Muthu Sundaresan et al.

Patent Trials and Appeals Board

Jan 3, 2020

14807978 - (D) (P.T.A.B. Jan. 3, 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.
14/807,978 07/24/2015 Muthu Sundaresan IP-P1628US2/
EBAY.281023
9719
150601 7590 01/03/2020
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
EXAMINER
ZIMMERMAN, MATTHEW E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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
IPRCDKT@SHB.COM
docketing.shb@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MUTHU SUNDARESAN and VIVEK GUPTA
____________

Appeal 2018-006915
Application 14/807,978
Technology Center 3600
____________

Before CATHERINE SHIANG, CARL L. SILVERMAN, and
JASON M REPKO, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–4, 6–12, and 14–20, which are all the claims pending
and rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use “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. 3.

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STATEMENT OF THE CASE
Introduction
The present invention relates to “electronic commerce (e-commerce),
and, in various embodiments, to systems and methods of determining
whether to make an item listing visible to a user based on the user's item
return history.” Spec. ¶ 2. In particular,
[t]he present disclosure provides a way for sellers to
protect themselves from buyers that frequently return items. A
returns frequency index can be calculated for a buyer. This
returns frequency index is an indication of the risk that the
buyer will return an item. This returns frequency index can be
calculated using data from the buyer's transaction history, such
as the total number of items returned by the buyer, the total
value of the items returned by the buyer, the total number of
items purchased by the buyer, and the total value of items
purchased by the buyer. A seller can restrict the visibility of his
or her item listing to buyers who have a certain returns
frequency index, thereby preventing buyers who do not meet
the seller's standard for the returns frequency index from
viewing the seller's item listing. This visibility restriction based
on the returns frequency index provides the seller with
increased protection from the item being purchased by a buyer
who is likely to return the item. This program of item listing
visibility can be offered to sellers as an option, and in some
cases for a nominal fee.
Spec. ¶ 13. Claim 1 is exemplary:
1. A system comprising:
at least one processor; and
a non-transitory computer-readable medium storing
executable instructions that, when executed, cause the at least
one processor to perform operations comprising:
generating a first returns frequency index for a first
user based on a first history of item returns for the first
user, the first returns frequency index corresponding to
the first history of item returns for the first user, the first
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returns frequency index being generated using a total
value of items returned by the first user, a total number of
items returned by the first user, a total value of items
purchased by the first user, and a total number of items
purchased by the first user;
storing the generated first returns frequency index
for the first user in a database;
receiving, from a machine of the first user, a
request to navigate a networked site subsequent to the
storing of the generated first returns frequency index in
the database;
determining that the first returns frequency index
for the first user satisfies a predetermined criteria
subsequent to the receiving of the request to navigate the
networked site, the determining comprising accessing the
generated first returns frequency index stored in the
database; and
creating first content for display to the first user
subsequent to the receiving of the request to navigate the
networked site, the creating first content comprising
excluding an item content from the first content for
display based on the determination that the first returns
frequency index satisfies the predetermined criteria.

Rejections2
Claims 1–4, 6–12, and 14–20 stand rejected on the ground of
nonstatutory obviousness-type double patenting in light of claims 1–18 of
U.S. Patent No. 9,098,853. Final Act. 2–3.
Claims 1–4, 6–12, and 14–20 stand rejected under 35 U.S.C. § 101
because they are directed to patent-ineligible subject matter. Final Act. 4–8.

2 Throughout this opinion, we refer to the (1) Final Office Action dated Aug.
2, 2017 (“Final Act.”); (2) Appeal Brief dated Dec. 28, 2017 (“App. Br.”);
(3) Examiner’s Answer dated Apr. 11, 2018 (“Ans.”); and (4) Reply Brief
dated June 6, 2018 (“Reply Br.”).
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ANALYSIS
Double Patenting
We agree with Appellant that the Examiner fails to provide adequate
support for the rejection. App. Br. 6. Therefore, we reverse the Examiner’s
rejection of claims 1–4, 6–12, and 14–20 on the ground of nonstatutory
obviousness-type double patenting.

35 U.S.C. § 101
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contention that the Examiner erred in this case.
Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 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. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
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
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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 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
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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 published revised guidance on the application of § 101.
USPTO’s 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).3 Under the guidance set forth
in the 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) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th ed. rev.
08.2017 2018) (Step 2A, Prong 2).
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 The Guidance was updated in October 2019.
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(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
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Turning to Step 2B of the Guidance, “[t]he second step of the Alice
test is satisfied when the claim limitations ‘involve more than performance
of []well-understood, routine, [and] conventional activities previously
known to the industry.’” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed.
Cir. 2018) (quoting Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) and
Alice, 573 U.S. at 225). “Whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination.” Berkheimer, 881 F.3d at 1369.
In this case, the Examiner determines:
The applicant argues on page 19 of the appeal brief that
the claims include unconventional activity that is not well-
understood, routine, and conventional.
The examiner respectfully disagrees. The applicant has
claimed a generic filter and is using it in a well understood and
routine manner - i.e., to filter data. In addition, according to
MPEP 2106.05(d), the determination of whether something is
well-understood, routine, and conventional is a subjective
determination made by an examiner. The relevant portion in the
MPEP provides: “as such, an examiner should only conclude
that an element (or combination of elements) is well-
understood, routine, conventional activity when the examiner
can readily conclude, based on their expertise in the art, that the
element is widely prevalent or in common use in the relevant
industry. If the element is not widely prevalent or in common
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use, or is otherwise beyond those elements recognized in the art
or by the courts as being well-understood, routine or
conventional, then the element will in most cases favor
eligibility.” In this application, the examiner readily concludes,
based on the examiner’s expertise in the art, that the element is
widely prevalent or in common use in the relevant industry.
Ans. 8 (emphases added).
As pointed out by Appellant, the Examiner has not provided the
evidence required by Berkheimer to support the above determination. See
Reply Br. 2–7; Berkheimer, 881 F.3d at 1369.4 In particular, the Examiner
has not provided any of the four categories of information required by the
Memorandum of Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (“Berkheimer Memorandum”):
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s). . . .
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element(s). . . .
Berkheimer Memorandum at 3–4.

4 Because the Federal Circuit issued the Berkheimer decision after Appellant
filed the Appeal Brief, Appellant had good cause to raise arguments based
on Berkheimer in the Reply Brief. See 37 C.F.R. § 41.41(b)(2).
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Therefore, the Examiner erred with respect to Step 2B of the
Guidance, and we are constrained by the record to reverse the Examiner’s
rejection of claims 1–4, 6–12, and 14–20 on procedural grounds.

CONCLUSION
We reverse the Examiner’s rejection of claims 1–4, 6–12, and 14–20
on the ground of nonstatutory obviousness-type double patenting.
We reverse the Examiner’s decision rejecting claims 1–4, 6–12, and
14–20 under 35 U.S.C. § 101.

In summary:

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–4, 6–12, 14–20 Double
Patenting
1–4, 6–12,
14–20
1–4, 6–12, 14–20 101 Eligibility 1–4, 6–12,
14–20
Overall
Outcome
1–4, 6–12,
14–20

REVERSED