Vladislav Scholgol et al.

Patent Trials and Appeals Board

Dec 31, 2019

14691402 - (D) (P.T.A.B. Dec. 31, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/691,402 04/20/2015 Vladislav Scholgol 31730/3306-00C 1063
12716 7590 12/31/2019
Marshall, Gerstein & Borun LLP (Google)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
EXAMINER
MORRISON, JAY A
ART UNIT PAPER NUMBER
2168
NOTIFICATION DATE DELIVERY MODE
12/31/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VLADISLAV SCHOLGOL and JAMES ROBERT MACGILL
Appeal 2018-004670
Application 14/691,402
Technology Center 2100

Before ST. JOHN COURTENAY III, ELENI MANTIS MERCADER, and
JOYCE CRAIG, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5–10, and 13–24. See Non-Final
Act. 1. Claims 3, 4, 11, and 12 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Google
Inc. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a managing search results. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer-implemented method comprising:
receiving a set of search results, wherein the set of search
results is responsive to a search query received from a user,
wherein each result is associated with a relevance score
including a combination of component scores;
identifying one or more of the search results having
highest relevance scores;
determining whether the search query is a navigational
query or an exploratory query based on component scores of the
one or more of the search results having the highest relevance
scores; and
determining a number of search results to be presented to
the user depending on whether the search query is determined
to be a navigational query or an exploratory query based at least
in part on component scores of the one or more of the search
results having the highest relevance scores, including:
(i) when the search query is determined to be a
navigational query, reducing set of search results to only
include search results that are within a predetermined distance
of a location with which the user is currently associated, and (ii)
when the search query is determined to be an exploratory query,
not reducing the set of search results.
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Ge US 2005/0065916 A1 Mar. 24, 2005
Qingqing Gan et al., Analysis of Geographic Queries in a Search Engine
Log, LOCWEB 1–8 (2008) (“Gan”).

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REJECTION
Claims 1, 2, 5–10, and 13–24 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter.
Claims 1, 2, 7–10, 15–18, 21, and 22 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Gan in view of Ge.
OPINION
To the extent consistent with our analysis below, we adopt the
Examiner’s findings and conclusions in (i) the Non-Final action from which
this appeal is taken and (ii) the Answer.
Claims 1, 2, 5–10, and 13–24 stand rejected under 35 U.S.C. § 1012
Appellant argues that the Examiner failed to address the claim 1
limitations of “determining whether the search query is a navigational query
or an exploratory query based on component scores of the one or more of the
search results having the highest relevance scores” and
determining a number of search results to be presented to the
user depending on whether the search query is determined to be
a navigational query or an exploratory query based at least in
part on component scores of the one or more of the search
results having the highest relevance scores
and merely asserted that the claims are directed to “the abstract idea of
determining search results to return based on the type of query.” App. Br.
13–14.

2 Based upon Appellant’s arguments and our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the appeal of the § 101 rejection of claims 1, 2,
5–10, and 13–24 on the basis of representative claim 1.

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Appellant further points us to the Specification explaining that
limiting search results “to a single or small number of results near an address
or location of a user device” allows “the limited number of search results to
be displayed on an online map of a town or neighborhood of a city as
opposed to a map of a country or a state” (p. 2, ll. 17–22), and that
“displaying a limited number of search results allows more details associated
with each search result to be displayed” (and thus, utilize screen real estate
more efficiently) (id. at ll. 24–25). App. Br. 14.
We do not agree with Appellant’s argument. An invention is patent-
eligible if it claims a “new and useful process, machine, manufacture, or
composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has
long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of
nature, natural phenomena, and abstract ideas” are not patentable. E.g.,
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
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economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 183 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; 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 recites 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
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‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (internal citation omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(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.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that guidance, we
first look to whether the claim recites:
(1) 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) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08–2017 (Jan. 2018)).
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
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
Step 2A, Prong One
The Judicial Exception
Claim 1 recites, in pertinent part, data evaluation of search results
based on relevance to determine the type of query whether it is a
navigational query or an explanatory query:
receiving a set of search results, wherein the set of search
results is responsive to a search query received from a user,
wherein each result is associated with a relevance score
including a combination of component scores;
identifying one or more of the search results having
highest relevance scores;
determining whether the search query is a navigational
query or an exploratory query based on component scores of the
one or more of the search results having the highest relevance
scores; and
determining a number of search results to be presented to
the user depending on whether the search query is determined
to be a navigational query or an exploratory query based at least
in part on component scores of the one or more of the search
results having the highest relevance scores, including:
(i) when the search query is determined to be a
navigational query, reducing set of search results to only
include search results that are within a predetermined distance
of a location with which the user is currently associated, and (ii)
when the search query is determined to be an exploratory query,
not reducing the set of search results.
Accordingly, we conclude that the above limitations of claim 1
encompass analyzing search results having the highest relevance to
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determine whether the query is navigational or exploratory and adjusting the
search results to be presented based on the query type (i.e., navigational or
exploratory). In particular, we conclude the steps of identifying results with
highest relevance scores, and determining the type of a query as either
navigational or exploratory based on the highest relevance scores and
reducing the results when it is a navigational query to only results within a
predetermined distance of a location could be performed alternatively as
mental steps because they involve merely making a mental observation of
data and evaluating/judging the data, which can be carried out either in the
human mind (e.g., in the form of noting an observation) or with the aid of
pencil and paper. See 2019 Guidance 52 n.14; see CyberSource Corp Retail
Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011) (“[A] method that
can be performed by human thought alone is merely an abstract idea and is
not patent-eligible under § 101.”); see also In re Comiskey, 554 F.3d 967,
979 (Fed. Cir. 2009) (“[M]ental processes—or processes of human
thinking—standing alone are not patentable even if they have practical
application.”); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena
of nature, . . . mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work.”
(Emphasis added)). Additionally, mental processes remain unpatentable
even when automated to reduce the burden on the user of what once could
have been done with pen and paper. CyberSource, 654 F.3d at 1375 (“That
purely mental processes can be unpatentable, even when performed by a
computer, were precisely the holding of the Supreme Court in Gottschalk v.
Benson.”). Acts that can be performed in the human mind fall within the
abstract idea exception subgrouping of mental processes.
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Thus, we agree with the Examiner that the features of the claim
language of “determining whether the search query is a navigational query
or an exploratory query based on component scores of the one or more of the
search results having the highest relevance scores” and
determining a number of search results to be presented to the
user depending on whether the search query is determined to be
a navigational query or an exploratory query based at least in
part on component scores of the one or more of the search
results having the highest relevance scores
have been identified because the claim language determines a number of
search results depending on whether the query is determined to be a
navigational query or an exploratory query, which is equivalent to the
abstract idea of “determining search results to return based on the type of
query.” Ans. 3–4 (citing Final Act. 3). As we stated above, this type of
determination could be performed alternatively as a mental process.
Step 2A, Prong Two

Regarding the argued purported improvement (Appeal Br. 14), we
agree with the Examiner that the claims do not contain limitations directed
to a limited number of search results “displayed on an online map of a town
or neighborhood” or allow “more details associated with each search result
to be displayed” as taught by Appellant’s Specification. See Ans. 4–5.
Accordingly, Appellant’s argument is not commensurate in scope with the
claim language. See Appeal Br. 14.
Moreover, the Examiner further finds, and we agree, that the claim
does not positively recite the display or presentation of such results because
claim 1 recites “determining a number of search results to be presented to a
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user” indicating intended use as opposed to claim language such as
“displaying to a user” or “presenting to a user.” Ans. 5 (emphasis omitted).
There are no additional elements recited in the body of the claim 1.
The only recitation of a computer is in the preamble of the claim reciting “a
computer-implemented method” which does not amount to “significantly
more” than the abstract idea because it refers to a generic computer device
that is merely being used for its intended purpose. This element is recited at
a high level of generality and is merely invoked as a tool to analyze the
search results to categorize a query. Simply implementing the abstract idea
on a generic computer does not integrate the judicial exception into a
practical application, without more. See Memorandum, Step 2A, Prong
Two.
Furthermore, as discussed with respect to Step 2A, Prong Two, the
additional element in the claim amounts to no more than analyzing search
results having the highest relevance to determine whether the query is
navigational or exploratory and adjusting the search results to be presented
based on the query type using generic computers.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude the claim does 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 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,
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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.
The Examiner finds: “Generic computer components recited as
performing generic computer functions that are well-understood, routine and
conventional activities amount to no more than implementing the abstract
idea with a computerized system.” Ans. 6 (emphasis added).
Appellant advances no arguments in the Reply Brief (filed March 30,
2018) regarding the intervening case authority: Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018) (decided Feb. 8, 2018). Arguments not made are
waived. See 37 C.F.R. § 41.37(c)(1)(iv).
We note that mere data manipulations to apply an exception using
generic computers, without more, cannot integrate a judicial exception into a
practical application at Step 2A, or provide an inventive concept in Step 2B.
Moreover, we do not agree with Appellant’s argument that the additional
elements of the claims are arranged in a non-conventional and non-generic
manner. See Appeal Br. 15. See Memorandum, Step 2B, Prong 2.
For at least these reasons, we conclude that representative independent
claim 1 is patent ineligible. Accordingly, we affirm the Examiner’s rejection
of claims 1, 2, 5–10, and 13–24 under 35 U.S.C. § 101.
Claims 1, 2, 7–10, 15–18, 21, and 22 rejected under pre-AIA
35 U.S.C. § 103(a)
Appellant argues that the cited prior art does not teach “determining a
number of search results to be presented to the user depending on whether
[a] search query is determined to be a navigational query or an exploratory
query,” where
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(i) when the search query is determined to be a navigational
query, reducing set of search results to only include search
results that are within a predetermined distance of a location
with which the user is currently associated, and (ii) when the
search query is determined to be an exploratory query, not
reducing the set of search results.
App. Br. 18–21.
We do not agree with Appellant’s argument. We agree with the
Examiner’s finding that Gan discloses classifying queries as geo queries or
non-geo queries (Gan, section 4.1) that are equivalent to the claimed
navigational query or informational query, and Ge teaches a geographic-
based searching where a user-specified location and distance are “‘used to
restrict, or filter, the set of’ search results returned.” Ans. 9 (see Ge, para. 8)
(emphasis omitted). Thus, we agree with the Examiner that Gan teaches the
determination of the type of query as geo or non-geo (equivalent to the
claimed navigational or exploratory) and then not limiting the results, while
Ge teaches applied location and distance filter to geographic search results
(which is equivalent to a navigational query in the claim), which when these
teachings are combined would render a determination of the query type and
limiting of the geo/navigational searches and not of the non-geo/exploratory
searches. See id. at 8–9.
With respect to claims 2 and 10, Appellant further argues that the
cited art does not disclose that “each relevance score includes at least one of
a title component and a category component” because “Gan does not
disclose or suggest that the domains or the topical categories are included in
relevance scores.” App. Br. 21–22. We agree with the Examiner that Gan
teaches using component scores of each query result, or the web sites or
domain name and topical category (sections 6.1–6.4) where any of these
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elements could be considered a title or category that is a component of the
relevance score. See Ans. 10.
Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 7–10,
15–18, 21, and 22 under 35 U.S.C. § 103(a).
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 2, 5–10,
13–24
101

1, 2, 5–10,
13–24

1, 2, 7–10,
15–18, 21,
22
103(a) Gan, Ge 1, 2, 7–15,
18–21, 22

Overall
Outcome:
  1, 2, 5–10,
13–24

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