Ex Parte Parikh et al

Patent Trial and Appeal Board

Oct 19, 2018

13624712 (P.T.A.B. Oct. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/624,712 09/21/2012 Nishith Parikh
150601 7590 10/23/2018
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.
Pl370US1/EBAY.281020 7036
EXAMINER
PEACH, POLINA G
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
10/23/2018 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 NISHITH PARIKH,
NEELAKANTAN SUNDARESAN,
and GY ANIT SINGH
Appeal 2017-011495
Application 13/624,712 1
Technology Center 2100
Before ROBERT E. NAPPI, DAVID M. KOHUT, and
LYNNE E. PETTIGREW, Administrative Patent Judges.
KOHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 2, 4---6, 8-10, 12-14, 16-18, 20-22,
and 24--27. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is eBay, Inc. App. Br. 6.
2 Claims 3, 7, 11, 15, 19, and 23 were cancelled previously. App. Br. 46-49,
Claims App'x.
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INVENTION
Appellants' invention relates to generating recommendations using a
second, modified search inquiry after a first search inquiry yields few or no
results. Spec. ,r,r 2, 3, 11, 12.
CLAIMED SUBJECT MATTER
Claims 1, 9, and 17 are independent. Claim 1 is representative and is
reproduced below.
1. A system comprising:
one or more processors;
an active database storing active e-commerce items
that are currently available for sale;
a historical database storing inactive e-commerce
items previously available but not currently available for
sale, the historical database being distinct from the active
database; and
a low-result search query module, executable by
the one or more processors, configured to:
receive a search query including one or
more search terms;
perform a first query to the active database
with the search query;
determine, in response to the first query, that
a count of active e-commerce items within the
active database that match the one or more search
terms is less than a predefined threshold;
when the count of active e-commerce items
is less than the predefined threshold, perform a
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database query on the historical database using the
search query to obtain historical result data;
modify the search query based on the
historical result data;
perform a second query to the active
database with the modified search query to
generate one or more recommendations of active
e-commerce items; and
cause the one or more recommendations of
active e-commerce items to be displayed on a
device.
REJECTIONS AT ISSUE3
I. The Examiner rejected claims 1, 2, 4---6, 8-10, 12-14, 16-18,
20-22, and 24--27 under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter. Final Act. 2-5.
II. The Examiner rejected claims 1, 2, 4---6, 8-10, 12-14, 16-18,
20-22, and 24--27 under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 5-
6.
III. The Examiner rejected claims 1, 2, 4, 5, 8-10, 13, 16-18, 20,
21, and 24--27 under 35 U.S.C. § I03(a) as unpatentable over
Levy (US 2010/0268661 Al, published Oct. 21, 2010) and
Whitman (US 2007/0239671 Al, published Oct. 11, 2007).
Final Act. 8-16.
3 Appellants make arguments regarding the Examiner's additional rejections
(Final Act. 18-22) with respect to the claims on appeal. App. Br. 40-44;
Reply Br. 8. We do not reach these additional rejections or the arguments
directed to them as the issues discussed below are dispositive of the appeal.
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IV. The Examiner rejected claims 6, 14, and 22 under 35 U.S.C.
§ I03(a) as unpatentable over Levy, Whitman, and Mukherjee
(US 8,612,306 Bl, issued Dec. 17, 2013). Final Act. 16-17.
V. The Examiner rejected claims 6, 14, and 22 under 35 U.S.C.
§ I03(a) as unpatentable over Levy, Whitman, and Petropoulos
(US 2003/0146939 Al, published Aug. 7, 2003). Final Act.
17-18.
ANALYSIS
Rejection I: Patent-ineligible Subject Matter
The issue we consider is whether the Examiner erred in rejecting
claim 1 as being directed to patent-ineligible subject matter, specifically, (1)
did the Examiner err in determining that claim 1 is directed to an abstract
idea, and (2) did the Examiner err in determining that claim 1 does not recite
additional limitations amounting to significantly more than the claimed
abstract idea?
The Examiner performs a two-step analysis to determine patent
eligibility as set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 32 S. Ct. 1289, 1296-97 (2012), and reiterated in Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014). In the first
step, the Examiner determines if the claims are directed to a patent ineligible
concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If the claims are
directed to an abstract idea, then the Examiner proceeds to the second step.
In the second step, the Examiner considers whether the claims, individually
and as an ordered combination, recite an inventive concept-an element or
combination of elements sufficient to ensure the claims amount to
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"significantly more" than the abstract idea and transform the nature of the
claims into a patent-eligible concept. Id. We address each step in tum.
Step 1
The Examiner determines that claim 1 is directed to abstract ideas
involving an idea of itself and organizing human activity including gather
existing data and organizing information through mathematical correlations.
Final Act. 3; Ans. 3. The Examiner determines the acts of obtaining
historical data, generating recommendations, counting recommendations,
selecting and returning one or more of the recommendations, then displaying
the one or more items related to the selected recommendations by means of
query expansion are based on an idea of itself that can be performed
mentally, using pen and paper, or using mathematical concepts, by a person
having access to existing data. Ans. 3.
The Examiner further determines that the claim scope is similar to the
concepts previously identified as abstract ideas, such as in Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)
( comparing new and stored information and using rules to identify options),
Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016) ( collecting and analyzing data, and displaying results), and
Intellectual Ventures LLC v. Capital One Bank ( collecting and separating
information, using categories to organize store and transmit information, and
presenting information to users based on characteristics). Ans. 3. Like the
claims in Classen, Electric Power, and Intellectual Ventures, the Examiner
determines that claim 1 relates to the abstract ideas of data collection,
analysis, and comparisons using rules, which can be performed as a mental
process. Id.
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Appellants argue the claim does not recite methods of organizing
human activity, and that the Examiner erred in the first step of the two step
analysis because the Examiner failed to provide a comparison to a similar
concept identified by the courts as an abstract idea. App. Br. 15-16.
We do not agree that the Examiner failed to establish claim 1 is
directed to an abstract idea. Claim 1 recites the steps of receiving a search
query, performing a first query to the active database with the search query,
determining that a count of active e-commerce items within the active
database that match the one or more search terms is less than a predefined
threshold, performing a database query on the historical database using the
search query to obtain historical result data, modifying the search query
based on the historical result data, performing a second query to the active
database with the modified search query to generate one or more
recommendations of active e-commerce items, and causing the one or more
recommendations of active e-commerce items to be displayed on a device.
App. Br. 46, Claims App'x. We agree with the Examiner's findings that the
steps in claim 1, like in Classen, Electric Power, and Intellectual Ventures,
are directed to abstract ideas involving an idea of itself, i.e., data collection
(active and historical databases storing information), analysis (steps of
receiving a search query, performing a first query to the active database with
the search query, determining that a count of active e-commerce items
within the active database that match the one or more search terms is less
than a predefined threshold, performing a database query on the historical
database using the search query to obtain historical result data), and
comparisons using rules (modifying the search query based on the historical
result data, performing a second query to the active database with the
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modified search query to generate one or more recommendations of active e-
commerce items), which can be performed as mental processes.
Further, Appellants argue the Examiner oversimplified the claim.
App. Br. 16-17. Appellants argue that there is no risk of preemption, except
that the Examiner has over-simplified the claims and provided an
unreasonably broad characterization. Id. at 20-21.
"The § 101 inquiry must focus on the language of the Asserted Claims
themselves." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149
(Fed. Cir. 2016); see Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (admonishing that "the
important inquiry for a § 101 analysis is to look to the claim"); see also
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n,
776 F.3d 1343, 1346 (Fed. Cir. 2014) ("We focus here on whether the claims
of the asserted patents fall within the excluded category of abstract ideas.").
"An abstract idea can generally be described at different levels of
abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). As our reviewing court has cautioned, however, characterizing
claims at a "high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to§ 101 swallow the rule."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016); see
Thales Visionix Inc. v. United States, 850 F.3d 1343, 1347 (Fed. Cir. 2017)
(we must "articulate what the claims are directed to with enough specificity
to ensure the step one inquiry is meaningful.").
Appellants do not persuade us that the abstract ideas identified by the
Examiner are untethered from the language of and over-generalize the
claims. As the Examiner's analysis shows, the focus of the claims is the
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abstract idea of an idea of itself. Although the Examiner states at a high
level of abstraction that the claims are "directed towards a technique for
performing a search and returning results," and omits the specifics of how
each specific step in the claim falls within the category of an abstract idea,
we determine that the abstract idea proposed by Examiner still is sufficiently
tethered to the language of the claims because, as noted supra, the Examiner
properly and reasonably determined the claim is directed to an abstract idea
involving an idea of itself, i.e., data collection, analysis, and comparisons
using rules. Final Act. 3.
Regarding Appellants argument that the claims do not preempt all the
ways to provide e-commerce recommendations (App. Br. 20), we note that
"while preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenorn. Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see Fairwarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1098 (Fed.
Cir. 2016) ("the absence of complete preemption does not demonstrate
patent eligibility"). "The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability. For this
reason, questions on preemption are inherent in and resolved by the § 101
analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) ( citation omitted).
Additionally, Appellants argue claim 1 improves on existing
technological processes, similar to the claims in Enfish and Thales, by
addressing the problem of a site being unable to match any items to a search
query and presenting a solution where a historical database is accessed to
modify the search query to generate one or more recommendations. App.
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Br. 17-20 (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336,
1337 (Fed. Cir. 2016) and In re Thales Visionixinc. v. United States, 850
F.3d 1343, 1348 (Fed. Cir. 2017)). Appellants further their argument that
claim 1 is not directed to an abstract idea and improves on existing
technological processes/functionality because it recites a specialized process
for providing recommendations by accessing historical data. App. Br. 20-21
(citing Enfzsh, 822 F.3d at 1339 and McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299, 1307, 1314--1315 (Fed. Cir. 2016)).
We do not agree that claim 1 improves on an existing technological
process/functionality. The Specification states the claims address the
problem of "many situations where the site is unable to match the query to
any items or only able to match the query to a few items" and solves the
problem
by accessing a historical database storing inactive e-commerce
items previously available but not currently available for sale to
modify the search query based on the historical result data, and
to perform a second query to the active database with the
modified search query to generate one or more
recommendations of active e-commerce items.
App. Br. 18 ( citing Spec. ,r 3). The Specification discusses giving a user a
good experience by preventing a situation where a user sees no or little
inventory from a site during an e-commerce experience. Spec. ,r,r 3, 12. We
do not see, nor do Appellants direct our attention to, where or how the
Specification discusses a specialized process for providing recommendations
or specific means to improve the relevant technology. Preventing little to no
inventory being returned in a search result by searching a historical database
to provide a better search is not a technical improvement; rather, as
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described in the Specification, providing better search results, thereby
turning a bad user experience into a good experience, is a result that itself is
the abstract idea and merely invokes a generic process of comparing and
analyzing data. See Spec. ,r 12.
Additionally, we are not persuaded claim 1 recites a specific
improvement to computer functionality or a computer-related technology,
because Appellants have not provided evidence of such. See Enfzsh, 822
F.3d at 1336, 1339; McRo, 837 F.3d at 1314--1315. For example, Appellants
have not demonstrated how claim 1 improves computer functionality or
improves computer related technology "by accessing a historical database
storing inactive e-commerce items previously available but not currently
available for sale to modify the search query based on the historical result
data, and to perform a second query to the active database with the modified
search query to generate one or more recommendations of active e-
commerce items." App. Br. 18 ( citing Spec. ,r 3).
Based on the foregoing reasons, we determine claim 1 relates to the
concept of data collection, analysis, and comparisons using rules, which can
be performed as a mental process by a person having access to the existing
data. Accordingly, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Step 2
Under the second step of the Alice framework, the Examiner
determines claim 1 does not recite additional limitations amounting to
significantly more than the claimed abstract idea to transform the nature of
the claim into a patent-eligible concept. Final Act. 3-5; Ans. 4-6. The
Examiner finds that the additional limitations merely are generic computer
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components and a computer network performing their basic functions,
amounting to implementing the abstract idea on a computer. Final Act. 3-5;
Ans. 4---6. Specifically, the Examiner determines that the claimed invention
uses a conventional computer, functions, and network to obtain data, identify
other data based on the obtained data and compare the data sets and does not
add anything significant beyond the basic computer, computer functions, and
computer network. Final Act. 3-5; Ans. 4, 6. The Examiner further
determines that the claim elements, individually and in an ordered
combination, are conventional in the art and do not provide an improvement
to a computer or any other technology. Final Act. 3-5; Ans. 5.
Appellants argue claim 1 includes an inventive concept found in the
nonconventional and nongeneric arrangement of computer components,
similar to the claims of Bascom. App. Br. 22-24 ( citing Bascom Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)).
We are not persuaded. Claim 1 requires a generic processor and
generic databases performing conventionally. Appellants have not provided
sufficient evidence to show how the arrangement of the claim limitations is
nongeneric or nonconventional, so as to transform to the inventive concept
they contend exists. Nor do we find where the individual claim limitations
have been transformed into an inventive concept that amounts to
significantly more than the ineligible concept.
Moreover, in Bascom, the court held that the claims were directed to a
technical solution which overcomes a technical problem. Bascom, 827 F.3d
at 1350-1351. As discussed above, Appellants have not provided sufficient
evidence to show, nor do we find, where claim 1 recites a specific technical
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solution, or a technical problem, or improvement to computer functionality
for performing a database query on the historical database using the search
query to obtain historical result data, and modifying the search query based
on the historical result data. Unlike Bascom, claim 1 does not describe a
technical solution which overcomes a technical problem, and, thus, does not
sufficiently improve existing technology. Rather, claim 1 uses technology to
improve a process.
Citing to DDR Holdings, Appellants contend claim 1 is an
improvement in computer technology because the user is provided better
options for e-commerce instead of receiving no or few suggestions. App.
Br. 25; DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014). Further, Appellants argue the challenge of receiving responses with
no or few suggestions is Internet-centric, and, thus, necessarily rooted in
computer technology, similar to the claims in DDR Holdings. App. Br. 24--
26.
Appellants' arguments are unpersuasive. In DDR Holdings, the
claims addressed the problem of retaining website visitors, a problem that
was not known from the pre-Internet world. DDR Holdings, 773 F.3d at
1257. Therefore, the solution to that problem was necessarily rooted in
technology. Id. Appellants have not provided sufficient evidence to show,
nor do we find, how a user provided with better options for e-commerce
instead of receiving no or few suggestions is a problem that was not known
from the pre-Internet world. As we stated above, this problem is not a
problem unique to e-commerce, but rather was a burdensome process in
commerce generally. We are not persuaded that the claims are a challenge
particular to the world of e-commerce, or more broadly, the Internet.
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Accordingly, when the limitations of claim 1 are considered,
individually and as an ordered combination, they amount to nothing more
than an attempt to patent the abstract idea embodied in the steps of the claim.
See Final Act. 3-5; Ans. 4--6. The additional limitations of claim 1 fail to
transform the nature of the claim into patent eligible subject matter.
For the above reasons, Appellants have not apprised us of error in the
Examiner's determination that claim 1 is directed to patent-ineligible subject
matter. Independent claims 9 and 1 7 recite limitations similar to claim 1 and
are argued together with claim 1. App. Br. 26; see also id. at 47, 48, Claims
App'x. Claims 2, 4--6, 8, 10, 12-14, 16, 18, 20-22, and 24--27 depend from
one of independent claims 1, 9, and 17, and are not argued separately.
Accordingly, we are not persuaded of error and sustain the Examiner's
rejection of claims 1, 2, 4--6, 8-10, 12-14, 16-18, 20-22, and 24--27.
Rejection II
Written Description
The Examiner finds that the limitation "the historical database being
distinct from the active database" in claim 1 is not supported by the
Specification. Final Act. 6. The Examiner further cites to Figure 1 of the
instant application, item 126, in support of the finding that the databases are
not distinct. Ans. 7-8. Appellants argue the Specification at paragraphs 12
and 34 support the limitation. App. Br. 28; see Reply Br. 6. We agree with
Appellants.
The Specification references both the active and historical databases.
Spec. ,r,r 12, 34; see App. Br. 28; see also Reply Br. 6. Further, contrary to
the Examiner's findings, the Specification states that the database 126 shown
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in Figure 1 can be one or more databases. Spec. ,r 14. Accordingly, the
limitation "the historical database being distinct from the active database" of
claim 1 is fully supported in the Specification because the "or more
databases" could include both a physical database for the active database
and another physical database for the historical database. This would
reasonably convey to those skilled in the art that the inventors were clearly
in possession at the time of the invention. See Ari ad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) ("[T]he test for
sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.").
Indefiniteness
Claim 25 recites, "replacing one or more of the search terms with
terms that are more general." App. Br. 49, Claims App'x. The Examiner
finds that the term "more" in claim 25 renders the claim indefinite because it
is not defined by the claim and the Specification does not provide a standard
to ascertain the requisite degree. Final Act. 6. Appellants argue that "more
general" refers to a comparison of generality between the terms in the search
query and that a person of ordinary skill in the art would appreciate that in
the field of searching some terms are more general than others. App. Br. 29;
Reply Br. 6. We agree with Appellants.
The Specification states, "[g]eneralization can be accomplished by
dropping over-constraining terms from the original query (e.g., transforming
'blue colored ipod nano' to 'ipod nano') or replacing terms in queries with
more general terms (e.g., transforming 'oak table' to 'wood table')
( emphasis added)." Spec. ,r 41. As such, the Specification clearly sets forth
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the meaning of the term "more general" sufficiently to inform those skilled
in the art about the scope of the invention with reasonable clarity, thereby
satisfying the definiteness requirement. Nautilus, Inc. v. Biosig Instruments,
Inc., 134 S. Ct. 2120, 2129 (2014) ("claims viewed in light of the
specification and prosecution history, inform those skilled in the art about
the scope of the invention with reasonable certainty").
Rejection III: Unpatentable over Levy and Whitman
Claim 1 recites "[a] system comprising: ... an active database ... a
historical database storing inactive e-commerce items previously available
but not currently available for sale, the historical database being distinct
from the active database; and a low-result search query module." The
Examiner finds that Levy teaches all of the limitations of claim 1 including a
first search query to an active database. Final Act. 8-13. The Examiner
relies on Whitman to modify the search query based on historical result data
and perform a second query with the modified search. Id.
Appellants argue that the Examiner did not provide findings as to
which database in Levy teaches the claimed active database. App. Br. 32;
see Reply Br. 6. Appellants further argue the Examiner erred in relying on
Levy's historical data as the historical database because Levy's historical
data relates to past user actions and is not a database storing inactive items.
App. Br. 33; see Reply Br. 6.
Appellants' arguments are not persuasive. The Examiner finds that
Levy's client website database, which includes active items, is the claimed
active database. Ans. 9; Final Act. 12; Levy ,r 17. Further, the Examiner
finds Levy's historical data in the database tracks information including out
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of stock items (the claimed historical database storing inactive e-commerce
items). Ans. 9; Final Act. 12-13; Levy ,r 602. Thus, Appellants have not
addressed the Examiner's specific findings and, therefore, have not apprised
us of why the Examiner's findings are in error.
Further, the Examiner finds Levy teaches a client performs a search
and requests a specific number of items in return. Final Act. 9. The
Examiner finds Levy teaches when the search returns a count less than the
requested number of items ( threshold), the recommendations data from the
historical search can be used. Final Act. 9-10.
Appellants argue that the number of items requested is not a count of
active items in the database, as claimed. App. Br. 33-35, 37; see Reply Br.
6-7. Further, Appellants argue Levy's threshold is in relation to the
recommendations, where the recommendations are not active items, and,
thus, the threshold is not in relation to the threshold of active items in the
database, as claimed. App. Br. 35-37; see Reply Br. 6-7.
Appellants' arguments are not persuasive. Contrary to Appellants
arguments, the Examiner relies on the number of items returned in response
to the search request as the claimed count, not the number of items
requested. Ans. 11. Further contrary to Appellants' arguments, the
Examiner relies on the number of items requested as the claimed
predetermined threshold, not the recommendations threshold in Levy. Ans.
11. Appellants have not particularly addressed the Examiner's specific
findings. Thus, Appellants have not apprised us of why the Examiner's
findings are in error.
Additionally, the Examiner finds Levy teaches that when the search
returns a count less than the requested number of items (threshold), the
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recommendations data from the historical database can be used to broaden
the search, such as using the top sellers for all historical data. Final Act. 9-
10; Ans. 13. The Examiner finds Levy's search being broadened to include
the recommendations is a second query, but relies on Whitman to explicitly
teach performing a second query with a modified search query. Final Act.
11-13; Ans. 13-14.
Additionally, the Examiner construes the limitation "historical result
data" to be broader than "inactive e-commerce items previously available
but not currently available for sale," as supported by the Specification. Final
Act. 7 (citing Spec. ,r 36). "During examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification." In re Hyatt, 211 F.3d 1367, 13725 (Fed. Cir. 2000); see also
Cuozzo Speed Tech., LLC v. Lee, 136 S. Ct 2131, 2145 (2016). The
Specification states, "[t]he historical database 330 stores historical data
related to inactive ( e.g., expired or sold) e-commerce items. The historical
data can include information about previous searches, such as queries and
their related search results and clickstream data. The historical data can
include category tree information and meta-data." Spec. ,r 34; see also id.
,r 36. The Examiner's construction relies on the Specification for guidance
as to the claim term, and, as such, we find that the Examiner's broad
interpretation in light of the Specification is reasonable.
Appellants argue identifying the top sellers historically, as taught by
Levy, is different from a database query on the historical database storing
inactive items, as claimed. App. Br. 37; see Reply Br. 7. Further,
Appellants argue Levy's search is broadened with similar or related items,
and not based on historical data, as claimed. App. Br. 38; see Reply Br. 7.
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As addressed above, the Examiner finds Levy's historical result data
in the database tracks information including out of stock items (i.e., the
claimed historical database storing inactive e-commerce items). Ans. 9;
Final Act. 12-13; Levy ,r 602. Both of the past sales data and the top seller
historical data are found to be historic result data from the historical
database. See Ans. 12-13. As such, we agree that the query to the historical
database for information about past sales data and the top seller historical
data would be a search query to the historical database returning historical
result data, as claimed. Appellants have not addressed these findings with
particularity and, thus, have not persuaded us of error in the Examiner's
findings.
Further, while the Examiner finds Levy's broadening the search is a
second query, the Examiner relies on Whitman to explicitly teach this
limitation. Final Act. 11-12; Ans. 14. Appellants have not addressed the
Examiner's findings as to the combination of Levy and Whitman.
As such, we sustain the Examiner's rejection of claim 1 over the
combination of Levy and Whitman.
Claims 9 and 17 recite similar limitations to claim 1 and were argued
together with claim 1. App. Br. 38; see also id. at 47--48, Claims App'x.
Claims 2, 4, 5, 8, 10, 13, 16, 18, 20, 21, 24--27 depend from one of claims 1,
9, and 17. App. Br. 47--49, Claims App'x. Appellants do not present
separate arguments for claims 2, 4, 5, 8-10, 13, 16-18, 20, 21, 24--27. App.
Br. 30-38; Reply Br. 6-7. For all of the reasons stated above, we sustain the
Examiner's rejection of claims 1, 2, 4, 5, 8-10, 13, 16-18, 20, 21, 24--27
under 35 U.S.C. § 103(a) as unpatentable over Levy and Whitman.
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Appeal 2017-011495
Application 13/624,712
Rejections IV and V: Unpatentable over Levy, Whitman, and
Mukhe,jee or, alternatively, Levy, Whitman, and Petropoulos
Claims 6, 14, and 22 depend from claims 1, 9, and 17 respectively.
App. Br. 47--49, Claims App'x. Appellants do not present separate
arguments for claims 6, 14, and 22. App. Br. 39; Reply Br. 7-8. We sustain
the Examiner's rejections of claims 6, 14, and 22 under 35 U.S.C. § 103(a)
as unpatentable over Levy, Whitman, and Mukherjee, or alternatively over
Levy, Whitman, and Petropoulos, for the same reasons as set forth above for
claim 1.
DECISION
The Examiner's rejection of claims 1, 2, 4---6, 8-10, 12-14, 16-18,
20-22, and 24--27 under 35 U.S.C. § 101 as patent-ineligible subject matter
is affirmed.
The Examiner's rejection of claims 1, 2, 4---6, 8-10, 12-14, 16-18,
20-22, and 24--27 under 35 U.S.C. § 112 is reversed.
The Examiner's rejection of claims 1, 2, 4, 5, 8-10, 13, 16-18, 20, 21,
and 24--27 under 35 U.S.C. § 103(a) as unpatentable over Levy and
Whitman is affirmed.
The Examiner's rejection of claims 6, 14, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Levy, Whitman, and Mukherjee is affirmed.
The Examiner's rejection of claims 6, 14, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Levy, Whitman, and Petropoulos is affirmed.
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Appeal 2017-011495
Application 13/624,712
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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