eBay Inc.

Patent Trials and Appeals Board

Jun 17, 2020

14818034 - (D) (P.T.A.B. Jun. 17, 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.
14/818,034 08/04/2015 Manas Haribhai Somaiya IP-P2741US1/281082 5085
150601 7590 06/17/2020
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
EXAMINER
SPIELER, WILLIAM
ART UNIT PAPER NUMBER
2159
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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):
IPDOCKET@SHB.COM
docket.shb@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MANAS HARIBHAI SOMAIYA, RAJYASHREE MUKHERJEE,
SHRISH MISHRA, and FANG-HSIANG SU
___________

Appeal 2019-001407
Application 14/818,034
Technology Center 2100
____________

Before BRADLEY W. BAUMEISTER, ERIC B. CHEN, and
RUSSELL E. CASS, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge CHEN.

Opinion Concurring filed by Administrative Patent Judge BAUMEISTER.

CHEN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as eBay, Inc. (Br. 3.)
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CLAIMED SUBJECT MATTER
The claims are directed to enhancing autocomplete search
suggestions, such that a query portion with a token portion generates a first
search query suggestion set having a first order based on the token portion.
(Abstract.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter, with disputed limitations in italics:
1. A computer-implemented method, comprising:
receiving, by a server device, at least a query portion
from a client device to conduct a search based at least in part on
the received query portion;
generating, by the server device, at least a first search
query suggestion based at least in part on a determination that at
least the received query portion corresponds to at least one
token portion stored in a token pool that includes a plurality of
tokens generated by the server device;
generating, by the server device, at least a second search
query suggestion based at least in part on an expansion of at
least a portion of the generated first search query suggestion,
wherein the expansion is performed by the server device based
at least in part on a session history associated with the client
device; and
communicating, by the server device, at least the
generated first and second search query suggestions to the client
device responsive to the received query portion.

REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter.
Claims 1–20 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
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OPINION
§ 101 Rejection
We are persuaded by Appellant’s arguments (Br. 9) that the Examiner
has not satisfied the proper burden for making a prima facie case for patent
ineligibility under 35 U.S.C. § 101.
The Examiner determined that independent claims 1, 11, and 13 are
directed to a judicial exception. (Final Act. 3–4.) In particular, the
Examiner determined the following:
These [claimed] steps correspond to concepts identified
as abstract ideas by the courts, such as collecting information,
analyzing it, and displaying certain results of the collection and
analysis in Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350
(Fed. Cir. 2016), collecting and manipulating data, as well as
customizing information and presenting it to users based on
particular characteristics in Intellectual Ventures I LLC v.
Capital One Fin. Co., 850 F.3d 1332 (Fed. Cir. March 7, 2017),
searching and retrieving data in Intellectual Ventures I LLC v.
Erie Indemnity Co., 850 F.3d 1315 (Fed. Cir. March 7, 2017),
and obtaining and comparing intangible data in Cybersource
Co. v. Retail Decisions Inc., 654 F.3d 1366 (Fed. Cir. 2011).
(Id.) We agree that the Examiner has not satisfied the proper burden for a
prima facie case.
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
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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
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 182 n.7 (quoting Corning v. Burden, 56 U.S.
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 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
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protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. at 191 (citing Benson and Flook); see also, 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
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’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019); see also USPTO, October 2019
Update: Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019).
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
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. 2019)).
84 Fed. Reg. at 52–55.
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
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 84 Fed. Reg. 56.
Although the Examiner generally states that the steps of independent
claims 1, 11 and 13 “correspond to . . . collecting information, analyzing it,
and displaying certain results of the collection and analysis . . . collecting
and manipulating data, as well as customizing information . . . searching and
retrieving data . . . and obtaining and comparing intangible data” with
citations to multiple Federal Circuit cases (Final Act. 3–4), these statements
neither: (a) identify the specific limitations in the claims under examination
that the Examiner believes recite an abstract idea; nor (b) demonstrate the
identified limitations fall within the subject matter groupings of abstract
ideas of mathematical concepts, certain methods of organizing human
activity, or mental processes. See 84 Fed. Reg. 56. In particular, the
Examiner neither accounts for all the limitations recited in claim 1, nor
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adequately articulates why the claimed concepts are analogous to the facts of
Electric Power Group, Intellectual Ventures I, and Cybersource.
Moreover, the Examiner has not adequately addressed the limitation
“generating, by the server device, at least a second search query suggestion
. . . wherein the expansion is performed by the server device based at least in
part on a session history associated with the client device,” as recited in
independent claim 1. Independent claims 11 and 13 recite similar
limitations.
Accordingly, we are persuaded by Appellant’s arguments that:
Appellant respectfully submits that in its attempt to find that the
claim is directed to an abstract idea, the Office has focused
incorrectly on, and based its conclusion on, a few concepts,
while ignoring the technical claim elements and improvement
in computing technology, and more specifically has incorrectly
focused on a few concepts in an attempt to conclude that the
claims are merely directed to “suggesting queries.” Appellant
submits that the Examiner has not pointed to any evidence that
the Appellant is indeed attempting to claim any abstract idea.
Instead Appellant is claiming an improved search engine
technology that automatically utilizes, in a unique way, a
received query portion, token pools, text expansion, and client
history to generate personalized and relevant search query
suggestions.
(Br. 9 (footnote omitted).)
Thus, we do not sustain the rejection of independent claims 1, 11, and
13 under 35 U.S.C. § 101. Claims 2–10, 12, and 14–20 depend from
independent claims 1, 11, and 13. We do not sustain the rejection of claims
2–10, 12, and 14–20 under 35 U.S.C. § 101 for the same reasons discussed
with respect to independent claims 1, 11, and 13.

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§ 112(a) Rejection
We are unpersuaded by Appellant’s arguments (Br. 22–25) that the
limitation “generating . . . at least a second search query suggestion based at
least in part on an expansion of at least a portion of the generated first search
query suggestion,” as recited in independent claim 1, complies with the
written description requirement under 35 U.S.C. § 112(a).
The Examiner found that “[i]ndependent claim[] 1 . . . recite[s]
generating a second search query suggestion by expanding a first search
query suggestion,” however, “[t]he specification as originally filed does not
disclose expanding a first search query suggestion, but rather, expands the
user query” and “is silent as to expanding a suggestion.” (Final Act. 6–7.)
We agree with the Examiner’s findings.
Independent claim 1 recites “generating . . . at least a second search
query suggestion based at least in part on an expansion of at least a portion
of the generated first search query suggestion . . . based at least in part on a
session history” (emphases added). With respect to the expansion of session
history, Appellant’s Specification discloses the following:
In some instances, a session history server 154 stores
session histories for a plurality of users (e.g., the user 106). In
some example embodiments, the session history server 154
contains one or more data structures and memory components
configured to store query items, query portions, tokens, token
portions, and the like associated with each user 106 of the
plurality of users 106. In some situations, the session history
server 154 may additionally include data structures configured
to store a global session history representative of the session
histories and queries of all of the plurality of users 106. In
some instances, the session history server 154 is implemented
as a component of the search enhancement system 150.
(¶ 32 (emphases added).)
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Generating the expansion queue may be understood as an
expansion operation in which the search enhancement system
150 enhances search query suggestions (e.g., the native queue)
by first expanding the user query based on her session history
and token pool. The search enhancement system 150 utilizing
multiple expansion strategies to enhance search query
suggestions based on selections, parameters, or desires of the
system developer. . . . For each potential query, the search
enhancement system 150 may retrieve corresponding query
suggestion results from the session history server 154.
(¶ 62 (emphases added).)
Because Appellant’s Specification discloses that session history
server 154 stores queries from users (¶ 32) and “search enhancement system
150 enhances search query suggestions (e.g., the native queue) by first
expanding the user query based on her session history” (¶ 62), rather than
based on an expansion “of the generated first search query suggestion,” as
claimed, Appellant’s Specification does not provides adequate written
descriptive support for the limitation “generating . . . at least a second search
query suggestion based at least in part on an expansion of at least a portion
of the generated first search query suggestion” (emphasis added).
Appellant argues the following:
[W]hile the specification does describe that a received
user query can be expanded, the specification clearly describes
additional features that further enhances suggestions generated
based on the user query. More specifically, the generation of
the expansion queue “may be understood as an expansion
operation in which the search enhancement system enhances
search query suggestions (e.g., the native queue) by first
expanding the user query based on her session history and
token pool.” The specification further recites that “multiple
expansion strategies” may be employed to enhance search
query suggestions, and further “to expand the current query to a
list of potential queries.”
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(Br. 22–23 (emphases and footnotes omitted).) However, even if Appellant
is correct that “a received user query can be expanded . . . [and additional
features] further enhance[] suggestions generated based on the user query”
(id.), Appellant has not adequately addressed the Examiner’s findings with
respect to paragraph 62 of the Specification, which discloses that “search
enhancement system 150 enhances search query suggestions (e.g., the native
queue) by first expanding the user query based on her session history”
(¶ 62). Appellant has also not sufficiently pointed to disclosure in the
Specification that the second search query suggestion is generated by
expanding at least a portion of the “generated first query suggestion,” as
claimed.
Appellant further argues the following:
While it is true that the “expansion module generates
search query suggestions using the query portion received by
the receiver module 210 and the token pool associated with the
client device 110,” the specification clearly recites
embodiments where a first set of query suggestions can be
generated based in part on the received query portion, that a
quality of tokens included in the generated first set of query
suggestions can be determined, and that a second search query
suggestion set can be generated based on these tokens having a
token quality determined to be above a predetermined quality
threshold.
(Br. 25 (footnotes omitted).)
Again, even if Appellant is correct that “a second search query
suggestion set can be generated based on these tokens having a token quality
determined to be above a predetermined quality threshold,” the Examiner’s
§ 112(a) rejection for lacking adequate written was not based upon search
query suggestions based upon tokens. Moreover, Appellant has not
sufficiently explained how this alleged disclosure in the Specification of
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generating a second search query suggestion based on these tokens discloses
generating the second search query suggestion by expanding at least a
portion of the “generated first query suggestion,” as claimed.
Thus, we agree with the Examiner that the Specification fails to
provide written description support for the limitation “generating . . . at least
a second search query suggestion based at least in part on an expansion of at
least a portion of the generated first search query suggestion.”
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 112(a). Claims 2–10 depend from claim 1, and Appellant has
not presented any additional substantive arguments with respect to these
claims. Therefore, we sustain the rejection of claims 2–10 under 35 U.S.C.
§ 112(a), for the same reasons discussed with respect to independent
claim 1.
Independent claims 11 and 13 recite limitations similar to those
discussed with respect to independent claim 1, and Appellant has not
presented any additional substantive arguments with respect to these claims.
We sustain the rejection of claims 11 and 13, as well as dependent claims 12
and 14–20, for the same reasons discussed with respect to claim 1.

DECISION
The Examiner’s decision rejecting claims 1–20 under 35 U.S.C. § 101
is reversed.
The Examiner’s decision rejecting claims 1–20 under 35 U.S.C.
§ 112(a) is affirmed.

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DECISION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 112(a) Written
Description
1–20
Overall
Outcome
1–20

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)(1)(iv).

AFFIRMED

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BAUMEISTER, Administrative Patent Judge, concurring.
I join the Majority in affirming the Examiner’s ultimate decision to
reject claims 1–20, but I would affirm for different reasons. I would affirm
the rejection under 35 U.S.C. § 101 because Appellant has not established
that the Examiner erred in determining that the claims are directed to a
judicial exception to patent-eligible subject matter (an abstract idea) without
reciting significantly more. I would reverse the rejection under 35 U.S.C.
§ 112(a) (pre-AIA § 112, ¶ 1) because the Examiner has not established that
the claims fail to comply with the written description requirement. My
reasons follow.

THE SECTION 101 REJECTION
The Representative Claim
Independent claim 1 represents the appealed claims.2 Claim 1 is
reproduced below with paragraph designators added for ease of reference
and emphasis added to the claim language that recites an abstract idea:
1. A computer-implemented method, comprising:
[(a)] receiving, by a server device, at least a query portion from
a client device to conduct a search based at least in part on the
received query portion;
[(b)] generating, by the server device, at least a first search
query suggestion based at least in part on a determination that
at least the received query portion corresponds to at least one
token portion stored in a token pool that includes a plurality of
tokens generated by the server device;

2 Appellant argues all of the claims together as a group. Br. 8–21.
Accordingly, independent claim 1 can be designated as representative.
37 C.F.R. § 41.37(c)(1)(iv).
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[(c)] generating, by the server device, at least a second search
query suggestion based at least in part on an expansion of at
least a portion of the generated first search query suggestion,
wherein the expansion is performed by the server device based
at least in part on a session history associated with the client
device; and
[(d)] communicating, by the server device, at least the
generated first and second search query suggestions to the client
device responsive to the received query portion.
Step 2A, Prong 1
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54.
Limitation (a) of claim 1 recites, “receiving . . . at least a query
portion . . . to conduct a search based at least in part on the received query
portion.” Receiving a query for data or information constitutes a certain
method of organizing human activity. More specifically, receiving a search
query constitutes a method of managing interactions between people because
the received query provides parameters that constrain or instruct the search
that subsequently is to be performed after the generated first and second
search queries are communicated in step (d), discussed below. The
2019 Guidance expressly recognizes this certain method of organizing
human activity as constituting a patent-ineligible abstract idea.
2019 Guidance, 84 Fed. Reg. at 52.
Receiving a query portion also constitutes a mental process. More
specifically, receiving such a query or a communication entails a person
making a mental observation. In addition to the category of “certain
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methods of organizing human activity,” the 2019 Guidance also recognizes
mental processes, including observations, as constituting a patent-ineligible
abstract idea. 2019 Guidance, 84 Fed. Reg. at 52.
Accordingly, limitation (a) recites a patent-ineligible abstract idea.
Limitations (b) and (c) recite,
(b) generating . . . at least a first search query suggestion based
at least in part on a determination that at least the received query
portion corresponds to at least one token portion stored in a token
pool that includes a plurality of tokens generated by the server
device;
(c) Generating . . . at least a second search query suggestion
based at least in part on an expansion of at least a portion of the
generated first search query suggestion, wherein the expansion is
performed by the server device based at least in part on a session
history associated with the client device.
Generating search query suggestions constitutes a mental process,
such as an evaluation, judgment, or opinion that can be performed in the
human mind. For example, prior to the advent of the Internet, a researcher
might ask a librarian or the like for assistance in how to go about searching
for a particular topic, and the librarian could provide the researcher search
strategies that entail synonyms and related topics and concepts. The
2019 Guidance expressly recognizes such mental processes as constituting
patent-ineligible abstract ideas. 2019 Guidance, 84 Fed. Reg. at 52. The
“mental processes” judicial exception also includes concepts that can be
performed by a human with a pen and paper as well as those that can be
performed entirely in the mind. See October 2019 Guidance Update at 9
(“A claim that encompasses a human performing the step(s) mentally with
the aid of a pen and paper recites a mental process”) (emphasis omitted).
Accordingly, limitations (b) and (c) recite a patent-ineligible abstract idea.
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Limitation (d) recites, “communicating . . . at least the generated first
and second search query suggestions . . . responsive to the received query
portion.” For the reasons set forth in relation to limitation (a) above,
communicating search query suggestions constitute certain methods of
organizing human activity entailing both managing interactions between
people and also mental processes that entail expressing judgments or
opinions. Accordingly, limitations (d) recites a patent-ineligible abstract
idea. 2019 Guidance, 84 Fed. Reg. at 52.
For these reasons, each of limitations (a) through (d) recite judicial
exceptions to patent-eligible subject matter under step 2A, prong 1, of the
2019 Guidance. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea
. . . does not render the claim non-abstract.”)
Step 2A, Prong 2
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies
considerations indicative of whether an additional element or combination of
elements integrate the judicial exception into a practical application, such as
an additional element reflecting an improvement in the functioning of a
computer or an improvement to other technology or technical field. Id. at
55; MPEP § 2106.05(a).
The only additional elements in claim 1 beyond the recited abstract
ideas noted above consist of the preamble’s recitation that the method is
“computer-implemented,” and the claim limitations’ recitations of “a server
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device” and “a client device.” These additional elements do not integrate the
abstract ideas into a practical application.
For example, the entirety of limitation (a), including the additional
elements, recites, “receiving, by a server device, at least a query portion
from a client device to conduct a search based at least in part on the received
query portion.” This limitation merely is directed to insignificant pre-
solution activity.
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Similarly, claim 1’s final step, “communicating, by the server device,
at least the generated first and second search query suggestions to the client
device responsive to the received query portion,” does not add any
meaningful limitations to the abstract idea because it merely is directed to
the insignificant post-solution activity of transmitting data. See, e.g., Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed. Cir. 2016) (holding
that printing or downloading generated menus constituted insignificant
extra-solution activity).
Appellant argues, for example, that the Examiner overgeneralized the
claims, and that the claims, instead, are directed to “an improved search
engine technology that automatically utilizes, in a unique way, a received
query portion, token pools, text expansion, and client history to generate
personalized and relevant search query suggestions.” Br. 9.
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This argument is unpersuasive for two reasons. First, the level of
abstraction at which the Examiner describes the invention does not change
the accuracy of the Examiner’s determination. Apple v. Ameranth Inc., 842
F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be
described at different levels of abstraction.”)
Second, Appellant’s arguments improperly conflate the purported
improvements to the abstract idea (using received query portion, token
pools, text expansion, and client history to generate personalized and
relevant search query suggestions) with the purported improvements to the
additional elements (the server and client devices). See BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept”); Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea”); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an inventive concept
in the non-abstract application realm”).
Appellant further argues, “the claims automate a process that was
previously not performed by humans or by a computer. At a minimum,
this fact is supported by a finding the Office that the claimed combination of
steps are not anticipated or rendered obvious over the prior art.” Br. 16.
This argument is unpersuasive. “The ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–
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89 (1981). A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.
For these reasons, Appellant does not persuasively demonstrate that
claim 1 is directed to an improvement in the function of a computer or to any
other technology or technical field. MPEP § 2106.05(a). Nor does
Appellant persuasively demonstrate that claim 1 is directed to a particular
machine or transformation, or that claim 1 adds any other meaningful
limitations for the purposes of the analysis under Section 101. MPEP
§§ 2106.05(b), (c), (e). Accordingly, Appellant does not persuasively
demonstrate that claim 1 integrates the recited abstract ideas into a practical
application within the meaning of the 2019 Guidance. See 2019 Guidance,
84 Fed. Reg. at 52–55.
Step 2B
Under step 2B of the 2019 Guidance, we are to next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 2019 Guidance, 84
Fed. Reg. at 56; MPEP § 2106.05(d).
Appellant’s Specification, by describing computer-related components
at a high level without details of structure or implementation, indicates that
the recited additional elements—a computer-implemented method that
includes a server device, and a client device—are well understood, routine
and conventional:
FIG. 10 is a block diagram illustrating components of a machine
1000, according to some example embodiments, able to read
instructions 1016 from a machine-readable medium (e.g., a
machine-readable storage medium) and perform any one or more
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of the methodologies discussed herein. . . . [I]nstructions 1016
transform the general, non-programmed machine 1000 into a
particular machine programmed to carry out the described and
illustrated functions in the manner described. In alternative
embodiments, the machine 1000 operates as a standalone device
or may be coupled (e.g., networked) to other machines. In a
networked deployment, the machine 1000 may operate in the
capacity of a server machine or a client machine in a server-client
network environment, or as a peer machine in a peer-to-peer (or
distributed) network environment. In various embodiments, the
machine 1000 may comprise, but not be limited to, a server
computer, a client computer, a personal computer (PC), a tablet
computer, a laptop computer, a netbook, a set-top box (STB), a
personal digital assistant (PDA), an entertainment media system,
a cellular telephone, a smart phone, a mobile device, a wearable
device (e.g., a smart watch), other smart devices, a web
appliance, a network router, a network switch, a network bridge,
or any machine capable of executing the instructions 1016,
sequentially or otherwise, that specify actions to be taken by
machine 1000. Further, while only a single machine 1000 is
illustrated, the term “machine” shall also be taken to include a
collection of machines 1000 that individually or jointly execute
the instructions 1016 to perform any one or more of the
methodologies discussed herein.
The machine 1000 may include processors 1010, memory
1030, and I/O components 1050, which may be configured to
communicate with each other such as via a bus 1002. In an
example embodiment, the processors 1010 (e.g., a central
processing unit (CPU), a reduced instruction set computing
(RISC) processor, a complex instruction set computing (CISC)
processor, a graphics processing unit (GPU), a digital signal
processor (DSP), an application specific integrated circuit
(ASIC), a radio-frequency integrated circuit (RFIC), another
processor, or any suitable combination thereof) may include, for
example, processor 1012 and processor 1014 that may execute
instructions 1016. The term “processor” is intended to include
multi-core processor 1010 that may comprise two or more
independent processors 1012, 1014 (sometimes referred to as
“cores”) that may execute instructions 1016 contemporaneously.
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Although FIG. 10 shows multiple processors 1012, 1014, the
machine 1000 may include a single processor 1010 with a single
core, a single processor 1010 with multiple cores (e.g., a multi-
core process), multiple processors 1010 with a single core,
multiple processors 1010 with multiples cores, or any
combination thereof.
The memory/storage 1030 may include a memory 1032,
such as a main memory, or other memory storage, and a storage
unit 1036, both accessible to the processors 1010 such as via the
bus 1002. The storage unit 1036 and memory 1032 store the
instructions 1016 embodying any one or more of the
methodologies or functions described herein. The instructions
1016 may also reside, completely or partially, within the memory
1032, within the storage unit 1036, within at least one of the
processors 1010 (e.g., within the processor 1010's cache
memory), or any suitable combination thereof, during execution
thereof by the machine 1000. Accordingly, the memory 1032,
the storage unit 1036, and the memory of processors 1010 are
examples of machine-readable media.
Spec. ¶¶ 157–59. Paragraphs 160 through 166 of Appellant’s Specification
further support the Examiner’s finding that Appellant’s Specification
indicates that a generic computer can perform the claimed invention. Final
Act. 4 (citing Spec. ¶¶ 157–64).
Furthermore, Appellant’s Specification does not indicate that
consideration of these conventional elements as an ordered combination
adds any significance beyond the additional elements, as considered
individually. Rather, Appellant’s Specification indicates that the invention
is directed to an abstract idea that is made more efficient with generic
computer components:
In various example embodiments, search query suggestions are
enhanced and personalized to a user by a search enhancement
system based on prior search queries entered by the user. The
methods and systems employed by the search enhancement
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system to enhance search query suggestions may bias (e.g.,
expand, remove, and re-rank) the standard search query
suggestions with the user’s past search queries so as to bring
more relevant and personalized search query suggestions. The
user’s preferences along several dimensions like brand, size,
gender, etc. are already captured via her past searches. Utilizing
this information and modifying the standard search query
suggestions to take into account such implicit preferences may
delight the user, and reduce her time to quickly reach relevant
search queries. For example, if the user previously entered the
search query “gucci handbag,” responsive to typing “belt” in the
search box a search query suggestion for “gucci belt” may be
shown.
Spec. ¶ 18.
For these reasons, claim 1 does not recite additional elements that,
either individually or as an ordered combination, amount to significantly
more than the judicial exception within the meaning of the 2019 Guidance.
2019 Guidance, 84 Fed. Reg. at 52–55; MPEP § 2106.05(d).
Accordingly, I would affirm the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to an exception to patent-eligible subject
matter without reciting significantly more. I, likewise, would affirm the
section 101 rejection of claims 2–20, which Appellant does not argue
separately. Br. 8–21.

THE SECTION 112(a) REJECTION
The Examiner bases the written-description rejection on the rationale,
“[i]ndependent claim[] 1 . . . recite[s] generating a second search query
suggestion by expanding a first search query suggestion,” however, “[t]he
specification as originally filed does not disclose expanding a first search
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query suggestion, but rather, expands the user query” and “is silent as to
expanding a suggestion.” Final Act. 6–7.
Appellant argues that the originally filed Specification recites, inter
alia,
The native results may indicate the method 300, 500, or 600
having been partially performed, as in operations 320, 340, 620,
and 640. As shown, after performing operation 320 or 620, the
native results lack query suggestions related to or including
Gucci, in some embodiments. The expansion result module 250
may perform the operations 340 or 640. The expansion result
module 250 generates two query items “Gucci shoes” and
“Gucci shoes men,” which may be determined to have a
higher relative relevance than the query suggestion of the
native result module 220.
Br. 25 (citing Spec. ¶ 110) (emphasis added in Appellant’s Brief).
This passage indicates that in at least this embodiment, the second
suggestion is compared to the first suggestion, is found to have a higher
relevance, and, for that reason, is used to expand the first suggestion.
Accordingly, the Examiner has not established that the disputed claim
language is unsupported. I, therefore, would reverse the written description
rejection under 35 U.S.C. § 112(a).