buyr, Inc.

Patent Trials and Appeals Board

Nov 6, 2020

14058588 - (D) (P.T.A.B. Nov. 6, 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.
14/058,588 10/21/2013 Bret Matthew Smith 156002USP 2110
16275 7590 11/06/2020
HolzerIPLaw, PC
dba Holzer Patel Drennan
216 16th Street
Suite 1350
Denver, CO 80202
EXAMINER
MILLER, BRITTNEY N
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
11/06/2020 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):
docket@hpdlaw.com
hiplaw@blackhillsip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRET MATTHEW SMITH, EVERETT CHASE GRAVES,
SCOTT THOMAS HONIG, and BRANDON ADAM EVANS
____________

Appeal 2020-004428
Application 14/058,588
Technology Center 3600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–7 and 12–20 (Appeal Br. 3; see also Final Act.2
2). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Buyr, Inc.”
(Appellant’s January 27, 2020 Appeal Brief (Appeal Br.) 3).
2 Examiner’s February 27, 2019 Final Office Action 2.
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STATEMENT OF THE CASE
Appellant’s disclosure relates “to information management
technology and specifically to electronic commerce systems” (Spec.
¶ 1). Appellant’s independent claims 1 and 16 are reproduced below:
1. One or more non-transitory and tangible computer-readable
storage media storing computer executable instructions for
performing a computer process on a computing system, the
computer process comprising:
receiving a plurality of sale offers, each sale offer
including required revenue values per volume values for a
product;
determining an offered market price based on the
plurality of sale offers;
displaying, using a computer interface, the offered
market price to a plurality of buyers, including displaying the
offered market price at an electronic storefront display of one of
a plurality of vendors providing one of the plurality of sale
offers;
receiving from the plurality of buyers, using the
computer interface, a plurality of conditional offers for
purchases (COPs);
determining each buyer’s location and adjusting the
COPs based on shipping costs and effective tax liability based
on each buyer’s location;
determining, using a computer processor, whether a
combination of one or more of the plurality of COPs meets a
combination of one or more of the required revenue values;
completing a plurality of sales transactions, if the
combination of one or more of the plurality of COPs meets the
combination of one or more of the required revenue values;
determining if the combination of one or more of the
required revenue values includes at least two required revenue
values from two different vendors, each of the two required
revenue values being substantially similar;
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selecting one of the two different vendors based on a tie-
breaking criterion provided by a buyer,
wherein the tie-breaking criterion provides for selecting a
vendor that offers lowest sale price for a next unit of product
following completion of the plurality of sales transactions; and
communicating an adjusted offered market price to the
electronic storefront display at a physical storefront location
and instantaneously updating the electronic storefront display
with the adjusted offered market price and automatically
changing the offered market price displayed at the electronic
storefront display at the physical storefront location.
(Claims Appendix3 2–3.)
16. One or more non-transitory and tangible computer-readable
storage media storing computer executable instructions for
performing a computer process on a computing system, the
computer process comprising:
receiving a plurality of sale offers, each sale offer
including required revenue values per volume values for a
product;
determining an offered market price based on the
plurality of sale offers;
displaying, using a computer interface, the offered
market price to a plurality of buyers including displaying the
offered market price at an electronic storefront display of one of
a plurality of vendors providing one of the plurality of sale
offers;
receiving from the plurality of buyers, using the
computer interface, a plurality of conditional offers for
purchases (COPs), wherein each COP specifies an offered
purchase value for a volume of product purchase;
determining each buyer’s location and adjusting the
COPs based on shipping costs and effective tax liability based
on each buyer's location;

3 Appellant’s March 2, 2020 Corrected Claims Appendix.
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completing a plurality of sales transactions, if a
combination of two or more of the plurality of COPs meets a
combination of one or more of the required revenue values;
determining if the combination of one or more of the
required revenue values includes at least two required revenue
values from two different vendors, each of the two required
revenue values being substantially similar;
selecting one of the two different vendors based on a tie-
breaking criterion provided by a buyer,
wherein the tie-breaking criterion provides for selecting a
vendor that offers lowest sale price for a next unit of product
following completion of the plurality of sales transactions; and
communicating the adjusted offered market price to the
electronic storefront display at a physical storefront location
and updating a display with the adjusted offered market price
and automatically changing the offered market price displayed
at the electronic storefront display at the physical storefront
location.
(Id. at 6–7 (emphasis added).)

Grounds of rejection before this Panel for review:
Claims 16–19 stand rejected under 35 U.S.C. § 112(b).
Claims 1–7 and 12–20 stand rejected under 35 U.S.C. § 101.

DEFINITENESS:
ISSUE
Does the preponderance of evidence support Examiner’s conclusion
that “the adjusted offered market price,” as set forth in Appellant’s claim 16,
lacks antecedent basis?

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ANALYSIS
Examiner finds that Appellant’s “[c]laim 16 recites the limitation ‘the
adjusted offered market price’ . . . which lacks antecedent basis in the claim”
(Final Act. 3). Examiner further finds that Appellant’s “[c]laims 17-19
inherit the deficiencies noted in claim 16 and are therefore rejected on the
same basis” (id.).
Appellant does not respond to this ground of rejection (see, e.g., Ans.4
3 (Examiner finds that “Appellant fails to address this rejection” and,
therefore, “maintains the rejection”)). Because Appellant fails to address
this rejection it is summarily affirmed. See Manual of Patent Examining
Procedure § 1205.02.
CONCLUSION
The preponderance of evidence supports Examiner’s conclusion that
“the adjusted offered market price,” as set forth in Appellant’s claim 16,
lacks antecedent basis. The rejection of claims 16–19 under 35 U.S.C.
§ 112(b) is affirmed.

SUBJECT MATTER ELIGIBILITY:
Initially, we acknowledge Examiner’s statement that for examination
purposes, Examiner interpreted the phrase “the adjusted offered market price
limitation,” as it appears in Appellant’s claim 16, to read “an adjusted
offered market price” (Final Act. 3). We do the same.

4 Examiner’s March 16, 2020 Answer.
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ISSUE
Does the preponderance of evidence of record support Examiner’s
finding that Appellant’s claimed invention is directed to patent-ineligible
subject matter?
PRINCIPLES OF LAW
A. Section 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.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
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features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).5 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.
Under the Guidance and the October 2019 Update, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance — Section III(A)(2), 84 Fed. Reg. at
54–55.
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Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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.
Guidance, 84 Fed. Reg. at 52–56.
ANALYSIS
(Step 1)
We first consider whether the claimed subject matter falls within the
four statutory categories set forth in § 101, namely “[p]rocess, machine,
manufacture, or composition of matter.” Guidance, 84 Fed. Reg. at 53–54;
see 35 U.S.C. § 101. Examiner finds that Appellant’s independent claims 1
and 16, and their respective dependent claims, “are directed to an article of
manufacture” and independent claim 20, and its dependents, are “directed to
a machine” and, “[t]herefore, [Appellant’s] claims are directed to statutory
subject matter” (Final Act. 3). We agree and, therefore, proceed to the next
steps of the analysis.
(Step 2A, Prong 1)
The non-transitory and tangible computer-readable storage media
storing computer executable instructions for performing a computer process
on a computing system set forth in Appellant’s claim 1, defines the computer
process as comprising, inter alia,
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receiving a plurality of sale offers, each sale offer including
required revenue values per volume values for a product;
determining an offered market price based on the plurality of
sale offers;
displaying . . . the offered market price to a plurality of
buyers, . . .;
receiving from the plurality of buyers . . . a plurality of
conditional offers for purchases (COPs);
determining each buyer’s location and adjusting the COPs
based on shipping costs and effective tax liability based on each
buyer’s location;
determining . . . whether a combination of one or more of the
plurality of COPs meets a combination of one or more of the
required revenue values;
completing a plurality of sales transactions, if the combination
of one or more of the plurality of COPs meets the combination
of one or more of the required revenue values;
determining if the combination of one or more of the required
revenue values includes at least two required revenue values
from two different vendors, each of the two required revenue
values being substantially similar;
selecting one of the two different vendors based on a tie-
breaking criterion provided by a buyer,
wherein the tie-breaking criterion provides for selecting a
vendor that offers lowest sale price for a next unit of product
following completion of the plurality of sales transactions; and
(see Final Action 3–4.)
Examiner finds that Appellant’s claims recite “fundamental economic
practice[s]” and “commercial interactions,” which are abstract ideas under
the Guidance (see Final Act. 4–6). See also 84 Fed. Reg. at 52–55.
We find no error in Examiner’s finding that Appellant’s claim 1
“recite[s] an abstract idea” (Final Act. 6).
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(Step 2A, Prong 2)
Having determined that Appellant’s claims recite a judicial exception,
the Guidance requires an evaluation as to whether the claim as a whole
integrates the recited judicial exception into a practical application of the
exception. See Guidance, 84 Fed. Reg. at 54. The Guidance explains:
[C]ourts have . . . identified examples in which a judicial
exception has not been integrated into a practical application:
• An additional element . . . merely uses a computer as
a tool to perform an abstract idea;
• an additional element adds insignificant extra-solution
activity to the judicial exception; and
• an additional element does no more than generally
link the use of a judicial exception to a particular technological
environment or field of use.
Id. at 55 (footnotes omitted).
On this record, Examiner finds that Appellant’s claims include
limitations, i.e., additional elements, relating to “an interface, processor, and
electronic storefront display” (see Final Act. 6). Examiner finds, however,
that these additional elements are merely used “as a tool to perform the
abstract idea” (id.). More specifically, Examiner finds that Appellant’s
claim 1 “merely recite[s] a commonplace business method (i.e., facilitating a
marketplace transaction) being applied on a general purpose computer” (id.
(citing Spec.7 ¶ 86) (Appellant discloses that “[a] general-purpose computer
system . . . is capable of executing a computer program product to execute a
computer process. Data and program files may be input to the computer
system . . ., which reads the files and executes the programs therein”)).

7 Appellant’s October 21, 2013 Specification.
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In addition, Examiner finds:
The limitations of communicating an adjusted offered market
price to the storefront display at a physical storefront location
and instantaneously updating the storefront display with the
adjusted offered market price and automatically changing the
offered market price displayed at the storefront display at the
physical storefront location are merely adding insignificant
extra-solution activity to the abstract idea.
(Final Act. 6.)
Further, Examiner finds “that the abstract idea of facilitating a
marketplace transaction is executed in a computer environment merely
indicates a field of use in which to apply the abstract idea because this
requirement merely limits the claims to the computer field, i.e., to execution
on a generic computer” (id.).
For the foregoing reasons, we find no error in Examiner’s finding that
Appellant’s claims fail to present an additional element(s) that “integrate[s]
the abstract idea into a practical application” (Final Act. 7).
(Step 2B)
Having determined that Appellant’s claims: (1) recite a judicial
exception and (2) do not integrate that exception into a practical application,
the Guidance requires that we evaluate whether Appellant’s claims: (a) add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field or (b) simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56.
On this record, Examiner finds that when considered individually and
in combination Appellant’s claim 1 “simply convey the abstract idea itself
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facilitated by generic computing components” (Final Act. 8). In addition,
Examiner finds that
the steps of communicating an adjusted offered market price to
the storefront display at a physical storefront location and
instantaneously updating the storefront display with the
adjusted offered market price and automatically changing the
offered market price displayed at the storefront display at the
physical storefront location are well known (see MPEP
2106.05(d)(II) - transmitting data over a network, electronic
recordkeeping, creating output data, presenting offers, etc.).
(id. at 7.)
For the foregoing reasons, we find that Appellant “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.”
See 84 Fed. Reg. at 52–56.
In sum, we find that Appellant’s claimed invention lacks subject
matter eligibility.
For the foregoing reasons, we are not persuaded by Appellant’s
contention that its claims are “not an abstract idea and therefore . . . are not
directed [to] any judicial exception” (Appeal Br. 12).
We acknowledge Appellant’s reference to SiRF Technology, Inc. v.
ITC, 601 F.3d 1319, 1333 (Fed. Cir. 2010), wherein our reviewing court
held “that the claims at issue are properly directed to patentable subject
matter as they explicitly require the use of a particular machine (a GPS
receiver) and could not be performed without the use of such a [GPS]
receiver” (cf. Appeal Br. 12). Unlike the facts in SiRF, on this record,
Appellant failed to establish an evidentiary basis to support a finding that
Appellant’s claimed invention requires the use of a particular machine. To
the contrary, as discussed above, Appellant’s Specification makes clear that
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its “computer process” may be executed on a “general-purpose computer
system” (see Final Act. 6 (citing Spec. ¶ 86); see also Ans. 4–5 (citing Spec.
¶ 86)). “[M]erely requir[ing] generic computer implementation[] fail[s] to
transform that abstract idea into a patent-eligible invention.” Alice, 573 U.S.
at 221.
We acknowledge Appellant’s reference to Example 238 of the
Guidance (see Appeal Br. 13). Claim 4 of Example 23 was found eligible
because the claim recited “a specific application of [a] mathematical
algorithm that improves the functioning of the basic display function of the
computer itself” (Example 23 12 (emphasis added)). On this record,
Appellant’s claimed invention does not improve a display or computer
function, but instead simply uses the device to display information (see Ans.
5 (Examiner finds “[t]here is no indication, short of attorney argument, that
the claims recite an improvement to the functioning of the basic display
function of the computer itself,” rather than the use of “a computer . . . as a
tool in its ordinary capacity”)). Further, in contrast to Appellant’s claimed
invention, the Enfish Court held that claims to a data storage and retrieval
system for computer memory were not directed to an abstract idea because
they involved more than storing, organizing, and retrieving memory in a
logical table. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336–37 (Fed.
Cir. 2016). More specifically, the claims in Enfish were directed to a self-
referential table (“means for configuring” algorithm) that functions

8 Example 23 – Graphical User Interface for Relocating Obscured Textual
Information, Subject Matter Eligibility Examples: Abstract Ideas, 7–12,
available at https://www.uspto.gov/sites/default/files/documents/101_
examples_1to36.pdf.).

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differently than conventional database structures. Id. at 1337. This
unconventional database structure, or technological improvement, in Enfish
provided increased flexibility, faster search times, and smaller memory
requirements. Id. Therefore, we are not persuaded by Appellant’s reliance
on Enfish to support the subject matter eligibility of its claimed invention
(see Appeal Br. 13).
The court in Amdocs arrive at a similar conclusion. Amdocs (Israel)
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) (stating
“this claim entails an unconventional technological solution (enhancing data
in a distributed fashion) to a technological problem (massive record flows
which previously required massive databases).”). Thus, we are not
persuaded by Appellant’s contention that Amdocs supports the subject matter
eligibility of its claimed invention (see Appeal Br. 14).
To be complete, we note that Appellant’s claim 1 does not require that
a buyer’s location be determined using a GPS device (see Claims Appendix
2–3; see also Ans. 4 (Examiner finds that Appellant’s Specification and
“claims are silent regarding a GPS or any other device used to determine the
buyer’s location”); see also Ans. 6). Therefore, we are not persuaded by
Appellant’s contention that its “claim 1 recites a technical feature” “such as
a geographic positioning system, etc.” (Appeal Br. 14).
CONCLUSION
The preponderance of evidence of record supports Examiner’s finding
that Appellant’s claimed invention is directed to patent ineligible subject
matter. The rejection of claim 1 under 35 U.S.C. § 101 is affirmed. Claims
2–7 and 12–20 are not separately argued and fall with claim 1.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16–19 112(b) Indefiniteness 16–19
1–7, 12–20 101 Eligibility 1–7, 12–20
Overall
Outcome
1–7, 12–20

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).

AFFIRMED