traffic data,
comparing collected traffic data to a predefined threshold, and collecting
additional traffic data if the threshold is exceeded. Subject Matter Eligibility
Examples: Abstract Ideas at 10. In Example 40, the Office explains the
recited method “provides a specific improvement over prior systems,
resulting in improved network monitoring.” Id. at 11. Pending claim 1 does
not recite any collection or monitoring of traffic data, and, as noted above,
claim 1 does not recite that the method reduces either network bandwidth
usage or network traffic. See Appeal Br. 25 (Claims App.). Thus, Appellant
does not persuade us that claim 1 of Example 40 is analogous to pending
claim 1.
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In view of Appellant’s claim recitations and the Specification’s
disclosure, and consistent with the Examiner’s findings, we are persuaded
claim 1 does not do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;10
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP § 2106.05(a)–(c), (e)–(h). Thus, we are persuaded the additional
elements of the rejected claims do not integrate the identified abstract idea
into a practical application and claim 1 is directed to the identified abstract
idea.
c. Step 2B – Not Significantly More Than the Abstract Idea
Because we determine that the claims recite an abstract idea and do
not integrate those abstract ideas into a practical application, we now
consider whether the claims include additional limitations, such that the
claims amount to significantly more than the abstract idea. The Examiner
finds that considered alone or as an ordered combination, the limitations of

10 Although claim 1 recites “causing display of the offer on the client
device,” we are not persuaded that this recitation suggests the identified
abstract idea is used with a particular machine. Appeal Br. 13–16. Instead,
we find this limitation to describe insignificant extra-solution activity.
MPEP § 2106.05(g); see Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242,
(Fed. Cir. 2016) (insignificant post-solution activity of printing or
downloading generated menus).
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the claims do not amount to significantly more than the abstract idea.
Ans. 11–12.
Appellant contends the Examiner fails to demonstrate adequately that
the additional elements are well-understood, routine, and conventional.
Appeal Br. 22–26 (citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir.
2018)). Pursuant to the Office’s guidance, however, the requirements of
Berkheimer are satisfied by:
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). A specification demonstrates the
well-understood, routine, conventional nature of additional
elements when it describes the additional elements as well-
understood or routine or conventional (or an equivalent term),
as a commercially available product, or in a manner that
indicates that the additional elements are sufficiently well-known
that the specification does not need to describe the particulars of
such additional elements to satisfy 35 U.S.C. § 112(a).
Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (Apr. 19, 2018 (emphasis added; available at:
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF)). The Specification makes clear that these additional
elements and their functions, considered individually or as an ordered
combination, are well-known, routine, and conventional. See Spec. ¶¶ 2, 16,
18, 22–27, 30, 71. Thus, we find the requirements of Berkheimer satisfied.
On this record, we agree with the Examiner that independent claim 1,
as well as independent claims 20 and 21 that are not argued separately, is
directed to an abstract idea and fails to recite “significantly more” than the
identified abstract idea. Thus, we are not persuaded that the Examiner errs
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in determining that the independent claims are patent-ineligible, and we
sustain the rejection of those claims, as well as the rejection of the dependent
claims that are not argued separately.
A. Obviousness Over Samson and DeWitt, Alone or in Combination with
Manninen
As noted above, claims 1–5, 8, and 20–23 stand rejected under
35 U.S.C. § 103(a) as rendered obvious over the combined teachings of
Samson and DeWitt, alone or in combination with the teachings of
Manninen. Final Act. 5–11. In particular, the Examiner finds that Samson
teaches or suggests almost all of the limitations of independent claim 1.
Final Act. 5–8.
Samson teaches:
The present invention further provides a database for an
incentive program for bidders on auction items, including an
inventory file having at least one of detailed descriptions of an
inventory, a list of similar items of the inventory, and a list of
complementary items of the inventory, and a consumer profile
having at least one of bidding history, start bid, bid frequency,
bid increment, final bid, winning bid, target product, Internet
service provider, zip code, credit card type, and coupon
redemption rate.
Samson, 2:53–61 (emphases added); see id. at 4:34–40. With regard to the
“generating” step, however, the Examiner acknowledges, “Samson does not
disclose performing the analytic steps and presenting the offer based on and
in response to a determination of the user’s physical proximity to the
physical location of inventory.” Final Act. 7. The Examiner finds, however,
that DeWitt teaches this limitation. Specifically, the Examiner finds that
DeWitt teaches:
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(see at least [DeWitt] ¶6, “When the consumer is within a
predetermined distance from the merchant, the offer is made;”;
¶7, “sending a first transmission containing information
sufficient to derive . . . the location of the portable consumer
device;” ¶¶29-30, fig. 1; ¶47, “once it is determined that the
consumer is within the predetermined distance, the ROS may
generate and transmit an offer;” ¶64, “a first set of matching
merchants is formed using the storage S(s) to signify that they
have the consumer requested inventory;” ¶85, “Consumer device
receives an offer . . . where the merchant has a location that is
within a predetermined distance from the derived location of the
consumer device.”).
Final Act. 8.
The Examiner further finds:
It would have been obvious to one of ordinary still in the
art to incorporate location/proximity based offers as taught by
DeWitt into the Samson's presentation of offers based on missed
purchase opportunities because DeWitt is able to function with
any consumer data aggregated into a profile to present location
aware offers, (see at least ¶42, “The data in the storage S(s) may
also include information regarding the consumer . . . . . .
inventory purchased;” ¶52, “transaction history . . . between the
consumer . . . and any merchant;” ¶70); and presentation of offers
when the user is within physical proximity to the location of the
merchant would provide better inventory disposition option for
the seller as well as greater likelihood for the buyer to be
incentivized to make the purchase due to the physical
convenience and the combination of old elements may be made
according to known methods to yield predictable results.
Id.
Appellant contends the Examiner errs for two reasons. First,
Appellant contends that DeWitt fails to cure the deficiencies of Samson.
Appeal Br. 20–22. Second, Appellant contends a person of ordinary skill in
the art would not have had reason “to incorporate location or proximity-
based offers as taught by DeWitt into Samson’s online auction system.” Id.
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at 22–23. For the reasons given below, we are not persuaded by either of
Appellant’s reasons.
With regard to the first reason, Appellant contends,
DeWitt also does not teach accessing inventory of a merchant in
response to the client device being within proximity to the
location of the merchant or identifying a matching inventory item
from the inventory that is accessed in response to the client
device being in proximity to the location of the merchant.
Instead, DeWitt appears to first determine merchants (regardless
of location or proximity) that have the item(s) that the user has
shown interest in or requested.
Appeal Br. 20–21 (emphasis added). As noted above, however, we
understand the phrase “in response to determining that the client device is
within the pre-defined proximity to the location of the merchant” to describe
the order in which steps of claim 1 occur, rather than a condition dictating
whether or not the steps occur at all. See supra at 7.
Nevertheless, DeWitt discloses:
The merchant can provide the consumer a consumer requested
offer for the inventory based on business rules delineating
conditions for making the offer and parameters that determine
the value of the offer such as an offer of ten percent (10%) off
the purchase price of consumer requested inventory when the
consumer is less than 1 mile from the merchant’s store or has
purchased the same inventory in the past on the consumer's
account in the payment processing system. The offer may
include, for example, the location of the merchant, the
description of the inventory of the merchant; a discounted
purchase value redeemable upon a transaction for the purchase
of the inventory of the merchant from the merchant; a
confirmation code for the offer; or an identifier for the offer.
DeWitt ¶ 20 (emphasis added); see id. ¶ 8 (“In another implementation, a
consumer inputs into a portable consumer device a description of inventory
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for which the consumer would like to receive an offer from a merchant.”).
DeWitt further discloses:
The offer from the merchant [may] be derived, in whole or in
part, from any of several parameters. These parameters may
include, but are not limited to the predetermined distance
between the portable consumer device and the merchant, the
distance between the location of the portable consumer device
and the location of a competitor of the merchant, a sales volume
of a competitor of the merchant for the inventory, a current
quantity of the inventory that the merchant has in-stock . . . .
Id. ¶ 25 (emphasis added). Thus, we are persuaded DeWitt teaches or
suggests accessing the merchant’s inventory, identifying a matching
inventory item, and generating an offer, after determining the customer’s
proximity.
With regard to the second reason, Appellant contends:
While [the Examiner’s theory for combining Samson’s and
DeWitt’s teachings] may be true, Samson is an online-based
system that only provides incentives to bidders in an online
auction. Physical location is simply not a factor in Samson for
any reason since items will, in all likelihood, be shipped to the
consumer. Therefore, contrary to the Examiner’s assertion, one
of ordinary skill in the art would not be motivated to incorporate
location or proximity-based offers as taught by DeWitt into
Samson's online auction system.
Appeal Br. 22–23. We disagree.
Initially, we note that Samson is not limited to on-line auctions.
Ans. 17; see, e.g., Samson, 1:6–8, 3:17–26. Nevertheless, the Specification
explains that “[l]osing an auction after placing a bid” and “[n]ot bidding on a
watched auction” are examples of demonstrated purchase interests. Spec.
¶ 18 (Table 1). Thus, a person of ordinary skill in the art would find on-line
auctions relevant art.
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Appellant also is mistaken in contending that “[p]hysical location is
simply not a factor in Samson for any reason since items will, in all
likelihood, be shipped to the consumer.” Appeal Br. 22. Samson considers
the consumer’s location as well as the inventory’s location. Ans. 17; see
Samson, 4:34–37 (“The personal computer information 13 includes . . . zip
code, access location (work or home) . . . .”), 5:52–55 (“The inventory data
33 may include detailed descriptions, such as inventory type, inventory
levels, quantity and physical and virtual location of inventory . . . .”). As
discussed above, DeWitt considers these same factors. DeWitt ¶¶ 6–9, 20,
24–25. Thus, we are persuaded that physical location is a factor for both
Samson and DeWitt. Consequently, we are not persuaded the Examiner errs
in combining the teachings of Samson and DeWitt in the manner described,
and we determine the Examiner has shown sufficiently that a person of
ordinary skill in the art would have had reason to combine the teachings of
Samson and DeWitt to achieve the methods of claim 1. Ans. 17–18.
We are not persuaded the Examiner errs in determining that the
methods, systems, and computer readable media, recited in claims 1, 20, and
21, respectively, are rendered obvious over the combined teachings of
Samson and DeWitt. Further, Appellant does not argue the dependent
claims separately, and, on this record, we determine that the Examiner has
shown that claims 3–5, 8 and 23 are rendered obvious over the combined
teachings of Samson and DeWitt, and claims 2 and 22 are rendered obvious
over the combined teachings of Samson and DeWitt, and Manninen.
Consequently, we are persuaded that the Examiner does not err in rejecting
claims 1–5, 8, and 20–23, and we sustain the rejections thereof under 35
U.S.C. § 103(a).
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DECISION
1. The Examiner does not err in rejecting:
a. claims 1–5, 8, and 20–23 under 35 U.S.C. § 101, as directed to
patent ineligible subject matter without significantly more;
b. claims 1, 3–5, 8, 20, 21, and 23 as unpatentable under 35 U.S.C.
§ 103 over the combined teachings of Samson and DeWitt; and
c. claims 2 and 22 as unpatentable under 35 U.S.C. § 103 over the
combined teachings of Samson, DeWitt, and Manninen.
2. Thus, on this record, claims 1–5, 8, and 20–23 are not patentable.
CONCLUSION
We affirm the Examiner’s rejection of claims 1–5, 8, and 20–23.
In summary:
Claims
Rejected
35 U.S.C.
§
Basis/References Affirmed Reversed
1–5, 8, 20–
23
101 Eligibility 1–5, 8,
20–23

1, 3–5, 8,
20, 21, 23
103 Samson, DeWitt 1, 3–5, 8,
20, 21, 23

2 and 22 103 Samson, DeWitt,
Manninen
2, 22
Overall
Outcome
1–5, 8,
20–23

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.
§ 1.136(a)(1)(iv).

AFFIRMED