CBS Interactive Inc.

Patent Trials and Appeals Board

Jun 11, 2020

14954491 - (D) (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.
14/954,491 11/30/2015 Timothy Allen Musgrove 10-350-US-C7 6106
128144 7590 06/11/2020
Rimon PC
One Embarcadero Center
Suite 400
San Francisco, CA 94111
EXAMINER
SYED, FARHAN M
ART UNIT PAPER NUMBER
2165
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):
docketing.rimonlaw@clarivate.com
eofficeaction@appcoll.com
patentdocketing@rimonlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TIMOTHY ALLEN MUSGROVE and ROBIN HIROKO WALSH
____________

Appeal 2019-002379
Application 14/954,491
Technology Center 2100
____________

Before JOHN A. EVANS, LARRY J. HUME, and
JAMES W. DEJMEK, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Jurisdiction
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of Claims 1–3, 5–17 and 19–28, all pending
claims. Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant states the real party in interest is CBS
Interactive Corp. Appeal Br. 2.
2 Rather than reiterate the arguments of Appellant and the Examiner, we
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Summary of the Invention
The claims relate to assembling a multi-source product catalogue. See
Abstract.
Invention
Claims 1 and 15 are independent. Claims App. An understanding of
the invention can be derived from a reading of Claim 1, which is reproduced
in Table 1, infra.
References
Name Publication Number Date
Zhilyaev US 6,137,911 Oct. 24, 2000
Pugliese US 2001/0044751 A1 Nov. 22, 2001

refer to the Appeal Brief (filed July 27, 2018, “Appeal Br.”), the
Supplemental Appeal Brief (filed September 12, 2018, “Suppl. Br.”), the
Reply Brief (filed January 30, 2019, “Reply Brief”), the Examiner’s Answer
(mailed January 10, 2019, “Ans.”), the Final Action (mailed February 16,
2018, “Final Act.”), and the Specification (filed February 10, 2017, “Spec.”)
for their respective details.
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Rejections3
Claims Rejected 35 U.S.C. § References/Basis
1–3, 5–17, 19–28 101 Subject Matter Eligibility
Final Act. 16–20.
1–3, 5–17, 19–28 103(a),
Obviousness

Zhilyaev, Pugliese
Final Act. 21–31.

ANALYSIS
We have reviewed the rejections of Claims 1–3, 5–17, and 19–28 in
light of Appellant’s arguments that the Examiner erred. We have considered
in this Decision only those arguments Appellant actually raised in the Briefs.
Any other arguments which Appellant could have made but chose not to
make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We
consider Appellant’s arguments as they are presented in the Appeal Brief and
the Reply Brief.
CLAIMS 1–3, 5–17, AND 19–28: INELIGIBLE SUBJECT MATTER
Appellant argues the merits of the claims as a group without reference
to the limitations of individual claims. “The claims are directed to
aggregating product information for use in a product database including
records of various products arranged in product categories.” Appeal Br. 9;
see also Appeal Br. 11, 12. Therefore, we decide the appeal of the § 101
rejection on the basis of representative Claim 1 and refer to the rejected

3 The Application was examined under the pre-AIA first to invent
provisions. Final Act. 2.
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claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv);
In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
We reviewed the record de novo. SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn
to patent-eligible subject matter is an issue of law that we review de novo.”).
Based upon our review of the record in light of recent policy guidance with
respect to patent-eligible subject matter rejections under 35 U.S.C. § 101,4
we affirm the rejection of Claims 1–3, 5–17, and 19–28 for the specific
reasons discussed below. Appellant argues: “the USPTO has recently
adopted, as required examination procedure, much of the analysis set forth in
case law and argued by Applicant, and which is missing from the rejection.”
Reply Br. 3 (citing the “2019 Revised Patent Subject Matter Eligibility
Guidance”). Our analysis, below, based upon the cited Guidance, renders
Appellant’s argument moot.
35 U.S.C. § 101
Section 101 provides that a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes “[l]aws of nature,
natural phenomena, and abstract ideas” from the realm of patent-eligible
subject matter, as monopolization of these “‘basic tools of scientific and
technological work’” would stifle the very innovation that the patent system
aims to promote. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)

4 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).
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(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)); see also Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 72–78 (2012); Diamond v. Diehr, 450 U.S. 175, 185
(1981).
Under the mandatory Revised Guidance, we reconsider whether
Appellant’s claims recite:
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), and
2. additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim, (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then reach the
issue of 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.
A. Whether the claims recite a judicial exception
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas to explain that the abstract-idea
exception includes the following groupings of subject matter:
(a) mathematical concepts,5 i.e., mathematical relationships, mathematical

5 Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“The concept of hedging . . .
reduced to a mathematical formula . . . is an unpatentable abstract idea.”).
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formulas, equations,6 and mathematical calculations7; (b) certain methods of
organizing human activity—fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions)8; and (c) mental processes—concepts performed in the human
mind (including observation, evaluation, judgment, opinion).9
The preamble of independent Claim 1 recites: “A method of
aggregating product information for use in a product database including
records of various products arranged in product categories, each product
category having a set of product attributes that are associated with a physical

6 Diehr, 450 U.S. at 191 (“A mathematical formula as such is not accorded
the protection of our patent laws”); Parker v. Flook, 437 U.S. 584, 594
(1978) (“[T]he discovery of [a mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.”).
7 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 abstract ideas).
8 Alice, 573 U.S. at 219–20 (concluding that use of a third party to mediate
settlement risk is a “fundamental economic practice” and thus an abstract
idea); see Revised Guidance, at 52 n.13 for a more extensive listing of
“[c]ertain methods of organizing human activity” that have been found to be
abstract ideas.
9 Mayo, 566 U.S. at 71 (“‘[M]ental processes[ ] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work’” (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972))).
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product that is in the category, the method comprising the steps of.” The
limitations recited in the body of the claim are analyzed in Table I against
the categories of abstract ideas as set forth in the Revised Guidance. As set
forth in Table I below, we find limitations [c] and [d] of independent
Claim 1 recite abstract ideas, i.e., “mental processes.”
Table I
Claim 1 Revised Guidance
[a]10 retrieving, by a server coupled
to a networked computer
environment, product phrase
information from at least one
product record stored in at least one
of a plurality emote product
information computing devices in
the networked computer
environment, said product phrase
information including at least one
phrase and at least one characteristic
of a described product;
An additional element that adds
insignificant extra-solution activity
to the judicial exception, i.e., mere
data-gathering. See Revised
Guidance at 55.
[b] determining, using
computational linguistics, whether
at least one said at least phrase of
said product phrase information
describes a product attribute
associated with a product category
by cross-referencing said product
phrase information to a category
database to determine a product
category of the described product;
Mental processes, i.e., concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion). See
Revised Guidance at 52.
[d] creating a catalog record for the
described product including product
Mental processes, i.e., concepts
performed in the human mind

10 Step designators, e.g., “[a],” were added to facilitate discussion.
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attributes corresponding to the
product category; and
(including an observation,
evaluation, judgment, opinion). See
Revised Guidance at 52.
[e] storing the record in the product
database in association with the
product category of the described
product.
An additional element that adds
insignificant extra-solution activity
to the judicial exception. See
Revised Guidance at 55.

Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims recite a patent-ineligible concept, as we conclude above,
we proceed to the “practical application” Step 2A(ii) wherein the “claims are
considered in their entirety to ascertain whether their character as a whole is
directed to excluded subject matter.” McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quotes and citation
omitted). This test determines whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
For the reasons which follow, we conclude that Appellant’s claims do
not integrate the judicial exception into a practical application.
MPEP § 2106.05(a) “Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field”
“In determining patent eligibility, examiners should consider whether
the claim ‘purport(s) to improve the functioning of the computer itself’” or
“any other technology or technical field.” MPEP § 2106.05(a).
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Appellant contends the “present system is directed to overcoming
inefficiencies associated with navigating a collection of editorial content in a
computer network.” Appeal Br. 12. Appellant argues the “claims are
necessarily rooted in computer technology in order to overcome these
inefficiencies. In particular, the claims overcome problems specifically
arising in the realm of computer systems.” Id. However, Appellant’s
evidence fails to support this contention. Appellant discloses:
However, since various merchants and other parties having
product information records all store information in various
data formats and layouts, collection of information for a
product catalog is a tedious and labor intensive task requiring a
great deal of manual operations.
Appeal Br. 12 (quoting US 2016/0086239, the published Application (the
“’239 Application”), ¶ 9). Contrary to Appellant’s contention, the
Specification discloses the problem inheres not in the technology of
computer systems, rather the problem relates to manual labor because
“collection of information for a product catalog is a tedious and labor
intensive task requiring a great deal of manual operations.” ’239
Application, ¶ 9.
Although we find the individual limitations [c] and [d] are directed to
mental processes, the claims as a whole are directed to “[c]ertain methods of
organizing human activity,” i.e., “commercial or legal interactions []
including . . . advertising, marketing or sales activities or behaviors;
business relations.” See 84 Fed. Reg. at 52. Because, as Appellant
discloses, “[a]n aspect of the invention is a method of creating a product
catalog.” ’239 Application, ¶ 10.
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MPEP § 2106.05(b): Particular Machine
The Bilski machine-or-transformation test is only applicable to
method (process) claims. However, “[r]egardless of what statutory category
(‘process, machine, manufacture, or composition of matter,’ 35 U.S.C.
§ 101) a claim’s language is crafted to literally invoke, we look to the
underlying invention for patent-eligibility purposes.” CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1374 (Fed. Cir. 2011). Here, it is
clear that the invention underlying the system of Claim 16 is the method of
Claim 1. We therefore, analyze the machine prong of the Bilski machine-or-
transformation test.
Appellant discloses generic machines and software are suitable:
[c]ommerce system 10 includes client computer 12 executing
browser application 14 that supports the HTTP protocol, . . .
public domain web server software applications from NCSA or
APACHE can be used.
Spec. ¶ 19.
Merchant servers 40 and commerce server software are well
known and thus are not described in detail herein.
Spec. ¶ 20.
Any type of hardware or combination of hardware can be used
for the various clients and servers. Accordingly, the term
“computer” as used herein, refers to any type of computing
device or data terminal, such as a personal computer, a portable
computer, a dumb terminal, a thin client, a hand held device, a
wireless phone, or any combination of such devices.
Spec. ¶ 37.
Any appropriate server or client software can be used and any
communication protocols can be used.
Spec. ¶ 37.
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Such product information may be culled from product
information records of various sources by using automated
crawlers as described below and updated periodically to
correspond with current products available on merchant servers
40. The term “crawler” as used herein refers to any software
that performs searches of content over a network and can
include “bots”, “robots”, “automated site searchers” and the
like.
Spec. ¶ 38.
We find no indication, nor does Appellant so direct our attention, that
the claimed invention relies on other than generic devices uses other than
generic software. We, therefore, conclude Appellant’s claims fail to satisfy
the machine prong of the Bilski machine-or-transformation test.
MPEP § 2106.05(c): Particular Transformation
This section of the MPEP guides: “Another consideration when
determining whether a claim recites significantly more is whether the claim
effects a transformation or reduction of a particular article to a different state
or thing.” “‘Transformation and reduction of an article to a different state or
thing is the clue to the patentability of a process claim that does not include
particular machines.’” Bilski, 561 U.S. at 658 (quoting Benson, 409 U.S.
at 70).
Appellant argues “the claims recite transformation of data or
information, namely aggregating data from various remote sources, using
specific steps of computational linguistics, into product records.” Appellant
further argues:
the Patent Trial & Appeal Board (PTAB) has held that claims
drawn to computer-implemented methods that transform data or
information in a specific way are not directed to an abstract
idea, and thus are patentable. In particular, the PTAB held that
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the relevant claims transformed receiving data, thus requiring a
fundamental change to the data, which cannot be performed in
the human mind.
Appeal Br. 13 (citing PNC Bank)11, CBM2014-00100, slip op. 22 (PTAB
Sept. 9, 2014) (Paper No. 10).
In PNC Bank, Claim 1 recites, inter alia, “transforming, at an
authentication host computer, received data by inserting an authenticity key
to create formatted data.” PNC Bank, at 3. The Board found the claims took
received data and transformed the data by inserting an authenticity key. Id.
at 5. Appellant points to nothing in the claims or the Specification that
might disclose an analogous transformation.
The claims select and analyze certain electronic data. The selection of
electronic data is not a “transformation or reduction of an article into a
different state or thing constituting patent-eligible subject matter[.]” See In
re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (emphasis added); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (“The mere manipulation or reorganization of data . . . does not satisfy
the transformation prong.”). Applying this guidance here, we conclude
Appellant’s method claims fail to satisfy the transformation prong of the
Bilski machine-or-transformation test.
MPEP § 2106.05(e): Other Meaningful Limitations
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the

11 PNC Bank, CBM2014-00100, slip op. 22 (PTAB Sept. 9, 2014) (Paper
No. 10). We quote the Westlaw publication version: PNC Bank v. Secure
Axcess, 2014 WL 4537440 (PTAB 2014).
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judicial exception to a particular technological environment.
450 U.S. 175 . . . (1981). In Diehr, the claim was directed to
the use of the Arrhenius equation (an abstract idea or law of
nature) in an automated process for operating a rubber-molding
press. 450 U.S. at 177-78 . . . . The Court evaluated additional
elements such as the steps of installing rubber in a press,
closing the mold, constantly measuring the temperature in the
mold, and automatically opening the press at the proper time,
and found them to be meaningful because they sufficiently
limited the use of the mathematical equation to the practical
application of molding rubber products. 450 U.S. at 184,
187. . . . In contrast, the claims in Alice Corp. v. CLS Bank
International did not meaningfully limit the abstract idea of
mitigating settlement risk. 573 U.S. . . . In particular, the Court
concluded that the additional elements such as the data
processing system and communications controllers recited in
the system claims did not meaningfully limit the abstract idea
because they merely linked the use of the abstract idea to a
particular technological environment (i.e., “implementation via
computers”) or were well-understood, routine, conventional
activity.
MPEP § 2106.05(e).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Alice, 573 U.S. at 225. In the instant appeal, Appellant
specifically discloses the claims merely perform an abstract idea, performed
by humans, on a computer. See Appeal Br. 12 (the claims relate to “a
tedious and labor intensive task requiring a great deal of manual
operations”). Similarly as in Alice, we find that “[t]aking the claim elements
separately, the function performed by the computer at each step of the
process is ‘[p]urely conventional.’” Id. (citation omitted). “In short, each
step does no more than require a generic computer to perform generic
computer functions.” Id.
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We find that Appellant’s claims do not add meaningful limitations
beyond generally linking the use of the judicial exception to a particular
technological environment.
MPEP § 2106.05(f): Mere Instructions to Apply an Exception
Appellant does not persuasively argue that their claims do any more
than to merely invoke generic computer components merely as a tool in
which the computer instructions apply the judicial exception.
MPEP § 2106.05(g): Insignificant Extra-Solution Activity
The claims acquire and display data, which are classic examples of
insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at 963 (en
banc), aff’d sub nom, Bilski, 561 U.S. 593.
MPEP § 2106.05(h): Field of Use and Technological
Environment
[T]he Supreme Court has stated that, even if a claim does not
wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or
post-solution activity—such as identifying a relevant audience,
a category of use, field of use, or technological environment.
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013)
(citation omitted).
Appellant argues: “the claims on appeal result in creating new catalog
records for a products and storing the records in the product database in
association with the appropriate product categories.” Appeal Br. 19.
We find the claimed data-manipulation is simply a field of use that
attempts to limit the abstract idea to a particular technological environment.
We are unpersuaded by Appellant’s arguments because the mere application
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of an abstract idea in a particular field is not sufficient to integrate the
judicial exception into a practical application. See 84 Fed. Reg. at 55, n.32.
In view of the foregoing, we conclude the claims are “directed to” a judicial
exception.
B. Well-understood, routine, conventional
Because the claims recite a judicial exception and do not integrate that
exception into a practical application, we must then reach the issue of
whether the claim adds a specific limitation beyond the judicial exception
that is not “well-understood, routine, conventional” in the field. Revised
Guidance, 84 Fed. Reg. at 56; see Appeal Br. 23 (citing the “Berkheimer
Memorandum”).12 As discussed above, the written description describes the
claimed computer system consistent with its being “well-understood,
routine, [and] conventional.”
C. Specified at a high level of generality
It is indicative of the absence of an inventive concept where the
claims simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance, 84 Fed. Reg. at 56.
The claims fail to recite any specific steps of an algorithm, nor does
Appellant cite any Specification disclosure for the required specificity.

12 Memorandum from Robert W. Bahr, Deputy Comm’r for Patent
Examination Policy, to Patent Examining Corps, U.S. Patent and Trademark
Office (April 19, 2018), https://www.uspto.gov/sites/default/files/
documents/memo-berkheimer-20180419.PDF (citing Berkheimer v. HP Inc.,
881 F.3d 1360, 1367–68 (Fed. Cir. 2018)).
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We find the limitations are specified at such a high level of generality
consistent with the absence of an inventive concept. Considering the claim
limitations as an ordered combination adds nothing to the abstract idea that
is not already present when the limitations are considered separately. See
Mayo, 566 U.S. at 79. The ordered combination of limitations amounts to
nothing more than certain mental processes implemented with generic
computer components that operate “in a conventional way.” See also Alice,
573 U.S. at 225–26. Therefore, we conclude that none of the claim
limitations, viewed “both individually and as an ordered combination,”
amount to significantly more than the judicial exception in order to
sufficiently transform the nature of the claims into patent-eligible subject
matter. See Alice, 573 U.S. at 217 (internal quotations omitted) (quoting
Mayo, 566 U.S. at 79).
In view of the foregoing, we sustain the rejection of Claims 1–3, 5–
17, and 19–28 under 35 U.S.C. § 101.
CLAIMS 1–3, 5–17, AND 19–28: OBVIOUSNESS OVER ZHILYAEV AND PUGLIESE
Appellant argues the merits of the claims as a group without reference
to the limitations of individual claims. See Appeal Br. 20. Therefore, we
decide the appeal of the § 103(a) rejection on the basis of representative
Claim 1 and refer to the rejected claims collectively herein as “the claims.”
See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir.
1986).
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Aggregating product information
Appellant states:
The claimed invention is directed to aggregating product
information for use in a product database including records of
various products arranged in product categories, each product
category having a set of product attributes that are associated
with a product that is in the category. Information is retrieved
from plural remote sources and computational linguistics are
used to determine whether retrieved phrase information
includes a phrase that describes a product attribute associated
with a product category.
Appeal Br. 20 (emphasis omitted).
Appellant acknowledges Zhilyaev discloses a system for categorizing
documents based on the content of the documents. Id. However, Appellant
argues there is no teaching that the documents describe a product and thus,
Zhilyaev is silent with respect to product categories having a set of product
attributes that are associated with a physical product that is in the category.
Id. Appellant acknowledges Pugliese teaches information can be gathered
from multiple sources. Id. Appellant contends Pugliese relates to product
promotion, but not to information about the products. Id.
We understand Appellant to admit the Zhilyaev-Pugliese combination
teaches the claimed system except contending that the combination fails to
teach specific information about the products. See Appeal Br. 20 (“Zhilyaev
is silent with respect to product categories having a set of product attributes
that are associated with a physical product that is in the category.”). The
subject matter which Appellant contends is not taught by the prior art is
“printed matter,” i.e., “matter claimed for its communicative content.” See
In re Distefano, 808 F.3d 845, 849 (Fed. Cir. 2015). “The first step of the
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printed matter analysis is the determination that the limitation in question is
in fact directed toward printed matter. Our past cases establish a necessary
condition for falling into the category of printed matter: a limitation is
printed matter only if it claims the content of information.” Distefano, 808
F.3d at 848. For example, “a chart listing the characteristics of real estate in
such manner as to expedite real estate assessments” is “printed matter.”
Distefano, 808 F.3d at 849 (quoting In re Reeves, 62 F.2d 199 (CCPA
1932)). The chart in Reeves “listing the characteristics of real estate in such
manner as to real estate assessments” conveys information in a manner
similar to the claimed “product categories having a set of product attributes
that are associated with a physical product that is in the category.” Thus, we
find the disputed limitation goes to printed matter. This finding is consistent
with Appellant’s arguments. See Reply Br. 2 (emphasis omitted) (“The
claimed invention is directed to aggregating product information for use in a
product database.”).
The Federal Circuit has “long held that if a limitation claims
(a) printed matter that (b) is not functionally or structurally related to the
physical substrate holding the printed matter, it does not lend any patentable
weight to the patentability analysis.” Distefano, 808 F.3d at 849 (quoting In
re Gulack, 703 F.2d 1381, 1384–85 (Fed. Cir. 1983)). “In performing this
analysis we do not strike out the printed matter and analyze a ‘new’ claim,
but simply do not give the printed matter any patentable weight: it may not
be a basis for distinguishing prior art.” Id. at 848. Appellant proffers no
argument that the claimed printed matter is structurally or functionally
related to any claimed substrate. We, therefore, analyze the claimed printed
matter, but decline to give it patentable weight.
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Analogous art
The Examiner finds: “Zhilyaev is directed to classification system
and method. Pugliese is directed to displaying and selling goods and
services. Both are analogous art, because they classify and provide product
information.” Final Act. 24.
Appellant argues the references are not analogous because “Pugliese
is directed to selling goods and services,” but “Pugliese does not relate to
categorization.” Appeal Br. 20.
The Examiner finds:
Zhilyaev is directed to classifying documents into one or more
clusters corresponding to predefined classification categories by
building a knowledge base, where the classification refers to the
automated grouping of textual or partial textual entities for
document retrieval, categorization, routing, filtering, clustering,
tagging, etc. Pugliese is directed to system and method for
displaying and selling goods and services using a product
catalog database. Both are analogous art, because they use a
knowledge base or catalog database as a means to organize,
classify, and/or cluster data for use by users, merchants, buyers,
shoppers, etc. Both are also analogous because they classify
and provide data structure information (e.g. data) based on
particular categories (e.g. predefined categories in Zhilyaev and
product catalog in Pugliese).
Ans. 9.
Appellant responds:
Under this logic, any references that utilize a database
would be analogous art. However, Zhilyaev and Pugliese are
directed to very different applications and address very different
problems. Zhilyaev classifies documents based on document
content Pugliese is directed to assisting in the sale of goods.
Reply Br. 3.
Appeal 2019-002379
Application 14/954,491

20
“Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved. ” In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011) (quotes and citation omitted).
Notwithstanding Appellant’s contentions, we find Zhilyaev and Pugliese are
“reasonably pertinent to the particular problem with which the inventor is
involved.”
We are not persuaded the Examiner errs with respect to the rejection
of Claims 1–3, 5–17, and 19–28 under 35 U.S.C. § 103.
DECISION SUMMARY

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–17,
19–28
101 Eligibility 1–3, 5–
17, 19–28
--
1–3, 5–17,
19–28
103(a) Zhilyaev, Pugliese 1–3, 5–
17, 19–28
--
Overall 1–3, 5–
17, 19–28
--

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