Adam Callahan. Sanders et al.

Patent Trials and Appeals Board

Aug 29, 2019

13742418 - (D) (P.T.A.B. Aug. 29, 2019)

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.
13/742,418 01/16/2013 Adam Callahan Sanders 170114-1640 8493
71247 7590 08/29/2019
Client 170101 c/o
THOMAS HORSTEMEYER, LLP
3200 WINDY HILL RD SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
MISIASZEK, MICHAEL
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/29/2019 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):
docketing@thomashorstemeyer.com
uspatents@tkhr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ADAM CALLAHAN SANDERS and
ALLISON MARGARET CANDIDO
____________________

Appeal 2017-011519
Application 13/742,4181
Technology Center 3600
____________________

Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
HUNG H. BUI, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1–13, 16, 17, 19–22, and 26–28, which
are all the claims pending in the application. App. Br. 30–39 (Claims App.).
Claims 14, 15, 18, and 23–25 have been cancelled. Id. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.2

1 According to Appellants, Amazon Technologies, Inc. is the real party in
interest. App. Br. 2.
2 Our Decision refers to Appellants’ Appeal Brief filed May 23, 2017
(“App. Br.”); Reply Brief filed September 18, 2017 (“Reply Br.”);
Examiner’s Answer mailed August 7, 2017 (“Ans.”); Final Office Action
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STATEMENT OF THE CASE
According to Appellants, the claimed subject matter relates to
“providing personalized recommendations [of items and/or services for sale]
to user’s interacting with an electronic marketplace offering items for sale by
merchants [based on the user’s interaction history with items in the
electronic marketplace].” Abstract; Spec. ¶¶ 8–9.
Claims 1, 4, and 13 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below:
1. A non-transitory computer-readable medium
embodying a program executable in at least one computing
device, the program comprising code, that when executed on the
at least one computing device, causes the at least one computing
device to at least:
monitor one or more interactions with network content
associated with an electronic marketplace by a client device
associated with a user profile;
generate user interaction data associated with the user
profile based at least in part on the one or more interactions with
the network content;
modify an interaction history associated with the user
profile and stored in stored data to include the user interaction
data;
receive a request from the client device to view a
recommendation network page associated with the electronic
marketplace;
obtain user profile information associated with the user
profile, the user profile information including the interaction
history of the user profile with respect to the electronic
marketplace, the interaction history including a plurality of
interaction events associated with an item as identified from the
user interaction data, at least one interaction event corresponding
to a rating of the item;

mailed January 30, 2017 (“Final Act.”); and original Specification filed
January 16, 2013 (“Spec.”).
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determine a plurality of categories associated with the
item;
calculate a respective interaction event score for individual
ones of the plurality of interaction events associated with the item
and the user profile by applying a time decay function based at
least in part on a time associated with a corresponding interaction
event of the plurality of interaction events, a type of interaction
associated with the corresponding interaction event, a value of
the rating, and a predefined constant;
generate a respective category preference score for
individual ones of the plurality of categories based at least in part
on a sum of interaction event scores calculated using the
respective interaction event score for the individual ones of the
plurality of interaction events, the respective category score
being unique to the user profile;
select at least one of a plurality of recommendations based
at least in part on a plurality of category preference scores for the
plurality of categories;
modify a recommendation network page by encoding the
recommendation network page to include at least one of the
plurality of recommendations, the recommendation network
page being personalized according to the user profile; and
transmit the recommendation network page to the client
device associated with the user profile.

App. Br. 30–31 (Claims App.).

EXAMINER’S REJECTION
Claims 1–13, 16, 17, 19–22, and 26–28 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to an abstract idea without
significantly more. Final Act. 2–10.

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DISCUSSION
In rejecting claims 1–13, 16, 17, 19–22, and 26–28 under 35 U.S.C.
§ 101, the Examiner determines these claims are directed to “providing
personalized recommendations to user’s interacting with an electronic
marketplace offering items for sale by merchants [based on the user’s
interaction history with items in the electronic marketplace]” (Ans. 2) which
fall into multiple categories of abstract ideas, including (i) “certain methods
of organizing human activity such as a fundamental economic practice” (ii)
“‘an idea of itself’ [i.e., a mental process that could be performed in the
human mind or by a human using a pen and paper],” and (ii) and include
limitations that are analogous or similar to (1) concepts of “comparing new
and stored information and using rules to identify options” as discussed in
SmartGene; and (2) concepts of collecting information, analyzing it, and
displaying certain results of the collection and analysis as discussed in
Electric Power Group. Final Act. 5; see SmartGene, Inc. v. Advanced
Biological Labs., SA, 852 F. Supp. 2d 42 (D. D.C. 2012), aff’d, 555 F.
App’x 955 (Fed. Cir. 2014) (holding that claims directed to “comparing new
and stored information and using rules to identify medical options” are not
patent-eligible); and Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (holding that claims directed to “gathering and
analyzing information of a specified content, then displaying the results” are
patent-ineligible under § 101).
The Examiner also determines the claims fail to amount to
“significantly more than the judicial exception” or contain an “inventive
concept” because the additional elements recited (1) “do not amount to an
improvement to another technology or technical field,” (2) “do not amount
to an improvement to the functioning of a computer itself,” (3) “merely
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amount to the application or instructions to apply the abstract idea on a
computer,” (4) “amount to nothing more than requiring a generic computer
to perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.” Final
Act. 2–3.
Appellants argue independent claims 1, 4, and 13 together (App. Br.
5–18). We select claim 1 as representative. Claims 2–13, 16, 17, 19–22,
and 26–28 stand or fall with claim 1 (see 37 C.F.R. § 41.37(c)(1)(iv)).
Legal Framework
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court’s two-step framework articulated in Alice Corp. Pty. Ltd.
v. CLS Bank Int’l, 573 U.S. 208 (2014). First, we determine whether the
claims are directed to a patent-ineligible concept: laws of nature, natural
phenomena, and abstract ideas. Id. at 217. If so, we then proceed to the
second step to consider the elements of the claims “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. In other words, the second step is to “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)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
72–73 (2012)).
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
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add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In an effort to achieve clarity and consistency in how the Office
applies the Supreme Court’s two-step framework, the Office recently
published revised guidance interpreting governing case law and establishing
a framework to govern all patent-eligibility analysis under Alice and § 101
effective as of January 7, 2019. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019) (“2019 Revised
Guidance”).
2019 Revised Guidance
Under the Revised Guidance, we first look under Alice step 1 or “Step
2A” to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes, or [iii] certain methods of organizing
human activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions
between people); and

(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).3
See Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A, Prong
One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does

3 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 or
“Step 2B.” See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
In their briefs, Appellants refer to prior USPTO guidance (e.g., [1]
2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg.
241 (December 16, 2014); [2] July 2015 Update on Subject Matter
Eligibility, 80 Fed. Reg. 45,429 (July 30, 2015) (“the 2015 Update”); [3]
May 2016 Subject Matter Eligibility Update, 81 Fed. Reg. 88 (May 6, 2016);
[4] Memorandum on Subject Matter Eligibility Decisions dated Nov. 2, 2016
(App. Br. 7; Reply Br. 3)). However, those prior guidelines have been
superseded by the 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). Accordingly,
our analysis will not address the sufficiency of the Examiner’s rejection
against the cited prior guidance. Rather, our analysis will comport with the
2019 Revised Guidance as discussed below.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A, Prong One
Turning to the first step of the Alice inquiry, Appellants argue the
claims are not directed to an abstract idea because: (1) the Examiner has
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overgeneralized the claims and ignored all limitations recited (App. Br. 8–
12); (2) “the claims considered as a whole are not directed to excluded
subject matter” because these claims (i) are directed to “a specific computer-
implemented solution to a problem that arises in the context of electronic
commerce; and (ii) address [] content delivery problems caused by the rise
of electronic commerce by improving computing efficiencies and providing
personalized information to users” (App. Br. 12–14); (3) “the claims are not
directed to methods of organizing human activity” or “a fundamental
economic practice” because these claims (i) are not analogous or similar to
those examples outlined by the PTO’s Quick Reference Sheet of the 2015
Update, and (ii) “elements [recited] are specific to a networked
environment” and relate to “improving computing efficiencies” (App. Br.
14–18); and (4) “the claims are not directed to an idea ‘of itself’” because
the steps recited cannot be performed in the human mind (App. Br. 19–21).
Appellants’ arguments are not persuasive. Contrary to Appellants’
arguments, Appellants’ Specification and claims describe “providing
personalized recommendations [of items and/or services for sale] to user’s
interacting with an electronic marketplace offering items for sale by
merchants [based on the user’s interaction history with items in the
electronic marketplace].” Abstract; Spec. ¶¶ 8–9. For example, Figure 1
shows an electronic marketplace in the context of computing environment
103 for providing personalized recommendations of items for sale, via an
electronic commerce, as reproduced below:
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Figure 1 shows computing environment 103 for providing personalized
recommendations of items for sale, via an electronic marketplace
(commerce), based on user’s preferences.

As characterized by Appellants, representative claim 1 recites a
computer-based approach for
providing personalized information to users to make ordering
decisions by (1) monitoring interactions by client devices
associated with user accounts of an electronic commerce
marketplace, (2) generating interaction data associated with the
interactions, (3) modifying interaction history based in part on
the interaction data, (4) receiving a request for network content
including a recommendation, (5) encoding network content
with personalized recommendations selected based in part on
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the interaction history, and (6) transmitting the personalized
network content to the client device(s).
App. Br. 10, 30–31 (Claims App.). These limitations, under their broadest
reasonable interpretation, recite nothing more than compiling user’s
interaction history (preferences) with items in an electronic marketplace and
then providing personalized recommendations of items for sale to user’s
interacting with an electronic marketplace offering items for sale by
merchants based on the user’s interaction history.
For example, limitations (1)–(3) in claim 1, as characterized by
Appellants, describe receiving, monitoring and maintaining user’s
interactions and interaction history, which are activities ordinarily performed
by companies and related entities such as businesses and websites (such as
online stores) displaying items for sales by merchants when accumulating
and analyzing user data. See Spec. ¶¶ 8–9, Abstract. Limitations (4)–(6) in
claim 1 describe determining personalized recommendations based on the
user’s interaction history and presenting personalized content to the user,
which are activities ordinarily performed by businesses and websites (online
stores) that offer items and/or services by merchants that are most likely to
bring in revenue. Thus, limitations (1)–(6) in claim 1 recite providing
personalized recommendations of items for sale to the user based on the
user’s interaction history, which is a known business activity and a
fundamental economic practice in our system of commerce.
Such activities are squarely within the realm of abstract ideas, like
(1) the risk hedging in Bilski v. Kappos, 561 U.S. 593 (2010); (2) the
intermediated settlement in Alice, 573 U.S. at 219–22; (3) verifying credit
card transactions in CyberSource Corp., v. Retail Decisions, Inc., 654 F.3d
1366, 1370 (Fed. Cir. 2011); (4) guaranteeing transactions in buySAFE, Inc.
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v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014); (5) distributing
products over the Internet in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709
(Fed. Cir. 2014); (6) determining a price of a product offered to a purchasing
organization in Versata Development. Group., Inc. v. SAP America, Inc.,
793 F.3d 1306 (Fed. Cir. 2015); and (7) pricing a product for sale in OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015). Providing
personalized recommendations of items for sale to user’s interacting with an
electronic marketplace offering items for sale by merchants based on the
user’s interaction history with items in the electronic marketplace is also a
building block of a market economy and, like risk hedging and
intermediated settlement, is an “abstract idea” beyond the scope of § 101.
See Alice, 573 U.S. at 219–20.
Therefore, we conclude limitations (1)–(6) in claim 1 recite a
fundamental economic practice and one of the certain methods of organizing
human activity identified in the Revised Guidance, and thus an abstract idea.
See Revised Guidance (Revised Step 2A, Prong One), 84 Fed. Reg. at 52
(describing an abstract idea category of “[c]ertain methods of organizing
human activity—fundamental economic principles or practices . . .
commercial or legal interactions (including . . . advertising, marketing or
sales activities or behaviors; business relations)”).
Alternatively, we further note limitations (1)–(6) in claim 1, as
characterized by Appellants, recite steps readily performable by human
beings (e.g., by business analysts determining items for sale potentially
relevant to a particular user based on users’ interaction history and
preferences of items for sale. Thus, we conclude limitations (1)–(6) in claim
1 recite concepts readily performed mentally or manually, which is another
abstract idea identified in the Revised Guidance. See Revised Guidance
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(Revised Step 2A, Prong One–Mental processes), 84 Fed. Reg. at 52, 54;
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (“[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 101.”). Claim 1’s
“computing device” automates such actions that can be performed manually
with pen and paper, however, mental processes remain unpatentable even
when automated to reduce the burden on the user of what once could have
been done with pen and paper. CyberSource, 654 F.3d at 1375 (“That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.”).
As further recognized by the Examiner, claim 1 recites collecting,
analyzing, and displaying information (items for sale), similar to other
claims (involving data collection and analysis) identified by the courts as
directed to abstract ideas. Final Act. 4; Ans. 4; see Electric Power Grp.,
830 F.3d at 1353 (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (claims were “drawn to the abstract idea of 1) collecting
data, 2) recognizing certain data within the collected data set, and 3) storing
that recognized data in a memory”).
Thus, under Step 2A, Prong One, we agree with the Examiner the
claims recite an abstract idea identified in the Revised Guidance.
Step 2A, Prong Two (Integration into a Practical Application)
Under Revised Step 2A, Prong Two of the Revised Guidance, we
discern no additional element (or combination of elements) recited in
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Appellants’ claims 1, 4, and 13 that may have integrated the judicial
exception into a practical application. See Revised Guidance, 84 Fed. Reg.
at 54–55. For example, Appellants’ claimed additional elements (e.g.,
“computing device”) do not: (1) improve the functioning of a computer or
other technology; (2) are not applied with any particular machine (except for
a generic computer); (3) do not effect a transformation of a particular article
to a different state; and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h); Ans. 4–5.
Appellants argue that:
[b]y personalizing network content for individual users
interacting with an electronic commerce system, computing
efficiencies are improved by reducing the amount of undesired
content that may be presented to users interacting with the
electronic commerce system and limiting the amount of
resources consumed by users trying to find and access network
content associated with actual items of interest to the specific
user.

App. Br. 10 (emphasis added). Appellants further argue, like the claims in
McRO Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed.
Cir. 2016), their “present claims are directed to a specific computer-based
approach to improving computing efficiencies and providing personalized
information to users to make ordering decisions . . . are directed to a
‘patentable, technological improvement’ over existing content generating
systems for electronic commerce systems.” App. Br. 12.
We disagree. There is no support from Appellants’ Specification for
any feature that would improve “computing efficiencies” as Appellants
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argue. Even if the Specification has support for such feature, Appellants’
claim 1 is focused on compiling user’s interaction history (preferences) with
items in an electronic marketplace and then providing personalized
recommendations of items for sale to user’s interacting with an electronic
marketplace offering items for sale by merchants based on the user’s
interaction history, rather than “improving computing efficiencies.”
We also note Appellants’ reliance on McRO is misplaced. For
example, McRO’s ’576 patent (U.S. Patent No. 6,307,576) describes
computer software for matching audio to a 3D animated mouth movement
to provide lip-synched animation. McRO’s claims contain (i) specific
limitations regarding a set of rules that “define[] a morph weight set stream
as a function of phoneme sequence and times associated with said phoneme
sequence” to enable computers to produce “accurate and realistic lip
synchronization and facial expressions in animated characters” (McRO, 837
F.3d at 1313) and, when viewed as a whole, are directed to (ii) a
“technological improvement over the existing, manual 3–D animation
techniques” that uses “limited rules in a process specifically designed to
achieve an improved technological result in conventional industry practice.”
Id. at 1316.
In contrast to McRO, Appellants’ Specification and claims do not
describe technological improvements or specific improvements to the way
computers operate. Rather, Appellants’ Specification and claims describe
compiling user’s interaction history (preferences) with items in an electronic
marketplace and then providing personalized recommendations of items for
sale to user’s interacting with an electronic marketplace offering items for
sale by merchants based on the user’s interaction history.
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Using a generic computer (i.e., computing device) as a tool to perform
an abstract idea are insufficient to show “integration into a practical
application.” See MPEP § 2106.05(f). Instead, these generic computing
devices are simply the “automation of the fundamental economic concept,”
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir.
2015), of compiling user’s interaction history (preferences) with items in an
electronic marketplace and then providing personalized recommendations of
items for sale to user’s interacting with an electronic marketplace offering
items for sale by merchants. “[M]erely requiring generic computer
implementation,” “do[] not move into [§] 101 eligibility territory.”
buySAFE, 765 F.3d at 1354.
As correctly recognized by the Examiner, “the problems contemplated
by the specification [] are commercial problems of retaining customers by
recommending items of particular interests.” Ans. 5. As such, using a
generic computing device to process user’s interaction history and make
personalized recommendations of items for sale in an electronic marketplace
does not improve the technical functioning of the computer or computer
networks and, as such, does not integrate the fundamental economic concept
of “providing personalized information to users to make ordering decisions
[pertaining items for sale]” into a practical application, as Appellants argue.
App. Br. 12; Reply Br. 7.
For business-centric inventions, such as Appellants’ invention
involving “providing personalized information to users to make ordering
decisions [pertaining items for sale],” the Federal Circuit’s precedential
decisions in (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014) and (2) Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016) are more instructive. For example, the
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Federal Circuit held DDR’s claims are patent-eligible under § 101 because
DDR’s claims (1) do not merely recite “the performance of some business
practice known from the pre-Internet world” previously disclosed in Bilski
and Alice, but instead (2) provide a technical solution to a technical problem
unique to the Internet, i.e., a “solution . . . necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” DDR, 773 F.3d at 1257. Likewise, the Federal
Circuit also held Amdocs’ claims patent-eligible under § 101 because, like
DDR, Amdocs’ claims “entail[] an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases)” and
“improve the performance of the system itself.” Amdocs, 841 F.3d at 1300,
1302. According to MPEP § 2106.05(a), both the Federal Circuit’s
precedential decisions in DDR and Amdocs are incorporated into the
“integration into a practical application” (Prong Two) of the Revised
Guidance.
In contrast to DDR and Amdocs, Appellants’ abstract idea of
“providing personalized information to users to make ordering decisions
[pertaining to items for sale]” does not provide a technical solution to a
technical problem, i.e., a “solution . . . necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” DDR, 773 F.3d at 1257. Nor does Appellants’
invention entail, like Amdocs, any “unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases)” and
“improve the performance of the system itself.” Amdocs, 841 F.3d at 1300,
1302. Instead, the solution proposed by Appellants, as correctly recognized
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by the Examiner (Ans. 5), is simply to address “commercial problems of
retaining customers by recommending items of particular interests,” and not
to improve any technical functioning of any computer or any technological
problem. A claim for a new abstract idea is still an abstract idea. See
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016). “No matter how much of an advance in the finance field the claims
recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm.” See SAP
America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
For these reasons, we discern no additional elements (or combination
of elements) recited in Appellants’ claim 1 (similarly, claims 4 and 13) that
integrate the judicial exceptions into a practical application. See Revised
Guidance, Revised Step 2A, Prong Two.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Under the Revised Guidance, only if a claim: (1) recites a judicial
exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellants do not identify any “specific limitation [of claim 1] beyond
the judicial exception that is not ‘well-understood, routine, conventional’ in
the field” as per MPEP § 2106.05(d). Instead, Appellants present several
arguments, based on DDR, Amdocs, and BASCOM Global Internet Servs.,
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Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), in support of
Appellants’ contention that the claims contain an “inventive concept.”
App. Br. 23–28; Reply Br. 7–11.
However, Appellants’ arguments are not persuasive for reasons
discussed in connection with DDR and Amdocs. With respect to Bascom,
Appellants’ reliance is misplaced. For example, Bascom (U.S. Patent No.
5,987,606 (“Bascom ’606 patent”)) describes a particular arrangement of
filtering software at a specific location, remote from the end-users, with
customizable filtering features specific to each end user. The filtering
software enables individually customizable filtering at the remote ISP server
by taking advantage of the technical ability of the ISP server to identify
individual accounts and associate a request for Internet content with a
specific individual account. Bascom ’606 patent, 4:35–38.
The Federal Circuit recognized that Bascom’s installation of an
Internet content filter at a particular network location is “a technical
improvement over prior art ways of filtering such content” because such an
arrangement advantageously allows the Internet content filter to have “both
the benefits of a filter on a local computer and the benefits of a filter on the
ISP server” and “give[s] users the ability to customize filtering for their
individual network accounts.” Bascom, 827 F.3d at 1350, 1352. According
to the Federal Circuit, Bascom’s claims “do not preempt the use of the
abstract idea of filtering content on the Internet or on generic computer
components performing conventional activities.” Id. Instead, Bascom’s
claims “carve out a specific location for the filtering system (a remote ISP
server) and require the filtering system to give users the ability to customize
filtering for their individual network accounts.” Id. As such, “an inventive
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Application 13/742,418
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concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.” Id. at 1350.
In contrast to Bascom, Appellants’ claims and Specification are
directed to a system and method for “providing personalized
recommendations [of items and/or services for sale] to user’s interacting
with an electronic marketplace offering items for sale by merchants [based
on the user’s interaction history with items in the electronic marketplace].”
Abstract; Spec. ¶¶ 8–9. There is no evidence in the record to support the
contention that Appellants’ claimed system is provided with any non-
conventional and non-generic arrangement of known, conventional
components similar to Bascom.
Lastly, Appellants argue that “it is oxymoronic to allege that the
claims are directed to a fundamental economic practice long prevalent in our
system of commerce” “when the novelty of the claims is not in dispute.”
App. Br. 26. This argument improperly conflates the test for § 101 with the
separate tests for §§ 102 and 103. See, e.g., Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (“under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature (or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility”); Diamond v.
Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps
in a process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.”). As the Supreme Court emphasizes,
“[t]he ‘novelty’ of any element or steps in a process, or even of the process
itself, is of no relevance in determining whether the subject matter of a
claim falls within the § 101 categories of possibly patentable subject
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Application 13/742,418
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matter.” Diehr, 450 U.S. at 188–89 (emphasis added). Although the second
step in the Alice/Mayo framework is termed a search for an “inventive
concept,” the analysis is not an evaluation of novelty or non-obviousness,
but rather, a search for “‘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, 573 U.S. at 217–
18 (quoting Mayo 566 U.S. 72–73). A novel and nonobvious claim directed
to a purely-abstract idea is, nonetheless, patent-ineligible. See Mayo, 566
U.S. at 89–91.
Because Appellants’ independent claims 1, 4, and 13 are directed to a
patent-ineligible abstract concept and do not recite an “inventive concept” or
provide a solution to a technical problem under the second prong of the Alice
analysis, we sustain the Examiner’s rejection of claims 1–13, 16, 17, 19–22,
and 26–28 under 35 U.S.C. § 101.

CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1–13, 16, 17, 19–22,
and 26–28 under 35 U.S.C. § 101.

DECISION
As such, we sustain the Examiner’s rejection of claims 1–13, 16, 17,
19–22, and 26–28 under 35 U.S.C. § 101.
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).

AFFIRMED