Nick Bossinakis

Patent Trials and Appeals Board

Sep 23, 2019

13678819 - (D) (P.T.A.B. Sep. 23, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/678,819 11/16/2012 Nick Bossinakis AOPSI.0112 5836
22858 7590 09/23/2019
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
EXAMINER
FADOK, MARK A
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
09/23/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICK BOSSINAKIS
____________

Appeal 2018-006131
Application 13/678,819
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, DENISE POTHIER, and
JOHN EVANS Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 21, 22, 41, and 42, which are all the claims pending in this
application.1 Claims 3–20, 23–40, and 43–60 are withdrawn. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is Overall Parts Solutions, Inc. App. Br. 2.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to supply chain
management systems and methods. Spec. 3.
Exemplary Claim
1. A supply chain management system comprising:
(a) customer order entry subsystem;
(b) part/product quoting subsystem:
(c) part/product advertising subsystem;
(d) vendor order fulfillment subsystem; and
(e) transportation tracking subsystem;

wherein

said customer order entry subsystem is configured to
accept a part/product order from a customer, wherein said
part/product order comprises an ordered part/product of
a plurality of parts/products stored in a local
price/availability/delivery database;

said customer order entry subsystem comprises a status
screen configured to display the real-time order status of said
ordered part/product and information about said ordered
part/product stored In the local price/availability/delivery
database;

said part/product quoting subsystem is configured to
generate and transmit a quote invitation to a first set of vendors

2 We herein refer to the Final Office Action, mailed May 18, 2017 (“Final
Act.”); Appeal Brief, filed Dec. 18, 2017 (“App. Br.”); Supp. Appeal Brief
with corrected Claims Appendix, filed Jan. 30, 2018, Examiner’s Answer,
mailed Mar. 23, 2018 (“Ans.”), and the Reply Brief, filed May 23, 2018
(“Reply Br.”).
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of a plurality of vendors using said part/product order, wherein
the plurality of vendors is retrieved from a vendor database;
said part/product quoting subsystem is configured to
receive at least one vendor quote for said part/product order in
response to the quote invitation;

said at least one vendor quote comprises a quote status
further comprising the availability of said ordered part/product,
the price of said ordered part/product, and delivery options and
statistics of said ordered part/product;

said at least one vendor quote is displayed in said status
screen;

said part/product advertising subsystem comprises a
vendor advertising database, wherein the vendor advertising
database comprises a plurality of advertisements, wherein each
of the plurality of advertisements is associated with a second set
of vendors of the plurality of vendors, and wherein at least one
of the plurality of advertisements is associated with a
part/product of the plurality of parts/products, wherein the
at least one of the plurality of ads forms at least one context-
sensitive vendor advertisement, wherein the associated
part/product of the at least one context-sensitive vendor
advertisement is said ordered part/product;

[L1] said part/product advertising subsystem is
configured to periodically query the plurality of vendors for
information regarding the plurality of parts/products and update
the vendor advertising database and the local
price/availability/delivery database with the information
regarding the plurality of parts and products;

[L2] said part/product advertising subsystem is
configured to trigger a parts/product vendor advertisement
selection process, wherein the parts/products vendor
advertisement selection process determines a selected
advertisement from the at least one context-sensitive vendor
advertisement and an alternate vendor advertisement, wherein
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the parts/product vendor advertisement selection process
retrieves the selected advertisement from the vendor advertising
database;

said part/product advertising subsystem is configured to
display the selected advertisement in said status screen, wherein
the selected advertisement comprises an advertising quote for
said ordered part/product;

said customer order entry subsystem is configured to
permit said customer to select said at least one vendor quote or
said advertising quote to define a selected part/product order;

said vendor order fulfillment subsystem is configured to
receive said selected part/product order over a communications
network and allow a vendor to accept/reject said selected
part/product order and provides order status feedback to said
customer on said status screen;

said vendor order fulfillment subsystem is configured to
execute shipment of the selected part/product associated with
said selected part/product order to said customer
using optimized delivery routing;

said transportation tracking subsystem is configured to
track the physical location of said selected part/product from
said vendor to said customer; and

said status screen is configured to display in real-time the
status of said shipment at various way-points within said
optimized delivery routing.
Supp. App. Br. 2–3, filed January 30, 2018, “Claims Appendix.” (Emphasis
added regarding the disputed limitations L1 and L2 under pre-AIA 35
U.S.C. § 103(a)).

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Rejections
A. Claims 1, 2, 21, 22, 41, and 42 are rejected under 35 U.S.C. § 101,
as being directed to a judicial exception, without significantly more.
B. Claims 1, 2, 21, 22, 41, and 42 are rejected under pre-AIA
35 U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Scruton et al. (US 2013/0290129 A1, pub. Oct. 31, 2013)
(hereinafter “Scruton”), Racco et al. (US 2011/0161182 A1; pub. Jun. 30,
2011) (hereinafter “Racco”), and Ebert et al. (US 2003/0227392 A1; pub.
Dec. 11, 2003) (hereinafter “Ebert”).

ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
We have reviewed the Examiner’s rejections A and B as set forth in
the Final Action, the Appellant’s responsive arguments in the Appeal Brief,
and the Examiner’s responses to the Appellant’s arguments in the Answer.
We have also reviewed Appellant’s arguments in the Reply Brief.
Based upon our review, and for the reasons discussed below,
Appellant does not provide sufficient argument or evidence to persuade us
the Examiner erred with respect to all claims 1, 2, 21, 22, 41, and 42, on
appeal, as rejected under both Rejections A and B. See Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential).
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Rejection A of Claims 1, 2, 21, 22, 41, and 42 under 35 U.S.C. § 101
Issue: Under 35 U.S.C. § 101, did the Examiner err by rejecting
claims 1, 2, 21, 22, 41, and 42, as being directed to a judicial exception,
without significantly more?
Principles of Law — 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “‘[L]aws of nature, natural phenomena, and abstract
ideas’ are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.” (emphasis omitted)); see also Bilski v. Kappos, 561 U.S.
593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding of rubber products” (Diehr, 450 U.S. at 193); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
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that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.

Subject Matter Eligibility — 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This
new guidance is applied in this Opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people);3 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).4, 5
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.

3 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter
“Step 2A, prong 1”).
4 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter
“Step 2A, prong 2”).
5 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the additional elements of the claim:
(3) add a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
6
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:

6 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
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);
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3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).

2019 Revised Guidance, Step 2A, Prong One7
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.

7 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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The Examiner concludes claims 1, 2, 21, 22, 41, and 42 recite:
the abstract idea of integrating product ordering, vendor order
fulfillment and vendor advertising; i.e. comparison shopping
(applicant's specification, page 8, lines 23-28).
Final Act. 2.
We agree with the Examiner that the claims recite judicial exceptions
that fall into the broad category of certain methods of organizing human
activity, including the subcategory of fundamental economic practices,
further including commercial interactions, advertising, marketing or sales
activities or behaviors, and business relations. See 2019 Revised Guidance,
84 Fed. Reg. at 52.
In the table below, we identify in italics the specific claim limitations
that we conclude recite the judicial exception. We additionally identify in
bold the additional claim limitations that are generic computer components:
TABLE ONE
Independent Claim 1 Revised 2019 Guidance
[a] A supply chain management
system comprising:
(a) customer order entry
subsystem;
(b) part/product quoting
subsystem:
(c) part/product advertising
subsystem;
(d) vendor order fulfillment
subsystem; and
(e) transportation tracking
subsystem;
A machine (system) is a statutory
subject matter class. See 35 U.S.C.
§ 101 (“Whoever invents or
discovers any new and useful
process, machine, manufacture, or
composition of matter, or any new
and useful improvement thereof,
may obtain a patent therefor, subject
to the conditions and requirements of
this title.”).

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[b] wherein said customer order
entry subsystem is configured to
accept a part/product order from a
customer, wherein said part/product
order comprises an ordered
part/product of a plurality of
parts/products stored in a local
price/availability/delivery database;

Order acceptance and order entry are
insignificant extra-solution activities
to the judicial exception — see
MPEP § 2106.05(g); i.e., data
gathering. See 2019 Revised
Guidance, 55 n.31.

Additional element – a generic
database.

[c] said customer order entry
subsystem comprises a status
screen configured to display the
real-time order status of said
ordered part/product and
information about said ordered
part/product stored In the local
price/availability/delivery database;

Displaying real-time order status is
insignificant extra-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).
Additional elements – a generic
status screen and database.

[d] said part/product quoting
subsystem is configured to generate
and transmit a quote invitation to a
first set of vendors of a plurality of
vendors using said
part/product order, wherein the
plurality of vendors is retrieved
from a vendor database;

Abstract idea, i.e., quotes and
associated orders fall into the
category of a fundamental economic
practice, including the subcategories
of commercial interactions,
advertising, marketing or sales
activities or behaviors, and business
relations.

Additional element – a generic
database.

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[e] said part/product quoting
subsystem is configured to receive
at least one vendor quote for said
part/product order in response to
the quote invitation;

Abstract idea, i.e., quotes and
associated orders fall into the
category of a fundamental economic
practice, including the subcategories
of commercial interactions,
advertising, marketing or sales
activities or behaviors, and business
relations.

[f] said at least one vendor
quote comprises a quote
status further comprising the
availability of said ordered
part/product, the price of said
ordered part/product, and
delivery options and statistics
of said ordered part/product;

Abstract idea, i.e., quotes and
associated orders fall into the
category of a fundamental economic
practice, including the subcategories
of commercial interactions,
advertising, marketing or sales
activities or behaviors, and business
relations.

[g] said at least one vendor quote is
displayed in said status screen;

Displaying at least one vendor quote
is insignificant extra-solution
activity. 2019 Revised Guidance, 55
n.31; see also MPEP § 2106.05(g).

Additional element – a generic status
screen.

[h] said part/product advertising
subsystem comprises a vendor
advertising database, wherein the
vendor advertising database
comprises a plurality of
advertisements, wherein each of the
plurality of advertisements is
associated with a second set of
Additional element – a generic
database.

Abstract idea, i.e., advertising is a
fundamental economic practice,
including commercial interactions,
advertising, marketing or sales
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vendors of the plurality of vendors,
and wherein at least one of the
plurality of advertisements is
associated with a part/product of the
plurality of parts/products, wherein
the at least one of the plurality of
ads forms at least one context-
sensitive vendor advertisement,
wherein the associated part/product
of the at least one context-sensitive
vendor advertisement is said
ordered part/product;

activities or behaviors, and business
relations.
[i] said part/product
advertising subsystem is
configured to periodically
query the plurality of vendors
for information regarding the
plurality of parts/products
and update the vendor
advertising database and the
local
price/availability/delivery
database with the
information regarding the
plurality of parts and
products;

Periodically querying for
information is insignificant extra-
solution activity. 2019 Revised
Guidance, 55 n.31; see also MPEP §
2106.05(g).

Additional element – a generic
database.

[j] said part/product advertising
subsystem is configured to trigger a
parts/product vendor advertisement
selection process, wherein the
parts/products vendor
advertisement selection process
determines a selected advertisement
from the at least one context-
Abstract idea, i.e.,
advertisement selection is a
fundamental economic practice,
including commercial interactions,
advertising, marketing or sales
activities or behaviors, and business
relations.
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sensitive vendor advertisement and
an alternate vendor advertisement,
wherein the parts/product vendor
advertisement selection process
retrieves the selected advertisement
from the vendor advertising
database;

Additional element – a generic
database.

[k] said part/product advertising
subsystem is configured to display
the selected advertisement in said
status screen, wherein the selected
advertisement comprises an
advertising quote for said ordered
part/product;

Displaying the selected
advertisement is insignificant extra-
solution activity. 2019 Revised
Guidance, 55 n.31; see also MPEP §
2106.05(g).

Abstract idea, i.e., advertising is a
fundamental economic practice,
including commercial interactions,
advertising, marketing or sales
activities or behaviors, and business
relations.
[l] said customer order entry
subsystem is configured to permit
said customer to select said at least
one vendor quote or said
advertising quote to define a
selected part/product order;

Abstract idea, i.e., selecting quotes
for orders or advertising are a
fundamental economic practice,
including commercial interactions,
advertising, marketing or sales
activities or behaviors, and business
relations.
[m] said vendor order fulfillment
subsystem is configured to receive
said selected part/product order
over a communications network
and allow a vendor to accept/reject
said selected part/product order and
receiving/accepting/rejecting the
order is insignificant extra-solution
activity to the judicial exception.
See 2019 Revised Guidance, 55 n.31.

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provides order status feedback to
said customer on said status screen;

Additional elements – a generic
communications network and status
screen.
[n] said vendor order fulfillment
subsystem is configured to execute
shipment of the selected
part/product associated with said
selected part/product order to said
customer using optimized delivery
routing;

Executing the shipment of products
is insignificant extra-solution
activity. 2019 Revised Guidance, 55
n.31; see also MPEP § 2106.05(g).

[o] said transportation tracking
subsystem is configured to track the
physical location of said selected
part/product from said vendor to
said customer; and

Tracking locations of products is
insignificant extra-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).

[p] said status screen is configured
to display in real-time the status of
said shipment at various way-points
within said optimized delivery
routing.

Displaying the status of a shipment
is insignificant post-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).

Additional element – a generic status
screen.

We note the additional limitations of generic computer components,
which we find are at least the “status screen,” “communications network,”
and the “database,” as recited each of independent claims 1, 21 and 41.
These additional limitations are identified in bold in Table One above, and
are addressed infra under Step 2A, prong two, MPEP § 2106.05(f). We note
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the preamble of independent claim 41 recites a “computer usable medium”
as an additional limitation.
Remaining independent claims 21 and 41 recite similar language of
commensurate scope that we conclude also falls into the same abstract idea
categories mapped above in Table One for independent system claim 1.
Because we conclude all claims on appeal recite an abstract idea, as
identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong
Two.
2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Revised Guidance, we consider whether there
are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Revised Guidance, 84 Fed.
Reg. at 54–55. We have identified supra the additional elements recited in
each of independent claims 1, 21, and 41, i.e., at least the generic “status
screen,” “communications network, and “database.” See 2019 Revised
Guidance, 84 Fed. Reg. at 52.
MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

Under MPEP § 2106.05(a), Appellant contends the claims amount to
significantly more than an abstract idea:
In Trading Techs, Int'l, Inc, v. CQG, Inc., the Federal
Circuit reviewed the patentability of a graphical user interface
(GUI) used for stock trading. Specifically the patent covered a
trading system that uses a GUI that dynamically displays bid
and asked prices. CQG argued that the patent was invalid
because it covered well-known trading conceptions and simply
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described displaying market information in a grid, The Federal
Circuit disagreed and held that because the patents “require a
specific, structured graphical user interface” and the prescribed
functionality related to the interface, the patents were not
directed to abstract ideas. “The graphical user interface system
of these two patents is not an idea that has long existed, the
threshold criterion of an abstract idea and ineligible concept,”
the court wrote.
App. Br. 22 (emphasis added).
Trading Technologies International
In response to Appellant’s arguments regarding Trading Technologies
International, Inc. v. CQG, INC. (675 Fed.Appx. 1001 (Fed. Cir. 2017)), we
note Trading Technologies is non-precedential and thus is not a controlling
case authority that we must consider in this appeal.
Moreover, we conclude the claims on appeal are silent regarding
specific limitations directed to an improved status screen, communications
network, or database. See 2019 Revised Guidance, 84 Fed. Reg. at 52. See
independent claims 1, 21, and 41.
Therefore, on this record, we conclude claim 1 does not recite an
improvement to the functionality of a computer or other technology or
technical field. See MPEP § 2106.05(a).

MPEP §§ 2106.05(b) and (c)
The Bilski Machine-or-Transformation test (“MoT”)
as applied to method claims 21 and 22

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

Bilski, 561 U.S. at 604 (emphasis added).
Here, Appellant advances no arguments regarding the Bilski MoT test.
In any event, because generic computer components such as “a status
screen,” “a communications network,” and a “database” are recited in
method claims 21 and 22, we conclude these specific claims do not define or
rely upon a “particular machine.” See MPEP § 2106.05(b). Further, we
conclude method claims 21 and 22 do not transform an article to a different
state or thing. See MPEP § 2106.05(c).

MPEP § 2106.05(e) — Meaningful Claim Limitations 8
Under MPEP § 2106.05(e), Appellant argues: “Even if Applicant’s
claims were directed to an abstract idea, Applicant’s claims nevertheless
recite other meaningful limitations that amount to significantly more than a
mere patent on ‘integrating product ordering, vendor order fulfillment and
vendor advertising’ or to the abstract idea of ‘comparison shopping.’” App.
Br. 23 (emphasis added).
However, because Appellant’s argue BASCOM in support of this
argument, and urge that “the context sensitivity built into Applicant’s claims
is not a conventional or routine feature for advertisements” (id.), we will

8 MPEP § 2106.05(e): “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.”
(emphasis added).

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address Appellant’s arguments infra under Step 2B of our analysis (Inventive
Concept).9
Appellant additionally argues: “Like in DDR, the claimed solution
here is necessarily rooted in computer technology to address a problem
specifically arising in the realm of automated customization. Rather, these
are meaningful limitations that confine the claim to a particular useful
application.” App. Br. 24 (emphasis added).
We do not find that Appellant’s claims are similar to the claimed
solution the court held to be patent-eligible in DDR. In DDR, the Federal
Circuit applied the Supreme Court's Alice two-step framework, and upheld
the validity of DDR’s patent on its web-page display technology. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1255 (Fed. Cir. 2014).
The problem addressed by Appellant’s claims is not similar or
otherwise analogous to the specific technical problem addressed by the
subject claims in DDR, which were directed to retaining a website visitor
when the visitor clicked on a third-party merchant's advertisement on the
host website. Instead of taking the visitor to the third-party merchant’s
website (and thus losing the visitor to the third-party merchant), DDR’s
claimed system generated a hybrid web page that: (1) displayed product
information from the third-party merchant, but also, (2) retained the host
website’s “look and feel.”
Here, Appellant’s claim 1 is not directed to a website that retains the
host website’s “look and feel” while displaying product information from

9 See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).

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the third-party merchant, as was the case in DDR. See DDR, 773 F.3d at
1257. Although Appellant’s status screen is configured to display the real-
time status of the shipment at various way-points within the optimized
delivery routing (claim 1), we find displaying such shipping status
information is merely an improvement in the informational content that is
intended to be viewed and evaluated by a person involved in the
fundamental economic practice of commercial interactions, advertising,
marketing or sales activities or behaviors, and business relations. See 2019
Revised Guidance, 84 Fed. Reg. at 52. Cf. Trading Technologies
International, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019)
(“Information, whether displayed in the form of price values or P&L values,
is abstract.”). Moreover, an improved abstract idea is still an abstract idea.
See Mayo, 566 U.S. at 90 (holding that a novel and nonobvious claim
directed to a purely abstract idea is, nonetheless patent-ineligible).
Therefore, on this record, we conclude independent system claim 1
has no persuasively argued meaningful limitations as considered under
MPEP § 2106.05 (e).
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

Without more, we conclude Appellant’s claimed invention merely
implements the abstract idea using generic computer components, including
a status screen, communication network, and a database. See Claims 1, 21,
and 41. See 2019 Revised Guidance, 84 Fed. Reg. at 52. We note the
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supporting description of generic computer and network components in the
Specification, for example:
Some preferred embodiments may integrate the functionality of
one or more subsystems into a single functional unit. It is
anticipated that these subsystems may be optimally
implemented on a computing device executing machine
instructions read from a computer readable medium.
System Overview (0400)
The present invention system may be broadly described
as depicted in FIG. 4 (0400). In this context, a customer
(0412) interacts with a customer order status subsystem
(0413) that communicates via the Internet (0401) (or some
other communications network) with a vendor order
fulfillment subsystem (0420) to place orders for
parts/products.
Spec. 16, ll. 7–19 (emphasis added).
Exemplary Status Screen (1300)
The present invention may in many preferred embodiments
incorporate an integrated status display screen as generally
illustrated in FIG. 13
Spec. 25, ll. 5–8 (emphasis added).
Regarding the claimed databases, see Spec. 33, ll. 4–6: “All of these
transmissions may utilize web services in conjunction with a parts quoting
database to accomplish this functionality in a distributed computer network
environment.” (emphasis added).
Regarding the “computer usable medium” recited in the preamble of
claim 41, “The present invention does not limit the type of physical media on
which this software may reside.” Spec. 17, ll. 13–14 (emphasis added).
Further regarding the recited “communications network” (claim 1),
we find Appellant’s claimed invention does not provide a solution
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“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks,” as considered by the
court in DDR, 773 F.3d at 1257. (emphasis added).
Therefore, we agree with the Examiner:
It is further noted that unlike the claims in DDR holdings LLC
v. Hotels.com which set forth a specific way in which a
computer/the Internet were manipulated to achieve
the claimed functions, the claims at issue broadly recite the use
of a machine in an online environment without specifying even
arguably new physical components and without specifying any
new processes other than those directed to the performance of
managing purchasing in a supply chain itself.
Final Act. 8.
See also Trading Technologies, 921 F.3d at 1384 (“‘mere automation
of manual processes using generic computers’ . . . ‘does not constitute a
patentable improvement in computer technology.’”) (citing Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)).
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., (837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added).

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

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

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

The Supreme Court guides: “the prohibition against patenting abstract
ideas ‘cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment’ or [by] adding ‘insignificant post
solution activity.’” Bilski v. Kappos, 130 S. Ct. 3218 (2010), (quoting
Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). We note Appellant does
not advance arguments in the Briefs regarding any purported lack of
preemption.
Nor do claims 1, 2, 21, 22, 41, and 42 on appeal present any other
issues as set forth in the 2019 Revised Guidance regarding a determination
of whether the additional generic elements integrate the judicial exception
into a practical application. See Revised Guidance, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude the additional elements in claims 1, 2, 21, 22, 41, and 42
do not integrate the judicial exception into a practical application.
Therefore, we proceed to Step 2B, The Inventive Concept.

The Inventive Concept – Step 2B
Under the 2019 Revised Guidance, only if a claim: (1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
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beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

BASCOM 10
Appellant cites to BASCOM in support, and urge:
Applicant's claim recite numerous meaningful limitations that
represent something significantly more than a mere patent on
the abstract idea of integrating product ordering, vendor
order fulfillment and vendor advertising” or the abstract idea of
“comparison shopping.” For example, Applicant's claims recite
a parts/product vendor advertisements selection process that
determines which advertisement is best to display to a buyer.
Applicant's claims look at available vendor advertisement
options and at the context sensitivity of the advertisements
before choosing between the context-sensitive advertisement
and an alternate vendor advertisement. The context sensitivity
built into Applicant's claims is not a conventional or routine
feature for advertisements, especially when systems are
typically built for static advertisements.
App. Br. 23 (emphasis added).
We find Appellant’s analogy to BASCOM is unavailing. App. Br. 23–
25. The Federal Circuit held in BASCOM that the claimed Internet content
filtering, which featured an implementation “versatile enough that it could
be adapted to many different users’ preferences while also installed remotely
in a single location,” expressed an inventive concept in “the non-

10 BASCOM, 827 F.3d 1341.
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conventional and non-generic arrangement of known, conventional pieces.”
BASCOM, 827 F.3d at 1350.
Here, Appellant has not shown a non-conventional, non-generic
arrangement regarding the additional limitations of generic computer
components, as recited in each of independent claims 1, 21, and 41, which
include the generic “status screen,” “communications network,” and
databases. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Therefore, it is our view that Appellant’s claims do not involve any
improvements to another technology, technical field, or improvements to the
functioning of the computer or network, as was seen by the court in
BASCOM.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
We note Berkheimer was decided by the Federal Circuit on February
8, 2018. On April 19, 2018, the PTO issued the Memorandum titled:
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)”
(hereinafter “Berkheimer Memorandum”).11
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements (or a
combination of elements) are well-understood, routine, or conventional.
In the Final Action, the Examiner finds:
Applicant clearly indicates in FI[G]s 1 and 2 and in the
background of the specification pages 1-8, that the claimed

11 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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features are simply appended to the [I]nternet features above.
Applicant's specification does not provide any disclosure that
would suggest that these well understood [I]nternet
features/functionalities are anything other than well-understood
routine and conventional features that are simply appended to
the abstract idea to generally link the idea to technological
environment. Please also note that none of the steps 1-28 shown
supra necessarily require a computer to perform the abstract
idea, therefore, there is no identifiable inventive step.
Final Act. 7–8 (emphasis added).
Although the Supplemental Appeal Brief was filed on January 30,
2018, just over a week before Berkheimer was decided, Appellant cites to
Berkheimer in the Reply Brief, filed May 23, 2018:
Such as provided with the recent Federal Circuit decision
Berkheimer v. HP, Inc., (Fed. Cir. Feb 8, 2018), “[w]hether a
particular technology is well-understood, routine, and
conventional goes beyond what was simply known in the prior
art. The mere fact that something is disclosed in a piece of prior
art, for example, does not mean it was well-understood, routine,
and conventional.” The combination of elements of the claimed
invention, including the advertising aspects of the claimed
invention, are not well-understood, routine or convention[al]
because the state of the art at the time of filing involved
separate advertising systems, instead of integrated advertising
systems. The integration of advertising aspects into an e-
commerce model is not well known that it does not need to be
described in detail in a patent application. While advertising
and the e-commerce model are conventional, the specific
combination of advertising and e-commerce as provided by the
claimed invention is not commonly used in the relevant field. It
is the combination of the various aspects of the claimed
invention and the steps performed by the claimed invention that
allow the claimed invention to operate in a non-conventional
and non-generic way to ensure that the buyer makes the most
informed and efficient purchase while the claimed invention
reduces data redundancy and data handling. So, even, if the
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claimed invention is directed at an abstract idea, the claimed
invention comprises claim limitations that are “significantly
more” than the abstract idea.
Reply Br. 2–3 (emphasis added).
However, we find Appellant fails to substantively traverse, in the
Reply Brief (id.), the Examiner’s specific findings regarding Figures 1 and 2
and pages 1–8 of the Specification:
Applicant clearly indicates in FI[G]s 1 and 2 and in the
background of the specification pages 1-8, that the claimed
features are simply appended to the [I]nternet features above.
Applicant's specification does not provide any disclosure that
would suggest that these well understood [I]nternet
features/functionalities are anything other than well-understood
routine and conventional features that are simply appended to
the abstract idea to generally link the idea to technological
environment.
Final Act. 7–8 (emphasis added).
Therefore, on this record, we are not persuaded the Examiner erred.
Further regarding the use of the recited generic “database[s],” “status
screen” and “communications network” (independent claims 1, 21, and 41),
the Supreme Court has held “the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.” Alice, 573 U.S. at 223. Our reviewing court provides additional
guidance. See FairWarning, 839 F.3d at 1096 (“[T]he use of generic
computer elements like a microprocessor or user interface do not alone
transform an otherwise abstract idea into patent-eligible subject matter.”);
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(claims reciting, inter alia, sending messages over a network, gathering
statistics, using a computerized system to automatically determine an
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estimated outcome, and presenting offers to potential customers found to
merely recite “‘well-understood, routine conventional activit[ies],’ either by
requiring conventional computer activities or routine data-gathering steps”
(alteration in original)).
This reasoning is applicable here. Therefore, on the record before us,
Appellant has not shown that the claims on appeal add a specific limitation
beyond the judicial exception that is not “well-understood, routine, and
conventional” in the field (see MPEP § 2106.05(d)).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellant’s claims 1, 2, 21, 22, 41 and 42, considered
as a whole, is directed to a patent-ineligible abstract idea that is not
integrated into a practical application, and does not include an inventive
concept. Accordingly, for the reasons discussed above, we sustain the
Examiner’s Rejection A under 35 U.S.C. § 101 of claims 1, 2, 21, 22, 41,
and 42.12

Rejection B of Representative Independent Claim 1 under
Pre-AIA 35 U.S.C. § 103(a)

Issue: Under 35 U.S.C. § 103(a), did the Examiner err by finding
Scruton, Racco, and Ebert collectively teach or suggest the contested
limitations L1 and L2:
[L1] said part/product advertising subsystem is
configured to periodically query the plurality of vendors for
information regarding the plurality of parts/products and update
the vendor advertising database and the local

12 To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. See
37 C.F.R. § 41.37(c)(1)(iv).
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price/availability/delivery database with the information
regarding the plurality of parts and products;

[L2] said part/product advertising subsystem is
configured to trigger a parts/product vendor advertisement
selection process, wherein the parts/products vendor
advertisement selection process determines a selected
advertisement from the at least one context-sensitive vendor
advertisement and an alternate vendor advertisement, wherein
the parts/product vendor advertisement selection process
retrieves the selected advertisement from the vendor advertising
database[,]
within the meaning of representative claim 1?13 (Emphasis added). We note
limitations L1 and L2 of claim 1 are recited in similar form having
commensurate scope in remaining independent claims 21 and 41.

The Examiner’s Findings
The Examiner finds Racco (¶ 110), in combination with Scruton and
Ebert, teaches or suggests disputed limitation L1, the vendor advertising
database. See Final Act. 12.
The Examiner finds Racco (¶¶ 389, 266), in combination with Scruton
and Ebert, teaches or suggests disputed limitation L2, the context-sensitive
vendor advertisement selection. See Final Act. 12–13.

13 See supra, n.7. (We give the contested claim limitations the broadest
reasonable interpretation consistent with the Specification).
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Contested Limitation L1 of Independent Claim 1 under Rejection B
Appellant’s Contentions
Regarding the § 103(a) rejection of claim 1, Appellant contends that
Racco teaches advertisements on a webpage, and does not teach an
“advertising database,” as recited in claim 1. App. Br. 27.
However, Appellant’s contentions are not persuasive. As further
explained by the Examiner: “Scruton clearly teaches a database that
maintains lists of supplier’s parts being promoted in a database maintained
by the inventory management system.” Ans. 12 (citing Scruton, ¶ 217). The
Examiner notes that Scruton does “not specifically mention the word
‘advertising’” Ans. 12.
The Examiner explains the Racco reference was added “to show that
having an advertising database was well understood in the art.” Id. (citing
Racco ¶ 110). The Examiner additionally cites to Racco (¶¶ 140, 265, 453,
and 454) to show “the use of a local database to store promotions/listing
advertisements in a database [that] are accessed and advertised on the
intermediary from the database.” Ans. 12–13.
Turning to the evidence, we find at least Racco (¶ 453) (in
combination Scruton and Ebert) teaches or suggests the disputed L1
“advertising database” feature:
As described above, A Product Advertising option
167 can be selected from the main sell menu as shown in FIG.
12 to allow sellers 14 or administrators of other websites or
systems to integrate and/or promote their item listings from
their website into the items database 22 and the system 10. For
example, ABC Company may have their own website but may
want to use the intermediary 16 to promote their items and
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generate more sales by listing all of their items in the
intermediary’s 16 items database 22.
Racco ¶ 453.
Appellant attacks the teachings of the references in isolation and does
not specifically rebut the Examiner's ultimate legal conclusion of
obviousness which is based on the combined teachings and suggestions of
Scruton, Racco, and Elbert. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. Id.
Moreover, the test for obviousness is not whether the claimed
invention is expressly suggested in any one or all of the references, but
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Because Appellant’s arguments are directed to the references
individually, and not to the combination of the teachings, as applied by the
Examiner (see Ans. 12–13), on this record, we are not persuaded the
Examiner erred regarding disputed limitation L1. See Final Act. 11–12.

Contested Limitation L2 of Independent Claim 1 under Rejection B
[L2] said part/product advertising subsystem is
configured to trigger a parts/product vendor advertisement
selection process, wherein the parts/products vendor
advertisement selection process determines a selected
advertisement from the at least one context-sensitive vendor
advertisement and an alternate vendor advertisement, wherein
the parts/product vendor advertisement selection process
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retrieves the selected advertisement from the vendor advertising
database;
Claim 1. See App. Br. 29–31.
Appellant argues “Racco teaches user-filtered product listings, not a
context-sensitive vendor advertisement.” App. Br. 29. In support, Appellant
contends that “advertisements are not the same as product listings.” and “it is
inapposite to combine teachings for advertisements and products listings
when Racco specifically keeps advertisements and product listings
separate.” (See Racco, Figure 44).
We find Appellant’s arguments unavailing, particularly given that
Appellant expressly states in another section of the Appeal Brief: “The
product advertising feature as disclosed in Racco in paragraphs [0453] and
[0454] is a feature for integrating the seller's product listings on the seller's
third-party e-commerce system.” App. Br. 33, ¶ 3.
We note Racco’s paragraph 454 describes: “the system 10 allows
sellers 12 and suppliers 520 to utilize the system’s 10 selling tools to list and
sell their items within the system 10, or, sell their items on their own
e-commerce systems using the Product Advertising tool giving them
unparalleled flexibility in how they want to do business.”
Given these teachings, (id.), we find combining advertisements with
product listings would be nothing more than a predictable result. See KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“[A] combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”).
Regarding the recited “triggering” feature of limitation L2 of claim 1,
the Examiner’s findings are supported by a preponderance of the evidence:
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[See Racco’s] Figure 8 where parts are advertised by an
advertisement subsystem that is triggered by customized
listings/advertisements that the seller creates to allow the
system to trigger the selection of conte[x]t sensitive listings that
are related to the content (Rocco, para 0155). For example; in
FIG 8 under a specific of category “Glass” when the user
selects “door glass [(3),]” advertisements are presented to the
user that were triggered by the system selection process.
Ans. 16 (emphasis added).
For at least the aforementioned reasons, on this record we are not
persuaded of error regarding the Examiner’s underlying factual findings and
ultimate legal conclusion of obviousness for Rejection B of the disputed
limitations L1 and L2 of independent representative claim 1. Accordingly,
we sustain the Examiner’s Rejection B of claim 1.
Rejection B of Independent Claims 21 and 41 under 35 U.S.C. § 103(a)
Appellant focuses on the “tailored advertising” language recited in
independent claims 21 and 41. See App. Br. 33–34 (emphasis added).

Independent claim 21 recites, in pertinent part:

(2) determining tailored advertising between context-sensitive
vendor advertising and alternate vendor advertising, wherein
the context-sensitive vendor advertising is linked to a
part/product on said customer order entry subsystem and
wherein said tailored advertising is linked to at least one vendor
of the second set of the plurality of vendors retrieved from the
vendor database;
(emphasis added).
Remaining independent claim 41 recites identical language.
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Issue: Under 35 U.S.C. § 103(a), did the Examiner err by finding
Scruton, Racco and Ebert collectively teach or suggest the disputed claim
limitation, “tailored advertising”?
The Examiner finds Racco (¶¶ 140, 265–266, and 453–454) teaches
tailored advertising, in accordance with the supporting evidence relied upon
in the Final Office Action 10–16.
Turning to the evidence, we agree with the Examiner that Racco
teaches or suggests tailored advertising, i.e., advertising promoted in a
desired way for specific target customers:
Sellers 14 can also use their store front to attach
advertising pages. In this way, the system 10 can restrict the
amount of data that the sellers 14 can add to a listing (such as
advertisements) while still providing space to advertise and
promote in any way they wish. … The system 10 can use the
categorization database 20 to perform a filtered query … For
example, sellers 14 can create and distribute flyers to certain
groups or types of users for specific target marketing
campaigns.
Racco ¶¶ 265–266 (emphasis added).
We note there is no requirement in an obviousness analysis for the
prior art to “contain a description of the subject matter of the appealed claim
in ipsissimis verbis.” In re May, 574 F.2d 1082, 1090 (CCPA
1978). Moreover, “the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.” Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also MPEP
§ 2123.
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This reasoning is applicable here. Thus, we find Racco teaches or
suggests tailored marketing/advertising (¶¶ 265–266: “specific target
marketing campaigns.”), within the meaning of independent claims 21 and
41.
Accordingly, on this record, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner’s underlying
factual findings and ultimate legal conclusion of obviousness, as pertaining
to the disputed “tailored advertising” limitation recited in remaining
independent claims 21 and 41. (emphasis added). Accordingly, we sustain
the Examiner’s Rejection B of claims 21 and 41.

Rejection B under § 103(a) of Remaining Dependent Claims 2, 22, and 42
Appellant advances no arguments traversing the Examiner’s
Rejection B of dependent claims 2, 22, and 42. Arguments not made are
waived. See 37 C.F.R. § 41.37(c)(1)(iv). Therefore, dependent claims 2, 22,
and 42 fall with the respective independent claim 1, 21, or 41, from which
they directly depend.

CONCLUSIONS
The Examiner did not err in rejecting claims 1, 2, 21, 22, 41, and 42
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more.
The Examiner did not err in rejecting claims 1, 2, 21, 22, 41, and 42,
as being obvious under 35 U.S.C. § 103.

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DECISION
We affirm the Examiner’s decision rejecting claims 1, 2, 21, 22, 41,
and 42 under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1, 2, 21, 22, 41,
and 42 under 35 U.S.C. § 103.
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