International Business Machines Corporation

Patent Trials and Appeals Board

Sep 1, 2020

2020002477 (P.T.A.B. Sep. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/747,425 06/23/2015 Xuan Chen CN920140224US2 6382
75584 7590 09/01/2020
IBM Corp. (WIP)
c/o Walder Intellectual Property Law, P.C.
445 Crestover Circle
Richardson, TX 75080
EXAMINER
PRASAD, NANCY N
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
09/01/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XUAN CHEN, MIAO HE, HAO JI, CHANG R. REN,
BING SHAO, QI M. TIAN, and XIAOBO ZHENG
____________

Appeal 2020-002477
Application 14/747,425
Technology Center 3600
____________

Before CAROLYN D. THOMAS, JAMES B. ARPIN, and
MICHAEL M. BARRY, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 2, 5–7, and 9. See Appeal Br.,
Claim App. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as International
Business Machines Corporation. Appeal Br. 2.
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The present invention relates generally to predicting and reducing
product return. See Spec., Abstract.
Independent claim 1, reproduced below, is representative of the
appealed claims:
1. A method, in a data processing system comprising
at least one processor and at least one memory coupled to the at
least one processor, the at least one memory comprising
instructions that are executed by the at least one processor to
cause the at least one processor to implement a product-return
prediction mechanism for predicting and reducing product
return, the method comprising:
responsive to a current product being purchased by
a customer via an e-commerce purchase, determining, by an e-
commerce order filtering module of the product-return
predication mechanism, whether the current product is a non-
regular product purchase, wherein the non-regular product
purchase is at least one of a product purchase for another person
as identified by utilization of a shipping address other than an
address recorded for the customer or a purchase of a product
that is the same as the current product within a predetermined
time frame;
filtering out, by the e-commerce order filtering
module, the non-regular product purchase thereby leaving a
historical regular product purchase;
responsive to the current product being the
historical regular product purchase, for the historical regular
product purchase associated with the current product purchase
by the customer:
generating, by a customer return probability
distribution generation engine of the product-return predication
mechanism, a distribution of a number of product purchases g1
(D, T), wherein D represents a deviation or distance of the
purchased product from a customer’s preference for the current
product and wherein T represents a time the customer spent
browsing a website for the current product; and
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generating, by the customer return probability
distribution generation engine, a distribution of a number of
product returns, g2 (D, T);
determining, by the customer return probability
distribution generation engine, a probability of return
(Prob(return)) of the current product as a function of the
number of product purchases (g1), the number of product
returns (g2), the distance D, and the browsing time T,
Prob(return) = f (g1, g2, D, T); and
responsive to the identified probability of return
being greater than a predetermined threshold, improving, by the
product-return predication mechanism, a product description
page associated with the current product in order to reduce
purchasing mistakes.

Appellant appeals the following rejection:
Claims 1, 2, 5–7, and 9 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter without
significantly more. Final Act. 2–7.
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

ANALYSIS
Rejection under § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with the framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”). For example, concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity,
such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski,
561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
The USPTO published revised guidance on the application of 35
U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”), updated by
USPTO, October 2019 Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf) (jointly referred to as “Revised Guidance”); see
also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942
(Oct. 18, 2019) (notifying the public of the availability of the October
update).
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Under the Revised Guidance “Step 2A,” the office first looks to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). 84 Fed. Reg. at
51–52, 55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, does the Office then
(pursuant to the Revised Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. 84 Fed. Reg. at 56.
Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?)
With respect to independent method claim 1, the Examiner determines
that the claims fall within the abstract idea grouping of “certain methods of
organizing human activity (business relations; relationships or interactions
between people” (Final Act. 3), “because the claims are related to predicting
individual customer returns” (id. at 4), which includes “fundamental
economic principles or practices . . . commercial or legal interactions . . . or
sales activities or behaviors.” Id.
For example, Appellant’s Specification discloses:
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As stated previously, it is desirable to minimize costs
associated with product returns. Thus, the illustrative
embodiments provides for automatically predicting a
probability of each post-purchase return based on historical
purchasing and returning data and product characteristics
associated with each customer. That is, actively predicting
customer post-purchase return on an individual customer level
is an issue that raises the costs associated with product returns.
Current customer return solutions mainly focus on customer
returning process management and lack the predictive
capability. Current solutions with predictive capability only
provide customer return prediction for products from a macro
level, which is not accurate when it comes down to each
individual purchase. Thus, the mechanisms of the illustrative
embodiments provide an integrated approach to predict
customers’ merchandise returns in E-commerce by predicting
customers’ tastes toward different products and predicting a
probability that a customer will return a previously bought
product. The mechanisms of the illustrative embodiments
provide a solution to post-purchase customer return prediction
by predicting a customer’s probability of returning the
purchased product on an individual level based on a taste
associated with the customer. Further, the mechanisms of the
illustrative embodiments dynamically update each probability
each time new data is available and thus, provide a dynamically
evolving approach to adapt to newly available data.
Spec. ¶ 17. In other words, the claimed invention seeks to minimize cost
associated with product returns by predicting a probability of each post-
purchase return based on taste towards different products, i.e., based on sales
activities and behaviors of the customer.
Claim 1 recites at least the following limitations: (1) “responsive to a
current product being purchased . . . determining . . . whether the current
product is a non-regular product purchase,” (2) “filtering out . . . the non-
regular product purchase thereby leaving a historical regular product
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purchase,” (3) “responsive to the current product being the historical regular
product purchase . . . generating a distribution of number of product
purchase g1 (D,T) . . . and generating . . . a distribution of number of product
returns, g2 (D,T),” (4) “determining . . . a probability of return,” and (5)
“responsive to the identified probability of return being greater than a
predetermined threshold, improving . . . a product description page
associated with the current product.” These limitations, under their broadest
reasonable interpretation, recite fundamental economic practice akin to sales
activities and behaviors because the limitations all recite operations that
would ordinarily take place in a commercial environment.
For example, at least the following decisions from our reviewing court
have found many types of fundamental commercial practices patent
ineligible: OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir.
2015), cert. denied, 136 S. Ct. 701 (mem) (2015) (offer-based price
optimization); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir.
2014) (transaction guaranty); Personalized Media Commc’ns, L.L.C. v.
Amazon.com Inc., 671 F. App’x 777 (mem) (Fed. Cir. 2016) (receiving
instructions for ordering).
Appellant contends that “a process in a computer system cannot be
performed within a human mind.” Id. In other words, Appellant contends
that the claimed invention cannot be performed in the human mind, i.e., a
mental process, because it is specific to computer technology. However, the
Examiner is not associating the claimed steps with “mental processes,” but
rather the abstract concept of “certain methods of organizing human activity,
particularly the sub-grouping of sales activities and behaviors.” See Final
Act. 4; Ans. 4.
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Appellant further contends that “[e]ven if the claims were solely
directed to predicting individual customer returns . . . this is not a ‘certain
method of organizing human activities.” Appeal Br. 9. We disagree with
Appellant. As highlighted above in Appellant’s Specification, the claimed
invention seeks to predict a post-purchase return of a product, i.e.,
commercial interactions and/or sales activities/behaviors, which falls under
the abstract category of certain methods of organizing human activities.
There is no requirement that each and every abstract grouping or sub-
grouping be present in the claims. It is enough for the Examiner to highlight
a single appropriate abstract idea, which the Examiner has done here. As
such, even if arguendo Appellant’s contentions regarding various other
groupings of abstract ideas (which the Examiner is not relying on) are
correct, Appellant has not persuasively shown that the claims do not include
limitations that fall squarely under the at least one concept which the
Examiner has explicitly relied upon, i.e., sales activities or behaviors.
Also, it is worth noting that the sub-groupings of certain method of
organizing human activity encompass both activity of a single person (for
example, a person following a set of instructions or a person signing a
contract online) and activity that involves multiple people (such as a
commercial interaction), and thus, certain activity between a person and a
computer (for example a method of anonymous loan shopping that a person
conducts using a mobile phone) may fall within the “certain methods of
organizing human activity” grouping. The number of people involved in the
activity is not dispositive as to whether a claim limitation falls within this
grouping. Instead, the determination should be based on whether the activity
itself falls within one of the sub-groupings.
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Additionally, we agree with the Examiner that the dependent claims
“inherit the deficiencies set forth with respect to the independent claims.”
Final Act. 5. Particularly, the dependent claims contain only limitations that
recite the identified abstract idea, and do not create any additional elements
beyond this abstract idea. Therefore, we disagree with the argument that the
Office Action fails to address all the dependent claims. See Appeal Br. 15.
Nor does Appellant persuasively explain how the elements in the dependent
claims recite more than the abstract ideas. See generally Appeal Br.
Therefore, for at least the aforementioned reasons, we agree with the
Examiner that claim 1 recites an abstract idea, which we conclude is “certain
methods of organizing human activity.”
Step 2A—Prong 2 (integration into Practical Application)2
Under the Revised Guidance, we now must determine if additional
elements in the claims integrate the judicial exception into a practical
application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Here, we consider the claim as a whole, i.e., “the limitations
containing the judicial exception as well as the additional elements in the
claim besides the judicial exception . . . evaluated together to determine
whether the claim integrates the judicial exception into a practical
application.” October 2019 Patent Eligibility Guidance Update, at 12,
available at http://www.uspto.gov/PatentEligibility.

2 We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
revised guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

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Beyond the abstract idea noted above in the Prong 1 analysis, claim 1
also recites several additional elements: “a data processing system,” “at least
one processor,” and “e-commerce order filtering module.” However, these
additional elements do not: (1) improve the functioning of a computer or
other technology; (2) are not applied with any particular machine (except for
a generic computer); (3) do not effect a transformation of a particular article
to a different state; and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h). In other words, the aforementioned additional
element (or combination of elements) recited in Appellant’s representative
claim 1 do not integrate the judicial exception into a practical application.
See Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong 2”).
Appellant contends that “the invention is specifically directed to
solving a problem in the computer arts with a technological computer
solution . . . an improved computer tool that operates to predict customer’s
merchandise returns.” Appeal Br. 5–6. Appellant further contends that the
claimed limitations “are operations that are only performed by a specifically
configured computing device and are operations that only a computer would
need to perform” (id. at 7), i.e., an operation rooted in computer technology.
We disagree with Appellant.
Although not argued in the Appeal Brief (see generally Appeal Br.),
we determine that the present invention is distinguishable from McRo. For
instance, in McRO, the Federal Circuit concluded that the claim, when
considered as a whole, was directed to a “technological improvement over
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the existing, manual 3-D animation techniques” through the “use of limited
rules specifically designed to achieve an improved technological result in
conventional industry practice.” McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Specifically, the Federal Circuit
found that the claimed rules allow computers to produce accurate and
realistic lip synchronization and facial expressions in animated characters
that previously could only be produced by human animators; and the rules
are limiting because they define morph weight sets as a function of phoneme
sub-sequences. Id. at 1313.
In contrast, here, Appellant has not identified any analogous
improvement attributable to the claimed invention. Although providing a
probability of return may improve a business process, it does not achieve an
improved technological result. We see no parallel between the limiting rules
described in McRO and the results-based rules recited in Appellant’s claims.
Also, contrary to Appellant’s invention, the claims at issue in Enfish
were directed to a specific type of data structure, i.e., a self-referential table
for a computer database, designed to improve the way a computer carries out
its basic functions of storing and retrieving data. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016). In rejecting a
§ 101 challenge, the court in Enfish held that “the plain focus of the claims is
on an improvement to computer functionality itself, not on economic or
other tasks for which a computer is used in its ordinary capacity.” Id. at
1336.
Here, Appellant does not point to anything in the claim that resembles
the inventive, self-referential data structure at issue in Enfish. Appellant also
does not direct our attention to anything in the Specification to indicate that
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the claimed invention provides an improvement in the computer’s technical
functionality.
Instead, the determined probability of return improves economic
tasks, i.e., minimizes costs associated with product returns. See Spec. ¶ 17.
That is, here the arguably innovative technique of the appealed claims is
inextricably part of the abstract idea of commercial interactions or sales
activities. Moreover, nothing in the claims, understood in light of the
Specification, requires anything other than an off-the-shelf, conventional
computer used for collecting and processing various information. Therefore,
unlike Enfish, the claims are directed not to improvement in computer
capabilities, but to the results of applying an abstract idea.
Furthermore, we note that the claimed step of “improving . . . a
product description page” represents nothing more than post-solution
activity. This post-solution step—even when performed over a computer
network via communications between a data processing system and e-
commerce order module—are insufficient to integrate the judicially
excepted steps into a practical application. See Alice, 573 U.S. at 224 (“use
of a computer to create electronic records, track multiple transactions, and
issue simultaneous instructions” is not an inventive concept).
The claimed method fails to improve the functioning of either the data
processing system comprising at least one processor or the e-commerce
order-filtering module. Rather, these components merely link the underlying
abstract idea (i.e., certain methods of organizing human activities) to a
particular technological environment. That is, as stated in the Specification,
the claimed process simply “minimizes costs associated with product returns
. . . [by] predicting a probability of each post-purchase return.” Spec. ¶ 17.
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Thus, the claimed method uses conventional computers and computer
networks to automate tasks that would have otherwise been performed by a
human. Such claims are not patent eligible. See OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible”).
For at least the reason noted supra, we determine that claim 1
(1) recites a judicial exception and (2) does not integrate that exception into
a practical application. Thus, representative claim 1 is directed to the
aforementioned abstract idea.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Turning to the second step of the Alice inquiry, we now look to
whether claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 216. As recognized by the Revised
Guidance, an “inventive concept” under Alice step 2 can be evaluated based
on whether an additional element or combination of elements:
(1) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field,
which is indicative that an inventive concept may be present; or
(2) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.
See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d).
We find no element or combination of elements recited in Appellant’s
claim 1 that contains any “inventive concept” or adds anything “significantly
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more” to transform the abstract concept into a patent-eligible application.
Appellant has not adequately explained how claim 1 is performed, such that
it is not a routine and conventional function of a generic computer. In fact,
Appellant’s Specification merely indicates that “the mechanisms described
herein may be implemented as . . . software executing on general purpose
hardware.” See Spec. ¶ 18; see also id. ¶ 48.
Because Appellant’s independent claim 1 is directed to a patent-
ineligible abstract concept, does not include additional elements that
integrate the judicial exception into a practical application, and does not add
a specific limitation beyond the judicial exception that is not “well-
understood, routine, and conventional,” we sustain the Examiner’s rejection
of the claims 1, 2, 5–7, and 9 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter in light of Alice, its progeny, and the Revised
Guidance.
CONCLUSION
The Examiner’s rejection of claims 1, 2, 5–7, and 9 under 35 U.S.C.
§ 101, because the claimed invention is directed to a judicial exception
without significantly more, is affirmed.

In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 7, 5–7, 9 101 Eligibility 1, 2, 5–7, 9

No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED