Ex Parte Bolivar et al

Patent Trial and Appeal Board

Sep 26, 2018

12814020 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/814,020 06/11/2010 Alvaro Bolivar
150601 7590 09/28/2018
Shook, Hardy & Bacon L.L.P.
(eBay Inc.)
2555 Grand Blvd.
KANSAS CITY, MO 64108-2613
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2043.818US1 8296
EXAMINER
SORKOWITZ, DANIEL M
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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
IPRCDKT@SHB.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALVARO BO LIV AR and WENY AN HU
Appeal2017-003747
Application 12/814,020
Technology Center 3600
Before MICHAEL J. STRAUSS, MICHAEL M. BARRY, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-16 and 18-20, which are all the pending claims (see Final Act. 1
and App. Br. 25-27 (Claims App'x)). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Appellants identify eBay, Inc. as the real party in interest. App. Br. 3.
Appeal2017-003747
Application 12/814,020
Introduction
Appellants' "disclosure generally relates to data processing
techniques. More specifically, the present disclosure relates to methods and
systems for managing how search results are ranked and presented to a user
of a computer-based trading or e-commerce application." Spec. ,r 1. The
disclosure addresses e-commerce issues such as "how to best present
products and services ( e.g., items) that are being offered for sale, so as to
maximize the likelihood that a transaction ( e.g., the sale of a product or
service) will occur." Spec. ,r 3. Appellants discuss specific concerns for
intermediary enterprises that connect buyers with sellers to present item
listings "in a fair manner that strikes a balance between the needs and desires
of the various sellers, the buyers or potential buyers, and the [intermediary]
enterprise itself." Spec. ,r 4.
The claimed invention determines "dwell time" of a user's view of
information, and ranks listings based ( at least in part) on the dwell time.
Appellants explain dwell time as follows-
In the context of the present disclosure, the dwell time is the
amount of time that elapses beginning when a potential buyer
navigates to a view item page from a display of search results
and ending when the potential buyer navigates away from the
view item page. As such, the dwell time represents the amount
of time the potential buyer interacts with or views the view item
page.
Spec. ,r 13 ( also explaining "the dwell time used herein is a measure
of the amount of time that the user remains on the view item page
instead of an amount of time elapsed since the user last visited a
'search results' page"); see also id. at 14--16, 28-32 (discussing
aspects of dwell times, including their determination).
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Application 12/814,020
Claim 18 is representative of the claims on appeal:
18. A method comprising:
identifying a plurality of listings stored in a listing
database as search results;
determining, using a processor, a respective dwell time
associated with each of the plurality of listings, the dwell time
based on an elapsed amount of time one or more users view a
page describing the listing, and the dwell time associated with a
likelihood of a transaction occurring with respect to the listing;
and
ranking the listings composing the identified plurality of
listings based at least in part on the respective dwell time
associated with each of the plurality of listings.
App. Br. 25 (Claims App'x).
Re} ections & References
Claims 1-16 and 18-20 stand rejected 35 U.S.C. § 101 as directed to a
judicial exception (i.e., an abstract idea) without reciting significantly more.
See Final Act. 2--4.
ANALYSIS
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine
whether the claims at issue are "directed to" a judicial exception, such as an
abstract idea. Alice, 134 S. Ct. at 2355. Ifwe determine they are not, then
the inquiry ends. Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed.
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Application 12/814,020
Cir. 2016). If we determine they are, then we consider under step two
whether the claims contain an "inventive concept" sufficient to "'transform
the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct.
at 2355 (quotations and citation omitted).
In considering whether a claim is directed to an abstract idea, we
acknowledge, as did the Court in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Noting that the two stages involve
"overlapping scrutiny of the content of the claims," the Federal Circuit has
described "the first-stage inquiry" as "looking at the 'focus' of the claims,
their 'character as a whole,"' and "the second-stage inquiry (where
reached)" as "looking more precisely at what the claim elements add-
specifically, whether, in the Supreme Court's terms, they identify an
'inventive concept' in the application of the ineligible matter to which (by
assumption at stage two) the claim is directed." Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Therefore, we look to
whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery. See
Enfzsh, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Appellants argue all claims together as a group, see App. Br. 11-24,
and we select the independent method claim 18 as representative, see 37
C.F .R. § 41.3 7 ( c )( 1 )(iv). The Examiner determines the claims are directed
to the abstract idea of "organizing search listings, a type of advertising,
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Appeal2017-003747
Application 12/814,020
ranked by the time that a user views the advertisement," or, in other words to
an abstract idea of "sales and marketing actions or behaviors." Final Act. 2-
3 ( citing Cybeifone2 and Digitech3). The Examiner determines that, beyond
reciting an abstract idea, the claim limitations, considered individually and
in combination, include only routine, generic computer functionality and
"are not sufficient to amount to significantly more than the abstract idea."
Final Act. 3.
Appellants argue the Examiner fails to set forth a prima facie case of
ineligible subject matter under§ 101. App. Br. 12-14. We disagree. The
USPTO carries its procedural burden of establishing a prima facie case when
its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for rejection, "together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application." In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011 ). Here, the Examiner notified Appellants that the claims are directed
to an abstract idea, i.e., "a type of advertising, ranked by the time that a user
views the advertisement," which the Examiner explains is a type of abstract
idea of "sales and marketing actions or behaviors." Final Act. 2-3. The
Examiner also notified Appellants the claims do not recite significantly more
than the abstract idea because the additionally recited computer elements
"do not add a meaningful limitation to the abstract idea because they are
generic computer components which perform generic computer functions
and they would be routine in any computer implementation." Final Act. 3;
2 Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F. App'x 988
(Fed. Cir. 2014).
3 Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014).
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Application 12/814,020
see also Ans. 2-6. The Examiner, thus, notified Appellant of the reasons for
the rejection "together with such information and references as may be
useful in judging of the propriety of continuing the prosecution of [the]
application." 35 U.S.C. § 132. In doing so, the Examiner set forth a prima
facie case of unpatentability.
Appellants further argue the claims are not directed to an ineligible
abstract idea because they are directed to a technological improvement and
are similar to claims held patent eligible in other cases, such as DDR
Holdings. See App. Br. 16-19, 23 (citing, inter alia, DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). We agree.
We determine claim 1 is directed not only to the "business idea" of
organizing (ranking) search results, but claim 1 also is directed to the use of
dwell time, which is an Internet-centric challenge. See, e.g., Spec. 1--4, 12-
16. Claim 1 is analogous to the claim at issue in DDR Holdings in that, in
both cases, a key aspect of the claim focuses on "a challenge particular to the
Internet." DDR Holdings, 773 F.3d at 1257. Thus, just as in DDR Holdings,
here Appellants' claim 1 is not directed to an abstract idea because it does
"not merely recite the performance of some business practice known from
the pre-Internet world along with the requirement to perform it on the
Internet." Id. Claim 1 is not directed to an abstract idea because it "is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." Id.
Accordingly, we do not sustain the 35 U.S.C. § 101 rejection of claim
1 and, for the same reasons, of claims 2-16 and 18-20.
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Application 12/814,020
DECISION
We reverse the 35 U.S.C. § 101 rejection of claims 1-16 and 18-20.
REVERSED
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