Geng Zhu et al.Download PDFPatent Trials and Appeals BoardApr 23, 202014586475 - (D) (P.T.A.B. Apr. 23, 2020) Copy Citation 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. 14/586,475 12/30/2014 Geng Zhu 2043.H14US1 1599 49845 7590 04/23/2020 SCHWEGMAN LUNDBERG & WOESSNER/EBAY P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER MILLER, BRITTNEY N ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 04/23/2020 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): 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 GENG ZHU, ZHEN GE, VINCENT MULIAHY-FLORES, and LIN CHEN ____________ Appeal 2019-006989 Application 14/586,475 Technology Center 3600 ____________ Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and GARTH D. BAER, Administrative Patent Judges. MANTIS MERCADER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2019-006989 Application 14/586,475 2 STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–6, 8–13, 15–19, and 21, which are all the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION Appellant’s claimed invention is directed to “encouraging environmental-friendliness among users of a network-based publication system” (Abstract). Independent claim 1, reproduced below with emphases added, is representative of the subject matter on appeal: 1. A method comprising: incorporating one or more green-scoring application modules into one or more computer memories of a network- based publication system, the one or more green-scoring application modules configuring one or more computer processors of the network-based publication system to perform operations for generating a user interface for presentation on a client device for allowing other users of the network-based publication system to access sub-scores corresponding to a user green score of a user of the network-based publication system, the operations comprising: detecting that the user of the network-based publication system has engaged in a transaction involving an exchange of an item featured in a listing posted on the network- based publication system; 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies eBay, Inc. as the real party in interest (Appeal Br. 2). Appeal 2019-006989 Application 14/586,475 3 calculating a transaction green score for the transaction, the transaction green score reflecting an environmental impact of the engagement by the user in the transaction, the transaction green score representing a combination of item green scores corresponding to the item, the item green scores including an item properties green score reflecting an organic nature of the item; calculating a user green score for the user, the calculating of the user green score including combining the transaction green score with previous transaction green scores calculated for previous engagements by the user in previous transactions; causing the user green score to be presented in the user interface, the user interface including a ranking of the user in comparison to the other users based on the user green score, the user interface including selectable user interface elements for accessing the sub-scores corresponding to the user green score of the user. (Claims Appendix (Appeal Br. 30)). REJECTION The Examiner made the following rejection: Claims 1–6, 8–13, 15–19, and 21 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Final Act. 2. ISSUE The pivotal issue is whether the Examiner erred in finding that claims 1–6, 8–13, 15–19, and 21 are directed to non-statutory subject matter. Appeal 2019-006989 Application 14/586,475 4 ANALYSIS We adopt the Examiner’s findings in the Answer and Final Office Action and we add the following primarily for emphasis. We note that if Appellant failed to present arguments on a particular rejection, we will not unilaterally review those uncontested aspects of the rejection. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential); Hyatt v. Dudas, 551 F.3d 1307, 1313–14 (Fed. Cir. 2008) (the Board may treat arguments Appellant failed to make for a given ground of rejection as waived). The Examiner determines claim 1 is patent ineligible under 35 U.S.C. § 101, because the claims are “directed to the abstract idea of calculating green scores for transactions and users” and “[t]he limitations above describe certain methods of organizing human activity inasmuch as they describe a concept relating to tracking/organizing information (i.e., calculating green scores for transactions and users)” (Final Act. 3, citing MPEP § 2106.04(a)(2) Part (II), Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). The Examiner further finds that “[e]ven when considered as an ordered combination, the additional limitations of claim 1 do not add anything that is not already present when they are considered individually” (Final Act. 5; see also Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (describing the two-step framework “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts”)). Prior to the filing of the Appeal Brief, the USPTO published revised guidance on the application of § 101 (“Guidance”). See USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, Appeal 2019-006989 Application 14/586,475 5 2019) (“Memorandum”); USPTO October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019) (“Update”), noticed at 84 Fed. Reg. 55942 (Oct. 18, 2019). Pursuant to the Guidance “Step 2A,” the Office first looks to whether the claim recites: (1) Prong One: 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) Prong Two: additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017 (Jan. 2018))). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then (pursuant to the Guidance “Step 2B”) 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 Memorandum, 84 Fed. Reg. at 54–56. Appeal 2019-006989 Application 14/586,475 6 Appellant does not separately argue the claims with particularity. See Appeal Br. 11–28.2 We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Pursuant to Step 2A, Prong One of the Guidance, the Office first looks to “evaluate whether the claim recites a judicial exception, i.e., an abstract idea” (Memorandum, 84 Fed. Reg. at 54). Here, claim 1 recites “calculating a transaction green score for the transaction,” “calculating a user green score for the user,” and causing the user green score to be presented in the user interface, the user interface including a ranking of the user in comparison to the other users based on the user green score, the user interface including selectable user interface elements for accessing the sub-scores corresponding to the user green score of the user. Specifically, claim 1 recites the limitations italicized supra. The italicized portions of claim 1 recite (1) calculation of scoring histories used to rank users engaged in commercial transactions, and (2) a user interface that provides ranking and accessing sub-scores that correspond to a user score. Portion (1) recites the collection and manipulation of information (which here “reflect[s] an environmental impact of the engagement by the user in the transaction”) and involve the performance of mathematical calculations to arrive at a transaction green score and a user green score. In addition to the abstract informational concepts of Portion (1), Portion (2) also recites commercial or legal interactions such as marketing or 2 While Appellant cites some individual claim limitations appearing in some dependent claims (see Appeal Br. 26–27), Appellant offers no additional arguments regarding the patentability of these claims. Appeal 2019-006989 Application 14/586,475 7 sales activities, as the information provided by the user interface relates information associated with a user’s commercial behavior ranked for public comparison with the information associated with the commercial behavior of others. See, for example, Spec. ¶ 83, Fig. 10. Such information could be used to foster additional commercial purchases, as a user desiring a score indicative of a higher environmental consciousness appears to only be able to improve the user’s score through consummating a new transaction. The Guidance provides that the limitations corresponding to Portion (1), therefore, recite the abstract idea of “mathematical concepts.” Update at 4; Memorandum, 84 Fed. Reg. at 52; see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (“[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis . . . is all abstract”); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“analyzing information . . . by mathematical algorithms, without more” is abstract) (case citations omitted). The Guidance further provides that the limitations corresponding to Portion (2) recite the abstract idea of “certain methods of organizing activity,” through the commercial behavior driven by the transactions seen through the marketing lens of “encourage[ing] users of the system to choose actions with respect to the system that will result in a more positive (or a less negative) impact on the environment than other actions” (Spec. ¶ 2) and ranked for public comparison. Appellant’s argument that the claims at issue are similar to the claims of Example 38 and Example 39 of the [Examples published concurrently and separately from the Memorandum (the “Examples”)] in that Appeal 2019-006989 Application 14/586,475 8 they do not recite a mathematical relationship, formula, or calculation, they do not recite a mental process, and they do not recite one of the certain methods of organizing human activity that have been deemed patent-ineligible by the courts, such as a fundamental economic practice (Appeal Br. 11), is conclusory and not persuasive, as Appellant’s citation to these examples offers no evidence regarding making a determination under Step 2A, Prong One. Accordingly, claim 1 “recites a judicial exception . . . [and] requires further analysis in Prong Two” of the Guidance. See Memorandum, 84 Fed. Reg. at 54. Pursuant to Step 2A, Prong Two, we are not persuaded the Examiner has erred in finding that claim 1 is directed to an abstract idea. That is, we determine claim 1 does not integrate the recited judicial exception into a practical application. See Memorandum, 84 Fed. Reg. at 54. Appellant argues “[t]he claims at issue do not fall into any of the enumerated groupings of abstract ideas set forth in the [Examples]” (Reply Br. 1; see also Appeal Br. 11–13). Particularly, Appellant contends there is no difference from a patent-eligibility standpoint between claim 2 of Example 37 (“rearranging icons on a graphical user interface”) and the arranging of user interface elements recited in each of the independent claims at issue, including “generating a user interface for presentation on a client device for allowing other users of the network-based publication system to access (via selectable user interface elements) sub-scores corresponding to a user green score of a user of the network-based publication system” (Reply Br. 1, citing Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) and Trading Technologies Appeal 2019-006989 Application 14/586,475 9 International, Inc. v. CQG, INC., 675 Fed.Appx. 1001 (Fed. Cir. 2017)). Appellant contends the claimed “user interface not only saves the user time (e.g., in deciding how to make environmentally-friendly decisions with respect to the system) . . . but also includes a specific implementation that is not merely a generic computer implementation” (Reply Br. 7, citing Core Wireless and Trading Technologies). We are not persuaded by Appellant’s arguments. With respect to claim 2 of Example 37 of the Examples, this sample claim includes the limitation of “determining the amount of use of each icon using a processor that tracks how much memory has been allocated to each application associated with each icon over a predetermined period of time.” Examples at 3. In contradistinction, the user green score is calculated with respect to purchases made by the user and whose score value is unrelated to the computer technology used to generate the score. Further, while the claimed user interface that ranks and displays the user green scores may “save the user time,” this limitation fails to integrate the recited judicial exceptions into a practical application, as the limitations do not reflect an improvement in the function of a computer or an improvement to other technology or technical field. See, e.g., Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“[M]erely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”); Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090 (Fed. Cir. 2019) (“This invention makes the trader faster and more efficient, not the computer. This is not a technical solution to a technical problem.”) Appeal 2019-006989 Application 14/586,475 10 Nor do we see any claim steps that comprise an improvement of a technological process, as Appellant’s method does not go “beyond merely ‘organizing [existing] information into a new form’” (McRO, 837 F.3d at 1315 (citation omitted)), as the disclosure explicitly identifies the sub-scores as corresponding to the item’s “shipping green score,” the “item condition green score,” or the “item properties green score” (Spec. ¶ 83). Thus the process takes the existing sub-scores generated during a transaction and organizes this information for viewing. Moreover, Appellant’s purportedly improved abstract concept is still an abstract concept under the Guidance. See 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”) (emphasis omitted). That is, the highlighted limitations, which form steps to calculate and display the user green scores, are part of the recited abstract idea as discussed above. As the argued elements are part of the abstract idea, they are not additional elements that integrate the identified abstract idea into a practical application. See Memorandum, 84 Fed. Reg. 54–55 (“[E]valuate integration into a practical application by: (a) Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s)”). Accordingly, we determine the claim does not integrate the judicial exception into a practical application. See Memorandum, 84 Fed. Reg. at 54. We determine the “claim recites a judicial exception and fails to integrate the exception into a practical application,” therefore we proceed with “further analysis pursuant to the second step of the Alice/Mayo test (USPTO Step 2B).” Memorandum, 84 Fed. Reg. at 51. Appeal 2019-006989 Application 14/586,475 11 We agree with the Examiner that the claimed elements and combination of elements do not amount to significantly more than the judicial exception itself. See Ans. 12–13; see also Memorandum, 84 Fed. Reg. at 56. Independent claim 1 additionally recites “one or more green- scoring application modules,” “one or more computer memories,” a “network-based publication system,” and a “client device.” We agree with the Examiner that [t]he claims at issue here do not rise to overriding the routine and conventional sequence of events ordinarily performed by the computer, nor do they set forth with any specificity the interactions of the machine itself. Conversely, the claims are only specific in how the computer is used to facilitate the commercial interaction itself, and are silent as to any detail or property that would transform the otherwise generic computer into a specialized or special purpose machine. Not unlike the analysis in Content Extraction v. Wells Fargo [776 F.3d 1343 (Fed. Cir. 2014)], there is no inventive concept in the use of the generic computer. The inventive concept within the claims at issue resides solely in the manner in which the commercial interaction is performed. (Ans. 12, emphasis added). Appellant argues that even if implementation details “are performed by a conventional computer” (Reply Br. 5, citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (2016)), “the claims at issue recite a combination of operations that, either individually or in combination, comprise significantly more than the Examiner’s alleged abstract concept” (Reply Br. 5), because the claims recite elements “which include functions for how the alleged Appeal 2019-006989 Application 14/586,475 12 abstract idea is accomplished [and] how the alleged abstract idea is applied” (Reply Br. 6, emphasis in original). We are not persuaded because, as explained above, claim 1’s hardware elements are “specific in how the computer is used to facilitate the commercial interaction itself” (Ans. 12) and the disclosure offers a variety of system architectures and software applications that can be used as embodiments (see Spec. ¶ 25; see also Alice, 573 U.S. at 226 (“But what petitioner characterizes as specific hardware . . . is purely functional and generic. 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.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (Claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite “well-understood, routine conventional activit[ies].”). Claim 1’s abstract ideas are accomplished through conventional functions implemented using generic computer components. Accordingly, we affirm the Examiner’s rejection of independent claim 1, and independent claims 6 and 10, as well as dependent claims 3–5, 7–9, and 11–16 not separately argued with particularity. See Appeal Br. 17–18. CONCLUSION The Examiner did not err in finding that claims 1–6, 8–13, 15–19, and 21 are directed to non-statutory subject matter. Appeal 2019-006989 Application 14/586,475 13 DECISION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–16 101 Eligibility 1–6, 8–13, 15–19, 21 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 Copy with citationCopy as parenthetical citation