Ratnakar, Nitesh

Patent Trials and Appeals Board

Feb 26, 2020

12464097 - (D) (P.T.A.B. Feb. 26, 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.
12/464,097 05/11/2009 Nitesh Ratnakar RATN0012 1920
105518 7590 02/26/2020
JDM Patent Law PLLC
5570 Sterrett Place, Suite 201
Columbia, MD 21044
EXAMINER
ZIMMERMAN, MATTHEW E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
jma@jdmpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NITESH RATNAKAR
Appeal 2019-001363
Application 12/464,097
Technology Center 3600
Before JAMES R. HUGHES, CATHERINE SHIANG, and
SCOTT E. BAIN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. c 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 2, 5, 6, and 22–30. Claims 1, 3, 4, and
7–21 have been canceled. See Non-Final Act. 1–2; Appeal Br. 2.2 We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as
Novation Science Holding LLC. See Appeal Br. 2.
2 We refer to Appellant’s Specification (“Spec.”), filed May 11, 2009
(claiming benefit of US 12/140,684 (filed June 17, 2008)); Supplemental
Appeal Brief (“Appeal Br.”), filed Aug. 9, 2018; and Reply Brief (“Reply
Br.”), filed Dec. 3, 2018. We also refer to the Examiner’s Non-Final Office
Appeal 2019-001363
Application 12/464,097
2
We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates generally to selling “products on the internet
using electronic devices such as personal computers and mobile devices”
(Spec. 1:6–7),3 and specifically, to a method “enabl[ing] users [to] search for
products in proximity to current location of their mobile device” (Spec.
1:15–16). See Spec. 1:23–2:5; Abstract. Claim 27 is independent. Claim
27, reproduced below, is illustrative of the claimed subject matter:
27. A method of using a central server to match
products desired by a user and one or more sellers selling the
desired products local to a contemporaneous geographical
location of a mobile communication device of the user and to
receive a consideration from the user upon disclosing to user
contact information of a matched product seller, the central
server receiving information about a plurality of products desired
by the user, the central server configured to store an account for
the user, the method comprising steps of:
receiving, by the mobile device, a local matching product
list upon transmitting to the central server information
identifying a contemporaneous geographical location of the
mobile communication device, the local matching product list
including information identifying a first product desired by the
user and information calculated to identify a first seller selling
the first product and local to the contemporaneous geographical
location of the mobile communication device;
displaying, by the mobile device, a first user interface
configured to inform the user about the local availability of the

Action (“Non-Final Act.”), mailed Oct. 27, 2016; and Answer (“Ans.”)
mailed Oct. 3, 2018.
3 Appellant references the Specification by page number and line number.
See, e.g., Appeal Br. 3–4. Because the original filed Specification does not
include line numbers, we reference the Specification as originally filed (on
May 11, 2009), and note that that our numbering may differ.
Appeal 2019-001363
Application 12/464,097
3
first product without disclosing to the user contact information
of the first seller, the first user interface including a first user-
interactive element configured to enable the user to request for
the contact information of the first seller;
transmitting, by the mobile device, to the central server, a
request for the contact information of the first seller upon
receiving a first user input indicating an interaction to the first
user-interactive element by the user; and
displaying, by the mobile device, a second user interface,
the second user interface configured to display the contact
information of the first seller upon receiving from the central
server information indicating that a consideration has been
assessed to the account for the user.
Appeal Br. 23–24 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Park et al. (“Park”) US 8,160,929 B1 Apr. 17, 2012 (filed
Sept. 28, 2006)
Dedrick US 6,016,509 Jan. 18, 2000
REJECTIONS4
1. The Examiner rejects claims 2, 5, 6, and 22–30 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter. See Non-Final
Act. 3–5.
2. The Examiner rejects claims 2, 5, 6, and 22–30 under 35 U.S.C.
§ 103(a) as being unpatentable over Park and Dedrick. See Non-Final Act.
5–12.

4 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103, e.g., to rename 35 U.S.C.
§ 103’s subsections. Because the present application has an effective filing
date (June 17, 2008) prior to the AIA’s effective date for applications
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Application 12/464,097
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OPINION
Subject Matter Eligibility—35 U.S.C. § 101
Legal Principles
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77–80 (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, 573 U.S. at 217. The
framework requires us first to consider “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If so, we then examine “the elements of [the] claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). That is, we examine the
claim for an “inventive concept,” “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.’” Alice,

(March 16, 2013), this decision refers to the pre-AIA versions of 35 U.S.C.
§ 103, i.e., § 103(a).
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573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
The Patent Office recently published revised guidance concerning this
framework and the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter “2019 Revised Guidance”). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“Step 2A, prong 1”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h))
(hereinafter “Step 2A, prong 2”).5
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. See 2019 Revised Guidance, 84 Fed. Reg.
at 54.

5 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we 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.6
See 2019 Revised Guidance, 84 Fed. Reg. at 56. With these principles in
mind, we turn to the merits of the § 101 rejection.
The Examiner’s Conclusions and Appellant’s Arguments
The Examiner rejects Appellant’s claims 2, 5, 6, and 22–30 as being
directed to patent-ineligible subject matter. See Non-Final Act. 3–5; Ans. 3–
5. Specifically, the Examiner concludes that the “claimed invention is
directed to non-statutory subject matter because the claim(s) as a whole,
considering all claim elements both individually and in combination, do not
amount to significantly more than an abstract idea” (Non-Final Act. 3)
because, inter alia, the “claims recite additional limitations such as a central
server and a mobile communications device. However, these elements are
recited at high levels of generality and it has been held that generic
computing components performing generic functions, alone, do not amount
to significantly more than the abstract idea” (Non-Final Act 4).

6 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 8–17;
Reply Br. 4–6. Specifically, Appellant contends, inter alia, that the
“Examiner . . . fail[ed] to establish a prima facie case (of not ‘significantly
more’) with respect to Step 2B, as the additional claim limitations indeed
amount to ‘significantly more’ than the alleged judicial exception” (Appeal
Br. 13) and the claims do not recite “a conventional and routine ‘use of the
Internet’” or other additional computer components “used to implement the
alleged abstract idea” (Appeal Br. 14). See Appeal Br. 13–17. Further,
Appellant contends:
with respect to the Step 2B of the Alice framework, the Examiner
appears to argue that the Examiner is allowed to conclusively
assert that the additional claimed subject matter (on top of the
alleged abstract idea) is routine and conventional use of the
Internet in discharging the Examiner’s statutory duty of
establishing a prima facie case on the “significantly more” issue
of the Step 2B. This argument is simply unsupported by either
Berkheimer (which the Examiner cited) or any other case. In
fact, Berkheimer expressly stated that patent eligibility
determination DOES involve underlying factual determinations.
Accordingly, the Examiner’s conclusive assertion of no
“significantly more” is simply invalid, and as a result, the
Examiner fails to establish a prima facie case on the issue.
Reply Br. 5.
In the Examiner’s Answer, responsive to Appellant’s contentions, the
Examiner maintains that “the examiner has not put forth arguments asserting
that limitations in the claims are determined to be routine and conventional”
(Ans. 4) and it is irrelevant whether the claims “are not merely routine or
conventional uses of the Internet” because “nowhere does Berkheimer or the
USPTO Memorandum compel an Examiner to make or rely on such
findings” (Ans. 5). See Ans. 3–5.
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Inventive Concept
We have reviewed Appellant’s claims and contentions in detail and in
light of current precedent and guidance (supra). For the reasons explained
below, Appellant has persuaded us that the Examiner erred regarding Step
2B of the Eligibility Analysis. Because this issue is dispositive, we begin
with Step 2B rather than a detailed claim construction or analysis under the
2019 Revised Guidance Step 2A.
As directed by our reviewing court, a proper rejection under Step 2B
requires a search for an “‘inventive concept’ sufficient to ‘transform the
nature of the claim into a patent-eligible application.’” McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)
(quoting Alice, 573 U.S. at 217). Under the second step of the Mayo/Alice
framework, the Examiner must “look with more specificity at what the claim
elements add, in order to determine ‘whether they identify an ‘inventive
concept’ in the application of the ineligible subject matter’ to which the
claim is directed.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1258 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)). An “inventive concept” requires
more than “well-understood, routine, conventional activity already engaged
in” by the relevant industry. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc.,
827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at
79–80); see Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014). The “inventive
concept” “must be significantly more than the abstract idea itself, and cannot
simply be an instruction to implement or apply the abstract idea on a
computer.” BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1349 (Fed. Cir. 2016) (citation omitted). But a
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“non-conventional and non-generic arrangement of known, conventional
pieces” may provide an “inventive concept” satisfying Mayo/Alice Step 2.
Id. at 1350.
“The second step of the Alice test is satisfied when the claim
limitations ‘involve more than performance of []well-understood, routine,
[and] conventional activities previously known to the industry.’”
Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018) (quoting
Content Extraction, 776 F.3d at 1347–48 and Alice, 573 U.S. at 225).
“Whether something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination.”
Berkheimer, 881 F.3d at 1369. See 2019 Revised Guidance, 84 Fed. Reg. at
56.
As previously discussed, the Examiner rejects claims 2, 5, 6, and 22–
30 as being directed to patent-ineligible subject matter (supra), and
concludes (with respect to Step 2B) that independent claim 27 recites the
additional elements “such as a central server and a mobile communications
device” “at high levels of generality” and “generic computing components
performing generic functions, alone, do not amount to significantly more
than the abstract idea.” Non-Final Act. 4. Moreover, the Examiner asserts
that Berkheimer does not require findings that the recited additional
elements are routine or conventional (or well-understood). See Ans. 3–5.
The Examiner’s interpretation of the law is erroneous. The
Examiner’s rejection and response (supra) have not provided the evidence
required by Berkheimer to support the Examiner’s determinations that the
claims do not recite an inventive concept (that the additional elements are
generic—i.e., well-understood, routine, and conventional). See Berkheimer,
881 F.3d at 1369; 2019 Revised Guidance, 84 Fed. Reg. at 56, n. 36.
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We agree with Appellant (Reply Br. 5) that the Examiner has not
established a prima facie case. Specifically the Examiner has not provided
any of the four categories of information required by the USPTO’s guidance
in its Berkheimer Memo:7
1. A citation to an express statement in the specification or to
a statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s) . . . .
2. A citation to one or more of the court decisions discussed
in MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s) . . . .
4. A statement that the examiner is taking official notice of
the well-understood, routine, conventional nature of the
additional element(s) . . . .
Berkheimer Memo at 3–4.
In summary, the Examiner has not provided sufficient persuasive
evidence that Appellant’s claim 1 recites additional elements that are well-
understood, routine, and conventional with respect to Step 2B of the
Alice/Mayo framework in the Revised Guidance. Accordingly, we are
constrained by the record to reverse the Examiner’s rejection of claims 2, 5,
6, and 22–30 under 35 U.S.C. § 101 on procedural grounds.
Obviousness Rejections of Claims 2, 5, 6, and 22–30

7 Memorandum from Robert W. Bahr, entitled “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.),” dated April 19, 2018
(“Berkheimer Memo”). The Berkheimer Memo is available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (last visited Jan. 28, 2019).
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Appellant argues independent claim 27, and dependent claims 2, 5, 6,
22–26, and 28–30, together as a group with respect to the 35 U.S.C. § 103(a)
rejection. See Appeal Br. 17–20. We select independent claim 27 as
representative of Appellant’s arguments with respect to claims 2, 5, 6, and
22–30. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner rejects claims 2, 5, 6, 22–26, and 28–30 over Park and
Dedrick. See Non-Final Act. 5–12; Ans. 5–7. Specifically, with respect to
claim 27 (see Final Act. 5–7), the Examiner explains that Park describes all
the features of Appellant’s claim with the exception of “explicitly teach[ing]
monetizing [the] contact information so that the contact information is
displayed upon receiving from the central server information indicating that
a consideration has been assessed to the account for the user” (Non-Final
Act. 7), which is described by Dedrick. See Non-Final Act. 5–7. The
Examiner provides a rationale for combining Park and Dedrick—“It would
have been obvious to one of ordinary skill in the art at the time of invention
to apply the teachings of Dedrick discussing charging users for
electronically consuming units of information to the seller contact
information taught by Park because the combination would lead to increased
revenue” (Non-Final Act. 7) , i.e., the combination would be “more
efficient” and “results in a process that is more desirable for the charging
entity” (Ans. 6). See Non-Final Act. 5–7; Ans. 5–7.
Appellant does not dispute the Examiner’s substantive findings with
respect to Park and Dedrick. See Appeal Br. 17–18; Reply Br. 6–7. Instead,
Appellant contends the Examiner has not “establish[ed] a non-hindsight
specific reason for” combining Park and Dedrick, and Dedrick is not in the
same field as Park or the instant application claims—“[t]he distinct [field] of
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Dedrick is completely irrelevant to the specific claim context of the claimed
subject matter.” Appeal Br 18; see Appeal Br. 17–18; Reply Br. 6–7.
We find the Examiner has provided a sufficient rationale for
combining Park and Dedrick. Appellant does not persuasively explain why
the references are incompatible (not analogous or not in the same field of
endeavor—both references describe providing data to a user interface (see
Park, col. 9, ll. 2–31; Dedrick, col. 3, ll. 29–31), nor does Appellant argue
that the references teach away from one another. In contrast to Appellant’s
arguments (see Appeal Br. 17–18; Reply Br. 6–7) the Examiner need not
explain how to bodily combine the features of the prior art references—
[t]he test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference . . . . Rather, the test is what
the combined teachings of the references would have suggested
to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (emphasis added). See In re
Mouttet, 686 F.3d 1322, 1332–33 (Fed. Cir. 2012). Here, Appellant argues
the references individually and does not address the specific arguments set
out by the Examiner. The references cited by the Examiner must be read,
not in isolation, but for what each fairly teaches in combination with the
prior art as a whole. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (one cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references).
Additionally, the Supreme Court has held that in analyzing an
obviousness rationale, the Examiner “need not seek out precise teachings
directed to the specific subject matter of the challenged claim . . . [and may]
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
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418 (2007). Also, the Examiner may consider “the background knowledge
possessed by a person having ordinary skill in the art.” KSR, 550 U.S. at
418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Further, an
artisan is presumed to possess both skill and common sense. See KSR, 550
U.S. at 421 (“A person of ordinary skill is also a person of ordinary
creativity, not an automaton.”).
We further find that it would have been within the skill of an
ordinarily skilled artisan to have combined Park’s local item matching
process with Dedrick’s process of providing information to a user interface
based on payment. See KSR, 550 U.S. at 417 (“[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her
skill.”). We are not persuaded that combining the respective familiar
elements of the cited references in the manner proffered by the Examiner
would have been “uniquely challenging or difficult for one of ordinary skill
in the art” at the time of Appellant’s invention. Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418).
Accordingly, Appellant’s contentions do not persuade us of error in
the Examiner’s obviousness rejection of representative independent claim
27. Therefore, we affirm the Examiner’s rejection of representative claim
27, and dependent claims 2, 5, 6, 22–26, and 28–30, not separately argued
with particularity (supra).
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CONCLUSION
For the reasons discussed above, we find Appellant has not shown that
the Examiner erred in rejecting claims 2, 5, 6, and 22–30 under 35 U.S.C.
§ 103(a). Appellant has, however, shown that the Examiner erred in
rejecting claims 2, 5, 6, and 22–30 under 35 U.S.C. § 101. We affirm the
Examiner’s rejection of claims 2, 5, 6, and 22–30 because we sustain at least
one ground of the Examiner’s rejection.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
2, 5, 6, 22–30 101 Patent Eligible
Subject Matter
2, 5, 6, 22–
30
2, 5, 6, 22–30 103(a) Park, Dedrick 2, 5, 6, 22–30
Overall
Outcome

2, 5, 6, 22–30
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED