Ex Parte Li et al

Patent Trials and Appeals Board

Jul 8, 2019

13992380 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/992,380 11/19/2013
45457 7590 07/10/2019
SCHWEGMAN LUNDBERG & WOESSNER/Intel
P.O. Box 2938
MINNEAPOLIS, MN 55402
Hong Li
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
884.J83US1 5992
EXAMINER
WOOD, ALLISON G
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HONG LI, EDDIE BAL THASAR, RITA H. WOUHA YBI,
TAEHO KGIL, MARK PRICE, and ANAND RAJAN
Appeal2018-002592
Application 13/992,380
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-26, which are all of the pending claims, under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this Decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Sept. 20, 2017), Reply Brief ("Reply Br.," filed Jan. 12,
2018), and Specification ("Spec.," filed June 7, 2013), and to the Examiner's
Answer ("Ans.," mailed Nov. 16, 2017) and Final Office Action ("Final
Act.," mailed Mar. 29, 2017).
2 According to the Appellants, the real party in interest is Intel Corporation.
Appeal Br. 2.
Appeal2018-002592
Application 13/992,380
STATEMENT OF THE CASE
The Appellants' invention "pertain[ s] to the use of mobile electronic
devices and electronic commerce activities" (Spec. ,r 1) and "provides
techniques and configurations used for providing real-time information of a
product or service to a consumer" (id. ,r 10).
Claims 1 and 8 are the independent claims on appeal. Claim 1
(Appeal Br. 16 (Claims App.)) is illustrative of the subject matter on appeal
and is reproduced below (with added bracketing for reference):
1. A mobile wireless device comprising:
at least one processor; and
at least one memory device providing a plurality of
instructions that, when executed by the processor, cause the
processor to perform operations that:
[(a)] identify a product using a product identifier, the
product having a physical display in a commerce environment;
[ (b)] determine product information of the product to
display to a user, the product information being determined based
on the commerce environment and a behavior of the user in the
commerce environment, wherein the behavior of the user in the
commerce environment includes the user being in a particular
department of a retail store for a certain time period as
determined using near field communications and evaluating the
product, wherein a determination is made that the user evaluated
the product by accessing a search and purchase history;
[ ( c)] retrieve the product information using the product
identifier from at least two product information data sources, at
least one of the at least two product information data sources
being a competitor source;
[(d)] determine real-time product information by
determining compatibility of the product with a past purchase
made by the user identified in the purchase history, the real-time
product information including an indication of compatibility, an
alternate product when the product is not compatible with the
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past purchase, and a newer version of the product available from
the competitor; and
[(e)] display, during a time period associated with a
promotional campaign, the real-time product information in a
user interface provided by the mobile wireless device.
ANALYSIS
The Appellants argue claims 1-26 as a group. See Appeal Br. 8, 14.
We select claim 1 from the group as representative, with the remaining
claims standing or falling therewith. See 37 C.F.R. 4I.37(c)(l)(iv).
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. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk.").
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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 (Gottschalkv. Benson, 409 U.S. 63, 69 (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 (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 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.").
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If the claim is "directed to" an abstract idea, we tum 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 ( quotation marks 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.
Earlier this year, the PTO published revised guidance on the
application of§ 101. 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance").
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, 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 MPEP 3 § 2106.05(a}-(c), (e}-(h)).
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
3 Manual of Patent Examining Procedure.
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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 2019 Revised Guidance.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework the Examiner
determines that claim 1 "is directed to an abstract idea of providing product
information" (Final Act. 7), which is "a 'fundamental economic practice' as
the claim describes concepts relating to the economy and commerce" (id.
at 8), and a "method[] of organizing human activity" in "relat[ing] to
managing relationships or transactions between people, social activities, and
human behavior, advertising, marketing, and sales activities or behaviors,
and/or managing human activity" (id. at 8-9). When viewed through the
lens of the 2019 Revised Guidance, the Examiner's determination depicts
the claimed subject matter as an ineligible "[c]ertain methods of organizing
human activity" that include "commercial ... interactions (including ...
advertising, marketing or sales activities or behaviors ... )" under Prong One
of Revised Step 2A. 2019 Revised Guidance, 84 Fed. Reg. at 52.
The Appellants disagree and contend that the claim is more accurately
described as "recit[ing] a specific technical solution of identifying
information to display." Appeal Br. 11.
Under step one of the Alice framework, we "look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
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Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016), cert.
denied, 137 S. Ct. 1230 (2017)).
The "directed to" inquiry ... cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
.... Rather, the "directed to" inquiry applies a stage-one filter
to claims, considered in light of the specification, based on
whether "their character as a whole is directed to excluded
subject matter." Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework "asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an 'abstract idea' for
which computers are invoked merely as a tool." Id. at 1335-36; see also
2019 Revised Guidance, 84 Fed. Reg. at 54--55.
The Specification provides evidence as to what the claimed invention
is directed. Here, the Specification is titled "SMART DEVICE ASSISTED
COMMERCE" and provides for an invention that "relate[s] to the use of
mobile electronic devices within a retail commerce environment." Spec. ,r 1.
The Specification provides that information provided to a customer
interested in a new product "is generally limited to whatever marketing
information the manufacturer or retailer provides, such as via
advertisements, product packaging, or limited product displays." Id. ,r 2.
The problem with prior sites and applications, such as shopping comparison
sites and mobile applications, that provide information on products is that
they "are manually and individually accessed by the consumer, and
generally do not provide focused information relevant to a consumer's
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purchase decision of a certain product or service when the consumer is in a
retail or other commerce environment." Id. ,r 3. Thus, the purported
invention "provid[ es] real-time information of a product or service to a
consumer" so as to "significantly improve a user's in-store retail shopping
experience[,] ... further enable a user to receive more comprehensive and
accurate information about a product or service, and assist the user in his or
her decision making process involving the product or service." Id. ,r 10.
An examination of claim 1 shows that the claim recites "[a] mobile
wireless device comprising: at least one processor; and at least one memory
device providing a plurality of instructions that, when executed by the
processor, cause the processor to perform operations that" (a) identify, using
a product identifier, a product "having a physical presence in a commerce
environment"; (b) "determine product information of the product to display
to a user ... based on the commerce environment and a behavior of the user
in the commerce environment", the latter including user data of being in a
particular location for a certain period of time "as determined using near
field communications" and data of the user evaluating the product as
determined "by accessing a search and purchase history"; ( c) "retrieve the
product information using the product identifier from at least two product
information data sources"; ( d) "determine real-time product information by
determining compatibility of the product with a past purchase made by the
user identified in the purchase history," the information including an
"indication of compatibility, ... an alternate product ... , and a newer
version of the product available from the competitor"; and (e) "display,
during a time period associated with a promotional campaign, the real-time
product information in a user interface provided by the mobile wireless
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device." Appeal Br. 16 (Claims App.). The claimed mobile device with a
processor and memory is a generic, conventional "consumer's smartphone
or other portable computing apparatus." Spec. ,r 12; see also id. ,r,r 21, 22,
38, 79, Fig. 1.
The claim recites the results of the functions without providing
details. The claim limitations do not detail how, technologically or by what
algorithm (i.e., how the specific data are used), the processor identifies a
product, determines information to display, retrieves information, and
determines information by determining compatibility, as recited in
limitations (a) through (d). The Specification provides no further details.
For example, the Appellants generally cite to paragraph 79 for all of these
limitations. Appeal Br. 4--5, nn.4--7. The Appellants also cite to paragraphs
26 and 57 for limitation (b) of determining information to display (Appeal
Br. 5, n.5), paragraphs 19 and 68 for limitation (c) of retrieving (Appeal
Br. 5, n.6), and paragraphs 45 and 56 for limitation (d) of determining
information by determining compatibility (Appeal Br. 5, n.7). However, the
Specification's paragraph 79 merely summarizes the limitations of claim 1.
Paragraph 19 provides that the described "techniques are designed to
improve a consumer's in-store shopping experience" by using a "referral
application operating on a mobile device" to perform "automatic and
context-aware performance of data collection, transmission, correlation, and
recommendations." Paragraph 26 provides that the referral application can
be operated by the user to "obtain real-time product information" and is
configured to obtain input from an interface and a product sensor, to obtain
information "automatically or manually" such as by near field
communications and through a network. Paragraph 56 provides examples of
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what comprises "the user's activity with a smartphone application that is
factored" including shopping activities related to a product being looked at.
Paragraph 57 introduces "[t]he following real-life, non-limiting examples
[that] provide a series of additional use-case scenarios for the consumer
access of real-time product information in a retail setting." Paragraph 68
provides an example of a customer using the referral application "to access
or leave comments about a particular product offering" whereby a consumer
or competitor indicates a cheaper price elsewhere and "[r]elevant
advertisements, offers, and the like can be delivered to the consumer at
appropriate times." There is no discussion of how, technologically or by
what algorithm, a product is identified, information to display is determined,
information is retrieved information, and compatibility is determined to
determine real-time product information. The Specification, including the
original claims, does not include the term "compatibility," and the claims at
issue in this appeal do not define the term.
When considered collectively and under the broadest reasonable
interpretation of the claim limitations, we agree with the Examiner that the
limitations recite a method, performed by a conventional computing device,
for providing product information. The limitations comprise steps of
receiving and retrieving data, pre-solution activities ordinarily performed in
any type of data analysis or commercial transaction, of determining
information, limitations of evaluating, observation, and analyses that can be
performed mentally, and of displaying the results of the determinations, a
post-solution activity.
Providing product information is similar to the concepts of "graphing
( or displaying) bids and offers to assist a trader to make an order" in Trading
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Techs. Int'!, Inc. v. !BG LLC, 921 F.3d 1084, 1092 (Fed. Cir. 2019)
("Trading Techs. I"), of "providing information to traders in a way that helps
them process information more quickly" in Trading Techs. Int 'l, Inc. v. !BG
LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) ("Trading Techs. II''), of
"entering, transmitting, locating, compressing, storing, and displaying data
(including text and image data) to facilitate the buying and selling of items"
in Voit Techs., LLC v. Del-Ton, Inc., 757 F. App'x 1000, 1002 (Fed. Cir.
2019), and of customizing information based on known user information and
navigation data in Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1369-70 (Fed. Cir. 2015). Accordingly, we conclude the
claim recites certain methods of organizing human activities including
commercial interactions such as advertising and marketing (see 2019
Revised Guidance, 84 Fed. Reg. at 52), and thus an abstract idea. Thus, we
disagree with the Appellants' arguments that the Examiner's rejection is in
error because "the previously issued Office Actions do not indicate a court
case where similar subject matter has been found to be abstract" and because
the Examiner's characterization "is a gross overgeneralization of Appellant's
[sic] claims." Appeal Br. 9-10; see also Reply Br. 1.
Under Step 2A, Prong 2 of the 2019 Revised Guidance, we look to
whether the claim "appl[ies], rel[ies] on, or use[s] 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," i.e., "integrates a judicial exception into a practical application."
84 Fed. Reg. at 54. Here, the Appellants contend that the claim "recite[s] a
specific technical solution of identifying information to display" and
"address[es] a technical problem." Appeal Br. 11. When viewed through
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the lens of the 2019 Revised Guidance, the Appellants contend that the
elements of the claim integrate the abstract idea into a practical application
by "reflect[ing] an improvement in the functioning of a computer." 84 Fed.
Reg. at 55 (citing DDR Holdings, Inc. v. Hotels.com, L.P., 773 F.3d 1245,
1258-59 (Fed. Cir. 2014). We disagree.
In DDR Holdings, the Federal Circuit determined that the claims
addressed the problem of retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host's website after clicking on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
The Federal Circuit, thus, held that the claims were directed to statutory
subject matter because they claim a solution "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." Id. The court cautioned that "not all claims
purporting to address Internet-centric challenges are eligible for patent." Id.
at 1258. And the court contrasted the claims to those at issue in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), in that, in
DDR Holdings, the computer network was not operating in its "normal,
expected manner" and the claims did not "recite an invention that is []
merely the routine or conventional use of the Internet." Id. at 1258-59.
Here, the Appellants contend that the claim addresses the problem of
"identifying which information to display." Appeal Br. 11. The
Specification provides that a problem being addressed is that prior art
systems "generally do not provide focused information relevant to a
consumer's purchase decision of a certain product or service when the
consumer is in a retail or other commerce environment." Spec. ,r 3. As the
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Examiner finds (see Ans. 11-12), determining which (focused) product
information to display is a business problem that existed prior to the Internet.
Also, unlike DDR Holdings, here, the solution comprises the use of a
conventional computing device operating in its ordinary capacity (see supra)
to identify, determine, retrieve, and display data. The Appellants do not
direct attention to, and we do not see, where the Specification describes
computer components acting in an unconventional manner to further the
desired solution of displaying more focused information. It is not clear to
what "technical mechanism" (Appeal Br. 11) the Appellants refer in using
near field communications. "The claim does not recite any 'particular
configuration' or specialized arrangement of' near field communication
components, a mobile device, and network, but merely recites using near
field communications data in a conventional mobile device connected to a
network. Automated Tracking Solns., LLC v. Coca-Cola Co., 723 F. App'x
989, 994 (Fed. Cir. 2018). And the claim does not recite a specific
technological way of accessing data (see Appeal Br. 11) that is
unconventional.
As the Appellants state, any improvement is to "identifying which
information to display" (Appeal Br. 11) by using specific information, not to
the mobile device itself. These are not technological improvements or
improvements to a technological area. The alleged improvement lies in the
abstract idea itself, not to any technological improvement. See BSG Tech
LLCv. Buyseasons, Inc., 899 F.3d 1281, 1287-88 (Fed. Cir. 2018). And, as
discussed above, there is no further description of a particular technological
manner for performing the steps. See TDE Petroleum Data Sols., Inc., v.
AKM Enter., Inc., 657 F. App'x 991, 993 (Fed. Cir. 2016) ("As we discussed
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at greater length in Electric Power, the claims of the '812 patent recite the
what of the invention, but none of the how that is necessary to tum the
abstract idea into a patent-eligible application" ( citing Elec. Power, 830
F.3d at 1353)); Enfzsh, 822 F.3d at 1336 (focusing on whether the claim is
"an improvement to [the] computer functionality itself, not on economic or
other tasks for which a computer is used in its ordinary capacity").
That the claim "cannot 'be performed in the human mind or by a
human using a pen and paper"' because the user "access[ es] databases and
other electronic sources" (Appeal Br. 11-12; see also Reply Br. 2) does not
necessarily make the abstract idea patent-eligible. We note that the claim
does not recite accessing electronic sources, but simply accessing "data
sources." Appeal Br. 16 (Claims App.). We find the claim analogous to
Ultramercial in "recit[ing] an invention that is ... merely the routine or
conventional use of the Internet." DDR Holdings, 773 F.3d at 1258-59.
That a mobile device is implementing the steps by receiving and sending
data is not necessarily sufficient to transform an otherwise abstract claim to
patent eligible subject matter. Ultramercial, 772 F .3d at 716 (limiting the
use of the abstract idea "to a particular technological environment" does not
make the abstract idea patent-eligible). "While the fact that an invention is
run on a generic computer does not, by itself, 'doom the claims,' Core
Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362 (Fed.
Cir. 2018), the claims here fail because" determining which information to
display "does not improve the functioning of the computer, make it operate
more efficiently, or solve any technological problem." Trading Techs. II,
921 F.3d at 1384--85. Rather, the claim simply "includes instructions to
implement an abstract idea on a computer" and "does no more than
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generally link the use of a judicial exception to a particular technological
environment or field of use." 2019 Revised Guidance, 84 Fed. Reg. at 55.
We also disagree with the Appellants' contention that the claim is
similar to those of BASCOM Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016). Reply Br. 2. The Appellants'
contention that "the components of Appellant's [sic] systems and processes,
allow a user to access multiple systems without having to re-enter
production information for each of the systems" (id.) is not supported by
evidence or reasoning. The Appellants provide no further arguments how
the claim's particular arrangement and/or integration of elements is a
technical improvement or is otherwise similar to BASCOM.
We further disagree that the claim is similar to those of Trading
Techs. Int'!., Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir. 2017)
("Trading Techs."). Reply Br. 2-3. In Trading Techs., under Step 1, the
district court held that the claims were "directed to improvements in existing
graphical user interface devices that have no 'pre-electronic trading analog,'
and recite more than 'setting, displaying, and selecting' data or information
that is visible on the [graphical user interface] device." Trading Techs.
675 F. App'x at 1004 (internal quotations omitted). The district court
determined that the claims "solve problems of prior graphical user interface
devices ... in the context of computerized trading[] relating to speed,
accuracy and usability" and did not "simply claim displaying information on
a graphical user interface." Id. The claims required "a specific, structured
graphical user interface paired with a prescribed functionality directly
related to the graphical user interface's structure that is addressed to and
resolves a specifically identified problem in the prior state of the art." Id.
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Further, under Step 2, the district court held that "the specific structure and
concordant functionality of the graphical user interface are removed from
abstract ideas, as compared to conventional computer implementations of
known procedures." Id. The Federal Circuit agreed, holding that "the
claimed subject matter is 'directed to a specific improvement to the way
computers operate,' ... for the claimed graphical user interface method
imparts a specific functionality to a trading system 'directed to a specific
implementation of a solution to a problem in the software arts."' Id. at 1006
( citations omitted).
Here, the claim simply requires identifying, determining, retrieving,
and displaying without any specific functionality directly related to the
mobile device or user interface's structure that is addressed to and resolves a
problem in technology, as discussed above. Rather, the claim is similar to
those in Trading Techs. I and Trading Techs. II where the claims directed to
displaying particular information in a particular way did not focus on an
improvement to computer technology. See Trading Techs. I, 921 F.3d
at 1094, Trading Techs. II, 921 F.3d at 1384.
Thus, we are not persuaded of error in the Examiner's determination
that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Mayo/Alice framework, and Step 2B of
the 2019 Revised Guidance, we find supported the Examiner's
determination that the "the additional elements do not add specific
limitations other than generic computer components operating using what is
well-understood, routine, and conventional in the field of product discovery
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and sales and is specified at a high level of generality," and "as an ordered
combination, the additional elements of representative claim 1 do not add
anything further than when they are considered individually." Final Act. 11.
The Appellants argue that "[a]s detailed above [ with respect to
Step 1], Appellant's [sic] claims are directed to a technical solution to a
technical problem." Appeal Br. 12. In particular, the Appellants argue that
"[s]pecifically, the recitations of a commerce environment and use of user
preferences, such as compatibility with a past purchase, taken in
combination confine the alleged abstract idea to a particular useful
application of technology in a defined technical field." As we discussed
above under Prong 2, we disagree that the claim recites a technical solution
to a technical problem. And, as the Examiner states (Ans. 13), it is not
apparent to what technical field the Appellants refer.
We note that, as discussed above, the claim simply recites the
functional results to be achieved by a conventional computer. The claim
"provides only a result-oriented solution[] with insufficient detail for how a
computer accomplishes it. Our law demands more." Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017)
("Capital One"). The Appellants argue that the steps of the claim "[a]dd[] a
specific limitation or combination of limitations that [is] not well-
understood, routine, conventional activity in the field" (2019 Revised
Guidance, 84 Fed. Reg. at 56) because the claim is "not rejected under
35 U.S.C. §§ 102 or 103," and thus "by definition [is] unconventional.
Stated another way, because the claim[] [is] both novel and non-obvious, the
claim[] ... by definition include[s] unconventional steps." Appeal Br. 13.
However, an abstract idea does not transform into an inventive concept just
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because the prior art does not disclose or suggest it. See Mayo, 566 U.S. at
89-90. "Groundbreaking, innovative, or even brilliant discovery does not by
itself satisfy the § 101 inquiry." Ass 'n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed, "[t]he '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." Diehr, 450 U.S. at 188-
89; see also Mayo, 566 U.S. at 91 (rejecting "the Government's invitation to
substitute§§ 102, 103, and 112 inquiries for the better established inquiry
under § 101 ").
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. The claimed
mobile device is a conventional, general purpose computer. See supra. It is
clear, from the Specification, including the claim language, that the
"limitations require no improved computer resources [the Appellants]
claim[] to have invented, just already available computers, with their already
available basic functions, to use as tools in executing the claimed process"
performed by the claimed system. SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1169-70 (Fed. Cir. 2018). We agree with the Examiner that
the mobile device operates in its ordinary and conventional capacity to
perform the well-understood, routine, and conventional functions of
identifying, determining, retrieving, and displaying data based on the
determinations. See Elec. Power, 830 F.3d at 1355 (gathering, sending,
monitoring, analyzing, selecting, and presenting information does not
transform the abstract process into a patent-eligible invention); Trading
Techs. I, 921 F.3d at 1093 (data gathering and displaying are well-
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understood, routine, and conventional activities); Alice, 573 U.S. at 226
("Nearly every computer will include a 'communications controller' and
'data storage unit' capable of performing the basic calculation, storage, and
transmission functions required by the method claims."). Moreover, the
claim simply recites the functional results to be achieved of identifying data,
determining data, retrieving data, and displaying data based on the
determinations.
Considered as an ordered combination, the computer components of
the Appellants' claims add nothing that is not already present when the steps
are considered separately. The sequence of data reception (identify and
retrieve), analysis (identify and determine), and displaying the results is
equally generic and conventional or otherwise held to be abstract. See Elec.
Power, 830 F.3d at 1354--56 (holding that the sequence of gathering,
analyzing, and displaying in real-time was abstract); Inventor Holdings, LLC
v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding
that sequence of data retrieval, analysis, modification, generation, display,
and transmission was abstract). The ordering of the steps is, therefore,
ordinary and conventional.
The Appellants further argue that claim 1 is significantly more than
the abstract idea because it "confine[ s] the unconventional steps to a
particular useful application ... [ of] techniques to acquire information or
data about a past purchase to make a recommendation." Appeal Br. 13.
However, as in Mayo, although the claim "may have limited applications,"
the steps are "specific at a high level of generality" that would cover all
processes that identify, determine, retrieve and display data. Mayo, 566 U.S.
at 82-87. Although there may be a "tangible ... benefit" in "allow[ing] for
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more relevant data gathering and transmission" (Appeal Br. 13), the claim
does not recite, and the Specification does not discuss, a technical benefit.
The Appellants' contention that the claim "can result in lower bandwidth
requirements and overall increased network performance because only
relevant data is [sic] transmitted as opposed to any data gathered" (id.) is
unsupported attorney argument. The Appellants do not direct attention to
where the Specification describes that there existed, at the time of the
invention, an issue with bandwidth requirements or network performance, or
how the claim technologically or technically solves that. Simply because the
information may be more relevant does not necessarily indicate there would
be less information than otherwise sent or would result in lower bandwidth
and improved network performance.
The Appellants' argument that "real-world objects (e.g., portable
computing devices, servers, etc.), and not conceptual business objects, are
being utilized in the claims," (Appeal Br. 13), is not persuasive of Examiner
error. As discussed above, the technical component claimed of a mobile
device with a processor, memory, and user interface is a conventional
component that merely implements that abstract idea. And, as discussed
above, that the claim encompasses electronic communications and requires
the use of a portable computer, i.e., limits the claim to a particular
technological environment, are not sufficient here to transform an otherwise
abstract claim into patent eligible subject matter.
Thus, we are not persuaded of error in the Examiner's determination
that the limitations of claim 1 do not transform the claims into significantly
more than the abstract idea.
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We therefore sustain the Examiner's rejection under 35 U.S.C. § 101
of claim 1 and of claims 2-26, which fall with claim 1.
DECISION
The Examiner's rejection of claims 1-26 under 35 U.S.C. § 101 is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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