eBay Inc.

Patent Trials and Appeals Board

Sep 18, 2020

2019001605 (P.T.A.B. Sep. 18, 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.
13/946,814 07/19/2013 Anurag Bhardwaj IP-P1678US1 9879
150039 7590 09/18/2020
SBMC/eBay
116 West Pacific
Suite 200
Spokane, WA 99201
EXAMINER
WOOD, ALLISON G
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
09/18/2020 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@sbmc-law.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANURAG BHARDWAJ,
NEELAKANTAN SUNDARESAN,
and ROBINSON PIRAMUTHU
____________

Appeal 2019-0016051
Application 13/946,814
Technology Center 3600
____________

Before ANTON W. FETTING, BRUCE T. WIEDER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies eBay Inc. as the real party in interest. Appeal
Br. 2.
Appeal 2019-001605
Application 13/946,814

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STATEMENT OF THE CASE2

Anurag Bhardwaj, Neelakantan Sundaresan, and Robinson Piramuthu
(Appellant) seek review under 35 U.S.C. § 134 of a final rejection of claims
1–16 and 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 providing user targeted
recommendations on a device. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 7, which is reproduced below (bracketed matter and some
paragraphing added).

7. A method for providing recommendations, the method
comprising:
[1] creating first sensor data by directly measuring,
via three dimensional (3D) depth sensing,
using at least one sensor included in an item worn
by a user,
one or more physical dimensions of one or more body
parts of the user while the item is worn by the user;
[2] determining a user state
based on the first sensor data that includes the body
measurement data;

2 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed September 5, 2018) and the Examiner’s Answer (“Ans.,” mailed
October 9, 2018), and Final Action (“Final Act.,” mailed March 1, 2018)
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and
[3] in response to a state change being satisfied by at least the
user state, determining,
using at least one processor,
a recommendation that includes [a description of] an
article of clothing from an inventory to present on an
electronic mobile device associated with the user,[3]
the recommendation being determined based on the user
state and a profile associated with the user.

The Examiner relies upon the following prior art:

Name Reference Date
Schwartz

US 2007/0219059 A1 Sept. 20, 2007
Alten US 2008/0218310 A1 Sept. 11, 2008
Stirling US 7,602,301 B1 Oct. 13, 2009
Coza US 2013/0274040 A1 Oct. 17, 2013
Adeyoola US 2014/0176565 A1 June 26, 2014

Claims 1–16 and 20 stand rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
Claims 1–13 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Coza, Adeyoola, and Stirling.
Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Coza, Adeyoola, Stirling, and Alten.

3 The recommendation is not literally written on a product. Instead, its
content describes (includes) a product. E.g. Specification paragraph 56.
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Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Coza, Adeyoola, Stirling, and Schwartz.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of obviousness turn primarily on whether the prior art
described “directly measuring, via three dimensional (3D) depth sensing,
using at least one sensor included in an item worn by a user, one or more
physical dimensions of one or more body parts of the user.” Claim 7,
limitation 1.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.

Facts Related to the Prior Art
Coza
01. Coza is directed to monitoring an object during an athletic
activity, and more particularly, monitoring the movement of a
sport ball used by an individual during an athletic activity. Coza
para. 2.
Adeyoola
02. Adeyoola is directed to generating and sharing a virtual body
model of a person combined with an image of a garment,
generating an image of a user in a garment, generating garment
size recommendations, visualizing/generating make-up and
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hairstyle recommendations, generating a virtual body model of a
user, sharing a virtual body model of a person, and enabling users
to interact with virtual body models. Adeyoola para. 2.
Stirling
03. Stirling is directed to measuring and analyzing movements of a
body and for communicating information related to such body
movements over a network. Stirling 1:34–37.
PrimeSense
04. PrimeSense is directed to describing the PrimeSense 3D
sensors.4 PrimeSense Title.
05. PrimeSense sensors perform 3D depth sensing by coding the
scene with near-IR light, and reading the coded light back from
the scene using a standard off-the-shelf CMOS image sensor.
This is the process that enables depth acquisition. PrimeSense 2.
06. PrimeSense made three sensor models: Carmine 1.08, Carmine
1.09, and Capri 1.25. PrimeSense 3.
07. The Carmine 1.08 sensor had a visual range of 0.8–3.5 meter.5
PrimeSense 3.
08. The Carmine 1.09 sensor had a visual range of 0.35–1.4
meter.6 PrimeSense 3.
Tech Journal
09. The Tech Journal is directed to describing the PrimeSense
Capri 1.25 sensor.7 Tech Journal Title.

4 PrimeSense, Primesense 3D Sensors,
https://www.i3du.gr/pdf/primesense.pdf (hereinafter “PrimeSense”).
5 This equates to a minimum distance of 31–32 inches.
6 This equates to a minimum distance of 13–14 inches.
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10. The Capri 1.25 sensor had a visual range of 0.8–3.5 meter.
Tech Journal 1.
Bury
11. Bury is directed to describing body sizing pods.8 Bury, Title.
12. These pods use the same sensors as used in Microsoft Kinect
(PrimeSense sensors-see Wong, infra) to measure waist, bust,
hips, and leg length. Bury 1.
Wong9
13. Wong is directed to describing how Kinect works. Wong,
Title.
14. Microsoft Kinect relies on PrimeSense sensors to sense in three
dimensions. Wong 1–2.
ANALYSIS
Initially we construe the limitation “directly measuring, via three
dimensional (3D) depth sensing, using at least one sensor included in an
item worn by a user, one or more physical dimensions of one or more body
parts of the user.” Claim 7, limitation 1. On its face, this requires measuring
a user’s body part dimension. This is done using three dimensional (3D)
depth sensing to directly measure the dimension with a sensor. The
Specification describes examples of several sensors, but only one is
described as using three dimensional (3D) depth sensing. This is the series

7 PrimeSense Unveiled World’s Smallest 3D Sensor “Capri 1.25” At CES
2013, The Tech Journal, Jan. 12, 2013 (hereinafter “Tech Journal”).
8 Bury et al., Body-Metrics launches Kinect-powered body-sizing pods at
Bloomingdales, Betakit, Aug. 9, 2012 (hereinafter “Bury”).
9 Wong, How Microsoft’s PrimeSense-based Kinect Really Works,
ElectronicDesign, Mar. 16, 2011.
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of PrimeSense sensors manufactured by PrimeSense Americas of Los Altos,
California. Spec. ¶ 44. The Specification does not describe any other
examples and does not describe how such sensors could be constructed or
how to otherwise perform three dimensional (3D) depth sensing. The
Specification enables the claims only by using PrimeSense sensors.
PrimeSense, in its product literature, explicitly refers to its sensing as
depth sensing as recited in the claims and that its sensors can measure sizes.
It does so using 3D sensing technology that gives digital devices the ability
to observe a scene in three dimensions. It translates these observations into
a synchronized image stream. Thus, directly measuring as recited in the
claims means measuring by directly sensing the objective by the sensor to
observe a scene in three dimensions and not by indirectly measuring from
comparisons of data among multiple sensors or relying on otherwise known
measurements between sensors. This interpretation is further confirmed by
Appellant’s arguments that the other prior art sensors in Stirling and Coza
“can only measure distances between sensors or between a sensor and a
reflective surface, and thus could not measure body parts of a person.”
Appeal Br. 22.
Of particular relevance is that the claims recite that the sensors are
included in an item worn by the user. All PrimeSense sensors at the time of
filing had a sensing distance range of 0.35–1.4 meter to 0.8–3.5 meter. The
import is that the sensor had to be minimally 0.35 meter (13–14 inches) from
what was being observed to so measure. The manner of wearing as claimed
necessarily accommodated this requirement or else the sensor could not
generate and receive proper data for the recited measurement.
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That PrimeSense sensors were an enabling embodiment that could
measure body parts as recited is confirmed by their use in Bodymetrics’
Body Sensing Pods which measured body part measurements as recited in
the claims, albeit as part of a dressing room like structure rather than a worn
garment.
We therefore construe the phrase “directly measuring, via three
dimensional (3D) depth sensing, using at least one sensor included in an
item worn by a user, one or more physical dimensions of one or more body
parts of the user” as meaning measuring one or more physical dimensions of
one or more body parts of the user by directly observing a scene in three
dimensions including the body parts by the sensor that is included in a
garment worn so as to accommodate the sensor range requirements.

Claims 1–16 and 20 rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more

STEP 110
Claim 7, 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

10 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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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 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. Pty. Ltd. 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.” See Revised Guidance, 84
Fed. Reg. 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.
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STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 7 recites creating sensor data, determining user state data, and
determining recommendation data. Creating data is generating data.
Determining data is rudimentary data analysis. Thus, claim 7 recites
generating and analyzing data. From this we see that claim 7 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 concepts;11 (2) certain methods of organizing
human activity;12 and (3) mental processes.13 Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 7 recites the concept of
managing sales activity. Specifically, claim 7 recites operations that would
ordinarily take place in advising one to recommend an article for sale based

11 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); see also
Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co.
v. Radio Corp. of Am., 306 U.S. 86, 94 (1939); and SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
12 See, e.g., Bilski, 561 U.S. at 628; see also 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); and In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–
61 (Fed. Cir. 2018).
13 See, e.g., Benson, 409 U.S. at 67; see also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); and Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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on its applicability to a customer’s changing needs. The advice to
recommend an article for sale based on its applicability to a customer’s
changing needs involves providing recommendations, which is an economic
sales act, and determining a recommendation that includes an article of
clothing from an inventory, which is an act ordinarily performed in the
stream of commerce. For example, claim 7 recites “providing
recommendations,” which is an activity that would take place whenever one
is proposing a sale. Similarly, claim 7 recites “determining . . . a
recommendation that includes an article of clothing from an inventory,”
which is also characteristic of proposing an inventory item for sale.
The Examiner determines the claims to be directed to determining
recommendations based on a user state. Final Act. 6.
The preamble to claim 7 recites that it is a method for providing
recommendations. The steps in claim 7 result in managing sales activity by
recommending an article for sale based on its applicability to a customer’s
changing needs absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitations 1–3 recite generic and
conventional generating and analyzing of user data, which advise one to
apply generic functions to get to these results. The limitations thus recite
advice for recommending an article for sale based on its applicability to a
customer’s changing needs. To advocate recommending an article for sale
based on its applicability to a customer’s changing needs is conceptual
advice for results desired and not technological operations.
The Specification at paragraph 2 describes the invention as relating to
providing user targeted recommendations on a device. Thus, all this
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intrinsic evidence shows that claim 7 recites managing sales activity. 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 sales activity
is a way of directing human commercial interaction for sales. The concept
of managing sales activity by recommending an article for sale based on its
applicability to a customer’s changing needs is one idea for qualifying
customers for sales. The steps recited in claim 7 are part of how this might
conceptually be premised.
From this we conclude that at least to this degree, claim 7 recites
managing sales activity by recommending an article for sale based on its
applicability to a customer’s changing needs, 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 7 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.14
Here, as Appellant argues at Appeal Brief 18–19, we find the claims
do recite some technological implementation in applying this concept.
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed with implementation

14 See, e.g., Alice, 573 U.S. at 223 (discussing Diamond v. Diehr, 450 U.S.
175 (1981)).
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details. Claim 7, step 1 recites creating sensor data using a sensor in a worn
item to directly measure body parts. Claim 7 step 2 recites determining
some user state based on this sensor data that includes the body
measurement data. The final step uses this data. As we construe supra,
this means measuring one or more physical dimensions of one or more body
parts of the user by directly observing a scene in three dimensions, including
the body parts, by the sensor that is included in a garment worn so as to
accommodate the sensor range requirements and determining a state based
on actual body part dimensions as measured by 3D depth sensors.
Thus claim 7 recites a specific technological means for acquiring
actual physical measurement data to infer some bodily state. Contrary to
the Examiner’s response at Answer 4–7, we cannot say this recites
acquiring data by any and all possible means devoid of technological
implementation details. The Examiner appears to base his determination
on the commercial availability of the components. But using
commercially available components in inventive ways may be patent
eligible.
We conclude that claim 7 is directed to achieving the result of the
concept of managing sales activity by recommending an article for sale
based on its applicability to a customer’s changing needs as performed by a
generic computer. But claim 7 does so by creating sensor data using a
sensor in a worn item to directly measure body parts in three dimensions and
determining a user’s state based on actual body part dimensions as
measured by 3D depth sensors. This is inventive given that the garment
must be worn in an atypical manner to accommodate the minimum distance
between sensor and objective (body parts) required by the known enabled
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sensor ranges at date of filing. The claim therefore integrates the judicial
exception into a practical application.

Claims 1–13 and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over
Coza, Adeyoola, and Stirling

We are persuaded by Appellant's argument that
contrary to what is stated in the Final Office Action, the prior
art fails to teach or suggest “the at least one sensor to create
first sensor data by directly measuring one or more physical
dimensions of one or more body parts of the user while the item
is worn by the user.”

Br. 20. The Examiner determines that Coza describes most of the claim 7
limitations, and that Adeyoola describes measuring via three dimensional
depth sensing and Stirling describes measuring one or more physical
dimensions of one or more body parts of the user. Final Act. 11–14.
We are persuaded by Appellants' argument that Stirling and Adeyoola
fail to describe measuring as recited in the claims. Br. 20–22. The
Examiner responds that Stirling describes using sensors in a garment to
measure physical dimensions of body parts. Ans. 21. But as Appellant
contends, Stirling’s measurement is not via three dimensional depth sensing.
The only way to do so described in the record is by PrimeSense sensors, and
none of the applied references even suggest using such sensors or
equivalents. There is no evidence of record that equivalents to PrimeSense
sensors existed or that one of ordinary skill would have known of or that
there existed other or equivalent ways to measure as recited.

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Claims 14 and 15 rejected under 35 U.S.C. § 103(a) as unpatentable over
Coza, Adeyoola, Stirling, and Alten

These claims depend from those in the preceding rejection.
Claim 16 rejected under 35 U.S.C. § 103(a) as unpatentable over Coza,
Adeyoola, Stirling, and Schwartz

This claim depends from those in a prior rejection.

CONCLUSIONS OF LAW
The rejection of claims 1–16 and 20 under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more is improper.
The rejection of claims 1–13 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Coza, Adeyoola, and Stirling is improper.
The rejection of claims 14 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Coza, Adeyoola, Stirling, and Alten is improper.
The rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable
over Coza, Adeyoola, Stirling, and Schwartz is improper.
CONCLUSION
The rejection of claims 1–16 and 20 is reversed.

In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–16, 20 101 Eligibility 1–16, 20
1–13, 20 103 Coza, Adeyoola,
Stirling
1–13, 20
14, 15 103 Coza, Adeyoola,
Stirling, Alten
14, 15
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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
16 103 Coza, Adeyoola,
Stirling, Schwartz
16
Overall Outcome 1–16, 20

REVERSED