eBay Inc.

Patent Trials and Appeals Board

Feb 11, 2020

14563828 - (D) (P.T.A.B. Feb. 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.
14/563,828 12/08/2014 Hugo Liu IP-P2748US1/
EBAY.281084
4239
150601 7590 02/11/2020
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
EXAMINER
GARG, YOGESH C
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
02/11/2020 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):
IPDOCKET@SHB.COM
docket.shb@clarivate.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HUGO LIU and ELIZABETH CHURCHILL

Appeal 2019-003745
Application 14/563,828
Technology Center 3600

Before CARL W. WHITEHEAD JR, DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “eBay,
Inc.” Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s Invention
According to Appellant:
The present [invention] is directed to. . . identifying item
characteristics (e.g., item brands, item types, etc.) that are to
eventually become popular [by] . . . identify[ing] popular
characteristics of items involved in recent transactions[,]
. . . identify[ing] one or more users that executed transactions
for items having these popular characteristics during a previous
time period[, and] determin[ing] what other item characteristics
are prevalent in [the identified users’] more recent transactions.
Abst. Claim 1, reproduced below with added emphases,2 is illustrative of
the claimed subject matter.
1. A non-transitory machine-useable storage medium
embodying instructions which, when executed by a machine,
cause the machine to execute operations for enabling a
network-based publication system to provide improved search
results and/or recommendations from a plurality of item listings
published by the network-based publication system, the
operations comprising:
tracking and storing, by the network-based publication system,
electronic marketplace transaction data comprising user
interactions with the plurality of item listings published by the
network-based publication system;
receiving, at the network-based publication system, a query for
one or more item listings from the plurality of item listings
published by the network-based publication system;

2 The Examiner finds the unemphasized portions correspond to
judicial- exceptions of patent-eligible subject matter and the emphasized
portions correspond to additional elements. See infra 7–11 (discussion of
Steps 2A(1) and (2)).
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identifying data representing one or more popular item
characteristics based on an analysis of the electronic
marketplace transaction data from a first time interval;
identifying from the electronic marketplace transaction data, a
plurality of users who purchased items having at least one of
the one or more popular item characteristics during a second
time interval earlier than the first time interval;
calculating a first metric value for each of the plurality of users
based on each user’s purchases of the items having at least one
of the one or more popular item characteristics during the
second time interval;
selecting, from the plurality of users, a subset of users based on
the first metric calculated for each of the plurality of users;
identifying, based on the electronic marketplace data, data
representing one or more pre-trend item characteristics that
correspond to marketplace transactions of the subset of users
during a third time interval more recent than the second time
interval;
calculating a second metric value for each of the one or more
pre-trend item characteristics based on analysis of the
electronic marketplace transaction data regarding purchases of
items having at least one of the one or more pre-trend item
characteristics by the subset of users during the third time
interval; and
generating display data comprising search results and/or item
recommendations identifying one or more item listings for a
client device to display to a user via a graphical user interface
(GUI) in response to the query, the one or more item listings
selected based, at least in part, on the second metric value
calculated for at least one of the one or more pre-trend item
characteristics.
Appeal Br., Claims Appendix.
Rejection
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception. Final Act. 7–14.
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OPINION
Claims 1–20 are argued as a group. Appeal Br. 8 (heading “V.A.”).
We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv). For the
following reasons, we are unpersuaded of error in the rejection of claim 1
and accordingly sustain the rejection of claims 1–20 under 35 U.S.C. § 101.
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the 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) (citation omitted).
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. Alice, 573 U.S. at 217−18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75−77 (2012)). In accordance
with that framework, we first determine what concept the claim is “directed
to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent-ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219−20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594−95 (1978)); and
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mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden,
56 U.S. 252, 267−68 (1853))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
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. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
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ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (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.
PTO Guidance
The PTO provides guidance for 35 U.S.C. § 101. USPTO’s 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 activities such as a fundamental economic practice, and mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(MPEP) § 2106.05(a)−(c), (e)−(h) (9th ed. 2018)).
84 Fed. Reg. at 52−55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then
conclude the claim is directed to a judicial exception (id. at 54) and 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
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generality, to the judicial exception.
Id. at 56.
Step 1: Does Claim 1 Fall within a Statutory Category?
There is no dispute that the claimed subject matter falls within a
35 U.S.C. § 101 category of patentable subject matter. Final Act. 8
(“statutory category of manufacture”); see also Guidance, 84 Fed. Reg.
at 53−54 (“Step 1”).
Step 2A(1):3Does Claim 1 Recite Any Judicial Exceptions?
We agree with the Examiner that claim 1 recites—and, more
particularly, describes—judicial exceptions. See October 2019 Patent
Eligibility Guidance Update (“Guidance Update”) at 1 (meaning of
“describe”), available at https://www.uspto.gov/sites/default/files/documents/

3 The Guidance separates the enumerated issues (1) to (4) (see supra 6–7)
into Steps 2A(1), 2A(2), and 2B, as follows:
[T]he revised procedure . . . focuses on two aspects [of whether
a claim is “directed to” a judicial exception under the first step
of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the
claim recites a judicial exception; and (2) whether a recited
judicial exception is integrated into a practical application.
[W]hen a claim recites a judicial exception and fails to integrate
the exception into a practical application, . . . further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B) . . . is needed . . . in accordance with existing USPTO
guidance as modified in April 2018.[footnote omitted]
84 Fed. Reg. at 51 (referencing, via the omitted footnote, “USPTO
Memorandum of April 19, 2018, ‘Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)’ (Apr. 19, 2018), available at https://
www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF [ . . . ’USPTO Berkheimer Memorandum’].”).
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peg_oct_2019_update.pdf; see also 84 Fed. Reg. 55942 (Oct. 18, 2019)
(notifying the public of the Guidance Update). Specifically, we agree
claim 1 is “directed to the concept of data processing for predicting item
characteristic popularity . . . such as item brands, item types, etc.”
Final Act. 9–10. We also agree each claim step encompasses
judicially-excepted subject matter as identified in reproduced claim 1.
Ans. 4–7;4 supra 2–3 (unemphasized portions of reproduced claim 1). As
the Examiner finds, the tracking, selecting, calculating, and generating steps
encompass “marketing or sales activities or behaviors to determine which
items should be recommended for listing for sales falls in to the grouping of
‘Certain Methods of Organizing Human [A]ctivity’.” Id. at 7 (emphasis
omitted). The identifying steps, aside from handling electronic data, “can be
performed as a Mental [P]rocess.” Id. And, the calculating steps may
additionally encompass “carrying out calculations using mathematical
relationships.” Final Act. 10; see also Spec. ¶ 74 (“Bayesian inference is
used to calculate a probability that something is or is not pre-trend/cool.”).

4 The Examiner does not explicitly identify the claimed receiving
(“receiving . . . a query for one or more item listings from the plurality of
item listings published by the network-based publication system”) as
judicially-excepted. As this limitation is not at issue (see infra), we note it
merely adds a search query that pares the item listings to be evaluated and
such an operation is alone insufficient to confer patent-eligibility. See
Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016) ([F]iltering of content is an abstract idea.); see also
W. View Research, LLC v. Audi AG, 685 F. App'x 923, 926 (Fed. Cir. 2017)
(“[R]eceiving or collecting data queries, analyzing the data query, retrieving
and processing the information constituting a response to the initial data
query, and generating a visual or audio response to the initial data query [is]
. . . a patent-ineligible concept.”).
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We add that the above activities plainly fall within the three categories
of judicial exceptions enumerated by the Guidance. See 84 Fed. Reg. at 52
(categories). The claimed calculations of metric values encompass
“[m]athematical concepts [including] . . . mathematical calculations.” Id.
The claimed assessment of marketplace transaction data, item listings, and
purchases at different time intervals to determine popular item
characteristics, users who previously purchased corresponding items, and
pre-trend item characteristics of those users’ recent purchases encompasses
“[c]ertain methods of organizing human activity [including] fundamental
economic principles or practices [such as] . . . marketing.” Id. The claimed
determining of pre-trend characteristics from people who reliably forecast
popular characteristics (e.g., looking to expert stock investors) encompasses
“[m]ental processes [including] . . . an observation, evaluation, judgment.”
Id.
For the foregoing reasons, we agree with the Examiner that claim 1
recites judicial exceptions.
Step 2A(2): Are the Recited Judicial Exceptions
Integrated Into a Practical Application?
We agree with the Examiner that claim 1’s additional elements do not
integrate the judicial exceptions into a practical application. See Guidance,
84 Fed. Reg. at 53 (describing a “practical application” as a “meaningful
limit on the [recited judicial exceptions], such that the claim is more than a
drafting effort designed to monopolize the [exceptions]”); id. at 55
(“exemplary considerations . . . indicative [of] a practical application”).
Specifically, we agree the additional elements are as identified in reproduced
claim 1; that is, they are the claimed use of a “non-transitory
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machine-useable storage medium [and] embod[ied] instructions [to]
. . . cause the machine” of a “network-based publishing system” to track,
store, identify, and analyze “electronic . . . data” and to display results on “a
client device . . . display . . . via a graphical user interface (GUI).” See Final
Act. 5, 9; supra 2–3 (emphasized portions of reproduced claim 1). We also
agree these elements are merely “implementing the [judicial exceptions] on
a generic computer” and, as such, “do[] not integrate the [activities] into a
practical application.” Ans. 10; see also id. at 12 (citing Spec. ¶¶ 17–20 to
show that examples of the disclosed devices are generic computer devices);
Final Act. 12 (same citation and showing). We further agree the ordered
combination of all claim features results in “one or more generic computers
generating data for [the] display [step], identifying steps, calculating steps,
[and] selecting step,” which otherwise “can be implemented manually using
a pen and paper” and thus “do not represent an inextricable tie to . . . a
computer.” Id. at 11.
We add that claim 1 merely limits the invention’s field of use to a
retail merchandise planner by describing the (i) evaluated data as
“marketplace transaction data comprising user interactions with the plurality
of item listings,” (ii) the therein-identified data as “popular item
characteristics . . . from a first time interval[,] . . . users who purchased items
having . . . popular item characteristics during a second time interval earlier
than the first time interval[,] . . . [and] pre-trend item characteristics that
correspond to marketplace transactions of the subset of users during a third
time interval more recent than the second time interval,” (iii) the selected
subset of users as “based on each user’s purchases of the items having
. . . popular item characteristics during the second time interval” (first
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metric) and (iv) the generated item recommendations as “based on
. . . purchases of items having . . . pre-trend item characteristics [and] by the
subset of users during the third time interval” (second metric). “Even
though such field-of-use limitations prevent a claim from wholly
pre-empting an abstract idea, . . . they describe only the context rather than
the manner of achieving a result.” Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1311 (Fed. Cir. 2016); see also id. (“The Pythagorean
Theorem cannot be made eligible by confining its use to existing surveying
techniques, . . . nor can the business practice of hedging risk . . . by
confining its use to the commodities and energy markets, . . . nor the goal of
gathering and combining data by confining its use to particular types of
photographic information.” (internal quotation marks and citation omitted)).
For the foregoing reasons, we agree with the Examiner that claim 1 is
directed to the recited judicial exceptions—not to a practical application
thereof.
Step 2B: Does Claim 1 Recite Anything That Is
Beyond the Recited Abstract Ideas and Not a Well-Understood, Routine,
Conventional Activity?
We agree claim 1 recites the “devices and [a] communication network
. . . at high level of generality” (namely the network-based publication
system) and “a generic non-transitory machine-useable storage medium [of]
instructions. . . caus[ing a] machine to . . . interact[] with generic client
machines via a network[,] such as Internet[, to] implement[] steps of
tracking and storing data, receiving a query, identifying different types of
data based upon pre-determined criteria, calculating values from collected
data, selecting and outputting/displaying data.” Final Act. 5–6 (citing
Spec. ¶¶ 17–20 to show the disclosed examples are generically described);
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see also Ans. 12–13. We also agree these features are analogous to the
following computer operations found conventional by the Supreme Court
and Federal Circuit, e.g., “normal, basic” arranging, storing, retrieving,
sorting, eliminating, and determining (Versata Dev. Grp., Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015)); use of a mathematical formula
to calculate a value (Flook, 437 U.S. at 586); a computer’s basic calculation,
storage, and transmission functions, e.g., electronic recordkeeping (Alice,
573 U.S. at 225–26); receiving or transmitting data over a network, e.g.,
using the Internet to gather data (buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014)). Final Act. 6, 13; accord MPEP §
2106.05(d)(II) (“The courts have recognized the following computer
functions as well‐understood, routine, and conventional functions when they
are claimed in a merely generic manner (e.g., at a high level of
generality).”).
For the foregoing reasons, we agree with the Examiner that claim 1
merely appends judicial exceptions to conventional technology.
Appellant’s Arguments
We have reviewed Appellant’s arguments. Appeal Br. 8–22. In view
of the above analysis, we are unpersuaded the Examiner erred. At the
outset, we repeat that the Examiner has shown each claim limitation
constitutes either judicial exceptions described by the Guidance (supra Step
2A(1)) or technology described by judicial precedent as conventional
(supra Step 2B). The Examiner has also shown claim 1’s ordered
combination of activities and technology requires only to execute the
judicial exceptions on generic devices that, as any computer does, uses
machine instructions to track, store, identify, analyze, and display electronic
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data on a networked system (e.g., a client device thereof). Supra Step 2B.
Appellant does not meaningfully rebut the Examiner’s findings. See In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (“[T]he burden of
. . . [r]ebuttal is . . . a showing of facts supporting the opposite conclusion.”
(internal quotation marks and citation omitted)); SHOW, Black’s Law
Dictionary (10th ed. 2014) (“To make (facts, etc.) apparent or clear by
evidence; to prove”). For example, Appellant does not present evidence or
reasoning that indicates: a claim feature was wrongly identified as a judicial
exception or conventional activity; or a combination of claim features
prevents preemption of the recited judicial exceptions. We address, below,
some of the arguments for emphasis.
Appellant contends the Examiner characterizes “small portions” of
claim 1, analogizes each characterization (portion) to an abstract idea
identified by judicial precedent, and then erroneously concludes the analogy
applies to the claim as a whole. Appeal Br. 11. We are unpersuaded
because, as discussed above, the Examiner followed the Guidance’s
procedure for concluding a claim is directed to judicially-excepted subject
matter. Supra Steps 2A(1) and (2). The followed procedure consists of
determining: the claim recites judicially-excepted subject matter (Step
2A(1)); and the claim as a whole does not integrate a recited judicial
exception into a practical application (Step 2A(2)). Guidance, 84 Fed. Reg.
at 53; see also id. at 51–52 (explaining the Guidance alone may be used to
show a claim is directed to judicially-excepted subject matter). Though
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having an opportunity to address the Examiner’s findings in light of the
Guidance’s above procedure, Appellant does not do so in the Reply Brief.5
Appellant also contends the Examiner is “oversimplifying” the
claimed invention by determining claim 1 is directed to “providing improved
search results and/or recommendations from a plurality of published item
listings by collecting transaction data of users from marketplace, analyzing it
and displaying/outputting certain results of the collection and analysis” and
“advis[ing] a user about improved search results and/or recommendations
based upon the analysis of collected transaction data.” Appeal Br. 11
(quoting Final Act. 3–4). We are unpersuaded because the Examiner does
not generalize claim 1 as above to avoid—nor does the Examiner avoid—
discussing the specific claim restrictions. Rather, after explaining why each
claim limitation constitutes a judicial exception, the Examiner generalizes
the claim as above to explain why the claim as a whole is not directed to a
practical application of the judicial exceptions. See e.g., Final Act. 4 (“The
[claim] steps . . . are neither inextricably tied to computer functioning nor
recite any improvement in computer-related technology[. They] do no more
than advise a user about improved search results and/or recommendations
based upon the [abstract] analysis of collected transaction data.”); see also
id. at 5 (using the above generalization to explain claim 1 is directed to a
“business solution” and, accordingly, not analogous to the patent-eligible
claims of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016),
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016), DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245

5 The Appeal Brief was filed before publication of the Guidance in January
2019. The Answer and Reply Brief, however, were filed thereafter.
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(Fed. Cir. 2014), and Bascom Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
Appellant contends claim 1 as a whole is directed to a “specific
mechanism” for solving a technological problem and, namely, for using
electronic marketplace data to identify users who have purchased popular
items before they were popular, identifying other such items the users
purchase, and thereby identifying those other items as likely to be popular.
Reply Br. 4–7; see also Appeal Br. 16–21 (presenting this vein of argument
with reference to McRO, Bascom, and Amdocs). Appellant further contends
these identifications consist of calculating first and second “metric values,”
selecting users based on the first metric value, and generating display data
based on the second metric value. Id. at 4–5.
We are unpersuaded because Appellant alleges a claimed “specific
mechanism” but does not address the meaning of a “specific.” McRO,
which Appellant notes (Appeal Br. 28) but does not address with
particularity, is highly instructive as to whether a claim is directed to a
judicial exception or rather recites a “specific” means of implementing the
exception. See 837 F.3d at 1313–16. Describing an abstract idea as a
“result,” McRO distilled the issue to whether a claimed means of a result is
sufficiently specific to prevent preemption of the result. Id. at 1314. In
holding the claim overcame this concern, McRO identified such a claimed
means (“first set of rules”) that applied unconventional data (“a keyframe at
a point that no phoneme is being pronounced”) to the recited mathematical
formula (“morph weight”) and thereby prevented preemption the formula.
Id. at 1307; see also id. at 1315 (emphasizing that the unconventional
appointment of keyframes to phoneme sub-sequences prevented preemption
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of the morph-weighting). Id. at 1315. Appellant’s contentions do not
indicate (much less show) claim 1’s features prevent preemption of the
recited judicial exceptions (e.g., do not preempt use of a mathematic
calculation to identify popular items). Appellant rather summarizes some
case law, identifies claim features, and cursorily alleges the features are
specific and result in a technological improvement. Reply Br. 4–7;
Appeal Br. 16–21.
Appellant contends the claimed calculating of “metric values” and
display of resulting data cannot be “practically performed in the human
mind.” Reply Br. 4–5 (emphasis omitted). We are unpersuaded because,
though an activity is not a mental process unless “practically” performable in
the mind (Guidance, 84 Fed. Reg. at 52, n. 14), Appellant merely alleges—
does not support with evidence or reasoning—the claim operations identified
by the Examiner as a mental process (see supra Step 2A(1)) cannot be
practically performed in the mind. Mere allegations are not meaningful
rebuttals. Piasecki, 745 F.2d at 1472 (parenthetically described above).
Appellant contends: “[B]ecause the displayed listings are more likely
to be relevant than in conventional systems, users often will not need to
. . . perform new searches, thereby reducing processing requirements of the
system as well as reducing bandwidth requirements.” Reply Br. 7. We are
unpersuaded because, even if correct, the contentions do not indicate (much
less show) the above alleged improvements result from claim features that
are not judicially-excepted. See SAP Am., 898 F.3d at 1163 (“[An] advance
[that] lies entirely in the realm of abstract ideas . . . is ineligible for
patenting.”); see also Final Act. 14 (finding claim 1’s judicial exceptions,
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and not the identified additional elements (see supra Step 2A(2)), patentably
distinguish the invention over the prior art).
Appellant contends the claimed invention patentably distinguishes
over the prior art and therefore comprises unconventional activities that
ensure claim 1 does not preempt the recited judicial exceptions.
Appeal Br. 21–22. We are unpersuaded because overcoming 35 U.S.C.
§§ 102 and 103 is not a dispositive consideration for 35 U.S.C. § 101. See
Mayo, 566 U.S. at 90 (“[I]n evaluating the significance of additional steps,
the § 101 patent eligibility inquiry and, say, the § 102 novelty inquiry might
sometimes overlap.” (emphasis added)). To prevail in this vein of argument,
Appellant must at least (but does not) identify a claim feature that
distinguishes over the prior art and lies outside the realm of abstract ideas.
See SAP Am., 898 F.3d at 1163 (see above parenthetical description).
CONCLUSION
For the foregoing reasons, we affirm the Examiner’s decision to reject
claims 1–20.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 § 101 Eligibility 1–20

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See
37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED