EBAY INC.

Patent Trials and Appeals Board

Mar 23, 2021

2020004909 (P.T.A.B. Mar. 23, 2021)

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.
13/670,958 11/07/2012 Jean-David Ruvini 2043.B63US1 1399
49845 7590 03/23/2021
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
YOUNG, ASHLEY YA-SHEH
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/23/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-DAVID RUVINI
Appeal 2020-004909
Application 13/670,958
Technology Center 3600
Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
JEREMY M. PLENZLER, Administrative Patent Judges.
HOELTER, 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 13–20. Appeal Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as “eBay
Inc.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter pertains to “data processing and more
specifically, to facilitating social interaction using purchase history.” Spec.
¶ 1. Claims 1, 9, and 17 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for facilitating social connections, the method
comprising:
receiving user preferences from a first user, the user
preferences specifying a time period within a user activity history
associated with the first user, the user activity history comprising
a set of user activities that include a viewing time of one or more
web-pages that contain information describing a first item;
accessing a portion of the user activity history of the first
user based on the time period specified by the user preferences,
the portion of the user activity history including the viewing time
of the one or more web-pages that contain information describing
the first item;
identifying an indication of interest in the first item by the
first user based on the the [sic.] portion of the user activity
history, the indication of interest based on the set of user
activities that include the viewing time of each of the one or more
web-pages that contain information about the first item by the
first user;
retrieving location data that identifies a current location of
the first user in response to the identifying the indication of
interest;
searching a first range for a matching user to the first user
based on the indication of interest in the first item by the first
user, and wherein the first range extends by a first distance from
the current location of the first user;
determining a threshold number of users are not within the
first range;
adjusting the first range to a second range in response to
the determining that the threshold number of users are not within
the first range;
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identifying a second user within the second range of the
current location of the first user, the identifying based on the
indication of interest in the first item; and
simultaneously presenting a notification at a first device
associated with the first user, and a second device associated with
the second user in response to the identifying the second user
within the second range, the notification including an
identification of the indication of interest in the first item, and
one or more contact options to initiate a communication session
between the first device and the second device.
REFERENCES

Name Reference Date
Bezos et al. (“Bezos”) US 2005/0203807 A1 Sept. 15, 2005
Kishore et al.
(“Kishore”)
US 2006/0064431 A1 Mar. 23, 2006
McKiou et al.
(“McKiou”)
US 2009/0082038 A1 Mar. 26, 2009

THE REJECTIONS ON APPEAL
Claims 1, 2, 5–10, and 13–20 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to an abstract idea without
significantly more.
Claims 1, 2, 5–10, and 13–20 are rejected under 35 U.S.C. § 103 as
unpatentable over McKiou, Kishore, and Bezos.
ANALYSIS
The rejection of claims 1, 2, 5–10, and 13–20
as being directed to an abstract idea without significantly more
Appellant argues these claims together. See Appeal Br. 10–14. We
select claim 1 for review with the remaining claims (i.e., claims 2, 5–10, and
13–20) standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
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As background, Section 101 of the Patent Act provides that “any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof” is patent eligible. 35 U.S.C. § 101.
Claim 1 falls within the literal scope of this provision because it recites a
process (method). See also Ans. 3 (“the claims as a whole are considered as
being in a statutory category under Step 1 of the test”).
The Supreme Court, however, has long recognized an implicit
exception to this section: “Laws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
framework requires us, first, to consider whether the claim is “directed to
one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we
then, second, examine “the elements of each claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claims for an
“inventive concept,” “an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217–
18 (alteration in original) (quoting Mayo, 566 U.S. at 72–73).
Regarding the first step above (commonly referred to as step 2A), in
order to decide whether a claim is “directed to” an abstract idea, we are to
evaluate whether the claim (1) recites an abstract idea grouping listed in the
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guidance (commonly referred to as prong 1 of step 2A) and (2) fails to
integrate the recited abstract idea into a practical application (commonly
referred to as prong 2 of step 2A). See 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50, 51 (Jan. 7, 2019) (“2019 Eligibility
Guidance”).2 The groupings of abstract ideas listed in the guidance for
purposes of step 2A, prong 1 above include, for example: “[m]athematical
concepts,” “[c]ertain methods of organizing human activity,” and “[m]ental
processes.” 2019 Eligibility Guidance, 84 Fed. Reg. at 52.
In the event the claim is “directed to” an abstract idea (see step 2A),
we then are instructed to determine whether the claim recites an inventive
concept (commonly referred to as step 2B). The guidance explains that,
when making this determination, we should consider whether the additional
claim elements add “a specific limitation or combination of limitations that
are not [a] well-understood, routine, conventional activity in the field” or,
stated another way, whether the claim element “simply appends well-
understood, routine, conventional activities previously known to the
industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
In the matter before us (and regarding step 2A, prong 1), the Examiner
recites the limitations of claim 1 and identifies those that “are drawn to a
process that, under its broadest reasonable interpretation, covers
performance of the limitation in the mind but for the recitation of generic
computer components.” Final Act. 7–8; Ans. 3–4. Appellant acknowledges
“mental processes” as one of the “enumerated groupings” but contends that

2 An update to the 2019 Revised Patent Subject Matter Eligibility Guidance
issued in October 2019 (“October 2019 Update,” available at https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf).
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claim 1 is “not directed to subject matter within any of the enumerated
groupings of abstract ideas.” Appeal Br. 10–11. Appellant references the
same limitations described by the Examiner above contending that they
“describe a system which identifies a user device” and that because such a
device is recited, “Appellant fails to see how such operations could possibly
be performed exclusively within the human mind.” Appeal Br. 11.
Indeed, claim 1 recites both “a first device” and also “a second
device.” These are the only structural components recited in claim 1. To
better understand these claim terms, Appellant’s Specification states, “[e]ach
of the device machines 110, 112 comprises a computing device that includes
at least a display and communication capabilities.” Spec. ¶ 13. Thereafter,
Paragraph 13 identifies a variety of machines that may be considered a
“device,” which include work stations, computers, Internet appliances, hand-
held devices, wireless devices, PDA’s tablets, game consoles “and the like.”
Spec. ¶ 13. Appellant does not describe the recited “devices” with any
further specificity. As such, we do not fault the Examiner for referring to
such devices as being “generic.” See Final Act. 7, 8; see also Ans. 3
(“merely requiring generic computer implementation, which fails to
transform that abstract idea into a patent-eligible invention”).
Consequently, regarding these claim limitations, Appellant is not
persuasive that the Examiner erred is stating that “other than reciting
[devices], nothing in the claim element precludes the step from practically
being performed in the mind,” and as such, “the claim recites an abstract
idea.” Final Act. 8; see also Ans. 3, 4. We are in agreement with the
Examiner on this point.
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Next, and as noted above with respect to step 2A, prong 2, we are to
investigate whether claim 1 integrates the recited abstract idea into a
practical application. The Examiner states that there has been no such
integration into a practical application because claim 1 only recites using the
“device to perform the steps of the invention” and that this “amounts [to] no
more than mere instructions to apply the exception using a generic computer
component.” Final Act. 8; see also Ans. 6. Appellant disagrees stating that
claim 1 “recite[s] a practical application” because the claim recites
“limitations which describe ‘an additional element’ that reflects an
improvement in the functioning of a device’s ability to present and display
notifications.” Appeal Br. 12.
The 2019 Eligibility Guidance provides assistance in this matter by
setting forth examples “in which a judicial exception has not been integrated
into a practical application.” 2019 Eligibility Guidance, 84 Fed. Reg. at 55.
One listed example of non-integration is that which was alluded to by the
Examiner above, i.e., if the claim “merely recites the words ‘apply it’ (or an
equivalent) with the judicial exception.” Another example of a lack of
integration into a practical application is a claim that “merely includes
instructions to implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea.” 2019 Eligibility Guidance,
84 Fed. Reg. at 55. Appellant does not explain how the “additional element”
recited claim 1 is employed other than as a tool to apply the remaining
limitations. Further, Appellant does not explain how the “additional
element” improves the devices’ function of presenting and displaying
notifications. Appeal Br. 12. Accordingly, we agree with the Examiner on
this point.
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Having determined that claim 1 is an abstract idea under both prongs
of step 2A, we are to next investigate this claim in accordance with step 2B,
i.e., does claim 1 recite an inventive concept. See above. The Examiner
finds that “[m]ere instructions to apply an exception using a generic
computer component cannot provide an inventive concept.” Final Act. 9;
see also Ans. 8. Appellant, on the other hand, contends that claim 1 recites
“an inventive concept, including, for example, a specific method for
presenting notifications at devices.” Appeal Br. 12. Appellant does not
elaborate further as to how or in what manner claim 1 recites “a specific
method” when the limitations are recited at a high-level of generality. For
example, the first limitation recites receiving user preferences only
specifying that these preferences specify “a time period within a user activity
history.” Another limitation recites “accessing a portion of the user activity
history” which is to include “the viewing time of the one or more web-pages
that contain information” about an item. The remaining limitations also
contain similarly generic or general terms. Thus, Appellant’s contention that
claim 1 recites “a specific method for presenting notifications at devices”
(Appeal Br. 12) is not persuasive, and especially when claim 1 only recites
“presenting a notification,” not even a specific notification (not that that
would necessarily matter in the present situation).
Appellant further contends that claim 1 is “rooted in computer
technology in order to overcome a problem specifically arising in a
particular computer realm.” Appeal Br. 12; see also id. at 13. Appellant
describes this problem as “the difficulty experienced by users of social
networking platforms arising from the limitations of these platforms in
facilitating search for relevant users.” Appeal Br. 13. Accordingly,
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Appellant’s “claimed solution provides users with an improved method for
searching for social network connections.” Appeal Br. 14.
The Examiner responds stating “that the facilitating of social
connections as claimed is a well-understood, routine, conventional activity
and can readily conclude that the element(s) is widely prevalent or in
common use in the relevant industry.” Ans. 6. We do not disagree with the
Examiner that facilitating social connections is well-understood, routine, and
conventional. Appellant proffers no evidence to the contrary.
Additionally, and in order to ascertain a better understanding of claim
limitations alleged to be “rooted in computer technology,” as Appellant
contends above, our reviewing court has provided the following help:
In Enfish, for instance, the court determined that claims related
to a database architecture that used a new, self-referential
logical table were non-abstract because they focused on “an
improvement to computer functionality itself, not on economic
or other tasks for which a computer is used in its ordinary
capacity.”
Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 1304–5 (Fed. Cir.
2018) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
2016)).
In the matter before us, Appellant does not explain how claim 1 is “an
improvement to computer functionality itself” and does not, instead, recite
“economic or other tasks for which a computer is used in its ordinary
capacity.” See above. Accordingly, we are not persuaded that claim 1 is, as
asserted by Appellant, “rooted in computer technology” when assessing
whether a claim may be considered abstract or not under Section 101.
Appeal Br. 12, 13. Thus, based on the record presented, we sustain the
Examiner’s rejection of claims 1, 2, 5–10, and 13–20 under 35 U.S.C. § 101.
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The rejection of claims 1, 2, 5–10, and 13–20
as unpatentable over McKiou, Kishore, and Bezos
Appellant argues claims 1, 2, 5–10, and 13–20 together. See Appeal
Br. 15–16. We select claim 1 for review, with the remaining claims standing
or falling with claim 1.
The Examiner identifies overlapping teachings in the references to
McKiou, Kishore, and Bezos before concluding that claim 1 is obvious. For
example, claim 1 recites the limitation “receiving user preferences from a
first user, the user preferences specifying a time period within a user activity
history associated with the first user.” The Examiner finds that McKiou
teaches “receiving user preferences from a first user.” Final Act. 9–10
(citations omitted). The Examiner also finds that Kishore teaches “receiving
user preferences from a first user, the user activity comprising a set of
user activities that include a viewing time of one or more web-pages.”
Final Act. 13 (citations omitted). Additionally, the Examiner finds that
Bezos teaches “the user preferences specifying a time period within a
user activity history associated with the first user.” Final Act. 17
(citations omitted). In other words, in rejecting claim 1, the Examiner relies
upon the redundant teachings of three references, and provides reasons for
their combination. See Final Act. 16, 18.
Appellant addresses this same limitation stating “Appellant
respectfully disagrees with this assertion and submits that the cited
references do not teach or suggest such limitations.” Appeal Br. 15.
Notably, Appellant does not challenge the Examiner’s reasons for the
combination, only that the cited art does not teach the limitation in question.
However, in challenging the Examiner’s findings, Appellant only addresses
“McKiou and Kishore” to reach the above conclusion that these two
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references do not teach the above limitation. Appellant does not address the
role Bezos has in specifying a time period within a user activity history
associated with the first user, as noted above. Nor does Appellant explain
how such teachings are lacking in Bezos such that the Examiner’s reliance
thereon is faulty.
Furthermore, Appellant provides a synopsis of McKiou’s teachings
stating that McKiou does “not describe a system which enables a user to
specify ‘a time period within a user activity history.’” Appeal Br. 15–16.
However, as noted above, the Examiner relied on Bezos for this teaching,
not McKiou. Likewise, Appellant provides a synopsis of Kishore’s
teachings stating “Kishore does not however disclose a system which
enables a user to specify a portion of their user activity based on a selection
of a time period” as recited in claim 1. Appeal Br. 16. However, again, the
Examiner relied on Bezos, not Kishore, for teaching “accessing a portion of
the user activity history of the first user based on the time period
specified by the user preferences.” Final Act. 17 (citations omitted).
In summation, Appellant contends that McKiou and Kishore “fail to
teach or suggest ‘receiving user preferences from a first user’” and also that
these references do not teach “wherein ‘the user preferences specifying a
time period within a user activity history associated with the first user,’”
which is the limitation initially addressed above. Appeal Br. 16. All
Appellant contends regarding Bezos is that “Bezos was not cited by the
Examiner with respect to the above-mentioned limitation.” Appeal Br. 16.
We disagree with Appellant’s contention above for the reason that
Bezos was, indeed, cited by the Examiner with respect to that limitation.
See Final Act. 17; see also Ans. 10. Accordingly, Appellant is not
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persuasive the Examiner erred in rejecting claim 1 as being obvious over
McKiou, Kishore, and Bezos. We sustain the Examiner’s rejection of claims
1, 2, 5–10, and 13–20 as being obvious in view of such art.
CONCLUSION
In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 5–10,
13–20
101 Eligibility 1, 2, 5–10,
13–20

1, 2, 5–10,
13–20
103 McKiou, Kishore,
Bezos
1, 2, 5–10,
13–20

Overall
Outcome
1, 2, 5–10,
13–20

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