MyWorld, Inc.Download PDFPatent Trials and Appeals BoardMar 31, 202015686608 - (D) (P.T.A.B. Mar. 31, 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. 15/686,608 08/25/2017 Kenneth J. Ouimet 2734.0017 CON 1075 84278 7590 03/31/2020 PATENT LAW GROUP: Atkins and Associates P.C. 123 W. Chandler Heights Road, Unit 12535 Chandler, AZ 85248 EXAMINER WHITAKER, JONATHAN J ART UNIT PAPER NUMBER 3622 NOTIFICATION DATE DELIVERY MODE 03/31/2020 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): main@plgaz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KENNETH J. OUIMET and WAYNE C. NEALE Appeal 2019-005216 Application 15/686,608 Technology Center 3600 Before CARL W. WHITEHEAD JR, DAVID M. KOHUT, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–23. Appeal Br. 43. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use “Appellant” to reference the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “MYWORLD, INC.” Appeal Br. 1. Appeal 2019-005216 Application 15/686,608 2 APPELLANT’S INVENTION “The present invention relates in general to consumer purchasing and, more particularly, to a commerce system and method of controlling the commerce system using budgets for personalized shopping lists.” Spec. ¶ 2. Claim 1, reproduced below with added emphases, is illustrative of the claimed subject matter. 1. A method of controlling consumer transactions over an electronic network including a first computing system and a second computing system, comprising: providing a database on the first computing system including product information corresponding to a plurality of products; creating a shopping list for a consumer using the second computing system by accessing the product information from the database and making selections of the products for the shopping list; setting a budget limitation using the second computing system; tracking the products selected for the shopping list against the budget limitation by comparing the budget limitation to a total cost of the products on the shopping list using the first computing system; generating a budgeted shopping list using the first computing system if the total price of the products on the shopping list exceeds the budget limitation, wherein the budgeted shopping list alters the shopping list to be within the budget limitation based on a substitution or omission rating for the products, historical shopping preferences for the consumer, availability of alternative products, total cost for each of multiple retailers including item, shopping day, transportation and tax costs, available coupons and discounts, and consumer need for the products; and Appeal 2019-005216 Application 15/686,608 3 transmitting the budgeted shopping list to the second computing system for presentation on a display screen to simplify shopping for the consumer while maintaining the budget limitation. Appeal Br. 44–45, Claims Appendix. REJECTIONS Claims 1–23 stand rejected under 35 U.S.C. § 101 as being directed to a judicial exception. Ans. 3–22; Final Act. 2–12. Claims 1–23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Bonner (US 2010/0049594 A1; Feb. 25, 2010), Lutnick, (US 2006/0085286 A1; Apr. 20, 2006), Moss (US 2005/0160014 A1; July 21, 2005), and Treyz (US 2008/0228600 A1; Sept. 18, 2008). Ans. 22– 25; Final Act. 12–26. 35 U.S.C. § 101 REJECTION OF CLAIMS 1–6, 21, AND 22 For the § 101 rejection, Appellant argues claims 1–6, 21, and 22 as a group. Appeal Br. 8. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv). For the following reasons, we are unpersuaded of error in this rejection of claim 1 and accordingly sustain this rejection of claims 1–6, 21, and 22. Principles of Law 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) (citation omitted). Appeal 2019-005216 Application 15/686,608 4 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. Alice, 573 U.S. at 217−18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75−77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent-ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219−20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594−95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent-eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267−68 (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 Appeal 2019-005216 Application 15/686,608 5 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.”). 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. PTO Guidance The PTO provides guidance for 35 U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).2 Under the Guidance, we first look to whether the claim recites: 2 The appeal submissions, but not the Final Action, were mailed after the Guidance’s publication. Because the Guidance revises examination for patent-eligibility (84 Fed. Reg. at 50), we take the Answer as incorporating only the Final Action’s statements that are material under the Guidance. See Appeal 2019-005216 Application 15/686,608 6 (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, and mental processes); 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. 2018)). 84 Fed. Reg. at 52−55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then conclude the claim is directed to a judicial exception (id. at 54) and 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 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Id. at 56. Step 1: Does Claim 1 Fall within a Statutory Category? There is no dispute that the claimed subject matter falls within a 35 U.S.C. § 101 category of patentable subject matter. Ans. 4; see also Guidance, 84 Fed. Reg. at 53−54 (“Step 1”). also 37 C.F.R. § 41.39(a)(1) (“An examiner’s answer is deemed to incorporate all of the grounds of rejection set forth in the Office action from which the appeal is taken.”). Appeal 2019-005216 Application 15/686,608 7 Step 2A(1):3 Does Claim 1 Recite Any Judicial Exceptions? We agree with the Examiner that claim 1 recites judicial exceptions. See October 2019 Patent Eligibility Guidance Update at 1 (meaning of “describe”), available at https://www.uspto.gov/sites/default/files/ documents/peg_oct_2019_update.pdf; see also 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the Guidance Update). Specifically, we agree the unemphasized limitations of reproduced claim 1 (supra 2–3) encompass “a method of organizing human activities and/or a mental processes” for “organizing a shopping list using a budgeted amount of available money” (Ans. 4–5). We also agree the unemphasized limitations encompass the following two judicial exceptions recognized by the Guidance: “Certain methods of organizing human activity” and, more particularly, commercial interactions and management of personal behavior (Guidance 3 The Guidance separates the enumerated issues (1) to (4) (see supra 6–7) into the following Steps 2A(1), 2A(2), and 2B: [T]he revised procedure . . . focuses on two aspects [of whether a claim is “directed to” a judicial exception under the first step of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the claim recites a judicial exception; and (2) whether a recited judicial exception is integrated into a practical application. [W]hen a claim recites a judicial exception and fails to integrate the exception into a practical application, . . . further analysis pursuant to the second step of the Alice/Mayo test (USPTO Step 2B) . . . is needed . . . in accordance with existing USPTO guidance as modified in April 2018.[footnote omitted] 84 Fed. Reg. at 51 (referencing, via the omitted footnote, “USPTO Memorandum of April 19, 2018, ‘Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)’ (Apr. 19, 2018), available at https:// www.uspto.gov/sites/default/files/documents/memo-berkheimer- 20180419.PDF [ . . . ‛USPTO Berkheimer Memorandum’].”). Appeal 2019-005216 Application 15/686,608 8 84 Fed. Reg. at 52); “Mental processes” and, more particularly, concepts and evaluations performed in the mind (id.). Ans. 5. We further agree the unemphasized limitations encompass these judicial exceptions by reciting the following activities: [C]reating a shopping list for a consumer by accessing the product information and making product selections (which is an idea limitation for organizing a shopping list), setting a budget limitation (which is an idea limitation for setting a budget amount of available money), tracking the products selected for the shopping list against the budget limitation by comparing the budget limitation to a total cost of the products (which is an idea limitation for organizing the shopping list products in light of the budgeted amount of available money), generating a budgeted shopping list if the total price of the products on the shopping list exceeds the budget limitation by altering the shopping list based on product information and consumer preferences (which is an idea limitation for organizing the shopping list products in light of the budgeted amount of available money)[.] Id. at 5–6. For the foregoing reasons, claim 1 recites judicial exceptions. Step 2A(2): Are the Recited Judicial Exceptions Integrated Into a Practical Application? We agree with the Examiner that claim 1’s additional elements do not integrate the recited judicial exceptions (the above activities) into a practical application. See Guidance, 84 Fed. Reg. at 53 (describing a “practical application” as a “meaningful limit on the [recited judicial exceptions], such that the claim is more than a drafting effort designed to monopolize the [exceptions]”); id. at 55 (“exemplary considerations . . . indicative [of] a practical application”). Specifically, we agree the emphasized limitations of Appeal 2019-005216 Application 15/686,608 9 reproduced claim 1 (supra 2–3) constitute additional elements that perform the following activities: [C]ontrolling transactions over an electronic network including a first computing system and a second computing system, comprising: providing a database on the first computing system including information; using the second computing system by accessing information from the database and making selections; using the second computing system; using the first computing system; and transmitting to the second computing system for presentation on a display screen. Ans. 14. We also agree with the Examiner’s following description of the additional elements: The additional elements can be broadly described [as] electronic storage, electronic computing systems, and electronic communication between computing systems for performing the abstract idea steps on generic computing devices. The computer elements are generic (electronic network, computing systems, database, and display screen) other than their claimed function to perform the limitations. The provided “computing systems” . . . are just broadly recited computer devices that apply the abstract idea to a technological environment/field of use. These additional elements do not [r]eflect an improvement in the functioning of a computer or an improvement to other technology or technical field . . . [, but rather provide] broad computing systems performing the organization of a shopping list using a budgeted amount of available money. [Nor do these additional elements] add a meaningful limitation to the [judicial exceptions, but rather] refer to the generic functioning of a computer (storing organized data, accessing organized data, electronic communication between computing systems, transferring/transmitting data, receiving data, Appeal 2019-005216 Application 15/686,608 10 displaying/presenting data) and amount to simply implementing the [judicial exceptions] on a computer in a technological environment with broad limitations merely stating that the computing systems perform the functions associated with [judicial exceptions]. Id. at 7 (paragraphing omitted); see also id. at 15 (“[T]he claimed computer structures and devices are not particular in any way, other than that they are being used to implement the particular [judicial exceptions].”). We add that MPEP § 2106.05(a)–(c) and (e)–(h) support the above determinations. See Guidance 84 Fed. Reg. at 55, nn.25, 27–32 (citing these MPEP sections). For example, the below-addressed considerations of parts (a)–(c) and (e)–(h) indicate the claimed order and allocation of activities (i.e., as performed by the first and second computing systems) do not add a practical application. Appellant should bear in mind that these parts (a)–(c) and (e)–(h) are not intended to be separately dispositive. MPEP § 2106.05.I.A at 2100-46. They are collectively considered. MPEP § 2106.05(a) concerns “Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field.” MPEP at 2100-50. Specifically, it concerns “whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool.” Id. at 2100-51–52. Having reviewed Appellant’s claim 1, Specification, and arguments, we find no indication that the invention improves computer capabilities. And rather, we find the invention’s computer technology merely allocates the recited judicial exceptions to a client and server/database. See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (“[T]he claims add only generic computer components such as an interface, network, and database[, which] . . . do not satisfy the inventive concept requirement.” (quotation marks and Appeal 2019-005216 Application 15/686,608 11 citations omitted)). Namely, the claimed second computing system is a client device whereby a customer: sets a budget; and creates a shopping list by reviewing product information and accordingly selecting products. The claimed first computing system is a server/database whereby a business: maintains product information; compares the budget to a total cost of the products on the shopping list; if the total cost exceeds the budget, accordingly alters the shopping list based on various factors of shopping decisions (“substitution or omission rating for the products, historical shopping preferences for the consumer, availability of alternative products, total cost for each of multiple retailers including item, shopping day, transportation and tax costs, available coupons and discounts, and consumer need for the products”); and provides the budgeted shopping list to the client. MPEP § 2106.05(b) and (c) respectively concern use of a “Particular Machine” and “Particular Transformation.” MPEP at 2100-54, 56 (transformation must be “of an article”). We find no indication that the invention uses a particular machine or performs a particular transformation. MPEP § 2106.05(e) concerns “Other Meaningful Limitations.” MPEP at 2100-62. Specifically, it concerns whether the claim “limitations [go] beyond generally linking the use of the judicial exception to a particular technological environment.” Id. It also describes, as an example of limitations falling short of this threshold, a “data processing system and communications controllers . . . [that] merely linked the use of the abstract idea to a particular technological environment[,] i.e.,‛implementation via computers’[.]” Id. (citing Alice, 573 U.S. at 226). We find the claimed additional elements likewise merely link the recited judicial exceptions to Appeal 2019-005216 Application 15/686,608 12 data processing and communication, because the claimed first and second computing systems merely allocate the judicially-excepted activities to a client and server/database. MPEP § 2106.05(g)4 concerns “Insignificant Extra-Solution Activity.” MPEP at 2100-67–69. Specifically, it concerns whether “the additional elements add more than . . . activities incidental to the primary process or product.” Id. at 2100-67. We find no indication that claim 1’s additional elements are more than incidental to the invention’s primary aim of “using budgets for personalized shopping lists” (Spec., title). And rather, we find the claimed allocation of activities to the first and second computing systems is merely a natural consequence of utilizing a client-server architecture (e.g., naturally placing the large amounts of consumer and product information on a database accessible to an application server) and thereby analogous to § 2106.05(g)’s extra-solution examples of “mere data gathering” (e.g., specifying a network that merely gathers data) and “selecting a particular data source” (e.g., specifying a database that merely provides data). See MPEP § 2106.05(g) at 2100-68 (examples); see also Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1329 (Fed. Cir. 2017) (a “particular data source” example MPEP § 2106.05(g) at 2100-68)) (holding the claimed database features were “token post solution components” and, more particularly, a “natural consequence of carrying out the abstract idea in a computing environment.”). MPEP § 2106.05(h) concerns “Field of Use and Technological Environment.” MPEP at 2100-69. Specifically, it concerns whether an 4 Because part (f) recommends to first address the other considerations (id. at 2100-64), we address part (f) after parts (g) and (h). Appeal 2019-005216 Application 15/686,608 13 industry-specific claim limitation is “integrated into the claim” or rather does “not alter or affect how the process steps of calculating . . . were performed.” Id. at 2100-70; see also Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1311 (Fed. Cir. 2016) (“The Pythagorean Theorem cannot be made eligible by confining its use to existing surveying techniques [because] . . . such field-of-use limitations . . . describe only the context[,] rather than the manner[,] of achieving a result.”). We find no indication that claim 1’s industry-specific limitations alter how the invention performs the claimed steps. For example, we find no difference between the claimed comparing of the budget amount to the total cost of shopping list items and generally comparing an input value to a sum of input values. MPEP § 2106.05(f) concerns “Mere Instructions To Apply An Exception.” MPEP at 2100-63. MPEP at 2100-63. Specifically, it concerns the “particularity or generality of the application of the judicial exception.” Id. at 2100-66–67. We address this consideration with reference to McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), which is twice cited by MPEP § 2106.05(f) and addresses a patent-eligible software implementation of an abstract idea (McRO, 837 F.3d at 1307, 1316). Equating an abstract idea to a “result,” McRO held the claim patent-eligible because it recites a “means” sufficiently specific to prevent preemption. Id. at 1314. McRO explains: The preemption concern arises when the claims are not directed to a specific invention and instead . . . abstractly cover results where it matters not by what process or machinery the result is accomplished. . . . We therefore look to whether the claims in these patents focus on a specific means or method that improves the relevant technology[.] Appeal 2019-005216 Application 15/686,608 14 Id. (quotation marks and citations omitted). In holding the claim overcame this concern, McRO identified a claimed means (“first set of rules”) that applied unconventional data (“a keyframe at a point that no phoneme is being pronounced,” i.e., at a “phoneme sub-sequence”) to the abstract idea (use of “morph-weights” to lip-synchronize animation) and thereby prevented preemption of the abstract idea. Id. at 1306–07 (comparison of morph-weighting and invention’s specific morph-weighting), 1311 (claim interpretation emphasizing phoneme sub-sequences), 1314–15 (analysis emphasizing appointment of keyframes to phoneme sub-sequences). Whereas the above “means” of McRO’s claim prevents preemption of the recited abstract idea, we find no indication that claim 1’s additional elements prevent preemption of the recited judicial exceptions. And rather, there is a plain risk that claim 1 would preempt use of ubiquitous client-server architectures to apply the judicially-excepted, ordered combination of: creating a shopping list for a consumer by accessing the product information and making product selections . . . , setting a budget limitation . . . , tracking the products selected for the shopping list against the budget limitation by comparing the budget limitation to a total cost of the products . . . , generating a budgeted shopping list if the total price of the products on the shopping list exceeds the budget limitation by altering the shopping list based on product information and consumer preferences. Ans. 5–6. For the foregoing reasons, claim 1 is directed to judicial exceptions— not to a practical application. Appeal 2019-005216 Application 15/686,608 15 Step 2B: Does Claim 1 Recite Anything That Is Beyond the Recited Judicial Exceptions and Not a Well-Understood, Routine, Conventional (“WURC”) Activity? We agree with the Examiner that claim 1 does not recite any feature beyond what is WURC. 84 Fed. Reg. at 56. Specifically, we agree the claimed “electronic network, first computing system, second computing system, database . . . [and] information . . . serves merely to implement the [judicial exceptions] using generic computer components and conventional/generic computer functions.” Ans. 15 (internal quotation marks omitted). We also agree these additional elements perform only “basic functions a computer typically performs, such as processing data, storing data, performing repetitive calculations, executing software/instructions, automati[ng] mental tasks, receiving or transmitting data over a network” (id.). We further agree that, per MPEP § 2106.05(d) and particularly the case law described therein, these basic functions are WURC when claimed in a merely generic manner as here (e.g., at a high level of generality as here). Ans. 16–17; see e.g., id. at 16 (citing MPEP § 2106.05(d)’s following examples of WURC: receiving or transmitting data over a network; electronic recordkeeping; storing and retrieving information in memory); see also MPEP § 2106.05(d)(II) at 2100-60–61 (list of computer functions judicially-recognized as WURC); Berkheimer Memorandum § III.A.2 (stating MPEP § 2106.05(d)(II) is acceptable evidence that a computer function is WURC). We add that, for the reasons expressed above, the ordered combination of judicial exceptions and additional elements adds only a client-server architecture and a natural allocation of the claimed activities to a client computer used by a customer (claimed second computing system) Appeal 2019-005216 Application 15/686,608 16 and server/database used by a business to serve the customer (claimed first computing system). See supra 10–12; see also Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) (mere use of a local client computer, remote server, Internet network, and access accounts is WURC). We find no indication, for example, the claimed invention adds more than the ubiquitous client-server functions of: entering and displaying customer-specific data at a client computer; and performing needed processing of voluminous information (e.g., accessing and comparison of product information for multiple retailers) at a server/database. For the foregoing reasons, the claimed combination of judicial exceptions and additional elements consists of judicial exceptions and merely appended WURC features. Appellant’s Arguments Appellant’s arguments and do not show the Examiner erred. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (“[T]he burden of . . . [r]ebuttal is . . . a showing of facts supporting the opposite conclusion.” (internal quotation marks and citation omitted)). For example, the arguments do not present evidence or reasoning that indicates: a claim feature was wrongly identified as judicially-excepted or WURC activity; or a combination of claim features prevents preemption of the recited judicial exceptions. Our above determinations address each of the arguments. We address the principal arguments, below, for emphasis. Appellant contends the Examiner “leaves out . . . the electronic nature and computer operation” of the claimed invention to “mischaracterize” claim 1 as directed to judicial exceptions. Reply Br. 1–2. We are Appeal 2019-005216 Application 15/686,608 17 unpersuaded for each of two reasons. First, Appellant does not identify the claimed invention’s “electronic nature and computer operation” purported by their argument. Second, Appellant does not address the Examiner’s findings in accordance with the Guidance (supra 7–14) even though the briefs were filed after publication of the Guidance (see supra 5–6 n.2). Appellant contends the Examiner “simply does not address the actual claim language” (Reply Br. 3) and “omits” (id.) the following claim limitations: [1] wherein the budgeted shopping list alters the shopping list to be within the budget limitation based on a substitution or omission rating for the products, historical shopping preferences for the consumer, availability of alternative products, total cost for each of multiple retailers including item, shopping day, transportation and tax costs, available coupons and discounts, and consumer need for the products, and [2] further transmitting the budgeted shopping list to the second computing system for presentation on a display screen to simplify shopping for the consumer while maintaining the budget limitation. Id. We are unpersuaded because the Examiner plainly addresses the above limitations. Specifically, the Examiner finds the first (1) limitation recites commercial activities of retailers and mental processes of shoppers that occur in recommending and selecting items for a shopping list, e.g., considerations of alternative products, costs, preferences, and budgets. Ans. 4–6. The Examiner finds the second (2) limitation consists of: “post- solution activity” of transmitting the budgeted shopping list to the shopper Appeal 2019-005216 Application 15/686,608 18 for display (id. at 6); and mere linking of the judicial exceptions to a computer (id. at 7). Appellant contends the claimed invention constitutes a technological improvement because: To get the shopping list in line with the budget while minimizing computing resources, the [claimed invention performs] steps of providing a database on the first computing system including product information corresponding to a plurality of products, creating a shopping list for a consumer using the second computing system by accessing the product information from the database and making selections of the products for the shopping list, and setting a budget limitation using the second computing system. Reply Br. 4–5. We are unpersuaded because the argument merely alleges the claimed allocating of judicially-excepted activities to a server (second computing system) and client (first computing system) constitutes an inventive concept. And as discussed, we find no indication that the claimed allocation of judicially-excepted activities to a server and client constitutes a practical application or was not WURC. Supra 8–15. Appellant contends: Tracking the products selected for the shopping list against the budget limitation . . . , and generating a budgeted shopping list . . . (complete claim language on pages 44-45 of the Appeal Brief) save the consumer time and reduces computing resources. A human-controlled computer transaction would involve many more searches, pricing options, delays, indecisions, disruptions, computer operations, and network utilization in repeated attempts to get the shopping list within budget. Reply Br. 5–6; see also id. at 11–12. We are unpersuaded because the argument does not show the invention’s above alleged benefit (saving a Appeal 2019-005216 Application 15/686,608 19 consumer’s time and computing resources by tracking shopping list items against a budget to prepare a budgeted shopping list) results from a claimed technological advance, as opposed to mere automation of the claimed judicial exceptions. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“[An] advance [that] lies entirely in the realm of abstract ideas . . . is ineligible for patenting.”); Amdocs, 841 F.3d at 1311 (Fed. Cir. 2016) (“[A] claim cannot become eligible by reciting that physical automation is accomplished by a machine or that logical automation is accomplished by a computer.” (internal quotation marks and citation omitted)). Appellant contends the claimed “creating a shopping list, setting a budget limitation, tracking the products selected for the shopping list against the budget limitation, generating a budgeted shopping list, and transmitting the budgeted shopping . . . would not be considered [WURC] activities by a person in the art.” Reply Br. 13–14 (original ellipses omitted). We are unpersuaded because these activities, regardless of whether they are WURC, do not extend beyond the claimed judicial exceptions. The Step 2B analysis concerns whether the claim recites anything that is both beyond the recited judicial exceptions and not WURC. See supra 6. 35 U.S.C. § 101 REJECTION OF CLAIMS 7–20 AND 23 For the § 101 rejection, Appellant argues claims 7–13 and 23 as a group (Appeal Br. 20) and claims 14–20 as another group (id. at 39). We select independent claims 7 and 14 as representative of their respective groups. 37 C.F.R. § 41.37(c)(1)(iv). For the following reasons, we are Appeal 2019-005216 Application 15/686,608 20 unpersuaded of error in this rejection of claims 7 and 14 and accordingly sustain this rejection of claims 7–20 and 23. For claim 7, Appellant contends: “The Examiner does not provide distinct rejections for claims 7–13 and 23, but rather groups the claims with generic statements of an abstract idea. The basic arguments from claim 1 apply to claim 7.” Appeal Br. 20. For claim 14, Appellant identically contends: “The Examiner does not provide distinct rejections for claims 14– 20, but rather groups the claims with generic statements of an abstract idea. The basic arguments from claim 1 apply to claim 14.” Id. at 24. We are unpersuaded for each of two reasons. First, we are not persuaded of error in the rejection of claim 1. See supra 3–19. Second, Appellant does not identify differences between the limitations of claim 1 and those of claims 7 and 14, much less a difference that merits separate consideration of claims 7 and 14. See 37 C.F.R. § 41.37(c)(1)(iv) (“[A]ny claim(s) argued separately . . . shall be argued under a separate subheading[.] A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (Arguments for one claim are, without more, “not argued . . . with any particularity” for other claims.). The lack of an argued difference is exemplified by the Reply Brief addressing only claim 1 for this rejection (Reply Br. 1–16), aside from merely stating “[t]he above remarks also apply to claims 7 and 14” (id. at 16). Appeal 2019-005216 Application 15/686,608 21 35 U.S.C. § 103(a) REJECTION OF CLAIMS 1–6, 21, AND 22 For the § 103 rejection, Appellant argues claims 1–6, 21, and 22 as a group. Appeal Br. 30. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv). For the following reasons, we are unpersuaded of error in this rejection of claim 1 and accordingly sustain this rejection of claims 1–6, 21, and 22. Claim 1 stands rejected as obvious over Bonner, Lutnick, Moss, and Treyz. Claim 1 recites in disputed part (emphases added): creating a shopping list for a consumer using the second computing system; setting a budget limitation using the second computing system; . . . comparing the budget limitation to a total cost of the products on the shopping list using the first computing system; [and] generating a budgeted shopping list using the first computing system if the total price of the products on the shopping list exceeds the budget limitation. Appeal Br. 30 (identifying the claimed setting and comparing), 31 (identifying the claimed generating).5 Appellant contends the references do not teach or suggest a budgeted shopping list that results from entering a budget and shopping list on one system (claimed creating and setting steps) and comparing the entered budget and shopping list on another system (claimed comparing and generating steps). Specifically, Appellant does not dispute that Bonner’s 5 Appellant does not identify the claimed creating step as a disputed limitation. We quote this step for a clearer discussion of the claimed allocation of operations to different computers. Appeal 2019-005216 Application 15/686,608 22 wireless device 40 (cited as teaching the second system) enters a budget and shopping list, but contends Bonner’s separate logic engine 23 (cited as teaching the first system) does not compare the budget to a total cost of shopping list items. Appeal Br. 31; see also Ans. 22–23 (application of Bonner’s wireless device 40 and logic engine 23 (explained below)). We are unpersuaded of error. The Examiner finds (and Appellant does not dispute): Bonner’s budget and shopping list are input by the wireless device 40 and passed to the logic engine 23; and a budget limit alert is output by the logic engine 23 to the wireless device 40. Id. (citing Bonner ¶¶ 100, 146 and claim 5). We agree these disclosures suggest the logic engine 23 compares the budget and a total cost of the shopping list items. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“Rigid preventative rules that deny factfinders recourse to common sense, however, are neither necessary under our case law nor consistent with it.”). It is common sense to issue a budget limit alert if the budget will be foreseeably exceeded at checkout; i.e., an alert at checkout is too late. It is also common sense to foresee a budget will be exceeded by comparing it to a shopping list (i.e., to the total cost of shopping list items). In view of the above common sense,6 and because the logic engine 23 is aware of the budget and shopping 6 Even assuming (arguendo) it is not common sense to issue a budget limit alert if a budget will foreseeably be exceeded (at checkout) in view of a shopping list, Lutnick’s cited teachings show it was within the skill in the art to warn a shopper if/when their available money becomes exceeded by the total cost of their shopping list items (i.e., as items are added). Lutnick ¶ 31; see also Ans. 31 (citing Lutnick ¶ 31 to show, in part, Lutnick’s system determines “if the total price of the products on the shopping list exceeds the budget limitation”). Appeal 2019-005216 Application 15/686,608 23 list, there is a clear suggestion for the logic engine 23 to implement its budget limit alert by comparing the budget to the shopping list. 35 U.S.C. § 103(a) REJECTION OF CLAIMS 7–20 AND 23 For this rejection Appellant argues claims 7–13 and 23 as a group (Appeal Br. 33) and claims 14–20 as another group (id. at 39). We select independent claims 7 and 14 as representative of their respective groups. 37 C.F.R. § 41.37(c)(1)(iv). We are unpersuaded of error in this rejection of claims 7 and 14 and accordingly sustain this rejection of claims 7–20 and 23. We are unpersuaded because Appellant merely repeats the arguments presented for claim 1 without identify differences between the limitations of claim 1 and those of claims 7 and 14, much less a difference that merits our separate consideration of claims 7 and 14. See supra 20 (citations to 37 C.F.R. § 41.37(c)(1)(iv) and Baxter). The lack of any argued difference is exemplified by the Reply Brief addressing only claim 1 for this rejection (Reply Br. 16–18). CONCLUSION For the foregoing reasons, we affirm the Examiner’s decision to reject claims 1–23.7 7 “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.” 37 C.F.R. § 41.50. Appeal 2019-005216 Application 15/686,608 24 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–23 § 101 Eligibility 1–23 1–23 § 103(a) Bonner, Lutnick, Moss, Treyz 1–23 Total Outcome 1–23 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation