MyWorld, Inc.

Patent Trials and Appeals Board

Jun 25, 2020

14161938 - (D) (P.T.A.B. Jun. 25, 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.
14/161,938 01/23/2014 Kenneth J. Ouimet 2734.0019 6722
84278 7590 06/25/2020
PATENT LAW GROUP: Atkins and Associates P.C.
123 W. Chandler Heights Road, Unit 12535
Chandler, AZ 85248
EXAMINER
WHITAKER, JONATHAN J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/25/2020 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):
main@plgaz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH J. OUIMET
Appeal 2019-001910
Application 14/161,938
Technology Center 3600
Before ERIC B. CHEN, MICHAEL J. STRAUSS, and
MICHAEL M. BARRY, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 33–52. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

1 We refer to the Specification, filed January 23, 2014 (“Spec.”); Final
Office Action, mailed January 24, 2018 (“Final Act.”); Appeal Brief, filed
July 18, 2018 (“Appeal Br.”); Examiner’s Answer, mailed November 2,
2018 (“Ans.”); and Reply Brief, filed January 2, 2019 (“Reply Br.”).
2 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 MYWORLD, INC.
Appeal Br. 2.
Appeal 2019-001910
Application 14/161,938
2
Summary of the Disclosure
Appellant’s claimed subject matter “relates in general to consumer
purchasing and, more particularly, to a commerce system and method of
controlling activity within the commerce system with a mapping data
structure supporting an intelligent personal agent.” Spec. ¶ 1.
Illustrative claim
Claim 33, reproduced below with element labels added in brackets, is
illustrative of the claimed subject matter:
33. A method of controlling communication over an electronic
network including a first computing system and a second
computing system, comprising:
[(i)] providing a product database on the first computing
system including product information corresponding to a
plurality of products, wherein a user generates a weighted
attribute for a portion of the products from the second computing
system;
[(ii)] providing a recipe database on a third computing
system in communication with the first computing system,
wherein the recipe database includes ingredients for a recipe;
[(iii)] providing a mapping data structure on the first
computing system to create a product set for each ingredient of
the recipe by determining the products in the product database
that match product attributes of the ingredients in the recipe;
[(iv)] transmitting a user request for the recipe from the
second computing system to the first computing system;
[(v)] building a shopping list from the product sets using
the first computing system based on the weighted attribute of the
products, wherein the mapping data structure enhances the
operation between the first computing system and second
computing system by creating the product set in order to build
the shopping list from the weighted attributes of the products;
and
[(vi)] transmitting the shopping list to the second
computing system for presentation on a display screen.
Appeal 2019-001910
Application 14/161,938
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Geller et al. US 6,236,990 Bl May 22, 2001
Moss et al. US 2005/0160014 Al July 21, 2005
Harlan US 2009/0144081 Al June 4, 2009
Kolawa et al. US 8,504,440 Bl Aug. 6, 2013
REJECTIONS
Claims 33–52 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter. Final Act. 3–7.
Claims 33–52 are rejected under 35 U.S.C. § 103 as being
unpatentable over Moss, Geller, Kolawa and Harlan. Final Act. 8–22.
STANDARD OF REVIEW
The Board undertakes a limited de novo review of 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); see also 37 C.F.R.
§ 41.37(c)(1)(iv).
OPINION
We are not persuaded the Examiner erred in rejecting the argued
claims under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter and under § 103 over Moss, Geller, Kolawa and Harlan. Instead, we
agree with and adopt the Examiner’s findings and reasoning in the Final
Office Action and the Answer as our own and add any additional findings of
fact appearing below for emphasis.

Appeal 2019-001910
Application 14/161,938
4
Rejection under 35 U.S.C. § 101
I. Principles of Law
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 Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and 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 Supreme 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
that framework, we first determine what concept the claim is “directed
to.” See id. 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.”).
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, 67–68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing
Appeal 2019-001910
Application 14/161,938
5
India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
In January 2019, the USPTO published revised guidance on the
application of § 101 (“Guidance”). See, e.g., USPTO, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Revised Guidance”); USPTO, October 2019 Update: Subject Matter
Eligibility (“Update”), 84 Fed. Reg. 55942 (Oct. 18, 2019) .
Under the 2019 Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice,
or mental processes); and
Appeal 2019-001910
Application 14/161,938
6
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)).
See 2019 Revised Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1)
recites a judicial exception and (2) does not integrate that exception into a
practical application, do we then 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.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.

II. Examiner’s Determinations
The Examiner determines “[t]he claims are directed to the abstract
idea of selecting products for a consumer based on consumer preferences,
which is a fundamental economic practice and/or an idea of itself and/or a
method of organizing human activities normally performed by personal
shoppers.” Final Act. 3. The Examiner explains:
Selecting products for a consumer is a longstanding commercial
practice and/or method of organizing human activities from the
pre-internet world and the claims merely recite the performance
of this business practice with the requirement to perform it with
generic computer hardware, the internet, and a generically
functioning database containing product information. The
abstract idea in the pending application is directed to a concept
relating to commerce such as business relations, an idea standing
Appeal 2019-001910
Application 14/161,938
7
alone such as an uninstantiated concept, plan, or scheme,[3]
and/or a concept related to interpersonal and intrapersonal
activities, such as managing relationships or transactions
between people, social activities, advertising, marketing, and
sales activities or behaviors.
Id. at 3–4. The Examiner further determines the rejected claims are “similar
to other concepts that have been identified as abstract by the court . . . as
seen in [multiple cases4].” Id. at 4–5. The Examiner further determines

3 Although the previously recognized category of an idea of itself is not one
of the currently recognized categories, it is sufficient for the purposes of the
present appeal that the claimed concepts reasonably can be characterized as
falling within the still-recognized category of mental processes. See, e.g.,
MPEP § 2106.04(a)(2)(III):
The courts have used the phrase “an idea ‘of itself’” to
describe an idea standing alone such as an uninstantiated
concept, plan or scheme, as well as a mental process (thinking)
that “can be performed in the human mind, or by a human using
a pen and paper.” CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 . . . (Fed. Cir. 2011).
Characterizing the abstract idea as a mental process instead of an idea
standing alone (i.e., an idea of itself) does not constitute a change to the
thrust in the Examiner’s rejection.
4 According to the Examiner, the claimed concept is similar to
obtaining and comparing intangible data as seen in CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011),
collecting and comparing known information as seen in Classen
lmmunotherapies Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011), data recognition and storage as seen in Content Extraction
and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343
(Fed. Cir. 2014), creating an index and using that index to search
for and retrieve data as seen in Intellectual Ventures I LLC v. Erie
Indemnity Co. 850 F.3d 1315 (Fed. Cir. 2017), collecting
information, analyzing it, and displaying certain results of the
collection and analysis as seen in Electric Power Group, LLC, v.
Alstom, 830 F.3d 1350 (Fed. Cir. 2016), offer-based price
Appeal 2019-001910
Application 14/161,938
8
each of the recited steps (i) through (vi) recite concepts that are similar to
price optimization involving information collection, processing, and display
of results that address a business challenge, i.e., product selection. Id. at 5.5
The Examiner further determines the claims are directed to solving a
business challenge, not one particular to either the internet or computer
networks. Id. According to the Examiner:

optimization as seen in OIP Technologies, Inc. v. Amazon.com,
Inc., 788 F.3d 1359 (Fed. Cir. 2015), budgeting [and] . . .
tailoring content based on information about the user as seen in
Intellectual Ventures I LLC v. Capital One Bank (USA), 793 F.3d
1363 (Fed. Cir. 2015), generating menus on a computer as seen
in Apple v. Ameranth, 842 F.3d 1229 (Fed. Cir. 2016), and
delivering selected advertising or promotional content to devices
as seen in Affinity Labs of Texas, LLC v. Amazon.com Inc., 838
F.3d 1266 (Fed. Cir. 2016).
Final Act. 4–5 (citations altered).
⁵ According to the Examiner:
The “providing a product database”, “providing a recipe
database”, and “providing a mapping data structure” limitations
are especially similar to creating an index and using that index to
search for and retrieve data as seen in Intellectual Ventures I LLC
v. Erie Indemnity Co. The “transmitting a user request”,
“selecting a product from the product list for the shopping list
based on closest match to the weighted attribute of the products”,
“building a shopping list”, “transmitting the shopping list”, and
“generating . . . and presenting the individualized offer”
limitations are especially similar to offer-based price
optimization as seen in OIP Technologies, Inc. v. Amazon.com,
Inc., collecting information, analyzing it, and displaying certain
results of the collection and analysis as seen in Electric Power
Group, LLC, v. Alstom, tailoring content based on information
about the user as seen in Intellectual Ventures I LLC v. Capital
One Bank (USA), and delivering selected content to devices as
seen in Affinity Labs of Texas, LLC v. Amazon.com.
Final Act. 4–5.
Appeal 2019-001910
Application 14/161,938
9
The claims do not appear to be applying any of these consumer
product selection/recommendation practices any differently than
previous longstanding commercial usage, other than applying
them to generic computer hardware, the internet, and a
generically functioning database containing product information.
Selecting products for a consumer is not a problem specifically
arising in the realm of computer networks and is also not
necessarily rooted in computer technology. The claims as a
whole, considering all claim elements both individually and in
combination, do not amount to significantly more than an
abstract idea.
Id. Furthermore, according to the Examiner, “[t]he limitations are all well-
understood, routine, and conventional [(i.e., “WURC”)] in the field of
consumer product selection/recommendation.” Id. at 5–6. The Examiner
continues, explaining why each of the additional elements, notably including
the claimed mapping data structure, are generic and provide only basic and
routine functionalities. Id.
III. Appellant’s Contentions of Error
Appellant contends “the solution of claim 33 is indeed from a problem
specifically arising in the realm of computer networks and computer
technology.” Appeal Br. 8. Appellant argues menu planning and shopping
has transitioned from in-person visits to a local market to the use of
computer technology thereby presenting a problem of processing large
amounts of data. Id. To address this problem, Appellant argues
The feature of the mapping data structure on the first computing
system creating a product set for each ingredient of the recipe by
determining the products in the product database that match
product attributes of the ingredients in the recipe is part of what
makes the claim as a whole recite statutory subject matter.
Id. at 9. According to Appellant, “a mapping data structure simplifies the
user request for the recipe by efficiently and effectively identifying the
Appeal 2019-001910
Application 14/161,938
10
product set to fill the recipe and then builds the shopping list from the
weighted attributes of the products” and thereby “saves network traffic,
communication load, and time by eliminating unnecessary searching.” Id. at
10. Appellant presents similar arguments in connection with independent
claim 39 (id. at 12–16) and independent claim 46 (id. at 16–21).
IV. Examiner’s Answer
The Examiner responds, explaining he “considered all claim elements
both individually and in combination, and determined that the claims are
directed to the abstract idea of selecting products for a consumer based on
consumer preferences.” Ans. 4. Responding to Appellant’s contention that
the claims solve a problem arising in the realm of computer networks and
computer technology, the Examiner finds as follows:
[T]he claimed method does not contain any language for actually
controlling the technical functionalities for electronic network
communication. The claims merely utilize an electronic network
communication environment or field of use to implement the
claimed abstract idea. The claimed mapping data structure is an
index for obtaining and comparing intangible data related to
selection of products and recipes. It is analogous to the human
activity of tracking/organizing information, in that an entity uses
the data structure to merely find out what information is
correlated with another type of information (e.g. what pages of a
book can I find information related to this keyword). The
mapping data structure index merely takes one type of data
(recipe ingredient) and informs what other types of data
(products) correlate to this data. . . . There is no indication of any
inventive concept related to the technical manner in which this
claimed data structure electronically communicates with the
claimed databases. The claims indicate that the mapping data
structure is merely provided, rather than created. The claimed
computer networks and computer technology are performing
well understood, routine, and conventional operations of
Appeal 2019-001910
Application 14/161,938
11
receiving or transmitting data over a network, e.g., using the
Internet to gather data.
Id. at 6–7.
V. Step 2A, Prong One (Judicial Exception)
Under Prong 1 of the 2019 Revised Guidance, we determine whether
the claim recites a recognized judicial exception. We agree with the
Examiner that the claim elements are similar to those determined to recite
abstract concepts in Digitech, Electric Power Group, and Benson. Ans. 3.
Element (i) of claim 33 recites, in part, “providing a product database
. . . including product information corresponding to a plurality of products,
wherein a user generates a weighted attribute for a portion of the products
. . . .” Appellant discloses “Consumer service provider 52 maintains product
database 56 with up-to-date, comprehensive, reliable, and objective retailer
product information. The product information includes the product
description, product attributes, regular retail pricing, and discounted offers.”
Spec. ¶ 40. Appellant’s Specification further describes “[t]he product
information in product database 56 is organized into product families based
on similarity or commonality of brand, price, size, and related product
attributes.” Spec. ¶ 42. Furthermore, “Product database 56 contains the
name, type, description, and location of retailers nationwide” (Spec. ¶ 55),
shopping lists (Spec. ¶ 84), consumer requirements (Spec. ¶ 89), consumer
preferences (Spec. ¶ 90), and item attributes and weighting factors (Spec.
¶ 103). Thus, other than identifying types of information stored, we are
unable to ascertain, and Appellant does not identify, a particular structure of
the product database.
Businesses involved in the provision of goods typically maintain
information about the goods offered to sale. For example, in the case of
Appeal 2019-001910
Application 14/161,938
12
limited product lines, a sales person may recall information about products
or may be aided with pen and paper in recording product details (e.g.,
provide or use a catalog of products for sale). Thus, provision of the
database required by claim element (i) is reasonably interpreted as reciting
an advertising, marketing or sales activity or behavior that is a type of
commercial interaction identified in the 2019 Revised Guidance as one of
certain methods of organizing human activity. See 2019 Revised Guidance,
84 Fed. Reg. at 52.
Furthermore, claim element (i) involves recalling information and is a
process that can be performed in the human mind or with the aid of pen and
paper. The 2019 Revised Guidance recognizes certain methods of
organizing human activity (e.g., advertising, marketing or sale activities or
behaviors) and mental processes (e.g., concepts performed in the human
mind) as constituting abstract ideas. 2019 Revised Guidance, 84 Fed. Reg.
at 52.
Element (ii) of claim 33 recites, in part, “providing a recipe database
. . . wherein the recipe database includes ingredients for a recipe.” Appellant
discloses “Recipe database 58 stores information about each recipe such as a
title, brief description, allergy information, nutritional information, number
of servings, serving size, consumer rating, ingredient list, photograph,
cooking instructions, community rating, notes, contributor, and other
information.” Spec. ¶ 68. Businesses (e.g., food manufacturers, restaurants,
cookbook publishers) maintain recipe databases in preparing food products
and informing consumers of ways to use food ingredients that are for sale.
That is, vendors and as well as related businesses (e.g., cookbook publishers)
maintain and provide instructions for combining and assembling
Appeal 2019-001910
Application 14/161,938
13
components into intermediate or final products. Thus, provision of the
database required by claim element (ii) is reasonably interpreted as reciting
an advertising, marketing or sales activity or behavior that is a type of
commercial or legal interaction and a certain method of organizing human
activity.
Furthermore, claim element (ii) involves recalling information and,
therefore, is a process that can be performed in the human mind or with the
aid of pen and paper. The 2019 Revised Guidance recognizes certain
methods of organizing human activity (e.g., advertising, marketing or sale
activities or behaviors) and mental processes (e.g., concepts performed in the
human mind) as constituting abstract ideas. 2019 Revised Guidance, 84
Fed. Reg. at 52.
Element (iii) of claim 33 recites, in part, “providing a mapping data
structure . . . to create a product set for each ingredient of the recipe by
determining the products in the product database that match product
attributes of the ingredients in the recipe.” Appellant directs attention to
paragraph 90 of the Specification and Figure 22 of the drawings for
disclosing a mapping data structure. Appeal Br. 3. However, the indicated
portion of the Specification does not reference a mapping data structure and
the drawings, including the indicated Figure 22, only depict a box 114
labeled as a Mapping Data Structure without providing any details. Instead
of structure, (e.g., a configuration or arrangement defining how data is
organized) we find Appellant discloses a mapping data structure in terms of
functionalities provided. For example,
FIG. 11a shows mapping data structure 114. Consumer service
provider 52 provides mapping data structure 114 for determining
a specific set of products 116 interchangeable with item 112 on
Appeal 2019-001910
Application 14/161,938
14
list 73. . . . Mapping data structure 114 accesses product
database 56, maintained by consumer service provider 52.
Mapping data structure 114 retrieves product information for all
varieties of item 112. Mapping data structure 114 uses the
product attributes stored in product database 56, maintained by
consumer service provider 52, to evaluate whether a given
product 18 possesses the desired item attributes 118 and should
be placed in product set 116 corresponding to item 112.
Spec. ¶ 44. We do not find any description of a mapping data structure
consistent with common definitions of data structures including “[a]n
organizational scheme, such as a record or array, that can be applied to data
to facilitate interpreting the data or performing operations on it.”
MICROSOFT COMPUTER DICTIONARY 144 (5th ed. 2002). Rather than
describe an organizational scheme for data, Appellant discloses only
functionalities. Therefore, consistent with the Specification and in the
absence of any disclosure of specific structure (e.g., records, arrays, tables,
lists), we interpret the recited mapping data structure as the capability to
perform the recited functions and steps. Because it is unnecessary in
reaching our final decision, we do not consider whether the disputed
mapping data structure should be interpreted under 35 U.S.C. § 112(f) as a
means plus function limitation and, if so, whether such a limitation is
properly supported by the Specification.6
Considering the actions to be performed according to claim element
(iii), creating a product set is disclosed as “determining a specific set of

6 We note, in what we consider a related appeal of Appellant, the data
structure claimed in that application was determined to lack sufficient
written description support under 35 U.S.C. § 112(a). Ex Parte Kenneth J.
Ouimet, No. APPEAL 2019-005881, 2020 WL 2060531, at *6 (P.T.A.B.
Apr. 22, 2020)
Appeal 2019-001910
Application 14/161,938
15
products 116 interchangeable with item 112 on [shopping] list 73.” Spec.
¶ 44. Examples of product attributes are disclosed to include “brand, size,
price, ingredient, or additive.” Spec. ¶ 42.
Businesses, such as food distributors and grocery stores, maintain
information about available products to include one or more of the disclosed
product attributes (e.g., price). For example, retail businesses maintain
catalogs describing products for sale from various manufacturers and
grocery stores advertise for products for sale. Thus, creation of a product set
as required by claim element (iii) is reasonably interpreted as reciting an
advertising, marketing or sales activity or behavior that is a type of
commercial or legal interaction and a certain method of organizing human
activity.
Furthermore, claim element (iii) involves recalling information and is
a process that can be performed in the human mind or with the aid of pen
and paper. The 2019 Revised Guidance recognizes certain methods of
organizing human activity (e.g., advertising, marketing or sale activities or
behaviors) and mental processes (e.g., concepts performed in the human
mind) as constituting abstract ideas. 2019 Revised Guidance, 84 Fed. Reg.
at 52.
Element (iv) of claim 33 recites, in part, “transmitting a user request
for the recipe . . . .” Appellant directs attention to paragraph 97 of the
Specification as describing this transmitting element. Appeal Br. 4. The
referenced portion of the Specification describes providing access to a
website for accessing a recipe, using a corresponding link to the recipe page,
browsing a recipe database, or providing an intelligent personal agent to
assist a user in identifying a recipe. Spec. ¶ 97. Thus, a broad but
Appeal 2019-001910
Application 14/161,938
16
reasonable interpretation of transmitting a user request includes allowing a
user to access information such as a recipe.
Providing information about how products can be used, such as
supplying recipe suggestions using products marketed by a business (e.g.,
food ingredients), is reasonably interpreted as an advertising, marketing or
sales activity or behavior that is a type of commercial interaction and a
certain method of organizing human activity. See Two- Way Media Ltd. v.
Comcast Cable Commc'ns, LLC, 874 F.3d 1329, 1337 (2017) (“The claim
requires the functional results of . . . ‘routing,’ . . . but does not sufficiently
describe how to achieve these results in a non-abstract way”).
Furthermore, claim element (iv) involves allowing a user to access
selected information and is a process that reasonably can be performed in the
human mind or with the aid of pen and paper, e.g., an observation. The
2019 Revised Guidance recognizes certain methods of organizing human
activity (e.g., advertising, marketing or sale activities or behaviors) and
mental processes (e.g., concepts performed in the human mind) as
constituting abstract ideas. 2019 Revised Guidance, 84 Fed. Reg. at 52.
Element (v) of claim 33 recites, in part, “building a shopping list from
the product sets . . . based on the weighted attribute of the products, . . . by
creating the product set in order to build the shopping list from the weighted
attributes of the products.” Appellant directs attention to paragraph 91 of the
Specification as describing this claim element. Appeal Br. 4. The
referenced portion of the Specification describes “shopping list 110 includes
products 410-414 from product sets 116 corresponding to ingredients 402-
406 imported from recipe 292, i.e., graham crackers, chocolate bars, and
marshmallows.” Spec. ¶ 91. Manufacturers, supplies and other businesses
Appeal 2019-001910
Application 14/161,938
17
(e.g., cookbook publishers) are known to provide instructions for assembling
an item, such as a food product (e.g., recipes found in cookbooks) including
providing lists of constituent components or ingredients, those lists
reasonably considered shopping lists. Providing information about how
products can be used, such as providing recipe suggestions, including
suggested products (e.g., brands, sizes), is reasonably interpreted as an
advertising, marketing or sales activity or behavior that is a type of
commercial interaction and a certain method of organizing human activity.
Furthermore, claim element (v) involves organizing information (e.g.,
collecting into a set (e.g. a list) items for purchase) that can be performed in
the human mind or with the aid of pen and paper. The 2019 Revised
Guidance recognizes certain methods of organizing human activity (e.g.,
advertising, marketing or sales activities or behaviors) and mental processes
(e.g., concepts performed in the human mind) as constituting abstract ideas.
2019 Revised Guidance, 84 Fed. Reg. at 52.
Element (vi) of claim 33 recites, in part, “transmitting the shopping
list . . . .” Appellant directs attention to paragraph 93 of the Specification
and Figure 23 of the drawings as describing claim 33’s transmitting element
(vi). Appeal Br. 4. However, rather than describing transmitting a shopping
list, the indicated portions of the application disclose providing a user with
recipes. Thus, a broad but reasonable interpretation of claim element (vi)
includes transmission of recipe or product information. Accordingly, the
analysis of claim element (vi) is similar to that of claim element (iv) reciting
a user recipe request. In particular, providing a consumer with suggested
products for purchase is reasonably interpreted as an advertising, marketing
Appeal 2019-001910
Application 14/161,938
18
or sales activity or behavior that is a type of commercial interaction and a
certain method of organizing human activity.
Furthermore, claim element (vi) involves the transmission of
information that can be performed in the human mind (e.g., an observation)
or with the aid of pen and paper. The 2019 Revised Guidance recognizes
certain methods of organizing human activity (e.g., advertising, marketing or
sales activities or behaviors) and mental processes (e.g., concepts performed
in the human mind) as constituting abstract ideas. 2019 Revised Guidance,
84 Fed. Reg. at 52. See Two- Way Media Ltd. 874 F.3d at 1337 (generalized
routing of information is abstract). Furthermore, as is discussed below in
connection with Prong 2 of our analysis, transmission of information
(including its display) is reasonably interpreted as insignificant extra-
solution activity.
For the reasons discussed above, we determine claim 33 recites
subject matter reasonably characterized as certain methods of organizing
human activity (i.e., commercial or legal interactions including advertising,
marketing, or sales activities or behaviors) and mental processes (i.e.,
concepts performed in the human mind or with pen and paper), which are
identified in the 2019 Revised Guidance as abstract ideas. See 2019 Revised
Guidance, 84 Fed. Reg. at 52.
Contrary to Appellant’s contention, we are not persuaded the
Examiner’s characterization of the claims is an over-generalization. Appeal
Br. 7. Our reviewing court recognizes “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d at 1240. That need not and, in this case does not, “impact the
patentability analysis.” Id. at 1241. Further, “[a]n abstract idea can
Appeal 2019-001910
Application 14/161,938
19
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, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“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
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.”
III. Step 2A, Prong 2 (Integration into a Practical Application)
Under Step 2A, Prong 2, of the 2019 Revised Guidance, we determine
whether any of the additional elements beyond the abstract idea integrate the
abstract ideas into a practical application. 2019 Revised Guidance, 84 Fed.
Reg. at 54. The 2019 Revised Guidance provides exemplary considerations
that are indicative of an additional element or combination of elements
integrating the judicial exception into a practical application, such as an
additional element reflecting an improvement in the functioning of a
computer or an improvement to other technology or technical field. Id. at
55; see also MPEP § 2106.05(a).
In addition to the actions recited by elements (i) though (vi), claim 33
requires first, second, and third computing systems, product and recipe
databases, a mapping data structure, and display screen. We address the
mapping data structure above under Prong 1, interpreting this claim element
Appeal 2019-001910
Application 14/161,938
20
to include function without defining structure and determining the recited
functions reasonably correspond to concepts that are certain methods of
organizing human activity and mental processes, both of which are identified
as abstract ideas. Thus, effectively, the recited mapping data structure is not
an additional element that need be analyzed under Prong 2. Even if
otherwise, at most, the recited mapping data structure is part of a computer
implementation of the underlying concept of organizing human activity and
concepts performed in the human mind rather than constituting an
improvement in the functioning of a computer or an improvement to other
technology or technical field. See 2019 Revised Guidance, 84 Fed. Reg. at
55; MPEP § 2106.05(a).
Addressing the additional elements recited by the claims as identified
by the Examiner (Final Act. 5–7), we agree these elements, considered both
individually and as an ordered combination, fail to integrate the recited
abstract concepts of claim 33 into a practical application within the meaning
of the 2019 Revised Guidance. In particular, we agree:
Providing databases in communication, providing a mapping
data structure, transmitting data for analysis and display,
communicating between a database and a system for access, and
generating a hyperlink for a data request are all generic and
routine functions of computers and electronic communication
systems that applicant has merely recited with the application of
the selecting products for a consumer based on consumer
preferences abstract idea. The “communication over an
electronic network”, “computing system”', “database”,
“mapping data structure”, “electronic communication”,
“hyperlink”, “display screen'”, and “non[-]transitory, tangible
computer readable medium storing instructions for controlling
communication over an electronic network” are generic
computer structures that have been recited to perform their basic
functions of storing, retrieving, displaying, and processing data
Appeal 2019-001910
Application 14/161,938
21
through the program that enables the consumer product
selection/recommendation. The recitation of the computer
limitations amounts to mere instructions to implement the
abstract idea on a computer. Taking the additional elements
individually and in combination, the computer components at
each step of the process perform purely generic computer
functions.
Final Act. 7. For example, Appellant discloses the computer systems as
general-purpose computers and, in the case of the third computer system,
alternatively as a cell phone or tablet. Spec. ¶ 31. In connection with the
databases, Appellant directs attention to paragraph 44 (product database 56)
and paragraphs 28, 71–73 (recipe database 58). Appeal Br. 4. However, the
indicated portions of the Specification merely describe the types of
information stored rather than providing structure or operational details.
Likewise, the other additional elements identified by the Examiner are
described at a high level of generality. Consistent with the 2019 Revised
Guidance, these additional elements are insufficient to integrate the recited
abstract idea(s) into a practical application of the judicial exception, as they
merely amount to instructions to implement an abstract idea on a computer,
or, in other words, the claim merely uses a computer as a tool to perform an
abstract idea. 2019 Revised Guidance, 84 Fed. Reg. at 54. See also Alice,
573 U.S. at 221 (“[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.”);
MPEP § 2106.05(f)(2) (“Use of a computer or other machinery in its
ordinary capacity for economic or other tasks (e.g., to receive, store, or
transmit data) or simply adding a general purpose computer or computer
components after the fact to an abstract idea (e.g., a fundamental economic
practice or mathematical equation) does not provide significantly more.”).
Appeal 2019-001910
Application 14/161,938
22
In addition to the actions required by claim elements (i) through (vi)
reciting concepts identified as abstract ideas, claim element (vi) recites
transmitting the shopping list to the second computing system for
presentation on a display screen. Such activity reasonably can be
characterized as extra-solution activity. Thus, this element does not add any
meaningful limitations to the noted abstract ideas as merely being directed to
the insignificant post-solution activity of transmitting data. See, e.g., Apple,
Inc. v. Ameranth, Inc., 842 F.3d at 1241–42 (holding that printing or
downloading generated menus constituted insignificant extra-solution
activity).
Appellant’s argument that the recited mapping data structure renders
the claims patent-eligible (Appeal Br. 9) is unpersuasive for the reasons
discussed above under Prong 1. In particular, the mapping data structure is
described only as functions or actions that are part of the underlying abstract
concept rather than an element in addition to that concept. In any case, the
mapping data structure is, at most, described at a high level of generality that
does not improve the functioning of the implementing platform (e.g.,
computing systems) or supporting technology (e.g., communication methods
and networks).
We are unpersuaded by Appellant’s argument the mapping data
structure simplifies the user request and improves network and computing
utilization. Appeal Br. 10–11. As an initial matter, Appellant’s contentions
are not supported by sufficient evidence or reasoning. Mere attorney
argument and conclusory statements, which are unsupported by factual
evidence, and are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
Appeal 2019-001910
Application 14/161,938
23
1984). Attorney argument is not evidence. In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974). Nor can such argument take the place of evidence
lacking in the record.
Furthermore, even if shown to result directly from the claimed
method, the alleged improvements (i.e., simplified user requests and
improved network and computer utilization) are due to the underlying
abstract concept of identifying specific products satisfying user and recipe
requirements, not to the additional elements. Likewise, any efficiencies that
might result in “sav[ing] network traffic, communication load, and time by
eliminating unnecessary searching” (Appeal Br. 11) are also due to the
underlying abstract concept rather than the additional elements.
We are also unpersuaded the claims address “a problem specifically
arising in the realm of computer networks and computer technology.”
Appeal Br. 8. Appellant fails to identify a computer network or technology
problem addressed by the claims other than to contend an overall
improvement in system operation because user requests are alleged to be
processed more efficiently. Although the preamble of claim 33 nominally
recites “[a] method of controlling communication over an electronic
network,” the body of the claim neither recites a network nor any network
control functionality. At most, the claim recites that the first and third
computing systems are in communication with each other and transmission
of a user request and a shopping lists on unspecified media or connections.
We are also unpersuaded the claims are directed to “the realm of
computer networks and computer technology” because, as alleged by
Appellant, there is “[s]imply too much unorganized information for a human
to simultaneously process.” Appeal Br. 14. As an initial matter, in the
Appeal 2019-001910
Application 14/161,938
24
absence of claim language reciting a particular amount of information (i.e.,
an amount considered too large to be processed in the human mind), such
argument is not commensurate in scope with the claim. Thus, the claim
encompasses, at least, a database with a single recipe having two or more
ingredients (i.e., plural ingredients) and a product databased having two or
more (i.e., a plurality) of products. Accordingly, at least in the degenerative
case and similar cases involving limited sets of information, we disagree a
human could not perform the information processing recited by claim 33 in
his or her mind. Even for larger amounts of information, a person aided
with pen and paper could perform the recited steps.
Contrary to Appellant’s contention and as discussed above, any
improvement in processing a user request is due to the underlying abstract
concepts identified above, not to any additional elements. That the claimed
method may result in faster and more accurate identifications of products to
be included in a shopping list does not take the claim out of the realm of the
abstract. “[R]elying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.” OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); see
also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App'x 1012,
1017 (Fed. Cir. 2017) (unpublished) (“Though the claims purport to
accelerate the process of finding errant files and to reduce error, we have
held that speed and accuracy increases stemming from the ordinary
capabilities of a general-purpose computer ‘do[] not materially alter the
patent eligibility of the claimed subject matter.”’); see also Bancorp Servs.,
L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed.
Cir. 2012) (“[T]he fact that the required calculations could be performed
Appeal 2019-001910
Application 14/161,938
25
more efficiently via a computer does not materially alter the patent eligibility
of the claimed subject matter.”).
Appellant’s argument in connection with independent claims 39 and
46 are substantively similar to those presented and addressed above in
connection with independent claim 33. Accordingly, for the reasons
outlined above, we determine that independent claim 33 and, similarly,
independent claims 39 and 46, recite certain methods of organizing human
activity (e.g., advertising, marketing or sale activities or behaviors) and
mental processes (e.g., concepts performed in the human mind), i.e., an
abstract idea, and that the additional elements recited in the claims are no
more than generic components used as tools to perform the recited abstract
idea. As such, the additional elements do not integrate the abstract idea into
a practical application. See Alice, 573 U.S. at 223–24 (“Wholly generic
computer implementation is not generally the sort of ‘additional featur[e]’
that provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (brackets in
original; quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the
Examiner that the independent claims are directed to an abstract idea.
Step 2B
As noted above, the only claim elements beyond the recited abstract
idea are the computing systems, recipe and product databases, mapping data
structure, and display screen. The Examiner finds:
The additional elements or combination of elements in the claims
other than the abstract idea per se amount to no more than: mere
instructions to implement the idea on a computer, and recitation
of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and
Appeal 2019-001910
Application 14/161,938
26
conventional activities previously known to the pertinent
industry.
Final Act. 5.
We agree with the Examiner. The claimed computer functions of the
additional elements (such as computer systems, databases, and non-
transitory computer readable medium) and their associated functions are
well-understood, routine, and conventional. In particular, the Federal Circuit
has held, “the use of conventional computer components, such as a database
and processors, operating in a conventional manner” “do[es] not confer
patent eligibility.” Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1371 (Fed. Cir. 2015). This is because “mere automation of
manual processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017); see also buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (it is well-
understood, routine and conventional use of a computer to receive and send
information over a network); Intellectual Ventures I LLC v. Erie Indem. Co.,
850 F.3d 1315, 1329 (Fed. Cir. 2017) (explaining that receiving a request to
execute a database search and delivering records are routine computer
functions that can only be described as generic or conventional); Prism
Techs. LLC v. T-Mobile USA, Inc., 696 F. App'x 1014, 1016–17 (Fed. Cir.
2017) (describing the claimed “authentication server,” “access server,”
“Internet Protocol network,” “client computer device,” and “database” as
“indisputably generic computer components”).
Appellant’s failure to provide details about the structure and
functioning of the additional elements further evidences they are well-
Appeal 2019-001910
Application 14/161,938
27
understood, routine, and convention. See USPTO, Memorandum on
Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) at 3
(Apr. 19, 2018), available at https://www.uspto.gov/sites/default/files/
documents/memo-berkheimer-20180419.PDF (explaining that a
specification that describes 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)” can show that the elements are well
understood, routine, and conventional); Intellectual Ventures I, 850 F.3d at
1331 (“The claimed mobile interface is so lacking in implementation details
that it amounts to merely a generic component (software, hardware, or
firmware) that permits the performance of the abstract idea, i.e., to retrieve
the user-specific resources.”).
For these reasons, we determine the independent claims do not recite
additional elements that, either individually or as an ordered combination,
amount to significantly more than the judicial exception within the meaning
of the 2019 Revised Guidance. 84 Fed. Reg. at 52–55; MPEP § 2106.05(d).
Conclusion
Appellant has not persuaded us that the Examiner erred in determining
that independent claims 33, 39, and 46 recite one or more abstract ideas, that
the claims fail to integrate the abstract idea into a practical application, or
that the additional claim elements add significantly more to the abstract idea.
Accordingly, Appellant does not persuade us of that the Examiner erred in
concluding that claims 33, 39, and 46 are directed to patent-ineligible subject
matter.
Appeal 2019-001910
Application 14/161,938
28
Therefore, we sustain the rejection of independent claims 33, 39, and
46 under 35 U.S.C. § 101. We also affirm this rejection of claims 34–38.
40–45, and 47–52, which Appellant does not argue separately with
particularity.

Rejection under 35 U.S.C. § 103
I. Principles of Law
An invention is not patentable under 35 U.S.C. § 103 “if the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.” The question of obviousness is resolved
on the basis of underlying factual determinations including: (1) the scope
and content of the prior art; (2) any differences between the claimed subject
matter and the prior art; (3) the level of skill in the art; and, (4) where in
evidence, so-called secondary considerations, including commercial success,
long-felt but unsolved needs, and failure of others. Graham v. John Deere
Co., 383 U.S. 1, 17–18 (1966).
When evaluating a combination of teachings, we must also “determine
whether there was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (citing In re Kahn, 441, F.3d 977, 988 (Fed. Cir.
2006)). Whether a combination of elements produced a predictable result
weighs in the ultimate determination of obviousness. KSR, 550 U.S. at 416–
17.
II. Examiner’s Rejection
Appeal 2019-001910
Application 14/161,938
29
The Examiner finds the combination of Moss, Geller, Kolawa, and
Harlan teaches or suggests the subject matter recited by the pending claims.
Final Act. 8. In particular, the Examiner finds Moss teaches providing a
product database and mapping data structure on a first computing system
(claim elements (i) and (iii)); providing a database on a third computing
system (claim element (ii)); transmitting a recipe request to the first
computing system (claim element (iv)); building a shopping list using the
first computing system (claim element (v); and transmitting the shopping list
to a second computing system (claim element (vi)). Id. at 8–10. The
Examiner applies Geller for teaching a weighted attribute and applies Harlan
and Kolawa for a recipe database, transmitting a request for a recipe, and
creating a product set for recipe ingredients. Id. at 10. According to the
Examiner, “it would have been obvious to one of ordinary skill in the art at
the time of filing to combine the product recommendation methods of Moss,
Geller, Kolawa, and Harlan in order to specify effective methods for
recommending products to consumers based on their preferences.” Id.
III. Appellant’s Contentions of Error
According to Appellant, the rejection of independent claim 33 is
improper because “neither [Harland nor Kolawa] discloses providing a
mapping data structure on the first computing system to create a product set
for each ingredient of the recipe by determining the products in the product
database that match product attributes of the ingredients in the recipe,” i.e.,
claim element (iii). Appeal Br. 26. In connection with dependent claim 34,
Appellant further contends the prior art fails to compare products from a
product list that was created by a mapping data structure as recited by the
claim because “Geller does not have the mapping data structure on the first
Appeal 2019-001910
Application 14/161,938
30
computing system to create a product set for each ingredient of the recipe by
determining the products in the product database that match product
attributes of the ingredients in the recipe.” Id. at 27. Appellant contends
corresponding errors in the rejection of independent claims 39 and 46 and
their respective dependent claims 40 and 47. Id. at 28–38.
IV. Examiner’s Answer
The Examiner responds that the rejection is based on the combination
of references, not any one reference standing alone. Ans. 8. The Examiner
disputes Appellant’s contention that Moss fails to teach providing a mapping
data structure on the first computing system to create a product set for each
ingredients by determining the products in the product database that match
product attributes of the ingredients. Id. at 9. According to the Examiner,
the limitation is taught by Moss’s disclosure of “uniquely mapping a product
into a database based on distinguishing characteristics (product attributes)”
as disclosed at paragraphs 248 and depicted in Figure 21 with additional
functionalities disclosed at paragraphs 271–272 and Figure 26 of the
reference. Id. Based on these disclosures, the Examiner finds “Moss
teaches a user selecting a product attribute for each product on a potential
shopping list, and receiving a product set for each product of the list based
on matching products in the product database mapped data structure that
match the user selected product attribute.” Id. at 10. The Examiner explains
that “[alt]hough Moss does not teach that these listed products/ingredients
can be part of a recipe list, . . . the Harlan and Kolawa references teach that
these listed products/ingredients from Moss can be part of a recipe list.” Id.
The Examiner further finds Kolawa’s disclosure of “a system for
recommending recipes and shopping lists includes a customer database, a
Appeal 2019-001910
Application 14/161,938
31
recipe database, a product database, and a network computer coupled to the
customer database, recipe database, and product database” also teaches the
disputed mapped data structure. Id. (citing Kolawa, col. 2, ll. 14–35).
Addressing Appellant’s contentions that Moss fails to teach additional
aspects of claim 33 (see Appeal Br. 23–26), the Examiner again explains the
rejection is based on the combination of Moss, Geller, Kolawa, and Harlan,
not Moss alone, and why Geller, Kolawa, and Harlan cure the argued
deficiencies of Moss. Ans. 11–14.
V. Appellant’s Reply
Appellant replies, arguing:
In Moss, the consumer is creating a list of shopping preferences.
In claim 33, the mapping data structure is creating a product set.
Harlon and Kolawa provide storage and organization of [a]
recipe database. In claim 33, the product set is created for each
ingredient of the recipe by determining the products in the
product database that match product attributes of the ingredients
in the recipe. Moss would still have the consumer creating the
list of shopping preferences, even if Harlon and Kolawa would
have a list of ingredients from a recipe available. The mapping
data structure organizes a product set for each ingredient of the
recipe to simplify the overall task for the user.
Reply Br. 9–10.
Appellant further argues Moss’s disclosure of building a shopping list
is deficient in teaching claim element (v) because it fails to “describe
building a shopping list from the product sets using the first computing
system based on the weighted attribute of the products.” Id. at 11.
Appellant contends “Moss . . . does not describe the mapping data structure
enhances the operation between the first computing system and second
computing system by creating the product set in order to build the shopping
Appeal 2019-001910
Application 14/161,938
32
list from the weighted attributes of the products.” Id. Finally, Appellant
argues that combining Geller’s user weighting of the importance of product
attributes with Moss’s product selection would nonetheless fail to teach the
limitations of claim 33, because “Moss would still have the consumer
creating the list of shopping preferences; Geller would not change that fact
even with weighing the importance of product attributes.” Id.
V. Analysis
Appellant’s contentions of error are unpersuasive in connection with
the rejection of claims under 35 U.S.C. § 103. As discussed above in
connection with the rejection of claims under 35 U.S.C. § 101, the recited
mapping data structure is interpreted as the recited functionalities devoid of
any particular structure that might otherwise be attributable to a data
structure. Thus, we only need consider whether the prior art teaches the
recited steps in deciding whether the functions attributable to claimed
mapping data structure are taught or suggested by the applied references.
Regardless, under a broad but reasonable definition, Moss’s Figure 21
depicting an interface allowing a user to create a list of shopping preferences
at least suggests a mapping data structure.
Appellant’s argument that “Moss would still have the consumer
creating the list of shopping preferences, even if Harlon and Kolawa would
have a list of ingredients from a recipe available” (Ans. 10) is not
commensurate in scope with claim 33. In particular, claim 33 does not
exclude user interaction in the creation of the shopping list, it only requires a
shopping list be built from the products sets using the first computing
system. In any case, Moss’s disclosure that a consumer selection of items
results in the system generating an “optimal shopping itinerary” (Moss
Appeal 2019-001910
Application 14/161,938
33
¶ 271) for those items in the form of a “shopping list” (Moss ¶ 274 et seq.)
teaches or suggests the disputed shopping list. See also Kolawa, col. 2, ll.
14–27, 45–48 (disclosing “a system for recommending recipes and shopping
lists includes a customer database, a recipe database, a product database, and
a network computer coupled to the customer database, recipe database, and
product database. . . . The network computer . . . creates a shopping list
including ingredients associated with the selected recipe.”)
We also disagree the rejection is deficient because Moss’s shopping
list fails to consider the weighted attributes of products (Reply Br. 11)
because such argument fails to address the Examiner’s findings that Geller
teaches or suggests the disputed weighted attributes. Final Act. 10, Ans. 12,
13–14. Thus, Appellant’s argument is an improper attack on Moss
individually when the rejection is based on a combination of references. In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant’s contention of error in connection with dependent claims
34, 40, and 47 argues Geller does not disclose the claimed mapping
structure. This argument is unpersuasive for the reasons discussed above
finding Moss teaches or suggests the disputed mapping data structure. We
agree with the Examiner in finding Geller otherwise teaches or suggests the
limitations of the disputed dependent claims. See Final Act. 20, Ans. 13–14.
Conclusion
For the reasons discussed above, Appellant’s contentions of Examiner
error in connection with the rejection of independent claims 33, 39, and 46
and dependent claims 34, 40, and 47 are unpersuasive. Accordingly, we
sustain the rejection of claims 33, 34, 39, 40, 46, and 47 under 35 U.S.C.
Appeal 2019-001910
Application 14/161,938
34
§ 103 together with the rejection of dependent claims 35–38, 41–45, and 48–
52, which are not argued separately with particularity.
DECISION SUMMARY
We affirm the Examiner’s rejection of claims 33–52 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
We affirm the Examiner’s rejection of claims 33–52 under 35 U.S.C.
§ 103 over Moss, Geller, Kolawa, and Harlan.
In summary:

TIME PERIOD FOR RESPONSE
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
33–52 101 Eligibility 33–52
33–52 103 Moss, Geller, Kolawa, Harlan 33–52
Overall 33–52