Ouimet, Kenneth J. et al.

Patent Trials and Appeals Board

Jun 11, 2020

2019004730 (P.T.A.B. Jun. 11, 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.
13/282,322 10/26/2011 Kenneth J. Ouimet 2734.0005 CIP3 4920
84278 7590 06/11/2020
PATENT LAW GROUP: Atkins and Associates P.C.
123 W. Chandler Heights Road, Unit 12535
Chandler, AZ 85248
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
06/11/2020 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, TIMOTHY L. OUIMET,
ERICH B. WILSON, ANTHONY FRESINA, and ROBERT J. DUNST JR.
____________

Appeal 2019-004730
Application 13/282,322
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–9, 11–18, and 20–31. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed December 26, 2018) and Reply Brief (“Reply Br.,” filed May 28,
2019), and the Examiner’s Answer (“Ans.,” mailed March 26, 2019), and
Final Office Action (“Final Act.,” mailed May 24, 2018). Appellant
identifies MYWORLD, INC. as the real party in interest (Appeal Br. 1).
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CLAIMED INVENTION
The claimed invention “relates in general to consumer purchasing and,
more particularly, to a commerce system and method of controlling the
commerce system using a share grabber to leverage a shopping list” (Spec.
¶ 2).
Claims 1, 7, 14, 20, and 26 are the independent claims on appeal.
Claim 1, reproduced below with bracketed notations added, 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:
[(A)] collecting product information associated with the
products on the first computing system;
[(B)] storing the product information in a database on the
first computing system;
[(C)] providing a website for a consumer to create a
shopping list using the second computing system with weighted
preferences for product attributes, wherein, automatically and in
response to an addition of a first item onto the shopping list by
the consumer, optimizing the shopping list by,
(a) determining a first consumer value of a first
product for purchase at a first retailer on the first
computing system based on alignment of the weighted
preferences and product attributes of the first product,
wherein the first consumer value is a summation of weight
assigned to each attribute by the consumer multiplied by a
preference level assigned to each attribute by the
consumer,
(b) determining a second consumer value of a
second product for purchase at a second retailer on the first
computing system based on alignment of the weighted
preferences and product attributes of the first product,
wherein the second consumer value is a summation of
weight assigned to each attribute by the consumer
multiplied by a preference level assigned to each attribute
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by the consumer, and wherein the first product and second
product are both suitable to satisfy the first item on the
shopping list,
(c) generating a plurality of individualized
discounts from the plurality of retailers for the products on
the shopping list on the first computing system, wherein
the individualized discounts are customized for the
consumer based on the weighted preferences and product
information,
(d) determining a first net value of the first
product purchased at the first retailer with a first
individualized discount on the first computing system,
wherein the first net value is the first consumer value
normalized by a price of the first product with the first
individualized discount applied,
(e) determining a second net value of the second
product purchased at the second retailer with a second
individualized discount on the first computing system,
wherein the second net value is the second consumer value
normalized by the price of the second product with the
second individualized discount applied, and wherein the
second net value is greater than the first net value,
(f) increasing the first individualized discount on
the first computing system after determining the first net
value and second net value,
(g) recalculating the first net value and second
net value on the first computing system after increasing
the first individualized discount, wherein the first net value
is greater than the second net value, and
(h) adding the first product for purchase at the
first retailer with the first individualized discount to an
optimized shopping list for the consumer based on the first
net value being higher than the second net value;
[(D)] transmitting the optimized shopping list from the
first computing system to the second computing system using an
electronic network to display the optimized shopping list to the
consumer by a user interface of the second computing system;
and
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[(E)] receiving a percentage of an incremental profit for
the purchase of the first product at the first retailer as a fee,
wherein the incremental profit is a difference between a
maximum discount authorized by the first retailer and the first
individualized discount redeemed by the consumer.
REJECTION
Claims 1–9, 11–18, and 20–31 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.2
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements

2 The Examiner inadvertently omitted claim 18 in identifying the pending
claims on appeal (see Final Act. 1, 2).
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of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “the abstract idea of a sales and
marketing behavior,” i.e., to a concept similar to other concepts that courts
have held abstract (Final Act. 3). The Examiner also determined that the
claims do not include additional elements sufficient to amount to
significantly more than the abstract idea itself (id. at 4).
After the Final Office Action was mailed and Appellant’s Appeal
Brief filed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50. The 2019 Revised
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Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id. 3,4
Independent Claim 1 and Dependent Claims 2–6
Step One of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the

3 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
the Examiner’s alleged failure to comply with now superseded USPTO
guidance.
4 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to comments received from the public.
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[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (Step 2A, Prong Two). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded here, as an initial matter, that the Examiner
overgeneralized the claims to identify an abstract idea, or that the Examiner
otherwise failed to consider claim 1 as a whole (Appeal Br. 13–14). Instead,
the Examiner’s characterization of the claim is, in our view, fully consistent
with the Specification, as described below, including the claim language.
Appellant charges that the Examiner “does not consider or address”
various claim limitations (id.); but, there is no requirement that an
examiner’s formulation of the abstract idea must copy the claim language.
That the claim includes more words than the phrase the Examiner used to
articulate the abstract idea, and that the Examiner, thus, articulates the
abstract idea at a higher level of abstraction than would Appellant is,
accordingly, an insufficient basis to persuasively argue that the claim
language has been mischaracterized or that the Examiner has failed to
consider the claim as a whole. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at
different levels of abstraction. As the Board has done, the claimed abstract
idea could be described as generating menus on a computer, or generating a
second menu from a first menu and sending the second menu to another
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location. It could be described in other ways, including, as indicated in the
specification, taking orders from restaurant customers on a computer.”).
We also are not persuaded by Appellant’s argument that the Examiner
erred in determining that claim 1 is directed to an abstract idea (Appeal
Br. 15–21). The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 1 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “COMMERCE SYSTEM AND METHOD
OF CONTROLLING COMMERCE SYSTEM USING SHARE GRABBER
TO LEVERAGE SHOPPING LIST,” and describes, in the Background
section, that economic modeling is commonly used to estimate or predict the
performance and outcome of real systems, and can be an effective tool both
in helping retail store owners and managers (e.g., grocers) forecast and
optimize business decisions, and in helping consumers, interested in quality,
low prices, comparative product features, convenience, and receiving the
most value for the money, achieve those goals (Spec. ¶¶ 3, 5–6). The
Specification notes that although retailers have ready access to historical
transaction sales data, the lack of ready access to comprehensive, reliable,
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and objective product information essential to providing effective
comparative shopping services restricts consumers’ ability to find the lowest
prices, compare product features, and make the best purchasing decisions
(id. ¶ 6).
The present invention is ostensibly intended to address this issue by
providing a consumer model or comparative shopping service in which
retailer product information is combined with a consumer’s profile and
weighted product preferences to generate an optimized shopping list (id.
¶ 61). More particularly, the Specification describes that the optimized
shopping list is generated by considering each line item of the consumer’s
shopping list, including the consumer’s preference for particular product
attributes, and determining, based on retailer product information, which
products should be purchased from which retailers on which day to
maximize the value to the consumer (id. ¶ 62).
Consistent with this disclosure, claim 1 recites a method for
controlling consumer transactions over an electronic network, including a
first computing system and a second computing system, comprising:
(1) “collecting product information associated with the products on the first
computing system” (step (A)); (2) “storing the product information in a
database on the first computing system” (step (B)); (3) providing a website
for a customer to create a shopping list with weighed preferences for product
attributes using the second computing system, and optimizing the shopping
list in response to the addition of a first item to the list, i.e., “providing a
website for a consumer to create a shopping list using the second computing
system with weighted preferences for product attributes, wherein,
automatically and in response to an addition of a first item onto the shopping
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list by the consumer, optimizing the shopping list” (step (C));
(4) transmitting the optimized shopping list from the first computing system
to the second computing system for display to the consumer, i.e.,
“transmitting the optimized shopping list from the first computing system to
the second computing system using an electronic network to display the
optimized shopping list to the consumer by a user interface of the second
computing system” (step (D)); and (5) receiving, as a fee, a percentage of the
first retailer’s incremental profit based on the purchase of the first product,
i.e., “receiving a percentage of an incremental profit for the purchase of the
first product at the first retailer as a fee, wherein the incremental profit is a
difference between a maximum discount authorized by the first retailer and
the first individualized discount redeemed by the consumer” (step (E)).
Claim 1 further recites that the consumer shopping list is optimized
by: (1) determining a first consumer value of a first product for purchase at a
first retailer, where the consumer value is a summation of the weight
assigned to each product attribute multiplied by its preference level,5 i.e.,

5 The Specification describes that the consumer value can be determined by

where CVb is a baseline product value of the product category,
and Ma is the product attribute value to the consumer for
product attribute “a” expressed as (1 + x%), where x is a
percentage increase in value of the product to the consumer
having the attribute “a” with respect to products having no
product attribute “a.”
(See Spec. ¶ 75).
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determining a first consumer value of a first product for
purchase at a first retailer on the first computing system based on
alignment of the weighted preferences and product attributes of
the first product, wherein the first consumer value is a summation
of weight assigned to each attribute by the consumer multiplied
by a preference level assigned to each attribute by the consumer
(step (a)); (2) determining a second consumer value of a second product for
purchase at a second retailer, i.e.,
determining a second consumer value of a second product
for purchase at a second retailer on the first computing system
based on alignment of the weighted preferences and product
attributes of the first product, wherein the second consumer value
is a summation of weight assigned to each attribute by the
consumer multiplied by a preference level assigned to each
attribute by the consumer, and wherein the first product and
second product are both suitable to satisfy the first item on the
shopping list
(step (b)); (3) generating a plurality of individualized discounts for the
products on the shopping list, customized for the consumer based on the
weighted preferences and product information, i.e., “generating a plurality of
individualized discounts from the plurality of retailers for the products on
the shopping list on the first computing system, wherein the individualized
discounts are customized for the consumer based on the weighted
preferences and product information” (step (c)); (4) determining a first net
value of the first product purchased at the first retailer where the first net
value is the first consumer value normalized by a final price of the first
product after the first individualized discount is applied,6 i.e.,

6 The net value is computed by NV = CV/FP or alternatively by
NV = (CV-FP)/CV, where CV is the consumer value and FP is the final
price offered to the consumer, i.e., the regular price less any applicable
discount (Spec. ¶¶ 76–78).
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determining a first net value of the first product purchased
at the first retailer with a first individualized discount on the first
computing system, wherein the first net value is the first
consumer value normalized by a price of the first product with
the first individualized discount applied
(step (d)); (5) determining a second net value of the second product
purchased at the second retailer where the second net value is the second
consumer value normalized by a final price of the second product after the
second individualized discount is applied and is greater than the first net
value, i.e.,
determining a second net value of the second product
purchased at the second retailer with a second individualized
discount on the first computing system, wherein the second net
value is the second consumer value normalized by the price of
the second product with the second individualized discount
applied, and wherein the second net value is greater than the first
net value
(step (e)); and (6) increasing the first individualized discount, recalculating
the first and second net values, and adding the first product to the optimized
shopping list based on the first net value being higher than the second net
value, i.e.,
increasing the first individualized discount on the first
computing system after determining the first net value and
second net value,
recalculating the first net value and second net value on
the first computing system after increasing the first
individualized discount, wherein the first net value is greater than
the second net value, [and]
adding the first product for purchase at the first retailer
with the first individualized discount to an optimized shopping
list for the consumer based on the first net value being higher
than the second net value
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(steps (f), (g), and (h)). These limitations, when given their broadest
reasonable interpretation, recite (1) collecting information (e.g., product
information associated with products available for purchase, a consumer
shopping list with weighed preferences for product attributes); (2) analyzing
the information via mathematical calculations (e.g., optimizing the shopping
list by, inter alia, determining a first net value of a first product purchased at
a first retailer and a second net value of a second product purchased at a
second retailer by normalizing the final price of the products after discounts
are applied); and (3) displaying the results of the collection and analysis
(e.g., displaying the optimized shopping list to the consumer). Simply put,
claim 1 recites mathematical calculations and mathematical relationships,
which are mathematical concepts and, therefore, an abstract idea. See 2019
Revised Guidance, 84 Fed. Reg. at 52. See also SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to “a series
of mathematical calculations based on selected information” are directed to
an abstract idea).7

7 The Federal Circuit has held similar concepts to be abstract. Thus, for
example, the Federal Circuit has held that abstract ideas include the concepts
of collecting data, analyzing the data, and displaying the results of the
collection and analysis, including when limited to particular content. See,
e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying,
and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
analyzing information, without more, as matters within the realm of abstract
ideas); see also SAP Am, 898 F.3d at 1168 (“As many cases make clear,
even if a process of collecting and analyzing information is ‘limited to
particular content’ or a particular ‘source,’ that limitation does not make the
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Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
The only additional elements recited in claim 1, beyond the abstract
idea, are the “first computing system” and the “second computing system”
— elements that the Examiner concluded are generic computer components
(Final Act. 4); they also are described as such in the written disclosure (see,
e.g., Spec. ¶ 46). We find no indication in the Specification that the
operations recited in claim 1 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
allegedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed

collection and analysis other than abstract.”) (quoting Elec. Power Grp.,
830 F.3d at 1353, 1355 (citing cases)).

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invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.8
Appellant maintains here that claim 1 is not directed to an abstract
idea, and is patent eligible, because the claim addresses a problem
“specifically arising in the realm of computer networks and computer
technology” (Appeal Br. 16–19). Appellant asserts that although consumers
now shop using computer technology (e.g., to determine items needed,
availability, pricing, and alternatives), the vast amount of information and
resources available with computer search tools and electronic
communication links can make the simplest of tasks quite complex (id.
at 16). Appellant, thus, maintains that much computing time and resources
can be wasted in pursuing a potential purchaser to complete a sale in an
expeditious manner (e.g., a retailer or manufacturer may have to make
repeated offers in order to hit the purchase decision threshold), which,
according to Appellant, is “why the problem is specific to the realm of
computer networks and computer technology” (id. at 17).
Further, paraphrasing the claim language, Appellant variously argues
that claim 1 “provides a specific solution toward the purchasing decision”
(id.), and that the claim, taken as a whole, “improves the functionality of the
computing systems by utilizing retailer product information with consumer’s

8 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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profile and a list of products . . . with weighted attributes to generate an
optimized shopping list . . . with an individualized discounted offer for each
product . . . to maximize the value to the consumer (id. at 20). Appellant,
thus, maintains that computer operations and network utilization are
improved by “using less failed attempts to find the point of a positive
purchasing decision point,” and that “[c]laim 1, taken as a whole, improves
the functionality of the computing systems by optimizing the shopping list
using a highly specific process that increases the likelihood of reaching a
purchasing decision” (id. at 21; see also id. (further arguing that “[t]he
optimization process, data structure, and communication protocol enhance[ ]
the operation between the first computing system and second computing
system by increasing the probability of completing a sale by finding the
price point of positive purchasing decision, while reducing unnecessary
searching and networking and communication utilization”)).
Although the claimed process may be network-centric in the sense
that consumer transactions are conducted online, i.e., over an electronic
network, pursuing a potential purchaser to complete a sale in an expeditious
manner is not a problem arising in the realm of computer networks and
computer technology. Pursuing potential purchasers is a business/marketing
problem that existed before, and still exists outside of computer technology
and computer networks. And the purported solution here of, at best, generic
computer components performing generic computer functions, is not
necessarily rooted in computer technology.
Importantly too, there is a fundamental difference between computer
functionality improvements, on the one hand, and uses of existing computers
as tools to perform a particular task, on the other — a distinction that the
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Federal Circuit applied in Enfish, in rejecting a § 101 challenge at the first
stage of the Mayo/Alice framework because the claims at issue focused on a
specific type of data structure, i.e., a self-referential table, and not merely on
asserted advances in uses to which existing computer capabilities could be
put. See Enfish, 822 F.3d at 1335–36. Here, to the extent the claimed
invention provides an improvement, that improvement does not concern an
improvement to computer capabilities but instead relates to an alleged
improvement in achieving a positive consumer purchasing decision — a
process in which a computer is used as a tool in its ordinary capacity.
Considered in light of the Specification, the claimed invention clearly
appears focused on achieving a commercial objective, e.g., increasing the
likelihood that a consumer will make a purchasing decision by providing the
consumer with an optimized shopping list that includes products of interest
to the consumer offered at an attractive price (see, e.g., id. ¶ 42 (describing
that an effective model or comparative shopping service “must assist the
consumer in finding the optimal price and product attributes, e.g., brand,
quality, quantity, size, features, ingredients, service, warranty, and
convenience, that are important to the consumer and tip the purchasing
decision toward selecting a particular product and retailer”), id. ¶ 43
(“[P]ersonal assistant engine 74 . . . prioritizes product attributes and
optimizes product selection according to the consumer’s preferences. In
addition, personal assistant engine 74 generates a discounted offer for a
product to entice a positive purchasing decision by a specific consumer.”),
id. ¶ 60 (“The task is to determine an optimal pricing threshold for product P
associated with each individual consumer and then make that discounted
offer available for the individual consumer in order to trigger a positive
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purchasing decision)), and not on any claimed means for achieving that goal
that improves technology.
We conclude, for the reasons outlined above, that claim 1 recites
mathematical concepts, i.e., an abstract idea, and that the additional elements
recited in the claim are no more than generic components used as tools to
perform the recited abstract idea. As such, they do not integrate the abstract
idea into a practical application. See Alice Corp., 573 U.S. at 223–24
(“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant asserts that the inventive concept here involves
determining a first consumer value of a first product . . . ,
determining a second consumer value of a second product . . . ,
generating a plurality of individualized discounts . . . ,
determining a first net value of the first product . . . , determining
a second net value of the second product . . . , increasing the first
individualized discount . . . , recalculating the first net value and
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second net value . . . , adding the first product for purchase at the
first retailer with the first individualized discount to an optimized
shopping list . . . , and transmitting the optimized shopping list
from the first computing system to the second computing system
using an electronic network to display the optimized shopping
list to the consumer by a user interface of the second computing
system (complete claim language recited above)
(Appeal Br. 21–22). And Appellant argues that the Examiner “has failed to
provide support that the above limitations are well-understood, routine, and
conventional in the fields of retailer offers and generic computer operation”
(id. at 22).
Appellant’s argument is not persuasive at least because “the relevant
inquiry is not whether the claimed invention as a whole is unconventional or
non-routine.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018). Instead, the question under step two of the Mayo/Alice
framework (i.e., step 2B) is whether the claim includes additional elements,
i.e., elements other than the abstract idea itself, that “‘transform the nature of
the claim’ into a patent-eligible application.” Alice Corp., 573 U.S. at 217
(quoting Mayo, 566 U.S. at 79, 78). See also Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”
(emphasis added)).
Here, the Examiner determined, and we agree, that the only claim
elements beyond the abstract idea are the “first computing system” and the
“second computing system,” i.e., generic computer components used to
perform generic computer functions (Final Act. 4) — a determination amply
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supported by, and fully consistent with the Specification (see, e.g., Spec.
¶ 46).
Appellant cannot reasonably maintain, nor does Appellant, that there
is insufficient factual support for the Examiner’s determination that the
operation of these components is well-understood, routine, or conventional,
where, as here, there is nothing in the Specification to indicate that the
operations recited in claim 1 require any specialized hardware or inventive
computer components or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions, e.g., receiving, processing, and displaying information. Indeed,
the Federal Circuit, in accordance with Alice, has “repeatedly recognized the
absence of a genuine dispute as to eligibility” where claims have been
defended as involving an inventive concept based “merely on the idea of
using existing computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.” Berkheimer v. HP Inc.,
890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (citations
omitted); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does not argue
that other, non-abstract features of the claimed inventions, alone or in
combination, are not well-understood, routine and conventional database
structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and dependent claims 2–6,
which are not argued separately.
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Independent Claims 7, 14, 20, and 26 and Dependent Claims 8, 9, 11–13,
15–18, 21–25, and 27–31
Appellant’s arguments with respect to independent claims 7, 14, 20,
and 26 are substantially identical to Appellant’s arguments with respect to
independent claim 1. We found those arguments unpersuasive with respect
to claim 1, and we find them equally unpersuasive with respect to claims 7,
14, 20, and 26. Therefore, we sustain the Examiner’s rejection of
independent claims 7, 14, 20 and 26 under 35 U.S.C. § 101. We also sustain
the rejection of dependent claims 8, 9, 11–13, 15–18, 21–25, and 27–31,
which are not argued separately.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 11–
18, 20–31
101 Eligibility 1–9, 11–18,
20–31

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