Horia James. Hristu

Patent Trials and Appeals Board

Oct 9, 2019

14220044 - (D) (P.T.A.B. Oct. 9, 2019)

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.
14/220,044 03/19/2014 Horia James Hristu 090204-0899228
(073600US)
5907
107508 7590 10/09/2019
Kilpatrick Townsend & Stockton LLP/ Amazon, Inc
Mailstop: IP Docketing 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
UBER, NATHAN C
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
10/09/2019 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):
ATI-Patents@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HORIA JAMES HRISTU
Appeal 2018-008506
Application 14/220,044
Technology Center 3600
Before MICHAEL J. STRAUSS, JEREMY J. CURCURI, and
MICHAEL M. BARRY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–13 and 16–25. Non-Final Act. 1.

1 We refer to the Specification, filed March 19, 2014 (“Spec.”); Non-Final
Office Action, mailed November 9, 2017 (“Non-Final Act.”); Appeal Brief,
filed March 28, 2018 (“Appeal Br.”); Examiner’s Answer, mailed July 10,
2018 (“Ans.”); and Reply Brief, filed August 27, 2018 (“Reply Br.”).
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Amazon
Technologies, Inc. Appeal Br. 1.
Appeal 2018-008506
Application 14/220,044
2
Claims 14 and 15 are canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to intelligent fulfillment of orders placed in an
electronic marketplace. Abstr. Claim 1, reproduced below with labels
added, is illustrative of the claimed subject matter:
1. A method, comprising:
[(i)] receiving, by a computing system, order data
comprising information about an order from a user, the order data
indicating a first size of an apparel item to be delivered to a
pickup location to enable access and pickup by the user;
[(ii)] receiving user data from a user data store, the user
data comprising information about the user, the user data
including information corresponding to a purchase and return
history of the user;
[(iii)] providing instructions that cause fulfillment of a first
apparel item having the first size of the apparel item to the pickup
location based in part on the order data;
[(iv)] qualifying the user as a candidate to receive
additional items at least in part by determining, using the
purchase and return history of the user, that a percentage of items
returned by the user crosses a threshold;
[(v)] determining whether the order qualifies for provision
of a second apparel item having an additional size of the apparel
item at least in part based on the user qualifying as a candidate to
receive additional items;
[(vi)] when the order qualifies for provision of the
additional size of the apparel item, selecting the additional size
of the apparel item based on the purchase and return history; and
[(vii)] when the order qualifies for provision of the
additional size of the apparel item, providing instructions that
cause fulfillment of the second apparel item having the additional
size of the apparel item to the pickup location.
Appeal 2018-008506
Application 14/220,044
3
REJECTION
The Examiner rejected claims 1–13 and 16–25 under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. Non-Final Act. 2–6.
ANALYSIS
Appellant’s contentions are unpersuasive of reversible Examiner error.
We adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Non-Final Act. 2–6) and (2)
the reasons set forth by the Examiner in the Examiner’s Answer in response
to Appellant’s Appeal Brief (Ans. 3–9) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. The U.S. Supreme Court, however, has “long held
that this provision contains an important implicit exception” that “[l]aws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question of law,
based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018).
To determine patentable subject matter, we undertake a two-part test.
“First, we determine whether the claims at issue are directed to one of those
patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).
“The inquiry often is whether the claims are directed to ‘a specific means or
Appeal 2018-008506
Application 14/220,044
4
method’ for improving technology or whether they are simply directed to an
abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant 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), and “describing the
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.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, “the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). The Court describes the second step as a search for “an
‘inventive concept’– i.e., an element or combination of elements that is
‘sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself.’” Id. (quoting Mayo, 566
U.S. at 72–73).
The Office recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that guidance, we look to
whether the claim recites
Appeal 2018-008506
Application 14/220,044
5
(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
(c) mental processes, such as an observation or evaluation
performed in the human mind;
(2) any additional limitations that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h));
and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)).
See Guidance 52, 55, 56. Under the Guidance, if the claim does not recite a
judicial exception, then it is eligible under § 101, and no further analysis is
necessary. Id. at 54. Similarly, under the Guidance, “if the claim as a whole
integrates the recited judicial exception into a practical application of that
exception,” then no further analysis is necessary. Id. at 53, 54.
Prima Facie Case
Appellant contends the rejection fails to set forth a prima facie case of
patent ineligibility because “[t]he Examiner’s rationale for asserting that the
claims are directed to a judicial exception impermissibly oversimplifies the
claims and does not explain why the claims are allegedly directed to the
judicial exception.” Appeal Br. 9. Appellant argues the Examiner fails to
demonstrate why the rejected claims are similar to those found ineligible in
the cases cited by the Examiner. Id.
Appeal 2018-008506
Application 14/220,044
6
The Examiner responds, citing to In re Jung3 in support of the
adequacy of the rejection. Ans. 3. The Examiner explains, at step one of the
Alice/Mayo analysis, “the Examiner determines that the claims describe
providing items to a customer through the collection and use/analysis of
data.” Id. at 4. Contrary to Appellant’s argued position (Appeal Br. 10–11),
the Examiner determines these activities are considered to be (i) sales
activities or behaviors or (ii) managing relationships or transactions between
people. Ans. 4. The Examiner further determines the claims describe “the
relationship between a user who orders and [sic] item and an entity that
fulfills that order would be appreciated as an economic one” is considered to
be an abstract concept. Id. (citing Non-Final Act. 3–4). “Thus, the claim
invokes [] multiple categories of previously identified abstract [] ideas:
organizing human activity; manipulating economic relationships; collecting
data, analyzing that data, and outputting the results; as well as human mental
work.” Id. Further addressing Appellant’s contention, the Examiner
explains, under step 2 of the Alice/Mayo framework, “the computer system
and the user data store [recited by the claims], alone or in combination, fail[]
to supply an inventive concept inasmuch as they merely provide a technical
environment for implementation of the abstract idea.” Id.
Appellant replies, arguing the Examiner’s response fails to address
Appellant’s contention. Reply Br. 3. In particular, Appellant again argues
the rejection is deficient for failure to “demonstrate why the claims at issue
are similar to those of the cited cases despite being required to do so.” Id.
Appellant’s contention the Examiner has failed to set forth a prima
facie case of ineligibility is unpersuasive. The Federal Circuit has

3 In re Jung, 637 F.3d 1356 (Fed. Cir. 2011).
Appeal 2018-008506
Application 14/220,044
7
repeatedly noted “the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production.” Hyatt v. Dudas,
492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The court has held that the Office 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.” Jung, 637 F.3d at 1362. All that is required of the Office
is that it set forth the statutory basis of the rejection in a sufficiently
articulate and informative manner as to meet the notice requirement of 35
U.S.C. § 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir.
1990) (Noting that [35 U.S.C.] § 132 “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner analyzed the claims using the Alice/Mayo two-step framework,
consistent with the then available guidance set forth in the USPTO’s Interim
Guidance. Non-Final Act. 3–4; Ans. 3–7. Specifically, the Examiner
notified Appellant that the claims’ “recited operations could be performed
by a sales person, either mentally or with pen and paper, further
underscoring the Examiner’s determination that the claims are directed to an
abstract concept.” Non-Final Act. 4. The Examiner further explained the
claims recite concepts that fall into additional categories of activities that are
certain methods of organizing human activity determined to be abstract
ideas. Ans. 3–7. Thus, we disagree the Examiner’s statement of the
Appeal 2018-008506
Application 14/220,044
8
rejection is so uninformative as to prevent Appellant from responding.
Furthermore, the fact that Appellant includes seven pages in the Appeal
Brief arguing deficiencies and errors in the Examiner’s determination under
Step 2A of the analysis belies a conclusion that Appellant has not been put
on notice of the reasons for the rejection. Accordingly, we conclude the
rejection is sufficient to satisfy the notice requirement of 35 U.S.C. § 132.
USPTO Step 2A, Prong 1
According to the Examiner the claims recite a process that qualifies as
an abstract idea in which a computer is invoked merely as a tool. Non-Final
Act. 3 (citing Enfish4).
The limitations, which embrace particular steps and
corresponding software instructions, do no more than break that
concept into an ordered combination of constituent steps, which
could be performed by [a] sales person. See Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). The concept
described in the claims resembles others found abstract by the
courts inasmuch [it] involves manipulation of economic
relationships and performance of a financial transaction. See
Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (surveying
previous opinions that found “claims directed to the mere
formation and manipulation of economic relations” abstract); see
also buySAFE v. Google,[5] Accenture Global Servs.,[6]

4 Enfish, 822 F.3d at 1335–36.
5 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014)
(claims directed to creating a contractual relationship—a “‘transaction
performance guaranty’” deemed abstract).
6 Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d
1336, 1344–45 (Fed. Cir. 2013) (finding ineligible claims directed to
generating rule-based tasks for processing an insurance claim).
Appeal 2018-008506
Application 14/220,044
9
Dealertrack,[7] Mortgage Grader,[8] Credit Acceptance Corp.[9]
Id. at 3–4. The Examiner further analogizes the claims to those found
ineligible in Electric Power Group,10 finding the recited “‘receiving’
limitations of are data collection operations, whereas ‘qualifying,’
‘determining’ and ‘selecting’ steps are, at best, data analysis or recognition
operations.” Id. at 4. According to the Examiner the claims recited stesp
that “could be performed by a sales person, i.e., are mental processes. Id.
(citing Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir.
2016)).
Appellant contends “[t]he Examiner’s rationale for asserting that the
claims are directed to a judicial exception impermissibly oversimplifies the
claims and does not explain why the claims are allegedly directed to the
judicial exception.” Appeal Br. 9. Appellant argues the Examiner fails to
demonstrate why the rejected claims are similar to those found ineligible in
the cases cited by the Examiner. Id. Appellant disagrees the claims recite
method of organizing human activity, arguing “this category is not intended

7 Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (claims
directed to abstract idea of processing loan information through
a clearinghouse).
8 Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324
(Fed. Cir. 2016) (claims directed to the abstract idea of collecting credit
information to generate a credit grading to facilitate anonymous loan
shopping).
9 Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1047 (Fed.
Cir. 2017) (processing an application for consumer financing of a purchase
deemed abstract even though claim are limited to “real-world applications”).
10 Elec. Power Grp. LLC v. Alstom, 830 F.3d 1350, 1353–54 (Fed. Cir.
2016) (collecting information and “analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, [are]
essentially mental processes within the abstract-idea category.”).
Appeal 2018-008506
Application 14/220,044
10
to apply to the use of machines, e.g., computing machines and automated
systems employing them.” Id. at 10. According to Appellant, “the claims at
issue are directed generally to systems and methods for managing data-
driven automated logistics. Therefore, the claims are clearly far afield from
the types of activities considered by the courts to define, ‘methods of
organizing human activity.’” Id. at 11.
The Examiner responds, finding “[t]he claims describe providing
items to a customer by collecting and using/analyzing data, e.g. order data
and user data. The provision of items by collecting and analyzing data to
that end are undoubtedly sales activities, as well as practices for
manipulating a relationship, particularly an economic one.” Ans. 5.
Appellant’s contentions are unpersuasive. Firstly, we disagree the
Examiner’s characterization of the claims is an oversimplification. Reply
Br. 2. Our reviewing court recognizes that “[a]n abstract idea can generally
be described at different levels of abstraction.” Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case
does not, “impact the patentability analysis.” Id. at 1241. Further,
“[a]n abstract idea can generally be described at different levels of
abstraction. . . . The Board’s slight revision of its abstract idea analysis does
not impact the patentability analysis.” Id. Moreover, merely combining
several abstract ideas does not render the combination any less abstract.
RecogniCorp, 855 F.3d at 1327 (“Adding one abstract idea (math) to
another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas). Thus, the patentability analysis in this Appeal does not
Appeal 2018-008506
Application 14/220,044
11
turn on exactly how various limitations are characterized as being abstract,
i.e., as either an abstract “mental processes,” or “certain methods of
organizing human activity.”
Claim 1 recites (i) receiving order data including a size of an apparel
item to be delivered; (ii) receiving user data including information
corresponding to a purchase and return history of the user; (iii) providing
instructions that cause fulfillment of a first apparel item having the first size;
(iv) qualifying the user as a candidate to receive additional items using the
purchase and return history of the user that a percentage of items returned by
the user crosses a threshold; (v) determining whether the order qualifies for
provision of a second apparel item having an additional size; (vi) selecting
the additional size; and (vii) providing instructions that cause fulfillment of
the second apparel item. All of these functions can be performed in the
human mind or by a human using a pen and paper. The claims require
receiving information, making mental determinations based on that
information, and communicating instructions. Accordingly, these functions
are similar to the mental processes in CyberSource and Synopsys. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011) (finding the step of “obtaining information about other
transactions” can be performed “by a human who simply reads records of
[those] transactions from a preexisting database,” and concluding “[a]ll of
claim 3’s method steps can be performed in the human mind, or by a human
using a pen and paper. . . . Such a method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101.”); Synopsys, 839 F.3d at 1146 (“[W]e continue to ‘treat[ ] analyzing
information by steps people go through in their minds, or by mathematical
Appeal 2018-008506
Application 14/220,044
12
algorithms, without more, as essentially mental processes within the
abstract-idea category.”’) (citation omitted). Thus, we determine claim 1
recites mental processes including observation (i.e., receiving information),
evaluation of information (i.e., qualifying a user and determining whether an
order qualifies for provision of a second apparel item) and judgment
(selecting the additional size of apparel) in addition to processes that require,
at most, only the use of pen and paper (e.g., receiving information and
providing instructions).
We further agree with the Examiner that the recited functions are
those performed by a sales person (Non-Final Act. 3–5) and are categorized
as sales activities or behaviors (Ans. 4–5) that are types of commercial or
legal interactions and, therefore, certain methods of organizing human
activity. See MPEP § 2106.04(a)(2)(II)(B). For example, a sales person
stationed outside a fitting room might obtain a requested size and an
alternative size of clothing for a customer to try on upon observing that the
clothing previously tried on by the customer did not fit properly or knowing
that a particular line of clothing runs small or large. This characterization of
the claims is consistent with Appellant’s disclosure:
Embodiments herein are directed to the fulfillment of orders for
items via an electronic marketplace. Specifically, in response to
an order for an item, an electronic marketplace fulfills an order
by combining the item and an additional item or items. The
additional item represents an item that is similar to the requested
item and that is believed to be what would be requested if the
user returns the originally-requested item. The additional item
can be, for example, a variation of the same item, with the
additional item being different in size, color, or another feature.
For example, apparel items sometimes have inconsistent sizing
between brands and models. When fulfilling an order for such
an apparel item, the system herein can provide an additional size
Appeal 2018-008506
Application 14/220,044
13
of the same item, with the additional size being larger or smaller,
or narrower or wider, as part of the same fulfillment. The
customer can try both of the shipped items and keep the one that
fits best.
Spec. ¶ 14. Thus, we determine the claims include limitations that,
individually and in combination, are (i) mental processes and (ii) sales
activities, i.e., commercial or legal interactions that are certain methods of
organizing human activity. Both mental processes and certain method of
organizing human activity are abstract ideas. See Guidance 52.
We also disagree the Examiner failed to explain why the claims are
directed to a judicial exception. Appeal Br. 9. Procedurally, we note
“[p]atent eligibility under § 101 presents an issue of law.” Accenture Glob.,
728 F.3d at 1340. There is no requirement that an examiner cite evidentiary
support to conclude that a claim is directed to a patent-ineligible concept,
such as an abstract idea.
We further disagree with Appellant substantively. In particular, the
Examiner’s reasoning discussed above is persuasive of a determination that
the claims recite certain methods of organizing human activity, i.e.,
commercial or legal interactions including sales activities or behaviors
which are considered to be abstract concepts. See Non-Final Act. 3–5; Ans.
4–7. We are also unpersuaded by Appellant’s contention the Examiner fails
to adequately explain why the claims are similar to those found ineligible in
prior court decisions. Appeal Br. 10. The Examiner cites to several relevant
cases (Non-Final Act. 3–4; Ans. 5–6) including Ultramercial and Content
Extraction: “Ultramerical was cited as example of claims drawn to sales
activities or manipulating an economic relationship found to be abstract . . .
[a]nd Content Extraction was cited because the Federal Court notes that it
Appeal 2018-008506
Application 14/220,044
14
has found claims directed to the manipulation of economic or relations to
fall in the abstract category.” Ans. 5 (citing Non-Final Act. 3–4;
Ultramercial, 772 F.3d at 715; Content Extraction, 776 F.3d at 1347).
In addition, we find instructive the Examiner’s citation to the Federal
Circuit’s decision in Credit Acceptance. See Non-Final Act. 4. In that case
the Court addressed a claim directed to “a system for maintaining a database
of information about the items in a dealer’s inventory, obtaining financial
information about a customer from a user, combining these two sources of
information to create a financing package for each of the inventoried items,
and presenting the financing packages to the user.” Credit Acceptance, 859
F.3d at 1054. The Federal Circuit found the claim directed to an abstract
idea because it focused on an improvement to the automobile purchasing
process which, although different from the process claimed in Alice, had “no
meaningful distinction between this type of financial industry practice and
the ‘the concept of intermediated settlement’ held to be abstract in Alice, or
the ‘basic concept of hedging’ held to be abstract in Bilski v. Kappos.” Id.
(citation omitted).
For the reasons discussed above, we conclude claim 1 includes
activities that are certain methods of organizing human activity and mental
processes, both of which are abstract ideas. We therefore proceed to Prong 2
to determine whether the claims are “directed to” the judicial exception, or
whether the judicial exception is integrated into a practical application.
USPTO Step 2A, Prong 2
The Examiner finds the claims are directed to the concept of
providing items to a customer rather than to solving a technological
problem. Non-Final Act. 4–5. “[T]he claims describe [a] method for
Appeal 2018-008506
Application 14/220,044
15
providing items with a generic computer system and data store, rather than a
specific asserted improvement to the way computers operate.” Id. at 4
(distinguishing the claims over Enfish and McRO “wherein the claims
embraced specific improvements in computer technology”). The Examiner
further distinguishes the claims over those found eligible in DDR11 wherein
the claims “embraced a technical solution to a technical problem, namely a
hybrid web page that the merged content of third party merchant with that of
an identified host website. Unlike the claims in the DDR, the instant claims
are directed to the non-technical problem providing items to customer.” Id.
at 5. According to the Examiner “[a]side from the limitations delineating the
abstract concept, [Appellant’s] claims call for performance of some
components of the abstract idea ‘by a computer system’ and with ‘user data
store’ as a source of information.” Id. (emphasis omitted).
Appellant contends the Examiner fails to provide a prima facie case
that the claims are not directed to significantly more than the abstract idea.
Appeal Br. 16. Appellant argues “[t]he claimed features are completed by a
computing system, not a human. In the context of data-driven automated
fulfillment, such systems are automated precisely because the volume of
data exceeds what can be considered or processed by hand.” Id. Appellant
disagrees Enfish and McRO do not apply, arguing “the claims at issue
therein ‘embraced specific improvements in computer technology.’” Id. at
14. In particular, Appellant argues “[s]imilar to McRO, [Appellant’s] claim
1 clearly ‘uses the limited rules in a process specifically designed to achieve
an improved technological result in conventional industry practice.’” Id. at
15 (quoting McRO). Appellant further argues, similar to the situation in

11 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
Appeal 2018-008506
Application 14/220,044
16
BASCOM,12 the claims do not preempt all ways of providing items to a
customer through the collection and use of order data and the customer’s
profile data. Id. at 18–19.
The Examiner responds:
Appellant . . . fails to identify what that “improved technological
result” is. The claims describe the provision of items to
customers by collecting data, analyzing that data, and outputting
results. Claim 1 introduces “a computing system” in the first
limitation, and nothing more. Appellant does not point to, nor
does the Examiner perceive, any portion of the claim that details
an improvement the functioning of the computer. Compare
Enfish, 822 F. 3d at 1335-36. And even, if the claims involve
“limited rules,” those rules facilitate item fulfilment, rather than
improve an existing technological process. Compare McRO, 837
F. 3d. at 1313-14 (improving the display of “lip synchronization
and facial expressions” in computer animation)[.]
Ans. 7. Furthermore, rather than address a technological problem as in DDR
and BASCOM, the Examiner finds the computer system and user data store
“merely provide a technical environment for implementation of the abstract
idea.” Id. at 7–8.
Appellant’s contentions are unpersuasive of reversible Examiner
error. Appellant fails to identify and explain why any particular claim
element or combination of elements constitutes significantly more than the
underlying concept of providing items to a customer through the collection
and use of customer profile information (i.e., purchase and return history of
the user)and order data (i.e., size of an item of apparel) (see Non-Final Act.
3) recited by the claims. Appellant’s generalized allegations are insufficient

12 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
Appeal 2018-008506
Application 14/220,044
17
standing alone. Based on our review of claim 1 and in the absence of
sufficient particularized argument, we do not find any limitations
constituting significantly more.
Instead of providing a technical solution to a technical problem, the
claims broadly recite functionality implementing the concept of providing
items to a customer through the collection and use of a customer profile and
order data. We are unpersuaded by Appellant’s argument that claim 1 is a
technological improvement because, absent automation, “the volume of data
exceeds what can be considered or processed by hand.” Appeal Br. 16.
Rather than a technological improvement, the claim merely employs a
computer to fulfill customers apparel orders, i.e., the processor simply
performs more efficiently what could otherwise be accomplished manually.
See Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687
F.3d 1266, 1275 (Fed. Cir. 2012).
We further agree with the Examiner the decisions in Enfish, McRO,
and BASCOM do not compel a different result for the present claims. In the
Enfish decision (see Appeal Br. 14), the Federal Circuit relied on the
distinction made in Alice between improvements to computer functionality
and uses of existing computers as tools in aid of processes focused on
“abstract ideas.” See Enfish, 822 F.3d at 1335–36; see also Alice, 573 U.S.
at 222. The present case is different from Enfish because the focus of the
claims here is not on an improvement in computers as tools or upon an
innovative way to use computers or other devices; instead, the claims are
directed to a sales or marketing activity or behavior uses generic computer
equipment as tools.
Appeal 2018-008506
Application 14/220,044
18
Addressing McRO (see Appeal Br. 14–15), the claims therein recited
a “specific . . . improvement in computer animation” using “unconventional
rules that relate[d] sub-sequences of phonemes, timings, and morph weight
sets.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1302–
03, 1307–08, 1314–15 (Fed. Cir. 2016). Moreover, it was not the mere
presence of unconventional rules in McRO that led to patent eligibility;
rather, it was that the rules were used “in a process specifically designed to
achieve an improved technological result.” Id. at 1316. Here, Appellant has
not shown how the claims achieve an improved technological result.
We are also not persuaded the claims are patent-eligible based on any
similarity with the subject matter determined to be patent-eligible in
BASCOM and DDR Holdings as argued. See Appeal Br. 18–19.
In BASCOM, the court determined that “an inventive concept can be found
in the non-conventional and non-generic arrangement of known,
conventional pieces.” BASCOM, 827 F.3d at 1350. In that case, the
installation of a filtering tool at a specific location, remote from the end
users, with customizable filtering features specific to each end user, provided
an inventive concept in that it gave the filtering tool both the benefits of a
filter on a local computer and the benefits of a filter on the ISP server. Id.
We find no analogous achievement of a technical improvement here. None
of the claimed steps have been shown to address a technological problem.
Accordingly, Appellant’s reliance on BASCOM is inapposite and, therefore,
unpersuasive of Examiner error.
Appellant’s reliance on DDR Holdings (Appeal Br. 16–18) is likewise
misplaced. See Ans. 8. In DDR Holdings the claims at issue involved “web
pages displays [with] at least one active link associated with a commerce
Appeal 2018-008506
Application 14/220,044
19
object associated with a buying opportunity of a selected one of a plurality
of merchants.” DDR Holdings, 773 F.3d at 1249. In determining that the
claims in DDR Holdings were not abstract, the court noted
these claims stand apart because they do 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. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks.
Id. at 1257.
Here, the problem does not specifically arise from a technology such
as computers or computer networks. Appellant asserts “the computerized
processing of user data and order data for automated logistical operations is
inherently, and clearly, technical in nature.” Appeal Br. 17–18. However,
Appellant fails to explain why automating a manual process of order
fulfillment addresses a technical problem or provides a technical solution.
Moreover, Appellant’s Specification discloses implementations using
“one or more service provider computers 108 [that] may . . . be any type of
computing device[] such as, but not limited to, a mobile phone, a smart
phone, a personal digital assistant (PDA), a laptop computer, a desktop
computer, a server computer, a thin-client device, a tablet PC, etc.” Spec.
¶ 27. Use of a general-purpose computer system supports a determination
the claimed invention does not improve technology, but is instead directed to
a result or effect that itself is the abstract idea that is merely invoked using
generic processes and machinery. See Enfish, 822 F.3d at 1335–36. Thus,
disclosure of a generic computer system does not save the claims from being
Appeal 2018-008506
Application 14/220,044
20
directed to an abstract idea under Step 1 or constitute an inventive concept
under Step 2 of the Alice/Mayo Framework.
For the reasons discussed, we agree with the Examiner the claims do
not include additional elements that are sufficient to amount to significantly
more than the judicial exception because the additional elements do not
effect an improvement to another technology, technical field, or to the
functioning of a computer itself. See MPEP §§ 2106.05(a). We further
determine claim 1 does not recite:
(i) an application of the abstract idea with, or by use of, a
particular machine;
(ii) a transformation or reduction of a particular article to a
different state or thing; or
(iii) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See id. §§ 2106.05(b), (c), (e)–(h). Instead, any improvement is to the
underlying idea of providing items to a customer by collecting and
using/analyzing data. Thus, claim 1 does not integrate the judicial exception
into a practical application.
USPTO Step 2B
Finally, we agree with the Examiner’s determination that:
[T]he claims lack an “inventive concept” to transform the
abstract concept into eligible subject matter. Aside from the
limitations delineating the abstract concept, the claims call for
performance of some components of the abstract idea “by a
computer system” and with “user data store” as a source of
information. Those recitations in combination with the abstract
idea fail to pass muster at step two because merely reciting the
Appeal 2018-008506
Application 14/220,044
21
use of a generic computer or adding the words “apply it with a
computer” cannot convert a patent-ineligible abstract idea into a
patent-eligible invention.
Non-Final Act. 5.
We are not persuaded by Appellant’s contention “that the
computerized processing of user data and order data for automated logistical
operations is inherently, and clearly, technical in nature.” Appeal Br. 17–18.
As discussed above, Appellant fails to explain what technical problem is
addressed and/or solved using the claimed method.
We are also unpersuaded by Appellant’s argument presented for the
first time in the Reply Brief asserting “the claims presently at issue recite
specific limitations that are not well-understood, routine, or conventional in
the field, and adds unconventional steps that confine the claims to a
particular useful application, the claims are clearly patent eligible.” Reply
Br. 6 (emphasis omitted). Under the examination procedure published by
the USPTO on April 19, 2018, entitled “Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer
Memorandum”), there is a fact finding requirement for Examiners, as
applicable to rejections under § 101. Specifically, Examiners must provide
specific types of evidence to support a finding that claim elements (or
combinations of elements) are well-understood, routine, and conventional,
the Examiner finds “[t]he claims recite a computing system and a user data
store. The Appellant does not point to, nor does the Examiner see, anything
in the claim language of the Specification evidencing an unconventional
Appeal 2018-008506
Application 14/220,044
22
distribution of functionality within a network resulting in an improvement
performance of a computer itself.” Ans. 8.
The claims recite additional elements of (i) a computing system and
(ii) user data store. These elements include a generic computer (i.e., service
provider computer 108 described as “any type of computing device[]” (Spec.
¶ 27)) and storage (i.e., Data Store 230 described at a high level of generality
(Spec. ¶¶ 35–36) as storing information about costs and historical return
information for items). Appellant does not provide sufficient evidence or
technical reasoning to show these elements are not well-understood, routine,
and conventional. See page 3 of the Berkheimer Memorandum (“A
specification demonstrates the well-understood, routine, conventional nature
of additional elements . . . 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).”). Accordingly, we find the Examiner satisfied the burden of
establishing a prima facie case of ineligibility under § 101 by providing the
requisite factual support for limitations that are said to be well-understood,
routine, and conventional.
In conclusion, we determine that the limitations of claim 1 do not add
significantly more to the patent-ineligible abstract idea. Accordingly, the
claims are directed to (i) mental processes and (ii) certain methods
organizing human activity, i.e., sales activities or behaviors. Both mental
processes and certain methods of organizing human behavior are identified
in the Memorandum as abstract ideas. Furthermore, the claims do not recite
limitations that amount to significantly more than the abstract idea itself.
Accordingly, we sustain the rejection of independent claim 1 and, for the
Appeal 2018-008506
Application 14/220,044
23
same reasons, independent claims 10 and 19 under 35 U.S.C. § 101 together
with the rejection of dependent claims 2–9, 11–13, 16–18, and 20–25 which
are not argued separately with particularity.
DECISION
We affirm the Examiner’s decision to reject claims 1–13 and 16–25
under 35 U.S.C. § 101.

Claims
Rejected
Basis Affirmed Reversed
1–13, 16–25 35 U.S.C. § 101 1–13, 16–25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED