My World, Inc.

Patent Trials and Appeals Board

Jun 30, 2020

14707189 - (D) (P.T.A.B. Jun. 30, 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.
14/707,189 05/08/2015 Kenneth J. Ouimet 2734.0032 9913
84278 7590 06/30/2020
PATENT LAW GROUP: Atkins and Associates P.C.
123 W. Chandler Heights Road, Unit 12535
Chandler, AZ 85248
EXAMINER
WHITAKER, JONATHAN J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
main@plgaz.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH J. OUIMET

Appeal 2019-004983
Application 14/707,189
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Kenneth J. Ouimet,
appeals from the Examiner’s decision rejecting claims 1–20 and 26–30,
which are all claims pending in the application. Appellant has canceled
claims 21–25. 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(a). Appellant identifies MYWORLD, INC. as the real party in
interest. Appeal Br. 1.
Appeal 2019-004983
Application 14/707,189

2

CLAIMED SUBJECT MATTER2
The claims are directed to “consumer goods and, more particularly, to
a commerce system and method of controlling the commerce system with
manufacturer agents that manage sales and purchasing decisions.” See Spec.
¶ 2.
Claim 1, reproduced below, is representative of the subject matter on
appeal (italics added to dispositive contested prior-art limitations):
1. A method of controlling communication over an electronic
network including a first computing system and a second
computing system, comprising:
providing a database on the first computing system including
product information corresponding to a plurality of products,
wherein the database includes a first data structure to organize
the product information based on related product attributes;
providing an electronic consumer agent on the first computing
system in electronic communication with a consumer;
providing a first electronic manufacturer agent on the second
computing system in electronic communication with a first
manufacturer, wherein the first manufacturer provides a first
negotiation strategy for use by the first electronic manufacturer
agent;
identifying an intent to buy using the electronic consumer agent
on the first computing system;
transmitting the intent to buy to the first electronic manufacturer
agent on the second computing system;

2 Our decision relies upon Appellant’s the Appeal Brief filed Dec. 12, 2018
(“Appeal Br.”); the Examiner’s Answer mailed April 11, 2019 (“Ans.”); the
Final Office Action mailed May 16, 2018 (“Final Act.”); the Reply Brief
filed June, 11, 2019 (“Reply Br.”); and the original Specification filed
May 8, 2015 (“Spec.”) (claiming the benefit of US Provisional Application
No. 61/284,365, filed May 9, 2014).
Appeal 2019-004983
Application 14/707,189

3

creating a second data structure on the first computing system
to perform an electronic negotiation between the electronic
consumer agent on the first computing system and the first
electronic manufacturer agent on the second computing system
using the first negotiation strategy, wherein the electronic
consumer agent and first electronic manufacturer agent
electronically negotiate over the electronic network for a
product satisfying the intent to buy from the first manufacturer
to be placed on a shopping list; and
providing the shopping list to the consumer for presentation on
a display screen.
(emphasis added).
Claim 4, reproduced below, is representative of the subject
matter on appeal, underlining added to contested limitations under 35
U.S.C. § 112, ¶ 2:
4. The method of claim 1, wherein the first negotiation
strategy includes a consumer rating of a likelihood to purchase
the product satisfying the intent to buy from the first
manufacturer.
Evidence
The Examiner relies upon the following prior art as evidence in
support of anticipation Rejection C:
Moss et al. (“Moss”) US 2005/0159974 Al July 21, 2005
Rejections
A. Claims 4, 7, 11, 18, 26, and 29 are rejected under 35 U.S.C.
§ 112(b) as being indefinite. Final Act. 3–5; see also Ans. 3, 5.3

3 We note the Examiner withdrew the 35 U.S.C. § 112(b) rejection of claims
12, 19, and 30 in the Answer. See Ans. 3 (WITHDRAWN REJECTIONS).
Appeal 2019-004983
Application 14/707,189

4

B. Claims 1–20 and 26–30 are rejected under 35 U.S.C. § 101 as
being as being directed to a judicial exception, without significantly more.
Final Act. 5–17.
C. Claims 1–20 and 26–30 are rejected under 35 U.S.C.
§ 102(a)(1) and/or § 102(a)(2) as being anticipated by Moss. Final Act. 17–
32.4
Claim Grouping
Based on Appellant’s arguments (Appeal Br. 10–36) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of 35
U.S.C. § 101 Rejection B of claims 1–20 and 26–30 on the basis of
representative claim 1. We address separately indefiniteness Rejection A of
claims 4, 7, 11, 18, 26, and 29, and anticipation Rejection C of claims 1–20
and 26–30, infra.

Regarding the 35 U.S.C. § 112(b) rejection of claims 7 and 26 the Examiner
indicates: “The current 35 [U.S.C.] § 112 rejection of claims 7 and 26 will
be withdrawn following the [A]ppellant entering amendments as described
in the arguments. [The] Examiner notes that the outstanding rejection of
these claims under 35 [U.S.C.] § 112 is being maintained for purposes of
this appeal.” Ans. 5 (emphasis added). Therefore, the rejection of claims 7
and 26 under 35 U.S.C. § 112(b) remains before us on appeal. Accordingly,
we consider on appeal the Examiner’s Rejection A of claims 4, 7, 11, 18, 26,
and 29 as being indefinite under 35 U.S.C. § 112(b).

4 The Examiner indicates: “In light of the amendments, the previous 35
[U.S.C.] § 103 rejection has been withdrawn and all claims are now rejected
under 35 U.S.C. § 102.” Final Act. 34.
Appeal 2019-004983
Application 14/707,189

5

Issues and Analysis
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).

1. 35 U.S.C. § 112(b) Rejection A of Claims 4, 7, 11, 18, 26, and 29.
Issue
Did the Examiner err in rejecting claims 4, 7, 11, 18, 26, and 29 under
35 U.S.C. § 112(b) as being indefinite?
Analysis
Claim 4 recites: “The method of claim 1, wherein the first negotiation
strategy includes a consumer rating of a likelihood to purchase the product
satisfying the intent to buy from the first manufacturer.” Appeal Br. 70,
Claims App. (emphasis added).
The Examiner “doesn’t understand how a manufacturer entity can
provide a consumer rating of a likelihood to purchase a product satisfying an
intent to buy from a manufacturer. Consumer ratings are generally
provided by consumers.” Final Act. 3 (emphasis added). The Examiner
concludes:
Unless the manufacturer is also a consumer, it is indefinite to
claim that consumer ratings are provided by a manufacturer as
part of a negotiation strategy. Therefore, the claims are
indefinite for failing to particularly point out and distinctly
claim the subject matter which the inventor regards as the
invention. For the purposes of examination, the [E]xaminer is
broadly interpreting these limitations to refer to the consumer
Appeal 2019-004983
Application 14/707,189

6

providing a consumer rating of a likelihood to purchase the
product and this rating being utilized as part of the offer
negotiation.
Final Act. 3–4 (emphasis added).
Appellant disagrees, and contends:
[T]he first manufacturer provides the first negotiation strategy.
The consumer rating is not a rating by the consumer, but rather
a rating of the consumer (by the first manufacturer) and his/her
likelihood to purchase the product satisfying the intent to buy
from the first manufacturer. Manufacturer agent 108
determines how much of a discount would need to be given to
each consumer in order to sway the consumer to purchase the
product made by manufacturer 110, see paragraphs [0174]-
[0175] of the subject application.

Appeal Br. 8.
At the outset, we give pending claims “their broadest reasonable
interpretation consistent with the [S]pecification” and “in light of the
[S]pecification as it would be interpreted by one of ordinary skill in the art.”
See American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed.
Cir. 2004). We note indefiniteness under 35 U.S.C. § 112(b) is an issue of
claim construction and a question of law that our reviewing court reviews de
novo. See Cordis Corp. v. Boston Scientific Corp., 561 F.3d 1319, 1331
(Fed. Cir. 2009) (citing Praxair, Inc. v. ATMI, Inc., 543 F.3d 1306, 1319
(Fed. Cir. 2008)).
Here, indefiniteness Rejection A for claims 4, 11, 18, and 29 (but not
claims 7 and 26, addressed separately infra) appears to be based essentially
upon the Examiner’s own understanding of the claim term “consumer
rating” (“of a likelihood to purchase the product satisfying the intent to buy
Appeal 2019-004983
Application 14/707,189

7

from the manufacturer”) irrespective of the context provided by Appellant’s
claims and Specification.
However, Appellant points to the relevant portions of the
Specification that describe how the manufacturer agent determines the
“consumer rating.” Appeal Br. 8 (citing Spec. ¶¶ 174–175).
In particular, paragraphs 174 and 175 describe a non-limiting,
exemplary embodiment:
Manufacturer agent 108 determines how much of a
discount would need to be given to each consumer in order to
sway the consumer to purchase the product made by
manufacturer 110. In one embodiment, illustrated in FIG. 11b,
each consumer is assigned a rating 682 corresponding to a
percentage of a maximum possible discount that needs to be
given for manufacturer 110 to be selected over other
manufacturers in a consumer's consideration set. A lower score
means less of a discount is given, and a higher score means a
larger discount should be given.
Spec. ¶ 174.
Consumers who tend to buy additional products with a
higher profit margin may be rated higher by retailers because of
the prospect of additional value from additional purchases. A
higher rating to potentially more profitable consumers gives a
higher discount on a particular product to those consumers.
Spec. ¶ 175.
We note the Examiner has not considered these portions of the
Specification that provide context, nor has the Examiner fully developed the
record to apply a lower threshold of indefiniteness consistent with the
broadest reasonable interpretation, as applied during patent examination, as
addressed by Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566,
Appeal 2019-004983
Application 14/707,189

8

at *5 (PTAB Aug. 25, 2017) (precedential); see also In re Packard, 751 F.3d
1307, 1310, 1314 (Fed. Cir. 2014).
Based upon our review of the record, find the claim term “consumer
rating” is sufficiently described in the Specification to the extent that we
conclude a person skilled in the art would have been sufficiently informed as
to the scope of the invention, as claimed, under the broadest reasonable
interpretation (BRI) claim construction standard applied by the PTO.
(emphasis added). See Spec. ¶¶ 174–175; see also Am. Acad., 367 F.3d at
1364.5
Therefore, for essentially the same reasons argued by Appellant, we
are persuaded that the Examiner erred regarding Rejection A under 35
U.S.C. § 112(b) of claims 4, 11, 18, and 29, which each recite the claim term
“consumer rating.” (emphasis added). See Appeal Br. 6–9. Accordingly,
we are constrained on this record to reverse the Examiner’s Rejection A of
claims 4, 11, 18, and 29 under 35 U.S.C. § 112(b).

Rejection A of claims 7 and 26 under 35 U.S.C. § 112(b)
Regarding claims 7 and 26, the Examiner concludes:
Claim 7 recites the limitation “the electronic shopping agent” in
line 19. There is insufficient antecedent basis for this limitation
in the claim. Claim 26 recites the limitation “the electronic
shopping agent” in line 19. There is insufficient antecedent
basis for this limitation in the claim.

5 Cf. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014)
(“[A] patent is invalid for indefiniteness if its claims, read in light of the
specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention.”).
Appeal 2019-004983
Application 14/707,189

9

Final Act. 5.
In the Appeal Brief, the Appellant acknowledges the antecedent basis
problem with claims 7 and 26, as currently drafted. See Appeal Br. 10. In
particular, Appellant indicates the “the antecedent basis is a typographical
error and will be amended upon resolution of remaining rejections.” Id.
In the Answer, the Examiner responds, and indicates:
The current 35 USC § 112 rejection of claims 7 and 26 will be
withdrawn following the [A]ppellant entering amendments as
described in the arguments. [The] Examiner notes that the
outstanding rejection of these claims under 35 USC § 112 is
being maintained for purposes of this appeal.
Ans. 5 (emphasis added).
Accordingly, on this record, we pro forma sustain the Examiner’s
Rejection A of claims 7 and 26 under 35 U.S.C. § 112(b), because of the
antecedent basis problem identified by the Examiner (Final Act. 5), as
acknowledged by Appellant (Appeal Br. 10), and not withdrawn by the
Examiner on appeal (Ans. 5).

2. 35 U.S.C. § 101 Rejection B of Claims 1–20 and 26–30
USPTO 35 U.S.C. § 101 Guidance
On January 7, 2019 (“January 2019 Memorandum, 84 Fed. Reg.”), the
U.S. Patent and Trademark Office (USPTO) published revised guidance on
the application of 35 U.S.C. § 101. See also USPTO, October 2019 Revised
Patent Subject Matter Eligibility Guidance (“October 2019
Appeal 2019-004983
Application 14/707,189

10

Memorandum”).6 Under that guidance, we first look to whether the claim
recites:
(1) (see January 2019 Memorandum, Fed. Reg. 54, 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) (see January 2019 Memorandum, Fed. Reg. 54–55, Step 2A
– Prong Two) additional elements that integrate the judicial
exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)).7

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.

6 The Office issued a further memorandum on October 17, 2019, clarifying
guidance of the January 2019 Memorandum in response to received public
comments. See https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf. Moreover, “[a]ll USPTO personnel are, as a
matter of internal agency management, expected to follow the guidance.”
January 2019 Memorandum, Fed. Reg. 51; see also 2019 Memorandum,
Fed. Reg. 1.
7 This evaluation is performed by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See January 2019 Memorandum, 84 Fed. Reg. 53–54
Section III (A)(2).
Appeal 2019-004983
Application 14/707,189

11

See January 2019 Memorandum, Fed. Reg. 56, Step 2B.
Because there is no single definition of an “abstract idea” under Alice
step 1, the January 2019 Memorandum, Fed. Reg., synthesizes, 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 January 2019 Memorandum, 84 Fed. Reg. at 52.
According to the January 2019 Memorandum, Fed. Reg. 53, “[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 January 2019 Memorandum, 84 Fed. Reg. at 53.
Appeal 2019-004983
Application 14/707,189

12

For example, limitations that are indicative of integration into a
practical application include:
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 January 2019 Memorandum, 84 Fed. Reg. 54–55, Prong Two.
Appeal 2019-004983
Application 14/707,189

13

January 2019 Memorandum, Step 2A, Prong One
The Judicial Exception
Under the 2019 Memorandum, 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 the claims recite an abstract idea, because:
These [(claimed)] steps describe/set-forth the idea of negotiated
consumer-manufacturer purchase offers, which is a
fundamental economic or commercial process, and/or idea of
itself, and/or a method of organizing human activities, and/or a
mathematical relationship/formula. The idea in the pending
application is directed to a concept relating to the economy and
commerce, such as agreements between people in the form of
business relations, and/or an idea standing alone such as an
uninstantiated concept, and/or a concept relating to
interpersonal and intrapersonal activities, such as managing
transactions between people, advertising or marketing, and/or a
mathematical concept such as a mathematical relationships,
formulas, and calculations.
Final Act. 6–7 (emphasis added).
The Examiner thus concludes “that negotiated consumer-manufacturer
purchase offers is an abstract idea, and furthermore that claim 1 is directed
to an abstract idea.” Final Act. 10.

Independent Claim 1
We apply the Director’s 2019 Memorandum de novo. We identify at
least the specific claim 1 steps of: “identifying an intent to buy” and
“creating a second data structure on the first computing system to perform
Appeal 2019-004983
Application 14/707,189

14

an electronic negotiation” as certain methods of organizing human activity,
including the categories of commercial or legal interactions, further
including agreements in the form of contracts; legal obligations; sales
activities or behaviors; and business relations. See January 2019
Memorandum, 84 Fed. Reg. at 52.
Therefore, we conclude claim 1 recites an abstract idea. Moreover,
we conclude the aforementioned certain methods of organizing human
activity could be performed alternatively as mental processes.8 See January
2019 Memorandum, 84 Fed. Reg. at 52.
Because claim 1 recites an abstract idea, and because remaining
independent claims 7, 14, and 26 recite similar language of commensurate
scope, we conclude all claims 1–20 and 26–30 recite an abstract idea, as
identified above, under Step 2A, Prong One. Therefore, we proceed to Step
2A, Prong Two.

8 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 35 U.S.C. § 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.
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.”).

Appeal 2019-004983
Application 14/707,189

15

2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the January 2019 Memorandum, we consider whether
there are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See January 2019 Memorandum, 84
Fed. Reg. at 54–55.
Additional Limitations
We identify the additional claim 1 elements that begin with the steps
of “providing” (i.e., “providing a database . . . ,” “providing an electronic
consumer agent . . . ,” “providing a first electronic manufacturer agent”) and
“transmitting the intent to buy . . .”) as additional claim elements that we
find are insignificant extra-solution activities (i.e., data gathering or data
sending). See January 2019 Memorandum, 84 Fed. Reg. 55 n.31; see also
MPEP § 2106.05(g). We identify the last limitation of “providing the
shopping list to the consumer for presentation on a display screen” as an
insignificant post-solution activity. See January 2019 Memorandum, 84
Fed. Reg. at 55 n.31; see also MPEP § 2106.05(g).
We additionally find the “electronic network including a first
computing system and a second computing system” are additional
limitations that are generic computer components. Appeal Br. 68, Claims
App.
The Examiner finds:
The above judicial exception is not integrated into a practical
application because the additional elements do not impose a
meaningful limit on the judicial exception when evaluated
individually and as a combination. The additional elements are
broadly described electronic storage and electronic
Appeal 2019-004983
Application 14/707,189

16

communication between computing systems for performing the
abstract idea steps on generic computing devices. The computer
elements are generic (electronic network, computing system,
database, data structure/computer code, electronic
agent/computer code, electronic communication, display
screen) other than their claimed function to perform the
limitations. The created “data structures” that organize the
product information and perform the electronic negotiation are
just broadly recited computer code that apply the abstract idea
to a technological environment. The electronic agents that
communicate with the consumer/manufacturer and perform the
electronic negotiation are just broadly recited forms of
computer code that apply the abstract idea to a technological
environment (non-specific code to implement a negotiation
abstract idea).
Ans. 9 (emphasis added).
The Examiner further finds the additional elements do not reflect an
improvement in the functioning of a computer, or an improvement to
another technology or technical field. Id.

Appellant disagrees, and contends:
Key claim features to making the electronic system work to
improve its functionality includes identifying an intent to buy
using the electronic consumer agent on the first computing
system, and creating a second data structure on the first
computing system to perform an electronic negotiation between
the electronic consumer agent on the first computing system
and the first electronic manufacturer agent on the second
computing system using the first negotiation strategy, where the
electronic consumer agent and first electronic manufacturer
agent electronically negotiate over the electronic network for a
product satisfying the intent to buy from the first manufacturer
to be placed on a shopping list. Accordingly the claims do not
merely utilize an electronic network communication
environment or field of use to implement the claimed abstract
idea, but rather the data structure and communication protocol
Appeal 2019-004983
Application 14/707,189

17

enhances the operation between the first computing system and
second computing system by increasing the probability of
completing a sale by (1) identifying a true potential consumer
with an actual intent to buy, and (2) finding the price point of
positive purchasing decision, while reducing unnecessary
searching and networking and communication utilization. The
claim is not about the improved speed or efficiency inherent
with applying the abstract idea on a computer. Rather the claim
is about enhancing the operation between the first computing
system and second computing system by indicating an intent to
buy, and performing an electronic negotiation, while reducing
unnecessary computing, networking and communication
utilization.
Reply Br. 4–5 (emphasis added).
Appellant addresses the case authorities provided by the Examiner,
but in a cursory manner. Reply Br. 5–8. For each of the cases cited by the
Examiner, Appellant reiterates essentially the same reply: “Appellant
maintains there is little or no correlation between [the cited case] and the
relevant claim elements.” Id.
As set forth in MPEP § 2106.05(a) (emphasis added):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
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.
Here, it is our view that Appellant does not sufficiently show how the
claimed generic computer components aid the method, the extent to which
the computer aids the method, or the significance of a computer to the
Appeal 2019-004983
Application 14/707,189

18

performance of the method to improve the recited first and second
computing systems.
Accordingly, on this record, we conclude independent claim 1, and
independent claims 7, 14, and 26, which recite similar limitations of
commensurate scope, 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(c), 2106.05(e)
Appellant advances no arguments that any of the method claims on
appeal are tied to a particular machine, or transform an article to a different
state or thing.
MPEP § 2106.05(e) Meaningful Claim Limitations
Appellant does not argue that claim 1 recites certain “meaningful”
claim limitations, such as those of the types addressed under MPEP
§ 2106.05(e), that impose meaningful limits on the judicial exception.9
Appellant does not present substantive arguments explaining how the
judicial exceptions are applied or used in some meaningful way.

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

9 See January 2019 Memorandum, 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.”
Appeal 2019-004983
Application 14/707,189

19

We conclude Appellant’s claimed invention merely implements the
abstract idea using “an electronic consumer agent on the first computing
system” and “a first electronic manufacturer agent on the second computing
system,” wherein the computing systems are generic computers. Claim 1
(emphasis added). Therefore, we conclude Appellant’s claims merely use a
generic programmed computer as a tool to perform an abstract idea.

MPEP § 2106.05(g)
Adding insignificant extra-solution activity to the judicial exception
As discussed above, we conclude that independent claim 1 recites
extra or post-solution activities (e.g., the steps of “providing”) that courts
have determined to be insufficient to transform judicially excepted subject
matter into a patent-eligible application. See MPEP § 2106.05(g); see also
January 2019 Memorandum, 84 Fed. Reg. 55 n.31.
For example, see also claim 1, i.e., the step of “transmitting the intent
to buy to the first electronic manufacturer agent on the second computing
system.” See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (“That a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive.”).
That is, these limitations use a generic computer component that performs a
generic computer function as a tool to perform an abstract idea. Thus, these
limitations do not integrate the abstract idea into a practical application. See
Alice Corp. Pty. Ltd. v. CLS Bank Intern, 573 U.S. 208, 223–24 (2014).
Instead, these limitations perform insignificant extra-solution activities. Cf.
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016)
(agreeing with the Board that printing and downloading generated menus are
Appeal 2019-004983
Application 14/707,189

20

insignificant post-solution activities). See also Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1341 (Fed. Cir.
2017) (Streaming audio/visual data over a communications system like the
Internet held patent ineligible.).
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 v. Kappos, 561 U.S. 593, 610-
12 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
We note Appellant advances no arguments regarding a lack of
preemption in the Appeal Brief.
Nor do claims 1–20 and 26–30 on appeal present any other issues as
set forth in the January 2019 Memorandum regarding a determination of
whether the additional generic computer elements integrate the judicial
exception into a practical application. See January 2019 Memorandum, 84
Fed. Reg. 55.
Thus, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–20 and 26–30 do not integrate the judicial
exception into a practical application. Therefore, we proceed to Step 2B,
The Inventive Concept.

Appeal 2019-004983
Application 14/707,189

21

The Inventive Concept – Step 2B
Under the 2019 Memorandum, 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; or simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See MPEP § 2106.05(d).

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
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”).10 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.
The Examiner, under Step 2B, finds several additional elements
recited in the claims were well understood, routine, and conventional at the
time of Appellant’s invention. See Final Act. 13–15. In support, the
Examiner cites to several case authorities which address well-understood,
routine, and conventional computer functions. See Final Act. 13–15, 34.

10 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
Appeal 2019-004983
Application 14/707,189

22

In particular, the Examiner cites to OIP Technologies, Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015):
[courts] have recognized the ‘storing and retrieving information
in memory’ computer function as well-understood, routine,
and conventional functions when it is claimed in a merely
generic manner (e.g., at a high level of generality) or as
insignificant extra-solution activity. These additional elements,
or combination of claims elements, therefore do not ensure the
claim amounts to significantly more than the abstract idea.
Final Act. 13–14 (emphasis added).
In the Appeal Brief, Appellant responds: “The [E]xaminer has
concluded that the claim limitations are well-understood, routine,
conventional activities (or elements) to those in the relevant field, and must
therefore provide an explanation or justification for the conclusion, as
required under Berkheimer.” Appeal Br. 12. Appellant avers: “The
Examiner simply names a number of cases, but does not set forth an
adequate justification of how the invention is directed to one or more of the
cases.” Appeal Br. 13.
The Examiner further explains the basis for the rejection in the
Answer:
When considered as an ordered combination, the additional
components of the Independent claims add nothing that is not
already present when the steps are considered separately, and
this simply recites the concept of negotiated consumer-
manufacturer purchase offers performed by/with generic
computer components and generic computer functions,
generally linked to a particular technological environment or
field of use, performed with insignificant extra solution activity
associated with the implementation of the judicial exception,
(e.g., mere data gathering/transmission/display/processing),
performed with mere post-solution activity associated with the
Appeal 2019-004983
Application 14/707,189

23

implementation of the abstract idea, and appended with well-
understood, routine and conventional activities previously
known to the industry.
Ans. 18 (emphasis added).
In the Reply Brief, Appellant notes “[t]he Examiner again lists a
number of cases to demonstrate that the above limitations are well-
understood, routine, and conventional, see page 12 of the Examiner's
Answer (notably absent from the Final Office Action).” Reply Br. 11.
However, Appellant urges that these case authorities are “insufficient
to establish the limitations of claim 1 as well understood, routine, and
conventional.” Id. Appellant reiterates that “[t]he Examiner fails to explain
why any of the actual limitations of claim 1 are well understood, routine,
conventional activities.” Id.
However, we find the Examiner’s citation (Final Act. 13) to at least
OIP, is on point, because the subject claims in OIP were “directed to the
concept of offer-based price optimization,” which we find is sufficiently
similar to Appellant’s claimed electronic negotiation “over the electronic
network for a product satisfying the intent to buy from the first manufacturer
to be placed on a shopping list,” as recited in claim 1. See OIP, 788 F.3d at
1362. As noted by the OIP court: “This concept of “offer based pricing” is
similar to other ‘fundamental economic concepts’ found to be abstract ideas
by the Supreme Court and this court.” Id.
Here, we find, like the court in OIP, that “[b]eyond the abstract idea
of offer-based price optimization, [Appellant’s] claims merely recite ‘well-
understood, routine conventional activit[ies],’ either by requiring
conventional computer activities or routine data gathering steps.” OIP, 788
F.3d at 1363. As discussed above, we find Appellant’s claimed invention
Appeal 2019-004983
Application 14/707,189

24

uses generic computer components: i.e., “an electronic network including a
first computing system and a second computing system.” Claim 1,
preamble.
Thus, the Examiner has provided at least one category of Berkheimer
evidence that we agree supports the Examiner’s finding that Appellant’s
claims recite “well-understood, routine and conventional activities
previously known to the industry.” Ans. 18 (emphasis added).
Moreover, in considering the background descriptions in Appellant’s
Specification, the invention on appeal appears to be concerned with
eliminating the consumer surplus problem in which discounts may be
provided to potential or past customers who would have gladly purchased
the product at a higher price than the offered price:
Many consumers purchase the product using a discount coupon,
even though the same consumer has purchased the same
product at full price in the past, and intends to purchase the
product at full price again. By making generic offers readily
available to the public, manufacturers lose profit from sales to
consumers that would purchase the product even absent the
discount.
Spec. ¶ 4 (emphasis added).
We note the consumer surplus is positive when the price the consumer
is willing to pay is higher than the market price, which in this case (id.) is
the price after the discount coupon is applied. The consumer surplus is a
well-known concept in economic theory that must be considered to optimize
the offered price so as to maximize profits. For example, see Spec. ¶ 186:
“The profit share can be generated when the manufacturer agent completes a
transaction with the retailer agent where product inventory is sold at a price
greater than a maximum discount identified by the manufacturer.”
Appeal 2019-004983
Application 14/707,189

25

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, and under the 2019 Memorandum, we
conclude that each of Appellant’s claims 1–20 and 26–30, 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.
Therefore, we sustain the Examiner’s Rejection B under 35 U.S.C. § 101 of
claims 1–20 and 26–30.

3. 35 U.S.C. § 102 Rejection C of Claims 1–20 and 26–30
Issue
Under 35 U.S.C. § 102, we focus our analysis on the following argued
limitations that we find are dispositive regarding anticipation Rejection C of
claims 1–20 and 26–30:
Did the Examiner err by finding that Moss’s “Cairo” (“an Internet and
mobile shopping service” ¶ 25) discloses both the disputed, dispositive
limitations “electronic consumer agent” and “electronic manufacturer
agent,” within the meaning of representative claim 1?
Appellant contends:
The Examiner is attempting to read Cairo as both the
electronic consumer agent and the first electronic
manufacturer agent. Appellants maintain that interpretation is
improper and illogical. Cairo cannot be both the electronic
consumer agent, and the first electronic manufacturer agent.
Appeal 2019-004983
Application 14/707,189

26

The electronic consumer agent works with the consumer, and
the first electronic manufacturer agent works with the first
manufacturer. Two separate entities are necessary to have an
effective electronic negotiation. Otherwise, Cairo is negotiating
with itself. Moss has no correlation to providing an electronic
consumer agent, and providing a first electronic manufacturer
agent, as recited in claim 1.
Appeal Br. 38 (emphasis added).
The Examiner disagrees with Appellant, and further explains the basis
for the rejection in the Answer. As an issue of claim construction, the
Examiner concludes:
[T]he electronic consumer agent and the electronic
manufacturer agent are only limited in the claims by the
actions they perform and their respective locations on
computing systems. The claimed electronic agents have no
further electronic structure or limitations. Broadly interpreted,
these claimed electronic agents are just computer
code/programming which are recited to perform the claimed
methods. Based on Figures 3 and 6 of the Appellant's published
specification, all of the electronic agents are part of the same
service provider system. The phrase “computing system” and
any description of individual computing systems are not found
in the appellant's published specification. Therefore, it is a
reasonable broad interpretation that the claimed first computing
system and claimed second computing system are all part of
one overall service provider computing system . . .
Under this claim interpretation, Moss discloses the same
computing systems as the [A]ppellant.
Ans. 23–24 (emphasis added).
In the Reply Brief, Appellant disagrees: “To the contrary, FIG. 6 of
the subject application shows service provider 102, consumer 106, retailer
116, and manufacturer 110 operating from different systems.” Reply Br. 12.
Appeal 2019-004983
Application 14/707,189

27

We find the dispositive issue in this appeal turns upon the Examiner's
claim interpretation that conflates the two different claim terms “electronic
consumer agent” and “the first electronic manufacturer agent” to mean
essentially the same thing. (emphasis added).
As emphasized by our reviewing court in Smith:
Even when giving claim terms their broadest reasonable
interpretation, the Board cannot construe the claims “so broadly
that its constructions are unreasonable under general claim
construction principles.” Microsoft Corp. v. Proxyconn, Inc.,
789 F.3d 1292, 1298 (Fed. Cir. 2015). “[T]he protocol of giving
claims their broadest reasonable interpretation . . . does not
include giving claims a legally incorrect interpretation”
“divorced from the [S]pecification and the record evidence.”
Id. (citations and internal quotation marks omitted); see PPC
Broadband, Inc. v. Corning Optical Commc'ns RF, LLC, 815
F.3d 747, 751-53 (Fed. Cir. 2016).
. . .
The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the [S]pecification is not
whether the [S]pecification proscribes or precludes some broad
reading of the claim term adopted by the [E]xaminer. And it is
not simply an interpretation that is not inconsistent with the
specification. It is an interpretation that corresponds with what
and how the inventor describes his invention in the
[S]pecification, i.e., an interpretation that is “consistent with the
[S]pecification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997) (citation and internal quotation marks omitted); see also
In re Suitco Surface, 603 F.3d 1255, 1259-60 (Fed. Cir. 2010).
In re Smith Int'l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017).
Our reviewing court further guides that the use of two similar but
different terms “in close proximity in the same claim gives rise to an
inference that a different meaning should be assigned to each.” Bancorp
Appeal 2019-004983
Application 14/707,189

28

Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1373 (Fed. Cir.
2004).
Applying our reviewing court’s guidance here, and based upon our
review of the record, we conclude the Examiner’s interpretation of the
disputed claim terms “electronic consumer agent” and “electronic
manufacturer agent” (claim 1) is overly broad, unreasonable, and
inconsistent with Appellant’s Specification, because we find Appellant's
Specification describes the “electronic consumer agent 104” and “the first
electronic manufacturer agent 108” as distinct elements, which are
depicted separately in Appellant’s Figure 6. See also Spec. ¶¶ 41, 42.
Turning to the evidence, we find Moss is silent regarding any mention
of software agents, as that term is understood in the art, or consistent with
the supporting description found in Appellant’s Specification (¶¶ 41–42).
Further, we do not find the Examiner’s mapping of both the manufacturer
agent and the consumer agent to Moss’s Cairo (i.e., an Internet shopping
service)11 is reasonable given that the cited sections of Moss do not disclose
both an electronic consumer agent and a separate and distinct electronic
manufacturer agent, consistent with the description found in Appellant’s
Specification. See Spec. ¶¶ 41-42.
Moreover, such mapping of two claim terms to a single descriptive
portion or feature found in Moss (i.e., “Cairo”) does not satisfy the rigorous
requirements of anticipation. To show anticipation, the Examiner must
provide a clear one-to-one mapping of each claim limitation to the

11 See Moss ¶ 25: “The following is a detailed description of the features and
capabilities of an Internet and mobile shopping service which is referred to
herein as Cairo.” (emphasis added).

Appeal 2019-004983
Application 14/707,189

29

corresponding specific feature found expressly or inherently in the reference,
arranged as claimed, which the Examiner must identify with particularity.12
Therefore, on this record, we find a preponderance of the evidence
supports Appellant’s arguments regarding the two contested claim terms of
the “electronic consumer agent” and the “first electronic manufacturer
agent,” as being improperly construed and mapped by the Examiner. See
Appeal Br. 38; see also Reply Br. 12.
We note remaining independent claims 7, 14, and 26 recite the
aforementioned contested limitations of claim 1 in similar form having
commensurate scope. Accordingly, we are constrained on this record to
reverse the Examiner’s anticipation Rejection C each independent claim 1,
7, 14, and 26 on appeal. Because we have reversed Rejection C of all
independent claims on appeal, for the same reasons, we reverse anticipation
Rejection C all dependent claims on appeal.

Conclusions
(1) The Examiner erred with respect to Rejection A of claims 4, 11,
18, and 29, under 35 U.S.C. § 112(b).
(2) The Examiner did not err with respect to Rejection A of claims
7 and 26, under 35 U.S.C. § 112(b).

12 See 37 C.F.R. § 1.104(c)(2) (“When a reference is complex or shows or
describes inventions other than that claimed by the applicant, the particular
part relied on must be designated as nearly as practicable. The pertinence
of each reference, if not apparent, must be clearly explained and each
rejected claim specified.”) (emphasis added).
Appeal 2019-004983
Application 14/707,189

30

(3) The Examiner did not err with respect to Rejection B of claims
1–20 and 26–30, under 35 U.S.C. § 101.
(4) The Examiner erred with respect to anticipation Rejection C of
claims 1–20 and 26–30, under 35 U.S.C. § 102(a) over Moss
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Basis/References Affirmed Reversed
4, 7, 11, 18, 26,
29
112(b) Indefiniteness 7, 26 4, 11, 18, 29
1–20, 26–30 101 Eligibility 1–20, 26–30
1–20, 26–30 102(a) Moss 1–20, 26–30
Overall
Outcome
1–20,
26–30

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