Selina Lam et al.

Patent Trials and Appeals Board

Jun 22, 2020

12489863 - (D) (P.T.A.B. Jun. 22, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/489,863 06/23/2009 Selina Lam 2043.672US1 2387
49845 7590 06/22/2020
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
06/22/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SLW@blackhillsip.com
USPTO@SLWIP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SELINA LAM,
RICHARD AARON NEAL SHUSTERMAN, and
LAWRENCE ILLG
_____________

Appeal 2019-006964
Application 12/489,863
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, CATHERINE SHIANG, and
LINZY T. MCCARTNEY, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1–4 and 6–20. Claim 5 is canceled. We have jurisdiction over the
pending claims 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(a). According to Appellant, the real party in interest is
eBay Inc. See Appeal Br. 2.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention relates generally to “providing
automatic advertising distribution for online computer users.” Spec. ¶ 2.

Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Kao US 2002/0095334 A1 July 18, 2002
Lawe US 2004/0225563 A1 Nov. 11, 2004
Webster et al. US 2014/0032547 A1 Jan. 30, 2014
Maloney et al. US 2014/0327660 A1 Nov. 6, 2014

Rejections
Rej. Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 1–4, 6–20 101 Eligibility
B 1–3, 6, 8–20 103(a) Kao, Lawe
C 4 103(a) Kao, Lawe, Maloney et al.
(“Maloney”)
D 7 103(a) Kao, Lawe, Webster et al. (“Webster”)
E 2, 3, 10, 11,
18, 19
103(a) Kao, Lawe, Applicant’s Admitted
Prior Art
F 12 103(a) Kao, Lawe, Official Notice

2 We herein refer to the Final Office Action, mailed Mar. 4, 2019 (“Final
Act.”); Appeal Brief, filed June 27, 2019 (“Appeal Br.”); the Examiner’s
Answer, mailed July 31, 2019 (“Ans.”); and the Reply Brief, filed Sept. 26,
2019 (“Reply Br.”).
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Rejection A of Claims 1–4 and 6–20 under § 101
USPTO § 101 Guidance
The U.S. Patent and Trademark Office (USPTO) has published
revised guidance on the application of 35 U.S.C. § 101. See USPTO
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (“2019 Memorandum”).3 Under that
guidance, we first look to whether the claim recites:
(1) (see 2019 Memorandum Step 2A – Prong One) any judicial
exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or
mental processes); and
(2) (see 2019 Memorandum Step 2A – Prong Two) additional
elements that integrate the judicial exception into a practical
application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).4
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 The Office issued a further memorandum on October 17, 2019 (the
“October 2019 Memorandum”) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” 2019 Memorandum at 51;
see also October 2019 Memorandum at 1.

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
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Memorandum - Section III(A)(2).
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(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 Memorandum Step 2B.
Because there is no single definition of an “abstract idea” under Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) Step 1, the 2019
Memorandum synthesizes, for purposes of clarity, predictability, and
consistency, key concepts identified by the courts as abstract ideas to explain
that the “abstract idea” exception includes the following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Memorandum, 84 Fed. Reg. at 52.
According to the 2019 Memorandum, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
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abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Memorandum, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception — see MPEP
§ 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely including instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”).
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ANALYSIS
2019 Memorandum, Step 2A, Prong One
The Judicial Exception
We reproduce infra independent claim 1 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. We
highlight and address specific findings and arguments for emphasis in our
analysis below.5

Rejection A of Claims 1–4 and 6–20 under § 101
The Examiner concludes the claims recite an abstract idea:
The claims recite receiving a first ad listing version, storing the
listing, displaying the listing, modifying the listing, [and]
providing a second listing based on the modifying. This is
considered in the Abstract Idea grouping of certain methods of
organizing human activity—advertising, marketing or sales
activities or behaviors.
Final Act. 3.
Under the 2019 Memorandum, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.

5 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation (BRI) consistent with the Specification. See In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

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Independent Claim 1
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We also identify in bold
the additional (non-abstract) claim elements that we find are generic
computer components:
TABLE ONE

Independent Claim 1 2019 Memorandum
[a]A computer-implemented
method comprising: 6

[b] automatically identifying new
active ecommerce listings from
source sites for propagation to sites
in other regions
by retrieving, by one or more
hardware processors at a central
distribution hub from a first
plurality of source e-commerce sites
associated with a first region, first
versions of a corresponding
plurality of active e-commerce
listings posted by a respective
plurality of users offering a product
available for purchase, each of the
first versions identifying one or
more listing features associated with
Abstract Idea: automatically
identifying new active ecommerce
listings from source sites for
propagation to sites in other regions
is a method of organizing human
activity— i.e., a fundamental
economic practice that includes
commercial interactions in the form
of sales activities or behaviors,
including advertising, marketing, and
business relations that can be
performed alternatively by a person
as a mental process. See 2019
Memorandum, 84 Fed. Reg. at 52.
Retrieving, by one or more hardware
processors at a central distribution

6 A method falls under the statutory subject matter class of a process. See
35 U.S.C. § 101 (“Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.”).

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Independent Claim 1 2019 Memorandum
the respective active e-commerce
listing, the one or more hardware
processors at the central
distribution hub is distinct from
the first source e-commerce site
associated with the first region;

hub from a first plurality of source e-
commerce sites associated with a
first region, first versions of a
corresponding plurality of active e-
commerce listings is insignificant
extra-solution activity (i.e., data
gathering). See 2019 Memorandum,
84 Fed. Reg. at 55 n.31; see also
MPEP § 2106.05(g).

[c] storing the listings at the central
distribution hub;
Storing the listings at the central
distribution hub is insignificant
extra-solution activity (i.e., data
gathering). See 2019 Memorandum,
84 Fed. Reg. at 55 n.31; see also
MPEP § 2106.05(g).

[d] modifying at least one of the one
or more listing features of each of
the stored listings based on one or
more characteristics of the second
region to produce second versions
of the active e-commerce listings,
the modifying comprising one or
more of currency conversion, time
conversion, metric conversion, or
language translation; and
Abstract Idea: modifying at least one
of the one or more listing features of
each of the stored listings is a
method of organizing human
activity— i.e., a fundamental
economic practice that includes
commercial interactions in the form
of sales activities or behaviors,
including advertising, marketing, and
business relations that can be
performed alternatively by a person
as a mental process. See 2019
Memorandum, 84 Fed. Reg. at 52.

[e] transmitting the second versions
of the active e-commerce listings to
a second e-commerce site
Transmitting the second versions of
the active ecommerce listings to a
second e-commerce site is
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Independent Claim 1 2019 Memorandum
associated with the second region,
thereby making each of the
respective products available for
purchase on the second e-commerce
site.
insignificant post-solution activity.
See 2019 Memorandum, 84 Fed.
Reg. at 55 n.31; see also MPEP
§ 2106.05(g).

Abstract Idea
As identified above in Table One, we conclude the following claim 1
steps recite an abstract idea: “[b] automatically identifying new active
ecommerce listings from source sites for propagation to sites in other
regions . . . [and] [d] modifying at least one of the one or more listing
features of each of the stored listings.”
In particular, we conclude steps b and d are each a method of
organizing human activity— i.e., a fundamental economic practice that
includes commercial interactions in the form of sales activities or behaviors,
including advertising, marketing, and business relations, that can be
performed alternatively by a person as a mental process. 7 See 2019
Memorandum, 84 Fed. Reg. at 52.

7 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011). “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
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Because claim 1 recites an abstract idea, as identified in Table One,
supra, and because remaining independent claims 9 and 17 recite similar
language of commensurate scope, we conclude all claims 1–4 and 6–20
recite an abstract idea, as identified above, under Step 2A, Prong One.
Therefore, we proceed to Step 2A, Prong Two.

2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Memorandum, we consider whether there are
additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Memorandum, 84 Fed. Reg.
at 54–55.
The Examiner concludes:
This judicial exception is not integrated into a practical
application because the claim is directed to an abstract idea with
additional generic computer elements. The generically recited
computer elements do not add a meaningful limitation to the
abstract idea because they amount to simply implementing the
abstract idea on a computer. While Applicant is addressing a
technical problem, Applicant is not found to have a technical
solution. The automatic [step of claim 1] is considered a generic
automati[on] of a manual process and not a particular technical
solution. Hence, Applicant has not shown a practical application
beyond the abstract idea.

687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“[R]elying on a
computer to perform routine tasks more quickly or more accurately is
insufficient to render a claim patent eligible.”).

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Final Act. 3–4.
Additional Generic Computer Limitations
As emphasized in bold in Table One, supra, we note the additional
generic computer components recited in claim 1, for example: “A
computer-implemented method comprising: . . . one or more hardware
processors at a central distribution hub.”
We further note the supporting exemplary, non-limiting descriptions
of generic computer components in the Specification, for example, at
paragraph 62:
The machine may be a personal computer (PC), a tablet PC, a
set-top box (STB), a Personal Digital Assistant (PDA), a cellular
telephone, a web appliance, a network router, switch or bridge,
or any machine capable of executing a set of instructions
(sequential or otherwise) that specify actions to be taken by that
machine. Further, while only a single machine is illustrated, the
term “machine” can also be taken to include any collection of
machines that individually or jointly execute a set (or multiple
sets) of instructions to perform any one or more of the
methodologies discussed herein.
Spec. ¶ 62 (emphasis added).
We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016) guides: “The abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra, Table One.
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MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

Appellant contends:
A first factor identified by the Revised Guidance is that the
additional elements reflect an improvement in the functioning
of a computer, or technical field. Applicant respectfully submits
that providing automatic advertising distribution for online
computer users from one region to another represents a technical
field. Before the subject of the present application was provided,
it was previously not possible to automatically detect a listing in
a first region and with extremely low latency, modify that listing
for a second geographic region for publication in that second
region.
Appeal Br. 10 (emphasis added) (footnote omitted).
Regarding independent claims 1, 9, and 17, our reviewing court
guides that the “‘mere automation of manual processes using generic
computers’ . . . ‘does not constitute a patentable improvement in computer
technology.’” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384
(Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1055 (Fed. Cir. 2017). Simply adding generic hardware and
computer components to perform abstract ideas does not integrate those
ideas into a practical application, because the “mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 573 U.S. at 223; see 2019 Memorandum, 84 Fed.
Reg. at 55 n.30. See also 2019 Memorandum, 84 Fed. Reg. at 55 (“merely
includ[ing] instructions to implement an abstract idea on a computer” is an
example of when an abstract idea has not been integrated into a practical
application).
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Appellant additionally contends:
Like Claim 1 of Example 42 [of the 2019 Memorandum],
the additional elements above recite a specific improvement
over prior art systems by obtaining active e-commerce listings
from source sites for propagation to sites in other regions. The
claims describe that before the listings are propagated, a
modification “comprising one or more of currency conversion,
time conversion, metric conversion, or language translation.”
The claims are also unlike Claim 2 of Example 42, because they
describe more than simply applying “collecting information,
analyzing it and displaying certain results of the collection and
analysis.” Instead, the claims are directed to, as described by the
specification, processing of e-commerce listings for posting to a
pre-configured set of destination sites that may be other local
sites, regional sites, or global sites. Processing includes currency
conversion, time conversion, metric conversion, and some forms
of language translation. The processed ads are pushed to the
destination sites.
Appeal Br. 12–13 (emphases added).
But we conclude processing such as “currency conversion, time
conversion, metric conversion, and some forms of language translation” (id.)
can be performed alternatively as mental processes. Moreover, “[u]sing a
computer to accelerate an ineligible mental process does not make that
process patent-eligible.” See Bancorp, 687 F.3d at 1279.
We emphasize that an improved abstract idea is still an abstract
idea. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
90 (2012) (holding that a novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent ineligible). See also Synopsys, 839 F.3d
at 1151 (“[A] claim for a new abstract idea is still an abstract idea.”
(emphasis omitted)).

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As set forth in MPEP § 2106.05(a):
To show that the involvement of a computer assists in
improving the technology, the claims must recite the details
regarding how a computer aids the method, the extent to which
the computer aids the method, or the significance of a computer
to the performance of the method . . . . Merely adding generic
computer components to perform the method is not sufficient.
Thus, the claim must include more than mere instructions to
perform the method on a generic component or machinery to
qualify as an improvement to an existing technology.
(emphasis added).
Here, we find Appellant has not persuasively shown how the claims
“recite the details regarding how a computer aids the method, the extent to
which the computer aids the method, or the significance of a computer to the
performance of the method.” Id. (emphasis added).
Accordingly, on this record, we conclude independent claim 1, and
independent claims 9 and 17, which recite similar limitations of
commensurate scope, do not recite an improvement to the functionality of a
computer or other technology or technical field. See MPEP § 2106.05(a).

MPEP §§ 2106.05(b) and (c)
The Bilski Machine-or-Transformation test
as applied to method claims 1–4 and 6–8

Appellant urges the method claims on appeal are tied to a particular
machine. See MPEP § 2106.05(b). In support, Appellant contends
any alleged judicial exception that is allegedly implemented by
Applicant’s claim cannot be performed except in conjunction
with a particular machine that is integral to the claim. In
particular, Applicant’s claim above recites that new active
ecommerce listings are identified from “source sites” of “a
plurality of source e-commerce sites” for “propagation to sites in
other regions” or “a second e-commerce site associated with the
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second region.” Thus, the claim requires interaction with both
source sites and sites in other regions. Thus, the claims describe
a specific relationship between two different ecommerce sites.
Furthermore, the claims describe storing the retrieved listings at
a central distribution hub. Thus, these particular machines are
integral to the claim, and contribute to the statutory nature of
Applicant’s present claims.
Appeal Br. 10–11 (emphasis added).
We note the Supreme Court cautions that the Machine-or-
Transformation test is not the sole test, but may provide a useful clue:
This Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under § 101. The machine-or-
transformation test is not the sole test for deciding whether an
invention is a patent-eligible “process.”
Bilski v. Kappos, 561 U.S. 593, 604 (2010) (emphasis added).
Here, to the extent the claims describe a specific relationship between
different ecommerce sites in different locations (as argued by Appellant —
Appeal Br. 10–11), we do not see how this changes the structure of the
claimed generic computer components so as to form a particular machine,
because the structure of an apparatus does not change according to its
geographic location.
We have noted above the supporting exemplary, non-limiting
descriptions of generic computer components in the Specification, for
example, at paragraph 62, such as:
The machine may be a personal computer (PC), a tablet PC, a
set-top box (STB), a Personal Digital Assistant (PDA), a cellular
telephone, a web appliance, a network router, switch or bridge,
or any machine capable of executing a set of instructions
(sequential or otherwise) that specify actions to be taken by that
machine.
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Spec. ¶ 62 (emphasis added).
Because generic computer components such as a “computer” and “one
or more hardware processors at a central distribution hub” are recited in
computer-implemented method claim 1, we conclude claim 1, and the
method claims that depend therefrom, do not define or rely upon a
“particular machine.” See MPEP § 2106.05(b).
Further, we conclude method claims 1–4 and 6–8 do not transform an
article to a different state or thing. See MPEP § 2106.05(c).

MPEP § 2106.05(e) Meaningful Claim Limitations
Appellant argues that claim 1 recites certain “meaningful” claim
limitations, such as those of the types addressed under MPEP § 2106.05(e),
that impose meaningful limits on the judicial exception.8
In support, Appellant contends
the specification discloses that the claims are generally directed
to providing for automatic advertising distribution for online
computer users. This can simplify and facilitate the shopping
experience on a host site. [See Spec. ¶ 14.] Furthermore,
Applicant’s claims recite specific features that limit applicability
of the present claims to this particular purpose. As already
discussed above, the claims describe specifically that ecommerce
listings are identified from “a plurality of source e-commerce
sites” “for propagation to sites in other regions.” Thus, the claims
are not simply linking the alleged abstract ideas of “certain

8 See 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP § 2106.05(e):
“[A]ppl[ying] or us[ing] the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception.” (emphasis added).
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methods of organizing human activity — advertising, marketing
or sales activities or behaviors[]” to a technological environment,
but are instead are applying the general idea of advertising in
different regions in a meaningful way, for example, as described
in Applicant’s specification, to “simplify and facilitate the
shopping experience on a host site.”
Appeal Br. 11 (emphasis added).
To the extent the Specification purportedly describes applying the
general idea of advertising in different regions in a meaningful way, for
example, as described in Applicant’s Specification (¶ 14) to “simplify and
facilitate the shopping experience on a host site,” we note advertising is a
type of fundamental economic practice and a judicial exception under the
2019 Memorandum, 84 Fed. Reg. at 52. We conclude any form of
advertising can potentially simplify and facilitate the shopping experience —
this is not a unique feature of Appellant’s claimed invention.
It is our view that distributing online advertising to additional
geographical regions is still advertising, which is an abstract idea. To the
extent the distribution of such advertising to additional geographical regions
is performed automatically by a computer, as noted above, the mere
automation of manual processes using generic computers does not constitute
a patentable improvement in computer technology. See Trading Techs., 921
F.3d at 1384. See also Bancorp, 687 F.3d at 1279 (“Using a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.”).

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MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
merely using a computer as a tool
to perform an abstract idea
We conclude Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components,
as depicted in bold type in Table One (above), and as supported in
Appellant’s Specification, e.g., Spec. ¶ 62, and as recited in claim 1, for
example: “A computer-implemented method comprising: . . . one or more
hardware processors at a central distribution hub.” (emphasis added).
Therefore, we conclude Appellant’s claims merely use a generic
programmed computer as a tool to perform an abstract idea.

MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception
As mapped in the right column of Table One, supra, we conclude that
independent claim 1 recites extra or post-solution activities that courts have
determined to be insufficient to transform judicially excepted subject matter
into a patent-eligible application. See MPEP § 2106.05(g); 2019
Memorandum, 84 Fed. Reg. at 55 n.31.
For example, see Claim 1, Table One, supra, step e, in which we
conclude that transmitting the second versions of the active ecommerce
listings to a second e-commerce site is insignificant post-solution activity.
See 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see also MPEP
§ 2106.05(g). See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
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Cir. 2014) (“That a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive.”).
These extra or post-solution limitations use a generic computer component
that performs a generic computer function as a tool to perform an abstract
idea. Thus, these limitations do not integrate the abstract idea into a
practical application. See Alice, 573 U.S. at 223–24. Instead, these
limitations merely perform insignificant extra-solution activities. Cf. Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with
the Board that printing and downloading generated menus are insignificant
post-solution activities). See also Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1341 (Fed. Cir. 2017) (Streaming
audio/visual data over a communications system like the Internet held patent
ineligible.).

MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “[T]he prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–12 (quoting
Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
We note Appellant advances no arguments regarding a lack of
preemption in the Appeal Brief.
Nor do claims 1–4 and 6–20 on appeal present any other issues as set
forth in the 2019 Memorandum regarding a determination of whether the
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additional generic computer elements integrate the judicial exception into a
practical application. See 2019 Memorandum, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–4 and 6–20 do not integrate the judicial
exception into a practical application. Therefore, we proceed to Step 2B,
The Inventive Concept.
The Inventive Concept – Step 2B
Under the 2019 Memorandum, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
On April 19, 2018, the PTO issued the Memorandum titled: “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memorandum”).9 The Berkheimer Memorandum provided
specific requirements for an Examiner to support with evidence any finding

9 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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that claim elements (or a combination of elements) are well-understood,
routine, or conventional.
The Examiner finds, under Step 2B of the 2019 Memorandum: “[T]he
claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the additional
limitations only perform well-understood, routine, conventional computer
functions as recognized by the court decisions listed in MPEP § 2106.05(d).”
Final Act. 4 (emphasis added).
In the Answer, the Examiner restates the finding that there is no
inventive step under Step 2B, because:
The claims use the generic Internet and a generic network
configuration of a central site and regional sites. And, the claims
perform generic scraping operations to merely move ads from a
regional site to a central site, modify the ad, then move the ad to
another regional site. The claims merely perform the abstract
idea on a generic computer configuration. The claims add no
inventive step to the abstract idea. Hence, there is no inventive
step.
Ans. 4.
The Examiner makes no new findings in the Answer regarding any
additional claim elements that are purportedly well-understood, routine, and
conventional (“WURC”).
We note the Appeal Brief was filed on June 27, 2019, well over a year
after Berkheimer was decided by the Federal Circuit. However, the Appeal
Brief is silent regarding any mention of Berkheimer. To the extent that
Appellant argues Berkheimer for the first time in the Reply Brief, and not in
response to any additional WURC findings by the Examiner in the Answer,
we find such arguments are untimely under our procedural rule. See 37
C.F.R. § 41.41(b)(2).
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Therefore, on the record before us, Appellant has not shown that the
claims on appeal add a specific limitation beyond the judicial exception that
is not well-understood, routine, and conventional, when the claim
limitations are considered both individually and as an ordered combination.
See MPEP § 2106.05(d).
In light of the foregoing, and under the 2019 Memorandum, we
conclude that each of Appellant’s claims 1–4 and 6–20, considered as a
whole, is directed to a patent-ineligible abstract idea that is not integrated
into a practical application, and does not include an inventive concept.
Therefore, we sustain the Examiner’s Rejection A under 35 U.S.C. § 101 of
claims 1–4 and 6–20. 10

Rejection B of Claims 1–3, 6, and 8–20 under §103(a)
Claim Grouping
Based on Appellant’s arguments, and our procedural rule, we group
claims 2, 3, 6, and 8–20 (not argued separately) with representative
independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues the Examiner’s Rejection B of claim 1 under 35
U.S.C. § 103(a) as being obvious over the combination of Kao and Lawe is
in error. See Appeal Br. 13–17; Reply Br. 6–7.

10 Regarding Rejection A under 35 U.S.C. § 101, grouped claims 2–4 and
6–20 (not argued separately) fall with representative independent claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).

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Issues: Under 35 U.S.C. § 103(a), we focus our analysis on the
following argued limitation regarding Rejection B of independent claim 1:

1. Did the Examiner err by finding that Kao and Lawe collectively
teach or suggest the disputed limitation L:
[L] automatically identifying new active e[-]commerce listings
from source sites for propagation to sites in other regions by
retrieving . . . from a first plurality of source e-commerce sites
associated with a first region, first versions of a corresponding
plurality of active e-commerce listings,
within the meaning of representative independent claim 1?11 (emphasis
added). See Final Act. 4–8.

2. We also consider the question of whether the Examiner improperly
combined Kao and Lawe, as alleged by Appellant, because modifying Kao
with Lawe’s teachings purportedly changes Kao’s principle of operation and
makes Kao unsatisfactory for its intended purpose? See Appeal Br. 17.
1. Disputed Limitation L
Appellant disputes that limitation L is taught or suggested by Kao:
Kao’s description of maintaining posters, for example, implies a
“write only” approach, where maintaining the posters includes only
writing updated posters to regional web sites, without any need to
“retrieve ... from a first plurality of source e-commerce sites

11 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See Morris, 127 F.3d
at 1054.
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associated with a first region, first versions of a corresponding
plurality of active e-commerce listings.” . . .

. . . Thus, not only does Kao not teach the receiving feature above, but
Kao fails to describe any behavior analogous to the claimed features
above, that describe retrieving listings and then transmitting a
modified form of the listing to another region.
Appeal Br. 14–15 (emphasis added).
Appellant argues that Lawe also fails to disclose the limitation of
“identifying new active listings from source sites for propagation to sites in
other regions by retrieving.... from a first plurality of source e-commerce
sites associated with a first region, first versions of a corresponding plurality
of active e-commerce listings posted by a respective plurality of users
offering a product available for purchase.” Appeal Br. 15 (emphasis added).
Based upon our review of the record, we find a preponderance of the
evidence supports the Examiner’s finding that Kao and Lawe collectively
teach or suggest the disputed limitation L at issue.
On this point, we find the Examiner relies upon Kao to teach or
suggest:
identifying … active e[-]commerce listings from source sites for
propagation to sites in other regions by retrieving … from a
first plurality of source e-commerce sites associated with a
first region, first versions of a corresponding plurality of active
e-commerce listings
and Lawe to teach or suggest:
automatically identifying new active e[-]commerce listings
from source sites
as recited in independent claim 1 (see Final Act. 4–6 (emphasis added)).

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Claim Construction
As an initial matter of claim construction, we turn to the Specification
for context, and find no explicit definition for the recited claim 1 term
“e-commerce site.” Instead, we find only descriptions of non-limiting,
exemplary embodiments describing that a host site may be an “on-line
commerce site.” Spec. ¶ 14. See also Spec. ¶ 18 (“For example, the
network system 100 may be a trading/commerce system where clients may
communicate and exchange data with the trading/commerce system, the data
may pertain to various functions (e.g., online purchases) and aspects (e.g.,
managing social networks) associated with the network system 100.”).
Accordingly, under BRI, we interpret the term “e-commerce site” to
mean an e-commerce website having a network address (URL) where online
commercial activities or transactions occur.
Turning to the evidence relied upon by the Examiner, Kao describes:
Step (4) Send each of the posting orders to the central
control system 30 from the respective regional service center
21, wherein each of the posting orders includes posting
information of posting content, time and size for one or more of
the electronic posters 10 designated by the respective advertiser
50.
Kao ¶ 33 (emphasis added) (see Final Act. 5 and Kao Fig. 2, showing a
plurality of regional service centers and regional control centers residing in a
plurality of regional territories).
Additionally, the Examiner points to paragraph 53 of Kao:
[T]he poster content is designed by the advertiser 50 or the regional
control center 22, [and] the poster content is downloaded in the
advertisement engine of the central control system 30.
Final Act. 5–6 (emphasis added, original emphasis omitted).
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The Examiner reads the claimed “active e-commerce listings” on
Kao’s advertising posters orders. See Final Act. 5 (re: claim 1). The
Examiner reads the claimed “first plurality of source e-commerce sites” on
Kao’s regional control center (RCC — Fig. 2), where new poster content is
designed. Id.; see Kao ¶ 53. The Examiner explains that “the regional
control center can be a first e-commerce site since it sells ad
services/orders.” Final Act. 5.
The Examiner reads the claim limitation “automatically identifying
new active e[-]commerce listings from source sites” on paragraph 44 of
Lawe, which describes periodic polling to find existing auction listings run
by online sellers and additionally “capturing” these listings. See Final Act.
6; see also Lawe ¶ 20 (“The bonus store credit system is particularly
advantageous for use over the Internet facilitating transactions occurring
between a seller and a buyer at a market venue such as eBay, Amazon or
Yahoo.”).
It is well settled that merely replacing manual activity with automatic
means to accomplish the same result is an obvious improvement. See In re
Venner, 262 F.2d 91, 95 (CCPA 1958).
In our review of the record, we find Kao’s description of
“downloading” to the central control system an advertiser’s poster content
designed by (i.e., sourced from) the regional control center (RCC) teaches or
suggests “identifying . . . active e[-]commerce listings from source sites for
propagation to sites in other regions by retrieving . . . from a first plurality of
source e-commerce sites associated with a first region, first versions of a
corresponding plurality of active e-commerce listings.” Claim 1 (emphasis
added).
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Additionally, we find Lawe’s description of periodic polling and
capturing of new listings at various market venues teaches or suggests
“automatically identifying new active e[-]commerce listings from source
sites,” as recited in claim 1.
Moreover, “the question under 35 USC 103 is not merely what the
references expressly teach but what they would have suggested to one of
ordinary skill in the art at the time the invention was made.” Merck & Co. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (emphasis added)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)); see also MPEP
§ 2123.
Accordingly, we find the cited combination of prior art teaches or
suggests the disputed limitation “L” within the meaning of claim 1.
2. Did the Examiner properly combine Kao and Lawe?
Appellant contends that modifying Kao as suggested by the rejection
changes Kao’s principle of operation. Appeal Br. 15. In support, Appellant
argues:
Kao discloses that in order to accomplish the objects of Kao’s
invention, orders from advertisers are received and then the
posting orders are sent to a central control system. . . .
The modification of Kao proposed by the Office Action
would thus convert Kao from a system that received posting
orders from advertisers into a system that “automatically
[identifies] new active listings from source sites for propagation
to sites in other regions by retrieving.”
Appeal Br. 16 (alteration in original).

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The Examiners disagrees and explains the proposed modification of
Kao:
Kao already uploads new ads from the regional site to the
central site for storage and further transmittal to other sites . . . .
Lawe merely adds an automatic feature where those new ads
can be automatically taken from the regional site and uploaded
to the central site.
Ans. 11 (emphasis added).
The Supreme Court guides that “[r]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Here, in reviewing the record, we find the Examiner provides an
articulated reasoning with some rational underpinning that sufficiently
supports the legal conclusion of obviousness. Final Act. 6–8; see also Ans.
6–7, 10–11.
We find the Examiner’s modification of Kao with the teachings of
Lawe to “automatically” download poster contents sourced from either the
regional control or service centers (e.g., by periodically polling these
centers) to the central control system for distribution to and displaying in
other regional territories does not change Kao’s principle of operation of
accepting posting orders (and contents) from advertisers by the regional
service centers, or, of designing the poster contents by the regional control
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centers. See Final Act. 6–7.12 Instead, the Examiner merely relies upon
Lawe to modify Kao to automatically download newly submitted or
designed poster contents by periodically polling these locations for poster
orders.
In reviewing the record, we are not persuaded the Examiner erred
because Appellant does not point to any evidence of record that shows
combining the teachings of Kao and Lawe in the manner proffered by the
Examiner (Final Act. 6–7) would have been “uniquely challenging or
difficult for one of ordinary skill in the art” or would have “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Although Appellant argues the Examiner has relied on impermissible
hindsight in combining Kao and Lawe (Reply Br. 7), Appellant has not
identified knowledge gleaned only from the present application that was not
within the level of ordinary skill at the time the claimed invention was made.
See In re McLaughlin, 443 F.2d 1392 (CCPA 1971). Moreover, Appellant
has not provided any objective evidence of secondary considerations (e.g.,
unexpected results), which our reviewing court guides “operates as a
beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese &
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Therefore, on this record, and based upon a preponderance of the
evidence, we are not persuaded of error regarding the Examiner’s underlying

12 See e.g., Final Act. 6 (“Kao does not explicitly disclose automatically
identifying new active ecommerce listings from source sites. However,
Lawe discloses automatically identifying new active ecommerce listings
from source sites.”).
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factual findings and ultimate legal conclusion of obviousness regarding the
Examiner’s rejection of independent representative claim 1.
Accordingly, we sustain the Examiner’s obviousness Rejection B of
independent representative claim 1, and also Rejection B of independent
claims 9 and 17, which recite similar limitations of commensurate scope.
See Final Act. 4–8. The remaining grouped dependent claims also rejected
under Rejection B (and not argued separately) fall with representative
independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we
sustain the Examiner’s obviousness Rejection B of claims 1–3, 6, and 8–20.

Rejections C, D, E, and F
of claims 2–4, 7, 10–12, 18, and 19 under §103(a)
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection C of claim 4, Rejection D of claim 7, Rejection E
of claims 2, 3, 10, 11, 18, and 19, and Rejection F of claim 12 under
§ 103(a) (see Appeal Br. 12–18), we sustain these rejections.13 Arguments
not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).

13 We note that in light of the Examiner’s Rejection B of claims 1–3, 6, and
8–20, the Examiner cumulatively rejects claims 2, 3, 10–12, 18, and 19 over
more than a single ground of rejection under 35 U.S.C. § 103(a).
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CONCLUSIONS
Under the Director’s 2019 Memorandum, as governed by relevant
case law, we conclude that claims 1–4 and 6–20, rejected under 35 U.S.C.
§ 101, are directed to patent-ineligible subject matter.
The Examiner did not err in rejecting claims 1–4 and 6–20 as being
obvious under 35 U.S.C. § 103(a), over the cited combinations of references.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–20 101 Eligibility 1–4, 6–20
1–3, 6,
8–20
103(a) Kao, Lawe 1–3, 6,
8–20

4 103(a) Kao, Lawe,
Maloney
4
7 103(a) Kao, Lawe,
Webster
7
2, 3, 10,
11, 18, 19
103(a) Kao, Lawe,
Applicant’s
Admitted Prior Art
2, 3, 10,
11, 18, 19

12 103(a) Kao, Official
Notice
12
Overall
Outcome
1–4, 6–20
FINALITY AND 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)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED