Traxo, LLC

Patent Trials and Appeals Board

Sep 10, 2020

2020003147 (P.T.A.B. Sep. 10, 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.
14/599,956 01/19/2015 Andres Fabris TRAX01-00006 8951
23990 7590 09/10/2020
DOCKET CLERK
P.O. DRAWER 800889
DALLAS, TX 75380
EXAMINER
EL-BATHY, IBRAHIM N
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/10/2020 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):
munckwilson@gmail.com
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDRES FABRIS and RICHARD PENDERGAST
____________

Appeal 2020-003147
Application 14/599,956
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 5–11, 15–20, and 22–27, which are all the claims
pending in the application, under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as “Traxo Inc.”
Appeal Br. 2.
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BACKGROUND
Appellant’s invention is titled “SYSTEM AND METHOD FOR
PROVIDING A BEST FIT TRAVEL SERVICE RECOMMENDATION.”
Appellant’s “disclosure relates to a system and method for searching for a
hotel or other travel service and providing one or more recommendations
based on a user’s stored profile information, loyalty preferences, previously
submitted reviews, past travels, and/or previously booked travel.” Spec. ¶ 2.
The Background section of the Specification discloses:
With the convenience of the internet, the need to call many
different hotels or other travel services for price checks and
availability is coming to an end. Booking travel services online is
more popular than ever. Many travel sites lists hotels or other
travel services where the user is traveling. The list of hotels is
normally randomized and has no specific customization to the
individual user. In many cases, the search results are presented to
the user based on distance from an arbitrary location or are based
upon ultimate profitability for the website or travel service
supplier.

Id. ¶ 3.
Appellant’s invention purportedly solves this problem by “searching
for a hotel or other travel service and providing one or more
recommendations based on a user’s stored profile information, loyalty
preferences, previously submitted reviews, past travels, and/or previously
booked travel.” Id. ¶ 4.
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CLAIMED SUBJECT MATTER
Claims 1, 11, and 20 are independent and recite substantially similar
subject matter. Independent claim 1, reproduced below with added
bracketed notations, is representative of the claimed subject matter. See
Appeal Br., Claims App.
1. A method for recommending travel services, comprising:
[(a)] determining, by a processor, that a travel service is
required for a trip destination of a user;
[(b)] selecting, by the processor, a pool of travel
services associated with the trip destination;
[(c)] filtering, by the processor, the pool of travel
services into a filtered group of travel services using one or
more filters;
[(d)] sorting, by the processor, the filtered group of
travel services into a list using one or more sort criteria; and
[(e)] controlling, by the processor, a display to display
the list to the user, [(f)] wherein selecting the pool of travel
services associated with the trip destination comprises:
[(1)] determining whether any first travel services
are associated with a prior booking by the user at the trip
destination and, if so, including the first travel services in the
pool of travel services;
[(2)] upon a determination that a number of travel
services in the pool of travel services is less than a
predetermined threshold, determining whether any second
travel services are associated with a prior booking by the user in
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a larger geographical area surrounding the trip destination, and
if so, including the second travel services in the pool of travel
services;
[(3)] upon a determination that the number of
travel services in the pool of travel services is less than the
predetermined threshold after the second travel services are
included, determining whether any third travel services are
associated with a booking by one or more buddies of the user at
the trip destination and, if so, including the third travel services
in the pool of travel services; and
[(4)] upon a determination that the number of
travel services in the pool of travel services is less than the
predetermined threshold after the third travel services are
included, (i) determining one or more second users that have a
travel score in a range of travel scores associated with a
travel score of the user, the travel score of each user
indicating a travel savviness of the user, and (ii) determining
whether any fourth travel services are associated with a booking
by the one or more second users at or near the trip destination,
and if so, including the fourth travel services in the pool of
travel services.

OPINION
Under 35 U.S.C. § 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 78, 79). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original) (citation
omitted).
In rejecting claims 1, 5–11, 15–20, and 22–27 as being directed to an
abstract idea without significantly more, the Examiner evaluated the claims
together under the Alice framework and the 2019 Revised Guidance.2 Final

2 The U.S. Patent and Trademark Office (“USPTO”) published revised
guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
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Act. 7–10. Appellant argues claims 1, 5–11, 15–20, and 22–27 as a group,
and selects claim 1 for discussion. Appeal Br. 10–18. We select claim 1 as
representative of the group, with claims 5–11, 15–20, and 22–27 standing or
falling therewith. 37 C.F.R. § 41.37(c)(1)(iv)(2019).
Statutory Categories under § 101
To determine subject matter eligibility under 35 U.S.C. § 101, the
Examiner must first determine if the claims fall into one of the four statutory
categories of invention: processes, machines, manufactures, or composition
of matter. See MPEP § 2106.03. There is no dispute that independent
claim 1 recites a method and is directed to a process, which is one of the
statutory categories under § 101.
We now turn to the two step Alice framework.
Step One of the Alice Framework (2019 Revised Guidance, Step 2A)
Step 2A, Prong One
The first step in the Alice framework is to determine whether the
claims at issue are “directed to” a patent-ineligible concept, e.g., an abstract
idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in the 2019
Revised Guidance (i.e., Step 2A), is a two-prong test; in Step 2A, Prong
One, the Examiner must look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or

procedure with respect to the first step of the Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) “clarifying that a claim is not ‘directed to’ a judicial exception
if the judicial exception is integrated into a practical application of that
exception.” Id. at 50.

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legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54.
To that end, the Examiner determines that representative claim 1 “as a
whole recites a method of organizing human activity.” Final Act. 7.
According to the Examiner, steps (a)–(d) and (f)(1)–(f)(4) of claim 1 supra
(not italicized) recite “a method of managing interactions between people,
which falls into the methods of organizing human activity grouping.” Id. at
8. The Examiner indicates that “[t]he travel service and pool of travel
services provided into a filtered group through the use of one or more filters
are all part of the abstract idea.” Ans. 4. The Examiner asserts that the
“mere recitation of a generic computer (processor, display of claim 1) does
not take the claim out of the methods of organizing human activity grouping.
Thus, the claim recites an abstract idea.” Id. at 8.
Appellant does not contest the Examiner’s evaluation of the abstract
idea under Step 2A, Prong One.3 Instead, Appellant contends that claim 1 is
integrated into a practical application under Step 2A, Prong Two. See
Appeal Br. 13–16.
This abstract idea of recommending travel services based on user
information is not meaningfully different from the ideas found to be abstract
in other cases before our reviewing court involving methods of organizing
human activity. For example, in Bridge and Post, Inc. v. Verizon
Communications, Inc., 778 F. App’x 882 (Fed. Cir. 2019), the Federal

3 Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an
appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”).
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Circuit held that abstract ideas include tracking a user’s computer network
activity and using information gained about the user to deliver targeted
media, such as advertisements. See also, e.g., Affinity Labs of Texas, LLC v.
Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (customizing a user
interface to have targeted advertising based on user information);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (tailoring information presented to a user based on
particular information); Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013
(C.D. Cal. 2014), aff’d, 622 F. App’x 915 (Fed. Cir. 2015) (concluding that
targeting advertisements to certain consumers is no more than an abstract
idea); BASCOM Global Internet v. AT&T Mobility, LLC, 827 F.3d 1341,
1345–46 (Fed. Cir. 2016) (finding that filtering content was an abstract idea
under step 2A). In light of these precedents, claim 1 equally recites an
abstract idea.
Step 2A, Prong Two
Having concluded that claim 1 recites a judicial exception, i.e. an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two). 2019 Revised Guidance, 84
Fed. Reg. at 51. When a claim recites a judicial exception and fails to
integrate the exception into a practical application, the claim is “directed to”
the judicial exception. Id. A claim may integrate the judicial exception
when, for example, it reflects an improvement to technology or a technical
field. Id. at 55.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
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based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36.
Under Step 2A, Prong Two, the Examiner determines:
This judicial exception is not integrated into a practical
application because the claim recites the additional elements
[italicized in claim 1 supra] of (controlling, by the processor, a
display to display the list to the user) [as recited in step (e)].
The processor and display in the claims, are recited at a high
level of generality and are generically recited computer
elements. The generically recited computer elements amount to
simply implementing the abstract idea on a computer.
Final Act. 9 (alteration from original).
Appellant argues that claim 1 provides a “method for electronically
determining and presenting a user with a customized list of recommended
hotels or other travel services directed at the individual user for a travel
destination. Such a practical application is reflected in the additional
elements recited in” steps (f)(1)–(f)(4). Appeal Br. 13–14. In support of this
argument, Appellant relies on Example 40 of the Subject Matter Eligibility
Examples released with the 2019 Revised Guidance. Id. at 14–16; Reply Br.
3–4.
We are not persuaded by Appellant’s argument at least because the
features Appellant relies on are part of the abstract idea, which cannot
integrate that into a practical application. Under Step 2A, Prong two,
“examiners evaluate whether the claim recites additional elements that
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integrate the exception into a practical application of that exception.”
84 Fed. Reg. at 54 (emphasis added). As such, features of the abstract idea
cannot be relied upon to integrate itself into a practical application.
We also are unpersuaded by Appellant’s argument that Example 40
is similar to claim 1. According to Appellant, “taken as a whole,
instant Claim 1 recites a combination of features and limitations that are
very analogous to the kind of limitations described as making Claim 1 of
Example 40 to be integrated into a practical application.” Appeal Br. 16.
Example 40 “as a whole is directed to a particular improvement in collecting
traffic data. Specifically, the method limits collection of additional Netflow
protocol data to when the initially collected data reflects an abnormal
condition, which avoids excess traffic volume on the network and hindrance
of network performance.” Id. at 15. Unlike the alleged “improvement in
electronically determining and presenting a user with a customized list of
recommended hotels or other travel services” (id. at 16), the improvement in
Example 40 is related to “improved network monitoring,” which improves
network technology. Claim 1 is distinguished from Example 40 because
claim 1 does not recite any communications network, let alone
improvements to network technology.
We agree with the Examiner that Appellant’s alleged improvement
may reflect an improvement to the abstract idea of recommending travel
services based on user information, but that does not reflect “improvements
to the way the computer/processor functions.” Ans. 5 (“Rather the
improvement is through the business aspect of the invention.”). We
recognize that “[s]oftware can make non-abstract improvements to computer
technology just as hardware improvements can, and sometimes the
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improvements can be accomplished through either route.” Enfish, 822 F.3d
at 1335. However, “to be directed to a patent-eligible improvement to
computer functionality, the claims must be directed to an improvement to
the functionality of the computer or network platform itself.” Customedia
Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020)
(citing Enfish, 822 F.3d at 1336–39). Claim 1 recites generic components
arranged in no particular way to perform generic functions of determining,
selecting, filtering, sorting, and displaying without improving computers or
networks. The Specification’s description of these components makes clear
that they are generic components that do not improve the functioning of a
computer or other technology, and which are used as tools in their ordinary
capacity to implement the abstract idea. See, e.g., Spec. ¶¶ 53–59, Fig 5.
Accordingly, we determine that claim 1 lacks any additional elements
sufficient to integrate the abstract idea into a practical application.
Step Two of the Alice Framework (2019 Revised Guidance, Step 2B)
We next consider whether claim 1 recites additional elements,
individually, or as an ordered combination, that provide an inventive
concept. Alice, 573 U.S. at 217–18. The second step of the Alice test is
satisfied when the claim limitations involve more than performance of
well-understood, routine, and conventional activities previously known to
the industry. Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
Appellant argues that “the Examiner does not include any of these
four supportive elements . . . [discussed in the Berkheimer Memo] to
demonstrate that the combination of features recited in Claim 1 is well-
understood, routine, or conventional” because “Claim 1 recites far more
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additional elements than a generic conventional processor and the alleged
abstract idea of ‘recommending travel services to a user.’” Appeal Br. 17.
For example, as discussed above, Claim 1 recites
multiple determining operations associated with multiple
different conditions: (i) whether any first travel services are
associated with a prior booking by a user, (ii) whether any
second travel services are associated with a prior booking by
the user in a larger geographical area surrounding the trip
destination, (iii) whether any third travel services are associated
with a booking by one or more buddies of the user at the trip
destination, and (iv) whether any fourth travel services are
associated with a booking by the one or more second users at or
near the trip destination. Claim 1 also recites operations
(including travel services in a pool of travel services) that are
performed only when each of these four conditions is true.
Claim 1 also recites additional elements such as one or more
filters. None of these additional elements are discussed by the
Examiner in conjunction with Step 2 (also known as Step 2B)
of the Alice/Mayo test.
Id. at 17–18. We are not persuaded of error.
We agree with the Examiner that claim 1 lacks additional elements
that are sufficient to amount to significantly more than the judicial
exception. Final Act. 9. In compliance with the Berkheimer memo, the
Examiner cited to the Specification and court decisions noting the well-
understood, routine, conventional nature of the additional elements. See
Final Act. 9–10. As discussed, the additional elements recited in claim 1,
i.e., “processor” and “controlling, by the processor, a display to display the
list to the user” as recited in step (e) are generic computer components (see
Spec. ¶¶ 53–59) that perform well-understood, routine, or conventional
functions of determining, selecting, filtering, sorting, and displaying at a
high level of generality. In fact, Appellant acknowledges that the claimed
processor is a “generic conventional processor.” Appeal Br. 17. See
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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 Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011) (“Absent a possible narrower construction of the terms ‘processing,’
‘receiving,’ and ‘storing,’ discussed below, those functions can be achieved
by any general purpose computer without special programming.”).
As an ordered combination, these additional elements provide no
more than when they are considered individually. Alice, 573 U.S. at 225.
They recite generic computer components that perform well-understood and
conventional functions. They are used as tools to implement the judicial
exception. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1169–70
(Fed. Cir. 2018) (limitations of various databases and processors did not
improve computers but used already available computers and available
functions as tools to execute the claimed process); Inventor Holdings LLC v.
Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (considering
the method steps of the representative claims as an “ordered combination”
reveals that they “amount to ‘nothing significantly more’ than an instruction
to apply [an] abstract idea” using generic computer technology).
Further, the Examiner under the second step of the Alice analysis and
the Revised Guidance properly considers whether claim 1 adds a specific
limitation beyond a judicial exception that is not “well-understood, routine,
conventional” activity in the field. 2019 Revised Guidance, 84 Fed. Reg. 56.
Appellant’s argument supra relies on features which are part of the abstract
idea, yet, “[i]t has been clear since Alice that a claimed invention’s use of the
ineligible concept to which it is directed cannot supply the inventive concept
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that renders the invention ‘significantly more’ than that ineligible concept.”
BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
We disagree with Appellant’s contention that “[b]y withdrawing the
rejection of the claims under Section 103, the Examiner concedes that the
prior art of record does not teach or suggest these elements, and so as a
matter of fact the claims cannot be considered to be well-understood,
routine, or conventional.” Reply Br. 7. “The ‘novelty’ of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v. Diehr, 450
U.S. 175, 188–89, (1981). Even if the steps are groundbreaking, innovative,
or brilliant, that is not enough for eligibility. See Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed, “the
absence of the exact invention in the prior art does not prove the existence of
an inventive concept.” Western Express Bancshares v. Green Dot Corp.,
Appeal No. 2020-1079, 2020 WL 3967855, *3 (Fed. Cir. July 14, 2020).
Accordingly, we agree with the Examiner that claim 1 lacks an
inventive concept sufficient to transform the abstract idea into patent-eligible
subject matter. Thus, we sustain the rejection of independent claim 1 as
directed to a judicial exception under 35 U.S.C. § 101, and claims 5–11, 15–
20, and 22–27, which fall with claim 1.
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CONCLUSION
The Examiner’s rejection of claims 1, 5–11, 15–20, and 22–27 under
35 U.S.C. § 101 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5–11,
15–20, 22–
27
101 Eligibility 1, 5–11,
15–20, 22–
27

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