MyWorld, Inc.

Patent Trials and Appeals Board

Mar 31, 2020

15686608 - (D) (P.T.A.B. Mar. 31, 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.
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.
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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
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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).
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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
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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
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(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.”).
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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’].”).
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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
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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,
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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
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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
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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).
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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[.]
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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.
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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)
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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
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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
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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
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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
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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).
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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.
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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”).
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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.
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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