eBay Inc.

Patent Trials and Appeals Board

Jul 30, 2020

13692697 - (D) (P.T.A.B. Jul. 30, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/692,697 12/03/2012 Julien Neri 2043.B14US1 9981
49845 7590 07/30/2020
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
SHORTER, RASHIDA R
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
07/30/2020 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):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JULIEN NERI
____________

Appeal 2019-006480
Application 13/692,697
Technology Center 3600
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 6, 12, 13, 15, 18, and 19. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as eBay Inc.
(Appeal Br. 2).
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates generally to a system and
method for publishing information for available products and services within
private networks (Spec., para. 1). Claim 1, reproduced below with the italics
added, is representative of the subject matter on appeal.

1. A computer-implemented method comprising:
receiving a request to generate an item listing from a seller, the
request including description information that comprises a listing title
that identifies an item, an item image that depicts the item, display
information that identifies a private network from among a set of
private networks, and a user attribute;
generating the item listing for the item based on the listing title,
the item image, and a user profile identifier associated with the seller
within the private network identified by the display;
identifying a group of users from the private network based on
the user attribute from the display information in response to the
generating the item listing for the item;
causing display of a presentation of the item listing to the
identified group of users within the private network, the presentation
of the item listing including a display of the user profile identifier
associated with the seller within the private network;
receiving a bid on the item from a first user from among the
identified group of users, the bid including user profile information of
the first user;
identifying a connection of the first user to the seller based on
the user profile information of the first user in response to the
receiving the bid on the item listing from the first user; and
causing display of a notification to the seller in response to the
identifying the connection of the first user to the seller based on the
user profile information, the notification including an identification of
the connection between the seller and the first user.

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THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 2, 6, 12, 13, 15, 18, and 19 are rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
2. Claims 1, 2, 6, 12, 13, 15, 18, and 19 are rejected under
35 U.S.C. § 102(e) as anticipated by Bhogal (US 2014/0058877 A1,
published Feb. 27, 2014).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 9). The Appellant
argues further that the claim is integrated into a practical application (Appeal
Br. 10, 11). The Appellant also argues that the claim recites limitations that
are not “well-understood, routine, or conventional” (Appeal Br. 11).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 2–5; Ans. 14–17).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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matter.” 35 U.S.C. § 101. However, the 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 Supreme Court’s two-step 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
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof 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))).
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In Diehr, the claim at issue recited a mathematical formula, but the
Supreme 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 Supreme 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. (internal 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.”).
In January 2019, the U.S. Patent and Trademark Office published
revised guidance on the application of § 101. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
Under the Guidance, 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); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance 84 Fed. Reg. at 56.
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 (citation omitted). “A claim
that recites an abstract idea must include ‘additional 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.
The Specification at paragraph 1 states the invention relates generally
to a system and method for publishing information for available products
and services within private networks. Here, the Examiner has determined
that claim 1 sets forth a “method of identifying and facilitating the
distribution of information describing a product to be sold, by determining
one or more private networks that a seller is a member of, and identifying
users within the private networks to which to distribute the information,”
which is a certain method of organizing human activities and an abstract
concept (Ans. 4). We substantially agree with the Examiner. We determine
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that the claim sets forth: [1] “receiving a request to generate an item listing
from a seller”; [2] “generating the item listing for the item based on the
listing title”; [3] “identifying a group of users from the private network”;
[4] “causing display of a presentation of the item listing to the identified
group of users within the private network”; [5] “receiving a bid on the item
from a first user from among the identified group of users”; [6] “identifying
a connection of the first user to the seller based on the user profile
information of the first user in response to the receiving the bid”; and
[7] “causing display of a notification to the seller … the notification
including an identification of the connection between the seller and the first
user”, which describe the concept selling items between parties in a private
group, which is a certain method of organizing human activity and
fundamental economic practice, i.e., a judicial exception. See Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (collecting
information, analyzing it, and displaying results from certain results of the
collection and analysis was held to be an abstract idea). A method, like the
claimed method, i.e., “a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible.” See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014). In Versata Development Group, Inc.
v. SAP America, Inc., 793 F. 3d 1306, 1333 (Fed. Cir. 2015), it was held that
determining a price using organizational and product group hierarchies was
held to be an abstract idea. In Inventor Holdings, LLC v. Bed Bath &
Beyond, Inc. (CAFC) 876 F.3d 1372, 1376, Dec. 8, 2017, the local
processing of payments for remotely purchased goods was held to be an
abstract concept.
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We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 54–55. The Revised Guidance references the
MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c)
and (e)–(h).
Here, claim 1 does not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claim imposes a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort to monopolize the judicial exception.
For example, in the claim, the additional elements beyond the abstract
idea are the recited computer implementation. The computer elements used
to implement the method are described in the Specification as generic
computer components (Spec., paras. 56–61). The claimed limitations of the
computer implemented method “do not purport to improve the functioning
of the computer itself,” do not improve technology or a technical field, and
do not require a “particular machine.” Rather, they are performed using
generic computer components. Further, the claim as a whole fails to effect
any particular transformation of an article to a different state. The recited
steps in the claim fail to provide meaningful limitations to limit the judicial
exception. In this case, the claim merely uses the claimed computer
elements as a tool to perform the abstract idea.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
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computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim limitations, both individually and as an ordered
combination, fails to add subject matter beyond the judicial exception that is
not well-understood, routine, and conventional in the field. Rather the claim
uses well-understood, routine, and conventional activities previously known
in the art and they are recited at a high level of generality. The Specification
at paragraphs 56–58, for example, describes using conventional computer
components such as a server computer, personal computer, cellular
telephone, memory, video display, and disk drive in a conventional manner.
Here, the claimed computer components in method are well-understood,
routine, or conventional in the field. The Appellant has not demonstrated
that the computer elements described in the Specification at paragraph 56 for
instance are not general purpose computer components known to perform
similar functions in a well-understood manner. Here, the claim has not been
shown to be “significantly more” than the abstract idea.
For these above reasons the rejection of claim 1 is sustained. The
Appellant has provided the same arguments for the remaining claims, which
are drawn to similar matter, and the rejection of these claims is, therefore,
sustained as well.

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Rejection under 35 U.S.C. § 102(e)
The Appellant argues that the rejection of claim 1 is improper because
the prior art fails to disclose the claim limitation for: “receiving a request to
generate an item listing from a seller, the request including description
information that comprises a listing title that identifies an item, an item
image that depicts the item, display information that identifies a private
network from among a set of private networks, and a user attribute” (Appeal
Br. 12).
In contrast, the Examiner has determined that the cited claim
limitation is disclosed by Bhogal at paras. 25 and 26 (Appeal Br. 6, 7).
We agree with the Examiner. Here, the argued part of the cited claim
limitation requires the “display [of] information that identifies a private
network from among a set of private networks, and a user attribute”. Bhogal
at para. 25 discloses the extraction of members from the membership list of
the bicycling clubs to which the user belongs or to which the user has
attached an affinity (e.g. “liked”). Here, the member’s “bicycling club”
serves as a private network meeting the cited claim limitation. Although the
members are extracted from a membership list, this does not change that the
argued claim limitation of a “private network” has been disclosed.
Accordingly, the rejection of claim 1 is sustained. The same arguments have
been presented for the remaining claims and the rejection of these claims is
sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 2, 6, 12, 13, 15, 18, and 19 under 35 U.S.C. § 101.
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We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 2, 6, 12, 13, 15, 18, and 19 under 35 U.S.C. § 102(e) as
anticipated by Bhogal.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6, 12,
13, 15, 18,
19
101 Eligibility 1, 2, 6, 12,
13, 15, 18,
19

1, 2, 6, 12,
13, 15, 18,
19
102(e) Bhogal

1, 2, 6, 12,
13, 15, 18,
19

Overall
Outcome
1, 2, 6, 12,
13, 15, 18,
19

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED