Sandholm, Tuomas

Patent Trials and Appeals Board

Feb 26, 2020

13555576 - (D) (P.T.A.B. Feb. 26, 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.
13/555,576 07/23/2012 Tuomas Sandholm 869.001 5686
35195 7590 02/26/2020
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
LOHARIKAR, ANAND R
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
02/26/2020 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 TUOMAS SANDHOLM
Appeal 2019-004188
Application 13/555,576
Technology Center 3600
Before BRYAN F. MOORE, BETH Z. SHAW, and SCOTT B. HOWARD,
Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–8, 11–18, and 20–25. See Final
Act. 1. Claims 1, 9, 10, and 19 have been cancelled. Appeal Br. 4. We
have jurisdiction 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 does not identify a real party in interest.
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CLAIMED SUBJECT MATTER
The claims are directed to barter chains. See Spec. ¶ 2. Claim 25,
reproduced below with emphasis added, is illustrative of the claimed subject
matter:
25. A system, comprising:
a user device having a user interface and a display;
a network connection to the user device, the user device
receiving from the user interface a user input identifying a first
participant and an item the first participant desires;
a database, accessible by a barter market and connected to
the user device through the network connection, storing
information that identifies at least one donor willing to give an
item and receive nothing in return and identifies at least one other
participant that has the item the first participant desires and is
willing to receive an item that the donor has donated;
a processor, connected to the user device through the
network connection, wherein the processor is further configured
to automatically download a software application to the user
device;
the software application being configured to collect,
through the user interface and send through the network
connection to the database accessible by the barter market,
information identifying the first participant and at least one item
the first participant desires to donate, receive or trade;
the processor executing at least one matching run to create
a barter chain by identifying, from the database, the first
participant, the donor, and thereafter the at least one other
participant, wherein the barter chain starts with a first
participant who donates one or more items without
consideration and does not receive an item in the matching run
and ends with a last participant who receives one or more items
in the matching run and does not give up an item in exchange for
the one or more items in the matching run;
wherein executing at least one matching run comprises
analyzing, using the processor, all of the information about the
available trades and donations to create a ranked and ordered list
in order to select the optimum trades that will result in the largest
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possible barter chain of trades before the chain ends and
transmitting a suggestion to one or more participants of an item
for inclusion by the one or more participants within the barter
chain to facilitate advancement of the barter chain;
wherein the barter chain comprises the first participant, the
donor, the at least one other participant and the items each is
willing to either donate, receive, or trade;
and the processor:
automatically identifying at least one suggested item from
the barter chain and displaying on the user device display the at
least one suggested item;
facilitating a trade of the item that the donor has donated
from the donor to the at least one other participant; and
facilitating trade of the item the first participant desires
between the at least one other participant and the first participant.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Moore US 6,847,938 B1 Jan. 25, 2005
Sobh US 8,078,513 B1 Dec. 13, 2011
(filed July 16, 2007)
Bocheck US 2008/0103987 A1 May 1, 2008
Basham US 2011/0258069 A1 Oct. 20, 2011
(filed Apr. 14, 2011)
http://www.reddit.com/r/bookexchange. November 30, 2010 to March
13, 2011 (recovered from www.archive.org). (hereinafter “Reddit Book
Exchange”).2

REJECTIONS
Claims 2–8, 11–18, and 20–25 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed patent-ineligible subject matter.

2 Reddit Book Exchange is referred to as 892-V during prosecution.
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Claims 2, 3, 5–8, 11–14, 16–18, 20, 21, 23, and 25 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Moore, Reddit
Book Exchange, and Sobh.
Claims 4, 15, and 22 stand rejected under pre-AIA 35 U.S.C. §103(a)
as being unpatentable over Moore, Reddit Book Exchange, Sobh, and
Basham.
Claim 24 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Moore, Reddit Book Exhange, Sobh, and Bocheck.

OPINION
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant. We
are not persuaded by Appellant’s arguments regarding claims 2–8, 11–18,
and 20–25 and we incorporate herein and adopt as our own: (1) the findings,
conclusions, and reasons set forth by the Examiner in the action from which
this appeal is taken (Final Act. 2–16), and (2) the findings, conclusions, and
reasons and rebuttals set forth in the Examiner’s Answer in response to
Appellants’ arguments (Ans. 4–9). We incorporate such findings,
conclusions, reasons, and rebuttals herein by reference unless otherwise
noted. However, we highlight and address specific findings and arguments
for emphasis as follows.

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Section 101 Rejection
Principles of Law
Section 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
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-part 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 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.”).
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 (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
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(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
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 (quotation marks omitted).
“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,
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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.

USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).3 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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 activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(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)) (“Step 2A, Prong Two”).4

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
4 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
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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, under
Step 2B, 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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.

USPTO Step 2A, Prong 1
The Examiner concludes that representative claim 25 “set[s] forth [a]
system for facilitating multiple barter transactions between users [and that]
[t]hese limitations amount to certain methods of organizing human activity,
including commercial or legal interactions (e.g. advertising, marketing or
sales activities or behaviors). Ans. 5; see also Final Act. 2 (concluding that
“the claims are drawn to the idea of facilitating multiple barter transactions
between users (see claim 25),” which is a fundamental economic practice).
The Examiner further determines that “[s]uch concepts have been identified
by the courts as abstract ideas.” Ans. 5 (citing 2019 Revised Guidance).

determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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The Examiner specifically identifies the following claim limitations as
setting forth a barter system:
• receiving a user input identifying a first participant and an
item the first participant desires;
• storing information that identifies at least one donor
willing to give an item and receive nothing in return and
identifies at least one other participant that has the item the first
participant desires and is willing to receive an item that the donor
has donated;
• collecting and sending information identifying the first
participant and at least one item the first participant desires to
donate, receive or trade;
• executing at least one matching run to create a barter chain
by identifying the first participant, the donor, and thereafter the
at least one other participant;
• analyzing all of the information about the available trades
and donations to create a ranked and ordered list in order to select
the optimum trades that will result in the largest possible barter
chain of trades before the chain ends and transmitting a
suggestion to one or more participants of an item for inclusion
by the one or more participants within the barter chain to
facilitate advancement of the barter chain;
• automatically identifying at least one suggested item from
the barter chain and
• facilitating a trade of the item that the donor has donated
from the donor to the at least one other participant; and
• facilitating trade of the item the first participant desires
between the at least one other participant and the first participant.
Ans. 4–5.
Appellant argues the Examiner’s conclusions are “unsupported by the
evidence of record and is formed as nothing more than a conclusory
statement” and “a broad overgeneralization of the claims.” Appeal
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Br. 23–24.5 Appellant also argues “that the Office has not identified any
particular abstract idea allegedly claimed as corresponding to any abstract
idea defined by the courts.” Id. at 25.
Appellant further argues that the claims are not directed to an abstract
idea; instead, according to Appellant, the claims are directed to a
technological improvement. See Appeal Br. 25–31; Reply Br. 24–25.
Specifically, Appellant argues “that the claims are directed to an
improvement to the technical field of barter markets by providing a system
that can automatically identify and generate barter chains using” specific
requirements. Appeal Br. 25–26; see also id. at 26 (“Applicant respectfully
submits that the claims are directed to technological improvements to the
technological field of barter markets.”); id. at 27 (“Applicant respectfully
point to the specification which identifies that the claimed invention
achieves benefits over conventional techniques for barter markets.”).
According to Appellant, “the present application provides a technique
that is faster than conventional techniques, allows for generation of barter
chains, and allows for suggestions of items and/or participants for inclusion
in the barter chain that is not possible using conventional techniques.” Id. at
28; see also id. at 28–30 (arguing the claims are similar to those found
eligible in Trading Techs. Int’l, Inc. v. COG, Inc.); id. at 30 (“Applicant’s
specification describes the specific technical improvements to programming
that permit the system to evaluate product features in novel, non-obvious
ways.”).

5 Appellant repeats every statement from the Appeal Brief in the Reply
Brief. For ease of reference, we refer only to the Appeal Brief for those
statements.
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We are not persuaded by Appellant’s arguments that the Examiner
erred. Contrary to Appellant’s arguments, the Examiner made specific
findings and conclusions regarding the abstract idea. See Ans. 4–5.
Moreover, the Examiner’s determinations were not conclusory. Rather, the
Examiner specifically identified claim limitations that recited the abstract
idea and referenced and applied the 2019 Revised Guidance.
We are also not persuaded that the claims are directed to a
technological solution. The Specification identifies the claimed invention as
directed to “barter systems” and more specifically, “commercial applications
for barter chains.” Spec. ¶ 2. This is consistent with the claims, which, as
discussed below, recite steps of a barter system.6
Instead, we agree with the Examiner that the claims recite an abstract
idea. The limitations identified by the Examiner—and reproduced above—
recite a barter system. Specifically, the limitations refer to identifying users
who will participate in the barter, information regarding the items available
and wanted for barter, and using that information to create a barter chain. A
barter system involves the exchange of goods or services. Thus, like the
concept of intermediated settlement in Alice, and the concept of hedging in
Bilski, the concept of a barter chain/system in Appellant’s claims “is a
fundamental economic practice long prevalent in our system of commerce.”
Alice, 573 U.S. at 216 (citations and internal quotation marks omitted); see
also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed.
Cir. 2015) (concluding that claimed concept of “offer-based price
optimization” is an abstract idea “similar to other ‘fundamental economic

6 Appellant’s technological solution arguments are addressed in more details
with regard to USPTO step 2A, Prong 2, infra.
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concepts’ found to be abstract ideas by the Supreme Court and this court”);
buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014)
(holding that concept of “creating a contractual relationship—a ‘transaction
performance guaranty’” is an abstract idea); In re Ferguson, 558 F.3d 1359,
1364 (Fed Cir. 2009) (holding methods “directed to organizing business or
legal relationships in the structuring of a sales force (or marketing
company)” to be ineligible). Accordingly, we conclude the claims recite a
fundamental economic practice, which is one certain methods of organizing
human activity identified in the 2019 Revised Guidance, and thus an abstract
idea.

USPTO Step 2A, Prong 2
The Examiner concludes that claim 25 recites additional elements
which are not part of the abstract idea:
• automatically download a software application to the user
device;
• displaying on the user device display the at least one
suggested item.
Ans. 6. The Examiner determines that the steps, whether considered
individually or as a whole, “do[] not integrate the recited judicial exception
into a practical application of the exception.” Id. The Examiner further
determines that the steps “merely includes instruction to implement an
abstract idea of a computer, or to merely use a computer as a tool to perform
an abstract idea, while the additional elements do no more than generally
link the use of a judicial exception to a particular field of technological
environment or field of use.” Id.
The Examiner also determines that the claim
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fails to (i) reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical
field, (ii) implement a judicial exception with a particular
machine, (iii) effect a transformation or reduction of a particular
article to a different state or thing, or (iv) apply the judicial
exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular
technological environment.
Ans. 6.
Appellant relies on its arguments directed to USPTO Step 2A, prong
1, set forth above. Reply Br. 32.
We are not persuaded by Appellant’s arguments that the Examiner
erred. Claim 25 does not constitute an improvement to computer
technology; rather, it merely improves the abstract idea of a barter system in
which people exchange goods and services. Moreover, the claims here do
not improve computer functionality itself or cover a technology-based
solution that improves an existing technological process. See Final Act. 3–4;
Ans. 6. For instance, the claims do not recite an advance in hardware or
software that improves the functionality of, for example, a processor or
client device, or of the servers. Instead, we agree with the Examiner that the
additional limitations recited in claim 25 simply use the computer as a tool
to perform the abstract idea.
The sections of the Specification cited by the Appellant do not
persuade us that the claims are directed to a technological improvement.
Instead, the cited sections—paragraphs 3 and 14 (Appeal Br. 27–28)—
simply describe the abstract idea of the improved barter system. Spec. ¶¶ 3,
14. However, those sections do not describe any technological improvement
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that improves computer functionality. See MPEP § 2106.05(a) (9th ed. rev.
08.2017 Jan. 2018).
We are also not persuaded that claim 25 is analogous to the claims
found patent-eligible in Trading Technologies.7 In Trading Technologies,
U.S. Patent Nos. 6,772,132 (“’132 patent”) and 6,766,304 (“’304 patent”)
describe “[a] method and system for reducing the time it takes for a trader to
place a trade when electronically trading on an exchange, thus increasing the
likelihood that the trader will have orders filled at desirable prices and
quantities.” ’132 patent, Abstract; ’304 patent, Abstract. In particular, the
Trading Technologies patents describe a trading system in which a graphical
user interface “display[s] the market depth of a commodity traded in a
market, including a dynamic display for a plurality of bids and for a plurality
of asks in the market for the commodity and a static display of prices
corresponding to the plurality of bids and asks.” ’132 patent, 3:11-16; ’304
patent, 3:15-20. “The claims require a specific, structured graphical user
interface paired with a prescribed functionality directly related to the
graphical user interface's structure that is addressed to and resolves a
specifically identified problem in the prior state of the art.” Trading Techs.,
675 F. App’x at 1004. As such, the panel found Trading Technologies’’
“claimed subject matter is ‘directed to a specific improvement to the way
computers operate,’ . . . for the claimed graphical user interface method
imparts a specific functionality to a trading system ‘directed to a specific
implementation of a solution to a problem in the software arts.”’ Id. at 1006.

7 Trading Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir.
2017)
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In contrast to Trading Technologies, the problem identified by
Appellant in the Specification is a business problem, and the solution
proposed by Appellant is a business solution implemented with a generic
display and processor, rather than a technological solution to a technological
problem. This is similar to what the court determined to be ineligible in
subsequent precedential decisions in the Trading Technologies line of cases,
in which the generic use of a computer as a tool without improvement of the
computer was determined not to be an integration of an abstract idea into a
practical application. See, e.g., Trading Techs. Int’l, Inc. v. IBG LLC, 921
F.3d 1084, 1093–94 (Fed. Cir. 2019) (holding that the patent owner “argues
the claims improve computer functionality by improving on the intuitiveness
and efficiency of prior GUI tools. The specification makes clear that this
invention helps the trader process information more quickly. This is not an
improvement to computer functionality, as alleged by [the patent owner].”).
In other words, the problems associated with developing a barter chain is not
brought about by technology and does not require technology for resolution.
Appellant’s claimed invention does not “improve the functioning of a known
system” similar to the “interface” improvements that occurred in Trading
Technologies. 675 F. App’x 1004–05. Any purported improvements are to
the underlying barter system, not the underlying generic computer elements.
Accordingly, we are not persuaded of error in the Examiner’s
determination that claim 25 is directed to an abstract idea, and we find the
claimed additional elements do not integrate the abstract idea into a practical
application.

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USPTO Step 2B
The Examiner determines that the limitations recited in claim 25,
taken individually or as a whole, do not provide an inventive concept
because “[t]he claim merely appends well-understood, routine, and
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception.” Ans. 6. Specifically, the
Examiner finds that claim 25
merely utilizes computer function that the courts have recognized
as well-understood, routine, and conventional, such as receiving
or transmitting data over a network (receiving a user input . . . ,
collecting and sending information . . . , transmitting a suggestion
. . .), performing repetitive calculations (executing at least one
matching run . . . , analyzing all of the information. . . ,
identifying at least one suggested item . . . ), and storing and
retrieving information in memory (storing information that
identifies at least one donor . . . ).
Id. at 6–7 (citing MPEP 2106.05(d)).
Appellant argues that “the Office must provide evidence of a factual
determination that supports a conclusion that the additional elements
represent well-understood, routine, or conventional activity.” Appeal Br. 31.
According to Appellant, “the Office has not provided such evidence that
would support a conclusion that the additional elements represent well-
understood, routine, or conventional activity.” Id. In fact Appellant argues
that “these limitations confine any abstract idea to the particular, practical
application of the abstract idea, and, as explained in the specification, this
combination of limitations is not well-known, understood, routine, or
conventional activity. Id. at 33.
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Appellant also argues that the claims require more than a generic
computer. Appeal Br. 32. Appellant further argues that even if the elements
are generic, “these known elements are combined in a manner that is
unconventional and non-generic, and are, thus, directed to substantially more
than any abstract idea.” Id. at 33
We are not persuaded by Appellant’s arguments that the Examiner
erred. Pursuant to the Berkheimer Memorandum,8 the Examiner determined
that the claim limitations were not well-understood, routine, or conventional
based on the cases cited in MPEP § 2106.05(d). Specifically, the types of
generic computer components performing generic computer functions
recited in claim 25 have been found to be well understood, routine, and
conventional. See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in light of
the specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information”); buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images insufficient
to add an inventive concept); Alice, 573 U.S. at 225–26 (receiving, storing,

8 USPTO Memorandum, Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF.
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sending information over networks insufficient to add an inventive concept);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011) (use of Internet to verify credit-card transaction does not add enough
to abstract idea of verifying the transaction); see also MPEP § 2106.05(d)
(“Courts have held computer‐implemented processes not to be significantly
more than an abstract idea (and thus ineligible) where the claim as a whole
amounts to nothing more than generic computer functions merely used to
implement an abstract idea, such as an idea that could be done by a human
analog (i.e., by hand or by merely thinking.”)).
Nor does Appellant persuade us that the ordered combination set forth
in claim 25 is not well understood, routine, and conventional. Appellant
relies solely on attorney argument and a recitation of some of the claim
limitations. See Appeal Br. 32–33. However, it is well settled that mere
attorney arguments and conclusory statements, which are unsupported by
factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (attorney argument is not evidence). Instead, we agree
with the Examiner that the ordered combination of elements in claim 25 “do
not add anything further than when they are considered individually.”
Ans. 7.
Conclusion on Section 101 Rejection
Accordingly, we sustain the Examiner’s rejection of claim 25 as being
directed to patent-ineligible subject matter, as well as independent claims 12,
and 21 with commensurate limitations, and dependent claims 2–8, 11, 13–
18, 20, and 22–24, which are not separately argued.

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Section 103 Rejection –Claims 2, 3, 5–8, 11–14, 16–18, 20, 21, 23, and 25
Examiner rejects claims 2, 3, 5–8, 11–14, 16–18, 20, 21, 23, and 25 as
having been obvious over Moore, Reddit Book Exchange, and Sobh. Below
we discuss Appellant’s arguments against this rejection.
Reason to Combine
Appellant argues the Examiner erred in combining Moore, Reddit
Book Exchange, and Sobh. Appeal Br. 34. Specifically, Appellant argues
“that the Office has not articulated a reason why a person skilled in the art
would combine the prior art references, does not have adequate evidentiary
basis for that finding, and has not provided a satisfactory explanation for the
motivation finding that includes an express and rational connection with the
evidence presented.” Id. We are not persuaded by Appellant’s argument
that the Examiner erred. Contrary to Appellant’s assertion, the Examiner
provided a detailed reason to combine the teachings of the references with
citations to the record. In particular, the Examiner determines, and we
agree, that a person having ordinary skill in the art would have combined the
techniques of the Reddit Book Exchange with Moore because it “would have
yielded predictable results and resulted in an improved system” and that
such “an improved system that would allow some users to get rid of
unwanted items while allowing other users to receive items.” Final Act. 11.
The Examiner further determines that a person having ordinary skill in the
art would have combined the teachings of Sobh with Moore because it “have
yielded predictable results and resulted in an improved system” and would
have resulted in “an improved system that would allow a plurality of
permutations of trading cycles that allow for indirect exchanges between its
members, with the option of using cash as an exchange element.” Id. at
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12.Accordingly, the Examiner provides a “rational underpinning to support
the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007).
“Create a Barter Chain” Limitation
Appellant further argues that the Examiner erred in finding Moore
teaches the “create a barter chain . . .” limitation9 recited in claim 25.
Appeal Br. 35–36. Specifically, Appellant argues Moore contemplates a
system in which each person both gives and receives an item. Id. (citing
Moore, 4:10–20, 4:65–5:12). Appellant further argues that Moore
“specifically teaches against a system that would use barter chains.” Id.
(citing Moore, 4:10–20, 4:65–5:12).
First, the Examiner did not rely on Moore alone for the “create a
barter chain” limitation. Instead, the Examiner relied on the combination of
Moore and Reddit Book Exchange for the “create a barter chain” limitation.
Final Act. 10–12. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). Because Appellant focuses on Moore

9 The “create a barter chain” limitation is italicized in the recitation of the
claim on pages 2–3, supra.
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alone and not the combination of references relied on by the Examiner, we
are not persuaded the Examiner erred.
Second, we find Appellant has not established that the prior art
teaches away from the claimed invention because Appellant has not
demonstrated that “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed Cir. 1994). The passage,
which discusses a preferred embodiment, “does not teach away. . . [as] it
merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004)). Specifically, the cited sections simply discuss a
conventional barter circle—in which every person both gives and receives
an item. See Moore 4:10–20, 4:65–5:12. However, Appellant does not
identify any passage in Moore that explicitly discredits or discourages a
barter chain in which the end people either receive or give an item, but not
both. The cited section do no more than articulate a preference for a
conventional barter circle. But that stated preference is insufficient to teach
away from the claimed invention. See DePuy, 567 F.3d at 1327; Fulton, 391
F.3d at 1201.
Accordingly, we sustain the rejection of independent claims 12, 21,
and 25—which are argued as a group—along with dependent claims 2, 3,
5–8, 11, 13, 14, 16–18, 20, and 23, which are not argued separately.
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Section 103 Rejection –Claims 4, 15, 22, and 24
Appellant does not separately argue dependent claims 4, 15, 22, and
24, which each rely on an additional reference. Because we determine that
the rejection of the independent claims is not erroneous for the reasons
discussed above, we sustain the rejections of these claims.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2–8, 11–18,
20–25
101 eligibility 2–8, 11–
18, 20–25

2, 3, 5–8,
11–14, 16–
18, 20, 21,
23, 25
103(a) Moore, Reddit Book
Exchange, Sobh
2, 3, 5–8,
11–14, 16–
18, 20, 21,
23, 25

4, 15, and
22
103(a) Moore, Reddit Book
Exchange, Sobh,
Basham
4, 15, and
22

24 103(a) Moore, Reddit Book
Exchange, Sobh,
Bocheck
24
Overall
Outcome:
2–8, 11–
18, 20–25

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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED