eBay Inc.

Patent Trials and Appeals Board

Aug 16, 2021

2021001114 (P.T.A.B. Aug. 16, 2021)

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.
14/633,254 02/27/2015 Lakshmi Narasimhan 2043.I26US1 5218
49845 7590 08/16/2021
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
HEATH, MARIA S.P.
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/16/2021 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 LAKSHMI NARASIMHAN
____________

Appeal 2021–001114
Application 14/633,254
Technology Center 3600
____________

Before ANTON W. FETTING, JAMES P. CALVE, and
MATTHEW S. MEYERS, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Lakshmi Narasimhan (Appellant2) seeks review under
35 U.S.C. § 134 of a final rejection of claims 1–20, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellant invented a way of presenting a co-shipment
recommendation. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 11, which is reproduced below (bracketed matter and some
paragraphing added).
11. A method for responding to a request to networked computer
server, the method comprising:
[1] receiving, at a server over a computer network, a request
via a user interface of an online marketplace
application hosted on a client device associated with
a seller
to identify a co-shipper for the seller in an online
marketplace,
the client device being geographically remote from the
server,
the request associated with an online marketplace account
of the seller maintained by the server,

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed May 11, 2020) and Reply Brief (“Reply Br.,” filed December 2,
2020), and the Examiner’s Answer (“Ans.,” mailed October 2, 2020), and
Final Action (“Final Act.,” mailed December 12, 2019).
2 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 eBay Inc.
(Appeal Br. 2).

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the account indicating an item listed by seller,
[2] accessing inventories of online marketplace accounts of a
plurality of other sellers on the online marketplace based on
marketplace data of the online marketplace,
[3] verifying that the inventories of the online marketplace
accounts of one or more other sellers of the plurality of other
sellers include a matching item listed by the seller,
the online marketplace accounts of the one or more other
sellers being maintained by the server,
[4] accessing performance data associated with the online
marketplace accounts of the one or more other sellers,
[5] generating a ranking of co-shippers of the matching item
based on the performance data,
the co-shippers being selected from the one or more other
sellers for shipping the matching item on behalf of the
seller,
the generating of the ranking being performed by a
hardware processor of a machine;
[6] determining,
based on inventory information stored in the seller
account and inventory information stored in a
respective account of each of the one or more co-
shippers,
that at least one co-shipper of the one or more co-shippers
is not a competitor of the seller;
[7] selecting a recommended co-shipper from the at least one co-
shipper
based on the ranking of co-shippers
and
based on a criteria associated with the online market place
account,
and
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[8] causing a presentation of the recommendation for one or more
co-shippers in the user interface of the online marketplace
application hosted on the client device associated with the seller.
Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.

ANALYSIS
STEP 13
Claim 11, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, we then ask, “[w]hat else is
there in the claims before us? To answer that question, . . .
consider the elements of each claim both individually and “as an

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a 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.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “apply, rely on, or use 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.” Revised Guidance, 84 Fed. Reg. at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 11 recites receiving request data, accessing inventory data, verifying
data, accessing performance data, generating ranking data, determining
competitor data, selecting vendor data, and presenting recommendation data.
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Accessing data is receiving data. Verifying, ranking, determining, and
selecting data are rudimentary data analysis. Presenting data is displaying
data. Thus, claim 11 recites receiving, analyzing, and displaying data. None
of the limitations recites technological implementation details for any of
these steps, but instead recite only results desired by any and all possible
means.
From this we see that claim 11 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 11 recites the concept of
managing commercial shipments. Specifically, claim 11 recites operations
that would ordinarily take place in advising one to select a recommended co-

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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shipper for matching inventories based on rankings and market place data.
The advice to select a recommended co-shipper for matching inventories
based on rankings and market place data involves selecting a recommended
co-shipper, which is an economic act, and causing a presentation of the
recommendation for one or more co-shippers, which is an act ordinarily
performed in the stream of commerce. For example, claim 11 recites
“selecting a recommended co-shipper,” which is an activity that would take
place whenever one is selecting a shipper. Similarly, claim 11 recites
“causing a presentation of the recommendation for one or more co-
shippers,” which is also characteristic of selecting a shipper.
The Examiner determines the claims to be directed to recommending
co-shippers. Final Act. 4. The preamble to claim 11 recites that it is a
method for responding to a request. The steps in claim 11 result in
managing commercial shipments by selecting a recommended co-shipper for
matching inventories based on rankings and market place data absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitations 1, 2, and 4 recite receiving
data. Limitations 3 and 5–8 recite generic and conventional analyzing and
displaying of shipper data, which advise one to apply generic functions to
get to these results. The limitations thus recite advice for selecting a
recommended co-shipper for matching inventories based on rankings and
market place data. To advocate selecting a recommended co-shipper for
matching inventories based on rankings and market place data is conceptual
advice for results desired and not technological operations.
The Specification at paragraph 1 describes the invention as relating to
co-shipment recommendation. Thus, all this intrinsic evidence shows that
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claim 11 recites managing commercial shipments. This is consistent with
the Examiner’s determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because managing commercial
shipments is managing commercial interactions that require shipments. The
concept of managing commercial shipments by selecting a recommended co-
shipper for matching inventories based on rankings and market place data is
one idea for selecting those to interact with. The steps recited in claim 11
are part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir.2016) (screening of
messages by corporate organizations).
Alternately this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing, and
displaying data mimic human thought processes of observation, evaluation,
judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016). Claim 11, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis, and display
and does not recite an improvement to a particular computer technology.
See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314–15 (Fed. Cir. 2016) (finding claims not abstract because they “focused
on a specific asserted improvement in computer animation”). As such, claim
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11 recites receiving, analyzing, and displaying data, and not a technological
implementation or application of that idea.
From this we conclude that at least to this degree, claim 11 recites
managing commercial shipments by selecting a recommended co-shipper for
matching inventories based on rankings and market place data, which is a
commercial and legal interaction, one of certain methods of organizing
human activity identified in the Revised Guidance, and, thus, an abstract
idea.
STEP 2A Prong 2
The next issue is whether claim 11 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, “all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.” Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. “[A]pplication[s]” of such
concepts “ ‘to a new and useful end,’ ” we have said, remain
eligible for patent protection. Accordingly, in applying the § 101
exception, we must distinguish between patents that claim the “
‘buildin[g] block[s]’ ” of human ingenuity and those that
integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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devoid of implementation details. Steps 1, 3, and 4 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Step 8
recites insignificant post solution activity, such as storing, transmitting, or
displaying the results. Steps 2 and 5–7 recite generic computer processing
expressed in terms of results desired by any and all possible means and so
present no more than conceptual advice. All purported inventive aspects
reside in how the data is interpreted and the results desired, and not in how
the process physically enforces such a data interpretation or in how the
processing technologically achieves those results.
Viewed as a whole, Appellant’s claim 11 simply recites the concept of
managing commercial shipments by selecting a recommended co-shipper for
matching inventories based on rankings and market place data as performed
by a generic computer. This is no more than conceptual advice on the
parameters for this concept and the generic computer processes necessary to
process those parameters, and do not recite any particular implementation.
Claim 11 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 21 pages of specification do not bulge
with disclosure, but only spell out different generic equipment8 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
managing commercial shipments by selecting a recommended co-shipper for
matching inventories based on rankings and market place data under
different scenarios. They do not describe any particular improvement in the

8 The Specification describes a standalone, client, or server computer
system. Spec. para. 65.
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manner a computer functions. Instead, claim 11 at issue amounts to nothing
significantly more than an instruction to apply managing commercial
shipments by selecting a recommended co-shipper for matching inventories
based on rankings and market place data using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, or applies or
uses the judicial exception in some other 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.
We conclude that claim 11 is directed to achieving the result of
managing commercial shipments by advising one to select a recommended
co-shipper for matching inventories based on rankings and market place
data, as distinguished from a technological improvement for achieving or
applying that result. This amounts to commercial or legal interactions,
which fall within certain methods of organizing human activity that
constitute abstract ideas. The claim does not integrate the judicial exception
into a practical application.
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STEP 2B
The next issue is whether claim 11 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional feature[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[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. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, and displaying data amounts to electronic
data query and retrieval—one of the most basic functions of a computer. All
of these computer functions are generic, routine, conventional computer
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activities that are performed only for their conventional uses. See Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See
also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities is used in some unconventional manner nor does any produce
some unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 11 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-display
is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting,
offering for exchange, display, allowing access, and receiving payment
recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is therefore ordinary and conventional.
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We conclude that claim 11 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 11 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long “warn[ed] ... against” interpreting § 101“in ways that
make patent eligibility ‘depend simply on the draftsman’s art.’
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of managing commercial shipments by advising one to
select a recommended co-shipper for matching inventories based on
rankings and market place data, without significantly more.
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APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 3–7 and Answer 3–9 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellant’s argument that
the fact that the category of "certain methods of organizing
human activity" includes the qualifier "certain" makes clear that
there is additional analysis to be done in determining whether the
method of organizing human activity identified by the Examiner
is actually one of the "certain" methods that are abstract ideas.
Reply Br. 2. Such additional analysis is made above.
We are not persuaded by Appellant’s argument that “the claims
provide a specific procedure for recommending co-shippers based on both
inventories and performance data.” Id. The procedure is specific only in the
sense it is specified with words. All of the steps recite generic receiving,
analyzing, and displaying of data. No technological implementation details
are recited. “The purely functional nature of the claim confirms that it is
directed to an abstract idea, not to a concrete embodiment of that idea.”
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016).
We are not persuaded by Appellant's argument that
the claims not only consider the inventories of other sellers to
verify that such inventors include the item of interest, but the
claims also consider performance of the sellers with such
inventors to recommend as co-shippers. In this way, the
computing operations required to perform the recited function
involve analysis of performance data for a narrowed set of sellers
based on available inventory. Such operations clearly root the
claims in computing technology to overcome a problem arising
in the realm of online computing making them patent eligible.
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Reply Br. 3. Considering data is itself abstract judgment. Involving analysis
is just that, data analysis, which is an abstract operation when devoid of
technological detail. See determinations above under Step 2 B. The claims
are not rooted in computer technology, but only placed in a computer
context. “The Supreme Court and this court have repeatedly made clear that
merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract.”
Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1258 (Fed.
Cir. 2016).
We are not persuaded by Appellant's argument that “the technical
field improved by the claims is that of electronic commerce transactions.”
Reply Br. 3. E-commerce per se is a business management field, not a
technical one. It is the field of commerce in an electronic environment. The
implementations of e-commerce may be technical fields, but again, no
technological implementation details are recited.

CONCLUSIONS OF LAW
The rejection of claims 1–20 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.

CONCLUSION
The rejection of claims 1–20 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20
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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) (2011).

AFFIRMED