Farhang Kassaei

Patent Trials and Appeals Board

Sep 17, 2020

2017008838 (P.T.A.B. Sep. 17, 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.
12/416,051 03/31/2009 Farhang Kassaei 2043.637US1 3694
49845 7590 09/17/2020
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
MILLER, ALAN S
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/17/2020 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):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte FARHANG KASSAEI
____________________

Appeal 2017-0088381
Application 12/416,051
Technology Center 3600
____________________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant filed a Request for Rehearing (“Request” or “Req. Reh’g”)
pursuant to 37 C.F.R. § 41.52 on July 2, 2019, seeking reconsideration of
our Decision on Appeal, mailed May 2, 2019 (“Decision” or “Dec.”), in
which we affirmed the Examiner’s rejection of claims 1–5, 7–14, 16–18, 22,
and 23 under 35 U.S.C. § 101 as directed to patent ineligible subject matter.
We have jurisdiction over the Request under 35 U.S.C. § 6(b).

1 Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
December 29, 2016), Reply Brief (“Reply Br.,” filed May 30, 2017), the
Examiner’s Answer (“Ans.,” mailed March 29, 2017), and Final Office
Action (“Final Act.,” mailed June 2, 2016). Appellant identify eBay, Inc., as
the real party in interest. Appeal Br. 2.
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ANALYSIS
A Request for Rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the Board.”
37 C.F.R. § 41.52(a)(1). A Request for Rehearing is not an opportunity to
rehash arguments raised in the Briefs. Neither is it an opportunity to merely
express disagreement with a decision without setting forth points believed to
have been misapprehended or overlooked. Arguments not raised in the
briefs before the Board and evidence not previously relied on in the briefs
also are not permitted except in the limited circumstances set forth in
§ 41.52 (a)(2) through (a)(4). Id.
Core Wireless
Appellant first argues that the present claims are not directed to an
abstract idea because they are similar to the claims in the recent Federal
Court decision in Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc.,
880 F.3d 1356 (Fed. Cir. 2018). Req. Reh’g 1–3. More particularly,
Appellant asserts that “[t]he user interface improvement recited in the claims
at issue is analogous to the user interface improvement in Core Wireless”
because the claimed user interface “saves a seller from having to search the
Internet to discover an application that will best meet the seller’s needs,
adding the application, and then using the application to update the seller’s
listings.” Id. at 2 (Footnotes omitted). Appellant further asserts that the user
interface recited in the present claims is similar to the user interface in Core
Wireless because it “presents data (e.g., a recommendation of an application)
that, based on an acceptance by the seller, launches the recommended
application (e.g., for use in updating the seller’s listings).” Id. We do not
agree.
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The invention in Core Wireless concerned “an improved user
interface for electronic devices, particularly those with small screens.” Core
Wireless, 880 F.3d at 1363. The specification described that “prior art
interfaces had many deficits relating to the efficient functioning of the
computer, requiring a user ‘to scroll around and switch views many times to
find the right data/functionality,’” and disclosed that the claimed invention
improved the “efficiency of using the electronic device by bringing together
‘a limited list of common functions and commonly accessed stored data,’
which can be accessed directly from the main menu.” Id. The specification
also disclosed that “[t]he speed of a user’s navigation through various views
and windows” was improved because it “saves the user from navigating to
the required application, opening it up, and then navigating within that
application to enable the data of interest to be seen or a function of interest
to be activated” — disclosure that the Federal Circuit concluded the
language “clearly indicates that the claims are directed to an improvement in
the functioning of computers, particularly those with small screens.” Id.
(citation omitted).
Unlike the claims in Core Wireless, exemplary independent claim 102
of the present application merely recites a series of steps “implemented by
one or more processors of the network-based marketplace system” for
creating a user profile, identifying similar other user profiles by comparing

2 In the Decision, we selected independent claim 10 as the representative
claim because Appellant argued claims 1–5, 7–14, 16–18, 22, and 23 as a
group in their briefs. Dec. 3 (citing Appeal Br. 19–31; Reply Br. 1–8). In
the Request, Appellant continues to argue claims 1–5, 7–14, 16–18, 22, and
23 as a group on the bases of independent claim 10 (see Req. Reh’g 1–14),
and as such, independent claim 10 remains representative.
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profiles, analyzing data within the profiles to calculate a performance impact
value and rating, communicating a recommendation to the user based on the
rating, and updating a listing of items for sale based on the recommendation.
Appeal Br. 35–36 (Claims App’x). Here, as discussed in the Decision at
pages 10–17, we find exemplary independent claim 10 merely recites a
system with computer components that operate in their conventional manner
to receive information, identify information, analyze information, and make
a recommendation based on the information without any technological
improvement to the computer components themselves.
Appellant points to the advantages related to “sav[ing] a seller from
having to search the Internet” and “present[ing] data (e.g., a
recommendation of an application) that, based on an acceptance by the
seller, launches the recommended application (e.g., for use in updating the
seller’s listings)” as evidence of an improved interface. Req. Reh’g 2 (citing
Spec. ¶¶ 52, 53, 56). However, none of these purported advantages
discussed in the Specification are tied to the language recited in exemplary
independent claim 10, much less are indicative of an improvement to the
functionality of known user interfaces.
In this regard, we note that independent claim 10 recites no more than
“communicating a recommendation for presentation in a user interface,” and
as a result, the claimed “user interface” does no more than present
information for display. Thus, we maintain that
[t]he alleged advantages that Appellant identifies do not appear
to concern an improvement to computer capabilities or provide
details on the technological manner in which the steps are
performed; but instead, relate to an alleged improvement in
discovering applications that can “improve [a seller’s] ability to
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sell items” through a process in which a computer is used as a
tool in its ordinary capacity (cf. Spec. ¶ 3).
Dec. 12. We also note that the Court in Trading Techs. Int’l, Inc. v. IBG
LLC addressed Appellant’s Core Wireless argument.
Relying principally on [Core Wireless], TT argues the claimed
invention provides an improvement in the way a computer
operates. We do not agree. The claims of the ’999 patent do
not improve the functioning of the computer, make it operate
more efficiently, or solve any technological problem. Instead,
they recite a purportedly new arrangement of generic
information that assists traders in processing information more
quickly.
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019)
(citations omitted). Similarly, the instant claims do not improve the
functioning of the computer, make it operate more efficiently, or solve any
technological problem. Instead, they recite a purportedly new arrangement
of generic information that assists a seller’s “aware[ness] of applications that
could improve their ability to sell items.” Spec. ¶ 3.
Accordingly, we are not persuaded that exemplary independent
claim 10 recites an improved interface analogous to the interface in Core
Wireless.
Berkheimer Memo
Appellant next asserts that the Board must reconsider its
determination that the limitations of exemplary independent claim 10 are
well-understood, routine, and conventional in light of the recent Federal
Circuit decision in Berkheimer v. HP, Inc., 890 F.3d 1369 (Fed. Cir. 2018).
Req. Reh’g 4–7. Appellant argues that
the citations provided by the Examiner and the Board to
Appellant’s as-filed [S]pecification do not constitute sufficient
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evidence under Berkheimer that the additional elements recited
in each of independent claims 1, [10], and [22], both
individually and in combination, were well-understood, routine,
and conventional to a skilled artisan at the time of Appellant’s
disclosure.
Id. at 3. Appellant asserts that the Decision improperly held “that virtually
all of claim 10 maps to the alleged abstract idea of ‘recommending items to
users in a marketplace based on a comparison of metrics associated with
other users,’ as stated by the Examiner in the Answer.” Id. at 6. And,
according to Appellant
multiple elements of claim 10 go beyond this alleged abstract
idea but were not analyzed by the Board as part of a search for
an inventive concept. For example, the goal of generating a
recommended item based on a comparison of metrics associated
with other users does not require “creating an online
marketplace sales profile for a seller,” “calculating a plurality of
metrics corresponding to . . . items . . . posted . . . by the seller,”
“identifying other sellers similar to the seller,” “assessing a
performance impact . . . on the plurality of metrics for the
seller,” or “automatically updating . . . listings based on an
acceptance by the seller of the recommendation.”
Id. More particularly, Appellant argues that “the cited portions of
Appellant’s [S]pecification do not include an express statement that the
claimed operations or the computer functions used to perform the claimed
operations were well-understood, routine, or conventional.” Id. at 4. As
best understood, Appellant asserts that the citations provided by the
Examiner and the Board do not constitute sufficient evidence that (i) the
claimed operations are well-understood, routine, or conventional and (ii) the
claimed computer functions are well-understood, routine, or conventional.
However, we are not persuaded by Appellant’s argument that the Board
relied on insufficient evidence in determining whether the claimed invention
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includes limitations, which are not well-understood, routine, and
conventional.
Initially, we note that Appellant’s argument is not persuasive, at least
because it is clear from Alice, that under step two of the Mayo/Alice
framework (i.e., step 2B), the elements of each claim are considered both
individually and “as an ordered combination” to determine whether the
additional elements, i.e., the elements other than the abstract idea itself,
“transform the nature of the claim” into a patent-eligible application. Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014); see also Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73
(2012)(Requiring that “a process that focuses upon the use of a natural law
also contain other elements or a combination of elements, sometimes
referred to as an ‘inventive concept,’ sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the natural law
itself.”)(Emphasis added). Stated differently, the inventive concept under
step two of the Mayo/Alice test cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims
ineligible because the only alleged “inventive concept” is the
abstract idea.

Berkheimer, 890 F.3d at 1374 (Moore, J., concurring); see also BSG Tech
LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290–91 (Fed. Cir. 2018) (“Our
precedent has consistently employed this same approach. If a claim’s only
‘inventive concept’ is the application of an abstract idea using conventional
and well-understood techniques, the claim has not been transformed into a
patent-eligible application of an abstract idea.”).
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In addressing independent claim 10, the Examiner asserts that each
claimed operation is an abstract claim element (see, e.g., Final Act. 14), and
Appellant does not dispute this characterization. As a result, the claimed
operations of creating a user profile, identifying other similar profiles,
assessing a performance impact, communicating a recommendation, and
automatically updating a listing (see Dec. 8), are not additional elements to
be considered under step two of the Mayo/Alice framework (i.e., step 2B).
Accordingly, we are not persuaded by Appellant’s assertion that the cited
portions of Appellant’s Specification do not include an express statement
that the claimed operations perform well-understood, routine, and
conventional functions because the claimed operations are abstract
operations under Prong One of Revised Step 2A.
With respect to Appellant’s second argument, we note that the
Office’s April 19, 2018 Memorandum to the Examining Corps from Deputy
Commissioner for Patent Examination Policy, Robert W. Bahr, entitled,
Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.),
expressly directs that an examiner may support the position that an
additional element (or combination of elements) is not well-understood,
routine or conventional with “[a] citation to an express statement in the
specification . . . that demonstrates the well-understood, routine,
conventional nature of the additional element(s).” See Berkheimer Memo 3.
In particular, the Berkheimer Memo provides, among other things, the
following guidance for formulating a rejection under Section 101:
A specification demonstrates the well-understood, routine,
conventional nature of additional elements when it describes the
additional elements . . .
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(1) as well-understood or routine or conventional (or an equivalent
term);
(2) as a commercially available product, or
(3) in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to
describe the particulars of such additional elements to satisfy 35
U.S.C. § 112(a).
Id. (paragraph reformatted and paragraph numbering added for emphasis).
Absent from Appellant’s Request is any acknowledgment or mention
of the second sentence of approach to number 1 of the Berkheimer Memo,
namely, that a Section 101 rejection can be supported by finding that the
specification demonstrates the well-understood, routine, conventional nature
of additional elements by describing them
as well-understood or routine or conventional (or an equivalent
term), as a commercially available product, or in a manner that
indicates that the additional elements are sufficiently well-
known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C.
§ 112(a).
Berkheimer Memo 3; see generally Req. Reh’g 3–4.
Here, the Examiner cites paragraphs 66–67 of Appellant’s
Specification as indicating that the additional computing elements, taken
either alone or in combination, do not result in anything more than a
conventional computer implementation. Ans. 11–12. More particularly,
paragraph 66 sets forth that
[t]he machine [for performing any one or more of the
methodologies discussed in the application] may be a personal
computer (PC), a tablet PC, a set-top box (STB), a Personal
Digital Assistant (PDA), a cellular telephone, a web appliance,
a network router, switch or bridge, or any machine capable of
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executing instructions (sequential or otherwise) that specify
actions to be taken by that machine.
Spec. ¶ 66. See also Ans. 11–12.
In light of the above, we are not persuaded by Appellant’s assertion
that the citations provided by the Examiner and the Board do not constitute
sufficient evidence that the computer functions are not well-understood,
routine, and conventional under Berkheimer. Specifically, Appellant’s
Specification indicates that the machine for performing the claimed
methodologies may be “any machine capable of executing instructions
(sequential or otherwise) that specify the actions to be taken by that
machine” (id.), and such disclosure, without more, constitutes an express
statement “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a).”
Berkheimer Memo 3.
Further, the Decision provided detailed analysis, including citations to
judicial decisions, in determining that the limitations of claim 10, considered
individually and as an ordered combination, comprise generic and
conventional functions that do not transform the claim into significantly
more than the abstract idea. Decision 16–17.
We also are not persuaded by Appellant’s argument that the present
claims are similar to those at issue in Amdocs (Israel) Limited v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). Req. Reh’g 6–7. In Amdocs,
the Federal Circuit held the claim patent-eligible because it entailed an
unconventional technological solution (enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases). The solution required arguably generic
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components, including network devices and “gatherers” which “gather”
information. However, the court concluded that the claim’s enhancing
limitation necessarily required that these generic components operate in an
unconventional manner to achieve an improvement in computer
functionality. Amdocs, 841 F.3d at 1300–01.
Appellant ostensibly maintains here that the present claims are
analogous to those in Amdocs because the claims recite a particular process
“for how the alleged abstract idea is accomplished and additional steps for
how the alleged abstract idea is applied (e.g., ‘automatically updating at least
a portion of the plurality of listings based on an acceptance by the seller of
the recommendation.’).” Req. Reh’g 6. However, Appellant does not
adequately explain how, and we fail to see how, the Federal Circuit’s ruling
in Amdocs impacts the patent-eligibility of the present claims. For example,
Appellant does not maintain that the present claims, like those in Amdocs,
achieve any improvement in computer functionality or that the operations
recited in the claims require that the claimed processor operate in an
unconventional manner. Also, as described above, we find that the
additional elements (or combination of elements), recited by independent
claim 10, are well-understood, routine, and conventional. See Dec. 8–17.
Dependent Claims
Appellant asserts that “neither the Examiner nor the Board provided
sufficient evidence under Berkheimer that the additional elements recited in
the dependent claims were well-understood, routine, or conventional.” Req.
Reh’g 9. More particularly, Appellant asserts that claims 2, 11, and 23 recite
additional elements that “should have been considered by both the Examiner
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and the Board in the search for an inventive concept at Alice/Mayo step
two.” Id. at 8.3 Appellant’s argument is not persuasive.
The difficulty with Appellant’s argument is that Appellant never
argued the separate patent-eligibility of dependent claims 2, 11, and 23.
Instead, Appellant simply stated that “the Examiner made further
unsupported assertions that each of the dependent claims is also directed to
unpatentable subject matter.” Appeal Br. 22; see also Reply Br. 4 (citing
Appeal Br. 22)(“[T]he Examiner’s analysis was deficient with respect to the
dependent claims as well as the independent claims.”). Even so, in the Final
Action the Examiner stated that
[t]he dependent claims have the same deficiencies as their
parent claims as being directed towards an abstract idea, and
none of the claimed features of the dependent claims further
limit the claimed invention in such a way as to direct the
claimed invention to statutory subject matter.
Final Act. 15–16. And, in the Examiner’s Answer, the Examiner stated that
the subject matter of dependent claim 11 “is merely a further recitation and
repetition of the steps involved in performing the abstract idea of
recommending items (i.e. applications) to users (i.e. sellers) in a marketplace
based on a comparison of metrics associated with other users (i.e. sellers) by
performing broadly recited mathematical calculations and comparisons.”
Ans. 4–5.
2019 Revised Guidance
Appellant first alleges that “the Board’s reliance on the 2019 PEG
constitutes an undesignated new ground of rejection to which App[ellant] is

3 We note that claims 2, 11, and 23 recite substantially similar subject
matter.
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entitled to respond and receive reconsideration by the Board.” Req. Reh’g 9.
We cannot agree.
The 2019 Revised Guidance “applies to all applications, and to all
patents resulting from applications, filed before, on, or after January 7,
2019,” which includes the present application. 2019 Revised Guidance, 84
Fed. Reg. at 50. The 2019 Revised Guidance, however, “does not constitute
substantive rulemaking and does not have the force and effect of law.” Id.
at 51. The guidance was developed as a tool for internal USPTO
management; but, it “does not create any right or benefit, substantive or
procedural, enforceable by any party against the USPTO”; and although
USPTO personnel are “expected to follow the guidance,” failure to do so “is
not, in itself, a proper basis for either an appeal or a petition.” Id.
Accordingly, USPTO personnel are expected to follow the Mayo/Alice two-
step framework.
The Decision sets forth that
[i]n rejecting the pending claims under 35 U.S.C. § 101,
the Examiner analyzes the claims using the Mayo/Alice two-
step framework (see Final Act. 10–18; see also Ans. 5–13).
Here, the Examiner maintains the claims are directed to
“recommending items to users in a marketplace based on a
comparison of metrics associated with other users” (Ans. 2; see
also Final Act. 11), which the Examiner considers to be an
abstract idea, inasmuch as it may be characterized as being
related to “certain methods of organizing human activity (e.g.
advertising, marketing, and sales activities or behaviors)” (Final
Act. 13). The Examiner further determines that the additional
elements of the claims, taken alone and as an ordered
combination, do not ensure that the claims amount to
significantly more than the abstract idea (see id. at 15–16). The
Examiner, thus, has clearly followed the two-part framework
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specified by the Supreme Court in Mayo/Alice consistent with
Office guidelines.
Dec. 6. The Decision similarly concludes that
independent claim 10 amounts to nothing significantly more
than an instruction to apply the abstract idea of “recommending
items to users in a marketplace based on a comparison of
metrics associated with other users” (Final Act. 11; Ans. 2),
which under our precedents, is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 134
S. Ct. at 2360.
Dec. 16–17. In light of the above, both the Examiner and the Decision
follow the two-part framework specified by the Supreme Court in
Mayo/Alice in concluding that the claims are directed to an abstract idea
without significantly more. Accordingly, the Board’s reliance on the 2019
PEG does not constitute an undesignated new ground of rejection.
Regarding Prong One of Revised Step 2A, Appellant asserts that the
alleged abstract idea identified by the Board “does not relate to any of the
cases cited in the 2019 PEG as providing a basis for the enumerated
grouping of ‘certain methods of organizing human activity,’ including those
related to ‘advertising’ or ‘marketing’.” Req. Reh’g 9–10. We cannot
agree.
In applying Step 2A, Prong One of the Guidance, the Decision states
that “the Examiner’s characterization of claim 10 is, in our view, fully
consistent with the Specification, including the claim language.” Dec. 7.
More particularly, the Decision sets forth that
when viewed through the lens of the 2019 Revised Guidance,
the Examiner’s analysis depicts the claimed subject matter as
one of the ineligible “certain methods of organizing human
activity” including at least advertising and marketing (Final
Act. 13), and as such, an abstract idea under Prong One of
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Revised Step 2A. See 2019 Revised Guidance, 84 Fed. Reg. at
52.
Dec. 9.
Accordingly, the Board properly considered and determined that
claim 10 falls within one of the enumerated sub-groupings of “certain
methods of organizing human activity,” namely “commercial or legal
interactions,” which the 2019 Revised Guidance explicitly describes as
“including . . . advertising, marketing or sales activities.” See 2019 Revised
Guidance, 84 Fed. Reg. at 52.
Regarding Prong Two of Revised Step 2A, Appellant first asserts that
“as in Core Wireless, the claims at issue in this case are, in fact, integrated
into a practical application and include an improvement to the functioning of
a computer.” Req. Reh’g 10. Initially, we note that Applicant’s arguments
with respect to Core Wireless and Prong Two of Revised Step 2A are
addressed above. As a result, we are not persuaded that the additional
elements, when considered in view of Core Wireless, integrate the abstract
idea into a practical application for the same reasons as stated above.
Appellant further asserts that, under Cellspin Soft, Inc. v. Fitbit, Inc.,
927 F.3d 1306 (Fed. Cir. 2019), “it was improper for the Board to discount
‘attorney argument’ to the extent it set forth a plausible and specific
allegation of inventiveness.” Req. Reh’g 11. We do not agree. Initially, we
note that Appellant’s reliance on Cellspin is misplaced. Specifically, the
Cellspin decision is limited to addressing evidentiary standards with respect
to an omnibus motion to dismiss under Federal Rule of Civil Procedure
12(b)(6).
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The Court in Cellspin set forth that
[w]hile we do not read Aatrix to say that any allegation about
inventiveness, wholly divorced from the claims or the
specification, defeats a motion to dismiss, plausible and specific
factual allegations that aspects of the claims are inventive are
sufficient. As long as what makes the claims inventive is
recited by the claims, the specification need not expressly list
all the reasons why this claimed structure is unconventional.
Cellspin, 927 F.3d at 1317. Although the Court in Cellspin held that the
district court erred by not accepting well-pleaded allegations as true, such
allegations, under Cellspin, constitute evidence specifically with respect to
an omnibus motion to dismiss under Federal Rule of Civil Procedure
12(b)(6). However, even if Cellspin were not factually limited to an
omnibus motion to dismiss under Federal Rule of Civil Procedure 12(b)(6),
Appellant’s previous arguments were not wholly discounted. Instead,
Appellant’s remarks were considered in view of the record, as a whole.
Accordingly, we are not persuaded by Appellant’s assertion.
Appellant next asserts that, in view of the 2019 PEG, “automatically
updating at least a portion of the plurality of listings based on an acceptance
by the seller of the recommendation” is a sufficient practical application.
Req. Reh’g 11. More particularly, Appellant argues that the claims “are
integrated into a practical application that includes a specific manner of
invoking functionality of recommended applications, which results in an
improvement over prior art systems (e.g., reducing the burden on both
sellers and application writers).” Id. We do not agree.
The Examiner identifies the step of “automatically updating at least a
portion of the plurality of listings based on an acceptance by the seller of the
recommendation” as an abstract claim element (see Final Act. 14), and
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Appellant does not dispute this characterization. As a result, the claimed
operations associated with “automatically updating” are not additional
elements to be considered under Prong Two of Revised Step 2A and cannot
integrate the abstract idea into a practical application.
Even if the claimed limitation were considered under Prong Two of
Revised Step 2A, Appellant does not allege an improvement in technology
or any other meaningful limitation. Instead, Appellant asserts that the
claimed improvement reduces the burden on both sellers and application
writers. Req. Reh’g 11. However, we find the improvement identified by
Appellant is simply “an improvement in a business practice for which
generic computer components are used in their ordinary capacity” rather
than a technological improvement. Dec. 14. Accordingly, we are not
persuaded by Appellant’s assertion.
Regarding Step 2B, Appellant reasserts that the claims “recite more
than performance of well-understood, routine, and conventional activities, as
discussed above, and there has not been sufficient evidence provided to the
contrary.” Req. Reh’g 12. We note that Appellant’s arguments with respect
to Berkheimer and Step 2B are addressed above. As a result, we are not
persuaded that the additional elements amount to significantly more than the
abstract idea for the same reasons as stated above.
De Novo Review
Appellant last argues that the Board misapprehended the law by
affording “deference to the Examiner with respect to the Examiner’s subject
matter eligibility determination.” Req. Reh’g 12–13. However, in making
our determination, we considered the findings of fact and conclusions made
by the Examiner and, if not made clear in our Decision, adopted as our own,
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the Examiner’s findings of facts and conclusions as set forth in the Answer
and Final Action from which this appeal was taken. And, after considering
the evidence provided by the Examiner in light of Appellant’s arguments,
we found a preponderance of the evidence supported the Examiner’s
findings that the claims are directed to an abstract idea without including
additional elements amounting to significantly more than the abstract idea,
and agreed with the Examiner’s ultimate conclusion of patent ineligibility
with regard to claim 10 and the remaining claims.
For the forgoing reasons, we conclude that Appellant has failed to
show that the Board misapprehended or overlooked points raised in the
appeal or that the Decision to affirm the Examiner was erroneous.
CONCLUSION
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1–5, 7–14,
16–18, 22,
23
101 Eligibility 1–5, 7–14,
16–18, 22,
23

Final Outcome of Appeal After Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–14,
16–18, 22,
23
101 Eligibility 1–5, 7–14,
16–18, 22,
23

Overall
Outcome
1–5, 7–14,
16–18, 22,
23

Appeal 2017-008838
Application 12/416,051

19

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).
DENIED